Trials@uspto.gov
`571.272.7822
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` Paper No. 14
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` Entered: September 15, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ORACLE CORPORATION,
`Petitioner,
`
`v.
`
`CROSSROADS SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00854
`Patent 7,934,041 B2
`____________
`
`
`
`Before NEIL T. POWELL, KRISTINA M. KALAN, J. JOHN LEE, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
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`

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`IPR2015-00854
`Patent 7,934,041 B2
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`
`
`INTRODUCTION
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`
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`On March 6, 2015, Oracle Corporation (“Oracle”) filed a Petition
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`(Paper 1, “Pet.”) requesting inter partes review of claims 1–53 of U.S.
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`Patent No. 7,934,041 B2 (Ex. 1001, “the ’041 patent”). Concurrently with
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`the Petition, Oracle filed a Motion for Joinder (Paper 3, “Mot.”), requesting
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`that this proceeding be joined with Cisco Systems, Inc. v. Crossroads
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`Systems, Inc., Case IPR2014-01463 (“1463 IPR”). Mot. 1. Patent Owner
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`Crossroads Systems, Inc. (“Crossroads”) filed a Preliminary Response
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`(Paper 12, “Prelim. Resp.”) on June 22, 2015. Crossroads did not file an
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`opposition to the Motion for Joinder.
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`
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`For the reasons discussed below, we institute an inter partes review of
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`all challenged claims and grant Oracle’s Motion for Joinder.
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`
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`INSTITUTION OF INTER PARTES REVIEW
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`In the 1463 IPR, an inter partes review of claims 1–53 of the ’041
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`patent was instituted. 1463 IPR, slip op. at 20 (PTAB Mar. 17, 2015)
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`(Paper 9). Specifically, an inter partes review was instituted (1) as to claims
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`1–14, 16–33, 35–50, and 53 as allegedly being unpatentable over the CRD-
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`5500 Manual1 and the HP Journal2; and (2) as to claims 15, 34, 51, and 52 as
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`1 CMD TECHNOLOGY, INC., CRD-5500 SCSI RAID CONTROLLER USER’S
`MANUAL (Rev. 1.3, 1996) (Ex. 1004, “CRD-5500 Manual”).
`2 HEWLETT-PACKARD JOURNAL, Oct. 1996 (Ex. 1006, “HP Journal”). The
`HP Journal is a collection of articles dated October 1996. Ex. 1006, 1–3.
`The portions of the HP Journal relied on by Oracle share a common author,
`similar subject matter, and the same apparent publication date in the same
`issue of the journal. In its Preliminary Response, Crossroads does not
`dispute that one of ordinary skill would have combined the teachings of the
`different articles in the HP Journal cited by Oracle. Thus, for purposes of
`this Decision, we refer to these HP Journal articles together.
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`2
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`

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`IPR2015-00854
`Patent 7,934,041 B2
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`allegedly being unpatentable over the CRD-5500 Manual, the HP Journal,
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`and the Fibre Channel Standard.3 Id. The Petition in this proceeding
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`challenges the same claims, asserts identical grounds of unpatentability, and
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`relies on the same evidence as presented in the 1463 IPR. Pet. 1; Mot. 1.
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`Oracle represents that the Petition “copies verbatim the challenges set forth
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`in the petition in [the 1463 IPR] and relies upon the same evidence,
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`including the same expert declaration.” Pet. 1 (citation omitted); see Mot. 1.
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`
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` In its Preliminary Response, Crossroads does not present any
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`arguments concerning the merits of the ground of unpatentability asserted
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`against the challenged claims. Instead, Crossroads argues the Petition
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`should be denied under 35 U.S.C. § 325(d). Prelim. Resp. 1–26.
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`Specifically, Crossroads notes that the present Petition “is the second of
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`three petitions for inter partes review filed by [Oracle] against the ’041
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`Patent.” Id. at 1. According to Crossroads, the present Petition is the
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`product of Oracle’s improper efforts to use the Board’s decision in the
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`earlier-filed case, IPR2014-01177 (“1177 IPR”), as a guide to address
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`deficiencies in its earlier petition. Id. at 11–15 (citing prior Board
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`decisions). Crossroads contends the present Petition represents “nothing
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`more than a ‘second bite at the apple,’” where the only difference compared
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`to Oracle’s earlier petition “is the presence of additional reasoning to support
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`the assertion of unpatentability over the same prior art.” Id. at 11 (quoting
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`Samsung Elecs. Co. v. Rembrandt Wireless Techs., LP, Case IPR2015-
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`00118, slip op. at 6 (PTAB Jan. 28, 2015) (Paper 14)). Crossroads notes that
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`the Board’s rules must be “construed to secure the just, speedy, and
`
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`3 AMERICAN NATIONAL STANDARDS INSTITUTE, INC., FIBRE CHANNEL
`PHYSICAL AND SIGNALING INTERFACE (FC-PH) X3.230, June 1994
`(Ex. 1007, “Fibre Channel Standard”).
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`3
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`IPR2015-00854
`Patent 7,934,041 B2
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`inexpensive resolution of every proceeding,” and asserts that instituting trial
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`on Oracle’s Petition in this proceeding would frustrate that purpose. Id. at
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`15–16 (quoting 37 C.F.R. § 42.1(b)). We are not persuaded that denial of
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`the Petition under § 325(d) is warranted.
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`
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`The facts and circumstances of this case do not support Crossroads’s
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`allegations. Oracle and others filed an earlier petition in the 1177 IPR.
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`Oracle Corp. v. Crossroads Systems, Inc., Case IPR2014-01177, Paper 5
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`(PTAB July 24, 2014) (“1177 IPR Petition”). Cisco Systems, Inc. and
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`Quantum Corporation (“Cisco/Quantum”) filed the 1463 IPR on September
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`8, 2014. 1463 IPR, Paper 3 (“1463 IPR Petition”). A decision on institution
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`in the 1177 IPR was issued on January 28, 2015. 1177 IPR, Paper 13.
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`When Oracle filed the present Petition on March 6, 2015, it did not base the
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`Petition on the 1177 IPR Petition, nor did it tailor the present Petition
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`specifically to address issues raised in the institution decision in that earlier
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`case. Rather, it copied verbatim the challenges presented in the 1463 IPR
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`Petition, which was filed well before the institution decision in the 1177
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`IPR. Mot. 1; Pet. 1.
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`
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`Moreover, the present case can be distinguished from those cited by
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`Crossroads (see Prelim. Resp. 8–13, 16–26) because institution of the
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`present Petition would not subject Crossroads or the ’041 patent to any new
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`challenges. For example, in the Samsung/Rembrandt case, the latter-filed
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`petition challenged the same claims for which institution of an inter partes
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`review had been denied in a prior case. Samsung/Rembrandt, Case
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`IPR2015-00118, Paper 14 at 2; see also ZTE Corp. v. ContentGuard
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`Holdings, Inc., Case IPR2013-00454, slip op. at 2 (PTAB Sept. 25, 2013)
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`(Paper 12) (declining to institute inter partes review on second petition
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`4
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`IPR2015-00854
`Patent 7,934,041 B2
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`challenging claims for which inter partes review was previously denied);
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`Unilever, Inc. v. Procter & Gamble Co., Case IPR2014-00506, slip op. at 2
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`(PTAB July 7, 2014) (Paper 17) (same); Butamax Advanced Biofuels LLC v.
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`Gevo, Inc., Case IPR2014-00581, slip op. at 2, 4 (PTAB Oct. 14, 2014)
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`(Paper 8) (same); CustomPlay, LLC v. ClearPlay, Inc., Case IPR2014-
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`00783, slip op. at 2, 6 (PTAB Nov. 7, 2014) (Paper 9) (same); Zimmer
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`Holdings, Inc. v. Bonutti Skeletal Innovations LLC, Case IPR2014-01080,
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`slip op. at 2 (PTAB Oct. 31, 2014) (Paper 17) (same). Unlike
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`Samsung/Rembrandt, Oracle’s Petition in this case presents only challenges
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`identical to those already instituted in the 1463 IPR, and Oracle further seeks
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`to join this proceeding with the 1463 IPR.4 Thus, instituting an inter partes
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`review based on the present Petition, and joining it with the 1463 IPR, would
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`not prevent “the just, speedy, and inexpensive resolution” of either the 1463
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`IPR or this proceeding.
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`
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`In addition, differences exist between the arguments and evidence
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`presented in this proceeding and those presented in the 1177 IPR. The
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`grounds of unpatentability asserted in the present Petition are obviousness of
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`(1) claims 1–14, 16–33, 35–50, and 53 over the CRD-5500 Manual and the
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`HP Journal; and (2) claims 15, 34, 51, and 52 over the CRD-5500 Manual,
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`the HP Journal, and the Fibre Channel Standard. Pet. 7–8. In addition to
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`those references, the present Petition relies on the Declaration of Andrew
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`Hospodor, Ph.D. See, e.g., Pet. 16–20 (arguing that one of ordinary skill
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`would have been motivated to combine the teachings of the CRD-5500
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`4 As discussed further below, Oracle’s Motion for Joinder demonstrates that
`joining this proceeding with the 1463 IPR would cause no delay in the
`resolution of the 1463 IPR and would not add significantly to the burden on
`any party, including Crossroads.
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`5
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`IPR2015-00854
`Patent 7,934,041 B2
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`Manual and the HP Journal, citing as supporting evidence Dr. Hospodor’s
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`declaration testimony); see generally Ex. 1003 (Declaration of Andrew
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`Hospodor, Ph.D.).
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`The 1177 IPR Petition, however, relied on different testimony from a
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`different witness—Professor Jeffrey S. Chase, Ph.D. See, e.g., 1177 IPR
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`Petition 17–19 (citing Ex. 1010). Also, although the 1177 IPR Petition
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`relied on the same CRD-5500 Manual as the present Petition, the 1177 IPR
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`Petition advanced grounds of unpatentability combining the CRD Manual
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`with teachings from the CRD-5500 Data Sheet,5 and the Smith article.6
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`1177 IPR Petition 5. The present Petition, however, does not include the
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`CRD-5500 Data Sheet as the basis for any asserted ground of
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`unpatentability. Further, although the Smith article is included in the HP
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`Journal relied on in this proceeding, the present Petition further relies on
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`other portions of the HP Journal that were not included in the 1177 IPR
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`Petition. See Pet. 4, 15–18, 26, 31–32, 42 (citing Ex. 1006, 94–96 (portions
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`of Meryem Primmer, An Introduction to Fibre Channel, HEWLETT-PACKARD
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`JOURNAL, Oct. 1996)); see also id. at 15–16, 42, 51 (citing Ex. 1006, 5
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`(portions of C. L. Leath, In This Issue, HEWLETT-PACKARD JOURNAL,
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`Oct. 1996)). Although Crossroads is correct that there are some similarities
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`between the present Petition’s arguments and cited evidence, and those of
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`the 1177 IPR Petition, we are not persuaded denial of the present Petition
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`5 The “CRD-5500 Data Sheet” is a document describing a product, the CRD-
`5500 RAID Disk Array Controller. 1177 IPR, Ex. 1004. It was also filed in
`the present proceeding as Exhibit 1005.
`6 Judith A. Smith & Meryem Primmer, Tachyon: A Gigabit Fibre Channel
`Protocol Chip, HEWLETT-PACKARD JOURNAL, Oct. 1996. 1177 IPR,
`Ex. 1005 (“Smith article”). The Smith article is one of the articles included
`in the HP Journal relied on in this proceeding. See Ex. 1006, 99–112.
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`6
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`IPR2015-00854
`Patent 7,934,041 B2
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`under § 325(d) is warranted based on the facts and circumstances of this
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`case.
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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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`
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`Consequently, for the above reasons, and in view of the fact that the
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`present Petition is virtually identical to the petition in the 1463 IPR, we
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`determine Oracle has demonstrated sufficiently under 35 U.S.C. § 314 that
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`an inter partes review should be instituted in this proceeding on the same
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`grounds of unpatentability as the grounds on which we instituted inter partes
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`review in the 1463 IPR.
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`MOTION FOR JOINDER
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`An inter partes review may be joined with another inter partes
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`review, subject to certain statutory provisions:
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`(c) JOINDER.—If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311
`that
`the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter parties review under section 314.
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`35 U.S.C. § 315(c); see also 37 C.F.R. § 42.122. As the moving party,
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`Oracle bears the burden of proving that it is entitled to the requested relief.
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`37 C.F.R. § 42.20(c).
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`7
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`IPR2015-00854
`Patent 7,934,041 B2
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`As an initial matter, the Motion for Joinder meets the requirements of
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`37 C.F.R. § 42.122(b) because the Motion was filed on March 6, 2015
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`(Paper 3, 1), which is not later than one month after the 1463 IPR was
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`instituted on March 17, 2015 (1463 IPR, Paper 9).
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`Additionally, the present Petition challenges the same patent and the
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`same claims as those under inter partes review in the 1463 IPR, and the
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`Petition also asserts the same grounds of unpatentability based on the same
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`prior art and the same evidence, including the same declaration testimony.
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`Mot. 1; compare Pet. 7–8, with 1463 IPR, Paper 3, 9–10. The present
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`Petition does not advance any other grounds of unpatentability, or present
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`any new evidence not already of record in the 1463 IPR. Indeed, the
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`Petition repeats verbatim most of the content of the petition in the 1463 IPR.
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`See Mot. 5.
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`
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`Oracle further asserts that granting joinder would not require any
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`alterations to the existing scheduling order in the 1463 IPR. Id. at 6.
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`Moreover, Oracle represents that it “has agreed to not materially participate
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`in the joined proceedings unless and until the parties to IPR2014-01463 are
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`dismissed from the joined proceedings or elect to transfer control to
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`[Oracle], as may occur in the event of settlement or advanced settlement
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`negotiations.” Id. at 2. As such, Oracle “does not intend to file separate
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`papers or conduct separate cross examinations of any witnesses,” if joined to
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`the 1463 IPR. Id. at 5. Oracle also represents that the petitioners in the
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`1463 IPR do not oppose joinder of the present proceeding. Id. at 1–2. As
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`previously noted, Crossroads did not file an opposition to Oracle’s Motion
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`for Joinder.
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`8
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`IPR2015-00854
`Patent 7,934,041 B2
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`Based on the facts and circumstances discussed above, Oracle has
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`established good cause for joining this proceeding with the 1463 IPR.
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`Joinder of this proceeding with the 1463 IPR will not require any delay or
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`modification to the scheduling order already in place for the 1463 IPR.
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`Crossroads will not be unduly prejudiced by the joinder of these
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`proceedings, and joining Oracle’s identical challenges to those in the 1463
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`IPR will lead to greater efficiency while reducing the resources expended by
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`both Crossroads and the Board. Thus, we conclude that granting the Motion
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`for Joinder under these circumstances would help “secure the just, speedy,
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`and inexpensive resolution” of these proceedings. See 37 C.F.R. § 42.1(b);
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`Microsoft Corp. v. Proxyconn, Inc., Case IPR2013-00109, slip op. at 2–3
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`(PTAB Feb. 25, 2013) (Paper 15) (representative).
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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 in
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`IPR2015-00854 is hereby instituted as to claims 1–53 of U.S. Patent No.
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`7,934,041 B2 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 Oracle’s Motion for Joinder is granted;
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`FURTHER ORDERED that IPR2015-00854 is hereby joined with
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`IPR2014-01463;
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`9
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`IPR2015-00854
`Patent 7,934,041 B2
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`FURTHER ORDERED that the grounds of unpatentability on which
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`trial was instituted in IPR2014-01463 are unchanged and remain the sole
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`grounds on which trial has been instituted;
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`FURTHER ORDERED that the Revised Scheduling Order entered in
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`IPR2014-01463 (Paper 14) is unchanged and shall govern the schedule of
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`the joined proceeding;
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`FURTHER ORDERED that Oracle, Cisco Systems, Inc., and
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`Quantum Corporation will file all papers jointly in the joined proceeding as
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`consolidated filings, and will identify each such paper as “Consolidated,”
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`except that papers filed on behalf of fewer than all three parties need not be
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`marked Consolidated;
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`FURTHER ORDERED that IPR2015-00854 is terminated under
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`37 C.F.R. § 42.72, and all further filings in the joined proceeding are to be
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`made in IPR2014-01463;
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`FURTHER ORDERED that a copy of this Decision will be entered
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`into the record of IPR2014-01463; and
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`FURTHER ORDERED that the case caption in IPR2014-01463 shall
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`be modified to reflect joinder with this proceeding in accordance with the
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`
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`attached example.
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`10
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`11
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`IPR2015-00854
`Patent 7,934,041 B2
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`PETITIONER:
`
`Greg Gardella
`CPDocketGardella@oblon.com
`
`Scott McKeown
`CPDocketMcKeown@oblon.com
`
`
`
`PATENT OWNER:
`
`Russell Wong
`James Hall
`CrossroadsIPR@blankrome.com
`
`John Adair
`Steven Sprinkle
`crossroadsipr@sprinklelaw.com
`
`
`
`

`
`Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
` Paper No. 14
`
` Entered: September 15, 2015
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`
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`Example Case Caption for Joined Proceeding
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC., QUANTUM CORPORATION,
`and ORACLE CORPORATION,
`Petitioners,
`
`v.
`
`CROSSROADS SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-014631
`Patent 7,934,041 B2
`____________
`
`
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`
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`1 Case IPR2015-00854 has been joined with this proceeding.