Filed on behalf of Microsoft Corporation
`
`By: John D. Vandenberg (Reg. No. 31,312)
`
`john.vandenberg@klarquist.com
`Stephen J. Joncus (Reg. No. 44,809)
`stephen.joncus@klarquist.com
`Klarquist Sparkman LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Telephone: (503) 595-5300
`Facsimile: (503) 595-5301
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`MICROSOFT CORPORATION
`Petitioner
`
`v.
`
`PROXYCONN, INC.
`Patent Owner
`
`____________
`
`
`Patent 6,757,717 B1
`
`____________
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`Page 1 of 17
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`By: John D. Vandenberg (Reg. No. 31,312)
`
`john.vandenberg@klarquist.com
`Stephen J. Joncus (Reg. No. 44,809)
`stephen.joncus@klarquist.com
`Klarquist Sparkman LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Telephone: (503) 595-5300
`Facsimile: (503) 595-5301
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`MICROSOFT CORPORATION
`Petitioner
`
`v.
`
`PROXYCONN, INC.
`Patent Owner
`
`____________
`
`
`Patent 6,757,717 B1
`
`____________
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`Page 1 of 17
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`FILED VIA THE PATENT REVIEW PROCESSING SYSTEM
`
`In re Inter Partes Review of:
`U.S. Patent No. 6,757,717
`
`Issued: June 29, 2004
`
`Applicant: Leonid Goldstein
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`Application No. 09/398,007
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`Filed: September 16, 1999
`
`Title: System And Method For Data
`
`Access
`
`Currently in Litigation Styled:
`Proxyconn Inc. v. Microsoft
`Corporation, et al., Central District
`of California, Case No. SA CV11-
`1681 DOC (JPRx) [Consolidated
`with Case Nos. SA CV11-1682
`DOC (JPRx), SA CV11-1683 DOC
`(JPRx), and SA CV11-1684 DOC
`(JPRx)]
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`Declaration of Professor Darrell D. E. Long
`Regarding U.S. Patent No. 6,757,717
`
`I.
`
`QUALIFICATIONS
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`I am a Professor of Computer Science and have served as Associate
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`Dean for Research and Graduate Studies in the Jack Baskin School of
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`Engineering at the University of California at Santa Cruz. I hold the Kumar
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`Malavalli Endowed Chair of Storage Systems Research and I am the Director
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`of the Storage Systems Research Center, an internationally recognized center
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`of excellence in data storage. I am also the Director of the Working-group on
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`Applied Security and Privacy (WASP), the laboratory at the University of
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`California at Santa Cruz that studies computer security. I teach graduate and
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`undergraduate courses in computer security, operating systems, data storage
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`and have taught courses in networking and distributed systems. I received my
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`B.S. degree in Computer Science from San Diego State University, and my
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`M.S. and Ph.D. from the University of California, San Diego. I am a Fellow
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`of the Institute of Electrical and Electronics Engineers and of the American
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`Association for the Advancement of Science. My research interests include
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`data storage systems, operating systems, computer security, distributed
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`systems and networking. My qualifications are further described in my
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`appended Curriculum Vitae.
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`I have published numerous papers including in the ACM Transactions
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`on Storage, and various IEEE journals, and I am the co-author of two books.
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`These publications are listed in Exhibit A. I am the founder of the premier
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`conference in the data storage field known as the Symposium on File Storage
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`Technologies (“FAST”). I have participated in organizing numerous
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`academic conferences including:
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`2012:
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`Steering Committee: Petascale Data Storage Workshop (PDSW),
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`Symposium on Modeling, Analysis and Simulation of Computer and
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`Telecommunication Systems (MASCOTS), Symposium on File and Storage
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`Systems Technology (FAST).
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`Program Committee: Symposium on File and Storage Systems
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`Technology (FAST).
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`2011:
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`Steering Committee: Petascale Data Storage Workshop (PDSW),
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`Symposium on Modeling, Analysis and Simulation of Computer and
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`Telecommunication Systems (MASCOTS), Symposium on File and Storage
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`Systems Technology (FAST).
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`Program Committee: Symposium on Modeling, Analysis and
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`Simulation of Computer and Telecommunication Systems (MASCOTS).
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`2010:
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`Program Chair: Symposium on Modeling, Analysis and Simulation of
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`Computer and Telecommunication Systems (MASCOTS).
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`Steering Committee: Petascale Data Storage Workshop (PDSW),
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`Symposium on Modeling, Analysis and Simulation of Computer and
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`Telecommunication Systems (MASCOTS), Symposium on File and Storage
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`Systems Technology (FAST).
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`2009:
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`Program Committee: International Workshop on Software Support for
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`Portable Storage (IWSSPS), Inaugural International Conference on
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`Virtualization and Cloud Computing, Symposium on Modeling, Analysis and
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`Simulation of Computer and Telecommunication Systems (MASCOTS),
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`Petascale Data Storage Workshop (PDSW).
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`Program Chair: Web Information Systems Engineering (WISE).
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`General Chair: Symposium on Applications and the Internet (SAINT).
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`Steering Committee: Symposium on Modeling, Analysis and
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`Simulation of Computer and Telecommunication Systems (MASCOTS),
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`Symposium on File and Storage Systems Technology (FAST).
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`I have also consulted for industry in the area of storage systems
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`including for Hewlett-Packard Laboratories and IBM. I have also been a
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`consultant to numerous agencies of the Federal government.
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`II. COMPENSATION
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`I am being compensated by counsel for Microsoft at my compensation
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`rate of $500/hour for consulting and $600/hour for testimony in deposition or
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`trial, plus reimbursement for reasonably incurred expenses. I have no interest
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`in the outcome of the related litigation or this proceeding.
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`III. SUMMARY OF MY STUDY AND CONCLUSIONS
`
`I have read U.S. Patent No. 6,757,717. The patent concerns
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`technology within my areas of expertise. I have considered the patent’s
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`disclosures from the perspective of a person of ordinary skill in the art in
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`1998–99.
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`I have studied the following references and considered them from the
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`perspective of the person of ordinary skill in the art in 1998–99.
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`HTTP DRP (Ex. 1003): Arthur van Hoff, John Giannandrea, Mark
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`Hapner, Steve Carter, and Milo Medin, “The HTTP Distribution and
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`Replication Protocol,” W3C Note, http://www.w3.org/TR/NOTE-drp-
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`13
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`19970825.html, Aug. 1997 (“HTTP DRP”).
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`14
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`Mattis (Ex. 1004): Peter Mattis et al., U.S. Patent No. 6,292,880,
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`“Alias-Free Content-Indexed Object Cache,” issued Sept. 18, 2001 on
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`application filed Apr. 15, 1998 (“’880” or “Mattis”).
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`I have compared these references to claims 6, 7, 9, 11, 12 and 14 of the
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`’717 patent.
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`I have considered the perspective of the person of ordinary skill in the
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`art in 1998–99 (defined below) who was designing a system in which data is
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`sent over a network from some source and is stored by a receiver computer
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`for possible later reuse, and having a design goal of reducing the transmission
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`of redundant data over the network. I have considered such a person having
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`read Mattis with an eye toward using and possibly expanding on its
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`teachings. I have also considered such a person having read HTTP DRP and
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`looking to use and possibly expand on its teachings.
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`These six ’717 patent claims recite nothing innovative compared to
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`these references. HTTP DRP discloses to the person of ordinary skill in the
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`art in 1998–99 everything required by these six claims. Mattis discloses to
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`the person of ordinary skill in the art in 1998–99 everything required by
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`claims 6, 7 and 9. Also, the natural combination of Mattis and HTTP DRP
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`taught the person of skill in the art the combinations claimed in these claims.
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`In other words, the person of skill in the art would have already possessed the
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`claimed subject matter upon reading Mattis and HTTP DRP, combined with
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`their knowledge of the conventional technology in the field, as explained
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`below.
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`Also, the patent is internally inconsistent and unclear on the meaning
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`of “digital digest,” as explained in my earlier declaration. For purposes of
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`my comparison of the claims to the prior art references, however, I have
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`assumed that this term includes a fixed-size digital fingerprint (e.g., hash,
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`message digest, signature or identifier), of 32 or more bits, calculated using
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`an MD5 and/or CRC algorithm and calculated on arbitrary-size data, such
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`that it represents and depends only on the content of that data.
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`IV. FIELD OF THE INVENTION
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`The ’717 patent defines its “field of the invention” as accessing data in
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`communication networks. (’717, 1:10–15). The field also includes the areas
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`of distributed data storage systems and networking, coding theory including
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`9
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`error detection and correction codes, and cryptographic hash functions
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`commonly called message digest functions. These were all mature fields for
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`many years prior to 1998–99.
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`V. LEVEL OF SKILL IN THE ART IN 1998–99
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`A person of ordinary skill in this art in 1998–99 would hold a B.S.
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`degree in computer science and would have as part of his study courses in
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`operating systems, networking, data compression and computer security.
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`These studies would include the storage subsystem of computer operating
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`systems which is covered briefly in most undergraduate operating systems
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`courses, but few require the student to examine actual source code. In
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`addition he would have several years of practical experience working in
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`operating systems, in particular the data storage subsystem.
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`As a result, actual experience in working with this operating system
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`subsystem would normally occur after several years of experience working
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`for a company with a focus on systems software.
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`Alternatively, a person would develop the level of ordinary skill in the
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`art in 1998–99 by obtaining an M.S. in computer science and by writing his
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`or her thesis in an area related to data storage and/or computer security.
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`A person of ordinary skill in the art would understand network
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`protocols. This was normally part of undergraduate programs in computer
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`science in 1998–99. A person of ordinary skill in the art would also
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`understand coding theory; in particular error detection and correction codes,
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`as well as cryptographic hash functions and message digest functions.
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`Introduction to basic hash functions is a normal part of most undergraduate
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`curricula, but coding theory is normally part of specialized courses (although
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`it is commonly part of electrical engineering programs), and cryptographic
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`hash functions would normally be taught only in courses in computer
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`security.
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`I have first-hand experience teaching and working with such persons of
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`ordinary skill in the art. For example, I have taught students having about that
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`level of skill in this art since at least as early as 1990.
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`VI. MATTIS AND HTTP DRP TEACH
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`THE CLAIMED SUBJECT MATTER
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`A. Mattis And HTTP DRP Are A Natural Combination
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`Each of Mattis and HTTP DRP alone teaches and discloses the entirety
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`of the alleged invention recited in claims 6, 7 and 9 of the Goldstein ’717
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`patent. And, at least HTTP DRP alone teaches and discloses the entirety of
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`the alleged invention recited in claims 11, 12 and 14 of the ’717 patent.
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`Nevertheless, I’ve been asked to assume, for argument sake, that Mattis’s
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`disclosure of a server receiving an object’s MD5 digest within a request for
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`that object, is somehow insufficient. And, I’ve been asked to assume, for
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`argument sake, that HTTP DRP’s disclosure of the conventional elements of
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`a web proxy server or other HTTP server is somehow insufficient to
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`completely disclose the elements of these six patent claims. Given these
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`assumptions, neither of which in my opinion is a reasonable assumption, the
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`question posed is whether a person of ordinary skill in the art considering the
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`problem addressed by these patent claims, and aware of these and other
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`relevant prior art references (but not aware of the ’717 patent’s disclosure),
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`would have had an apparent and natural reason to combine these two
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`references (HTTP DRP and Mattis) in the manner claimed in these patent
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`claims. In other words, would such a person starting with HTTP DRP or
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`starting with Mattis, and applying ordinary skill and common sense, have
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`combined that reference with the other reference to reach the same
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`combination claimed in these claims. For example, would such a person have
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`seen a benefit of implementing the HTTP DRP protocol in the clients, web
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`proxy cache server, and other HTTP servers described in Mattis. The answer
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`is yes. For multiple reasons, a person having ordinary skill in the art looking
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`to expand upon Mattis would have looked to HTTP DRP and, conversely,
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`one looking to implement HTTP DRP would have looked to Mattis. As
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`explained below, some of these reasons are that these two references address
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`the same problem, present the same algorithmic solution to that problem, and
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`apply that shared solution to the same type of application. Further, nothing in
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`these two references teaches away from their combination.
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`Same Problem: First, each reference addresses the same problem as
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`the ’717 patent: the desire to reduce redundancy in network data
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`transmissions where certain data has been received over a network and is
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`stored by a proxy cache (or client cache) for possible later reuse. The ’717
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`patent identifies the following objects among others: “It is therefore a broad
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`object of the present invention to provide a method, system and apparatus for
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`increasing the speed of data access in a packet-switched network. Another
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`object of the present invention is to decrease data traffic throughout the
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`network. Still another object of the present invention is to decrease the
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`required cache size.” (’717, 1:61-67). These were well-known goals in the
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`mid-1990s for designers of network caching systems. It was known that
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`redundant network transmissions and redundant cache storage could arise, for
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`instance, when downloaded data is subject to change at its original source
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`and/or the same downloaded data content exists on the network under two or
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`more different names. When the data is subject to change at the source, a
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`proxy cache might wastefully download that same data from the original
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`source each time it is requested by a client, for fear that the proxy cached
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`version is out of date. When the data exists and is requested by clients under
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`various names, the proxy cache might wastefully download the same data in
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`response to those requests, and cache duplicate copies of that data. Each of
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`these two references addresses how to avoid such redundant downloads and
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`storage of redundant copies. “[D]ifferent sites often refer to the same
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`standard libraries or images, and because their content identifiers match,
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`multiple redundant downloads can be avoided.” (Ex. 1003, 7:5–6). “The
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`technology described herein provides for a cache object store for a high-
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`performance, high-load application having the following general
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`characteristics: . . . Alias free, so that multiple objects or object variants, with
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`different names, but with the same content identical object content, will have
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`the object content cached only once, shared among the different names.”
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`(Ex. 1004, 4:48-52, 64-68).
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`This shared problem would have motivated a person having ordinary
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`skill in the art to consider these references together.
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`Same Solution: Second, each reference proposes the same algorithmic
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`solution to this problem. Each uses MD5 digest fingerprints. Each calculates
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`an MD5 digest from the content in question to represent that content. Each
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`transmits MD5 digest fingerprints over the network. Each receiver of those
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`MD5 digests compares that network-transmitted MD5 digest to its own
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`cached MD5 digest fingerprint values. Each relies on a match between two
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`MD5 digital digest values to avoid an otherwise redundant transmission or
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`storage of duplicate copies of the same data content. This common
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`algorithmic solution would have motivated a person having ordinary skill in
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`the art to consider these references together.
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`Same Application: Third, each reference teaches that its techniques
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`can be used to distribute the same type of content over the same type of
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`distribution system, namely web server files and content over the existing
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`HTTP web architecture, including the Internet (with its routers, switches,
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`ISPs, proxies, etc.) and web proxy caches. HTTP DRP “provides a
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`specification of a protocol for the efficient replication of data over HTTP
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`network routers” (Ex. 1003, 1:29) and describes “functionality that can be
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`deployed anywhere where HTTP is available today” (id., 2:22). With Mattis,
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`“a client may be able to access replicas from a topologically proximate cache
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`faster than possible from the original web server, while at the same time
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`reducing Internet server traffic.” (Ex. 1004, 1:62–65).
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`Mattis Contemplates HTTP-DRP Type Requests: Fourth, as noted,
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`Mattis expressly acknowledges that clients may request a particular object by
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`identifying the object’s MD5 digest, but that clients typically instead request
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`an object by its URL or other name. (Ex. 1004, 9:65–10:4). Therefore, as
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`shown in Fig. 9A, step 904, the Mattis system includes the capability of
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`converting an object name included in such a request to that object’s MD5
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`digest value (object key value). After that conversion step, the rest of Fig. 9A
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`uses the MD5 digest of the object. However Mattis obtains the MD5 digest
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`from the request, whether directly from the object request (e.g., an HTTP
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`DRP request) or indirectly by converting the object’s name to its MD5 digest,
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`the operation thereafter using that MD5 digest is the same. Therefore, Mattis
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`and HTTP DRP fully operate together without changing either.
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`No Teaching Away: Finally, nothing in either reference or outside
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`either reference teaches away from their combination. No essential feature in
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`Mattis conflicts with an essential feature of HTTP DRP. Nothing stated in
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`Mattis would lead a person having ordinary skill in the art away from using it
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`to implement HTTP DRP and nothing stated in HTTP DRP would lead a
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`person having ordinary skill in the art away from implementing it using
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`Mattis.
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`B.
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`The Designer Naturally Would Have
`Combined Mattis and HTTP DRP In The Claimed Manner
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`As seen in App. A (Ex. 1001), this combination of Mattis and HTTP
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`DRP discloses each and every element of all six challenged claims. HTTP
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`DRP discloses the only element in claims 6, 7 or 9 arguably not sufficiently
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`described in Mattis (the object’s MD5 digest being received over the
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`network). HTTP DRP discloses all elements of each of claims 6, 7, 9, 11, 12
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`and 14 while Mattis discloses a particular set of instrumentalities for
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`implementing the HTTP DRP protocol.
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`The web proxy cache 30 and client 10 of Mattis each is suited for
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`operating the HTTP DRP protocol. Modifying these elements of Mattis per
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`HTTP DRP would of course provide and implement all of the functionality
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`and benefits described in the HTTP DRP protocol. That is the very point of
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`this protocol. It describes how to modify existing web servers and clients to
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`achieve the benefits described in the protocol. The Mattis web proxy server
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`already provides that functionality, and Mattis already describes that some
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`5
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`6
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`7
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`8
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`9
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`10
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`11
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`12
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`Page 15 of 17
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`1
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`clients have the ability to request an object by its MD5 digest, but it is not
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`typical. Making that typical, by adopting the HTTP DRP protocol, would
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`3
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`provide all of the benefits of that protocol. And, it would not change how
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`4
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`any element in Mattis functions.
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`5
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`For the above reasons, this combination of Mattis and HTTP DRP in
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`6
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`this manner is no more than a predictable use of prior art elements according
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`7
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`to their established functions. A system designer of ordinary skill wishing to
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`8
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`improve the efficiency of network communications would have seen a benefit
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`9
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`of implementing HTTP DRP using the designs described in Mattis. Thus, the
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`10
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`challenged claims recite nothing innovative.
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`11
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`12
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`I declare under penalty of perjury under the laws of the United States
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`13
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`of America that the foregoing is true and correct.
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`Page 16 of 17
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`Executed on the 3-;“1 day of January, 2013, in Paris, France.
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`Darre 1
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`ong
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`10
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`11
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`Page17of17
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`Page 17 of 17
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