`UNIFIED PATENTS
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`EXHIBIT 1008
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`Unfied Patents Exhibit 1008
`Pg. 1
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`June 2, 2003
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`May 18, 2004
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`In re U.S. Patent No. 6,738,799
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`Filed:
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`Issued:
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`Inventor: Peter Dickenson
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`Assignee: Clouding IP, LLC
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`Title:
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`Methods and Apparatuses for File Synchronization and Updating
`Using a Signature List
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`Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,738,799
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
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`TABLE OF CONTENTS
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`TABLE OF CONTENTS ............................................................................................................. ii
`EXHIBIT LIST ............................................................................................................................ iv
`I.
` INTRODUCTION............................................................................................................ 1
`II. MANDATORY NOTICES ............................................................................................... 3
`A.
`Real Party-In-Interest .................................................................................................. 3
`B.
`Related Matters ............................................................................................................. 3
`C.
`Lead and Back-Up Counsel ......................................................................................... 4
`D.
`Service Information ...................................................................................................... 4
`III.
`PAYMENT OF FEES ....................................................................................................... 4
`IV. REQUIREMENTS FOR INTER PARTES REVIEW ................................................... 4
`A.
`Grounds for Standing ................................................................................................... 5
`B.
`Identification of Challenge ........................................................................................... 5
`1. The Specific Art and Statutory Ground(s) on Which the Challenge is Based ........ 5
`2. How the Construed Claims are Unpatentable under the Statutory Grounds
`Identified in 37 C.F.R. § 42.204(b)(2) and Supporting Evidence Relied upon to
`Support the Challenge .................................................................................................. 7
`FACTUAL BACKGROUND ........................................................................................... 7
`V.
`Declaration Evidence .................................................................................................... 7
`A.
`The State of the Art....................................................................................................... 8
`B.
`The ‘156 Patent Application ...................................................................................... 11
`C.
`The Prosecution History ............................................................................................. 12
`D.
`BROADEST REASONABLE CONSTRUCTION ...................................................... 13
`VI.
`Signature List .............................................................................................................. 15
`A.
`B. Without Interaction .................................................................................................... 15
`VII. REPRESENTATIVE PROPOSED REJECTIONS SHOWING THAT
`PETITIONER HAS A REASONABLE LIKELIHOOD OF PREVAILING ....................... 16
`Group 1: Proposed Rejections Based on the Balcha Reference ........................................ 16
`1-A Claims 1, 5, 9, 10, 23 and 24 Are Rendered Obvious by Balcha in view of Miller
`under 35 U.S.C. § 103 ................................................................................................. 16
`1-B Claim 37 Is Anticipated by Balcha under 35 U.S.C. § 102(e) ................................. 25
`1-C Claims 6-8 Are Rendered Obvious by Balcha in View of Miller and Further in
`View of Freivald under 35 U.S.C. § 103 ................................................................... 27
`Group 2: Proposed Rejections based on the Miller Reference .......................................... 30
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`2-A Claims 1, 5-10, 23, 24, and 37 are Rendered Obvious by Miller in View of Freivald
`under 35 U.S.C. § 103 ................................................................................................. 30
`Group 3: Proposed Rejections based on the Freivald Reference ...................................... 42
`3-A Claim 37 is Anticipated by Freivald under 35 U.S.C. § 102(e) ............................... 42
`Group 4: Proposed Rejections based on the Williams Reference ..................................... 46
`4-A Claims 1, 23, 24, and 37 Are Anticipated by Williams under 35 U.S.C. § 102(e) . 46
`4-B Claims 5-10 Are Rendered Obvious by Williams in View of Miller under 35
`U.S.C. § 103. ................................................................................................................ 54
`VIII. CONCLUSION ............................................................................................................... 60
`CERTIFICATE OF SERVICE ................................................................................................. 61
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`1001
`1002
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`1003
`1004
`1005
`1006
`1007
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`EXHIBIT LIST
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`U.S. Patent No. 6,738,799 to Dickenson
`Excerpts from Prosecution history of Application No.
`09/303,958, the parent application of the ‘799 patent
`U.S. Patent No. 6,233,589 to Balcha et al.
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`U.S. Patent No. 5,832,520 to Miller
`U.S. Patent No. 5,898,836 to Freivald et al.
`U.S. Patent No. 5,990,810 to Williams
`Declaration of Dr. Andrew Grimshaw, Ph.D.
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`I.
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` INTRODUCTION
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`Petitioner Oracle Corporation (“Oracle” or “Petitioner”) respectfully
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`requests inter partes review for claims 1, 5-10, 23, 24, and 37 of U.S. Patent No.
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`6,738,799 (the “‘799 patent,” attached as Ex. 1001) in accordance with 35 U.S.C.
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`§§ 311–319 and 37 C.F.R. § 42.100 et seq.
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`The ‘799 patent is generally directed to methods for synchronizing files
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`between a first computer and a second computer. More particularly, the ‘799
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`patent is directed to a file synchronization technique wherein a first computer (such
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`as a server) determines whether a second computer (such as a client) has the latest
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`version of a subscription file. (Ex. 1001 at 3:36-44). A subscription file is a
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`shared network document in which multiple clients are interested in keeping track
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`of changes to the document such that the client’s local version of the file is up-to-
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`date. (Id. at 6:46-56; 7:56-57). If the client’s file is out of date, the server
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`generates a “delta” or update file by comparing the signature list of the most
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`current version of the subscription file with an old signature list representing the
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`version of subscription file last transmitted to the client computer. (Id. at 3:45 -
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`4:1; 4:16-23). The delta or update file is sent to the client computer, which
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`thereafter alters the file as prescribed in the delta or update file such that the
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`client’s file is updated to match the current version of the file stored at the server.
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`(Id. at 4:30-32; 3:45-49).
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`As demonstrated by various references which were not before the Examiner,
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`delta file synchronization and document push techniques were well known to a
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`person of ordinary skill in the art well before the earliest claimed priority date of
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`the ‘799 patent. (Id.) For example, U.S. Patent No. 6,233,589 to Balcha (“Balcha,”
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`Exhibit 1003), discloses a “differencing mechanism that quickly and efficiently
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`determines the differences between two files, . . . generates a delta file reflecting
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`those differences” and then sends the delta file to a remote computer which uses
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`the delta file to update its local copy and thereby generate a revised, updated file.
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`(Ex. 1003 at 4:48-5:3). U.S. Patent No. 5,832,520 to Miller (“Miller,” Ex. 1004)
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`similarly describes a method for generating “very efficient difference files … from
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`an old file and a new file so that a difference file can be transmitted to a second
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`computer system where the difference file and a duplicate of the old file can
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`quickly be used to create a copy of the new file, duplicating the new file as it
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`existed on the first computer system.” (Ex. 1004 at 2:38-48). Further, U.S. Patent
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`No. 5,990,810 to Ross Neil Williams (“Williams,” Ex. 1006) discloses a “fine-
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`grained incremental backup system” wherein a first computer generates and
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`transmits an incremental backup file (i.e., an update file) to a second computer
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`which in turn uses the incremental backup file to generate a copy of the current
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`version of the complete file stored at the first computer. (See Ex. 1006 at 19:29-
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`33).
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`The Balcha, Miller, and Williams references, none of which were considered
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`by the Examiner, anticipate or render obvious the challenged claims of the ‘799
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`patent.
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`II. MANDATORY NOTICES
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`Pursuant to 37 C.F.R. § 42.8(a)(1), Oracle provides the following mandatory
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`disclosures.
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`A. Real Party-In-Interest
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Oracle is the real
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`party-in-interest.
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`B. Related Matters
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner states that the ‘799 Patent is
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`asserted in co-pending litigation captioned Clouding IP, LLC v. Oracle Corp.,
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`D.Del., Case No. 1:12-cv-00642. This litigation remains pending. The patents-in-
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`suit are U.S. Patents 6,631,449; 6,918,014; 7,596,784; 7,065,637; 6,738,799;
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`5,944,839; 5,825,891; 5,678,042; 5,495,607; 7,254,621; 6,925,481. This IPR
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`petition is directed to U.S. Patent No. 6,738,799; however, petitions corresponding
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`to the remaining patents will be filed in the forthcoming weeks.
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`C. Lead and Back-Up Counsel
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`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner provides the following
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`designation of counsel: Lead counsel is Greg Gardella (Reg. No. 46,045) and
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`back-up counsel is Scott A. McKeown (Reg. No. 42,866).
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`Service Information
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`D.
`Pursuant to 37 C.F.R. § 42.8(b)(4), papers concerning this matter should be
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`served on the following.
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`Address: Greg Gardella or Scott McKeown
`Oblon Spivak
`1940 Duke Street
`Alexandria, VA 22314
`cpdocketgardella@oblon.com and
`cpdocketmckeown@oblon.com
`Telephone: (703) 413-3000
`Fax:
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`(703) 413-2220
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`Email:
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`III. PAYMENT OF FEES
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`The undersigned authorizes the Office to charge $27,200 to Deposit Account
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`No. 15-0030 as the fee required by 37 C.F.R. § 42.15(a) for this Petition for inter
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`partes review. The undersigned further authorizes payment for any additional fees
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`that might be due in connection with this Petition to be charged to the above
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`referenced Deposit Account.
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`IV. REQUIREMENTS FOR INTER PARTES REVIEW
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`As set forth below and pursuant to 37 C.F.R. § 42.104, each requirement for
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`inter partes review of the ‘799 patent is satisfied.
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`A. Grounds for Standing
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner hereby certifies that the ‘799
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`patent is available for inter partes review and that the Petitioner is not barred or
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`estopped from requesting inter partes review challenging the claims of the ‘799
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`patent on the grounds identified herein. The ‘799 patent has not been subject to a
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`previous estoppel based proceeding of the AIA, and, the complaint served on
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`Oracle referenced above in Section I(B) was served within the last 12 months.
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`B. Identification of Challenge
`Pursuant to 37 C.F.R. §§ 42.104(b) and (b)(1), Petitioner requests inter
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`partes review of claims 1, 5-10, 23, 24, and 37 of the ‘799 patent, and that the
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`Patent Trial and Appeal Board (“PTAB”) invalidate the same.
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`1.
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`The Specific Art and Statutory Ground(s) on Which the
`Challenge is Based
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`Pursuant to 37 C.F.R. § 42.204(b)(2), inter partes review of the ‘799 patent
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`is requested in view of the following references, each of which is prior art to the
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`‘799 patent under 35 U.S.C. § 102(a), (b), and/or (e):
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`(1) U.S. Patent No. 6,233,589 to Balcha et al. (“Balcha,” Ex. 1003),
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`issued May 15, 2001 from an application filed July 31, 1998. Balcha is prior art to
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`the ‘799 patent under at least 35 U.S.C. § 102(e).
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`(2) U.S. Patent No. 5,832,520 to William A. Miller (“Miller,” Ex. 1004),
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`issued November 3, 1998 from an application filed November 22, 1996. Miller is
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`prior art to the ‘799 patent under at least 35 U.S.C. § 102(a)/(e).
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`(3) U.S. Patent No. 5,898,836 to Freivald et al. (“Freivald,” Ex. 1005),
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`issued April 27, 1999 from an application filed January 14, 1997. Freivald is prior
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`art to the ‘799 patent under at least 35 U.S.C. § 102(a)/(e).
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`(4) U.S. Patent No. 5,990,810 to Ross Neil Williams (“Williams,” Ex.
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`1006), issued November 23, 1999 from PCT Application No. PCT/AU96/00081
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`filed February 15, 1996 and entered the U.S. national stage under 35 U.S.C. § 371
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`on August 15, 1997. Williams is prior art to the ‘799 patent under at least 35
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`U.S.C. § 102(e).
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`Balcha (Ex. 1003) anticipates claim 37 of the ‘799 patent under 35 U.S.C. §
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`102(e). Claims 1, 5, 9, 10, 23 and 24 are rendered obvious by Balcha in view of
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`Miller (Ex. 1004) under 35 U.S.C. § 103. Claims 6-8 are rendered obvious by
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`Balcha in view of Miller and further in view of Freivald (Ex. 1005) under 35
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`U.S.C. § 103.
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`Miller taken in view of Freivald renders obvious claims 1, 5-10, 23, 24, and
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`37 of the ‘799 patent under 35 U.S.C. § 103.
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`Freivald anticipates claim 37 of the ‘799 patent under 35 U.S.C. § 102(e).
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`Williams (Ex. 1006) anticipates claims 1, 23, 24, and 37 of the ‘799 patent
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`under 35 U.S.C. § 102(e). Claims 5-10 are rendered obvious by Williams in view
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`of Miller under 35 U.S.C. § 103.
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`2.
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`How the Construed Claims are Unpatentable under the
`Statutory Grounds Identified in 37 C.F.R. § 42.204(b)(2)
`and Supporting Evidence Relied upon to Support the
`Challenge
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`Pursuant to 37 C.F.R. § 42.204(b)(4), an explanation of how claims 1, 5-10,
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`23, 24, and 37 of the ‘799 patent are unpatentable under the statutory grounds
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`identified above, including the identification of where each element of the claim is
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`found in the prior art, is provided in Section VII, below, in the form of claims
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`charts. Pursuant to 37 C.F.R. § 42.204(b)(5), the appendix numbers of the
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`supporting evidence relied upon to support the challenges and the relevance of the
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`evidence to the challenges raised, including identifying specific portions of the
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`evidence that support the challenges, are provided in Section VII, below, in the
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`form of claim charts.
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`V.
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`FACTUAL BACKGROUND
`A. Declaration Evidence
`This Petition is supported by the declaration of Professor Andrew Grimshaw
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`from the University of Virginia (attached as Ex. 1007). Professor Grimshaw offers
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`his opinion with respect to the content and state of the prior art.
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`Dr. Grimshaw is a Professor of Computer Science in the University of
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`Virginia’s School of Engineering and Applied Science. Prof. Grimshaw is the
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`author of over 50 publications and book chapters in the field of distributed
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`computing. (Ex. 1007 at ¶ 1). He was the chief designer and architect of Mentat,
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`an object-oriented parallel processing systems designed to directly address the
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`difficulty of developing architecture-independent parallel programs and Legion, a
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`nationwide metasystem built on Mentat. (Id. at ¶ 4). In 1999 he co-founded Avaki
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`Corporation, and served as its Chairman and Chief Technical Officer until 2005
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`when Avaki was acquired by Sybase. (Id. at ¶ 5). He is a member of the Global
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`Grid Forum (GGF) Steering Committee and the Architecture Area Director in the
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`GGF. (Id. at ¶ 6). Prof. Grimshaw has served on the National Partnership for
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`Advanced Computational Infrastructure (NPACI) Executive Committee, the DoD
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`MSRC Programming Environments and Training (PET) Executive Committee, the
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`CESDIS Science Council, the NRC Review Panel for Information Technology,
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`and the Board on Assessment of NIST Programs. (Id.)
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`B. The State of the Art
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`From the 1970s until the present day, a substantial body of research has
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`reported on the advent and subsequent advancement in distributed computing
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`systems. (Ex. 1007 at ¶ 12). Distributed systems represent a collection of stand-
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`alone computing machines (servers, client-PCs, etc.) that are connected through a
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`network, such as the internet or a corporate intranet. (Id.) One area of distributed
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`system research which is of particular relevance to the ‘799 patent is commonly
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`referred to as event-based notification. (Id.)
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`Event-based notification systems are used to push notifications from a
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`publisher to a subscriber regarding a specified event. (Id. at ¶ 13). In a
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`publish/subscribe system, clients subscribe to events in which they are interested
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`and, when that event occurs, a server is used to push the published data to the
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`client. (Id.) By 1996, the publish/subscribe (push) methodology was being used to
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`automatically deliver web content (such as news headlines, weather forecasts, etc.)
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`and software updates to subscribed clients. (Id.)
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`Developing in parallel to these advancements was a body of research
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`regarding efficient mechanisms for synchronizing changes to identical files saved
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`at multiple locations across a network. (Id. at ¶ 14). For example, a master copy
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`of a file may be located at a server (“computer A”), and a replica of the file may be
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`saved at a client PC (“computer B”). (Id. at ¶ 15). When the master copy is
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`updated, it does not make sense to transfer the entire new file to computer B. (Id.)
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`Rather, only the differences between the two files should be transferred to
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`computer B. (Id.)
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`To address this issue, the “RSYNC algorithm” was developed by Andrew
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`Tridgell and Paul Mackerras in 1996. (Id. at ¶ 16). RSYNC operated by
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`identifying segments of an old and new file that are identical to one another and
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`only transmitting raw data for those parts of the new file that did not previously
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`exist in the old file. (Id.) In this manner, and following the scenario described
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`above involving computers A and B, when computer A updated its copy of the
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`shared file, computer B received an executable delta file that would allow
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`computer B to generate a copy of the up-to-date file as it existed at computer A.
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`(Id.) RSYNC, and a variety of other differenced-based update algorithms, such as
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`that disclosed by U.S. Pat. No. 5,765,173 to Cane et al. (Ex. 1007 at ¶ 18) and U.S.
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`Pat. No. 5,990,810 to Williams (“Williams,” Ex. 1006), were also deployed to
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`implement incremental file backup systems. (Ex. 1006 at 19:27-28; Ex. 1007 at ¶
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`18). In an incremental file backup system, a single computer, without interaction
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`with any other device, executes a difference algorithm to identify all portions of a
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`file which have been modified since a previous backup of the file. (Ex. 1006 at
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`19:29-51; Ex. 1007 at ¶ 18). The modifications, along with instructions to recreate
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`the updated version of the file, are transmitted and saved to a backup server or tape
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`drive. (Ex. 1006 at 19:51-56; Ex. 1007 at ¶ 18).
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`Accordingly, several years prior to the effective filing date of the ‘799 patent
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`it was well known that difference-based update files could be generated by a single
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`computer, without interaction with another device. (Ex. 1006 at 20:6-10; Ex. 1007
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`at ¶¶ 17-18).
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`C. The ‘156 Patent Application
`Application No. 10/452,156 (“the ‘156 application”), which issued at the
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`‘799 patent, was filed on June 2, 2003, as a continuation of Application No.
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`09/303,958, filed May 3, 1999, which is now Patent No. 6,574,657 (“the ‘657
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`patent”).
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`The ‘156 application describes a mechanism to keep files on remote devices
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`(including other computers) up-to-date (consistent) with a master set of files. The
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`technique involves computers in two roles: the holder of the true copy (hereinafter,
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`“master”) and the remote computer (hereinafter, “client”). The technique is
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`simple, and consists of four basic steps.
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`First, the client downloads a copy of the file(s) and subscribes to files with
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`the master. (Ex. 1001 at 7:50-55). The master notes that the client has subscribed
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`and further generates a set of hashes associated with the blocks of the file
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`(hereinafter, referred to as the subscription phase). (Id. at 7:64 - 8:6).
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`Second, the master monitors the files and directories for which there are
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`outstanding subscriptions. (Id. at 7:55-60). When it is determined that a file has
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`changed (using date and time stamp comparisons (Id. at 6:59-60)) the master
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`generates a delta or update file by comparing each segment of the old file with
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`each segment of the new file. (Id. at 10:66 – 11:8). The delta file comprises copy
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`commands for each segment of data that existed in both the old and new files, as
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`well as
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`insert commmands (wiith associaated raw daata) for eacch segmentt of data inn the
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`nt of the olany segmennot match anew filee that did n
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`ld file. (Idd. at 11:60
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`- 12:13; FFig.
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`11).
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`TThird, as deescribed inn the preferrred emboddiment of tthe ‘799 paatent, the
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`master ppackages the delta fille into a seelf extractinng executaable that is
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`to the file. ubscribed ts that are su all clientsecutable toails the exeemailing, and ema
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`1:52-57; 1(Id. at 44:30-32; 11 2:53-56).
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`FFourth, the client connnects with its mail seerver, downnloads the
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`email
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`containiing the selff-extractinng delta filee, and execcutes the seelf-extractiing delta fiile,
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`suitable foor
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`thereby updating tthe files onn the clientt computerr. (Id. at 122:53-66).
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`D. The PProsecutioon Historyy
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`DDuring prossecution off the ‘156 aapplicationn the Examminer raisedd only
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`patentabbility rejecctions weree presentedd in connecction with tthe parent
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`statutoryy and non--statutory ddouble pateenting rejeections; howwever, prioor art base
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`applicattion. In thaat application, the Paatent Owneer amendedd independdent claimss 1,
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`11, and 21 to recitte the folloowing:
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`12
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`Unfied Patents Exhibit 1008
`Pg. 17
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`(Ex. 1002 at November 14, 2002 Patent Owner Response to Office Action, pgs. 11,
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`14-17). A notice of allowance followed. (Id. at December, 3 2002 Notice of
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`Allowance).
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`Given that similar limitations are present in the ‘156 application claims,
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`which issued as the ‘799 patent, it appears that the ‘799 patent was allowed
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`primarily because the Office believed that the prior art failed to teach a method of
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`updating files between a first and second computer wherein the first computer,
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`without interacting with the second computer, determines if the second computer
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`has the latest version of a monitored file and sends an update file to the second
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`computer if the second computer’s version of the file is out of date.
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`VI. BROADEST REASONABLE CONSTRUCTION
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`Pursuant to 37 C.F.R. § 42.204(b)(3), the claims subject to inter partes review
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`shall receive the “broadest reasonable construction in light of the specification of
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`the patent in which [they] appear[].” See 42 C.F.R. § 100(b); see also In re
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`Swanson, No. 07-1534 (Fed. Cir. 2008); In re Trans Texas Holding Corp., 498
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`F.3d 1290, 1298 (Fed. Cir. 2007) (citing In re Yamamoto, 740 F.2d 1569, 1571
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`(Fed. Cir. 1984)). As the Federal Circuit noted in Trans Texas, the Office has
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`traditionally applied a broader standard than a Court does when interpreting claim
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`scope. Moreover, the Office is not bound by any district court claim construction.
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`Trans Texas, 498 F.3d at 1297-98, 1301. Rather,
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`13
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`Unfied Patents Exhibit 1008
`Pg. 18
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`the PTO applies to verbiage of the proposed claims the
`broadest reasonable meaning of the words in their
`ordinary usage as they would be understood by one of
`ordinary skill in the art, taking into account whatever
`enlightenment by way of definitions or otherwise that
`may be afforded by the written description contained in
`applicant’s specification. In re Morris, 127 F.3d 1048,
`1054-55, 44 U.S.P.Q.2d 1023, 1027-28 (Fed. Cir. 1997).
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`Because the standards of claim interpretation used by the federal courts are
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`different from the standards used by the Patent Office in claim examination
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`proceedings (including this inter partes review), any claim interpretations used or
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`applied in these proceedings are neither binding upon Petitioner in patent
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`infringement litigation or on any other litigants, nor do such claim interpretations
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`correspond to the construction of claims under the legal standards used by the
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`courts. Accordingly, any interpretation of claims presented either implicitly or
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`explicitly herein should not be viewed as constituting, in whole or in part,
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`Petitioner’s own interpretation and/or construction of such claims for the purposes
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`of litigation. Instead, any constructions in this proceeding should be viewed only
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`under the “broadest reasonable construction” standard required here.
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`All claimed terms not specifically addressed in this section have been
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`accorded their broadest reasonable interpretation in light of the patent specification
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`including their plain and ordinary meaning.
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`14
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`Unfied Patents Exhibit 1008
`Pg. 19
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`Signature List
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`A.
`The term “signature list” should be interpreted as including, under the
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`broadest reasonable construction, a table or listing of unique identifiers determined
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`using any “hashing method or signature algorithm” including, but not limited to,
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`Cyclic Redundancy Checks (CRCs), Checksums, and any variety of hash
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`functions. (Ex. 1001 at 8:18-28; Ex. 1007 at ¶ 24).
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`B. Without Interaction
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`The term “without interaction” should be interpreted as limiting the
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`interaction between first and second computers only as specifically recited in the
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`claims. During ex parte prosecution of the ‘156 application, the Patent Owner
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`defined the interaction between server and client computers (i.e., between first and
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`second computers) as follows:
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`In Applicant’s invention, the client computer informs the server
`computer of which files and folders it wants to subscribe to, i.e.,
`which files it wants the server computer to monitor for changes.
`The server computer then acts as an “electronic assistant” by
`tracking files (e.g., documents) and folders… The actual
`monitoring for changes and the generation of an update file, in
`response to detecting a change, are performed by the server
`computer without interaction from the client computer. (Ex.
`1002 at November 14, 2002 Patent Owner Response to Office
`Action, pg. 10; see also Ex. 1001 at 7:50-60).
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`Accordingly, the claims envision at least the aforementioned level of interaction
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`between first and second computers, and do not require the computer systems to
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`15
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`Unfied Patents Exhibit 1008
`Pg. 20
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`operate with complete independence from one another, but only “without
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`interaction” for purposes specified in the claims.
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`VII. REPRESENTATIVE PROPOSED REJECTIONS SHOWING THAT
`PETITIONER HAS A REASONABLE LIKELIHOOD OF
`PREVAILING
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`The references addressed below each provide the teaching believed by the
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`Examiner to be missing from the prior art and variously anticipate or render
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`obvious the claimed subject matter. It should be understood that rejections may be
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`premised on alternative combinations of these same references.
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`Group 1: Proposed Rejections Based on the Balcha Reference
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`U.S. Patent No. 6,233,589 to Balcha et al. (“Balcha,” Ex. 1003) was not
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`considered during the original prosecution of the ‘799 or ‘657 patents, nor is it
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`cumulative of any prior art considered by the Examiner. Balcha was filed on July
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`31, 1998 and issued on May 15, 2001. The earliest priority date that the claims of
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`the ‘799 patent may be entitled to is May 3, 1999, which is the filing date of the
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`‘657 patent. Therefore, Balcha is available as prior art to the ‘799 patent under 35
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`U.S.C. § 102(e).
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`1-A Claims 1, 5, 9, 10, 23 and 24 Are Rendered Obvious by
`Balcha in view of Miller under 35 U.S.C. § 103
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`U. S. Patent No. 5,832,520 to William A. Miller (“Miller,” Ex. 1004) was
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`not considered during the original prosecution of the ‘799 or ‘657 patents, nor is it
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`cumulative of any prior art considered by the Examiner. Miller was filed on
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`16
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`Unfied Patents Exhibit 1008
`Pg. 21
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`November 22, 1996 and issued on November 3, 1998. The earliest priority date that
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`the claims of the ‘799 patent may be entitled to is May 3, 1999, which is the filing
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`date of the ‘657 patent. Therefore, Miller is available as prior art to the ‘799 patent
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`under 35 U.S.C. § 102(a)/(e).
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`A skilled artisan would have been motivated to combine the teachings of
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`Balcha and Miller given their similar purpose of sending delta files to enable remote
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`nodes to update target files. (Ex. 1007 at ¶¶ 24-27, 28, 48). A skilled artisan would
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`have recognized that Miller’s commentary about what was generally known in the
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`art concerning use of delta files to update software would be fully applicable to and
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`predictably combined with Balcha’s method for updating data files. (Id. at ¶¶ 22,
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`27, 48). With respect to the execution of updates with delta files, substitution of
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`data with software files and substitution of self-executing files for manually
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`executed files were entirely predictable and well known design choices. (Id. at ¶¶
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`27, 28, 48).
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`The following claim chart demonstrates, on a limitation-by-limitation basis,
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`how claims 5, 9, and 10 of the ‘799 patent are rendered obvious by Balcha in view
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`of Miller under 35 U.S.C. § 103(a).
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`US 6,738,799 Claim
`Language
`1. A method for a first
`computer to generate an
`update for transmission
`to a second computer
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`Correspondence to Balcha in View of Miller
`Balcha discloses a method and system for reflecting
`differences between two files (hereinafter, “base files”) stored
`on a first computer and a second computer, respectively. (Ex.
`1003 at 4:51-67). When a change is made to one of the base
`17
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`Unfied Patents Exhibit 1008
`Pg. 22
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`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,
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`files, that change is reflected in the copy stored on the second
`computer. (Id.)
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`This is accomplished by first breaking the base file into
`segments, and creating a signature for each segment:
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`…generating, from a base file, a base signature
`file that includes a plurality of base bit patterns.
`Each bit pattern is generated as a function of a
`portion of data in the base file. (Id. at 3:1-3).
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`When a copy of the base file (stored on the first computer, for
`example) is updated, a revised signature file is created:
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`A revised signature file, including a plurality of
`revised bit patterns, is generated from the revised
`file. (Id. at 3:4-6).
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`Once the revised signature file is created, the first computer
`compares the base signature file to the revised signa