Veeam Software Corporationv.Symantec Corporation

Patent Trial and Appeal Board

Jul 29, 2014

09998246 (P.T.A.B. Jul. 29, 2014)

Trials@uspto.gov Paper No. 50
571.272.7822 Filed: July 29, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

VEEAM SOFTWARE CORPORATION,
Petitioner,

v.

SYMANTEC CORPORATION,
Patent Owner.
____________

Case IPR2013-00141
Patent 6,931,558 B1
____________

Before MEREDITH C. PETRAVICK, THOMAS L. GIANNETTI, and
TRENTON A. WARD, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

I. BACKGROUND
Veeam Software Corporation (“Petitioner”) filed a Petition for inter
partes review of claims 1–15 of U.S. Patent 6,931, 558 B1 (“the ’558
patent”) pursuant to 35 U.S.C. §§ 311–319 and 37 C.F.R. §§ 42.1–42.123.
(Paper 5, “Pet.”). Symantec Corporation (“Patent Owner”) filed a Patent
Owner Preliminary Response. Paper 9 (“Prelim. Resp.”). Taking into
account Patent Owner’s Preliminary Response, we determined that there is a
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reasonable likelihood that the challenged claims are unpatentable. Pursuant
to 35 U.S.C. § 314, we instituted inter partes review, on August 7, 2013, as
to claims 1–15 of the ’558 patent. Paper 11 (“Dec.”).
After institution, Patent Owner filed a Patent Owner Response (Paper
22, “PO Resp.”) and a contingent Motion to Amend (Paper 23, “Mot. to
Amend”). Petitioner filed a Reply to the Patent Owner Response. Paper 27
(“Pet. Reply”). A hearing was held on May 5, 2014, a transcript of which
appears in the record. Record of Oral Hearing, Paper 49 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This decision is a final
written decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the
patentability of the challenged claims. For the reasons discussed below, we
determine that Petitioner has shown by a preponderance of the evidence that
claims 1–15 are unpatentable.

A. Related Proceedings
In addition to this proceeding, Petitioner filed a Petition for inter
partes review challenging the patentability of claims 16–23 of the ’558
patent. See IPR2013-00142, Paper 6. In that proceeding, we instituted inter
partes review as to claims 17–23 of the ’558 patent. IPR2013-00142, Paper
11. Further, we instituted inter partes review based on Petitioner’s
challenges to the patentability of certain claims of Patent Owner’s U.S.
Patents 7,093,086 (IPR2013-00150) and 7,191,299 (IPR2013-00143). Our
final decisions in these proceedings are being entered concurrently with this
decision.
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The parties indicate that the ’558 patent is involved in a case in the
U.S. District Court for the Northern District of California, Symantec Corp. v.
Veeam Software Corp. (No. 3:12-cv-00700). Pet. 1; Paper 8, 2.

B. The ’558 Patent (Ex. 1001)
The ’558 patent is titled “Computer Restoration Systems and
Methods” and generally relates to local and wide area interconnected
computers and data communications networks. More particularly, the patent
relates to restoration of computer systems backed up on storage managers,
such as in a network, upon a “crash” or other similar event that prohibits
normal “boot[-]up” operation. Ex. 1001, col. 1, ll. 10–15.
The ’558 patent explains that the client computer has access to a
storage manager application, such as a server computer of the network
operating a storage management software program. Id. at Abstract. All
client files, including configuration files, as well as application and data
files, of the client device are saved on the network by the storage manager
application. Id.
The client device is booted over the network, rather than locally to the
client device by a boot disk or otherwise. Id. The boot program is loaded to
the client device, and the client device retrieves configuration and file
information over the network from the storage manager application. Id.
The client device configures its disk according to the configuration
information. Id. All other files and data of the client device at the time a
failure of the client device are saved on the disk substantially in condition
and state just prior to the failure and as most recently backed up to the
storage manager application. Id.
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Figure 3 of the ’558 patent is reproduced below:

Figure 3 illustrates server computer 104 having server components 300,
including restore server 302, boot server 304, file server 306, and storage
manager 308. Id. at col. 3, ll. 32–35; col. 5, ll. 10–15. The restore server
shown in the Figure above, and described in the text of the patent, is known
as a bare metal restore (“BMR”) server. Id. at col. 5, ll. 11–12.

C. Illustrative Claims
Independent claims 1, 2, and 11 of the ’558 patent are illustrative of
the claims at issue:
1. A device restoration system, for restoring a client device to a
state prior to a major failure, comprising:
a server device;
a network communicatively interconnecting the client
device and the server device;
a storage manager accessible to the server device for
saving the state, wherein the state includes client disk
configuration information; and
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a network boot in which the server device causes the
client device to boot.

2. A method of restoring a client device of a network on failure
of the client device, wherein the network includes a server
computer, comprising the steps of:
booting the client device via a network boot;
creating a boot program for operation on the client
device;
configuring the client device according to the boot
program and a saved configuration state including client disk
configuration information;
copying a file to the client device in accordance with a
configuration from the step of configuring.

11. A method of restoring a client device of a network, the
network including a server device having a storage manager
application, comprising the steps of:
backing up configuration data including client disk
configuration information, as well as application and data files,
by the storage manager application; and
restoring the backed up configuration data, as well as
application and data files, from the step of backing up, to the
client device over the network.

D. Grounds of Unpatentability
We instituted inter partes review of the ’558 patent based upon the
following asserted grounds of unpatentability:
1. Claims 1–15 are anticipated under 35 U.S.C. § 102 by BMR User
Guide1;

1 THE KERNEL GROUP, Bare Metal Restore User Guide For Tivoli Store
Manager: Version 1.4.3 1–142 (2001) (Ex. 1003).
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2. Claims 1–15 are anticipated under 35 U.S.C. § 102 by BMR
Webpages2; and
3. Claims 11 and 14 are anticipated under 35 U.S.C. § 102 by
Deshayes3.
Dec. 17.

II. DISCUSSION
A. Claim Construction
We begin our analysis by determining the meaning of the claims. In
an inter partes review, claim terms in an unexpired patent are given their
broadest reasonable construction in light of the specification of the patent in
which they appear. 37 C.F.R. § 42.100(b). Under the broadest reasonable
construction standard, claim terms are given their ordinary and customary
meaning as would be understood by one of ordinary skill in the art in the
context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007).
i. Client Disk Configuration Information
We determined that the broadest reasonable interpretation of “client
disk configuration information” is “information regarding disk partitions,
volume groups, logical volumes, and/or file systems.” Dec. 7. The broadest
reasonable interpretation of “client disk configuration information” was

2 THE KERNEL GROUP, Bare Metal Restore User’s Guide: Version 1.1 for
AIX (May 2000),
www.web.archive.org/web/20000831083617/http:/www.tkg.com/bmr/docs/
white.html (last visited Aug. 31, 2000); THE KERNEL GROUP, Disaster
Recovery and the Tivoli Storage Manager: How Bare Metal Restore Fills
the Gap (May 2000)
www.web.archive.org/web/20000831083617/http:/www.tkg.com/bmr/docs/
white.html (last visited Aug. 31, 2000) (Ex. 1002).
3 Deshayes, U.S. Patent No. 6,047,294 (Apr. 4, 2000) (Ex. 1005).
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proposed by Petitioner (Pet. 7) and adopted by us in the Decision on
Institution (Dec. 7). Patent Owner maintains that the adopted interpretation
is improper for the reason set forth in its Preliminary Response (see Prelim.
Resp. 4–5; see also Dec. 7 (determining that Patent Owner’s argument
regarding an alleged lexicographic definition of client disk configuration
data was unpersuasive)), but accepts the Board’s interpretation for the
purposes of the Patent Owner Response. PO Resp. 3.
ii. Program
Patent Owner argues that a computer program is distinct from a
computer script. PO Resp. 19; see Ex. 2011 ¶¶ 60–62 (Testimony of Dr.
Levy, Patent Owner’s expert, that a script is not equivalent to a program).
Patent Owner argues that a program is “a sequence of instructions intended
for execution by a processor, such as a CPU,” while a script is “a sequence
of commands stored in a file.” Id. According to Patent Owner, a program is
distinct from a script because a program can be executed directly by a
processor and a script requires an intervening program. Id. Petitioner
disputes Patent Owner’s distinction and argues that “[a] script is merely
another word for a software program that is executed by the computer.”
Pet. Reply 10–11 (citing Ex. 1007 ¶ 40).
The ’558 patent does not set forth a lexicographic definition of
program. See Ex. 1001. We, thus, give the term “program” its ordinary and
customary meaning as would be understood by one of ordinary skill in the
art in the context of the entire disclosure. A definition of program is “[a]
sequence of instructions that can be executed by a computer. The term can
refer to the original source code or to the executable (machine language)
version.” MICROSOFT COMPUTER DICTIONARY FIFTH EDITION 424 (2002) (Ex.
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3001). In contradiction to Patent Owner’s argument, this definition does not
preclude a program from requiring an intervening program for execution,
and states that source code, which may require an intervening program for
execution, can be referred to as a program. Further, we see nothing in the
disclosure of the ’558 patent that precludes a program from encompassing a
script. For these reasons, we determine that the broadest reasonable
interpretation of the term “program” encompasses a script.

B. Grounds Based on BMR User Guide (Ex. 1003)
Petitioner argues that claims 1–15 are anticipated by BMR User
Guide. Pet. 24–29; Pet. Reply 2–14. “A claim is anticipated only if each
and every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.” Verdegaal Bros., Inc.
v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). For the
reasons discussed below, we determine that Petitioner has demonstrated by a
preponderance of the evidence that claims 1–15 are anticipated by BMR
User Guide.
i. BMR User Guide
As described in BMR User Guide, the BMR product allows a client
machine to be restored completely from the data saved in an enterprise
storage management server (“ESM”), without requiring separate system
backups or reinstalls. Ex. 1003, 1. In the event that the client loses a boot
disk or suffers some other catastrophic failure, BMR can be used to restore
the machine to the state at which it was backed up last to the ESM. Id.
BMR is integrated into ESM, providing the disaster recovery feature that the
ESM lacks. Id.
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The Figure on page 3 of BMR User Guide, reproduced below, depicts
the BMR product.

The Figure depicts a BMR server, connected to a boot server, a file server,
and an ESM server. Ex. 1003, 3. The boot server, file server, and ESM
server are connected to a restore client. Id. The Figure depicts that the boot
server transmits the boot image to the restore client; the file server transmits
“OS, BMR, & ESM files needed at restore time” to the restore client; and
the ESM server transmits all backed-up client files to the restore client. Id.
BMR User Guide describes a client restoration process that is “highly
automated” and includes the following ten steps:
1. The user tells the BMR server to prepare to restore the
client.
2. The BMR server retrieves the UNIX client’s configuration
data from the ESM server. NT clients retrieve the client
configuration file from the ESM server and to control re–
configuration.
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3. The BMR server creates a customized client boot script and
makes the appropriate boot image and filesystems available
to the client.
4. The client boots from the boot server and starts running its
customized boot script.
5. The client mounts the necessary filesystems from the file
server or SAMBA server.
6. The client configures its disks, logical volumes, filesystems,
etc.
7. The client uses the standard ESM client to restore all its files
from the ESM server, including the operating system,
applications, configuration data, and user files.
8. The client configures its boot record and configuration
database.
9. The client reboots itself.
10. The client performs post-boot cleanup.
Ex. 1003, 4.
ii. Independent Claims 1, 2, and 11 and Dependent Claims 4, 10, and 13
Patent Owner argues that BMR User Guide does not anticipate these
claims because BMR User Guide does not disclose the claimed 1) client disk
configuration data, 2) boot program, and 3) network boot caused by the
server device. PO Resp. 10–21. We will address each of these disputed
limitations in turn.
a. Client Disk Configuration Information
Independent claim 1 recites, “a storage manager . . . for saving the
state, wherein the state includes client disk configuration information.”
Independent claim 2 recites, “configuring the client device according to . . . a
saved configuration state including client disk configuration information.”
Independent claim 11 recites, “backing up configuration data including
client disk configuration information” and “restoring the backed up
configuration data.”
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Petitioner points to step 6 “client configures its disks, logical volumes,
filesystems, etc.[,]” of BMR User Guide’s restoration process as meeting the
claimed client disk configuration information. Pet. 26–27. Petitioner,
further, points to BMR User Guide’s disclosure of backing up the state of
the machine configuration prior to a failure. Id. at 27–28. Petitioner argues
that, given these disclosures, one of ordinary skill in the art would have
understood that the saved client configuration data includes client disk
configuration information, because in order for the client to be recovered
completely, the saved client configuration must include the client disk
configuration information. Id. at 26–28; Pet. Reply 6–10; see also Ex. 1007
¶ 39; Ex. 1013 ¶¶ 11–14 (supporting testimony of Petitioner’s expert, Dr.
Prashant Shenoy).
Patent Owner argues that, although BMR User Guide discloses that
the state of the machine configuration information is saved and discloses,
separately, a client configuring its disks, logical volume, and file system,
BMR User Guide fails to disclose, explicitly, that the saved state of the
machine configuration includes the client disk configuration information.
PO Resp. 11–17; see also Ex. 2011 ¶¶ 39–46 (supporting testimony of
Patent Owner’s expert Dr. John Levy). Patent Owner argues that BMR User
Guide is vague as to where the information used to configure the client’s
disks, logical volume, and filesystem is stored. See id.
We are not persuaded by Patent Owner’s argument. BMR User Guide
discloses a ten step “highly automated” restoration process in which a client
device is restored after a failure. Ex. 1003, 4. Step 6 of the BMR User
Guide’s restoration process states “[t]he client configures its disks, logical
volumes, filesystems, etc.” Id. In order to configure disks, logical volumes,
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and filesystems during a highly automated restoration process, the client
must obtain information regarding disks, logical volumes, and filesystems
(i.e., client disk configuration information) from some previously saved file.
See Tr. 76 (in response to a question from the panel at the oral hearing,
counsel for Patent Owner agreed that the information the client would use to
configure the disks “has to come from some sort of file”). BMR User Guide
discloses that “all files (including system files) must be backed up to the
ESM server” and that “BMR also saves the client’s configuration at backup
time so that an up-to-date snapshot of the machine configuration is always
saved with the system’s data.” Ex. 1003, 2 (emphases added); see also id. at
5 (“[i]t is important that every backup captures a complete snapshot of the
system because BMR restores the machine to the state at which it was last
backed up”) (emphasis added). BMR User Guide further, discloses:
Bare Metal Restore (BMR) allows a machine to be completely
restored from the data that is saved in an Enterprise Storage
Manager (ESM), without requiring separate system backups or
reinstalls. . . . Bare Metal Restore can be used to restore the
machine to the state at which it was last backed up to an ESM
. . . .
When you use BMR, your clients are backed up normally to
their ESM server(s). The only differences are that all of the
clients’ files are backed up and a program is automatically run
before the backup is performed to save the state of the machine
configuration. This information allows BMR to completely
recover a machine from just the ESM backup.
Id. at 1 (emphases added). Given these disclosures, we agree with
Petitioner’s expert Dr. Shenoy that the client disk configuration information
must have been saved as part of the configuration information during the
backup. Ex. 1007 ¶ 39.
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For the reasons given above, we determine that BMR User Guide
discloses that information for configuring disks, logical volumes, and
filesystems (i.e., client disk configuration information) is saved with the
configuration information on the ESM.
b. Boot Program
Claim 2 recites “configuring the client device according to the boot
program and a saved configuration state.” Claim 13 recites using a “boot
program at the client device to perform the step of restoring.”
Petitioner argues that these limitations are met by BMR User Guide’s
“boot script.” Pet. 30; Pet. Reply 10–12. Patent Owner argues that BMR
User Guide’s “boot script” does not meet the claimed “boot program”
because (1) BMR User Guide does not disclose that the content of the boot
script allows for configuration of the client device and (2) a script is distinct
from a program. PO Resp. 17–19.
As to Patent Owner’s first argument, neither claim 2 nor claim 13
specifies the content of the boot program or specifies how the boot program
performs the step of restoring. BMR User Guide discloses that, during the
restoration process, a customized client boot script is created and run. Ex.
1003, 4. We determine that this disclosure meets the limitations of claims 2
and 13. As to Patent Owner’s second argument, as discussed above, we
determine that the term “program” encompasses a script, and, thus, we
determine that BMR User Guide’s disclosed boot script (id. at 2) meets the
claimed boot program.
For the reasons discussed above, we determine that BMR User Guide
discloses the claimed boot program as recited in claims 2 and 13.
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c. Network Boot
Independent claim 1 recites “a network boot in which the server
device causes the client device to boot.” Dependent claims 4 and 10 each
recite “the step of booting is performed by a boot server of the network.”
Petitioner argues that these limitations are met by BMR User Guide’s
disclosure of a boot server network-booting a client. Pet. 28 (citing Ex.
1003, 2); Pet. Reply 12–13. Patent Owner argues that, although BMR User
Guide describes a network boot, BMR User Guide does not describe that the
server device or boot server causes the network boot, because BMR User
Guide describes that a human operator is required to perform multiple steps
prior to the initiation of a network boot. PO Resp. 19–21. Patent Owner’s
argument implies that these limitations preclude the intervention of a human
operator, in any capacity, during a network boot. See id.
We see nothing in these limitations that would preclude a human
operator from performing steps prior to the initiation of a network boot.
BMR User guide discloses that the boot server performs a “network boot” to
boot the client device prior to restoration. Ex. 1003, 2. Further, BMR User
Guide states: “BMR uses the standard bootp or bootparam protocol to
network-boot the client from the boot server.” Id. at 2. These are the same
protocols that the ’558 patent uses as the network boot. Ex. 1001, col. 6,
ll. 59–62 (“[t]he network boot performed by the client computer 106 in such
manner uses the standard ‘bootp’ and/or ‘bootparams’ protocols to network
boot the client computer 106 from the boot server 304”).
For the reasons discussed above, we determine that BMR User Guide
discloses a boot server causing or performing a network boot.
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iii. Dependent Claims 5, 6, 8, 12, 14, and 15
Patent Owner makes no arguments regarding the additional limitations
recited in dependent claims 5, 6, 8, 12, 14, and 15. Upon review of the
Petitioner’s evidence and analysis (Pet. 16-18, 12-23), we determine that
Petitioner has shown by a preponderance of the evidence that the dependent
claims are unpatentable.
iv. Separately Argued Dependent Claims
a. Claim 3
Claim 3 depends from claim 2 and further recites, “wherein the steps
of booting, creating, configuring, and copying are performed through
communications over the network between the client device and the server
computer.” Patent Owner argues that “Petitioner does not even attempt to
address how . . . the BMR [User] Guide disclose[s] that each of the steps of
booting, creating, configuring, and copying [are] performed over the
network between the client device and the server computer.” PO Resp. 22.
Petitioner, however, relies upon the depiction in the Figure on page 3 of
BMR User Guide, reproduced above, of each of the BMR, Boot, File, and
ESM servers communicating with the client across a network. Petitioner
also relies upon BMR User Guide’s statement that restoration time is
determined by network speed. Pet. 31–32 (citing Ex. 1003, 4). Patent
Owner does not dispute the substance of Petitioner’s statement regarding the
disclosure of a network in the Figure of page 3. Further, BMR User Guide
includes several references to IP addresses, network interfaces, and gateways
connecting the various serves and clients. E.g., see Ex. 1003, 5–9. These
further support the disclosure of a network.
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For the reasons discussed above, we determine that BMR User Guide
discloses the additional limitation of claim 3.
b. Claim 7
Claim 7 depends from claim 2 and further recites, “wherein the step of
copying is performed by a storage manager server of the network.” Patent
Owner argues that BMR User Guide does not describe the additional
limitation of claim 7 because step 5 of the restoration process discloses
mounting file systems from the file server and not from the storage manager
server. PO Resp. 22–23. Patent Owner’s argument, however, is not
persuasive for it fails to account for step 7 of the restoration process, which
states that all files are restored (i.e., copied) from the ESM server. Ex. 1003,
4; see Pet. 32–33; Pet. Reply 14; see also Ex. 1003, 3 (Figure depicting ESM
server communicating all backed-up client files to the restore client).
For the reasons discussed above, we determine that BMR User Guide
discloses the additional limitation of claim 7.
c. Claim 9
Claim 9 depends from claim 8, which depends from claim 2. Claim 9
recites, additionally, “wherein the step of storing is performed by a standard
storage manager application and includes backup of the configuration state
of the client computer.” Patent Owner argues that BMR User Guide does
not disclose backing up a configuration state that includes client disk
configuration information. PO Resp. 23. For the same reasons as discussed
above with respect to claim 2, we determine that BMR User Guide discloses
the additional limitation of claim 9.

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C. Ground Based on BMR Webpages (Ex. 1002)
BMR Webpages discloses essentially the same BMR product as the
BMR User Guide, which we determined anticipates claims 1–15. However,
BMR User Guide is a more complete description of the product from the
Web Pages. We do not find claims 17-23 to be anticipated by the BMR
Webpages.

D. Ground Based on Deshayes (Ex. 1005)
Petitioner argues that independent claim 11 and dependent claim 14
are anticipated by Deshayes. Pet. 48–52; see Pet. Reply 14–15. For the
reasons discussed below, we determine that Petitioner has demonstrated by a
preponderance of the evidence that claims 11 and 14 are anticipated by
Deshayes.
i. Claim 11
Claim 11 recites “backing up configuration data including client disk
configuration information” and “restoring the backed up configuration data.”
The parties dispute whether Deshayes discloses both of these steps.
Petitioner argues that Deshayes’ disclosure of saving level volume
information during a backup procedure and later using this information in a
restore meets these limitations. Pet. 50–52; Pet. Reply 14–15. Petitioner
cites to Deshayes’ statement that the backup process includes identifying
“the logical volume manager level information is determined for the
information to be backed up” to meet the client disk configuration
information. Id. at 50 (citing Ex. 1005, col. 10, ll. 13–14). Patent Owner
argues that the cited statement of Deshayes discloses identifying information
to be backed up, not backing up the logical volume manager level
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information. PO Resp. 23–25. Further, Patent Owner argues that the
volume location information is not later restored because it is used to
determine how the data stored on the backup storage system corresponds to
physical, virtual, and logical memory structure of the client during the
restoration. Id. at 25.
We are not persuaded by Patent Owner’s argument. Deshayes
describes a method for backing up and restoring data between storage
system 52 and backup storage system 54. See Ex. 1005, Abstract.
Deshayes’ Figure 9 is reproduced below:

Figure 9 depicts the preparation of discovery data table (DDTAB) file 98.
Id. at col. 6, ll. 46–47. Deshayes discloses determining the volume locations
(i.e., client disk configuration information) of information to be backed up
and entering this information into DDTAB file 98. Id. at col. 10, ll. 7–19.
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DDTAB file 98 is sent from client 50 to backup storage system 54. Id. at
col. 10, ll. 64–66. Deshayes also discloses that this DDTAB file 98 is later
used for restoring the client. Id. at col. 11, ll. 10–19. We, thus, determine,
contrary to the Patent Owner’s argument, that Deshayes discloses backing
up the volume locations. Further, Deshayes states “[t]hus, when a restore is
later requested, the backup storage system will have a record specifying
where the data is stored on the backup storage system 54 memory system
and how that is intended to correspond to the physical, virtual and logical
memory structure of the client 50 and storage system 52.” Id. at col. 11,
ll. 14–19. We see no limitations in claim 11 that restrict how the client disk
configuration information is restored or preclude the client disk
configuration information from being used in the restore process in the
manner disclosed in Deshayes.
We, thus, determine that Deshayes discloses both the backing-up and
restoring of configuration data that includes client disk configuration
information.
ii. Claim 14
Patent Owner makes no separate arguments contesting the additional
limitation recited in dependent claim 14. Upon review of the Petitioner’s
evidence and analysis (Pet. 23), we determine that Petitioner has shown by a
preponderance of the evidence that the dependent claims are unpatentable.
E. Motion to Amend
Patent Owner filed a contingent Motion to Amend the claims under
37 C.F.R. § 42.121. Petitioner filed an Opposition to the Motion to Amend
(Paper 28, “Am. Opp.”), and Patent Owner filed a Reply to the Motion to
Amend (Paper 37, “Am. Reply”).
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Patent Owner proposes to substitute claims 24–26 for challenged
independent claims 1, 2, and 11 and to substitute claim 27 for challenged
dependent claim 12. To the challenged claims, Patent Owner’s Motion to
Amend proposes to add four limitations: 1) that the client device is reset by a
controlling device, 2) that the client disk configuration information
comprises partitions, volume groups, logical volumes, and files systems,
3) that the configuration files are mounted at the client device from a file
server, and 4) that the client device is booted via a standard network boot.
Patent Owner argues that each of these additional limitations isnot disclosed
in the prior art of record, and, therefore, the proposed substitute claims are
not anticipated by the cited prior art. See Mot. to Amend, 11–14; Am.
Reply, 2–4. Petitioner argues that Patent Owner’s Motion to Amend is
deficient because it fails to consider all prior art references cited in this
proceeding and fails to demonstrate that the substitute claims are obvious
over the cited prior art. See Am. Reply, 3–11.
We shall address each of the proposed additional limitations in turn.
For the reasons discussed below, Patent Owner’s Motion to Amend is
denied.
i. Controlling Device for Resetting the Client Device
Substitute claim 24 adds “a controlling device connected to the client
device, for resetting the client device” to challenged claim 1. Mot. to
Amend, 2. Substitute claims 25 and 26 add “resetting the client device using
a controlling device connected to the client” to challenged claims 2 and 11.
Id. at 2–3. Patent Owner argues that none of BMR Webpages, BMR User
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Guide, Deshayes, or DRAC4 anticipates these substitute claims because none
of these prior art references describes a controlling device for resetting the
client device. Id. at 7–9, 11, 13. Patent Owner also argues that this
limitation is “significant,” and generally states that none of the prior art
known to it “used such a device in connection with the claimed device
restoration system of substitute claim 24 or the claimed method of restoring
a client device of substitute claims 25 and 26 of the ’558 patent.” Id. at 11–
12.
Patent Owner, however, fails to demonstrate that the substitute claims
are patentable because of the addition of a controlling device for resetting
the client. Patent Owner bears the burden of proof in demonstrating
patentability of the proposed substitute claim over the prior art of record and
also prior art known to Patent Owner, and, thus, entitlement to add these
proposed substitute claims to its patent. See Idle Free Systems, Inc. v.
Bergstrom, Inc., Case IPR2012-00027, slip op. at 7 (PTAB June 11, 2013
(Paper 26) (“Idle Free”). It is insufficient for Patent Owner to simply
explain why the proposed substitute claims are patentable in consideration of
the ground of unpatentability on which the Board instituted review. Id.
Patent Owner’s argument is confined to whether the cited prior art
anticipates the substitute claims, and fails to demonstrate that the addition of
the controlling device is unobvious over the cited prior art and over all prior
art known to Patent Owner. In particular, neither Patent Owner’s Motion to
Amend nor its supporting Declaration by Dr. Levy (Ex. 2013) addresses the

4 DELL™, DELL OPENMANAGE™ REMOTE ASSISTANT CARD VERSION 2.X
USER’S GUIDE 1-1–4-6, A-1–C-10, Index 1–2 (1999) (Ex. 1016).

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fact that the ’558 patent, itself, discloses that such resetting devices are
known. The ’558 patent states:
Remote re-boot and restoration can also occur according to the
method 400, for example, in the case of a system like an AIX SP
node, where the physical “front panel” (i.e., on, off, reset and
similar control circuitry and equipment) of the client computer
106 can be manipulated through software from another device,
so that the controlling device can electrically (and, if necessary,
mechanically) initiate a reset as if the reset button on the client
computer 106 is triggered.
Ex. 1001, col. 5, ll. 58–66 (emphasis added); see also id. at col. 2, ll. 27–29
(describing AIX as a “conventional” backup system). Patent Owner’s
Motion to Amend, thus, fails to demonstrate that the addition of the
controlling device causes the substitute claim to be patentable over not only
the prior art of record, but also over the prior art known to Patent Owner,
namely, BMR User Guide, which discloses using an AIX client (see
Ex. 1003, 108).
ii. Partitions, Volume Groups, Logical Volumes, and File Systems
Substitute claim 24 adds that the client disk configuration information
“compris[es] partitions, volume groups, logical volumes, and file systems.”
Mot. to Amend, 2. Patent Owner argues that neither BMR Webpages nor
BMR User Guide describes that the client disk configuration information
comprises partition or volume group information. Id. at 8–9.
Patent Owner’s argument, again, is confined to whether some of the
cited prior art anticipates the substitute claims, and fails to demonstrate that
the addition of this feature causes the substitute claim to be novel and
unobvious over all the cited prior art and all prior art known to Patent
Owner. See discussion of Idle Free above. As previously discussed, we
determined that BMR User Guide discloses client disk configuration
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information that includes “disks, logical volumes, filesystems, etc.” Ex.
1003, 4. Neither Patent Owner’s Motion to Amend nor the supporting
Declaration of Dr. Levy (Ex. 2013 ¶¶ 38–43) addresses whether the addition
of partition and volume group information to the BMR User Guide would
have been obvious to one of ordinary skill in the art, particularly in light of
Dr. Levy’s statements that a volume group is multiple logical volumes,
which are partitions that are managed as a single disk drive (Id. ¶¶ 39, 41).
See Am. Opp. 3–6.
iii. Mounting Configuration Files
Substitute claim 25 adds “mounting configuration files at the client
device from a file server” and that the client disk configuration information
is “from the mounted configuration files” to challenged claim 2. Mot. to
Amend, 2–3. Patent Owner argues that BMR Webpages and BMR User
Guide do not disclose mounting configuration files, which include client
disk configuration information, from a file server. Id. at 10–11.
Again, Patent Owner’s argument is confined to whether some of the
cited prior art anticipates the substitute claim, and fails to demonstrate that
the addition of the configuration files being mounted from the file server
causes the substitute claims to be novel and unobvious over all the cited
prior art and all prior art known to Patent Owner. See Am. Opp. 8.
iv. Network Boot
Substitute claim 26 adds “booting the client device via a network
boot” to challenged claim 11, and substitute claim 27 adds “wherein the
network boot is a standard network boot” to challenged claim 12. Mot. to
Amend, 3. Patent Owner argues that Deshayes does not disclose a network
boot and, thus, does not anticipate substitute claim 26. Id. at 10–11.
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Patent Owner’s argument, again, is confined to whether Deshayes
anticipates the substitute claims, and fails to demonstrate that the addition of
this feature causes the substitute claims to be novel and unobvious over all
the cited prior art and all prior art known to Patent Owner. Patent Owner
has not established that that the addition of a network boot causes the
substitute claim to be novel and unobvious over all the cited prior art and all
prior art known to Patent Owner, particularly in light of the fact that we have
determined, above, that BMR User Guide anticipates claim 11 and that BMR
User Guide discloses a network boot. Further, neither Patent Owner’s
Motion to Amend nor its supporting Declaration by Dr. Levy (Ex. 2013)
addresses the fact that the ’558 patent, itself, discloses that protocols bootp
or bootparam used in network booting are “standard” (Ex. 1001, col. 6, l.
61). Patent Owner’s Motion to Amend, thus, fails to demonstrate that the
addition of a network boot causes the substitute claim to be patentable over
not only the prior art of record, but also over all the prior art known to Patent
Owner.
For the reasons discussed below, Patent Owner’s Motion to Amend is
denied.
F. Motion to Exclude
Patent Owner filed a Motion to Exclude (Paper 33, “Mot. to
Exclude”) on March 31, 2014. Petitioner filed an Opposition to the Motion
to Exclude (Paper 40) and Patent Owner filed a Reply (Paper 44). The
Motion to Exclude seeks to exclude certain portions of Petitioner’s reply to
Patent Owner’s Response (Paper 27), Petitioner’s opposition to Patent
Owner’s Motion to Amend (Paper 28), and the DRAC reference. Mot. to
Exclude 1–14. We entered a determination as to the first two issues in our
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Order entered on April 7, 2014. Paper 35, 3–6. The exclusion of the DRAC
reference, thus, is the only outstanding issue in the Motion to Exclude. We
have not relied upon the DRAC reference in reaching our final decision on
patentability or our decision on the Motion to Amend. We do not need to
reach the issues raised by this motion regarding evidence that does not bear
upon our decision, and therefore the Motion to Exclude is dismissed as moot
to the extent it seeks exclusion of the DRAC reference.

III. CONCLUSION
We conclude that Petitioner has demonstrated by a preponderance of
the evidence that claims 1–15 are anticipated under 35 U.S.C. § 102 by
BMR User Guide, and that claims 11 and 14 are anticipated under 35 U.S.C.
§ 102 by Deshayes.
This is a final written decision of the Board under 35 U.S.C. § 318(a).
Parties to the proceeding seeking judicial review of this decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

IV. ORDER
Accordingly, it is hereby:
ORDERED that claims 1–15 of U.S. Patent No. 6,931,558 B1are held
unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Amend is
denied; and
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
dismissed to the extent it seeks exclusion of the DRAC reference.

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PETITIONER:

Lori A. Gordon
Michael Q. Lee
Byron L. Pickard
STERNE, KESSLER, GOLDSTEIN & FOX PLLC
lgordon-PTAB@skgf.com
mlee-PTAB@skgf.com
bpickard-ptab@skgf.com

PATENT OWNER:

Joseph J. Richetti
Lawrence G. Kurland
BRYAN CAVE LLP
joe.richetti@bryancave.com
lgkurland@bryancave.com