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 IPR2014-01209
`Patent No. 7,051,147
`____________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`

`
`TABLE OF CONTENTS
`
`
`I. 
`INTRODUCTION ............................................................................................ 1 
`II.  HISTORY OF THE ‘972 PATENT FAMILY ................................................. 2 
`III.  TRIAL SHOULD NOT BE INSTITUTED BECAUSE OF
`MULTIPLE, FUNDAMENTAL DEFICIENCIES IN THE
`PETITION ....................................................................................................... 10 
`A.  Petitioners have failed to comply with 37 C.F.R. § 42.104 by
`failing to set forth how the challenged claims are to be
`construed. .................................................................................................... 10 
`B.  The Petition fails to show where each claim element can be
`found in the references. ............................................................................... 14 
`IV.  TRIAL SHOULD NOT BE INSTITUTED BECAUSE THE
`OFFICE HAS CONSIDERED THE CITED ART IN
`REEXAMINATION ....................................................................................... 18 
`A.  The CRD-5500 User Manual, CRD-5500 Data Sheet, Smith,
`Kikuchi and Bergsten were submitted to the Patent Office
`during prosecution of the ’147 Patent. ........................................................ 19 
`B.  The Patent Office has already considered the CRD-5500 User
`Manual, CRD-5500 Data Sheet, Smith, Kikuchi and Bergsten. ................. 20 
`1.  First Ground - The Patent Office has already considered the
`CRD-5500 User Manual, CRD-5500 Data Sheet and Smith. ................. 20 
`2.  The Patent Office confirmed the ’035 Patent over the same
`arguments as those presented under the First Ground. ........................... 29 
`3.  Second through Fifth Grounds – The Patent Office has
`already considered Bergsten and Kikuchi. .............................................. 33 
`V.  TRIAL SHOULD NOT BE INSTITUTED BECAUSE
`PETITIONERS HAVE NOT ESTABLISHED THAT
`PETITIONERS ARE ENTITLED TO RELIEF ............................................. 34 
`A.  First Ground – CRD-5500 User Manual, CRD-5500 Data
`Sheet, and Smith. ......................................................................................... 36 
`1.  Petitioners have failed to establish the differences between
`the patent and the prior art. ..................................................................... 36 
`
`i
`
`

`
`2.  One of ordinary skill in the art would not combine the
`references as suggested by petitioners. ................................................... 37 
`3.  Petitioners have failed to provide sufficient articulated
`reasoning to support their proposed obviousness ground. ...................... 39 
`B.  Second and Third Grounds – Kikuchi, Bergsten, and Smith....................... 41 
`1.  Petitioners have failed to establish the differences between
`the patent and the prior art. ..................................................................... 41 
`2.  Petitioners have failed to provide sufficient articulated
`reasoning to support their proposed obviousness ground. ...................... 42 
`C.  Fourth and Fifth Grounds – Bergsten, Hirai, and Smith. ............................ 51 
`1.  Petitioners have failed to establish the differences between
`the patent and the prior art. ..................................................................... 51 
`2.  Petitioners have failed to provide sufficient articulated
`reasoning to support their proposed obviousness ground ....................... 52 
`VI.  CONCLUSION ............................................................................................... 53 
`
`
`
`
`
`ii
`
`

`
`TABLE OF AUTHORITIES
`
`
`Cases
`
`Crossroads Systems (Texas), Inc. v. Chaparral Network Storage, Inc.
` 56 Fed. Appx. 502 (Fed. Cir. 2003) ...................................................................... 3
`
`Crossroads Systems, (Texas), Inc. v. Chaparral Network Storage, Inc.
` C.A. No. 00-cv-217 (W.D. Tex. – Austin Div., filed March 31, 2000) ............... 3
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .................................................................................................... 35
`
`KSR Int’l Co. v. Teleflex, Inc.
` 550 U.S. 398 (2007) ............................................................................................ 36
`
`NeoMagic Corp. v. Trident Microsystems, Inc.,
` 287 F.3d 1062 (Fed. Cir. 2002)........................................................................... 11
`
`Administrative Cases
`
`Apple Inc. v. Rensselaer Polytechnic Institute
`
`IPR2014-00077, Paper 14 (PTAB June 13, 2014) ....................................... 15, 18
`
`Avaya Inc. v. Network-1 Security Solutions, Inc.
`
`IPR2013-00071, Paper 32 (PTAB July. 2, 2013) ............................................... 13
`
`E.I. du Pont de Nemours and Co. v. Monsanto Tech. LLC.
`
`IPR2014-00332, Paper 16 (PTAB July 11, 2014) .............................................. 12
`
`Fidelity Nat'l Information Services, Inc. v. DataTreasury Corp,.
`
`IPR2014-00489, Paper 9 (PTAB Aug. 13, 2014) ......................................... 15, 18
`
`Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.
` CBM-2012-00003, Paper 7 (PTAB Oct. 25, 2012) .......................... 35, 36, 41, 51
`
`Mentor Graphics Corp. v. Synopsis Inc.
`
`IPR2014-00287, Paper 17 (PTAB Aug. 1, 2014) ............................................... 12
`
`iii
`
`

`
`
`Naughty Dog, Inc. v. McRO, Inc.
`
`IPR2014-00197, Paper 11 (PTAB May 28, 2014) ....................................... 36, 40
`
`Norman Noble, Inc. v. NUTech Ventures
`
`IPR2013-00101, Paper 14 (PTAB June 20, 2013) ............................................. 11
`
`Symantec Corp. v. RPost Commn’s Ltd.
`
`IPR2014-00353, Paper 15 (PTAB July 15, 2014) ........................................ 15, 18
`
`
`
`Other Authorities
`
`35 U.S.C. § 103(a) ................................................................................ 35, 37, 41, 52
`
`35 U.S.C. § 312(a) ............................................................................................ 13, 14
`
`35 U.S.C. § 314(a) .............................................................................................. 2, 41
`
`35 U.S.C. § 325(d) ...................................................................................... 18, 29, 33
`
`37 C.F.R. § 1.104(c) ................................................................................................ 34
`
`37 C.F.R. § 42.6(a) .................................................................................................. 15
`
`37 C.F.R. § 42.20(c) .......................................................................... 2, 34, 37, 42, 52
`
`37 C.F.R. § 42.22(a) ...................................................................................... 2, 14, 18
`
`37 C.F.R. § 42.24(a) ...................................................................................... 2, 14, 15
`
`37 C.F.R. § 42.104(b) ....................................................................... 2, 10, 13, 14, 18
`
`77 Fed. Reg. 48,756 (Aug. 14, 2012) ..................................................................... 18
`
`
`
`iv
`
`

`
`I.
`
`INTRODUCTION
`
`Patent Owner Crossroads Systems, Inc. (“Patent Owner”) submits this
`
`Preliminary Response to the Petition seeking inter partes review of United States
`
`Patent No. 7,051,147 (the “’147 Patent”) (Ex. 1001).
`
`The Petitioners assert five obviousness challenges to the ’147 Patent:
`
`First Ground: Claims 1-13 in light of the combination of the CRD-5500
`
`SCSI RAID Controller User’s Manual (“CRD-5500 User Manual”, Ex. 1003),
`
`CRD-5500 SCSI RAID Controller Data Sheet (“CRD-5500 Data Sheet”, Ex.
`
`1004), and Smith et al., Tachyon: A Gigabit Fibre Channel Protocol Chip,
`
`Hewlett-Packard Journal, October 1996 (“Smith”, Ex. 1005);
`
`Second Ground: Claims 1-4 and 6-13 in light of the combination of U.S.
`
`Patent No. 6,219,771 to Kikuchi et al. (“Kikuchi”, Ex. 1006) and U.S. Patent No.
`
`6,073,209 to Bergsten (“Bergsten”, Ex. 1007);
`
`Third Ground: Claim 5 in light of the combination of Kikuchi, Bergsten and
`
`Smith;
`
`Fourth Ground: Claims 1-4 and 6-13 in light of the combination of Bergsten
`
`in view of JP Patent Application Publication No. Hei 5[1993]-181609 to Hirai
`
`(“Hirai”, Ex. 1008); and
`
`Fifth Ground: Claim 5 in view of the combination of Bergsten, Hirai and
`
`Smith.
`
`1
`
`

`
`The Petition should be denied because the Petition has a multitude of defects
`
`including (1) expanding the Petition beyond the strict 60-page limit through
`
`incorporation of the Chase declaration (Ex. 1010); (2) failing to set forth claim
`
`constructions of critical terms; (3) failing to set forth how a construed claim is
`
`unpatentable; and (4) failing to identify where each element of a construed claim
`
`can be found in the prior art. 37 C.F.R. § 42.24(a)(1)(i); 37 C.F.R. § 42.22(a); 37
`
`C.F.R. § 42.104(b)(3)-(5). Furthermore, the Petition should be denied because it
`
`fails to demonstrate that Petitioners are entitled to relief and fails to establish a
`
`reasonable likelihood that Petitioners will prevail with respect to at least one claim.
`
`35 U.S.C. § 314(a); 37 C.F.R. § 42.20(c).
`
`II. HISTORY OF THE ‘972 PATENT FAMILY
`U.S. Patent No. 5,941,972 (the “’972 Patent”) (Exhibit 2001) issued on
`
`August 24, 1999. The ’972 Patent is the progenitor of a number of U.S. and
`
`foreign patents, one of which is the ’147 Patent challenged here. The
`
`specifications of the ’147 and ’972 patents are identical, save the discussion of
`
`related applications. Other children of the ’972 patent include U.S. Patent Nos.
`
`6,425,035 (the “’035 Patent”); 7,934,041 (the “’041 Patent”); and 7,987,311 (the
`
`“’311 Patent”). Like the ’147 Patent, these patents are currently the subject of
`
`similar petitions for inter partes review filed by Petitioners and other parties, all of
`
`which are defendants in on-going litigation pending in the Western District of
`
`2
`
`

`
`Texas.1
`
`At the time of the invention in May 1997, inventors Geoff Hoese and Jeffery
`
`Russell were engineers employed by Patent Owner, Crossroads Systems in Austin,
`
`Texas. Crossroads, founded in 1996, develops advanced storage products, has
`
`been awarded more than 100 patents, and created the storage router market. To
`
`protect its intellectual property, Crossroads began enforcing its rights to the
`
`inventions claimed in the ’972 patent and its progeny in 2000. That year,
`
`Crossroads sued Chaparral Network Storage in the Western District of Texas for
`
`infringing the ’972 patent. Crossroads Systems, (Texas), Inc. v. Chaparral
`
`Network Storage, Inc., C.A. No. 1:00-cv-00217 (W.D. Tex. – Austin Div., filed
`
`March 31, 2000).
`
`After the district court denied Chaparral’s motion for summary judgment of
`
`invalidity based on Kikuchi, the case proceeded to trial. Ex. 2002. The jury found
`
`Chaparral liable for infringement and returned a verdict in favor of Crossroads,
`
`whereupon a final judgment was entered. Ex. 2003. The judgment was appealed
`
`to the Federal Circuit, which affirmed. Crossroads Systems (Texas), Inc. v.
`
`Chaparral Network Storage, Inc., 56 Fed. Appx. 502 (Fed. Cir. 2003).
`
`
`1 Eight petitions are pending against these patents: IPR2014-01177, -01197,-01207,
`
`-01209, -01226, -01233, -01463, and -01544.
`
`3
`
`

`
`Since filing the Chaparral case, Crossroads has sued other entities to
`
`enforce patents in the ’972 Patent family. Although none have since proceeded to
`
`trial, the district court has issued claim construction opinions in the following
`
`cases:
`
`Lead Defendant
`
`Case No.
`
`Patent in Suit
`
`Markman Order
`
`Chaparral Network
`Storage, Inc.
`
`Pathlight
`Technology, Inc.
`
`Dot Hill Systems
`Corp.
`
`3PAR, Inc.
`
`
`
`1:00-cv-00217
`
`5,941,972
`
`Ex. 2004
`
`
`1:00-cv-00248
`
`5,941,972
`
`Ex. 2004
`
`1:03-cv-00754
`
`1:10-cv-00652
`
`5,941,972 and
`6,425,035
`
`6,425,035 and
`7,051,147
`
`Exs. 2005; 2006
`
`Exs. 2007; 2008
`
`During the Dot Hill case in 2004, multiple ex parte requests for
`
`reexamination of the ’035 Patent were filed, including Reexamination Control
`
`Number 90/007,125 (the “’125 Reexamination”) and Reexamination Control No.
`
`90/007,317. Those two proceedings were ultimately consolidated. See Ex. 1032 at
`
`242-44. At the same time, ex parte reexaminations were also initiated on the
`
`grandparent of the ’147 patent, U.S. Patent No. 6,421,753 (see Ex. 1025) and the
`
`ultimate parent, the ’972 patent (see Ex. 1024).
`
`All told, over 150 references were considered during reexamination of
`
`the ’035 Patent, ’753 Patent and ’972 Patent, with approximately 100 being
`
`4
`
`

`
`analyzed via detailed claim charts. See section IV, below. The reexamination
`
`proceedings for the ’035 patent lasted over two years, from July 2004 to August
`
`2006. After multiple office actions and responses, the ’035 Patent emerged from
`
`reexamination with all claims confirmed and unchanged. Ex. 1032 at 5.2 The
`
`NIRC in the ‘035 Reexam issued on September 23, 2005, well before notice of
`
`allowance for the ‘147 Patent in January 2006. See Ex. 1032 at 11-12; Ex. 1002 at
`
`75.
`
`Technical Background
`
`Broadly stated, the inventions claimed in the ’147 Patent concern a device
`
`called a “storage router,” and methods for providing virtual local storage on remote
`
`storage devices to computers, while providing access controls and allowing access
`
`using native low level block protocol (“NLLBP”).
`
`Prior to the invention, host computers would access storage devices either
`
`(1) locally via a parallel bus such as a SCSI bus, or (2) remotely over a network.
`
`However, both of these prior art systems had limitations that the invention of
`
`the ’147 Patent overcomes. Computers access local storage devices using an
`
`NLLBP. Ex. 1001, 1:49-51. NLLBPs allow for simple direct access to local
`
`
`2 All claims of the ’972 and ’753 Patents were also confirmed during
`
`reexamination.
`
`5
`
`

`
`storage in a fast efficient manner, but lack security controls. Id. at 1:51-54.
`
`NLLBPs were sent to local storage over parallel bus transport mediums, such as
`
`the SCSI bus. Id. at 1:30-35. However, such transport mediums “provide for a
`
`relatively small number of devices to be attached over relatively short distances.”
`
`Id.
`
`To overcome the deficiencies of connecting to storage over parallel busses,
`
`computers use serial network interconnects to connect to remote storage. Serial
`
`interconnects provide the capability to connect a relatively large number of devices
`
`over larger distances. Id. at 1:36-38, 54-56.
`
`At the time of Crossroads’ invention, network servers were used to provide
`
`access to data stored on remote storage. Figure 1 of the patent shows such a
`
`network server arrangement. See generally id. at 1:54-58; 3:12-26. This
`
`arrangement, however, was slow and cumbersome, causing bottlenecks and delays
`
`when accessing data in remote storage. Remote access was slowed down, at least
`
`in part, because the computer needed to use a high level network protocol that the
`
`network server had to translate into a NLLBP request. Id. at 1:58-61. As
`
`described in the ’147 Patent, a computer accessed data at the remote network
`
`server “through high level file system protocols.” Id. at 3:29-34. The network
`
`server had to translate the high level file system requests (such as NFS or other
`
`network file system request) into NLLBPs used to communicate with the storage
`
`6
`
`

`
`devices connected to the network server. Id. at 3:34-36.
`
`Because it takes the computer time to create a high level network protocol
`
`containing a file system request, and it takes the server time to re-construct a
`
`NLLBP from that network protocol (which the server needs to do to communicate
`
`with the storage device), the introduction of a network server into the system
`
`creates a bottleneck which slows down access to remote storage devices. Id. at
`
`3:27-38.
`
`Thus, prior to the present invention, those wishing to implement centralized
`
`storage at a remote location for networked devices were typically forced to use a
`
`relatively slow network server solution that required the use of network protocols
`
`that included high level file system requests. These prior art systems did not
`
`provide remote storage that could be accessed at the speeds achieved by using an
`
`NLLBP.
`
`The Invention Solves the Problems Associated with Network Servers
`
`The storage router of the ’147 Patent provides the ability to control host
`
`access to remote storage, while allowing access using NLLBPs rather than high
`
`level network protocols containing file system requests. This does away with the
`
`complex and time consuming task of translating the high level network protocols
`
`into NLLBP.
`
`The Crossroads invention provides “virtual local storage.” “Virtual local
`
`7
`
`

`
`storage” is storage space in a storage device that is remotely connected to a
`
`computer that appears as local storage to the computer. Id. at 4:60-66 (“Storage
`
`router 56 provides centralized control of what each workstation sees as its local
`
`drive . . . Consequently the storage space considered by the workstation 58 to be its
`
`local storage is actually a partition (i.e., logical storage definition) of a physically
`
`remote storage device 60, 62 or 64 connected through storage router 56”); 4:24-26
`
`(“This specific subset of data has the appearance and characteristics of local
`
`storage and is referred to herein as virtual local storage.”).
`
`Because the virtual local storage appears as local storage, a computer will
`
`access its virtual local storage using the NLLBP of the virtual local storage. Id. at
`
`4:37-38 (partitions “appear to the associated workstation 58 as local storage
`
`accessed using [NLLBPs]”). The storage router thus allows access using NLLBP
`
`rather than a network protocol containing a file system request. Id. at 5:14-17
`
`(“storage access involves [NLLBPs] and does not involve the overhead of high
`
`level protocols and file systems required by network servers.”).
`
`In addition to providing the ability to locate host computers remotely,
`
`modern storage systems need to provide security between the host computers and
`
`the remote storage. In other words, it is desirable to provide a centralized control
`
`mechanism that controls each host computer’s access so that each host can only
`
`access particular remote storage devices (or portions thereof). In prior art systems,
`
`8
`
`

`
`the ability to provide such a security mechanism in a networked system that
`
`allowed access using NLLBPs simply did not exist.
`
`However, the storage router of the ’147 Patent provides centralized access
`
`controls for remote storage, while allowing access using NLLBPs. Access controls
`
`provide the capability to restrict the access of a computer to a particular subset of
`
`storage. To this end, the storage router includes a map that associates
`
`representations of computers on one side of the storage router with representations
`
`of storage on the other side of the storage router. See, e.g., id. at 4:26-29, 35-38
`
`(describing “storage allocated to each workstation” through the map so that
`
`allocated storage “can only be accessed by the associated workstation”) (emphasis
`
`added). The storage router implements access controls according to the map so
`
`that each computer has controlled access to the storage allocated to the computer in
`
`the map. See, e.g., id. at 4:26-29, 35-38; 4:41-44 (“[E]ach workstation 58 has
`
`controlled access to only the specified partition of storage device 62 which forms
`
`virtual local storage for the workstation 58.”); 4:60-61 (“Storage router 56 provides
`
`centralized control of what each workstation 58 sees as its local drive[.]”).
`
`In summary, the invention of the ’147 Patent provides a network storage
`
`solution with the ability to control a computer’s access to storage space on the
`
`remote storage devices using a map that allocates storage to the computer and
`
`allows access using NLLBPs. Thus, the invention of the ’147 Patent provides the
`
`9
`
`

`
`advantages of (1) providing remote storage that has the appearance and
`
`characteristics of locally attached storage; (2) allowing access using NLLBPs; and
`
`(3) providing access controls that limit a host’s access to the storage allocated to
`
`the host in the map. The prior art cited by Petitioners, alone or in combination,
`
`simply does not teach or suggest such a system.
`
`III. TRIAL SHOULD NOT BE INSTITUTED BECAUSE OF MULTIPLE,
`FUNDAMENTAL DEFICIENCIES IN THE PETITION
`A.
`
`Petitioners have failed to comply with 37 C.F.R. § 42.104 by
`failing to set forth how the challenged claims are to be construed.
`
`A petition must set forth how the challenged claims are to be construed. 37
`
`C.F.R. § 42.104(b)(3). Here, Petitioners provide a proposed construction and
`
`support for only one claim term for all challenged claims: “native low-level block
`
`protocol.” With respect to all other terms, Petitioners assert that “claim terms not
`
`specifically addressed . . . have been accorded their ‘broadest reasonable
`
`interpretation’ in light of the patent specification including their plain and ordinary
`
`meaning,” (Pet. at 10), yet fail to provide those interpretations. In contrast, before
`
`the district court, Petitioners have asserted that thirteen additional terms of the ’147
`
`Patent require construction. Ex. 2009. Even taking into account the different
`
`standards applied by the Board and a district court, it is incredible for Petitioners to
`
`assert that the broadest reasonable interpretation of all other claim terms requires
`
`no explanation whatsoever.
`
`10
`
`

`
`Petitioners’ failure to offer expert testimony or other probative evidence
`
`regarding the meaning of other terms, which must be construed in order to apply
`
`the asserted prior art to the claims, should doom the Petition. See, e.g., Norman
`
`Noble, Inc. v. NUTech Ventures, IPR2013-00101, Paper 14 at 6 (PTAB June 20,
`
`2013) (“[C]ertain claim terms in this proceeding . . . are not readily apparent from
`
`the intrinsic record alone, and Petitioner does not provide adequate extrinsic
`
`evidence to determine their meaning as would be understood by persons of
`
`ordinary skill in the art. Petitioner’s failure to provide adequate evidence to support
`
`construction of the challenged claims is fatal to its request for inter partes
`
`review.”)
`
`Rather than construe the claims as required, Petitioners improperly attempt
`
`to construe claim language with respect to accused instrumentalities. Petitioners
`
`point to Crossroads’ preliminary infringement contentions (Ex. 1009) and rely on
`
`“Patent Owner’s assertion in litigation,” to argue that “such limitation is provided
`
`by the combined system under the USPTO’s ‘broadest reasonable interpretation’
`
`standard that is applied in PTAB proceedings.” Pet. at 20-54 (passim). Petitioners
`
`never actually provide a claim construction, but leave the Board to divine
`
`Petitioners’ positions from the preliminary infringement contentions.
`
`As an initial matter, it is improper to construe claims with respect to accused
`
`instrumentalities. NeoMagic Corp. v. Trident Microsystems, Inc., 287 F.3d 1062,
`
`11
`
`

`
`1074 (Fed. Cir. 2002) (“It is well settled that claims may not be construed by
`
`reference to the accused device.”); see also E.I. du Pont de Nemours and Co. v.
`
`Monsanto Tech. LLC, IPR2014-00332, Paper 16 at 6-7 (PTAB July 11, 2014)
`
`(rejecting the petitioner’s reliance on the patent owner’s infringement contentions
`
`for purposes of claim construction); Mentor Graphics Corp. v. Synopsis, Inc.,
`
`IPR2014-00287, Paper 17 at 3 (PTAB Aug. 1, 2014) (rejecting petitioner’s reliance
`
`on preliminary infringement contentions because “the preliminary infringement
`
`contentions are too tenuous to be relevant to the Board’s application of the
`
`broadest reasonable construction standard.”).
`
`In addition
`
`to being
`
`improper, Petitioners’ references
`
`to accused
`
`instrumentalities are not cognizable as claim constructions. For example,
`
`Petitioners direct the Board to consider the asserted combination “in view of Patent
`
`Owner’s assertion in litigation” with respect to the following portion of Claim 1 of
`
`the ’147 Patent:
`
`e) a supervisor unit coupled to the first and second [FC] controllers
`and the buffer
`f) . . . operable to maintain a configuration for remote storage devices
`connected to the second [FC] transport medium that maps between
`the device and the remote storage devices and
`g) that implements access controls for storage space on the remote
`storage devices; and
`
`12
`
`

`
`h) to process data in the buffer to interface between the first [FC]
`controller and the second [FC] controller
`i) to allow access from Fibre Channel initiator devices to the remote
`storage devices using native low level, block protocol in accordance
`with the configuration.
`
`Pet. at 21, 37, 51-52 (italics in original; other emphasis added). Petitioners state
`
`that “such limitations are provided by the combined system under the USPTO’s
`
`‘broadest reasonable interpretation’ standard that is applied in PTAB proceedings.”
`
`Id. at 23, 39, 53. As shown in bold underlining, these elements of claim 1 contain
`
`at least eight claim terms that the Petitioners contend require construction in the
`
`pending litigation. Ex. 2009.
`
`Vague references to an external document are insufficient to provide the
`
`claim constructions required by 37 C.F.R. § 42.104(b)(3). The Petition must
`
`explain Petitioners’ argument with particularity—not vaguely point to an accused
`
`instrumentality. 35 U.S.C. § 312(a)(3) (“A petition . . . may be considered only
`
`if . . . the petition identifies, in writing and with particularity, . . . the grounds on
`
`which the challenge to each claim is based[.]”). It is neither the Board’s nor Patent
`
`Owner’s role to decipher the Petition to identify whatever claim constructions that
`
`Petitioners may have intended. See Avaya Inc. v. Network-1 Security Solutions,
`
`Inc., IPR2013-00071, Paper 32 at 5 (PTAB July 2, 2013) (“It is not for the Board
`
`to attempt to piece together a petitioner’s position based on other, unrelated
`
`13
`
`

`
`arguments in a petition[.]”).
`
`The Petition should be denied because Petitioners have failed to meet their
`
`obligation to explain how the challenged claims are to be construed. 37 C.F.R.
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`§ 42.104(b)(3). Because Petitioners fail to offer claim constructions for numerous
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`terms, the Petition fails to show how any construed claim is unpatentable, and is
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`therefore fatally defective. 37 C.F.R. § 42.104(b)(4).
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`B.
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`The Petition fails to show where each claim element can be found
`in the references.
`A petition “may be considered only if … the petition identifies, in writing
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`and with particularity, each claim challenged, the grounds on which the challenge
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`to each claim is based, and the evidence that supports the grounds for the challenge
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`to each claim[.]” 35 U.S.C. § 312(a)(3) (emphasis added). A petition “must
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`specify where each element of the claim is found in the prior art patents or printed
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`publications relied upon;” and it “must include . . . a detailed explanation of the
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`significance of the evidence including material facts[.]” 37 C.F.R. § 42.104(b)(4);
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`37 C.F.R. § 42.22(a)(2). In accordance with 37 C.F.R. § 42.104(b)(5), the
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`relevance of the evidence supporting the challenge must be provided in the
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`petition, including identification of specific portions of the evidence that support
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`the challenge.
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`A petition for inter partes review is limited to sixty pages. 37 C.F.R.
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`§ 42.24(a)(1)(i). The Petitioners cannot skirt this page limit by incorporating
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`14
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`

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`required explanations from other documents such as expert declarations. 37 C.F.R.
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`§ 42.6(a)(3); see also Apple Inc. v. Rensselaer Polytechnic Institute, IPR2014-
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`00077, Paper No. 14 at 5 (PTAB June 13, 2014) (“We decline to consider
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`information presented in a supporting declaration, but not discussed in a petition,
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`because . . . doing so would encourage the use of declarations to circumvent the
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`page limits that apply to petitions.”); see also Symantec Corp. v. RPost Commn’s
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`Ltd., IPR2014-00353, Paper 15 at 16 (PTAB July 15, 2014); Fidelity Nat’l
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`Information Services, Inc. v. DataTreasury Corp, IPR2014-00489, Paper 9 at 9
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`(PTAB Aug. 13, 2014).
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`Here, Petitioners not only fail to provide the appropriate claim constructions
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`in the Petition, but also fail to show where the claim limitations can be found in the
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`references and fail to provide a detailed explanation of the evidence. Instead,
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`Petitioners improperly use the 193-page Chase declaration to provide the necessary
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`explanation, effectively expanding the petition well over sixty pages in violation of
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`37 C.F.R. § 42.24(a)(1)(i). See, e.g., Pet. at 12 (“[T]he declaration of Professor
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`Chase (Ex. 1010) . . . describes in further detail . . . supporting rationale, and the
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`correspondence to the claimed subject matter.”) (emphasis added).
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`Petitioners admit that the Petition merely “summarize[s] the grounds of
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`unpatentability” and that the full explanation of Petitioners’ positions are found
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`outside the Petition itself, including the declaration of Professor Chase:
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`15
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`

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`[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.
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`Pet. at 11-12.
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`One example of how Petitioners violated the page limitation and failed to
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`show where the claim limitation can be found involves Claim 1. Claim 1 recites:
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`a supervisor unit coupled to the first and second Fibre Channel
`controllers and the buffer, the supervisor unit operable: to maintain a
`configuration for remote storage devices connected to the second
`Fibre Channel transport medium that maps between the device and the
`remote storage devices and that implements access controls for
`storage space on the remote storage devices; and to process data in the
`buffer to interface between the first Fibre Channel controller and the
`second Fibre Channel controller to allow access from Fibre Channel
`initiator devices to the remote storage devices using native low level,
`block protocol in accordance with the configuration.
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`Ex. 1001, 9:33-47. With respect to the supervisor unit, the Petition states that “the
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`CRD-5500 User Manual describes a central processing unit (CPU) that is coupled
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`to a host device interface module, a storage interface module and a buffer
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`memory.” Pet. at 21-22. The Petition does not point out where the references show
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`a central processing unit, but instead refers to the Chase declaration to provide
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`further explanation. Id. at 22 (citing Ex. 1010 at ¶ 48).
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`16
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`

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`As another example, the Petition states “[i]t would have been obvious to one
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`of ordinary skill in the art to combine the CRD-5500 User Manual, CRD-5500
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`Data Sheet and Smith to enhance the communication and storage options of a host
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`device on a FC transport medium, benefit from ‘host LUN mapping’ feature of the
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`CRD-5500 controller, and avail the host computing device of ubiquitous mass
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`storage applications (e.g., RAID).” Pet. at 16 (citing only Ex. 1010 ¶¶ 39-43). Dr.
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`Chase’s arguments span over four pages and incorporate citations to multiple
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`exhibits never discussed in the Petition. See Ex. 1010 ¶¶ 39-43 (discussing Ex.
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`1027 and Ex. 1028). Again, the Petition seeks to use the Chase declaration to
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`provide “a detailed explanation of the significance of the evidence including
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`material facts” and impermissibly expand the page limits.
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`As another example, the Petition provides a single citation to the references
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`for Claims 6-13, but otherwise relies exclusively on vague references to previous
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`discussions in the Petition and citations to the Chase declaration. See Pet. at 26-29
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`(First Ground), 41-42 (Second and Third Grounds), 54-57 (Fourth and Fifth
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`Grounds). The Petition incorporates the Chase declaration to provide a detailed
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`explanation of how the refere