Cavium, LLC v. Alacritech, Inc.

1. Case Identification

• Case #: IPR No. Unassigned
• Patent #: 7,945,699
• Filed: December 27, 2017
• Petitioner(s): Cavium, Inc.
• Patent Owner(s): Alacritech, Inc.
• Challenged Claims: 1-3, 6, 7, 10, 11, 13, 16, and 17

2. Patent Overview

• Title: Obtaining a Destination Address So That a Network Interface Device Can Write Network Data Without Headers Directly Into Host Memory
• Brief Description: The ’699 patent describes a method to improve network performance by offloading data transfer tasks from a host computer's CPU to a network interface (NI) device. The method involves the NI device passing an initial packet portion to the host computer, which analyzes it to determine a memory destination for the payload data, and then the NI device uses that destination address to directly transfer subsequent data payloads into host memory via Direct Memory Access (DMA).

3. Grounds for Unpatentability

• The petition asserted a single ground for unpatentability.

Ground 1: Obviousness over Kiyohara and SMB - Claims 1-3, 6, 7, 10, 11, 13, 16, and 17 are obvious over Kiyohara in view of SMB.

• Prior Art Relied Upon: Kiyohara (Patent 5,237,693) and SMB (CAE Specification, Protocols for X/Open PC Interworking: SMB, Version 2).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued the combination of Kiyohara and SMB taught all limitations of the challenged claims. The independent claims (1, 7, and 13) were presented as substantially similar, primarily differing in whether a "session layer header" or a more general "header portion" is analyzed by the host computer.
    • Kiyohara was argued to disclose an "intelligent board system" (a network interface) coupled to a host computer that offloads the processing of transport and network layer protocols. This system receives packets, separates headers from data, and stores the data payloads in a "data storage area" in host memory under the control of a host application. Kiyohara taught that the host application provides a pointer to this storage area, thereby obtaining a destination for the data and enabling the network interface to place data directly, without the host CPU processing lower-level protocol headers.
    • SMB was argued to supply the specific session-layer protocol that Kiyohara contemplated but did not exemplify. SMB is a well-known protocol for file and printer sharing that operates at the session layer. Petitioner asserted that analyzing an SMB header, which contains command codes (e.g., SMBreadX), allows a host application to determine how and where to store data returned in a response. The combination, therefore, taught analyzing a session layer header (from SMB) on the host computer (per Kiyohara's architecture) to obtain the memory destination for the data payload.
  • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSA) would combine Kiyohara and SMB to achieve a predictable result. Kiyohara disclosed a high-performance network offload architecture intended for use with standardized, layered protocols, including a session layer. SMB was the primary industry-standard session-level protocol for file and printer sharing—the very functions Kiyohara's system was designed to support. A POSA would naturally look to a popular, standard protocol like SMB to implement Kiyohara's session layer functionality, thereby improving Kiyohara's system by adding well-known remote access capabilities.
  • Expectation of Success: A POSA would have had a reasonable expectation of success in the combination. SMB was designed for interoperability and could be implemented over various transport stacks, including TCP/IP, which Kiyohara’s network interface explicitly handled. Integrating the known SMB protocol into Kiyohara's disclosed offload architecture would have been a straightforward implementation for a POSA.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) or §325(d) would be inappropriate because this petition was a direct follow-on to a previously filed petition (IPR2017-01711) that was denied institution.
• The previous denial was based solely on a procedural defect: the failure to provide sufficient evidence of the public accessibility of the SMB reference. The Board did not address the substantive merits of the invalidity grounds. Petitioner contended this new petition, which includes new evidentiary declarations to cure the prior accessibility issue, is not an abusive second attempt but rather a first opportunity for a merits-based review, making institution an efficient use of Board resources.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-3, 6, 7, 10, 11, 13, 16, and 17 of Patent 7,945,699 as unpatentable.