Case No. IPR2017-01406
`U.S. Patent No. 7,673,072
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________
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`INTEL CORP., CAVIUM, LLC, DELL INC., and
`WISTRON CORPORATION,
`Petitioner,
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`v.
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`ALACRITECH, INC.,
`Patent Owner
`
`________________
`
`Case IPR2017-01406
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`U.S. Patent No. 7,673,072
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`________________
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`PATENT OWNER ALACRITECH, INC.’S NOTICE OF APPEAL
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`
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`
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`U.S. Patent No. 7,673,072
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`INTEL CORP., CAVIUM, LLC, DELL INC., and
`WISTRON CORPORATION,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner
`
`________________
`
`Case IPR2017-01406
`
`U.S. Patent No. 7,673,072
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`________________
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`PATENT OWNER ALACRITECH, INC.’S NOTICE OF APPEAL
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`Case No. IPR2017-01406
`U.S. Patent No. 7,673,072
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, Room 10B20
`600 Dulany Street
`Alexandria, VA 22314-5793
`
`
`Pursuant to 35 U.S.C. §§ 141(c) and 142 and 37 C.F.R. §§ 90.2(a) and 90.3,
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`Patent Owner Alacritech, Inc. hereby appeals to the United States Court of Appeals
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`for the Federal Circuit from the Patent Trial and Appeal Board’s Final Written
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`Decision, entered on November 26, 2018 (Paper 83) (a copy of which is attached),
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`and from all underlying and related findings, orders, decisions, rulings, and opinions
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`that are adverse to Alacritech, Inc.
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`For the limited purpose of providing the Director with the information
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`requested in 37 C.F.R. § 90.2(a)(3)(ii), Alacritech, Inc. further indicates that the
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`issues on appeal may include, but are not limited to, (1) whether the Board erred in
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`determining the prior art rendered the challenged claims obvious, (2) whether the
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`Board erred in determining the prior art rendered Alacritech, Inc.’s proposed
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`substitute claims obvious, and (3) whether the Board erred in determining issues
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`regarding petitioners’ disclosure of real parties in interest.
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`Alacritech, Inc. further reserves the right to challenge any finding or
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`determination supporting or relating to the issues above, and to challenge other
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`issues decided adversely to Alacritech, Inc.
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`1
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`Case No. IPR2017-01406
`U.S. Patent No. 7,673,072
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`Pursuant to 37 C.F.R. § 90.2(a), Alacritech, Inc. is (1) filing a copy of this
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`Notice of Appeal with the Director, (2) electronically filing a copy of this Notice
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`with the Federal Circuit, along with the requisite filing fee, and (3) filing this Notice
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`with the Board.
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`DATED: January 16, 2019
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`Respectfully submitted,
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`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
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`By
`/s/ James M. Glass
`James M. Glass (Reg. No. 46,729)
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`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`jimglass@quinnemanuel.com
`
`Attorney for Patent Owner - Alacritech,
`Inc.
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`Case No. IPR2017-01406
`U.S. Patent No. 7,673,072
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 90.2(a)(1), on January 16, 2019 the foregoing Notice
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`of Appeal was filed electronically with the Board in accordance with 37 C.F.R. §
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`42.6(b)(1), and mailed to the Director via Priority Mail Express in accordance with
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`37 C.F.R. §§ 1.10 and 104.2 at the following address:
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`Director of the U.S. Patent and Trademark Office
`c/o Office of the General Counsel
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Pursuant to 37 C.F.R. § 90.2(a)(2); Fed. R. App. P. 15; and Fed. Cir. R. 15,
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`25, and 52, on January 16, 2019 the foregoing Notice of Appeal was electronically
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`filed with the Court of Appeals for the Federal Circuit via CM/ECF with requisite
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`fees paid via pay.gov. Pursuant to Fed. Cir. R. 15(a)(1), one copy of this Notice of
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`Appeal is being filed by hand with the Clerk’s Office of the Federal Circuit on
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`January 16, 2019.
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`Pursuant to 37 C.F.R. § 42.6(e) and the parties’ agreement to accept electronic
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`service, on January 16, 2019 the foregoing Notice of Appeal was served via e-mail
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`on the following attorneys for Petitioners:
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`garland.stephens@weil.com
`sutton.ansley@weil.com
`anne.cappella@weil.com
`justin.constant@weil.com
`melissa.hotze@weil.com
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`3
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`Case No. IPR2017-01406
`U.S. Patent No. 7,673,072
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`adrian.percer@weil.com
`christopher.douglas@alston.com
`kirk.bradley@alston.com
`benjamin.weed.ptab@klgates.com
`erik.halverson@klgates.com
`david.xue@rimonlaw.com
`karinehk@rimonlaw.com
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`DATED: January 16, 2019
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`
`
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`Respectfully submitted,
`
`By
`/s/ James M. Glass
`James M. Glass (Reg. No. 46,729)
`
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`jimglass@quinnemanuel.com
`
`Attorney for Patent Owner - Alacritech,
`Inc.
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`4
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`Trials@uspto.gov Paper No. 83
`Tel: 571-272-7822 Entered: November 26, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`INTEL CORP., CAVIUM, LLC, DELL INC., and
`WISTRON COPORATION,
`Petitioner,
`
`v.
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`ALACRITECH, INC.,
`Patent Owner.
`____________
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`Case IPR2017-014061
`Patent 7,673,072 B2
`____________
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`Before STEPHEN C. SIU, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
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`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`
`
`1 Cavium, Inc., which filed a petition in Case IPR2017-01707, was joined as
`a petitioner in this proceeding. Cavium, Inc. has now been converted to
`Cavium, LLC. Paper 78. Wistron Corporation, which filed a petition in
`Case IPR2018-00329, and Dell Inc., which filed a petition in Case
`IPR2018-00375, also have been joined as petitioners in this proceeding.
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`IPR2017-01406
`Patent 7,673,072 B2
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`I. INTRODUCTION
`
`Intel Corporation (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting inter partes review of claims 1–21 (“the challenged claims”) of
`U.S. Patent No. 7,673,072 B2 (“the ’072 patent,” Ex. 1001) under 35 U.S.C.
`§§ 311–319. Alacritech, Inc. (“Patent Owner”) filed a Preliminary
`Response. Paper 9 (“Prelim. Resp.”). Upon consideration of the Petition
`and Preliminary Response, we instituted an inter partes review of all
`challenged claims. Paper 10 (“Decision on Institution” or “Dec.”).
`Responsive to petitions and requests for joinder filed in IPR2017-01707,
`IPR2018-00329, and IPR2018-00375, we later joined Cavium, Inc. (now
`Cavium, LLC), Wistron Corp., and Dell, Inc., respectively, as petitioners in
`this proceeding. See Papers 15, 43, 51, 78. Intel Corporation, Cavium,
`LLC, Wistron Corp., and Dell, Inc. are identified herein collectively as
`“Petitioner.”
`Following institution, Patent Owner filed a Corrected Patent Owner’s
`Response (Paper 34, “Response” or “PO Resp.”), and Petitioner filed a
`Reply (Paper 46, “Pet. Reply”). Patent Owner also filed a Contingent
`Motion to Amend (Paper 25, “Mot. Amend.”), to which Petitioner filed a
`Response (Paper 40, “Resp. Mot. Amend.”). Patent Owner filed a Reply to
`Petitioner’s Response (Paper 47, “Reply Mot. Amend.”), and Petitioner filed
`a Sur-reply (Paper 54, “Sur-reply Mot. Amend.”).
`Petitioner filed a Motion to Exclude (Paper 59), to which Patent
`Owner filed an Opposition (Paper 63), and Petitioner filed a Reply to Patent
`Owner’s Opposition (Paper 66).
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`Patent Owner also filed a Motion to Exclude (Paper 60), to which
`Petitioner filed an Opposition (Paper 64), and Patent Owner filed a Reply to
`Patent Owner’s Opposition (Paper 67).
`Patent Owner filed a Motion to Seal (Paper 32).
`Oral argument for this proceeding was held on September 13, 2018,
`and a transcript has been entered into the record as Paper 79 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). We base our decision on
`the preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`Having reviewed the arguments of the parties and the supporting
`evidence, we conclude, for the reasons that follow, that Petitioner has shown
`by a preponderance of the evidence that the challenged claims are
`unpatentable. We also deny in part and dismiss in part Patent Owner’s
`Motion to Exclude, deny Petitioner’s Motion to Exclude, deny Patent
`Owner’s Contingent Motion to Amend; and grant Patent Owner’s Motion to
`Seal.
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`
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`A. Related Matters
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`II. BACKGROUND
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`The parties indicate that the ’072 patent is asserted in Alacritech,
`Inc. v. CenturyLink, Inc., 2:16-cv-00693-JRG-RSP (E.D. Tex.); Alacritech,
`Inc. v. Wistron Corp., 2:16-cv-00692-JRG-RSP (E.D. Tex.); and Alacritech,
`Inc. v. Dell Inc., 2:16-cv-00695-RWS-RSP (E.D. Tex.). Paper 75, 2; Paper
`76, 4.
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`B. The ’072 Patent
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`The ’072 patent, titled “Fast-path Apparatus for Transmitting Data
`Corresponding to a TCP Connection,” describes “a device for processing
`network communication that greatly increases the speed of that processing
`and the efficiency of transferring data being communicated.” Ex. 1001,
`[54], 5:24–27. The processing “includes employing representative control
`instructions for a given message that allow data from the message to be
`processed via a fast-path” that “bypasses conventional protocol processing
`of headers that accompany the data.” Id. at 5:38–44.
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`C. Illustrative Claim
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`Of the challenged claims, claims 1, 9, and 15 are independent.
`Independent claim 1, reproduced below, is illustrative of the claimed subject
`matter:
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`1. A method comprising:
`establishing, at a host computer, a transport layer
`connection, including creating a context that includes protocol
`header information for the connection;
`transferring the protocol header information to an interface
`device;
`transferring data from the network host to the interface
`device, after transferring the protocol header information to the
`interface device;
`dividing, by the interface device, the data into segments;
`creating headers for the segments, by the interface device,
`from a
`template header containing
`the protocol header
`information; and
`prepending the headers to the segments to form transmit
`packets.
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`Ex. 1001, 97:17–31.
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`D. Instituted Ground of Unpatentability
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`We instituted inter partes review of claims 1–21 as unpatentable
`under 35 U.S.C. § 103 over Erickson2 and Tanenbaum,3 which was the only
`proposed challenge stated in the Petition. Pet. 14; Dec. 20.
`
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`III. DISCUSSION
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`A. Claim Construction
`
`In an inter partes review instituted on a petition filed prior to
`November 13, 2018, we construe claim terms in an unexpired patent
`according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
`Consistent with the broadest reasonable construction, claim terms are
`presumed to have their ordinary and customary meaning as understood by a
`person of ordinary skill in the art in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`In our Decision on Institution, we determined that it was unnecessary
`to provide an express construction of any claim term for purposes of
`institution of inter partes review. Dec. 8. The parties do not challenge that
`determination in their post-institution briefing, and we are not persuaded that
`any express construction is required for purposes of this Decision. See Vivid
`
`
`2 U.S. Patent No. 5,768,618, issued June 16, 1998 (“Erickson,” Ex. 1005).
`3 Andrew S. Tanenbaum, Computer Networks (3d ed. 1996) (“Tanenbaum,”
`Ex. 1006).
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`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`(explaining that only those terms that are in controversy need to be
`construed, and only to the extent necessary to resolve the controversy).
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`B. Analysis of the Asserted Ground of Unpatentability
`
`1. General Principles
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are “such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) when presented, objective evidence of
`nonobviousness, i.e., secondary considerations. Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966).
`2. Level of Skill in the Art
`Petitioner contends that a person having ordinary skill in the art
`(“POSA”) with respect to the technology described in the ’072 patent as of
`the October 14, 1997, filing date of the earliest provisional application from
`which the ’072 patent claims priority would be “a person with at least the
`equivalent of a B.S. degree in computer science, computer engineering or
`electrical engineering with at least five years of industry experience
`including experience in computer architecture, network design, network
`protocols, software development, and hardware development.” Pet. 27.
`Patent Owner proposes a slightly different assessment (i.e., “a person with a
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`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”), but argues that “[a]ny differences
`between this and Petitioners’ proposed level of ordinary skill would have no
`bearing on the analysis presented.” PO Resp. 23. To the extent necessary
`for purposes of this Decision, we have adopted Patent Owner’s assessment.
`3. Scope and Content of the Prior Art
`a. Overview of Erickson
`Erickson is directed to a “method of controlling an input/output (I/O)
`device connected to a computer to facilitate fast I/O data transfers.”
`Ex. 1005, Abstract. Figure 3 of Erickson is reproduced below:
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`
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`Figure 3 depicts data flow in accordance with Erickson’s invention. As
`shown in Figure 3, slow application 306 uses normal stream processing 308
`and pass-through driver 310 to send information to I/O device adapter 314
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`and then to commodity interface 322. Id. at 4:53–61. Alternatively, fast
`applications 302 and 304 send information directly to I/O adapter 314 via
`setup driver 312 or “virtual hardware” 316 and 318, avoiding the overhead
`of the streams processing and pass-through driver. Id. at 4:61–5:3.
`b. Overview of Tanenbaum
`Tanenbaum is a book that describes general principles, as well as
`detailed aspects, of data transmission in computer networks, including
`TCP/IP and UDP/IP protocols. See generally Ex. 1006.
`4. Discussion – Differences Between the Claimed Subject Matter
`and the Prior Art
`Having reviewed the Petition, Response, and Reply, as well as the
`presented evidence, we determine, for the reasons that follow, that Petitioner
`has established by a preponderance of the evidence that the challenged
`claims are unpatentable on the asserted ground.
`a. Independent Claim 1
`Petitioner contends claims 1–21 are unpatentable under 35 U.S.C.
`§ 103(a) as obvious over the combination of Erickson and Tanenbaum.
`Pet. 38–76. As set forth in more detail below, Petitioner relies on Erickson
`as teaching or suggesting all limitations recited in independent claim 1, with
`the exception of “dividing . . . data into segments” and creating headers “for
`the segments,” which limitations Petitioner contends are disclosed by
`Erickson in view of Tanenbaum. Id. at 38–50. Petitioner relies on the
`testimony of Dr. Robert Horst to support its contentions regarding how the
`cited references describe the claim limitations. Id. (citing Ex. 1003).
`In its Response, Patent Owner raises two principal arguments with
`respect to Petitioner’s contentions: first, that the combination of Erickson
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`and Tanenbaum does not show or suggest “dividing, by the interface device,
`the data into segments”; and second, that there is no motivation to combine
`Erickson and Tanenbaum. PO Resp. 24–33, 35–56 (emphases omitted).
`Patent Owner relies on the testimony of Dr. Kevin Almeroth in support of its
`arguments. Id. (citing Ex. 2026).
`We address the parties’ contentions with respect to each limitation of
`claim 1 in turn below.
`“A method comprising: establishing, at a host computer, a
`transport layer connection, including creating a context that
`includes protocol header information for the connection”
`Petitioner persuasively contends Erickson discloses an I/O device
`adapter 314 is connected to a host computer and that a user process running
`on the host computer establishes a “transport layer connection.” Pet. 38
`(citing Ex. 1005, 1:65–67, 6:1–9; Ex. 1003, Appendix A § 1.1). Petitioner
`further contends the user process creates a “context” by “opening a device
`driver and specifying the protocol type (e.g., UDP or TCP).” Id. at 39–40
`(citing Ex. 1005, 6:1–9, 8:2–9). According to Petitioner, the created context
`“includes protocol header information,” as the claim requires, because it is
`described as “including ‘almost everything’ concerning a UDP datagram
`‘except the actual user data.’” Id. at 40 (citing Ex. 1005, 6:57–7:4).
`Furthermore, Petitioner contends, the context is “for the connection,”
`because it discloses TCP scripts which are inherently connection oriented.
`Id. at 41 (citing Ex. 1003, Appendix A § 1.1). We agree.
`Patent Owner does not raise any counterarguments or point to any
`contrary evidence with respect to this limitation, and we are persuaded by
`Petitioner’s arguments and cited evidence that the limitation is taught by
`Erickson.
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`“transferring the protocol header information to an interface
`device”
`Petitioner persuasively contends Erickson I/O device adapter 314 is
`the claimed “interface device.” Pet. 41. Petitioner also contends that
`Erickson’s datagram template 702 in the I/O device adapter’s memory,
`comprises protocol header information that was transferred to the I/O device
`adapter from the host computer. Id. at 41–42 (citing Ex. 1005, 7:39–41,
`5:37–51, 8:2–4).
`Patent Owner does not raise any counterarguments or point to any
`contrary evidence with respect to this limitation, and we are persuaded by
`Petitioner’s arguments and cited evidence that the limitation is taught by
`Erickson.
`“transferring data from the network host to the interface
`device, after transferring the protocol header information to the
`interface device”
`Petitioner persuasively contends that in Erickson, data is transferred
`from the host to the interface device, after transferring the protocol header
`information to the interface device, because template 702 resides in the
`adapter’s memory before the script is executed to store data in the I/O device
`adapter’s memory. Id. at 42–43 (quoting Ex. 1005, 7:39–48 (“FIG. 7 is a
`block diagram illustrating a UDP datagram template 702 (without a user data
`area) residing in the I/O device adapter’s memory. . . . The I/O device
`adapter stores the user data provided by the user process in the I/O device
`adapter’s memory, and then transmits the completed UDP datagram 702
`over the media.”).
`Patent Owner does not raise any counterarguments or point to any
`contrary evidence with respect to this limitation, and we are persuaded by
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`Petitioner’s arguments and cited evidence that the limitation is taught by
`Erickson.
`“dividing, by the interface device, the data into segments”
`Petitioner contends Erickson in combination with Tanenbaum
`discloses this limitation. Pet. 43. We are persuaded, for the reasons stated
`below, by Petitioner’s contentions. As Petitioner persuasively contends,
`although Erickson’s exemplary context is UDP, it also discloses the use of
`TCP, refers readers to the 1981 edition of Tanenbaum, and discloses use of
`TCP/IP scripts. Pet. 34–35 (citing Ex. 1005, 4:38–43); id. at 44 (citing
`Ex. 1005, 5:47–51). Petitioner provides persuasive evidence that a person of
`ordinary skill in the art would have been motivated to implement “fast path”
`TCP/IP on Erickson’s I/O device adapter in view of the 1996 version of
`Tanenbaum (i.e., Ex. 1006) with a high expectation of success to take
`advantage of TCP/IP’s popularity for Internet and World Wide Web
`processing. Id. at 35–38 (citing Ex. 1003 ¶¶ 137–148).
`Petitioner further contends that Tanenbaum discloses that TCP/IP data
`is exchanged in segments. Pet. 43 (citing Ex. 1006, 525 (“The sending and
`receiving TCP entities exchange data in the form of segments.”), 522 (“A
`TCP entity accepts user data streams from local processes, breaks them up
`into pieces . . . and sends each piece as a separate IP datagram.”)).4 We
`agree. Petitioner also persuasively contends that the “transport entity, which
`does the dividing, can be on a network interface card (network interface
`device).” Id. at 43–44 (citing Ex. 1006, 480). According to Petitioner,
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`4 We refer to the original page numbering in Tanenbaum, not the exhibit
`page numbers added by Petitioner.
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`A POSA would know how to modify Erickson’s UDP
`script (udpscript at Ex.1005, Erickson at 7:51-64) so that, rather
`than filling in the UDP Length and Checksum shown in
`Erickson, the modified script would fill in the TCP Sequence
`number, Length and Checksum. This script involves minimal
`changes from the UDP script. Ex.1003, Horst Decl. Appendix A
`limitation 1.4. The “dividing, by the interface device, the data
`into segments” limitation is met by the foregoing obvious TCP
`script for Erickson. Erickson’s senduserdatagram (Ex.1005,
`Erickson at 7:23-32) user process triggers the I/O device adapter
`to send each segment, by “spanking” the GO register. The
`adapter calculates the TCP checksum, transmits the packet,
`updates the shared state in Hardware Register 504, and waits for
`GO to be set again for the next segment. Repeated invocations
`of the TCP script (by repeatedly spanking the GO register) with
`pointers to data for consecutive segments result in the interface
`device dividing the user data stream into TCP segments.
`Pet. 44–45. Petitioner contends other TCP scripts would also have been
`obvious modifications to Erickson. Id. at 45–46 (citing Ex. 1003,
`Appendix A § 1.4).
`Patent Owner advances various arguments as to why the proposed
`combination does not teach “dividing, by the interface device, the data into
`segments” or teaches away from such a combination.
`First, Patent Owner contends “Tanenbaum and Erickson both perform
`data division (or segmentation) on the host, and neither one suggests
`segmentation being performed on the NIC.” PO Resp. 24. According to
`Patent Owner, “Erickson’s I/O device adapter receives and operates on
`single UDP datagrams and has no need to further divide the datagrams into
`segments.” Id. at 25. Additionally, Patent Owner contends, “Erickson’s
`pseudocode procedures that prepare a UDP datagram for transmission
`require the memory address and length of the user data to be provided as two
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`parameters.” Id. (citing Ex. 1005 at 7:21–8:2; Ex. 2028 at 120:7–123:7).
`“As such,” Patent Owner asserts, “it is clear that the both the
`senduserdatagram() and udpscript() procedures in Erickson operate on a
`single UDP datagram only,” and “[t]here is no built-in functionality within
`Erickson’s I/O device adaptor for dividing a large block of user data into
`multiple segments.” Id. (citing Ex. 2026 ¶ 91).
`Further, Patent Owner contends, whereas Petitioner alleges that the
`combination of Tanenbaum and Erickson discloses this limitation because
`Tanenbaum describes a TCP entity that can accept user data streams and
`break them up into pieces, the traditional TCP functionality described by
`Tanenbaum occurs completely on the host and not on the network interface
`device.” Id. at 25–26 (citing Pet. 43–44; Ex. 2026 ¶ 92). While recognizing
`that Tanenbaum discloses that the transport entity “can be . . . on the
`network interface card,” Patent Owner contends that statement “refers to
`transport entities as a generic class, and is not specific to any particular
`protocol” and “does not necessarily apply to the TCP entity that Petitioner
`relies on for Tanenbaum’s disclosure of dividing data into segments.” Id.
`at 26 (citing Ex. 1006, 480, 522). To the contrary, Patent Owner contends,
`“when discussing the TCP entity, Tanenbaum expressly states that it is
`‘either a user process or part of the kernel that manages TCP streams and
`interfaces to the IP layer’—both of which refer to processes on the host, not
`a separate network interface.” Id. (citing Ex. 1006, 522). According to
`Patent Owner, “[t]his makes sense in view of Tanenbaum’s later discussion
`of Fast TPDU processing, in which Tanenbaum explains that offloading
`transport protocol processing for complex protocols such as TCP/IP is
`difficult and does not make sense.” Id. at 26–27 (citing Ex. 1005, 570–71;
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`Ex. 2026 ¶ 94). Thus, at best, Patent Owner concludes, the combination of
`Erickson and Tanenbaum “shows traditional segmentation by the host
`protocol stack and then the prepending of a single header to a single UDP
`datagram,” as “there is not mechanism for dividing data segments in
`Erickson’s I/O device, nor is one disclosed in Tanenbaum that would
`function on a network interface.” Id. at 28 (emphases omitted) (citing
`Ex. 2026 ¶ 96).
`Second, Patent Owner contends Petitioner’s argument Erickson could
`have been modified to implement certain scripts that would perform the
`claimed dividing operation “relies entirely on the conclusory opinions of
`Petitioner’s expert,” as “[i]t is undisputed that neither Erickson nor
`Tanenbaum disclose the scripts that Dr. Horst alleges would have been
`obvious to those of ordinary skill.” Id. at 29 (citing Pet. 44–46). According
`to Patent Owner, Petitioner “cannot rely on the purported knowledge of one
`of ordinary skill to fill-in the gaps and allege that entire limitations not
`disclosed the prior art would have been obvious to add.” Id. at 30. Patent
`Owner contends such argument “should be procedurally barred under
`35 U.S.C. § 311(b), which limits inter partes review to ‘ground[s] that could
`be raised under 102 or 103 and only on the basis of prior art consisting of
`patents or printed publications.” Id. at 30–31. And “even assuming
`arguendo that Dr. Horst’s scripts are not strictly a product of hindsight
`reconstruction,” Patent Owner contends, “a POSA would nevertheless have
`had no motivation to implement them with Erickson’s adapter,” because the
`scripts “would have defeated the stated purpose of Erickson” and “Dr. Horst
`admitted in his deposition that his scripts would require multiple DMA
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`transfers requiring repeated access to the I/O bus.” Id. at 32 (citing
`Ex. 1001, 41:37–40; Ex. 2029, 99:14–100:2).
`Third, Patent Owner contends that, not only does the combination of
`Erickson and Tanenbaum not disclose an interface device being able to
`divide data into segments, it teaches away from an interface having such a
`separate processor. PO Resp. 35–55. While acknowledging Petitioner’s
`arguments regarding similarities between UDP and TCP, as well as
`Tanenbaum’s disclosure of a fast-path procedure for TCP, Erickson’s
`reference to the 1981 version of Tanenbaum, and the growing popularity of
`TCP/IP in the mid-1990s, Patent Owner contends that a person of ordinary
`skill in the art “would never have combined these references for a plurality
`of reasons, none of which are addressed in the Petition.” Id. at 35.
`According to Patent Owner, Tanenbaum “expressly teaches away
`from the use of a separate device, such as Erickson’s I/O adapter, for TCP/IP
`protocol processing.” Id. at 35–36. Indeed, Patent Owner contends,
`Tanenbaum “goes so far as to characterize the notion that processing should
`be offloaded as a “‘myth’” and “goes even further, expressly teaching that
`faster processing can be achieved by making the protocol simply, and
`having the main CPU do the work”:
`Furthermore, when two general-purpose CPUs communicate,
`race conditions can occur, so elaborate protocols are needed
`between the two processors to synchronize them correctly[.]
`Usually, the best approach is to make the protocols simple and
`have the main CPU do the work.
`PO Resp. 36–37 (quoting Ex. 1006, 570–71). Patent Owner contends,
`“Tanenbaum cites to the ‘race conditions’ created by offloading ‘elaborate
`protocols,’ but offers no solution to this problem, a fact Petitioner’s own
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`expert agrees with.” Id. at 37 (citing Ex. 2029, 24:24–25:8, 25:12–14,
`26:18–19). “Nor would one of ordinary skill in the art understand how to
`offload based on Tanenbaum’s disclosure,” according to Patent Owner, and
`“Tanenbaum explicitly discloses that TCP transport entities are implemented
`in ‘a user process or part of the kernel that manages TCP streams and
`interfaces to the IP Layer’—both of which are host processes, i.e., both
`occur on the host cpu, not a network interface.” Id. at 38 (citing Ex. 2026
`¶ 110; Ex. 1006, 522). Moreover, Patent Owner contends, “Petitioner
`provides no explanation as to how, or indeed, why a POSA would have
`modified Tanenbaum in such a way.” Id.
`Further, according to Patent Owner, a person of ordinary skill in the
`art “would never have combined Tanenbaum with Erickson because the
`references are completely different, and technically incompatible,” insofar as
`“Erickson is directed to a UDP implementation, in contrast to Tanenbaum’s
`TCP/IP implementation.” Id. at 39. Patent Owner contends the “differences
`between UDP and TCP would require a POSA ‘to fundamentally redesign
`Erickson to include functionality not discussed in either reference.’” Id.
`at 40 (quoting Ex. 2026 ¶ 111). Further, Patent Owner contends, a POSA
`would not even know how to modify Erickson’s I/O device adapter to
`support TCP. Id. at 42 (citing Ex. 2026 ¶ 113).
`Still further, Patent Owner contends, Tanenbaum does not include an
`express motivation to combine the cited references. Id. at 42. Specifically,
`Patent Owner asserts, Erickson cites the 1981 edition of Tanenbaum for a
`reason unrelated to protocol offload, and “a POSA would not have incentive
`to pick specific, unrelated parts of Tanenbaum and combine it with Erickson,
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`particularly in view of Tanenbaum’s teaching away from offloading for
`TCP/IP.” Id. at 43 (citing Ex. 2026 ¶ 114).
`Patent Owner additionally contends that a person of ordinary skill in
`the art would not have had a reasonable expectation of success in combining
`Tanenbaum with Erickson (id. at 43–44); that Petitioner “mischaracterize[s]
`the purported similarities between Erickson and Tanenbaum” (id. at 45); that
`the complexities of the technology weigh against combining Erickson and
`Tanenbaum (id. at 46–49); that marketplace demands discouraged offloading
`TCP/IP protocol processing (id. at 49–51); and that combining Erickson with
`Tanenbaum would have the increased complexity of Erickson’s I/O adapter,
`including by increasing I/O bus access and requiring additional logic (id.
`at 51–55).
`In its Reply, Petitioner responds that Erickson explicitly states its
`invention can be used with TCP/IP and describes Tanenbaum as a source of
`information about TCP/IP, and that both TCP and UDP were designed to be
`alternative transport protocols for the Internet Protocol.” Pet. Reply 1–2.
`According to Petitioner, TCP and UDP were the “two main protocols”
`designed to operate over IP; were known alternatives; both were cited by
`Erickson; and Tanenbaum discussed both protocols at length. Id. at 1–3
`(citing Ex. 1005, 8:4–6 (“There are different scripts for different types of
`datagrams 702 (e.g., UDP or TCP).”); Ex. 1006, 521; Ex. 1003 ¶ 109;
`Ex. 1223 ¶¶ 24–25, 30). Petitioner contends that Patent Owner’s arguments
`that differences between UDP and TCP would require a “fundament
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