Intel Corp v. Alacritech Inc

1. Case Identification

• Case #: IPR2017-01705
• Patent #: 7,673,072
• Filed: June 30, 2017
• Petitioner(s): Intel Corporation
• Patent Owner(s): Alacritech, Inc.
• Challenged Claims: 1-21

2. Patent Overview

• Title: Fast-Path Apparatus for Transmitting Data Corresponding to a TCP Connection
• Brief Description: The ’072 patent describes a system for offloading Transmission Control Protocol (TCP) processing from a host computer to an intelligent network interface card (INIC). The system uses a "fast-path" on the INIC to accelerate packet processing for established connections by using a stored "connection context."

3. Grounds for Unpatentability

Ground 1: Obviousness over Connery - Claims 1-21 are obvious over Connery in view of the knowledge of a POSA.

• Prior Art Relied Upon: Connery (Patent 5,937,169).
• Core Argument for this Ground:
  • Key Aspects: Petitioner’s argument hinged on establishing Connery as prior art. Petitioner contended that the ’072 patent was not entitled to its claimed priority date of October 14, 1997, because its provisional application failed to provide an adequate written description for the key limitations of "prepending the headers to the segments" and for applying the method to protocols other than TCP. Because Connery was filed on October 29, 1997—after the provisional but before the non-provisional filing—disqualifying the priority claim would make Connery valid prior art under pre-AIA 35 U.S.C. §102(e).
  • Prior Art Mapping: Petitioner argued that Connery discloses a method to offload TCP segmentation to a smart network adapter that meets nearly all limitations of the challenged claims. In Connery, a host computer establishes a connection and creates a context for it, which includes a packet control data template (a header template) and gather descriptors for a large data payload. This context is transferred from the host to the smart adapter. The smart adapter then uses the gather descriptors to pull the large data payload from the host, divides (segments) the data into smaller pieces, and creates a TCP/IP header for each segment based on the information in the header template. This process directly maps to the core steps recited in independent claims 1, 9, and 15: creating a context with protocol/status information, transferring it to an interface device, transferring data, dividing the data, and creating headers from a template. For dependent claims, Petitioner argued Connery discloses transferring status information (e.g., sequence numbers in the template), using specific header data (IP/MAC addresses, TCP ports), and using buffer descriptors ("gather descriptors").
  • Motivation to Combine (with POSA Knowledge): Petitioner asserted that the only limitation not explicitly disclosed in Connery is the final step of "prepending" the newly created headers to the data segments. However, Petitioner argued this would have been obvious to a Person of Ordinary Skill in the Art (POSA). Connery’s process involves pulling the data segment from host memory to the adapter (step 206) before the header is produced from the template (step 207). A POSA would understand that the most natural, logical, and computationally efficient way to combine the header and the data segment at that point would be to prepend the header to the data. The alternative—creating the header separately and then appending the data to it—would require an unnecessary and resource-intensive copy operation.
  • Expectation of Success: A POSA would have had a high expectation of success in prepending the header, as it is a fundamental and predictable operation in network packet assembly.

4. Key Claim Construction Positions

• "prepending": Petitioner argued this term should be construed to mean "adding to the front," based on an explicit definition provided in the ’072 patent’s specification. This construction is central to the obviousness argument, as it defines the specific action that Petitioner claimed a POSA would have been motivated to perform when implementing Connery.
• "context": Petitioner noted that the Patent Owner construed this term as "data regarding an active connection." While contending the term is indefinite, Petitioner argued that for the purpose of the IPR, Connery discloses this limitation by teaching the transfer of a header template, gather descriptors, and other parameters that constitute data for an active connection.
• "status information": Petitioner argued this term, found in claims 9 and 15, was also indefinite. However, based on Patent Owner’s litigation positions, which included "Acknowledgement and Sequence numbers," Petitioner asserted that Connery discloses this by including fields for these values within its header template, which are transferred to the interface device as part of the context.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the ground presented in this petition was not redundant under §325(d) with a previously filed petition (IPR2017-01406) against the same patent. Petitioner distinguished the petitions by noting the prior one relied on a combination of Erickson (Patent 5,768,618) and the Tanenbaum networking textbook. That combination was necessary because Erickson did not expressly disclose certain TCP implementation details, requiring a secondary reference. In contrast, Petitioner asserted that Connery is a much stronger primary reference that expressly discloses nearly all claim limitations, making the current ground materially distinct and more compelling.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-21 of the ’072 patent as unpatentable.