`571-272-7822
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` Paper 9
` Entered: March 17, 2015
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC. and QUANTUM CORPORATION,
`Petitioners,
`
`v.
`
`CROSSROADS SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01463
`Patent 7,934,041 B2
`____________
`
`
`
`Before HYUN J. JUNG, NEIL T. POWELL, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
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`IPR2014-01463
`Patent 7,934,041 B2
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`I. INTRODUCTION
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`Cisco Systems, Inc. and Quantum Corporation (“Petitioners”) filed a
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`Petition (Paper 3, “Pet.”), requesting institution of an inter partes review of
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`claims 1–53 of U.S. Patent No. 7,934,041 B2 (Ex. 1001, “the ’041 Patent”).
`
`Crossroads Systems, Inc. (“Patent Owner”) timely filed a Preliminary
`
`Response (Paper 7, “Prelim. Resp.”). We have jurisdiction under
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`35 U.S.C. § 314.
`
`We determine that the information presented in the Petition and in the
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`Preliminary Response shows that there is a reasonable likelihood that
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`Petitioners would prevail with respect to at least one of the claims
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`challenged in the Petition. See 35 U.S.C. § 314(a). Accordingly, we
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`institute inter partes review with respect to claims 1–53.
`
`A.
`
`Related Proceedings
`
`The ’041 Patent has been asserted against Petitioners in the following
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`district court proceedings: Crossroads Systems, Inc. v. Cisco Systems, Inc.,
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`Case No. 1-14-cv-00148 (W.D. Tex.); and Crossroads Systems, Inc. v.
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`Quantum Corporation, Case No. 1-14-cv-00150 (W.D. Tex.). Pet. 1.
`
`The ’041 Patent is also the subject of other district court proceedings. Id.
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`The ’041 Patent was also the subject of a petition for inter partes
`
`review in Case IPR2014-01177. That petition was denied. See Oracle
`
`Corporation, NetApp Inc., and Huawei Technologies Co., Ltd. v. Crossroads
`
`Systems, Inc., Case IPR2014-01177, slip op. (Jan. 28, 2015) (Paper 13).
`
`Additionally, the ’041 Patent belongs to a family of patents that were
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`the subject of multiple petitions for inter partes review in other cases,
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`including IPR2014-01197, IPR2014-01207, IPR2014-01209, IPR2014-
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`01226, and IPR2014-01233. Inter partes review was instituted in IPR2014-
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`2
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`IPR2014-01463
`Patent 7,934,041 B2
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`01197, IPR2014-01207, IPR2014-01209, and IPR2014-01226. See Oracle
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`Corporation, NetApp Inc., and Huawei Technologies Co., Ltd. v. Crossroads
`
`Systems, Inc., Case IPR2014-01197, slip op. (Jan. 29, 2015) (Paper 13);
`
`Oracle Corporation, NetApp Inc., and Huawei Technologies Co., Ltd. v.
`
`Crossroads Systems, Inc., Case IPR2014-01207, slip op. (Feb. 2, 2015)
`
`(Paper 12); Oracle Corporation, NetApp Inc., and Huawei Technologies
`
`Co., Ltd. v. Crossroads Systems, Inc., Case IPR2014-01209, slip op. (Jan.
`
`30, 2015) (Paper 12); Cisco Systems, Inc. and Quantum Corporation v.
`
`Crossroads Systems, Inc., Case IPR2014-01226, slip op. (Jan. 30, 2015)
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`(Paper 9). The petition for inter partes review was denied in IPR2014-
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`01233. See NetApp Inc. v. Crossroads Systems, Inc., Case IPR2014-01233,
`
`slip op. (Feb. 10, 2015) (Paper 8).
`
`
`
`B. The ’041 Patent (Ex. 1001)
`
`The ’041 Patent discloses “[a] storage router and storage network
`
`[that] provide virtual local storage on remote storage devices.” Ex. 1001,
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`Abstract. One embodiment of the storage network appears in Figure 3. Id.
`
`at col. 3, ll. 19–21, col. 4, ll. 25–27. Figure 3 is reproduced below.
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`Figure 3 of the ’041 Patent shows storage network 50, which includes
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`storage router 56 bridging Fibre Channel high speed serial interconnect 52
`
`and SCSI bus 54. Id. at col. 4, ll. 25–30. Storage router 56 allows a number
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`of workstations 58 to interconnect on a common storage transport and
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`“access common storage devices 60, 62 and 64 through native low level,
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`block protocols.” Id. at col. 4, ll. 30–33. Storage router 56 also implements
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`security controls to allow each workstation 58 to access a specific subset of
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`data stored in storage devices 60, 62, and 64. Id. at col. 4, ll. 35–39.
`
`The ’041 Patent shows more details of one embodiment of storage
`
`router 56 in Figure 4. Id. at col. 3, ll. 22–23, col. 5, ll. 34–35. Figure 4 is
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`reproduced below.
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`Figure 4 of the ’041 Patent shows components of storage router 56,
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`including supervisor 86, buffer 84, Fibre Channel controller 80, and SCSI
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`controller 82. Id. at col. 5, ll. 35–41. Buffer 84 connects to Fibre Channel
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`controller 80 and SCSI controller 82. Id. at col. 5, ll. 37–39. Memory work
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`space is provided by buffer 84. Id. Supervisor unit 86 includes a
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`microprocessor for controlling storage router 56. Id. at col. 5, ll. 41–43.
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`The microprocessor of supervisor unit 86 also processes mapping and
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`security access for requests between Fibre Channel 52 and SCSI bus 54. Id.
`
`at col. 5, ll. 41–44.
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`
`
`C.
`
`Illustrative Claim
`
`Petitioners challenge claims 1–53 of the ’041 Patent. Claims 1, 20,
`
`and 37 are independent. Each of claims 2–19, 21–36, and 38–53 depends
`
`directly or indirectly from one of claims 1, 20, and 37. Claim 1 is
`
`illustrative and is reproduced below:
`
`1.
`A storage router for providing virtual local storage on remote
`storage devices, comprising:
`
`a first controller operable to interface with a first transport medium,
`wherein the first medium is a serial transport media; and
`
`a processing device coupled to the first controller, wherein the
`processing device is configured to:
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`maintain a map to allocate storage space on the remote storage
`devices to devices connected to the first transport
`medium by associating representations of the devices
`connected to the first transport medium with
`representations of storage space on the remote storage
`devices, wherein each representation of a device
`connected to the first transport medium is associated with
`one or more representations of storage space on the
`remote storage devices;
`
`control access from the devices connected to the first transport
`medium to the storage space on the remote storage
`devices in accordance with the map; and
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`allow access from devices connected to the first transport
`medium to the remote storage devices using native low
`level block protocol.
`
`Ex. 1001, col. 9, ll. 35–56.
`
`D.
`
`The Prior Art
`
`Petitioners rely on the following references in support of their grounds
`
`for challenging the identified claims of the ’041 Patent (Pet. 9–10):
`
`1006
`
`
`Exhibit Nos. References and Declaration
`CMD Technology, Inc., CRD-5500 SCSI RAID Controller
`1004
`User’s Manual, (1996) (“CRD-5500 User Manual”).
`Meryem Primmer, An Introduction to Fibre Channel, 47
`Hewlett-Packard J., 94–98 (1996); and Judith A. Smith and
`Meryem Primmer, Tachyon: A Gigabit Fibre Channel
`Protocol Chip, 47 Hewlett-Packard J., 99–112 (1996) (“HP
`Journal”).1
`American National Standards Institute, Inc, Fibre Channel
`Physical and Signaling Interface (FC-PH) X3.230, (June 1,
`1994) (“Fibre Channel Standard”)
`
`1007
`
`
`1 Petitioners cite both of these articles in Exhibit 1006 as one reference.
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`E.
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`The Asserted Grounds of Unpatentability
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`Petitioners challenge the patentability of claims 1–53 of the ’041
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`Patent based on the following grounds (Pet. 9–10):2
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`Basis
`
`§ 103
`
`Claims Challenged
`
`1–14, 16–33, 35–50,
`and 53
`
`§ 103
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`15, 34, 51, and 52
`
`References
`
`CRD-5500 User
`Manual and HP
`Journal
`CRD-5500 User
`Manual, HP Journal,
`and Fibre Channel
`Standard
`
`
`
`A.
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`Claim Interpretation
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`II. ANALYSIS
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`In an inter partes review, claim terms in an unexpired patent are
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`interpreted according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
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`2012); accord In re Cuozzo Speed Technologies, LLC, No. 2014-1301, 2015
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`WL 448667, at *8 (Fed. Cir. Feb. 4, 2015) (“Even if the broadest reasonable
`
`interpretation standard were not incorporated into the IPR provisions of the
`
`statute, the standard was properly adopted by PTO regulation.”). 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.
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`2007).
`
`
`2 Petitioners support their challenges with a declaration executed by Andrew
`Hospodor, Ph.D., executed on September 5, 2014 (“Hospodor Declaration”)
`(Ex. 1003).
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`1. “native low level block protocol”
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`Claims 1, 6, 20, 25, 37, and 42 recite “native low level block
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`protocol.” Petitioners argue that the broadest reasonable interpretation of
`
`this claim language is “a protocol in which storage space is accessed at the
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`block level, such as the SCSI protocol.” Pet. 11–12. Petitioners discuss
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`portions of the Specification and Figure 3 of the ’041 Patent that support
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`their construction. Id. (citing Ex. 1001, col. 3, ll. 46–50, col. 4, ll. 47–53,
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`col. 5, ll. 59–63, Fig. 3; Ex. 1003 ¶¶ 27–31). Patent Owner neither
`
`challenges Petitioners’ proposed construction nor offers an alternate
`
`construction. For the purposes of this Decision, after reviewing Petitioners’
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`citations to the Specification, we are persuaded that “one of ordinary skill in
`
`the art would understand the broadest reasonable construction of ‘native low
`
`level block protocol’ to be ‘a protocol in which storage space is accessed at
`
`the block level, such as the SCSI protocol.’” Id. at 12.
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`
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`2. “remote”
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`Claims 1–4, 7, 12, 13, 19–23, 26, 31, 32, 37–40, 43, 48, 49, and 53
`
`recite “remote storage devices.” Petitioners contend that the broadest
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`reasonable construction of the word “remote” is “indirectly connected
`
`through a storage router to enable connections to storage devices at a
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`distance greater than allowed by a conventional parallel network
`
`interconnect.” Pet. 13. Petitioners discuss portions of the Specification of
`
`the ’041 Patent that support their construction. Pet. 12–13 (citing Ex. 1001,
`
`col. 1, ll. 51–59, col. 5, ll. 8–14; Ex. 1003 ¶¶ 32–36). Patent Owner neither
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`challenges Petitioners’ proposed construction nor offers an alternate
`
`construction. For the purposes of this Decision, after reviewing Petitioners’
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`citations to the Specification, we are persuaded that “one of ordinary skill in
`
`the art would understand the broadest reasonable construction of ‘remote’ to
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`be ‘indirectly connected through a storage router to enable connections to
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`storage devices at a distance greater than allowed by a conventional
`
`parallel network interconnect.’” Id. at 13.
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`
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`B.
`
`Asserted Obviousness of Claims 1–14, 16–33, 35–50, and 53 Based
`on CRD-5500 User Manual and HP Journal
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`Petitioners argue that the CRD-5500 User Manual discloses all of the
`
`limitations of independent claims 1, 20, and 37 except for certain limitations
`
`related to a “serial transport media” or “serial transport medium.” Pet. 22–
`
`29, 42–47, 50–53 (citing Ex. 1004, 1-1, 1-2, 1-3, 1-4, 1-11, 2-1, 2-4, 3-1, 3-
`
`6, 4-2, 4-5, 4-18, Figs. 1-2, 2-1). For example, Petitioners argue that the
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`CRD-5500 User Manual discloses all of the limitations of independent claim
`
`1 except for the limitation “a first controller operable to interface with a first
`
`transport medium, wherein the first transport medium is a serial transport
`
`media.” Id. at 22–29 (citing Ex. 1004, 1-1, 1-2, 1-3, 1-4, 1-11, 2-1, 2-4, 4-2,
`
`4-5, 4-18; Figs. 1-2, 2-1).
`
`Regarding the foregoing limitation, Petitioners argue that “[t]he
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`CRD[-5500 User] Manual in combination with the HP Journal renders
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`obvious this limitation.” Id. at 23. Petitioners note that the CRD-5500 User
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`Manual teaches that the CRD-5500 controller has slots for replaceable “I/O
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`modules” that interface with “SCSI buses.” Id. (citing Ex. 1004 1-1, 2-1, 2-
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`4, 3-1). In concert with this, Petitioners assert that “the HP Journal teaches a
`
`‘generic Fibre Channel host bus adapter board using the Tachyon chip’ that
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`interfaces with a Fibre Channel ‘serial’ transport medium, which is designed
`
`to ‘replace’ SCSI buses.” Id. (citing Ex. 1006, 101, 111, Fig. 14).
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`Petitioners argue that it would have been obvious to replace the SCSI
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`modules of the CRD-5500 controller with a Fibre Channel I/O host module.
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`Id. at 17–21 (citing Ex. 1003 ¶¶ 41, 48–57; Ex. 1004, 1-1, 1-3, 2-1, 4-14; Ex.
`
`1006, 5, 94–95, 99–111, Fig. 14). Petitioners identify a number of reasons
`
`that it would have been obvious to a person of ordinary skill in the art to so
`
`combine the teachings of the CRD-5500 User Manual and the HP Journal.
`
`Petitioners note that the HP Journal teaches the advantages of Fibre Channel
`
`compared to SCSI, the backward compatibility of Fibre Channel with SCSI-
`
`based hardware, and how to implement a Fibre Channel board using a
`
`Tachyon chip. Id. at 18–19 (citing Ex. 1003 ¶¶ 51, 53–55; Ex. 1006, 5, 94–
`
`95, 99–111, Fig. 14). Petitioners further argue that the substitution of Fibre
`
`Channel host modules for SCSI host modules “would have been simple
`
`because (i) the CRD-5500 Controller has a modular design . . . (ii) the
`
`Tachyon Fibre Channel chip is ‘easily adaptable’ to different systems” and
`
`the HP Journal teaches that a Fibre Channel I/O module was intended to
`
`replace SCSI I/O modules. Id. at 19 (citing Ex. 1003 ¶ 53). Petitioners also
`
`assert that the benefit of modifying the CRD-5500 controller to interface
`
`with a Fibre Channel medium would have been predictable, and that such a
`
`modification would have been within the level of ordinary skill. Id. at 20–21
`
`(citing Ex. 1003 ¶¶ 41, 54–56; Ex. 1004, 1-3, 4-14; Ex. 1005, 2; Ex. 1006,
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`94–95).
`
`Regarding independent claim 20, Petitioners assert that the CRD-5500
`
`User Manual discloses all of the limitations of claim 20 except: “a set of
`
`devices connected to a first transport medium, wherein the first transport
`
`medium is a serial transport medium”; and “a storage router connected to the
`
`serial transport medium.” Id. at 42–47 (citing Ex. 1003, 81–92; Ex. 1004, 1-
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`1, 1-2, 3-1, 3-6, Fig. 1-2). With respect to the foregoing limitations of claim
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`20, Petitioners assert that they would have been obvious in view of the
`
`CRD-5500 User Manual and the HP Journal. Id. at 43–44, 45 (citing Ex.
`
`1003, 82–89, 91; Ex. 1004, 1-2; Ex. 1006, 5, 88, 94, 96, Fig. 3). As
`
`discussed supra, Petitioners argue that it would have been obvious to replace
`
`SCSI host modules of the CRD-5500 controller with Fibre Channel host
`
`modules. Id. at 17–21 (citing Ex. 1003 ¶¶ 41, 48–57; Ex. 1004, 1-1, 1-3, 2-
`
`1, 4-14; Ex. 1006, 5, 94–95, 99–111). Additionally, Petitioners note that the
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`CRD-5500 Manual discloses coupling “as many as four hosts” via a host
`
`SCSI bus to the CRD-5500 controller, and that the HP Journal discloses
`
`“that a Fibre Channel I/O module supports multiple workstations being
`
`connected to the same communication link via the Fibre Channel arbitrated
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`loop method.” Id. at 43 (citing Ex. 1004, 1-2; Ex. 1006, 5, 88, 94, 96, Fig.
`
`3).
`
`Regarding independent claim 37, Petitioners argue that the claim
`
`limitation “connecting a storage router between a set of devices connected to
`
`a first transport medium and a set of remote storage devices, wherein the
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`first transport medium is a serial transport medium” would have been
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`obvious in view of the CRD-5500 User Manual and the HP Journal. Id. at
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`52 (citing Ex. 1003, 105–112; Ex. 1004, 2-1; Ex. 1006, 5). Petitioners
`
`contend that the CRD-5500 User Manual discloses connecting the CRD-
`
`5500 controller between a set of hosts connected to the controller by SCSI
`
`buses and a set of remote storage devices. Id. at 51 (citing Ex. 1003, 106;
`
`Ex. 1004, Fig. 1-2). As discussed supra, Petitioners argue that it would have
`
`been obvious to replace SCSI host modules of the CRD-5500 controller with
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`Fibre Channel host modules. Id. at 17–21 (citing Ex. 1003 ¶¶ 41, 48–57; Ex.
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`1004, 1-1, 1-3, 2-1, 4-14; Ex. 1006, 5, 94–95, 99–111). Petitioners further
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`note that the HP Journal discloses a number of advantages of using a Fibre
`
`Channel serial transport medium in lieu of an SCSI bus. Id. at 52 (citing Ex.
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`1006, 5). Petitioners conclude that
`
`connecting the CRD-5500 Controller between a set of
`hosts on a serial Fibre Channel transport medium and a
`set of disk drives, as taught by the CRD Manual in view
`of the HP Journal, renders obvious “connecting a storage
`router between a set of devices connected to a first
`transport medium and a set of remote storage devices,
`wherein the first transport medium is a serial transport
`medium” as recited in the claim.
`
`Id. (citing Ex. 1003, 105–112).
`
`Petitioners also argue that dependent claims 2–14, 16–19, 21–33, 35,
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`36, 38–50, and 53 would have been obvious in view of the CRD-5500 User
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`Manual and the HP Journal. Pet. 29–42, 47–50, 53–56 (citing Ex. 1003, 58–
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`81; Ex. 1004, 1-1, 1-3, 1-10, 1-11, 2-4, 2-9, 3-1, 3-2, 3-6, 4-1, 4-2, 4-5, 4-10,
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`4-18; Ex. 1006, 94–95). Petitioners argue that the CRD-5500 User Manual
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`teaches all of the limitations recited in dependent claims 2–6, 9–14, 16–18,
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`21–25, 28–33, 35, 38–42, and 45–50. Pet. 29–33, 35–41, 47–50, 53–56
`
`(citing Ex. 1003, 58–62, 67–80; Ex. 1004, 1-1, 1-3, 1-10, 1-11, 2-4, 2-9, 3-1,
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`3-2, 3-6, 4-1, 4-2, 4-5, 4-10, 4-18).
`
`Dependent claims 7 and 26 recite “wherein the storage router is
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`configured to receive commands according to a first low level block protocol
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`from the device connected to the first transport medium and forward
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`commands according to a second low level block protocol to the remote
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`storage devices.” Similarly, dependent claim 43 recites “receiving
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`commands at the storage router according to a first low level block protocol
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`from the device connected to the first transport medium and forwarding
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`commands according to a second low level block protocol to the remote
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`storage devices.” Dependent claims 8, 27, and 44 add the limitation that
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`“the first low level block protocol is an FCP protocol and the second low
`
`level block protocol is a protocol other than FCP.”3
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`Petitioners argue the foregoing limitations of dependent claims 7, 8,
`
`26, 27, 43, and 44 would be met by combining the teachings of the CRD-
`
`5500 User Manual with the teachings of the HP Journal regarding
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`communicating with hosts via a Fibre Channel transport medium. Pet. 33–
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`35, 48, 54 (citing Ex. 1003, 62–66; Ex. 1004, 2-4, 4-18; Ex. 1006, 94–95).
`
`Petitioners note the CRD-5500 User Manual discloses SCSI buses for
`
`communicating with a host computer and disk drives. Id. at 33 (citing Ex.
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`1004, 2-4). Petitioners also note that the CRD-5500 User Manual discloses
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`the controller logging events like “SCSI messages emanating from the host
`
`and drive channels.” Id. (citing Ex. 1004, 4-18). Additionally, Petitioners
`
`contend that “a Fibre Channel I/O module based on the Tachyon chip sends
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`SCSI commands ‘encapsulated and transported within Fibre Channel
`
`frames.’” Id. at 34 (citing Ex. 1003, 62–63; Ex. 1006, 94–95).
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`Consequently, Petitioners argue,
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`the CRD-5500 Controller—as modified by the HP
`Journal—would (i) receive Fibre Channel messages (a
`first
`low
`level block protocol) containing SCSI
`commands from hosts, (ii) remove the SCSI commands
`
`
`3 Claim 27 states that it depends from claim 20, reciting “[t]he storage router
`of claim 20.” Ex. 1001, col. 11, l. 38. Additionally, however, claim 27
`recites “the first low level block protocol” and “the second low level block
`protocol,” which are limitations that do not appear in claim 20 but do appear
`in claim 26. Id. at col. 11, ll. 38–40 (emphases added); see id. at col. 10,
`l. 54–col. 11, col. 11, ll. 33–37. For purposes of this Decision, we assume
`that claim 27 depends from claim 26.
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`from the Fibre Channel messages, and (iii) forward the
`SCSI commands (a second low level block protocol) to
`the disk drives.
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`Id. (citing Ex. 1003, 65).
`
`Dependent claims 19, 36, and 53 each recite a second transport
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`medium that is a fibre channel transport medium. Petitioners argue that the
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`limitations recited in dependent claims 19, 36, and 53 would have been
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`obvious in view of the CRD-5500 User Manual and the HP Journal, in
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`combination. Id. at 41–42, 50, 56. In addition to their argument that it
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`would have been obvious to modify the CRD-5500 controller with a Fibre
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`Channel I/O module to interface with a host, Petitioners argue that it also
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`would have been obvious to modify the CRD-5500 controller to use one or
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`more Fibre Channel I/O modules and links on the “disk side” of the
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`controller. Id. at 17–21(citing Ex. 1003 ¶¶ 41, 48–57; Ex. 1004, 1-1, 1-3, 2-
`
`1, 4-14; Ex. 1006, 5, 94–95, 99–111), 42. Thus, Petitioners argue, it would
`
`have been obvious to include a second transport medium that is a fibre
`
`channel transport medium. Id. at 42 (citing Ex. 1003, 80–81).
`
`Petitioners’ arguments regarding the limitations of claims 1–14, 16–
`
`33, 35–50, and 53, namely, that it would have been obvious to combine the
`
`teachings of CRD-5500 Manual and HP Journal, are reasonable and
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`supported by record evidence.
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`Patent Owner responds that the CRD-5500 Manual and the
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`information in the HP Journal have been considered by the Office in
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`prosecution of the ’041 Patent and in a reexamination of U.S. Patent No.
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`6,425,035 B2 (“the ’035 Patent”), a family member of the ’041 Patent.
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`Prelim. Resp. 10–16 (citing Ex. 1002, 1647, 1652–1673; Ex. 1006, 99–112;
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`Ex. 2016, 22–23, 27, 34–36, 82–100; Ex. 2021, 168, 310, 321, 337–338,
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`345). Patent Owner argues that the HP Journal contains Smith, which “was
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`not explicitly before the Office” but “is about the Tachyon chip.” Id. at 11
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`n.5. Patent Owner notes that the User’s Manual for the Tachyon Chip was
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`cited in prosecution. Id. (citing Ex. 2016). The arguments are not
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`persuasive because the information in the HP Journal and Smith was not
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`explicitly before the Office and Petitioners’ arguments regarding these
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`references were not previously considered.
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`Patent Owner also argues that “Petitioners’ alleged motivation to
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`modify the teachings of the CRD-5500 Manual was also before the Patent
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`Office” because the Petition cites Exhibit 1005, which was submitted during
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`the reexamination of the ’035 Patent. Prelim. Resp. 13 (citing Pet. 18; Ex.
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`1005, 1; Ex. 2010 ¶ 2; Ex. 2011; Ex. 2021, 165). However, the argument is
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`unpersuasive because, as discussed above, we are persuaded by Petitioners’
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`arguments that do not rely on Exhibit 1005.
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`
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`Patent Owner further argues that “Petitioners are recycling the same
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`arguments raised” in the reexamination of the ’035 Patent because the
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`MaxStrat GEN 5 RAID controller considered during reexamination and
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`Petitioners’ CRD-5500 controller have similar functionality. Prelim.
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`Resp. 16–20 (citing Pet. 19; Ex. 1004, 9, 10, 21–23, 44; Ex. 2013, 1, 5–6;
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`Ex. 2021, 288, 316–318). The argument is not persuasive because
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`Petitioners’ challenge is not based on the CRD-5500 User Manual by itself;
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`the challenge is an obviousness challenge based on the CRD-5500 User
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`Manual combined with the HP Journal.
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`Patent Owner urges the Board to exercise its discretion under 35
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`U.S.C. § 325(d) to deny the challenges presented because substantially the
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`same petition was presented in IPR2014-01177; the HP Journal contains a
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`reference cited in IPR2014-01177; the petition in IPR2014-01177 presented
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`a theoretical combination of a CRD-5500 and a FC module; the petition in
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`IPR2014-01177 and the Petition in the present case “make the same
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`argument for Claim 1.2[c]”; petitioners in both cases share common
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`attorneys; the petition for this case presents another “bite at the apple”; and
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`there is no justification for the second petition. Prelim. Resp. 20–27.
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`Because we did not institute inter partes review in IPR2014-01177, we
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`decline to exercise our discretion to deny the challenges in the present
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`petition as substantially the same as those in IPR2014-01177. See Oracle
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`Corporation, NetApp Inc., and Huawei Technologies Co., Ltd. v. Crossroads
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`Systems, Inc., Case IPR2014-01177, slip op. (January 28, 2015) (Paper 13).
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`Patent Owner also argues that the “Petition fails to engage in the
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`prerequisite ‘critically important factual inquiry’ of identifying the
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`differences between the claimed invention and the prior art, impermissibly
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`leaving the Board and [the] Patent Owner to suss out the differences.”
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`Prelim. Resp. 28. Patent Owner asserts that the Petition “introduces the
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`CRD-5500 Manual and HP Journal without comparing them to the claims of
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`the ’041 Patent” and “then argues that it would be obvious to combine the
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`CRD-5500 Manual and HP Journal to create a theoretical combined
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`system.” Id. (citing Pet. 19–21).
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`The arguments are not persuasive because Petitioners explain how the
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`CRD-5500 Manual teaches the limitations of the claims. Pet. 26–54, 56–57.
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`For claims 1, 7, 8, 19, 26, 27, 36, 43, 44, and 53, which contain limitations
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`that are not taught by the CRD-5500 Manual, Petitioners provide citations to
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`the HP Journal and argue why the ordinary skilled artisan would have
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`combined the teachings of the references. Pet. 23–24, 33–35, 41–42, 48, 50,
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`16
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`54, 56. Thus, the Petition compares the references to the claims in a manner
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`sufficient to identify the differences between the claimed invention and the
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`cited references.
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`Patent Owner further argues that one of ordinary skill in the art would
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`not combine CRD-5500 Manual and HP Journal “based on the teachings of
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`‘[a] data sheet advertising the features of the CRD-5500 RAID controller’”
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`that describes the controller as designed to support Fibre Channel. Prelim.
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`Resp. 29–31 (citing Pet. 16). Page 16 of the Petition does cite a data sheet
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`(Ex. 1005) for teaching that the CRD-5500 RAID controller was “designed
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`to support tomorrow’s high speed serial interfaces, such as Fiberchannel.”
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`However, as discussed above, Petitioners rely on the CRD-5500 Manual and
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`HP Journal, not the CRD-5500 data sheet, to argue that one of ordinary skill
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`in the art would have been motivated to combine these references, because
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`the references evidence that the asserted combination is a simple substitution
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`with predictable beneficial results. Pet. 17–21.
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`For these reasons, upon consideration of the information provided in
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`the Petition and Preliminary Response, we determine that Petitioners have
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`demonstrated a reasonable likelihood of prevailing on their assertion that
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`claims 1–14, 16–33, 35–50, and 53 are unpatentable under 35 U.S.C.
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`§ 103(a) for obviousness over CRD-5500 Manual and HP Journal.
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`
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`C.
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`Asserted Obviousness of Claims 15, 34, 51, and 52 Based on CRD-
`5500 User Manual, HP Journal, and Fibre Channel Standard
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`Claims 15, 34, and 51 depend from claims 14, 33, and 50,
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`respectively. Each of claims 14, 33, and 50 recites that “the representations
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`of devices connected to the first transport medium are unique identifiers.”
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`Each of claims 15, 34, and 51 recites “wherein the unique identifiers are
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`world wide names.”
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`Petitioners argue that the limitations of claims 15, 34, and 51 would
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`have been obvious in view of the CRD-5500 User Manual, the HP Journal,
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`and the Fibre Channel Standard, in combination. Pet. 56–59 (citing Ex.
`
`1003, 123–127, Ex. 1007, 1, 46, 132, 148). Petitioners contend that the
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`CRD-5500 User Manual discloses unique identifiers as representations of
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`devices connected to the first transport medium. Id. at 39–40 (citing Ex.
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`1003, 74–75; Ex. 1004, 3-2, 4-5), 49–50, 56, 58. Petitioners also argue that
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`modifying the CRD-5500 controller with a Fibre Channel I/O host module
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`would produce a heterogeneous system that uses Fibre Channel to connect to
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`hosts and SCSI to connect to connect to disk drives. Id. at 57–59 (citing Ex.
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`1003 ¶ 63). Petitioners contend that a person of ordinary skill in the art
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`would have consulted the Fibre Channel Standard for guidance regarding
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`properly identifying Fibre-Channel hosts in such a heterogeneous network.
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`Id. at 57 (citing Ex. 1003 ¶ 63). Petitioners further argue that “the Fibre
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`Channel Standard teaches that in a ‘heterogeneous network’ (Fibre Channel
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`to Non-Fibre Channel) nodes (e.g., hosts) are represented by unique
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`identifiers that are ‘worldwide names.’” Id. at 59. Petitioners conclude that
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`the
`identifying
`the CRD-5500 Controller uniquely
`attached hosts, as taught by the CRD Manual, in view of
`the Fibre Channel transport medium that couples the host
`devices to the controller, as taught by the HP Journal, and
`further in view of the assigning of unique wordwide
`names to nodes, as taught by the Fibre Channel Standard,
`render obvious “wherein the unique identifiers are world
`wide names” as recited in the claim.
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`Id. (citing Ex. 1003, 124–126).
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`Claim 52 depends from claim 51. Claim 52 recites “wherein the
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`storage router is configured to allow modification of the map in a manner
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`transparent to and without involvement of the devices connected to the first
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`transport medium.” Petitioners argue that the CRD-5500 User Manual
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`teaches this limitation. Pet. 40 (citing Ex. 1003, 75–77; Ex. 1004, 2-9, 4-1),
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`60.
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`Petitioners’ arguments regarding the limitations of claims 15, 34, 51,
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`and 52, namely, that it would have been obvious to combine the teachings of
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`CRD-5500 Manual, HP Journal, and Fibre Channel Standard, are reasonable
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`and supported by record evidence. Patent Owner does not provide separate
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`arguments for claims 15, 34, 51, and 52 other than those discussed above.
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`Accordingly, upon consideration of the information provided in the
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`Petition and Preliminary Response, we determine that Petitioners have
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`demonstrated a reasonable likelihood of prevailing on their assertion that
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`claims 15, 34, 51, and 52 are unpatentable under 35 U.S.C. § 103(a) for
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`obviousness over CRD-5500 Manual, HP Journal, and Fibre Channel
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`Standard.
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`
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`III. CONCLUSION
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`For the foregoing reasons, we determine that Petitioners have
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`demonstrated that there is a reasonable likelihood of their proving
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`unpatentability of claims 1–53 of the ’041 Patent.
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`The Board has not made a final determination on the patentability of
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`the challenged claims.
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`Accordingly, it is
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`IV. ORDER
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`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
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`review is hereby instituted as to claims 1–53 of U.S. Patent No. 7,934,041
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`on the following grounds of unpatentability:
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`A. Claims 1–14, 16–33, 35–50, and 53 under 35 U.S.C. § 103(a)
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`for obviousness over CRD-5500 Manual and HP Journal; and
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`B. Claims 15, 34, 51, and 52 under 35 U.S.C. § 103(a) for
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`obviousness over CRD-5500 Manual, HP Journal, and Fibre
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`Channel Standard;
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
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`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial, the trial
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`commencing on the entry date of this decision; and
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`FURTHER ORDERED that the trial is limited to the grounds
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`identified above, and no other grounds are authorized.
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`PETITIONERS:
`David McCombs
`Haynes and Boone, LLP
`David.mccombs.ipr@haynesboone.com
`
`Andrew S. Ehmke
`Haynes and Boone, LLP
`Andy.ehmke.ipr@haynesboone.com
`
`Scott Jarratt
`Haynes and Boone, LLP
`Scott.jarratt.ipr@hayneshoone.com
`
`
`
`PATENT OWNER