NetApp Inc.v.Crossroads Systems, Inc.

Patent Trial and Appeal Board

Sep 3, 2015

09965335 (P.T.A.B. Sep. 3, 2015)

Trials@uspto.gov Paper 12
571-272-7822 Entered: September 3, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

NETAPP INC.,
Petitioner,

v.

CROSSROADS SYSTEMS, INC.,
Patent Owner.
____________

Case IPR2015-00777
Patent 6,425,035 B2
____________

Before NEIL T. POWELL, KRISTINA M. KALAN, J. JOHN LEE, and
KEVIN W. CHERRY, Administrative Patent Judges.

CHERRY, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
NetApp Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”),
requesting institution of an inter partes review of claims 1–14 of
U.S. Patent No. 6,425,035 B2 (Ex. 1001, “the ’035 patent”). Crossroads
Systems, Inc. (“Patent Owner”) timely filed a Preliminary Response (Paper
10, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314.
For the reasons below, based on the circumstances of this case, we
exercise our discretion under 35 U.S.C. § 325(d) to deny the Petition and,
therefore, decline to institute inter partes review.
A. The ’035 Patent (Ex. 1001)
The ’035 patent relates to a storage router and method for providing
virtual local storage on remote Small Computer System Interface (“SCSI”)
storage devices to Fiber Channel (“FC”) devices. Ex. 1001, 1:16–19.
Computing devices can access local storage through native low level, block
protocols, but to access the storage on a remote network server, they must
translate file system protocols into network protocols, which then are
translated by the remote network server into low level requests. Id. at 1:37–
60. A storage router can interconnect a SCSI storage transport medium and
a FC high speed serial interconnect to provide access to devices on the other
medium so that no network server is involved. Id. at 3:30–40.
The ’035 patent has 14 claims, all of which are being challenged.
Claims 1, 7, and 11 are the independent claims, and claim 1 is reproduced
below:
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1. A storage router for providing virtual local storage on
remote storage devices to devices, comprising:
a buffer providing memory work space for the
storage router;
a first controller operable to connect to and
interface with a first transport medium;
a second controller operable to connect to and
interface with a second transport medium; and
a supervisor unit coupled to the first controller, the
second controller and the buffer, the supervisor unit
operable to map between devices connected to the first
transport medium and the storage devices, to implement
access controls for storage space on the storage devices
and to process data in the buffer to interface between the
first controller and the second controller to allow access
from devices connected to the first transport medium to
the storage devices using native low level, block
protocols.
Id. at 9:13–31.
B. Challenges
Petitioner challenges the claims as follows, all on the basis of
obviousness:
References Claims
Challenged
CRD-5500 User Manual1,
CRD-5500 Data Sheet2, and
Smith3
1–14

1 CMD Technology, Inc., CRD-5500 SCSI RAID Controller User’s Manual,
(1996) (Ex. 1003).
2 CRD-5500 RAID Disk Array Controller, (Dec. 4, 1996),
http://web.archive.org/web/19961226091552/http:/www.cmd.com/brochure/
crd5500.htm (last visited July 23, 2014) (Ex. 1004).
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References Claims
Challenged
Kikuchi4 and Bergsten5 1–4 and 7–14
Kikuchi, Bergsten, and
Smith
5 and 6
Bergsten and Hirai6 3, 7–10 and 13

C. Related Proceedings
The ’035 patent is the subject of multiple district court proceedings.
Pet. 1; Exs. 1009, 1026, 1034, 1035, 1036; Paper 4, 2–3.
The ’035 patent is also involved in Cases IPR2014-01197 (“the ’1197
proceeding”), IPR2014-01226 (“the ’1226 proceeding”), IPR2015-00822,
IPR2015-00825, and IPR2015-01063. See Paper 4, 3–4. Further, the ’035
patent belongs to a family of patents that are or were the subject of multiple
inter partes review petitions, including: IPR2014-01207, IPR2014-01209,
IPR2014-01233, IPR2014-01463, IPR2014-01544, IPR2015-00772,
IPR2015-00773, IPR2015-00776, IPR2015-00852, IPR2015-00854,
IPR2015-01064, and IPR2015-01066. See id.
In the ’1197 proceeding, we determined that petitioners Oracle Corp.;
Huawei Technologies, Co., Ltd; and NetApp, Inc. demonstrated a reasonable
likelihood of prevailing on the grounds that (1) claims 1, 2, 4, 11, 12, and 14
are unpatentable over Bergsten and Hirai and (2) claims 5 and 6 are

3 Judith A. Smith and Meryem Primmer, Tachyon: A Gigabit Fibre Channel
Protocol Chip, Hewlett-Packard J., 1–17 (1996) (Ex. 1005).
4 U.S. Pat. No. 6,219,771 B1, iss. Apr. 17, 2001 (Ex. 1006).
5 U.S. Pat. No. 6,073,209, iss. June 6, 2000 (Ex. 1007).
6 JP Patent Application Publication No. Hei5[1993]-181609, published July
23, 1993 (Ex. 1008).
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unpatentable over Bergsten, Hirai, and Smith. Oracle Corp. v. Crossroads
Systems, Inc., Case IPR2014-01197, slip op. at 14–15 (PTAB Jan. 29, 2015)
(Paper 13) (“’1197 Dec.”).
We, however, declined to institute an inter partes review of:
(1) claims 1–14 as unpatentable over CRD-5500 User Manual, CRD-5500
Data Sheet, and Smith; (2) claims 1–4 and 7–14 as unpatentable over
Kikuchi and Bergsten; (3) claims 5 and 6 as unpatentable over Kikuchi,
Bergsten, and Smith; and (4) claims 3, 7–10, and 13 as unpatentable over
Bergsten and Hirai. Id. at 6–13.

II. DISCUSSION
The challenges that we did not institute in the ’1197 proceeding are
presented in the Petition in this case. Compare Pet. 3 with ’1197 Dec. 6–13.
Petitioner also states that “IPR2014-01197 . . . corresponds generally to this
petition.” Pet. 59; see also Prelim. Resp. 3–5 (asserting that same arguments
and evidence were presented in the ’1197 proceeding and that the instant
petition corrects the deficiencies of the petition in the ’1197 proceeding).
Patent Owner urges us to exercise our discretion under 35 U.S.C.
§ 325(d) to deny the present Petition because “it is nothing more than
Petitioner’s attempt at a ‘second bite at the apple,’” in that it is a “‘do-over’
Petition in an attempt to correct defects in the 1197 Petition,” and it “does
not raise any new prior art or evidence or offer any arguments that could not
have been submitted in the 1197 IPR.” Prelim. Resp. 1. Patent Owner also
responds that the Petition should be denied because it “raises substantially
the same prior art that was previously submitted in IPR2014-01226.”
Id. at 2.
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Patent Owner further argues that the present Petition should be denied
“because Kikuchi is not prior art to the ’035 Patent” and “because it fails to
identify all real parties-in-interest and is time-barred under 35 U.S.C.
§ 315(b).” Prelim. Resp. 2; see also id. at 27–33 (presenting arguments
regarding conception before the filing date of Kikuchi and diligent reduction
to practice), 34–39 (arguing petitioners in the ’1197 proceeding omitted for
the present case are real parties-in-interest).
In determining whether to institute an inter partes review, the Board
may “deny some or all grounds for unpatentability for some or all of the
challenged claims.” 37 C.F.R. § 42.108(b); see 35 U.S.C. § 314(a). Also, as
set forth in 35 U.S.C. § 325(d):
In determining whether to institute or order a proceeding under
this chapter, chapter 30, or chapter 31, the Director may take
into account whether, and reject the petition or request because,
the same or substantially the same prior art or arguments
previously were presented to the Office.
The Petition in this proceeding presents the same prior art and
substantially the same arguments previously presented in the ’1197
proceeding. As in the ’1197 proceeding, Petitioner relies on CRD-5500
User Manual, CRD-5500 Data Sheet, Smith, Kikuchi, Bergsten, and Hirai.
Compare Pet. 3 with ’1197 proceeding Paper 1, 5 (“’1197 Pet.”). Petitioner
also presents substantially the same arguments regarding the proposed
combinations of (1) the CRD-5500 User Manual, CRD-5500 Data Sheet,
and Smith; (2) Kikuchi and Bergsten; (3) Kikuchi, Bergsten, and Smith; and
(4) Bergsten and Hirai. Compare Pet. 6–57 with ’1197 Pet. 11–56. To the
extent that there are any substantive differences in the arguments or new
arguments, we agree with Patent Owner that those different or new
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arguments could have been submitted in the ’1197 proceeding. See Prelim.
Resp. 1. For the foregoing reasons, we determine that, in the present
Petition, the “same or substantially the same prior art or arguments
previously were presented to the Office” in the ’1197 proceeding.
Also, the Petition in this proceeding was filed less than a month after
our Decision to Institute in the ’1197 proceeding issued. The Petition itself
notes that “the Board declined to institute [in the ’1197 proceeding] on the
basis that the evidence was not presented in the petition in the manner
required by the rules” and contends that “this petition properly presents the
prior art by identifying all of the prior art evidence within the four corners of
the petition.” Pet. 59, 60. Thus, the Petition makes clear that this case has
been guided by, and has received the benefit of, seeing the decision
addressing nearly identical grounds in the ’1197 proceeding. See id. at 59–
60. Petitioner also would have had the benefit of seeing the decision in the
’1226 proceeding, instituted on January 30, 2015. ’1226 proceeding (PTAB
Jan. 30, 2015) (Paper 9). Absent a good reason, a subsequently filed petition
that only corrects defects identified by a Board decision in a prior petition is
not typically granted. See, e.g., Butamax Advanced Biofuels LLC v. Gevo,
Inc., Case IPR2014-00581, slip op. at 12–13 (PTAB Oct. 14, 2014)
(Paper 8). Petitioner’s contention that “this petition properly presents the
prior art by identifying all of the prior art evidence within the four corners of
the petition” and “is not filed for any improper purpose such as harassment
or delay” (id. at 60) does not amount to a persuasive reason to institute an
inter partes review in view of the circumstances of this case and its related
cases.
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Further, inter partes review in the ’1197 proceeding was instituted on
the grounds that: (1) claims 1, 2, 4, 11, 12, and 14 of the ’035 patent are
obvious over Bergsten and Hirai; and (2) claims 5 and 6 are obvious over
Bergsten, Hirai, and Smith. Claims 1–14 of the ’035 patent are also
involved in the ’1226 proceeding, in which inter partes review was
instituted on the grounds that: (1) claims 1–5 and 7–14 are obvious over the
CRD-5500 Manual and a reference containing Smith; and (2) claim 6 is
obvious over the CRD-5500 Manual, the reference containing Smith, and
another reference. ’1226 proceeding, slip op. at 15 (PTAB Jan. 30, 2015)
(Paper 9). Although the claims are not challenged by a combination
including the CRD-5500 Data Sheet or Kikuchi, a combination including at
least the CRD-5500 Manual and Smith challenges each claim of the ’035
patent in the ’1226 proceeding.
Based on the totality of the facts before us, we exercise our discretion
under 35 U.S.C. § 325(d) and deny the Petition in this proceeding.

III. CONCLUSION
For the foregoing reasons, based on the circumstances of this case, we
exercise our discretion under 35 U.S.C. § 325(d) and deny the Petition in
this proceeding.

IV. ORDER
Accordingly, it is
ORDERED that the Petition is denied as to claims 1–14 of U.S. Patent
No. 6,425,035 B2, and no trial is instituted.
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PETITIONER:
Greg H. Gardella
Scott A. McKeown
OBLON, McCLELLAND, MAIER & NEUSTADT, LLP
cpdocketgardella@oblon.com
cpdocketmckeown@oblon.com

PATENT OWNER:
Russell Wong
James Hall
BLANK ROME, LLP
CrossroadsIPR@blankrome.com

Steven R. Sprinkle
John L. Adair
SPRINKLE IP LAW GROUP
crossroadsipr@sprinklelaw.com