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`Paper No. 46
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORP., and
`CAVIUM, INC.,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner
`____________
`
`Case IPR2017-013921
`U.S. Patent No. 7,337,241
`____________
`
`PATENT OWNER’S REPLY ISO OF ITS CONTINGENT MOTION TO
`AMEND UNDER 37 C.F.R. § 42.121
`
`
`
`
`
`1 Cavium, who filed a Petition in Case IPR2017-01728, has been joined as
`
`a petitioner in this proceeding.
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`TABLE OF AUTHORITIES .......................................................................... ii
`
`LIST OF EXHIBITS ...................................................................................... iii
`
`I.
`
`II.
`
`INTRODUCTION .................................................................................1
`
`patent owner satisfied its burden of production ....................................2
`
`A.
`
`B.
`
`Substitute Claims 25-32 Are Supported By The
`Specification. ...............................................................................2
`
`Substitute Claims 33-48 Are Supported By The
`Specification. ...............................................................................7
`
`III.
`
`the SUBSTITUTE claims overcome the prior art of record .............. 10
`
`A.
`
`B.
`
`Petitioner Has Not Met Its Burden To Show Substitute
`Claims 25-32 Are Obvious. ..................................................... 10
`
`Petitioner Has Failed To Show Substitute Claims 33-48
`Are Obvious. ............................................................................ 17
`
`IV. CONCLUSION .................................................................................. 21
`
`
`
`i
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Page
`
`Aqua Products, Inc. v. Joseph Matal et al.,
`Case No. 2015-1177 (Fed. Cir. Oct. 4, 2017) ....................................... 6, 10
`
`B.E. Tech. L.L.C. v. Google, Inc.,
`Case Nos. 2015-1827, 2015-1828, 2015-1829, 2015-1879, 2016 U.S.
`App. LEXIS 20591 (Fed. Cir. Nov. 17, 2016) ........................................... 6
`
`Honeywell Int’l v. Mexichem Amanco Holding S.A.,
`865 F.3d 1348 (Fed. Cir. 2017) ................................................................ 19
`
`Pharm., Inc. v. TWI Pharm., Inc.,
`773 F.3d 1186 (Fed. Cir. 2014) ................................................................ 19
`
`Polygroup Limited v. Willis Electric Co., Ltd.,
`IPR2016-01613, Paper 118 (Feb. 26, 2018) ............................................. 10
`
`Respironics, Inc. v. ZOLL Med. Corp.,
`Case No. IPR2013-00322, 2014 WL 4715644 (P.T.A.B. Sept. 17,
`2014) ........................................................................................................... 6
`
`Statutory Authorities
`
`35 U.S.C. § 316(d) ........................................................................ 1, 2, 6, 7, 10
`
`Rules and Regulations
`
`37 C.F.R. § 42.121 ........................................................................ 1, 2, 6, 7, 10
`
`
`
`
`
`ii
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`
`
`
`
`
`
`LIST OF EXHIBITS
`
`Exhibit #
`
`Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`Declaration of Paul Prucnal, Ph.D.
`
`Intel Corporation’s Motion to Intervene, Case No. 2:16-
`cv-00693-JRG-RSP, Dkt. 71 (E.D. Tex., Oct. 31, 2016)
`
`Declaration of Christopher Kyriacou, Case No. 2:16-cv-
`00693-JRG-RSP, Dkt. 71-5 (E.D. Tex., Oct. 31, 2016)
`
`Jonathan Corbet; Alessandro Rubini; Greg Kroah-
`Hartman (2005), Linux Device Drivers, 3rd edition,
`Chapter 10, “Interrupt Handling”
`
`Dell’s First Supplemental Response to Plaintiff’s Second
`Set of Common Interrogatories to Defendants and
`Intervenors (No. 11)
`
`Alteon Networks
`
`Declaration of Garland Stephens
`
`Declaration of Mark Lanning regarding Claim
`Construction
`
`Cavium’s Motion to Intervene
`
`Prucnal CV
`
`Patent Owner’s Discovery Requests to Petitioners
`
`Civil Docket for Case 216_cv_00695_RWS_RSP
`
`Civil Docket for Case 216_cv_00692_RWS_RSP
`
`Civil Docket for Case 216_cv_00693_RWS_RSP
`
`Emails
`
`Cavium’s Reply in Support of Motion to Intervene
`
`iii
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`
`
`
`
`
`
`2017
`
`2018
`
`2019
`
`2021
`
`2026
`
`2027
`
`2028
`
`2029
`
`2030
`
`2031
`
`2032
`
`2033
`
`2034
`
`Stipulation and Joint Motion to Stay Litigation Pending
`IPR Proceedings
`
`Order Granting Joint Motion to Stay Litigation Pending
`IPR Proceedings
`
`’809 Provisional Application
`
`’878 Application
`
`Declaration of Kevin Almeroth (Corrected Ex 2026)
`
`Almeroth CV
`
`Deposition Transcript of Robert Horst (1/25/2018)
`
`Deposition Transcript of Robert Horst (1/26/2018)
`
`Claim Construction Order
`
`The Architecture of a Gb/s Multimedia Protocol Adapter
`(DEFS-ALA0010789)
`
`A Fast Track Architecture for UDP/IP and TCP/IP
`(DEFS-ALA0007163)
`
`A Communication Architecture
`Networking (DEFS-ALA0006965)
`
`for High-speed
`
`Server Network Scalability and TCP Offload
`(ALA07620802)
`
`2035
`
`Alacritech and NetXen Join Forces to Deliver Solutions
`
`for Microsoft TCP Chimney Offload Technology
`(ALA07620772)
`
`QLogic Licenses Alacritech (ALA07620779)
`
`Neterion Licenses Alacritech’s Patents (ALA07620789)
`
`Alacritech Licenses (Confidential)
`
`2036
`
`2037
`
`2038
`
`iv
`
`
`
`
`
`
`
`
`
`
`2039
`
`2040
`
`2041
`
`2042
`
`2043
`
`2300
`
`2301
`
`2305
`
`2400
`
`2401
`
`An Evaluation of an Attempt at Offloading TCP/IP
`Protocol Processing onto an i960RN-based iNIC
`(ALA07370935)
`
`Alacritech, Pioneer In Network Acceleration, Unveils
`Appliance To Alleviate Enterprise Storage Woes
`(ALA07620842)
`
`TCP offload is a dumb idea whose time has come
`(ALA07370910)
`
`TCP IP Headers (https://nmap.org/book/tcpip-ref.html)
`
`TCP/IP message processing
`(http://www.thegeekstuff.com/2011/11/tcp-
`ipfundamentals/) (ALA11353476)
`
`Horst Paper
`
`Listing of Challenged Claims
`
`Declaration of Kevin Almeroth
`
`Stipulated Protective Order [Clean]
`
`Stipulated Protective Order [Markup]
`
`v
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`
`
`
`
`I.
`
`INTRODUCTION
`
`In its Contingent Motion to Amend (“Contingent Motion,” Paper 25), Patent
`
`Owner showed that its substitute claims meet the statutory requirements of 35
`
`U.S.C. § 316(d) and the procedural requirements of 37 C.F.R. § 42.121. Petitioner,
`
`in its Response in Opposition (“Opp.,” Paper 40), disputes one aspect of Patent
`
`Owner’s showing: whether Patent Owner identified sufficient written description
`
`support for the substitute claims. Petitioner’s argument is easily dismissed. The
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`Contingent Motion demonstrated, on a limitation-by-limitation basis, that the
`
`substitute claims are supported by the original disclosure of the ’241 patent, U.S.
`
`Application No. 10/260,878 (“the ’878 Application”), and an earlier-filed priority
`
`document, U.S. Provisional Application No. 60,061,809 (“the ’809 Provisional
`
`Application”), which was expressly incorporated by reference into the original
`
`disclosure.
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`Because Patent Owner established that the substitute claims meet the
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`statutory and procedural requirements, the burden is on the Petitioner to show the
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`unpatentability of the proposed amendments. Petitioner does not come close to
`
`satisfying its burden. The proposed amendments overcome the prior art of record
`
`by further distinguishing Erickson (Exhibit 1005), Tanenbaum (Exhibit 1006), and
`
`Alteon (Exhibit 1033). None of these references disclose the amended limitation of
`
`the substitute claims, either alone or in combination, and Petitioner’s naked
`
`
`
`1
`
`
`
`
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`assertions of obviousness are insufficient. The Board should thus grant the
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`Contingent Motion.
`
`II.
`
`PATENT OWNER SATISFIED ITS BURDEN OF PRODUCTION
`
`Petitioner disputes only whether Patent Owner’s Contingent Motion
`
`identifies sufficient written description support for the substitute claims. Petitioner
`
`does not dispute that Patent Owner demonstrated that the substitute claims meet
`
`the statutory requirements of 35 U.S.C. § 316(d) and the procedural requirements
`
`of 37 C.F.R. § 42.121 in all other regards. See Opp. at 2-5.
`
`The Contingent Motion attached charts showing, on a limitation-by-
`
`limitation, that the substitute claims are supported in the original ’878 Application
`
`(Exhibit 2021), and in the ’809 Provisional Application (Exhibit 2019).
`
`Contingent Motion (Paper 25), Appendix A and Appendix B. The charts directed
`
`the Board to specific embodiments and disclosures that unquestionably support the
`
`substitute claims, as explained below. Patent Owner has thus met its burden of
`
`production.
`
`A.
`
`Substitute Claims 25-32 Are Supported By The Specification.
`
`Patent Owner proposes a single amendment in substitute claims 25-32:
`
`sending by the first mechanism, the data from each
`
`packet of the first type to a destination in memory
`
`allocated to an application running on a host computer
`
`
`
`2
`
`
`
`
`
`without sending any of the media access control layer
`
`headers, network layer headers, or transport layer headers
`
`to the destination or to a host protocol stack running on
`
`the host computer.
`
`Contingent Motion, Appendix A at i-iii. Petitioner does not contend that there is
`
`inadequate written description support for these claims. See generally Opp. at 3-5.
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`Rather, Petitioner incorrectly argues the Contingent Motion should be rejected
`
`because it “include[s] string citations to large groups of figures and lengthy blocks
`
`of text” without explanation. Id. Petitioner’s argument is meritless.
`
`From among the hundreds of pages and Figures in the ’878 Application and
`
`’809 Provisional Application, Patent Owner’s Contingent Motion directed the
`
`Board to embodiments and disclosures that made clear how the substitute claims
`
`are supported. Contingent Motion, Appendix A at i-iii. For example, Patent
`
`Owner cited the embodiments illustrated in Figures 3 and 4 and described at
`
`paragraphs 55 to 64 of the ’878 Application. Id. These disclosures teach a first
`
`mechanism (e.g., a CPD 30) sends “application data” from each packet of a first
`
`type (e.g., those where a hash and a CCB are matched) to a destination in memory
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`allocated to an application running on a host computer (e.g., storage 35 on the host
`
`where the “application data” is stored), without sending header information to the
`
`destination or to a host protocol stack running on the host computer (e.g., a
`
`
`
`3
`
`
`
`
`
`protocol stack housed in storage 35). Ex. 2021 at Abstract, [0055]-[0064], Figs. 3-
`
`4.
`
`For instance, Figures 4A-4D and their corresponding written descriptions
`
`describe the ways packets that are received from a remote host 22 via network 25
`
`may be handled. Id. at Fig. 4A-4D; [0059]-[0064]. Figure 4C (reproduced below)
`
`depicts the scenario where packets received at the communication processed
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`device (“CPD”) 30 are from the “same connection as the initial packet”:
`
`
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`Id. at [0061]; Fig. 4C. In this scenario, “the packet headers and data are validated
`
`by the receive logic 32.” Id. The “headers are parsed to create a summary of the
`
`message packet and a hash for finding a corresponding CCB,” and the summary
`
`and hash are “stored in memory 60 along with the packet.” Id. The processor on
`
`the receive logic 32 then “checks for a match between the hash and each CCB that
`
`is stored in cache 62 and, finding a match, send the data (D2) 70 via a fast-path
`
`directly to the destination in storage 35, as shown by arrow 72.” Id. (emphasis
`
`added). The data (D2) bypasses the host protocol stack 44 and is sent to the
`
`
`
`4
`
`
`
`
`
`destination in memory allocated to an application running on a host computer
`
`(storage 35) without any of the media access control layer headers, network layer
`
`headers, or transport layer headers. See, e.g., id. (D2 “bypass[es] the session layer
`
`42, transport layer 40, network layer 38 and data link layer 36.”); see also [0051]
`
`(“host CPU 28 controls a protocol processing stack 44 housed in storage 35”); Fig.
`
`4C.
`
`Similarly, Figure 3 and its corresponding written disclosures explain that
`
`packets that “match a CCB held by the CPD” are sent via a fast-path where
`
`“[u]pon confirming such a match, the CPD removes lower layer headers and
`
`sends [in step] 69 [of Figure 3] the remaining application data from the frame
`
`directly into its final destination in the host.” Id. at [0057] (emphasis added); Fig.
`
`3. These embodiments and disclosures are examples of the more than adequate
`
`written description support for the substitute claims that exist in the ’878
`
`Application. See also, e.g., id. at Abstract (“INIC to move data, free of headers,
`
`directly to or from a destination or source in the host.”); [0017] (“this fast-path
`
`bypasses conventional protocol processing of headers that accompany the data”);
`
`Ex. 2305 Declaration of Kevin Almeroth, Ph.D in Support of Patent Owner’s
`
`Reply in Support of Motion to Amend Pursuant to 37 C.F.R. § 42.121 (“Almeroth
`
`Decl.”), ¶ 22.
`
`
`
`5
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`
`
`
`
`The substitute claims also find support in the ’809 Provisional Application,
`
`which was expressly incorporated by reference into the original disclosure. See
`
`Ex. 1001 at 2:19-23; Contingent Motion, Appendix B at viii-x. For example,
`
`Section 2.1 teaches that “[i]n order to keep the system CPU from having to process
`
`the packet header or checksum the packet, we must perform [transport level
`
`processing] on the INIC.” Ex. 2019 at 138. The ’809 Provisional Application goes
`
`on to describe how to implement a “fast-path” and a “slow-path,” wherein “[i]n the
`
`fast path case, network data is given to the host after the headers have been
`
`processed and stripped.” Id. at 140 (emphasis added). This disclosure provides
`
`"clear support for substitute claims 25-32.” Ex. 2305 Almeroth Decl., ¶ 23.
`
`Petitioner’s citations to Respironics, Inc. v. ZOLL Med. Corp., Case No.
`
`IPR2013-00322, 2014 WL 4715644, at *13 (P.T.A.B. Sept. 17, 2014) and B.E.
`
`Tech. L.L.C. v. Google, Inc., Case Nos. 2015-1827, 2015-1828, 2015-1829, 2015-
`
`1879, 2016 U.S. App. LEXIS 20591, at *21-24 (Fed. Cir. Nov. 17, 2016) are
`
`inapposite. First, it is premised upon precedent that has been overturned.
`
`Specifically, in Aqua Products, Inc. v. Joseph Matal et al., Case No. 2015-1177
`
`(Fed. Cir. Oct. 4, 2017) (en banc), the Federal Circuit held that the burden of
`
`persuasion to establish that proposed amendments are patentable no longer rests
`
`with the patent owner. Id., 5-6. Instead, it is the petitioner’s burden to prove
`
`unpatentability of the proposed amendments. Id. In a motion to amend, a patent
`
`
`
`6
`
`
`
`
`
`owner need only satisfy its burden of production under 35 U.S.C. § 316(d) and 37
`
`C.F.R. § 42.121. Moreover, unlike in Respironics and B.E. Tech, in the instant
`
`case, Patent Owner’s citation and explanation clearly show how the specification
`
`and drawings support the substitute claims. Patent Owner has not meaningfully
`
`disputed the sufficiency of these disclosures (nor can it).
`
`Accordingly, Patent Owner has shown that the substitute claims meet the
`
`statutory requirements of 35 U.S.C. § 316(d) and the procedural requirements of 37
`
`C.F.R. § 42.121.
`
`B.
`
`Substitute Claims 33-48 Are Supported By The Specification.
`
`For substitute claims 33-48, Patent Owner proposes only a single
`
`amendment:
`
`Transmitting the packets to the network, wherein the
`
`dividing, prepending, and transmitting occur without the
`
`second processor generating an interrupt to the first
`
`processor.
`
`Contingent Motion, Appendix A at iii-vii. Just as with substitute claims 25-32,
`
`Patent Owner pointed the Board to specific disclosures and embodiments teaching
`
`how the substitute claims are supported in the ’878 Application and ’809
`
`Provisional Application. Contingent Motion, Appendix A at iii-vii and Appendix
`
`B at x-xiv.
`
`
`
`7
`
`
`
`
`
`For example, Patent Owner cited to disclosures in the ’878 Application
`
`teaching how the fast-path transmit procedures of the inventions “relieve[] the host
`
`CPU of per-frame processing,” such that “an interrupt only occurs (at the most) at
`
`the beginning and end of an entire upper-layer message transaction, and there are
`
`no interrupts for sending or receiving of each lower layer portions or packet of that
`
`transaction.” See, e.g., Ex. 2021 at [0063]-[0064]. These disclosures teach those
`
`of skill in the art solutions that allow an INIC to acquire “network-sized portions of
`
`the message” data, perform “processor division of the data into packet and addition
`
`of full headers for network transmission” in order to “minimiz[e] CPU processing
`
`and interrupts.” Id. at [0077]-[0080]; see also id. [0075] (“When INIC microcode
`
`comparator circuits detect a match with the CCB, a DMA controller places the data
`
`from the packet in the destination 168, without any interrupt by the CPU, protocol
`
`processing or copying.”), [0160]-[0165]. In addition to these disclosures, the ’878
`
`Application walks through specific examples and the interrupts that would issue
`
`with the present invention. Id. at [0221]-[0223], [0229]-[0231]. These disclosures
`
`provide “clear support for substitute claims 33-48.” Ex. 2305, Almeroth Decl., ¶
`
`26.
`
`Similarly, substitute claims 33-48 find support in the ’809 Provisional
`
`Application, which was expressly incorporated by reference into the disclosure of
`
`the ’878 Application, as well. Contingent Motion, Appendix B at x-xiv. For
`
`
`
`8
`
`
`
`
`
`example, the ’809 Provisional Application identifies the reasons that prior art
`
`systems have “too many interrupts.” Ex. 2019 at 2-3. It continues by providing a
`
`“Summary of the Invention” explaining that its invention reduces the number of
`
`interrupts and that “[t]he remainder of this document [] describe[s] how we
`
`accomplish” the reduction in interrupts. Id. at 7. For example, Sections 2 and 5 of
`
`the ’809 Provisional Application provides a detailed disclosure of the transmit
`
`processing, including the “affect on interrupts” of these techniques. Id. at 60-62
`
`(describing “transmit processing,” including “main loop,” “transmit events,” and
`
`“transmit details”), 12-13 (explaining that in the transmit direction, “we actually
`
`only receive a single interrupt” after the transmit step completes).
`
`Contrary to Petitioner’s assertions in its Response (Opp. at 5), the example
`
`given in Section 2.4.3 the Provisional Application, which was cited in Patent
`
`Owner’s claim chart (see Contingent Motion, Appendix B at x-xiv), actually fully
`
`supports substitute claims 33-48. As acknowledged by Petitioner, a “[f]ast-path
`
`400 byte send” using the INIC is completed “in one interrupt.” Ex. 2019.016.
`
`Petitioner’s argument regarding a lack of disclosure about “when the interrupt
`
`occurs” is baseless because this is made clear in another portion of the disclosure:
`
`“[o]n transmit, we actually only receive a single interrupt when the send command
`
`that has been given to the INIC completes.” Ex. 2019. 013. As explained by Dr.
`
`Almeroth in more detail, “[i]t is clear, therefore, that the ’809 provisional
`
`
`
`9
`
`
`
`
`
`application provides adequate written description and enablement support for
`
`sending multiple packets of data on the fast-path without an interrupt generated
`
`during ‘the dividing, prepending, and transmitting’ steps.” Ex. 2305, Almeroth
`
`Decl., ¶ 28. This is because only a single interrupt is generated, after the entire
`
`send process has completed. Id., ¶ 28. Accordingly, Patent Owner has shown that
`
`the substitute claims meet the statutory requirements of 35 U.S.C. § 316(d) and the
`
`procedural requirements of 37 C.F.R. § 42.121.
`
`III. THE SUBSTITUTE CLAIMS OVERCOME THE PRIOR ART OF
`RECORD
`
`Patent Owner has met its burden of production, as demonstrated above.
`
`Accordingly, the burden shifts to Petitioner to establish the unpatentability of the
`
`proposed amendments. Aqua Products, Inc. v. Joseph Matal et al., Case No. 2015-
`
`1177 (Fed. Cir. Oct. 4, 2017) (en banc). Because Petitioner has failed to meet its
`
`burden, the Board should grant Patent Owner’s Contingent Motion. See, e.g.,
`
`Polygroup Limited v. Willis Electric Co., Ltd., IPR2016-01613, Paper 118 (Feb.
`
`26, 2018) (granting motion to amend where Patent Owner failed to meet its burden
`
`to show the substitute claim was obvious).
`
`A.
`
`Petitioner Has Not Met Its Burden To Show Substitute Claims 25-
`32 Are Obvious.
`
`Substitute independent claim 25 (and dependent claims 26-32) correspond to
`
`original independent claim 1 (and dependent claims 1-8). Claim 25 has been
`
`
`
`10
`
`
`
`
`
`amended to clarify that the data from each packet of the first type is sent to “a
`
`destination in memory allocated to an application running on a host computer
`
`without sending any of the media access control layer headers, network layer
`
`headers, or transport layer headers to the destination or to a host protocol stack
`
`running on the host computer.” Contingent Motion, Appendix A at i. The
`
`proposed amendment further distinguishes Erickson, Tanenbaum, and Alteon, and
`
`these references fail to disclose this limitation, either alone or in combination.2
`
`In its Petition for Inter Partes Review, Petitioner relied upon Alteon for the
`
`pre-amendment version of this limitation. See Paper 2 at 56-58. But the substitute
`
`claims have now been amended to expressly clarify that the headers cannot be sent
`
`to a “host protocol stack running on the host computer.” As Patent Owner
`
`explained in its Contingent Motion, Alteon teaches away from this amendment
`
`because it states that the “first 64 bytes of the packet,” which “includes the header
`
`information” is sent to the “protocol stack” on the host:
`
`
`2 These claims overcome the prior art for all the reasons identified in Patent
`
`Owner’s Preliminary Response as well. See Paper 34 at 32-46.
`
`
`
`11
`
`
`
`
`
`
`
`Ex. 1033 at 21 (yellow highlights and red annotation added); see also id. at 20
`
`(“protocol stack entity on the host”). The first 64 bytes of a packet would at least
`
`include the media access control layer header. Ex. 2305, Almeroth Decl., ¶ 31.
`
`Petitioner’s Opposition ignores this disclosure, and entirely abandons its reliance
`
`on Alteon. See Opp. at 8-11 (not citing Alteon once).
`
`With Alteon teaching away from the amended limitation, Petitioner attempts
`
`to pivot to its other references. Petitioner includes vague assertions that “Erickson
`
`in view of Tanenbaum96 discloses” the amended limitation. Opp. at 11. But
`
`Petitioner fails to explain how the single page and Figure in Tanenbaum that it
`
`cites supports its position or how Erickson would be modified in view of this
`
`disclosure in Tanenbaum. Id. (citing Ex. 1006 at 583 and Fig. 6-49). Moreover,
`
`Petitioner’s new found reliance on Erickson in view of Tanenbaum is undermined
`
`by the fact that its Petition did not argue this combination disclosed or suggested
`
`the broader, pre-amendment version of this limitation—let alone the more narrow
`
`
`
`12
`
`
`
`
`
`post-amendment version in the substitute claims. Paper 2 at 56-58. Petitioner
`
`exclusively relied on modifications to Erickson in view of Alteon. Id.
`
`A review of Tanenbaum also confirms its disclosures do not teach or suggest
`
`the proposed amendment. Tanenbaum is devoid of any teaching or suggestion that
`
`the MAC layer headers, network layer headers, and transport layer headers should
`
`not be sent to the destination or to a host protocol stack running on the host
`
`computer. To the contrary, Tanenbaum states that all TCP/IP protocol processing
`
`should be done by the host CPU:
`
`A tempting way to go fast is to build fast network
`
`interfaces in hardware. The difficulty with this strategy is
`
`. . . hardware just means a plug-in board with a second
`
`CPU . . . . The consequence of this design is that much of
`
`the time the main (fast) CPU is idle waiting for the
`
`second (slow) CPU to do the critical work. . . .
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`Furthermore . . . race conditions can occur, so elaborate
`
`protocols are needed between the two processors . . . .
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`Usually, the best approach is to make the protocols
`
`simple and have the main CPU do the work.
`
`See Ex. 1006 at 588-589; Ex. 2305, Almeroth Decl., ¶ 32 (one skilled in the art
`
`would understand Tanenbaum’s recommendation to “have the main CPU do the
`
`
`
`13
`
`
`
`
`
`work” involves the host CPU receiving the MAC layer headers, network layer
`
`headers, and transport layer headers). Thus, Tanenbaum discloses “traditional
`
`header processing by the host” and teaches away from the substitute claims. Ex.
`
`2305, Almeroth Decl., ¶ 32. While Petitioner cites to some alleged “[t]est to
`
`determine whether to process incoming packet on the fast path or slow path” in
`
`Tanenbaum, this “test” does not implicate any header processing by the NIC or
`
`processing any received packets “without sending any of the media access control
`
`layer headers, network layer headers, or transport layer headers to the destination
`
`or to a host protocol stack running on the host computer,” as recited by the
`
`substitute claims. Id., ¶ 32.
`
`Petitioner also fails to show that Erickson, alone or in combination with
`
`Tanenbaum and Alteon, discloses or suggests this limitation. Petitioner’s
`
`Opposition attempts to hand-wave by citing to Erickson without explaining how
`
`the cited portions meet the claimed limitation. They do not. As explained in more
`
`detail by Dr. Almeroth, “Erickson almost exclusively relates to the transmit side
`
`and does not disclose or suggest that that data from received packets are sent to a
`
`destination in memory allocated to an application running on a host computer
`
`without sending any of the media access control layer headers, network layer
`
`headers or transport layer headers to a host protocol stack running on the host
`
`computer.” Id., ¶ 33.
`
`
`
`14
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`
`
`
`
`In fact, like Tanenbaum, the portions of Erickson Petitioner cites teach away
`
`from the claimed invention. For example, Petitioner cites to Figure 4 of Erickson
`
`and the corresponding description of Figure 4. Opp. at 8 (citing Ex. 1005 at 4:53-
`
`5:14, Fig. 4). These disclosures state that “[t]he information coming from
`
`interconnect 410 is routed directly to a process 402 or 404.” Ex. 1005 at 5:8-11.
`
`“The word ‘directly’ indicates that the information from interconnect 410 is not
`
`processed before it is routed to process 402 or 404, and is instead transferred in its
`
`entirety with the header information.” Ex. 2305, Almeroth Decl., ¶ 34. Similarly,
`
`Petitioner’s reliance on Figure 5 and its corresponding written description is also
`
`misplaced. Opp. at 9-10 (citing Fig. 5 and 5:65-67). In these disclosures,
`
`Erickson states “endpoint table 514 points to various protocol data 518 in the
`
`memory 512 in order to accommodate multiple communication protocols . . .
`
`which indicate how data or information is to be transferred from the memory 512
`
`of the I/O device adapter to the portion of main memory 502 associated with a user
`
`process.” Ex. 1005 at 5:59-67. In other words, the “data or information” in
`
`memory 512, including the “protocol data,” is transferred to the main memory
`
`associated with the user process. Ex. 2305, Almeroth Decl., ¶ 34. One skilled in
`
`the art would understand “protocol data” includes header information. Ex. 2305,
`
`Almeroth Decl., ¶ 34. Erickson thus teaches sending header information to the
`
`destination, which is the opposite of what the substitute claims require.
`
`
`
`15
`
`
`
`
`
`Petitioner’s other citations to Erickson also fail to disclose the proposed
`
`amendments in the substitute claims. Petitioner relies upon Figure 3 of Erickson
`
`and its corresponding written description. Opp. 9-10 (citing Ex. 1005 at Fig. 3,
`
`5:2-3 and 5:9-14). But these disclosures fail to mention headers and certainly do
`
`not teach how headers would be processed without sending the headers to the
`
`destination in memory allocated to an application. Additionally, the arrows in
`
`Figure 3 point from applications 302 and 304 to the I/O device adapter 314,
`
`thereby making it clear that information is actually being transmitted away from
`
`the alleged destination in memory allocated to an application. The substitute
`
`claims relate to information transfer in the opposite direction (i.e., to the
`
`destination). See Motion, Appendix A at i. This difference is “not trivial,” and the
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`“challenges of offloading receive-side processing are different than for transmit-
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`side processing.” Ex. 2305 Almeroth Decl., ¶ 35. Petitioner’s reliance on
`
`Erickson’s statement that “a user process can use the virtual hardware of the
`
`present invention to provide a direct streamlined path to a given I/O device
`
`adapter” is similarly misplaced. Opp. at 10-11 (citing Ex. 1005 at 8:65-9:7). This
`
`disclosure again relates to data flow in the wrong direction, namely from the I/O
`
`device to the user process. And, in any event, by teaching a “direct” path to a
`
`given I/O device the cited disclosure teaches transferring entire blocks of
`
`information without any processing to remove header information.
`
`
`
`16
`
`
`
`
`
`Because Petitioner has failed to meet its burden to show the unpatentability
`
`of substitute claims 25-32, the Board should grant the Contingent Motion.
`
`B.
`
`Petitioner Has Failed To Show Substitute Claims 33-48 Are
`Obvious.
`
`Substitute independent claims 33 and 41 (and dependent claims 34-40 and
`
`42-48) correspond to original independent claims 9 and 17 (and dependent claims
`
`10-16 and 18-24). Claims 33 and 41 have been amended to clarify that the
`
`“dividing, prepending, and transmitting, occur without the second mechanism
`
`generating an interrupt to the first mechanism.” Contingent Motion, Appendix A
`
`at iii-vii. Erickson, Tanenbaum, and Alteon do not disclose the proposed
`
`amendment, either alone or in combination.3
`
`As Patent Owner explained in its Patent Owner Response, Petitioner was
`
`unable to demonstrate that its proposed grounds perform the “dividing,”
`
`“prepending” and “transmitting” limitations. See Paper 34 at 52-54; see also
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`Ex. 2026, ¶ 141 (no functionality “within Erickson’s I/O device adapter for
`
`dividing a large block of user data into multiple segments and prepending a packet
`
`header to each of the segments.”). Indeed, Petitioner’s expert has provided little
`
`more than conclusory, high-level assertions regarding how Erickson’s I/O device
`
`
`3 These claims overcome the prior art for all the reasons identified in Patent
`
`Owner’s Preliminary Response as well. See Paper 34 at 46-56.
`
`
`
`17
`
`
`
`
`
`would need to be modified to perform the claimed steps. See Paper 34 at 52-54;
`
`see also Paper 34 at 53-54 (explaining that the modifications proposed by
`
`Petitioner’s expert at his deposition are “technically infeasible and extremely
`
`difficult to implement.”).
`
`
`
`Despite having the opportunity to do so in its Opposition, Petitioner made no
`
`attempt to provide the missing details regarding how Erickson would be modified
`
`in view of Tanenbaum to perform the “dividing,” “prepending” and “transmitting”
`
`steps—let alone to perform them “without the second mechanism generating an
`
`interrupt to the first mechanism,” as required by the proposed amendments.
`
`Petitioner’s repeated inability to explain its proposed modifications is not
`
`surprising. The word “interrupt” does not appear in Erickson, and Petitioner
`
`cannot show Erickson includes inherent disclosure of the interrupt limitation.
`
`Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1194–95 (Fed. Cir. 2014) (for
`
`inherency “the limitation at issue necessarily must be present”); see also
`
`Honeywell Int’l v. Mexichem Amanco Holding S.A., 865 F.3d 1348 (Fed. Cir.
`
`2017) (“use of inherency in the context of obviousness must be carefully
`
`circumscribed”). In fact, Petitioner admitted that Erickson does not include any
`
`teachings or suggestions relating to interrupts in the context of the “without
`
`interrupt” limitation of claim 1. See Petition at 54 (“Erickson, however, does not
`
`disclose whether there is an interrupt issued between validation of the network and
`
`
`
`18
`
`
`
`
`
`transport layer headers.”). Tanenbaum is also silent regarding interrupts, as
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`evidenced by Petitioner’s failure to cite to the reference for this limitation. See
`
`Opp. at 15-17.
`
`Unable to explain how Erickson or Tanenbaum, alone or in combination,
`
`teach or suggest the interrupt limitation, Petitioner attempts to rely upon a
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`statement in the Institution Decision that “all processing to generate headers for
`
`pa
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