• Cisco Systems, Inc. / Quantum Corporation et al. v. Crossroads Systems, Inc.All claims unpatentable
  PTAB · Mar 17, 2016 · IPR2015-00854 · APJ Neil T Powell · IPR · Final written decision

  Claims 1–53 are unpatentable as obvious: claims 1–14, 16–33, 35–50, and 53 over CRD-5500 Manual and HP Journal; claims 15, 34, 51, and 52 with Fibre Channel Standard.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownTerm construed petitioner constructionDecided for petitioner

    “The construction proposed by Patent Owner is overly narrow. Although Patent Owner emphasizes that the map must identify specific host devices, it does not explain persuasively why the claim language should be construed to exclude doing so via intermediate identifiers. See PO Resp. 5– 10. Patent Owner does not identify any disclosure in the ’041 patent’s specification that clearly disavows mapping to a device indirectly, or mapping to a device via an intermediate identifier that could identify a different host if the system were configured differently. See Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1374 (Fed. Cir. 2005) (holding that “words of manifest exclusion or explicit disclaimers in the specification are necessary to disavow claim scope” (internal quotations omitted)). Patent Owner’s discussion of Figure 3, for example, is insufficient to compel a narrow construction of the term because Patent Owner analyzes only a preferred embodiment of the invention. See PO Resp. 8–10; see, e.g., In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (holding that limitations should not be imported from preferred embodiments into the claims absent a clear disclaimer of claim scope in the specification).” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “detailed analysis of why a person of ordinary skill in the art would have been motivated to combine the CRD Manual and the HP Journal6 in the manner asserted by Petitioners. Pet. 17–21 (citing Ex. 1003 ¶¶ 48–57). Specifically, Petitioners contend: (1) the CRD Manual explains that the disclosed CRD- 5500 controller has a modular design capable of accepting various I/O modules; (2) the HP Journal describes the benefits of FC technology over SCSI technology; (3) the HP Journal discloses the replacement of SCSI with FC, including the use of SCSI commands with FC frames. Id. For example, the HP Journal discusses various advantages of FC over SCSI as a transport medium technology, including advantages in bandwidth and addressability, and explains how some FC controllers are compatible with SCSI devices. Id.; see, e.g., Ex. 1006, 94–95, 99–101. Patent Owner does not dispute in its 6 These portions of the HP Journal relied on by Petitioners share a common author (Meryem Primmer), and similar subject matter (FC technology and its implementation), as well as the same apparent publication date in the same issue of the journal. Patent Owner did not dispute that one of ordinary skill would have combined the teachings of the different articles in the HP Journal. Based on the full record after trial, we agree and consider the articles collectively, as the parties have done throughout the proceeding. Patent Owner Response that a person of ordinary skill7 would have had reason to combine the teachings of these references. Based on the full record after trial, Petitioners have articulated a sufficient reason to combine the CRD Manual and the HP Journal with rational underpinnings supported by the evidence. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 15

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner

    “Establishing long-felt need requires objective evidence that an art- recognized problem existed in the art for a long period of time without solution.” Ex parte Jellá, 90 USPQ2d 1009, 1019 (BPAI 2008) (precedential). We have reviewed the cited testimony (Ex. 2029, 103:18–24, 104:15– 105:1, 136:6–14), and find it insufficient to establish a long-felt need. The testimony is directed to whether the term “storage router” was used in the art in the late 1990s. See, e.g., id. at 104:24–105:1. It does not address what the needs or problems of the art were at that time. Thus, we do not find that the testimony supports sufficiently Patent Owner’s contention of long-felt need. The article cited by Patent Owner (Ex. 2038), which suggests that a problem might have existed in file system performance generally, also does not establish that there was long-felt need for the claimed invention. Patent Owner presented no evidence as to how long this problem had been recognized, the extent of the problem, whether it remained unresolved at the time of the invention, or whether the invention resolved this need. See Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1332–33 (Fed. Cir. 2009). As such, we find that Patent Owner has not shown adequately that there was any long-felt need for the claimed invention. slip op. at 33

  • Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia no nexusDecided for petitioner

    “Evidence of commercial success “is only significant if there is a nexus between the claimed invention and the commercial success.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). As a threshold matter, a sufficient nexus between Patent Owner’s commercial product and the features of its claimed invention has not been established. The evidence does not show sufficiently that the items listed in Exhibit 2044 embody the claimed invention, or that sales of the listed products resulted from novel, non-obvious features of the claimed invention rather than other features. See Ormco Corp., 463 F.3d at 1312–13 (evidence did not show that commercial success was due to claimed and novel features). Even if Patent Owner had established a nexus between its marketed technology and the invention claimed in the patent, its commercial success argument would not be persuasive. Patent Owner’s declarant’s statements that certain products include “mapping” or “access controls” (Ex. 2043 ¶¶ 5– 6) are insufficient to show commercial success of the claimed invention. An important component of the commercial success inquiry is determining market share associated with the alleged success, relative to all competing products. In re Applied Materials, Inc., 692 F.3d 1289, 1300 (Fed. Cir. 2012). Even sales volume, if provided without market share information, is only weak evidence, if any, of commercial success. Id. at 1299. Here, the fact that Patent Owner sold a certain number of these devices and that they made up a certain share of its own sales is insufficient to establish commercial success without some context about the larger market. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).” slip op. at 34

  Patent outcomesUS 7,934,041 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,934,041
• Unified Patents Inc. v. Dragon Intellectual Property, LLCAll claims unpatentable
  PTAB · Feb 5, 2016 · IPR2014-01252 · APJ Stacey G White · IPR · Final written decision

  Claims 1, 2, 7, 8, 10, 13, and 14 are unpatentable as obvious over Ulmer and Goldwasser.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “Ulmer and Goldwasser. Pet. 35–51. We have reviewed Petitioner’s detailed explanation identifying where each limitation allegedly would have been taught by Ulmer and Goldwasser, along with the testimony of Petitioner’s declarant, Dr. Hemani. See id.; Ex. 1013; Reply 12–24. We also have reviewed Patent Owner’s assertions and evidence as to why Petitioner’s explanations and evidence are deficient. PO Resp. 17–49; Ex. 2022 (Declaration of Adam Goldberg). On this record, we are persuaded that Petitioner has shown by a preponderance of the evidence that Ulmer and Goldwasser teach each limitation of claims 1 and 2.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Petitioner proffers constructions for a number of claim terms. Pet. 18–24. No claim terms require express construction for purposes of this Decision. B. Obviousness of Claims 1, 2, 7, 8, 10, 13, and 14 over Ulmer and Goldwasser” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “there was no motivation to combine Ulmer and Goldwasser. PO Resp. 42– 47. At the Oral Hearing, however, Patent Owner withdrew this argument. Tr. 32:4–11. Regardless, we find that Petitioner has provided sufficient evidence of a motivation to combine. Petitioner explains that a person of ordinary skill in the art would be motivated to combine Goldwasser’s disclosure with Ulmer’s because both references “address the same problem: providing simultaneous recording and playback as a mechanism to allow a viewer to skip commercials.” Pet. 25. Petitioner elaborates that due to extensive overlap between the systems of Ulmer and Goldwasser, a person of ordinary skill in the art would have been led to use various design details from Goldwasser’s teachings in a combination of Ulmer’s and Goldwasser’s systems. Id. at 25–26 We find that Petitioner’s assertions and evidence provide rational underpinning for a conclusion that it would have been obvious to combine the teachings of Ulmer and Goldwasser. And we are persuaded Petitioner’s assertions and evidence show sufficiently that the resulting system would include each of the limitations of independent claim 1 and dependent claim 2. Claim 2 depends from claim 1 and recites that the claimed apparatus “further compris[es] a remote control unit, and wherein said keyboard is housed in said remote control unit.” Petitioner notes that Ulmer explicitly discloses that its system includes a remote control unit. Id. at 28, 37, 51. We agree with Petitioner’s analysis of the recited art’s disclosures as applied to claim 2. Accordingly, we are persuaded that Petitioner has demonstrated by a preponderance of the evidence the unpatentability of independent claim 1 and dependent claim 2 over Ulmer and Goldwasser.” slip op. at 17

  • Obviousness (§103) › KSR rationalesDecided for petitioner

    “In addition, we also find persuasive Petitioner’s argument that it would have been an obvious design choice to use play and record buttons on a remote control to control Ulmer’s device. See Pet. 14 (citing Ex. 1013 ¶ 38). Petitioner has provided evidence that such remote controls were well known at the time of the application for the ’444 patent. See Reply 15 (citing Ex. 1013 ¶¶ 25, 27–28; Ex. 1004); Tr. 10–11 (citing Ex. 1013 ¶ 28; Ex. 1004, 2; Ex. 1008, 2:29–34). Based on this evidence, we are persuaded it would have been within the knowledge and abilities of one of ordinary skill in the art to control Ulmer’s device with a remote control that includes play and record buttons.” slip op. at 16

  Patent outcomesUS 5,930,444 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 5,930,444
• Gordon * Howard Associates, Inc. v. Lunareye, Inc.All claims unpatentable
  PTAB · Feb 2, 2016 · IPR2014-01213 · APJ J John Lee · IPR · Final written decision

  Claims 1–24 are unpatentable under § 103 based on the instituted combinations of Mohan, Oncore, Roach, and Lewis.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “accompanying description requiring that GPS Receiver 48 and Controller 36 be physically distinct components. Even if there was such a requirement, however, “a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). LunarEye’s reliance on other figures and descriptions of embodiments in the specification is unpersuasive for the same reason. See PO Resp. 20–21 & n.48; see also Ex. 2031 ¶¶ 14–15 (LunarEye’s proffered expert relying on descriptions of embodiments for opinion that data selecting device is external to GPS receiver). Merely describing a narrower embodiment does not constitute the clear disclaimer required to apply the limitation at issue to the claim. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). In addition, LunarEye also contends the claim language itself indicates the recited GPS receiver (or location-signal generating device) and data selector are physically distinct components. PO Resp. 22. LunarEye asserts claims 1 and 2 recite that the GPS receiver produces “GPS data” first, and that the data selector operates on that output of the GPS receiver to produce “selected GPS data.” Id. at 22–23. According to LunarEye, this claim language requires that the GPS receiver and data selector be “distinct,” i.e., physically separate. See id. at 20–22. The claim language, however, does not support LunarEye’s position. Although claims 1 and 2 recite the GPS receiver and data selector separately and recite distinct functions for each, nothing in those claims indicates these structures must be physically separated or precludes one being housed physically within the other, particularly under their broadest reasonable interpretation. LunarEye does not present any compelling evidence indicating otherwise.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “to combine Mohan, Oncore, and Roach. Pet. 12–16. For example, GH argues that both Mohan and Oncore are directed to GPS receiver technology, and that combining them would have involved a simple substitution that would achieve predictable results. Id. at 12. GH also contends that one of ordinary skill in the art would have been motivated by Oncore’s discussion of the advantages of its GPS receiver technology, and that applying that technology in combination with Mohan would have amounted to nothing more than the use of a prior art element for its established function to obtain its stated benefits. Id. at 12–13 (citing Ex. 1007, 1.1). Likewise, GH asserts that combining Roach with Mohan would have involved a simple substitution with predictable results, which would have amounted to the use of Roach’s prior art cellular communications system for its established function to achieve its known benefits. Id. at 13–15 (citing Ex. 1008, 9:6– 30). In addition to the prior art references, GH also relies on the Declaration of Dr. Janky, whose testimony supports GH’s contentions. Ex. 1010 ¶¶ 96– 102. We have considered Dr. Janky’s testimony, including his underlying analysis and reasoning, and find it credible. Based on all of the evidence presented, including Dr. Janky’s testimony, GH has articulated sufficient reasoning with rational underpinning to support the conclusion that one of ordinary skill would have had reason to combine the teachings of Mohan, Oncore, and Roach in the manner advanced by GH. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “are unpersuasive. LunarEye argues that the asserted prior art references teach away from the combinations advanced by GH. PO Resp. 45–57. Specifically, LunarEye contends Mohan states that a device constructed according to its teachings should conform to certain size constraints to achieve adequate miniaturization. Id. at 48–52. The GPS device described in Oncore14 are too large and are, thus, incompatible with Mohan, according to LunarEye. Id. This argument is unpersuasive, however, because none of the claims of the ’035 patent require miniaturization, nor do they include any limitations restricting the size of the claimed apparatus or any recited component device. LunarEye does not identify any portion of Mohan that criticizes, discredits, or otherwise discourages combining Mohan and Oncore in the manner advanced by GH. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Merely describing the benefits of a miniaturized GPS device does not teach away from non-miniaturized devices. See id.; In re Gurley, 27 F.3d 551, 554 (Fed. Cir. 1994). Moreover, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.” Keller, 642 14 LunarEye does not argue that the GPS device of Lewis, or the communications devices of Roach, are incompatible with Mohan’s purported size restrictions. F.2d at 425. Thus, whether the Oncore GPS receiver is too large to be incorporated physically into the Mohan GPS device is inapposite, because the challenged claims do not recite any limitations on size.” slip op. at 27

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “MOTION TO SEAL GH moves to seal Exhibit 1028. Mot. Seal. 2. As this is the Final Written Decision, we consider GH’s Motion to Seal as a motion to expunge Exhibit 1028 from the record pursuant to 37 C.F.R. § 42.56. Exhibit 1028 was not relied on for this Decision. Consequently, GH’s motion is granted, and Exhibit 1028 will be expunged. ORDER Accordingly, it is: ORDERED that claims 1–24 of U.S. Patent No. 6,484,035 B2 are held unpatentable under 35 U.S.C. § 103; and FURTHER ORDERED that Exhibit 1028 is expunged from the record.” slip op. at 29

  Patent outcomesUS 6,484,035 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,484,035
• Cisco Systems, Inc. / Quantum Corporation et al. v. Crossroads Systems, Inc.All claims unpatentable
  PTAB · Jan 29, 2016 · IPR2014-01544 · APJ J John Lee · IPR · Final written decision

  Claims 1–39 are unpatentable as obvious under § 103(a) over the CRD Manual and HP Journal; secondary-consideration evidence lacked sufficient nexus and weight.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “The construction proposed by Patent Owner, however, is overly narrow. Although Patent Owner emphasizes that the map must identify specific host devices, it does not explain persuasively why the claim language should be construed to exclude doing so via intermediate identifiers. See PO Resp. 5–10. Patent Owner does not identify any disclosure in the ’147 patent’s specification that clearly disavows mapping to a device indirectly, or mapping to a device via an intermediate identifier that could identify a different host if the system were configured differently. See Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1374 (Fed. Cir. 2005) (holding that “words of manifest exclusion or explicit disclaimers in the specification are necessary to disavow claim scope” (internal quotations omitted)). Patent Owner’s discussion of Figure 3, for example, is insufficient to compel a narrow construction of the term because it analyzes only a preferred embodiment of the invention. See PO Resp. 8–9; see also In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (holding that limitations should not be imported from embodiments into the claims absent a clear disclaimer of claim scope in the specification). Moreover, the ’147 patent specifically discusses mapping with identifiers that are not immutable. For example, the specification discusses addressing devices on an FC loop using an AL_PA (arbitrated loop physical address) identifier, and the possibility of “FC devices changing their AL-PA due to device insertion or other loop initialization.” Ex. 1001, 8:40–46; see Tr. 54:5–55:15 (counsel for Patent Owner acknowledging an AL_PA is a “temporarily assigned ID” that can point to different devices); Pet. Reply 4– 7 (discussing evidence supporting the use of intermediate identifiers, including testimony by Patent Owner’s proffered expert). Further, the claims of the ’147 patent indicate the mapping may use mere representations of a device rather than requiring direct mapping to the device itself. Claim 15, for example, recites mapping including “virtual LUNs that provide a representation of the storage device,” and claim 17 recites “mapping from a host device ID to a virtual LUN representation of the remote storage device.” Although these claims refer to “virtual” representations of storage devices rather than host devices, the “maps between” term of the independent claims uses the same language when referring to both the devices and storage devices—for example, claim 14 merely recites a “map between the device and the remote storage device.” The claim language does not indicate that the mapping may address storage devices one way, but that devices must be addressed in a different, more specific or direct way. For the reasons above, we are not persuaded that the broadest reasonable interpretation of “maps between the device and the remote storage devices” mandates mapping directly or immutably to a host device itself, or excludes mapping to devices using intermediate identifiers.” slip op. at 7

  • Prior constructionPrior construction adoptedDecided for petitioner

    “Ex. 1009, 12. Although we are not bound by the construction or reasoning of the district court, we do not disregard the analysis and conclusions of a court construing the same claim term in a concurrent proceeding concerning the same patent. See Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1326– 27 (Fed. Cir. 2015). After considering the construction of the district court, we determine this construction corresponds to the broadest reasonable interpretation and adopt it for purposes of this Decision.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “detailed analysis of why a person of ordinary skill in the art would have been motivated to combine the CRD Manual and the HP Journal in the manner asserted by Petitioners. Pet. 18–22 (citing Ex. 1003 ¶¶ 53–62). Specifically, Petitioners contend: (1) the CRD Manual explains that the disclosed CRD- 5500 controller has a modular design capable of accepting various I/O modules; (2) the HP Journal describes the benefits of FC technology over SCSI technology; (3) the HP Journal discloses the replacement of SCSI with FC, including the use of SCSI commands with FC frames. Id. For example, the HP Journal discusses various advantages of FC over SCSI as a transport medium technology, including advantages in bandwidth and addressability, 7 The level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Boudreau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). and explains how some FC controllers are compatible with SCSI devices. Id.; see, e.g., Ex. 1006, 94–95, 99–101. Patent Owner does not dispute in its Patent Owner Response8 that a person of ordinary skill would have had reason to combine the teachings of these references. Based on the full record after trial, Petitioners have articulated a sufficient reason to combine the CRD Manual and the HP Journal with rational underpinnings supported by the evidence. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “well. Id. at 101. Based on these disclosures and the testimony of their proffered expert, Dr. Andrew Hospodor (Ex. 1003), Petitioners argue a person of ordinary skill would have been taught to replace the SCSI technology of the CRD Manual I/O modules with the FC controller chip and FC interconnects of the HP Journal to arrive at the recited FC controllers and FC transport media of claim 1. Pet. 24–26 (citing Ex. 1003 ¶¶ 53–62).9 Next, the Petition identifies the central processor, system circuitry, and firmware disclosed in the CRD Manual as teaching the recited “supervisor unit.” Pet. 26 (citing Ex. 1004, 9, 11, 40, 53, Fig. 2-1). Further, according to Petitioners, the combination of the CRD Manual and the HP Journal teaches “process[ing] data in the buffer to interface between the first Fibre Channel controller and the second Fibre Channel controller to allow access from Fibre Channel initiator devices to the remote storage devices using native low level, block protocol in accordance with the configuration,” as recited in claim 1. Pet. 28–29 (citing Ex. 1003, 56–59). Specifically, Petitioners note that the CRD Manual discloses host computers (initiator devices) writing data to disk drives (remote storage devices) via an onboard cache (buffer) using a SCSI interface. Id.; Ex. 1004, 9, 12, 24–25. As the ’147 patent discloses, SCSI is an example of a “native low level, block protocol” within the meaning of the claims. See Ex. 1001, 5:13–17, 5:46– 50. In addition, Petitioners rely on the HP Journal’s discussion of using 9 Crossroads argues that Dr. Hospodor’s testimony should be accorded “diminished” weight due to his alleged bias and certain deposition testimony that Crossroads believes undermines his credibility. PO Resp. 55–58. All of these considerations were taken into account, and Dr. Hospodor’s testimony was accorded the weight appropriate in light of the full record. Further, we determine that Dr. Hospodor was a credible witness overall, despite the issues identified by Crossroads, because his testimony generally was supported by the record as explained in this Decision. encapsulated SCSI commands over an FC link through the Tachyon FC controller (Ex. 1006, 101), arguing these disclosures would have taught a person of ordinary skill to process data from host computers via an onboard cache to access (e.g., write data to) storage drives using encapsulated SCSI commands over an FC network. Pet. 28–29.” slip op. at 12

  Patent outcomesUS 7,051,147 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,051,147
• Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Jan 29, 2016 · IPR2014-01195 · APJ Justin Busch · IPR · Final written decision

  Claims 1 and 2 are unpatentable as obvious over Li, Yamaura, Zhuang, and UTRA, and over Li, Yamaura, Mody, Nobilet, Popovic, and UTRA.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “addition to the portion of the ’431 patent referred to by the parties, we find informative the entirety of the section, including the heading – “Radio Operation Via Core-Band,” in which the cited disclosures are included. Ex. 1001, 4:63–5:62. The section starts by stating that “specific signaling and control methods are required” in order for “user terminals to operate in a variable bandwidth (VB) environment.” Id. at 4:64–66 (emphasis added). Although this description mentions both “signaling” and “control methods,” it does not distinguish between control signals and operations signals. As Patent Owner points to one embodiment disclosing that the core-band includes various channels (i.e., “essential control channels, a set of data channels and their related dedicated control channels”) “to maintain basic radio operation.” Id. at 5:8–13. That embodiment further describes basic radio operation as a state that a mobile station may be in when entering a network before transitioning to normal operation, which uses the full bandwidth including “sidebands for additional data and radio control channels.” Id. at 5:13–17, Abs. (stating also that mobile stations use the “core-band to initiate communication and obtain essential information” before switching to full bandwidth “for the remainder of the communication”).” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “An important factor that we considered is that the plain language of “substantially not wider” does not seem to support an application of “substantially” as a term of magnitude because such a construction would essentially read out a portion of “not wider.” Reading “substantially” as a term of magnitude would essentially require substituting “significantly” for “substantially.” Patent Owner’s proposed construction, however, not only substitutes significantly for substantially, but changes “not wider” to “narrower than.” The plain and ordinary meaning of “not wider” is less than or equal to. Thus, simply treating “substantially” as a term of magnitude would result in a construction of “significantly less than or equal to.” As a result, Patent Owner’s proposed construction is not a reasonable interpretation in that it makes little sense to recite being “significantly” equal to. Patent Owner agrees that “[n]ot wider does mean less than or equal to,” but argues that the recitation of “substantially not wider” “tak[es] out equal to.” Tr. 57:23–58:10. Thus, Patent Owner’s proposed construction reads out the “equal to” portion of “not wider,” which is inconsistent with the ordinary meaning of “not wider.” Patent Owner does not provide a persuasive rationale for disregarding the term’s ordinary meaning. If we apply substantially to the phrase “not wider” as a term of approximation, however, we are led to a construction that one item (the core-band) is not wider, within some range of tolerance, than another item (the smallest operating channel bandwidth). Such an interpretation is consistent with the term’s ordinary meaning and the context of the specification. Finally, the drafter of the ’431 patent chose to use the phrase “not wider” in claim 1 rather than “narrower” or “less than,” which was used on at least one occasion on the specification. Accordingly, on balance, we find no explicit construction is necessary but determine that “substantially” modifies “not wider” as a term of approximation rather than a term of magnitude.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “We have reviewed the parties’ arguments as well as the testimony of Dr. Haas (Ex. 1012 ¶¶ 34–51) and Dr. Zeger (Declaration of Kenneth Zeger, Ph.D., Ex. 2001 ¶¶ 67–85, 132–142), and we find that Petitioner has demonstrated that a person having ordinary skill in the art would have combined the teachings of Li and Yamaura in the manner proposed by Petitioner. We agree with Petitioner that Li and Yamaura focus on complementary aspects of wireless communication systems. Yamaura teaches one way to provide control and synchronization signaling using OFDM. Li teaches that “there are typically other channels [not described in detail in Li], pre-allocated for the exchange of control information and other purposes,” which would have led an ordinarily skilled artisan to look to specific implementations of control and synchronization signaling, including the implementation taught by Yamaura. See Ex. 1002, 5:1–17. We acknowledge that Li does teach certain control signaling on both uplink and downlink channels. Nevertheless, we find Petitioner’s assertion, supported by Dr. Haas’s testimony, that an ordinarily skilled artisan would have looked elsewhere for control and synchronization channels prior to establishing communication with a mobile station, is supported by Li’s explicit statement that there are typically other channels pre-allocated for that purpose.” slip op. at 17

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “a narrowband frequency centered within its operating channel bandwidth, which Petitioner maps to the recited core-band. Petitioner further argues that, in order to maintain the benefit of Yamaura’s centered control channel when incorporating Li’s teaching of multiple communication schemes, an ordinarily skilled artisan would have added clusters so that Yamaura’s narrowband control signals would remain centered. Reply 12–14 (citing Ex. 1034 ¶¶ 24, 25). Petitioner relies on Yamaura for teaching transmission of control signals centered within the frequency band it is using, and relies on Li for teaching a variable bandwidth system, in which a mobile station can have its bandwidth increased or decreased, as needed. As discussed above, we find no flaw with Petitioner’s proposed combination of Yamaura and Li. We also find persuasive Petitioner’s assertion, supported by testimony from Dr. Haas (Ex. 1034 ¶¶ 24–25), that it would have been desired by and within the abilities of a person having ordinary skill in the art to combine Li and Yamaura in a way that Yamaura’s subcarriers that are carrying control signaling stay substantially centered. Accordingly, we find Petitioner has demonstrated, by a preponderance of the evidence, that the combination of Li and Yamaura teaches a core-band “substantially centered at an operating frequency of the different communication schemes,” as recited in claim 1. Patent Owner asserts that Petitioner has not demonstrated that the combined references teach a core-band that is “substantially not wider than a smallest possible operating channel bandwidth of the system,” because Petitioner points to a core-band that has the same bandwidth as the smallest possible operating channel bandwidth of Petitioner’s proposed system. PO Resp. 30–32. Patent Owner’s assertion depends on a construction of “substantially not wider” that we declined to adopt. See id. As discussed above, we construe substantially to modify “not wider” as a term of approximation. Accordingly, we find Petitioner’s proposed combination, which results in a system having a core-band equal to its smallest operating channel bandwidth, meets the recited language.” slip op. at 21

  Patent outcomesUS 7,787,431 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,787,431
• Oracle Corporation / Netapp Inc. v. Crossroads Systems, Inc.All claims unpatentable
  PTAB · Jan 29, 2016 · IPR2014-01207 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 14–39 are unpatentable as obvious over the CRD Manual, CRD-5500 Data Sheet, and Smith, and over Kikuchi and Bergsten; unpatentability over Bergsten and Hirai was not shown.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “The construction proposed by Patent Owner is overly narrow. Although Patent Owner emphasizes that the map must identify specific host devices, it does not explain persuasively why the claim language should be construed to exclude doing so via intermediate identifiers. See PO Resp. 2–3. Patent Owner does not identify any disclosure in the ’147 patent’s specification that clearly disavows mapping to a device indirectly, or mapping to a device via an intermediate identifier that could identify a different host if the system were configured differently. See Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1374 (Fed. Cir. 2005) (holding that “words or expressions of manifest exclusion or explicit disclaimers in the specification are necessary to disavow claim scope” (internal quotations omitted)). Its discussion of Figure 3, for example, is insufficient to compel a narrow construction of the term because it analyzes only a preferred embodiment of the invention. PO Resp. 45–46; see, e.g., In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (holding that limitations should not be imported from preferred embodiments into the claims absent a clear disclaimer of claim scope in the specification). Moreover, the ’147 patent specifically discusses mapping with identifiers that are not immutable. For example, the specification discusses addressing devices on an FC loop using an AL_PA (arbitrated loop physical address), and the possibility of “FC devices changing their AL-PA due to device insertion or other loop initialization.” Ex. 1001, 8:40–46; Reply 3–6 (discussing evidence supporting the use of intermediate identifiers, including testimony by Patent Owner’s proffered expert). Further, the challenged claims of the ’147 patent indicate the mapping may use mere representations of a device rather than requiring direct mapping to the device itself. Claim 15, for example, recites mapping including “virtual LUNs that provide a representation of the storage device,” and claim 17 recites “mapping from a host device ID to a virtual LUN representation of the remote storage device.” Although these claims refer to “virtual” representations of storage devices rather than host devices, the “maps between” term of the independent claims uses the same language when referring to both the devices and storage devices—for example, claim 14 merely recites a “map between the device and the remote storage device.” The claim language does not indicate that the mapping may address storage devices one way, but that devices must be addressed in a different, more specific or direct way. For the reasons above, we are not persuaded that the broadest reasonable interpretation of “map between the device and the remote storage device” mandates mapping directly or immutably to a host device itself, or excludes mapping to devices using intermediate identifiers.” slip op. at 7

  • Prior constructionPrior construction adoptedDecided for patent owner

    “The parties note that a district court in a related case construed the term as follows, and the Special Master in the co-pending litigation between the parties recommended adoption of this construction: To create a path from a device on one side of the storage router to a device on the other side of the router. A “map” contains a representation of devices on each side of the storage router, so that when a device on one side of the storage router wants to communicate with a device on the other side of the storage router, the storage router can connect the devices. Ex. 2034, 4; see also PO Resp. 2. Although we are not bound by the construction or reasoning of the district court, we do not disregard the analysis and conclusions of a court construing the same claim term in a concurrent proceeding concerning the same patent. Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1326–1327 (Fed. Cir. 2015) (discussing the Board’s error in declining to address or acknowledge the district court’s claim construction). After considering the construction of the district court, we determine this construction corresponds to the broadest reasonable interpretation and adopt it for purposes of this Decision.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “We credit the testimony of Dr. Chase that one of ordinary skill in the art would have been motivated and able to combine Kikuchi and Bergsten in the manner proposed by Petitioner. Ex. 1010 ¶¶ 142–147; Ex. 2054, 180–213. Patent Owner’s arguments to the contrary address the purported complexity of the combination, but do not establish that a person of ordinary skill would not have had a reasonable expectation of success. Obviousness does not require absolute predictability. In re Kronig, 539 F.2d 1300, 1304 (CCPA 1976). Both experts agree that the modifications were within the level of ordinary skill in this field (Ex. 1010 ¶ 145; Ex. 1218, 103:16–21). Dr. Chase’s Declaration states that tables and trees are interchangeable data lookup constructs for address translations, and that the “tree mapping” of Bergsten may be collapsed into a simple mapping table construct such as that of Kikuchi in a single-controller implementation; his deposition testimony provides greater detail in response to Patent Owner’s questions on how the collapsing would occur in different circumstances. Ex. 1010 ¶ 145; 2054, 180–219. Thus, we are persuaded by Petitioner’s testimony and evidence that the combination of Kikuchi and Bergsten was within the skill level of an ordinarily skilled artisan, and would not change the principles of operation of the respective references.” slip op. at 28

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner

    “there must be continuous exercise of reasonable diligence. In re McIntosh, 230 F.2d 615, 619 (CCPA 1956); see also Burns v. Curtis, 172 F.2d 588, 591 (CCPA 1949) (referring to “reasonably continuous activity”). A party alleging diligence must account for the entire critical period. Griffith v. Kanamuru, 816 F.2d 624, 626 (Fed. Cir. 1987); Gould v. Schawlow, 363 F.2d 908, 919 (CCPA 1966). Even a short period of unexplained inactivity is sufficient to defeat a claim of diligence. Morway v. Bondi, 203 F.2d 742, 749 (CCPA 1953); Ireland v. Smith, 97 F.2d 95, 99–100 (CCPA 1938). In In re Mulder, 716 F.2d 1542, 1542–46 (Fed. Cir. 1983), the Federal Circuit affirmed a determination of lack of reasonable diligence, where the evidence of record was lacking for a two-day critical period. Likewise, in Rieser v. Williams, 255 F.2d 419, 424 (CCPA 1958), there was insufficient diligence where no activity was shown during the first 13 days of the critical period.” slip op. at 21

  Patent outcomesUS 7,051,147 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,051,147
• Cisco Systems, Inc. / Quantum Corporation et al. v. Crossroads Systems, Inc.All claims unpatentable
  PTAB · Jan 29, 2016 · IPR2015-00825 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1–14 are unpatentable as obvious: claims 1–5 and 7–14 over the CRD-5500 Manual and HP Journal, and claim 6 with the QLogic Data Sheet added.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “Upon reviewing a full record, we revisit our construction of the “map” limitations. We conclude that, given the evidence and arguments presented, our original construction requires some additional clarification. With a full record, we find that Petitioners do not explain sufficiently what it means to “facilitate” routing and access controls. Thus, we determine that our original construction is too vague. We also conclude that the construction proposed by Patent Owner is overly narrow. Although Patent Owner emphasizes that the map must identify specific host devices, it does not explain persuasively why the claim language should be construed to exclude doing so via intermediate identifiers. See PO Resp. 5–11. Patent Owner does not identify any disclosure in the ’035 patent’s specification that clearly disavows mapping to a device indirectly, or mapping to a device via an intermediate identifier that could identify a different host if the system were configured differently. See Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1374 (Fed. Cir. 2005) (holding that “words of manifest exclusion or explicit disclaimers in the specification are necessary to disavow claim scope” (internal quotations omitted)). Patent Owner’s discussion of Figure 3, for example, is insufficient to compel a narrow construction of the term because Patent Owner analyzes only a preferred embodiment of the invention. See PO Resp. 8–10; see, e.g., In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (holding that limitations should not be imported from preferred embodiments into the claims absent a clear disclaimer of claim scope in the specification).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “We agree with Petitioners that the “access controls” limitations are not as limited as Patent Owner contends. Beginning with the language of the claims, we note that dependent claims 2, 8, and 12 already recite that subsets of storage are allocated to associated devices and that the subsets are accessible only by the associated devices. Patent Owner provides no explanation why we should adopt a construction for “access controls” that would render these dependent claims superfluous. See InterDigital Commc’ns, LLC v. Int’l Trade Comm’n, 690 F.3d 1318, 1324–25 (Fed. Cir. 2012). This counsels against reading this limitation into the independent claims. As for the specification, Patent Owner fails to point us to any express or implicit disclaimer that would limit the “access controls” to only device-specific access controls that can only limit a particular device’s access to specified storage. For example, the discussion of Figure 3 of the ’035 patent is insufficient to compel a narrow construction of the term because it analyzes only a preferred embodiment of the invention. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366–67 (Fed. Cir. 2012) (“To constitute disclaimer, there must be a clear and unmistakable disclaimer . . . It is likewise not enough that the only embodiments, or all of the embodiments, contain a particular limitation.”). Thus, we agree with Petitioners that the broadest reasonable interpretation of the term “access controls” is “controls which limit a device’s access to a specific subset of storage devices or sections of a single storage device according to the map.” Ex. 1026, 40; Ex. 2027 ¶ 34.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “1. Reason to Combine the CRD Manual and the HP Journal Applicable to all of the challenged claims, the Petition provides a detailed analysis of why a person of ordinary skill in the art would have been motivated to combine the CRD Manual and the HP Journal6 in the manner asserted by Petitioners. Pet. 22–26 (citing Ex. 1003 ¶¶ 54–62). Specifically, Petitioners contend: (1) the CRD Manual explains that the disclosed CRD- 5500 controller has a modular design capable of accepting various I/O modules; (2) the HP Journal describes the benefits of FC technology over SCSI technology; (3) the HP Journal discloses the replacement of SCSI with FC, including the use of SCSI commands with FC frames. Id. For example, the HP Journal discusses various advantages of FC over SCSI as a transport medium technology, including advantages in bandwidth and addressability, and explains how some FC controllers are compatible with SCSI devices. Id.; see, e.g., Ex. 1006, 94–95, 99–101. Patent Owner does not dispute in its 6 These portions of the HP Journal relied on by Petitioners share a common author (Meryem Primmer), and similar subject matter (FC technology and its implementation), as well as the same apparent publication date in the same issue of the journal. Patent Owner did not dispute that one of ordinary skill would have combined the teachings of the different articles in the HP Journal. Based on the full record after trial, we agree and consider them collectively, as the parties have done throughout the proceeding, for simplicity and to avoid confusion. Patent Owner Response that a person of ordinary skill7 would have had reason to combine the teachings of these references. Based on the full record after trial, Petitioners have articulated a sufficient reason to combine the CRD Manual and the HP Journal with rational underpinnings supported by the evidence. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 15

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for patent owner

    “Establishing long-felt need requires objective evidence that an art- recognized problem existed in the art for a long period of time without solution.” Ex parte Jellá, 90 USPQ2d 1009, 1019 (BPAI 2008) (precedential). We have reviewed the cited testimony (Ex. 2029, 103:18–24, 104:15– 105:1, 136:6–14), and find it insufficient to establish a long-felt need. The testimony is directed to whether the term “storage router” was used in the art in the late 1990s. See, e.g., id. at 104:24–105:1. It does not address what the needs or problems of the art were at that time. Thus, we do not find it supports Patent Owner’s contention. The article cited by Patent Owner (Ex. 2038), which suggests that a problem might have existed in file system performance generally, nevertheless also does not establish that there was long-felt need for the claimed invention. Patent Owner presented no evidence as to how long this problem had been recognized, the extent of the problem, whether it remained unresolved at the time of the invention, or whether the invention resolved this need. See Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1332–33 (Fed. Cir. 2009). As such, we find that Patent Owner has not shown adequately that there was any long-felt need for the claimed invention. slip op. at 30

  Patent outcomesUS 6,425,035 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,425,035
• Cisco Systems, Inc. / Quantum Corporation et al. v. Crossroads Systems, Inc.All claims unpatentable
  PTAB · Jan 29, 2016 · IPR2014-01226 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1–14 are unpatentable as obvious: claims 1–5 and 7–14 over the CRD-5500 Manual and HP Journal, and claim 6 with the QLogic Data Sheet.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDisclaimer not foundDecided for petitioner

    “limitations. We conclude that, given the evidence and arguments presented, our original construction requires some additional clarification. With a full record, we find that Petitioners do not explain sufficiently what it means to “facilitate” routing and access controls. Thus, we determine that our original construction is too vague. We also conclude that the construction proposed by Patent Owner is overly narrow. Although Patent Owner emphasizes that the map must identify specific host devices, it does not explain persuasively why the claim language should be construed to exclude doing so via intermediate identifiers. See PO Resp. 5–11. Patent Owner does not identify any disclosure in the ’035 patent’s specification that clearly disavows mapping to a device indirectly, or mapping to a device via an intermediate identifier that could identify a different host if the system were configured differently. See Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1374 (Fed. Cir. 2005) (holding that “words of manifest exclusion or explicit disclaimers in the specification are necessary to disavow claim scope” (internal quotations omitted)). Patent Owner’s discussion of Figure 3, for example, is insufficient to compel a narrow construction of the term because Patent Owner analyzes only a preferred embodiment of the invention. See PO Resp. 8–10; see, e.g., In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (holding that limitations should not be imported from preferred embodiments into the claims absent a clear disclaimer of claim scope in the specification). Moreover, the ’035 patent specifically discusses mapping with identifiers that are not immutable. For example, the specification discusses addressing devices on an FC loop using an AL_PA (arbitrated loop physical address) identifier, and the possibility of “FC devices changing their AL-PA due to device insertion or other loop initialization.” Ex. 1001, 8:29–34; see Tr. 54:5–55:15 (counsel for Patent Owner acknowledging an AL_PA is a “temporarily assigned ID” that can point to different devices); Pet. Reply 5– 8 (discussing evidence supporting the use of intermediate identifiers, including testimony by Patent Owner’s proffered expert). For the reasons above, we are not persuaded that the broadest reasonable interpretation of the “map” limitations mandates mapping directly or immutably to a host device itself, or excludes mapping to devices using intermediate identifiers.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “1. Reason to Combine the CRD Manual and the HP Journal Applicable to all of the challenged claims, the Petition provides a detailed analysis of why a person of ordinary skill in the art would have been motivated to combine the CRD Manual and the HP Journal6 in the manner asserted by Petitioners. Pet. 22–26 (citing Ex. 1003 ¶¶ 54–62). Specifically, Petitioners contend: (1) the CRD Manual explains that the disclosed CRD- 5500 controller has a modular design capable of accepting various I/O modules; (2) the HP Journal describes the benefits of FC technology over SCSI technology; (3) the HP Journal discloses the replacement of SCSI with FC, including the use of SCSI commands with FC frames. Id. For example, the HP Journal discusses various advantages of FC over SCSI as a transport medium technology, including advantages in bandwidth and addressability, and explains how some FC controllers are compatible with SCSI devices. Id.; see, e.g., Ex. 1006, 94–95, 99–101. Patent Owner does not dispute in its 6 These portions of the HP Journal relied on by Petitioners share a common author (Meryem Primmer), and similar subject matter (FC technology and its implementation), as well as the same apparent publication date in the same issue of the journal. Patent Owner did not dispute that one of ordinary skill would have combined the teachings of the different articles in the HP Journal. Based on the full record after trial, we agree and consider them collectively, as the parties have done throughout the proceeding, for simplicity and to avoid confusion.” slip op. at 15

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner

    “Establishing long-felt need requires objective evidence that an art- recognized problem existed in the art for a long period of time without solution.” Ex parte Jellá, 90 USPQ2d 1009, 1019 (BPAI 2008) (precedential). We have reviewed the cited testimony (Ex. 2029, 103:18–24, 104:15– 105:1, 136:6–14), and find it insufficient to establish a long-felt need. The testimony is directed to whether the term “storage router” was used in the art in the late 1990s. See, e.g., id. at 104:24–105:1. It does not address what the needs or problems of the art were at that time. Thus, we do not find it supports Patent Owner’s contention. The article cited by Patent Owner (Ex. 2038), which suggests that a problem might have existed in file system performance generally, nevertheless also does not establish that there was long-felt need for the claimed invention. Patent Owner presented no evidence as to how long this problem had been recognized, the extent of the problem, whether it remained unresolved at the time of the invention, or whether the invention resolved this need. See Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1332–33 (Fed. Cir. 2009). As such, we find that Patent Owner has not shown adequately that there was any long-felt need for the claimed invention. slip op. at 30

  • Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia no nexusDecided for petitioner

    “Evidence of commercial success “is only significant if there is a nexus between the claimed invention and the commercial success.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). To establish a proper nexus between a claimed invention and the commercial success of a product, a patent owner must offer “proof that the sales [of the allegedly successful product] were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.” In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). As a threshold matter, Patent Owner has not established a sufficient nexus between its commercial product and the features of its claimed invention. Patent Owner has not shown that the items listed in Exhibit 2044 embody the claimed invention, or that sales of the listed products resulted from novel, non-obvious features of the claimed invention rather than other features. See Ormco Corp., 463 F.3d at 1312–13 (evidence did not show that commercial success was due to claimed and novel features). Even if Patent Owner had established a nexus between its marketed technology and the invention claimed in the patent, its commercial success argument would not be persuasive. Patent Owner’s declarant’s statements that certain products include “mapping” or “access controls” (Ex. 2043 ¶¶ 5– 6) are insufficient to show commercial success of the claimed invention. An important component of the commercial success inquiry is determining market share associated with the alleged success, relative to all competing products. In re Applied Materials, Inc., 692 F.3d 1289, 1300 (Fed. Cir. 2012). Even sales volume, if provided without market share information, is only weak evidence, if any, of commercial success. Id. at 1299. Here, the fact that Patent Owner sold a certain number of these devices and that they made up a certain share of its own sales is insufficient to establish commercial success without some context about the larger market. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).” slip op. at 31

  Patent outcomesUS 6,425,035 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,425,035
• Cisco Systems, Inc. / Quantum Corporation et al. v. Crossroads Systems, Inc.All claims unpatentable
  PTAB · Jan 29, 2016 · IPR2015-00852 · APJ J John Lee · IPR · Final written decision

  Claims 1–39 are unpatentable as obvious over the CRD Manual and HP Journal under § 103(a).

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner

    “narrow. Although Patent Owner emphasizes that the map must identify specific host devices, it does not explain persuasively why the claim language should be construed to exclude doing so via intermediate identifiers. See PO Resp. 5–10. Patent Owner does not identify any disclosure in the ’147 patent’s specification that clearly disavows mapping to a device indirectly, or mapping to a device via an intermediate identifier that could identify a different host if the system were configured differently. See Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1374 (Fed. Cir. 2005) (holding that “words of manifest exclusion or explicit disclaimers in the specification are necessary to disavow claim scope” (internal quotations omitted)). Patent Owner’s discussion of Figure 3, for example, is insufficient to compel a narrow construction of the term because it analyzes only a preferred embodiment of the invention. See PO Resp. 8–9; see also In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (holding that limitations should not be imported from embodiments into the claims absent a clear disclaimer of claim scope in the specification).” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableDecided for petitioner

    “detailed analysis of why a person of ordinary skill in the art would have been motivated to combine the CRD Manual and the HP Journal in the manner asserted by Petitioners. Pet. 18–22 (citing Ex. 1003 ¶¶ 53–62). Specifically, Petitioners contend: (1) the CRD Manual explains that the disclosed CRD- 5500 controller has a modular design capable of accepting various I/O modules; (2) the HP Journal describes the benefits of FC technology over SCSI technology; (3) the HP Journal discloses the replacement of SCSI with FC, including the use of SCSI commands with FC frames. Id. For example, the HP Journal discusses various advantages of FC over SCSI as a transport medium technology, including advantages in bandwidth and addressability, 7 The level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Boudreau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). and explains how some FC controllers are compatible with SCSI devices. Id.; see, e.g., Ex. 1006, 94–95, 99–101. Patent Owner does not dispute in its Patent Owner Response8 that a person of ordinary skill would have had reason to combine the teachings of these references. Based on the full record after trial, Petitioners have articulated a sufficient reason to combine the CRD Manual and the HP Journal with rational underpinnings supported by the evidence. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 10

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “there must be a nexus between the merits of the claimed invention and the evidence of secondary considerations for that evidence to be accorded substantial weight. In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). “Nexus” is a legally and factually sufficient connection between the objective evidence and the claimed invention, such that the objective evidence should be considered in determining non-obviousness. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). The burden of producing evidence showing a nexus lies with the patent owner. Id.; Prometheus Labs, Inc. v. Roxane Labs, Inc., 805 F.3d 1092, 1101–02 (Fed. Cir. 2015).” slip op. at 23

  • ExcludeMotion to exclude, deniedDenied

    “We agree with Petitioners that Patent Owner’s objections go to the weight that should be given the evidence, not its admissibility. Moreover, as the entirety of Dr. Levy’s deposition is in the record of this proceeding, we have considered the additional passages of Dr. Levy’s testimony that Patent Owner identifies, as well as the rest of his testimony. Accordingly, Patent Owner’s Motion to Exclude is denied.” slip op. at 28

  Patent outcomesUS 7,051,147 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,051,147
• Oracle Corporation / Netapp Inc. v. Crossroads Systems, Inc.All claims unpatentable
  PTAB · Jan 29, 2016 · IPR2014-01209 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1, 2, 4, 5, 10, 11, and 13 are unpatentable as obvious over the Kikuchi-based grounds; the Bergsten–Hirai grounds did not establish unpatentability.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner

    “must be continuous exercise of reasonable diligence. In re McIntosh, 230 F.2d 615, 619 (CCPA 1956); see also Burns v. Curtis, 172 F.2d 588, 591 (CCPA 1949) (referring to “reasonably continuous activity”). A party alleging diligence must account for the entire critical period. Griffith v. Kanamuru, 816 F.2d 624, 626 (Fed. Cir. 1987); Gould v. Schawlow, 363 F.2d 908, 919 (CCPA 1966). Even a short period of unexplained inactivity is sufficient to defeat a claim of diligence. Morway v. Bondi, 203 F.2d 742, 749 (CCPA 1953); Ireland v. Smith, 97 F.2d 95, 99–100 (CCPA 1938). In In re Mulder, 716 F.2d 1542, 1542–46 (Fed. Cir. 1983), the Federal Circuit affirmed a determination of lack of reasonable diligence, where the evidence of record was lacking for a two-day critical period. Likewise, in Rieser v. Williams, 255 F.2d 419, 424 (CCPA 1958), there was insufficient diligence where no activity was shown during the first 13 days of the critical period.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “We credit the testimony of Dr. Chase that one of ordinary skill in the art would have been motivated and able to combine Kikuchi and Bergsten in the manner proposed by Petitioner. Ex. 1010 ¶¶ 142–147; Ex. 2054, 180– 213. Patent Owner’s arguments to the contrary address the purported complexity of the combination, but do not establish that a person of ordinary skill would not have had a reasonable expectation of success. Obviousness does not require absolute predictability. In re Kronig, 539 F.2d 1300, 1304 (CCPA 1976). Both experts agree that the modifications were within the level of ordinary skill in this field (Ex. 1010 ¶ 145; Ex. 1218, 103:16–21). Dr. Chase’s Declaration states that tables and trees are interchangeable data lookup constructs for address translations, and that the “tree mapping” of Bergsten may be collapsed into a simple mapping table construct such as that of Kikuchi in a single-controller implementation; his deposition testimony provides greater detail in response to Patent Owner’s questions on how the collapsing would occur in different circumstances. Ex. 1010 ¶ 145; 2054, 180–219. Thus, we are persuaded by Petitioner’s testimony and evidence that the combination of Kikuchi and Bergsten was within the skill level of an ordinarily skilled artisan, and would not change the principles of operation of the respective references. Finally, Patent Owner argues that Petitioner has not provided a motivation to combine Kikuchi and Bergsten. PO Resp. 50–52. According to Petitioner, one of ordinary skill in the art would have been motivated to combine Kikuchi and Bergsten to “improve the Kikuchi system with the advantage of virtualized, networked storage,” to “increase both the number of storage devices accessible to hosts and the storage address range available,” and to “benefit from increased restructuring capabilities.” Pet. 34–35 (citing Ex. 1010 ¶ 142–147); Reply 13 (citing Ex. 1010 ¶ 146). Patent Owner challenges each of these statements, and the supporting testimony, as lacking evidence supporting how Bergsten would provide the alleged benefits or explaining why one of ordinary skill in the art would be motivated to combine the references as proposed by Petitioner. PO Resp. 51–52. Here, too, we credit the testimony of Dr. Chase that one of ordinary skill in the art would have been motivated to combine Kikuchi and Bergsten in the manner proposed by Petitioner. Ex. 1010 ¶¶ 142–147. Bergsten itself indicates that it would be “desirable” for a storage controller to not be “dependent on any particular hardware or software configuration of any host computer or mass storage device which it services.” Ex. 1007, 1:48–51. The numerous reasons articulated by Petitioner for the combination of Kikuchi with Bergsten, resulting in an enhanced system with advantages including virtualized storage, increased capacity and increased flexibility, are detailed by Petitioner and supported by testimony. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421–22 (2007). Patent Owner’s arguments to the contrary are unavailing.” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner

    “This type of reasoning—where relevant parts of the reference are disregarded for the proposed combination without sufficient explanation of why a person of ordinary skill would do so—is precisely the type of hindsight reasoning that must be rejected. “Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” Grain Processing Corp. v. Am. Maize-Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)). We have been asked without sufficient justification to carve out and perhaps modify the access controls disclosed in Hirai and combine them with Bergsten to hold that the addition of a certain type of access controls to Bergsten would have been obvious. But “[t]his type of piecemeal analysis is precisely the kind of hindsight that the Board must not engage in.” In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011). Petitioner has not explained why a person of ordinary skill, without the claims in front of them, would have been motivated to take the access control table of Hirai and merge it with the alleged map of Bergsten in the manner that they have proposed. The only thing that Petitioner suggests is that a person of ordinary skill could have done it, but that is not the test of obviousness. See Belden, Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“Obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). Petitioner’s analysis of claims 1, 2, 4, 10, 11, and 13 all rely on the same principles. Accordingly, we find that Petitioner has failed to show by a preponderance of the evidence that claims 1, 2, 4, 10, 11, and 13 are obvious over the combination of Bergsten and Hirai.” slip op. at 26

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner

    “Establishing long-felt need requires objective evidence that an art- recognized problem existed in the art for a long period of time without solution.” Ex parte Jellá, 90 USPQ2d 1009, 1019 (BPAI 2008) (precedential). We have reviewed the cited testimony (Ex. 2029, 103:18–24, 104:15– 105:1, 136:6–14), and we do not find it to demonstrate a long-felt need. The testimony is directed to whether the term “storage router” was used in the art in the late 1990s. See, e.g., id. at 104:24–105:1. It does not address what the needs or problems of the art were at that time. Thus, we do not find it supports Patent Owner’s contention. The article cited by Patent Owner (Ex. 2038), which suggests that a problem might have existed in file system performance generally, nevertheless does not establish that there was long-felt need for the claimed invention. Patent Owner has proffered no evidence as to how long this problem had been recognized, the extent of the problem, whether it remained unresolved at the time of the invention, and whether the invention resolved this need. See Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1332–33 (Fed. Cir. 2009). As such, we find that Patent Owner has not shown adequately that there was any long-felt need. slip op. at 29

  Patent outcomesUS 7,051,147 unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,051,147

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