EMC Corp v. Clouding Corp

1. Case Identification

• Case #: IPR2014-01309
• Patent #: 5,944,839
• Filed: August 15, 2014
• Petitioner(s): EMC Corporation, EMC International U.S. Holdings, Inc., and VMware, Inc.
• Patent Owner(s): Clouding IP, LLC
• Challenged Claims: 1, 2, 6, 8, 14, 15, and 17

2. Patent Overview

• Title: System and Method for Automatically Maintaining a Computer System
• Brief Description: The ’839 patent describes a system for automated computer maintenance. It utilizes an array of sensors to detect problems, an Artificial Intelligence (AI) engine to diagnose the issues by referencing a "case base" of known problems and solutions, and can activate appropriate sensors to perform repairs. If no solution is found, the system saves its current state for subsequent analysis by a human expert.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 6, 8, 14, 15, and 17 are obvious over Gürer in view of Allen ’664.

• Prior Art Relied Upon: Gürer (a 1996 publication on AI for network fault management) and Allen ’664 (Patent 5,581,664).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Gürer taught a system using case-based reasoning (CBR) to automatically diagnose and correct network faults. Gürer’s system included the core elements of the challenged claims: sensors (in the form of software detecting "alarms"), an AI engine using CBR, and a knowledge database ("case library"). However, the key limitation added during prosecution of the ’839 patent—saving data as a new case when no likely solution is found—was not explicitly taught by Gürer. Petitioner asserted that Allen ’664 supplied this missing element by disclosing a CBR system with an inference engine that explicitly creates and stores a new case when it cannot find a good match for a problem in its existing case base.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Gürer's fault management system with Allen ’664's method for handling unknown problems. This combination represented a natural and predictable improvement, enabling Gürer's system to "learn" from failures—a routine and desirable goal in AI system design. Adding the capability to store unresolved faults for later analysis provided a substantial advantage for improving the knowledge base over time.
  • Expectation of Success: A POSITA would have had a high expectation of success because both references described complementary CBR systems. Modifying Gürer's diagnostic system to store new cases when a solution is not found, as taught by Allen ’664, was a straightforward implementation of a known technique for enhancing AI systems.

Ground 2: Claims 1, 2, 6, 8, 14, 15, and 17 are obvious over Allen ’218 in view of Allen ’664.

• Prior Art Relied Upon: Allen ’218 (Patent 5,586,218) and Allen ’664 (Patent 5,581,664).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Allen ’218 described a CBR tool for automated preventative maintenance on office equipment, which included a software agent (AI engine), a sensor, and a case database. Allen ’218 disclosed a "reward message" that indicated the success or failure of an action, implying that a new case should be created upon failure. To make this teaching explicit, Petitioner combined it with Allen ’664, which clearly taught creating a new case when no matching solution exists. The combination of Allen ’218 and Allen ’664 taught all limitations of the challenged claims.
  • Motivation to Combine: A strong motivation to combine existed because the references shared the same inventor, were developed by the same commercial entity, and addressed the same technical field of autonomous learning agents. The references provided complementary mechanisms for case-based learning, making their combination an obvious path to enhance the system’s ability to handle novel problems.
  • Expectation of Success: Given their common origin and compatible technologies, a POSITA would have reasonably expected to successfully integrate Allen ’664’s explicit teaching on creating new cases into the autonomous agent framework of Allen ’218.

Ground 3: Claims 6, 8, and 14 are obvious over Barnett in view of Allen ’664.

• Prior Art Relied Upon: Barnett (Patent 5,664,093) and Allen ’664 (Patent 5,581,664).
• Core Argument for this Ground:
  • Prior Art Mapping: Barnett disclosed a rule-based fault management system with measuring agents (sensors), a diagnostic system (AI engine), and a rule database. Petitioner argued this system taught detecting a problem, activating an engine, and using a knowledge base to find a solution. While Barnett was silent on the procedure when its rule-based engine fails, Petitioner asserted it would have been obvious to a POSITA to save the system state for debugging and improvement. Allen ’664 provided the specific, well-known technique of creating a new case in a CBR system when a solution cannot be found.
  • Motivation to Combine: A POSITA would be motivated to substitute or supplement Barnett’s rigid rule-based engine with Allen ’664’s more flexible and adaptive CBR system. This would allow the resulting system to handle cases that do not match specific rules and to learn over time, representing an obvious improvement to Barnett’s system.
  • Expectation of Success: Petitioner noted that the Patent Trial and Appeal Board, in a prior related proceeding (IPR2013-00095), had already determined there was a reasonable likelihood that this exact combination rendered claims 6, 8, and 14 obvious, supporting a high expectation of success.

4. Key Claim Construction Positions

• For the purposes of the petition, Petitioner adopted the constructions set forth by the Board in the related IPR2013-00095 proceeding. Key constructions included:
  • "Solution to the computer problem": Construed to require "specific information on problem resolution or elimination," which is not satisfied by mere identification of the problem.
  • "Sensors": Defined as "software programs that gather information from the computer system."
  • "AI Engine": Understood as a "computer program... used for decision making or problem solving, based on reasoning or inferences," which could be part of the same program that implements the sensors.

5. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1, 2, 6, 8, 14, 15, and 17 of Patent 5,944,839 as unpatentable under 35 U.S.C. §103.