`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`Oracle Corporation,
`
`Petitioner,
`
`v.
`
`Clouding IP, LLC
`
`Patent Owner.
`
`____________
`
`IPR2013- _____
`
`Patent 6,738,799
`
`____________
`
`SECOND PETITION FOR INTER PARTES REVIEW
`
`
`
`

`

`TABLE OF CONTENTS
`
`TABLE OF CONTENTS ........................................................................................... i
`EXHIBIT LIST ........................................................................................................ iii
`I.
`INTRODUCTION ........................................................................................... 1
`II. MANDATORY NOTICES ............................................................................. 4
`A.
`Real Party-In-Interest ................................................................................... 4
`B.
`Related Matters ............................................................................................ 4
`C.
`Lead and Back-Up Counsel ......................................................................... 5
`D.
`Service Information ...................................................................................... 5
`III. PAYMENT OF FEES ..................................................................................... 6
`IV. REQUIREMENTS FOR INTER PARTES REVIEW ...................................... 6
`A. Grounds for Standing ................................................................................... 6
`B.
`Identification of Challenge ........................................................................... 6
`1. The Specific Art and Statutory Ground(s) on Which the Challenge is
`Based ............................................................................................................ 7
`2. How the Construed Claims are Unpatentable under the Statutory Grounds
`Identified in 37 C.F.R. § 42.204(b)(2) and Supporting Evidence Relied
`upon to Support the Challenge .................................................................... 7
`FACTUAL BACKGROUND .......................................................................... 8
`V.
`A. Declaration Evidence ................................................................................... 8
`B.
`The State of the Art ...................................................................................... 9
`C.
`The ‘156 Patent Application ...................................................................... 12
`D.
`The Prosecution History ............................................................................. 13
`VI. BROADEST REASONABLE CONSTRUCTION ....................................... 14
`A.
`Signature List (Claims 12 and 30) ............................................................. 16
`B. Update (Claims 12, 30, and 42) ................................................................. 16
`C.
`Command to Copy (Claims 12 and 30) ..................................................... 16
`D.
`Command to Insert (Claims 12 and 30) ..................................................... 17
`E.
`Determining Whether the Second Computer has a Latest Version of a File
`and Generating an Update, if the Second Computer does not have a Latest
`Version of a File (Claim 42) ...................................................................... 17
`
` 
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`i 
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`F. Without Interaction (Claims 12, 30, and 42) ............................................. 17
`G.
`The Preambles (Claims 12, 30, and 42) ..................................................... 17
`VII. GROUNDS OF INVALIDITY ..................................................................... 18
`A. Claims 12, 30 and 42 Are Anticipated by Williams under 35 U.S.C. §
`102(e) ......................................................................................................... 19
`B. Grounds Based on the Balcha Reference ................................................... 30
`1. Claims 12 and 30 are Rendered Obvious by Balcha in view of Miller
`Under 35 U.S.C. § 103 ............................................................................... 31
`2. Claim 42 Is Anticipated by Balcha Under 35 U.S.C. § 102(e) .................. 40
`3. Claims 12, 30, and 42 are Rendered Obvious by Balcha in view of
`Freivald under 35 U.S.C. § 103 ................................................................. 43
`VIII. CONCLUSION .............................................................................................. 55
`CERTIFICATE OF SERVICE ................................................................................ 56
`
`
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`
`ii
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`

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` 
`
`1001
`1002
`
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`
`EXHIBIT LIST
`
`U.S. Patent No. 6,738,799 to Dickenson
`Excerpts from Prosecution history of Application No.
`09/303,958, the parent application of the ‘799 patent
`U.S. Patent No. 6,233,589 to Balcha et al. (“Balcha”)
`U.S. Patent No. 5,832,520 to Miller (“Miller”)
`U.S. Patent No. 5,898,836 to Freivald et al. (“Freivald”)
`U.S. Patent No. 5,990,810 to Williams (“Williams”)
`Declaration of Dr. Andrew Grimshaw, Ph.D.
`Declaration of Dr. Todd Mowry, Ph.D.
`Patent Owner Preliminary Response in IPR2013-00073
`Board’s Decision Instituting Inter Partes Review in IPR2013-
`00073
`
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`
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`iii
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`

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`
`I.
`
`INTRODUCTION
`
`Petitioner Oracle Corporation (“Oracle” or “Petitioner”) respectfully
`
`requests inter partes review for claims 12, 30, and 42 of U.S. Patent No. 6,738,799
`
`(the “‘799 patent,” attached as Ex. 1001) in accordance with 35 U.S.C. §§ 311–319
`
`and 37 C.F.R. § 42.100 et seq.
`
`Oracle previously filed a petition for inter partes review against claims 1, 5-
`
`10, 23, 24, and 37 of the ‘799 patent on December 8, 2012. (See IPR2013-00073).
`
`A preliminary response was filed by the Patent Owner on March 12, 2013. (See
`
`IPR2013-00073, paper 7) (attached as Ex. 1009). On April 24, 2013, the Patent
`
`Trial and Appeal Board (“the Board”) determined to institute inter partes review as
`
`to each of the challenged claims. (See IPR2013-00073, paper 8) (attached as Ex.
`
`1010). Oracle files this second petition for inter partes review to challenge the
`
`remaining independent claims of the ‘799 patent. In particular, claims 12, 30, and
`
`42 of the ‘799 patent challenged in the present petition recite computer-readable
`
`storage medium having substantively identical claim limitations to previously
`
`challenged method claims 1, 23, and 37, respectively. To the extent the Patent
`
`Owner’s arguments raised in its preliminary response are relevant to the presently
`
`challenged claims (i.e., those arguments concerning originally challenged claims 1,
`
`23, and 37), the Board has rejected each in turn and determined that Oracle has
`
`demonstrated that there is a reasonable likelihood that it would prevail with respect
`
`
`
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`1
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` 
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`to these claims. Accordingly, it is respectfully requested that institution of inter
`
`partes review against claims 12, 30, and 42 of the ‘799 patent should be ordered
`
`based upon all previously accepted grounds, which are set forth herein, and all
`
`additional grounds set forth below.
`
`As explained in the previous petition, the ‘799 patent is generally directed to
`
`methods for synchronizing files between a first computer and a second computer.
`
`More particularly, the ‘799 patent is directed to a file synchronization technique
`
`wherein a first computer (such as a server) determines whether a second computer
`
`(such as a client) has the latest version of a subscribed-to-file. (Ex. 1001 at 3:36-
`
`44). A subscribed-to-file may, under the broadest reasonable interpretation, be a
`
`shared network document in which multiple clients are interested in keeping track
`
`of changes to the document such that the client’s local version of the file is up-to-
`
`date. (Id. at 6:46-56; 7:56-57). If the client’s file is out of date, the server
`
`generates a “delta” or update file by comparing the signature list of the most
`
`current version of the subscribed-to-file with an old signature list representing the
`
`version of the subscribed-to-file last transmitted to the client computer. (Id. at
`
`3:45 - 4:1; 4:16-23). The delta or update file is sent to the client computer, which
`
`thereafter alters the file as prescribed in the delta or update file such that the
`
`client’s file is updated to match the current version of the file stored at the server.
`
`(Id. at 4:30-32; 3:45-49).
`
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`2
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`As demonstrated by various references which were not before the Examiner,
`
`delta file synchronization and document push techniques were well known to a
`
`person of ordinary skill in the art well before the earliest claimed priority date of
`
`the ‘799 patent. For example, U.S. Patent No. 6,233,589 to Balcha (“Balcha,” Ex.
`
`1003), discloses a “differencing mechanism that quickly and efficiently determines
`
`the differences between two files, . . . generates a delta file reflecting those
`
`differences” and then sends the delta file to a remote computer which uses the delta
`
`file to update its local copy and thereby generate a revised, updated file. (Ex. 1003
`
`at 4:48-5:3). U.S. Patent No. 5,832,520 to Miller (“Miller,” Ex. 1004) similarly
`
`describes a method for generating “very efficient difference files … from an old
`
`file and a new file so that a difference file can be transmitted to a second computer
`
`system where the difference file and a duplicate of the old file can quickly be used
`
`to create a copy of the new file, duplicating the new file as it existed on the first
`
`computer system.” (Ex. 1004 at 2:38-48). Further, U.S. Patent No. 5,990,810 to
`
`Ross Neil Williams (“Williams,” Ex. 1006) discloses a “fine-grained incremental
`
`backup system” wherein a first computer generates and transmits an incremental
`
`backup file (i.e., an update file) to a second computer which in turn may use the
`
`incremental backup file to generate a copy of the current version of the complete
`
`file stored at the first computer. (See Ex. 1006 at 19:29-33).
`
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`3
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`The Balcha, Miller, and Williams references, none of which were considered
`
`by the Examiner, anticipate or render obvious the challenged claims of the ‘799
`
`patent.
`
`II. MANDATORY NOTICES
` 
`
`
`Pursuant to 37 C.F.R. § 42.8(a)(1), Oracle provides the following mandatory
`
`disclosures.
`
`A. Real Party-In-Interest
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Oracle is the real
`
`party-in-interest.
`
`B. Related Matters
`Oracle filed a petition for inter partes review against claims 1, 5-10, 23, 24,
`
`and 37 of the ‘799 patent on December 8, 2012. (See IPR2013-00073). The Patent
`
`Owner filed a preliminary response on March 12, 2013. (See Ex. 1009). On April
`
`24, 2013, the Board determined to institute inter partes review as to each of the
`
`challenged claims. (See Ex. 1010). Specifically, the Board instituted trial as to
`
`claims 1, 5-10, 23, 24, and 37 on the following grounds:
`
`1. Claims 1, 23, 24, and 37 are unpatentable under 35 U.S.C. § 102(e) as
`
`anticipated by Williams.
`
`2. Claims 5-10 are unpatentable under 35 U.S.C. § 103(a) over Williams
`
`and Miller.
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`
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`4
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`3. Claim 37 is unpatentable under 35 U.S.C. § 102(e) as anticipated by
`
`Balcha.
`
`4. Claims 1, 5, 9, 10, 23, and 24 are unpatentable under 35 U.S.C. § 103(a)
`
`over Balcha and Miller; and
`
`5. Claims 6-8 are unpatentable under 35 U.S.C. § 103(a) over Balcha,
`
`Miller, and Freivald.
`
`The ‘799 Patent is asserted in co-pending litigation captioned Clouding IP,
`
`LLC v. Oracle Corp., D.Del., Case No. 1:12-cv-00642. This litigation was filed
`
`May 22, 2012 and remains pending.
`
`C. Lead and Back-Up Counsel
`
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner provides the following
`
`designation of counsel: Lead counsel is Greg Gardella (Reg. No. 46,045) and
`
`back-up counsel is Scott A. McKeown (Reg. No. 42,866).
`
`Service Information
`
`D.
`Pursuant to 37 C.F.R. § 42.8(b)(4), papers concerning this matter should be
`
`served on the following.
`
`Address: Greg Gardella or Scott McKeown
`Oblon Spivak
`1940 Duke Street
`Alexandria, VA 22314
`cpdocketgardella@oblon.com and
`cpdocketmckeown@oblon.com
`Telephone: (703) 413-3000
`Fax:
`
`(703) 413-2220
`
`Email:
`
`
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`
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`5
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`
`III. PAYMENT OF FEES
`
`The undersigned authorizes the Office to charge to Deposit Account No. 15-
`
`0030 the fee required by 37 C.F.R. § 42.15(a) for this Petition for inter partes
`
`review. The undersigned further authorizes payment for any additional fees that
`
`might be due in connection with this Petition to be charged to the above referenced
`
`Deposit Account.
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW
`
`As set forth below and pursuant to 37 C.F.R. § 42.104, each requirement for
`
`inter partes review of the ‘799 patent is satisfied.
`
`A. Grounds for Standing
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner hereby certifies that the ‘799
`
`patent is available for inter partes review and that the Petitioner is not barred or
`
`estopped from requesting inter partes review challenging the claims of the ‘799
`
`patent on the grounds identified herein. The ‘799 patent has not been subject to a
`
`completed estoppel based proceeding of the AIA, and, the complaint served on
`
`Oracle referenced above in Section I(B) was served within the last 12 months.
`
`B. Identification of Challenge
`Pursuant to 37 C.F.R. §§ 42.104(b) and (b)(1), Petitioner requests inter
`
`partes review of claims 12, 30, and 42 of the ‘799 patent, and that the Board
`
`invalidate the same.
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`6
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`
`1.
`
`The Specific Art and Statutory Ground(s) on Which the
`Challenge is Based
`
`Claims 12, 30, and 42 of the ‘799 patent are anticipated by Williams (Ex.
`
`1006) under 35 U.S.C. § 102(e).
`
`Claims 12 and 30 of the ‘799 patent are rendered obvious by Balcha (Ex.
`
`1003) in view of Miller (Ex. 1004) under 35 U.S.C. § 103.
`
`Claim 42 is anticipated by Balcha under 35 U.S.C. § 102(e).
`
`Claims 12, 30, and 42 are rendered obvious by Balcha in view of Freivald
`
`(Ex. 1005) under 35 U.S.C. § 103.
`
`2.
`
`How the Construed Claims are Unpatentable under the
`Statutory Grounds Identified in 37 C.F.R. § 42.204(b)(2)
`and Supporting Evidence Relied upon to Support the
`Challenge
`
`Pursuant to 37 C.F.R. § 42.204(b)(4), an explanation of how claims 12, 30,
`
`
`
`and 42 of the ‘799 patent are unpatentable under the statutory grounds identified
`
`above, including the identification of where each element of the claim is found in
`
`the prior art, is provided in Section VII, below, in the form of claims charts.
`
`Pursuant to 37 C.F.R. § 42.204(b)(5), the appendix numbers of the supporting
`
`evidence relied upon to support the challenges and the relevance of the evidence to
`
`the challenges raised, including identifying specific portions of the evidence that
`
`support the challenges, are provided in Section VII, below, in the form of claim
`
`charts.
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`7
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`V.
`
`FACTUAL BACKGROUND
`A. Declaration Evidence
`This Petition is supported by the declarations of Professor Andrew
`
`Grimshaw from the University of Virginia (attached as Ex. 1007) and Professor
`
`Todd Mowry from Carnegie Mellon University (attached as Ex. 1008). Professors
`
`Grimshaw and Mowry offers their opinions with respect to the content and state of
`
`the prior art.
`
`Dr. Grimshaw is a Professor of Computer Science in the University of
`
`Virginia’s School of Engineering and Applied Science. Prof. Grimshaw is the
`
`author of over 50 publications and book chapters in the field of distributed
`
`computing. (Ex. 1007 at ¶ 9). He was the chief designer and architect of Mentat,
`
`an object-oriented parallel processing systems designed to directly address the
`
`difficulty of developing architecture-independent parallel programs and Legion, a
`
`nationwide metasystem built on Mentat. (Id. at ¶ 4). In 1999 he co-founded Avaki
`
`Corporation, and served as its Chairman and Chief Technical Officer until 2005
`
`when Avaki was acquired by Sybase. (Id. at ¶ 5). He is a member of the Global
`
`Grid Forum (GGF) Steering Committee and the Architecture Area Director in the
`
`GGF. (Id. at ¶ 6). Prof. Grimshaw has served on the National Partnership for
`
`Advanced Computational Infrastructure (NPACI) Executive Committee, the DoD
`
`MSRC Programming Environments and Training (PET) Executive Committee, the
`
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`8
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`
`CESDIS Science Council, the NRC Review Panel for Information Technology,
`
`and the Board on Assessment of NIST Programs. (Id.)
`
`Prof. Mowry is a Professor in Carnegie Mellon’s Department of Computer
`
`Science, has studied, taught, and practiced in the field of computer science for over
`
`20 years, and has been a professor of computer science since 1993. (Ex. 1008 at ¶
`
`1). Prof. Mowry was an Assistant Professor in the ECE and CS departments at the
`
`University of Toronto prior to joining Carnegie Mellon University in July, 1997.
`
`(Id. at ¶ 3). Professor Mowry's research interests span the areas of computer
`
`architecture, compilers, operating systems, parallel processing, database
`
`performance, and modular robotics. He has supervised 11 Ph.D students and
`
`advised numerous other graduate students. (Id. at ¶ 4).
`
`Prof. Mowry has authored over 80 publications and technical reports in the
`
`field of computer science. (Id.) He is the incoming Editor-in-Chief of ACM
`
`Transactions on Computer Systems (TOCS). Prof. Mowry has received a Sloan
`
`Research Fellowship and the TR35 Award from MIT's Technology Review.
`
`B. The State of the Art
`
`From the 1970s until the present day, a substantial body of research has
`
`reported on the advent and subsequent advancement in distributed computing
`
`systems. (Ex. 1007 at ¶ 12). Distributed systems represent a collection of stand-
`
`alone computing machines (servers, client-PCs, etc.) that are connected through a
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`9
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`network, such as the internet or a corporate intranet. (Id.) One area of distributed
`
`system research which is of particular relevance to the ‘799 patent is commonly
`
`referred to as event-based notification. (Id.)
`
`Event-based notification systems are used to push notifications from a
`
`publisher to a subscriber regarding a specified event. (Id. at ¶ 13). In a
`
`publish/subscribe system, clients subscribe to events in which they are interested
`
`and, when that event occurs, a server is used to push the published data to the
`
`client. (Id.) By 1996, the publish/subscribe (push) methodology was being used to
`
`automatically deliver web content (such as news headlines, weather forecasts, etc.)
`
`and software updates to subscribed clients. (Id.)
`
`Developing in parallel to these advancements was a body of research
`
`regarding efficient mechanisms for synchronizing changes to identical files saved
`
`at multiple locations across a network. (Id. at ¶ 14). For example, a master copy
`
`of a file may be located at a server (“computer A”), and a replica of the file may be
`
`saved at a client PC (“computer B”). (Id. at ¶ 15). When the master copy is
`
`updated, it does not make sense to transfer the entire new file to computer B. (Id.)
`
`Rather, only the differences between the two files should be transferred to
`
`computer B. (Id.)
`
`To address this issue, the “RSYNC algorithm” was developed by Andrew
`
`Tridgell and Paul Mackerras in 1996. (Id. at ¶ 16). RSYNC operated by
`
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`10
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`identifying segments of an old and new file that are identical to one another and
`
`only transmitting raw data for those parts of the new file that did not previously
`
`exist in the old file. (Id.) In this manner, and following the scenario described
`
`above involving computers A and B, when computer A updated its copy of the
`
`shared file, computer B received an executable delta file that would allow
`
`computer B to generate a copy of the up-to-date file as it existed at computer A.
`
`(Id.) RSYNC, and a variety of other differenced-based update algorithms, such as
`
`that disclosed by U.S. Pat. No. 5,765,173 to Cane et al. (Ex. 1007 at ¶ 18) and U.S.
`
`Pat. No. 5,990,810 to Williams (Ex. 1006), were also deployed to implement
`
`incremental file backup systems. (Ex. 1006 at 19:27-28; Ex. 1007 at ¶ 18). In an
`
`incremental file backup system, a single computer, without interaction with any
`
`other device, executes a difference algorithm to identify all portions of a file which
`
`have been modified since a previous backup of the file. (Ex. 1006 at 19:29-51; Ex.
`
`1007 at ¶ 18). The modifications, along with instructions to recreate the updated
`
`version of the file, are transmitted and saved to a backup server or tape drive. (Ex.
`
`1006 at 19:51-56; Ex. 1007 at ¶ 18).
`
`Accordingly, several years prior to the effective filing date of the ‘799
`
`patent, it was well known that difference-based update files could be generated by
`
`a single computer without interaction with another device. (Ex. 1006 at 20:6-10;
`
`Ex. 1007 at ¶¶ 17-18).
`
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`11
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`
`
`C. The ‘156 Patent Application
`Application No. 10/452,156 (“the ‘156 application”), which issued as the
`
`‘799 patent, was filed on June 2, 2003, as a continuation of Application No.
`
`09/303,958, filed May 3, 1999, which is now Patent No. 6,574,657 (“the ‘657
`
`patent”).
`
`The ‘156 application describes a mechanism to keep files on remote devices
`
`(including other computers) up-to-date (consistent) with a master set of files. The
`
`technique involves computers in two roles: the holder of the true copy (hereinafter,
`
`“master”) and the remote computer (hereinafter, “client”). The technique is
`
`simple, and consists of four basic steps.
`
`First, the client downloads a copy of the file(s) and subscribes to files with
`
`the master. (Ex. 1001 at 7:50-55). The master notes that the client has subscribed
`
`and further generates a set of signatures associated with the blocks of the file
`
`(hereinafter, referred to as the subscription phase). (Id. at 7:64 - 8:6).
`
`Second, the master monitors the files and directories for which there are
`
`outstanding subscriptions. (Id. at 7:55-60). When it is determined that a file has
`
`changed (using date and time stamp comparisons (Id. at 6:59-60)) the master
`
`generates a delta or update file by comparing each segment of the old file with
`
`each segment of the new file. (Id. at 10:66 – 11:8). The delta file comprises
`
`commands to copy (i.e., “an instruction that causes the computer to duplicate
`
`
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`12
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`

` 
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`information or data”) for each segment of data that existed in both the old and new
`
`files, as well as commands to insert (i.e., “an instruction that causes the computer
`
`to put or introduce certain information or data into another file”) for each segment
`
`of data in the new file that did not match any segment of the old file. (Id. at 11:60
`
`- 12:13; Fig. 11).
`
`Third, as described in the preferred embodiment of the ‘799 patent, the
`
`master packages the delta file into a self-extracting executable that is suitable for
`
`emailing and emails the executable to all clients that are subscribed to the file. (Id.
`
`at 4:30-32; 11:52-57; 12:53-56).
`
`Fourth, the client connects with its mail server, downloads the email
`
`containing the self-extracting delta file, and executes the self-extracting delta file,
`
`thereby updating the files on the client computer. (Id. at 12:53-66).
`
`D. The Prosecution History
`
`During prosecution of the ‘156 application the Examiner raised only
`
`statutory and non-statutory double patenting rejections; however, prior art based
`
`patentability rejections were presented in connection with the parent ‘958
`
`application. In that application, the Patent Owner amended independent claims 1,
`
`11, and 21 to recite the following:
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`13
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`(Ex. 1002 at November 14, 2002 Patent Owner Response to Office Action, pgs. 11,
`
`14-17). A notice of allowance followed. (Id. at December, 3 2002 Notice of
`
`Allowance).
`
`
`
`Given that similar limitations are present in the ‘156 application claims,
`
`which issued as the ‘799 patent, it appears that the ‘799 patent was allowed
`
`primarily because the Office believed that the prior art failed to teach a method of
`
`updating files between a first and second computer wherein the first computer,
`
`without interacting with the second computer, determines if the second computer
`
`has the latest version of a monitored file and sends an update file to the second
`
`computer if the second computer’s version of the file is out of date.
`
`
`VI. BROADEST REASONABLE CONSTRUCTION
`
`
`Pursuant to 37 C.F.R. § 42.204(b)(3), the claims subject to inter partes review
`
`shall receive the “broadest reasonable construction in light of the specification of
`
`the patent in which [they] appear[].” See also In re Swanson, No. 07-1534 (Fed.
`
`Cir. 2008); In re Trans Texas Holding Corp., 498 F.3d 1290, 1298 (Fed. Cir. 2007)
`
`(citing In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984)). As the Federal
`
`Circuit noted in Trans Texas, the Office has traditionally applied a broader
`
`standard than a Court does when interpreting claim scope. Moreover, the Office is
`
`not bound by any district court claim construction. Trans Texas, 498 F.3d at 1297-
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`98, 1301. Rather,
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`the PTO applies to verbiage of the proposed claims the
`broadest reasonable meaning of the words in their
`ordinary usage as they would be understood by one of
`ordinary skill in the art, taking into account whatever
`enlightenment by way of definitions or otherwise that
`may be afforded by the written description contained in
`applicant’s specification. In re Morris, 127 F.3d 1048,
`1054-55, 44 U.S.P.Q.2d 1023, 1027-28 (Fed. Cir. 1997).
`
`Because the standards of claim interpretation used by the Courts in patent
`
`litigation are different from the claim interpretation standards used by the Office in
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`claim examination proceedings (including inter partes review), any claim
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`interpretations submitted herein for the purpose of demonstrating a Reasonable
`
`Likelihood of Prevailing are neither binding upon litigants in any litigation, nor do
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`such claim interpretations correspond to the construction of claims under the legal
`
`standards that are mandated to be used by the Courts in litigation.
`
`The interpretation of the claims presented either implicitly or explicitly
`
`herein should not be viewed as constituting, in whole or in part, Petitioner’s own
`
`interpretation and/or construction of such claims for the purposes of the underlying
`
`litigation. Instead, such constructions in this proceeding should be viewed only as
`
`constituting an interpretation of the claims under the “broadest reasonable
`
`construction” standard.
`
`All claimed terms not specifically addressed below have been accorded their
`
`broadest reasonable interpretation in light of the patent specification including their
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`plain and ordinary meaning. Any claim terms using the word “means” are
`
`presumed to invoke 35 U.S.C. § 112 ¶ 6.
`
`For the purposes of this second inter partes review petition against the ‘799
`
`patent, Oracle adopts and applies the Board’s construction of the following terms,
`
`which were set forth in the Board’s decision to institute inter partes review in
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`IPR2013-00073. (See Ex. 1010 at 7-16).
`
`A.
`Signature List (Claims 12 and 30)
`A signature list is “a collection (e.g., table) of representations of variable
`
`length segments of a subject file, which representations serve to identify the
`
`segments from which they are determined (e.g., a table of hashes).” (Ex. 1010 at
`
`9).
`
`B. Update (Claims 12, 30, and 42)
`
`An update is construed as “information for updating a file or an up-to-date
`
`version of a file.” (Ex. 1010 at 10).
`
`C.
`
`Command to Copy (Claims 12 and 30)
`
`A command to copy is construed to mean “an instruction that causes the
`
`computer to duplicate information or data.” (Ex. 1010 at 11).
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`D.
`
`Command to Insert (Claims 12 and 30)
`
`A command to insert is construed to mean “an instruction that causes the
`
`computer to put or introduce certain information or data into another file.” (Ex.
`
`1010 at 13-14).
`
`E.
`
`Determining Whether the Second Computer has a Latest
`Version of a File and Generating an Update, if the Second
`Computer does not have a Latest Version of a File (Claim 42)
`
`Consistent with the broadest reasonable interpretation of this term, the Board
`
`
`
`determined that “determining whether the second computer has a latest version of a
`
`file” and “generating an update, if the second computer does not have a latest
`
`version of a file” does not require that the second computer possess some version
`
`of the file prior to “transmitting the update from the first computer to the second
`
`computer.” (Ex. 1010 at 14).
`
`F. Without Interaction (Claims 12, 30, and 42)
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`The term “without interaction” is interpreted as limiting the interaction
`
`between first and second computers only as specifically recited in the claims. (Ex.
`
`1010 at 15-16).
`
`G.
`
`The Preambles (Claims 12, 30, and 42)
`
`The Board determined that the preambles of claims 1, 23, and 37 of the ‘799
`
`patent, which correspond to presently challenged claims 12, 30, and 42, are
`
`limiting. (Ex. 1010 at 16).
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`VII. GROUNDS OF INVALIDITY
`
`
`The references addressed below each provide the teaching believed by the
`
`Examiner to be missing from the prior art and variously anticipate or render
`
`obvious the claimed subject matter. Further, Oracle notes that claims 12, 30, and
`
`42 of the ‘799 patent challenged in the present petition recite computer-readable
`
`storage medium having identical claim limitations to previously challenged method
`
`claims 1, 23, and 37, respectively. (See IPR2013-00073). A preliminary response
`
`was filed by the Patent Owner on March 12, 2013. (See Ex. 1009). On April 24,
`
`2013, the Board determined to institute inter partes review on all claims
`
`challenged previously, including claims 1, 23, and 37 of the ‘799 patent. (See Ex.
`
`1010 at 31). To the extent the Patent Owner’s arguments raised in its preliminary
`
`response are relevant to the presently challenged claims (i.e., those arguments
`
`concerning originally challenged claims 1, 23, and 37), the Board has rejected each
`
`in turn and determined that Oracle has demonstrated that there is a reasonable
`
`likelihood that it would prevail with respect to these claims. Accordingly, it is
`
`respectfully requested that institution of inter partes review against claims 12, 30,
`
`and 42 of the ‘799 patent should be ordered based upon the additional grounds
`
`raised below.
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`A. Claims 12, 30 and 42 Are Anticipated by Williams under 35
`U.S.C. § 102(e)
`
`U.S. Patent No. 5,990,810 to Ross Neil Williams (“Williams,” Ex. 1006)
`
`was not considered during the original prosecution of the ‘799 or ‘657 patents, nor
`
`is it cumulative of any prior art considered by the Examiner. Williams was filed as
`
`PCT Application No. PCT/AU96/00081 on February 15, 1996 and entered the U.S.
`
`national stage under 35 U.S.C. § 371 on August 15, 1997. The earliest priority
`
`date that the claims of the ‘799 patent may be entitled to is May 3, 1999, which is
`
`the filing date of the ‘657 patent. Therefore, Williams is available as prior art to
`
`the ‘799 patent under 35 U.S.C. § 102(e).
`
`In response to Oracle’s first petition against the ‘799 patent, the Patent
`
`Owner’s argued that Williams cannot anticipate independent claims 1 and 23,
`
`which correspond to presently challenged claims 12 and 30, because Williams does
`
`not explicitly recite and use the words “command to copy” or “command to
`
`insert.” (See Ex. 1009 at 38). In instituting trial on claims 1, 23, 24, and 37 of the
`
`‘799 patent, the Board dismissed this argument outright, noting that the Patent
`
`Owner failed to recognized that “Williams describes that the incremental backup
`
`file D contains instructions that cause the computer E2 to duplicate certain
`
`subblocks of file Y, so that a duplicate version of file X is reconstructed from file
`
`Y and the incremental backup file D, and computer E2 may maintain both file Y
`
`(the previous version) and the duplicate version of file X.” (Ex. 1010 at 20) (citing
`
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`19
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`Ex. 1006 at 19:22 – 22:14) (emphasis in original). Moreover, the Board found
`
`Prof. Grimshaw’s testimony regarding a person of ordinary skill’s understanding of
`
`the Williams reference to be credible and instructive. (Ex. 1010 at 21-22).
`
`More specifically, the Patent Owner a