Paper: 7
`Trials@uspto.gov
`571-272-7822 Entered: December 7, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01713
`Patent 7,337,241 B2
`____________
`
`
`
`Before STEPHEN C. SIU, DANIEL N. FISHMAN, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`I. INTRODUCTION
`Intel Corporation (“Petitioner”) requests inter partes review of claims
`9–15, 17, and 19–21 (the “challenged claims”) of U.S. Patent No. 7,337,241
`
`
`Trials@uspto.gov
`571-272-7822 Entered: December 7, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01713
`Patent 7,337,241 B2
`____________
`
`
`
`Before STEPHEN C. SIU, DANIEL N. FISHMAN, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`I. INTRODUCTION
`Intel Corporation (“Petitioner”) requests inter partes review of claims
`9–15, 17, and 19–21 (the “challenged claims”) of U.S. Patent No. 7,337,241
`
`
`
`IPR2017-01713
`Patent 7,337,241 B2
`
`B2 (“the ’241 patent,” Ex. 1001) pursuant to 35 U.S.C. §§ 311 et seq. Paper
`2 (Petition “Pet.”). Alacritech, Inc. (“Patent Owner”) filed a preliminary
`response. Paper 6 (“Prelim. Resp.”). Institution of an inter partes review is
`authorized by statute when “the information presented in the petition . . . and
`any response . . . shows that there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon
`consideration of the Petition and Preliminary Response, we conclude the
`information presented is insufficient to show that there is a reasonable
`likelihood that Petitioner would prevail in establishing the unpatentability of
`any of the challenged claims (9–15, 17, and 19–21) of the ’241 patent.
`
`A. Related Matters
`We are informed that the ’241 patent is presently related to the
`following: Alacritech, Inc. v. CenturyLink, Inc., Case No. 2:16-cv-00693-
`JRG-RSP (E.D. Tex.); Alacritech, Inc. v. Wistron Corp., Case No. 2:16-cv-
`00692-JRG-RSP (E.D. Tex.); and Alacritech, Inc. v. Dell Inc., Case No.
`2:16-cv-00695-RWS-RSP (E.D. Tex.). Pet. 3; Paper 4, 1. In addition,
`Petitioner filed a Petition in Case no. IPR2017-01392 challenging all claims
`of the ’241 patent based on other references. See Pet. 3.
`
`B. The ’241 Patent
`The ’241 patent describes a system and method for accelerating data
`transfer between a network and storage unit. Ex. 1001, Abstract. In
`particular, the claimed invention of the ’241 patent relates to a fast-path
`processing in which processing for headers of a layered network protocol
`(e.g., TCP/IP or UDP/IP) is offloaded from the host computer to an
`intelligent network interface. See id. at 5:18–38, Fig. 24. Specifically, the
`
`2
`
`
`
`IPR2017-01713
`Patent 7,337,241 B2
`
`intelligent network interface includes accelerated processing features, “[t]he
`accelerated processing includes employing representative control
`instructions for a given message that allow data from the message to be
`processed via a fast-path which accesses message data directly at its source
`[in the host computer] or delivers it directly to its intended destination [in the
`host computer].” Id. at 5:18–22.
`
`C. Illustrative Claim
`Claims 9 and 17 are the independent claims of the challenged claims
`of the ’241 patent. Claim 9, reproduced below, is illustrative of the claimed
`subject matter:
`9. A method for communicating information over a
`network, the method comprising:
`obtaining data from a source in memory allocated by a first
`processor;
`dividing the data into multiple segments;
`prepending a packet header to each of the segments by a
`second processor, thereby forming a packet corresponding to
`each segment, each packet header containing a media access
`control layer header, a network layer header and a transport layer
`header, wherein the network layer header is Internet Protocol
`(IP), the transport layer header is Transmission Control Protocol
`(TCP) and the media access control layer header, the network
`layer header and the transport layer header are prepended at one
`time as a sequence of bits during the prepending of each packet
`header; and
`transmitting the packets to the network.
`Id. at 99:19–35.
`
`3
`
`
`
`IPR2017-01713
`Patent 7,337,241 B2
`
`D. Asserted Ground of Unpatentability
`Petitioner asserts that the challenged claims (9–15, 17, and 19–21) are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Connery et al. (U.S.
`Patent No. 5,937,169 (Ex. 1043, “Connery”)). Pet. 14.
`Petitioner relies on the testimony of Dr. Robert Horst (Ex. 1003) in
`support of its assertions. Patent Owner relies on the testimony of Dr. Paul
`Prucnal (Ex. 2001) in support of its assertions.
`
`II. DISCUSSION
`
`A. Claim Construction
`In an inter partes review, 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). Only terms that are in controversy need to be construed and only to
`the extent necessary to resolve the controversy. See Wellman, Inc. v.
`Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`At this stage of the proceeding, we determine that it is not necessary
`to provide an express interpretation of any claim terms.
`
`B. Overview of Connery
`Connery is directed to improving performance of transmissions from a
`
`host computer to a network by generating, at a network interface device, a
`
`4
`
`
`
`IPR2017-01713
`Patent 7,337,241 B2
`
`plurality of smaller packets for transmission in response to receipt, at the
`network interface, of a larger datagram from the host computer. Ex. 1043,
`Abstract (.001).
`
`C. Prior Art Status of Connery
`Connery was filed on October 29, 1997. Ex. 1043, .001. The ’241
`patent was filed September 27, 2002 but claims priority, through U.S.
`Provisional Patent Application No. 60/061,809 (the “’809 application”), to
`an earlier priority date of October 14, 1997. Ex. 1043, .094 (1:35–36).
`Petitioner argues the ’241 patent is not entitled to the October 14,
`1997 priority date and, thus, Connery qualifies as prior art by antedating the
`next earliest priority date claimed by the ’241 patent. Pet. 35–37.
`Specifically, Petitioner contends, the ’809 application lacks sufficient
`disclosure of certain limitations of the challenged claims and, thus, fails to
`provide sufficient written description under § 112(1). Id. at 35. In
`particular, Petitioner argues the ’809 application fails to sufficiently describe
`prepending a header to a segment to form a packet and, instead, discloses
`appending the data to a header. Id. at 36. Petitioner further argues the ’809
`application fails to sufficiently describe that the network and transport
`headers are prepended at one time as a sequence of bits as recited in claim 9
`of the ’241 patent. Id. at 37. Lastly, Petitioner asserts the ’809 application
`fails to sufficiently describe that the network and transport headers are
`prepended to the data without interrupts. Id.
`Patent Owner contends Petitioner’s position is merely conclusory
`attorney argument with no expert analysis. Prelim. Resp. 27. Patent Owner
`argues initially, “it was well known in the art that a ‘header’ comes before
`the payload in a packet.” Id. at 28. Patent Owner cites with approval
`
`5
`
`
`
`IPR2017-01713
`Patent 7,337,241 B2
`
`Petitioner’s expert’s Declaration in which Dr. Horst explains that it was
`well-known in TCP/IP protocol processing to divide application-supplied
`data into smaller segments, concatenate each such segment with a TCP
`header to form a TCP packet, and then concatenate the TCP packet with an
`IP header. Id. at 29 (citing Ex. 1003, .016–.017; Ex. 2001¶ 91). Therefore,
`Patent Owner contends “it is clear that headers are concatenated to the front
`of the payload when forming a TCP packet and an IP packet.” Id. at 29.
`Patent Owner further agrees with Petitioner’s assertion that the ’809
`application describes appending the data to the header and, therefore,
`contends “[t]his 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’ to the data).” Id. at 30–31 (citing Pet. 36).
`Patent Owner also contends the ’809 application expressly discloses
`prepending a header to data. Id. at 31 (quoting Ex. 1031, .061 (“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.”)). Patent Owner
`asserts this description of placing data after a header is “precisely what is
`required by the claim language” and, thus, the ’809 application fully
`supports the recitation of “prepending.” Id. (citing Ex. 2001 ¶ 95).
`Patent Owner’s arguments, supported by the expert testimony or Dr.
`Prucnal, when weighed against Petitioner’s unsupported attorney argument
`to the contrary, persuades us that the ’809 application sufficiently discloses
`the step of prepending a header to a data segment. Indeed, Petitioner’s
`expert’s (Dr. Horst) testimony on the “state of the art” actually supports
`Patent Owner’s position that a person of ordinary skill in the art would have
`
`6
`
`
`
`IPR2017-01713
`Patent 7,337,241 B2
`
`understood the disclosed packet processing in the ’809 application to use a
`“prepending” operation. Ex. 1003 ¶¶ 44–45 (citing Ex. 1013, .043
`(“Prepending IP and UDP Headers”)). In the context of this knowledge of
`the state of the art, we agree with Patent Owner that the ’809 application’s
`statement that “it may be quicker/simpler” to append data to the header
`suggests that an ordinarily skilled artisan would have understood the
`inventor to be in possession of the claimed prepending feature.
`Patent Owner further argues the limitations of the challenged claims
`relating to prepending the header “at one time as a sequence of bits” is
`sufficiently described for the ordinarily skilled artisan by the ’809
`application’s reference to a direct memory access (“DMA”) operation to
`move the header and/or the data to the INIC memory. Id. at 32–33 (citing
`Ex. 2001 ¶ 98). We agree with Patent Owner that a DMA operation to move
`a header would move all of the header at one time (i.e., in one DMA
`operation) as a sequence of bits.
`Patent Owner also asserts the limitation in claim 17 of the ’241 patent
`regarding prepending the headers “without an interrupt dividing the
`prepending of the outbound media access control layer header, the outbound
`(IP) header and the outbound TCP header” is fully described in the ’809
`application by its description of the transmission of a large (64 Kb) datagram
`in which, “we actually only receive a single interrupt when the send
`command that has been given to the INIC completes.” Id. at 34 (quoting
`Ex. 1031, .013; citing Ex. 2001 ¶ 100). We agree with Patent Owner that
`this description in the ’809 application would have sufficiently described to
`the ordinarily skilled artisan the limitation that there is no interrupt dividing
`
`7
`
`
`
`IPR2017-01713
`Patent 7,337,241 B2
`
`the prepending of the transport and network headers in the generated
`packets.
`Accordingly, on the record before us, we determine the ’241 patent is
`entitled to claim priority to the October 14, 1997 date of the ’809 application
`and, thus, Connery, with a priority data of October 29, 1997, is not prior art
`to the ’241 patent. For this reason, we are not persuaded Petitioner has
`established a reasonable likelihood of prevailing in showing any of the
`challenged claims are unpatentable as obvious over Connery.
`
`III. CONCLUSION
`For the foregoing reasons, the information presented in the Petition
`does not establish a reasonable likelihood that Petitioner would prevail in
`showing the unpatentability of any challenged claim of the ’241 patent based
`on the ground asserted by Petitioner.
`
`IV. ORDER
`
`Accordingly, it is:
`
`ORDERED that the Petition is denied and no inter partes review is
`
`instituted.
`
`
`
`
`
`
`
`
`
`8
`
`
`
`IPR2017-01713
`Patent 7,337,241 B2
`
`PETITIONER:
`Garland T. Stephens
`Jeremy Jason Lang
`Adrian Percer
`WEIL, GOTSHAL & MANGES LLP
`garland.stephens@weil.com
`jason.lang@weil.com
`adrian.percer@weil.com
`
`PATENT OWNER:
`James M. Glass
`Joseph M. Paunovich
`Brian E. Mack
`QUINN EMANUEL URQUHART & SUKKIVAN LLP
`jmglass@quinnemanuel.com
`joepaunovich@quinnemanuel.com
`brianmack@quinnemanuel.com
`
`
`9
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
