`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 RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,738,799
`UNDER 35 USC § 316 AND 37 CFR § 42.120
`
`
`
`
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`
`
`Table of Contents
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`1. Introduction. ............................................................................................... 1
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`2. Overview of U.S. Patent 6,738,799 .............................................................. 2
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`3. Argument. .................................................................................................... 4
`
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`A. Claims 1, 23 and 24 Are Not Anticipated by Williams Because Williams
`Fails to Teach Writing In An Update A Command To Copy, As Required
`By These Claims. .......................................................................................... 4
`
`B. Claims 5-10 Are Patentable In View of Williams When Considered In
`Combination with Miller. ........................................................................... 10
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`C. Claim 37 Is Not Anticipated by Williams. ........................................... 11
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`D. Claim 37 Is Not Anticipated by Balcha. .............................................. 13
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`E. Claims 1, 5, 9, 10, 23 and 24 Are Patentable Over Balcha When
`Considered In Combination with Miller. ................................................... 17
`
`F. The Petition Fails to Establish a Reasonable Likelihood that at Least One
`Challenged Claim is Unpatentable Over Balcha When Considered in
`Combination with Miller and Freivald. ...................................................... 27
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`5. Conclusion ................................................................................................. 29
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`ii
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`Table of Authorities
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`CASES
`Bayer Schering Pharm. AG v. Barr Labs., Inc.,
`575 F.3d 1341 (Fed. Cir. 2009) (Newman, J., dissenting) ............................. 24
`
`Ex parte Levy,
`17 USPQ2d 1461(Bd. Pat. App. & Inter. 1990) .............................................. 8
`
`In re Fine,
`837 F.2d 1071 (Fed. Cir. 1988) ..................................................................... 11
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ................................................................................ 22, 23
`
`Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co.,
`730 F.2d 1452 (Fed. Cir. 1984) ....................................................................... 5
`
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) ........................................................... 5, 10, 16
`
`Richardson v. Suzuki Motor Co.,
`868 F.2d 1226 (Fed. Cir. 1989) ................................................................. 5, 16
`
`Verdegaal Bros. v. Union Oil Co. of California,
`814 F.2d 628 (Fed. Cir. 1987) ................................................................... 5, 12
`
`W.L. Gore & Associates, Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) ............... 26
`
`
`
`REGULATIONS
`37 C.F.R. § 42.107(c) ...................................................................................... 1
`
`
`OTHER AUTHORITIES
`MPEP § 2112 .................................................................................................. 8
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`iii
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`MPEP § 2142 ................................................................................................ 25
`MPEP § 2142 ................................................................................................ 25
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`iv
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`iv
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`2001
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`2002
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`2003
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`2004
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`Exhibit List
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`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.
`
`
`
`
`v
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`
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`Pursuant to 37 C.F.R. § 42.120 and the Board’s Scheduling Order of
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`April 24, 2013, Patent Owner, Clouding IP, LLC, submits the following
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`response to the Petition. Submitted concurrently herewith is Patent Owner’s
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`Continent Motion to Amend Claims 1, 23 and 37 under 37 C.F.R. § 42.121.
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`1. Introduction.
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`
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`Trial was instituted with respect to Claims 1, 5-10, 23, 24 and 37 of
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`U.S. Patent 6,738,799 (the “’799 Patent”) (Oracle Ex. 1001). At the outset, it
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`is noted that all the Board has determined to date is that there is a “reasonable
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`likelihood” that Petitioner will prevail as to some grounds for which Petitioner
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`sought review, and it should be remembered that this determination was made
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`in the absence of any rebuttal testimony provided by the Patent Owner.1 The
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`Board has not determined any claims of the ‘799 Patent to be unpatentable and
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`Patent Owner’s expert testimony submitted in support of this response will
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`show that while there may have been a reasonable likelihood to think so in the
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`absence of same, that testimony now removes even that reasonable likelihood.
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`
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`1 Patent Owners are prohibited from introducing rebuttal testimony prior to
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`institution of inter partes review proceedings. 37 C.F.R. § 42.107(c).
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`
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`1
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`As demonstrated below, the Board should enter judgment in favor of the
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`Patent Owner because
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`a. Claims 1, 23, 24 and 37 are not anticipated under 35 U.S.C. §
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`102(e) by Williams, U.S. Patent 5,990,810 (Oracle Ex. 1006);
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`b. Claims 5-10 are not obvious under 35 U.S.C. § 103(a) in view of
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`Williams and Miller, U.S. Patent 5,832,520 (Oracle Ex. 1004);
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`c. Claim 37 is not anticipated under 35 U.S.C. § 102(e) by Balcha,
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`U.S. Patent 6,233,589 (Oracle Ex. 1003);
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`d. Claims 1, 5, 9, 10, 23 and 24 are not obvious under 35 U.S.C. §
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`103(a) in view of Balch and Miller; and
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`e. Claims 6-8 are not obvious under 35 U.S.C. § 103(a) in view of
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`Balcha, Miller and Freivald, U.S. Patent 5,898,836 (Oracle Ex.
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`1005).
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`2. Overview of U.S. Patent 6,738,799
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`
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`The ’799 Patent describes systems and methods for generating update
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`files that permit a computer to generate a current version of a file from an
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`earlier version thereof. Ex. 1001 at Abstract; 3:45-49. To facilitate this process,
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`files are segmented and each segment is represented by a signature. Id. at 8:7 et
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`seq. Differences between a current version of a file and an earlier version thereof
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`
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`2
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`
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`
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`are determined using these signatures. See, e.g., id.
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`at 10:5-14. Based on these differences, an update
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`file is constructed. Id. at col. 10:66 – 11:50. The
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`update file includes instructions (e.g., copy, insert)
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`for a recipient computer to construct the current
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`version of the subject file from its earlier version
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`thereof and data included in the update file. Id. and see Fig. 11 (reproduced
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`here). Once created, the update file is provided to the recipient computer, for
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`example via email. Id. at 11:51-52.
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`
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`Importantly, for purposes of the present proceedings, one of the
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`instructions included in the update file is a “command . . . to copy an old
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`segment of the [receiving] computer’s copy of the earlier version of the file into
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`the [receiving] computer’s copy of the current version of the file”. Id. at Claim
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`1, 14:53-57; Claim 23, 16:61-65. Examples of such commands are illustrated
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`in Fig. 11, supra. The Board has construed the “command to copy” as “an
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`instruction that causes the computer to duplicate information or data.” Oracle
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`Corp. v. Clouding IP, LLC, IPR2013-00073, Paper 8, Decision re Institution of
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`Inter Partes Review, slip op. at 11 (Apr. 24, 2013) (hereinafter “Decision”).
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`
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`3
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`
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`Therefore, steps (b) in Claims 1 and 23 are properly understood as reciting the
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`requirement of
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`writing in the update, an instruction that causes the second
`computer to duplicate information or data from 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).
`
`
`
`3. Argument.
`A. Claims 1, 23 and 24 Are Not Anticipated by Williams Because
`Williams Fails to Teach Writing In An Update A Command To
`Copy, As Required By These Claims.
`
`Williams describes a procedure for partitioning blocks of data into
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`subblocks for ease of communicating and storing same. Ex 1006 at 1:7-10.
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`Williams does not, however, teach writing in an update a command to copy, as
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`recited in independent Claims 1 and 23 and construed by the Board. Ex. 2004
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`at ¶ 45. Consequently, Williams cannot anticipate these claims.
`
`To anticipate a claim, “The identical invention must be shown in as
`
`complete detail as is contained in the … claim.” Richardson v. Suzuki Motor
`
`
`
`4
`
`
`
`
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`Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). Stated differently, “A claim is
`
`anticipated only if each and every element as set forth in the claim is found,
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`either expressly or inherently described, in a single prior art reference.”
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`Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir.
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`1987). Furthermore, “The requirement that the prior art elements themselves
`
`be ‘arranged as in the claim’ means that claims cannot be treated . . . as mere
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`catalogs of separate parts, in disregard of the part-to-part relationships set forth
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`in the claims and that give the claims their meaning.” Lindemann
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`Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1459
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`(Fed. Cir. 1984). “[U]nless a reference discloses within the four corners of the
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`document not only all of the limitations claimed but also all of the limitations
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`arranged or combined in the same way as recited in the claim, it cannot be said
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`to prove prior invention of the thing claimed and, thus, cannot anticipate
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`under 35 U.S.C. § 102.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359,
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`1371 (Fed. Cir. 2008).
`
`In its Decision instituting the present proceedings, the Board held that
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`Patent Owner’s argument was that Williams did not teach an instruction that
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`included the literal word “copy”. See, e.g., Decision, slip op at 11. This is not
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`so. Patent Owner’s argument is not concerned with the literal language of any
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`5
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`
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`instruction in Williams’ difference file, but rather the operations that result
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`from the application of that file as taught by Williams. Rather than include in
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`an update (or, as described by Williams, a difference file, D) instructions that
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`cause a second computer to duplicate information or data from an old segment
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`of the second computer’s copy of an earlier version of the file into the second
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`computer’s copy of the current version of the file, as required by Claims 1 and
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`23, in keeping with the Board’s construction, Williams only discusses the use of
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`a difference file that includes references to subblocks in the second computer’s
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`copy of the earlier version of the file. In fact, in describing the backup process,
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`Williams states only that,
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`E1 then transmits the file as a mixture of raw subblocks and
`references to subblocks whose hashes appear in S and which
`are therefore known to appear as subblocks in Y.
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`Ex 1006 at 19:52-55.
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`Petitioner argues that these “references” may be interpreted as
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`“commands to copy” but this argument is pure supposition not support by the
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`teachings of Williams. As explained by Dr. Chu, not only does Williams not
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`teach such commands, there is no reason why such an instruction would be
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`implied by the encoding of Williams’ D file either. Ex. 2004 at ¶ 46. Because
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`Williams is concerned with an incremental backup system in which Y is
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`
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`6
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`
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`updated to become a copy of X, Ex. 1006 at 19:31-33, any encoding in the D
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`file would not be to “copy” segments from an old version of Y to a new version
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`of Y, but rather to modify the old version of Y so it becomes a replica of X. Ex.
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`2004 at ¶ 46. This would be consistent with the stated goal of Williams and
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`would not entail copying of segments of Y as envisioned in the ‘799 Patent. As
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`no copying is needed, there is no need for an instruction to effect same to be
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`written in the D file.2 Id.
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`Anticipation requires that a cited reference describe each and every
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`recitation of a claim either explicitly or inherently. Neither Professor
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`Grimshaw’s testimony3 nor the Petition itself establishes any explicit teachings
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`
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`2 Indeed, it is equally plausible that mere pointers, such as those taught by
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`Balcha, could be used to identify existing subblocks in the Y file. Doing so
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`would avoid the need for copy commands entirely and be entirely consistent
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`with the goal of others of Petitioners’ cited references: to reduce the size of a
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`difference file that needs to be communicated between computers.
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`3 In fact, during his deposition Dr. Grimshaw agreed that there is no explicit
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`command to copy that is written into Williams’ backup file D. Ex. 2003 at
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`15:16-20 (“So the question you asked was is there a copy instruction in
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`
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`7
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`
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`in Williams to support the notion that a command to copy be written in the
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`update. Nor can Petitioner rely on inherency. To establish inherency, one must
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`provide “rationale or evidence tending to show inherency”. As indicated in
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`MPEP § 2112:
`
`The fact that a certain result or characteristic may occur or
`be present in the prior art is not sufficient to establish the
`inherency of that result or characteristic. In re Rijckaert, 9
`F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir.
`1993) … ‘To establish inherency, the extrinsic evidence
`‘must make clear that the missing descriptive matter is
`necessarily present in the thing described in the
`reference, and that it would be so recognized by persons of
`ordinary skill. Inherency, however, may not be
`established by probabilities or possibilities. The
`mere fact that a certain thing may result from a given set of
`circumstances is not sufficient.’ In re Robertson, 169 F.3d
`743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999)
`(emphasis added).
`Here, neither the Petition nor Professor Grimshaw’s testimony have
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`demonstrated any basis in fact and/or technical reasoning to reasonably support
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`
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`Williams. Per se it’s not written out in English copy, but because of the nature
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`of the encoding in file D, when that shows up, it means to copy that block.”).
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`
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`8
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`
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`a determination that the allegedly inherent characteristic necessarily flows from
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`the teachings of Williams. Cf. Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat.
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`App. & Inter. 1990). Further, Dr. Chu has explained that there is no need for a
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`“command to copy” or any other instruction to that effect to be written in the
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`Williams’ D file. Ex. 2004 at ¶ 46. Accordingly, Petitioner cannot satisfy its
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`burden to establish that Williams inherently teaches writing in an update a
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`command to copy.
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`Lest Petitioner attempt to demonstrate that Williams does describe some
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`copying operations, it is important to recognize that these discussions are quite
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`distinct from the requirements of the present claims. In particular, Williams
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`makes reference to “copying” in the context of reproducing raw subblocks that
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`are transmitted along with the update, and not copying of subblocks already
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`included in the second computer’s version of file Y. Ex. 1006 at 20:2-5 (“[E2]
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`then processes the incremental backup information, copying subblocks that
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`were transmitted raw and looking up the references either in Y or in the part of
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`X already reconstructed.”). Claims 1 and 23 require that the “command to
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`copy” by an instruction written in the update and that it instruct the second
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`computer to copy “an old segment of the second computer’s copy of the earlier
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`
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`9
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`
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`version of the file”, not copy the raw data provided in an update into a file. See,
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`e.g., Ex. 1001 at claim 1, 14:53-57.
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`Thus, Williams cannot be relied upon for teaching writing in an update a
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`command to copy and Petitioner’s allegations to the contrary lack and literal or
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`inherent support. Because no such features are taught, Williams cannot be said
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`to “clearly and unequivocally” disclose the claimed invention;4 hence, Claims 1,
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`23 and 24 of the ‘799 Patent are not anticipated by Williams.
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`
`
`B. Claims 5-10 Are Patentable In View of Williams When
`Considered In Combination with Miller.
`Above it was demonstrated that Williams fails to teach writing in an
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`update a command to copy, as recited in Claim 1. The Petition cites Miller for
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`teaching the transmission of an update as an executable email attachment,
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`Petition at p. 55, and for the update being a software or document update,
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`Petition at p. 58, but relies on the teachings of Williams for all other elements
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`
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`4 Cf. NetMoneyIN, supra, 545 F.3d at 1371 (to anticipate a claim, a reference
`must “clearly and unequivocally disclose the claimed [invention] or direct those
`skilled in the art to the [invention] without any need for picking, choosing, and
`combining various disclosures not directly related to each other by the teachings
`of the cited reference.” (quoting In re Arkley, 455 F.2d 586, 587 (CCPA
`1972))).
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`
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`10
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`
`
`
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`of the claims. Petition at pp. 56-59. Stated differently, Petitioner is not relying
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`on Miller to cure any underlying deficiencies of Williams with respect to Claim
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`1.
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`Accordingly, even if one of ordinary skill in the art were to combine the
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`teachings of Williams and Miller in the fashion contemplated by Petitioner, one
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`still would not arrive at the present invention because the combination still
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`would not include writing in an update a command to copy, as recited in
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`Claim 1. Claims 5-10 depend, directly or indirectly, from Claim 1 and
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`therefore are patentable over the combination of Williams and Miller proposed
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`by Petitioner for at least these same reasons. In re Fine, 837 F.2d 1071 (Fed.
`
`Cir. 1988) (If an independent claim is nonobvious under 35 U.S.C. § 103,
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`then any claim depending therefrom is nonobvious.).
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`
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`C. Claim 37 Is Not Anticipated by Williams.
`Claim 37 recites “determining whether the second computer has a latest
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`version of a file . . . [and] generating an update[] if the second computer does
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`not have a latest version of the file”. Ex 1001 at 18:32-37. Williams fails to
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`teach such a process, therefore, Williams cannot anticipate Claim 37.
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`
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`11
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`
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`Williams describes an incremental backup procedure in which a
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`computer E1 backs up a file to computer E2 so that the version of a file Y
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`stored on E2 is changed to match the version of file X stored on E1. Ex. 1006
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`at 19:29-33. As explained by Professor Chu, prior to initiating a backup
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`procedure, computer E1 cannot be certain whether or not computer E2 stores a
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`latest version of the subject file. Ex. 2004 at ¶ 49. Nor does Williams mandate
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`such a situation. Indeed, as part of the backup file itself, computer E1 includes
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`an MD5 digest of the old and new versions of the file. Id.; Ex. 1006 at 20:53-
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`54. This is to ensure, in part, that the backup is applied to the same version of
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`the file for which the comparisons of hashes was made. Ex. 2004 at ¶ 49; Ex.
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`1006. at 20:58-61. Thus, Williams is both anticipating and accommodating
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`situations in which computer E2 may store a different, but not necessarily a
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`latest, version of a file than computer E1. Ex. 2004 at ¶ 49. Further, according
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`to Petitioner’s declarant, Dr. Grimshaw, Williams generates the update when
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`the backup system determines that a backup should be made. Ex. 2003 at 32:7-
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`18.
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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., supra, 814 F.2d at 631. In the present case, Williams
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`
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`12
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`
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`does not teach determining whether the second computer has a latest version of
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`a file and generating an update if the second computer does not have a latest
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`version of the file. Instead, Williams generates the update when the backup
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`system determines that a backup should be made. Such actions can be
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`accommodated because Williams’ D file includes information sufficient for
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`computer E2 to ensure the differences are applied to the correct prior version of
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`the file. Ex. 2004 at ¶ 49. Accordingly, Williams does not anticipate Claim 37.
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`
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`D. Claim 37 Is Not Anticipated by Balcha.
`Claim 37 recites “determining whether the second computer has a latest
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`version of a file . . . [and] generating an update[] if the second computer does
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`not have a latest version of the file”. Ex 1001 at 18:32-37. Balcha fails to teach
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`such a process, therefore, Balcha cannot anticipate Claim 37.
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`Balcha discloses sharing changes between two base files wherein a change
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`to a first version of the base file indicates that a second version of the same base
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`file is now not the same as the first version of the base file. Ex. 1003 at 4:52-67.
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`
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`13
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`
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`As explained by Balcha with reference to Figure 1, provided above:
`
`
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`Each of servers 22 and 24 maintain a copy of a base
`file 21, 27, respectively and are interconnected via a
`network 26. Base files 21, 27 should be
`identical to one another and thus changes
`made to one copy should eventually be
`reflected in the other copy. A base signature
`file, as described in more detail herein, is generated
`on one of the servers 22, 24 and copied to the other
`server. The base signature file is maintained on server
`22 as file 20, and maintained on server 24 as file 28.
`Either base file 21 or 27 can be modified at either
`server.
`
`Upon detection of a modification to the file, the
`detecting server, for example server 22, uses the
`respective base signature file, for example, base
`signature file 20, to generate a new delta file, and
`communicates the delta file over network 26 to
`server 24. Server 24 then uses the delta file to update
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`14
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`
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`the base file 27, and recalculates the base signature
`file 28.
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`Id. at 4:52-67, emphasis added.
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`Thus, when a modification of base file 21 is detected by server 22, server
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`22 generates a new delta file and communicates that delta file to server 24,
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`which then proceeds to modify base file 27 using the delta file. However, the
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`detection of the modification of base file 21 is in no way related to a
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`determination that base file 21 is the latest version of the base file. Instead,
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`Balcha only discloses detecting whether a base file has been modified, regardless
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`of when that modification may have occurred relative to other copies of the
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`same base file. Ex. 2004 at ¶ 37.
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`Dr. Chu explains the significance of this difference by noting that there
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`may be situations in which base file 27 has been modified more recently than
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`base file 21 and, as a consequence, base file 27 is the latest version of the file. If
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`a modification of base file 21 is detected, Balcha will perform the updating of
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`base file 27 to be consistent with base file 21 even though base file 27 is the
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`latest version of the file. In such a circumstance, the “updating” of Balcha will
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`serve to inappropriately overwrite the modifications made to base file 27 and
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`adversely modify the latest version of the base file (i.e., base file 27) to an older
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`
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`15
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`
`
`
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`version of the base file (i.e., base file 21). Such a circumstance is all the more
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`likely in Balcha because “[b]ase files 21, 27 should be identical to one another
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`and thus changes made to one copy should eventually be reflected in the
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`other copy.” Id. at ¶ 38 citing Ex. 1003 at 4:54-56 (emphasis added). Dr. Chu
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`estimates that the probability of an inappropriate file update occurring when
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`using Balcha’s file synchronization approach as the system scales Id. at ¶ 39.
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`The method of claim 37 avoids problems such as those described by Dr. Chu
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`by determining whether the second computer has a latest version of a file and,
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`in this way, establishes that the latest version of the file will not be overwritten
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`by changes to a file that occurred previously to the changes of the latest version
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`of the base file. Id. at ¶ 40.
`
`To anticipate a claim, “The identical invention must be shown in as
`
`complete detail as is contained in the … claim.” Richardson, supra, 868 F.2d at
`
`1236. Here, Balcha fails to meet this requirement. Stated differently, Balcha
`
`fails to disclose “within the four corners of the document not only all of the
`
`limitations claimed but also all of the limitations arranged or combined in the
`
`same way as recited in the claim, [hence] it cannot be said to prove prior
`
`invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. §
`
`102.” Net MoneyIN, Inc., supra, 545 F.3d at 1371.
`
`
`
`16
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`
`
`E. Claims 1, 5, 9, 10, 23 and 24 Are Patentable Over Balcha
`When Considered In Combination with Miller.
`Balcha relates generally to the backup and synchronization of files, and in
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`particular relates to a method and system for reflecting differences between two
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`files (a base file and a revised file) using respective signature files. Ex. 1003 at
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`1:5-7. The differences between the two files are reflected in a delta file. Id. at
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`7:46 – 8:6. Balcha provides an example of a base file, a base signature file, a
`
`revised file, a revised signature file and a resulting delta file at col. 13, ll. 50 et
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`seq. (reproduced below).
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`
`
`According to Balcha, the delta file incudes certain “primitives,” which
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`can be used to generate a copy of the revised file from the delta file. As
`
`explained by Dr. Grimshaw in his deposition, primitives are generally
`
`understood as the simplest elements available in a programming language. Ex.
`
`
`
`17
`
`
`
`
`
`2003 at 38:14 – 39:15. Specifically, Balcha uses primitives for “insert”,
`
`“modify” and “delete”. Ex. 1004 at 3:55-56. The operation of these primitives
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`is explained, with reference to the above example, at col. 14, ll. 5-19:5
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`
`
`As shown in this example, the delta file requires that the base file
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`(ABCDE.FGHIJ.KLMNO.PQRST.UVWXY.Z) be first modified by inserting,
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`at a position 5 characters from the initial pointer position, a 3-character string,
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`“XYZ”. Next, beginning at the then-current pointer position, a 5-character
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`string is deleted. Thereafter, and beginning at a location 5 characters from the
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`then-current pointer position, a 6-character string, “PAABST” is inserted.
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`Finally, the pointer position is advanced 5 characters and a 5-charater string is
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`deleted. In this way, a new version of the old file is created wherein new data is
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`
`5 In this exposition, the “⌃” character indicates the position of a pointer in the
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`18
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`base file at which the corresponding primitive is applied. Id. at 13:65 – 14:1.
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`
`
`
`
`added to the old version of the file via the “insert” primitive, undesired data is
`
`deleted from the old version of the file via the “delete” primitive, and data
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`within the old version of the file is modified via the “modify” primitive. Ex.
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`2004 at ¶ 24, citing Ex. 1003 at 14:5-19.
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`Thus, in the Balcha process, data within the old version of the file that is
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`not modified or deleted remains in the new version of the file with no need to
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`copy that information from the old version of the file to the new version of the
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`file. Id. at ¶ 25. Consequently, Balcha has no need for and does not write a
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`copy “primitive” (or any other instruction) into the delta file to effect the
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`copying of data from the old version of the file into the new version of the file.
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`Id. Predictably then, Balcha neither teaches nor suggests writing such a
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`command or other instruction for duplication into the delta file. Id.
`
`Dr. Grimshaw reads the above-described example from Balcha as calling
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`for “commands embedded in the delta file [to] cause the unchanged bits to be
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`effectively copied into the revised file.”6 This is wrong. Ex. 2004 at ¶ 26.
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`Balcha does not “effectively copy” over any bits from an old version of a file to a
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`revised version of the file. Id. Instead, the old file is converted to the revised file
`
`
`
`
`6 Ex. 1007 at ¶ 25 (emphasis added).
`
`
`19
`
`
`
`
`
`directly through execution of the insert and delete instructions included in the
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`delta file. Id. No copying (or effective copying) or other duplication of this kind
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`is performed or required because the revised version of the file is itself directly
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`produced from the old version of the file and the difference file and anything
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`not deleted from, or modified within, the old version of the file remains in the
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`revised version of the file. Id. citing Ex. 1003 at 13:64 – 65 and Ex. 2003 at
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`43:17-22.
`
`To the extent Petitioner may argue that “transitory copies” of files or
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`portions thereof may be ephemerally created in one or more memories of a
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`computer system during the operations described by Balcha, Dr. Chu explains
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`that such “copies” do not meet the requirements of Claims 1 and 23. These
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`claims require that in the event of a match between “an old segment signature”
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`and “a new segment signature”, an instruction that causes the second computer
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`to duplicate the second computer’s copy of the old segment of the file into the
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`second computer’s copy of the current version of the file be written into the
`
`update. The creation of any “transitory copies” of files or portions thereof (e.g.,
`
`copies of files that may be temporarily resident in volatile memory), on a
`
`computer are not equivalent to or a result of writing a “command to copy” (or
`
`other instruction that causes the computer to duplicate information or data)
`
`
`
`20
`
`
`
`
`
`that is written in the Balcha delta file. It is merely the mechanism by which a
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`computer processor is required to operate on data. Ex. 2004 at ¶ 27.
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`Thus, Balcha does not describe writing a command to copy or its
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`equivalent into an update file nor is the writing of such a command to the
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`update file inherent in Balcha.
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`Miller relates to a system for creating, updating or revising large
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`computer files. Ex. 1004 at 7:12-15. More
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`specifically, 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. Id. at 1:10-15. An overview of
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`that process is illustrated in Miller’s Figure 1,
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`shown here.
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`Miller’s DIFF file includes primitives
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`for “copy”, “insert” and “insert/copy” operations, whic
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