Trials@uspto.gov
`571-272-7822
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`Paper 17
`Date: December 21, 2012
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`MICROSOFT CORPORATION
`Petitioner
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`v.
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`PROXYCONN, INC.
`Patent Owner
`____________
`
`Case IPR2012-00026 (TLG)
`Patent 6,757,717 B1
`____________
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`
`
`
`
`
`Before SALLY C. MEDLEY, SCOTT R. BOALICK, and THOMAS L.
`GIANNETTI, Administrative Patent Judges.
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`
`GIANNETTI, Administrative Patent Judge.
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`
`
`
`
`DECISION ON REQUEST FOR INTER PARTES REVIEW
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`
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`571-272-7822
`
`Paper 17
`Date: December 21, 2012
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`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`MICROSOFT CORPORATION
`Petitioner
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`v.
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`PROXYCONN, INC.
`Patent Owner
`____________
`
`Case IPR2012-00026 (TLG)
`Patent 6,757,717 B1
`____________
`
`
`
`
`
`
`Before SALLY C. MEDLEY, SCOTT R. BOALICK, and THOMAS L.
`GIANNETTI, Administrative Patent Judges.
`
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`
`DECISION ON REQUEST FOR INTER PARTES REVIEW
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`
`IPR2012-00026
`Patent 6,757,717
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`I. BACKGROUND
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`Petitioner Microsoft Corporation requests inter partes review of claims 1, 3,
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`10-12, 14, and 22-24 of US Patent 6,757,717 B1 pursuant to 35 U.S.C. §§ 311 et
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`seq. The Patent Owner, ProxyConn Inc., has waived its right to file a preliminary
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`response under 37 C.F.R. § 42.107(b). Paper No. 15. We have jurisdiction under
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`35 U.S.C. § 314.
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`The standard for instituting an inter partes review is set forth in 35 U.S.C.
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`§ 314(a) which provides as follows:
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`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.
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`Petitioner challenges claims 1, 3, 10-12, 14, and 22-24 as anticipated (35
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`U.S.C. § 102) and obvious (35 U.S.C. § 103). Pet. 3. We grant the petition as to
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`claims 1, 3, 10, and 22-24 and deny the petition as to claims 11, 12, and 14.
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`A. The ʼ717 Patent (EX1002)
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`The invention of the ʼ717 patent is a system for data access in a packet
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`switched network. ʼ717 patent Abstract. The system has a sender/computer
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`including an operating unit, a first memory, a permanent storage memory, and a
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`processor. The system also has a remote receiver/computer including an operating
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`unit, a first memory, a permanent storage memory, and a processor. The
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`sender/computer and receiver/computer communicate through the network. Id.
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`2
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`The sender/computer further includes a device for calculating digital digests on
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`data; the receiver/computer further includes a network cache memory and a device
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`for calculating digital digests on data in the network cache memory; and the
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`receiver/computer and/or the sender/computer includes a device for comparison
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`between digital digests. Id.
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`As described in the Petition, the ʼ717 patent provides a way to reduce the
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`amount of redundant data transmitted over a network. Pet. 4. The algorithm of the
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`invention checks for the identity between two sets of data by comparing respective
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`digital fingerprints of that data. Id. As described in the Summary of the Invention:
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`If a sender/computer in the network is required to send data to another
`receiver/computer, and the receiver/computer has data with the same digital
`digest as that of the data to be sent, it can be assumed with sufficient
`probability for most practical applications that the receiver/computer has
`data which is exactly the same as the data being sent. Then, the
`receiver/computer can use the data immediately without its actual transfer
`through the network. In the present invention, this idea is used in a variety of
`ways.
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`ʼ717 patent col. 2, ll. 16-24.
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`The patent discloses several embodiments. In one, a sender/computer
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`required to send data to a receiver computer initially sends a digital digest of the
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`data. If the receiver/computer already has data with the same digital digest, it uses
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`this data as if it were actually transmitted from the sender/computer. ʼ717 patent
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`col. 2, ll. 26-31. This embodiment is illustrated in Figs. 5-7. Fig. 5 is reproduced
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`below:
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`Fig. 5 is a schematic representation illustrating the interaction between a
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`sender/computer and a receiver/computer according to the teachings of one
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`embodiment of the ʼ717 patent. Col. 5, ll. 49-51. In this embodiment, the
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`receiver/computer receives a digital digest from a sender/computer and searches its
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`network cache memory for data with the same digest. If the receiver/computer
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`finds such data, it uses that data as if the data were received from the
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`sender/computer and issues a positive indication signal to the sender/computer.
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`Otherwise it sends a negative indication signal to the sender/computer. Col. 7, ll.
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`50-60.
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`In another embodiment auxiliary digital digests for other data objects can be
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`sent together with the principal digest. If the receiver/computer cannot find data
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`having the principal digest, it searches for data with one of the auxiliary digests. If
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`such data is found, the sender/computer is required to send only the difference
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`between the requested data object and the data object corresponding to the
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`auxiliary digest. ʼ717 patent col. 2, ll. 31-37. The expression in the specification
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`“difference between the first data or data object and the second data or data object”
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`means any bit sequence that enables the restoration of the first data, given the
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`second data, the bit sequence, and the method employed in calculating the
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`difference. Id. ll. 37-41. This embodiment is illustrated in Figs. 8-10. Fig. 8 is
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`reproduced below:
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`Fig. 8 is a schematic representation illustrating the interaction between a
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`sender/computer and a receiver/computer according to the teachings of another
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`embodiment of the invention. ʼ717 patent col. 5, ll. 59-61. In this embodiment the
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`sender/computer sends the principal and auxiliary (e.g., of a previous version of the
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`data requested) digests to the receiver/computer. Upon receiving a message with
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`these digital digests from the sender/computer, the receiver/computer searches its
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`network cache memory for data having the same principal digest. If such data is
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`found, the receiver/computer uses the data as if the data were received from the
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`sender/computer and issues a positive indication signal to the sender/computer.
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`Otherwise, the receiver/computer searches its network cache memory for data with
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`the auxiliary digests. If it finds data with a digital digest substantially equal to one
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`5
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`of the auxiliary digests, it issues a partial indication signal to the sender/computer,
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`along with a reference to the digest. Otherwise it issues a negative indication
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`signal to the sender/computer. Id. col. 8, ll. 11-39.
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`B. Prior Art References
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`Petitioner relies on the following prior art:
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`1. Perlman US Patent 5,742,820 (EX1003)
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`2. Yohe US Patent 5,835,943 (EX1005)
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`3. Santos “Increasing Effective Link Bandwidth by Suppressing Replicated
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`Data,” Proceedings of the USENIX Annual Technical Conference (NO 98), June
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`1998 (EX1004)
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`4. Baber US Patent 6,279,041 B1 (EX1017)
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`1. Perlman (EX1003)
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`Petitioner contends that Perlman anticipates all challenged claims. Pet. 3.
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`Perlman discloses a mechanism for synchronizing the contents of a database stored
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`on the nodes of a computer network to ensure that those contents are consistent.
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`Perlman Abstract. A database identifier generated by a node of the computer
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`network is distributed to other receiving nodes coupled to the network. The
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`database identifier uniquely represents the contents of the distributing node’s
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`database. The receiving nodes compare this unique identifier with their own
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`generated database identifiers to determine if the identifiers and thus their
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`associated databases are consistent and synchronized. Id. The database identifiers
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`preferably are generated from a cryptographic message digest algorithm configured
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`to transform the data identifying the contents of the database into a unique fixed
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`6
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`length digest "signature" whose contents are substantially less than those of the
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`identifying data. Id. col. 4, ll. 13-18.
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`Accordingly, transmission of the database identifier in lieu of identifying all
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`items in the database optimizes both the use of computational resources within the
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`receiving routers and bandwidth on the network. Perlman col. 4, ll. 19-21. Each
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`receiving router initially calculates an identifier based on the contents of its
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`database, and then compares the calculated identifier with the database identifier
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`received from the designated router. A receiving router whose calculated database
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`identifier conforms to the received database identifier needs only store the latter
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`identifier. If the calculated identifier is different, the receiving router may request
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`the data identifying all items in the database to resolve any differences.
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`Significantly the designated router transmits the actual database content
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`information only in response to a change in the database or a request from another
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`router. Id. ll. 24-34.
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`2. Yohe (EX1005)
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`Petitioner contends that Yohe anticipates all challenged claims except claim
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`24. Pet. 3. Yohe is directed to an apparatus for increasing data access in a network
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`which includes a file server computer with a permanent storage memory, and a
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`cache verifying computer operably connected to the file server computer in a
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`manner to form a network for rapidly transferred data. Yohe Abstract. The cache
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`verifying computer has an operating system, a first memory, and a processor with
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`means for performing an operation on data stored in the permanent storage
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`memory on the file server computer to produce a signature of the data
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`characteristic of one of a file and directory. Id. It also includes a remote client
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`computer having an operating system, a first memory, a cache memory, and a
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`processor with means for performing an operation on data stored in the cache
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`memory to produce a signature of the data, and a communication server operably
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`connected to the remote client computer, the cache verifying computer, and file
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`server computer. Comparators are operably associated with the cache verifying
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`computer and remote client computer for comparing the signatures of data with
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`one another to determine whether the data signature of the remote client is valid.
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`Id. Also see Yohe col. 2, ll. 41-61.
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`The performance gains in Yohe are realized by storing a copy of the data in
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`the permanent storage memory of the remote client computer and verifying the
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`stored copy to be current when it is subsequently retrieved. Yohe col. 4, ll. 31-37.
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`This is illustrated in Yohe Fig. 15, blocks 722 and 723. In those blocks the
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`signature of the requested data is compared to the signature retrieved (block 722)
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`and if they match the data object retrieved from the cache is returned (block 723).
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`Id. col. 8, ll. 5-13.
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`3. Santos (EX1004)
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`Petitioner contends that Santos anticipates claims 1, 3, 11-12, 14, and 22.
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`Pet. 3. Santos describes compression architecture that suppresses replicated data to
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`increase bandwidth in a packet switched environment such as the Internet. Santos
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`2. The bandwidth savings is achieved by transmitting repeated data as a short
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`dictionary token, using caches of recently-seen data at both ends of the link to
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`maintain the dictionary and encode and decode the tokens. Id. at 5. The approach
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`of Santos is based on the insight that the “fingerprint” of a data segment is an
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`inexpensive name for the data itself, both in terms of space and time. Id. Santos
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`uses the MD5 hash algorithm for his implementation but states that other
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`“fingerprints” could be used. Id. Figure 4 of Santos follows:
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`8
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`Fig. 4 of Santos shows message exchange sequence from a sender
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`(compressor) to a receiver (decompressor). Santos 7. The upper portion of the
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`figure illustrates the sequence of events when the compressor receives a packet
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`having header HdrA whose fingerprint H(X) is not in the cache. The lower portion
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`of the figure illustrates the sequence of events occurring when the compressor
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`receives a packet having header HdrB and a fingerprint H(X) that is found in the
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`cache. Id. at 7-8. In the first case the compressor stores packet contents X in its
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`cache, indexed by its fingerprint H(X), and forwards the header and contents
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`across the link. In the second case the compressor sends the header and
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`fingerprint, thus achieving a savings in bandwidth. Id. at 8.
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`4. Baber (EX1017)
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`Petitioner contends that Baber anticipates all claims. Pet. 3. While
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`analyzing Baber itself (id. at 29-31), Petitioner does not include Baber in its claim
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`9
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`charts “mapping” the challenged claims to the prior art. See EX1001.1 Nor does
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`Petitioner apply these claims to Baber elsewhere in the Petition or in the supporting
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`materials submitted. Our rules require that a petition must include a “full
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`statement of the reasons for the relief requested, including a detailed explanation of
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`the significance of the evidence…” 37 C.F.R. § 42.22(a)(2). Moreover, “[t]he
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`petition must specify where each element of the claim is found in the prior art
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`patents or publications relied upon ….” 37 C.F.R. § 42.104(b)(4). Thus while
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`claim charts are not mandatory, some analysis of the challenged claims in relation
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`to the prior art is necessary to meet Petitioner’s burden under 35 U.S.C. § 314(a)
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`and to comply with our rules regarding required content of a petition. See infra.
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`Accordingly we conclude that the requirements for instituting inter partes review
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`are not met as to Baber.
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`II. ILLUSTRATIVE CLAIMS
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`The following claims illustrate the claimed subject matter:
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`1. A system for data access in a packet-switched network,
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`comprising:
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`a sender/computer including an operating unit, a first memory, a
`permanent storage memory and a processor and a remote receiver/computer
`including an operating unit, a first memory, a permanent storage memory
`and a processor, said sender/computer and said receiver/computer
`communicating through said network;
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`said sender computer further including means for creating digital
`digests on data;
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`1 EX1001 appears as Document 4 in the Patent Review and Processing System
`(“PRPS”).
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`10
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`IPR2012-00026
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`said receiver/computer further including a network cache memory and
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`means for creating digital digests on data in said network cache memory;
`and
`said receiver/computer including means for comparison between
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`digital digests.
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`11. A method performed by a sender/computer in a packet-
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`switched network for increasing data access, said sender/computer
`including an operating unit, a first memory, a permanent storage memory
`and a processor and said sender/computer being operative to transmit data to
`a receiver/computer, the method comprising the steps of:
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`creating and transmitting a digital digest of said data from said
`sender/computer to said receiver/computer;
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`receiving a response signal from the receiver/computer at said
`sender/computer, said response signal containing a positive, partial or
`negative indication signal for said digital digest, and
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`if a negative indication signal is received, transmitting said data
`from said sender/computer to said receiver/computer.
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`22. A method for increased data access performed by a
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`receiver/computer in a packet-switched network, said receiver/computer
`including an operating unit, a first memory, a permanent storage memory, a
`processor and a network cache memory, said method comprising the steps
`of:
`receiving a message containing a digital digest from said network;
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`searching for data with the same digital digest in said network cache
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`memory,
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`if data having the same digital digest as the digital digest received is
`not uncovered, forming a negative indication signal and transmitting it
`back through said network; and
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` creating a digital digest for data received from said network cache
`memory.
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`III. CLAIM CONSTRUCTION
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`Consistent with the statute and the legislative history of the AIA, the Board
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`will interpret claims using the broadest reasonable construction. See Office Patent
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`Trial Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012); 37 CFR
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`§ 100(b). There is a “heavy presumption” that a claim term carries its ordinary and
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`customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
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`(Fed. Cir. 2002). However, as further explained by the Federal Circuit: “[T]he
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`claim term will not receive its ordinary meaning if the patentee acted as his own
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`lexicographer and clearly set forth a definition of the disputed claim term in either
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`the specification or prosecution history.” Id. (citation omitted).
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`As a necessary step in our analysis for determining whether to institute a
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`trial, we make the following claim constructions.
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`A. Data/Data Object
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`Patent Owner has acted as its own lexicographer and has defined “data” or
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`“data object” as “a file or range of octets in a file, a range of frames in a video
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`stream or RAM-based range of octets, a transport level network packet, or the
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`like.” Col. 2, ll. 5-8. Petitioner does not challenge this definition. Pet. 10. We
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`therefore adopt this construction.
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`B. Difference
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`Patent Owner has acted as its own lexicographer and has defined
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`“difference” in the expression “difference between a first data or data object and a
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`second data or data object” as any bit sequence that enables restoration of the first
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`data, given the second data, the bit sequence, and the method employed in
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`calculating the difference. Col. 2, ll. 38-42. We adopt this definition, which is
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`unchallenged by Petitioner.
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`C. Digital Digest
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`Patent Owner has acted as its own lexicographer and has defined the term
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`“digital digest” as “a fixed-size binary value calculated from arbitrary-size binary
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`data in such a way that it depends only on the contents of the data and the low
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`probability that two different data or objects have the same digital digest.” Col. 2,
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`ll. 9-13. The patent further defines the term “digital digest” as referring to the
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`known MD5 algorithm, but states that other algorithms may be used. For example,
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`a digital digest may be calculated according to the CRC algorithm, or by applying
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`the CRC algorithm to different subsets or different recordings of data, or by
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`consecutively applying CRC and MD5. Col. 6, ll. 24-36.
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`Petitioner challenges this definition. Pet. 10-11. According to Petitioner,
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`the ʼ717 patent “contradicts” itself by asserting that a digital digest has a similarity
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`check property. Pet. 10. Petitioner contends that neither MD5 nor CRC produces
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`a digest with such a property. Id. But Petitioner’s citations to the ʼ717 patent
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`specification do not refer to a “similarity check.” Instead they refer to text using
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`the terms “difference,” which is defined in the specification (see supra) and
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`“substantially identical,” which does not appear in the challenged claims.
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`Recognizing a patentee’s right to be his or her own lexicographer, we decline
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`Petitioner’s invitation to further define “digital digest” beyond the definition
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`provided in the ʼ717 patent.
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`D. Negative Indication Signal
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`Petitioner’s proposed definition of “negative indication signal” includes the
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`absence of a signal. Pet. 13. The ʼ717 patent states that “absence of the indication
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`signal from the receiver/computer for a predefined period of time may be
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`considered by the sender/computer as a negative indication signal…” Col. 8, ll.
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`41-43. We therefore adopt Petitioner’s construction for the term.
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`E. Positive, partial, or negative indication signals
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`Contrary to Petitioner, we construe this term as requiring the issuance of all
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`three alternative signals as required. Our reasoning is set forth infra, in our
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`analysis of claims 11, 12, and 14.
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`F. Sender/computer, Receiver/computer
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`We construe these terms as a computer that sends or receives data,
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`respectively. We agree with Petitioner that a sender/computer can include multiple
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`devices and that it encompasses intermediaries. See Pet. 15.
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`G. Operating Unit
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` We do not interpret this term as a means plus function limitation under 35
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`U.S.C. § 112 ¶ 6 as suggested by Petitioner. See Pet. 16. We furthermore find no
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`support for, and therefore do not adopt, Petitioner’s proposed construction of
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`“anything found in a computer—other than the recited processor and memories--
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`that is used in its operation.” Id. at 16-18. The ʼ717 patent specification does not
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`require the recited memories and processor to be separate from the operating unit,
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`as in Petitioner’s proposed definition. The term “operating unit” is not defined in
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`14
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`the ʼ717 patent. We therefore conclude that plain meaning should apply to this
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`term.2
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`H. Means for Creating Digital Digests
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`We agree that this is a means plus function limitation but disagree with
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`Petitioner that the ʼ717 patent discloses no “counterpart.” Pet.17. See discussion
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`of the MD5 and CRC algorithms supra.
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`I. Network Cache Memory
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`We disagree with Petitioner’s construction. Pet. 19. As Petitioner
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`acknowledges that the ʼ717 patent does not “explain” this term (id.), we apply it in
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`accordance with its plain meaning.
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`J. Means for Comparison between Digital Digests
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`We agree with Petitioner that this is a means plus function element. Pet. 21.
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`We disagree that the ʼ717 patent discloses no “counterpart.” Id. See comparison
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`means 54 shown in Fig. 4 and described at col.7, ll.33-36 of the ʼ717 patent. The
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`sufficiency of this disclosure under 35 U.S.C. § 112 ¶ 6 is not before us in this
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`proceeding (see 35 U.S.C. § 311(b) limiting inter partes review to a ground that
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`could be raised under 35 U.S.C. § 102 or 103). We note, however, that no
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`2 By “plain meaning” we refer to the ordinary and customary meaning the term
`would have to a person of ordinary skill in the art. Such terms have been held to
`require no construction. E.g., Biotec Biologische Naturverpackungen GmbH &
`Co. KG v. Biocorp, Inc., 249 F.3d 1341, 1349 (Fed. Cir. 2001) (finding no error in
`non-construction of “melting”); Mentor H/S, Inc. v. Med. Device Alliance, Inc.,
`244 F.3d 1365, 1380 (Fed. Cir. 2001) (finding no error in court’s refusal to
`construe “irrigating” and “frictional heat”).
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`IPR2012-00026
`Patent 6,757,717
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`algorithm or other structure is linked by the ʼ717 patent specification to the above
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`comparison means. See, e.g., Noah Systems, Inc. v. Intuit Inc., 675 F.3d 1302,
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`1311 (Fed. Cir. 2012). Recently, in Ergo Licensing, LLC v. CareFusion 303, Inc.,
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`673 F.3d 1361, 1364-65 (Fed. Cir. 2012), the Federal Circuit confirmed that there
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`is a “narrow exception” to the requirement that an algorithm be disclosed when the
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`claimed function can be achieved by any general purpose computer without special
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`programming. Also see In re Katz Interactive Call Processing Litigation, 639 F.3d
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`1303, 1316 (Fed. Cir. 2011), cited approvingly in Ergo, where the Court held that
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`absent a possible narrower construction, the functions “processing,” “receiving,”
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`and “storing” were within the exception and were construed to be coextensive with
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`the structure disclosed, i.e., a general purpose computer. Consequently, absent a
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`possible narrower construction from Patent Owner, we conclude that the recitation
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`of “means for comparison” in the ʼ717 patent claims likewise falls within this
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`narrow exception. Our construction of this term, determined by 35 U.S.C. § 112 ¶
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`6, is therefore any general purpose computer. We note that this is somewhat
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`broader than Petitioner’s proposed construction: “any device capable of comparing
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`‘digital digests.’” Pet. 21.
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`K. Means for Storing Digital Digests
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`We disagree with Petitioner that there is no “counterpart” for this means plus
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`function element. Pet. 21-22. See Fig. 4 showing receiver/computer 46 and
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`sender/computer 42. Our construction of this term is determined by 35 U.S.C.
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`§ 112 ¶ 6 in accordance with the discussion of comparison means, supra, and
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`therefore we do not adopt Petitioner’s construction.
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`L. Plain Meaning
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`16
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`IPR2012-00026
`Patent 6,757,717
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`We adopt Petitioner’s suggestion to apply the remaining terms in accordance
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`with their plain meaning. We discuss infra Petitioner’s contention that certain of
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`these terms are entitled to “no patentable weight.”
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`IV. ANALYSIS
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`A. Claims 1 and 3
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`These claims are directed to the ʼ717 patent Fig. 5 embodiment discussed
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`supra. Claim 1 follows:
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`1. A system for data access in a packet-switched network,
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`comprising:
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`a sender/computer including an operating unit, a first memory, a
`permanent storage memory and a processor and a remote receiver/computer
`including an operating unit, a first memory, a permanent storage memory
`and a processor, said sender/computer and said receiver/computer
`communicating through said network;
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`said sender computer further including means for creating digital
`digests on data;
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`said receiver/computer further including a network cache memory and
`means for creating digital digests on data in said network cache memory;
`and
`said receiver/computer including means for comparison between
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`digital digests.
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`Petitioner’s analysis of these claims in relation to Perlman, Yohe, and Santos
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`appears in Appendix A to the Petition (EX1001) at pages 2-11. As Patent Owner
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`has waived filing a preliminary response, we therefore review Petitioner’s
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`proposed grounds to determine whether the Petitioner has met the threshold
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`standard of 35 U.S.C. § 314(a), namely, “that the information presented in the
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`17
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`IPR2012-00026
`Patent 6,757,717
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`petition … shows that there is a reasonable likelihood that the petitioner would
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`prevail with respect to at least 1 of the claims challenged in the petition.”
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`1. Anticipation 35 U.S.C. § 102
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`“A claim is anticipated only if each and every element as set forth in the
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`claim is found, either expressly or inherently described, in a single prior art
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`reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631
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`(Fed. Cir. 1987).
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`Turning first to Petitioner’s anticipation contentions, the Board is persuaded
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`by the analysis of each of Perlman (EX1003), Yohe (EX1005), and Santos
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`(EX1004) set forth in the Petition and supporting materials, including Appendix A,
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`that there is a reasonable likelihood that Petitioner will prevail on those contentions
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`as to claims 1 and 3. As to Perlman, the “digital digests” required by the claims
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`are met by the “unique, fixed-length digest ‘signature’ whose contents are
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`substantially less than those of the [data base].” Perlman col. 4, ll.13-20. In Yohe,
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`this limitation is met by the “signature” generated through the MD5 or CRC
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`protocols. Yohe col.11, ll.56-63, col.13, ll.30-39. In Santos, the compressor
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`module calculates fixed-size “fingerprints” from packet data of arbitrary size.
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`Santos 7-8. Similarly, Petitioner has established a reasonable likelihood that the
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`other claim limitations are met by these references. See EX1001, App. A 2-11. In
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`summary, we determine that Petitioner has met the threshold standard of
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`demonstrating a reasonable likelihood of prevailing on the issue of whether these
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`claims are anticipated by any one of Perlman, Yohe, or Santos.
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`2. Obviousness 35 U.S.C. § 103(a)
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`18
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`IPR2012-00026
`Patent 6,757,717
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`“Section 103 [of 35 U.S.C.] forbids issuance of a patent when ‘the
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`differences between the subject matter sought to be patented and the prior art are
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`such that the subject matter as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
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`To establish obviousness of a claimed invention, all the claim limitations must be
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`taught or suggested by the prior art. See CFMT, Inc. v. Yieldup Int’l Corp., 349
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`F.3d 1333, 1342 (Fed. Cir. 2003); In re Royka, 490 F.2d 981, 985 (CCPA 1974).
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`Petitioner has also met the threshold requirement of demonstrating a
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`reasonable likelihood of prevailing on the issue of obviousness of claims 1 and 3
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`over the combination of Perlman and Yohe. Pet. 3. Our determination takes into
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`account the detailed and credible reasons for combining the teachings of Perlman
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`and Yohe set forth in the Declaration of Professor Darrell D. E. Long (“Long
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`Decl.”) at 9-18, submitted by Petitioner. EX1007. Among these is the assertion
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`that Perlman and Yohe are directed to the same problem as the ʼ717 patent, and
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`propose the same solution. Long Decl. 9-10. We conclude that, taken together
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`with the analysis of these references in the Petition including Appendix A,
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`Petitioner has demonstrated a reasonable likelihood of prevailing on its assertion
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`that these claims would have been obvious over Perlman and Yohe.
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`B. Claim 10
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`This independent system claim is similar to claim 1 with one significant
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`difference: in claim 10 the receiver/computer includes means for storing the digital
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`digest received from the network “in its permanent storage memory.” Petitioner
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`19
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`IPR2012-00026
`Patent 6,757,717
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`recognizes that Perlman uses non-permanent memory (RAM) for its cache. Pet. 9.
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`Also see EX1007, Long Decl. 13. Petitioner points out that Perlman is not limited
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`to this embodiment. Pet. 9. Nevertheless, in the absence of a specific disclosure of
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`a permanent memory as claimed, we are not persuaded that Petitioner has
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`sufficiently demonstrated that there is a reasonable likelihood of prevailing on the
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`assertion that Perlman anticipates claim 10. See infra. However, for the reasons
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`stated above we conclude that Petitioner has sufficiently demonstrated that there is
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`a reasonable likelihood of prevailing on the contention that claim 10 is
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`unpatentable over the combination of Perlman and Yohe. As there is evidence that
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`Yohe discloses use of permanent memory (disc) for cache storage (EX1007, Long
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`Decl. 13) and at least a rational basis for combining the references (id. at 11-18)
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`there is at least a reasonable likelihood of Petitioner prevailing on the assertion that
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`claim 10 would have been obvious over the Perlman/Yohe combination.
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`C. Claims 11, 12, and 14
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`Claim 11 is an independent method claim directed to the operation of the
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`sender/computer. It reads as follows (with emphasis added):
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`11. A method performed by a sender/computer in a packet-switched
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`network for increasing data access, said sender/computer including an
`operating unit, a first memory, a permanent storage memory and a
`processor and said sender/computer being operative to transmit data to a
`receiver/computer, the method comprising the steps of:
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`creating and transmitting a digital digest of said data from said
`sender/computer to said receiver/computer;
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`receiving a response signal from the receiver/computer at said
`sender/computer, said response signal containing a positive, partial or
`negative indication signal for said digital digest, and
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`if a negative indicatio
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