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`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 IPR2017-014051
`
`U.S. Patent No. 7,124,205
`
`________________
`
`PATENT OWNER’S RESPONSE
`PURSUANT TO 35 U.S.C. § 313 AND 37 C.F.R. § 42.107
`
`
`1 Cavium, who filed a Petition in Case IPR2017-01735, has been joined as a
`
`petitioner in this proceeding.
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`
`
`

`

`Case No. IPR2017-01405
`U.S. Patent No. 7,124,205
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`
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`TABLE OF CONTENTS
`
`Page
`
`PATENT OWNER’S LIST OF EXHIBITS ........................................................... IV
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`BACKGROUND OF THE RELEVANT TECHNOLOGY ........................... 1
`
`III. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 8
`
`IV. OVERVIEW OF THE ’205 PATENT ............................................................ 8
`
`A.
`
`B.
`
`The ’205 Patent Specification ............................................................... 8
`
`The ’205 Patent Claims ....................................................................... 12
`
`V.
`
`PROSECUTION HISTORY OF THE ’205 PATENT .................................. 18
`
`VI. OVERVIEW OF THE ASSERTED PRIOR ART ........................................ 21
`
`A.
`
`B.
`
`C.
`
`Thia, A Reduced Operation Protocol Engine (ROPE) for a
`multiple-layer bypass architecture (“Thia”) ....................................... 21
`
`J. Satran, SCSI/TCP (SCSI over TCP), (“Satran I”) ............................ 27
`
`J. Satran, iSCSI (Internet SCSI) (“Satran II”) ..................................... 28
`
`D. U.S. Patent No. 5,894,560 (“Carmichael”) ......................................... 28
`
`VII. CLAIM CONSTRUCTION .......................................................................... 28
`
`VIII. THE PETITION FAILS TO ADDRESS THE REQUISITE
`STANDARD FOR OBVIOUSNESS ............................................................ 28
`
`IX. THE PETITION IMPROPERLY TREATS SATRAN I AND
`SATRAN II AS A SINGLE REFERNCE ..................................................... 29
`
`X.
`
`THIA, SATRAN I, AND SATRAN II DO NOT RENDER CLAIMS 3,
`9, 10, 16, 22, 27-30, 35, AND 36 OBVIOUS ............................................... 32
`
`A.
`
`B.
`
`C.
`
`D.
`
`The Combination Does Not Show or Suggest Network Layer
`Bypass (All Challenged Claims) ......................................................... 33
`
`The Combination Does Not Show or Suggest Bypassing All of
`the Transport Layer Processing (All Challenged Claims) .................. 40
`
`“PCI bus” limitation (claim 16) .......................................................... 44
`
`“single cable” limitations (claim 27) ................................................... 46
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`E.
`
`F.
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`“enclosure” limitation (claim 30) ........................................................ 48
`
`There Is No Motivation to Combine Thia with Satran I or
`Satran II ............................................................................................... 49
`
`XI. THIA, SATRAN I, SATRAN II, AND CARMICHAEL DO NOT
`RENDER CLAIMS 24-26 OBVIOUS .......................................................... 53
`
`XII. THE STRONG EVIDENCE OF SECONDARY CONSIDERATIONS
`WEIGHS AGAINST OBVIOUSNESS ........................................................ 54
`
`1.
`
`2.
`
`3.
`
`The Claimed Invention Addresses a Long-felt, Yet
`Unresolved Need in the Art for Accelerated Network
`Communications ....................................................................... 54
`
`The Claimed Inventions Were Commercially Successful ........ 56
`
`The Claimed Invention Received Praise in the Industry .......... 57
`
`4. Many Others Tried and Failed to Develop the Claimed
`Technology ................................................................................ 58
`
`5.
`
`Experts Were Skeptical of the Claimed Invention and
`Taught Away From It ................................................................ 59
`
`XIII. THE PETITION FAILS TO DISCLOSE ALL REAL PARTIES-IN-
`INTEREST .................................................................................................... 61
`
`XIV. ALACRITECH RESERVES ITS RIGHTS UNDER THE PENDING
`OIL STATES CASE AT THE UNITED STATES SUPREME COURT ...... 63
`
`XV. CONCLUSION .............................................................................................. 63
`
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`U.S. Patent No. 7,124,205
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`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Beckman Instruments v. LKB Produkter AB,
` 892 F.2d 1547, 1551 (Fed. Cir. 1989) ................................................................22
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
` Case No. 2015-1693 (Fed. Cir. May 9, 2016) ....................................................32
`
`KSR Int’l Co. v. Teleflex, Inc.,
` 550 U.S. 398, 415 (2007) ....................................................................................29
`
`Kyocera Wireless Corp v. ITC,
` 545 F.3d 1340 (Fed. Cir. 2008) ..........................................................................31
`
`Oil States Energy Servs. LLC v. Greene’s Energy Group, LLC,
` Case No. 16-712, certiorari granted (U.S. Jun. 12, 2017) .................................63
`
`PAR Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc.,
` 773 F.3d 1186, 1192 (Fed. Cir. 2014) ................................................................29
`
`In re Stepan Co.,
` No. 2016-1811, slip op. at 6 (Fed. Cir. Aug. 25, 2017) ......................................29
`
`Statutory Authorities
`
`35 U.S.C. § 312(a)(2) ...............................................................................................61
`
`Rules and Regulations
`
`37 C.F.R. § 42.6(e) ...................................................................................................67
`37 C.F.R. § 42.8(b)(1) ..............................................................................................61
`37 C.F.R. § 42.22 .....................................................................................................64
`37 C.F.R. § 42.23 .....................................................................................................64
`37 C.F.R. § 42.24 .....................................................................................................66
`37 C.F.R. § 42.24(b)(2) ............................................................................................66
`37 C.F.R. § 42.120 ...................................................................................................64
`
`Additional Authorities
`
`U.S. Patent No. 5,535,375 ........................................................................................20
`U.S. Patent No. 5,682,534 ........................................................................................20
`U.S. Patent No. 5,894,560 ................................................................................. 28, 45
`U.S. Patent No. 6,591,310 ........................................................................................20
`U.S. Patent No. 7,124,205 .......................................................................................... 1
`
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`
`
`Exhibit #
`
`Ex. 2001
`Ex. 2002
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`Ex. 2003
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`Ex. 2004
`Ex. 2005
`
`Ex. 2006
`Ex. 2007
`
`Ex. 2008
`
`Ex. 2009
`
`Ex. 2026
`
`Ex. 2027
`Ex. 2031
`Ex. 2032
`Ex. 2033
`Ex. 2034
`Ex. 2035
`
`Ex. 2036
`Ex. 2037
`Ex. 2038
`Ex. 2039
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`Ex. 2040
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`Ex. 2041
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`PATENT OWNER’S LIST OF EXHIBITS
`
`Description
`
`Excerpts from Prosecution History of ‘205 Patent
`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)
`Not Used
`Defendant Dell Inc.’s First Supplemental Response to
`Plaintiff’s Second Set of Common Interrogatories to
`Defendants and Intervenors (No. 11)
`Not Used
`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., July 6, 2017)
`Cavium’s Motion to Intervene, Case No. 2:16-cv-00693-JRG-
`RSP, Dkt. 109 (E.D. Tex., Jan 13, 2017)
`Declaration of Kevin Almeroth, Ph.D. in Support of Patent
`Owner’s Response to the Petition
`Curriculum Vitae of Kevin Almeroth, Ph.D.
`The Architecture of a Gb/s Multimedia Protocol Adapter
`A Fast Track Architecture for UDP/IP and TCP/IP
`A Communication Architecture for High-speed Networking
`Server Network Scalability and TCP Offload
`Alacritech and NetXen Join Forces to Deliver Solutions for
`Microsoft TCP Chimney Offload Technology
`QLogic Licenses Alacritech
`Neterion Licenses Alacritech’s Patents
`Alacritech Licenses
`An Evaluation of an Attempt at Offloading TCP/IP Protocol
`Processing onto an i960RN-based iNIC
`Alacritech, Pioneer In Network Acceleration, Unveils
`Appliance To Alleviate Enterprise Storage Woes
`TCP offload is a dumb idea whose time has come
`
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`Exhibit #
`
`Ex. 2042
`Ex. 2043
`
`Ex. 2044
`
`Description
`
`TCP/IP Headers (https://nmap.org/book/tcpip-ref.html)
`TCP/IP message processing
`(http://www.thegeekstuff.com/2011/11/tcp-ip-fundamentals/)
`Transport-layer
`(https://www.techopedia.com/definition/9760/transport-layer)
`
`v
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`Case No. IPR2017-01405
`U.S. Patent No. 7,124,205
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`I.
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`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 of
`
`claims 3, 9, 10, 16, 22, 24-33, 35, and 36 of U.S. Patent No. 7,124,205, and the Board
`
`instituted proceedings on November 21, 2017. Specifically, the Board instituted
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`review of the ’205 patent on the following grounds 1 and 2 of the petition.2
`
`For the reasons below the Petition fails to demonstrate that the challenged
`
`claims are unpatentable. First, the cited references, either alone or in combinations,
`
`do not contain all elements of the challenged claims of the ’205 patent. Second, a
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`person of skill in the art would not combine the cited prior art with any expectation
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`of arriving at the claimed subject matter, particularly in view of the strong teaching
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`away and evidence of secondary considerations of non-obviousness present in this
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`case.
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`II. BACKGROUND OF THE RELEVANT TECHNOLOGY
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`Both in 1997 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 on
`
`the Internet can communicate with one another. (Ex 2026, ¶ 58.) Multiple
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`conceptual models exist for characterizing the interactions between these protocols
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`
`2 The Board did not institute as to claims 31-33. Decision at 6-8.
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`in the context of the Internet and other telecommunication or computing systems.
`
`The Open Systems Interconnection model (or “OSI model”) is one well known
`
`example, describing a seven layer stack where a particular layer serves the layer
`
`above it and is served by the layers below it. The seven layers of the OSI model are:
`
`Layer 7: Application Layer
`
`Layer 6: Presentation Layer
`
`Layer 5: Session Layer
`
`Layer 4: Transport Layer
`
`Layer 3: Network Layer
`
`Layer 2: Data Link Layer
`
`Layer 1: Physical Layer
`
`with layer 1 (the Physical Layer) being the lowest layer in the model. Id. In the
`
`context of network communications, four of these layers are commonly discussed:
`
`the link layer (layer 2, with common examples of link-layer protocols including
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`Ethernet and WiFi), the network layer (layer 3, with IP being the most common
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`example of a network-layer protocol), the transport layer (layer 4, with TCP and
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`UDP as two examples of transport-layer protocols), and the application layer (layer
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`7, with HTTP, SMTP (email), and FTP as examples of application-layer
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`protocols). Id.
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`The Hypertext Transfer Protocol (or “HTTP”) is an example of a well-
`
`known application (layer 7) protocol. HTTP version 1.1 was published as RFC
`
`2068 in January 1997. (Id. at ¶ 59.) As an application layer protocol, HTTP is a
`
`set of rules for carrying application-specific data between a source and a
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`destination (for example, carrying HTTP protocol headers and world wide web
`
`data between a web browser and a web site server). Because most Internet traffic
`
`uses both IP and TCP, Internet traffic is often described as “TCP over IP” or
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`simply “TPC/IP.” When that traffic happens to also use HTTP as the application
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`layer protocol, it is often described as “HTTP over TCP/IP.” Id.
`
`
`
`The Internet Protocol (or “IP”) is an example of a well-known network
`
`(layer 3) protocol. (Id. at ¶ 60.) IPv4 was published as RFC 760 in January 1980
`
`while its successor IPv6 was published as RFC 2460 in December 1998. The IP
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`protocol describes a set of rules for dividing a message into multiple parts (called
`
`“IP packets”) and then transmitting those packets from an IP sender to an 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
`
`sending a letter through the mail by placing the letter inside an envelope that has
`
`the recipient’s postal address printed on it. The format of an IP header is depicted
`
`below:
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`
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`3
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`(id.; Ex. 2042)
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`
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`The Transmission Control Protocol, referred to as “TCP,” is one of the main
`
`protocols used to send and receive information over the Internet. TCP is well
`
`known in the computer networking industry—one early TCP rule set was
`
`published as a Request for Comment (or “RFC”) by the Internet Engineering Task
`
`Force (“IETF”) in September 1981 (RFC 793). That rule set was based on an even
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`earlier rule set published in December 1974 as RFC 675. TCP is an example of a
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`transport (layer 4) protocol in the OSI model. TCP is responsible for adding
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`reliability and ordering to the stream of network information—for example, the
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`packets of information sent using IP as the network-layer protocol may not arrive
`
`at the destination in the same order intended by the sender of the message. (Ex.
`
`2026 at ¶ 61.) TCP sets rules for breaking up and transmitting the message so that
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`the recipient is able to reliably receive and reassemble the message. Another
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`common analogy from the physical world is the example of sending a multi-page
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`letter through the mail by separately numbering each page and mailing it in its own
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`envelope. IP, like the postal service, will route the envelope-like packets to the
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`destination, but TCP (like the numbering of the individual pages) sets the rules to
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`allow the recipient to verify that all of the pages have been received and to
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`reassemble the pages in the right order. Id.
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`
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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. By
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`way of a negotiation process known as a three-way handshake, such a connection
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`can be established between two nodes, and once that connection establishment
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`phase completes, data transfer can begin. Typically, a TCP connection is managed
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`by a device operating system so that applications such as a web browser or a web
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`server like a CDN caching server can pass data to the operating system’s TCP
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`protocol “stack,” and the operating system will manage transmission of that data to
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`the receiver and will pass received data from the other device up to the application
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`layer. The format of a TCP header is depicted below:
`
`
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`(id. at ¶ 62; Ex. 2042.)
`
`
`
`Transmitting a message requires processing each of the layers in that
`
`protocol stack sequentially so that the message can then be transmitted over the
`
`data medium. The receiving computer is also required to process those same
`
`layers in reverse until the message is handed off to the appropriate program (e.g., a
`
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`6
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`web server). One example of processing a message using TCP/IP is depicted
`
`below:
`
`
`
`(id. at ¶ 63; Ex. 2043.) Much of this processing is typically handled by the CPU.
`
`Thus, sending and receiving data over a network can negatively impact the CPU’s
`
`ability to perform other functions, particularly as the volume of data sent or received
`
`increases. For the purposes of this case, the manner by which the CPU handles the
`
`required protocol processing—i.e., the specific software steps it takes to perform the
`
`needed TCP and IP processing—is immaterial. At most, it is sufficient that the CPU
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`does perform or is capable of performing that processing, whether through software
`
`included as part of the operating system or through some other means. (Ex. 2026
`
`at ¶ 64.)
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`
`Patent Owner’s proposed level of ordinary skill for the ’205 Patent is a
`
`Bachelor’s degree in Computer Science, Computer Engineering, or the equivalent,
`
`and several years’ experience in the fields of computer networking and/or
`
`networking protocols. (Ex. 2026, ¶¶ 30-35.) Any differences between Petitioner’s
`
`proposed level of ordinary skill and that proposed by Patent Owner would not have
`
`any bearing on the analysis presented in this Response. Indeed, the cited references
`
`fail to disclose the limitations, nor would it have been obvious to combine the
`
`references, for the reasons presented below under either party’s proposed level of
`
`ordinary skill in the art.
`
`IV. OVERVIEW OF THE ’205 PATENT
`
`A. The ’205 Patent Specification
`
`The ’205 Patent describes a novel system for accelerating network processing.
`
`An intelligent network interface card (INIC) communicates with a host computer.
`
`The INIC provides “a fast-path that avoids protocol processing for most large multi-
`
`packet messages, greatly accelerating data communication.” (Ex. 1001 at Abstract.)
`
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`As explained in the background of the ’205 Patent, when a conventional
`
`network interface card prepares to send data from a first host to a second host, “data
`
`is divided into packets for transportation over the network, with each packet
`
`encapsulated in layers of control information that are processed one layer at a time
`
`by the CPU of the receiving computer.” (Id. at 1:49-52.) This process of adding a
`
`layer header to the data from the preceding layer is sometimes referred to as
`
`“encapsulation” because the data and layer header is treated as the data for the
`
`immediately following layer, which, in turn, adds its own layer header to the data
`
`from the preceding layer. (Ex. 2026 at ¶¶ 68-69.) Each layer is generally not aware
`
`of which portion of the data from the preceding layer constitutes the layer header or
`
`the user data; as such, each layer treats the data it receives from the preceding layer
`
`as some generic payload. (Id.)
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`(Ex. 1008, Stevens at 1008.034, Figure 1.4 (adapted from Petition at 18).)
`
`On the receiving side, the receiving host generally performs the reverse of the
`
`sending process, beginning with receiving the bits from the network. Headers are
`
`removed, one at a time, and the received data is processed, in order, from the lowest
`
`(physical) layer to the highest (application) layer before transmission to a destination
`
`within the receiving host (e.g., to the operating system space where the received data
`
`may be used by an application running on the receiving host). (Ex. 1001 at 1:49-
`
`52.) Each layer of the receiving host recognizes and manipulates only the headers
`
`associated with that layer, since to that layer the higher layer header data is included
`
`with and indistinguishable from the payload data.
`
`
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`Because the processing of each layer typically involves a copy and data
`
`manipulation operation (for example a checksum generation or validation
`
`operation), the host CPU must be “interrupted” at least one time per layer in order
`
`to process the data and construct (transmit side) or deconstruct (receive side) the
`
`packet. An interrupt is a signal to the processor emitted by hardware or software
`
`indicating an event that needs immediate attention. (Ex. 2026 at ¶ 70.) An interrupt
`
`alerts the processor to a high-priority condition requiring the interruption of the
`
`current code the processor is executing. (Id.) When the host CPU is interrupted, it
`
`generally must stop all other tasks it is currently working on, including tasks
`
`completely unrelated to the network processing. (Ex. 2026 at ¶ 71.) Frequent
`
`interrupts to the host CPU can be very disruptive to the host system generally and
`
`cause system instability and degraded system performance. (Id.)
`
`The invention of the ’205 Patent includes a “fast-path” where the host CPU is
`
`relieved of certain TCP/IP processing, which is instead performed by the INIC.
`
`FIG. 1 of the ’205 patent below is a plan view diagram of a network storage
`
`system including a host computer connected to plural networks by an intelligent
`
`network interface card (INIC) having an I/O controller and file cache for a storage
`
`unit attached to the INIC.
`
`
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`The claimed arrangement allows for enhanced network and system
`
`performance, a stark reduction or elimination of interrupts seen by the host CPU,
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`faster data throughput, increased system stability, and an overall better user
`
`experience.
`
`B.
`
`The ’205 Patent Claims
`
`The ‘205 patent includes thirty-six claims, fourteen of which (claims 3, 9-10,
`
`16, 22, 24-30, 35, and 36) have been challenged in this Petition.
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`12
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`Challenged claim 3 depends from independent claim 1 (not challenged here)
`
`as follows:
`
`Claim 1. An apparatus comprising:
`
`
`
`a host computer having a protocol stack and a
`
`destination memory, the protocol stack including a session
`
`layer portion, the session layer portion being for
`
`processing a session layer protocol; and
`
`
`
`a network interface device coupled to the host
`
`computer, the network interface device receiving from
`
`outside the apparatus a response to a solicited read
`
`command, the solicited read command being of the session
`
`layer protocol, performing fast-path processing on the
`
`response such that a data portion of the response is placed
`
`into the destination memory without the protocol stack of
`
`the host computer performing any network
`
`layer
`
`processing or any transport layer processing on the
`
`response.
`
`
`
`Claim 3. The apparatus of claim 1, wherein the session
`
`layer protocol is ISCSI.
`
`(Ex. 1001.51 at 43:44-58 and 66-67.)
`
`
`
`Challenged claims 9, 10, and 16 depend from claim 8 (not challenged here)
`
`as follows:
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`Claim 8. A method, comprising:
`
`
`
`issuing a read request to a network storage device,
`
`the read request passing through a network to the network
`
`storage device;
`
`
`
`receiving on a network interface device a packet
`
`from the network storage device in response to the read
`
`request, the packet including data, the network interface
`
`device being coupled to a host computer by a bus, the host
`
`computer having a protocol stack for carrying out network
`
`layer and transport layer processing;
`
`
`
`performing fast-path processing on the packet such
`
`that the data is placed into a destination memory without
`
`the protocol stack of the host computer doing any network
`
`layer processing on the packet and without the protocol
`
`stack of the host computer doing any transport layer
`
`processing on the packet;
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`
`
`receiving on the network interface device a
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`subsequent packet from the network storage device in
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`response to the read request, the subsequent packet
`
`including subsequent data; and
`
`
`
`performing slow-path processing on the subsequent
`
`packet such that the protocol stack of the host computer
`
`does network layer processing and transport layer
`
`processing on the subsequent packet.
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`Case No. IPR2017-01405
`U.S. Patent No. 7,124,205
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`Claim 9. The method of claim 8, wherein the read request
`
`is in the form of a SCSI command, wherein the SCSI
`
`command is attached to a header in accordance with the
`
`ISCSI protocol.
`
`
`
`Claim 10. The method of claim 8, wherein the read
`
`request is an ISCSI read request.
`
`
`
`Claim 16. The method of claim 8, wherein the bus is a PCI
`
`bus, and wherein the read request is a ISCSI read request.
`
`(Id. at 44:25-54 and Ex. 1001.52 at 45:11-12.)
`
`
`
`Challenged claim 22 is an independent apparatus claim, and challenged
`
`claims 24-30 depend from challenged claim 22, as recited below:
`
`Claim 22. An apparatus comprising:
`
`
`
`a host computer having a protocol stack and a
`
`destination memory; and
`
`
`
`a network interface device coupled to the host
`
`computer, the network interface device receiving a first
`
`portion of a response to an ISCSI read request command,
`
`the first portion being processed such that a data portion
`
`of the first portion is placed into the destination memory
`
`on the host computer with the protocol stack of the host
`
`computer doing substantially no network layer or
`
`transport layer processing, the network interface device
`
`
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`Case No. IPR2017-01405
`U.S. Patent No. 7,124,205
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`
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`receiving a second portion of the response to the ISCSI
`
`read request command, the protocol stack of the host
`
`computer doing network layer and transport layer
`
`processing on the second portion.
`
`
`
`Claim 24. The apparatus of claim 22, wherein the ISCSI
`
`read request command is passed from the host computer
`
`to the network interface device, the ISCSI read request
`
`command being accompanied by an indication of where
`
`the destination memory is located on the host computer.
`
`
`
`Claim 25. The apparatus of claim 24, wherein the
`
`indication includes a scatter-gather list.
`
`
`
`Claim 26. The apparatus of claim 24, wherein an
`
`indication of where the destination memory is located on
`
`the host computer is passed from the host computer to the
`
`network interface device, the indication being passed to
`
`the network interface device before the first portion of the
`
`response is received onto the network interface device.
`
`
`
`Claim 27. The apparatus of claim 22, wherein the
`
`response to the ISCSI read request command is received
`
`onto the computer via a single cable, the computer also
`
`receiving other network communications over the single
`
`16
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`U.S. Patent No. 7,124,205
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`cable, the other network communications not being ISCSI
`
`communications.
`
`
`
`Claim 28. The apparatus of claim 22, wherein the host
`
`computer does exception handling as a consequence of the
`
`computer having received the second portion of the
`
`response.
`
`
`
`Claim 29. The apparatus of claim 22, wherein the host
`
`computer does error handling as a consequence of the
`
`computer having received the second portion of the
`
`response.
`
`
`
`Claim 30. The apparatus of claim 22, wherein an
`
`enclosure contains both the host computer and the
`
`network interface device.
`
`(Ex. 1001.052 at 45:30-46:11.)
`
`
`
`Challenged claim 35 is an independent apparatus claim:
`
`Claim 35. A host bus adapter that is adapted for sending
`
`an ISCSI solicited read request and for receiving a
`
`response in return, the host bus adapter also being
`
`adapted for coupling to a host computer that has a
`
`protocol stack, the protocol stack having an ISCSI layer,
`
`the host bus adapter being adapted for processing the
`
`
`
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`Case No. IPR2017-01405
`U.S. Patent No. 7,124,205
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`
`
`response such that a data portion of the response is placed
`
`into a memory on the host computer without the host
`
`computer doing any network layer or transport layer
`
`processing on the response.
`
`(Id. at 46:41-49.)
`
`
`
`Challenged claim 36 is an independent method claim:
`
`Claim 36. A method, comprising:
`
`
`
`sending from a host bus adapter an ISCSI solicited
`
`read request;
`
`
`
`receiving onto the host bus adapter a response to
`
`the ISCSI solicited read request; and
`
`
`
`the host bus adapter processing the response such
`
`that a data portion of the response is placed into a
`
`destination memory on a host computer that is coupled to
`
`the host bus adapter without a protocol stack of the host
`
`computer doing any network layer processing on the
`
`response and without the host computer doing any
`
`transport layer processing on the response, the protocol
`
`stack of the host computer having an ISCSI layer.
`
`(Id. at 46:50-62.)
`
`V.
`
`PROSECUTION HISTORY OF THE ’205 PATENT
`
`The ‘205 patent issued on October 17, 2006. It was filed on October 2, 2001,
`
`as U.S. Patent Application No. 09/970,124, and claims priority to (among other
`
`
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`18
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`Case No. IPR2017-01405
`U.S. Patent No. 7,124,205
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`
`
`applications) U.S. Patent Application No. 09/067,544, filed April 27, 1998, U.S.
`
`Patent Provisional Application No. 60/098,296, filed Aug. 27, 1998, and U.S. Patent
`
`Provisional Application No. 60/061,809, filed Oct. 14, 1997.3
`
`The ‘205 patent was subject to a thorough examination by Examiners Eric J.
`
`Kuiper, J. Bret Dennison, and David Wiley who allowed the application after claim
`
`amendments and arguments over prior art of record that included the Thia and Satran
`
`I references advanced in this petition. (See Ex. 1002 and Ex. 2001.)
`
`The application for the ‘205 patent was filed Oct. 2, 2001, but was docketed
`
`awaiting examination for years before the first Office Action issued in January 2006.
`
`In a Supplemental Information Disclosure Statement dated Nov. 18, 2005, the
`
`applicant submitted both the Thia and Satran I references to the examiner, and the
`
`examiner initialed both references as “considered.” (Ex. 2001.004-005).
`
`
`
`
`3 See Ex. 1001.030 at Col. 1:8-53 for a listing of other related applications.
`
`
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`19
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`U.S. Patent No. 7,124,205
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`
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`In an initial Office Action mailed January 18, 2006, the examiner rejected the
`
`originally filed claims as anticipated by U.S. Patent No. 5,682,534 (“Kapoor”) or
`
`rendered obvious by Kapoor in view of VISA: Netstation’s Virtual Internet SCSI
`
`Adapter (“Van Meter”), U.S. Patent No. 6,591,310 (“Johnson”), and/or U.S. Patent
`
`No. 5,535,375 (“Eshel”). (Ex. 1002.02-26.) In a Response dated April 18, 2006,
`
`the applicant amended the claims to make clear that the claimed subject matter
`
`comprised a distinct network interface device separate from the host. (Ex. 1002.028-
`
`34.) The applicant explained that Kapoor and Van Meter do not disclose a network
`
`interface device, but instead are directed to “managing remote procedure calls
`
`(RPCs) between client and server processes running on the same host computer in a
`
`network.” (Ex. 1002.036; see id. at 1002.036-53.)
`
`On July 12, 2006, the examiner allowed the amended claims over the prior art
`
`of record (which included the Thia and Satran I references, as noted above). (Ex.
`
`2001.010-11.) The examiner explained:
`
`
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`20
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`Case No. IPR2017-01405
`U.S. Patent No. 7,124,205
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`
`
`(Ex. 2001.010.)
`
` The ‘205 patent issued October 17, 2006. The patent has an 1137 day term
`
`extension and expires June 7, 2021.
`
`VI. OVERVIEW OF THE ASSERTED PRIOR ART
`
`As described above, Intel relies on Thia, Satran I, Satran II, and Carmichael.
`
`The following briefly summarizes these references.
`
`A. Thia, A Reduced Operation Protocol Engine (ROPE) for a multiple-
`layer bypass architecture (“Thia”)
`
`Thia is an academic article theorizing a potential processor architecture for
`
`“bypassing” protocol processing func