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 IPR2013-00586
`Case IPR2014-00306
`Patent 6,738,799
`
`
`PETITIONERS’ CONSOLIDATED REPLY
`
`TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS INC.
`SAP AMERICA, INC.,
`
`Petitioners,
`
`v.
`
`CLOUDING IP, LLC
`
`Patent Owner.
`
`
`Case IPR2013-00586
`Case IPR2014-00306
`Patent 6,738,799
`
`
`PETITIONERS’ CONSOLIDATED REPLY
`
`TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`I.
`
`Introduction
`
`The Patent Owner’s Response presents arguments that this Board has now
`
`rejected twice and that even its own expert has refuted. For these reasons, and
`
`others described below, the Board should cancel all contested claims in this
`
`proceeding.
`
`Petitioners Unified Patents, Inc. (“Unified”) and SAP America, Inc. (“SAP”)
`
`set forth several unpatentability grounds in their Petitions,1 and Clouding IP, LLC
`
`(“Clouding” or “Patent Owner”) responded in its Preliminary Response. The
`
`Board instituted trial, rejecting Clouding’s arguments. Clouding’s Response
`
`simply restates, usually verbatim, the same arguments the Board already rejected
`
`twice: once in this proceeding and once in IPR2013-00073. Nevertheless, the
`
`Patent Owner attempts to bolster its arguments with the declaration of Dr. Prasant
`
`Mohapatra. But, under cross-examination, Dr. Mohapatra clearly and absolutely
`
`refuted nearly all of Clouding’s positions, even contradicting his own declaration.
`
`As such, the Board should find claims 1, 5-10, 12, 16-21, 23, 24, 30, 31, 37 and 42
`
`unpatentable based upon the instituted grounds.
`
`
`1
`For simplicity, and because the petitions filed by Unified and SAP are
`
`substantially the same, only the Petition filed by Unified will be hereinafter
`
`referenced.
`
`1
`
`
`
`
`II. Claims 37 and 42 Are Anticipated by Balcha
`
`Clouding makes a single patentability argument over Balcha for claims 37
`
`and 42 that both the Board rejected and Clouding’s own expert rejected under
`
`cross-examination. Clouding argues that Balcha does not disclose “determining
`
`whether a 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” because
`
`“Balcha only discloses detecting a modification without regard to whether the
`
`modified file is, indeed, the latest version of the file.” Response, at 7. In
`
`particular, Clouding argues that, because the server computer detects a
`
`modification of a file residing locally (and not on the client computer), the server
`
`cannot know whether the client’s version of the file had been independently
`
`modified previously, in which case the client would have the latest version of the
`
`file. Id. Patent Owner previously made this argument, (Preliminary Response, at
`
`20-24), and the Board properly rejected it as being “based on narrow
`
`interpretations of the disputed claim phrases, which [the Board] decline[d] to
`
`adopt” (Institution Decision, at 23-24).
`
`2
`
`
`
`
`Clouding now seeks to support its argument with the declaration of Dr.
`
`Mohapatra,2 but Dr. Mohapatra has admitted that Balcha discloses “determining
`
`whether a second computer has a latest version of a file”:
`
`Q. Well, in my hypothetical, sir, the file is stored on server and client
`as 21 and 27 in figure 1. Do you see that?
`A. Yes.
`Q. Okay. And in my hypothetical, 21 and 27 are the same.
`A. Yes.
`. . .
`Q. Then 27 remains the same but 21 is updated.
`A. Yes.
`. . .
`
`
`2
`On page 9, Clouding argues that Petitioners and/or Dr. Hutchinson failed to
`
`demonstrate that Balcha discloses “determining whether a second computer has a
`
`latest version of a file” because Dr. Hutchinson never said exactly those words.
`
`Both the Petition and Dr. Hutchinson’s declaration, however, demonstrate that
`
`Balcha discloses this limitation. See, e.g., Petition, at 26-28; Ex. 1007 (IPR2013-
`
`00586), at ¶ 34. To the extent that Dr. Hutchinson’s opinions can be
`
`misinterpreted as lacking such an opinion, Dr. Hutchinson has supplemented his
`
`testimony to state that Balcha discloses “determining whether a second computer
`
`has a latest version of a file.” Ex. 1018, at ¶ 21.
`
`3
`
`
`
`
`Q. [M]y question is in those circumstances, when the server detects
`the change to 21, is 21 the latest version of the file?
`A. Yes.
`Q. And in those circumstances, 27 would not be the latest version of
`the file; correct?
`A. Yes.
`
`Ex. 1019, at 18:5-13.
`
`Clouding relies upon a distinction that simply does not exist between Balcha
`
`and the ‘799 Patent. Clouding argues that Balcha does not ensure that the client’s
`
`file had not been independently modified, but the ‘799 Patent operates in the exact
`
`same way, as Clouding’s expert also admitted. Dr. Mohapatra testified that, in the
`
`system disclosed in the ‘799 patent and recited by claims 37 and 42, the file on the
`
`client may be independently modified to be the latest version. See Ex. 1019, at
`
`24:21-25:3 (“Q. So if a file on the client in the ‘799 patent is updated after an
`
`update is made to the server subscription file, then the --when the server sends --
`
`then the server version of the subscription file is not the latest version of the file;
`
`correct? A. Yes.”) (emphasis added). In this regard, the ‘799 patent and Balcha
`
`are identical. As such, whether or not the client computer file in Balcha can be
`
`independently modified, Balcha anticipates claims 37 and 42 because Balcha’s
`
`disclosure is indistinguishable to that of the ‘799 patent’s description and claims.
`
`Ex. 1018, at ¶ 21.
`
`4
`
`
`
`
`III. Claims 37 and 42 are Obvious Over Balcha in View of Freivald
`
`Although previously rejected by the Board, Clouding nevertheless persists
`
`with using the “latest-version-of-the-file” argument for this combination as well.
`
`Institution Decision, at 27-29. Like Balcha, Freivald operates in the same way as
`
`the ‘799 Patent because it checks to see whether a file on the server has been
`
`altered to determine whether to update the client. See supra at 4; Ex. 1019, at
`
`24:8-25:5; 1018, at ¶ 23. Freivald assumes that the client does not independently
`
`modify the files-of-interest because it subscribes to updates from the server. Ex.
`
`1018, at ¶ 23. In addition, Freivald involves HTML files which are less likely than
`
`other file types to be modified by interested parties. Id. Thus, regardless of
`
`whether Freivald ensures that the client’s version of the file had not been
`
`independently modified, Freivald is identical to what is described and claimed in
`
`the ‘799 patent. Id.
`
`IV. Claims 1, 5, 9, 10, 12, 16, 20, 21, 23, 24, 30, and 31 Are Obvious Over
`Balcha in View of Miller
`
`Clouding admits that Miller discloses a copy command. It argues only that
`
`claims 1, 5, 9, 10, 12, 16, 20, 21, 23, 24, 30, and 31 are not rendered obvious
`
`because one of ordinary skill in the art would not add Miller’s copy command to
`
`5
`
`
`
`
`Balcha because Miller’s goal is to make the update file as small as possible.3 Like
`
`Clouding’s other arguments, both the Board as well as Clouding’s own expert have
`
`rejected this argument.
`
`Clouding’s argument was correctly rejected by the Board.4 See Institution
`
`Decision, at 24-27. As the Board and Clouding’s own expert describe, Miller
`
`
`3
`Clouding also argues that Balcha does not disclose a “command . . . to copy”
`
`(Response, at 13-15), but this argument is only relevant to whether Balcha
`
`anticipates the claims, and not to whether the combination of Balcha and Miller
`
`renders the claims obvious. Clouding begins its argument by making a vague
`
`claim construction statement. Response, at 10. To the extent that Clouding is
`
`somehow disagreeing with the Board’s construction, it does so without the support
`
`of its expert. In his deposition, Dr. Mohapatra was shown the Board’s construction
`
`for a command to copy, and he agreed with it. Ex. 1019, at 9:11-16.
`
`4
`
`Clouding argues that Petitioner’s case is deficient because neither Dr.
`
`Hutchinson’s declaration nor the Petition “provides any analysis concerning the
`
`resulting outcome of the proposed combination of teachings.” Response, at 31.
`
`This is flat wrong because the Petition as well as Ex. 1007 provide more than
`
`sufficient support for Petitioners’ case. See Petition, at 17-26; Ex. 1007, at
`
`
`
`6
`
`
`
`
`included a copy command for the very purpose of minimizing the size of the
`
`update file. See Ex. 1004, at 2:21-24 (“What is needed is a method and system for
`
`generating a difference file from an old file and a new file, where that difference
`
`file indicates, in minimal number of bytes, changes between the old file and the
`
`new file.”)(emphasis added); Id., at 8:42-44 (“In general, copy and insert
`
`commands are selected in order to produce the smallest final DIFF file.”);
`
`Institution Decision, at 25; Ex. 1019, at 38:3-39:14. The Board correctly held that
`
`“Miller’s stated objective for its own invention cannot be read to eliminate a key
`
`element of its invention that is used for achieving the very same objective.”
`
`Institution Decision, at 24-25. As such, Clouding’s argument must fail.
`
`Moreover, the ‘799 patent itself acknowledges that “[t]he size of the copy
`
`command is negligible in comparison to the size of the segment to which it
`
`pertains. This savings reduces the size of the update file, and thus reduces the
`
`connection time in communicating the update file to the client computer.” Ex.
`
`1001, at 4:11-15. One of ordinary skill thus would not be concerned about the size
`
`of the update file when deciding whether to include the copy command of Miller
`
`because the size of copy commands are “negligible.” Ex. 1018, at ¶ 24.
`
`
`¶¶ 31-48. Nevertheless, Dr. Hutchinson provides additional testimony, including
`
`that the resulting combination would include copy commands. Ex. 1018, at ¶ 20.
`
`7
`
`
`
`
`Furthermore, Clouding’s own expert, Dr. Mohapatra, essentially admitted
`
`that one of ordinary skill would have combined the copy command of Miller with
`
`the system of Balcha, when he testified in his deposition that Miller’s copy
`
`primitive is a “command . . . to copy” per the Board’s claim construction (Ex.
`
`1019, at 9:11-16) and that choosing whether to use such a copy command is within
`
`the level of ordinary skill in the art.5 Ex.1019, at 40:3-11.
`
`V. Claims 6-8 and 17-19 Are Obvious Over Balcha in View of Miller and
`Freivald
`
`Clouding’s only argument is irrelevant. It argues that one of ordinary skill
`
`in the art would not combine Balcha and Miller with Freivald’s teaching of
`
`periodically checking timestamps to determine if an update is required because
`
`Freivald discloses sending an entire webpage when an update is required, which,
`
`Clouding claims, is inconsistent with the stated goal of Miller to minimize diff file
`
`size. Petitioners, however, do not rely upon Freivald for its disclosure of sending
`
`entire HTML files, but only for its disclosure of determining if the client computer
`
`has a latest version of a file by determining whether that file has been altered. As
`
`described in detail in its Petition (at 28-31), the combination of Balcha, Miller and
`
`5 Clouding also argues that Dr. Hutchinson was unclear whether Balcha creates a
`
`new file or merely updates an existing file. Response, at 13-14. Dr. Hutchinson
`
`clarifies that Balcha creates a new file. Ex. 1018, at ¶ 22.
`
`8
`
`
`
`
`Freivald discloses the limitations recited in claims 6-8 and 17-19, and this
`
`apparently is not disputed by Clouding.6
`
`VI. Claims 37 and 42 Are Anticipated by Williams
`
`Here again, Clouding makes the red-herring “latest-version-of-the-file”
`
`argument. As described above with respect to Balcha (supra at 4), Clouding
`
`cannot rely upon this issue to distinguish any prior art from the claims of the ‘799
`
`patent because the very same issue exists in the ‘799 patent, which Clouding’s own
`
`expert admitted. Whether or not the client-side file could or could not be
`
`independently modified on some occasions is simply irrelevant.
`
`Nevertheless, Williams operates identically to the ‘799 Patent’s description
`
`and claims in this regard.7 Both the ‘799 Patent and Williams use the detection of
`
`a change to a file to determine whether another computer has a latest version of the
`
`file. 1018, at ¶ 25. Moreover, Dr. Mohapatra even admitted in his deposition that,
`
`
`6
`Again, the Board has both heard and rejected these arguments. Preliminary
`
`Response, at 36-38; Institution Decision, at 24-27.
`
`7
`
`In addition, Clouding’s argument is identical (and, in fact, verbatim) to the
`
`argument Clouding set forth in its Preliminary Response (at 50-51), which the
`
`Board rejected as based upon a narrow claim construction not adopted by Board
`
`(Institution Decision, at 19).
`
`9
`
`
`
`
`after the incremental backup is applied in Williams, the new file is the “current
`
`version.” Ex. 1019, 41:23-42:4.
`
`Clouding’s argument regarding the MD5 in the update file is another attempt
`
`at misdirection. The MD5 merely ensures that the incremental backup is applied to
`
`the latest version of the file. Ex. 1018, at ¶ 25. Williams anticipates claims 37 and
`
`42.
`
`VII. Claims 1, 12, 23, 24, 30, and 31 Are Anticipated by Williams
`
`Clouding’s only argument for the patentability of claims 1, 12, 23, 24, 30,
`
`and 31 over Williams is that Williams does not disclose a “command . . . to copy,”
`
`as recited in claim 1.8 As with many of Clouding’s other arguments, however, this
`
`has been rejected by both the Board as well as Clouding’s own expert.
`
`Clouding provides two erroneous bases for its argument that Williams does
`
`not disclose a “command . . . to copy”: (1) Williams does not have a copy
`
`
`8
`Clouding states in the heading on page 26, and also on page 28, Williams
`
`does not disclose a “command to . . . insert,” but does not describe in any detail
`
`this alleged deficiency of Williams. Regardless, Clouding’s own expert has
`
`admitted that the difference file D of Williams will “instruct” the second computer
`
`E2 of Williams to perform actions. Ex. 1019, 45:5-8. For at least this reason,
`
`Williams discloses a “command to . . . insert.”
`
`10
`
`
`
`
`command because it simply modifies Y to become X and (2) the references in the
`
`difference file of Williams are not “commands . . . to copy” as that term is
`
`construed by the board.9 Both arguments were made in the Preliminary Response
`
`(Preliminary Response, at 41-47), and have already been rejected by the Board
`
`(Institution Decision, at 17-20). Petitioners, nevertheless, will address the merits
`
`of each.
`
`Williams discloses using difference file D and old file Y to create a new
`
`copy of file X on computer E2. As described in the Petition, Williams discloses
`
`the process “[t]o reconstruct X from Y and D,” and states that the references in the
`
`difference file can be looked up “either in Y or in the part of X already
`
`reconstructed.” Petition, at 36 (quoting Williams at 19:66-20:5). If Williams
`
`simply taught updating Y “in-place” as Clouding argues, the specification would
`
`not separately refer to “Y” and “X reconstructed,” because those two entities
`
`would be the same file—i.e., Y would be modified to become X. Moreover,
`
`Williams discloses that E2 can “retain copies of all the previous versions of the file
`
`
`9
`Clouding argues that the “command . . . to copy” is not inherent in Williams.
`
`Response, at 45-46. Petitioners, however, do not argue that Williams’ disclosure
`
`of “command . . . to copy” is inherent, but, as described above, argue that it is
`
`explicit and clear. And Clouding’s own expert agrees. Ex. 1019, at 45:5-8.
`
`11
`
`
`
`
`system (21:64-65), which means that a new copy of X must be reconstructed to
`
`ensure that the previous version of Y is not overwritten and is maintained.10 Ex.
`
`1018, at ¶ 26.
`
`Once again, the Board and Clouding’s own expert have agreed with this
`
`interpretation of Williams. The Board stated in the Institution Decision that
`
`Williams discloses that “computer E2 will reconstruct a duplicate version of file X
`
`using file Y” and further noted that “Williams indicates that copies of the previous
`
`versions of the file system should be retained [meaning] that computer E2 should
`
`maintain both file Y (the previous version) and a duplicate version of file X.”
`
`Institution Decision, at 16 (emphasis added). Clouding’s own expert Dr.
`
`Mohapatra also agreed when he testified in his deposition that the references in
`
`Williams are, in fact, “commands . . . to copy”:
`
`
`10 While Williams states in the first paragraph of the description of the relevant
`
`embodiment that “the old version of the file Y at E2 will be updated to become a
`
`copy of the new version of the file X at E1 (without modifying X)” (Williams at
`
`19:31-33), this statement is a high-level description, but is consistent with making
`
`a new file. The details of how the incremental backup system of Williams actually
`
`operates are provided later in the description of figure 25, as described above.
`
`12
`
`
`
`
`Q. In fact, the references instruct the system in terms of which blocks
`in Y need to be copied to the X file; correct?
`
`A. Yes.
`
`Ex.1019, at 45:5-8 (emphasis added). Moreover, Dr. Mohapatra admitted that the
`
`Y and X files of Williams are different files:
`
`Q. And we have Y, which is a previous version of a file.
`A. Yes.
`Q. And the delta file is being applied to Y to create X; is that correct?
`A. Yes.
`. . .
`
`Q. Now, in this example that I’ve described, you have the X – the Y
`file in existence and then a separate file, the X file, is being created
`from the delta file; correct?
`
`A. Yes.
`
`Ex. 1019, at 42:11-16;44:20-24; see also id. at 43:16-25; 44:9-19; 44:25-45:8.
`
`VIII. Claims 5-10 and 16-21 Are Obvious over Williams in View of Miller
`
`Clouding again argues that Miller’s copy command would not be combined
`
`with another reference–this time Williams–because Miller’s goal is to produce the
`
`smallest possible difference file. While Petitioners do rely upon Miller’s copy
`
`command for the Balcha and Miller combination, Petitioner’s do not rely upon
`
`Miller for its copy command for the Williams and Miller combination. Rather,
`
`Petitioners rely upon Miller only for its disclosure of the limitations of dependent
`
`13
`
`
`
`
`claims 5-10 and 16-21, including, for example, transmission of a self-executing
`
`diff file via email and monitoring modification dates to determine if a file has
`
`changed. Petition, at 40-45. As such, Clouding apparently does not contest any of
`
`Petitioner’s arguments that claims 5-10 and 16-21 are unpatentable over the
`
`combination of Williams and Miller.
`
`IX. Conclusion
`
`For the reasons provided above and in the Petitions, claims 1, 5-10, 12, 16-
`
`21, 23, 24, 30, 31, 37 and 42 are unpatentable based upon the grounds instituted in
`
`the present inter partes review.
`
`
`
`/Michael L. Kiklis/_____________
`Michael L. Kiklis (Reg. No. 38,939)
`Scott A. McKeown (Reg. No. 42,866)
`Oblon Spivak
`1940 Duke Street
`Alexandria, Virginia 22314
`Tel: (703) 413-3000
`CPdocketKiklis@oblon.com
`CPdocketMcKeown@oblon.com
`
`Attorneys for Petitioner
`Unified Patents Inc.
`
`
`/Frank C. Cimino, Jr./__________
`Frank C. Cimino, Jr. (Reg. No. 39,945)
`Megan S. Woodworth (Reg. No. 53,655)
`S. Gregory Herrman (Reg. No. 66,271)
`DICKSTEIN SHAPIRO LLP
`1825 Eye Street, NW
`Washington, DC 20006-5403
`Tel: (202) 420-2200
`CiminoF@dicksteinshapiro.com
`WoodworthM@dicksteinshapiro.com
`HerrmanG@dicksteinshapiro.com
`
`Attorneys for Petitioner
`SAP America, Inc.
`
`
`
`
`
`
`
`14
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing PETITIONERS’
`
`CONSOLIDATED REPLY TO PATENT OWNER’S RESPONSE was
`
`electronically filed with the Patent Review Processing System and served by
`
`electronic mail on July 21, 2014, to the following:
`
`Tarek Fahmi
`Ascenda Law Group
`84 W. Santa Clara St.
`Suite 550
`San Jose CA 95113
`tarek.fahmi@ascendalaw.com
`
`
`By: /Michael L. Kiklis/
` Michael L. Kiklis
`Reg. No. 38,939
`
`
`
`
`
`
`
`
`Dated: July 21, 2014
`
`
`
`
`
`
`15
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
