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Prior Art, Anyone? - The Parallel Iron/IPNav Patents That Rackspace Is Going After ~pj Updated 2Xs
Sunday, April 07 2013 @ 06:50 PM EDT

Rackspace is going after a troll, Parallel Iron and its "agent", IP Navigation (or IPNav), bringing a declaratory judgment of noninfringement action against Parallel Iron, because it owns the patents and is asserting them against the Open Source Hadoop distributed file system ( Parallel's patents being on storage-area-network and network-attached-storage equipment) and a breach of contract action against both. Since Rackspace says, as the H Online reports, one goal is "to highlight the tactics that IP Nav uses to divert hard-earned profits and precious capital from American businesses", I thought we could pitch in and spread the word.

And if you are free to do so, why not look for any prior art on the patents involved? There are three, but once again, we have a continuation loop, so it's really just one with some variations on the theme and some doodads. Don't read on if you are not supposed to look at patents.

Here's a portion of what Alan Schoenbaum, Senior Vice President, General Counsel and Secretary for Rackspace, tells us as background:

Last week, a patent assertion entity (PAE) called Parallel Iron sued Rackspace and 11 other defendants in Delaware for allegedly infringing on a trio of patents that Parallel Iron says cover the use of the open source Hadoop Distributed File System (HDFS). This is the newest in a series of 23 similar suits Parallel Iron has filed in Delaware since last June, which is when Parallel Iron was forced to dismiss an earlier set of lawsuits on another patent it could not enforce. Parallel Iron is the latest in a string of shell companies created to do nothing more than assert patent-infringement claims as part of a typical patent troll scheme of pressuring companies to pay up or else face crippling litigation costs . At least that is what it looks like on the surface.

In actuality, it is a bit more complicated. Our dealings with this particular troll reach back to December 2010 when IP Navigation Group (IP Nav), as agent for a supposedly secret patent owner, now known as Parallel Iron, accused Rackspace of patent infringement. IP Nav told us that they could not divulge the details of their infringement claims – not even the patent numbers or the patent owner – unless we entered into a “forbearance agreement” – basically, an agreement that we would not sue them. IP Nav was worried that as soon as we found out what their patents and claims actually were, Rackspace would sue to invalidate their patents or for a declaration that Rackspace does not infringe. We were unwilling to enter into such a one-sided agreement, so we negotiated a mutual forbearance agreement that required either party to give 30 days’ notice before bringing suit.... True to form, Parallel Iron sued Rackspace in Delaware without providing any notice, breaking the agreement they insisted upon.

We aren’t going to take it. We have sued IP Nav and Parallel Iron in federal court in San Antonio, Texas, where our headquarters is located (see the complaint [PDF] here). We are asking the court to award Rackspace damages for breach of contract, and to enter a declaratory judgment that Rackspace does not infringe Parallel Iron’s patents.

So, the target they are going after is Hadoop. Natch. As usual, as soon as you are successful, blood suckers show up wanting to drink your blood. Schoenbaum indicates that IPNav wanted Rackspace to sign a forbearance agreement before it would tell them which patents were involved because it was worried that if they revealed the patents, Rackspace would try to invalidate them by bringing a declaratory judgment action. So... here they are, doing just that, and if that is their fear, it probably wouldn't hurt to bring forward any prior art you happen to know about, if you are free to look. Rackspace and Red Hat recently felled another troll's patent, Uniloc, after all, even in Texas. This new litigation is in Texas also.

Google Patents has the three patents at issue in the complaint:

There's a fourth, 7,415,565 but it got dropped because when passing the patents from shell to shell, as I understand the story, some brainiac lawyer noticed that it was subject to a terminal disclaimer, requiring that the patent be commonly owned with an earlier patent, as the complaint describes the shuffle. When that was noticed, it resulted in more shuffling, Parallel Iron was born, and refiled, but it was too late for some of the targets, who had already paid to get the troll off their backs. Anyway, my point is that you don't need to do any prior art searching on that one.

If you notice, each patent has an October 31, 2002 priority date, so that date has to be beaten by a year. To qualify as prior art, for a year or more before the application was filed, the same functionality must have been patented or described in a printed publication in the US, or a foreign country, or it was in public use or on sale in the US. Keep in mind, though, that obviousness is also useful, so even materials that may not match all the claims perfectly might still be worth mentioning.

The '662 patent shows this:

Also published as
US7543177
US7958388
US20040088393
US20070174646
US20090240976
So there is a loop, and once again, just like with Nokia, we see continuations, and as was explained to us in the Nokia context, that often indicates an attempt to make the patent broader, to cover what the owner sees happening in the marketplace, not that their lawyers would agree that this is a correct description of what a continuation means.

The description of '622 says:

RELATED APPLICATIONS

The present application relates to the U.S. patent application Ser. No. 10/284,278 by M. James Bullen, Steven L. Dodd, David J. Herbison, and William T. Lynch, entitled “Methods and Systems for a Storage System Including and Improved Switch,” and the U.S. patent application Ser. No. 10/284,268 by M. James Bullen, Steven L. Dodd, David J. Herbison, and William T. Lynch, entitled “Methods and Systems for a Memory Section,” both of which are incorporated by reference herein in their entireties.

And the '177 patent says it's a contination of '622:
RELATED APPLICATIONS

The present application is a continuation of and claims benefit of U.S. patent application Ser. No. 10/284,199, filed Oct. 31, 2002, and relates to the U.S. patent application Ser. No. 10/284,278, filed Oct. 31, 2002 now U.S. Pat. No. 7,197,622, by M. James Bullen, Steven L. Dodd, David J. Herbison, and William T. Lynch, entitled “Methods and Systems for a Storage System Including an Improved Switch,” and the U.S. patent application Ser. No. 10/284,268, filed Oct. 31, 2002, by M. James Bullen, Steven L. Dodd, David J. Herbison, and William T. Lynch, entitled “Methods and Systems for a Memory Section,” all of which are incorporated by reference herein in their entireties.

And '388 is a continuation of '177:
RELATED APPLICATIONS

The present application is a continuation of and claims benefit of U.S. patent application Ser. No. 11/710,407, filed Feb. 26, 2007 now U.S. Pat. No. 7,543,177, which is a continuation of and claims benefit of U.S. patent application Ser. No. 10/284,199, filed Oct. 31, 2002, (now U.S. Pat. No. 7,197,662) and relates to the U.S. patent application Ser. No. 10/284,278, filed Oct. 31, 2002, by M. James Bullen, Steven L. Dodd, David J. Herbison, and William T. Lynch, entitled “Methods and Systems for a Storage System Including an Improved Switch,” and the U.S. patent application Ser. No. 10/284,268, filed Oct. 31, 2002, by M. James Bullen, Steven L. Dodd, David J. Herbison, and William T. Lynch, entitled “Methods and Systems for a Memory Section,” all of which are incorporated by reference herein in their entireties.

I don't know why being related to an application matters. I thought it had to be to an issued patent, and I have an email out to a patent lawyer, and when I hear back, I'll let you know. But let's assume that we have the date right for now.

[ Update: I heard back from my friend, and he says he doesn't know what they mean by "related". "The cover of the '662 patent doesn't claim priority to those other applications, and a review of PUBLIC Pair also shows no claim of priority. So the effective filing date for the '662 sould be the same as the actual filing date, which is October 31, 2002."]

How to Help Find Prior Art:

By the way, there is another new tool I just learned about, called Searcher.io. It's a paid service, $299 per patent, designed more for startups to find out if a planned product is going to hit the patent wall, and it's another to add to the collection.

You guys know where to find prior art, though, because you've lived computer history. These patents are all about data storage, three called the same thing, "Methods and systems for a storage system". Is there any prior art that you know about?

There are resources on Groklaw to help you figure out how to do prior art searching. Here's an article on how to do prior art searching, with links to audio from PubPat, as Ogg and mp3s. Here are the slides [PDF] that go with the audio, with details on what qualifies as prior art.

And here's Groklaw's dedicated Patents Reference page, which has a section on patent searching. There are references with links to others doing this type of work, under the heading Patent Busting. And under the heading Patent Resources there are links to info on USPTO's rules regarding prior art, along with their manuals. More patent references are on our Legal Research page.

What I personally have found useful is to look at the list of references listed on a patent, the prior art they list that they know about. Sometimes, if you go to the patents listed there and look at the references they list, etc., you do sometimes find gold.

You have to read the claims closely. They are similar, but the wording isn't identical. For example, here's claim 1 (out of 21) of '662:

1. A storage system, comprising:
one or more memory sections, including

one or more memory devices having storage locations for storing data, and

a memory section controller capable of detecting faults in the memory section and transmitting a fault message in response to the detected faults; and one or more switches, including

one or more interfaces for connecting to one or more external devices; and

a switch fabric connected to one or more memory sections and the external device interfaces and interconnecting the memory sections and the external device interfaces based on an algorithm; and

a management system capable of receiving fault messages from the memory section controllers and removing from service the memory section from which the fault message was received, and wherein the management system is further capable of determining an algorithm for use by a switch fabric in interconnecting the memory sections and the external device interfaces, and instructing the switch to execute the determined algorithm,

wherein an interface of the switch is connected to a non-volatile storage device, and wherein the management system is further capable of instructing the non-volatile storage device to load data into one or more of the memory sections via the switch.

The '388 is similar, but not identical in language:
1. A storage system, comprising:
one or more memory sections, including:

one or more memory devices having storage locations for storing data, and

a memory section controller capable of detecting faults in the memory section and transmitting a fault message in response to the detected faults;

one or more switches, including

one or more interfaces for connecting to one or more external devices;

a switch controller that executes software, including a routing algorithm; and

a selectively configurable switch fabric connected to one or more memory sections and the one or more interfaces and interconnecting the memory sections and the one or more interfaces based on the routing algorithm; and

a management system capable of receiving fault messages from the memory section controllers and inactivating the memory section corresponding to the fault message received by changing the routing algorithm, and wherein the management system is further capable of determining the routing algorithm for use by the selectively configurable switch fabric in interconnecting the memory sections and the one or more interfaces, and providing the routing algorithm to the switch controller.

And here's claim one of '177:
1. A storage system, comprising:
one or more memory sections, including:

one or more memory devices having storage locations for storing data, and

a memory section controller capable of detecting faults in the memory section and transmitting a fault message in response to the detected faults;

one or more switches, including:

one or more interfaces for connecting to one or more external devices;

a switch controller that executes software, including a routing algorithm; and

a selectively configurable switch fabric connected to one or more memory sections and the one or more interfaces and interconnecting the memory sections and the one or more interfaces based on the routing algorithm stored in the switch controller; and

a management system capable of receiving fault messages from the memory section controllers and inactivating the memory section corresponding to the fault message received by changing the routing algorithm, and wherein the management system is further capable of determining and changing the routing algorithm for use by the selectively configurable switch fabric in interconnecting the memory sections and the one or more interfaces, providing the determined routing algorithm to the switch controller, and instructing the switch controller to execute the determined routing algorithm.

My point is, you have to read the claims very carefully. For example, in claim 1 of the '622 patent, it says:
a switch fabric connected to one or more memory sections and the external device interfaces and interconnecting the memory sections and the external device interfaces based on an algorithm
In claim 1 of '388, it says:
a switch controller that executes software, including a routing algorithm; and a selectively configurable switch fabric connected to one or more memory sections and the one or more interfaces and interconnecting the memory sections and the one or more interfaces based on the routing algorithm
I have no idea if that is the same thing or just close but no cigar. Some of you will know. I'm just highlighting that you have to look closely at each of the claims. The rest isn't important. It's the claims that matter, not the description.

In fact, '388 has only 17 claims, not 21. And '177 has 19. So there are some differences. And as PubPat's Executive Director Dan Ravicher explained once, "To be worthwhile, the prior art has to be exactly the same or any differences between it and the targeted patent have to fall within the judicially narrowed concept of obviousness that exists in patent law today, which is much, much less than what most reasonable technologists would consider obvious."

So, you can either post anything useful in a comment or email me. Happy hunting!

Update 2: TechDirt has some fascinating background:

While some of the reporting out there suggests that Rackspace's reference to "the most notorious patent troll" is about the company Parallel Iron, it's really Spangenberg who is the target.

First, some background. Spangenberg has built up quite a business for himself by buying up awful patents and suing tons of companies, often getting them to pay up. He's claimed in the past that he likes to sue first and ask questions later. He famously got in trouble a few years back for shuffling some of his patents around and suing Daimler Chrysler twice over the same patent even though the company had settled the original lawsuit and licensed the patent. That didn't go well for Spangenberg, as he was told to pay $4 million. Remember that story, because it seems like Spangenberg's apparent sloppiness in actually living up to the terms of deals he signs may be part of why he's likely to be on the hook against Rackspace....

Rackspace also notes that it "has been forced to expend time and money to defend" this "wrongfully brought" lawsuit, suggesting they're going to seek attorneys' fees as well.


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