`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`UNIFIED PATENTS, INC.
`SAP AMERICA INC.
`Petitioners
`v.
`CLOUDING IP, LLC
`Patent Owner
`____________
`Case IPR2013-000586
`Case IPR2014-00306
`Patent 6,738,799
`____________
`
`
`
`
`PATENT OWNER’S RESPONSE TO
`PETITIONS FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,738,799
`UNDER 35 USC §§ 316 AND 37 CFR §42.120
`
`
`
`
`
`
`
`
`
`Table of Contents
`1. Introduction ................................................................................................ 1
`
`2. Overview of U.S. Patent 6,738,799 ............................................................. 2
`
`3. Argument ..................................................................................................... 4
`
`A. Claims 37 and 42 Are Not Anticipated by Balcha. ................................. 4
`
`B. Claims 1, 5, 9, 10, 12, 16, 20, 21, 23, 24, 30, and 31 Are Patentable
`
`Over Balcha When Considered In Combination with Miller. ...................... 9
`
`C. Claims 6-8 and 17-19 are Patentable Over Balcha Even When
`
`Considered in Combination with Miller and Freivald. ............................... 22
`
`D. Claims 37 and 42 are Patentable Over Balcha When Considered in
`
`Combination with Freivald. ....................................................................... 24
`
`E. Claims 1, 12, 23, 24, 30, and 31 are Not Anticipated by Williams
`
`Because Williams Fails to Teach Writing in an Update a Command to Copy
`
`or a Command to Insert, as Required by the Claims. .................................. 26
`
`F. Claims 5-10 and 16-21 are Patentable in View of Williams When
`
`Considered in Combination with Miller. .................................................... 34
`
`G. Claims 37 and 42 are Not Anticipated by Williams. ............................ 37
`
`5. Conclusion ................................................................................................ 39
`
`
`
`
`
`
`
`
`
`ii
`
`
`
`
`
`Cases
`
`Table of Authorities
`
`Bayer Schering Pharm. AG v. Barr Labs., Inc.,
`575 F.3d 1341 (Fed. Cir. 2009) (Newman, J., dissenting) ......................... 17
`
`Ex parte Levy, 17 USPQ2d 1461 (Bd. Pat. App. & Inter. 1990) .................... 33
`
`In re Fine, 837 F.2d 1071 (Fed. Cir. 1988) .................................................... 37
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ............................. 10, 17, 35
`
`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008) ......... 9, 34
`
`Richardson v. Suzuki Motor Co., 868 F.2d 1226 (Fed. Cir. 1989) ..................... 8
`
`Verdegaal Bros. v. Union Oil Co. of California,
`814 F.2d 628 (Fed. Cir. 1987) ................................................................... 38
`
`W.L. Gore & Associates, Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) ...... 19, 36
`
`
`
`
`Regulations
`
`37 C.F.R. § 42.107(c) ...................................................................................... 1
`
`
`
`Other Authorities
`
`MPEP § 2112 ................................................................................................ 32
`
`MPEP § 2142 ................................................................................................ 21
`
`
`
`
`
`
`
`iii
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`
`
`
`2001
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`
`2002
`
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`2011
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`
`
`EXHIBIT LIST
`
`Decker, Susan, “Google, NetApp Sidestep Courts to Combat
`Patent Claims,” Bloomberg L.P., Oct. 13, 2013.
`
`Proof of Service on Google Inc., Stec IP v. Google Inc., civil action
`no. 12-cv-00639 (D. Del.).
`
`Unified Patents, Inc., “Unified Patents Challenges Clouding IP
`Patent Seeks to Push Patent Trolls Out of Cloud Storage,”
`September 17, 2013.
`
`Inter Partes Reexamination Proceeding Control No. 95/001,045,
`Decision Vacating Filing Date, p. 7-8, August 25, 2008.
`
`Unified Patents, Inc., “The Gloves Are Off: Unified Patents Inc.
`Unveils Its ‘NPE Deterrent’ Strategy.”
`
`Excerpt from File Wrapper of U.S. Application 10/452,156.
`
`Excerpt from File Wrapper of U.S. Application 09/303,958.
`
`Brin, Sergey et al., “Copy Detection Mechanisms for Digital
`Documents,” ACM International Conference on Management of
`Data (SIGMOD 1995), May 22-25, 1995, San Jose, California.
`
`Declaration of Prasant Mohapatra, Ph.D.
`
`Curriculum Vitae of Prasant Mohapatra, Ph.D.
`
`Transcript of Deposition of Norman Hutchinson, Ph.D., May 2,
`2014.
`
`iv
`
`
`
`Pursuant to 37 C.F.R. § 42.120, the Board’s Scheduling Order of March
`
`21, 2014, and the Order concerning Joinder with IPR2014-00306 dated May
`
`20, 2014, Patent Owner, Clouding IP, LLC, submits the following response to
`
`the Petitions filed by Unified Patents, Inc. and SAP America Inc. Submitted
`
`concurrently herewith is Patent Owner’s Continent Motion to Amend claim 42
`
`under 37 C.F.R. § 42.121.
`
`1. Introduction
`
`
`
`Trial was instituted with respect to Claims 1, 5-10, 12, 16-21, 23, 24,
`
`30, 37 and 42 of U.S. Patent 6,738,799 (the “’799 Patent”) (Ex. 1001). At the
`
`outset, it is noted that all the Board has determined to date is that there is a
`
`“reasonable likelihood” that Petitioners will prevail as to some grounds for
`
`which Petitioners sought review, and it should be remembered that this
`
`determination was made in the absence of any rebuttal testimony provided by
`
`the Patent Owner.1 The Board has not determined any claims of the ‘799
`
`Patent to be unpatentable.
`
`As demonstrated below, the Board should enter judgment in favor of the
`
`
`
`1 Patent Owners are prohibited from introducing rebuttal testimony prior to
`
`institution of inter partes review proceedings. 37 C.F.R. § 42.107(c).
`
`
`
`1
`
`
`
`Patent Owner because
`
`a. Claims 1, 12, 23, 24, 30, 31, 37, and 42 are not anticipated under 35
`
`U.S.C. § 102(e) by Williams, U.S. Patent 5,990,810 (Ex. 1006);
`
`b. Claims 5-10 and 16-21 are not obvious under 35 U.S.C. § 103(a) in
`
`view of Williams and Miller, U.S. Patent 5,832,520 (Ex. 1004);
`
`c. Claim 37 and 42 are not anticipated under 35 U.S.C. § 102(e) by
`
`Balcha, U.S. Patent 6,233,589 (Ex. 1003);
`
`d. Claims 1, 5, 9, 10, 12, 16, 20, 21, 23, 24, 30, and 31 are not obvious
`
`under 35 U.S.C. § 103(a) in view of Balch and Miller;
`
`e. Claims 6-8 and 17-19 are not obvious under 35 U.S.C. § 103(a) in
`
`view of Balcha, Miller and Freivald, U.S. Patent 5,898,836 (Ex.
`
`1005); and
`
`f. Claims 37 and 42 are not obvious under 35 U.S.C. § 103(a) in view
`
`of Balcha and Freivald.
`
`
`
`2. Overview of U.S. Patent 6,738,799.
`
`
`
`The ‘799 Patent describes systems and methods for generating update
`
`files that permit a computer to generate a current version of a file from a copy
`
`of an earlier version thereof. Ex. 1001 at Abstract; col. 3, ll. 45-49. To facilitate
`
`
`
`2
`
`
`
`this process, files are segmented and each segment is represented by a signature.
`
`Id. at col. 8, ll. 7 et seq. Signatures are representations of variable length
`
`segments of a subject file, which representations serve to identify the segments
`
`from which they are determined. Id. at Fig. 4; col.
`
`8, ll. 18-20, 29-54. Differences between a current
`
`version of a file and an earlier version thereof are
`
`determined using these signatures. See, e.g., Id. at
`
`10:5-14. Based on these differences, an update file
`
`is constructed. Id. at col. 10:66 – 11:50. The
`
`update file includes instructions (e.g., copy, insert) for a recipient computer to
`
`construct the current version of the subject file from its earlier version thereof
`
`and data included in the update file. Id. and see Fig. 11 (reproduced here).
`
`Once created, the update file is provided to the recipient computer, for example
`
`via email. Id. at 11:51-52.
`
`
`
`Importantly, for purposes of the present proceedings, one of the
`
`instructions included in the update file is a “command . . . to copy an old
`
`segment of the [receiving] computer’s copy of the earlier version of the file into
`
`the [receiving] computer’s copy of the current version of the file.” Id. at Claim
`
`1, 14:53-57; Claim 23, 16:61-65. Examples of such commands are illustrated
`
`
`
`3
`
`
`
`in Fig. 11, supra. Therefore, steps (b) in Claims 1, 12, 23, and 30 are properly
`
`understood as reciting the requirement of writing in the update, an instruction
`
`that causes the second computer to duplicate information or data from an old
`
`segment of the second computer’s copy of the earlier version of the file into the
`
`second computer’s copy of the current version of the file, wherein the old
`
`segment corresponds to the segment for which a match was detected in step (a).
`
`Ex. 2009 at ¶ 13.
`
`
`
`3. Argument
`
`A. Claims 37 and 42 Are Not Anticipated by Balcha.
`
`Claims 37 and 42 recite “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.”2 Ex 1001 at 18:32-37 and 18:56-19:7.
`
`
`2 In construing this term the Board incorrectly concluded that the claims “do
`
`not require that the second computer has a copy of the file.” Decision,
`
`Institution of Inter Partes Review, Paper 9 at 13. As explained in Patent
`
`Owner’s Preliminary response, the plain meaning of this limitation, and the
`
`one that the Board should adopt when construing the claim, is that the second
`
`
`
`4
`
`
`
`Balcha fails to teach such features, Ex. 2009 at ¶ 14, and, therefore, Balcha
`
`cannot anticipate Claims 37 and 42.
`
`Balcha discloses sharing changes between two base files wherein a change
`
`to a first version of the base file indicates that a second version of the same base
`
`file is now not the same as the first version of the base file. Ex. 1003 at 4:52-67.
`
`
`
`computer must currently possess some version of the file. Indeed, the literature
`
`
`
`recognizes that where the subject of “updates” is concerned (Claims 37 and 42
`
`being directed to methods for providing such updates), it is inherent that “an
`
`old version of the file already exist[s] at the other end of the link.” Ex. 1016 at
`
`p. 59. By articulating a process that requires a first computer to determine
`
`whether a second computer has a copy of a file (i.e., a latest version of that file),
`
`claims 37 and 42 necessarily implies that the second computer must already
`
`possess some version of the file. Ex. 1001 at col. 1, ll. 24-27.
`
`
`
`
`
`5
`
`
`
`As explained by Balcha with reference to Figure 1, provided above:
`
`Each of servers 22 and 24 maintain a copy of a base
`file 21, 27, respectively and are interconnected via a
`network 26. Base files 21, 27 should be
`identical to one another and thus changes
`made to one copy should eventually be
`reflected in the other copy. A base signature
`file, as described in more detail herein, is generated
`on one of the servers 22, 24 and copied to the other
`server. The base signature file is maintained on server
`22 as file 20, and maintained on server 24 as file 28.
`Either base file 21 or 27 can be modified at either
`server.
`
`Upon detection of a modification to the file,
`the detecting server, for example server 22, uses the
`respective base signature file, for example, base
`signature file 20, to generate a new delta file, and
`communicates the delta file over network 26 to
`server 24. Server 24 then uses the delta file to update
`the base file 27, and recalculates the base signature
`file 28.
`
`Id. at 4:52-67 (emphasis added).
`
`Based on this disclosure of Balcha, the Board concluded, “[f]rom the
`
`point of view of the computer generating the delta file, the system has
`
`
`
`6
`
`
`
`determined that the base file is not ‘a latest version’ of the file.” Decision,
`
`Institution of Inter Partes Review, Paper 9 at 23. This conclusion is incorrect as
`
`Balcha only discloses detecting a modification to the file without regard to
`
`whether the modified file is, indeed, the latest version of the file. Ex. 2009 at ¶
`
`16. When a modification of base file 21 is detected by server 22, server 22
`
`generates a new delta file and communicates that delta file to server 24, which
`
`then proceeds to modify base file 27 using the delta file. Id. However, the
`
`detection of the modification of base file 21 is in no way related to, or
`
`dependent upon, a determination that base file 21 is the latest version of the
`
`base file. Id. Instead, Balcha only discloses detecting whether a base file has
`
`been modified, regardless of when that modification may have occurred relative
`
`to other copies of the same base file. Id.
`
`Dr. Mohapatra explains the significance of this difference is
`
`demonstrated by considering situations in which base file 27 has been modified
`
`more recently than base file 21 and, as a consequence, base file 27 is the latest
`
`version of the file. Id. at ¶ 17. If a modification of base file 21 is detected,
`
`Balcha will perform the updating of base file 27 to be consistent with base file
`
`21 even though base file 27 is the latest version of the file. Id. In such a
`
`circumstance, the “updating” of Balcha will serve to inappropriately overwrite
`
`
`
`7
`
`
`
`the modifications made to base file 27 and adversely modify the latest version
`
`of the base file (i.e., base file 27) to an older version of the base file (i.e., base
`
`file 21). Id. Such a circumstance is all the more likely in Balcha because “[b]ase
`
`files 21, 27 should be identical to one another and thus changes made to one
`
`copy should eventually be reflected in the other copy.” Id. citing Ex. 1003 at
`
`4:54-56 (emphasis added). The method and computer readable program code
`
`of claims 37 and 42, respectively avoids problems such as the inappropriate file
`
`updating described by Dr. Mohapatra by determining whether the second
`
`computer has a latest version of a file and, in this way, establishes that the latest
`
`version of the file will not be overwritten by changes to a file that occurred
`
`previously to the changes of the latest version of the base file simply because the
`
`files are not the same (i.e., one of the files has been modified). Id.
`
`To anticipate a claim, “The identical invention must be shown in as
`
`complete detail as is contained in the … claim.” Richardson v. Suzuki Motor
`
`Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). Here, Balcha fails to meet this
`
`requirement. Stated differently, Balcha fails to disclose “within the four corners
`
`of the document not only all of the limitations claimed but also all of the
`
`limitations arranged or combined in the same way as recited in the claim,
`
`[hence] it cannot be said to prove prior invention of the thing claimed and,
`
`
`
`8
`
`
`
`thus, cannot anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc. v. VeriSign,
`
`Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
`
`Additionally, neither the Petition nor Dr. Hutchinson’s declaration
`
`demonstrate that Balcha teaches all of the elements of claims 37 and 42 in the
`
`manner in which those elements are arranged in the claim. Instead, Dr.
`
`Hutchinson states only that, “[b]ecause [Balcha indicates] base files 21 and 27
`
`were initially maintained in a consistent state and should remain identical to
`
`one another, a change to either file indicates to the detecting server that the
`
`disclosed differencing process must be initiated.” Ex. 1007 at ¶ 34. Claims 37
`
`and 42, however, require “determining whether a second computer has a latest
`
`version of a file.” The forgoing comments by Dr. Hutchinson fail to
`
`demonstrate how Balcha teaches this feature.
`
`Hence, for at least these reasons, Balcha fails to disclose all of the features
`
`of claims 37 and 42 and, consequently, cannot anticipate claims 37 and 42.
`
`
`
`B. Claims 1, 5, 9, 10, 12, 16, 20, 21, 23, 24, 30, and 31
`Are Patentable Over Balcha When Considered In
`Combination with Miller.
`
`The key to supporting any rejection under Section 103 is the clear
`
`articulation of the reasons why the claimed invention would have been obvious.
`
`
`
`9
`
`
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Even if a person of ordinary
`
`skill in the art were to combine the teachings of Balcha and Miller, the resulting
`
`combination would not yield the invention recited in any of independent
`
`claims 1, 12, 23 or 30. For example, claims 1, 12, 23, and 30 each specify:
`
`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.
`
`A plain meaning reading of this requirement demands that a command to
`
`copy be written in the update that is used by the second computer to generate a
`
`copy of the current version of the file. Ex. 2009 at ¶ 19. The Balcha-Miller
`
`combination fails to teach or suggest same. Consequently, claims 1, 5, 9, 10,
`
`12, 16, 20, 21, 23, 24, 30, and 31 are patentable over the combination of
`
`Balcha and Miller.
`
`
`
`As illustrated in Figure
`
`3, reproduced here, Balcha,
`
`describes a scheme for
`
`reflecting the differences
`
`between two files (a base file
`
`and a revised file), within a
`
`
`
`10
`
`
`
`so-called “delta file.” In particular, the delta file is created based on a
`
`comparison of a base signature file (which represents the base file), a revised
`
`signature file (which represents the revised file) and the revised file itself. Ex.
`
`1003 at col. 7, l. 46 – col. 8, l. 6. Conveniently, Balcha provides examples of a
`
`base file, a base signature file, a revised file, a revised signature file and a
`
`resulting delta file. One such example, taken from col. 13, ll. 50 et seq., is
`
`reproduced below.3
`
`
`As shown, the delta file includes certain “primitives,” which can be used to
`
`generate a copy of the revised file from the delta file. Specifically, Balcha uses
`
`primitives for “insert,” “modify,” and “delete.” Id. at col. 3, ll. 55-56. The
`
`
`
`3 In this example, “the periods used to delineate certain characters are not part
`
`of the file itself, and are used merely to illustrate certain logical distinctions
`
`between groups of characters.” Id. at col. 13, ll. 40-42.
`
`
`
`
`
`11
`
`
`
`operation of these primitives is explained, with reference to the above example,
`
`at col. 14, ll. 5-19:4
`
`
`As shown in this example, the delta file requires that the base file
`
`(ABCDE.FGHIJ.KLMNO.PQRST.UVWXY.Z) be first modified by inserting,
`
`at a position 5 characters from the initial pointer position, a 3-character string,
`
`“XYZ.” Next, beginning at the then-current pointer position, a 5-character
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`string is deleted. Id. at 14:5-19. Thereafter, and beginning at a location 5
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`characters from the then-current pointer position, a 6-character string,
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`“PAABST” is inserted. Id. Finally, the pointer position is advanced 5 characters
`
`and a 5-charater string is deleted. Id. In this way, a new version of the old file is
`
`created wherein new data is added to the old version of the file via the “insert”
`
`
`4 In this exposition, the “⌃” character indicates the position of a pointer in the
`
`base file at which the corresponding primitive is applied. Id. at col. 13, l. 65 –
`
`col. 14, l. 1.
`
`
`
`12
`
`
`
`primitive, undesired data is deleted from the old version of the file via the
`
`“delete” primitive, and data within the old version of the file is modified via the
`
`“modify” primitive. Id.
`
`Thus, in the Balcha process, data within the old version of the file that is
`
`not modified or deleted remains in the new version of the file with no need to
`
`copy that information from the old version of the file to the new version of the
`
`file. Ex. 2009 at ¶21. Consequently, Balcha has no need for and does not write
`
`a copy “primitive” (or any other instruction) into the delta file to effect the
`
`copying of data from the old version of the file into the new version of the file.
`
`Id. Predictably then, Balcha neither teaches nor suggests writing such a
`
`command or other instruction for duplication into the delta file. Id.
`
`Dr. Hutchinson reads the above-described example from Balcha as
`
`calling for “commands embedded in the delta file [to] cause the unchanged bits
`
`to be effectively copied into the revised file.” Ex. 1007 at ¶ 34. This
`
`conclusion is based on Balcha’s purported teaching of creation of a new file.
`
`However, Dr. Hutchinson later admitted in his deposition, “whether the base
`
`file is preserved and a new revised file is created or whether the base file is
`
`changed into the revised file is not immediately clear from this description.
`
`Both implementations might be possible.” Ex. 2011 at 14:17-21. Dr.
`
`
`
`13
`
`
`
`Hutchinson goes on to state his belief that Balcha is not “sufficiently precise to
`
`make a determination as to whether it [Balcha] is creating a new file or revising
`
`the original file.” Id. at 15:12-15. As such, Balcha cannot be relied upon to
`
`teach the creation of a new revised file. Thus, the logical underpinning of Dr.
`
`Hutchinson’s conclusion that Balcha calls for “commands embedded in the
`
`delta file [to] cause the unchanged bits to be effectively copied into the revised
`
`file” (Ex. 1007 at ¶ 34) is fundamentally flawed.
`
`Furthermore, and contrary to Dr. Hutchinson’s original conclusion,
`
`Balcha does not “effectively copy” over any bits from an old version of a file to a
`
`revised version of the file. Ex. 2009 at ¶ 22. Instead, the old file is converted to
`
`the revised file directly through execution of the insert and delete instructions
`
`included in the delta file. Id. No copying (or effective copying) or other
`
`duplication of this kind is performed or required because the revised version of
`
`the file is itself directly produced from the old version of the file and the delta
`
`file and anything not deleted from, or modified within, the old version of the
`
`file remains in the revised version of the file. Id. citing Ex. 1003 at 13:64 – 65.
`
`To the extent Petitioners may argue that “transitory copies” of files or
`
`portions thereof may be ephemerally created in one or more memories of a
`
`computer system during the operations described by Balcha, such “copies” do
`
`
`
`14
`
`
`
`not meet the requirements of Claims 1, 12, 23, and 30. These claims require
`
`that in the event of a match between “an old segment signature” and “a new
`
`segment signature,” an instruction that causes the second computer to duplicate
`
`the second computer’s copy of the old segment of the file into the second
`
`computer’s copy of the current version of the file be written into the update.
`
`The creation of any “transitory copies” of files or portions thereof (e.g., copies
`
`of files that may be temporarily resident in volatile memory), on a computer are
`
`not equivalent to or a result of writing a “command to copy” (or other
`
`instruction that causes the computer to duplicate information or data) that is
`
`written in the Balcha delta file. It is merely the mechanism by which a
`
`computer processor is required to operate on data.
`
`Thus, Balcha does not describe writing a command to copy or its
`
`equivalent into an update file nor is the writing of such a command to the
`
`update file inherent in Balcha. Id. at ¶ 21. Considering these teachings in
`
`combination with those of Miller does not alter this situation.
`
`
`
` Miller describes a procedure for revising large computer files using
`
`“difference files” or DIFF files – i.e., files containing indications of the
`
`differences between the large computer files and a preexisting computer file. Ex.
`
`
`
`15
`
`
`
`1004 at col. 1, ll. 10-15. An overview of that
`
`process is illustrated in Miller’s Figure 1,
`
`shown here.
`
`Miller’s DIFF file includes primitives
`
`for “copy,” “insert,” and “insert/copy”
`
`operations, which impart directives for
`
`handling stings that appear in new and old
`
`copies of the subject file. See, e.g., Ex. 1004
`
`at Fig. 5A. Importantly, from Miller’s
`
`perspective, the DIFF file must indicate changes between the old file and the
`
`new file in a minimum number of bytes so that the DIFF file is the smallest
`
`such file possible. Id. at col. 2, ll. 21-24, 31-33. Failing to use a file that was as
`
`small as possible would defeat Miller’s very objective. Ex. 2009 at ¶ 24.
`
`
`
`The Petitioners alleges that, “[a] skilled artisan would have recognized
`
`that Miller’s commentary about what was generally known in the art
`
`concerning use of delta files to update software would be fully applicable to and
`
`predictably combined with Balcha’s method for updating data files.” See, e.g.,
`
`Unified Patents’ Petition at p. 17. Dr. Hutchinson’s declaration, Ex. 1007, is
`
`cited in support of this proposition, but neither the declaration nor either
`
`
`
`16
`
`
`
`Petition provides any analysis concerning the resulting outcome of the
`
`proposed combination of teachings.
`
`Obviousness requires more than a mere showing that the prior art
`
`includes separate references covering each separate limitation in a claim under
`
`examination. KSR Int’l, supra, at 418. Indeed, obviousness requires the
`
`additional showing that a person of ordinary skill at the time of the invention
`
`would have selected and combined those prior art elements in the normal
`
`course of research and development to yield the claimed invention. Id. at 421;
`
`see also Bayer Schering Pharm. AG v. Barr Labs., Inc., 575 F.3d 1341, 1350
`
`(Fed. Cir. 2009) (Newman, J., dissenting) ("The statutory criterion is whether
`
`the invention would have been obvious to persons of ordinary skill at the time
`
`of the invention, not whether it is sufficiently simple to appear obvious to
`
`judges after the discovery is finally made . . . ."). The present Petitions lack any
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`such showing.
`
`
`
`This failure is not an oversight by Petitioners; for if one considers the
`
`true result of the combination of the Balcha-Miller teachings, it is readily
`
`apparent that this result is something other than the invention recited in
`
`independent claims 1, 12, 23, and 30 of the ‘799 Patent. Stated differently,
`
`Petitioners have carefully avoided providing a description of the result of the
`
`
`
`17
`
`
`
`proposed combination of Balcha and Miller, for once such an analysis is
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`undertaken one can only conclude that claims 1, 12, 23, and 30, and their
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`respective dependent claims, remain patentable over these references.
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`
`
`Notice first that Petitioners do not contend that Balcha teaches, “writing
`
`[in the difference file] a command . . . to copy an old segment . . . of the earlier
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`version of the file into . . . the current version of the file,” as recited in claims 1,
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`12, 23, and 30. Indeed, it is apparent from the example reproduced above that
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`Balcha never uses a command to copy in the delta file.
`
`Dr. Hutchinson attempts to finesse this point by stating,
`
`I also note that in the example shown at column 14 of
`Balcha the offsets on the delete and insert commands cause
`the skipped data bits to be carried over, or copied into the
`revised updated file. In other words, the commands
`embedded in the delta file cause the unchanged bits to be
`effectively copied into the revised file. 5
`
`This is factually incorrect. Ex. 2009 at ¶ 22. Balcha does not “effectively copy”
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`over any bits from an old version of a file to a revised version of a file. Id.
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`Instead, as shown quite clearly in the very example cited by Dr. Hutchinson,
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`the old file is converted to the revised file directly through execution of the insert
`
`
`
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`5 Ex. 1007 at ¶ 34.
`
`
`18
`
`
`
`and delete instructions included in the delta file. No copying (or effective
`
`copying) is performed or required because the revised file is itself directly
`
`produced from the old file and the delta file. Id., and see Ex. 1003 at col. 13, ll.
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`64 – 65 (“The following shows the application of the primitives in the delta file
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`to a base file to generate a revised file.”) (emphasis added).
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`Miller does teach the inclusion of a copy command in a DIFF file, Ex.
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`1004 at col. 8, ll. 27-29, but Miller also stresses the importance of using the
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`smallest DIFF file possible to reflect the changes between the old and new
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`versions of the subject file. Id. at col. 2, ll. 31-33. When seeking to combine the
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`teachings of references under Section 103, it is the entirety of the teachings that
`
`must be considered. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d
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`1540 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). Hence, Petitioners
`
`cannot simply ignore or overlook the fact that Miller’s goal is to produce a
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`smallest possible DIFF file, and indeed one of ordinary skill in the art would
`
`recognize that Balcha has proposed a difference file exactly in line with that
`
`goal.6 By avoiding the use of a copy command, Balcha necessarily reduces the
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`number of bytes needed to convey information in the difference file. Ex. 2009
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`
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`6 “The present invention reduces the amount of data necessary to reflect
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`differences between two files . . . .” Ex. 1003 at col. 4, ll. 1-2.
`
`
`
`19
`
`
`
`at ¶ 21. Hence, when combining the teachings of Balcha and Miller, as
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`proposed by Petitioners, it would be natural for a person of ordinary skill in the
`
`art to adopt the Balcha approach, and eliminate the need for a copy command.
`
`Id. at ¶ 24. Doing so would be in line with the stated goals of both cited
`
`references and indeed one would imagine the goal of the hypothetical person of
`
`ordinary skill inasmuch as reducing the number of bytes required in the
`
`difference file would save on transmission costs. Id., cf. Ex. 1004 at col. 1, ll.
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`65-67 (noting that even compression schemes which reduce file sizes of up to
`
`40% may still leave resulting files that represent substantial transmission costs
`
`for distributers of those files).
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`Additionally, according to Dr. Mohapatra, there is no logical rational for
`
`a skilled artisan to add the “copy” primitive of Miller to the process of Balcha
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`because execution of the “copy” primitive within the process of Balcha would
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`require the coping of data into the updated file that was already included
`
`within the file, thereby causing redundant data to be unnecessarily and
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`illogically added to the updated version of the file. Ex. 2009, at ¶ 24.
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`Additionally, such redundancy would necessarily increase the memory and
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`processing costs associated with the storage and processing of the revised file, a
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`concept inapposite to both Balcha and Miller. Id.
`
`
`
`20
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`
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`“To reach a proper determination under 35 U.S.C. § 103, [a fact finder]
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`must step backward in time and into the shoes worn by the hypothetical
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`‘person of ordinary skill in the art’ when the invention was unknown and just
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