Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 9
` Entered: March 17, 2015
`
`
`
`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
`
`1
`
`CROSSROADS EXHIBIT
`Oracle Corp. v. Crossroads Systems, Inc.
`IPR2015-0(cid:1005)(cid:1004)(cid:1010)(cid:1010)
`
`2144
`
`
`571-272-7822
`
`
`
` Paper 9
` Entered: March 17, 2015
`
`
`
`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
`
`1
`
`CROSSROADS EXHIBIT
`Oracle Corp. v. Crossroads Systems, Inc.
`IPR2015-0(cid:1005)(cid:1004)(cid:1010)(cid:1010)
`
`2144
`
`
`
`IPR2014-01463
`Patent 7,934,041 B2
`
`
`I. INTRODUCTION
`Cisco Systems, Inc. and Quantum Corporation (“Petitioners”) filed a
`Petition (Paper 3, “Pet.”), requesting institution of an inter partes review of
`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
`35 U.S.C. § 314.
`We determine that the information presented in the Petition and in the
`Preliminary Response shows that there is a reasonable likelihood that
`Petitioners would prevail with respect to at least one of the claims
`challenged in the Petition. See 35 U.S.C. § 314(a). Accordingly, we
`institute inter partes review with respect to claims 1–53.
`A.
`Related Proceedings
`The ’041 Patent has been asserted against Petitioners in the following
`district court proceedings: Crossroads Systems, Inc. v. Cisco Systems, Inc.,
`Case No. 1-14-cv-00148 (W.D. Tex.); and Crossroads Systems, Inc. v.
`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.
`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
`the subject of multiple petitions for inter partes review in other cases,
`including IPR2014-01197, IPR2014-01207, IPR2014-01209, IPR2014-
`01226, and IPR2014-01233. Inter partes review was instituted in IPR2014-
`
`2
`
`
`
`
`
`IPR2014-01463
`Patent 7,934,041 B2
`
`01197, IPR2014-01207, IPR2014-01209, and IPR2014-01226. See Oracle
`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)
`(Paper 9). The petition for inter partes review was denied in IPR2014-
`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,
`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.
`
`3
`
`
`
`
`
`IPR2014-01463
`Patent 7,934,041 B2
`
`
`
`
`Figure 3 of the ’041 Patent shows storage network 50, which includes
`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
`of workstations 58 to interconnect on a common storage transport and
`“access common storage devices 60, 62 and 64 through native low level,
`block protocols.” Id. at col. 4, ll. 30–33. Storage router 56 also implements
`security controls to allow each workstation 58 to access a specific subset of
`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
`reproduced below.
`
`4
`
`
`
`
`
`IPR2014-01463
`Patent 7,934,041 B2
`
`
`
`
`Figure 4 of the ’041 Patent shows components of storage router 56,
`including supervisor 86, buffer 84, Fibre Channel controller 80, and SCSI
`controller 82. Id. at col. 5, ll. 35–41. Buffer 84 connects to Fibre Channel
`controller 80 and SCSI controller 82. Id. at col. 5, ll. 37–39. Memory work
`space is provided by buffer 84. Id. Supervisor unit 86 includes a
`microprocessor for controlling storage router 56. Id. at col. 5, ll. 41–43.
`The microprocessor of supervisor unit 86 also processes mapping and
`security access for requests between Fibre Channel 52 and SCSI bus 54. Id.
`at col. 5, ll. 41–44.
`
`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:
`
`C.
`
`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:
`
`5
`
`
`
`
`
`IPR2014-01463
`Patent 7,934,041 B2
`
`
`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
`
`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):
`
`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”)
`
`1006
`
`1007
`
`
`1 Petitioners cite both of these articles in Exhibit 1006 as one reference.
`6
`
`
`
`
`
`IPR2014-01463
`Patent 7,934,041 B2
`
`E.
`
`§ 103
`
`15, 34, 51, and 52
`
`The Asserted Grounds of Unpatentability
`Petitioners challenge the patentability of claims 1–53 of the ’041
`Patent based on the following grounds (Pet. 9–10):2
`References
`Basis
`Claims Challenged
`CRD-5500 User
`§ 103
`1–14, 16–33, 35–50,
`and 53
`Manual and HP
`Journal
`CRD-5500 User
`Manual, HP Journal,
`and Fibre Channel
`Standard
`
`
`
`II. ANALYSIS
`
`A.
`
`Claim Interpretation
`In an inter partes review, claim terms in an unexpired patent are
`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);
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`2012); accord In re Cuozzo Speed Technologies, LLC, No. 2014-1301, 2015
`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.
`2007).
`
`2 Petitioners support their challenges with a declaration executed by Andrew
`Hospodor, Ph.D., executed on September 5, 2014 (“Hospodor Declaration”)
`(Ex. 1003).
`
`7
`
`
`
`
`
`IPR2014-01463
`Patent 7,934,041 B2
`
`
`1. “native low level block protocol”
`Claims 1, 6, 20, 25, 37, and 42 recite “native low level block
`protocol.” Petitioners argue that the broadest reasonable interpretation of
`this claim language is “a protocol in which storage space is accessed at the
`block level, such as the SCSI protocol.” Pet. 11–12. Petitioners discuss
`portions of the Specification and Figure 3 of the ’041 Patent that support
`their construction. Id. (citing Ex. 1001, col. 3, ll. 46–50, col. 4, ll. 47–53,
`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’
`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.
`
`2. “remote”
`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
`reasonable construction of the word “remote” is “indirectly connected
`through a storage router to enable connections to storage devices at a
`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
`challenges Petitioners’ proposed construction nor offers an alternate
`construction. For the purposes of this Decision, after reviewing Petitioners’
`
`8
`
`
`
`
`
`B.
`
`IPR2014-01463
`Patent 7,934,041 B2
`
`citations to the Specification, we are persuaded that “one of ordinary skill in
`the art would understand the broadest reasonable construction of ‘remote’ to
`be ‘indirectly connected through a storage router to enable connections to
`storage devices at a distance greater than allowed by a conventional
`parallel network interconnect.’” Id. at 13.
`
`Asserted Obviousness of Claims 1–14, 16–33, 35–50, and 53 Based
`on CRD-5500 User Manual and HP Journal
`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
`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
`CRD[-5500 User] Manual in combination with the HP Journal renders
`obvious this limitation.” Id. at 23. Petitioners note that the CRD-5500 User
`Manual teaches that the CRD-5500 controller has slots for replaceable “I/O
`modules” that interface with “SCSI buses.” Id. (citing Ex. 1004 1-1, 2-1, 2-
`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
`interfaces with a Fibre Channel ‘serial’ transport medium, which is designed
`to ‘replace’ SCSI buses.” Id. (citing Ex. 1006, 101, 111, Fig. 14).
`9
`
`
`
`
`
`IPR2014-01463
`Patent 7,934,041 B2
`
`
`Petitioners argue that it would have been obvious to replace the SCSI
`modules of the CRD-5500 controller with a Fibre Channel I/O host module.
`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,
`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-
`
`10
`
`
`
`
`
`IPR2014-01463
`Patent 7,934,041 B2
`
`1, 1-2, 3-1, 3-6, Fig. 1-2). With respect to the foregoing limitations of claim
`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
`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
`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
`first transport medium is a serial transport medium” would have been
`obvious in view of the CRD-5500 User Manual and the HP Journal. Id. at
`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
`Fibre Channel host modules. Id. at 17–21 (citing Ex. 1003 ¶¶ 41, 48–57; Ex.
`
`11
`
`
`
`
`
`IPR2014-01463
`Patent 7,934,041 B2
`
`1004, 1-1, 1-3, 2-1, 4-14; Ex. 1006, 5, 94–95, 99–111). Petitioners further
`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.
`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,
`36, 38–50, and 53 would have been obvious in view of the CRD-5500 User
`Manual and the HP Journal. Pet. 29–42, 47–50, 53–56 (citing Ex. 1003, 58–
`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,
`4-18; Ex. 1006, 94–95). Petitioners argue that the CRD-5500 User Manual
`teaches all of the limitations recited in dependent claims 2–6, 9–14, 16–18,
`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,
`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
`configured to receive commands according to a first low level block protocol
`from the device connected to the first transport medium and forward
`commands according to a second low level block protocol to the remote
`storage devices.” Similarly, dependent claim 43 recites “receiving
`commands at the storage router according to a first low level block protocol
`from the device connected to the first transport medium and forwarding
`12
`
`
`
`
`
`IPR2014-01463
`Patent 7,934,041 B2
`
`commands according to a second low level block protocol to the remote
`storage devices.” Dependent claims 8, 27, and 44 add the limitation that
`“the first low level block protocol is an FCP protocol and the second low
`level block protocol is a protocol other than FCP.”3
`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
`communicating with hosts via a Fibre Channel transport medium. Pet. 33–
`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.
`1004, 2-4). Petitioners also note that the CRD-5500 User Manual discloses
`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
`SCSI commands ‘encapsulated and transported within Fibre Channel
`frames.’” Id. at 34 (citing Ex. 1003, 62–63; Ex. 1006, 94–95).
`Consequently, Petitioners argue,
`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.
`13
`
`
`
`
`
`IPR2014-01463
`Patent 7,934,041 B2
`
`
`from the Fibre Channel messages, and (iii) forward the
`SCSI commands (a second low level block protocol) to
`the disk drives.
`Id. (citing Ex. 1003, 65).
`Dependent claims 19, 36, and 53 each recite a second transport
`medium that is a fibre channel transport medium. Petitioners argue that the
`limitations recited in dependent claims 19, 36, and 53 would have been
`obvious in view of the CRD-5500 User Manual and the HP Journal, in
`combination. Id. at 41–42, 50, 56. In addition to their argument that it
`would have been obvious to modify the CRD-5500 controller with a Fibre
`Channel I/O module to interface with a host, Petitioners argue that it also
`would have been obvious to modify the CRD-5500 controller to use one or
`more Fibre Channel I/O modules and links on the “disk side” of the
`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
`supported by record evidence.
`
`Patent Owner responds that the CRD-5500 Manual and the
`information in the HP Journal have been considered by the Office in
`prosecution of the ’041 Patent and in a reexamination of U.S. Patent No.
`6,425,035 B2 (“the ’035 Patent”), a family member of the ’041 Patent.
`Prelim. Resp. 10–16 (citing Ex. 1002, 1647, 1652–1673; Ex. 1006, 99–112;
`Ex. 2016, 22–23, 27, 34–36, 82–100; Ex. 2021, 168, 310, 321, 337–338,
`
`14
`
`
`
`
`
`IPR2014-01463
`Patent 7,934,041 B2
`
`345). Patent Owner argues that the HP Journal contains Smith, which “was
`not explicitly before the Office” but “is about the Tachyon chip.” Id. at 11
`n.5. Patent Owner notes that the User’s Manual for the Tachyon Chip was
`cited in prosecution. Id. (citing Ex. 2016). The arguments are not
`persuasive because the information in the HP Journal and Smith was not
`explicitly before the Office and Petitioners’ arguments regarding these
`references were not previously considered.
`Patent Owner also argues that “Petitioners’ alleged motivation to
`modify the teachings of the CRD-5500 Manual was also before the Patent
`Office” because the Petition cites Exhibit 1005, which was submitted during
`the reexamination of the ’035 Patent. Prelim. Resp. 13 (citing Pet. 18; Ex.
`1005, 1; Ex. 2010 ¶ 2; Ex. 2011; Ex. 2021, 165). However, the argument is
`unpersuasive because, as discussed above, we are persuaded by Petitioners’
`arguments that do not rely on Exhibit 1005.
`
`Patent Owner further argues that “Petitioners are recycling the same
`arguments raised” in the reexamination of the ’035 Patent because the
`MaxStrat GEN 5 RAID controller considered during reexamination and
`Petitioners’ CRD-5500 controller have similar functionality. Prelim.
`Resp. 16–20 (citing Pet. 19; Ex. 1004, 9, 10, 21–23, 44; Ex. 2013, 1, 5–6;
`Ex. 2021, 288, 316–318). The argument is not persuasive because
`Petitioners’ challenge is not based on the CRD-5500 User Manual by itself;
`the challenge is an obviousness challenge based on the CRD-5500 User
`Manual combined with the HP Journal.
`Patent Owner urges the Board to exercise its discretion under 35
`U.S.C. § 325(d) to deny the challenges presented because substantially the
`same petition was presented in IPR2014-01177; the HP Journal contains a
`
`15
`
`
`
`
`
`IPR2014-01463
`Patent 7,934,041 B2
`
`reference cited in IPR2014-01177; the petition in IPR2014-01177 presented
`a theoretical combination of a CRD-5500 and a FC module; the petition in
`IPR2014-01177 and the Petition in the present case “make the same
`argument for Claim 1.2[c]”; petitioners in both cases share common
`attorneys; the petition for this case presents another “bite at the apple”; and
`there is no justification for the second petition. Prelim. Resp. 20–27.
`Because we did not institute inter partes review in IPR2014-01177, we
`decline to exercise our discretion to deny the challenges in the present
`petition as substantially the same as those in IPR2014-01177. See Oracle
`Corporation, NetApp Inc., and Huawei Technologies Co., Ltd. v. Crossroads
`Systems, Inc., Case IPR2014-01177, slip op. (January 28, 2015) (Paper 13).
`Patent Owner also argues that the “Petition fails to engage in the
`prerequisite ‘critically important factual inquiry’ of identifying the
`differences between the claimed invention and the prior art, impermissibly
`leaving the Board and [the] Patent Owner to suss out the differences.”
`Prelim. Resp. 28. Patent Owner asserts that the Petition “introduces the
`CRD-5500 Manual and HP Journal without comparing them to the claims of
`the ’041 Patent” and “then argues that it would be obvious to combine the
`CRD-5500 Manual and HP Journal to create a theoretical combined
`system.” Id. (citing Pet. 19–21).
`The arguments are not persuasive because Petitioners explain how the
`CRD-5500 Manual teaches the limitations of the claims. Pet. 26–54, 56–57.
`For claims 1, 7, 8, 19, 26, 27, 36, 43, 44, and 53, which contain limitations
`that are not taught by the CRD-5500 Manual, Petitioners provide citations to
`the HP Journal and argue why the ordinary skilled artisan would have
`combined the teachings of the references. Pet. 23–24, 33–35, 41–42, 48, 50,
`
`16
`
`
`
`
`
`IPR2014-01463
`Patent 7,934,041 B2
`
`54, 56. Thus, the Petition compares the references to the claims in a manner
`sufficient to identify the differences between the claimed invention and the
`cited references.
`Patent Owner further argues that one of ordinary skill in the art would
`not combine CRD-5500 Manual and HP Journal “based on the teachings of
`‘[a] data sheet advertising the features of the CRD-5500 RAID controller’”
`that describes the controller as designed to support Fibre Channel. Prelim.
`Resp. 29–31 (citing Pet. 16). Page 16 of the Petition does cite a data sheet
`(Ex. 1005) for teaching that the CRD-5500 RAID controller was “designed
`to support tomorrow’s high speed serial interfaces, such as Fiberchannel.”
`However, as discussed above, Petitioners rely on the CRD-5500 Manual and
`HP Journal, not the CRD-5500 data sheet, to argue that one of ordinary skill
`in the art would have been motivated to combine these references, because
`the references evidence that the asserted combination is a simple substitution
`with predictable beneficial results. Pet. 17–21.
`For these reasons, upon consideration of the information provided in
`the Petition and Preliminary Response, we determine that Petitioners have
`demonstrated a reasonable likelihood of prevailing on their assertion that
`claims 1–14, 16–33, 35–50, and 53 are unpatentable under 35 U.S.C.
`§ 103(a) for obviousness over CRD-5500 Manual and HP Journal.
`
`Asserted Obviousness of Claims 15, 34, 51, and 52 Based on CRD-
`5500 User Manual, HP Journal, and Fibre Channel Standard
`Claims 15, 34, and 51 depend from claims 14, 33, and 50,
`respectively. Each of claims 14, 33, and 50 recites that “the representations
`of devices connected to the first transport medium are unique identifiers.”
`
`C.
`
`17
`
`
`
`
`
`IPR2014-01463
`Patent 7,934,041 B2
`
`Each of claims 15, 34, and 51 recites “wherein the unique identifiers are
`world wide names.”
`Petitioners argue that the limitations of claims 15, 34, and 51 would
`have been obvious in view of the CRD-5500 User Manual, the HP Journal,
`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
`CRD-5500 User Manual discloses unique identifiers as representations of
`devices connected to the first transport medium. Id. at 39–40 (citing Ex.
`1003, 74–75; Ex. 1004, 3-2, 4-5), 49–50, 56, 58. Petitioners also argue that
`modifying the CRD-5500 controller with a Fibre Channel I/O host module
`would produce a heterogeneous system that uses Fibre Channel to connect to
`hosts and SCSI to connect to connect to disk drives. Id. at 57–59 (citing Ex.
`1003 ¶ 63). Petitioners contend that a person of ordinary skill in the art
`would have consulted the Fibre Channel Standard for guidance regarding
`properly identifying Fibre-Channel hosts in such a heterogeneous network.
`Id. at 57 (citing Ex. 1003 ¶ 63). Petitioners further argue that “the Fibre
`Channel Standard teaches that in a ‘heterogeneous network’ (Fibre Channel
`to Non-Fibre Channel) nodes (e.g., hosts) are represented by unique
`identifiers that are ‘worldwide names.’” Id. at 59. Petitioners conclude that
`the CRD-5500 Controller uniquely
`identifying
`the
`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.
`Id. (citing Ex. 1003, 124–126).
`
`18
`
`
`
`
`
`IPR2014-01463
`Patent 7,934,041 B2
`
`
`Claim 52 depends from claim 51. Claim 52 recites “wherein the
`storage router is configured to allow modification of the map in a manner
`transparent to and without involvement of the devices connected to the first
`transport medium.” Petitioners argue that the CRD-5500 User Manual
`teaches this limitation. Pet. 40 (citing Ex. 1003, 75–77; Ex. 1004, 2-9, 4-1),
`60.
`
`Petitioners’ arguments regarding the limitations of claims 15, 34, 51,
`and 52, namely, that it would have been obvious to combine the teachings of
`CRD-5500 Manual, HP Journal, and Fibre Channel Standard, are reasonable
`and supported by record evidence. Patent Owner does not provide separate
`arguments for claims 15, 34, 51, and 52 other than those discussed above.
`Accordingly, upon consideration of the information provided in the
`Petition and Preliminary Response, we determine that Petitioners have
`demonstrated a reasonable likelihood of prevailing on their assertion that
`claims 15, 34, 51, and 52 are unpatentable under 35 U.S.C. § 103(a) for
`obviousness over CRD-5500 Manual, HP Journal, and Fibre Channel
`Standard.
`
`
`III. CONCLUSION
`For the foregoing reasons, we determine that Petitioners have
`demonstrated that there is a reasonable likelihood of their proving
`unpatentability of claims 1–53 of the ’041 Patent.
`The Board has not made a final determination on the patentability of
`the challenged claims.
`
`19
`
`
`
`
`
`
`
`IPR2014-01463
`Patent 7,934,041 B2
`
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review is hereby instituted as to claims 1–53 of U.S. Patent No. 7,934,041
`on the following grounds of unpatentability:
`A. Claims 1–14, 16–33, 35–50, and 53 under 35 U.S.C. § 103(a)
`for obviousness over CRD-5500 Manual and HP Journal; and
`B. Claims 15, 34, 51, and 52 under 35 U.S.C. § 103(a) for
`obviousness over CRD-5500 Manual, HP Journal, and Fibre
`Channel Standard;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial, the trial
`commencing on the entry date of this decision; and
`FURTHER ORDERED that the trial is limited to the grounds
`identified above, and no other grounds are authorized.
`
`20
`
`
`
`
`
`IPR2014-01463
`Patent 7,934,041 B2
`
`
`
`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:
`Steven Sprinkle
`Sprinkle IP Law Group
`crossroadsipr@sprinklelaw.com
`
`John Adair
`Sprinkle IP Law Group
`crossroadsipr@sprinklelaw.com
`
`Russell Wong
`Wong, Cabello, Lutsch, Rutherford & Brucculeri, LLP
`CrossroadsIPR@counselip.com
`
`James Hall
`Wong, Cabello, Lutsch, Rutherford & Brucculeri, L
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
