NetAppv.Crossroads Systems, Inc.Download PDFPatent Trial and Appeal BoardFeb 10, 201512910515 (P.T.A.B. Feb. 10, 2015) Copy Citation 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 Copy with citationCopy as parenthetical citation