U.S. Patent No. 7,124,205
`(205 Patent)
`
`IPR2017-1405 (Intel)
`IPR2018-0336 (Dell)
`IPR2017-1735 (Cavium)
`
`*All citations herein are to the IPR2017-01405 case unless otherwise noted.
`
`289
`
`
`(205 Patent)
`
`IPR2017-1405 (Intel)
`IPR2018-0336 (Dell)
`IPR2017-1735 (Cavium)
`
`*All citations herein are to the IPR2017-01405 case unless otherwise noted.
`
`289
`
`
`
`205 Patent: Instituted Grounds
`
`• Thia in view of Satran I and Satran II
` Claims 3, 9, 10, 16, 22, 27-33, 35, 36
` Claims 31, 32-33 addressed in supplemental briefing
`
`• Thia in view of Satran I, Satran II, and
`Carmichael
` Claims 24-26
`
`Ex. 1015 – Thia, Y.H., Woodside, C.M. Publication (“Thia”)
`Ex. 1053 – U.S. Patent No. 5,894,560 (“Carmichael”)
`Ex. 1056 – Satran, J. Publication (“Satran I”)
`Ex. 1057 – Satran, J. Publication (“Satran II”)
`
`290
`
`
`
`205 Patent: Disputes
`
`1. Thia is enabling prior art
`2. Thia teaches the network interface device performing all
`network and transport layer processing
`3. The combination of Thia, Satran I and Satran II discloses
`the challenged dependent claims
`4. A POSA would have been motivated to combine Thia,
`Satran I and Satran II (as well as Carmichael)
`5. Supplemental Briefing – claim 31 is indefinite or obvious
`in light of Thia, Satran I and Satran II
`6. Motions to Amend 205 Patent should be denied
`
`291
`
`
`
`PO fails to identify why Thia is allegedly
`not enabling
`
`• Patent Owner contends that Thia is an “inoperative device” and
`is therefore a non-enabling reference
`
`Paper 32 (205 Corrected Response) at 22.
`
`• Patent Owner’s expert, Dr. Almeroth, essentially repeats (or
`copies verbatim) the opposition and does not provide any
`additional information or arguments
`
`• A non-enabling reference can be prior art “for all that it teaches”
`
`Id. (citing Beckman Instruments v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989)).
`
`292
`
`
`
`Dr. Lin: Thia is not a theoretical device
`
`Ex. 1015.008 (Thia).
`
`• Thia discloses a design ready to be fabricated into a chip
`
`Ex. 1223.005-.006 (Lin Reply Decl.) at ¶ 6.
`
`293
`
`
`
`PO fails to identify why Thia is not
`enabling
`• The only alleged missing implementation details are not
`required by the 205 Patent claims or well-known to a POSA
`
`• Patent Owner’s expert mirrors Patent Owner’s Response
`
`Paper 32 (205 Corrected Response) at 27.
`
`294
`
`
`
`Thia is based on the well-known header
`prediction algorithm for TCP/IP
`
`Ex. 1015.002 (Thia); see also Paper 1 (205 Petition) at 21.
`
`295
`
`
`
`Dr. Lin: Thia is enabling to a POSA
`
`A POSA would have been able to
`understand and implement Thia’s
`teachings, which is one of many
`implementations of Van Jacobson’s
`header prediction
`
`Ex. 1223.004-.005 (Lin Reply Decl.) at ¶ 5;
`see also Ex. 1003.031, .070-.072 (Lin Decl.) at ¶ 54, A-12 – A-14.
`
`* * *
`
`See Ex. 1003.019, .021 (Lin Decl.) at ¶¶ 35-40;
`see also Paper 1 (Petition) at 21, 23.
`
`296
`
`
`
`205 Patent: Disputes
`
`2. Thia teaches the network interface device performing all
`network and transport layer processing
`a. Thia teaches the network interface device performs all network
`layer processing
`b. Thia teaches the network interface device performs all transport
`layer processing
`
`297
`
`
`
`205 Patent: Claim 1
`
`Ex. 1001.052 (205 Patent), Claim 1; see also -.052, Claims 35 and 36.
`
`298
`
`
`
`205 Patent: Claim 22
`
`Ex. 1001.052 (205 Patent), Claim 22.
`
`299
`
`
`
`205 Patent: Claim 31
`
`Ex. 1001.052 (205 Patent), Claim 31.
`
`300
`
`
`
`205 Patent: Disputes
`
`2. Thia teaches the network interface device performing all
`network and transport layer processing
`a. Thia teaches the network interface device performs all
`network layer processing
`b. Thia teaches the network interface device performs all transport
`layer processing
`
`301
`
`
`
`Thia: Bypass all host network layer
`processing in the data transfer phase
`
`“The bypass stack
`performs all the relevant
`protocol processing in
`the data transfer phase.”
`
`Ex. 1015.003 (Thia);
`Paper 1 (205 Petition) at 31, 47, 67;
`Ex. 1003.071 (Lin Decl.) at A-13;
`see also Ex. 1223.006-.007 (Lin Reply Decl.) at ¶ 9.
`
`Ex.1015.003 (Thia) at Fig. 1 (annotated);
`see, e.g., Ex. 1003.071-072 (Lin Decl.) at A-13 – A-14;
`see also Paper 1 (205 Petition) at 46-49.
`
`302
`
`
`
`Thia: Bypass multiple layers, including
`the network layer
`
`Ex.1015.004 (Thia);
`Paper 1 (205 Petition) at 47, 54, 59, 68, 84;
`Paper 44 (205 Reply) at 9.
`
`303
`
`
`
`Thia: Bypass functions can be narrow or
`extended
`
`Ex. 1015.014 (Thia);
`Paper 44 (Reply) at 9;
`Ex. 1223.010-.011 (Lin Reply Decl.) at ¶ 15.
`
`304
`
`
`
`OSI model has multiple layers, which
`must be processed in order
` The network layer must
`be processed before
`the transport and
`session layers
` It is undisputed that
`Thia discloses
`processing the
`transport and session
`layers on the adapter
`
`Ex. 1006.052 (Tanenbaum96) at Fig. 1-17; Paper 1 (205 Petition) at 41.
`
`See e.g., Paper 1 (205 Petition) at 18-19;
`Paper 44 (205 Reply) at 9-10;
`Ex. 1223.006-.008 (Lin Reply Decl.) at ¶¶ 9-10;
`Paper 31 (205 Response) at 2;
`Ex. 2026.029 (Almeroth Decl.) at ¶ 68.
`
`305
`
`
`
`205 Patent: Disputes
`
`2. Thia discloses performing all network and transport layer
`processing on the bypass path
`a. Thia’s network interface device performs all network layer
`processing
`b. Thia’s network interface device performs all transport layer
`processing
`i.
`The claims do not recite “reassembly”
`ii.
`Thia teaches placing data from in-order packets into host
`memory on the bypass path
`“Segmentation/reassembly” discussed in Thia is below the
`transport layer
`
`iii.
`
`306
`
`
`
`Thia’s bypass transport layer includes
`“reassembly”
`
`• Patent Owner admits that transport layer processing is
`performed on the bypass path, but argues that “reassembly” of
`incoming packets is missing from Thia:
`
`“Crucially, Thia does not disclose reassembling the incoming packets,
`which is a primary responsibility of the transport layer”
`
`Paper 31 (205 Response) at 43.
`
`307
`
`
`
`The claims do not recite “reassembly”
`
`Ex. 1001.052 (205 Patent), Claim 22.
`
`308
`
`
`
`PO equates “reassembly” with placing
`data from each packet into host memory
`
`Paper 45 (Motion to Amend Reply) at 2;
`see also Paper 70 (Supplemental Motion to Amend Reply) at 2.
`
`309
`
`
`
`205 Patent: Disputes
`
`2. Thia discloses the performing all network and transport
`layer processing on the bypass path
`a. Thia’s network interface device performs all network layer
`processing
`b. Thia’s network interface device performs all transport layer
`processing
`i.
`Claims do not recite “reassembly”
`ii. Thia teaches placing data from in-order packets into host
`memory on the bypass path
`“Segmentation/reassembly” discussed in Thia is below the
`transport layer
`
`iii.
`
`310
`
`
`
`Thia: ROPE chip places data from each
`packet into host memory
`
`Ex. 1015.006 (Thia); see also Ex. 1223.006-.007 (Lin Reply Decl.) at ¶ 9; Ex. 1210.011-.014, .023-.025 (Lin Opp. Decl.) at ¶¶ 24-30,
`A-3 – A-5; Paper 39 (Opp. To Motion to Amend) at 11; Paper 1 (205 Petition) at 76.
`
`311
`
`
`
`Thia: Copy data portions of PDUs from
`the adaptor buffer to host memory
`
`Ex. 1015.005 (Thia);
`Paper 66 (Opp. To Motion to Amend) at 5;
`Ex. 1262 (Lin Opp. to Supp. Motion to Amend) at ¶ 32;
`Paper 39 (Opp. to Motion to Amend) at 12-13;
`Ex. 1210.013-.014 (Lin Opp. to Motion to Amend) at ¶ 29.
`
`312
`
`
`
`Thia: Put incoming packets in the right
`order in the transport layer
`
`Ex.1015.010 (Thia);
`Paper 44 (205 Reply) at 13-14;
`Paper 39 (205 Opp. To Motion to Amend) at 11-13;
`Ex. 1210.011-.014 (Lin Opp. Decl.) at ¶¶ 24-30.
`
`313
`
`
`
`Thia: DMA data portions of PDUs to the
`host in the bypass path
`
`Ex. 1015.002 (Thia);
`See also Paper 1 (205 Petition) at 21;
`Ex. 1003.040, .065 (Lin Decl.) at ¶ 78, A-7.
`
`314
`
`
`
`205 Patent: Disputes
`
`2. Thia discloses the performing all network and transport
`layer processing on the bypass path
`a. Thia’s network interface device performs all network layer
`processing
`b. Thia’s network interface device performs all transport layer
`processing
`i.
`Claims do not recite “reassembly”
`ii.
`Thia teaches placing data from in-order packets into host
`memory on the bypass path
`iii. The “segmentation/reassembly” discussed in Thia is
`below the transport layer
`
`315
`
`
`
`Thia’s segmentation/reassembly for ATM is
`not transport layer reassembly
`
`Ex. 1015.014 (Thia).
`Thia’s “segmentation/reassembly” is
`fragmenting/re-assembling portions of
`packets at a layer below the transport layer.
`See, e.g., Paper 44 (205 Reply) at 13;
`Ex. 1223.009-.011 (Lin Reply Decl.) at ¶ 14;
`Paper 39 (205 Opp. To Motion to Amend) at 9-11;
`Ex. 1210.010-.011 (Lin Opp. Decl.) at ¶ 23.
`
`316
`
`
`
`Dr. Lin: Thia’s segmentation/reassembly
`for ATM is not transport layer reassembly
`
`Ex. 1223.009-.010 (Lin Reply Decl.) at ¶ 14.
`
`317
`
`
`
`205 Patent: Fragmented packets are
`processed on “slow path” by host
`• PO argues that “[0063] and [0064] similarly describe an
`embodiment in Figure 3 where ‘the data from the packet is sent
`125 by DMA to the destination in the host file cache,’ again
`disclosing reassembly to a person of skill in the art.”
`
`Paper 70 (Supplemental Motion to Amend Reply) at 2.
`
`• But packets that are fragmented are diverted from the fast-path
`and processed conventionally by the host
`
`Ex. 2022 (205 Pub. App.) at ¶ [0063].
`
`318
`
`
`
`205 Patent: Disputes
`
`1. Thia is enabling prior art
`2. Thia discloses the network interface device performing all
`network and transport layer processing on the bypass
`path
`3. The combination of Thia, Satran I and Satran II
`discloses the challenged dependent limitations
`4. A POSA would have been motivated to combine Thia,
`Satran I and Satran II (as well as Carmichael)
`5. Supplemental Briefing – claim 31 is indefinite or obvious
`in light of Thia, Satran I and Satran II
`6. Motions to Amend 205 Patent should be denied
`
`319
`
`
`
`The challenged dependent limitations
`
`Ex. 1001.051-.052 (205 Patent) at Claim 16.
`
`Ex. 1001.052 (205 Patent) at Claim 27.
`
`Ex. 1001.052 (205 Patent) at Claim 30.
`
`320
`
`
`
`The combination of Thia and Satran I and II
`discloses the challenged dependent claims
`
`Claim 30
`“enclosure”
`
`Claim 16
`“PCI bus”
`(peripheral
`component
`interface)
`
`Claim 27
`“single cable”
`
`Ex. 1015.007 (Thia) at Fig. 2 (annotated);
`Paper 1 (205 Petition) at 62-63, 71-74, 78-80 (combined).
`
`321
`
`
`
`205 Patent: Disputes
`
`4. A POSA would have been motivated to combine Thia,
`Satran I and Satran II (as well as Carmichael)
`a. A POSA would have used Thia’s bypass system with the iSCSI
`protocol of Satran I and Satran II
`b. A POSA would have looked to both Satran I and Satran II
`c. The motivations to further include Carmichael are unrebutted by
`Patent Owner
`d. The Petition includes sufficient evidence regarding expectation of
`success
`
`322
`
`
`
`Thia’s bypass would have been
`improved by Satran’s iSCSI
`
`Paper 1 (205 Petition) at 33;
`see also Ex.1003.048 (Lin Decl.) at ¶¶ 94-97.
`
`323
`
`
`
`iSCSI operates at the session layer
`
`• The 205 Patent acknowledges iSCSI operates at the session
`layer in the OSI protocol stack
`
`• Claim 3 requires that iSCSI operates at the session layer
`
`Ex.1001.048 (205 Patent) at 38:47-51;
`Paper 1 (205 Petition) at 43-44.
`
`Ex.1001.051 (205 Patent) at Claim 3.
`
`324
`
`
`
`PO’s criticism combining Thia and Satran is
`that Thia is a theoretical reference
`
`Paper 31 (205 Response) at 50.
`
`325
`
`
`
`205 Patent: Disputes
`
`4. A POSA would have been motivated to combine Thia,
`Satran I and Satran II (as well as Carmichael)
`a. A POSA would have used Thia’s bypass system and ROPE chip
`with the iSCSI protocol and read requests of Satran I and Satran II
`b. A POSA would have looked to both Satran I and Satran II
`c. The motivations to further include Carmichael are unrebutted by
`Patent Owner
`d. The Petition includes sufficient evidence regarding expectation of
`success
`
`326
`
`
`
`A POSA would have looked to both
`Satran I and Satran II
`
`• Petitioner addressed Satran I and Satran II together given
`their close relationship
` Overlapping authors
` Same functionality
` Satran II is a revision of Satran I
`Paper 1 (205 Petition) at 14-15, 32;
`Ex. 1003.044 (Lin Decl.) at ¶ 87 and FN4.
`
`Ex.1057.001 (Satran II).
`
`Ex.1056.001 (Satran I).
`
`327
`
`
`
`Satran I is an earlier version of Satran II
`
`Paper 31 (205 Response) at 30.
`
`Ex.1001.036 (205 Patent) at 13:28-35;
`Paper 1 (205 Petition) at 44.
`See also Paper 1 (205 Petition) at 32.
`
`Ex.1057.001 (Satran II).
`
`Ex.1056.001 (Satran I).
`
`328
`
`
`
`205 Patent: Disputes
`
`4. A POSA would have been motivated to combine Thia,
`Satran I and Satran II (as well as Carmichael)
`a. A POSA would have used Thia’s bypass system and ROPE chip
`with the iSCSI protocol and read requests of Satran I and Satran II
`b. A POSA would have looked to both Satran I and Satran II
`c. The motivations to further include Carmichael are unrebutted
`by Patent Owner
`d. The Petition includes sufficient evidence regarding expectation of
`success
`
`329
`
`
`
`A POSA would have been motivated to
`further include Carmichael
`
`• Patent Owner does not address motivations to further include
`Carmichael
`
`• Evidence in Petition is unrebutted
`
`Paper 31 (205 Response) at 53-54.
`
`Paper 44 (205 Reply) at 19.
`
`330
`
`
`
`205 Patent: Disputes
`
`4. A POSA would have been motivated to combine Thia,
`Satran I and Satran II (as well as Carmichael)
`a. A POSA would have used Thia’s bypass system and ROPE chip
`with the iSCSI protocol and read requests of Satran I and Satran II
`b. A POSA would have looked to both Satran I and Satran II
`c. The motivations to further include Carmichael are unrebutted by
`Patent Owner
`d. The Petition includes sufficient evidence regarding
`reasonable expectation of success
`
`331
`
`
`
`Dr. Lin: Reasonable expectation of
`success
`
`Ex. 1003.049-.050 (Lin Decl.) at ¶ 98; Paper 1 (205 Petition) at 36.
`
`• Patent Owner failed to
`identify any reason why there
`would not be a reasonable
`expectation of success
`
`332
`
`
`
`Dr. Lin: Combination not unduly
`complicated with a predictable result
`
`Ex. 1003.049 (Lin Decl.) at ¶ 98; see also Paper 1 (205 Petition) at 36.
`
`333
`
`
`
`205 Patent: Disputes
`
`5. Supplemental Briefing – claim 31 is indefinite or obvious
`in light of Thia, Satran I and Satran II
`a. The only new dispute is the corresponding structure for
`the means plus function elements in Claim 31
`
`334
`
`
`
`Claims 31-33 are invalid
`
`• The Petition addressed claim 31 in the alternative
` The claim is indefinite for lack of corresponding structure
`or
` The claim is invalid based on the prior art grounds in the Petition
`(assuming the host is part of the “means”)
`
`335
`335
`
`
`
`The petition addressed claim 31 in the
`alternative
`
`Paper 1 (205 Petition) at 29.
`
`336
`
`
`
`Dispute is whether the last function
`requires the “means” to include the host
`
`Ex.1001.052 (205 Patent ) at Claim 31.
`
`337
`
`
`
`Function 4, “slow path processing,” is
`performed on the host
`
`• No dispute that “slow path processing” is performed on the host
`
`Ex.1001.031 (205 Patent) at 4:40-46.
`
`• Patent Owner never explains where the 205 specification
`links its proposed means (the network interface device) to
`function 4
`
`52
`
`
`
`PO’s construction is at odds with the
`dependent limitations
`
`•
`
`• Patent Owner’s construction – the INIC is the means – is
`directly contradicted by dependent claims 32 and 33:
`If the means (INIC) performs “slow path processing the subsequent portion
`such that the protocol stack of the host does network layer and transport
`layer processing on the subsequent portion”
`• Then, Claims 32 and 33 are at odds because they expressly require that
`“the network layer and transport layer processing done on the subsequent
`portion by the means includes…”
`• The network layer and transport layer processing “on the subsequent
`portion” cannot be done by both the protocol stack of the host (claim 31)
`and the means (INIC) (claims 32 and 33)
`
`339
`
`
`
`Claims depending from claim 31
`
`Ex. 1001.052 (205 Patent), Claim 32.
`
`Ex. 1001.052 (205 Patent), Claim 33.
`
`340
`
`
`
`Alternatively, Claims 31-33 are invalid if
`they are not found indefinite
`
`• The Petition fully analyzed claim 31 under an interpretation
`where the last function (slow path processing) is performed by
`the host
`
`• Thia, Satran I and Satran II disclose fast path processing by
`the network interface device and slow path processing by the
`host in response to portions of an iSCSI read request
`
`Paper 1 (205 Petition) at 86.
`
`Paper 1 (205 Petition) at 81-87;
`Ex. 1003.120-.131 (Lin Decl.) at A-62 – A-73.
`
`341
`
`
`
`205 Patent: Disputes
`
`6. Motions to Amend 205 Patent should be denied
`a. Patent Owner has not met its burden of production under 35 U.S.C. §
`316(d) due to its failure to provide adequate written description
`support
`b. The prior art discloses each limitation of the substitute claims
`
`342
`
`
`
`PO only provided string citations
`
`Paper 20, Appendix A (205 Motion to Amend) at ii.
`
`Paper 20, Appendix B (205 Motion to Amend) at viii.
`
`343
`
`
`
`PO failed to identify corresponding structure
`in the specification for each function
`
`• PO did not identify corresponding structure for each function in
`claim 31 in its Response, supplemental Response, or Motion to
`amend
`
`• PO relies on the district court’s construction and only provides
`string citations
`
`See Papers 31, 56, and 57.
`
`Paper 56 (Supplemental Response) at 5-6.
`
`344
`
`
`
`205 Patent: Disputes
`
`6. Motions to Amend 205 Patent should be denied
`a. Patent Owner has not met its burden of production under 35 U.S.C. §
`316(d) due to its failure to provide adequate written description support
`b. The prior art discloses each limitation of the substitute claims
`i.
`“reassembled” / “assembles”
`
`345
`
`
`
`PO’s proposed amendments
`
`•
`
`• wherein the fast-path processing reassembles the [data portion
`of the response/data of the packet] with a second [data portion of
`a second response/data portion of a second packet] (claims 3, 9,
`16)
`• wherein the fast-path processing assembles the data of the
`packet with a second data of a second packet (claim 10)
`the first and second portions being processed such that a first data
`portion of the first portion and a second data portion of the second
`portion are reassembled and placed into the destination memory
`(claim 22)
`• processing the first and second response such that a first data
`portion of the first response is placed reassembled into a memory on
`the host computer with a second data portion of the second
`response (claims 35, 36)
`
`Paper 20 (Motion to Amend) at Appendix C.
`
`346
`
`
`
`PO’s proposed supplemental
`amendment
`
`• means, coupled to the host computer, for receiving from outside the
`apparatus a response to an ISCSI read request command and for
`fast-path processing a first and second portions of the response to
`the ISCSI read request command, the portions including first and
`second data, the portions being fast-path processed such that the
`first and second data are reassembled and placed into the
`destination memory on the host computer without the protocol stack of
`the host computer doing significant network layer or significant
`transport layer processing (claim 31)
`
`Paper 57 (Second Motion to Amend) at Appendix C.
`
`347
`
`
`
`Thia discloses “reassembly” as claimed
`in PO’s contingent amendments
`
`• As described in Petitioner’s reply to PO’s response and PO’s
`oppositions to PO’s motions to amend, Thia in combination
`with Satran I and Satran II and further in combination with
`Carmichael, disclose the “reassembly” limitations claimed in
`PO’s contingent amendments
`
`Paper 44 (205 Reply) at 12-14;
`Paper 39 (Opp. to Motion to Amend);
`Paper 66 (Opp. to Supplemental Motion to Amend).
`
`• See slides 306-314
`
`348
`
`
`
`U.S. Patent No. 9,055,104
`(104 Patent)
`
`IPR2017-01393 (Intel)
`IPR2018-00374 (Dell)
`IPR2017-01714 (Cavium)
`
`*All citations herein are to the IPR2017-01405 case unless otherwise noted.
`
`349
`
`
`
`104 Patent: Instituted Grounds
`
`• Connery
`• Claims 1, 6, 9, 12, and 15
`• Claim 22 in supplemental briefing
`
`• Connery in view of Boucher
`• Claims 1, 6, 9, 12, and 15
`
`Ex. 1043 - U.S. Patent No. 5,937,169 (“Connery”)
`Ex. 1049 - WO00/13091 (“Boucher”)
`
`350
`
`
`
`104 Patent: Disputes
`
`1. The prior art teaches all of the limitations of
`the examined claims
`
`2. Supplemental briefing regarding claim 22
`
`351
`
`
`
`104 Patent: Disputes
`
`1. The prior art teaches all of the limitations of
`the examined claims
`a. “Prepending” (Claim 1)
`b.
`“Sending . . . a Response to the Command”
`(Claims 1 and 12)
`“Prior to Receiving . . . an Acknowledgement”
`(Claims 1 and 12)
`i. No need to modify Connery
`“wherein receiving . . . a command to transmit
`data includes receiving . . . a pointer to the
`command” (Claim 9)
`
`d.
`
`c.
`
`352
`
`
`
`“Prepending” limitation
`
`Ex. 1001.012 (104 Patent) at Claim 1.
`
`353
`
`
`
`Connery: The network interface device
`automatically segments data
`
`Ex. 1043.001 (Connery) at Abstract;
`Ex. 1003.075 (Horst Decl.) at A-15;
`Paper 1 (104 Petition) at 56-57.
`
`354
`
`
`
`Connery: “Prepending” the header
`
`Ex. 1043.014 (Connery) at 13:15-16, Fig. 5;
`Ex. 1003.071-.074 (Horst Decl.) at A-12–A-13;
`Paper 1 (104 Petition) at 53-54.
`
`355
`
`
`
`Dr. Horst: Both prepending header and
`appending data were obvious
`
`Ex. 1003.074 (Horst Decl.) at A-14;
`Paper 1 (104 Petition) at 55-56;
`Paper 39 (104 Reply) at 7-8.
`
`356
`
`
`
`104 Patent: Disputes
`
`1. The prior art teaches all of the limitations of the
`examined claims
`a.
`“Prepending” (Claim 1)
`b. “Sending . . . a Response to the Command”
`(Claims 1 and 12)
`“Prior to Receiving . . . an Acknowledgement”
`(Claims 1 and 12)
`i. No need to modify Connery
`“wherein receiving . . . a command to transmit
`data includes receiving . . . a pointer to the
`command” (Claim 9)
`
`d.
`
`c.
`
`357
`
`
`
`“Sending…a response to the command
`indicating data has been sent” limitation
`
`*Aside from the addition of the underlined language, the highlighted language is identical for claim 12
`
`358
`
`Ex. 1001.012 (104 Patent) at Claim 1.
`
`
`
`Connery: A “large packet” is offloaded
`for processing by the smart adapter
`
`Ex. 1043.011 (Connery) at 7:47-49;
`Ex. 1003.075 (Horst Decl.) at A-15;
`Paper 1 (104 Petition) at 56.
`
`Ex. 1043.008 (Connery) at 2:40-42;
`Ex. 1003.074 (Horst Decl.) at A-15-16;
`Paper 1 (104 Petition) at 57.
`
`359
`
`
`
`Connery: Segmentation offload reduces
`interrupts to one per “large packet”
`
`Ex. 1043.011 (Connery) at 7:60-64;
`Ex. 1003.075-.076 (Horst Decl.) at A-15 – A-16;
`Paper 1 (104 Petition) at 57.
`
`360
`
`
`
`Connery: Interrupts that are avoided can
`include transmit completion interrupts
`
`Ex. 1043.009 (Connery) at 4:54-58 (summary of the invention);
`Ex. 1003.076 (Horst Decl.) at A-16;
`Paper 1 (104 Petition) at 57-58.
`
`361
`
`
`
`Dr. Horst: Connery’s single interrupt is
`an “interrupt for transmit completion”
`
`Ex. 1003.076-.077 (Horst Decl.) at A-16 – A-17;
`Paper 1 (104 Petition) at 58-59.
`
`362
`
`
`
`Dr. Horst: “Transmit completion” means
`data was transmitted to the network
`
`Ex. 1003.076 (Horst Decl.) at A-16;
`Paper 1 (104 Petition) at 58.
`
`363
`
`
`
`Dr. Horst: Alternatively, an “interrupt for
`transmit completion” was obvious choice
`
`Ex. 1003.077 (Horst Decl.) at A-17;
`Paper 1 (104 Petition) at 59.
`
`364
`
`
`
`Dr. Horst: Peterson corroborates that
`“transmit complete interrupt” was known
`
`Ex. 1044.019 (Peterson) at 9:33-36;
`Ex. 1003.077-.078 (Horst Decl.) at A-17 – A-18;
`Paper 1 (104 Petition) at 59-60.
`
`365
`
`
`
`104 Patent: Disputes
`
`1. The prior art teaches all of the limitations of the
`examined claims
`a.
`“Prepending” (Claim 1)
`b.
`“Sending . . . a Response to the Command”
`(Claims 1 and 12)
`c. “Prior to Receiving . . . an
`Acknowledgement” (Claims 1 and 12)
`i. No need to modify Connery
`“wherein receiving . . . a command to transmit
`data includes receiving . . . a pointer to the
`command” (Claim 9)
`
`d.
`
`366
`
`
`
`“…prior to receiving an
`acknowledgement” limitations
`
`*Aside from the addition of the underlined language, the highlighted language is identical for claim 12
`
`367
`
`Ex. 1001.012 (104 Patent) at Claim 1.
`
`
`
`Unlike the transmit complete interrupt,
`an ACK is received from the destination
`
`Ex. 1043.009 (Connery) at 3:59-61 (Summary of the invention);
`Ex. 1003.079-.080 (Horst Decl.) at A-19 – A-20;
`Paper 1 (104 Petition) at 61-62.
`
`368
`
`
`
`Dr. Horst: Connery’s transmit complete
`interrupt precedes receipt of ACKs due
`to latency
`
`Ex. 1003.080 (Horst Decl.) at A-20;
`Paper 1 (104 Petition) at 62-63.
`
`369
`
`
`
`Alacritech’s expert, Dr. Min: Obvious
`that notification of data transmission
`occurs before ACK
`
`Q.
`
`Is it because . . . the time that’s required to give the
`host a notification that the transmission has been
`sent, that takes much less time than the round trip of
`the data and the ACK; is that right?
`A. Yeah, that’s right
`Q. And you’re saying that’s obvious to a person of
`ordinary skill in the art?
`A. Yes, of course.
`
`Ex. 1077 (P. Min, March 21, 2017, Dep.) at 283:8-18 (objection omitted).
`See also id. at 282:7-2;
`Paper 1 (104 Petition) at 63, FN6;
`Paper 39 (104 Reply) at 11-12.
`
`370
`
`
`
`No need to modify Connery’s interrupts
`
`• PO argues that there is no motivation to modify
`Connery’s “interrupts on the host CPU to occur
`before the network interface receives an ACK that
`all the data has been received at the destination”
`
`Paper 29 (Response) at 40-41.
`
` However, there is no need to modify Connery, which
`teaches all claim limitations
`
`Paper 39 (Reply) at 14.
`
`371
`
`
`
`Alternatively, a transmit complete
`interrupt would have been obvious to try
`• A POSA would be motivated to use a transmit
`completion interrupt as one of a limited number of
`choices (e.g., Peterson discloses such interrupts)
`given Connery’s goal of reducing CPU utilization
`• A transmit complete interrupt has performance
`benefits
`
`Ex. 1003.076-.078, .080-.081 (Horst Decl.) at A-16 - A-17, A-19 – A-20;
`Paper 1 (Petition) at 58-59;
`Paper 39 (Reply) at 14-15;
`Ex. 1223.017 (Horst Reply Decl.) at 18;
`Ex. 1077.282-.283 (Paul Min Dep., Mar. 21, 2017) at 282:7-25, 283:8-18.
`
`372
`
`
`
`PO argues there is no reasonable
`expectation of success if ACKs are not
`handled conventionally
`
`Paper 29 (Response) at 41.
`
`373
`
`
`
`Dr. Horst: ACKs are processed
`conventionally
`
` ACKs processed as required by TCP/IP
`
`Ex. 1223.018-.019 (Horst Reply Decl.) at 17-18;
`Paper 39 (104 Reply) at 15.
`
`• Transmit complete interrupt is agnostic of ACKs, which
`are used for a different type of reliability:
` Successful receipt of data at receiving system (ACK) vs
`successful transmission of data by the network
`interface (transmit complete)
`
`Ex. 1223.018-.019 (Horst Reply Decl.) at 18-19;
`Paper 39 (104 Reply) at 15.
`
`374
`
`
`
`104 Patent: Disputes
`
`1. The prior art teaches all of the limitations of the
`examined claims
`a.
`“Prepending” (Claim 1)
`b.
`“Sending . . . a Response to the Command”
`(Claims 1 and 12)
`“Prior to Receiving . . . an Acknowledgement”
`(Claims 1 and 12)
`i. No need to modify Connery
`d. “wherein receiving . . . a command to
`transmit data includes receiving . . . a pointer
`to the command” (Claim 9)
`
`c.
`
`375
`
`
`
`“Receiving …a pointer to the command”
`limitation
`
`Ex. 1001.013 (104 Patent) at Claim 9.
`
`376
`
`
`
`Connery: A value for the transmit
`command may be passed by a pointer
`
`Ex. 1043.012 (Connery) at 10:7-17;
`Ex. 1003.094 (Horst Decl.) at A-34;
`Paper 1 (104 Petition) at 75.
`
`377
`
`
`
`Dr. Horst: Passing a pointer was one of
`a limited number of ways of sending
`commands that was easily implemented
`
`Ex. 1003.095 (Horst Decl.) at A-35;
`Paper 1 (104 Petition) at 75.
`
`378
`
`
`
`Dr. Horst: Matsunami corroborates
`passing a pointer to send a command
`was known to a POSA
`
`Ex. 1003.094 (Horst Decl.) at A-34, FN9;
`Paper 1 (104 Petition) at 75.
`
`379
`
`
`
`104 Patent: Disputes
`
`2. Supplemental briefing regarding claim 22
`a. Claim 22 is subject to §112(f)
`b. The 104 Patent specification does not provide a
`corresponding structure for performing the
`various “means”
`c. Alternatively, if the claim is not subject to
`§112(f) or the disclosed “means” is a network
`interface, the grounds disclose all limitations of
`claim 22
`
`380
`
`
`
`Claim 22: “Means for” limitations
`
`Ex. 1001.013 (104 Patent) at Claim 22.
`
`381
`
`
`
`Presumption that §112(f) applies when
`using “means for” + functional language
`“means for receiving, by the network interface device from the
`•
`computer, a command to transmit data from the computer
`to the network;”
`“means for sending, by the network interface device to the
`network, data corresponding to the command,”
`“including means for prepending a transport layer header to
`at least some of the data; and”
`“means for sending, by the network interface device to the
`computer, an indication that the data has been sent from the
`network interface device to the network, prior to receiving, by
`the network interface device from the network, an
`acknowledgement (ACK) that the data has been received.”
`
`•
`
`•
`
`•
`
`Ex. 1001 (104 Patent) at Claim 22.
`
`382
`
`
`
`The claimed “network interface device”
`is not sufficient corresponding structure
`The specification discloses network interface
`devices that cannot perform the claimed functions.
`
`Paper 48 (104 Supplemental Response) at 5;
`Paper 55 (104 Supplemental Reply) at 2-3.
`
`Paper 55 (104 Supplemental Reply) at 3-4.
`
`Paper 55 (104 Supplemental Reply) at 3-4;
`Ex. 1031 (Alacritech 1997 Provisional Application) at 010.
`
`383
`
`
`
`PO did not overcome §112(f) presumption
`
` The District Court agreed that a network interface device is
`not sufficient structure
`
`Paper 55 (104 Supplemental Reply) at 3;
`Ex. 2030.042 (Markman Order) at 42.
`
`384
`
`
`
`104 Patent: Disputes
`
`2. Supplemental briefing regarding claim 22
`a. Claim 22 is subject to §112(f)
`b. The 104 Patent specification does not
`provide a corresponding structure for
`performing the various “means”
`c. Alternatively, if the claim is not subject to
`§112(f) or the disclosed “means” is a network
`interface, the grounds disclose all limitations of
`claim 22
`
`385
`
`
`
`PO points to an “interface device” as the
`structure
`
`No structure
`on the
`interface
`device is
`identified for
`the functions
`
`386
`
`Paper 48 (104 Supplemental Response) at 6;
`Ex. 1001.011 (104 Patent) at 3:37-44.
`
`
`
`PO points to a “device” as the structure
`
`Paper 48 (104 Supplemental Response) at 6;
`Ex. 1001.010 (104 Patent) at 2:44:49.
`
`No
`structure
`in “the
`device” is
`identified
`for the
`functions
`
`387
`
`
`
`104 Patent does not identify any
`structure within the INIC
`
`Ex. 1001.007 (104 Patent) at Fig. 3.
`
`388
`
`
`
`104 Patent: Disputes
`
`2. Supplemental briefing regarding claim 22
`a. Claim 22 is subject to §112(f)
`b. The 104 Patent specification does not provide a
`corresponding structure for performing the
`various “means”
`c. Alternatively, if the claim is not subject to
`§112(f) or the disclosed “means” is a
`network interface, the grounds disclose all
`limitations of claim 22
`
`389
`
`
`
`If claim 22 is not indefinite, then it is
`obvious for same reasons as claim 1
`
`• Claim 22.p = claim 1.p (not challenged by PO)
`• Claim 22.1 = claim 1.1 (not challenged by PO)
`• Claim 22.2 = claim 1.2 (not challenged by PO)
`• Claim 22.3 = claim 1.3 (addressed above)
`• Claim 22.4 = claim 1.4, 1.5 (addressed above)
`
`Ex. 1003.099-.100 (Horst Decl.) at A-39 – A-40;
`Paper 1 (Petition) at 77-81;
`Paper 55 (Supplemental Reply) at 4-6.
`
`390
`
`
`
`Evidence of Obviousness Far
`Outweighs Patent Owner’s Alleged
`“Objective Evidence”
`
`All citations refer to the docket for Case IPR2017-01391 unless otherwise noted.
`
`Petitioner’s arguments are the same for IPR2017-01392,
`-01393, -01405, -01406, -01409, -01410.
`
`391
`
`
`
`No evidence PO’s products practice the
`claims
`
`Paper 41 (036 Reply) at 20;
`Ex. 1232.005 (Alacritech’s First Amended and Supplemental
`Patent Local Rule 3-1 and 3-2 Disclosures).
`
`392
`
`
`
`PO’s products were not commercially
`successful
`
`Paper 41 (036 Reply) at 21-22;
`Ex. 1227.001 (New ASIC Drives Alacritech into storage).
`
`393
`
`
`
`“Conventional wisdom”: Use special
`purpose NICs for TCP/IP acceleration
`
`Paper 41 (036 Reply) at 24;
`Ex. 2300.001 (IP Storage and the CPU Consumption Myth).
`
`394
`
`
`
`Real Party in Interest is Correctly
`Named
`
`*All citations refer to the docket for Case IPR2017-01391.
`Petitioner’s arguments are the same for IPR2017-01392,
`-01393, -01405, -01406, -01409, -01410.
`
`395
`
`
`
`Board found RPI correctly named in
`institution decision
`
`Paper 41 (036 Reply) at 24-25;
`Paper 8 (036 Institution Decision) at 4-5.
`
`396
`
`
`
`PO relies only on speculation in arguing RPI
`is Incorrect
`
`Paper 41 (036 Reply) at 24-25;
`Paper 30 (036 Response) at 57.
`
`397
`
`
`
`Alacritech accused Intel and Cavium of
`infringing the patents at issue
`
`Paper 41 (036 Reply) at 25;
`Ex. 1112.002 (Alacritech’s Answer and Counterclaims against Intel);
`See also Ex. 1233 (Alacritech’s Answer and Counterclaims against Cavium).
`
`398
`
`
`
`Defendants and Cavium exercised no
`role in Intel’s IPRs
`
`Paper 41 (036 Reply) at 24-25;
`Ex. 1110 (Stephens Decl.);
`Ex. 1111 (Kyriacou Decl.).
`
`399
`
`
`
`Tanenbaum96 Is Prior Art
`
`All citations refer to the docket for Case IPR
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