NetAppv.Crossroads Systems, Inc.

Patent Trial and Appeal Board

Feb 10, 2015

12910515 (P.T.A.B. Feb. 10, 2015)

Trials@uspto.gov Paper 8
571-272-7822 Entered: February 10, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

NETAPP INC.,
Petitioner,

v.

CROSSROADS SYSTEMS, INC.,
Patent Owner.
____________

Case IPR2014-01233
Patent 7,987,311 B2
____________

Before HYUN J. JUNG, NEIL T. POWELL, and KRISTINA M. KALAN,
Administrative Patent Judges.

POWELL, Administrative Patent Judge.

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

IPR2014-01233
Patent 7,987,311 B2

2
I. INTRODUCTION
A. Background
NetApp Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”),
requesting institution of an inter partes review of claims 1–28 of
U.S. Patent No. 7,987,311 B2 (Ex. 1001, “the ’311 patent”). Patent Owner
Crossroads Systems, Inc. (“Patent Owner”) timely filed a Preliminary
Response (Paper 7, “Prelim. Resp.”). We have jurisdiction under
35 U.S.C. § 314.
We determine that the information presented in the Petition does not
show that there is a reasonable likelihood that Petitioner would prevail with
respect to any challenged claim. Accordingly, we do not institute an inter
partes review of claims 1–28 of the ’311 patent.
II. DISCUSSION
A. The ’311 Patent
The ’311 patent relates to a storage router and method for providing
virtual local storage on remote Small Computer System Interface (“SCSI”)
storage devices to Fibre Channel (“FC”) devices. Ex. 1001, col. 1, ll. 47–50.
SCSI is a storage transport medium that provides for a “relatively small
number of devices to be attached over relatively short distances.” Id. at
col. 1, ll. 54–57. FC is a high speed serial interconnect that provides
“capability to attach a large number of high speed devices to a common
storage transport medium over large distances.” Id. at col. 1, ll. 59–63.
Computing devices can access local storage through low level, block
protocols and can access storage on a remote network server through
network interconnects. Id. at col. 2, ll. 1–13. To access the storage on the
remote network server, the computing device must translate its file system
IPR2014-01233
Patent 7,987,311 B2

3
protocols into network protocols, and the remote network server must
translate network protocols to low level requests. Id. at col. 2, ll. 15–24. A
storage router can interconnect the SCSI storage transport medium and the
FC high speed serial interconnect to provide devices on either medium
access to devices on the other medium so that no network server is involved.
Id. at col. 2, l. 61–col. 3, l. 4.
Figure 4 of the ’311 patent is reproduced below:

Figure 4 is a block diagram of an embodiment of a storage router. Id.
at col. 3, ll. 25–26, col. 5, ll. 34–35. Storage router 56 can comprise FC
controller 80 that interfaces with FC 52, and SCSI controller 82 that
interfaces with SCSI bus 54. Id. at col. 5, ll. 35–37. Buffer 84 connects to
FC controller 80 and SCSI controller 82 and provides memory work space.
Id. at col. 5, ll. 37–39. Supervisor unit 86 connects to FC controller 80,
SCSI controller 82, and buffer 84. Id. at col. 5, ll. 397–41. Supervisor unit
86 controls operation of storage router 56 and handles mapping and security
access for requests between FC 52 and SCSI bus 54. Id. at col. 5, ll. 41–44.
IPR2014-01233
Patent 7,987,311 B2

4
Claims 1 and 16 are the independent claims challenged by this
petition, and claim 1 is reproduced below:
1. A storage router for providing virtual local storage on
remote storage devices, comprising:
a first controller operable to connect to a first transport medium,
wherein the first medium is a serial transport medium;
a second controller operable to connect to a second transport
medium; and
a processing device coupled to the first controller, wherein the
processing device is configured to:
maintain a map to allocate storage space on the remote
storage devices to devices connected to the first
transport medium by associating representations of
the devices connected to the first transport medium
with representations of storage space on the remote
storage devices, wherein each representation of a
device connected to the first transport medium is
associated with one or more representations of
storage space on the remote storage devices;
control access from the devices connected to the first
transport medium to the storage space on the
remote storage devices in accordance with the map
and using native low level block protocol, further
comprising:
for a device connected to the first transport
medium, identifying LUNs for storage space
allocated to that device in the map;
presenting to that device only the identified LUNs
as available storage space; and
IPR2014-01233
Patent 7,987,311 B2

5
processing native low level block requests directed
to the identified LUNs from that device to
allow access to the storage space associated
with the identified LUNs.
B. Related Proceedings
Petitioner notes that the ’311 patent is the subject of the district court
proceeding Crossroads Systems, Inc. v. NetApp, Inc., Case No. 1-14-cv-
00149 (W.D. Tex.). Pet. 3 (citing Ex. 1027); see also Paper 5, 2.
Additionally, the ’311 patent belongs to a family of patents, a number of
which are involved in inter partes reviews or the subject of inter partes
review petitions, including Case Nos. IPR2014-01177, IPR2014-01197,
IPR2014-01207, IPR2014-01209, IPR2014-01226, and IPR2014-01463.
See Paper 5, 2–3.
C. Challenges
Petitioner challenges the claims as follows, all on the basis of
obviousness:

References Claims
Challenged
CRD-5500 User Manual,1
CRD-5500 Data Sheet,2 and
Smith3
1–28

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).
3 Judith A. Smith and Meryem Primmer, Tachyon: A Gigabit Fibre Channel
Protocol Chip, HEWLETT-PACKARD J., 1–17 (1996) (Ex. 1005).
IPR2014-01233
Patent 7,987,311 B2

6
References Claims
Challenged
Kikuchi4 and Bergsten5 1–28
Bergsten and Hirai6 1–28

D. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted 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);
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
2012). We determine that no express claim construction is required for
purposes of this decision.
E. Obviousness of Claims 1–28 over CRD-5500 User Manual, CRD-
5500 Data Sheet, and Smith
1. CRD-5500 User Manual (Ex. 1003)
The CRD-5500 User Manual discusses the CRD-5500 RAID
controller, teaching that the controller “provides high-performance, high
availability access to SCSI disk array subsystems along a Fast/Wide SCSI
bus.” Ex. 1003, 9.7 The CRD-5500 RAID controller includes a system

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 Japanese Patent Application Publication No. HEI 5[1993]-181609, pub.
July 23, 1993 (Ex. 1008).
7 In our citations to Exhibit 1003, we refer to the page number used in the
text added at the bottom right of each page to identify the document as
Exhibit 1003, rather than referring to the page numbers of the original
document. For example, the ninth page of Exhibit 1003 contains the original
page number “1-1,” as well as the added text “NetApp Exhibit 1003, pg. 9.”
When citing to this page, we refer to page 9, not page 1-1.
IPR2014-01233
Patent 7,987,311 B2

7
board and I/O channels for providing I/O to and from host computers or disk
drives connected to the controller. Id. at 21. The CRD-5500 User Manual
shows the CRD-5500 controller connecting a host and disk drives in Figure
1-1, reproduced below.

Id. at 10. Figure 1-1 of the CRD-5500 User Manual “shows an example of
how the controller’s drives may be combined in various ways to suit
different needs.” Id. at 9.
2. CRD-5500 Data Sheet (Ex. 1004)
The CRD-5500 Data Sheet states that “CMD’s CRD-5500 SCSI to
SCSI RAID controller is the industry’s best solution for building high
performance, high availability SCSI disk array subsystems.” Ex. 1004, 1.
The CRD-5500 Data Sheet also states that “[u]nlike other RAID controllers,
CMD’s advanced ‘Viper’ RAID architecture and ASICs were designed to
IPR2014-01233
Patent 7,987,311 B2

8
support tomorrow’s high speed serial interfaces, such as Fiberchannel
(FCAL) and Serial Storage Architecture (SSA).” Id.
3. Smith (Ex. 1005)
Smith discusses the “Tachyon chip” developed by the HP Networked
Computing Division. Ex. 1005, 3. Smith teaches that the Tachyon chip
“implements the FC-1 and FC-2 layers of the five-layer Fibre Channel
standard.” Id. Smith further teaches that the Tachyon chip “is easily
adaptable both to industry-standard and proprietary buses.” Id.
4. Discussion
The Petition argues that it would have been obvious to combine the
teachings of the CRD-5500 User Manual, the CRD-5500 Data Sheet, and
Smith “to enhance the communication and storage options of a host device
on a FC transport medium, benefit from the ‘Host LUN Mapping’ feature of
the CRD-5500 controller, and avail the host computing device of ubiquitous
mass storage applications (e.g., RAID).” Pet. 17. Specifically, the Petition
asserts that it would have been obvious to incorporate the Tachyon chip of
Smith into the system taught by the CRD-5500 User Manual. Id. at 18. The
Petition contends that the CRD-5500 Data Sheet explicitly suggests such a
combination. Id. at 17. In concert with this, the Petition describes a
“combined system” that results from combining certain teachings of the
CRC-5500 User Manual and Smith. Id. at 17–19.
Neither the Petition’s description of the “combined system” nor its
preceding discussion of the references addresses any specific limitation of
the challenged claims. See id. at 13–19. After explaining the configuration
of the “combined system,” however, the Petition offers a discussion that the
Petition contends “demonstrates the correspondence between the claim
IPR2014-01233
Patent 7,987,311 B2

9
terms and the structure and/or operation of the combined system of CRD-
5500 User Manual, CRD-5500 Data Sheet, and Smith.” Id. at 19–29.
Patent Owner argues that the Petition does not show where the
references teach the limitations of the claims. Prelim. Resp. 15. Patent
Owner contends that “Petitioner improperly uses the 140-page Chase
declaration to provide the necessary explanation, effectively expanding the
petition well over sixty pages in violation of 37 C.F.R. § 42.24(a)(1)(i).” Id.
As a specific example, Patent Owner points to the portion of the Petition
addressing the recitation in claim 1 of “a first controller operable to connect
to a first transport medium, wherein the first medium is a serial transport
medium.”8 Id. at 16. Patent Owner notes that the Petition addresses this
limitation with one sentence, citing only the Chase Declaration as supporting
evidence. Id. (citing Pet. 20). Patent Owner further notes that the portion of
the Petition addressing the limitations of claim 1 after the “first controller”
limitation does not contain a single citation to the references on which
Petitioner relies. Id. (citing Pet. 20–23).
Under our rules, the Petition must contain a “full statement of the
reasons for the relief requested, including a detailed explanation of the
significance of the evidence . . . .” 37 C.F.R. § 42.22(a)(2). We, therefore,
decline to consider information presented in a supporting declaration but not
discussed sufficiently in a petition; doing so would permit the use of
declarations to circumvent the page limits that apply to petitions. For the
same reasons, our rules prohibit arguments made in a supporting document
from being incorporated by reference into a petition. 37 C.F.R. § 42.6(a)(3).

8 The Petition refers to this limitation as reciting “a first controller operable
to connect to a first [serial] transport medium.” Pet. 20.
IPR2014-01233
Patent 7,987,311 B2

10
Given this, we agree with Patent Owner that the Petition does not
explain adequately how the references teach the limitations of the claims.
With respect to independent claim 1, the Petition’s one-sentence explanation
of how the references allegedly teach “a first controller operable to connect
to a first transport medium, wherein the first medium is a serial transport
medium” is not persuasive by itself. See Pet. 20 (“In the combined system,
the FCP-enabled host device interface module installed in the CRD-5500
controller is coupled to F[ibre] C[hannel], a serial transport media, on the
host side.”). Because we decline to consider information presented in a
supporting declaration but not sufficiently explained in the Petition, the
citations to the Chase Declaration do not cure the deficiency of the Petition
with respect to addressing the “first controller” limitation.
Following the “first controller” limitation, independent claim 1 recites
“a second controller operable to connect to a second transport medium.”
The Petition addresses this claim limitation with one sentence, citing only
the Chase Declaration as supporting evidence. Pet. 20. For the same
reasons that the Petition does not explain adequately how the references
teach or render obvious the “first controller” limitation, the Petition does not
explain adequately how the references teach or render obvious the “second
controller” limitation.
Following the “second controller” limitation, independent claim 1
recites a number of limitations related to “a processing device.” The Petition
also fails to explain adequately how the references teach these limitations.
In the portion addressing these limitations, the Petition repeatedly cites the
Chase Declaration as evidence. See id. at 20–23. Indeed, aside from the
Chase Declaration, this portion of the Petition only twice cites any other
IPR2014-01233
Patent 7,987,311 B2

11
evidence, specifically Exhibit 1009, which contains Patent Owner’s
infringement contentions from a district court proceeding. See id. at 22–23
(citing Ex. 1009, 35–36). The cited portions of Exhibit 1009 outline
relationships between the claim limitations and “NetApp E5400 Storage
Systems”; they do not demonstrate how the references on which Petitioner
relies teach or render obvious the limitations of independent claim 1. See
Ex. 1009, 35–36. Thus, the Petition does not explain which parts of the
references teach or render obvious each of the limitations related to the
claimed “processing device.” Indeed, in addition to not identifying
adequately which portions of the references Petitioner relies on, the Petition
addresses the multiple limitations related to the “processing device” by
grouping the limitations into two groups and then providing for each group
an extended discussion of “the combined system.” In these discussions, the
Petition does not explain which parts of “the combined system” purportedly
correspond to which specific limitations. See Pet. 20–23.
With respect to independent claim 16, the Petition asserts that this
claim is similar to claim 1, that “[t]he discussion set forth above of claim 1
applies with equal force to claim 16,” and that Professor Chase provides a
detailed explanation regarding claim 16. Pet. 28. By relying on the
inadequate explanation regarding independent claim 1 and incorporation of
the testimony in the Chase Declaration, the Petition does not explain
adequately how the references relied on teach or render obvious the
limitations of claim 16.
For the foregoing reasons, we are not persuaded that the Petition
demonstrates a reasonable likelihood that Petitioner would prevail in its
challenge of independent claims 1 and 16 as obvious over the CRD-5500
IPR2014-01233
Patent 7,987,311 B2

12
User Manual, the CRD-5500 Data Sheet, and Smith. For the same reasons,
we are not persuaded that the Petition demonstrates a reasonable likelihood
that Petitioner would prevail in its challenge of claims 2–15 and 17–28, each
of which depends from and necessarily includes the limitations of one of
independent claims 1 and 16.
F. Obviousness of Claims 1–28 over Kikuchi and Bergsten
1. Kikuchi (Ex. 1006)
Kikuchi discloses a disk apparatus that a plurality of host devices can
access. Ex. 1006, col. 1, ll. 7–9. For example, Kikuchi shows one
embodiment of a disk apparatus in Figure 1, reproduced below.

Figure 1 shows disk apparatus 101 and its parts. Id. at col. 3, l. 59–col. 4,
l. 11. Disk apparatus 101 includes host device interface 112, command
interpretation and execution unit 102, address verification unit 103, address
registration unit 104, and data storage unit 105. Id. Host device interface
unit 112 serves the purpose of “sending and receiving data to and from a
plurality of host devices.” Id. at col. 3, ll. 62–64. When command
interpretation and execution unit 102 receives a command from a host,
IPR2014-01233
Patent 7,987,311 B2

13
command interpretation and execution unit 102 extracts the host address and
transmits it to address verification unit 103. Id. at col. 4, ll. 17–20. Address
verification unit 103 uses this information and host addresses stored in
address registration unit 104 to determine access authorization. Id. at col. 4,
ll. 20–22. If access is authorized, command interpretation and execution
unit 102 transmits the command from the host device to data storage unit
105, and the command is executed. Id. at col. 4, ll. 29–34.
2. Bergsten (Ex. 1007)
Bergsten teaches a computing system in which a number of host
computer systems have access to a number of storage arrays through a
number of storage controllers. Ex. 1007, col. 3, ll. 20–23. Bergsten
illustrates such a system in Figure 1, reproduced below.

IPR2014-01233
Patent 7,987,311 B2

14
Figure 1 of Bergsten shows multiple storage controllers 3-1 through 3-M,
which connect to multiple hosts 2-1 through 2-M and multiple storage arrays
4-1 through 4-M. Id. at col. 3, ll. 23–28. Communication link 9 couples
storage controllers 3-1 through 3-M to one another. Id. at col. 3, ll. 36–37.
Storage controllers 3-1 through 3-M cooperate “to provide any of host
computer systems 2-1 through 2-M with access to any of storage arrays 4-2
through 4-M.” Id. at col. 4, ll. 7–9. The system uses virtual addressing to
access data, “such that a host computer system has no knowledge of which
physical storage device is being accessed.” Id. at col. 4, ll. 47–50.
Bergsten shows the functional modules of a storage controller in
Figure 4, reproduced below.

Figure 4 of Bergsten shows storage controller 3 and its functional
modules, including operating system (OS) 20, emulation drivers 21, physical
drivers 22, communication drivers 23, and local memory 24. Id. at col. 7,
ll. 20–28. Under control of OS 20, emulation drivers 21 communicate data
between storage controller 3 and the local host computer over
communication path 7. Id. at col. 7, ll. 32–35. Under control of OS 20,
IPR2014-01233
Patent 7,987,311 B2

15
physical drivers 22 transmit data between storage controller 3 and its local
storage array. Id. at col. 7, ll. 43–46.
3. Discussion
The Petition argues that it would have been obvious to incorporate
emulation drivers 21, physical drivers 22, and virtualized network storage
taught by Bergsten into the system taught by Kikuchi. Pet. 33–35. The
Petition states that
Professor Chase explains that a skilled storage engineer
would have been motivated to incorporate the virtual
storage emulation of Bergsten into the disk apparatus of
Kikuchi to increase both the number of storage devices
accessible to hosts connecting to the disk apparatus and
the storage address range available within the combined
system.
Id. at 35. In concert with this, the Petition describes a “combined system”
that results from combining certain teachings of Kikuchi and Bergsten. Id.
at 33–35.
Neither the Petition’s description of the “combined system” nor its
preceding discussion of the references addresses any specific limitation of
the challenged claims. See id. at 29–35. After explaining the configuration
of the “combined system,” however, the Petition offers a discussion that the
Petition contends “demonstrates the correspondence between the claims [sic]
terms and the structure and/or operation of the combined system of Kikuchi
and Bergsten.” Id. at 35–44.
Patent Owner argues that the Petition does not show where the
references teach the limitations of the claims. Prelim. Resp. 15. Patent
Owner contends that “Petitioner improperly uses the 140-page Chase
declaration to provide the necessary explanation, effectively expanding the
IPR2014-01233
Patent 7,987,311 B2

16
petition well over sixty pages in violation of 37 C.F.R. § 42.24(a)(1)(i).” Id.
We agree.
For example, the Petition does not explain adequately how the
references teach or render obvious the recitations in claim 1 of “a first
controller operable to connect to a first transport medium, wherein the first
medium is a serial transport media” and “a second controller operable to
connect to a second transport medium.” To address each of these claim
limitations, the Petition provides only one sentence and cites only the Chase
Declaration as supporting evidence. See Pet. 36. As noted above, we
decline to consider information presented in a supporting declaration but not
discussed sufficiently in the Petition. Accordingly, the citation to the Chase
Declaration does not remedy the Petition’s inadequate discussion of the
“first controller” limitation and the “second controller” limitation.
Additionally, the Petition does not explain adequately how the
references teach or render obvious the multiple subsequent limitations of
claim 1 related to “a processing device.” The portion of the Petition
addressing these limitations repeatedly cites the Chase Declaration as
supporting evidence. See id. at 36–38. This portion of the Petition only
twice cites any other evidence, specifically Exhibit 1009, which contains
Patent Owner’s infringement contentions from a district court proceeding.
See id. (citing Ex. 1009, 35–36). The cited portion of Exhibit 1009 does not
explain how the references on which Petitioner relies teach or render
obvious the limitations of independent claim 1. See Ex. 1009, 35–36. Thus,
the Petition does not explain which parts of the references teach or render
obvious each of the limitations related to the claimed “processing device.”
Indeed, in addition to not identifying adequately which portions of the
IPR2014-01233
Patent 7,987,311 B2

17
references Petitioner relies on, the Petition addresses the multiple limitations
related to the “processing device” by grouping the limitations into two
groups and then providing for each group an extended discussion of “the
combined system.” In these discussions, the Petition does not explain which
parts of “the combined system” purportedly correspond to which specific
limitations. See Pet. 36–38.
With respect to independent claim 16, the Petition asserts that this
claim is similar to claim 1, that “[t]he discussion set forth above of claim 1
applies with equal force to claim 16,” and that Professor Chase provides a
detailed explanation regarding claim 16. Pet. 43. By relying on the
inadequate explanation regarding independent claim 1 and incorporation of
the testimony in the Chase Declaration, the Petition does not explain
adequately how the references relied on teach or render obvious the
limitations of claim 16.
For the foregoing reasons, we are not persuaded that the Petition
demonstrates a reasonable likelihood that Petitioner would prevail in its
challenge of independent claims 1 and 16 as obvious over Kikuchi and
Bergsten. For the same reasons, we are not persuaded that the Petition
demonstrates a reasonable likelihood that Petitioner would prevail in its
challenge of claims 2–15 and 17–28, each of which depends from and
necessarily includes the limitations of one of independent claims 1 and 16.
H. Obviousness of Claims 1–28 over Bergsten and Hirai
1. Hirai (Ex. 1008)
Hirai discloses a computer system with a magnetic disk sharing device
that controls multiple magnetic devices. Ex. 1008 ¶ [0006]. Hirai’s
controller treats the multiple magnetic devices as one virtual magnetic disk
IPR2014-01233
Patent 7,987,311 B2

18
device. Id. Hirai teaches managing the access right of respective multiple
personal computers in the memory region of the virtual magnetic disk
device. Id. Thus, the personal computers access the virtual magnetic disk
device in accordance with the respective access right. Id.
2. Discussion
The Petition argues that it would have been obvious to incorporate the
functionality of Hirai’s access controls into Bergsten’s storage controllers in
order to improve Bergsten’s virtualization mapping with Hirai’s access
controls. Pet. 46–49. The Petition notes that
Professor Chase explains that one advantage of doing so
would be that blocks of host devices may be allocated
varying levels of access to particular sets of data, such
that certain systems within a business entity could
modify the data while other systems within the business
entity have read-only access, and further systems within
the business entity may be denied access altogether (e.g.,
due to a level of sensitivity of the stored data).
Id. at 48. In concert with this, the Petition describes a “combined system”
that results from combining certain teachings of Bergsten and Hirai. Id. at
46–49.
Neither the Petition’s description of the “combined system” nor its
preceding discussion of the references addresses any specific limitation of
the challenged claims. Id. at 30–33, 44–49. After explaining the
configuration of “the combined system,” however, the Petition offers a
discussion that the Petition contends “demonstrates the correspondence
between the claims [sic] terms and the structure and/or operation of the
combined system of Bergsten and Hirai.” Id. at 49–58.
Patent Owner argues that the Petition does not show where the
references teach the limitations of the claims. Prelim. Resp. 15. Patent
IPR2014-01233
Patent 7,987,311 B2

19
Owner contends that “Petitioner improperly uses the 140-page Chase
declaration to provide the necessary explanation, effectively expanding the
petition well over sixty pages in violation of 37 C.F.R. § 42.24(a)(1)(i).” Id.
We agree.
For example, the Petition does not explain adequately how the
references teach or otherwise render obvious the recitations in claim 1 of “a
first controller operable to connect to a first transport medium, wherein the
first medium is a serial transport media” and “a second controller operable to
connect to a second transport medium.” To address each of these claim
limitations, the Petition provides only one sentence and cites only the Chase
Declaration as supporting evidence. See Pet. 49–50. As noted above, we
decline to consider information presented in a supporting declaration but not
discussed sufficiently in the Petition. Accordingly, the citation to the Chase
Declaration does not remedy the Petition’s inadequate discussion of the
“first controller” and “second controller” limitations.
Additionally, the Petition does not explain adequately how the
references teach or render obvious the multiple subsequent limitations of
claim 1 related to “a processing device.” The portion of the Petition
addressing the limitations related to the “processing device” repeatedly cites
the Chase Declaration as supporting evidence. See id. at 50–52. This
portion of the Petition only twice cites any other evidence, specifically
Exhibit 1009, which contains Patent Owner’s infringement contentions from
a district court proceeding. See id. (citing Ex. 1009, 35–36). The cited
portion of Exhibit 1009 does not explain how the references on which
Petitioner relies teach the limitations of independent claim 1. See Ex. 1009,
35–36. Thus, the Petition does not explain which parts of the references
IPR2014-01233
Patent 7,987,311 B2

20
teach or render obvious each of the limitations related to the claimed
“processing device.” Indeed, in addition to not identifying adequately which
portions of the references Petitioner relies on, the Petition addresses the
multiple limitations related to the “processing device” by grouping the
limitations into two groups and then providing for each group an extended
discussion of “the combined system.” In these discussions, the Petition does
not explain which parts of “the combined system” purportedly correspond to
which specific limitations.
With respect to independent claim 16, the Petition asserts that this
claim is similar to claim 1, that “[t]he discussion set forth above of claim 1
applies with equal force to claim 16,” and that Professor Chase provides a
detailed explanation regarding claim 16. Pet. 57. By relying on the
inadequate explanation regarding independent claim 1 and incorporation of
the testimony in the Chase Declaration, the Petition does not explain
adequately how the references relied on teach or render obvious the
limitations of claim 16.
For the foregoing reasons, we are not persuaded that the Petition
demonstrates a reasonable likelihood that Petitioner would prevail in its
challenge of independent claims 1 and 16 as obvious over Bergsten and
Hirai. For the same reasons, we are not persuaded that the Petition
demonstrates a reasonable likelihood that Petitioner would prevail in its
challenge of claims 2–15 and 17–28, each of which depends from and
necessarily includes the limitations of one of independent claims 1 and 16.
III. CONCLUSION
For the foregoing reasons, we are not persuaded that the information
presented in the Petition establishes a reasonable likelihood that Petitioner
IPR2014-01233
Patent 7,987,311 B2

21
would prevail in establishing the unpatentability of any of claims 1–28 of
the ’311 patent.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied as to claims 1–28 of the ’311
patent.

IPR2014-01233
Patent 7,987,311 B2

22
PETITIONER:
Greg H. Gardella
Scott A. McKeown
OBLON SPIVAK
cpdocketgardella@oblon.com
cpdocketmckeown@oblon.com

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

Russell Wong
James Hall
WONG, CABELLO, LUTSCH, RUTHERFORD & BRUCCULERI, LLP
CrossroadsIPR@counselip.com