UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner
`________________
`
`Case IPR2017-01705
`U.S. Patent No. 7,673,072
`________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 35 U.S.C. § 313 AND 37 C.F.R. § 42.107
`
`06973-00001/9637637.2
`
`

`

` Case No. IPR2017-01705
`U.S. Patent No. 7,673,072
`
`TABLE OF CONTENTS
`
`Page
`
`B.
`
`C.
`D.
`
`I.
`II.
`
`V.
`
`VI.
`
`INTRODUCTION...........................................................................................1
`OVERVIEW OF THE ’072 PATENT ............................................................4
`A.
`The ’072 Patent Specification...............................................................4
`B.
`The ’072 Patent Claims.........................................................................6
`III. OVERVIEW OF THE ASSERTED PRIOR ART..........................................8
`A.
`U.S. Patent No. 5,937,169 (“Connery”)................................................8
`IV. CLAIM CONSTRUCTION ..........................................................................10
`A.
`Intel’s Petition Should Be Denied Because It Alleges The
`Challenged Claims Are Indefinite.......................................................10
`Petitioner’s Proposed Terms for Construction Do Not
`Affect Alacritech’s Non-Obviousness Argument in This
`Preliminary Response..........................................................................11
`CONNERY IS NOT PRIOR ART TO THE CHALLENGED
`CLAIMS ........................................................................................................12
`A.
`All Claims of The ’072 Patent Are Fully Supported By
`The Provisional Application, and Therefore Connery is
`Not Prior Art........................................................................................13
`1.
`“Creating headers for the segments, by the
`interface device, from [the/a] template header,”
`and “prepending the headers to the segments”.........................15
`Protocols other than TCP/IP .....................................................20
`2.
`THE BOARD SHOULD DENY THE PETITION BECAUSE
`IT FAILS TO DISCLOSE ALL REAL PARTIES IN
`INTEREST ....................................................................................................23
`A.
`Intel Effectively Controls Dell............................................................25
`B.
`The Relationship Between Intel and Dell is Sufficiently
`Close....................................................................................................26
`Dell Desires Review of the ’072 Patent..............................................28
`Intel Dell Have Coordinated Interest and Action in
`Challenging the ’072 Patent................................................................29
`
`06973-00001/9637637.2
`
`ii
`
`

`

` Case No. IPR2017-01705
`U.S. Patent No. 7,673,072
`
`F.
`
`E.
`
`Intel Has Effective Choice as to the Legal Theories and
`Proofs of Dell and Cavium..................................................................30
`Finding Dell and Cavium Are Real Parties in Interest Is
`Consistent with Legislative Intent.......................................................32
`VII. THE BOARD SHOULD DECLINE INSTITUTION UNDER
`35 U.S.C. § 325(D) BECAUSE ALL THE REFERENCES
`HAVE ALREADY BEEN CONSIDERED BY THE OFFICE....................33
`VIII. ALACRITECH RESERVES ITS RIGHTS UNDER THE
`PENDING OIL STATES CASE AT THE UNITED STATES
`SUPREME COURT ......................................................................................34
`IX. CONCLUSION .............................................................................................35
`
`06973-00001/9637637.2
`
`iii
`
`

`

` Case No. IPR2017-01705
`U.S. Patent No. 7,673,072
`
`TABLE OF AUTHORITIES
`
`Page
`
`Cases
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) ................................................................ 30
`Alacritech, Inc. v. CenturyLink, Inc.,
`2:16-cv-00693-JRG-RSP (E.D. Tex.)................................................... 1, 12
`Alacritech, Inc. v. Dell Inc.,
`2:16-cv-00695-RWS-RSP (E.D. Tex.) ................................................. 1, 12
`Alacritech, Inc. v. Wistron Corp.,
`2:16-cv-00692-JRG-RSP (E.D. Tex.)................................................... 1, 12
`ams AG v. 511 Innovations, Inc.,
`Case IPR2016-01788 (PTAB Mar. 15, 2017) .......................................... 11
`Benson & Ford, Inc. v. Wanda Petroleum Co.,
`833 F.2d 1172 (5th Cir. 1987) ................................................................. 16
`Fidelity Nat’l Info. Servs., Inc. v. DataTreasury Corp.,
`IPR2014-00489......................................................................................... 28
`Oil States Energy Servs. LLC v. Greene’s Energy Group, LLC,
`Case No. 16-712, certiorari granted (U.S. Jun. 12, 2017) ....................... 31
`In re Steele,
`305 F.2d 859 (CCPA 1962)...................................................................... 11
`Statutory Authorities
`35 U.S.C. § 103(a) .......................................................................................... 1
`35 U.S.C. § 312(a)(2)................................................................................ 2, 12
`35 U.S.C. § 313............................................................................................... 1
`35 U.S.C. § 314............................................................................................... 3
`35 U.S.C. § 314(a) .......................................................................................... 7
`35 U.S.C. § 315............................................................................................. 14
`35 U.S.C. § 315(b) ........................................................................................ 14
`35 U.S.C. § 325(d) ........................................................................................ 22
`Rules and Regulations
`37 C.F.R. §41.65(a)...................................................................................... 30
`37 C.F.R. §42.6(a)(3) ................................................................................... 28
`37 C.F.R. §42.8(b)(1) ............................................................................... 2, 12
`37 CFR §42.22(a)(2) .................................................................................... 28
`37 C.F.R. §42.106(b).................................................................................... 12
`37 C.F.R. §42.107(a)...................................................................................... 1
`37 C.F.R. §42.108 .......................................................................................... 3
`iv
`
`06973-00001/9637637.2
`
`

`

` Case No. IPR2017-01705
`U.S. Patent No. 7,673,072
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48759-60
`(Aug. 14, 2012).................................................................................. passim
`H.R. Rept. No 112-98 (2011) (Judiciary Committee Report on H.R. 1249,
`June 1, 2011)............................................................................................. 20
`Legislative Materials
`157 Cong. Rec. S1034, S1041 (Mar. 1, 2011).............................................. 20
`
`06973-00001/9637637.2
`
`v
`
`

`

` Case No. IPR2017-01705
`U.S. Patent No. 7,673,072
`
`PATENT OWNER’S LIST OF EXHIBITS
`
`Exhibit #
`
`Ex. 2001
`
`Ex. 2002
`
`Ex. 2003
`
`Ex. 2004
`
`Ex. 2005
`
`Ex. 2006
`
`Ex. 2007
`
`Ex. 2008
`
`Ex. 2009
`
`Description
`
`Declaration of Paul Prucnal Regarding IPR2017-01406
`
`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).
`
`Excerpts of Webster’s New World Dictionary of
`Computer Terms, Sixth Edition, 1997.
`
`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
`
`Cavium’s Motion to Intervene, Case No. 2:16-cv-00693-
`JRG-RSP, Dkt. 109 (E.D. Tex., Jan. 13, 2017).
`
`Ex. 2010
`
`Curriculum Vitae of Paul Prucnal
`
`06973-00001/9637637.2
`
`vi
`
`

`

`Case No. IPR2017-01705
`U.S. Patent No. 7,673,072
`
`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107(a), Patent Owner
`
`Alacritech Inc. (“Alacritech”) submits this Preliminary Response to the Petition for
`
`Inter Partes Review (“the Petition”) filed in this matter.1 Petitioner Intel
`
`Corporation (“Intel”) seeks Inter Partes Review (“IPR”) of claims 1-21 of U.S.
`
`Patent No. 7,673,072 (“the ’072 patent”), as allegedly being unpatentable under 35
`
`U.S.C. § 103(a) in view of U.S. Patent No. 5,937,169 to Connery et al. (Ex. 1043,
`
`“Connery”). The ’072 patent is assigned to Alacritech and is the subject of co-
`
`pending litigation, 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.),
`
`which were all consolidated for pre-trial purposes (“the Litigation”).
`
`The ’072 Patent discloses a system with “a specialized microprocessor
`
`designed for processing network communications, avoiding the delays and pitfalls
`
`of conventional software layer processing, such as repeated copying and interrupts
`
`to the CPU,” and “freeing the host CPU from most protocol processing and
`
`allowing improvements in other task.” Ex. 1001 at 5:44-47, 7:47-49. The ’072
`
`
`1 This submission is timely as it is being filed within three months following the
`mailing date of the Notice of Filing Date Accorded to Petition. The three-month
`date following the June 5, 2017 mailing date is Tuesday, September 5, 2017.
`(Paper No. 9).
`
`06973-00001/9637637.2
`
`1
`
`

`

`Case No. IPR2017-01705
`U.S. Patent No. 7,673,072
`
`patent’s claims focus on the transmission side of the protocol processing. The host
`
`gives raw data to the INIC which it must carve into segments, add headers to the
`
`data, perform checksums on the segment, and then send it out. As explained in
`
`more detail below, by relieving the host CPU of frequent and debilitating
`
`interrupts, the claimed invention provides enhanced network and system
`
`performance, faster data throughput, increased system stability, and an overall
`
`better user experience.
`
`In its Petition, Intel asserts that the ’072 patent is invalid on the ground that
`
`claims 1-21 of the ’072 patent are obvious over U.S. Patent No. 5,937,169 to
`
`Connery et al. (Ex. 1043, “Connery”). As set forth below, Intel’s Petition is
`
`deficient on numerous grounds; thus, the Board should not institute this IPR on the
`
`ground enumerated in the Petition.
`
`First, Petitioner has not established that Connery is prior art to the ’072
`
`patent. As acknowledged in Intel’s Petition, the ’072 patent claims priority to U.S.
`
`Provisional Application No. 60/061,809, filed October 14, 1997 (“the ’072
`
`Provisional”). (Petition at 29.) Connery, in contrast, was filed on October 29,
`
`1997 (fifteen days later) and does not claim the benefit of any earlier-filed
`
`applications. (Ex. 1043.) Connery therefore does not constitute prior art. As
`
`described in more detail below, Petitioner’s arguments regarding the written
`
`06973-00001/9637637.2
`
`2
`
`

`

`Case No. IPR2017-01705
`U.S. Patent No. 7,673,072
`
`description of the ‘072 Provisional consist exclusively of conclusory attorney
`
`argument and are unpersuasive.
`
`Second, Connery was already considered by the Office during the original
`
`prosecution of the ‘072 patent. This Petition is therefore merely cumulative of the
`
`arguments already considered and rejected by the Office in initial examination.
`
`The Board should not second guess the Examiner and substitute its own opinion
`
`for that of the original Examiner.
`
`Third, Petitioner alleges certain claim terms and phrases are indefinite
`
`because they are incapable of being understood by a person of ordinary skill in the
`
`art (“POSA”). Because under Petitioner’s own contention these terms are
`
`indefinite, Petition’s obviousness challenges cannot be sustained in this Petition.
`
`See Space Exploration Technologies Corp. v. Blue Origin LLC, Case IPR2014-
`
`01378, Paper 6, at 8-9 (Mar. 3, 2015) (“inter partes review is limited to grounds of
`
`anticipation and obviousness under 35 U.S.C. §§ 102 and 103, not indefiniteness
`
`under 35 U.S.C. § 112”); Apple Inc. v. Immersion Corp., Case IPR2016-01372,
`
`Paper 7, at 20-21 (Jan. 11, 2017) (where Board is “unable to determine the scope
`
`and meaning of [the challenged] claims . . . we cannot conduct the necessary
`
`factual inquiry for determining obviousness with respect to these claims, such as
`
`ascertaining differences between the claimed subject matter and the prior art”).
`
`06973-00001/9637637.2
`
`3
`
`

`

`Case No. IPR2017-01705
`U.S. Patent No. 7,673,072
`Fourth, Petitioners have failed to name all real parties in interest. For the
`
`reasons discussed below, both Dell and Cavium are unnamed real parties in interest
`
`to this Petition. (See infra § VI.) Because this threshold requirement has not been
`
`met, the Board should deny institution.
`
`Accordingly, the Connery reference and Intel’s arguments in the Petition do
`
`not give rise to a reasonable likelihood that Intel will prevail with respect to any
`
`challenged claim of the ’072 patent. The Board should therefore not institute
`
`review on any claim of the ’072 patent.2 See 35 U.S.C. § 314; 37 C.F.R. § 42.108.
`
`II. OVERVIEW OF THE ’072 PATENT
`
`A.
`
`The ’072 Patent Specification
`
`The ’072 Patent discloses a system with “a specialized microprocessor
`
`designed for processing network communications, avoiding the delays and pitfalls
`
`of conventional software layer processing, such as repeated copying and interrupts
`
`to the CPU,” and “freeing the host CPU from most protocol processing and
`
`allowing improvements in other task.” Ex. 1001 at 5:44-47, 7:47-49.
`
`
`2 Alacritech also respectfully reserves its rights under the Oil States case pending
`
`before the United States Supreme Court, as set forth in Section IX of this
`
`Preliminary Response.
`
`06973-00001/9637637.2
`
`4
`
`

`

`Case No. IPR2017-01705
`U.S. Patent No. 7,673,072
`
`The ’072 patent’s claims focus on the transmission side of the protocol
`
`processing. See id. at 97:30-31 (“to form transmit packets”). Fig. 24 of the ’072
`
`patent depicts a receiving embodiment with a specialized Intelligent Network
`
`Interface Card (INIC) providing a fast path for protocol processing. Id. at Fig. 24.
`
`“The transmit case works in much the same fashion . . . In fast-path mode,
`
`the host gives raw data to the INIC which it must carve into MSS sized segments,
`
`add headers to the data, perform checksums on the segment, and then send it out on
`
`the drive.” Id. at 38:55-61 (emphasis added).
`
`This “carving” process conducted by the INIC is reflected in Claim 1 as well
`
`as all other independent claims, where it recites “dividing, by the interface device,
`
`the data into segments.” Id. at 97:26. (emphasis added). As analyzed below, this
`
`06973-00001/9637637.2
`
`5
`
`

`

`“dividing” step conducted by “the interface device” is not disclosed by either of the
`
`Case No. IPR2017-01705
`U.S. Patent No. 7,673,072
`
`cited references or their combination.
`
`B.
`
`The ’072 Patent Claims
`
`The ’072 Patent includes 21 claims. All 21 claims are challenged in the
`
`Petition. Claims 1, 9, and 15 are the independent claims and each recites
`
`“dividing, by the interface device, the data into segments.” Claims 2-8, 10-14, and
`
`16-21 depend on the independent claims. Independent claims 1, 9, and 15 are
`
`reproduced below:
`
`Claim 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.
`
`Claim 9. A method comprising:
`
`06973-00001/9637637.2
`
`6
`
`

`

`Case No. IPR2017-01705
`U.S. Patent No. 7,673,072
`
`creating, at a computer, a context including protocol information and
`status information for a network connection, the protocol information
`providing a template header for the network connection;
`
`transferring the protocol information and status information to an
`interface device;
`
`transferring data from the computer to the interface device, after
`transferring the protocol information and status information to the
`interface device;
`
`dividing, by the interface device, the data into segments;
`
`creating headers for the segments, by the interface device, from the
`template header;
`
`prepending the headers to the segments to form packets; and
`
`transmitting the packets on a network.
`
`Claim 15. A method comprising:
`
`establishing, at a computer, a Transmission Control Protocol (TCP)
`connection corresponding
`to a context
`that
`includes status
`information and Internet Protocol (IP) addresses and TCP ports for
`the connection;
`
`transferring the context to an interface device;
`
`transferring data from the network host to the interface device;
`
`dividing, by the interface device, the data into segments;
`
`06973-00001/9637637.2
`
`7
`
`

`

`Case No. IPR2017-01705
`U.S. Patent No. 7,673,072
`
`creating headers for the segments, by the interface device, from a
`template header that includes the IP addresses and TCP ports; and
`
`prepending the headers to the segments to form transmit packets.
`
`Since the cited references, alone or in combination with each other, fail to
`
`disclose the element “dividing, by the interface device, the data into segments,”
`
`which is present in all the independent claims, this Petition should not be instituted
`
`pursuant to 35 U.S.C. § 314(a).
`
`III. OVERVIEW OF THE ASSERTED PRIOR ART
`
`A.
`
`U.S. Patent No. 5,937,169 (“Connery”)
`
`Connery appears on the face of the ’072 patent under “References Cited”
`
`and was initialed by the Examiner in an Information Disclosure Statement (IDS)
`
`dated February 21, 2008.
`
`Ex. 1002.262. Connery was therefore already
`
`considered by the Examiner during the prosecution of the ’072 patent, which was
`
`found to be allowable over Connery.
`
`Connery discloses a data processing system with program memory that
`
`includes a TCP/IP protocol stack and a “segmentation mode.” (Ex. 1001 at 5:44-
`
`50.) A MAC driver is included in the program memory which supports the
`
`segmentation mode. (Id. at 5:51-58.) The system has a network interface card
`
`that includes resources to manage TCP/IP segmentation. (Id.) A large datagram
`
`may be sent to the MAC driver, which “cut[s] the datagram into packets, using
`
`06973-00001/9637637.2
`
`8
`
`

`

`Case No. IPR2017-01705
`U.S. Patent No. 7,673,072
`
`‘template’ headers from the datagram along with simple rules to product the actual
`
`packets to be sent on the media.” (Id. at 7:12-21.) Figure 5 of Connery,
`
`reproduced below, shows some of these steps.
`
`Notably, Connery is silent as to how the TCP and IP headers are combined
`
`with the “MSS sized segments” shown above in step 206 before the “packet send
`
`process” at step 208. Connery is also silent as to several other limitations present
`
`in the challenged claims.
`
`06973-00001/9637637.2
`
`9
`
`

`

`Case No. IPR2017-01705
`U.S. Patent No. 7,673,072
`
`IV. CLAIM CONSTRUCTION
`
`In an IPR proceeding, a claim is given its “broadest reasonable construction
`
`in light of the specification of the patent in which it appears.” 37 C.F.R. §
`
`42.100(b). For the purposes of these proceedings, Alacritech has construed the
`
`claims below to faithfully adhere to Federal Circuit precedent regarding claim
`
`construction, and to accurately reflect the meaning that each term would have to a
`
`person of ordinary skill in the art.
`
`A.
`
`Intel’s Petition Should Be Denied Because It Alleges The
`Challenged Claims Are Indefinite
`
`Petitioner expressly contends that the limitations “context” appearing in all
`
`independent claims and “status information” in independent claims 9 and 15 must
`
`be construed for this Petition and are indefinite. See Petition at 26-28 (“Petitioner
`
`respectfully submits that the following terms shall be construed for this IPR . . .
`
`Petitioner contends that ‘context’ is indefinite as used in the 072 Patent claims . . .
`
`Petitioner has taken the position that ‘status information’ as used in the 072 Patent
`
`is indefinite.”). This contention, without more, should end the Board’s inquiry into
`
`all independent claims and their dependent claims.
`
`“If [the Board’s] unpatentability analysis requires ‘considerable speculation
`
`as to the meaning and assumptions as to the scope’s of the claims, the differences
`
`between the claimed invention and the prior art cannot be ascertained.” ams AG v.
`
`511 Innovations, Inc., Case IPR2016-01788, Paper No. 15 at 6 (PTAB Mar. 15,
`
`06973-00001/9637637.2
`
`10
`
`

`

`Case No. IPR2017-01705
`U.S. Patent No. 7,673,072
`
`2017) (quoting In re Steele, 305 F.2d 859, 862 (CCPA 1962)). “In other words,
`
`without ascertaining proper claim scope,” the Board “cannot conduct a necessary
`
`factual inquiry for determining obviousness—ascertaining differences between the
`
`claimed subject matter and the prior art.” Id. (quotation marks and citations
`
`omitted). Where, as here, a Petitioner’s own submission asserts that challenged
`
`claims (claims 1-21) are indefinite in scope, the Board cannot institute an
`
`obviousness trial against those claims. See id. at 11-12 (denying institution on all
`
`claims based on indefiniteness in independent claim). The Board should therefore
`
`deny institution of this Petition as to claims 1-21 on this basis alone.
`
`B.
`
`Petitioner’s Proposed Terms for Construction Do Not Affect
`Alacritech’s Non-Obviousness Argument in This Preliminary
`Response
`
`Petitioner alleges the under the broadest reasonable construction standard,
`
`the term “prepending” would have been understood to mean “adding to the front.”
`
`(Petition at 27.) For the purposes of the Petition only, Patent Owner takes no
`
`position as to the proper interpretation of this term but will assume Petitioner’s
`
`interpretation is correct.3
`
`
`3 In the district court case between the parties, Petitioner argued that “prepending”
`
`also implied a temporal limitation. In other words, Petitioner argued that the
`
`header must be prepended to the data after the data is already set and not in a
`
`06973-00001/9637637.2
`
`11
`
`

`

`Case No. IPR2017-01705
`U.S. Patent No. 7,673,072
`
`The remaining two terms proposed by Petitioner for construction, “context”
`
`and “status information,” do not otherwise affect Alacritech’s argument in this
`
`preliminary response.
`
`V.
`
`CONNERY IS NOT PRIOR ART TO THE CHALLENGED CLAIMS
`
`The sole Ground in the Petition is alleged obviousness over the Connery
`
`reference. But Petitioner has not shown that Connery is available prior art in this
`
`proceeding. In particular, Connery was filed after the October 14, 1997
`
`provisional application to which the ‘072 patent claims priority, so it is Intel’s
`
`burden to show lack of priority support for the challenged claims. But Intel has
`
`not even approached its burden. Intel simply does not offer enough facts or
`
`analysis (as distinct from conclusions and suggestions) in its Petition to support a
`
`finding that Connery is prior art to the challenged claims, even at the institution
`
`stage. The whole Petition should be denied.
`
`
`
`“piecemeal assembly” fashion where the header is written to a buffer and then the
`
`data is appended at some later time. The Court rejected this argument. (Ex. 2006
`
`at 35.)
`
`06973-00001/9637637.2
`
`12
`
`

`

`Case No. IPR2017-01705
`U.S. Patent No. 7,673,072
`
`A.
`
`All Claims of The ’072 Patent Are Fully Supported By The
`Provisional Application, and Therefore Connery is Not Prior Art
`
`Petitioner bears the burden of showing that all statutory thresholds have been
`
`met. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,756 (Aug.
`
`14, 2012) (“The Board…may institute a trial where the petitioner establishes that
`
`the standards for instituting the requested trial are met….”). The law requires that
`
`an IPR can only be instituted based on “information presented in the Petition.” 35
`
`U.S.C. §314(a). If inter partes review is granted, Petitioner also bears the burden
`
`of proving unpatentability by a preponderance of the evidence. 35 U.S.C. §316 (e).
`
`With respect to Connery, Petitioner admits that “[t]he Connery patent was
`
`filed on October 29, 1997, two weeks after the October 14, 1997 Provisional
`
`application.” (Petition at 34.) Undaunted, Petitioner then alleges that “because
`
`each of the challenged independent claims are directed to matter not described in
`
`the 1997 Provisional, none of the challenged claims of the ’072 Patent is entitled to
`
`the priority date of the 1997 Provisional.” (Id. at 30.)
`
`Petitioner is incorrect and has not met its burden to show that the challenged
`
`claims of the ’072 patent are not entitled to the benefit of the ’072 Provisional’s
`
`October 1997 filing date. In fact, the ’072 Provisional contains 130 pages of single
`
`spaced text, figures, and pseudocode that fully support and enable all the
`
`challenged claims.
`
` (See Ex. 1031.) To satisfy the written description
`
`06973-00001/9637637.2
`
`13
`
`

`

`Case No. IPR2017-01705
`U.S. Patent No. 7,673,072
`
`requirement,4 the specification must describe the claimed invention in sufficient
`
`detail that one skilled in the art can reasonably conclude that the inventor “had
`
`possession of the claimed invention.” LizardTech, Inc. v. Earth Res. Mapping,
`
`Inc., 424 F.3d 1336, 1344-45 (Fed. Cir. 2005); Vas-Cath, Inc. v. Mahurkar, 935
`
`F.2d 1555 (Fed. Cir. 1991). Specifically, the specification must describe the
`
`claimed invention in a manner understandable to a person of ordinary skill in the
`
`art and show that the inventor actually invented the claimed invention. Id.; Ariad
`
`Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
`
`The function of the written description requirement is to ensure that the inventor
`
`had possession of, as of the filing date of the application relied on, the specific
`
`subject matter later claimed by him or her; how the specification accomplishes this
`
`is not material. In re Herschler, 591 F.2d 693, 700-01 (CCPA 1979) and further
`
`reiterated in In re Kaslow, 707 F.2d 1366 (Fed. Cir. 1983). Here, the ’072
`
`Provisional shows that the inventor was in possession of the entirety of the claimed
`
`inventions recited in the challenged claims. Prucnal Decl. ¶¶ 55-62.
`
`
`4 Petitioner apparently only disputes “written description” and not enablement.
`
`(See Petition at Sections 9.1 and 9.2 (“The 1997 Provisional does not contain a
`
`written description of….””).)
`
`06973-00001/9637637.2
`
`14
`
`

`

`Case No. IPR2017-01705
`U.S. Patent No. 7,673,072
`
`1.
`
`“Creating headers for the segments, by the interface device,
`from [the/a] template header,” and “prepending the headers to
`the segments”
`
`As noted by Petitioner, the challenged independent claims recite “creating
`
`headers for the segments, by the interface device, from [the/a] template header”
`
`and “prepending the headers to the segments.” Petitioner, however, only provides
`
`attorney arguments and conclusory statements regarding the written description in
`
`the ’072 Provisional regarding this claimed feature. (See Petition at 29-30.) As
`
`described below, there is more than adequate disclosure in the ’072 Provisional of
`
`“creating headers for the segments, by the interface device, from [the/a] template
`
`header.”
`
`Initially, it is important to note that it was well known in the art that a
`
`“header” comes before the payload in a packet. In another relevant petition,
`
`IPR2017-01713, Petitioner’s own expert explained in the “State of the Art” section
`
`of his declaration that:
`
`TCP runs on “top” of IP by first dividing application data to be
`
`transmitted into segments that become the data payloads of TCP
`
`packets and concatenating each payload with a TCP header to form
`
`a TCP packet, a process called TCP segmentation. TCP/IP then
`
`places the resulting TCP packet (TCP header + payload) into the data
`
`payload of an IP packet by concatenating the TCP packet (IP data
`
`06973-00001/9637637.2
`
`15
`
`

`

`Case No. IPR2017-01705
`U.S. Patent No. 7,673,072
`payload) with an IP header. The TCP packet is thus “encapsulated”
`
`in an IP packet. (IPR2017-01713 Ex. 1003.016-.017)
`
`From this description it is clear that headers are concatenated to the front of
`
`the payload when forming a TCP packet and an IP packet, and this functionality
`
`would have been easily understood by a POSA as implicit in the packet creation
`
`process. Petitioner’s expert then goes on to explain the difference between the
`
`MAC (e.g., Ethernet) header, IP header, and TCP header. (Ex. 1003.015-.018.)
`
`Petitioner’s expert explains in this same “State of the Art” section of his
`
`declaration that “headers are prepended to the data” with the below cite to a
`
`popular TCP/IP textbook. Id. at .021.
`
`06973-00001/9637637.2
`
`16
`
`

`

`Case No. IPR2017-01705
`U.S. Patent No. 7,673,072
`
`(Ex. 1013.043, Fig. 1.8.)
`
`Given this understanding, the ’072 Provisional clearly provides written
`
`description for “creating headers for the segments, by the interface device, from
`
`[the/a] template header" and “prepending the headers to the segments.”
`
`First, Petitioner does not provide any basis as to why “creating headers for
`
`the segments, by the interface device, from [the/a] template header” is not
`
`disclosed in the ’072 Provisional. In fact, this element is disclosed precisely in the
`
`’072 Provisional as set forth below:
`
`06973-00001/9637637.2
`
`17
`
`

`

`Case No. IPR2017-01705
`U.S. Patent No. 7,673,072
`The host posts a transmit request to the INIC by filling in a
`
`command buffer with appropriate data pointers etc and posting it to
`
`the INIC via the Command Buffer Address register. . . . The transmit
`
`request may be a segment that is less than the MSS, or it may be as
`
`much as a full64K SMB READ. Obviously the former request will go
`
`out as one segment, the latter as a number of MSS-sized
`
`segments. . . . A large buffer is acquired from the free buffer fifo, and
`
`the MAC and TCP/IP headers are created in it. It may be
`
`quicker/simpler to keep a basic frame header set up in the TCB and
`
`either dma directly this into the frame each time. Then data is dmad
`
`from host memory into the frame to create an MSS-sized segment.
`
`This dma also checksums the data. Then the checksum is adjusted for
`
`the pseudo-header and placed into the TCP header. (Ex. 1031, ’072
`
`Provisional Application at .060-.061)
`
`The ’072 Provisional clearly discloses creating header (“the MAC and
`
`TCP/IP headers are created in it”) for the segments (“the latter as a number of
`
`MSS-sized segments”), by the interface device (“INIC” and “TCB”), from [the/a]
`
`template header (“keep a basic frame header set up in the TCB and either dma
`
`directly this into the frame each time”).
`
`06973-00001/9637637.2
`
`18
`
`

`

`Case No. IPR2017-01705
`U.S. Patent No. 7,673,072
`
`Second, the ’072 Provisional also discloses “prepending the headers to the
`
`segments.” As admitted by Petitioner, the ’241 Provisional, which the same
`
`provisional application of the ’072 patent, “describes the INIC transferring ‘basic
`
`frame header’ with a pseudo-header checksum into a frame, then appending the
`
`data to the header (i.e., adding the data to the back of the header), and finally
`
`placing the checksum into the TCP header after appending the data.” IPR2017-
`
`01713 Petition at 36. This is the precisely the operation described by the claimed
`
`“prepending” because the data is placed after the header (and hence as a result the
`
`header is “prepended”