UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
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`CAVIUM, INC.,
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`Petitioner,
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`v.
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`ALACRITECH INC.,
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`Patent Owner
`________________
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`Case IPR2018-00403
`U.S. Patent 8,805,948
`________________
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`PATENT OWNER'S PRELIMINARY RESPONSE
`PURSUANT TO 35 U.S.C. § 313 AND 37 C.F.R. § 42.107
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`Case No. IPR2018-00403
`U.S. Patent No. 8,805,948
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`INTRODUCTION .................................................................................1
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`OVERVIEW OF THE '948 PATENT ...................................................6
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`A.
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`B.
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`The '948 Patent Specification ......................................................6
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`The '948 Patent Claims ............................................................ 11
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`III.
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`PROSECUTION HISTORY OF THE '948 PATENT ....................... 11
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`IV. OVERVIEW OF THE ALLEGED PRIOR ART .............................. 12
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`A.
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`B.
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`C.
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`Thia, A Reduced Operation Protocol Engine (ROPE) for
`a Multiple-layer Bypass Architecture (1995) ("Thia") ............ 13
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`Tanenbaum, Computer Networks, 3rd ed. (1996)
`("Tanenbaum") ......................................................................... 17
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`Stevens, TCP/IP Illustrated Volume 2: The
`Implementation ("Stevens2") (Ex. 1013) ................................. 19
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`V.
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`CLAIM CONSTRUCTION ............................................................... 21
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`VI. THE BOARD SHOULD EXERCISE ITS DISCRETION
`UNDER 35 U.S.C. § 314(A) AND 37 C.F.R. § 42.108(A) TO
`DENY INSTITUTION OF ANY CLAIM OF THE '948
`PATENT ............................................................................................. 21
`
`A. All Factors Weigh in Favor of The Board Exercising its
`Discretion to Deny Institution of the Second Petition
`under 35 U.S.C. § 314(a) ......................................................... 22
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`1.
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`2.
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`3.
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`4.
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`First Factor: Cavium Has Filed Two Petitions
`Directed to the Same Claims of the '948 Patent on
`the Same Ground ........................................................... 23
`Second Factor: Cavium Held Back Alleged
`Evidence and Arguments from the First Petition
`that it Now Seeks to Add in the Second Petition ........... 24
`Third Factor: Cavium Had Alacritech's
`Preliminary Response to the First Petition and the
`Board's Decision Denying the First Petition at the
`time the Second Petition Was Filed ............................... 26
`Fourth Factor: Cavium Waited Months Between
`First Learning of Stevens2 reference, the
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`5.
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`6.
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`7.
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`Deficiencies in its First Petition, and the Filing of
`the Second Petition ........................................................ 27
`Fifth Factor: Cavium Offers No Explanation for
`the Time Elapsed Between Filing the First and
`Second Petitions Challenging The Same Claims
`Using The Same Ground................................................ 29
`Sixth Factor: Cavium's Serial, Incremental
`Petitions Waste Finite Resources of the Board ............. 30
`Seventh Factor: Cavium's Serial, Incremental
`Petitions Risk Issuance of a Final Determination
`Within One Year ............................................................ 31
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`B.
`
`The Board Also Should Exercise its Discretion to Deny
`Institution of the Second Petition Under 35 U.S.C. §
`325(d) ....................................................................................... 32
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`VII. EVEN IF THE BOARD DOES NOT EXERCISE ITS
`DISCRETION TO DENY THE THIRD PETITION, CAVIUM
`STILL HAS NOT MADE A SUFFICIENT THRESHOLD
`SHOWING THAT STEVENS2 IS AVAILABLE AS PRIOR
`ART .................................................................................................... 34
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`VIII. CAVIUM HAS NOT SUFFICIENTLY SHOWN A
`MOTIVATION TO COMBINE THIA WITH TANENBAUM
`OR STEVENS2 .................................................................................. 39
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`IX. CAVIUM HAS NOT SHOWN A DISCLOSURE OF PACKET
`PROCESSING FOR THE "CHECKING" LIMITATIONS OF
`THE CHALLENGED CLAIMS ........................................................ 41
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`X. ALACRITECH RESERVES ITS RIGHTS UNDER THE
`PENDING OIL STATES CASE AT THE UNITED STATES
`SUPREME COURT ........................................................................... 48
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`XI. CONCLUSION .................................................................................. 48
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`TABLE OF AUTHORITIES
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`Cases
`Alacritech, Inc. v. CenturyLink, Inc.,
`2:16-cv-00693-JRG-RSP (E.D. Tex.) ......................................................... 6
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`Alacritech, Inc. v. Wistron Corp.,
`2:16-cv-00692-JRG-RSP (E.D. Tex.) ......................................................... 6
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`Alacritech, Inc. v. Dell Inc.,
`2:16-cv-00695-RWS-RSP (E.D. Tex.) ........................................................ 6
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`Apple Inc., v. DSS Technology Management, Inc.,
`Case IPR2015-00369 (PTAB Aug. 12, 2015) ....................................... 4, 28
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`Beckman Instruments v.LKB Produkter AB,
`892 F.2d 1547, 13 USPQ2d 1301 (Fed. Cir. 1989)................................... 13
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`Butamax Advanced Biofuels LLC, v. Gevo, Inc.,
`Case IPR2014-00581 (PTAB Oct. 14, 2014) ............................................ 29
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`Cisco Systems, Inc. v. C-Cation Techs., LLC,
`IPR2014-00454 (PTAB Aug. 29, 2014) ................................................... 36
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`Coalition for Affordable Drugs IV LLC v. Pharmacyclics, Inc,
`IPR2015-01076 (PTAB Oct.19, 2015) ...................................................... 36
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`Duk San Neolux Co., Ltd. v. Idemitsu Kosan Co., Ltd.,
`Case IPR2017-00197 (PTAB March 31, 2017) ........................................ 26
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`Dynamic Drinkware LLC v. Nat'l Graphics, Inc.,
`800 F.3d 1375, 1379 (Fed. Cir. 2015) ....................................................... 33
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`General Plastic Industrial Co., LTD. v. Canon Kabushiki Kaisha,
`Case IPR2016-01357 (PTAB September 6, 2017) ................... 3, 20, 22, 29
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`Harmonic, Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) ................................................................. 20
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`LG Electronics, Inc. v. Core Wireless Licensing S.A.R.L.,
`IPR2016-00986 (PTAB August 22, 2016) .................................................. 3
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`Nvidia Corp. v. Samsung Electronics Co., LTD.,
`Case IPR2016-00134 (PTAB May 4, 2016) ............................. 3, 20, 22, 29
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`Oil States Energy Servs. LLC v. Greene's Energy Group, LLC,
`Case No. 16-712, certiorari granted (U.S. Jun. 12, 2017) ....................... 47
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`Samsung Elec. Co. v. Rembrandt Wireless Techs., LP,
`Case IPR2015-00114 (PTAB Jan. 28, 2015) ............................................ 29
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`Sketchers USA, Inc., v. Adidas, AG.,
`IPR2017-00322 (PTAB May 30, 2017) .............................................. 20, 29
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`Symbol Techs. Inc. v. Opticon Inc.,
`935 F.2d 1569, 19 USPQ2d 1241 (Fed. Cir. 1991)................................... 13
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`Xactware Sols., Inc. v. Eagle View Techs., Inc.,
`Case IPR2017-00034 (PTAB April 13, 2017) .......................................... 29
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`Statutory Authorities
`35 U.S.C. § 102 ......................................................................................... 2, 22
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`35 U.S.C. § 103 ............................................................................................. 13
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`35 U.S.C. § 311(b) .................................................................................... 2, 22
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`35 U.S.C. § 314 ............................................................................................... 3
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`35 U.S.C. § 314(a) .............................................................................. 3, 20, 47
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`35 U.S.C. § 316(a)(11) ............................................................................ 21, 30
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`35 U.S.C. § 325(d) ............................................................ 3, 20, 21, 31, 32, 33
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`Rules and Regulations
`37 C.F.R. § 42.1(b) ....................................................................................... 30
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`37 C.F.R. § 42.108 .......................................................................................... 3
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`37 C.F.R. § 42.108(a) ............................................................................... 3, 20
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`37 C.F.R. § 42.123(a) ............................................................................... 4, 28
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`Additional Authorities
`Thia, A Reduced Operation Protocol Engine (ROPE) for a Multiple-
`layer Bypass Architecture (1995) .............................................................. 12
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`U.S. Patent No. 8,805,948 .............................................................................. 1
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`PATENT OWNER'S LIST OF EXHIBITS
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`Exhibit #
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`Description
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`Ex. 2001
`
`Not used
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`Ex. 2002
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`Defendant's Invalidity Contentions in Case Nos. 2:16-cv-
`693-RWS-RSP (lead case), 2:16-cv-692-RWS-RSP, and
`2:16-cv-695-RWS-RSP, dated November 11, 2016.
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`Case No. IPR2018-00403
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`I.
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`INTRODUCTION
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`Cavium's Second Petition (Paper 1, IPR2018-00403, hereinafter "Second
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`Petition") requests Inter Partes Review ("IPR") of claims 1, 3, 6-8, 17, 19 and 21-
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`22 ("the Challenged Claims") of U.S. Patent No. 8,805,948 ("the '948 patent").
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`Cavium and its co-petitioner (Intel Corporation)1 have now filed four
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`petitions against the Challenged Claims asserting the "identical" ground, art, and
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`arguments. See Second Petition at 14, 17 (Challenged Claims over Thia in view of
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`Tanenbaum in further view of Stevens2); see also Paper 1 at 14, IPR2017-01729
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`(hereinafter "First Petition"); Paper 1 at 15, 2017-01395; Paper 1 at 18, IPR2018-
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`00234. The table below summarizes the flood of IPRs filed against the Challenged
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`Claims:
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`Review No.
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`Petitioner
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`Filing
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`References
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`Date
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`IPR2017-01395
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`Intel Corp.
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`05/09/2017 Thia, Tanenbaum, Stevens2
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`IPR2017-01729 Cavium, Inc. 07/01/2017 Thia, Tanenbaum, Stevens2
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`IPR2018-00234 Intel Corp.
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`11/22/2017 Thia, Tanenbaum, Stevens2
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`IPR2018-00403 Cavium, Inc. 12/27/2017 Thia, Tanenbaum, Stevens2
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`1 Cavium and Intel are co-defendants in the underlying litigation. They have filed
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`the same or substantially the same petitions against the '948 patent.
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`The Board has carefully considered Cavium and its co-petitioner's proposed
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`ground and arguments, and held (repeatedly) that they do not demonstrate that
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`Cavium will prevail with respect to any Challenged Claim because Stevens2 (Ex.
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`1013) is not a "printed publication" within the meaning of 35 U.S.C. §§ 102 and
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`311(b). Papers 8 and 13, IPR2017-01395; Paper 8, IPR2017-01729. Cavium's
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`Second Petition is the third time the Board is being asked to reconsider this
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`holding. See also Paper 10, IPR2017-01395 ; Paper 1, IPR2018-00234.
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`Cavium's Second Petition claims to fix the deficiencies in the First Petition
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`surrounding the lack of public availability of the Stevens2 document by including a
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`"new" declaration from Dr. Ingrid Hsieh-Yee (Ex. 1065).2 Second Petition at 17.
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`Remarkably, however, after getting multiple stabs at this issue, Cavium's "new"
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`declaration is completely irrelevant to this proceeding. Indeed, the Hsih-Yee
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`declaration does not include a single mention of the Stevens2 document, is not
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`directed to the '948 patent, and does not have any relevance to this IPR
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`proceeding. See generally Ex. 1065. The declaration relates to a so-called "SMB
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`Publication" that is at issue in other proceedings between Cavium and Alacritech.
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`2 While the Second Petition states it includes "two new evidentiary declarations"
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`(Second Petition at 17), only one, Dr. Hsieh-Yee's declaration (Ex. 1065), is
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`actually included. Compare Second Petition at vi-x with First Petition at vii-x.
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`See IPR2018-00400.3 Cavium's remaining exhibits (Exs. 1067-1076) and
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`arguments attempting to address the public availability of Stevens2 have already
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`been considered and rejected by the Board. Compare Second Petition at 17 (new
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`exhibits are allegedly "examples of references citing to Ex. 1013") with Paper 13 at
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`5, IPR2017-01395 (denying rehearing request and arguments that Stevens2 was a
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`"known resource," was "widely cited," and "Alacritech patents cite" Stevens2); see
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`also IPR2017-01395, Ex. 1003 n.3.
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`This case presents a plain example of serial abuse of the IPR proceedings.
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`Cavium and Intel have been given every opportunity to prove public availability of
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`their relied-upon references, and have failed to do so at every step. Alacritech thus
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`requests that the Board exercise its discretion and deny this Second Petition. See
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`35 U.S.C. §§ 314, 325(d); 37 C.F.R. § 42.108. As explained more fully in Section
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`VI, all of the factors applicable to determining whether the Board should exercise
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`its discretion to consider a serial petition weigh against institution. See 35 U.S.C
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`3 The Second Petition's attempt to make a thresholding showing that Stevens2
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`was available as prior art is even more deficient than the First Petition. Where as
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`the "Stansbury Declaration" (First Petition, Ex. 1063) relied upon in Cavium's First
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`Petition at least mentioned Stevens2, the Hsieh-Yee declaration (Second Petition,
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`Ex. 1065) substituted into the Second Petition fails to mention Stevens2.
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`§§ 314(a), 325(d); 37 C.F.R. § 42.108(a); Nvidia Corp. v. Samsung Electronics
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`Co., LTD., Case IPR2016-00134, slip op. at 6-12, (PTAB May 4, 2016) (Paper 9);
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`General Plastic Industrial Co., LTD. v. Canon Kabushiki Kaisha, Case IPR2016-
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`01357, slip op. at 8-11, 15-22, (PTAB September 6, 2017) (Paper 19); LG
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`Electronics, Inc. v. Core Wireless Licensing S.A.R.L., IPR2016-00986, slip op. at
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`6-15 (PTAB August 22, 2016) (Paper 12). Cavium has engaged in what the Board
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`has characterized as "undesirable incremental-petitioning," relying on Alacritech's
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`Preliminary Responses and the Board's decisions in the prior proceedings—
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`involving the same parties, patent, claims, references and arguments—to mount a
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`second attack against the challenged claims after an unsuccessful first attack.
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`Importantly, Cavium does not claim that its Second Petition includes any new
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`evidence that was unavailable to it or could not have been filed with the First
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`Petition. In fact, Cavium claims that it withheld the evidence from the First
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`Petition because it believed it could address "defective evidentiary declarations
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`using the supplemental information procedures of 37 C.F.R. § 42.123(a)." Second
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`Petition at 21. Such a belief is unreasonable, as the Board has made abundantly
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`clear. See, e.g., Apple Inc., v. DSS Technology Management, Inc., Case IPR2015-
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`00369, slip. op. at 10–11 (P.T.A.B. Aug. 12, 2015) (Paper 14); see also Paper 10 at
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`10, IPR2017-01402.
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`Other reasons support denial here as well.4 Despite having a road map for
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`its Second Petition, Cavium still has not made a sufficient threshold showing that
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`Stevens2 qualifies as a "printed publication" in the Second Petition. See Section
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`VII. For example, Cavium relies primarily on Exhibits 1065 and 1066 to make a
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`threshold showing that Stevens2 is admissible prior art. Second Petition at 14
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`("Stevens2 is prior art under §102(b) as it was published in January 1995 and was
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`accessible to the public at least as early as February 1995 and no later than April
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`1995. See Exs. 1065-1066."), 17 n.2 ("Exhibit 1013 is a true and correct copy of
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`the original version of Stevens2 held at the Library of Congress. Exs. 1065-
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`1066."). But as already explained, Exhibit 1065 does not mention Stevens2 and is
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`entirely unrelated to this proceedings. Similarly, Exhibit 1066 is a series of
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`unexplained characters and numbers whose relationship to Stevens2, if any, is
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`unclear. And the Board has already determined Cavium's attempt to rely upon
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`alleged citations to Stevens2 is insufficient. See Paper 13 at 5, IPR2017-01395.
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`4 Alacritech reserves the right to challenge any grounds or facts raised in the
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`Second Petition in these proceedings in the event that the Board institutes trial.
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`Nothing in this Preliminary Response shall be construed as a waiver of any such
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`challenge, or an acknowledgement or agreement not to dispute the sufficiency of
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`Cavium's representations, evidence or arguments for any claim of the '948 Patent.
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`Further, even if the Board does not exercise its discretion to deny the Second
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`Petition and revisits its prior decisions relating to the Stevens2 reference, Petitioner
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`has not sufficiently shown a motivation to combine Thia with Tanenbaum or
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`Stevens2, nor the claimed "check[ing] . . . the packets" limitations in the relied-
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`upon references. See Sections VIII-IX. These deficiencies infect the entire Second
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`Petition, and the appropriate remedy is to deny institution.
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`For all these reasons, the Second Petition does not give rise to a reasonable
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`likelihood that Cavium will prevail with respect to any challenged claim of '948
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`patent, and the Board should therefore deny institution of review.5
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`II. OVERVIEW OF THE '948 PATENT6
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`A. The '948 Patent Specification
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`The '948 patent is directed to accelerated network processing using an
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`intelligent network interface card (INIC) that provides "a fast-path that avoids host
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`protocol processing for most large multipacket messages, greatly accelerating data
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`5 Alacritech also reserves its rights under the Oil States case pending before the
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`U.S. Supreme Court, as set forth in Section X of this Preliminary Response.
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`6 The '948 patent is the subject of co-pending consolidated litigations, Alacritech,
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`Inc. v. CenturyLink, Inc., 2:16-cv-00693-JRG-RSP (E.D. Tex.); Alacritech, Inc. v.
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`Wistron Corp., 2:16-cv-00692-JRG-RSP (E.D. Tex.); and Alacritech, Inc. v. Dell
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`Inc., 2:16-cv-00695-RWS-RSP (E.D. Tex.) ("the Litigations").
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`communication." Ex. 1001 at Abstract. As explained in the patent background,
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`when a conventional NIC prepares to send data from a first host to a second host,
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`"some control data is added at each layer of the first host regarding the protocol of
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`that layer, the control data being indistinguishable from the original (payload) data
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`for all lower layers of that host." Id. at 2:39-42. For example,
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`an application layer attaches an application header to the payload data
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`and sends the combined data to the presentation layer of the sending
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`host, which receives the combined data, operates on it and adds a
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`presentation header to the data, resulting in another combined data
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`packet. The data resulting from combination of payload data,
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`application header, and presentation header is then passed to the
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`session layer, which performs required operations including attaching
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`a session header to the data and presenting the resulting combination
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`of data to the transport layer. This process continues as the
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`information moves to lower layers, with a transport header, network
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`header, and data link header and trailer attached to the data at each of
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`those layers, with each step typically including data moving and
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`copying, before sending the data as bit packets over the network to the
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`second host.
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`Id. at 2:42-57.
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`This process of adding a layer header to the data from the preceding layer is
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`sometimes referred to as "encapsulation" because the data and layer header is
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`treated as the data for the immediately following layer, which, in turn, adds its own
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`layer header to the data from the preceding layer. Each layer is generally not
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`aware of which portion of the data from the preceding layer is the preceding layer
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`header of user data; as such, each layer treats the data it receives from the
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`preceding layer as a generic payload. Id.
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`On the receiving side, the receiving host generally performs the reverse of
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`the sending process, beginning with receiving the bit packets from the network. Id.
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`at 2:58-60. Headers are removed, one at a time, and the received data is processed,
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`in order, from the lowest (physical) layer to the highest (application) layer before
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`transmission to a destination within the receiving host (e.g., to the operating system
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`space where the received data may be used by an application running on the
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`receiving host). Id. at 2:60-63. Each layer of the receiving host recognizes and
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`manipulates only the headers associated with that layer, since to that layer the
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`higher layer header data is included with and indistinguishable from the payload
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`data. Id. at 2:63-66. "Multiple interrupts, valuable central processing unit (CPU)
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`processing time and repeated data copies may also be necessary for the receiving
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`host to place the data in an appropriate form at its intended destination." Id. at
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`2:66-3:3.
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`The host CPU processes the data by constructing (transmit side) or
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`destructing (receive side) the packet. The host CPU must be interrupted at least
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`one time per layer and, in response, the host CPU processes each layer, which
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`typically involves a copy and data manipulation operation (for example a
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`checksum computation operation). An interrupt is a signal to the processor emitted
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`by hardware or software indicating an event that needs immediate attention. An
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`interrupt alerts the processor to a high-priority condition requiring the interruption
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`of the current code the processor is executing. Id. This process involved with
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`traditional network interface cards results in "repeated copying and interrupts to the
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`CPU" of the host computer. Id. at 3:59-62. When the host CPU is interrupted, it
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`generally must stop all other tasks it is currently working on, including tasks
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`completely unrelated to the network processing. Frequent interrupts to the host
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`CPU can be very disruptive to the host system generally and cause system
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`instability and degraded system performance. Id.
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`The invention of the '948 patent allows "data from the message to be
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`processed via a fast-path which accesses message data directly at its source or
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`delivers it directly to its intended destination." Id. at 3:53-57. The fast-path
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`"bypasses conventional protocol processing of headers that accompany the data"
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`and "employs a specialized microprocessor designed for processing network
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`communication, avoiding the delays and pitfalls of conventional software layer
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`processing, such as repeated copying and interrupts to the CPU." Id. at 3:57-62.
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`One embodiment of the fast-path is shown in Figure 6 of the '948 patent,
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`which is reproduced below. In this embodiment, the INIC performs at least the
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`network and transport layer processing (e.g., IP and TCP layer processing in
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`TCP/IP), freeing up the CPU on the host ("client") computer to do other tasks. The
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`fast-path also reduces or eliminates the number of interrupts sent to the CPU on the
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`host/client. An embodiment of the more traditional "slow-path" is also shown,
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`where the host/client is responsible for the IP and TCP layer processing. In the
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`slow-path, the CPU on the host/client is interrupted at least one time for each layer
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`for processing.
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`Advantageously, the claimed invention allows for more efficient network
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`processing by relieving the host CPU of per-frame processing and reducing the
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`number of interrupts. Id. at 9:1-5. For fast-path communications, only one
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`interrupt occurs at the beginning and end of an entire upper-layer message
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`transaction, and "there are no interrupts for the sending or receiving of each lower
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`layer portion or packet of that transaction." Id. at 9:5-10. As stated above, the
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`claimed arrangement allows for enhanced network and system performance, faster
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`data throughput, increased system stability, and an overall better user experience.
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`B.
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`The '948 Patent Claims
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`The '948 patent includes three independent claims. Notably, for this
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`Preliminary Response, both independent claims 1 and 17, which are at issue in the
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`Second Petition recite, inter alia, "checking […] whether the packets have certain
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`exception conditions, including […] whether the packets are IP fragmented, […]
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`have a FIN flag set, [and/or] […] are out of order." Id. at 19:43-20:7, 22:1-25.
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`As explained in Section IX, this claimed feature is not found in any of the
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`references cited by Cavium. Dependent claims 3, 6-8, 19, 21 and 22, all of which
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`are also at issue in the Second Petition, incorporate the same limitation missing in
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`independent claims 1 and 17.
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`III. PROSECUTION HISTORY OF THE '948 PATENT
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`The '948 patent was filed on September 26, 2013 as Application No.
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`14/038,297, which was a continuation of Application No. 09/692,561, filed
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`October 18, 2000, which was a continuation of Application No. 09/067,544, filed
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`April 27, 1998, which claims the benefit of Provisional Application No.
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`60/061,809, filed on October 14, 1997.
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`The '948 patent was subject to a thorough examination by Examiner
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`Moustafa M. Meky, who allowed the application on June 20, 2014 after
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`considering references (including Thia and Tanenbaum) disclosed by the Applicant
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`and after conducting the Examiner's own prior art search on June 16, 2014. Ex.
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`1002 at .111-.149. In connection with the allowed claims, the Examiner stated:
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`None of the prior art of record taken singularly or in combination
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`teaches or suggests a network interface of a host computer for
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`checking whether received packets have a certain exception
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`conditions, including whether the packets are IP fragmented, have a
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`FIN flag set, or out of order; processing any of the received packet
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`that have the exception conditions, and storing payload data of the
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`received packets that do not have any of the exception conditions in
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`a buffer of the host computer and without any TCP header stored
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`between the payload data of the received packets.
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`Ex. 1002 at .117 (emphasis added). An Issue Notification was mailed on July 23,
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`2014, and the '948 patent issued on August 12, 2014.
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`IV. OVERVIEW OF THE ALLEGED PRIOR ART
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`As described above, Cavium relies on Thia, Tanenbaum, and Stevens2,
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`which Cavium still has not established as prior art. These references, each alone or
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`in combination, fail to teach or suggest all the limitations recited in the claims of
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`the '948 patent. For example, the references are completely silent as to bypass
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`exception conditions that involve checking whether the packets are IP fragmented.
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`The sections below summarize the references and underscore their shortcomings.
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`A. Thia, A Reduced Operation Protocol Engine (ROPE) for a Multiple-
`layer Bypass Architecture (1995) ("Thia")
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`Thia appears on the face of the '948 patent under "References Cited" and
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`was initialed by the Examiner in an Information Disclosure Statement (IDS) dated
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`June 15, 2014. Ex. 1002 at .120-.144. Thia was therefore already considered and
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`allowed over by the Examiner during the prosecution of the '948 patent.
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`As an initial matter, Thia presents a "feasibility study for a new approach to
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`hardware assistance" and the "final step of generating a chip layout for fabrication
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`and fault analysis was not performed." Ex. 1015 at .002 and .008. Since Thia at
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`best discloses an inoperative device, it is a non-enabling reference. A non-
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`enabling reference is prior art under 35 U.S.C. § 103 only "for all that it teaches."
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`Beckman Instruments v.LKB Produkter AB, 892 F.2d 1547, 1551, 13 USPQ2d
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`1301, 1304 (Fed. Cir. 1989); see Symbol Techs. Inc. v. Opticon Inc., 935 F.2d
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`1569, 1578, 19 USPQ2d 1241, 1247 (Fed. Cir. 1991). The feasibility study
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`discloses at a high level the idea of offloading session and transport layer
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`processing to a Reduced Operation Protocol Engine ("ROPE") chip, but does not
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`teach many of the implementation details.
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`Thia describes a bypass stack such as the ROPE chip that provides a
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`hardware "fast path" for bulk data transfer. Ex. 1015 at .002-.003.
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`Id. at .003, Fig. 1 (adapted). Regarding the receive bypass test, Thia merely
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`discloses a test that matches headers of incoming data packets with a template
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`using header prediction:
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`Id. at .003 (adapted). Thia does not address exception conditions relating to the
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`bypass test.
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`Table 1 of Thia "identifies procedures which are strong candidates for
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`implementation in the bypass chip, and those which are better handled by the host,
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`during the data transfer phase." Id. at .006.
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`Id. As shown in the table, Thia identifies bypassable functions in the presentation
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`layer, the session layer, the transport layer, and all three of those layers. Thia,
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`however, does not address the bypass test or bypassable functions in relation to the
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`network layer, which is where fragmentation/segmentation occurs. Indeed, Thia
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`assumes that any packets that have been fragmented have been reassembled at the
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`receiver before being passed to the Transport layer. Id. at .013-.014 (stating: "In an
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`ATM system we assume that the segmentation and reassembly or SAR operation
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`would also be in hardware, since it is done frequently"; "The Segmentation and
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`Reassembly sublayer of the ATM adaption layer is a good place for
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`[segmentation/reassembly] functions").
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`B.
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`Tanenbaum, Computer Networks, 3rd ed. (1996) ("Tanenbaum")
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`Tanenbaum is the third edition of a textbook relating to computer networks.
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`As acknowledged by Petitioner, it too was already considered by the Examiner
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`during prosecution of the '948 patent, which was found to be allowable over
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`Tanenbaum. Second Petition at n.4. On pages 583-586, Tanenbaum describes
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`"fast" transport protocol data unit ("TPDU") processing. Ex. 1006 at .583-86. On
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`the sending side, Tanenbaum notes that "[i]n the normal case, the headers of
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`consecutive data TPDUs are almost the same." Id. at .583. In view of this
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`observation, a "prototype header" is defined. Id. In order to construct a packet for
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`transmission, at the TCP layer, the TCP prototype header is copied into the output
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`buffer, the sequence number is filled in, the TCP checksum is computed, and the
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`sequence number is incremented in memory. Id. at .584. Then, the TCP header
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`and data is handed "to a special IP procedure" at the IP layer, where the IP
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`prototype header is copied into the output buffer, the "Identification" field is
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`inserted, and the IP checksum is computed. Id. The packet is then ready for
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`transmission.
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`On the receive side, a "connection record" is stored in a hash table for
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`lookup (or the last record is tried first). Id. at .585. Then conditions for a special
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`"fast path" TCP procedure are checked:
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`The TPDU is then