`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`ORACLE CORPORATION
`Petitioner
`v.
`CLOUDING IP, LLC
`Patent Owner
`____________
`Case IPR2013-00073 (JL)
`Patent 6,738,799
`____________
`
`PATENT OWNER’S CONTINGENT MOTION TO AMEND
`U.S. PATENT NO. 6,738,799
`UNDER 35 USC § 316 AND 37 CFR § 42.121
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`Exhibit List
`
`U.S. Patent 6,012,087 to Freivald et al.
`
`U.S. Patent 6,101,507 to Cane et al.
`
`Transcript of Deposition of Andrew Grimshaw, Ph.D.,
`May 29, 2013.
`
`Declaration of Wesley W. Chu, Ph.D.
`
`Excerpt from File Wrapper of U.S. Application
`10/452,156.
`
`Excerpt from File Wrapper of U.S. Application
`09/303,958.
`
`Declaration of Wesley W. Chu, Ph.D.
`
`
`
`ii
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`
`
`Introduction.
`
`
`
`Trial was instituted with respect to Claims 1, 5-10, 23, 24 and 37 of
`
`U.S. Patent 6,738,799 (the “’799 Patent”) (Oracle Ex. 1001). In this motion,
`
`Patent Owner proposes substitute claims for original Claims 1, 5-10, 23, 24
`
`and 37, as shown below. These substitutions are strictly contingent on the
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`Board finding each respective original independent claim unpatentable, as
`
`discussed below.
`
`Listing of the Claims.
`
`47. (Proposed Substitute for Original Claim 1) A method for a first computer
`
`to generate an update for transmission to a second computer that permits the
`
`second computer to generate a copy of a current version of a file comprised of a
`
`first plurality of file segments from a copy of an earlier version of the file
`
`comprised of a second plurality of file segments, such that each file segment
`
`corresponds to a portion of its respective file, the method comprising the steps
`
`of:
`
`
`
`for each segment of the current version of the file,
`
`(a) searching an earlier version of a signature list
`
`corresponding to an earlier version of the file for an old segment
`
`1
`
`
`
`
`
`signature which matches a new segment signature corresponding
`
`to the segment;
`
`(b) if step (a) results in a match, writing a command in the
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`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 , wherein
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`the old segment corresponds to the segment for which a match
`
`was detected in step (a); and
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`(c) if step (a) results in no match, writing a command in
`
`the update for the second computer to insert a new segment of the
`
`current version of the file into the second computer's copy of the
`
`current version of the file;
`
`wherein the new segment of the current version of the file is written into
`
`the update and the unchanged segment is excluded from the update;
`
`wherein ends of each of the second plurality of file segments are
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`determined by segment delimiters that are statistically determined to be optimal
`
`division points for the segments; and
`
`wherein steps (a) through (c) are performed by the first computer,
`
`without interaction with the second computer, in response to the first
`
`
`
`2
`
`
`
`
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`computer detecting a change between the current version of the file and the
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`earlier version of the file.
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`
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`48. (Proposed Substitute for Original Claim 5) The method of claim 47,
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`further comprising: (d) transmitting the update to the second computer as an
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`executable attachment by electronic mail, wherein the executable attachment
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`will cause the second computer to generate a copy of the current version of the
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`file from the copy of the earlier version of the file, in response to the second
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`computer executing the attachment.
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`
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`49. (Proposed Substitute for Original Claim 6) The method of claim 48,
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`further comprising: prior to step (a), performing a check on the current version
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`of the file to determine if the file has been altered since a previous check and
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`continuing to perform the remaining steps only if the check determines that the
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`current version of the file has been altered.
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`
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`50. (Proposed Substitute for Original Claim 7) The method of claim 49,
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`wherein the step of performing a check is performed at periodic intervals.
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`
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`
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`3
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`
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`51. (Proposed Substitute for Original Claim 8) The method of claim 49,
`
`wherein the step of performing a check on the current version of the file
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`comprises checking a current time stamp of the current version of the file to
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`determine whether it differs from an earlier time stamp of the file.
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`
`
`52. (Proposed Substitute for Original Claim 9) The method of claim 47,
`
`wherein the update comprises a software update.
`
`
`
`53. (Proposed Substitute for Original Claim 10) The method of claim 47,
`
`wherein the update comprises a document update.
`
`
`
`54. (Proposed Substitute for Original Claim 23) A method for a first computer
`
`to generate an update for transmission to a second computer that permits the
`
`second computer to generate a copy of a current version of a file comprised of a
`
`first plurality of file segments from a copy of an earlier version of the file
`
`comprised of a second plurality of file segments, such that each file segment
`
`corresponds to a portion of its respective file, the method comprising the steps
`
`of:
`
`
`
`for each segment of the current version of the file,
`
`4
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`
`
`
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`(a) searching an earlier version of a signature list
`
`corresponding to an earlier version of the file for an old segment
`
`signature which matches a new segment signature corresponding
`
`to the segment;
`
`(b) if step (a) results in a match, 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, wherein
`
`the old segment corresponds to the segment for which a match
`
`was detected in step (a); and
`
`(c) if step (a) results in no match, writing a command in
`
`the update for the second computer to insert a new segment of the
`
`current version of the file into the second computer's copy of the
`
`current version of the file;
`
`wherein steps (a) through (c) are performed by the first computer,
`
`without interaction with the second computer, in response to the first
`
`computer detecting a change between the current version of the file and the
`
`earlier version of the file; and
`
`wherein ends of each of the second plurality of file segments are
`
`5
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`
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`
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`determined by segment delimiters that are statistically determined to be optimal
`
`division points for the segments.
`
`
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`55. (Proposed Substitute for Original Claim 24) The method of claim 54,
`
`wherein the new segment of the current version of the file is written into the
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`update and the unchanged segment is excluded from the update.
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`
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`56. (Proposed Substitute for Original Claim 37) A method for a first computer
`
`to provide updates for transmission to a second computer that permits the
`
`second computer to obtain most recent versions of files, the method comprising
`
`the steps of:
`
`(a) determining whether the second computer has a latest version of a
`
`file, wherein said determining is performed by the first computer without
`
`interaction with the second computer by comparing representations of
`
`segments of the latest version of the file with representations of segments of an
`
`earlier version of the file in which ends of each of the segments of the earlier
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`version of the file are defined by segment delimiters that are statistically
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`determined to be optimal division points for the segments;
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`(b) generating an update, if the second computer does not have a latest
`
`6
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`version of the file, wherein said generating is performed by the first computer
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`without interaction with the second computer; and
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`(c) transmitting the update from the first computer to the second
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`computer.
`
`Discussion of the Proposed Amendments and Substitute Claims.
`A. Proposed Substitutes for Original Claims 1 and 23.
`
`Proposed Substitute Claim 47 is to be entered only if the Board
`
`determines that original Claim 1 is unpatentable. Proposed Substitute Claim 54
`
`is to be entered only if the Board determines that original Claim 23 is
`
`unpatentable. The proposed substitute claims recite all of the limitations of
`
`their respective original claims and include new limitations that find clear
`
`support in the written description of the original disclosure of the application
`
`that lead to the ‘799 Patent and its priority application, as demonstrated in the
`
`following table.
`
`Claims New Limitation
`47, 54 wherein ends of
`each of the
`second plurality
`of file segments
`are determined
`
`
`
`Support in 10/452,156
`Ex. 2005 at para.
`[0050], pp. 14-15
`(emphasis added):
`Segments A1 through
`A6 represent variable
`
`Support in 09/303,958
`Ex. 2006 at p.12, ll. 24-29
`(emphasis added):
`Segments A1 through A6
`represent variable length
`portions of the earlier
`
`7
`
`
`
`
`
`by segment
`delimiters that
`are statistically
`determined to be
`optimal division
`points for the
`segments
`
`version of the subscription
`file. The ends of each of the
`segments (A1 through A6)
`are determined by segment
`delimiters 301 through
`306. The segment
`delimiters 301 through
`306 are specific portions of
`data, perhaps bytes, that are
`statistically determined to
`be an optimal, or at least
`acceptable, division point
`for the variable length
`segments A1 through A6
`for the earlier version of
`the subscription file.
`
`length portions of the
`earlier version of the
`subscription file. The
`ends of each of the
`segments (A1 through
`A6) are determined by
`segment delimiters 301
`through 306. The
`segment delimiters 301
`through 306 are specific
`portions of data, perhaps
`bytes, that are statistically
`determined to be an
`optimal, or at least
`acceptable, division
`point for the variable
`length segments A1
`through A6 for the
`earlier version of the
`subscription file.
`
`The proposed substitute claims do not enlarge the scope of the respective
`
`original Claim 1 and Claim 23 and are responsive to the alleged grounds of
`
`unpatentability of the challenged claims because the proposed substitute claims
`
`include all of the limitations of their respective original claims and narrow those
`
`
`
`8
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`
`
`
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`features by adding a limitation concerning how the delimiters of the file
`
`segments are determined. 37 C.F.R. 42.121(a)(2)(i).
`
`Proposed Substitute Claims 45 and 54 are each patentably distinct over
`
`the closest prior art known to the Patent Owner. As explained by Dr. Chu, no
`
`known prior art references teach or suggest the use of file segments in which
`
`ends of each of the second plurality of file segments are determined by segment
`
`delimiters that are statistically determined in the context of determining
`
`whether a second computer has a latest version of a file for purposes of
`
`generating an update file. The closest known prior art are references cited in
`
`connection with the present proceedings.
`
`Balcha, U.S. Patent 6,233,589 (Ex. 1001), teaches the use of fixed size
`
`segments. Ex. 1001 at 6:32-33. Fixed size segments would not have delimiters
`
`at locations statistically determined. Ex. 2007 at ¶ 26. Freivald, U.S. Patent
`
`5,898,836 (Ex. 1005) teaches the use of segments delimited by HTML codes.
`
`Ex. 1005 at 9:47-52. Segments having delimiters that depend on the presence
`
`of specific HTML tags would not correspond to delimiters at locations
`
`statistically determined. Ex. 2007 at ¶ 28 Williams, U.S. Patent 5,990,810 (Ex.
`
`1006), teaches the use of variable length segments (12:6-9) but does not suggest
`
`that the variable lengths be statistically determined. Ex. 2007 at ¶ 29.
`
`
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`9
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`
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`Accordingly, none of the closest known prior art references, whether
`
`considered separately or in combination teach or suggest the subject matter of
`
`Proposed Claims 47 and 54. Ex 2007 at ¶ 30.
`
`
`
`B. Proposed Substitutes for Claims 5-10.
`
`
`
`Proposed Substitute Claims 48-53 correspond verbatim to original
`
`Claims 5-10, except for their dependency from Proposed Substitute Claim 47.
`
`Proposed Substitute Claims 48-53 are to be entered only if the Board
`
`determines that original Claim 1 is unpatentable. Proposed Substitute Claims
`
`48-53 do not enlarge the scope of their respective original Claims 5-10 because
`
`each proposed substitute claim includes all of the limitations of their respective
`
`original claims and claims originally dependent upon, and further narrow those
`
`features by virtue of the added limitation in Proposed Substitute Claim 47
`
`concerning how the delimiters of the file segments are determined. Proposed
`
`Substitute Claims 48-53 are patentably distinct over the known prior art for the
`
`same reasons as Proposed Substitute Claim 47.
`
`
`
`C. Proposed Substitute for Claim 24.
`
`Proposed Substitute Claim 55 corresponds verbatim to original Claim
`
`10
`
`
`
`
`
`
`
`24, except for its dependency from Proposed Substitute Claim 54. Proposed
`
`Substitute Claim 55 is to be entered only if the Board determines that original
`
`Claim 23 is unpatentable. Proposed Substitute Claim 55 does not enlarge the
`
`scope of original Claims 24 because it includes all of the limitations of original
`
`claim 24 and further narrows those features by virtue of the added limitation in
`
`Proposed Substitute Claim 54 concerning how the delimiters of the file
`
`segments are determined. Proposed Substitute Claim 55 patentable distinct
`
`over the known prior art for the same reasons as Proposed Substitute Claim 54.
`
`
`
`
`
`D. Proposed Substitute for Claim 37.
`
`Proposed Substitute Claim 56 is to be entered only if the Board
`
`determines that original Claim 37 is unpatentable. The proposed substitute
`
`claim recites all of the limitations of its respective original claim and includes
`
`new limitations that find clear support in the written description of the original
`
`disclosure of the application that lead to the ‘799 Patent and its priority
`
`application, as demonstrated in the following table.
`
`Claim New Limitation
`56
`determining is
`
`Support in 09/303,958
`Ex. 2006 p. 16, ll. 20-25
`
`Support in 10/452,156
`Ex. 2005 at para.
`
`
`
`11
`
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`
`
`performed by the
`first computer
`without
`interaction with
`the second
`computer by
`comparing
`representations of
`segments of the
`latest version of
`the file with
`representations of
`segments of an
`earlier version of
`the file
`
`(emphasis added): FIG. 10
`is a flowchart illustrating a
`method according to the
`present invention . . . . At
`step 1002, the method
`compares the new segment
`signature to an old segment
`signature. Here, the new
`segment refers to segments
`within the current version
`of the subscription file; the
`old segment signature
`refers to segment
`signatures within the
`earlier version of the
`subscription file.
`
`in which ends of
`each of the
`segments of the
`earlier version of
`the file are
`defined by
`
`Ex. 2006 at p.12, ll. 24-29
`(emphasis added):
`Segments A1 through A6
`represent variable length
`portions of the earlier
`version of the subscription
`
`12
`
`[0060], p. 20 (emphasis
`added): FIG. 10 is a
`flowchart illustrating a
`method according to
`the present invention . .
`. . At step 1002, the
`method compares the
`new segment signature to
`an old segment signature.
`Here, the new segment
`refers to segments
`within the current
`version of the
`subscription file; the old
`segment signature refers
`to segment signatures
`within the earlier
`version of the
`subscription file.
`Ex. 2005 at para.
`[0050], pp. 14-15
`(emphasis added):
`Segments A1 through
`A6 represent variable
`length portions of the
`
`
`
`
`
`segment
`delimiters that
`are statistically
`determined to be
`optimal division
`points for the
`segments
`
`file. The ends of each of the
`segments (A1 through A6)
`are determined by segment
`delimiters 301 through
`306. The segment
`delimiters 301 through
`306 are specific portions of
`data, perhaps bytes, that are
`statistically determined to
`be an optimal, or at least
`acceptable, division point
`for the variable length
`segments A1 through A6
`for the earlier version of
`the subscription file.
`
`earlier version of the
`subscription file. The
`ends of each of the
`segments (A1 through
`A6) are determined by
`segment delimiters 301
`through 306. The
`segment delimiters 301
`through 306 are specific
`portions of data, perhaps
`bytes, that are statistically
`determined to be an
`optimal, or at least
`acceptable, division
`point for the variable
`length segments A1
`through A6 for the
`earlier version of the
`subscription file.
`
`The proposed substitute claim does not enlarge the scope of original
`
`Claim 37 and is responsive to the alleged grounds of unpatentability of the
`
`challenged claim because the proposed substitute claim includes all of the
`
`limitations of the original claim and narrows those features by adding a
`
`limitation concerning how the determining step is performed using file
`
`
`
`13
`
`
`
`
`
`segments having delimiters that are statistically determined. 37 C.F.R.
`
`42.121(a)(2)(i).
`
`Proposed Substitute Claim 55 patentable distinct over the known prior
`
`art for the same reasons as Proposed Substitute Claims 47 and 54.
`
`
`
`Construction.
`
`A person of ordinary skill in the art would understand the new features
`
`of Proposed Claims 47, 54 and 56 to mean that a statistical procedure is used
`
`to determine optimal locations for file segment delimiters. Ex. 2007 at ¶ 30.
`
`
`
`Conclusion
`
`For at least the foregoing reasons, entry of the contingent amendments is
`
`respectfully requested.
`
`
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`Dated: June 24, 21013
`
`
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`
`
`
`
`Fahmi, Sellers, Embert & Davitz
`84 W. Santa Clara St., Suite 550
`San Jose, CA 95113
`
`
`
`
`
`
`
`Respectfully submitted,
`/Tarek N. Fahmi/
`
`Tarek N. Fahmi
`Reg. No. 41,402
`
`Tel: 866-877-4883
`Fax: 408-773-6177
`Email: patents@fseip.com
`
`
`
`14
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing
`PATENT OWNER’S CONTINGENT MOTION TO AMEND
`and supporting exhibits was served on June 24, 2013, by filing this document
`though the Patent Review Processing System as well as delivering a copy via
`electronic mail directed to the attorneys of record for the Petitioner at the
`following address:
`
`Greg Gardella
`Scott McKeown
`Oblon Spivak
`1940 Duke Street
`Alexandria, VA 22314
`cpdocketgardella@oblon.com
`cpdocketmckeown@oblon.com
`
`
`
`
`
`
`
`
`
`
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`Respectfully submitted,
`
`
`The parties have agreed to electronic service in this matter.
`
`
`
`
`
`Dated: June 24, 2013
`
`
`
`
`
`
`
`
`
`
`
`
`Fahmi, Sellers, Embert & Davitz
`84 W. Santa Clara St., Suite 550
`San Jose, CA 95113
`Tel: 866-877-4883
`Fax: 408-773-6177
`Email: patents@fseip.com
`
`
`/Tarek N. Fahmi/
`Tarek N. Fahmi
`Reg. No. 41,402
`
`
`
`
`
`
`
`
`
`
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