`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`
`DELL INC.
`Petitioner
`
`v.
`
`ALACRITECH, INC.
`Patent Owner
`
`________________________
`
`Inter Partes Review No. IPR2018-00374
`U.S. Patent No. 9,055,104
`Title: FREEING TRANSMIT MEMORY ON A NETWORK INTERFACE
`DEVICE PRIOR TO RECEIVING AN ACKNOWLEDGEMENT THAT
`TRANSMIT DATA HAS BEEN RECEIVED BY A REMOTE DEVICE
`________________________
`
`Petition For Inter Partes Review of U.S. Patent No. 9,055,104 Under
`35 U.S.C. §§ 311-319 and 37 C.F.R. §§ 42.1-.80, 42.100-.123
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,055,104
`
`
`1.
`
`2.
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION ........................................................................................... 1
`
`REQUIREMENTS FOR PETITION FOR INTER PARTES REVIEW ........ 3
`
`2.1. Grounds for Standing (37 C.F.R. § 42.104(a)) ..................................... 3
`
`2.2. Notice of Lead and Backup Counsel and Service Information ............. 3
`
`2.3. Notice of Real-Parties-in-Interest (37 C.F.R. § 42.8(b)(1)) .................. 4
`
`2.4. Notice of Related Matters (37 C.F.R. § 42.8(b)(2)) .............................. 4
`
`2.5. Fee for Inter Partes Review ................................................................ 18
`
`2.6. Proof of Service ................................................................................... 18
`
`3.
`
`IDENTIFICATION OF CLAIMS BEING CHALLENGED
`(§42.104(B)) .................................................................................................. 18
`
`4.
`
`BACKGROUND OF TECHNOLOGY ........................................................ 19
`
`4.1. Layered Network Protocols ................................................................. 19
`
`4.2. TCP/IP ................................................................................................. 20
`
`4.3. Protocol Offload .................................................................................. 25
`
`5.
`
`6.
`
`7.
`
`OVERVIEW OF THE 104 PATENT ............................................................ 26
`
`104 PATENT PROSECUTION HISTORY .................................................. 30
`
`CLAIM CONSTRUCTION .......................................................................... 33
`
`7.1. Applicable Law ................................................................................... 33
`
`7.2.
`
`“network interface device” .................................................................. 34
`
`7.3.
`
`“prepending” ....................................................................................... 34
`
`8.
`
`PERSON HAVING ORDINARY SKILL IN THE ART ............................. 35
`
`-i-
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,055,104
`
`9.
`
`DESCRIPTION OF THE PRIOR ART – U.S. PATENT NO.
`5,937,169 (“CONNERY”) ............................................................................. 35
`
`10. GROUND #1: ................................................................................................ 40
`
`10.1.1.
`
`[1.P] A method for communication involving a
`computer, a network, and a network interface device
`of the computer, the network interface device being
`coupled to the network, the method comprising: ................41
`
`10.1.2.
`
`[1.1] receiving, by the network interface device from
`the computer, a command to transmit application data
`from the computer to the network; ......................................46
`
`10.1.3.
`
`[1.2] sending, by the network interface device to the
`network, data corresponding to the command, ....................47
`
`10.1.4.
`
`[1.3] including prepending a transport layer header to
`at least some of the data; ......................................................48
`
`10.1.5.
`
`10.1.6.
`
`10.1.7.
`
`[1.4] sending, by the network interface device to the
`computer, a response to the command indicating that
`the data has been sent from the network interface
`device to the network, ..........................................................53
`
`[1.5] prior to receiving, by the network interface
`device from the network, an acknowledgement (ACK)
`that all the data corresponding to the command has
`been received; ......................................................................57
`
`[1.6] and maintaining, by the network interface
`device,
`a Transport Control Protocol
`(TCP)
`connection that the command, the data and the ACK
`correspond to. .......................................................................62
`
`10.1.8. Claim 6: The method of claim 1, further comprising:
`receiving, by the network interface device, the ACK;
`sending, by the network interface device to the
`computer, an indication that the ACK has been
`received, to prompt the computer to complete the
`command. .............................................................................65
`
`-ii-
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,055,104
`
`10.1.9. Claim 9: The method of claim 1, wherein receiving,
`by the network interface device from the computer, a
`command to transmit data includes receiving, by the
`network interface device from the computer, a pointer
`to the command. ...................................................................71
`
`10.1.10. [12.P] A method for communication involving a
`computer, a network, and a network interface device
`of the computer, the network interface device being
`coupled to the network, the method comprising: ................73
`
`10.1.11. [12.1] receiving, by the network interface device from
`the computer, a pointer to a command to transmit data
`from the computer to the network; ......................................73
`
`10.1.12. [12.2] sending, by the network interface device to the
`network, data corresponding to the command; ....................73
`
`10.1.13. [12.3] sending, by the network interface device to the
`computer, a response to the command indicating that
`the data has been sent from the device to the network, .......73
`
`10.1.14. [12.4] prior to receiving, by the network interface
`device from the network, an acknowledgement (ACK)
`that all the data has been received; ......................................73
`
`10.1.15. [12.5] and maintaining, by the network interface
`device,
`a Transport Control Protocol
`(TCP)
`connection that the command, the data and the ACK
`correspond to. .......................................................................74
`
`further
`10.1.16. Claim 15: The method of claim 12,
`comprising: receiving, by
`the network
`interface
`device, the ACK; sending, by the network interface
`device to the computer, an indication that the ACK
`has been received to prompt the computer to complete
`the command. .......................................................................74
`
`11. GROUND #2: ................................................................................................ 74
`
`12. CONCLUSION .............................................................................................. 79
`
`-iii-
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,055,104
`
`
`
`Exhibit #
`
`Exhibit List
`
`Description
`
`Ex.1001
`
`U.S. Patent No. 9,055,104
`
`Ex.1002
`
`Excerpts from Prosecution File History of U.S. Patent
`No. 9,055,104 (“104 File History”)
`
`Ex.1003
`
`Declaration of Robert Horst
`
`Ex.1004
`
`Curriculum Vitae of Robert Horst
`
`Ex.1005
`
`Not used.
`
`Ex.1006
`
`Tanenbaum, Andrew S., Computer Networks, Prentice-Hall, Inc.,
`New Jersey (1996). (“Tanenbaum96”)
`
`Ex.1007
`
`Transmission Control Protocol, “Darpa Internet Protocol
`Specification”, RFC: 793, Sept. 1981. (“RFC 793”)
`
`Ex.1008
`
`Stevens, W. Richard, TCP/IP Illustrated Volume 1: The Protocols,
`Addison-Wesley (1994). (“Stevens1”)
`
`Ex.1009
`
`Lilinkamp, J., Mandell. R. and Padlipsky, M., “Proposed Host-
`Front End Protocol”, Network Working Group Request for
`Comments: 929, Dec. 1984. (“RFC 929”)
`
`Ex.1010
`
`Not used.
`
`Ex.1011
`
`Not used.
`
`Ex.1012
`
`Not used.
`
`Ex.1013
`
`Ex.1014
`
`Stevens, W. Richard and Gary R. Wright, TCP/IP Illustrated
`Volume 2: The Implementation, Addison-Wesley (1995).
`(“Stevens2”)
`
`Touch, J., “TCP Control Block Interdependence”, Network
`Working Group Request for Comments: 2140, April 1997. (“RFC
`2140”)
`
`-iv-
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,055,104
`
`Exhibit #
`
`Description
`
`Ex.1015
`
`Not used.
`
`Ex.1016
`
`Not used.
`
`Ex.1017
`
`Rütsche, E., Kaiserswerth, M ., “TCP/IP on the Parallel Protocol
`Engine”, Proceedings, IFIP Conference on High Performance
`Networking, Liege (Belgium), Dec. 1992. (“Rütsche92”)
`
`Ex.1018
`
`Rütsche, E., “The Architecture of a Gb/s Multimedia Protocol
`Adapter”, Computer Communication Review, 1993. (“Rütsche93”)
`
`Ex.1019
`
`Padlipsky, M. A., “A Proposed Protocol for Connecting Host
`Computers to Arpa-Like Networks Via Directly-Connected Front
`End Processors”, Network Working Group RFC #647, Nov. 1974.
`(“RFC 647”)
`
`Ex.1020
`
`U.S. Patent No. 5,619,650 (“Bach”)
`
`Ex.1021
`
`Not used.
`
`Ex.1022
`
`Cooper, E.C., et al., “Protocol Implementation on the Nectar
`Communication Processor”, School of Computer Science, Carnegie
`Mellon University, Sept. 1990. (“Cooper”)
`
`Ex.1023
`
`Not used.
`
`Ex.1024
`
`Ex.1025
`
`Exhibit D to Declaration of Dr. Gregory L. Chesson in Support of
`Microsoft’s Opposition to Alacritech’s Motion for Preliminary
`Injunction: “Protocol Engine Handbook”, Protocol Engines
`Incorporated, Oct. 1990. (“Chesson”)
`
`Kanakia, H., Cheriton, D.R., “The VMP Network Adapter Board
`(NAB): High-Performance Network Communication for
`Multiprocessors”, Communications Architectures & Protocols,
`Stanford University, Aug. 1988. (“Kanakia”)
`
`Ex.1026
`
`Not used.
`
`-v-
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,055,104
`
`Exhibit #
`
`Ex.1027
`
`Ex.1028
`
`Ex.1029
`
`Description
`
`Dalton, C., et al., “Afterburner: Architectural Support for High-
`Performance Protocols”, Networks & Communications
`Laboratories, HP Laboratories Bristol, July 1993. (“Dalton”)
`
`Murphy, E., Hayes, S., Enders, M., TCP/IP Tutorial and Technical
`Overview Fifth Edition, Prentice-Hall, Inc. New Jersey, (1995).
`(“Murphy”)
`
`MacLean, A.R., Barvick, S. E., “An Outboard Processor for High
`Performance Implementation of Transport Layer Protocols”, IEEE
`Globecom ’91, Phoenix, AZ, Dec. 1991. (“MacLean”)
`
`Ex.1030
`
`Clark, D.D., et al., “An Analysis of TCP Processing Overhead”,
`IEEE Communications Magazine, June 1989. (“Clark”)
`
`Ex.1031
`
`Not used.
`
`Ex.1032
`
`Not used.
`
`Ex.1033
`
`“Gigabit Ethernet Technical Brief: Achieving End-to-End
`Performance”, Alteon Networks, Inc. First Edition, Sept. 1996.
`(“Alteon”)
`
`Ex.1034
`
`Not used.
`
`Ex.1035
`
`Patterson, D.A., Hennessy, J.L., Computer Architecture: A
`Quantitative Approach, Morgan Kaufmann Publishers, Inc., San
`Mateo, CA (1990). (“Patterson”)
`
`Ex.1036
`
`Internet Protocol, “Darpa Internet Protocol Specification”, RFC:
`791, Sept. 1981. (“RFC 791”)
`
`Ex.1037
`
`Not used.
`
`Ex.1038
`
`Not used.
`
`Ex.1039
`
`Not used.
`
`-vi-
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,055,104
`
`Exhibit #
`
`Ex.1040
`
`Description
`
`Alacritech’s Opening Claim Construction Brief from Alacritech v.
`CenturyLink, et al., Civil Action No. 2:16-cv-693 JRG-RSP (Lead
`Case) (April 04, 2017) (D.I. 181) (“Opening CC”)
`
`Ex.1041
`
`Not used.
`
`Ex.1042
`
`Not used.
`
`Ex.1043
`
`U.S. Patent 5,937,169 (“Connery”)
`
`Ex.1044
`
`U.S. Patent 5,434,872 (“Petersen”)
`
`Ex.1045
`
`Excerpts from Prosecution File History of Provisional Application
`60/374,788
`
`Ex.1046
`
`U.S. Patent 5,293,487 (“Russo”)
`
`Ex.1047
`
`U.S. Patent 5,802,345 (“Matsunami”)
`
`Ex.1048
`
`U.S. Patent 5,892,969 (“Young”)
`
`Ex.1049 WO 00/13091 publication (“Boucher”)
`
`Ex.1050
`
`Ex.1051-
`1076
`
`Windows Sockets 2 Application Programming Interface
`(“WinSock2”)
`
`Not Used
`
`Ex.1077
`
`Deposition of Paul S. Min on March 21, 2017 (“Min Depo”)
`
`
`
`
`-vii-
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,055,104
`
`1.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. §§ 42.1-.80, 42.100-.123,
`
`Dell Inc. (“Petitioner” or “Dell”) hereby petitions the Patent Trial and Appeal
`
`Board to institute an inter partes review of claims 1, 6, 9, 12, and 15 of U.S. Patent
`
`No. 9,055,104, titled “Freeing transmit memory on a network interface device prior
`
`to receiving an acknowledgment that transmit data has been received by a remote
`
`device” (Ex.1001, the “104 Patent”), and cancel those claims as unpatentable.
`
`This petition is based on grounds identical to those already instituted in Case
`
`Nos. IPR2017-01393 filed by Intel Corporation and IPR2017-01714 filed by
`
`Cavium, Inc. A motion for joinder is being filed simultaneously with this petition.
`
`The only significant difference between this petition and Intel and Cavium’s prior
`
`petitions is that this petition does not challenge claim 22, which has already been
`
`found invalid in the district court and was not instituted upon in prior reviews.
`
`The challenged claims relate to well-known prior art techniques of
`
`offloading certain host protocol processing—in a TCP/IP communication system—
`
`onto a dedicated network interface device. Indeed, as explained further herein, the
`
`104 Patent itself admits that the vast majority of its claim limitations were already
`
`in the prior art. See, e.g., Ex.1001, 104 Patent at 1:39-2:37, id. at Fig. 1 (labeled
`
`“Prior Art”), compare, e.g., id. at claim 1. The only purported invention of the
`
`104 Patent was for a network interface device to send to a host computer an
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,055,104
`
`indication indicating that the network interface device has transmitted data to the
`
`network, prior
`
`to
`
`the network
`
`interface device
`
`receiving a delivery
`
`acknowledgement (ACK) from the destination. See id. at 2:41-51.
`
`However, as explained herein, that supposedly novel functionality was also
`
`known in the art before the 104 Patent. The primary prior art reference relied on in
`
`this Petition—U.S. Patent No. 5,937,169 to Connery, Ex.1043 (“Connery”)—
`
`discloses a TCP/IP transmission system utilizing a network interface device just
`
`like the 104 Patent. Connery also teaches that its network interface device sends
`
`early indications back to the host, which renders obvious the purported invention
`
`of the 104 Patent due to the well-known nature of such indications in Connery’s
`
`Windows environment. More specifically, and as explained by Dr. Horst (with
`
`supporting corroborating evidence), it would have been obvious for Connery’s
`
`network interface device to use its early indications to notify the host of successful
`
`data transmission (a well-known use of such indications), before the network
`
`interface device received a delivery ACK from the destination.
`
`Therefore Petitioner respectfully requests that the Board cancel claims 1, 6,
`
`9, 12, and 15 of the 104 Patent as unpatentable.
`
`-2-
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,055,104
`
`2.
`
`REQUIREMENTS FOR PETITION FOR INTER PARTES REVIEW
`
`2.1. Grounds for Standing (37 C.F.R. § 42.104(a))
`
`Petitioner certifies that the 104 Patent is available for inter partes review and
`
`that Petitioner is not barred or estopped from requesting inter partes review of the
`
`challenged claims of the 104 Patent on the grounds identified herein. 37 C.F.R.
`
`42.122(b) (“The time period set forth in § 42.101(b) shall not apply when the
`
`petition is accompanied by a request for joinder”).
`
`2.2. Notice of Lead and Backup Counsel and Service Information
`
`Pursuant to 37 C.F.R. §§ 42.8(b)(3), 42.8(b)(4), and 42.10(a), Petitioner
`
`provides the following designation of Lead and Back-Up counsel.
`
`Lead Counsel
`
`Back-up Counsel
`
`Christopher TL Douglas
`Reg. No. 56,950
`P 704-444-1119
`F 704-444-1111
`christopher.douglas@alston.com
`
`Postal & Hand Delivery Address:
`ALSTON & BIRD LLP
`101 South Tryon Street, Suite 4000
`Charlotte, North Carolina 28280
`
`
`Kirk Bradley
`Reg. No. 46,571
`P 704-444-1030
`F 704-444-1730
`kirk.bradley@alston.com
`
`Postal & Hand Delivery Address:
`ALSTON & BIRD LLP
`101 South Tryon Street, Suite 4000
`Charlotte, North Carolina 28280
`
`
`
`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney for Petitioner is
`
`attached. Petitioner consents to service by electronic mail at the following address:
`
`Dell-Alacritech@alston.com.
`
`-3-
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,055,104
`
`2.3. Notice of Real-Parties-in-Interest (37 C.F.R. § 42.8(b)(1))
`
`Petitioner Dell Inc. is the real-party-in-interest. No other parties exercised or
`
`could have exercised control over this petition; no other parties funded or directed
`
`this Petition. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48759-60.
`
`2.4. Notice of Related Matters (37 C.F.R. § 42.8(b)(2))
`
`The following judicial or administrative matters may affect or be affected by
`
`a decision in this proceeding: Alacritech, Inc. v. CenturyLink, Inc., 2:16-cv-00693-
`
`JRG-RSP (E.D. Tex.); Alacritech, Inc. v. Wistron Corp., 2:16-cv-00692-JRG-RSP
`
`(E.D. Tex.); Alacritech, Inc. v. Dell Inc., 2:16-cv-00695-RWS-RSP (E.D. Tex.). In
`
`addition to this Petition, Petitioner has filed petitions for U.S. Patent Nos.
`
`8,131,880 (Case No. IPR2018-00338 and -00339) and 7,124,205 (Case No.
`
`IPR2018-00336) and is simultaneously filing petitions for U.S. Patent Nos.
`
`7,237,036; 7,673,072; and 7,337,241.
`
`Alacritech has asserted one or more of the Asserted Patents or patents
`
`related to the Asserted Patents in the following actions:
`
`1. U.S. Patent Nos. 6,427,171 and 6,697,868 are asserted in Alacritech, Inc. v.
`
`Microsoft Corp., 3-04-cv-03284, (N.D. Cal);
`
`2. U.S. Patent Nos. 7,124,205; 7,237,036; 7,337,241; 7,673,072; 8,131,880;
`
`8,805,948; and 9,055,104 are asserted in Alacritech, Inc. v. Wistron Corp.,
`
`2:16-cv-00692-JRG-RSP (E.D. Tex.);
`
`-4-
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,055,104
`
`3. U.S. Patent Nos. 7,124,205; 7,237,036; 7,337,241; 7,673,072; 8,131,880;
`
`8,805,948; 9,055,104; and 7,945,699 are asserted in Alacritech, Inc. v. Dell
`
`Inc., 2:16-cv-00695-RWS-RSP (E.D. Tex.).
`
`4. U.S. Patent Nos. 7,124,205; 7,237,036; 7,337,241; 7,673,072; 8,131,880;
`
`8,805,948; 9,055,104; and 7,945,699 are asserted in Alacritech, Inc. v.
`
`CenturyLink, Inc., 2:16-cv-00693-JRG-RSP (E.D. Tex.).
`
`The patent family to which the 036 Patent belongs contains 19 additional
`
`U.S. patents:
`
`1. U.S. Patent Application No. 11/821,820 (filed Jun. 25, 2007, issued Mar. 2,
`
`2010 as 7,673,072 patent);
`
`2. U.S. Patent Application No. 10/092,967 (filed Mar. 6, 2002, issued Jul. 8,
`
`2003 as 6,591,302 patent);
`
`3. U.S. Patent Application No. 10/023,240 (filed Dec. 17, 2001, issued Nov.
`
`15, 2005 as 6,965,941 patent);
`
`4. U.S. Patent Application No. 09/970,124 (filed Oct. 2, 2001, issued Oct. 17,
`
`2006 as 7,124,205 patent);
`
`5. U.S. Patent Application No. 09/855,979 (filed May 14, 2001, issued Nov. 7,
`
`2006 as 7,133,940 patent);
`
`6. U.S. Patent Application No. 09/802,426 (filed Mar. 9, 2001, issued May 9,
`
`2006 as 7,042,898 patent);
`
`-5-
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,055,104
`
`7. U.S. Patent Application No. 09/802,550 (filed Mar. 9, 2001, issued Dec. 2,
`
`2003 as 6,658,480 patent);
`
`8. U.S. Patent Application No. 09/802,551 (filed Mar. 9, 2001, issued Jul. 11,
`
`2006 as 7,076,568 patent);
`
`9. U.S. Patent Application No. 09/801,488 (filed Mar. 7, 2001, issued Feb. 3,
`
`2004 as 6,687,758 patent);
`
`10. U.S. Patent Application No. 09/789,366 (filed Feb. 20, 2001, issued Jun. 29,
`
`2004 as 6,757,746 patent);
`
`11. U.S. Patent Application No. 09/675,700 (filed Sept. 29, 2000, issued Dec.
`
`31, 2013 as 8,621,101 patent);
`
`12. U.S. Patent Application No. 09/675,484 (filed Sept. 29, 2000, issued Oct.
`
`19, 2004 as 6,807,581 patent);
`
`13. U.S. Patent Application No. 09/514,425 (filed Feb. 28, 2000, issued Jul. 30,
`
`2002 as 6,427,171 patent);
`
`14. U.S. Patent Application No. 09/464,283 (filed Dec. 15, 1999, issued Jul. 30,
`
`2002 as 6,427,173 patent);
`
`15. U.S. Patent Application No. 09/439,603 (filed Nov. 12, 1999, issued Jun.
`
`12, 2001 as 6,247,060 patent);
`
`16. U.S. Patent Application No. 09/416,925 (filed Oct. 13, 1999, issued Oct. 22,
`
`2002 as 6,470,415 patent);
`
`-6-
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,055,104
`
`17. U.S. Patent Application No. 09/384,792 (filed Aug. 27, 1999, issued Aug.
`
`13, 2002 as 6,434,620 patent);
`
`18. U.S. Patent Application No. 09/141,713 (filed Aug. 28, 1998, issued May
`
`14, 2002 as 6,389,479 patent);
`
`19. U.S. Patent Application No. 60/098,296 (expired);
`
`20. U.S. Patent Application No. 09/067,544 (filed Apr. 27, 1998, issued May 1,
`
`2001 as 6,226,680 patent);
`
`21. U.S. Patent Application No. 60/061,809 (expired).
`
`The patent family to which the 205 Patent belongs contains 5 additional U.S.
`
`patents:
`
`1. U.S. Patent Application No. 10/092,967 (filed Mar. 6, 2002, issued Jul. 8,
`
`2003 as 6,591,302 patent);
`
`2. U.S. Patent Application No. 10/260,112 (filed Sept. 27, 2002, issued Jul. 26,
`
`2007 as 7,237,036 patent);
`
`3. U.S. Patent Application No. 10/261,051 (filed Sept. 30, 2002, issued Sept.
`
`13, 2011 as 8,019,901 patent);
`
`4. U.S. Patent Application No. 11/821,820 (filed Jun. 25, 2007, issued Mar. 2,
`
`2010 as 7,673,072 patent);
`
`5. U.S. Patent Application No. 11/582,199 (filed Oct. 16, 2006, issued Feb. 16,
`
`2010 as 7,664,883 patent).
`
`-7-
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,055,104
`
`The patent family to which the 072 Patent belongs contains 19 additional
`
`U.S. patents:
`
`1. U.S. Patent Application No. 10/260,112 (filed Sept. 27, 2002, issued Jul. 26,
`
`2007 as 7,237,036 patent);
`
`2. U.S. Patent Application No. 10/092,967 (filed Mar. 6, 2002, issued Jul. 8,
`
`2003 as 6,591,302 patent);
`
`3. U.S. Patent Application No. 10/023,240 (filed Dec. 17, 2001, issued Nov.
`
`15, 2005 as 6,965,941 patent);
`
`4. U.S. Patent Application No. 09/970,124 (filed Oct. 2, 2001, issued Oct. 17,
`
`2006 as 7,124,205 patent);
`
`5. U.S. Patent Application No. 09/855,979 (filed May 14, 2001, issued Nov. 7,
`
`2006 as 7,133,940 patent);
`
`6. U.S. Patent Application No. 09/802,426 (filed Mar. 9, 2001, issued May 9,
`
`2006 as 7,042,898 patent);
`
`7. U.S. Patent Application No. 09/802,550 (filed Mar. 9, 2001, issued Dec. 2,
`
`2003 as 6,658,480 patent);
`
`8. U.S. Patent Application No. 09/802,551 (filed Mar. 9, 2001, issued Jul. 11,
`
`2006 as 7,076,568 patent);
`
`9. U.S. Patent Application No. 09/801,488 (filed Mar. 7, 2001, issued Feb. 3,
`
`2004 as 6,687,758 patent);
`
`-8-
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,055,104
`
`10. U.S. Patent Application No. 09/789,366 (filed Feb. 20, 2001, issued Jun. 29,
`
`2004 as 6,757,746 patent);
`
`11. U.S. Patent Application No. 09/675,700 (filed Sept. 29, 2000, issued Dec.
`
`31, 2013 as 8,621,101 patent);
`
`12. U.S. Patent Application No. 09/675,484 (filed Sept. 29, 2000, issued Oct.
`
`19, 2004 as 6,807,581 patent);
`
`13. U.S. Patent Application No. 09/514,425 (filed Feb. 28, 2000, issued Jul. 30,
`
`2002 as 6,427,171 patent);
`
`14. U.S. Patent Application No. 09/464,283 (filed Dec. 15, 1999, issued Jul. 30,
`
`2002 as 6,427,173 patent);
`
`15. U.S. Patent Application No. 09/439,603 (filed Nov. 12, 1999, issued Jun.
`
`12, 2001 as 6,247,060 patent);
`
`16. U.S. Patent Application No. 09/416,925 (filed Oct. 13, 1999, issued Oct. 22,
`
`2002 as 6,470,415 patent);
`
`17. U.S. Patent Application No. 09/384,792 (filed Aug. 27, 1999, issued Aug.
`
`13, 2002 as 6,434,620 patent);
`
`18. U.S. Patent Application No. 09/141,713 (filed Aug. 28, 1998, issued May
`
`14, 2002 as 6,389,479 patent);
`
`19. U.S. Patent Application No. 60/098,296 (expired);
`
`20. U.S. Patent Application No. 09/067,544 (filed Apr. 27, 1998, issued May 1,
`
`-9-
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,055,104
`
`2001 as 6,226,680 patent);
`
`21. U.S. Patent Application No. 60/061,809 (expired).
`
`The patent family to which the 948 Patent belongs contains 2 additional U.S.
`
`patents:
`
`1. U.S. Patent Application No. 09/692,561 (filed Oct. 18, 2000, issued Jan. 14,
`
`2014 as 8,631,140 patent);
`
`2. U.S. Patent Application No. 09/067,544 (filed Apr. 27, 1998, issued May 1,
`
`2001 as 6,226,680 patent);
`
`3. U.S. Patent Application No. 60/061,809 (expired).
`
`The patent family to which the 699 Patent belongs contains 14 additional
`
`U.S. patents:
`
`1. U.S. Patent Application No. 10/881,271 (filed Jun. 29, 2004, issued Dec. 2,
`
`2008 as 7,461,160 patent);
`
`2. U.S. Patent Application No. 09/789,366 (filed Feb. 20, 2001, issued Jun. 29,
`
`2004 as 6,757,746 patent);
`
`3. U.S. Patent Application No. 09/748,936 (filed Dec. 26, 2000, issued Dec.
`
`25, 2001 as 6,334,153 patent);
`
`4. U.S. Patent Application No. 09/692,561 (filed Oct. 18, 2000, issued Jan. 14,
`
`2014 as 8,631,140 patent);
`
`5. U.S. Patent Application No. 09/675,484 (filed Sept. 29, 2000, issued Oct.
`
`-10-
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,055,104
`
`19, 2004 as 6,807,581 patent);
`
`6. U.S. Patent Application No. 09/675,700 (filed Sept. 29, 2000, issued Dec.
`
`31, 2013 as 8,621,101 patent);
`
`7. U.S. Patent Application No. 09/514,425 (filed Feb. 28, 2000, issued Jul. 30,
`
`2002 as 6,427,171 patent);
`
`8. U.S. Patent Application No. 09/464,283 (filed Dec. 15, 1999, issued Jul. 30,
`
`2002 as 6,427,173 patent);
`
`9. U.S. Patent Application No. 09/439,603 (filed Nov. 12, 1999, issued Jun. 12,
`
`2001 as 6,247,060 patent);
`
`10. U.S. Patent Application No. 09/416,925 (filed Oct. 13, 1999, issued Oct. 22,
`
`2002 as 6,470,415 patent);
`
`11. U.S. Patent Application No. 09/384,792 (filed Aug. 27, 1999, issued Aug.
`
`13, 2002 as 6,434,620 patent);
`
`12. U.S. Patent Application No. 09/141,713 (filed Aug. 28, 1998, issued May
`
`14, 2002 as 6,389,479 patent);
`
`13. U.S. Patent Application No. 60/098,296 (expired)
`
`14. U.S. Patent Application No. 09/067,544 (filed Apr. 27, 1998, issued May 1,
`
`2001 as 6,226,680 patent);
`
`15. U.S. Patent Application No. 60/061,809 (expired);
`
`16. U.S. Patent Application No. 13/108,729 (filed May 16, 2011, issued Sept.
`
`-11-
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,055,104
`
`17, 2003 as 8,539,112 patent).
`
`The patent family to which the 880 Patent belongs contains 6 additional U.S.
`
`patents:
`
`1. U.S. Patent Application No. 10/005,536 (filed Nov. 7, 2001, issued Jan. 23,
`
`2007 as 7,167,926 patent);
`
`2. U.S. Patent Application No. 09/514,425 (filed Feb. 28, 2000, issued Jul. 30,
`
`2002 as 6,427,171 patent);
`
`3. U.S. Patent Application No. 09/464,283 (filed Dec. 15, 1999, issued Jul. 30,
`
`2002 as 6,427,173 patent);
`
`4. U.S. Patent Application No. 09/384,792 (filed Aug. 27, 1999, issued Aug.
`
`13, 2002 as 6,434,620 patent);
`
`5. U.S. Patent Application No. 09/141,713 (filed Aug. 28, 1998, issued May
`
`14, 2002 as 6,389,479 patent);
`
`6. U.S. Patent Application No. 60/098,296 (expired);
`
`7. U.S. Patent Application No. 09/067,544 (filed Apr. 27, 1998, issued May 1,
`
`2001 as 6,226,680 patent);
`
`8. U.S. Patent Application No. 60/061,809 (expired).
`
`The patent family to which the 104 Patent belongs contains 1 additional U.S.
`
`patent:
`
`1. U.S. Patent Application No. 10/413,256 (filed Apr. 22, 2003, issued Jun. 2,
`
`-12-
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,055,104
`
`2009 as 7,543,087 patent);
`
`2. U.S. Patent Application No. 60/374,788 (expired).
`
`The patent family to which the 241 Patent belongs contains 19 additional U.S.
`
`patents:
`
`1. U.S. Patent Application No. 10/092,967 (filed Mar. 6, 2002, issued Jul. 8,
`
`2003 as 6,591,302 patent);
`
`2. U.S. Patent Application No. 10/023,240 (filed Dec. 17, 2001, issued Nov.
`
`15, 2005 as 6,965,941 patent);
`
`3. U.S. Patent Application No. 09/464,283 (filed Dec. 15, 1999, issued Jul. 30,
`
`2002 as 6,427,173 patent);
`
`4. U.S. Patent Application No. 09/439,603 (filed Nov. 12, 1999, issued Jun. 12,
`
`2001 as 6,247,060 patent);
`
`5. U.S. Patent Application No. 09/067,544 (filed Apr. 27, 1998, issued May 1,
`
`2001 as 6,226,680 patent);
`
`6. U.S. Patent Application No. 60/061,809 (expired);
`
`7. U.S. Patent Application No. 09/384,792 (filed Aug. 27, 1999, issued Aug.
`
`13, 2002 as 6,434,620 patent);
`
`8. U.S. Patent Application No. 09/141,713 (filed Aug. 28, 1998, issued May
`
`14, 2002 as 6,389,479 patent);
`
`9. U.S. Patent Application No. 60/098,296 (expired);
`
`-13-
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,055,104
`
`10. U.S. Patent Application No. 09/416,925 (filed Oct. 13, 1999, issued Oct. 22,
`
`2002 as 6,470,415 patent);
`
`11. U.S. Patent Application No. 09/514,425 (filed Feb. 28, 2000, issued Jul. 30,
`
`2002 as 6,427,171 patent);
`
`12. U.S. Patent Application No. 09/675,484 (filed Sept. 29, 2000, issued Oct.
`
`19, 2004 as 6,807,581 patent);
`
`13. U.S. Patent Application No. 09/675,700 (filed Sept. 29, 2000, issued Dec.
`
`31, 2013 as 8,621,101 patent);
`
`14. U.S. Patent Application No. 09/789,366 (filed Feb. 20, 2001, issued Jun. 29,
`
`2004 as 6,757,746 patent);
`
`15. U.S. Patent Application No. 09/801,488 (filed Mar. 7, 2001, issued Feb. 3,
`
`2004 as 6,687,758 patent);
`
`16. U.S. Patent Application No. 09/802,551 (filed Mar. 9, 2001, issued Jul. 11,
`
`2006 as 7,076,568 patent);
`
`17. U.S. Patent Application No. 09/802,426 (filed Mar. 9, 2001, issued May 9,
`
`2006 as 7,042,898 patent);
`
`18. U.S. Patent Application No. 09/802,550 (filed Mar. 9, 2001, issued Dec. 2,
`
`2003 as 6,658,480 patent);
`
`19. U.S. Patent Application No. 09/855,979 (filed May 14, 2001, issued Nov. 7,
`
`2006 as 7,133,940 patent);
`
`-14-
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,055,104
`
`20. U.S. Patent Application No. 09/970,124 (filed Oct. 2, 2001, issued Oct. 17,
`
`2006 as 7,124,205 patent);
`
`21. U.S. Patent Application No. 09/464,283 (filed Dec. 15, 1999, issued Jul. 30,
`
`2002 as 6,427,173 patent).
`
`Intel Corporation, Cavium Inc., and Wistron Corporation have also filed inter
`
`partes review petitions in the following cases involving related patents:
`
`1. Case No. IPR2017-01391 (’036 Patent), filed on May 9, 2017, instituted on
`
`November 28, 2017.
`
`2. Case No. IPR2017-01392 (’241 Patent), filed on May 9, 2017, instituted on
`
`November 30, 2017.
`
`3. Case No. IPR2017-01393 (’104 Patent), filed on May 9, 2017, instituted on
`
`November 30, 2017.
`
`4. Case No. IPR2017-01395 (’948 Patent), filed on May 9, 2017, instituted on
`
`November 22, 2017.
`
`5. Case No. IPR2017-01402 (’205 Patent), filed on May 9, 2017, institution
`
`denied.
`
`6. Case No. IPR2017-01405 (’205 Patent), filed on May 9, 2017, instituted on
`
`November 21, 2017.
`
`7. Case No. IPR2017-01406 (’072 Patent), filed on May 9, 2017, instituted on
`
`November 28, 2017.
`
`-15-
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,055,104
`
`8. Case No. IPR2017-01409 (’880 Patent), filed on May 9, 2017, instituted on
`
`November 21, 2017.
`
`9. Case No. IPR2017-01410 (’880 Patent), filed on May 9, 2017, instituted on
`
`November 21, 2017.
`
`10. Case No. IPR2017-01559 (’699 Patent), filed on June 9, 2017, institution
`
`denied.
`
`11. Case No. IPR2017-01705 (’072 Patent), filed on June 30, 2017, institution
`
`denied.
`
`12. Case No. IPR2017-01707 (’072 Patent), filed on June 30, 2017, instituted on
`
`November 15, 2017.
`
`13. Case No. IPR2017-01711 (’699 Patent), filed on June 30, 2017, institution
`
`denied.
`
`14. Case No. IPR2017-01713 (’241 Patent), filed on June 30, 2017, institution
`
`denied.
`
`15. Case No. IPR2017-01714 (’104 Patent), filed on June 30, 2017, instituted on
`
`November 13, 2017.
`
`16. Case No. IPR2017-01718 (’036 Patent), filed on June 30, 2017, instituted on
`
`November 15, 2017.
`
`17. Case No. IPR2017-01728 (’241 Patent), filed on July 1, 2017, instituted on
`
`November 8, 2017.
`
`-16-
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,055,104
`
`18. Case No. IPR2017-01729 (’948 Patent), filed on July 1, 2017, institution
`
`denied.
`
`19. Case No. IPR2017-01732 (’072 Patent), filed on July 3, 2017, institution
`
`denied.
`
`20. Case No. IPR2017-01733 (’241 Patent), filed on July 3, 2017, institution
`
`denied.
`
`21. Case No. IPR2017-01734 (’205 Patent), filed on July 3, 2017, institution
`
`denied.
`
`22. Case No. IPR2017-01735 (’205 Patent), filed on July 3, 2017, instituted on
`
`November 15, 2017.
`
`23. Case No. IPR2017-01736 (’880 Patent), filed on July 3, 2017, instituted on
`
`November 15, 2017.
`
`24. Case No. IPR2017-01737 (’880 Patent), filed on July 3, 2017, instituted on
`
`