throbber
UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`INTEL CORP. and
`CAVIUM, INC.,
`
`Petitioners,
`
`v.
`
`ALACRITECH INC.,
`
`Patent Owner
`________________
`
`Case IPR2017-013931
`U.S. Patent 9,055,104
`________________
`
`PATENT OWNER’S RESPONSE
`PURSUANT TO 35 U.S.C. § 313 AND 37 C.F.R. § 42.107
`
`
`
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`
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`1 Cavium, Inc., filed a Petition in Case IPR2017-01714, and has been
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`joined as a petitioner in this proceeding.
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`Case No. IPR2017-01393
`U.S. Patent No. 9,055,104
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`TABLE OF CONTENTS
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`Page
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`I.
`
`II.
`
`INTRODUCTION .................................................................................1
`
`BACKGROUND OF THE RELEVANT TECHNOLOGY .................2
`
`III. LEVEL OF ORDINARY SKILL IN THE ART ...................................8
`
`IV. OVERVIEW OF THE ’104 PATENT ..................................................8
`
`A.
`
`B.
`
`The ’104 Patent Specification .....................................................8
`
`The ’104 Patent Claims ............................................................ 12
`
`V.
`
`PROSECUTION HISTORY OF THE ’104 PATENT ...................... 16
`
`VI. OVERVIEW OF THE ASSERTED PRIOR ART ............................. 17
`
`A. U.S. Patent No. 5,937,169 (“Connery”) ................................... 17
`
`B.
`
`International Application Publication No. WO
`2000/013091 (“Boucher”) ........................................................ 18
`
`VII. CLAIM CONSTRUCTION ............................................................... 19
`
`A.
`
`B.
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`“network interface device” ....................................................... 20
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`“prepending” ............................................................................ 20
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`VIII. THE PRIOR ART REFERENCES DO NOT RENDER
`CLAIMS 1, 6, 9, 12, AND 15 OBVIOUS ......................................... 21
`
`A.
`
`B.
`
`C.
`
`The prior art references do not show “including
`prepending a transport layer header to at least some of
`the data” (claim 1) .................................................................... 21
`
`The prior art references do not show “sending, by the
`network interface device to the computer, a response to
`the command indicating that the data has been sent from
`the network interface device to the network” (claim
`1)/“sending, by the network interface device to the
`computer, a response to the command indicating that the
`data has been sent from the device to the network” (claim
`12) ............................................................................................. 25
`
`The prior art references do not disclose “prior to
`receiving, by the network interface device from the
`network, an acknowledgement (ACK) that all the data
`corresponding to the command has been received” (claim
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`1)/“prior to receiving, by the network interface device
`from the network, an acknowledgement (ACK) that all
`the data has been received” (claim 12) .................................... 27
`
`1.
`
`2.
`
`3.
`
`4.
`5.
`
`Connery fails to disclose sending a response “prior
`to receiving, by the network interface device from
`the network, an acknowledgement (ACK)” that all
`the data has been transmitted ......................................... 29
`A longer latency in the ACK path than in the
`interrupt path does not render obvious sending a
`response “prior to receiving, by the network
`interface device from the network, an
`acknowledgement (ACK)” that all the data has
`been transmitted ............................................................. 30
`Petersen fails to support Dr. Horst’s opinion that it
`would have been obvious to a POSITA to send a
`response “prior to receiving, by the network
`interface device from the network, an
`acknowledgement (ACK)” that all the data has
`been transmitted ............................................................. 32
`Petitioner mischaracterizes Dr. Min’s testimony .......... 35
`Sending of a response “prior to receiving, by the
`network interface device from the network, an
`acknowledgement (ACK)” would not have been
`obvious to a POSITA in view of the prior art
`references based on the role of ACKs in the field ......... 36
`
`D.
`
`The prior art references do not disclose “wherein
`receiving, by the network interface device from the
`computer, a command to transmit data includes
`receiving, by the network interface device from the
`computer, a pointer to the command” (claim 9) ...................... 38
`
`E.
`
`There is no motivation to modify Connery as suggested
`by the Petition .......................................................................... 40
`
`IX. THE PETITION FAILS TO ADDRESS THE REQUISITE
`STANDARD FOR OBVIOUSNESS ................................................. 41
`
`X.
`
`THE STRONG EVIDENCE OF SECONDARY
`CONSIDERATIONS WEIGHS AGAINST OBVIOUSNESS ......... 42
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`U.S. Patent No. 9,055,104
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`1.
`
`The Claimed Invention Addresses a Long-felt, Yet
`Unresolved Need in the Art for Accelerated
`Network Communications ............................................. 42
`The Claimed Inventions Were Commercially
`Successful ...................................................................... 44
`The Claimed Invention Received Praise in the
`Industry .......................................................................... 46
`4. Many Other Tried and Failed to Develop the
`Claimed Technology ...................................................... 46
`Experts Were Skeptical of the Claimed Invention
`and Taught Away From It .............................................. 47
`
`2.
`
`3.
`
`5.
`
`XI. THE BOARD SHOULD DENY THE PETITION BECAUSE
`IT FAILS TO DISCLOSE ALL REAL PARTIES IN
`INTEREST ......................................................................................... 49
`
`XII. THE PETITION PRESENTS SUBSTANTIALLY THE SAME
`PRIOR ART AND ARGUMENTS PREVIOUSLY BEFORE
`THE OFFICE ...................................................................................... 51
`
`XIII. ALACRITECH RESERVES ITS RIGHTS UNDER THE
`PENDING OIL STATES CASE AT THE UNITED STATES
`SUPREME COURT ........................................................................... 52
`
`XIV. CONCLUSION .................................................................................. 52
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`TABLE OF AUTHORITIES
`
`Cases
`
`Page
`
`CCS Fitness, Inc. v. Brunswick Corp.,
` 288, F.3d 1359 (Fed. Cir. 2002) ....................................................... 19
`In re Ethicon, Inc.,
` 844 F.3d 1344 (Fed. Cir. 2017) ......................................................... 22
`W.L. Gore & Assocs., Inc. v. Garlock, Inc.,
` 721 F.2d 1540 (Fed. Cir. 1983) ......................................................... 23
`Kingbright Electronics Co., Ltd. v. Cree, Inc.,
`Case IPR2015-00744 (Sep. 9, 2015) .......................... 23, 24, 26, 28, 39
`Samsung Co., Ltd. v. Imperium (IP) Holdings,
`Case IPR2015-01231 (Dec. 2, 2015) ................................ 23, 26, 28, 39
`KSR Int’l Co. v. Teleflex Inc.,
` 550 U.S. 398 (2007) .............................................................. 40, 41, 42
`PAR Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc.,
` 773 F.3d 1186 (Fed. Cir. 2014) ......................................................... 41
`
`Rules/Statutes
`
`35 U.S.C. § 103(a) .......................................................................................... 1
`
`35 U.S.C. § 311(b) ................................................................................. passim
`
`35 U.S.C. § 312(a)(2) .................................................................................... 49
`
`35 U.S.C. § 314(a) ........................................................................................ 52
`
`35 U.S.C. § 316(e) .......................................................................................... 1
`
`35 U.S.C. § 325(d) ........................................................................................ 51
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`37 C.F.R. § 42.6(e) ....................................................................................... 54
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`37 C.F.R. § 42.8(b)(1) .................................................................................. 49
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`37 C.F.R. § 42.24 .......................................................................................... 53
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`37 C.F.R. § 42.24(a)(i) .................................................................................. 53
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`37 C.F.R. § 42.100(b) ................................................................................... 19
`
`Program for Covered Business Method Patents, 77 Fed. Reg. 48680,
`48699 (Aug. 14, 2012) ........................................................................ 19
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`PATENT OWNER’S LIST OF EXHIBITS
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`Exhibit #
`
`Ex. 2002
`
`Ex. 2003
`
`Ex. 2005
`
`Ex. 2007
`
`Ex. 2008
`
`Description
`
`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)
`
`Defendant Dell Inc.’s First Supplemental Responses to
`Plaintiff’s Second Set of Common Interrogatories to
`Defendants and Intervenors (No. 11)
`
`Declaration of Garland Stephens, Case No. 2:16-cv-
`00693-JRG-RSP, Dkt. 71-2 (E.D. Tex., Oct. 31, 2016)
`
`Excerpts of Declaration of Mr. Mark R. Lanning
`Regarding Claim Construction, Case No. 2:16-cv-00693-
`JRG-RSP, Dkt. 303-5 (E.D. Tex. Jul. 6, 2017)
`
`Ex. 2009
`
`Cavium’s Motion to Intervene, Case No. 2:16-cv-00693-
`JRG-RSP, Dkt. 109 (E.D. Tex., Jan. 13. 2017)
`
`Ex. 2010
`
`Not Used
`
`Ex. 2026
`
`Declaration of Kevin Almeroth, Ph.D. in Support of
`Patent Owner’s Response to the Petition
`
`Ex. 2027
`
`Curriculum Vitae of Kevin Almeroth, Ph.D.
`
`Ex. 2028
`
`Not Used
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`Ex. 2029
`
`Ex. 2030
`
`Transcript from the Deposition of Robert Horst, Ph.D.
`dated January 26, 2018
`
`Memorandum Order and Opinion on Claim
`Construction, Case No. 2:16-cv-00693-RWS-RSP,
`Docket 362 (Filed September 21, 2017)
`
`Ex. 2031
`
`The Architecture of a Gb/s Multimedia Protocol Adapter
`
`Ex. 2032
`
`A Fast Track Architecture for UDP/IP and TCP/IP
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`Ex. 2033
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`A Communication Architecture for High-speed
`Networking
`
`Ex. 2034
`
`Server Network Scalability and TCP Offload
`
`Ex. 2035
`
`Alacritech and NetXen Join Forces to Deliver Solutions
`for Microsoft TCP Chimney Offload Technology
`
`Ex. 2036
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`QLogic Licenses Alacritech
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`Ex. 2037
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`Neterion Licenses Alacritech’s Patents
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`Ex. 2038
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`Alacritech Licenses
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`Ex. 2039
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`Ex. 2040
`
`An Evaluation of an Attempt at Offloading TCP/IP
`Protocol Processing onto an i960RN-based iNIC
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`Alacritech, Pioneer In Network Acceleration, Unveils
`Appliance To Alleviate Enterprise Storage Woes
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`Ex. 2041
`
`TCP offload is a dumb idea whose time has come
`
`Ex. 2042
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`TCP/IP Headers (https://nmap.org/book/tcpip-ref.html)
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`Ex. 2043
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`TCP/IP message processing
`(http://www.thegeekstuff.com/2011/11/tcp-ip-
`fundamentals/)
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`Ex. 2044
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`Not Used
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`Ex. 2300
`
`Horst Paper
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`Case No. IPR2017-01393
`U.S. Patent No. 9,055,104
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`I.
`
`INTRODUCTION
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`Patent Owner Alacritech Inc. respectfully submits this Patent Owner
`
`Response. Petitioner Intel Corporation filed the Petition for Inter Partes Review
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`(“Petition”) of claims 1, 6, 9, 12, 15, and 22 of U.S. Patent No. 9,055,104 as
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`allegedly being unpatentable under 35 U.S.C. § 103(a).2 On November 30, 2017,
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`the Board instituted review of claims 1, 6, 9, 12, and 15 (“instituted claims”) of the
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`’104 patent, and denied the Petition with respect to claim 22. (Paper No. 8,
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`“Institution Decision.”)
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`For the reasons below, Petitioner has failed to meet its “burden of proving a
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`proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. §
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`316(e). First, Petitioner has failed to prove the existence of several limitations of
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`the challenged claims in the cited references, alone or in combination with each
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`other, including at least the “sending . . . a response that the data has been sent
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`from the network interface device to the network” and “prior to receiving an
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`2 The ’104 patent is assigned to Alacritech and is the subject of co-pending
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`litigation, Alacritech, Inc. v. CenturyLink, Inc., 2:16-cv-00693-JRG-RSP (E.D.
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`Tex.); Alacritech, Inc. v. Wistron Corp., 2:16-cv-00692-JRG-RSP (E.D. Tex.); and
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`Alacritech, Inc. v. Dell Inc., 2:16-cv-00695-RWS-RSP (E.D. Tex.), which were all
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`consolidated for pre-trial purposes (“the Litigation”).
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`acknowledgement” limitations. Second, Petitioner has failed to prove that a person
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`of ordinary skill in the art (“POSITA”) would have been motivated to modify
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`Connery with any expectation of arriving at the claimed subject matter, particularly
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`in view of the evidence of secondary considerations of non-obviousness present in
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`this case.3
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`II. BACKGROUND OF THE RELEVANT TECHNOLOGY
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`Both in 2002 and today, sending and receiving information over the Internet
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`involves the use of many different protocols that set out the rules for how devices
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`on the Internet can communicate with one another. (Ex. 2026 at ¶ 59.) Multiple
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`conceptual models exist for characterizing the interactions between these protocols
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`in the context of the Internet and other telecommunication or computing systems.
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`The Open Systems Interconnection model (or “OSI model”) is one well known
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`example, describing a seven layer stack where a particular layer serves the layer
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`above it and is served by the layers below it. (Id.) The seven layers of the OSI
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`model are:
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`Layer 7: Application Layer
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`3 Alacritech also respectfully reserves its rights under the Oil States case pending
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`before the United States Supreme Court, as set forth in Section XII of this
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`Response.
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`Layer 6: Presentation Layer
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`Layer 5: Session Layer
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`Layer 4: Transport Layer
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`Layer 3: Network Layer
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`Layer 2: Data Link Layer
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`Layer 1: Physical Layer
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`with layer 1 (the Physical Layer) being the lowest layer in the model. (Id.)
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`
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`The Internet Protocol (or “IP”) is an example of a well-known network
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`(layer 3) protocol. (Id. at ¶ 61.) IPv4 was published as RFC 760 in January 1980
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`while its successor IPv6 was published as RFC 2460 in December 1998. (Id.) The
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`IP protocol describes a set of rules for dividing a message into multiple parts
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`(called “IP packets”) and then transmitting those packets from an IP sender to an
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`IP destination across multiple routers or other links in a computer network. Each
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`packet of information includes an IP address for its destination, analogous to
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`sending a letter through the mail by placing the letter inside an envelope that has
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`the recipient’s postal address printed on it. (Id.) The format of an IP header is
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`depicted below:
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`(Id.; Ex. 2042.)4
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`
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`The Transmission Control Protocol, referred to as “TCP,” is one of the main
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`protocols used to send and receive information over the Internet. (Ex. 2026 at ¶
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`62.) TCP is well known in the computer networking industry—one early TCP rule
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`set was published as a Request for Comment (or “RFC”) by the Internet
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`Engineering Task Force (“IETF”) in September 1981 (RFC 793). That rule set
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`was based on an even earlier rule set published in December 1974 as RFC 675.
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`4 This figure accurately depicts an IP header as of April 2002, as supported by the
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`testimony of Dr. Almeroth. (Ex. 2026 at ¶ 61.)
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`(Id.) TCP is an example of a transport (layer 4) protocol in the OSI model. (Id.)
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`TCP is responsible for adding reliability and ordering to the stream of network
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`information—for example, the packets of information sent using IP as the network-
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`layer protocol may not arrive at the destination in the same order intended by the
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`sender of the message. (Id.) TCP sets rules for breaking up and transmitting the
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`message so that the recipient is able to reliably receive and reassemble the
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`message. Another common analogy from the physical world is the example of
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`sending a multi-page letter through the mail by separately numbering each page
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`and mailing it in its own envelope. IP, like the postal service, will route the
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`envelope-like packets to the destination, but TCP (like the numbering of the
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`individual pages) sets the rules to allow the recipient to verify that all of the pages
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`have been received and to reassemble the pages in the right order. (Id.)
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`TCP describes, for example, how two devices on the Internet may establish a
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`connection over which TCP data packets may be communicated between them.
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`(Id. at ¶ 63.) By way of a negotiation process known as a three-way handshake,
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`such a connection can be established between two nodes, and once that connection
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`establishment phase completes, data transfer can begin. Typically, a TCP
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`connection is managed by a device operating system so that applications such as a
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`web browser or a web server like a CDN caching server can pass data to the
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`operating system’s TCP protocol “stack,” and the operating system will manage
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`transmission of that data to the receiver and will pass received data from the other
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`device up to the application layer. (Id.) The format of a TCP header is depicted
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`below:
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`(Id.; Ex. 2042.5)
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`Transmitting a message requires processing each of the layers in that
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`protocol stack sequentially so that the message can then be transmitted over the
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`data medium. The receiving computer is also required to process those same
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`5 This figure accurately depicts an TCP header as of April 2002, as supported by
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`the testimony of Dr. Almeroth. (Ex. 2026 at ¶ 63.)
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`layers in reverse until the message is handed off to the appropriate program (e.g., a
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`web server). (Ex. 2026 at ¶ 64.) One example of processing a message using
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`TCP/IP is depicted below:
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`(Id.; Ex. 2043.6)
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`Much of this processing is typically handled by the CPU. (Ex. 2026 at ¶ 65.)
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`Thus, sending and receiving data over a network can negatively impact the CPU’s
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`6 This figure accurately depicts an example of processing a message using TCP/IP
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`as of April 2002, as supported by the testimony of Dr. Almeroth. (Ex. 2026 at ¶
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`64.)
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`ability to perform other functions, particularly as the volume of data sent or
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`received increases. (Id.) For the purposes of this case, the manner by which the
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`CPU handles the required protocol processing—i.e., the specific software steps it
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`takes to perform the needed TCP and IP processing—is immaterial. (Id.) At most,
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`it is sufficient that the CPU does perform or is capable of performing that
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`processing, whether through software included as part of the operating system or
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`through some other means. (Id.)
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`III. LEVEL OF ORDINARY SKILL IN THE ART
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`Patent Owner’s proposed level of ordinary skill for the ’104 Patent is a
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`Bachelor’s degree in Computer Science, Computer Engineering, or the equivalent,
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`and several years’ experience in the fields of computer networking and/or
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`networking protocols. (Ex. 2026 at ¶¶ 30-33.) Any differences between
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`Petitioners’ proposed level of ordinary skill and that proposed by Patent Owner
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`would not have any bearing on the analysis presented in this Response. Indeed, the
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`cited references fail to disclose the limitations, nor would it have been obvious to
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`combine the references, for the reasons presented below under either party’s
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`proposed level of ordinary skill in the art.
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`IV. OVERVIEW OF THE ’104 PATENT
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`A. The ’104 Patent Specification
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`The ’104 patent is directed toward novel systems and methods for
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`responding to commands and processing acknowledgements (ACKs) in a network
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`interface device such as an intelligent network card (INIC) in communication with
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`a host computer. The ’104 patent inventors discovered that waiting for ACKs to be
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`received by a network interface device before signaling to the host computer that
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`transmit commands have been completed can cause delays in transmitting data.
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`The systems and methods of the ’104 patent solve this problem by, for example,
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`sending from the network interface device to the host computer a signal that data
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`has been sent to the network prior to receiving, by the network interface device
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`from the network, an ACK that all the data has been received. As explained in
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`more detail below, the invention of the ’104 patent allows enhanced network and
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`system performance, faster data throughput, and an overall better user experience.
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`The network interface device “can send and receive data for the host to and
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`from a remote host, over a TCP connection maintained by the device.” (Ex. 1001
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`at Abstract.) When the network interface device sends data, it can “indicate to the
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`host that data has been transmitted from the device to a network, prior to receiving,
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`by the device from the network, an acknowledgement (“ACK”) for all the data,
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`accelerating data transmission.” (Id.)
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`As explained in the background of the ’104 patent, one way that TCP
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`guarantees that data is delivered is by the use of ACKs and the sequenced delivery
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`of data. (Id. at 2:10-12.) When transmitting data, a local host sends a command to
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`U.S. Patent No. 9,055,104
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`transmit data to its network interface device; the network interface device then
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`“acquires the data, divides it into segments and adds TCP and IP headers to each
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`segment to create a TCP/IP packet corresponding to each segment,” and transmits
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`the packets to a remote host over a network. (Id. at 2:15-23.) After the network
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`interface device sends the data in sequential packets to the remote host, the remote
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`host returns ACKs, which indicate how much of the data (e.g., all bytes up to a
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`certain sequence number) has been successfully received by the remote host. (Id.
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`at 2:10-26.) Conventionally, the network interface device waits for an ACK for all
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`the transmitted data before it sends a response indicating the command has been
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`completed to the local host, which informs an upper layer such as a session layer of
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`the local host that the transmit command has been completed. (Id. at 2:27-32.)
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`However, as discovered by the inventors, waiting for ACKs at the network
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`interface device before signaling to the local host that the transmit command has
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`been completed causes delays in transmitting data. (Id. at 2:41-44.)
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`In contrast to the conventional approach, the ’104 patent describes systems
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`and methods by which a network interface device, after sending all the packets to
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`the remote host over the network, sends a command response to the host computer
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`indicating the data has been sent prior to receiving an ACK indicating all the sent
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`data has been received by the remote host. (Id. at 3:42-51.) The command
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`response may be triggered by the local host sending to the network interface device
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`another command to transmit additional data. (Id. at 3:47-51.) The command
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`response indicates how much of the transmitted data has been acknowledged
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`(“ACKed”) by the remote host. (Id. at 3:51-53.) An indication that the network
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`interface device has received an ACK for a prior command may also be sent with,
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`or piggybacked on, the command response. (Id. at 3:53-56.)
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`Once the network interface device sends the command response to the local
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`host, the network interface device no longer needs to maintain the command. (Id.
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`at 4:1-11.) Relieving the network interface device from the duty of maintaining
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`the command until all the data for the command has been ACKed frees memory
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`space on the network interface device so that it can store another command, which
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`allows the network interface device to transmit more data. (Id.) For example:
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`In one embodiment, the interface device caches thirty-two of the most
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`active TCP connections in SRAM, while about four thousand TCP
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`connections are maintained in DRAM. SRAM memory may be
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`relatively expensive especially in terms of on-chip real estate, and
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`therefore SRAM memory space may be relatively scarce. For each of
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`the thirty-two active TCP connections in this embodiment, pointers to
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`(also known as indications of) up to three transmit commands are
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`stored: commands that have been sent, commands that are being sent,
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`and commands that are to be sent. Once these three pointers or
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`indications have been stored, that connection can not transmit any
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`more data in this embodiment. Particularly for the situation in which a
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`number of transmit commands are desired to be sent in a rapid
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`sequence for a connection, waiting for an ACK to be returned
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`corresponding to one of the commands can stall the transmission of
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`data. This embodiment avoids that delay by freeing the SRAM that
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`stores the command pointers or indications once the data has been
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`sent and typically prior to receiving an ACK for all that data, while
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`sending a signal to the host that the data has been sent.
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`(Id. at 4:24-43 (emphasis added).)
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`The novel systems and methods claimed in the ’104 patent provide
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`accelerated data transmission over a network in comparison to conventional
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`approaches. (Id. at 11:37-42.) As stated above, the ’104 patent allows for
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`enhanced network and system performance, faster data throughput, and an overall
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`better user experience.
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`B.
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`The ’104 Patent Claims
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`The ’104 patent includes 24 claims. The Board has instituted review of
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`claims 1, 6, 9, 12, and 15 of the ’104 patent. The instituted claims are reproduced
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`below.
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`Label
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`Limitation
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`Claim 1 of the ’104 Patent
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`1P
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`A method for communication involving a computer, a network, and a
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`network interface device of the computer, the network interface
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`device being coupled to the network, the method comprising:
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`12
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`1.1
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`receiving, by the network interface device from the computer, a
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`command to transmit application data from the computer to the
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`network;
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`1.2
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`sending, by the network interface device to the network, data
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`corresponding to the command,
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`1.3
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`including prepending a transport layer header to at least some of the
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`data;
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`1.4
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`sending, by the network interface device to the computer, a response
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`to the command indicating that the data has been sent from the
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`network interface device to the network,
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`1.5
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`prior to receiving, by the network interface device from the network,
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`an acknowledgement (ACK) that all the data corresponding to the
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`command has been received;
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`1.6
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`and maintaining, by the network interface device, a Transport Control
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`Protocol (TCP) connection that the command, the data and the ACK
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`correspond to.
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`Label
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`Limitation
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`Claim 6 of the ’104 Patent
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`13
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`The method of claim 1, further comprising:
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`receiving, by the network interface device, the ACK;
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`sending, by the network interface device to the computer, an
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`indication that the ACK has been received, to prompt the computer to
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`complete the command.
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`6P
`
`6.1
`
`6.2
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`
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`Claim 9 of the ’104 Patent
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`Label
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`Limitation
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`The method of claim 1,
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`wherein receiving, by the network interface device from the
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`computer, a command to transmit data includes receiving, by the
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`network interface device from the computer, a pointer to the
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`command.
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`9P
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`9.1
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`
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`Claim 12 of the ’104 Patent
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`Label
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`Limitation
`
`12P
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`A method for communication involving a computer, a network, and a
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`network interface device of the computer, the network interface
`
`device being coupled to the network, the method comprising:
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`12.1
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`receiving, by the network interface device from the computer, a
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`pointer to a command to transmit data from the computer to the
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`network;
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`12.2
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`sending, by the network interface device to the network, data
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`corresponding to the command;
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`12.3
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`sending, by the network interface device to the computer, a response
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`to the command indicating that the data has been sent from the device
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`to the network,
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`12.4
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`prior to receiving, by the network interface device from the network,
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`an acknowledgement (ACK) that all the data has been received;
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`12.5
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`and maintaining, by the network interface device, a Transport Control
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`Protocol (TCP) connection that the command, the data and the ACK
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`correspond to.
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`Claim 15 of the ’104 Patent
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`Label
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`Limitation
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`15P
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`15.1
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`15.2
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`
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`The method of claim 12, further comprising:
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`receiving, by the network interface device, the ACK;
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`sending, by the network interface device to the computer, an
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`15
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`indication that the ACK has been received to prompt the computer to
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`complete the command.
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`V.
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`PROSECUTION HISTORY OF THE ’104 PATENT
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`The ’104 patent issued on June 9, 2015. It was filed on May 22, 2009 as
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`Application No. 12/470,980 as a continuation of Application No. 10/413,256, filed
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`on April 14, 2003, which claims the benefit of Provisional No. 60/374,788, filed on
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`April 22, 2002.
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`The ’104 patent was subject to a thorough examination by Examiners Rupal
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`D. Dharia, Kevin S. Mai, and Kevin Bates. The Examiners rejected the claims as
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`obvious over prior art that included U.S. Patent No. 6,757,767 to Kelleher
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`(“Kelleher”). After two Office Actions and an Advisory Action in which
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`Examiners continued to assert that the “gateway” of Kelleher corresponded to “a
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`network interface device of the computer” recited in the claims, Applicants
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`appealed to the Board.
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`In a Decision on Appeal on January 26, 2015, the Board reversed the
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`Examiner, stating “[a]lthough a gateway serves as an interface between one
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`communications network and another, the gateway of Kelleher cannot be
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`considered a network interface device of the computer because one of ordinary
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`skill in the art would not understand the gateway of Kelleher as being a peripheral
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`device of the computer.” (Ex. 1002 at .487.) The Board held:
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`one of ordinary skill in the art would not have reasonably interpreted
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`the gateway of Kelleher as a network interface device attached to a
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`computer via a PCI bus, because a SAN bridge or gateway is utilized
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`to interconnect a number of host computers on a Fibre Channel or
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`similar bus to a plurality of target storage devices, often on one or
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`more SCSI buses. See Kelleher 1:15-22. Accordingly, the claimed
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`limitation “a network interface device of the computer” excludes a
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`construction whereby a gateway could reasonably be considered a
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`peripheral device of the computer as called for in claims 1, 13, and
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`24-26.
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`(Id. at .488-89.)
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`On April 8, 2015, the Examiner mailed a Notice of Allowance and Notice of
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`Allowability, in which the Examiner stated “[a]ccording to the Board Decision
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`mailed January 26, 2015, the prior art references do not disclose alone or in
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`combination all

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