`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 REPLY TO PETITIONERS’ OPPOSITION
`TO PATENT OWNERS’ CONTINGENT MOTION TO
`AMEND U.S. PATENT NO. 6,738,799
`UNDER 35 USC § 316 AND 37 CFR § 42.121
`
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`TABLE OF CONTENTS
`TABLE OF CONTENTS
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`
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`PATENTABILITY OF PROPOSED CLAIM 47 OVER HARLAN.
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`PATENTABILITY OF PROPOSED CLAIM 47 OVER HARLAN.
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`PATENTABILITY OF PROPOSED CLAIM 47 OVER WILLIAMS.
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`PATENTABILITY OF PROPOSED CLAIM 47 OVER WILLIAMS.
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`CLAIM 47 IS FULLY ENABLED BY THE SPECIFICATION
`CLAIM 47 IS FULLY ENABLED BY THE SPECIFICATION
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`1
`4
`5
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`ii
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`ii
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`TABLE OF AUTHORITIES
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`CASES
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`
`
`In re Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999) ...................................... 2
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`KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ........................................... 2
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`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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`2012
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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.
`
`Transcript of Deposition of Norman Hutchinson, Ph.D., July 25,
`2014.
`
`iv
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`
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`Patentability Of Proposed Claim 47 Over Harlan.
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`Petitioners contend that proposed claim 47 is somehow obvious in view
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`of U.S. Patent 6,076,084 to Harlan (“Harlan”) when considered in
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`combination with either Williams or Balcha. Opp. at p. 12. In making this
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`assertion, Petitioners offer no explanation of how these combined teachings of
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`these references would satisfy all elements of proposed claim 47, nor do they
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`offer any reasoned explanation of why a person of ordinary skill in the art
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`would make such a combination. While Dr. Hutchinson’s remarks that a
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`person of ordinary skill in the art may “look to efficient techniques” for
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`dividing blocks into subblocks, Ex. 1018 at ¶ 14, efficient techniques are not
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`synonymous with optimal techniques, as claimed. Ex. 1019 at 48:21 – 49:8.
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`The rationale to support a conclusion that the claim would have been
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`obvious is that all the claimed elements were known in the prior art and one
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`skilled in the art could have combined the elements as claimed by known
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`methods with no change in their respective functions, and the combination
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`would have yielded nothing more than predictable results to one of ordinary
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`skill in the art at the time of the invention. “[I]t can be important to identify a
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`reason that would have prompted a person of ordinary skill in the relevant field
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`to combine the elements in the way the claimed new invention does.” KSR Int'l
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`
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`1
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`
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`Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “Broad conclusory statements
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`regarding the teachings of multiple references, standing alone, are not
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`evidence.” In re Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999).
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`Harlan teaches a technique for transmitting information between
`
`computers where the computer receiving the information has a file related to
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`the information being transmitted but where the sending computer does not
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`know the state of the file at the receiving computer. Ex. 1020 at 1:36-40; Ex.
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`2012 at 11:22 – 12:12. Petitioner’s declarant, Dr. Hutchinson, could not
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`determine whether Harlan truly generates and sends an update file from one
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`computer to another, Ex. 2012 at 12:13 – 13:3, only that Harlan teaches
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`transmission of information similar to an update file. Id. at 13:5-12.
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`Harlan teaches transmitting a selected segment delimiter from the
`
`computer that made the selection to the other computer. According to Harlan,
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`if the sending computer selected the delimiter, then the sending computer
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`sends the selected delimiter to the receiving computer. Ex. 1020 at 1:55-58,
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`4:53-57; Ex. 2012 at 14:10-15. Harlan further teaches calculating a hash code
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`of each segment defined by a selected delimiter. Ex. 1020 at 1:60-62; Ex. 2012
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`at 14:16-23. According to Harlan, the hash codes from the computer that has
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`the old file are transmitted to the computer that has the new file. Ex. 1020 at
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`
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`2
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`
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`1:62-64; Ex. 2012 at 14:24 – 15:7. This transmission of hash codes is part of
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`the process of preparing the information that would be sent from the sending
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`computer to the receiving computer. Ex. 2012 at 15:8 – 16:1.
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`In short then, Harlan does not provide for a first computer to determine
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`whether a second computer has a latest version of a file without interaction
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`with the second computer, and does not provide for generating an update, by
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`the first computer, without interaction with the second computer, as recited in
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`proposed claim 47. Instead, Harlan requires extensive communication between
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`the computer sending the update information and the computer receiving the
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`information both when determining whether the receiving computer has a
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`particular file and when generating the information to revise that version of the
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`file. Ex. 1020 at 1:55-64, 4:53-57; Ex. 2012 at 14:10 – 16:1. As such, Harlan
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`describes a process very different from that recited in claim 47.
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`There is nothing to indicate that an artisan concerned with finding a
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`solution to send updates between computers where the sending computer
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`determines the update without interaction with the receiving computer would
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`look to the teachings of Harlan (which describes a completely contrary process)
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`at all, let alone employ teachings of such an inconsistent process (with respect
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`to the desired solution) simply to adopt a scheme for choosing segment
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`
`
`3
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`
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`delimiters. If anything, Harlan’s requirement for the sending computer to
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`communicate extensively with the receiving computer would lead the person of
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`ordinary skill in the art to conclude that Harlan’s teachings were inappropriate
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`for a solution that requires the sending computer to determine updates without
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`interaction with the receiving computer. Moreover, even if one were to employ
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`the teachings of Harlan, at best one would adopt a solution that leads to
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`selection of “efficient,” not optimal segment delimiters. Hence, one still would
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`not arrive at the claimed subject matter.
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`Patentability Of Proposed Claim 47 Over Williams.
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`Williams describes segmenting files, including techniques to select
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`segment boundaries. One such technique utilizes hash functions in selecting
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`segment boundaries. The function shown at Williams 14:27 is an example of a
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`hash function used for selecting segment boundaries. Ex. 2012 at 19:18 –
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`20:14. The function includes a constant “p,” the value of which is selected by a
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`user so as to control the size of sub-blocks produced by the segmenting process.
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`Id. at 21:2-16. According to Dr. Hutchinson, this leads to the use of efficient
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`division points. Ex. 1018 at ¶ 9.
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`As discussed above, efficient techniques are not synonymous with
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`optimal techniques, as claimed. Ex. 1019 at 48:21 – 49:8. Contrary to
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`4
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`Petitioners’ arguments, Dr. Mohapatra did not equate these two during his
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`deposition. Instead, Dr. Mohapatra explained that “optimal” division of a file
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`can be done with respect to a number of different parameters, but whatever
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`parameters are considered, “optimal” is not the same as “efficient.” Ex. 1019 at
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`48:21 – 52:15. Inasmuch as Williams only teaches the use of efficient file
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`division points, Ex. 1018 at ¶ 9, Williams cannot anticipate claim 47.
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`Williams further does not teach the use of statistically determined
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`division points. The hash function discussed by Williams uses a constant “p,”
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`that is set by the user/developer. A user-defined constant is not a statistically
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`determined value and even if “[p]robability is a statistical procedure, Ex. 1018
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`at ¶ 7,” this does not mean that the constant “p” is statistically determined.
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`This is a further reason why Williams cannot anticipate claim 47.
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`Claim 47 Is Fully Enabled By The Specification
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`
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`Dr. Mohapara has testified that claim 47 is fully enabled by the
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`specification. Ex. 2009 at ¶¶ 36-37; Ex. 1019 at 61:14 – 63:22.
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`Dated: August 21, 2014
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`
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`
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`ASCENDA LAW GROUP, PC
`84 W. Santa Clara St., Suite 550
`San Jose, CA 95113
`
`
`
`
`
`Respectfully submitted,
`
`
`/Tarek N. Fahmi/
`
`Tarek N. Fahmi, Reg. No. 41,402
`
`Tel: 866-877-4883
`Fax: 408-773-6177
`Email: patents@ascendalaw.com
`
`5
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing
`PATENT OWNER’S REPLY TO PETITIONERS’ OPPOSITION
`TO PATENT OWNER’S CONTINGENT MOTION TO
`AMEND
`and its supporting exhibits was served on August 21, 2014, by filing this
`document though the Patent Review Processing System as well as delivering a
`copy via electronic mail directed to the attorneys of record for the Petitioners at
`the following addresses:
`For Petitioner Unified Patents, Inc.
`Michael Kiklis
`Scott McKeown
`Oblon Spivak
`1940 Duke Street
`Alexandria, VA 22314
`cpdocketkiklis@oblon.com
`cpdocketmckeown@oblon.com
`
` For Petitioner SAP America Inc.
`Frank C. Cimino, Jr.
`
`Megan S. Woodworth
`S. Gregory Herrman
`DICKSTEIN SHAPIRO LLP
`1825 Eye Street, NW
`Washington, DC 20006-5403
`
`ciminof@dicksteinshapiro.com,
`herrmang@dicksteinshapiro.com
`IPDocketing-
`DC@dicksteinshapiro.com
`
`
`The parties have agreed to electronic service in this matter.
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`Respectfully submitted,
`
`
`Dated: August 21, 2014
`
`
`
`/Tarek N. Fahmi/
`
`
`
`
`
`
`Tarek N. Fahmi, Reg. No. 41,402
`ASCENDA LAW GROUP, PC
`84 W. Santa Clara St., Suite 550
`San Jose, CA 95113
`Tel: 866-877-4883
`Email: patents@ascendalaw.com
`
`
`
`
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