Paper No. 14
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` Entered: August 14, 2015
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`Trials@uspto.gov
`571.272.7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`ORACLE CORPORATION,
`Petitioner,
`
`v.
`
`CROSSROADS SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00852
`Patent 7,051,147 B2
`____________
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`
`
`Before NEIL T. POWELL, KRISTINA M. KALAN, and J. JOHN LEE,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
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`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Motion for Joinder
`37 C.F.R. § 42.122(b)
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`

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`Case IPR2015-00852
`Patent 7,051,147 B2
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`INTRODUCTION
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`On March 6, 2015, Oracle Corporation (“Oracle”) filed a Petition
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`(Paper 1, “Pet.”) requesting inter partes review of claims 1–39 of U.S.
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`Patent No. 7,051,147 B2 (Ex. 1001, “the ’147 patent”). Concurrently with
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`the Petition, Oracle filed a Motion for Joinder (Paper 3, “Mot.”), requesting
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`that this proceeding be joined with Cisco Systems, Inc. v. Crossroads
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`Systems, Inc., Case IPR2014-01544 (“1544 IPR”). Mot. 1. Patent Owner
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`Crossroads Systems, Inc. (“Crossroads”) filed a Preliminary Response
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`(Paper 12, “Prelim. Resp.”) on June 22, 2015. Crossroads did not file an
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`opposition to the Motion for Joinder.
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`For the reasons discussed below, we institute an inter partes review of
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`all challenged claims and grant Oracle’s Motion for Joinder.
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`INSTITUTION OF INTER PARTES REVIEW
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`In the 1544 IPR, we instituted an inter partes review of claims 1–39
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`of the ’147 patent as allegedly unpatentable over the CRD Manual1 and the
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`HP Journal2 under 35 U.S.C. § 103. 1544 IPR, slip op. at 16 (PTAB Apr. 3,
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`2015) (Paper 9). The Petition in this proceeding challenges the same claims,
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`asserts an identical ground of unpatentability, and relies on the same
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`1 CMD TECHNOLOGY, INC., CRD-5500 SCSI RAID CONTROLLER USER’S
`MANUAL (Rev. 1.3, 1996) (Ex. 1004, “CRD Manual”).
`2 HEWLETT-PACKARD JOURNAL, Oct. 1996 (Ex. 1006, “HP Journal”). The
`HP Journal is a collection of articles dated October 1996. Ex. 1006, 1–3.
`The portions of the HP Journal relied on by Oracle share a common author,
`similar subject matter, and the same apparent publication date in the same
`issue of the journal. In its Preliminary Response, Crossroads does not
`dispute that one of ordinary skill would have combined the teachings of the
`different articles in the HP Journal cited by Oracle. Thus, for purposes of
`this Decision, we refer to these HP Journal articles together.
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`Case IPR2015-00852
`Patent 7,051,147 B2
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`evidence as presented in the 1544 IPR. Pet. 1; Mot. 1. Oracle represents
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`that the Petition “copies verbatim the challenges set forth in the petition in
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`[the 1544 IPR] and relies upon the same evidence, including the same expert
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`declaration.” Pet. 1 (citation omitted); see Mot. 1. In its Preliminary
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`Response, Crossroads does not present any arguments concerning the merits
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`of the ground of unpatentability asserted against the challenged claims.
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`Instead, Crossroads argues the Petition should be denied under 35
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`U.S.C. § 325(d). Prelim. Resp. 2–25. Specifically, Crossroads notes that
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`Oracle previously has filed two other petitions seeking inter partes review of
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`the same claims challenged in the Petition here. Id. at 3–4. According to
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`Crossroads, the present Petition is the product of Oracle’s improper efforts
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`to use the Board’s decision in one of the earlier-filed cases as a guide to
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`address deficiencies in its earlier petition. Id. at 11–14 (citing prior Board
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`decisions). Crossroads contends the present Petition represents “nothing
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`more than a ‘second bite at the apple,’” where the only difference compared
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`to earlier petitions “is the presence of additional reasoning to support the
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`assertion of unpatentability over the same prior art.” Id. at 10–11 (quoting
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`Samsung Elecs. Co. v. Rembrandt Wireless Techs., LP, Case IPR2015-
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`00118, slip op. at 6 (PTAB Jan. 28, 2015) (Paper 14)). Crossroads notes that
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`the Board’s rules must be “construed to secure the just, speedy, and
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`inexpensive resolution of every proceeding,” and asserts that instituting trial
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`on Oracle’s “harassing” Petition in this proceeding would frustrate that
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`purpose. Id. at 15–16 (quoting 37 C.F.R. § 42.1(b)). We are not persuaded
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`that denial of the Petition under § 325(d) is warranted.
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`The facts and circumstances of this case do not support Crossroads’s
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`allegations. Oracle filed earlier petitions in IPR2014-01207 (“1207 IPR”)
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`Patent 7,051,147 B2
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`and IPR2014-01209 (“1209 IPR”). Oracle Corp. v. Crossroads Systems,
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`Inc., Case IPR2014-01207, Paper 1 (PTAB July 25, 2014) (“1207 IPR
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`Petition”); Oracle Corp. v. Crossroads Systems, Inc., Case IPR2014-01209,
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`Paper 1 (PTAB July 25, 2014) (“1209 IPR Petition”). Cisco Systems, Inc.
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`and Quantum Corporation (“Cisco/Quantum”) filed the 1544 IPR on
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`September 25, 2014. 1544 IPR, Paper 3 (“1544 IPR Petition”). Decisions
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`on institution in the 1207 IPR and the 1209 IPR were issued on February 2,
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`2015, and January 30, 2015, respectively. 1207 IPR, Paper 12; 1209 IPR,
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`Paper 12. When Oracle filed the present Petition on March 6, 2015, it did
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`not base the Petition on the 1207 IPR Petition or the 1209 IPR Petition, nor
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`did it tailor the present Petition specifically to address issues raised in the
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`institution decisions in those earlier cases. Rather, it copied verbatim the
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`challenges presented in the 1544 IPR Petition, which was filed well before
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`the institution decisions in the 1207 IPR and the 1209 IPR. Mot. 1; Pet. 1.
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`Moreover, the present case can be distinguished from those cited by
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`Crossroads (see Prelim. Resp. 8–12, 16–25) because institution of the
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`present Petition would not subject Crossroads or the ’147 patent to any new
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`challenges. For example, in the Samsung/Rembrandt case, the latter-filed
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`petition challenged the same claims for which institution of an inter partes
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`review had been denied in a prior case. Samsung/Rembrandt, Case
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`IPR2015-00118, Paper 14 at 2; see also ZTE Corp. v. ContentGuard
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`Holdings, Inc., Case IPR2013-00454, slip op. at 2 (PTAB Sept. 25, 2013)
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`(Paper 12) (second petition challenging claims for which inter partes review
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`was previously denied); Unilever, Inc. v. Procter & Gamble Co., Case
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`IPR2014-00506, slip op. at 2 (PTAB July 7, 2014) (Paper 17) (same);
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`Butamax Advanced Biofuels LLC v. Gevo, Inc., Case IPR2014-00581, slip
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`op. at 2, 4 (PTAB Oct. 14, 2014) (Paper 8) (same); CustomPlay, LLC v.
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`ClearPlay, Inc., Case IPR2014-00783, slip op. at 2, 6 (PTAB Nov. 7, 2014)
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`(Paper 9) (same); Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations
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`LLC, Case IPR2014-01080, slip op. at 2 (PTAB Oct. 31, 2014) (Paper 17)
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`(same). Unlike Samsung/Rembrandt, Oracle’s present Petition presents only
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`challenges identical to those already instituted in the 1544 IPR, and Oracle
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`further seeks to join this proceeding with the 1544 IPR.3 Thus, instituting an
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`inter partes review based on the present Petition, and joining it with the
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`1544 IPR, would not prevent “the just, speedy, and inexpensive resolution”
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`of either the 1544 IPR or this proceeding.
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`In addition, differences exist between the arguments and evidence
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`presented in this proceeding and those presented in the 1207 IPR and the
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`1209 IPR. The sole ground of unpatentability asserted in the present Petition
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`is obviousness over the CRD Manual and the HP Journal. Pet. 9. In
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`addition to those references, the present Petition relies on the Declaration of
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`Andrew Hospodor, Ph.D. See, e.g., Pet. 18–22 (arguing that one of ordinary
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`skill would have been motivated to combine the teachings of the CRD
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`Manual and the HP Journal, citing as supporting evidence Dr. Hospodor’s
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`declaration testimony); see generally Ex. 1003 (Declaration of Andrew
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`Hospodor, Ph.D.).
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`Both the 1207 IPR Petition (challenging claims 14–39) and the 1209
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`IPR Petition (challenging claims 1–13), however, rely on different testimony
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`from a different witness—Professor Jeffrey S. Chase, Ph.D. See, e.g., 1207
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`3 As discussed further below, Oracle’s Motion for Joinder demonstrates that
`joining this proceeding with the 1544 IPR would cause no delay in the
`resolution of the 1544 IPR and would not add significantly to the burden on
`any party, including Crossroads.
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`IPR Petition 16–19 (citing Ex. 1010); 1209 IPR Petition 16–19 (citing
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`Ex. 1010). Also, although both petitions rely on the same CRD Manual as
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`the present Petition, they advance grounds of unpatentability combining the
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`CRD Manual with teachings from the CRD-5500 Data Sheet,4 and the Smith
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`article.5 1207 IPR Petition 5; 1209 IPR Petition 5. The present Petition,
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`however, does not include the CRD-5500 Data Sheet as the basis for any
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`asserted ground of unpatentability. Further, although the Smith article is
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`included in the HP Journal relied on in this proceeding, the present Petition
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`further relies on other portions of the HP Journal that were not included in
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`either the 1207 IPR Petition or the 1209 IPR Petition. See Pet. 4, 6, 18–21,
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`28–29, 35, 37–38, 45, 50, 58 (citing Ex. 1006, 94–96 (portions of Meryem
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`Primmer, An Introduction to Fibre Channel, HEWLETT-PACKARD JOURNAL,
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`Oct. 1996)); see also id. at 4, 18, 19 (citing Ex. 1006, 5 (portions of C. L.
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`Leath, In This Issue, HEWLETT-PACKARD JOURNAL, Oct. 1996)). Although
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`Crossroads is correct that there are some similarities between the present
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`Petition’s arguments and cited evidence, and those of the 1207 IPR Petition
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`and the 1209 IPR Petition, we are not persuaded denial of the present
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`Petition under § 325(d) is warranted based on the facts and circumstances of
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`this case.
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`Denial of a petition under § 325(d) is discretionary, not mandatory.
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`See 35 U.S.C. § 325(d) (“[The Board, on behalf of the Director,] may take
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`4 The “CRD-5500 Data Sheet” is a document describing a product, the CRD-
`5500 RAID Disk Array Controller. 1207 IPR, Ex. 1004. It was also filed in
`the present proceeding as Exhibit 1005.
`5 Judith A. Smith & Meryem Primmer, Tachyon: A Gigabit Fibre Channel
`Protocol Chip, HEWLETT-PACKARD JOURNAL, Oct. 1996. 1207 IPR,
`Ex. 1005 (“Smith article”). The Smith article is one of the articles included
`in the HP Journal relied on in this proceeding. See Ex. 1006, 99–112.
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`into account whether, and reject the petition or request because, the same or
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`substantially the same prior art or arguments previously were presented to
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`the Office.”) (emphasis added). Based on the parties’ arguments and the
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`present record, we decline to exercise that discretion.
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`Consequently, for the above reasons, and in view of the fact that the
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`present Petition is virtually identical to the petition in the 1544 IPR, we
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`determine Oracle has demonstrated sufficiently under 35 U.S.C. § 314 that
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`an inter partes review should be instituted in this proceeding on the same
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`ground of unpatentability as the ground on which we instituted inter partes
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`review in the 1544 IPR.
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`MOTION FOR JOINDER
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`An inter partes review may be joined with another inter partes
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`review, subject to certain statutory provisions:
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`(c) JOINDER.—If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311
`that
`the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter parties review under section 314.
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`35 U.S.C. § 315(c); see also 37 C.F.R. § 42.122. As the moving party,
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`Oracle bears the burden of proving that it is entitled to the requested relief.
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`37 C.F.R. § 42.20(c).
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`As an initial matter, the Motion for Joinder meets the requirements of
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`37 C.F.R. § 42.122(b) because the Motion was filed on March 6, 2015
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`(Paper 4, 1), which is not later than one month after the 1544 IPR was
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`instituted on April 3, 2015 (1544 IPR, Paper 9).
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`Additionally, the present Petition challenges the same claims of the
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`same patent as those under inter partes review in the 1544 IPR, and the
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`Petition also asserts the same ground of unpatentability based on the same
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`prior art and the same evidence, including the same declaration testimony.
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`Mot. 1; compare Pet. 9, with 1544 IPR, Paper 3 at 9. The present Petition
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`does not advance any other grounds of unpatentability, or present any new
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`evidence not already of record in the 1544 IPR. Indeed, the Petition repeats
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`verbatim most of the content of the petition in the 1544 IPR. See Mot. 5.
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`Oracle further asserts that granting joinder would not require any
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`alterations to the existing scheduling order in the 1544 IPR. Id. at 6.
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`Moreover, Oracle represents that it “has agreed to not materially participate
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`in the joined proceedings unless and until the parties to IPR2014-01544 are
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`dismissed from the joined proceedings or elect to transfer control to
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`[Oracle], as may occur in the event of settlement or advanced settlement
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`negotiations.” Id. at 2. As such, Oracle “does not intend to file separate
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`papers or conduct separate cross examinations of any witnesses,” if joined to
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`the 1544 IPR. Id. at 5. Oracle also represents that the petitioners in the 1544
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`IPR do not oppose joinder of the present proceeding. Id. at 1–2. As
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`previously noted, Crossroads did not file an opposition to Oracle’s Motion
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`for Joinder.
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`Based on the facts and circumstances discussed above, Oracle has
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`established good cause for joining this proceeding with the 1544 IPR.
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`Joinder of this proceeding with the 1544 IPR will not require any delay or
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`modification to the scheduling order already in place for the 1544 IPR.
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`Crossroads will not be unduly prejudiced by the joinder of these
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`proceedings, and joining Oracle’s identical challenges to those in the 1544
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`Case IPR2015-00852
`Patent 7,051,147 B2
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`IPR will lead to greater efficiency while reducing the resources necessary
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`from both Crossroads and the Board. Thus, we conclude that granting the
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`Motion for Joinder under these circumstances would help “secure the just,
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`speedy, and inexpensive resolution” of these proceedings. See 37 C.F.R.
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`§ 42.1(b); Microsoft Corp. v. Proxyconn, Inc., Case IPR2013-00109, slip op.
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`at 2–3 (PTAB Feb. 23, 2013) (Paper 15) (representative).
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`It is
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`ORDER
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`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review in
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`IPR2015-00852 is hereby instituted for claims 1–39 of the ’147 patent on the
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`ground of unpatentability over the CRD Manual and the HP Journal under
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`35 U.S.C. § 103;
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`FURTHER ORDERED that Oracle’s Motion for Joinder is granted;
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`FURTHER ORDERED that IPR2015-00852 is hereby joined with
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`IPR2014-01544;
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`FURTHER ORDERED that the ground of unpatentability on which
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`trial was instituted in IPR2014-01544 is unchanged and remains the sole
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`ground on which trial has been instituted;
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`FURTHER ORDERED that the Revised Scheduling Order entered in
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`IPR2014-01544 (Paper 14) is unchanged and shall govern the schedule of
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`the joined proceeding;
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`FURTHER ORDERED that Oracle, Cisco Systems, Inc., and
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`Quantum Corporation will file all papers jointly in the joined proceeding as
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`consolidated filings, and will identify each such paper as “Consolidated,”
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`except for papers that involve fewer than all three of these parties;
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`Case IPR2015-00852
`Patent 7,051,147 B2
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`FURTHER ORDERED that IPR2015-00852 is terminated under
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`37 C.F.R. § 42.72, and all further filings in the joined proceeding are to be
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`made in IPR2014-01544;
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`FURTHER ORDERED that a copy of this Decision will be entered
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`into the record of IPR2014-01544; and
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`FURTHER ORDERED that the case caption in IPR2014-01544 shall
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`be modified to reflect joinder with this proceeding in accordance with the
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`attached example.
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`Case IPR2015-00852
`Patent 7,051,147 B2
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`PETITIONER:
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`Greg H. Gardella
`Scott A. McKeown
`OBLON LLP
`cpdocketgardella@oblon.com
`cpdocketmckeown@oblon.com
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`PATENT OWNER:
`
`Russell Wong
`James Hall
`WONG, CABELLO, LUTSCH, RUTHERFORD & BRUCCULERI, LLP
`crossroadsipr@counselip.com
`
`Steven R. Sprinkle
`John L. Adair
`SPRINKLE IP LAW GROUP
`crossroadsipr@sprinklelaw.com
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`Trials@uspto.gov
`571.272.7822
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`
`
`
`
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` Paper No. 14
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` Entered: August 14, 2015
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`
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`Example Case Caption for Joined Proceeding
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`CISCO SYSTEMS, INC., QUANTUM CORPORATION,
`and ORACLE CORPORATION,
`Petitioners,
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`v.
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`CROSSROADS SYSTEMS, INC.,
`Patent Owner.
`____________
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`Case IPR2014-015441
`Patent 7,051,147 B2
`____________
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`1 Case IPR2015-00852 has been joined with this proceeding.