Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 12
`Entered: February 2, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ORACLE CORPORATION, NETAPP INC., and HUAWEI
`TECHNOLOGIES CO., LTD.,
`Petitioners,
`
`v.
`
`CROSSROADS SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01207
`Patent 7,051,147 B2
`
`
`Before HYUN J. JUNG, NEIL T. POWELL, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 12
`Entered: February 2, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ORACLE CORPORATION, NETAPP INC., and HUAWEI
`TECHNOLOGIES CO., LTD.,
`Petitioners,
`
`v.
`
`CROSSROADS SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01207
`Patent 7,051,147 B2
`
`
`Before HYUN J. JUNG, NEIL T. POWELL, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`IPR2014-01207
`Patent 7,051,147 B2
`
`
`I. INTRODUCTION
`Petitioners Oracle Corporation, NetApp Inc., and Huawei Technologies
`Co., Ltd. filed a Petition (Paper 1, “Pet.”) to institute an inter partes review of
`claims 14–39 of U.S. Patent No. 7,051,147 B2 (Ex. 1001, “the ’147 patent”)
`pursuant to 35 U.S.C. §§ 311–319. Patent Owner Crossroads Systems, Inc.
`filed a Preliminary Response (Paper 11, “Prelim. Resp.”). We have
`jurisdiction under 35 U.S.C. § 314, which provides that inter partes review
`may not be instituted unless “the information presented in the petition . . . and
`any [preliminary] response . . . shows that there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims challenged
`in the petition.” 35 U.S.C. § 314(a).
`Petitioners challenge claims 14–39 as obvious under 35 U.S.C. § 103.
`We institute an inter partes review as to claims 14–39 on certain grounds as
`discussed below.
`
`II. BACKGROUND
`A. Related Matters
`The parties indicate that the ’147 patent is asserted in co-pending
`matters captioned Crossroads Systems, Inc. v. Oracle Corp., Case No. 1-13-
`cv-00895-SS (W.D. Tex.), Crossroads Systems, Inc. v. Huawei Technologies
`Co. Ltd., Case No. 1-13-cv-01025-SS (W.D. Tex.), and Crossroads Systems,
`Inc. v. NetApp, Inc., Case No. 1-14-cv-00149 (W.D. Tex.). Pet. 2–3; Paper 9,
`3. The ’147 Patent is also involved in Case IPR2014-01209, and belongs to a
`family of patents that are the subject of multiple petitions for inter partes
`review, including IPR2014-01177, IPR2014-01197, IPR2014-01226,
`IPR2014-01233, and IPR2014-01463.
`
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`2
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`IPR2014-01207
`Patent 7,051,147 B2
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`
`B. The ’147 Patent (Ex. 1001)
`The ’147 patent, titled “Storage Router and Method for Providing
`Virtual Local Storage,” issued on May 23, 2006. The ’147 patent describes a
`storage router, storage network, and method that provide virtual local storage
`on remote Small Computer System Interface (SCSI) storage devices to Fibre
`Channel (FC) devices. Ex. 1001, Abstract; 1:23–26. “A plurality of Fibre
`Channel devices, such as workstations, are connected to a Fibre Channel
`transport medium, and a plurality of SCSI storage devices are connected to a
`SCSI bus transport medium.” Id. at 2:11–14. The storage router interfaces
`between the Fibre Channel transport medium and the SCSI bus transport
`medium, maps between the workstations and the SCSI storage devices, and
`implements access controls for storage space on the SCSI storage devices. Id.
`at 2:14–19. “The storage router then allows access from the workstations to
`the SCSI storage devices using native low level, block protocol in accordance
`with the mapping and the access controls.” Id. at 2:19–22.
`
`C. Illustrative Claim
`Claim 14 of the ’147 patent is reproduced below:
`14. An apparatus for providing virtual local storage on a
`remote storage device to a device operating according to a Fibre
`Channel protocol, comprising:
`a first controller operable to connect to and interface with a first
`transport medium, wherein the first transport medium is operable
`according to the Fibre Channel protocol;
`a second controller operable to connect to and interface with a
`second transport medium, wherein the second transport medium
`is operable according to the Fibre Channel protocol; and
`a supervisor unit coupled to the first controller and the second
`controller, the supervisor unit operable to control access from the
`device connected to the first transport medium to the remote
`storage device connected to the second transport medium using
`
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`IPR2014-01207
`Patent 7,051,147 B2
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`native low level, block protocols according to a map between the
`device and the remote storage device.
`Ex. 1001, 11:5–22.
`
`D. The Prior Art
`
`Petitioners rely on the following prior art:
`1. CRD-5500 SCSI RAID Controller User’s Manual (1996)
`(“CRD-5500 User’s Manual”) (Ex. 1003);
`2. CRD-5500 SCSI RAID Controller Data Sheet (Dec. 4,
`1996) (“CRD-5500 Data Sheet”) (Ex. 1004);
`3. Smith et al., Tachyon: A Gigabit Fibre Channel Protocol
`Chip, HEWLETT-PACKARD J. (Oct. 1996) (“Smith”) (Ex.
`1005);
`4. U.S. Patent No. 6,219,771 B2, issued Apr. 17, 2001
`(“Kikuchi”) (Ex. 1006);
`5. U.S. Patent No. 6,073,209, issued June 6, 2000 (“Bergsten”)
`(Ex. 1007); and
`6. JP Patent Application Pub. No. Hei 5[1993]-181609,
`published July 23, 1993 (“Hirai”) (Ex. 1008).
`E. The Asserted Grounds
`Petitioners challenge claims 14–39 of the ’147 patent on the following
`grounds:
`References
`CRD-5500 User’s Manual, CRD-
`5500 Data Sheet, and Smith
`Kikuchi and Bergsten
`
`Basis
`§ 103
`
`§ 103
`
`Claims Challenged
`14–39
`
`14–39
`
`Bergsten and Hirai
`
`§ 103
`
`14–39
`
`
`
`F. Claim Interpretation
`The Board interprets claim terms in an unexpired patent using the
`“broadest reasonable construction in light of the specification of the patent in
`
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`Patent 7,051,147 B2
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`which [they] appear[].” 37 C.F.R. § 42.100(b); see also Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Under the
`broadest reasonable interpretation standard, claim terms are given their
`ordinary and customary meaning in view of the specification, as would be
`understood by one of ordinary skill in the art at the time of the invention. In
`re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). For purposes
`of this Decision, we find that no express claim construction is necessary.
`III. ANALYSIS
`We turn now to Petitioners’ asserted grounds of unpatentability and
`Patent Owner’s arguments in the Preliminary Response to determine whether
`Petitioners have met the threshold standard of 35 U.S.C. § 314(a).
`
`A. Asserted Ground Based on CRD-5500 User’s Manual, CRD-
`5500 Data Sheet, and Smith
`
`Petitioners challenge claims 14–39 as obvious under 35 U.S.C. § 103
`over CRD-5500 User’s Manual, CRD-5500 Data Sheet, and Smith. Pet. 12–
`27. To support this assertion, Petitioners rely on the Declaration of Professor
`Jeffrey S. Chase, Ph.D. (Ex. 1010, “Chase Declaration”).
`The Petition states that “[t]he explanations set forth below summarize
`the grounds of unpatentability. . . . Pinpoint citations are provided to the
`declaration of Professor Chase (Ex. 1010) which describes in further detail the
`combined system, supporting rationale, and the correspondence to the claimed
`subject matter.” Pet. 11–12. The Petition introduces and summarizes the
`CRD-5500 User’s Manual, CRD-5500 Data Sheet, and Smith references. Pet.
`12–16. Petitioners then assert, in a section titled “The Combined System of
`CRD-5500 User Manual, CRD-5500 Data Sheet and Smith,” that the
`references, in combination, disclose the claimed subject matter. Id. at 16–19
`
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`(including a figure representing the hypothetical combined system on page
`18). In the “Correspondence between Claims 14–39 and the Combined
`System of CRD-5500 and Smith” section, Petitioners alternately refer to the
`references and to paragraphs in the Chase Declaration in support of their
`arguments. Id. at 19–27. Petitioners present specific arguments with respect
`to claims 14–20, and then, for claims 21–39, rely on their arguments for
`claims 14–20 and the Chase Declaration. Id. at 24–27.
`Petitioners argue that the disclosures of CRD-5500 User’s Manual and
`CRD-5500 Data Sheet disclose substantially all the limitations of claims 14–
`20, apart from the “first controller” and “second controller,” which Petitioners
`argue are disclosed by the incorporation of Smith’s Tachyon chip into an FC
`host interface module and into a FC storage interface module, respectively.
`Id. at 19–22. Petitioners further argue that it would have been obvious to one
`of ordinary skill in the art to combine the CRD-5500 references and Smith “to
`enhance the communication and storage options of a host device on a FC
`transport medium, benefit from the ‘Host LUN Mapping’ feature of the CRD-
`5500 controller, and avail the host computing device of ubiquitous mass
`storage applications (e.g., RAID).” Id. at 16.
`Patent Owner argues that Petitioners have failed to establish the
`differences between the patent and the prior art. Prelim. Resp. 33.
`Petitioners, however, indicate that strong motivation existed “to adopt the
`CRD-5500 Data Sheet’s suggestion to enhance the CRD-5500 controller with
`FC connectivity for host and/or storage device modules designed with
`Tachyon chips of Smith.” Pet. 16–17. This identifies a difference between the
`claimed invention and the CRD-5500 references. Moreover, Petitioners’
`citations in the “Correspondence between Claims 14–39 and the Combined
`
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`IPR2014-01207
`Patent 7,051,147 B2
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`System of CRD-5500 and Smith” section map the claim elements to the CRD-
`5500 User’s Manual (Ex. 1003) and for certain elements, additionally map to
`Smith (Ex. 1005). Pet. 19–27.
`Patent Owner further argues that one of ordinary skill in the art would
`not combine the references as suggested by Petitioners (Prelim. Resp. 34), and
`that Petitioners have failed to provide sufficient articulated reasoning to
`support their proposed obviousness ground (Prelim. Resp. 36). In addition to
`the three reasons referenced above, Petitioners argue that the “combination is
`specifically suggested in the CRD-5500 Data Sheet, which explains that
`‘CMD's advanced ‘Viper’ RAID architecture and ASICs were designed to
`support tomorrow’s high speed serial interfaces, such as Fiberchannel.’”
`Pet. 16. Notwithstanding Patent Owner’s argument that this brochure “is
`likely to contain puffery or theoretical applications of a product” (Prelim
`Resp. 35), on this record, and for the purposes of institution, we consider
`Petitioners to have provided sufficient articulated reasoning to combine the
`references.
`For the reasons above, based on information in the Petition and
`Preliminary Response, we determine that Petitioners have demonstrated a
`reasonable likelihood that claims 14–39 are unpatentable under 35 U.S.C.
`§ 103(a) over CRD-5500 User’s Manual, CRD-5500 Data Sheet, and Smith.
`B. Asserted Ground Based on Kikuchi and Bergsten
`Petitioners challenge claims 14–39 as obvious under 35 U.S.C. § 103
`over Kikuchi and Bergsten. Pet. 27–42.
`Petitioners assert, in a section titled “The Combined System of Kikuchi
`and Bergsten,” that the references, in combination, disclose the claimed
`subject matter. Id. at 30–33. Petitioners argue that “[i]n the combined system
`
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`IPR2014-01207
`Patent 7,051,147 B2
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`of Kikuchi and Bergsten, multi-protocol intercommunication capabilities of
`the command and interpretation unit described in Kikuchi are enhanced by
`incorporating Bergsten’s emulation drivers 21 and physical drivers 22, which
`are detailed in Bergsten with a greater degree of specificity.” Id. at 30–31.
`Petitioners emphasize that “[t]o the extent that Kikuchi fails to explicitly detail
`every nuance of FCP-based encapsulation and de-encapsulation, the details of
`Bergsten’s emulation drivers 21 and physical drivers 22 more than sufficiently
`provide specific details.” Id. at 31. In the “Correspondence between Claims
`14–39 and the Combined System of Kikuchi and Bergsten” section,
`Petitioners alternately refer to the references and to paragraphs in the Chase
`Declaration to support their arguments. Id. at 33–42. Petitioners present
`specific arguments with citations to the references for claims 14–20, and then,
`for claims 21–39, rely primarily on their arguments for claims 14–20 and the
`Chase Declaration. Id. at 39–42.
`Patent Owner argues that Petitioners “compare the claimed invention to
`a theoretical ‘combined system’ that never existed, but do not conduct the
`critical inquiry identifying the differences between the claimed invention and
`the prior art.” Prelim. Resp. 39. Petitioners’ citations in the “Correspondence
`between Claims 14–39 and the Combined System of Kikuchi and Bergsten”
`section map the claim elements to Kikuchi (Ex. 1006) and to Bergsten (Ex.
`1007). Pet. 33–42. Petitioners also indicate that Kikuchi may demonstrate a
`lack of explicit disclosure of the nuances of FCP-based encapsulation and de-
`encapsulation, which identifies a difference between the claimed invention
`and Kikuchi that Bergsten’s emulation drivers 21 and physical drivers 22 may
`supply. Id. at 31. Such an identification, although couched in conditional
`
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`IPR2014-01207
`Patent 7,051,147 B2
`
`terms, constitutes a difference between the claimed invention and Kikuchi that
`Bergsten is cited to supplement.
`Patent Owner also argues that Petitioners have failed to provide
`sufficient articulated reasoning to support Petitioners’ proposed obviousness
`ground. Prelim. Resp. 39. Petitioners argue that one skilled in the art at the
`relevant time “would combine the Kikuchi and Bergsten systems in this way
`in order to improve the Kikuchi system with the advantage of virtualized,
`networked storage.” Pet. 32–33 (citing Ex. 1010 ¶¶ 142–147). On this
`record, and for the purposes of institution, we consider Petitioners to have
`provided sufficient articulated reasoning to combine the references.
`Accordingly, we conclude Petitioners have demonstrated a reasonable
`likelihood of prevailing on their assertion that claims 14–39 are obvious over
`Kikuchi and Bergsten.
`
`C. Asserted Grounds Based on Bergsten and Hirai
`
`Petitioners challenge claims 14–39 as unpatentable over Bergsten and
`Hirai. Pet. 42–55.
`Petitioners assert, in a section titled “The Combined System of Bergsten
`and Hirai,” that the references, in combination, disclose the claimed subject
`matter. Pet. 44–47. Petitioners argue that “[i]n the combined system [of
`Bergsten and Hirai], Hirai’s access controls are incorporated into Bergsten’s
`storage controllers.” Pet. 45. In the “Correspondence between Claims 14–39
`and the Combined System of Bergsten and Hirai” section, Petitioners
`alternately refer to the references and to paragraphs in the Chase Declaration
`in support of their arguments. Id. at 47–55. Petitioners present specific
`arguments with citations to the references for claims 14–20, and then, for
`
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`IPR2014-01207
`Patent 7,051,147 B2
`
`claims 21–39, rely primarily on their arguments for claims 14–20 and the
`Chase Declaration. Id. at 52–55.
`Patent Owner argues that Petitioners “compare the claimed invention to
`a theoretical ‘combined system’ that is known to have not existed at the time
`the invention was made,” but “failed to conduct the prerequisite factual
`inquiry of identifying the differences between the claimed invention and the
`prior art.” Prelim. Resp. 49. Petitioners’ citations in the “Correspondence
`between Claims 14–39 and the Combined System of Bergsten and Hirai”
`section map the claim elements to Bergsten (Ex. 1007) and, for certain
`elements, to Hirai (Ex. 1008). Pet. 47–55. Petitioners state that Patent Owner
`may attempt to argue that “Bergsten may lack explicit and nuanced detail
`regarding the implementation of access controls and the ramifications of
`write-protecting data upon a single storage controller of a daisy-chained
`storage controller network,” and further state that “the access control map
`described in Hirai is detailed with a greater degree of particularity.” Id. at 45.
`Such an identification identifies a difference between the claimed invention
`and Bergsten that Hirai is cited to fill.
`Patent Owner also argues that Petitioners have failed to provide
`sufficient articulated reasoning to support their proposed obviousness ground.
`Prelim. Resp. 49. Petitioners argue that “[a]n artisan skilled in network
`storage during the relevant timeframe would combine the Bergsten and Hirai
`teachings . . . in order to provide additional levels of granularity to the access
`controls of the Bergsten system based on the mapping-based access controls
`of Hirai.” Pet. 46 (citing Ex. 1010 ¶¶ 247–251). For purposes of institution,
`Petitioners’ argument that it would have been obvious to combine Bergsten’s
`
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`IPR2014-01207
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`
`storage controller with Hirai’s access controls is reasonable and supported by
`record evidence.
`Accordingly, we conclude Petitioners have demonstrated a reasonable
`likelihood of prevailing on their assertion that claims 14–39 are obvious over
`Bergsten and Hirai.
`D. Showing Where Each Claim Element Can Be Found in the References
`Patent Owner alleges that Petitioners fail “to show where the claim
`limitations can be found in the references and fail to provide a detailed
`explanation of the evidence” and instead “improperly use the 193-page Chase
`declaration to provide the necessary explanation, effectively expanding the
`petition well over sixty pages in violation of 37 C.F.R. § 42.24(a)(1)(i).”
`Prelim. Resp. 15. Patent Owner provides specific examples of Petitioners’
`reliance on the Chase Declaration to show where claim limitations can be
`found in the references. Id. at 16 (citing Pet. 21–22). Namely, regarding the
`supervisor unit of claim 1, Patent Owner argues that the Petition “includes
`about a half page of argument with two references to the specific portions of
`the cited art that allegedly show the supervisor unit as claimed.” Id. In this
`case, however, Petitioners’ half page of argument nevertheless includes
`citations to the CRD-5500 User’s Manual. See Pet. 21 (citing Ex. 1003, 1–1,
`1–3, 4–5). Petitioners appear to correlate the relevant claim elements to
`portions of the relevant references as well as the Chase Declaration. Thus, we
`are not persuaded that Petitioners have incorporated arguments from the
`Chase Declaration improperly in this case.
`E. Consideration of Cited Art in Reexamination
`Patent Owner argues that the Patent Office has already considered the
`CRD-5500 User’s Manual, CRD-5500 Data Sheet, Smith, Kikuchi, and
`
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`IPR2014-01207
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`Bergsten during prosecution of the ’147 Patent. Prelim. Resp. 19. Patent
`Owner further argues that the Patent Office has already considered CRD-5500
`User’s Manual, CRD-5500 Data Sheet, Smith, Kikuchi, and Bergsten in the
`reexamination of patents related to the ’147 patent, confirming at least one
`related patent over the same arguments as those presented under the First
`Ground. Id. at 20, 27, 31. We are not persuaded. Although the references
`may have been cited during prosecution of the present patent or reexamination
`of a related patent or patents, Patent Owner does not explain how Petitioners’
`presently presented arguments regarding these references were previously
`considered. Furthermore, although Patent Owner alleges similarity among the
`related patents and the ’147 patent, Patent Owner does not explain specifically
`how the related patents and the arguments presented in reexamination
`correlate to the ’147 patent. Without such details, and on this record, we
`decline to deny institution of inter partes review on this basis.
`
`F. Conclusion
`
`We conclude that Petitioners have demonstrated a reasonable likelihood
`of prevailing with respect to their challenge of claims 14–39 of the ’147
`patent. We have not made, however, a final determination under 35 U.S.C.
`§ 318(a) with respect to the patentability of the challenged claims.
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that inter partes review is authorized on the following
`grounds of unpatentability asserted in the Petition:
`Claims 14–39 under 35 U.S.C. § 103(a) over CRD-5500 User’s
`Manual, CRD-5500 Data Sheet, and Smith;
`
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`IPR2014-01207
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`
`
`Claims 14–39 under 35 U.S.C. § 103(a) over Kikuchi and Bergsten; and
`Claims 14–39 under 35 U.S.C. § 103(a) over Bergsten and Hirai;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ’147 patent is hereby instituted commencing on the entry
`date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4,
`notice is hereby given of the institution of a trial; and
`FURTHER ORDERED that the trial is limited to the grounds identified
`above, and no other ground set forth in the Petition as to any challenged claim
`is authorized.
`
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`IPR2014-01207
`Patent 7,051,147 B2
`
`
`
`PETITIONER:
`
`Greg Gardella
`Scott McKeown
`OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P
`cpdocketgardella@oblon.com
`cpdocketmckeown@oblon.com
`
`
`PATENT OWNER:
`
`Steven Sprinkle
`John Adair
`SPRINKLE IP LAW GROUP
`crossroadsipr@sprinklelaw.com
`
`Russell Wong
`James Hall
`WONG, CABELLO, LUTSCH, RUTHERFORD & BRUCCULERI, LLP
`CrossroadsIPR@counselip.com
`
`
`
`14
`
`
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