Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 11
`Entered: May 21, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TOSHIBA CORPORATION; TOSHIBA AMERICA, INC.;
`TOSHIBA AMERICA ELECTRONIC COMPONENTS, INC.; AND
`TOSHIBA AMERICA INFORMATION SYSTEMS, INC.
`Petitioner
`
`v.
`
`INTELLECTUAL VENTURES II LLC
`Patent Owner
`_______________
`
`Case IPR2014-00201
`Patent 6,618,788
`_______________
`
`
`Before KEVIN F. TURNER, TREVOR M. JEFFERSON,
`and DAVID C. MCKONE, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
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`
`
`
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`
`
`Tel: 571-272-7822
`
`
`Paper 11
`Entered: May 21, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TOSHIBA CORPORATION; TOSHIBA AMERICA, INC.;
`TOSHIBA AMERICA ELECTRONIC COMPONENTS, INC.; AND
`TOSHIBA AMERICA INFORMATION SYSTEMS, INC.
`Petitioner
`
`v.
`
`INTELLECTUAL VENTURES II LLC
`Patent Owner
`_______________
`
`Case IPR2014-00201
`Patent 6,618,788
`_______________
`
`
`Before KEVIN F. TURNER, TREVOR M. JEFFERSON,
`and DAVID C. MCKONE, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
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`Case IPR2014-00201
`Patent 6,618,788
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`I. INTRODUCTION
`A. Background
`Toshiba Corporation, Toshiba America, Inc., Toshiba America
`Electronic Components, Inc., and Toshiba America Information Systems,
`Inc. (collectively “Petitioner”) filed a Corrected Petition (Paper 8, “Pet.”) to
`institute an inter partes review of claims 1-27 of U.S. Patent No. 6,618,788
`(Ex. 1001, “the ’788 patent”). See 35 U.S.C. § 311. Intellectual Ventures II
`LLC (“Patent Owner”) filed a Preliminary Response (Paper 10, “Prelim.
`Resp.”).
`The standard for instituting an inter partes review is set forth in
`35 U.S.C. § 314(a), which provides as follows:
`THRESHOLD.—The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311
`and any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`We determine that the record before us does not demonstrate that
`there is a reasonable likelihood that Petitioner would prevail with respect to
`at least one challenged claim. We consequently deny the petition and
`decline to institute an inter partes review of the ’788 patent.
`
`B. Related Matters
`Patent Owner has asserted the ’788 patent against Petitioner in
`Intellectual Ventures I LLC and Intellectual Ventures II LLC v. Toshiba
`Corporation et al., Case No. 1:13-cv-00453 (D. Del.). Pet. 1; Paper 4 at 2.
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`C. References Relied Upon
`Petitioner relies upon the following prior art references:
`Ex. 1003 Bastiani
`US 6,609,167 B1
`
`Aug. 19, 2003
`
`
`
`
`
`
`(filed Mar. 15, 2000)
`Ex. 1005 McDonald US 6,421,760 B1
`
`July 16, 2002
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`
`
`
`
`
`(filed Apr. 26, 2000)
`Ex. 1006 Clay
`US 5,465,338
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`Nov. 7, 1995
`
`D. The Asserted Grounds
`Petitioner contends that the challenged claims are unpatentable based
`on the following specific grounds (Pet. 7):
`References
`Basis
`Bastiani
`§ 102(e)
`
`Claims challenged
`1, 9, 10, 17-20, 22, 24
`
`Bastiani
`
`§ 103(a)
`
`1-27
`
`Bastiani and McDonald
`
`§ 103(a)
`
`7, 16, and 21
`
`Bastiani and Clay
`
`§ 103(a)
`
`23
`
`
`
`II. ANALYSIS
`A. The ’788 Patent
`The ’788 patent is directed to techniques for communicating over a
`serial communication connection, such as a universal serial bus (“USB”),
`between a computer host and a remote device that conforms to one or more
`of the Advanced Technology Attachment (“ATA”) standards. Ex. 1001,
`Abstract. The ATA standards are promulgated by the American National
`Standards Institute (“ANSI”) and define the physical, electrical, transport,
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`and ccommand protocols ffor the attaachment off devices too a computter host
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`overr an ATA bbus. Id. at col. 1, ll. 111-22. An
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`example oof an ATAA device is
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`an innternal hardd drive of a personal computer.. Id. at coll. 1, ll. 17-
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`19.
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`One embbodiment oof the invention of thhe ’788 pattent is showwn in
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`Figuure 5, reprooduced beloow:
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`Figuure 5 is a bllock diagraam illustratting host 1130 in commmunicatio
`n with
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`exterrnal ATA ddevice 1400. Id. at cool. 4, ll. 63--65. The eexternal ATTA device
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`can bbe, for exaample, an eexternal harrd drive. IId. at col. 33, ll. 55-577. Host 1300
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`is coonnected too ATA Devvice 140 viia smart caable 150 thhat plugs innto USB
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`port 132 on thee host. Id. at col. 5, lll. 17-18, 221-22, 34-335. A connnector 152
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`at the other endd of the smmart cable mmates withh socket 1442 of ATA
`device
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`140. Id. at col. 5, ll. 34-335. Smart cable 150
`
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`includes bbridging cirrcuit 156
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`that converts ddata for commmunicatioon betweenn USB hosst 130 and
`ATA
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`ce 140. Idd. at col. 5, ll. 39-43.
`devi
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`The host communicates with the ATA device by accessing, reading
`
`from, and writing to registers on the ATA device. Id., col. 1, l. 61-col. 2,
`l. 23. For example, the ATA device executes register-driven commands
`from the host when those commands are written to the ATA device’s
`“COMMAND” register. Id. at col. 2, ll. 1-9. The host includes a register-
`based ATA host driver that formats ATA register accesses into ATA
`command blocks, which are packets. Id. at col. 4, ll. 11-14; col. 5, ll. 57-63;
`Fig. 7. The command blocks are sent from the host to the bridging circuit.
`Id. at col. 4, ll. 14-15; col. 5, l. 64-col. 6, l. 6; col. 6, ll. 26-34. At the
`bridging circuit, a controller receives an ATA command block, recognizes it
`as a command block, and parses it into a sequence of ATA register accesses.
`Id. at col. 6, ll. 7-14; Fig. 7. The controller then delivers the ATA register
`access sequence to an ATA register protocol adapter for execution. Id. at
`col. 6, ll. 14-15; Fig. 7. The ATA register protocol adapter contains the
`functionality for communicating asynchronously with the ATA device.
`Id. at col. 6, ll. 20-22.
`
`When a given ATA register-delivered transaction requests the values
`stored in one or more of the ATA device’s registers, the bridging circuit
`sends those values to the host in a packet format. Id. at col. 4, ll. 20-23.
`Claim 1, reproduced below, is illustrative of the claimed subject
`matter:
`
`A method of controlling an ATA device using
`1.
`packet-based communication between a host and a packet-to-
`ATA bridge, the method comprising
`at the host:
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`formatting the ATA register accesses necessary to
`execute a given ATA register-delivered
`transaction into a command block; and
`transmitting the command block to the packet-to-
`ATA bridge in a packet format, and
`at the packet-to-ATA bridge:
`parsing the command block into a sequence of
`ATA operations necessary to execute the
`given ATA register-delivered transaction;
`communicating with an ATA device attached to
`the bridge via an ATA interface to execute
`the sequence of ATA operations on the ATA
`device; and
`when the given ATA register-delivered transaction
`requests the values for one or more registers
`on the ATA device, returning the register
`values to the host in packet format.
`
`
`B. Claim Construction
`As a step in our analysis for determining whether to institute a trial,
`we determine the meaning of the claims. The Board interprets claims using
`the broadest reasonable construction. See 37 C.F.R. § 100(b); Office Patent
`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Claim
`terms generally are given their ordinary and customary meaning, as would
`be understood by one of ordinary skill in the art in the context of the entire
`disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`Cir. 2007).
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`1. “parse” / “parsing”
`Neither party proposes an express construction of “parse” or
`“parsing.” However, Petitioner contends that a component in Bastiani
`“parses or breaks down” an ATA command into a standard sequence of
`ATA operations. Pet. 16. Thus, Petitioner implicitly proposes construing
`“parse” to mean break down into constituent parts.
`An ordinary meaning of “parse” is:
`To resolve a request or response into component parts. In the
`context of messages, a device can break the message into
`pieces, each of which consists of a header and sometimes some
`corresponding data. If a device is able to parse a message, it
`can recognize each piece of a message. It does not necessarily
`make use of the data found in that message. However, it shall
`make any confirmation responses or other responses that the
`message requires.
`IEEE 100, THE AUTHORITATIVE DICTIONARY OF IEEE STANDARDS TERMS
`795 (7th ed. 2000) (Ex. 3001). The specification describes parsing
`consistently with breaking down a larger block into its component parts. For
`example, the ’788 patent explains that “[t]he bridge parses the command
`block into a sequence of ATA operations necessary to execute the given
`ATA register-delivered transaction.” Ex. 1001, col. 4, ll. 15-17. Similarly,
`the patent explains that “[w]hen controller 166 receives an ATA command
`block, it recognizes the command block as such, checks it for
`inconsistencies, and parses it into a sequence of ATA register accesses.”
`Id. at col. 6, ll. 11-14. Accordingly, on this record, “parse” means to break
`down a data packet or block into its component parts.
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`to all otheer
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` Other terrms
`2.
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`
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`For purpposes of thiis decisionn, no other
`
`term in claaims 1-27
`requires
`
`
`exprress construuction and we apply a plain andd ordinary
`meanings
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`termms, consisteent with thee specificaation of thee ’788 patennt.
`
`
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`C. Anticcipation byy Bastiani
`
`1. Bastiani
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`
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`
`
`Petitioneer contends that claimms 1, 9, 100, 17-20, 222, and 24 aare
`
`Bastiani.
`. Bastiani
`
`anticcipated by
`Pet. 12-36
`describes
`
`an advancced serial
`
`
`protoocol (“ASPP”) that defines a datta transmis
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`sion enviroonment forr
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`commmunicatingg between a computeer system aand peripheeral devicees, such as
`2, ll. 20-
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`hardd drives andd CD-ROMM drives. EEx. 1003, ccol. 1, ll. 225-32; col.
`
`
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`23. Figure 3 iss reproduceed below:
`
`
`onics
`rive Electrtegrated Drting an Intam illustratlock diagraFiguure 3 is a bl
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`(“IDDE”) devicee connectedd to a hostt computer
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`through ann ASP Adaapter.
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`Id. at col. 3, ll. 63-65. According to Petitioner’s declarant, Thomas Gardner,
`the terms IDE and ATA are interchangeable. Ex. 1007 ¶ 11 (citing
`MICROSOFT COMPUTER DICTIONARY 33 (4th ed. 1999) (Ex. 1004)). For
`purposes of this decision, we accept the argument that IDE and ATA are
`interchangeable.
`
`IDE device 122 and ASP Adapter 118 are connected through standard
`IDE parallel cable 120 and are enclosed within enclosure 116. Ex. 1003,
`col. 6, ll. 44-47. ASP Adapter 118 is connected via serial bus 110 to host
`adapter 104, which connects to the motherboard of host 102 through a
`Peripheral Component Interconnect (“PCI”) interface. Id. at col. 6, ll. 20-28.
`
`The host creates a Command Descriptor Block (“CDB”) with an ATA
`command and stores it in memory. Id. at col. 49, ll. 13-15; col. 50, ll. 16-23.
`The host then communicates the ATA Command to the IDE device by
`sending the ATA Command packaged in a packet (an “OUTDATA0/1
`packet”). Id. at col. 41, ll. 23-27; col. 50, ll. 24-26. The packet is sent over
`serial bus 110 to ASP Adapter 118. Id. at col. 42, ll. 6-10. After IDE device
`122 executes the ATA command, the device returns its status to the host in a
`packet (a “DATA0/1 packet”). Id. at col. 41, ll. 27-31.
`
`
`2. Claim 1
`Regarding claim 1, Petitioner contends that Bastiani’s host computer
`is a host, its IDE device is an ATA device, and its ASP Adapter is a packet-
`to-ATA bridge. Pet. 13-15. Petitioner further contends that Bastiani’s
`creation of CDBs is formatting ATA register accesses necessary to execute a
`given ATA register-delivered transaction into a command block (Pet. 15-
`16), and that Bastiani’s transmission of an OUTDATA0/1 packet is
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`transmitting the command block to the packet-to-ATA bridge in a packet
`format (Pet. 16). Petitioner also argues that Bastiani’s returning the
`DATA0/1 packets to the host constitutes returning the register values to the
`host in packet format.
`The parties dispute whether Bastiani discloses claim 1’s “parsing the
`command block into a sequence of ATA operations necessary to execute the
`given ATA register-delivered transaction.” Petitioner argues that Bastiani’s
`ASP Adapter “parses or breaks down” the ATA Command sent in the
`OUTDATA0/1 packet into a standard sequence of ATA operations. Pet. 16.
`Petitioner (Pet. 17) cites Bastiani (Ex. 1003) at column 42, lines 6-16, which
`states:
`The ASP protocol implements a serial transport mechanism and
`the commands and status that are passed are the normal
`ATA/ATAPI1 commands that are currently used with the
`parallel version of ATA/ATAPI. ATA/ATAPI commands are
`sent across the ASP bus by the transport mechanism and it is up
`to the device to execute these commands in a similar manner to
`what is done today. The code used to execute these commands
`should remain identical for all devices. The user should consult
`the current version of the X310 document on AT Attachement-
`3 Interface for a complete listing of the commands and
`responses that the device uses.
`Petitioner argues that the ASP Adapter connects to the IDE device by a
`standard IDE cable; therefore it is sending ATA register-delivered
`transactions to the IDE device. Pet. 16-17. According to Petitioner, because
`
`
`1 According to the ’788 patent, AT Attachment with Packet Interface
`Extension (“ATAPI”) specifies a method for controlling a storage device
`over an ATA bus using packet-delivered commands. Ex. 1001, col. 2,
`ll. 31-33.
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`the ASP Adapter receives the ATA commands in packets sent by the host
`over the ASP cable, “the ASP ADAPTER must parse or break down the
`ATA Command contained in the OUTDATA0/1 packets into [a] standard
`sequence of ATA operations and the ASP ADAPTER then causes those
`operations to occur by accessing ATA registers on the IDE device.”
`Id. at 17. Petitioner relies on its declarant, Mr. Gardner, to support this
`argument. Id. (citing Ex. 1007 ¶¶ 23-25).
`Mr. Gardner seeks to show the technical details of Bastiani’s ASP
`Adaptor through comparison of Bastiani’s system with that described in the
`’788 patent. According to Mr. Gardner, Bastiani’s IDE device 122 is
`“identical” to the ATA device described in the ’788 patent. Ex. 1007 ¶ 24.
`Mr. Gardner argues that the connectors and the signals carried over
`Bastiani’s standard IDE cable must be identical to those of connector 152 of
`the ’788 patent because both the IDE cable and the connector comport to the
`same standard. Id. Because their connectors and signals are identical,
`Mr. Gardner continues, the ASP Adapter sends standard ATA commands to
`the registers of a device so that the device can perform register-delivered
`transactions, just as the ’788 patent’s bridging circuit does. Id. Mr. Gardner
`then concludes that, because both Bastiani’s ASP Adapter and the
`’788 patent’s bridging circuit receive packets containing an ATA Command
`Block over a serial cable, Bastiani’s ASP Adapter must parse those packets
`into sequences of ATA operations in the same manner as the ’788 patent’s
`bridging circuit. Id.
`Patent Owner contends that Bastiani does not disclose explicitly the
`parsing limitation of claim 1. Prelim. Resp. 5. Rather, Patent Owner argues,
`Bastiani merely describes passing commands across the ASP bus to be
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`executed by the IDE device without describing any parsing. Id. at 6. We
`agree. The portion of Bastiani cited by Petitioner describes transmitting
`ATA commands across an ASP bus to a “device.” 2 Petitioner, however, has
`not identified persuasively where Bastiani describes the details of how the
`device processes the ATA commands once it receives them or whether it
`breaks down a packet into component parts. Rather, Bastiani simply states
`that “it is up to the device to execute these commands in a similar manner to
`what is done today.” Ex. 1003, col. 42, ll. 11-12.
`Patent Owner also argues that Petitioner, by failing to show explicit
`disclosure of the parsing limitation and arguing instead that it “must” be
`disclosed, essentially argues that the parsing limitation is disclosed
`inherently in Bastiani. Prelim. Resp. 7. “A reference may anticipate
`inherently if a claim limitation that is not expressly disclosed ‘is necessarily
`present, or inherent, in the single anticipating reference.’” In re
`Montgomery, 677 F.3d 1375, 1379-80 (Fed. Cir. 2012) (quoting Verizon
`Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1337 (Fed. Cir.
`2010)). “‘Inherency . . . may not be established by probabilities or
`possibilities. The mere fact that a certain thing may result from a given set
`of circumstances is not sufficient.’” Bettcher Indus., Inc. v. Bunzl USA, Inc.,
`661 F.3d 629, 639-40 (Fed. Cir. 2011) (quoting In re Oelrich, 666 F.2d 578,
`581 (CCPA 1981)).
`
`
`2 Bastiani uses the term “device” to refer to both the “IDE device” of
`Figure 3 and an “ASP device” of Figures 2 and 4A-4C, which includes the
`functionality of the IDE device along with an ASP Adapter, either integrated
`with the IDE device or connected to the IDE device. Ex. 1003, col. 6, ll. 17-
`61; col. 6, ll. 53-60.
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`According to Patent Owner, Petitioner’s inherency argument is based
`on an unproved allegation that Bastiani’s ASP Adapter and the ’788 patent’s
`bridging circuit both comport to the same standard. Prelim. Resp. 8.
`According to Patent Owner, Petitioner’s use of the ’788 patent’s disclosure
`to prove the contents of Bastiani’s disclosure is an improper circular
`argument. Id. Patent Owner further argues that, even if the ASP Adapter in
`Bastiani and the bridging circuit in the ’788 patent do comport to the same
`standard, the IDE/ATA standard does not relate to the claimed parsing
`limitation. Id. at 9-10. Patent Owner contends that neither the ’788 patent
`nor the IDE/ATA standards define Bastiani’s ASP packets or specify how to
`parse them. Id. at 9.
`We agree with Patent Owner that Petitioner has not shown sufficiently
`that Bastiani inherently discloses the parsing limitation of claim 1.
`Petitioner’s declarant essentially opines that because Bastiani’s ASP Adapter
`comports to the same standard as the ’788 patent’s bridging circuit, receives
`similar input, and outputs the same commands, it must be implemented in
`same way. Ex. 1007 ¶ 24. Mr. Gardner, however, does not introduce
`persuasive evidence that the parsing feature of the bridging circuit is a
`requirement of the ATA standards. Although the ’788 patent states that its
`bridging circuit parses a command block into a sequence of ATA operations,
`it does not identify this feature as a requirement of any version of the ATA
`standards. Ex. 1001, col. 4, ll. 15-17; col. 6, ll. 11-14.
`Moreover, as Patent Owner argues (Prelim. Resp. 9), Bastiani’s ASP
`Adapter receives different input than the ’788 patent’s bridging circuit.
`Specifically, Bastiani’s ASP Adapter receives a packet conforming to an
`ASP protocol (Ex. 1003, col. 3, ll. 21-34), while the ’788 patent’s bridging
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`circuit receives a Mass Storage Class (“MSC”) packet (Ex. 1001, col. 6,
`ll. 45-50; col. 10, ll. 14-20). Petitioner does not point to persuasive evidence
`that any ATA standard requires both types of packets to be processed using
`the same parsing technique. Specifically, Petitioner has not demonstrated
`that any such standard requires Bastiani’s ASP Adapter to break down an
`OUTDATA0/1 packet into a sequence of ATA operations.
`We also agree with Patent Owner (Prelim. Resp. 8) that Petitioner has
`not shown that Bastiani’s ASP Adapter and the ’788 patent’s bridging circuit
`comport to the same standard. According to the ’788 patent, the ATA
`standards broadly include ATA/ATAPI-4, its predecessors, and future ATA
`standards. Ex. 1001, col. 1, ll. 11-16. Mr. Gardner does not state to which
`version of the ATA standards the ’788 patent’s bridging circuit comports.
`He does state, however, that ATA-4 was the most recent version available at
`the time the ’788 patent was filed, suggesting that the preferred bridging
`circuit described in the ’788 patent would comport to ATA-4. Ex. 1007
`¶ 11. Petitioner also does not specify to which version of the ATA standards
`Bastiani’s ASP Adapter comports. The portion of Bastiani to which
`Petitioner cites suggests it is an earlier version, ATA-3, rather than ATA-4.
`Ex. 1003, col. 42, ll. 13-16 (“The user should consult the current version of
`the X3T10 document on AT Attachement-3 Interface for a complete listing
`of the commands and responses that the device uses.”). Mr. Gardner does
`not provide a comparison of ATA-4 with ATA-3. Nor does Mr. Gardner
`state that the ’788 patent’s preferred bridging circuit would have comported
`to ATA-3, or that Bastiani’s ASP Adapter would have comported to ATA-4.
`Because Petitioner has not shown that the bridging circuit and the ASP
`Adapter comport to the same standard, we are not convinced by Petitioner’s
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`argument that the ’788 patent is persuasive evidence of the implementation
`details of Bastiani’s ASP Adaptor, including any necessity for parsing.
`Regarding the contents of the ATA standards, Mr. Gardner further
`opines that the ATA-4 version of the ATA standards has clauses covering
`cabling, connector, and signaling requirements of an ATA cable that plugs
`into an ATA interface. Ex. 1007 ¶ 19. This opinion, however, is entitled to
`little weight as he does not identify any evidence to show the requirements
`of the ATA-4 standard.3 See 37 C.F.R. § 42.65(a) (“Expert testimony that
`does not disclose the underlying facts or data on which the opinion is based
`is entitled to little or no weight.”).
`On the current record, we cannot say that the parsing feature of
`claim 1 necessarily is present in Bastiani’s ASP Adapter. Thus, we are not
`persuaded that Bastiani inherently discloses the parsing limitation of claim 1.
`Accordingly, Petitioner has not demonstrated a reasonable likelihood that it
`would prevail with respect to claim 1.
`
`
`3. Claims 9, 10, 17-20, 22, and 24
`The remaining independent claims, 10, 18, and 24, each include
`substantially the same parsing limitation. Petitioner advances substantially
`the same arguments and evidence regarding these limitations. Pet. 22-23,
`28-29, 33-34. Patent Owner also argues claims 10, 18, and 24 together with
`claim 1. Prelim. Resp. 3. For the reasons given above, Petitioner has not
`
`
`3 Mr. Gardner cites to page vii of Clay, Ex. 1006, as setting forth certain
`clauses of the ATA-4 standard. This appears to by a typographical error,
`however, as Clay does not have a page vii and does not discuss specific
`clauses of the ATA-4 standard.
`
`
`15
`
`
`
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`Case IPR2014-00201
`Patent 6,618,788
`
`persuaded us that Bastiani explicitly or inherently discloses the parsing
`limitations of claims 10, 18, and 24, and, thus, has not demonstrated a
`reasonable likelihood that it would prevail with respect to claims 10, 18, and
`24 as anticipated by Bastiani.
`Claim 9 depends from claim 1; claim 17 depends from claim 10; and
`claims 19, 20, and 22 depend from claim 18. In arguing claims 9, 17, 19, 20,
`and 22, Petitioner does not advance additional evidence regarding the
`parsing limitations of claims 1, 10, and 18. Accordingly, Petitioner has not
`demonstrated a reasonable likelihood that it would prevail with respect to
`claims 9, 17, 19, 20, and 22 as anticipated by Bastiani.
`
`
`D. Obviousness over Bastiani, McDonald, and Clay
`1. Obviousness of claims 1, 9, 10, 17-20, 22, and 24 over
`Bastiani
`Petitioner contends that, even if claims 1, 9, 10, 17-20, 22, and 24 are
`not anticipated by Bastiani, they nevertheless would have been obvious over
`Bastiani. Pet. 36. Specifically, Petitioner argues that “[a]ny elements found
`to be missing were well known in the prior art, as Bastiani clearly discloses
`all points that the inventors of the ’788 patent considered to be novel. The
`claims are rendered obvious by modifying Bastiani to include whatever
`elements are found to be missing.” Pet. 36. Petitioner relies on
`Mr. Gardner’s declaration, which states
`[b]ased on the reasons stated in the petition, as well as my
`experience and knowledge, it is my opinion that claims 1, 9-10,
`17-20, 22, and 24 of the ’788 patent are rendered obvious by
`modifications to Bastiani if not anticipated by Bastiani. The
`modifications would involve techniques already known in the
`prior art.
`
`
`16
`
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`
`
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`Case IPR2014-00201
`Patent 6,618,788
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`Ex. 1007 ¶ 32. For the reasons given above, we are not persuaded that
`Bastiani discloses the parsing limitations of claims 1, 9, 10, 17-20, 22, and
`24. Thus, the issue is whether Petitioner has demonstrated that it is
`reasonably likely to show that these claims would have been obvious over
`Bastiani.
`We are not persuaded that claims 1, 9, 10, 17-20, 22, and 24 would
`have been obvious over Bastiani.
`An analysis of obviousness must be based on several factual
`inquiries: (1) the scope and content of the prior art; (2) the
`differences between the prior art and the claims at issue; (3) the
`level of ordinary skill in the art at the time the invention was
`made; and (4) objective evidence of nonobviousness, if any.
`In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). Here, Petitioner’s
`obviousness argument is entirely conclusory. Petitioner does not identify the
`claimed parsing as a difference between the claims and Bastiani, nor does
`Petitioner explain how Bastiani would have been modified or the reasons a
`person of ordinary skill in the art would have done so. Mr. Gardner’s
`declaration is equally conclusory. Accordingly, Petitioner has not
`demonstrated a reasonable likelihood that it would prevail with respect to
`claims 1, 9, 10, 17-20, 22, and 24 as obvious over Bastiani.
`
`
`
`2. Remaining Obviousness Contentions
`Regarding claims 2-8, 11-16, 21, 23, and 25-27, Petitioner presents
`arguments and evidence to show that the additional limitations of these
`claims would have been obvious modifications to Bastiani. Pet. 36-51.
`Petitioner, however, does not present, in its analysis of these claims, any
`additional evidence or argument regarding the parsing limitation of claims 1,
`
`17
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`Case IPR2014-00201
`Patent 6,618,788
`
`10, 18, and 24, from which claims 2-8, 11-16, 21, 23, and 25-27 depend.
`Accordingly, Petitioner has not demonstrated a reasonable likelihood that it
`would prevail with respect to claims 2-8, 11-16, 21, 23, and 25-27 as
`obvious over Bastiani.
`
`Petitioner makes additional arguments that claims 7, 16, and 21 would
`have been obvious over Bastiani and McDonald (Pet. 51-55) and that claim
`23 would have been obvious over Bastiani and Clay (Pet. 55-57). Once
`again, Petitioner does not present any additional evidence or argument
`regarding the parsing limitation of claims 1, 10, and 18, from which claims
`7, 16, 21, and 23 depend. Accordingly, Petitioner has not demonstrated a
`reasonable likelihood that it would prevail with respect to claims 7, 16, and
`21 as obvious over Bastiani and McDonald or claim 23 as obvious over
`Bastiani and Clay.
`
`
`III. CONCLUSION
`Petitioner has not demonstrated persuasively that Bastiani, alone or in
`combination, discloses or teaches “parsing the command block into a
`sequence of ATA [register] operations necessary to execute the given ATA
`register-delivered transaction,” as recited in independent claims 1, 10, and
`24, or “an ATA command protocol adapter to parse a command packet into
`a sequence of ATA register operations and cause that sequence of operations
`to be performed by the ATA register protocol adapter,” as recited in
`independent claim 24. Thus, Petitioner has not shown that there is a
`reasonable likelihood that it would prevail with respect to at least one of the
`claims challenged in the Petition. The Petition is denied.
`
`
`18
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`Case IPR2014-00201
`Patent 6,618,788
`
`IV. ORDER
`For the reasons given, it is
`ORDERED that the Petition challenging the patentability of claims 1-
`27 is denied.
`FURTHER ORDERED that no inter partes review is instituted.
`
`
`
`
`PETITIONER:
`
`Brent Yamashita
`Brent.yamashita@dlapiper.com
`
`Gerald Sekimura
`Gerald.sekimura@dlapiper.com
`
`PATENT OWNER:
`
`Robert Sterne
`Rsterne-ptab@skgf.com
`
`Jon Wright
`Jwright-ptab@skgf.com
`
`Christian Camarce
`Ccamarce-ptab@skgf.com
`
`
`
`19
`
`
`
`
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