UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ORACLE CORPORATION
`Petitioner,
`v.
`CROSSROADS SYSTEMS, INC.
`Patent Owner.
`____________
`Case IPR2015-01066
`Patent No. 7,934,041
`____________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`101242824v.2
`
`
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ORACLE CORPORATION
`Petitioner,
`v.
`CROSSROADS SYSTEMS, INC.
`Patent Owner.
`____________
`Case IPR2015-01066
`Patent No. 7,934,041
`____________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`101242824v.2
`
`
`
`TABLE OF CONTENTS
`
`
`I.
`II.
`
`2.
`
`B.
`
`C.
`
`SUMMARY OF ARGUMENT ............................................................ 1
`INSTITUTION OF REVIEW SHOULD BE REJECTED UNDER 35
`U.S.C. § 325(D) BECAUSE THE PETITION REQUESTS
`INSTITUTION ON GROUNDS PREVIOUSLY REJECTED BY
`THE BOARD ........................................................................................ 2
`A.
`Petitioner Has Previously Filed Multiple Overlapping
`Challenges to the ‘041 Patent Based on the Same Grounds ...... 2
`1.
`Petitioner Previously Brought the Same Arguments and
`Evidence in IPR2014-01177 ............................................ 2
`The Petition is Petitioner’s Third Attempt to Challenge
`Claims 1-53 Based on the Same Grounds Asserted Here 5
`The Board Should Exercise its Discretion to Deny the Petition
`Under 35 U.S.C. § 325(d) .......................................................... 7
`The Board Routinely Denies Similar Petitions as a “Second
`Bite at the Apple” ..................................................................... 17
`1. Medtronic, Inc. v. NuVasive, Inc., IPR2014-00487, Paper
`8 (PTAB Sept. 11, 2014) (designated as
`“Informative”) ................................................................ 18
`Butamax Advanced Biofuels LLC v. Gevo, Inc., IPR2014-
`00581, Paper 8 (PTAB Oct. 14, 2014) ........................... 19
`Samsung Electronics Co., Ltd., v. Rembrandt Wireless
`Techs., LP, IPR2015-00118, Paper 14 (PTAB Jan. 28,
`2015) .............................................................................. 22
`Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations
`LLC, IPR2014-01080, Paper 17 (PTAB Oct. 31,
`2014). ............................................................................. 23
`Samsung Electronics Co. v. Affinity Labs of Texas, LLC,
`IPR2015-00820, Paper 12 (PTAB May 15, 2015) ........ 25
`6. Medtronic, Inc. v. Endotach LLC, IPR2014-00695, Paper
`18 (PTAB Sept. 25, 2014) .............................................. 27
`
`2.
`
`3.
`
`4.
`
`5.
`
`
`
`i
`
`
`
`III.
`
`III.
`
`INSTITUTION ON GROUND “A” SHOULD BE REJECTED
`
`BECAUSE IT IS SUB STANTIALLY SIMILAR PRIOR ART AS
`
`SUBMITTED IN IPR2014-01463 ................................................... ..29
`
`IV.
`
`TRIAL SHOULD NOT BE INSTITUTED ON GROUND “B”
`
`BECAUSE KIKUCHI IS NOT PRIOR ART TO THE ’O41
`
`INSTITUTION ON GROUND “A” SHOULD BE REJECTED
`BECAUSE IT IS SUBSTANTIALLY SIMILAR PRIOR ART AS
`SUBMITTED IN IPR2014-01463 ..................................................... 29
`IV. TRIAL SHOULD NOT BE INSTITUTED ON GROUND “B”
`BECAUSE KIKUCHI IS NOT PRIOR ART TO THE ’041
`PATENT ............................................................................................. 31
`THE PETITION SHOULD BE DENIED BECAUSE IT FAILS TO
`IDENTIFY THE REAL PARTIES-IN-INTEREST .......................... 37
`VI. CONCLUSION ................................................................................... 42
`
`
`PATENT ........................................................................................... .. 3 1
`
`V.
`
`THE PETITION SHOULD BE DENIED BECAUSE IT FAILS TO
`
`IDENTIFY THE REAL PARTIES-IN-INTEREST ........................ .. 37
`
`VI.
`
`CONCLUSION ................................................................................. .
`
`. 42
`
`
`
`ii
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Cooper v. Goldfarb,
`154 F.3d 1321 (Fed. Cir. 1998) ........................................................................... 33
`
`Fleming v. Escort Inc.,
`774 F.3d 1371 (Fed. Cir. 2014) ........................................................................... 33
`
`Gonzalez v. Banco Cent. Corp.,
`27 F.3d 751 (1st Cir. 1994) ................................................................................. 42
`
`Griffith v. Kanamaru,
`816 F.2d 624 (Fed. Cir. 1987) ............................................................................. 32
`
`Jones v. Evans,
`46 F.2d 197 (C.C.P.A. 1931) .............................................................................. 33
`
`Keizer v. Bradley,
`270 F.2d 396 (C.C.P.A. 1959) ............................................................................ 37
`
`Mahurkar v. C.R. Bard, Inc.,
`79 F.3d 1572 (Fed. Cir. 1996) ............................................................................. 32
`
`Mycogen Plant Science, Inc. v. Monsanto Co.,
`252 F.3d 1306 (Fed. Cir. 2001) ........................................................................... 32
`
`Rey-Bellet v. Engelhardt,
`493 F.2d 1380 (C.C.P.A. 1974) .......................................................................... 33
`
`Thompson v. Dunn,
`166 F.2d 443 (C.C.P.A. 1948) ............................................................................ 37
`
`Tyco Healthcare Group LP v. Ethicon Endo-Surgery, Inc.,
`774 F.3d 968 (Fed. Cir. 2014) ............................................................................. 32
`
`Administrative Cases
`
`Aruze Gaming Macau, LTD. v. MGT Gaming, Inc.,
`IPR2014-01288, Paper 13 (PTAB February 20, 2015) ...................................... 40
`
`
`
`iii
`
`
`
`Butamax Advanced Biofuels LLC v. Gevo, Inc.,
`IPR2014-00581, Paper 8 (PTAB Oct. 14, 2014) ............................... 19, 20, 21 22
`
`Cisco Systems, Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 (PTAB Aug. 29, 2014) (informative opinion) ......... 13
`
`CustomPlay, LLC v. ClearPlay, Inc.,
`IPR2014-00783, Paper 9 (PTAB Nov. 7, 2014) ................................................. 13
`
`First Data Corp v. Cardsoft, LLC,
`IPR2014-00720, Paper 8 (PTAB Oct. 17, 2014) .................................... 41, 42, 43
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`IPR2013-00324, Paper 19 (PTAB Nov. 21, 2013) ............................................... 8
`
`Medtronic, Inc. v. Endotach LLC,
`IPR2014-00695, Paper 18 (PTAB Sept. 25, 2014) ................................. 27, 28, 29
`
`Medtronic, Inc. v. NuVasive, Inc.,
`IPR2014-00487, Paper 8 (PTAB Sept. 11, 2014) (informative opinion) ..... 18, 19
`
`Samsung Electronics Co. v. Affinity Labs of Texas, LLC,
`IPR2015-00820, Paper 12 (PTAB May 15, 2015) ........................................ 26, 27
`
`Samsung Electronics, Co., Ltd. v. Rembrandt Wireless Techs., LP,
`IPR2015-00118, Paper 14 (PTAB Jan. 28, 2015) ........................................ passim
`
`Unilever, Inc. v. Procter & Gamble Co.,
`IPR2014-00506, Paper 17 (PTAB Jul. 7, 2014) (informative opinion) ............. 12
`
`Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations LLC,
`IPR2014-01080, Paper 17 (PTAB Oct. 31, 2014) .............................. 9, 10, 24, 25
`
`ZTE Corp. v. ContentGuard Holdings, Inc.,
`IPR2013-00454, Paper 12 (Sept. 25, 2013) (informative opinion) .............. 12, 16
`
`Statutes
`
`35 U.S.C. § 312 ................................................................................................. 38, 42
`
`35 U.S.C. § 314 ............................................................................................. 7, 14, 29
`
`
`
`iv
`
`
`
`35 U.S.C. § 315 ................................................................................................ passim
`
`35 U.S.C. § 325 ................................................................................................ passim
`
`Regulations
`
`37 C.F.R. § 42.1 ................................................................................ 9, 25, 28, 30, 31
`
`37 C.F.R. § 42.6 ................................................................................................ 13, 14
`
`37 C.F.R. § 42.71 ............................................................................................ 1, 4, 22
`
`37 C.F.R. § 42.104 ........................................................................................ 4, 13, 14
`
`37 C.F.R. § 42.106 .................................................................................................. 42
`
`37 C.F.R. § 42.107 .................................................................................................. 36
`
`37 C.F.R. § 42.108 .................................................................................................... 7
`
`37 C.F.R. § 42.120 .................................................................................................. 16
`
`Other Authorities
`
`Rules of Practice for Trials Before The Patent Trial and Appeal Board and Judicial
`Review of Patent Trial and Appeal Board Decisions; Final Rule
`77 Fed. Reg. 48,612 (Aug. 14, 2012) .................................................................. 13
`
`H.R. Rep. No. 112-98, pt.1 (2011).................................................................... 17, 21
`
`Office Patent Trial Practice Guide
`77 Fed. Reg. 48,756 (Aug. 14, 2012) .................................................................. 39
`
`
`
`v
`
`
`
`Patent Owner’s Exhibit List
`IPR2015-01066
`
`
`Description
`
`
`United State Patent No. 5,941,972 (the “’972 Patent”)
`
`Exhibit No.
`
`2001
`
`2002-2017
`
`[Reserved]
`
`2018
`
`2019-2021
`
`Exhibit 1005 to Oracle Corp. v. Crossroads Systems, Inc.,
`IPR2014-01177, -01197, -01207 -01209
`
`[Reserved]
`
`2022
`
`2023
`
`2024-2101
`
`2102
`
`Original Exhibit 1004 to Oracle Corp. v. Crossroads Systems,
`Inc., IPR2014-01177, Paper 1 (PTAB July 18, 2014)
`
`Substitute Exhibit 1004 to Oracle Corp. v. Crossroads Systems,
`Inc., IPR2014-01177, Paper 5 (PTAB July 24, 2014)
`
`[Reserved]
`
`Petition for Inter Partes Review, IPR2014-01197, Paper 1
`(PTAB Jul. 23, 2014)
`
`2103-2108
`
`[Reserved]
`
`2109
`
`2110
`
`Proof of Service on Oracle Corporation in Crossroads Systems,
`Inc. v. Oracle Corporation, W.D. Tex. Case No. 1-13-cv-00895
`
`Proof of Service on NetApp, Inc. in Crossroads Systems, Inc. v.
`NetApp, Inc., W.D. Tex. Case No. 1-14-cv-00149
`
`2111-2112
`
`[Reserved]
`
`2113
`
`2114
`
`Revised Scheduling Order, IPR2014-01197, Paper 23 (PTAB
`May 5, 2015)
`
`Revised Scheduling Order, IPR2014-01207, Paper 22 (PTAB
`May 5, 2015)
`
`
`
`vi
`
`
`
`Exhibit No.
`
`2115
`
`2116
`
`Description
`
`
`Revised Scheduling Order, IPR2014-01209, Paper 22 (PTAB
`May 5, 2015)
`
`Revised Scheduling Order, IPR2014-01463, Paper 14 (PTAB
`May 5, 2015)
`
`2117-2121
`
`[Reserved]
`
`2122
`
`Petition for Inter Partes Review, IPR2014-01209, Paper 1
`(PTAB Jul. 25, 2014)
`
`2123-2129
`
`[Reserved]
`
`2130
`
`Petition for Inter Partes Review, IPR2014-01207, Paper 1
`(PTAB Jul. 25, 2014)
`
`2131-2140
`
`[Reserved]
`
`2141
`
`2142
`
`2143
`
`2144
`
`2145
`
`2146
`
`2147
`
`Denial Decision, IPR2014-01177, Paper 13 (PTAB Jan. 28,
`2015).
`
`Corrected Petition for Inter Partes Review, IPR2014-01177,
`Paper 5 (PTAB Jul. 24, 2014)
`
`Ex. 1010 (Original Chase Declaration July 18, 2014) in
`IPR2014-01177
`
`Institution Decision, IPR2014-01463, Paper 9 (PTAB March 17,
`2015)
`
`HP Journal Article (Ex. 1006 in IPR2014-01463)
`
`CRD-5500 Data Sheet (Ex. 1005 in IPR2014-01463)
`
`Petition for Inter Partes Review, IPR2014-01463, Paper 3
`(PTAB Sept. 8, 2014)
`
`2148-2149
`
`[Reserved]
`
`
`
`vii
`
`
`
`Exhibit No.
`
`2150
`
`Description
`
`
`Ex. 1010 (Corrected Chase Declaration July 24, 2014) in
`IPR2014-01177
`
`2151-2299
`
`[Reserved]
`
`2300
`
`2301
`
`2302
`
`2303
`
`2304
`
`2305
`
`2306
`
`May 28, 1997 Fax from Geoffrey Hoese to Anthony Peterman
`(Plaintiff’s Exhibit 7 in Trial of Crossroads Systems, (Texas),
`Inc. v. Chaparral Network Storage, Inc., Docket No. A 00-CA-
`217 SS (W.D. Tex. 2001)
`
`Excerpts from Transcript of Trial in Crossroads Systems,
`(Texas), Inc. v. Chaparral Network Storage, Inc., Docket No. A
`00-CA-217 SS (W.D. Tex. 2001)
`
`Excerpts from Deposition of Geoff Hoese, August 6, 2001, taken
`in Crossroads Systems, (Texas), Inc. v. Chaparral Network
`Storage, Inc., Docket No. A 00-CA-217 SS (W.D. Tex. 2001)
`
`July 11, 1997 Letter and Draft Patent Application from Mr.
`Anthony Peterman (Baker & Botts LLP) to Mr. Geoffrey Hoese
`(Plaintiff’s Exhibit 266 in Trial of Crossroads Systems, (Texas),
`Inc. v. Chaparral Network Storage, Inc., Docket No. A 00-CA-
`217 SS (W.D. Tex. 2001)
`
`Excerpts from Deposition of Anthony Peterman, Nov. 14, 2000,
`taken in Crossroads Systems, (Texas), Inc. v. Chaparral Network
`Storage, Inc., Docket No. A 00-CA-217 SS (W.D. Tex. 2001)
`
`Declaration of John Middleton (May 22, 2015)
`
`Excerpts from Deposition of Geoff Hoese, Sept. 18-19, 2000,
`taken in Crossroads Systems, (Texas), Inc. v. Chaparral Network
`Storage, Inc., Docket No. A 00-CA-217 SS (W.D. Tex. 2001).
`
`
`
`viii
`
`
`
`Exhibit No.
`
`2307
`
`2308
`
`2309
`
`2310
`
`2311
`
`2312
`
`2313
`
`Description
`
`
`Verrazano FC-SCSI Bridge Product Overview Presentation,
`June 19, 1996
`(Plaintiff’s Exhibit 4 in Trial of Crossroads Systems, (Texas),
`Inc. v. Chaparral Network Storage, Inc., Docket No. A 00-CA-
`217 SS (W.D. Tex. 2001)
`
`Verrazano Software Development, Sept. 10, 1996
`(Plaintiff’s Exhibit 5 in Trial of Crossroads Systems, (Texas),
`Inc. v. Chaparral Network Storage, Inc., Docket No. A 00-CA-
`217 SS (W.D. Tex. 2001)
`
`Verrazano: System Structure Drawings, Document Number
`DS04100, Jan. 22, 1997
`(Plaintiff’s Exhibit 6 in Trial of Crossroads Systems, (Texas),
`Inc. v. Chaparral Network Storage, Inc., Docket No. A 00-CA-
`217 SS (W.D. Tex. 2001)
`
`Excerpts from Deposition of Jeffry Russell, Sept. 26, 2000,
`taken in Crossroads Systems, (Texas), Inc. v. Chaparral Network
`Storage, Inc., Docket No. A 00-CA-217 SS (W.D. Tex. 2001).
`
`Conception and Reduction to Practice Timeline (Demonstrative)
`
`Verrazano Bare Board Drawings (latest revisions Sept. 3, 1997)
`CRDS 50579
`
`Engineering/Lab Notebook of Geoff Hoese
`(Plaintiff’s Exhibit 263 in Trial of Crossroads Systems, (Texas),
`Inc. v. Chaparral Network Storage, Inc., Docket No. A 00-CA-
`217 SS (W.D. Tex. 2001)
`(Exhibit 12 to Deposition of Geoff Hoese, Sept. 19, 2000, taken
`in Crossroads Systems, (Texas), Inc. v. Chaparral Network
`Storage, Inc., Docket No. A 00-CA-217 SS (W.D. Tex. 2001)).
`
`
`
`ix
`
`
`
`Exhibit No.
`
`2314
`
`Description
`
`
`Verrazano Enclosure Specification, Revision 2.1, June 5, 1997
`(Plaintiff’s Exhibit 264 in Trial of Crossroads Systems, (Texas),
`Inc. v. Chaparral Network Storage, Inc., Docket No. A 00-CA-
`217 SS (W.D. Tex. 2001)
`
`2315
`
`2316
`
`2317
`
`2318
`
`2319
`
`2320
`
`2321
`
`[Reserved]
`
`CP4x00 Product Specification (Preliminary)
`(Plaintiff’s Exhibit 267 in Trial of Crossroads Systems, (Texas),
`Inc. v. Chaparral Network Storage, Inc., Docket No. A 00-CA-
`217 SS (W.D. Tex. 2001)
`(Exhibit 10 to Deposition of Jeffry Russell, Sept. 26, 2000, taken
`in Crossroads Systems, (Texas), Inc. v. Chaparral Network
`Storage, Inc., Docket No. A 00-CA-217 SS (W.D. Tex. 2001)).
`
`Verrazano Hardware Architecture, Revision 1.0, Aug. 25, 1997
`(Plaintiff’s Exhibit 268 in Trial of Crossroads Systems, (Texas),
`Inc. v. Chaparral Network Storage, Inc., Docket No. A 00-CA-
`217 SS (W.D. Tex. 2001)
`
`(Exhibit 2 to Deposition of Jeffry Russell, Sept. 26, 2000, taken
`in Crossroads Systems, (Texas), Inc. v. Chaparral Network
`Storage, Inc., Docket No. A 00-CA-217 SS (W.D. Tex. 2001)).
`
`Verrazano: System Structure Drawings, Document Number
`DS04100, Sept. 3, 1997
`
`Verrazano Software Architecture, Revision 1.1, Aug. 27, 1997
`
`Verrazano Programmable Device Instructions, Version 1.1, Sept.
`5, 1997
`
`Verrazano Component List and Insertion List Report, Sept. 29,
`1997
`
`
`
`x
`
`
`
`Exhibit No.
`
`2322
`
`2323
`
`Description
`
`
`Engineering/Lab Notebook of Geoff Hoese
`(Plaintiff’s Exhibit 274 in Trial of Crossroads Systems, (Texas),
`Inc. v. Chaparral Network Storage, Inc., Docket No. A 00-CA-
`217 SS (W.D. Tex. 2001)
`(Exhibit 14 to Deposition of Geoff Hoese, Sept. 19, 2000, taken
`in Crossroads Systems, (Texas), Inc. v. Chaparral Network
`Storage, Inc., Docket No. A 00-CA-217 SS (W.D. Tex. 2001)).
`
`December 31, 1997 Letter and Patent Application from Mr.
`William Hulsey (Baker & Botts LLP) to Mr. Dale Quisenberry
`(Plaintiff’s Exhibit 275 in Trial of Crossroads Systems, (Texas),
`Inc. v. Chaparral Network Storage, Inc., Docket No. A 00-CA-
`217 SS (W.D. Tex. 2001)
`
`2324
`
`Declaration of Brian Bianchi (May 26, 2015)
`
`
`
`
`
`xi
`
`
`
`Patent Owner Crossroads Systems, Inc. (“Patent Owner”) submits this
`
`Preliminary Response to the Petition for Inter Partes Review (the “Petition,” “1066
`
`Petition” or “Pet.”) filed in IPR2015-01066 (the “1066 IPR”) by Oracle Corporation
`
`(“Petitioner”) seeking review of United States Patent No. 7,934,041 (the “’041
`
`Patent”) (Ex. 1001).
`
`I. SUMMARY OF ARGUMENT
`The Petition should be denied because it is nothing more than Petitioner’s
`
`attempt at a “second bite at the apple.” The 1066 Petition is the third petition for
`
`inter partes review filed by Petitioner against the ’041 Patent and the last of five
`
`filed over nine months by defendants in co-pending litigation. In IPR2014-01177
`
`(the “1177 IPR”), to which Petitioner was a party, the Board previously denied inter
`
`partes review of the same challenged claims on the same three grounds raised here.
`
`Rather than challenging the Board’s decision using the proper mechanism—a
`
`request for rehearing under 37 C.F.R. § 42.71(d)—Petitioner has filed two “do-over”
`
`petitions in an attempt to correct the defects in the 1177 Petition. See Pet. at 58-59.
`
`Accompanying the first, in IPR2015-00854, was a motion to join IPR2015-01544.
`
`This second “do-over petition is accompanied by a motion to join IPR2015-0776,
`
`which is itself a “do-over” petition brought by NetApp, Inc., Petitioner’s co-
`
`petitioner in the 1177 IPR. See Pet. at 59-60.
`
`Petitioner does not raise any new prior art or evidence or offer any arguments
`
`
`
`1
`
`
`
`that could not have been submitted in the 1177 IPR. Petitioner merely presents the
`
`same art and evidence, rewording the Petition to address deficiencies pointed out by
`
`the Board. The Board routinely exercises its discretion under 35 U.S.C. § 325(d) to
`
`reject attempts by petitioners to use the Board’s prior decisions as a “how-to” guide
`
`to bolster unsuccessful challenges, and should do the same here. Therefore, the 1066
`
`Petition should be denied.
`
`The Petition should also be denied for several additional reasons. First, the
`
`petition raises substantially the same prior art that was previously submitted in
`
`IPR2014-01463 (the “1463 IPR”). For this additional reason, the Board should
`
`exercise its discretion to deny institution under 35 U.S.C. § 325. Second, with respect
`
`to the proposed combinations involving Kikuchi, the Petition should be denied
`
`because Kikuchi is not prior art to the ’041 Patent. Finally, the Petition should be
`
`denied because it fails to identify all real parties-in-interest and is time-barred under
`
`35 U.S.C. § 315(b).
`
`INSTITUTION OF REVIEW SHOULD BE REJECTED UNDER 35
`U.S.C. § 325(d) BECAUSE THE PETITION REQUESTS
`INSTITUTION ON GROUNDS PREVIOUSLY REJECTED BY THE
`BOARD
`A.
`Petitioner Has Previously Filed Multiple Overlapping Challenges
`to the ‘041 Patent Based on the Same Grounds
`1.
`Petitioner Previously Brought the Same Arguments and
`Evidence in IPR2014-01177
`Petitioner requests inter partes review of claims 1-53 of the ’041 Patent on
`
`2
`
`II.
`
`
`
`
`
`the following grounds:
`
`Ground
`
`A
`
`B
`C
`
`
`Pet. at 3. Petitioner previously requested review of the same claims based on the
`
`References
`
`CRD-5500 User Manual, CRD-5500 Data
`Sheet, and Smith
`Kikuchi and Bergsten
`Bergsten and Hirai
`
`Claims
`Challenged
`1-53
`
`1-53
`1-53
`
`same grounds in the 1177 IPR. See Ex. 2141 at 2, 6. However, in the 1177 IPR, the
`
`Board found that Petitioner failed to demonstrate a reasonable likelihood that it
`
`would prevail on these challenges:
`
`• “[W]e are not persuaded that the Petition demonstrates a
`reasonable likelihood that Petitioners would prevail in their
`challenge of independent claims 1, 20 and 37 as obvious over the
`CRD-5500 User Manual, the CRD-5500 Data Sheet, and Smith.
`For the same reasons, we are not persuaded that the Petition
`demonstrates a reasonable likelihood that Petitioners would
`prevail in their challenge of claims 2-19, 21-36, and 38-53 . . . .”
`Id. at 10.
`
`• “[W]e are not persuaded that the Petition demonstrates a
`reasonable likelihood that Petitioners would prevail in their
`challenge of independent claims 1, 20 and 37 as obvious over
`Kikuchi and Bergsten. For the same reasons, we are not
`persuaded that the Petition demonstrates a reasonable likelihood
`that Petitioners would prevail in their challenge of claims 2-19,
`21-36, and 38-53 . . . .” Id. at 13.
`3
`
`
`
`
`
`• “[W]e are not persuaded that the Petition demonstrates a
`reasonable likelihood that Petitioners would prevail in their
`challenge of independent claims 1, 20 and 37 as obvious over
`Bergsten and Hirai. For the same reasons, we are not persuaded
`that the Petition demonstrates a reasonable likelihood that
`Petitioners would prevail in their challenge of claims 2-19, 21-
`36, and 38-53 . . . .” Id. at 15-16.
`
`The Board rejected the prior challenges because Petitioner improperly
`
`incorporated by reference arguments made in the accompanying Chase declaration,
`
`circumventing the page limits that apply to petitions. Id. at 8, 10, 11, 13, 14, 15; see
`
`also Paper 8 at 2 (“The ’041 Patent is also the subject [of] IPR2014-01177 (not
`
`instituted due to incorporation by reference from the expert declaration) . . . .”). In
`
`citing only the Chase declaration in support of its arguments, Petitioner failed to
`
`specify where each element of the claim was found in the asserted grounds, as
`
`required by 37 C.F.R. § 42.104(b)(4). Thus, the Board agreed with Patent Owner
`
`that Petitioner attempted to establish its prima facie case without “explain[ing]
`
`adequately how the references teach the limitations of the claims.” Ex. 2141 at 8;
`
`see also id. at 10, 11, 13, 14, 15.
`
`The Board’s decision denying institution in the 1177 IPR for the same claims
`
`and grounds asserted here issued on January 28, 2015. Ex. 2141 at 1. Pursuant to 37
`
`C.F.R. § 42.71(d)(2), Petitioner could have filed a request for rehearing within 30
`
`days of that decision. Petitioner did not do so, choosing instead to file a second
`4
`
`
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`
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`petition in IPR2015-00854 (the “854 IPR”) seeking joinder to the 1463 IPR on
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`March 6, 2015, and the instant petition (seeking joinder to the 776 IPR) almost three
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`months later, on April 17, 2015.
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`2.
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`The Petition is Petitioner’s Third Attempt to Challenge
`Claims 1-53 Based on the Same Grounds Asserted Here
`Petitioner admits that IPR2014-01177 “corresponds generally to this
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`petition.” Pet. at 58. Petitioner acknowledges that the current Petition merely
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`attempts to correct the deficiencies of the 1177 Petition, explaining that, while that
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`petition “cited largely to the supporting declaration,” the current Petition “presents
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`the prior art by identifying all of the prior art evidence within the four corners of the
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`petition.” Id. at 59. The exact same exhibits, including the same expert declaration,
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`are relied upon in both petitions. Compare Pet. at iv-vi with Ex. 2142 at iv-vi;
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`compare Ex. 1010 (corrected) with Ex. 2143 (Ex. 1010 in IPR2014-01177) (identical
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`“original” expert Declaration executed by Dr. Chase on July 18, 2014); compare Ex.
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`1010 (original) with Ex 2150 (identical “substitute” expert Declaration executed by
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`Dr. Chase on July 24, 2014).1
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`1In IPR2014-01177, Petitioner originally filed the Chase Declaration dated July 18,
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`2014 (the “July 18 Chase Decl.”) (Ex. 2143) and then submitted (without
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`explanation or any apparent permission from the Board) the Corrected Chase
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`
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`5
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`
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`As Petitioner has noted, the ’041 Patent has been asserted against Petitioner,
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`as well as additional defendants Huawei, Cisco, NetApp, and Quantum. See Paper 8
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`(Pet.’s Updated Mandatory Notices) at 2 and Ex. 1026. Petitioner seeks to join the
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`776 IPR filed by NetApp, and has purportedly filed a verbatim copy of the 776
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`Petition. Paper 3 at 1 (“The petition in the instant case copies verbatim the challenges
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`set forth in the petition in IPR2015-00776.”).
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`Before filing the instant Petition, but after the 1177 Petition was denied,
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`Petitioner previously filed a petition in the 854 IPR, seeking to join the 1463 IPR
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`filed by Cisco and Quantum. The 854 petition was purportedly a verbatim copy of
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`the 1463 petition. The instituted grounds in the 1463 IPR include the same CRD-
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`5500 User Manual (Ex. 1004) that Petitioner relied upon in the 1177 IPR. Ex. 2144
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`at 5. The instituted grounds also include the HP Journal, which the Board has noted
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`includes (at pages 99-112) the Smith reference Petitioner relied upon in the 1177
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`Declaration dated July 24, 2014 (the “July 24 Chase Decl.”) (Ex. 2150).
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`Confusingly, in the 776 IPR, the petitioner did the opposite, first submitting the July
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`24 Chase Decl. as Exhibit 1010 and then filing the July 18 Chase Decl. as the
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`corrected Exhibit 1010. Here, Petitioner has filed only the July 18 Chase
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`Declaration.
`
`
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`6
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`
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`IPR. Ex. 2144 at 6 n.1; compare Ex. 1006 at 99-112 with Ex. 2018 (Ex. 1005 of the
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`1177 IPR). As noted by the Board, the 1463 Petition also cited the CRD-5500 Data
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`Sheet that Petitioner relied upon in the 1177 IPR, for teaching that the CRD-5500
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`RAID controller was designed to support tomorrow’s high speed serial interfaces,
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`such as Fibre Channel. Ex. 2144 at 17; compare Ex. 1005 with Ex. 2022 (Original
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`Ex. 1004 of IPR2014-01177)2 and Ex. 2023 (Substitute Ex 1004 in IPR2014-01177).
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`Thus, the 1463 Petition and the 854 Petition asserted the same prior art previously
`
`asserted by Petitioner in the 1177 IPR, and asserted yet again in the 776 IPR and
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`here.
`
`B.
`
`The Board Should Exercise its Discretion to Deny the Petition
`Under 35 U.S.C. § 325(d)
`In determining whether to institute an inter partes review, the Board may
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`“deny some or all grounds for unpatentability for some or all of the challenged
`
`claims.” 37 C.F.R. § 42.108(b); see 35 U.S.C. § 314(a). Congress did not mandate
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`that an inter partes review must be instituted under certain conditions; rather, by
`
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`2 The original Exhibit 1004 in IPR2014-01177 is identical to the corresponding
`
`exhibit in IPR2014-01463. Compare Ex. 2022 with Ex. 2146. Petitioner submitted
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`the substitute Exhibit 1004 at the same time as the substitute Exhibit 1010 (see
`
`previous footnote), also without explanation or any apparent authorization. See
`
`supra note 1.
`
`
`
`7
`
`
`
`stating that review may not be instituted unless certain conditions are met, Congress
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`made institution discretionary. Intelligent Bio-Systems, Inc. v. Illumina Cambridge
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`Ltd., IPR2013-00324, Paper 19 at 4 (PTAB Nov. 21, 2013).
`
`In particular, the Director (and by extension the Board) has broad discretion
`
`to deny a petition that raises substantially the same prior art or arguments previously
`
`presented to the Office:
`
`Multiple Proceedings.— Notwithstanding sections 135 (a), 251, and
`252, and chapter 30, during the pendency of any post-grant review
`under this chapter, if another proceeding or matter involving the
`patent is before the Office, the Director may determine the manner
`in which the post-grant review or other proceeding or matter may
`proceed, including providing for the stay, transfer, consolidation, or
`termination of any such matter or proceeding. In determining
`whether to institute or order a proceeding under this chapter,
`chapter 30, or chapter 31, the Director may take into account
`whether, and 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) (emphasis added). The Board recognized that, under 35 U.S.C.
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`§ 325(d), “a petitioner is not entitled to multiple challenges against a patent.”
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`Samsung Electronics, Co., Ltd. v. Rembrandt Wireless Techs., LP, IPR2015-00118,
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`Paper 14 at 6 (PTAB Jan. 28, 2015) (citing 35 U.S.C. § 325(d)).
`
`In exercising its discretion under this section, the Board has been mindful of
`
`
`
`8
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`
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`the direction of 37 C.F.R. § 42.1(b), which states that the regulations governing
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`proceedings before the Board “shall be construed to secure the just, speedy, and
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`inexpensive resolution of every proceeding.” The Board has denied petitions
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`seeking a second chance to assert the same art against the same claims because the
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`Board was “not persuaded that a second chance would help ‘secure the just, speedy,
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`and inexpensive resolution of every proceeding.’” Rembrandt, IPR2015-00118,
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`Paper 14 at 6 (citing 37 C.F.R. § 42.1(b)); see also Zimmer Holdings, Inc. v. Bonutti
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`Skeletal Innovations LLC, IPR2014-01080, Paper 17 at 5-6 (PTAB Oct. 31, 2014).
`
`In Rembrandt, the petitioner filed a first petition to review multiple claims
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`based on anticipation by a particular reference. Rembrandt, IPR2015-00118, Paper
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`14 at 4. The Board denied institution on certain claims because the petition did not
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`establish that the reference taught specific claim elements. Id. at 4-5. Petitioner filed
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`a second petition requesting review of the same claims providing additional
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`argument that i) the reference “explicitly teaches the limitations [the Board] found
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`missing from Petitioner’s [first petition], . . . as explained in [the] institution decision
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`in [the prior proceeding]” and ii) the missing limitations were rendered obvious by
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`the reference. Id. at 5. According to the Board, “[t]he sole difference between what
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`Petitioner present[ed] in [the second] proceeding and what Petitioner presented in
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`[the first proceeding] . . . is the presence of additional reasoning to support the
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`assertion of unpatentability over the same prior art.” Id. at 6.
`
`
`
`9
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`
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`The Board found that the petitioner was “requesting, essentially, a second
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`chance to address [previously challenged] claims.” Id. (emphasis added). The Board
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`denied the second petition, stating that “[i]n this proceeding . . . we are not apprised
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`of a reason that merits a second chance. Petitioner simply presents an argument now
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`that it could have made in [the previous IPR] had it merely chosen to do so.” Id.; see
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`also Zimmer Holdings, Inc., IPR2014-01080, Paper 17 at 5-6 (denying petition
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`where “Petitioner simply presents an argument now that it could have made in [the
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`prior proceeding], had it merely chosen to do so.”)
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`The present case is analogous in that Petitioner is seeking another chance to
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`show where elements can allegedly be found in the prior art.3 Petitioner essentially
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`admits that the current Petition is nothing more than a “second bite at the apple,”
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`where Petitioner has corrected the deficiencies in its prior petition. See Pet. at 58-
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`59. The only substantive changes identified by the Petitioner are the inclusion of
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`3 As previously discussed, this is actually Petitioner’s third bite at the ’041 Patent
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`Apple, after the 1177 IPR and the 854 IPR. Further, as discussed herein, because
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`Petitioner is a real party in interest to the 776 IPR, the instant Petition is properly
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`considered Petitioner’s fourth bite. All in all, there are now five separate
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`proceedings challenging the ‘041 Patent on essentially the same grounds.
`
`
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`10
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`
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`cites to the prior art references, instead of cites to the supporting declaration. Id.4 As
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`in Rembrandt, the difference between the first petition and the second petition “is
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`the presence of additional reasoning to support the assertion of unpatentability over
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`the same prior art.” Rembrandt, IPR-2015-00118, Paper 14 at 6. Petitioner is thus
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`requesting exactly the type of “second chance to address [previously challenged
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`claims]” that the Board found lacking in Rembrandt. Id. (emphasis added).
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`Petitioner offers absolutely no justification or explanation for the deficiencies
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`in its prior petition, nor does it explain why the instant Petition is not redundant
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`under § 325(d). As in Rembrandt, Petitioner has not provided “a reason that merits
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`a second chance” but simply “presents an argument now it could have made in [the
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`prior petition], had it merely chosen to do so.” Thus, as in Rembrandt, the Board
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`should deny institution in this proceeding.
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`4 Although the Petition has been extensively reworded to incorporate the citations,
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`Petitioner has not pointed out any arguments that are substantively different than
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`those in the 1177 Pet
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