Trials@uspto.gov
`Tel: 571-272-7822
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`
`
`
`
`Paper 9
`Entered: March 21, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`UNIFIED PATENTS, INC.
`Petitioner
`
`v.
`
`CLOUDING IP, LLC
`Patent Owner
`____________
`
`Case IPR2013-00586
`Patent 6,738,799 B2
`____________
`
`Before JAMESON LEE, JUSTIN BUSCH, and RAMA G. ELLURU,
`Administrative Patent Judges.
`
`BUSCH, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 9
`Entered: March 21, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`UNIFIED PATENTS, INC.
`Petitioner
`
`v.
`
`CLOUDING IP, LLC
`Patent Owner
`____________
`
`Case IPR2013-00586
`Patent 6,738,799 B2
`____________
`
`Before JAMESON LEE, JUSTIN BUSCH, and RAMA G. ELLURU,
`Administrative Patent Judges.
`
`BUSCH, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`IPR2013-00586
`Patent 6,738,799 B2
`
`
`I. INTRODUCTION
`
`A. Background
`
`On September 16, 2013, Unified Patents, Inc. (“Unified”) filed a
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`Petition to institute an inter partes review of claims 1, 5-10, 12, 16-21, 23,
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`24, 30, 31, 37, and 42 (the “challenged claims”) of U.S. Patent No.
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`6,738,799 B2 (Ex. 1001, “the ’799 Patent”) pursuant to 35 U.S.C. §§ 311-
`
`319. Paper 1 (“Pet.”). In response, Clouding IP, LLC (“Clouding”) filed a
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`Patent Owner Preliminary Response. Paper 5 (“Prelim. Resp.”). We have
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`jurisdiction under 35 U.S.C. § 314.
`
`The standard for instituting an inter partes review is set forth in
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`35 U.S.C. § 314(a), which provides as follows:
`
`THRESHOLD – The Director may not authorize an inter partes
`review to be instituted unless the Director determines that
`the information presented in the petition filed under section
`311 and any response filed under section 313 shows that
`there is a reasonable likelihood that the petitioner would
`prevail with respect to at least 1 of the claims challenged in
`the petition.
`
`The information presented in the Petition sets forth Unified’s
`
`contentions of unpatentability of the challenged claims under 35 U.S.C.
`
`§§ 102 and 103 based on the following specific grounds (Pet. 16-57):
`
`Reference[s]
`
`Basis
`
`Claims challenged
`
`Williams1
`
`§ 102(e)
`
`1, 12, 23, 24, 30, 31, 37,
`and 42
`
`Williams and Miller2
`
`§ 103(a)
`
`5-10 and 16-21
`
`
`1 U.S. Patent No. 5,990,810, issued Nov. 23, 1999 (Ex. 1006) (“Williams”).
`2 U.S. Patent No. 5,832,520, issued Nov. 3, 1998 (Ex. 1004) (“Miller”).
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`IPR2013-00586
`Patent 6,738,799 B2
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`Reference[s]
`
`Basis
`
`Claims challenged
`
`Balcha3
`
`§ 102(e)
`
`37 and 42
`
`Balcha and Miller
`
`§ 103(a)
`
`1, 5, 9, 10, 12, 16, 20, 21,
`23, 24, 30, and 31
`
`Balcha, Miller, and
`Freivald4
`
`§ 103(a)
`
`6-8 and 17-19
`
`Balcha and Freivald
`
`§ 103(a)
`
`1, 12, 23, 30, 37, and 42
`
`Upon consideration of the Petition and Patent Owner Preliminary
`
`Response, for the reasons described below, we determine that Unified has
`
`demonstrated a reasonable likelihood of prevailing on at least one ground on
`
`each of the challenged claims. Accordingly, pursuant to 35 U.S.C. § 314,
`
`we grant the Petition and institute inter partes review as to claims 1, 5-10,
`
`12, 16-21, 23, 24, 30, 31, 37, and 42 of the ’799 Patent.
`
`B. Related Proceedings
`
`Unified indicates that the ’799 Patent was the subject of the following
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`terminated inter partes reviews before the Board: Oracle Corp. v. Clouding
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`IP, LLC, IPR2013-000735 and Oracle Corp. v. Clouding IP, LLC, IPR2013-
`
`00261. Pet. 4. Unified indicates that the ’799 Patent is the subject of the
`
`following co-pending federal district court cases: Clouding IP, LLC v. EMC
`
`Corp., et al., Case No. 1:13-cv-01455 (D. Del.); Clouding IP, LLC v.
`
`Dropbox Inc., Case No. 1:13-cv-01454 (D. Del.); Clouding IP, LLC v. SAP
`
`AG, et al., Case No. 1:13-cv-01456 (D. Del.); Clouding IP, LLC v. Verizon
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`Inc., Case No. 1:13-cv-01458 (D. Del.); Clouding IP, LLC v. Rackspace,
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`3 U.S. Patent No. 6,233,589 B1, issued May 15, 2001 (Ex. 1003) (“Balcha”).
`4 U.S. Patent No. 5,898,836, issued Apr. 27, 1999 (Ex. 1005) (“Freivald”).
`5 Unified identifies IPR2012-0073 as a related matter. Pet. 4. However,
`IPR2013-00073 is the related inter partes review involving the ’799 Patent.
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`IPR2013-00586
`Patent 6,738,799 B2
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`Hosting Inc., Case No. 1:12-cv-00675 (D. Del.); Clouding IP, LLC v.
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`Amazon.com Inc., Case No. 1:12-cv-00641 (D. Del.); Clouding IP, LLC v.
`
`Oracle Corp., Case No. 1:12-cv-00642 (D. Del.); Clouding IP, LLC v.
`
`Google Inc., Case No. 1:12-cv-00639 (D. Del.). Pet. 4. Unified indicates
`
`that the ’799 Patent also was the subject of the following terminated federal
`
`district court cases: Clouding IP, LLC v. Apple Inc., Case No. 1:12-cv-
`
`00638 (D. Del.); and Clouding IP, LLC v. Microsoft Corp., Case No. 1:12-
`
`cv-00640 (D. Del.). Pet. 4.
`
`C. Real Party-in-Interest
`
`Clouding alleges that Google, Inc. (“Google”) is an unidentified real
`
`party-in-interest and that Google was served with a complaint alleging
`
`infringement of the ’799 Patent on May 24, 2012, more than one year before
`
`the Petition was filed. Prelim. Resp. 12-20. Clouding argues against
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`institution because the Petition fails to identify all real parties-in-interest as
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`required by 35 U.S.C. § 312(a)(2) and because the Petition is barred under
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`35 U.S.C. § 315(b). Id.
`
`A petition for inter partes review may be considered only if, among
`
`other requirements, the petition identifies all real parties-in-interest.
`
`35 U.S.C. § 312(a)(2); see also 37 C.F.R. § 42.8(b). In addition, an inter
`
`partes review may not be instituted if the petition is filed more than one year
`
`after the date on which a real party-in-interest is served with a complaint
`
`alleging infringement of the patent. 35 U.S.C. § 315(b). “Whether a party
`
`who is not a named participant in a given proceeding nonetheless constitutes
`
`a ‘real party-in-interest’ or ‘privy’ to that proceeding is a highly fact-
`
`dependent question.” Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48,756, 48,759 (Aug. 14, 2012) (citation omitted). The Office Patent Trial
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`IPR2013-00586
`Patent 6,738,799 B2
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`Practice Guide provides guidance regarding factors to consider in
`
`determining whether a party is a real party-in-interest. Considerations may
`
`include whether a non-party exercises control over a petitioner’s
`
`participation in the proceeding or whether a non-party is funding the
`
`proceeding or directing the proceedings. 77 Fed. Reg. at 48,759-60.
`
`Clouding notes that Google is a founding principal of Unified.
`
`Prelim. Resp. 13. Clouding further states:
`
`Petitioner accepts money from others who pay Petitioner for
`filing inter partes review petitions in which Petitioner names
`itself as the sole real party in interest. The payments are the
`quid pro quo in exchange for the filing of the petitions and the
`scheme is intended to allow the true entity concerned about the
`underlying patent to avoid the estoppel effects of inter partes
`review should the patent survive.
`
`Prelim. Resp. 13-14. On the basis of the foregoing, Clouding alleges that
`
`Google is a real party-in-interest. Id. However, Clouding’s proffered
`
`evidence (see Prelim. Resp. 13-19) does not support those
`
`allegations. Clouding points to an article posted on Bloomberg L.P.’s
`
`website (Ex. 2001, 3), which states that Google “started Unified Patents”
`
`and an article posted on Unified’s website (Ex. 2005, 1), which states that
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`Google was a “[f]ounding member” of Unified. Clouding also refers to
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`another article on Unified’s website, which states that Unified “counters the
`
`risk and cost of patent troll litigation by protecting strategic technologies”
`
`(Ex. 2003, 2), but that does not show that Unified’s members are charged in
`
`exchange for filing inter parte reviews. Clouding’s proffered evidence does
`
`not demonstrate persuasively that Google is a principal of Unified, that
`
`Google has any control over the instant proceeding, or that Google is
`
`funding the instant proceeding. Therefore, Clouding fails to demonstrate
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`Patent 6,738,799 B2
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`that Google is a real party-in-interest for the purposes of § 312(a)(2) and
`
`§ 315(b).
`
`Because Clouding fails to demonstrate sufficiently that Google is a
`
`real party-in-interest, Clouding has not established that the Petition does not
`
`identify all real parties-in-interest for this proceeding as required by §
`
`312(a)(2). Furthermore, in failing to establish that Google is a real party-in-
`
`interest, Clouding also has failed to demonstrate that the Petition is barred
`
`under § 315(b) on the ground that the Petition was filed more than one year
`
`after Google was served with a complaint alleging infringement of the
`
`’799 Patent.
`
`D. The ’799 Patent
`
`The ’799 Patent is related to a method for file synchronization using a
`
`signature list. Ex. 1001, Title. In particular, the ’799 Patent discloses a
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`method for synchronizing the local copies of files on client computers to the
`
`current versions of the files on a network drive. Ex. 1001, 1:24-27.
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`According to the ’799 Patent, an object of the method is to provide a
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`mechanism by which a user can be provided automatically with a current
`
`version of a subscription file in an efficient manner. Ex. 1001, 3:36-41.
`
`This is accomplished by having a server computer monitor network files for
`
`changes, and then send users email notifications and updates when there is a
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`change to the files. Ex. 1001, 3:41-44.
`
`Of the challenged claims, claims 1, 12, 23, 30, 37, and 42 are
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`independent claims.
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`
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`Patent 6,738,799 B2
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`Claims 1 and 37 are exemplary of the claimed subject matter
`
`of the ’799 Patent, and are reproduced as follows (emphasis added):
`
`1. A method for a first computer to generate an update
`for transmission to a second computer that permits the second
`computer to generate a copy of a current version of a file
`comprised of a first plurality of file segments from a copy of an
`earlier version of the file comprised of a second plurality of file
`segments, such that each file segment corresponds to a portion
`of its respective file, the method comprising the steps of:
`
`for each segment of the current version of the file,
`
`(a) searching an earlier version of a signature list
`corresponding to an earlier version of the file for an old
`segment signature which matches a new segment signature
`corresponding to the segment;
`
`(b) if step (a) results in a match, writing a command in
`the update for the second computer to copy an old segment of
`the second computer’s copy of the earlier version of the file into
`the second computer’s copy of the current version of the file,
`wherein the old segment corresponds to the segment for which
`a match was detected in step (a); and
`
`(c) if step (a) results in no match, writing a command in
`the update for the second computer to insert a new segment of
`the current version of the file into the second computer’s copy
`of the current version of the file;
`
`wherein the new segment of the current version of the
`file is written into the update and the unchanged segment is
`excluded from the update; and
`
`wherein steps (a) through (c) are performed by the first
`computer, without interaction with the second computer, in
`response to the first computer detecting a change between the
`current version of the file and the earlier version of the file.
`
`37. A method for a first computer to provide updates for
`transmission to a second computer that permits the second
`computer to obtain most recent versions of files, the method
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`IPR2013-00586
`Patent 6,738,799 B2
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`comprising the steps of:
`
`(a) determining whether the second computer has a latest
`version of a file, wherein said determining is performed by the
`first computer without interaction with the second computer;
`
`(b) generating an update, if the second computer does not
`have a latest version of the file, wherein said generating is
`performed by the first computer without interaction with the
`second computer; and
`
`(c) transmitting the update from the first computer to the
`second computer.
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`E. Claim Construction
`
`Consistent with the statute and the legislative history of the Leahy-
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`Smith America Invents Act,6 the Board will interpret claims of an unexpired
`
`patent using the broadest reasonable construction in light of the specification
`
`of the patent. See Office Patent Trial Practice Guide, 77 Fed. Reg. at
`
`48,766; 37 C.F.R. § 42.100(b). Claims are to be given their broadest
`
`reasonable interpretation consistent with the specification, reading the claim
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`in light of the specification as it would be interpreted by one of ordinary skill
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`in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
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`2004).
`
`Unified argues the construction of “signature list,” “update,”
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`“command . . . to copy,” “command to insert,” “determining whether the
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`second computer has a latest version of a file and generating an update, if the
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`second computer does not have a latest version of a file,” “without
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`interaction,” and the preambles for the claims (collectively, “the previously
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`construed terms”) should be the construction given the terms by the Board in
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`6 Pub. L. 112-29, 125 Stat. 284, 329 (2011).
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`IPR2013-00586
`Patent 6,738,799 B2
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`IPR2013-00073. Pet. 14-16 (citing Ex. 1010 at 7-16). We provide a brief
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`analysis of the construction for each of the previously construed terms
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`below.
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`1.
`
`“signature list”
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`Unified proposes adopting the construction of a “signature list” as “a
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`collection (e.g., table) of representations of variable length segments of a
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`subject file, which representations serve to identify the segments from which
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`they are determined.” Pet. 14-15 (citing Ex. 1010 at 9). Clouding’s
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`proposed construction is that “a signature list is a collection (e.g., a table) of
`
`representations of variable length segments of a subject file, which
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`representations serve to identify the segments from which they are
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`determined,” for example, a table of hashes. Prelim. Resp. 9 (citing
`
`Ex. 1001, 8:18-20, 8:29-54, Fig. 4). Therefore, Unified and Clouding
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`propose the same construction for “signature list.”
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`Figure 4 of the ’799 Patent depicts an exemplary signature list
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`comprising a list of segment locations, sizes, and signatures. The
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`Specification of the ’799 Patent does not provide any specific definition of
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`how the segment identifiers are determined and suggests that the
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`determination may use a hashing method, signature algorithm, or cyclic
`
`redundancy check. Ex. 1001, 8:20-28. Therefore, we agree with Unified
`
`and Clouding that a “signature list” should be construed as 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
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`determined.
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`IPR2013-00586
`Patent 6,738,799 B2
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`2.
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`“update”
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`Unified proposes adopting the construction of “update” as
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`“information for updating a file or an up-to-date version of a file.” Pet. 15
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`(citing Ex. 1010 at 10). Clouding’s proposed construction is that an
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`“update” is “an item that allows a second computer to build a current version
`
`of a file from a local copy of that file.” Prelim. Resp. 10-11 (citing
`
`Ex. 1001, 1:24-27; 10:15-22; 11:60-12:13).
`
`The claim term “update” has the following dictionary definition:
`
`“current information for updating something” or “an up-to-date version,
`
`account, or report.”7 Although the ’799 Patent provides examples where a
`
`second computer maintains a version of the file, suggesting that, in some
`
`cases, an “update” could be limited to “information for updating a file,” we
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`do not see, nor does Clouding point to, any definition in the Specification of
`
`the ’799 Patent excluding a construction encompassing an up-to-date version
`
`of a file. Therefore, in the context of file synchronization, we construe the
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`claim term “update” broadly, but reasonably, as information for updating a
`
`file or an up-to-date version of a file.
`
`3.
`
`“command . . . to copy”
`
`Each of claims 1, 12, 23, and 30 recites the following claim phrase:
`
`“writing a command in the update for the second computer to copy an old
`
`segment of the second computer’s copy of the earlier version of the file into
`
`the second computer’s copy of the current version of the file.” Ex. 1001,
`
`claims 1, 12, 23, 30 (emphasis added). Hereinafter, we refer to this claim
`
`phrase as “command . . . to copy.”
`
`
`7 MERRIAM-WEBSTER DICTIONARY, http://www.merriam-
`webster.com/dictionary/update (last visited Feb. 11, 2014) (emphasis added).
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`Unified proposes adopting the construction of “command . . . to copy”
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`as “an instruction that causes the computer to duplicate information or data.”
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`Pet. 15 (citing Ex. 1010 at 11). Clouding argues the only construction of
`
`“command . . . to copy” that is consistent with the language of the claim is a
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`plain meaning “that a command to copy be written into the update.” Prelim.
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`Resp. 4-7. Clouding points to examples in the Specification of the ’799
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`Patent, which Clouding asserts support its position that the claim phrase
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`“command . . . to copy” requires that “a command to copy be written in the
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`update.” Prelim. Resp. 5-7 (citing Ex. 1010 11:19-23; 11:47-12:13; Figs 10
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`and 11).
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`We note that the recited language merely requires that a command
`
`that causes the second computer to copy a portion of a file be written in the
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`update. The claim does not limit the command to a specific format.
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`Therefore, we broadly, but reasonably, construe “command . . . to copy” as
`
`“an instruction that causes the computer to duplicate information or data.”
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`4.
`
`“command . . . to insert”
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`Each of claims 1, 12, 23, and 30 recites the following claim phrase:
`
`“writing a command in the update for the second computer to insert a new
`
`segment of the current version of the file into the second computer’s copy of
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`the current version of the file.” Ex. 1001, claims 1, 12, 23, 30 (emphasis
`
`added). Hereinafter, we refer to this claim phrase as “command . . . to
`
`insert.”
`
`Unified proposes adopting the construction of “command . . . to
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`insert” as “an instruction that causes the computer to put or introduce certain
`
`information or data into another file.” Pet. 15 (citing Ex. 1010 at 13-14).
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`Clouding does not present a proposed construction of “command . . . to
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`insert.”
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`Similar to the claim phrase “command . . . to copy,” the claim
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`language of the phrase “command . . . to insert” does not limit the claimed
`
`“command” to any specific format or form written in the update file for
`
`instructing the second computer to perform the function “to insert.” The
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`claim term “insert” ordinarily is understood as “to put or introduce into the
`
`body of something.”8
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`Therefore, for purposes of this decision, in the context of the
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`Specification of the ’799 Patent and the claimed subject matter, we construe
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`the claim phrase “command . . . to insert” to mean an instruction that causes
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`the computer to put or introduce certain information or data into another file.
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`5.
`
`“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 the
`file”
`
`Unified proposes adopting the construction of “determining whether
`
`the second computer has a latest version of a file” and “generating an
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`update, if the second computer does not have a latest version of a file” as not
`
`requiring the second computer to possess some version of the file prior to
`
`“transmitting the update from the first computer to the second computer.”
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`Pet. 15 (citing Ex. 1010 at 14). Clouding asserts the plain meaning of these
`
`phrases requires “the second computer [to] currently possess some version
`
`of the file.” Prelim. Resp. 7. Clouding argues “[b]y articulating a process
`
`that requires a first computer to determine whether a second computer has a
`
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`8 MERRIAM-WEBSTER DICTIONARY, http://www.merriam-
`webster.com/dictionary/insert (last visited Feb. 11, 2014).
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`copy of a file (i.e., a latest version of that file), claims 37 and 42 necessarily
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`impl[y] that the second computer must already possess some version of the
`
`file.” Id. To support its contention, Clouding directs our attention to the
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`Specification of the ’799 Patent (specifically, “‘the present invention
`
`involves the synchronization of the local copies of files on user’s [sic] client
`
`computer hard disk to the current versions of the files on a network drive’”),
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`and to its discussion regarding the “copy command.” Prelim. Resp. 7-8
`
`(quoting Ex. 1001, 1:24-27).
`
`The portion of the Specification of the ’799 Patent cited by Clouding
`
`does not provide a specific definition that supports Clouding’s proposed
`
`construction to require the additional limitation. Nothing in the claim or the
`
`Specification of the ’799 Patent requires that a prior version must exist
`
`already at the second computer. In a case where no copy of the relevant file
`
`exists at the second computer, the recited determining step would determine
`
`that the second computer does not have a latest version (or any version) of a
`
`file, resulting in the generating step generating an update, which we have
`
`construed as information for updating a file or an up-to-date version of a file.
`
`Requiring the second computer to have a copy of the file would be importing
`
`a limitation from the specification into the claim, which we decline to do.
`
`See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (“[L]imitations
`
`are not to be read into the claims from the specification.”).
`
`Therefore, for purposes of the decision, we determine the phrases
`
`“determining whether the second computer has a latest version of a file” and
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`“generating an update, if the second computer does not have a latest version
`
`of the file” do not require that the second computer has a copy of the file.
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`6.
`
`“without interaction”
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`Unified proposes adopting the construction of “without interaction” as
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`“limiting the interaction between first and second computers only as
`
`specifically recited in the claims.” Pet. 16 (citing Ex. 1010 at 15-16).
`
`Clouding does not present a proposed construction of “without interaction.”
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`We agree with Unified’s proposed construction because it is
`
`consistent with the claim language. Specifically, the claims do not require
`
`the various computer systems to operate completely independently of one
`
`another but only require that a system take certain actions without
`
`interaction from another system. For example, the limitation “determining
`
`whether the second computer has a latest version of a file, wherein said
`
`determining is performed by the first computer without interaction with the
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`second computer,” recited in claim 37, merely limits the first computer’s
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`interaction with the second computer in the context of determining whether
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`the second computer has a latest version of a file. By comparison, step (c) of
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`claim 37 does not recite “without interaction,” and, thus, the first computer
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`may interact with the second computer when transmitting the update to the
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`second computer (see step (c) of claim 37). For purposes of the decision, we
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`determine “without interaction” merely limits the interaction between first
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`and second computer systems where specifically recited in the claims.
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`7.
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`The Preambles
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`Unified proposes adopting the determination that the preambles of
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`claims 1, 23, and 37 are limiting. Pet. 16 (citing Ex. 1010 at 16). Clouding
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`does not present a proposal regarding treatment of the preambles.
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`The language in each preamble provides antecedent basis for many of
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`the important terms in the respective claim body (e.g., “a first computer,”
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`“an update,” “second computer,” “a copy of a current version of a file,” and
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`“file segments”). Further, the language in each preamble expressly states
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`that the transmission of the update permits the second computer to obtain the
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`most recent version of a file, while the respective claim body may have set
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`forth such a limitation implicitly.
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`Because the bodies of independent claims 1, 23, and 37 depend on
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`their preambles for completeness, we determine that the preambles of those
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`claims are entitled to patentable weight. See Catalina Marketing Int’l., Inc.
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`v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002); Pitney Bowes,
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`Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (A
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`preamble limits the invention if it recites essential structure or steps, or if it
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`is “necessary to give life, meaning, and vitality” to the claim.).
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`II. ANALYSIS
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`A. Asserted Anticipation Ground Based on Williams
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`1.
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`Overview of Williams (Ex. 1006)
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`Williams describes a fine-grained incremental backup system and
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`process. Ex. 1006, 19:26-22:14. Figure 25 of Williams, reproduced below,
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`illustrates the backup process for two network computers.
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`As shown in Figure 25 of Williams, each of the network computers
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`(E1 and E2) has a version of the same file (X and Y). When file X on
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`computer E1 is modified, computer E2 will reconstruct a duplicate version
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`of file X using file Y and the incremental backup file D sent from computer
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`E1 to computer E2, rather than importing the entire file X from computer
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`E1. Ex. 1006, 19:29-34, 19:63-20:2.
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`For further improvement, Williams indicates that copies of the
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`previous versions of the file system should be retained. Ex. 1006, 21:62-65.
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`This means that computer E2 should maintain both file Y (the previous
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`version) and a duplicate version of file X. Id.
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`
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`As explained in Williams, computer E1 compares the hash of file Y
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`against the hash of file X to determine whether file X has changed. Ex.
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`1006, 19:44-46. If file X has changed, computer E1 partitions file X into
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`subblocks, and compares the hashes of these subblocks with the hashes of
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`file Y that are stored in shadow file S of computer E1, to find all identical
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`hashes. Ex. 1006, 19:48-51. “Identical hashes identify identical subblocks
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`in [file] Y that can be transmitted by reference.” Ex. 1006, 19:51-52.
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`Computer E1 then transmits the incremental backup file D as a mixture of
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`raw subblocks and references to subblocks whose hashes appear in the
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`shadow file S and which are known to appear as subblocks in file Y.
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`Ex. 1006, 19:52-55.
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`To reconstruct a duplicate version of file X from file Y and
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`incremental backup file D, computer E2 partitions file Y into subblocks and
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`calculates the hashes of subblocks. Ex. 1006, 19:66-20:1. “It then processes
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`the incremental backup information, copying subblocks that were
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`transmitted raw and looking up the references” in file Y. Ex. 1006, 20:2-5.
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`2.
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`Analysis of Asserted Ground of Anticipation by Williams
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`Unified argues that claims 1, 12, 23, 24, 30, 31, 37, and 42 are
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`anticipated by Williams and provides claim charts reading those claims on
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`Williams, as well as a declaration by Dr. Norman Hutchinson. Pet. 31-40
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`(citing Ex. 1007 ¶¶ 33, 55-57, 65).
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`In its Preliminary Response, Clouding argues that Unified fails to
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`establish a reasonable likelihood that claims 1, 12, 23, 24, 30, 31, 37, and 42
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`are anticipated by Williams. Prelim. Resp. 41-47, 50-51. In particular, with
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`respect to claims 1, 12, 23, 24, 30, and 31, Clouding asserts that “Williams
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`does not teach a command to copy or a command to insert.” Prelim. Resp.
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`41-47. Regarding claims 37 and 42, Clouding argues Williams “does not
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`teach determining whether the second computer has a latest version of a file
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`and generating an update if the second computer does not have a latest
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`version of the file,” but rather “generates the update when the backup system
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`determines that a backup should be made.” Prelim. Resp. 50-51.
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`Upon review of Unified’s analysis and supporting evidence, we
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`determine that Unified has demonstrated that there is a reasonable likelihood
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`that it would prevail with respect to claims 1, 12, 23, 24, 30, 31, 37, and 42
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`on the ground that these claims are anticipated by Williams. We are not
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`persuaded by Clouding’s arguments, as they are based on narrow
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`interpretations of the disputed claim phrases, which we decline to adopt.
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`Furthermore, Clouding fails to consider Williams from the perspective of a
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`person of ordinary skill in the art. See In re Graves, 69 F.3d 1147, 1152
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`(Fed. Cir. 1995) (quoting In re LeGrice, 301 F.2d 929, 936 (CCPA 1962))
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`(“A reference anticipates a claim if it discloses the claimed invention ‘such
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`that a skilled artisan could take its teachings in combination with his own
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`knowledge of the particular art and be in possession of the invention.’”).
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`Clouding’s argument regarding claims 1, 12, 23, 24, 30, and 31 that
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`Williams does not describe the recited “command . . . to copy” is based on
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`Clouding’s proposed narrow claim construction, which we decline to adopt.
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`As discussed previously, we construe the claim phrase “command . . . to
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`copy” as an instruction that causes the computer to duplicate information or
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`data. Under the proper construction, the claim language does not limit the
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`claimed “command” to a specific format or form.
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`Clouding fails to recognize that, as explained in Williams, the
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`subblocks of file Y are duplicated in computer E2, and that is caused by the
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`instructions in the incremental backup file D. In that regard, Williams
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`describes that the incremental backup file D contains instructions that cause
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`the computer E2 to duplicate certain subblocks of file Y, so that a duplicate
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`version of file X is reconstructed from file Y and the incremental backup file
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`D, and computer E2 may maintain both file Y (the previous version) and the
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`duplicate version of file X. Ex. 1006, 19:26-22:14.
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`Additionally, Clouding’s arguments focus narrowly on limited
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`portions of Williams that merely contain the word “copy,” without
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`considering the entire disclosure of Williams’s fine-grained incremental
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`backup process relied upon by Unified. See, e.g., Prelim. Resp. 41-43
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`(citing Ex. 1006, 19:29-34, 22:1-6). Those arguments are misplaced because
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`the reference need not satisfy an ipsissimis verbis test to anticipate. See In re
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`Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
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`We have reviewed Unified’s arguments and the supporting citations,
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`and find them persuasive. We conclude that, on this record, Unified has
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`established a reasonable likelihood of prevailing on its anticipation challenge
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`to claims 1, 12, 23, 24, 30, and 31 based on Williams.
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`With respect to claims 37 and 42, Clouding’s argument again is based
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`on Clouding’s proposed narrow claim construction of “determining whether
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`the second computer has a latest version of a file” and “generating an
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`update, if the second computer does not have a latest version of the file,”
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`which we have not adopted. As previously discussed, we do not construe
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`these phrases as requiring that the second computer has a copy of the file.
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`Clouding argues the first computer cannot determine with certainty whether
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`the second computer has a latest version of a file prior to initiating a backup
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`procedure. Prelim. Resp. 50. Clouding further asserts Williams “generates
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`the update when the backup system determines that a backup should be
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`made.” Id. at 51.
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`As discussed above, Clouding fails to consider the portion of
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`Williams describing how a duplicate of the file is reconstructed from the file
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`stored on the second computer and the backup (or difference) file. Ex. 1006,
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`19:26-22:14. Clouding also fails to consider that Williams discusses
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`initiating a backup action only when the original file has changed. Ex. 1006,
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`19:49-50.
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`Therefore, we also find persuasive Unified’s arguments and
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`supporting citations regarding claims 37 and 42 and conclude that Unified
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`has established a reasonable likelihood of prevailing
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