Google LLC v. LS Cloud Storage Technologies LLC

1. Case Identification

• Case #: IPR2023-00120
• Patent #: 10,154,092
• Filed: November 2, 2022
• Petitioner(s): Google LLC
• Patent Owner(s): LS Cloud Storage Technologies LLC
• Challenged Claims: 1-24

2. Patent Overview

• Title: Cached Data Storage Systems
• Brief Description: The ’092 patent describes a data storage apparatus and method where host computers can access a shared cache memory and disk storage device. The system allows access either via a dedicated input/output (I/O) channel for local hosts or via a network interface for remote hosts.

3. Grounds for Unpatentability

Ground 1: Anticipation over Heil - Claims 1-3, 7-12, and 19-23 are anticipated by Heil under 35 U.S.C. §102(e).

• Prior Art Relied Upon: Heil (Patent 6,173,374).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Heil discloses a nearly identical data storage architecture. Heil’s host bus adapter (HBA) system functions as the claimed apparatus, with its CPU serving as the claimed processor. The connection from a host computer to the HBA via a PCI bus constitutes the claimed "first interface" and "dedicated I/O channel," while the HBA's connection to a Fibre Channel network backbone constitutes the claimed "second interface" for network data. Heil further disclosed using a cache memory and local disk drives for data storage, which the HBA processor accesses based on I/O requests from the host.
  • Key Aspects: Petitioner contended that the communication path in Heil from the HBA processor to the local storage drives (via SCSI/FCAL interfaces) is physically distinct from the dedicated I/O channel (the PCI bus from the host), anticipating a key limitation added during prosecution of the ’092 patent.

Ground 2: Priority Date Challenge & Anticipation over Heil - Claims 10 and 11 are anticipated by Heil under 35 U.S.C. §102(b).

• Prior Art Relied Upon: Heil (Patent 6,173,374).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that claims 10 and 11, which recite routing an I/O request to either cache or storage, lack written description support in the original 1999 priority application. Petitioner argued this subject matter was introduced as new matter during prosecution of a parent application in 2002. Consequently, these claims are not entitled to the 1999 priority date and instead have a priority date no earlier than March 5, 2003.
  • Key Aspects: With this later priority date, Heil, which was filed in 1998, qualifies as prior art under §102(b). Petitioner argued that Heil’s disclosure of an HBA checking its cache for requested data and then retrieving it from a local disk if not found in the cache directly anticipates the routing limitations of claims 10 and 11.

Ground 3: Obviousness over Heil and Nakayama - Claims 1-3 and 6-24 are obvious over Heil in view of Nakayama under 35 U.S.C. §103(a).

• Prior Art Relied Upon: Heil (Patent 6,173,374), Nakayama (Patent 5,920,893).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground relied on Heil for teaching the core architecture of the claimed storage system. Where Heil describes I/O traffic generally as "I/O requests" or "access requests," Nakayama explicitly teaches a similar storage control system where host computers issue specific "read commands" and "write commands" to access cache and disk storage.
  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine Heil and Nakayama to improve the functionality of Heil’s system. A POSITA would have been motivated to implement the well-understood read and write command operations from Nakayama into Heil’s architecture to provide specific, predictable, and industry-standard methods for data access, which would be a simple and beneficial modification.
  • Expectation of Success: A POSITA would have a high expectation of success, as both references operate in the same field of cached data storage and Nakayama’s command protocols would predictably integrate with Heil’s disclosed hardware architecture.

• Additional Grounds: Petitioner asserted additional obviousness challenges for claim 4 over Heil, Nakayama, and Gulick (Patent 5,692,211) to add the specific teaching of using a SCSI channel, and for claim 5 over Heil, Nakayama, and Berman (Patent 6,118,776) to add the teaching of using an Ethernet interface.

4. Key Claim Construction Positions

• Petitioner proposed constructions for the means-plus-function limitations of claim 24, which are central to the obviousness argument for that claim. Key proposed constructions included:
  • "means for receiving input/output (I/O) traffic...via a dedicated I/O channel": Recited function is receiving I/O traffic from a host; disclosed structure is a front-end module (e.g., PCI bus bridge) and equivalents.
  • "means for short-term data storage": Recited function is short-term data storage; disclosed structure is a cache memory and equivalents.
  • "means for performing one or more access operations...": Recited function is performing access operations on short-term and long-term storage; disclosed structure is a cache manager and configuration manager and equivalents.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on the Fintiv factors would be inappropriate. The core arguments were:
  • The parallel district court litigation was stayed shortly after it was transferred, and Petitioner intended to seek an extension of the stay pending the outcome of the IPR.
  • The court had not set a trial date, and the median time to trial in that venue is significantly longer than the statutory deadline for a Final Written Decision, meaning the IPR would conclude well before any potential trial.
  • The parties have invested minimal resources in the district court case, with no claim construction or significant discovery having occurred.
  • The merits of the petition are particularly strong, and the prior art was never considered during prosecution, weighing in favor of institution to promote system efficiency and integrity.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-24 of the ’092 patent as unpatentable.