Trials@uspto.gov
`571.272.7822
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` Paper 9
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` Entered: April 3, 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 IPR2014-01544
`Patent 7,051,147 B2
`____________
`
`
`
`Before KALYAN K. DESHPANDE, MATTHEW R. CLEMENTS, and
`J. JOHN LEE, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`

`

`IPR2014-01544
`Patent 7,051,147 B2
`
`INTRODUCTION
`
`
`
`On September 25, 2014, Cisco Systems, Inc. (“Cisco”) and Quantum
`
`Corporation (“Quantum”) (collectively, “Petitioners”) filed a Petition
`
`(Paper 3, “Pet.”) requesting inter partes review of claims 1–39 of U.S.
`
`Patent No. 7,051,147 B2 (Ex. 1001, “the ’147 patent”). Crossroads Systems,
`
`Inc. (“Crossroads” or “Patent Owner”) filed a Preliminary Response
`
`(Paper 7, “Prelim. Resp.”) on January 8, 2015. We have jurisdiction under
`
`35 U.S.C. § 314 to determine whether to institute an inter partes review.
`
`
`
`An inter partes review may be instituted only if the information
`
`presented in the Petition and 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). On the
`
`present record, the information presented shows there is a reasonable
`
`likelihood that Petitioners would prevail in establishing the unpatentability
`
`of each of the challenged claims. Accordingly, pursuant to § 314, we
`
`institute an inter partes review of claims 1–39 of the ’147 patent.
`
`
`
`A.
`
`Related Proceedings
`
`
`
`The parties identify the following district court cases as proceedings
`
`involving the ’147 patent: Crossroads Sys., Inc. v. Oracle Corp., No. 1:13-
`
`cv-00895-SS (W.D. Tex.); Crossroads Sys., Inc. v. Huawei Techs. Co., No.
`
`1:13-cv-01025-SS (W.D. Tex.); Crossroads Sys., Inc. v. Cisco Sys., Inc., No.
`
`1:14-cv-00148-SS (W.D. Tex.); Crossroads Sys., Inc. v. NetApp, Inc., No.
`
`1:14-cv-00149-SS (W.D. Tex.); and Crossroads Sys., Inc. v. Quantum
`
`Corp., No. 1:14-cv-00150-SS (W.D. Tex.). Pet. 1; Paper 8, 3–4. According
`
`to the parties, the ’147 patent is also at issue in petitions seeking inter partes
`
`review in the following proceedings before the Board: Oracle Corp. v.
`
`2
`
`

`

`IPR2014-01544
`Patent 7,051,147 B2
`
`Crossroads Sys., Inc., Case IPR2014-01207; Oracle Corp. v. Crossroads
`
`Sys., Inc., Case IPR2014-01209; NetApp, Inc. v. Crossroads Sys., Inc., Case
`
`IPR2015-00773; and Oracle Corp. v. Crossroads Sys., Inc., Case IPR2015-
`
`00852. Pet. 1; Paper 8, 4–5.
`
`
`
`The parties also identify the following district court cases and
`
`proceedings before the Board as involving other patents related to the ’147
`
`patent: Crossroads Sys., Inc. v. 3PAR, Inc., No. 1:10-cv-00652 (W.D. Tex.);
`
`Oracle Corp. v. Crossroads Sys., Inc., Case IPR2014-01177; Oracle Corp.
`
`v. Crossroads Sys., Inc., Case IPR2014-01197; Cisco Sys., Inc. v.
`
`Crossroads Sys., Inc., Case IPR2014-01226; NetApp, Inc. v. Crossroads
`
`Sys., Inc., Case IPR2014-01233; Cisco Sys., Inc. v. Crossroads Sys., Inc.,
`
`Case IPR2014-01463; NetApp, Inc. v. Crossroads Sys., Inc., Case IPR2015-
`
`00772; NetApp, Inc. v. Crossroads Sys., Inc., Case IPR2015-00776; NetApp,
`
`Inc. v. Crossroads Sys., Inc., Case IPR2015-00777; Dot Hill Sys. Corp. v.
`
`Crossroads Sys., Inc., Case IPR2015-00822; Oracle Corp. v. Crossroads
`
`Sys., Inc., Case IPR2015-00825; and Oracle Corp. v. Crossroads Sys., Inc.,
`
`Case IPR2015-00854.1 Pet. 1; Paper 8, 4–5.
`
`
`
`B.
`
`The ’147 Patent
`
`
`
`The ’147 patent relates to a storage router and network where devices
`
`(e.g., workstations) connected via a Fibre Channel (“FC”) transport medium
`
`are provided access to storage devices on a second FC transport medium.
`
`Ex. 1001, Abstract. The storage router interfaces with both FC media,
`
`mapping workstations on the first FC medium, for example, to the storage
`
`devices on the second FC medium. Id.
`
`
`1 The Board has issued decisions denying the petitions in IPR2014-01177
`and IPR2014-01233, and those proceedings are no longer pending.
`
`3
`
`

`

`IPR2014-01544
`Patent 7,051,147 B2
`
`
`
`The storage router of the ’147 patent allows the workstations to
`
`communicate with the storage devices using “native low level, block
`
`protocol.” Id. For example, in describing a storage router connecting a
`
`workstation on an FC medium to a storage device on a SCSI medium in a
`
`manner consistent with the invention, the specification states that the storage
`
`router “enables the exchange of SCSI command set information between
`
`application clients on SCSI bus devices and the [FC] links.” Id. at 5:46–50
`
`(emphasis added). One advantage of using such native low level block
`
`protocols is greater access speed when compared to network protocols that
`
`must first be translated to low level requests, and vice versa, which reduces
`
`access speed. Id. at 1:58–67.
`
`
`
`C.
`
`Challenged Claims
`
`
`
`Petitioners challenge the patentability of claims 1–39 of the ’147
`
`patent, of which claims 1, 6, 10, 14, 21, 28, and 34 are independent. Claim 1
`
`is illustrative of the challenged claims, and recites:
`
`A storage router for providing virtual local storage on
`1.
`remote storage devices to a device, comprising:
`
`a buffer providing memory work space for the storage router;
`
`a first Fibre Channel controller operable to connect to and
`interface with a first Fibre Channel transport medium;
`
`a second Fibre Channel controller operable to connect to and
`interface with a second Fibre Channel transport medium; and
`
`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
`
`4
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`

`

`IPR2014-01544
`Patent 7,051,147 B2
`
`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.
`
`
`
`D.
`
`Alleged Grounds of Unpatentability
`
`
`
`The sole ground of unpatentability advanced by Petitioners against the
`
`challenged claims of the ’147 patent (i.e., claims 1–39) is that each claim is
`
`unpatentable under 35 U.S.C. § 103 over the CRD Manual2 (Ex. 1004) and
`
`the HP Journal3 (Ex. 1006).
`
`
`
`
`
`In the analysis that follows, facts and arguments are discussed as they
`
`ANALYSIS
`
`have been presented thus far in this proceeding. Any inferences or
`
`conclusions drawn from those facts are neither final nor dispositive of any
`
`issue related to any ground on which review is instituted.
`
`
`
`A.
`
`Claim Construction
`
`
`
`Petitioners propose constructions for several claim terms. Pet. 10–14.
`
`Patent Owner does not address any particular claim constructions in its
`
`Preliminary Response. At this stage of the proceeding and on the present
`
`record, we conclude that no claim terms require express construction for
`
`purposes of this Decision.
`
`
`
`
`2 CMD TECHNOLOGY, INC., CRD-5500 SCSI RAID CONTROLLER USER’S
`MANUAL (Rev. 1.3, 1996) (“CRD Manual”).
`3 HEWLETT-PACKARD JOURNAL, Oct. 1996 (“HP Journal”).
`
`5
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`

`

`IPR2014-01544
`Patent 7,051,147 B2
`
`B.
`
`Alleged Unpatentability Under § 103
`
`
`
`Petitioners contend claims 1–39 would have been obvious over the
`
`combination of the CRD Manual and the HP Journal. Pet. 9. In addition to
`
`the arguments in the Petition (Pet. 14–60), Petitioners present the
`
`Declaration of Andrew Hospodor, Ph.D., to support their contentions. See
`
`Ex. 1003 ¶¶ 42–63.
`
`
`
`
`
`
`
`1.
`
`The CRD Manual
`
`The CRD Manual describes the CRD-5500 RAID controller, a device
`
`that enables access to an array of disk drives on a SCSI bus. Ex. 1004, 9.4
`
`This controller has a modular design that permits customization of its I/O
`
`channels using different I/O hardware modules, which allow support of
`
`multiple hosts and multiple drives. Id. at 9–11.
`
`
`
`
`
`
`
`2.
`
`The HP Journal
`
`The HP Journal is a collection of articles dated October 1996.
`
`Ex. 1006, 1–3. For example, the HP Journal includes an article titled “An
`
`Introduction to Fibre Channel” by Meryem Primmer (“Primmer Article”).
`
`Id. at 94. The Primmer Article discusses FC technology, describing it as “a
`
`flexible, scalable, high-speed data transfer interface” where “[n]etworking
`
`and I/O protocols, such as SCSI commands, are mapped to [FC] constructs
`
`and encapsulated and transported within [FC] frames.” Id.
`
`
`
`Additionally, an article titled “Tachyon: A Gigabit Fibre Channel
`
`Protocol Chip,” by Judith A. Smith and Meryem Primmer (“Smith Article”),
`
`is also included in the HP Journal. Id. at 99. This article discusses the
`
`
`4 For clarity, we refer to the pagination of Exhibit 1004 provided by
`Petitioners and not its native pagination.
`
`6
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`

`

`IPR2014-01544
`Patent 7,051,147 B2
`
`Tachyon chip, an FC interface controller (id. at 111) that “enables a
`
`seamless interface to the physical FC-0 layer and low-cost [FC] attachments
`
`for hosts, systems, and peripherals on both industry-standard and proprietary
`
`buses.” Id. at 99.
`
`
`
`These portions of the HP Journal relied on by Petitioners share a
`
`common author (Meryem Primmer), and similar subject matter (FC
`
`technology and its implementation), as well as the same apparent publication
`
`date in the same issue of the journal. Patent Owner, in its Preliminary
`
`Response, did not dispute that one of ordinary skill would have combined
`
`the teachings of the different articles in the HP Journal cited by Petitioners.
`
`Thus, for purposes of this Decision, we refer to these HP Journal articles
`
`together, consistent with the Petition and Preliminary Response.
`
`
`
`
`
`
`
`3.
`
`Claims 1–13
`
`Petitioners provide detailed arguments and identify specific evidence
`
`to support their contention that the combination of the CRD Manual and the
`
`HP Journal teaches or suggests each element of claim 1. Pet. 23–29. For
`
`example, Petitioners assert the CRD Manual teaches the buffer of claim 1 in
`
`its disclosure of an onboard cache that temporarily stores data sent by a host
`
`to be written to a disk drive. Id. at 24; see Ex. 1004, 12. According to
`
`Petitioners, the CRD Manual’s teachings of a central processing unit on a
`
`system board, and firmware for controlling I/O modules, correspond to the
`
`supervisor unit of claim 1. Pet. 26; see Ex. 1004, 9, 11.
`
`
`
`Further, Petitioners assert the firmware taught in the CRD Manual
`
`includes a monitor utility that maintains a configuration mapping a device on
`
`a first medium to remote storage devices on a second medium, as recited in
`
`claim 1. Pet. 26–27. Specifically, Petitioners identify the CRD Manual’s
`
`7
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`

`

`IPR2014-01544
`Patent 7,051,147 B2
`
`description of the monitor utility’s “Host LUN Mapping” feature that maps a
`
`host channel to particular “redundancy groups,” where each redundancy
`
`group comprises a combination of disk drives. Id. (quoting Ex. 1004, 19,
`
`44). In addition, this mapping of LUN identifiers of a host device to specific
`
`groups of disk drives allows certain drives to be made available to one host
`
`channel while blocking access from another host, which teaches
`
`implementing access controls as recited in claim 1, according to Petitioners.
`
`Pet. 27–28; see Ex. 1004, 44.
`
`
`
`Petitioners argue the first and second FC controllers and transport
`
`media of claim 1 are taught by the CRD Manual’s teaching of multiple I/O
`
`modules, which interface with SCSI buses, combined with the HP Journal’s
`
`teachings of an FC controller module and FC transport medium. Pet. 24–26;
`
`see Ex. 1004, 21, 24; Ex. 1006, 101, 111. Further, Petitioners contend that
`
`the combination of these references also teaches processing data in a buffer
`
`to interface between two FC controllers and allows an initiating device to
`
`access a remote storage device using native low level block protocols, as
`
`recited in claim 1. Pet. 28–29. Specifically, Petitioners identify the CRD
`
`Manual’s teachings of a cache where data from a host device is stored and
`
`then written to a disk drive (Ex. 1004, 12); and communications between the
`
`host, controller, and disk drives via SCSI buses and SCSI commands (id. at
`
`9, 24, 57); as well as the HP Journal’s teachings of encapsulating and
`
`transporting SCSI commands within FC frames (Ex. 1006, 94, 101–102).
`
`
`
`With respect to claims 2–5, which depend from claim 1, Petitioners
`
`explain in detail how the evidence supports their contention that the
`
`combination of the CRD Manual and the HP Journal also teaches or suggests
`
`each element of these dependent claims. Pet. 30–34. For example,
`
`Petitioners assert that the host LUN mapping feature disclosed in the CRD
`
`8
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`

`

`IPR2014-01544
`Patent 7,051,147 B2
`
`Manual teaches an allocation of subsets of storage space to an associated
`
`device, as recited in claim 2, because hosts are mapped to specific
`
`redundancy groups of disk drives, which are subsets of storage space.
`
`Pet. 30; see Ex. 1004, 44. Further, the CRD Manual’s teachings of access
`
`controls, discussed above, teach limiting access to each subset of storage
`
`space to the associated devices because access to any particular redundancy
`
`group may be allowed or blocked to a given host, according to Petitioners.
`
`Pet. 30–31; see Ex. 1004, 44.
`
`
`
`Petitioners identify the HP Journal’s disclosure of FC topologies with
`
`workstations connected to an FC network, such as an FC arbitrated loop, as
`
`teaching workstations as FC devices, as recited in claim 3. Pet. 31;
`
`Ex. 1006, 95–96. The specification of the ’147 patent also discloses
`
`configurations using an FC arbitrated loop. Ex. 1001, 5:56–57. In addition,
`
`Petitioners assert the CRD Manual teaches that the storage devices comprise
`
`hard disk drives, as recited in claim 4. Pet. 32; Ex. 1004, 24.
`
`
`
`According to Petitioners, the HP Journal teaches each of the
`
`limitations of claim 5. Pet. 32–34. For example, the HP Journal teaches that
`
`the Tachyon FC controller chip includes a “frame manager” that corresponds
`
`to the FC protocol unit of claim 5, according to Petitioners. Id. at 32–33; see
`
`Ex. 1006, 102, 104, 106. Petitioners further identify the “outbound frame
`
`FIFO,” “ACK FIFO,” and “inbound data FIFO” in the HP Journal as each
`
`corresponding to the first-in-first-out queue of claim 5. Pet. 33 (quoting
`
`Ex. 1006, 104, 106). Additionally, Petitioners assert that the HP Journal
`
`teaches the direct memory access (“DMA”) interface of claim 5 in its
`
`disclosure of an “inbound block mover,” which is “responsible for DMA
`
`transfers of inbound data into buffers,” and an “outbound block mover,”
`
`which “transfers ‘outbound data . . . via DMA.’” Pet. 33–34 (quoting
`
`9
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`

`IPR2014-01544
`Patent 7,051,147 B2
`
`Ex. 1006, 106); see also Ex. 1006, 105 (showing the connections between
`
`the inbound/outbound block movers, the buffers, and the FIFO queues).
`
`
`
`Claims 6–13 recite similar limitations to those recited in claims 1–5,
`
`and Petitioners rely on similar arguments and evidence as for claims 1–5.
`
`See Pet. 34–43.
`
`
`
`Based on the present record, Petitioners have shown sufficiently that
`
`the combination of the CRD Manual and the HP Journal teaches or suggests
`
`each limitation of claims 1–13.
`
`
`
`
`
`
`
`4.
`
`Claims 14–39
`
`Independent claims 14, 21, 28, and 34 recite similar limitations to
`
`those recited in claim 1, and Petitioners rely on similar arguments and
`
`evidence as for claim 1. See Pet. 43–46, 52–59. Further, Petitioners provide
`
`detailed arguments and identify specific evidence to support their contention
`
`that the combination of the CRD Manual and the HP Journal teaches or
`
`suggests each element of the claims depending from claims 14, 21, 28, and
`
`34. Pet. 46–51, 53–54, 59–60.
`
`
`
`For example, Petitioners assert that the host LUN mapping feature
`
`disclosed in the CRD Manual teaches the limitations of claims 15–17.
`
`Pet. 46–49; see Ex. 1004, 44 (describing “map[ping] LUNs on each host
`
`channel to a particular redundancy group”). Specifically, Petitioners
`
`contend the “host channel” number corresponds to the recited host device
`
`ID, the “host LUN” corresponds to the recited virtual LUN representation of
`
`a storage device, the “redundancy group” number corresponds to the recited
`
`physical LUN of the storage device, and a host channel’s access to storage
`
`devices can be restricted to only certain redundancy groups, i.e., storage
`
`devices or partitions thereof. Pet. 46–49 (citing Ex. 1004, 37, 41, 44).
`
`10
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`

`IPR2014-01544
`Patent 7,051,147 B2
`
`
`
`With respect to claims 18 and 19, Petitioners argue the CRD Manual
`
`teaches the recited limitations. Pet. 49–50. In particular, Petitioners identify
`
`the CRD Manual’s disclosures regarding the partitioning of disk drives, and
`
`the assignment of each partition (i.e., “redundancy group”) to specific hosts,
`
`as teaching the recited storage space partitioned into virtual local storage for
`
`a device, and preventing the device from accessing storage space other than
`
`its assigned partition. Id. (citing Ex. 1004, 41, 44).
`
`
`
`According to Petitioners, the combination of the CRD Manual and HP
`
`Journal also teaches the limitation of claim 20, that the two FC controllers
`
`“further comprise a single controller.” Pet. 51. Specifically, Petitioners
`
`assert the HP Journal teaches an FC arbitrated loop topology where multiple
`
`computers and storage systems are supported on a single loop, which can be
`
`controlled with a single Tachyon FC controller. Id. (citing Ex. 1006, 95,
`
`101); see also Ex. 1006, 96 (showing FC topologies with multiple computers
`
`and storage devices on a single loop). Further, Petitioners argue the CRD
`
`Manual teaches the use of I/O modules for host devices and disk drives, and
`
`that a person of ordinary skill would have known a single Tachyon FC
`
`controller could be used as an FC I/O module to control both host computers
`
`and storage devices on a common FC arbitrated loop. Pet. 51 (citing
`
`Ex. 1003 ¶¶ 149–51).
`
`
`
`Claims 22–27, 29–33, and 35–39 recite similar limitations to those
`
`recited in claims 15–20, and Petitioners rely on similar arguments and
`
`evidence as for claims 15–20. See Pet. 53–54, 59–60.
`
`
`
`Based on the present record, Petitioners have shown sufficiently that
`
`the combination of the CRD Manual and the HP Journal teaches or suggests
`
`each limitation of claims 14–39.
`
`
`
`11
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`IPR2014-01544
`Patent 7,051,147 B2
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`
`
`
`
`5.
`
`Reason to Combine the CRD Manual and the HP Journal
`
`Patent Owner does not identify any specific limitation of the
`
`challenged claims that it contends is not taught by either the CRD Manual or
`
`HP Journal. Rather, Patent Owner argues a person of ordinary skill would
`
`not have combined the teachings of the CRD Manual and the HP Journal.
`
`Prelim. Resp. 35–36. Specifically, Patent Owner’s arguments focus on
`
`Petitioners’ contention that skilled artisans were informed by an alleged
`
`product datasheet that the CRD-5500 controller disclosed in the CRD
`
`Manual was designed to support FC technology. Id.; see Pet. 19 (citing
`
`Ex. 1005, 1). We are not persuaded by Patent Owner’s arguments, however,
`
`because Petitioners identified multiple other reasons that would have
`
`motivated one of ordinary skill to combine the relevant teachings of the
`
`CRD Manual and the HP Journal, and we are satisfied that, on this record,
`
`Petitioners articulated sufficient rational underpinning and presented
`
`adequate evidence supporting those contentions.5
`
`
`
`Specifically, Petitioners allege the following facts as supporting their
`
`contentions: (1) the CRD Manual teaches that the described CRD-5500
`
`controller has a modular design capable of accepting various I/O modules;
`
`(2) the HP Journal describes the benefits of FC technology over SCSI
`
`technology; (3) the HP Journal expressly discloses the replacement of SCSI
`
`with FC, including the use of SCSI commands with FC frames. Pet. 18–22.
`
`Dr. Hospodor concludes from the evidence that a person of ordinary skill
`
`would have known the benefits of replacing the SCSI modules in the CRD
`
`
`5 Patent Owner also argues the Petition is deficient because it fails to
`properly apply Petitioners’ proposed constructions, and does not “establish
`the differences between the [’147] patent and the prior art.” Prelim. Resp.
`31–35. We are not persuaded by these arguments and determine the Petition
`is not deficient in the manner alleged by Patent Owner.
`
`12
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`IPR2014-01544
`Patent 7,051,147 B2
`
`Manual with FC modules taught by the HP Journal, that the results of such a
`
`modification were predictable, and that such a modification would have been
`
`within the skill of an ordinary artisan. Ex. 1003 ¶¶ 53–62. On this record,
`
`we find Petitioners’ arguments and evidence persuasive.
`
`
`
`
`
`
`
`6.
`
`Conclusion on Obviousness Over CRD Manual and HP Journal
`
`Based on the present record, and considering the information and
`
`arguments presented in the Petition and Preliminary Response, Petitioners
`
`have shown a reasonable likelihood of prevailing on their challenge to
`
`claims 1–39 as obvious in light of the CRD Manual and the HP Journal.
`
`
`
`C. Discretion Under § 325(d)
`
`
`
`In its Preliminary Response, Patent Owner argues the Petition should
`
`be denied under 35 U.S.C. § 325(d). Prelim. Resp. 10–31. Under § 325(d),
`
`we have discretion to “reject the petition or request because[] the same or
`
`substantially the same prior art or arguments previously were presented to
`
`the Office.” 35 U.S.C. § 325(d). According to Patent Owner, we should
`
`exercise this discretion because the Office has already considered the same
`
`or similar arguments and prior art asserted in the Petition: (1) during
`
`prosecution of the ’147 patent (Prelim. Resp. 11–12); (2) during
`
`reexaminations of other patents related to the ’147 patent (id. at 12–20); and
`
`(3) in two previously-filed petitions seeking inter partes review of the ’147
`
`patent (id. at 24–31).
`
`
`
`After considering Patent Owner’s arguments and evidence, we decline
`
`to exercise our discretion under § 325(d) to deny this Petition. As to the
`
`prosecution of the ’147 patent, Patent Owner does not dispute Petitioner’s
`
`contention that the Examiner did not address substantively the teachings of
`
`13
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`IPR2014-01544
`Patent 7,051,147 B2
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`either the CRD Manual or the HP Journal. See Pet. 8; Chimei Innolux Corp.
`
`v. Semiconductor Energy Lab. Co., Case IPR2013-00066, 2013 WL
`
`8595548, at *4–5 (PTAB Apr. 24, 2013) (Paper 10) (declining to deny
`
`petition under § 325(d) where examiner did not consider substantially the
`
`same ground of unpatentability).
`
`
`
`With respect to the reexaminations, Patent Owner admits they
`
`concerned different, albeit related, patents. Prelim. Resp. 12–14. Moreover,
`
`none of the reexaminations identified by Patent Owner considered the HP
`
`Journal. Patent Owner asserts that the HP Journal, and the Smith Article
`
`portion in particular, is cumulative of a different reference that was
`
`considered, the “Tachyon User’s Manual.” Id. at 14–19. Petitioners,
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`however, rely on more than merely the Smith Article—for example,
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`Petitioners rely on the Primmer Article. See, e.g., Pet. 51 (citing Ex. 1006,
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`95). Further, Petitioners rely on Dr. Hospodor’s Declaration, which Patent
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`Owner has not alleged is duplicative of evidence previously presented to the
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`Office. See Tandus Flooring, Inc. v. Interface, Inc., Case IPR2013-00333,
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`2013 WL 8595289, at *2 (PTAB Dec. 9, 2013) (Paper 16) (declining to deny
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`petition under § 325(d) where petitioner presented new declaration
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`evidence); Chimei, 2013 WL 8595548, at *5 (same). Considering all of the
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`relevant facts and circumstances, Patent Owner’s argument is insufficient to
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`persuade us to deny the Petition.
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`As to the previously-filed inter partes reviews identified by Patent
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`Owner, IPR2014-01207 and IPR2014-01209, we first note that Petitioners
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`are not parties or real-parties-in-interest in either of those cases, as Patent
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`Owner acknowledges. Prelim. Resp. 30. Patent Owner cites Unified
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`Patents, Inc. v. Personal Web Techs., LLC, Case IPR2014-00702, slip op.
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`at 7 (PTAB July 24, 2014) (Paper 13), arguing that denying a petition under
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`IPR2014-01544
`Patent 7,051,147 B2
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`§ 325(d) is permissible even where the petitioner was not a party to the
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`previously-filed inter partes review proceedings. Prelim. Resp. 30. In
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`Unified Patents, however, a final written decision already had been issued in
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`at least one of the previous cases. See Unified Patents, Case IPR2014-
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`00702, slip op. at 7–8 (Paper 13). In contrast, both previously-filed inter
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`partes reviews at issue here were only instituted roughly two months ago.
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`See Oracle Corp. v. Crossroads Sys., Inc., Case IPR2014-01207, slip op.
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`at 1–2 (PTAB Feb. 2, 2015) (Paper 12); Oracle Corp. v. Crossroads Sys.,
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`Inc., Case IPR2014-01209, slip op. at 1–2 (PTAB Jan. 30, 2015) (Paper 12).
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`In addition, the petitions in those cases did not rely on identical prior art.
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`Although they did rely, in part, on the Smith Article, the Petition here also
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`relies on other portions of the HP Journal, as discussed above. See, e.g.,
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`Pet. 51 (citing Ex. 1006, 95 (Primmer Article)).
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`Denial of a Petition under § 325(d) is discretionary, not mandatory.
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`See 35 U.S.C. § 325(d) (“[The Board, on behalf of the Director,] may take
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`into account whether, and reject the petition or request because, the same or
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`substantially the same prior art or arguments previously were presented to
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`the Office.”) (emphasis added). Based on the parties’ arguments and the
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`present record, we decline to exercise that discretion.
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`CONCLUSION
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`For the foregoing reasons and based on the present record, Petitioners
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`have demonstrated a reasonable likelihood they would prevail in establishing
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`the unpatentability of claims 1–39 of the ’147 patent under 35 U.S.C. § 103
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`over the CRD Manual and the HP Journal. At this stage of the proceeding,
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`however, the Board has not yet made a final determination of the
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`patentability of the challenged claims.
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`IPR2014-01544
`Patent 7,051,147 B2
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`It is
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`ORDER
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`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
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`hereby instituted for claims 1–39 of the ’147 patent as unpatentable under
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`35 U.S.C. § 103 over the CRD Manual and the HP Journal; and
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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
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`commencing on the entry date of this decision.
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`16
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`IPR2014-01544
`Patent 7,051,147 B2
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`PETITIONER:
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`David L. McCombs
`Andrew S. Ehmke
`Scott T. Jarratt
`HAYNES AND BOONE, LLP
`david.mccombs.ipr@haynesboone.com
`andy.ehmke.ipr@haynesboone.com
`scott.jarratt.ipr@haynesboone.com
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`
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`PATENT OWNER:
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`Steven R. Sprinkle
`Russell Wong
`John L. Adair
`James Hall
`SPRINKLE IP LAW GROUP
`crossroadsipr@sprinklelaw.com
`crossroadsipr@counselip.com
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`17
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