Filed: Jul. 16, 2020
Latest Update: Jul. 16, 2020
Summary: Case: 19-1444 Document: 110 Page: 1 Filed: 07/16/2020 NOTE: This disposition is nonprecedential. United States Court of Appeals for the Federal Circuit _ ALACRITECH, INC., Appellant v. INTEL CORPORATION, CAVIUM, LLC, DELL, INC., WISTRON CORPORATION, Appellees UNITED STATES, Intervenor _ 2019-1444, 2019-1445, 2019-1466 _ Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2017- 01391, IPR2017-01392, IPR2017-01406, IPR2017-01707, IPR2018-00329, IPR2
Summary: Case: 19-1444 Document: 110 Page: 1 Filed: 07/16/2020 NOTE: This disposition is nonprecedential. United States Court of Appeals for the Federal Circuit _ ALACRITECH, INC., Appellant v. INTEL CORPORATION, CAVIUM, LLC, DELL, INC., WISTRON CORPORATION, Appellees UNITED STATES, Intervenor _ 2019-1444, 2019-1445, 2019-1466 _ Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2017- 01391, IPR2017-01392, IPR2017-01406, IPR2017-01707, IPR2018-00329, IPR20..
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Case: 19-1444 Document: 110 Page: 1 Filed: 07/16/2020
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
ALACRITECH, INC.,
Appellant
v.
INTEL CORPORATION, CAVIUM, LLC, DELL, INC.,
WISTRON CORPORATION,
Appellees
UNITED STATES,
Intervenor
______________________
2019-1444, 2019-1445, 2019-1466
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2017-
01391, IPR2017-01392, IPR2017-01406, IPR2017-01707,
IPR2018-00329, IPR2018-00375.
______________________
Decided: July 16, 2020
______________________
SANFORD IAN WEISBURST, Quinn Emanuel Urquhart &
Sullivan, LLP, New York, NY, for appellant. Also repre-
sented by JOSEPH M. PAUNOVICH, Los Angeles, CA.
GARLAND STEPHENS, Weil, Gotshal & Manges LLP,
Case: 19-1444 Document: 110 Page: 2 Filed: 07/16/2020
2 ALACRITECH, INC. v. INTEL CORPORATION
Houston, TX, for appellee Intel Corporation. Also repre-
sented by MELISSA LARUE HOTZE; GREGORY SILBERT, New
York, NY; AMANDA BRANCH, ANNE MARIE CAPPELLA, Red-
wood Shores, CA.
KARINEH KHACHATOURIAN, Rimon, P.C., Palo Alto, CA,
for appellee Cavium, LLC. Also represented by NIKOLAUS
A. WOLOSZCZUK.
KIRK T. BRADLEY, Alston & Bird LLP, Charlotte, NC,
for appellee Dell, Inc. Also represented by EMILY
CHAMBERS WELCH, Atlanta, GA; BRADY COX, Dallas, TX.
HAROLD H. DAVIS, JR., Greenberg Traurig LLP, San
Francisco, CA, for appellee Wistron Corporation. Also rep-
resented by YANG LIU, East Palo Alto, CA.
MELISSA N. PATTERSON, Appellate Staff, Civil Division,
United States Department of Justice, Washington, DC, for
intervenor. Also represented by ETHAN P. DAVIS,
COURTNEY DIXON, SCOTT R. MCINTOSH; THOMAS W.
KRAUSE, FARHEENA YASMEEN RASHEED, Office of the Solic-
itor, United States Patent and Trademark Office, Alexan-
dria, VA.
______________________
Before MOORE, CHEN, and STOLL, Circuit Judges.
CHEN, Circuit Judge.
Alacritech appeals from the final written decisions of
the Patent Trial and Appeal Board (the Board) in the
above-captioned inter partes review (IPR) proceedings
holding claims 1–7 of U.S. Patent No. 7,237,036, claims 1–
Case: 19-1444 Document: 110 Page: 3 Filed: 07/16/2020
ALACRITECH, INC. v. INTEL CORP. 3
24 of U.S. Patent No. 7,337,241, and claims 1–21 of U.S.
Patent No. 7,673,072 invalid as obvious. 1 We affirm.
BACKGROUND
The ’036, ’241, and ’072 patents relate to reducing load
on a central processing unit (CPU) through offloading cer-
tain network processing tasks to a network interface card.
Two tasks performed by the network interface card are rel-
evant to this appeal: (1) dividing data into segments for
transmission; and (2) updating Transmission Control Pro-
tocol (TCP) state information upon receiving a network
packet. Claim 1 of the ’072 patent and claim 1 of the ’036
patent are representative of the data segmentation and
TCP state information claims, respectively:
1. A method comprising:
establishing, at a host computer, a transport layer
connection, including creating a context that in-
cludes protocol header information for the connec-
tion;
transferring the protocol header information to an
interface device;
transferring data from the network host to the in-
terface device, after transferring the protocol
header information to the interface device;
dividing, by the interface device, the data into seg-
ments;
1 Alacritech’s appeal briefing included a challenge to
the appointment of the administrative patent judges on the
Board under the Appointments Clause of the Constitution,
but this challenge has since been withdrawn and waived.
See Dkt. No. 94.
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4 ALACRITECH, INC. v. INTEL CORPORATION
creating headers for the segments, by the interface
device, from a template header containing the pro-
tocol header information; and
prepending the headers to the segments to form
transmit packets.
’072 patent at claim 1 (emphasis added).
1. A device for use with a first apparatus that is
connectable to a second apparatus, the first appa-
ratus containing a memory and a first processor op-
erating a stack of protocol processing layers that
create a context for communication, the context in-
cluding a media access control (MAC) layer ad-
dress, an Internet Protocol (IP) address and
Transmission Control Protocol (TCP) state infor-
mation, the device comprising:
a communication processing mechanism connected
to the first processor, said communication pro-
cessing mechanism containing a second processor
running instructions to process a message packet
such that the context is employed to transfer data
contained in said packet to the first apparatus
memory and the TCP state information is updated
by said second processor.
’036 patent at claim 1 (emphasis added).
The Board found all of the challenged claims unpatent-
able, relying on Erickson 2 and Tanenbaum 3 to disclose the
data segmentation and TCP state information limitations.
As to the data segmentation claims, the Board explained
that Erickson teaches offloading TCP processing from a
CPU to a network interface by executing scripts (i.e.,
2 U.S. Patent No. 5,768,618.
3 ANDREW S. TANENBAUM, COMPUTER NETWORKS (3d
ed. 1996).
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ALACRITECH, INC. v. INTEL CORP. 5
software instructions) on the network interface to handle
the TCP processing. The Board reasoned that, because
Tanenbaum discloses that data segmentation is a neces-
sary feature of TCP data transmission, it would have been
obvious for Erickson’s TCP script to implement data seg-
mentation as a required feature of TCP. As to the claims
on updating TCP state information, the Board agreed with
the petitioner that it would have been obvious for Erick-
son’s script, executed by the network interface, to update
connection records when receiving packets as taught by
Tanenbaum. The Board found that updating the connec-
tion records would involve updating TCP state information
such as TCP sequence numbers.
Alacritech appeals, and we have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
Obviousness “is a question of law based on underlying
findings of fact.” In re Gartside, 203 F.3d 1305, 1316 (Fed.
Cir. 2000) (citation omitted). We review the Board’s factual
findings for substantial evidence and its legal conclusions
de novo. Rambus Inc. v. Rea,
731 F.3d 1248, 1251–52 (Fed.
Cir. 2013).
I. TCP Data Segmentation
Substantial evidence supports the Board’s finding that
a skilled artisan would have motivated to have Erickson’s
scripts on its network interface implement TCP data seg-
mentation as described in Tanenbaum with a reasonable
expectation of success.
Just as Alacritech’s patents’ stated goal is to offload
certain network processing tasks to a network interface
card, Erickson likewise discloses how a network interface
can be programmed using a script to allow user applica-
tions to transmit or receive network communications di-
rectly through the network interface, thereby “avoiding the
overhead processing which would be incurred if the
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6 ALACRITECH, INC. v. INTEL CORPORATION
operating system were used to service” such communica-
tions. See Erickson at col. 4 ll. 18–33, col. 4 l. 53–col. 5 l. 5,
col. 5 ll. 15–22. Such scripts can be used “to define a par-
ticular set of instructions to be performed based upon the
protocol type” of the communications. Id. at col. 5 ll. 41–
47. As the Board recognized, Erickson’s scripts handle var-
ious protocol types, including TCP and the User Datagram
Protocol (UDP).
Id. at col. 5 ll. 47–49; J.A. 147. Although
Erickson does not provide a detailed example of a script for
TCP, Erickson explains that the TCP protocol is “well-
known within the art” and “may be found in many refer-
ences,” including an earlier edition of Tanenbaum ex-
pressly “incorporated by reference.”
Id. at col. 4 ll. 38–43.
Substantial evidence supports the Board’s finding that
it would have been obvious for a skilled artisan reading Er-
ickson at the time of the invention to look to the then-cur-
rent edition of Tanenbaum to determine what instructions
Erickson’s script should perform to handle TCP communi-
cations on Erickson’s network interface. J.A. 147 (“alt-
hough Erickson’s exemplary context is UDP, it also
discloses the use of TCP, refers readers to the 1981 edition
of Tanenbaum, and discloses use of TCP/IP scripts”). Since
Tanenbaum teaches that the TCP protocol segments data
into separate packets for transmission, we see no error in
the Board’s conclusion that it would have been obvious for
Erickson’s network interface to implement such data seg-
mentation using Erickson’s TCP scripts, and substantial
evidence supports the Board’s finding that a skilled artisan
would have been motivated to do so. 4
4 Specific to the ’241 patent, Alacritech also argues
that the Board failed to make any finding that a skilled ar-
tisan would be motivated to implement Tanenbaum’s TCP
processing on a network interface using Erickson’s scripts.
We disagree. As the Board explained, it was persuaded by
petitioner’s argument that “Tanenbaum expressly discloses
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ALACRITECH, INC. v. INTEL CORP. 7
Alacritech argues that neither Erickson nor Tanen-
baum discloses the use of a network interface to divide data
into segments and the Board improperly relied on a skilled
artisan’s ordinary creativity to supply a missing limitation.
But the Board did not rely on a broad assertion of “ordinary
creativity.” As the Board noted, Alacritech’s arguments at-
tack the references individually and not for what the com-
bination teaches a skilled artisan. See Soft Gel Techs., Inc.
v. Jarrow Formulas, Inc., 864 F.3d 1334, 1341 (Fed. Cir.
2017); In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed.
Cir. 1986)� The Board correctly reasoned that it would
have been obvious to have Erickson’s TCP scripts, whose
purpose is to handle TCP processing tasks on behalf of the
CPU, implement data segmentation, as Tanenbaum ex-
plains such segmentation is required by TCP. J.A. 98; J.A
147. Thus, substantial evidence supports the Board’s find-
ing that the combination of Erickson and Tanenbaum dis-
closes the use of a secondary processor on a network
interface to divide data into segments, and Alacritech’s ar-
gument that this limitation is missing from the individual
references is unpersuasive.
Substantial evidence also supports the Board’s finding
that Tanenbaum does not teach away from implementing
TCP processing on a network interface. Although Tanen-
baum states that, “[u]sually, the best approach is to make
the protocols simple and have the main CPU do the work,”
J.A. 2959, Tanenbaum expressly discloses that processing
of transport protocols (e.g., TCP) can be performed on a
that transport layer protocol [e.g., TCP] processing may be
offloaded to a network interface card,” i.e., a skilled artisan
would be motivated by Tanenbaum’s express teaching.
J.A. 76–77 (emphasis added). The motivation is further re-
inforced by the fact that Erickson cites an earlier version
of Tanenbaum to describe the TCP protocol. Erickson at
col. 4 ll. 38–43.
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8 ALACRITECH, INC. v. INTEL CORPORATION
network interface card. Id. at 2868 (explaining that the
“transport entity” that handles the transport protocol can
be “in the operating system kernel . . . or on the network
interface card”). As the Board explained, “Tanenbaum ac-
tually discloses only that the system may not be optimal if
a less ‘expensive’ CPU is selected and the ‘slow CPU’ ‘do[es]
the critical work.” J.A. 157 (emphasis added). Alacritech
also argues that a paper published by Dr. Horst supports
its view that offloading TCP functions to a second processor
was prohibitively expensive. But the Board was similarly
unpersuaded because, as the petitioner explained, this pa-
per also confirmed that “conventional wisdom” was that
TCP was offloaded to special purpose network interface
cards. J.A. 109–110; J.A. 175–76; see also J.A. 10239 (“Con-
ventional wisdom says that IP storage is impractical with-
out special purpose NICs to accelerate the TCP/IP protocol
stack.”). We note that the data segmentation claims do not
require an optimal solution, but simply require “dividing,
by the interface device, the data into segments.” See ’072
patent at claim 1. Considering Tanenbaum’s express dis-
closure of offloading TCP to the network interface in light
of Erickson, which likewise discloses that network protocol
processing such as TCP can be performed on a network in-
terface, substantial evidence supports the Board’s finding
that Tanenbaum’s preference for processing on the “main
CPU” did not teach away from the combination. J.A. 97–
98; J.A 156–57.
II. TCP State Information
We also see no error in the Board’s conclusion that up-
dating TCP state information with a network interface
would have been obvious over Erickson and Tanenbaum.
Alacritech again complains that this limitation is missing
from Erickson and Tanenbaum, but we find this attack on
the individual references unpersuasive in view of what the
references teach as a whole.
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ALACRITECH, INC. v. INTEL CORP. 9
The Board found that Erickson teaches “fast-path pro-
cessing,” in which user applications can transmit data
through a network interface while “avoiding the overhead”
of normal processing. J.A. 7–8, 17. As explained above,
Erickson’s express reference to the earlier edition of Tanen-
baum would lead a skilled artisan reading Erickson to
Tanenbaum’s disclosure for details on the TCP protocol. In
turn, Tanenbaum describes how the process for receiving
TCP packets can be simplified after an initial connection is
established. If certain conditions are met, a received
packet can, like in Erickson, undergo “fast path,” as op-
posed to normal TCP processing. J.A. 2955. As Tanen-
baum explains, this “fast path updates the connection
record and copies the [received] data to the user.” Id. Pe-
titioner’s expert, Dr. Horst, testified that Tanenbaum’s
“connection record” was “used to maintain the TCP state.”
J.A. 2319 (explaining that Tanenbaum discloses that “the
local TCP entity creates a connection record” and “the state
is per connection and recorded in the connection record”);
see also J.A. 2919. Alacritech does not appear to dispute
that Tanenbaum discloses updating TCP state as part of
maintaining a “connection record.” Thus, there is substan-
tial evidence for the Board’s finding that Tanenbaum’s con-
nection record was “used to maintain the TCP state,” and
the Board properly agreed with the petitioner that it would
have been obvious to incorporate Tanenbaum’s teachings
on fast path into Erickson’s fast path, resulting in a script
for a network interface that updates TCP state information
when receiving network packets. J.A. 23–24.
Alacritech urges that Erickson is limited to its disclo-
sure of an exemplary script for transmitting packets, and
thus its teachings cannot extend to receiving packets. We
disagree. Contrary to Alacritech’s suggestion, a skilled ar-
tisan would not read Erickson with a myopic focus on a sin-
gle example for transmitting packets but would instead
view the reference’s teachings as a whole. As the petitioner
explained, and the Board agreed, Erickson discloses that
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10 ALACRITECH, INC. v. INTEL CORPORATION
its scripts can be used to “transmit and receive infor-
mation” through the network interface. Erickson at col. 5
ll. 6–14 (emphasis added); J.A. 24. Substantial evidence
supports the Board’s finding regarding the scope of Erick-
son’s disclosures.
Alacritech also argues that the Board failed to make
any finding on motivation to combine. We disagree. The
Board was persuaded that a skilled artisan “would have
been motivated to implement ‘fast path’ TCP/IP on Erick-
son’s [network interface] in view of Tanenbaum with a high
expectation of success,” particularly because Erickson ex-
pressly discloses that TCP scripts can be implemented for
the network interface and in view of “TCP’s popularity
among a finite number [of] networking protocols.” J.A. 11–
12, 16–17. Because the Board also found that updating
TCP state information is part and parcel of Tanenbaum’s
“fast path” TCP processing, the Board’s findings with re-
spect to motivation to combine on “fast path” TCP pro-
cessing apply equally to updating TCP state information.
J.A. 23–24.
CONCLUSION
We have considered Alacritech’s remaining arguments
and find them unpersuasive. For the reasons stated above,
we affirm the Board’s conclusion that the claims at issue
are unpatentable.
AFFIRMED
