Paper No. 13
` Entered: September 9, 2015
`
`
`
`
`
`
`Trials@uspto.gov
`571.272.7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETAPP INC.,
`Petitioner,
`
`v.
`
`CROSSROADS SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00773
`Patent 7,051,147 B2
`____________
`
`
`
`Before NEIL T. POWELL, KRISTINA M. KALAN, J. JOHN LEE, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
` Entered: September 9, 2015
`
`
`
`
`
`
`Trials@uspto.gov
`571.272.7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETAPP INC.,
`Petitioner,
`
`v.
`
`CROSSROADS SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00773
`Patent 7,051,147 B2
`____________
`
`
`
`Before NEIL T. POWELL, KRISTINA M. KALAN, J. JOHN LEE, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`IPR2015-00773
`Patent 7,051,147 B2
`
`
`
`
`
`
`
`INTRODUCTION
`
`On February 19, 2015, Petitioner NetApp Inc. (“NetApp”) filed a
`
`Petition (Paper 2, “Pet.”) requesting inter partes review of claims 1–13 of
`
`U.S. Patent No. 7,051,147 B2 (Ex. 1001, “the ’147 patent”). Patent Owner
`
`Crossroads Systems, Inc. (“Crossroads”) filed a Preliminary Response
`
`(Paper 11, “Prelim. Resp.”) on June 14, 2015. We have jurisdiction under
`
`35 U.S.C. § 314 to determine whether to institute an inter partes review.
`
`
`
`For the reasons discussed below, we do not institute an inter partes
`
`review of the challenged claims and deny the Petition.
`
`
`
`A.
`
`Related Proceedings
`
`
`
`The parties identify numerous related district court cases, proceedings
`
`before the Board, and patent applications currently or previously before the
`
`Office. Pet. 1; Ex. 1026, 1–2; Paper 5; Paper 9; Paper 10. In particular, the
`
`parties identify Crossroads Systems, Inc. v. NetApp, Inc., Case No. 1-14-cv-
`
`00149 (W.D. Tex.), and Oracle Corp. v. Crossroads Systems, Inc., Case
`
`IPR2014-01209 (PTAB) (“1209 IPR”). Id.
`
`
`
`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.
`
`2
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`IPR2015-00773
`Patent 7,051,147 B2
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`
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`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
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`protocols is greater access speed when compared to network protocols that
`
`must first be translated to low level requests, and vice versa, which reduces
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`access speed. Id. at 1:58–67.
`
`
`
`C.
`
`Challenged Claims
`
`
`
`Petitioner challenges the patentability of claims 1–13 of the
`
`’147 patent, of which claims 1, 6, and 10 are independent. Claim 1 is
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`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
`
`3
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`
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`IPR2015-00773
`Patent 7,051,147 B2
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`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.
`
`
`
`D.
`
`Alleged Grounds of Unpatentability
`
`
`
`NetApp asserts the following grounds of unpatentability:
`
`Asserted Prior Art
`
`CRD Manual1 (Ex. 1003), CRD Data Sheet2
`(Ex. 1004), and Smith3 (Ex. 1005)
`
`Basis
`
`Claims
`
`§ 103(a)
`
`1–13
`
`Kikuchi4 (Ex. 1006) and Bergsten5 (Ex. 1007)
`
`§ 103(a)
`
`3, 6–9, 12
`
`Bergsten and Hirai6 (Ex. 1008)
`
`§ 103(a)
`
`3, 6–9, 12
`
`
`In addition to the alleged prior art references above, NetApp relies on the
`
`Declaration of Professor Jeffrey S. Chase, Ph.D. (Ex. 1010).
`
`
`
`
`1 CMD TECHNOLOGY, INC., CRD-5500 SCSI RAID CONTROLLER USER’S
`MANUAL (Rev. 1.3, 1996) (“CRD Manual”).
`2 CRD-5500 RAID Disk Array Controller Data Sheet (“CRD Data Sheet”).
`3 Judith A. Smith & Meryem Primmer, Tachyon: A Gigabit Fibre Channel
`Protocol Chip, HEWLETT-PACKARD JOURNAL, Oct. 1996 (“Smith”).
`4 U.S. Patent No. 6,219,771 B1, issued Apr. 17, 2001 (“Kikuchi”).
`5 U.S. Patent No. 6,073,209, issued June 6, 2000 (“Bergsten”).
`6 Japanese Patent App. Pub. No. HEI 5[1993]-181609, published
`July 23, 1993 (“Hirai”).
`
`4
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`IPR2015-00773
`Patent 7,051,147 B2
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`ANALYSIS
`
`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). Based on the Petition and the
`
`present record, we exercise that discretion to reject all asserted grounds of
`
`unpatentability because NetApp presents merely “the same or substantially
`
`the same prior art or arguments” previously presented by NetApp in the
`
`1209 IPR.7
`
`
`
`On July 25, 2014, NetApp, along with Oracle Corporation and
`
`Huawei Technologies Co., Ltd., filed a petition seeking inter partes review
`
`of claims 1–13 of the ’147 patent, the same claims challenged in the present
`
`Petition. 1209 IPR, Paper 1 (“1209 Pet.”). Each of the grounds of
`
`unpatentability advanced in the present Petition also was presented in the
`
`1209 IPR petition against the same claims, among other asserted grounds.
`
`Compare Pet. 3, with 1209 Pet. 4–5. The Decision on Institution in the
`
`1209 IPR was entered on January 30, 2015. 1209 IPR, Paper 12 (“1209 Inst.
`
`Dec.”). An inter partes review was instituted on some, but not all, of the
`
`grounds asserted in the 1209 IPR petition. Id. at 15. Specifically, a review
`
`was instituted on claims 1, 2, 4, 10, 11, and 13 as allegedly unpatentable
`
`under § 103(a) over (1) Kikuchi and Bergsten, and (2) Bergsten and Hirai.
`
`Id. A review was also instituted on claim 5 as allegedly unpatentable under
`
`§ 103(a) over (1) Kikuchi, Bergsten, and Smith; and (2) Bergsten, Hirai, and
`
`Smith. Id.
`
`
`7 Consequently, we need not address the remaining arguments by Crossroads
`for denial of the Petition. See Prelim. Resp. 25–39.
`
`5
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`IPR2015-00773
`Patent 7,051,147 B2
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`
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`The remaining grounds asserted in the 1209 IPR petition were rejected
`
`for failure to provide adequate explanation in the petition, and for improper
`
`incorporation by reference. 1209 Inst. Dec. 7–10, 12–13; see 37 C.F.R.
`
`§§ 42.6(a)(3), 42.22(a), 42.104(b). Those rejected grounds are the grounds
`
`now presented, for a second time, in the present Petition. Pet. 3.
`
`
`
`NetApp acknowledges that the present Petition is similar to the
`
`petition it filed in the 1209 IPR. See Pet. 59 (“Petitioner was one of the
`
`petitioners in IPR2014-01209, which corresponds generally to this
`
`petition.”). According to NetApp, the challenges presented in the Petition
`
`nonetheless should be considered because the Petition now presents them
`
`without the defects that caused their rejection in the 1209 IPR. Id. at 59–60.
`
`NetApp adds that the Petition “is not filed for any improper purpose such as
`
`harassment or delay.” Id. at 60. These arguments are unpersuasive.
`
`
`
`The present Petition advances the same grounds of unpatentability,
`
`against the same claims, based on the same prior art, as those presented in
`
`the 1209 IPR. Compare Pet. 3, with 1209 Pet. 4–5. NetApp relies on
`
`substantially the same testimony from the same declarant. Compare
`
`Ex. 1010, with 1209 IPR, Ex. 1010. Further, NetApp’s arguments made in
`
`support of each asserted ground are substantially the same as those made in
`
`the 1209 IPR. Compare Pet. 6–28, with 1209 Pet. 12–29; compare Pet. 29–
`
`43, with 1209 Pet. 29–43; compare Pet. 43–57, with 1209 Pet. 44–57. In
`
`essence, the present Petition amounts to a request for a second chance to
`
`challenge the patentability of the same claims based on the same arguments
`
`and evidence.
`
`
`
`Moreover, the present Petition was filed on February 19, 2015, shortly
`
`after the Decision on Institution in the 1209 IPR was issued on January 30,
`
`6
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`IPR2015-00773
`Patent 7,051,147 B2
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`2015. The Petition itself notes that “the Board declined to institute [in the
`
`1209 IPR] on the basis that the evidence was not presented in the petition in
`
`the manner required by the rules,” and states that “this petition properly
`
`presents the prior art by identifying all of the prior art evidence within the
`
`four corners of the petition.” Pet. 59–60. Thus, NetApp indicates that it
`
`used the Board’s decision as a guide for preparing the present Petition to
`
`correct the defects in the prior petition identified by the Board.
`
`
`
`Generally, these considerations weigh in favor of exercising our
`
`discretion under § 325(d) to deny the Petition. See, e.g., Samsung Elecs.,
`
`Co., Ltd. v. Rembrandt Wireless Techs., LP, Case IPR2015-00118, slip op. at
`
`6–7 (PTAB Jan. 28, 2015) (Paper 14); Butamax Advanced Biofuels LLC v.
`
`Gevo, Inc., Case IPR2014-00581, slip op. at 8–10, 12–13 (PTAB Oct. 14,
`
`2014) (Paper 8). Petitioner’s assertion that the Petition “is not filed for any
`
`improper purpose such as harassment or delay” is not a persuasive reason to
`
`institute an inter partes review in view of the circumstances of this case and
`
`its related cases.
`
`
`
`In addition, all of the challenged claims in the Petition are currently
`
`the subject of instituted inter partes reviews filed by NetApp, or parties with
`
`whom NetApp has filed inter partes review petitions challenging the
`
`’147 patent. 1209 Inst. Dec. 15 (instituting trial on claims 1, 2, 4, 5, 10, 11,
`
`and 13); Oracle Corp. v. Crossroads Sys., Inc., Case IPR2015-00852,
`
`slip op. at 9–10 (PTAB Aug. 14, 2015) (Paper 14) (instituting trial on claims
`
`1–13 and joining case with IPR2014-01544); see also Cisco Sys., Inc. v.
`
`Crossroads Sys., Inc., Case IPR2014-01544, slip op. at 16 (PTAB
`
`Apr. 3, 2015) (Paper 9) (instituting trial on claims 1–13). Instituting another
`
`inter partes review on the same claims based on this Petition, in these
`
`7
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`IPR2015-00773
`Patent 7,051,147 B2
`
`
`
`
`circumstances, would hinder the “secure the just, speedy, and inexpensive
`
`resolution” of those proceedings. See 37 C.F.R. § 42.1(b).
`
`
`
`
`
`CONCLUSION
`
`We exercise our discretion to deny the Petition under 35 U.S.C.
`
`§ 325(d) because “the same or substantially the same prior art or arguments
`
`previously were presented to the Office.”
`
`ORDER
`
`It is
`
`ORDERED that the Petition is denied.
`
`
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`
`8
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`IPR2015-00773
`Patent 7,051,147 B2
`
`
`
`
`PETITIONER:
`
`Greg H. Gardella
`Scott A. McKeown
`OBLON LLP
`cpdocketgardella@oblon.com
`cpdocketmckeown@oblon.com
`
` PATENT OWNER:
`
`Russell Wong
`James H. Hall
`BLANK ROME, LLP
`CrossroadsIPR@blankrome.com
`
`
`Steven R. Sprinkle
`John L. Adair
`SPRINKLE IP LAW GROUP
`crossroadsipr@sprinklelaw.com
`
`
`9
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