`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`INTEL CORP., CAVIUM, INC.,
`WISTRON CORPORATION, and DELL INC.
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`______________________
`
`Case IPR2017-014061
`U.S. Patent No. 7,673,072
`Title: FAST-PATH APPARATUS FOR TRANSMITTING DATA
`CORRESPONDING A TCP CONNECTION
`______________________
`
`SUR-REPLY IN OPPOSITION TO PATENT OWNER’S MOTION TO
`AMEND FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,673,072
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`1 Cavium, Inc., which filed a Petition in IPR2017-01707, Wistron Corporation,
`
`which filed a Petition in IPR2018-00329, and Dell Inc., which filed a Petition in
`
`IPR2018-00375, have been joined as petitioners in this proceeding.
`
`
`
`TABLE OF CONTENTS
`
`Case IPR2017-01406
`U.S. Patent No 7,673,072
`
`Page
`
`I.
`
`II.
`
`III.
`
`INTRODUCTION ........................................................................................... 1
`
`PATENT OWNER HAS IMPROPERLY EXPANDED THE SCOPE
`OF CLAIMS 22-29 .......................................................................................... 2
`
`PATENT OWNER HAS FAILED TO MEET ITS BURDEN TO
`SHOW WRITTEN DESCRIPTION SUPPORT ............................................. 4
`
`IV. SUBSTITUTE CLAIMS 22-29 AND 36-42 ARE INDEFINITE .................. 8
`
`V.
`
`THE SUBSTITUTE CLAIMS ARE OBVIOUS OVER ERICKSON
`IN VIEW OF TANENBAUM ......................................................................... 9
`
`A. A POSA Would Have Been Motivated to Combine Erickson
`with Tanenbaum96 .............................................................................. 10
`
`B.
`
`Patent Owner Has Failed to Rebut Petitioner’s Showing that the
`Limitations of the Substitute Claims Are Met .................................... 11
`
`VI. CONCLUSION .............................................................................................. 12
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Case IPR2017-01406
`U.S. Patent No 7,673,072
`
`Page(s)
`
`Cases
`Aqua Prods., Inc. v. Matal,
`872 F.3d 1290 (Fed. Cir. 2017) .............................................................................. 5
`
`B.E. Tech., L.L.C. v. Google, Inc.,
`Case No. 2015-1827, 2016 WL 6803057 (Fed. Cir. Nov. 17, 2016) ................5, 6
`
`Facebook, Inc. v. Everymd LLC,
`IPR2014-00242, Paper 31 (May 12, 2015) ............................................................ 6
`
`Honeywell Int’l Inc. v. Hamilton Sundstrand Corp.,
`370 F.3d 1131 (Fed. Cir. 2004) .............................................................................. 9
`
`In re Merck & Co.,
`800 F.2d 1091 (Fed. Cir. 1986) ............................................................................11
`
`Respironics, Inc. v. Zoll Med. Corp.,
`IPR2013-00322, Paper 46 (Sept. 17, 2014) .......................................................5, 6
`
`Semiconductor Components Indus., LLC v. Power Integrations, Inc.,
`IPR2016-01600, Paper 35 (Feb. 14, 2018) ............................................................ 5
`
`Toshiba v. Optical Devices, LLC,
`IPR2014-01441, Paper 36 (Mar. 8, 2016).............................................................. 4
`
`Statutes and Regulations
`35 U.S.C. § 103 .......................................................................................................... 1
`
`35 U.S.C. § 316(d) .................................................................................................4, 5
`
`37 C.F.R. § 42.121 .................................................................................................5, 6
`
`37 C.F.R. § 42.121(b) ................................................................................................ 5
`
`37 C.F.R. § 42.221 ..................................................................................................... 5
`
`
`
`
`i
`
`
`
`Case IPR2017-01406
`U.S. Patent No 7,673,072
`
`EXHIBIT LIST
`
`Exhibit #
`Ex.1001
`
`Ex.1002
`
`Ex.1003
`
`Description
`U.S. Patent No. 7,237,036 (“036 Patent”)
`Excerpts from Prosecution File History of U.S. Patent No.
`7,237,036 (“036 File History”)
`Declaration of Robert Horst
`
`Ex.1004
`
`Curriculum Vitae of Robert Horst
`
`Ex.1005
`
`Ex.1006
`
`Ex.1007
`
`Ex.1008
`
`Ex.1009
`
`Ex.1010
`
`Ex.1011
`
`Ex.1012
`
`Ex.1013
`
`Ex.1014
`
`U.S. Patent No. 5,768,618 (“Erickson”)
`Tanenbaum, Andrew S., Computer Networks, Prentice-Hall, Inc.,
`New Jersey (1996) (“Tanenbaum96”)
`Transmission Control Protocol, “Darpa Internet Protocol
`Specification,” RFC: 793, Sept. 1981 (“RFC 793”)
`Stevens, W. Richard, TCP/IP Illustrated Volume 1: The Protocols,
`Addison-Wesley (1994) (“Stevens1”)
`Lilinkamp, J., Mandell. R. and Padlipsky, M., “Proposed Host-
`Front End Protocol,” Network Working Group Request for
`Comments: 929, Dec. 1984 (“RFC 929”)
`Alacritech’s Preliminary Claim Construction and Extrinsic
`Evidence Disclosures, January 31, 2017
`Declaration of Rice Mayors regarding Tanenbaum, Andrew S.,
`Computer Network
`U.S. Patent No. 4,831,523
`Stevens, W. Richard and Wright, Gary R., TCP/IP Illustrated
`Volume 2: The Implementation, Addison-Wesley (1995)
`(“Stevens2”)
`Touch, J., “TCP Control Block Interdependence,” Network
`Working Group Request for Comments: 2140, April 1997 (“RFC
`2140”)
`
`ii
`
`
`
`Case IPR2017-01406
`U.S. Patent No 7,673,072
`
`Exhibit #
`
`Ex.1015
`
`Ex.1016
`
`Ex.1017
`
`Ex.1018
`
`Ex.1019
`
`Description
`Thia, Y.H., Woodside, C.M., “A Reduced Operation Protocol
`Engine (ROPE) for a Multiple-Layer Bypass Architecture,”
`Protocols for High Speed Networks (Dordrecht), 1995 (“Thia”)
`Biersack, E. W., Rütsche E., “Demultiplexing on the ATM
`Adapter: Experiments with Internet Protocols in User Space,”
`Journal on High Speed Networks, Vol. 5, No. 2, May 1996
`(“Biersack”)
`Rütsche, E., Kaiserswerth, M., “TCP/IP on the Parallel Protocol
`Engine,” Proceedings, IFIP Conference on High Performance
`Networking, Liege (Belgium), Dec. 1992 (“Rütsche92”)
`Rütsche, E., “The Architecture of a Gb/s Multimedia Protocol
`Adapter,” Computer Communication Review, 1993 (“Rütsche93”)
`Padlipsky, M. A., “A Proposed Protocol for Connecting Host
`Computers to Arpa-Like Networks Via Directly-Connected Front
`End Processors,”,Network Working Group RFC #647, Nov. 1974
`(“RFC 647”)
`
`Ex.1020
`
`U.S. Patent No. 5,619,650 (“Bach”)
`
`Ex.1021
`
`U.S. Patent No. 5,915,124 (“Morris”)
`
`Ex.1022
`
`Ex.1023
`
`Ex.1024
`
`Cooper, E.C., et al., “Protocol Implementation on the Nectar
`Communication Processor,” School of Computer Science,
`Carnegie Mellon University, Sept. 1990 (“Cooper”)
`Kung, H.T., et al., “A Host Interface Architecture for High-Speed
`Networks,” School of Computer Science, Carnegie Mellon
`University and Network Systems Corporation (“Kung”)
`Exhibit D to Declaration of Dr. Gregory L. Chesson in Support of
`Microsoft’s Opposition to Alacritech’s Motion for Preliminary
`Injunction: “Protocol Engine Handbook,” Protocol Engines
`Incorporated, Oct. 1990 (“Chesson”)
`
`iii
`
`
`
`Case IPR2017-01406
`U.S. Patent No 7,673,072
`
`Exhibit #
`
`Ex.1025
`
`Ex.1026
`
`Ex.1027
`
`Ex.1028
`
`Ex.1029
`
`Ex.1030
`
`Ex.1031
`
`Ex.1032
`
`Ex.1033
`
`Ex.1034
`
`Ex.1035
`
`Description
`Kanakia, H., Cheriton, D.R., “The VMP Network Adapter Board
`(NAB): High-Performance Network Communication for
`Multiprocessors,” Communications Architectures & Protocols,
`Stanford University, Aug. 1988 (“Kanakia”)
`Kung, H.T., Cooper, E.C., et al., “Network-Based Multicomputers:
`An Emerging Parallel Architectures,” School of Computer
`Science, Carnegie Mellon University (“Kung and Cooper”)
`Dalton, C., et al., “Afterburner: Architectural Support for High-
`Performance Protocols,” Networks & Communications
`Laboratories, HP Laboratories Bristol, July 1993 (“Dalton”)
`Murphy, E., Hayes, S., Enders, M., TCP/IP Tutorial and Technical
`Overview Fifth Edition, Prentice-Hall, Inc. New Jersey, (1995)
`(“Murphy”)
`MacLean, A.R., Barvick, S. E., “An Outboard Processor for High
`Performance Implementation of Transport Layer Protocols,” IEEE
`Globecom ’91, Phoenix, AZ, Dec. 1991 (“MacLean”)
`Clark, D.D., et al., “An Analysis of TCP Processing Overhead,”
`IEEE Communications Magazine, June 1989 (“Clark”)
`U.S. Provisional Application 60/061,809 (“Alacritech 1997
`Provisional Application”)
`Culler, E.C., et al., “Parallel Computing on the Berkeley NOW,”
`Computer Science Division, University of California, Berkeley
`(“Culler”)
`“Gigabit Ethernet Technical Brief: Achieving End-to-End
`Performance,” Alteon Networks, Inc. First Edition, Sept. 1996
`(“Alteon”)
`Smith, J.A., Primmer, M., “Tachyon: A Gigabit Fibre Channel
`Protocol Chip,” Hewlett-Packard Journal, Article 12, Oct. 1996
`(“Smith”)
`Patterson, D.A., Hennessy, J.L., Computer Architecture: A
`Quantitative Approach, Morgan Kaufmann Publishers, Inc., San
`Mateo, CA (1990) (“Patterson”)
`iv
`
`
`
`Case IPR2017-01406
`U.S. Patent No 7,673,072
`
`Exhibit #
`
`Ex.1036
`
`Description
`Internet Protocol, “Darpa Internet Protocol Specification,” RFC:
`791, Sept. 1981 (“RFC 791”)
`
`Ex.1037
`
`Computer Dictionary, Microsoft Press Second Edition (1994).
`
`Ex.1038
`
`Ex.1039
`
`Woodside, C. M., Ravindran, K. and Franks, R. G. “The protocol
`bypass concept for high speed OSI data transfer,” IFIP Workshop
`on Protocols for High Speed Networks, 1990 (“Woodside”)
`Joint Claim Construction and Pre-Hearing Statement Pursuant to
`Rule 4-3 (Alacritech, Inc. v. Dell Inc, Intel Corporation, et al.)
`(“JCCS”)
`
`Exs. 1040-1109 Not Used
`
`Ex. 1110
`
`Ex. 1111
`
`Declaration of Garland Stephens in Support of Petitioner’s
`Opposition to Patent Owner’s Motion for
`Additional Discovery Regarding Real Parties-In-Interest (Jan. 10,
`2018)
`Declaration of S. Christopher Kyriacou in Support of Petitioner’s
`Opposition to Patent Owner’s Motion for
`Additional Discovery Regarding Real Parties-In-Interest (Jan. 10,
`2018)
`
`Ex. 1112
`
`Alacritech’s Answer from Alacritech v. CenturyLink, et al.
`16cv693
`
`Exs. 1113-1204 Not Used
`Ex. 1205
`Request for Comments (“RFC”) 2026
`Website:
` https://www.rfc-editor.org/search/rfc_search_
`detail.php?rfc=929&pubstatus%5B%5D=Any&pub_date_type=an
`y
`
`Ex. 1206
`
`v
`
`
`
`Exhibit #
`
`Description
`
`Case IPR2017-01406
`U.S. Patent No 7,673,072
`
`Ex. 1207
`
`Ex. 1210
`
`Ex. 1211
`
`Ex. 1212
`
`Website:
`https://www.rfc-editor.org/search/rfc_search_
`detail.php?rfc=793&pubstatus%5B%5D=Any&pub_date_type=an
`y
`Exs. 1208-1209 Not Used
`Declaration of Robert Horst, Ph.D. In Support of Petitioner’s
`Response in Opposition to Patent Owner’s Contingent Motion to
`Amend (April 4, 2018)
`Declaration of Carol Wadke
`Dissertation: Packet Train Model: Optimizing Network Data
`Transfer Performance
`Not Used
`Ex. 1213
`US Patent 5,056,058
`Ex. 1214
`Exs. 1215-1222 Not Used
`Declaration of Robert Horst, Ph.D. In Support of Petitioner’s
`Reply to Patent Owner’s Response to Petition for Inter Partes
`Review of U.S. Patent No. 7,237,036
`Deposition of Kevin C. Almeroth, Ph.D., Volume 1 (May 03,
`2018)
`Deposition of Kevin C. Almeroth, Ph.D., Volume 2 (May 04 2018)
`Number Not Used
`New ASIC drives Alacritech into storage by R. Merritt, EE Times
`(January 11, 2011)
`Internet page from Alacritech.com downloaded on May 6, 2018
`Ex. 1228
`Number Not Used
`Ex. 1229
`Ex. 1230 Why Are We Deprecating Network Performance Features? By B.
`Wilson downloaded on May 2, 2018
`
`Ex. 1223
`
`Ex. 1224
`
`Ex. 1225
`Ex. 1226
`
`Ex. 1227
`
`vi
`
`
`
`Case IPR2017-01406
`U.S. Patent No 7,673,072
`
`Exhibit #
`
`Ex. 1231
`
`Ex. 1232
`
`Ex. 1233
`
`Ex. 1234
`
`Description
`Alacritech, Inc.’s Answer and Counterclaims to Intel Corporation’s
`Complaint in Intervention from Alacritech v. CenturyLink, et al.,
`16cv693, Eastern District of Texas (D.I. 94) (December 13, 2016)
`Alacritech’s First Amended and Supplemental Patent Initial
`Disclosures from Alacritech v. CenturyLink, et al., 16cv693,
`Eastern District of Texas (February 24, 2017)
`Alacritech, Inc.’s Answer and Counterclaims to Cavium Inc.’s
`Complaint in Intervention from Alacritech v. CenturyLink, et al.,
`16cv693, Eastern District of Texas (D.I. 137) (February 24, 2017)
`Course Information for Fall 1997 “Introduction to Computer
`Communication Networks”
`Patent Local Rules for the Eastern District of Texas
`Updated Curriculum Vitae of Robert Horst
`Number Not Used
`Number Not Used
`Number Not Used
`IETF SNMP Working Group Internet Draft SNMP
`Communications Services by Frank J. Kastenholz (April 1991)
`On Systems Integration: Tuning the Performance of a Commercial
`TCP Implementation by D. Leon Guerrero and Ophir Frieder
`(1992)
`John S. Quarterman, Abraham Silberschatz, and James L. Peterson.
`1985. 4.2BSD and 4.3BSD as examples of the UNIX system.
`ACM Comput. Surv. 17, 4 (December 1985), 379-418
`Exs. 1243-1248 Number Not Used
`Excerpt from Report of Alacritech’s Expert Dr. Kevin C. Almeroth
`Concerning Intel’s Infringement from Alacritech v. CenturyLink, et
`al., 16cv693, Eastern District of Texas (October 23, 2017)
`
`Ex. 1235
`Ex. 1236
`Ex. 1237
`Ex. 1238
`Ex. 1239
`
`Ex. 1240
`
`Ex. 1241
`
`Ex. 1242
`
`Ex. 1249
`
`vii
`
`
`
`Case IPR2017-01406
`U.S. Patent No 7,673,072
`
`Exhibit #
`
`Ex. 1250
`
`Ex. 1251
`
`Description
`Declaration of Dr. Kevin C. Almeroth in Support of Alacritech’s
`Motion for Preliminary Injunction of Microsoft’s Infringement of
`Claim 1 of U.S. Patent 6,697,868 from Alacritech, Inc. v.
`Microsoft Corporation, Northern District of California, 04cv03284
`(D.I. 27) (November 19, 2004)
`Declaration of Dr. Kevin C. Almeroth in Support of Alacritech’s
`Reply to Microsoft’s Opposition to of Alacritech’s Motion for
`Preliminary Injunction from Alacritech, Inc. v. Microsoft
`Corporation, Northern District of California, 04cv03284 (D.I. 73)
`(February 11, 2005)
`
`Ex. 1254
`
`May 28, 2018 Deposition of Kevin Almeroth
`
`
`
`viii
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Patent Owner’s Reply in Support of its Motion to Amend (“Reply,” Paper
`
`No. 47) merely confirms it has not met its burden of production for the substitute
`
`claims. First, Patent Owner simply ignores the plain claim language in arguing
`
`that 8 claims (claims 22-29) have not been broadened. But the plain claim
`
`language speaks for itself—and the substitute claims encompass methods not
`
`covered by the original claims. Second, Patent Owner tries to address its complete
`
`failure to provide written description support in its Motion to Amend by adding
`
`support in its Reply. But this is too little, too late. Patent Owner was obligated to
`
`identify written description support in its original Motion—and it failed to do so.
`
`Furthermore, even if Patent Owner had met its burden, the substitute claims
`
`are invalid. First, Patent Owner’s conclusory, unsupported statements do not show
`
`that 15 claims (claims 22-29 and claims 36-42) are definite. Second, nothing in the
`
`Reply rebuts Petitioner’s showing that the challenged claims are obvious under 35
`
`U.S.C. § 103. Erickson explicitly states its invention can be used with TCP/IP, it
`
`describes Tanenbaum as a source of information about TCP/IP, and TCP/IP was
`
`designed to be an alternative transport protocol for the Internet Protocol.
`
`Furthermore, a POSA would have had a reasonable expectation of success in
`
`implementing the combination because expertise in TCP/IP was widespread and a
`
`POSA would need only adapt freely available TCP source code to do so.
`
`
`
`Case IPR2017-01406
`U.S. Patent No 7,673,072
`
`II.
`
`PATENT OWNER HAS IMPROPERLY EXPANDED THE SCOPE
`OF CLAIMS 22-29
`
`Patent Owner’s argument that it has narrowed the claims ignores the plain
`
`claim language. Petitioner showed in its Opposition that the “protocol header
`
`information” in substitute claim 22 (limitation 22.5) is not tied to the “context”
`
`referenced earlier in the claim (limitation 22.1), unlike original claim 1 where “the
`
`protocol header information” (limitation 1.5) was tied to the “context” (limitation
`
`1.1). Petitioner’s Resp. in Opp. to Patent Owner’s Contingent Mot. to Amend
`
`(“Opp.”, Paper No. 40 ) at 5-8. Patent Owner’s only response is that “the amended
`
`claim language expressly defines ‘context’ to ‘include[]’ the aforementioned three
`
`specific elements” (limitation 22.1). Reply at 5; see also id. at 4 (“Petitioner is
`
`wrong for the simple reason that the amended language continues to define a
`
`‘context.’”). But this misses the point—the broadened limitation (limitation 22.5)
`
`does not refer to “context” or any of the “aforementioned three specific elements.”
`
`Patent Owner contends that limitation 22.5 is narrower because “[t]he
`
`template header is ... expressly required to contain the IP address and TCP state
`
`information.” Reply at 4. This is simply incorrect. As illustrated by the claim
`
`language below, the “IP address and TCP state information” in the “template
`
`2
`
`
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`Case IPR2017-01406
`U.S. Patent No 7,673,072
`
`header” (limitation 22.5) are not tied to the previously identified IP address and
`
`TCP state information.2
`
`
`
`Patent Owner also argues that “neither the original claim, nor the substituted
`
`claim, refer to a particular source” for the “protocol header information.” Reply at
`
`5 n.3. To the contrary, original claim 1 recites “the protocol header information”
`
`
`2 Even if it did say “the IP address and TCP state information” (which it does not),
`
`nothing requires that the template header in substitute claim 22 have the same
`
`“protocol header information” as the context, as original claim 1 did.
`
`3
`
`
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`Case IPR2017-01406
`U.S. Patent No 7,673,072
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`(limitation 1.5) which refers to the previously mentioned “protocol header
`
`information” included in the context (limitation 1.1).3 In contrast, substitute claim
`
`22 recites “protocol header information,” which does not reference any prior
`
`“protocol header information.” (Nor is there any “protocol header information”
`
`mentioned elsewhere in claim 22.) By removing this requirement in substitute
`
`claim 22, a method could, for example, use a processor on the interface device to
`
`create protocol header information for the segments (perhaps for an unrelated
`
`connection or protocol) instead of using protocol header information included in
`
`the context. This method would infringe substitute claim 22, but not claim 1.
`
`III. PATENT OWNER HAS FAILED TO MEET ITS BURDEN TO SHOW
`WRITTEN DESCRIPTION SUPPORT
`
`Patent Owner wrongly argues that the case law on which Petitioner relies
`
`has been “overturned.” Reply at 6. This is simply untrue. Aqua Products
`
`confirmed that “the patent owner bears a burden of production in accordance 35
`
`U.S.C. § 316(d),” including Patent Office regulations codifying it, such as 37
`
`3 Patent Owner’s cited case law is inapposite. Reply at 2. In that case, Toshiba v.
`
`Optical Devices, LLC, IPR2014-01441, Paper 36 (Mar. 8, 2016), the patent owner
`
`merely added clauses and limitations, but did not delete any words from the claims.
`
`In contrast, Patent Owner deleted and replaced phrases in the original claim,
`
`resulting in expanded claim scope.
`
`4
`
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`Case IPR2017-01406
`U.S. Patent No 7,673,072
`
`C.F.R. § 42.121. Aqua Prods., Inc. v. Matal, 872 F.3d 1290, 1341 (Fed. Cir. 2017).
`
`Post-Aqua Products, the PTAB also confirmed that “a Patent Owner still must
`
`meet the requirements for a motion to amend under 37 C.F.R. § 42.121 or 37
`
`C.F.R. § 42.221, as applicable.” See Nov. 21, 2017 Guidance on Motions to
`
`Amend in view of Aqua Products; see also Semiconductor Components Indus.,
`
`LLC v. Power Integrations, Inc., IPR2016-01600, Paper 35, at *10 (Feb. 14, 2018)
`
`(denying motion to amend because Patent Owner had not satisfied its burden to
`
`provide written description support). Indeed, Patent Owner even admits that it
`
`must satisfy this burden. Reply at 6 (“In a motion to amend, a patent owner need
`
`only satisfy its burden of production under 35 U.S.C. § 316(d) and 37 C.F.R. §
`
`42.121.”). There is thus no dispute that Patent Owner must satisfy the burden of
`
`production under 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121.
`
`The case law that Petitioner cites specifically relies on 37 C.F.R. § 42.121.
`
`See B.E. Tech., L.L.C. v. Google, Inc., Case No. 2015-1827, 2016 WL 6803057, at
`
`*7 (Fed. Cir. Nov. 17, 2016) (confirming PTAB had correctly found lack of
`
`“written description support under 37 C.F.R. § 42.121(b)” where the patent owner
`
`had “only provided a string citation to eighteen different pages of the ‘314 Patents’
`
`original specification, without explaining how those various pages supported each
`
`of the proposed substitutions”); Respironics, Inc. v. Zoll Med. Corp., IPR2013-
`
`00322, Paper 46, at *11 (Sept. 17, 2014) (finding “patent owner bears the burden
`
`5
`
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`Case IPR2017-01406
`U.S. Patent No 7,673,072
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`of proof in demonstrating adequate written description support” under “42.121(b)”
`
`and rejecting string citations as insufficient). “Patent Owner’s mere citation in a
`
`table to various portions of the original disclosure, without any explanation why a
`
`person of ordinary skill in the art would have recognized that the inventor
`
`possessed the claimed subject matter as a whole, is inadequate to satisfy the written
`
`description requirement” under 37 C.F.R. § 42.121. Facebook, Inc. v. Everymd
`
`LLC, IPR2014-00242, Paper 31, at *13 (May 12, 2015)
`
`Furthermore, Patent Owner’s attempt to “remedy the problem” in its Reply
`
`is “too little, too late.” Respironics, Inc., IPR2013-00322, Paper 46, at *13–14. “A
`
`Reply affords the moving party an opportunity to refute arguments and evidence
`
`advanced by the opposing party, not an opportunity to improve its position.” Id.
`
`Patent Owner has provided no explanation for why it could not have included the 7
`
`pages of explanation in its Reply about the alleged written description support in
`
`its opening brief—as well as the new declaration from its expert submitted for the
`
`first time on reply.4 Patent Owner’s evidence is offered “to bolster [Patent
`
`
`4 Indeed, Patent Owner had approximately 7 available but unused pages in its
`
`opening brief it could have used to explain its alleged written description support.
`
`Opp. at 8; see B.E. Tech., Case No. 2015-1827, 2016 WL 6803057, at *7 n.7.
`
`6
`
`
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`Case IPR2017-01406
`U.S. Patent No 7,673,072
`
`Owner’s] motion, not to refute argument or evidence by [Petitioner] that the claim
`
`lacks adequate written description support.” Id.
`
`Furthermore, even if it were permissible, Patent Owner’s attempt to remedy
`
`its failure in its Reply falls short. Indeed, Patent Owner cites to key written
`
`description support it did not include at all in its Motion to Amend. For example,
`
`Patent Owner includes quotes from numerous pages in its Application that it did
`
`not identify as written description support in the Motion to Amend. Compare
`
`Reply at 8-11 (citing to pages 19-20, 23, and 57 of Ex. 2024) with Motion,
`
`Appendix A (only citing pages 5-12, 7-8, and 10-17 of Ex. 2024).
`
`Even Patent Owner’s belated identifications of alleged support fail to
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`actually identify written description for the amended claims. For example, and
`
`without limitation, Patent Owner’s Reply fails to identify any disclosure in the
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`Provisional Application No. 60/061,809 (Ex. 2019) for the amended limitations
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`“transferring the context protocol header information to an interface device” and
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`“transferring data from the network host to the interface device, after transferring
`
`the context protocol header information to the interface device.” Patent Owner
`
`identifies disclosure of at least two different kinds of “context” in Ex. 2019, but
`
`does not point to any disclosure that any of these contexts are transferred to an
`
`interface device. Patent Owner then points to Section 2.2.2 of Ex. 2019 as
`
`supporting “transferring data from the network host to the interface device, after
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`U.S. Patent No 7,673,072
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`transferring the context protocol header information to the interface device,” but
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`Section 2.2.2 says nothing at all about any context. As another example, it provides
`
`no evidence that a “template header” (limitation 22.5) can be created from any
`
`“protocol header information.” Furthermore, this belated evidence is prejudicial to
`
`Petitioner who has only 12 pages for its sur-reply.
`
`IV. SUBSTITUTE CLAIMS 22-29 AND 36-42 ARE INDEFINITE
`For substitute claims 22-29, Patent Owner argues in conclusory fashion that
`
`“the plain meaning of the claim language established that ‘context information’
`
`refers to the three itemized elements of the claimed ‘context.’” Reply at 14. Its
`
`only support is an identical statement from its expert. Patent Owner offers no
`
`explanation for why it believes “the context information” must refer to those three
`
`items, as opposed to, for example, a subset of the three itemized elements or all the
`
`information in the “context.”5 If Patent Owner had intended to include only the
`
`three itemized elements (as it argues), it would have claimed “context information
`
`consisting of” those three itemized elements instead of “a context that includes”
`
`them. Patent Owner is not entitled to a substitute claim where it has failed to define
`
`
`5 Indeed, Petitioner’s own expert, a POSA, assumed that “context information”
`
`includes “at least one of the fields.” Ex. 1210.022. While the limitation is met in
`
`either event, this only highlights the ambiguity of the term to a POSA.
`
`8
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`the scope of the invention. See Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48756, 48764 (Aug. 14, 2012) (describing that amendments ensure “uncertainties
`
`of claim scope are removed or clarified”).
`
`For substitute claims 36-42, Patent Owner argues that because claim 30, a
`
`separate independent claim, includes a MAC layer address, claim 36 must also
`
`include a MAC layer address.6 Patent Owner has no basis for this statement. Each
`
`claim is directed to an independent invention.
`
` Simply because another
`
`independent claim included a MAC layer address does not mean that a different
`
`independent claim, such as claim 36, also includes a MAC layer address. See
`
`Honeywell Int’l Inc. v. Hamilton Sundstrand Corp., 370 F.3d 1131, 1148 (Fed. Cir.
`
`2004) (“Each claim defines a separate invention.”). Indeed, different claims of the
`
`same patent are often drafted to capture different scopes.
`
`V. THE SUBSTITUTE CLAIMS ARE OBVIOUS OVER ERICKSON IN
`VIEW OF TANENBAUM
`
`Patent Owner’s amendments do little more than require that the “context”
`
`include information that is included in all TCP/IP headers that are transmitted over
`
`
`6 While Petitioner does not object to a corrected Motion to Amend, the claims as
`
`served with the Motion to Amend are indefinite. It is unclear whether Patent
`
`Owner meant “or,” “and,” or something else entirely.
`
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`U.S. Patent No 7,673,072
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`the Internet. This would have been obvious to a POSA and straightforward to
`
`implement with widely used and publicly available source code.
`
`A. A POSA Would Have Been Motivated to Combine Erickson with
`Tanenbaum96
`
`A POSA would have naturally looked to Tanenbaum96 when implementing
`
`Erickson’s TCP functionality. Erickson explicitly states that the disclosed network
`
`interface devices support TCP. Ex. 1005 at 8:4-6. Furthermore, UDP and TCP are
`
`the “two main protocols” designed to operate over IP. Ex. 1006.539; see also
`
`Petitioner’s Reply (“Pet. Reply”, Paper No. 46) at 2-5. A POSA seeking to
`
`implement Tanenbaum96’s TCP fast path on Erickson’s interface unit would only
`
`have needed to adapt freely available TCP source code to do so. Pet. Reply at 9-13.
`
`Nor does Tanenbaum96 “teach away” from the invention. See Pet. Reply at
`
`5-8. First, Petitioner is relying on Erickson for its teaching of an offload method
`
`using on an I/O adapter. See, e.g., Opp. at 13. Regardless, Tanenbaum96
`
`explicitly discusses offloading to the interface card. Ex. 1006.498, 1006.530.
`
`Furthermore, in the article Patent Owner references, Petitioner’s expert in fact
`
`confirmed that the “conventional wisdom” was that special purpose NICS were
`
`required to accelerate the TCP/IP protocol stack. Pet. Reply at 13-14.
`
`Patent Owner has also not provided any evidence of nexus between its
`
`alleged evidence regarding “secondary considerations” and the features of the
`
`challenged claims of the 072 Patent. Pet. Reply at 19-24.
`10
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`B.
`
`Patent Owner Has Failed to Rebut Petitioner’s Showing that the
`Limitations of the Substitute Claims Are Met
`
`For each limitation, Patent Owner attacks the references individually rather
`
`than providing arguments to rebut the proposed combination. Reply at 17-21.
`
`Patent Owner’s arguments fail as a matter of law because it is improper to attack
`
`the prior art references in an obviousness combination in isolation. In re Merck &
`
`Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As Petitioner showed, each substitute
`
`claim is obvious over Erickson in view of Tanenbaum96. Opp. at 10-25; Ex.
`
`1210.016-.076
`
`Patent Owner repeatedly argues that “Erickson only discloses UDP” and that
`
`“there is nothing in either reference teaching modification of UDP to TCP.” Reply
`
`at 18 (limitation 22.1); see also Reply at 19-21 (limitations 22.2, 22.3, 22.5, 30.1,
`
`36.1). This is simply untrue. Erickson explicitly discloses that “[t]here are
`
`different scripts for different types of datagrams 702 (e.g.. UDP or TCP).” Ex.
`
`1005 at 8:5-6. Implementing Erickson’s TCP scripts in view of Tanenbaum96
`
`would have been straightforward for a POSA. Pet. Reply at 9-13.
`
`For limitations 22.2 and 22.3, Petitioner also argues that “context
`
`information” refers to “all three elements” identified in claim 22. As discussed
`
`above, claim 22 is indefinite. In any event, as shown by Dr. Horst, the pre-
`
`negotiated header template of Erickson as modified in view of Tanenbaum96 to
`
`support TCP includes all three elements. Ex. 1210.022-.023.
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`U.S. Patent No 7,673,072
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`For limitation 22.2, Patent Owner argues that “neither reference discloses
`
`transferring the context information to an interface device or second processor”
`
`and then for limitation 22.3, that “Erickson does not disclose a specific order of
`
`transferring data, much less after transfer of context information.” Reply at 19-20.
`
`But this ignores the obviousness combination Petitioner is relying on and
`
`Erickson’s explicit disclosures.
`
`As Dr. Horst explains, Erickson discloses creating a “context” that includes
`
`pre-negotiated header template for a script. Ex. 1210.022-23. A POSA would have
`
`understood that this includes TCP header information, including the MAC layer
`
`address, IP address, and TCP state information. 1210.019-.020. Erickson also
`
`discloses that this “context” is transferred to the interface device from the host
`
`during pre-negotiation. Ex. 1210.022-.023. Furthermore, Erickson discloses that
`
`the data is transferred after the context, which is already in the memory on the
`
`interface device. Ex. 1210.024. Patent Owner does not address this combination
`
`at all, but instead asserts in conclusory fashion, based on the equally conclusory
`
`declaration of its expert, that the combination does not meet these limitations.
`
`Reply at 19-20. This does nothing to rebut Petitioner’s showing that the
`
`limitations are met.
`
`VI. CONCLUSION
`Petitioner respectfully requests Patent Owner’s Motion to Amend be denied.
`
`12
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`Dated: June 1, 2018
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`
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`
`
`Respectfully submitted,
`
`/s/ Garland T. Stephens
`Garland T. Stephens, Reg. No. 37,242
`Justin L. Constant, Reg. No. 66,883
`Weil, Gotshal & Manges LLP
`700 Louisiana, Suite 1700
`Houston, TX 77002
`Tel: (713) 546-5000
`Fax: (713) 224-9511
`garland.stephens@weil.com
`justin.constant@weil.com
`
`Anne M. Cappella, Reg. No. 43,217
`Adrian Percer, Reg. No. 46,986
`Weil, Gotshal & Manges LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`Tel: (650) 802-3141
`Fax: (650) 802-3100
`anne.cappella@weil.com
`adrian.percer@weil.com
`
`William S. Ansley, Reg. No. 67,828
`Weil, Gotshal & Manges LLP
`2001 M Street, N.W, Suite 600
`Washington, DC 20036
`Tel: (202) 682-7000
`Fax: (202) 857-0940
`sutton.ansley@weil.com
`
`Attorneys for Petitioner Intel Corporation
`
`13
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`C
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