`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`ORACLE CORPORATION
`Petitioner
`v.
`Patent of CLOUDING IP, LLC
`Patent Owner
`____________
`Case IPR2013-00073 (JL)
`Patent 6,738,799
`____________
`
`PPAATTEENNTT OOWWNNEERR PPRREELLIIMMIINNAARRYY RREESSPPOONNSSEE TTOO
`PPEETTIITTIIOONN FFOORR IINNTTEERR PPAARRTTEESS RREEVVIIEEWW OOFF
`UU..SS.. PPAATTEENNTT NNOO.. 66,,773388,,779999
`UUNNDDEERR 3355 UUSSCC §§§§ 331111--331199 AANNDD 3377 CCFFRR §§4422..110000 EETT SSEEQQ..
`
`
`
`
`
`
`
`

`

`TTaabbllee ooff CCoonntteennttss
`1. Introduction ................................................................................................ 1
`
`Update. ........................................................................................................ 4
`
`    2. Overview of U.S. Patent 6,738,799 ............................................................. 2
`    3. Claim Terms Requiring Construction .......................................................... 3
`   A. Claims 1 and 23 Require that a Command to Copy be Written into the
`   B. Claim 37 Requires that a Check is Made to Determine Whether a
`   C. The Signature List Recited in Claims 1 and 23 is a Representation of a
`   D. An Update is an Item that Allows a Second Computer to Build a
`   E. Summary of Proposed Claim Constructions. ....................................... 11
`    4. Argument ................................................................................................... 12
`   A. The Petition Fails to Establish a Reasonable Likelihood that at Least One
`   B. The Petition Fails to Establish a Reasonable Likelihood that at Least One
`   C. The Petition Fails to Establish a Reasonable Likelihood that Claim 37 is
`   D. The Petition Fails to Establish a Reasonable Likelihood that Claims 1
`  
`ii  
`
`Challenged Claim is Unpatentable Over Balcha When Considered in
`Combination with Miller and Freivald. ...................................................... 22
`
`Second Computer Has a Version of a File. .................................................... 6
`
`Segment of File. ............................................................................................ 8
`
`Current Version of a File From a Local Copy of the File. ............................. 9
`
`Challenged Claim is Unpatentable Over Balcha When Considered in
`Combination with Miller. .......................................................................... 12
`
`Anticipated by Balcha. ................................................................................ 24
`
`and 23 are Unpatentable Over Miller When Considered in Combination
`with Freivald. ............................................................................................. 26
`
`

`

`37 is Unpatentable Over Miller When Considered in Combination with
`Freivald. ..................................................................................................... 29
`
`Anticipated by Freivald. .............................................................................. 31
`
`23 and 24 are Anticipated by Williams. ...................................................... 35
`
`5-10 are Unpatentable in View of Williams When Considered in
`Combination with Miller. .......................................................................... 40
`
`   E. The Petition Fails to Establish a Reasonable Likelihood that Claim
`   F. The Petition Fails to Establish a Reasonable Likelihood that Claim 37 is
`   G. The Petition Fails to Establish any Reasonable Likelihood that Claims 1,
`   H. The Petition Fails to Establish any Reasonable Likelihood that Claims
`   I. The Petition Fails to Establish any Reasonable Likelihood that Claim
`    5. Conclusion ................................................................................................ 45
`
`37 is Anticipated by Williams. .................................................................... 43
`
`
`
`
`
`
`  
`
`iii  
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`

`

`TTaabbllee ooff AAuutthhoorriittiieess
`
`
`CCaasseess
`
`575 F.3d 1341 (Fed. Cir. 2009) (Newman, J., dissenting) ............................. 17
`
`288 F.3d 1359 (Fed. Cir. 2002) ....................................................................... 3
`
`17 USPQ2d 1461 (Bd. Pat. App. & Inter. 1990) .......................................... 39
`
`  Bayer Schering Pharm. AG v. Barr Labs., Inc.,
`  CCS Fitness, Inc. v. Brunswick Corp.,
`  Ex parte Levy,
`  In re Am. Acad. of Sci. Tech. Ctr.,
`  KSR Int’l Co. v. Teleflex Inc.,
`  Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co.,
`  Net MoneyIN, Inc. v. VeriSign, Inc.,
`  Richardson v. Suzuki Motor Co.,
`  Verdegaal Bros. v. Union Oil Co. of California,
`  W.L. Gore & Associates, Inc. v. Garlock, Inc.,
`    SSttaattuutteess
`  35 U.S.C. 325(d) ........................................................................................... 45
`    
`  
`iv  
`
`367 F.3d 1359 (Fed. Cir. 2004) ....................................................................... 3
`
`550 U.S. 398 (2007) .......................................................................... 12, 17, 41
`
`730 F.2d 1452 (Fed. Cir. 1984) ..................................................................... 24
`
`545 F.3d 1359 (Fed. Cir. 2008) ............................................................... 24, 40
`
`868 F.2d 1226 (Fed. Cir. 1989) ......................................................... 24, 34, 36
`
`814 F.2d 628 (Fed. Cir. 1987) ........................................................... 24, 25, 34
`
`721 F.2d 1540 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) ......... 19, 42
`
`

`

`RReegguullaattiioonnss
`
`Proceedings, and Transitional Program for Covered Business
`Method Patents, Final Rule,
`77 Fed. Reg. 48680 (Aug. 14, 2012). ............................................................. 32
`
`77 Fed. Reg. 48756 (Aug. 14, 2012) ................................................................ 3
`
`  37 C.F.R. § 1.75(d)(1) ..................................................................................... 4
`  37 C.F.R. § 42.108(c) ...................................................................................... 1
`    OOtthheerr AAuutthhoorriittiieess
`  157 Cong. Rec. S1375 (Mar. 8, 2011) ....................................................... 1, 45
`  Changes to Implement Inter Partes Review Proceedings, Post-Grant Review
`  Office Patent Trial Practice Guide,
`  H.R. Rep. No. 112-98 (part 1) (2011) ............................................................. 1
`  MPEP § 2112 ................................................................................................ 38
`  MPEP § 2142 ................................................................................................ 21
`  MPEP § 2173.01 ............................................................................................. 8
`  
`
`
`
`
`
`  
`
`v  
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`

`

`  2001
`
`
`2002
`
`
`
`EExxhhiibbiitt LLiisstt
`
`
`
`
`
`U.S. Patent 6,012,087 to Freivald et al.
`
`U.S. Patent 6,101,507 to Cane et al.
`
`
`
`  
`
`vi  
`
`

`

`  
`
`Pursuant to 37 C.F.R. § 42.107(a) Patent Owner, Clouding IP, LLC,
`
`submits the following preliminary response to the Petition, setting forth reasons
`
`why no inter partes review should be instituted under 35 U.S.C. § 314.
`
`1. Introduction
`
`The Board should not institute inter partes review because Petitioner,
`
`Oracle Corp., has not met the high standard1 required by Patent Office
`
`regulations to demonstrate a reasonable likelihood that at least one of the claims
`
`challenged in the Petition is unpatentable. 37 C.F.R. § 42.108(c).
`
`
`
`                                                                                                                
`
`1 The “reasonable likelihood” standard was intended by Congress to be a
`substantially higher barrier to patent validity challenges than the former
`“substantial new question of patentability” test used for inter partes
`reexaminations. See H.R. Rep. No. 112-98 (part 1) at 47 (2011) (“The
`threshold for initiating an inter partes review is elevated from ‘significant new
`question of patentability’ – a standard that currently allows 95% of all requests
`to be granted – to a standard requiring petitioners to present information
`showing that their challenge has a reasonable likelihood of success.”). Thus, the
`new standard makes inter partes review available only in exceptional cases where
`serious doubts about the patent’s validity are raised and a prima facie case has
`been established. See 157 Cong. Rec. S1375 (Mar. 8, 2011) (statement of Sen.
`Kyl (D-Ariz)).
`
`  
`
`1  
`
`

`

`  
`
`2. Overview of U.S. Patent 6,738,799
`
`U.S. Patent 6,738,799 (the “’799 Patent”) (Oracle Ex. 1001) describes
`
`systems and methods for generating update files that permit a computer to
`
`generate a current version of a file from a copy of an earlier version thereof. Ex.
`
`1001 at Abstract; col. 3, ll. 45-49. To facilitate this process, files are segmented
`
`and each segment is represented by a signature. Id. at col. 8, ll. 7 et seq.
`
`Signatures are representations of variable length segments of a subject file,
`
`which representations serve to identify the segments from which they are
`
`determined. Id. at Fig. 4; col. 8, ll. 18-20, 29-54. One example of a signature
`
`list provided in the ‘799 Patent is a table of hashes. Id. at col. 8, ll. 20-28.
`
`
`
`The process taught in the ‘799 Patent makes use of the signatures to
`
`determine whether a file has been modified. By comparing an earlier version of
`
`a signature list (representing an earlier version of a subject file) to a signature
`
`list that corresponds to a current version of the file, differences between the
`
`current and former versions of the file can be readily determined. See, e.g., id. at
`
`col. 10, ll. 5-14. Based on these differences, an update file is constructed. Id. at
`
`col. 10, l. 66 – col. 11, l. 50. The update file includes instructions for a
`
`recipient computer to construct the current version of the subject file from its
`
`earlier copy thereof and data included in the update file. Id. Once created, the
`
`  
`
`2  
`
`

`

`  
`
`update file can be provided to the recipient computer, for example via email.
`
`Id. at col. 11, ll. 51-52.
`
`
`
`3. Claim Terms Requiring Construction
`
` Consistent with the statute and legislative history of the America Invents
`
`Act, when considering whether to institute a patent trial the Board has
`
`indicated that it will interpret the claims of a challenged patent using a
`
`“broadest reasonable construction” approach. Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012). In applying such a
`
`standard, it is important to recognize that the broadest reasonable construction
`
`of claim language is not one that permits any reading thereof. Instead, it is one
`
`that must be made “in light of the specification as it would be interpreted by
`
`one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
`
`1359, 1364 (Fed. Cir. 2004). Further, unless the patentee has clearly
`
`demonstrated an intention to stray, there is a “heavy presumption” that a claim
`
`term carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick
`
`Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Of course, patent claims must
`
`“conform to the invention as set forth in the remainder of the specification and
`
`the terms and phrases used in the claims must find clear support or antecedent
`
`  
`
`3  
`
`

`

`  
`
`basis in the description so that the meaning of the terms in the claims may be
`
`ascertainable by reference to the description.” 37 C.F.R. § 1.75(d)(1).
`
`
`
`A. Claims 1 and 23 Require that a Command to Copy be Written
`into the Update.
`Each of claims 1 and 23 recites,
`
`writing a command in the update for the second computer
`to copy an old segment of the second computer's copy of
`the earlier version of the file into the second computer's
`copy of the current version of the file
`
`The plain meaning of this limitation, and the one that the Board should adopt
`
`when construing the claim (for it is the broadest reasonable construction of
`
`same), is that a command to copy be written into the update.
`
`
`
`The specification provides ample examples of the kinds of commands
`
`that are written into the update, making it clear that it is a copy command that
`
`is being referenced in the claims. For example and referring to Figure 10,
`
`If step 1002 determines that there is a match between the
`new segment signature and the old segment signature, then
`the method 1000 writes a command in the update file to copy
`the old segment into the client computer's copy of the
`current version of the subscription file at step 1003.
`
`Ex. 1001 at col. 11, ll. 19-23 (emphasis added). Further,
`
`  
`
`4  
`
`

`

`  
`
`  
`
`FIG. 11 illustrates an update file generated by the method
`according to the present invention illustrated in FIG. 10
`applied to the earlier and current versions of the signature
`list illustrated in FIGS. 4 and 7, respectively. . . . The
`command 1101 implements
`the copy of segment A1 into
`segment C1 illustrated by
`the arrow 910 shown in
`FIG. 9. . . . The copy
`command 1103
`implements the copying of
`segment A3 into segment
`C3 shown by arrow 911 in
`FIG. 9. The command
`1104 implements the
`copying of segment B4 into segment C4 illustrated by arrow
`921 shown in FIG. 9. The command 1105 implements the
`copying of segment B5 into segment C5 illustrated by the
`arrow 922 shown in FIG. 9. The command 1106
`implements the copying of the segment A5 into segment C6
`illustrated by arrow 912 shown in FIG. 9. The copy
`command 1107 implements the copying of segment A6 into
`segment C7 illustrated by arrow 913 in FIG. 9. Each of the
`copy commands 1101, 1103, 1106, and 1107 must specify
`for the client computer 201 where the segments to which
`
`
`
`5  
`
`

`

`  
`
`they pertain are actually stored on the client computer.
`
`
`Id. at col. 11, l. 57 – col 12, l. 13 (emphasis added).
`
`These and other passages in the specification make it clear that the
`
`“command . . . to copy” referred to in claims 1 and 23 is indeed a “copy
`
`command” and that such a command is written into the update that is
`
`provided to the second computer. Thus, when construing the claims, the Board
`
`should require that a copy command be written in the update.
`
`
`
`B. Claim 37 Requires that a Check is Made to Determine
`Whether a Second Computer Has a Version of a File.
`Claim 37 recites,
`
`determining whether the second computer has a latest
`version of a file . . . ;
`
`generating an update, if the second computer does not have
`a latest version of the file,
`
`The plain meaning of this limitation, and the one that the Board should adopt
`
`when construing the claim, is that the second computer must currently possess
`
`some version of the file.
`
`
`
`By articulating a process that requires a first computer to determine
`
`whether a second computer has a copy of a file (i.e., a latest version of that file),
`
`  
`
`6  
`
`

`

`  
`
`claim 37 necessarily implies that the second computer must already possess
`
`some version of the file. This is confirmed by studying the very “Field of the
`
`Invention” to which the ‘799 Patent is directed: “the present invention involves
`
`the synchronization of the local copies of files on user's [sic] client computer
`
`hard disk to the current versions of the files on a network drive.” Ex. 1001 at
`
`col. 1, ll. 24-27. Inherent in the invention is the recognition that various
`
`versions of files are stored on various client computers and what is being
`
`proposed is a procedure for synchronizing those different versions. Such
`
`synchronization makes sense only in a context where the different versions of
`
`the files exist on the different computers. Absent such different versions, there is
`
`no need for the synchronization in the first place.
`
`
`
`Consider also the discussion above regarding the “copy command”. A
`
`copy command only has applicability in a regime where the second computer
`
`possesses some version of the subject file (e.g., in local storage at the second
`
`computer). Absent such a version, there is nothing for the second computer to
`
`“copy” when trying to execute the instructions included in the update. Indeed,
`
`copy commands would be utterly meaningless if the second computer did not
`
`have a version of a file to which an update relates.
`
`  
`
`7  
`
`

`

`  
`
`The best source for determining the meaning of a claim is the
`
`specification. MPEP § 2173.01. Here, both the literal claim language and the
`
`specification (and all of the examples included therein) dictate that claim 37 be
`
`construed to require the second computer to currently possess a version of a file
`
`to which an update relates and the Board should so construe the claim.
`
`
`
`C. The Signature List Recited in Claims 1 and 23 is a
`Representation of a Segment of File.
`Each of claims 1 and 23 recites a “signature list”. As illustrated
`
`graphically in the ‘799 Patent, a
`
`signature list is a collection (e.g., a table)
`
`of representations of variable length
`
`segments of a subject file, which
`
`representations serve to identify the
`
`segments from which they are
`
`determined. Ex. 1001 at Fig. 4; col. 8, ll. 18-20, 29-54. One example of a
`
`signature list provided in the ‘799 Patent is a table of hashes. Id. at col. 8, ll. 20-
`
`28.
`
`The best source for determining the meaning of a claim is the
`
`specification. MPEP § 2173.01. Here, both the literal claim language and the
`
`  
`
`8  
`
`

`

`  
`
`specification require that the “signature list” of claims 1 and 23 be considered a
`
`collection of representations of segments of a file.
`
`
`
`D. An Update is an Item that Allows a Second Computer to Build
`a Current Version of a File From a Local Copy of the File.
`Each of claims 1, 23 and 37 recites, “an update”. The ‘799 Patent
`
`explains that an update (or update file) is an item that is transmitted from a first
`
`computer to a second computer and that includes information that allows the
`
`second computer to build a current version of a file from an earlier, locally
`
`stored version of that file:
`
`According to the present invention, the new or changed
`segments B2, B4 and B5 are extracted from the current
`version of the subscription file stored on the network drive
`202 by the server computer 203, and are packaged in an
`update file 801 for transmission to the client computer 201
`shown in FIG. 2 so that the client computer 201 can build
`a copy of the current version of the subscription file from
`its copy of the earlier version of the subscription file.
`
`Id. at col. 10, ll. 15-22. In its simplest form, the update may contain just
`
`changes made to a file (e.g., in a compressed state), but the ‘799 Patent also
`
`advocates the use of updates that include primitives, i.e., commands, that
`
`  
`
`9  
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`

`

`  
`
`instruct the second computer as to how to build the new version of the file
`
`using the data included in the update. Id. at col. 11, l. 60 – col. 12, l. 13.
`
`Regardless of the contents, however, the ‘799 Patent makes clear that an
`
`update is something that is to be applied to an existing copy of a file at the
`
`second computer that allows the second computer to build the newer version
`
`on that file. Even the “Field of the Invention” to which the ‘799 Patent is
`
`directed: “the present invention involves the synchronization of the local copies
`
`of files on user's client computer hard disk to the current versions of the files on
`
`a network drive”, Ex. 1001 at col. 1, ll. 24-27, includes a recognition that
`
`various versions of files are stored on various client computers and what is being
`
`proposed is a procedure for synchronizing those different versions. Such
`
`synchronization makes sense only in a context where the different versions of
`
`the files exist on the different computers (after all, absent such different
`
`versions, there is no need for the synchronization in the first place) and the
`
`synchronization is accomplished through the updates that allow computer to
`
`bring current their local copies of files by application of the updates to those
`
`local copies.
`
`  
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`10  
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`

`

`  
`
`The plain meaning of “update” then, and the one that the Board should
`
`adopt when construing the claims, is an item that allows a second computer to
`
`build a current version of a file from a local copy of that file.
`
`
`
`Summary of Proposed Claim Constructions.
`E.
`For the convenience of the Board, below is presented a summary of the
`
`Patent Owner’s proposed claim constructions.
`
`Proposed Construction
`
` a
`
` “copy command” that
`is written into the
`update that is provided
`to the second computer
`
`
`the second computer
`currently possesses a
`version of a file to which
`an update relates
`
`
`
`
`Claims in which Term
`Appears
`
`1, 23
`
`Claim Term for
`Construction
`
`
`“command . . . to copy”
`
`
`
`37
`
`“determining whether
`the second computer has
`a latest version of a file”
`
`  
`
`11  
`
`

`

`  
`
`
`
`1, 23
`
`“signature list”
`
`1, 23, 37
`
`“update”
`
`a collection of
`representations of
`segments of a file
`
`
`an item that allows a
`second computer to
`build a current version of
`a file from a local copy
`of that file
`
`4. Argument
`
`A. The Petition Fails to Establish a Reasonable Likelihood that at
`Least One Challenged Claim is Unpatentable Over Balcha When
`Considered in Combination with Miller.
`The key to supporting any rejection under Section 103 is the clear
`
`articulation of the reasons why the claimed invention would have been obvious.
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). The present Petition fails to
`
`meet this requirement because even if a person of ordinary skill in the art were
`
`to combine the teachings of Balcha and Miller, the resulting combination
`
`would not yield the invention recited in either of independent claims 1 or 23.
`
`Consequently, the Board should deny the Petition.
`
`  
`
`12  
`
`

`

`  
`
`The Petition alleges that claims 1, 5, 9, 10, 23 and 24 are obvious under
`
`35 U.S.C. § 103 in view of the combined teachings of Balcha, U.S. Patent
`
`6,233,589 (Oracle Ex. 1003), and Miller, U.S. Patent 5,832,520 (Oracle Ex.
`
`1004). See, e.g., Petition at pp. 17 et seq. Claims 1 and 23 are independent
`
`claims, each specifying:
`
`writing a command in the update for the second computer
`to copy an old segment of the second computer's copy of
`the earlier version of the file into the second computer's
`copy of the current version of the file
`
`As discussed above, a plain meaning reading of this requirement demands that a
`
`command to copy be written in the update that is used by the second computer
`
`to generate a copy of the current version of the file. The Balcha-Miller
`
`combination fails to teach or suggest same.
`
`
`
`As illustrated in Figure
`
`3, reproduced here, Balcha,
`
`describes a scheme for
`
`reflecting the differences
`
`between two files (a base file
`
`and a revised file), within a
`
`so-called “delta file”. In
`
`  
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`13  
`
`

`

`  
`
`particular, the delta file is created based on a comparison of a base signature file
`
`(which represents the base file), a revised signature file (which represents the
`
`revised file) and the revised file itself. Ex. 1003 at col. 7, l. 46 – col. 8, l. 6.
`
`
`
`Conveniently, Balcha provides examples of a base file, a base signature
`
`file, a revised file, a revised signature file and a resulting delta file. One such
`
`example, taken from col. 13, ll. 50 et seq., is reproduced below.2
`
`
`As shown, the delta file incudes certain “primitives”, which can be used
`
`to generate a copy of the revised file from the delta file. Specifically, Balcha uses
`
`primitives for “insert”, “modify” and “delete”. Id. at col. 3, ll. 55-56. The
`
`                                                                                                                
`
`2 In this example, “the periods used to delineate certain characters are not part
`of the file itself, and are used merely to illustrate certain logical distinctions
`between groups of characters”. Ex. 1003 at col. 13, ll. 40-42.
`
`  
`
`14  
`
`

`

`  
`
`operation of these primitives is explained, with reference to the above example,
`
`at col. 14, ll. 5-19:3
`
`
`According to Balcha, the above shows how the delta file requires that the base
`
`file (ABCDE.FGHIJ.KLMNO.PQRST.UVWXY.Z) be first modified by
`
`inserting, at a position 5 characters from the initial pointer position, a 3-
`
`character string, “XYZ”. Next, beginning at the then-current pointer position, a
`
`5-character string is deleted. Thereafter, and beginning at a location 5
`
`characters from the then-current pointer position, a 6-character string,
`
`“PAABST” is inserted. Finally, the pointer position is advanced 5 characters
`
`and a 5-charater string is deleted. Importantly, nowhere in this example (or
`
`elsewhere for that matter) does Balcha mention or suggest the use of or need for
`
`base file at which the corresponding primitive is applied. Id. at col. 13, l. 65 –
`col. 14, l. 1.
`
`                                                                                                                
`3 In this exposition, the “⌃” character indicates the position of a pointer in the
`  
`15  
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`

`

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`a “copy” primitive. Considering these teachings in combination with those of
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`Miller does not alter this situation.
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` Miller describes a procedure for
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`revising large computer files using “difference
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`files” or DIFF files – i.e., files containing
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`indications of the differences between the
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`large computer files and a preexisting
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`computer file. Ex. 1004 at col. 1, ll. 10-15. An
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`overview of that process is illustrated in
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`Miller’s Figure 1, shown here.
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`Miller’s DIFF file includes primitives for “copy”, “insert” and
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`“insert/copy” operations, which impart directives for handling stings that
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`appear in new and old copies of the subject file. See, e.g., Ex. 1004 at Fig. 5A.
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`Importantly, from Miller’s perspective, the DIFF file must indicate changes
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`between the old file and the new file in a minimum number bytes so that the
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`DIFF file is the smallest such file possible. Id. at col. 2, ll. 21-24, 31-33.
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`The Petition alleges that, “[a] skilled artisan would have recognized that
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`Miller’s commentary about what was generally known in the art concerning use
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`of delta files to update software would be fully applicable to and predictably
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`16  
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`combined with Balcha’s method for updating delta files.” Petition at p. 17.
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`Professor Grimshaw’s declaration, Oracle Ex. 1007, is cited in support of this
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`proposition, but neither the declaration nor the Petition itself provides any
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`analysis concerning the resulting outcome of the proposed combination of
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`teachings.
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`Obviousness requires more than a mere showing that the prior art
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`includes separate references covering each separate limitation in a claim under
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`examination. KSR, supra, at 418. Indeed, obviousness requires the additional
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`showing that a person of ordinary skill at the time of the invention would have
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`selected and combined those prior art elements in the normal course of research
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`and development to yield the claimed invention. Id. at 421; see also Bayer
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`Schering Pharm. AG v. Barr Labs., Inc., 575 F.3d 1341, 1350 (Fed. Cir. 2009)
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`(Newman, J., dissenting) ("The statutory criterion is whether the invention
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`would have been obvious to persons of ordinary skill at the time of the
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`invention, not whether it is sufficiently simple to appear obvious to judges after
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`the discovery is finally made . . . ."). The present Petition lacks any such
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`showing.
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`
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`This failure is not an oversight by the Petitioner; for if one considers the
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`true result of the combination of the Balcha-Miller teachings, it is readily
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`17  
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`apparent that this result is something other than the invention recited in
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`independent claims 1 and 23 of the ‘799 Patent. Stated differently, the
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`Petitioner has carefully avoided providing a description of the result of the
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`proposed combination of Balcha and Miller, for once such an analysis in
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`undertaken one can only conclude that claims 1 and 23, and their respective
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`dependent claims, remain patentable over these references.
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`
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`Notice first that Petitioner does not contend that Balcha teaches,
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`“writing [in the difference file] a command . . . to copy an old segment . . . of
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`the earlier version of the file into . . . the current version of the file”, as recited
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`in claims 1 and 23. Indeed, it is apparent from the example reproduced above
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`that Balcha never uses a command to copy in the difference file.
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`Professor Grimshaw attempts to finesse this point by stating,
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`I also note that in the example shown at column 14 of
`Balcha the offsets on the delete and insert commands cause
`the skipped data bits to be carried over, or copied into the
`revised updated file. In other words, the commands
`embedded in the delta file cause the unchanged bits to be
`effectively copied into the revised file. 4
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`4 Ex. 1007 at ¶¶ 25.
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`                                                                                                                
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`18  
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`  
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`This is factually incorrect. Balcha does not “effectively copy” over any bits from
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`an old version of a file to a revised version of a file. Instead, as shown quite
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`clearly in the very example cited by Professor Grimshaw, the old file is converted
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`to the revised file directly through execution of the insert and delete instructions
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`included in the difference file. No copying (or effective copying) is performed
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`or required because the revised file is itself directly produced from the old file
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`and the difference file. Ex. 1003 at col. 13, ll. 64 – 65 (“The following shows
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`the application of the primitives in the delta file to a base file to generate a
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`revised file.”) (emphasis added).
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`Miller does teach the inclusion of a copy command in a DIFF file, Ex.
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`1004 at col. 8, ll. 27-29, but Miller also stresses the importance of using the
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`smallest DIFF file possible to reflect the changes between the old and new
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`versions of the subject file. Id. at col. 2, ll. 31-33. When seeking to combine the
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`teachings of references under Section 103, it is the entirety of the teachings that
`
`must be considered. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d
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`1540 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). Hence, Petitioner
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`cannot simply ignore or overlook the fact that Miller’s goal is to produce a
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`smallest possible DIFF file, and indeed one of ordinary skill in the art would
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`recognize that Balcha has proposed a difference file exactly in line with that
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`19  
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`goal.5 By avoiding the use of a copy command, Balcha necessarily reduces the
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`number of bytes needed to convey information in the difference file. Hence,
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`when combining the teachings of Balcha and Miller, as proposed by the
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`Petitioner, it would be natural for a person of ordinary skill in the art to adopt
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`the Balcha approach, and eliminate the need for a copy command. Doing so
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`would be in line with the stated goals of both cited references and indeed one
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`would imagine the goal of the hypothetical person of ordinary skill inasmuch as
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`reducing the number of bytes required in the difference file would save on
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`transmission costs. Cf. Ex. 1004 at col. 1, ll. 65-67 (noting that even
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`compression schemes which reduce file sizes of up to 40% may still leave
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`resulting files that represent substantial transmission costs for distributers of
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`those files).
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`“To reach a proper determination under 35 U.S.C. § 103, [a fact finder]
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`must step backward in time and into the shoes worn by the hypothetical
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`‘person of ordinary skill in the art’ when the invention was unknown and just
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`before it was made. In view of all factual information, the [fact finder] must
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`then make a determination whether the claimed invention ‘as a whole’ would
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`5 “The present