UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`Unified Patents, Inc.,
`
`Petitioner,
`
`v.
`
`Clouding IP, LLC
`
`Patent Owner.
`
`____________
`
`IPR2013- _____
`
`Patent 6,738,799
`
`____________
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`

`

` 
`
`
`
`
`TABLE OF CONTENTS
`
` 
`EXHIBIT LIST ............................................................................................................................. iv 
`I. 
` INTRODUCTION............................................................................................................ 1 
`II.  MANDATORY NOTICES ............................................................................................... 3 
`A. 
`Real Party-In-Interest .................................................................................................. 3 
`B. 
`Related Matters ............................................................................................................ 4 
`C. 
`Lead and Back-Up Counsel ......................................................................................... 5 
`D. 
`Service Information ...................................................................................................... 5 
`III. 
`PAYMENT OF FEES ....................................................................................................... 5 
`IV.  REQUIREMENTS FOR INTER PARTES REVIEW ................................................... 5 
`A. 
`Grounds for Standing .................................................................................................. 5 
`B. 
`Identification of Challenge .......................................................................................... 6 
`1.  The Specific Art and Statutory Ground(s) on Which the Challenge is Based ........ 6 
`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 ........................................................................................... 8 
`Declaration Evidence ................................................................................................... 8 
`The State of the Art ...................................................................................................... 8 
`The ‘156 Patent Application ...................................................................................... 11 
`The Prosecution History ............................................................................................ 12 
`BROADEST REASONABLE CONSTRUCTION ...................................................... 13 
`Signature List .............................................................................................................. 14 
`Update .......................................................................................................................... 15 
`Command to Copy ...................................................................................................... 15 
`Command to Insert .................................................................................................... 15 
`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
`a File ............................................................................................................................. 15 
`Without Interaction .................................................................................................... 16 
`The Preambles ............................................................................................................ 16 
`
`V. 
`A. 
`B. 
`C. 
`D. 
`VI. 
`A. 
`B. 
`C. 
`D. 
`E. 
`
`F. 
`G. 
`
`
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`
`ii
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`

`

` 
`
`B. 
`C. 
`
`D. 
`
`VII.  THE GROUNDS SHOWING THAT PETITIONER HAS A REASONABLE
`LIKELIHOOD OF PREVAILING ........................................................................................... 16 
`Claims 1, 5, 9, 10, 12, 16, 20, 21, 23, 24, 30 and 31 Are Rendered Obvious by
`A. 
`Balcha in view of Miller under 35 U.S.C. § 103 ....................................................... 16 
`Claims 37 and 42 Are Anticipated by Balcha under 35 U.S.C. § 102(e) ............... 26 
`Claims 6-8 and 17-19 Are Rendered Obvious by Balcha, Miller and Freivald
`under 35 U.S.C. § 103 ................................................................................................. 28 
`Claims 1, 12, 23, 24, 30, 31, 37, and 42 Are Anticipated by Williams under 35
`U.S.C. § 102(e) ............................................................................................................. 31 
`Claims 5-10 and 16-21 Are Rendered Obvious by Williams in View of Miller
`under 35 U.S.C. § 103. ................................................................................................ 40 
`Claims 1, 12, 23, 30, 37, and 42 are Rendered Obvious by Balcha in view of
`Freivald under 35 U.S.C. § 103 ................................................................................. 45 
`VIII.  CONCLUSION ............................................................................................................... 57 
`CERTIFICATE OF SERVICE ................................................................................................. 59 
`
`
`E. 
`
`F. 
`
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`
`iii
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`

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` 
`
`1001
`1002
`
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`
`1011
`
`1012
`
`1013
`
`1014
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`1015
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`1016
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`EXHIBIT LIST
`
`U.S. Patent No. 6,738,799 to Dickinson
`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.
`
`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 Norman Hutchinson, Ph.D.
`Petition in IPR2013-00073
`Patent Owner Preliminary Response in IPR2013-00073
`Board’s Decision Instituting Inter Partes Review in IPR2013-
`00073
`Franklin, M. et al., “A Framework for Scalable Dissemination-
`Based System,” Proceedings of the 12th ACM SIGPLAN
`Conference on Object-oriented Programming, Systems,
`Languages, and Applications, 94-105 (1997).
`Yan, T.W., et al., “SIFT – A Tool for Wide-Area Information
`Dissemination,” Proceedings of the USENIX 1995 Technical
`Conference, 176-186 (1995).
`Franklin, M., et al., “Data In Your Face:” Push Technology in
`Perspective,” SIGMOD ’98 Proceedings of the 1998 ACM
`SIGMOD International Conference on Management of Data,
`516-519 (June 1-4, 1998).
`Hunt, J.W., et al., “An algorithm for differential file
`comparison,” Bell Laboratories Computing Science Technical
`Report #41 (July 1976).
`Tridgell, A., et al., “The rsync algorithm,” The Australian
`National University Joint Computer Science Technical Report
`Series, TR-CS-95-05, 1-6 (June 1996).
`Tridgell, A., “Efficient Algorithms for Sorting and
`Synchronization,” Doctoral Dissertation Presented at the
`Australian National University (Feb. 1999).
`
`
`
`iv
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`

`

` 
`
`1017
`
`
`
`
`
`
`
`Cane, D., et al., “High Performance Backup via Selective File
`Saving Which Can Perform Incremental Backups and Exclude
`Files and Uses a Changed Block Signature List,” U.S. Patent
`No. 5,765,173, filed January 11, 1996 and issued June 9, 1998.
`
`
`
`
`
`
`
`v
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`

` 
`
`I.
`
` INTRODUCTION
`
`Petitioner Unified Patents, Inc., (“Unified Patents” or “Petitioner”)
`
`respectfully requests inter partes review (IPR) of claims 1, 5-10, 12, 16-21, 23, 24,
`
`30, 31, 37, and 42 of U.S. Patent No. 6,738,799 (the “‘799 patent,” attached as Ex.
`
`1001) in accordance with 35 U.S.C. §§ 311–319 and 37 C.F.R. § 42.100 et seq.
`
`The ‘799 patent has been the subject of two terminated IPRs: IPR2012-
`
`00073 (“IPR-073”) and IPR2013-00261 (“IPR-261”). In IPR-073, the PTAB
`
`instituted trial, and the case settled shortly after the patent owner attempted to
`
`amend its claims, thus conceding to the unpatentability of the challenged claims
`
`over the prior art of record. See e.g., Exs. 1008, 1010. The instant petition
`
`challenges the same claims under the same grounds on which the PTAB instituted
`
`trial in the IPR-073 petition. The instant petition also includes an additional
`
`ground from the IPR-261 petition that directly refutes the arguments that the Patent
`
`Owner made to distinguish its claims in the IPR-073 petition. This additional
`
`ground is therefore noncumulative. Thus, the PTAB should institute trial.
`
`The ‘799 patent is generally directed to methods for synchronizing files
`
`between a first computer and a second computer. More particularly, the ‘799
`
`patent is directed to a file synchronization technique wherein a first computer (such
`
`as a server) determines whether a second computer (such as a client) has the latest
`
`version of a subscription file. (Ex. 1001 at 3:36-44). A subscription file is a
`
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`
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`
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`1
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`

`

` 
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`shared network document in which multiple clients are interested in keeping track
`
`of changes to the document such that the client’s local version of the file is up-to-
`
`date. (Id. at 6:46-56; 7:56-57). If the client’s file is out of date, the server
`
`generates a “delta” or update file by comparing the signature list of the most
`
`current version of the subscription file with an old signature list representing the
`
`version of subscription file last transmitted to the client computer. (Id. at 3:45 -
`
`4:1; 4:16-23). The delta or update file is sent to the client computer, which
`
`thereafter alters the file as prescribed in the delta or update file such that the
`
`client’s file is updated to match the current version of the file stored at the server.
`
`(Id. at 4:30-32; 3:45-49).
`
`As demonstrated by various references which were not before the Examiner,
`
`delta file synchronization and document push techniques were well known to a
`
`person of ordinary skill in the art well before the earliest claimed priority date of
`
`the ‘799 patent. (Id.) For example, U.S. Patent No. 6,233,589 to Balcha (“Balcha,”
`
`Exhibit 1003), discloses a “differencing mechanism that quickly and efficiently
`
`determines the differences between two files, . . . generates a delta file reflecting
`
`those differences” and then sends the delta file to a remote computer which uses
`
`the delta file to update its local copy and thereby generate a revised, updated file.
`
`(Ex. 1003 at 4:48-5:3). U.S. Patent No. 5,832,520 to Miller (“Miller,” Ex. 1004)
`
`similarly describes a method for generating “very efficient difference files … from
`
`
`
`
`
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`2
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`

`

` 
`
`an old file and a new file so that a difference file can be transmitted to a second
`
`computer system where the difference file and a duplicate of the old file can
`
`quickly be used to create a copy of the new file, duplicating the new file as it
`
`existed on the first computer system.” (Ex. 1004 at 2:38-48). Further, U.S. Patent
`
`No. 5,990,810 to Ross Neil Williams (“Williams,” Ex. 1006) discloses a “fine-
`
`grained incremental backup system” wherein a first computer generates and
`
`transmits an incremental backup file (i.e., an update file) to a second computer
`
`which in turn uses the incremental backup file to generate a copy of the current
`
`version of the complete file stored at the first computer. (See Ex. 1006 at 19:29-
`
`33).
`
`The Balcha, Miller, and Williams references, none of which were considered
`
`by the Examiner, anticipate or render obvious the challenged claims of the ‘799
`
`patent.
`
`
`II. MANDATORY NOTICES
`
`
`
`Pursuant to 37 C.F.R. § 42.8(a)(1), Unified Patents provides the following
`
`mandatory disclosures.
`
`A. Real Party-In-Interest
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Unified Patents is
`
`the real party-in-interest, and further certifies that no other party exercised control
`
`
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`3
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` 
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`or could exercise control over Unified Patents’ participation in this proceeding, the
`
`filing of this petition, or the conduct of any ensuing trial.
`
`B. Related Matters
`The ‘799 patent was the subject of two IPRs that are now terminated:
`
`IPR2012-00073 and IPR2013-00261. The ‘799 patent is the subject of many
`
`district court litigations, none of which involve Unified Patents:
`
`1. Clouding IP, LLC v. EMC Corp., et al., D.Del., Case No. 1:13-cv-
`01455.
`2. Clouding IP, LLC v. Dropbox Inc., D.Del., Case No. 1:13-cv-01454.
`3. Clouding IP, LLC v. SAP AG, et al., D.Del., Case No. 1:13-cv-
`01456.
`4. Clouding IP, LLC v. Verizon Inc., D.Del., Case No. 1:13-cv-01458.
`5. Clouding IP, LLC v. Rackspace, Hosting Inc., D.Del., Case No.
`1:12-cv-00675.
`6. Clouding IP, LLC v. Amazon.com Inc., D.Del., Case No. 1:12-cv-
`00641.
`7. Clouding IP, LLC v. Oracle Corp., D.Del., Case No. 1:12-cv-00642.
`8. Clouding IP, LLC v. Google Inc., D.Del., Case No. 1:12-cv-00639.
`9. Clouding IP, LLC v. Apple Inc., D.Del., Case No. 1:12-cv-00638
`(terminated).
`10. Clouding IP, LLC v. Microsoft Corp., D.Del., Case No. 1:12-cv-
`00640 (terminated).
`
`
`
`
`
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`4
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` 
`
`
`
`C. Lead and Back-Up Counsel
`
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner provides the following
`
`designation of counsel: Lead counsel is Michael L. Kiklis (Reg. No. 38,939) and
`
`back-up counsel is Scott A. McKeown (Reg. No. 42,866).
`
`Service Information
`
`D.
`Pursuant to 37 C.F.R. § 42.8(b)(4), papers concerning this matter should be
`
`served on the following.
`
`Address: Michael L. Kiklis or Scott McKeown
`Oblon Spivak
`1940 Duke Street
`Alexandria, VA 22314
`cpdocketkiklis@oblon.com and
`cpdocketmckeown@oblon.com
`Telephone: (703) 413-3000
`Fax:
`
`(703) 413-2220
`
`Email:
`
`
`III. PAYMENT OF FEES
`
`The undersigned authorizes the Office to charge the required fees as well as
`
`any additional fees that might be due to Deposit Account No. 15-0030.
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW
`
`As set forth below and pursuant to 37 C.F.R. § 42.104, each requirement for
`
`inter partes review of the ‘799 patent is satisfied.
`
`A. Grounds for Standing
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner hereby certifies that the ‘799
`
`patent is available for inter partes review and that the Petitioner is not barred or
`
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`
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`5
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` 
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`estopped from requesting inter partes review challenging the claims of the ‘799
`
`patent on the grounds identified herein.
`
`B. Identification of Challenge
`Pursuant to 37 C.F.R. §§ 42.104(b) and (b)(1), Petitioner requests inter
`
`partes review of claims 1, 5-10, 12, 16-21, 23, 24, 30, 31, 37, and 42 of the ‘799
`
`patent (“the challenged claims”), and requests that the Patent Trial and Appeal
`
`Board (“PTAB”) cancel those claims.
`
`1.
`
`The Specific Art and Statutory Ground(s) on Which the
`Challenge is Based
`
`Pursuant to 37 C.F.R. § 42.204(b)(2), inter partes review of the ‘799 patent
`
`
`
`is requested in view of the following references, each of which is prior art to the
`
`‘799 patent under 35 U.S.C. § 102(a), (b), and/or (e):
`
`(1) U.S. Patent No. 6,233,589 to Balcha et al. (“Balcha,” Ex. 1003),
`
`issued May 15, 2001 from an application filed July 31, 1998. Balcha is prior art to
`
`the ‘799 patent under at least 35 U.S.C. § 102(e).
`
`(2) U.S. Patent No. 5,832,520 to William A. Miller (“Miller,” Ex. 1004),
`
`issued November 3, 1998 from an application filed November 22, 1996. Miller is
`
`prior art to the ‘799 patent under at least 35 U.S.C. § 102(a)/(e).
`
`(3) U.S. Patent No. 5,898,836 to Freivald et al. (“Freivald,” Ex. 1005),
`
`issued April 27, 1999 from an application filed January 14, 1997. Freivald is prior
`
`art to the ‘799 patent under at least 35 U.S.C. § 102(a)/(e).
`
`
`
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`6
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` 
`
`(4) U.S. Patent No. 5,990,810 to Ross Neil Williams (“Williams,” Ex.
`
`1006), issued November 23, 1999 from PCT Application No. PCT/AU96/00081
`
`filed February 15, 1996 and entered the U.S. national stage under 35 U.S.C. § 371
`
`on August 15, 1997. Williams is prior art to the ‘799 patent under at least 35
`
`U.S.C. § 102(e).
`
`Grounds of Unpatentability
`
`1. Williams anticipates claims 1, 12, 23, 24, 30, 31, 37, and 42 under §
`
`102(e).
`
`2. Williams and Miller render obvious claims 5-10 and 16-21 under § 103.
`
`3. Balcha anticipates claims 37 and 42 under § 102(e).
`
`4. Balcha and Miller render obvious claims 1, 5, 9, 10, 12, 16, 20, 21, 23,
`
`24, 30, and 31 under § 103.
`
`5. Balcha, Miller, and Freivald render obvious claims 6-8 and 17-19 under § 
`
`103.
`
`6. Balcha and Freivald render obvious claims 1, 12, 23, 30, 37 and 42 under
`
`§ 103.
`
`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
`
`Pursuant to 37 C.F.R. § 42.204(b)(4), an explanation of how the challenged
`
`
`
`
`claims are unpatentable under the statutory grounds identified above, including the
`
`
`7
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`

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`
`identification of where each element of the claim is found in the prior art, is
`
`provided in Section VII, below, in the form of claims charts. Pursuant to 37 C.F.R.
`
`§ 42.204(b)(5), the appendix numbers of the supporting evidence relied upon to
`
`support the challenges and the relevance of the evidence to the challenges raised,
`
`including identifying specific portions of the evidence that support the challenges,
`
`are provided in Section VII, below, in the form of claim charts.
`
`V.
`
`FACTUAL BACKGROUND
`A. Declaration Evidence
`This Petition is supported by the declaration of Professor Norman
`
`Hutchinson, Ph.D. from the University of British Columbia (attached as Ex. 1007).
`
`Dr. Hutchinson offers his opinion with respect to the content and state of the prior
`
`art. Dr. Hutchinson is an Associate Professor of Computer Science at the
`
`University of British Columbia. He has over twenty-five years of experience in
`
`distributed systems and has written and lectured extensively on this topic. See Ex.
`
`1007.
`
`B. The State of the Art
`
`From the 1970s until the present day, a substantial body of research has
`
`reported on the advent and subsequent advancement in distributed computing
`
`systems. (Ex. 1007 at ¶ 12). Distributed systems represent a collection of stand-
`
`alone computing machines (servers, client-PCs, etc.) that are connected through a
`
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`8
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`network, such as the internet or a corporate intranet. (Id.) One area of distributed
`
`system research which is of particular relevance to the ‘799 patent is commonly
`
`referred to as event-based notification. (Id.)
`
`Event-based notification systems are used to push notifications from a
`
`publisher to a subscriber regarding a specified event. (Id. at ¶ 13). In a
`
`publish/subscribe system, clients subscribe to events in which they are interested,
`
`and when that event occurs, a server is used to push the published data to the
`
`client. (Id.) By 1996, the publish/subscribe (push) methodology was being used to
`
`automatically deliver web content (such as news headlines, weather forecasts, etc.)
`
`and software updates to subscribed clients. (Id.)
`
`Developing in parallel to these advancements was a body of research
`
`regarding efficient mechanisms for synchronizing changes to identical files saved
`
`at multiple locations across a network. (Id. at ¶ 14). For example, a master copy
`
`of a file may be located at a server (“computer A”), and a replica of the file may be
`
`saved at a client PC (“computer B”). (Id. at ¶ 15). When the master copy is
`
`updated, it does not make sense to transfer the entire new file to computer B. (Id.)
`
`Rather, only the differences between the two files should be transferred to
`
`computer B. (Id.)
`
`To address this issue, the “RSYNC algorithm” was developed by Andrew
`
`Tridgell and Paul Mackerras in 1996. (Id. at ¶ 16). RSYNC operated by
`
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`9
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`identifying segments of an old and new file that are identical to one another and
`
`only transmitting raw data for those parts of the new file that did not previously
`
`exist in the old file. (Id.) In this manner, and following the scenario described
`
`above involving computers A and B, when computer A updated its copy of the
`
`shared file, computer B received an executable delta file that would allow
`
`computer B to generate a copy of the up-to-date file as it existed at computer A.
`
`(Id.) RSYNC, and a variety of other differenced-based update algorithms, such as
`
`that disclosed by U.S. Pat. No. 5,765,173 to Cane et al. (Ex. 1007 at ¶ 18) and U.S.
`
`Pat. No. 5,990,810 to Williams (“Williams,” Ex. 1006), were also deployed to
`
`implement incremental file backup systems. (Ex. 1006 at 19:27-28; Ex. 1007 at ¶
`
`18). In an incremental file backup system, a single computer, without interaction
`
`with any other device, executes a difference algorithm to identify all portions of a
`
`file which have been modified since a previous backup of the file. (Ex. 1006 at
`
`19:29-51; Ex. 1007 at ¶ 18). The modifications, along with instructions to recreate
`
`the updated version of the file, are transmitted and saved to a backup server or tape
`
`drive. (Ex. 1006 at 19:51-56; Ex. 1007 at ¶ 18).
`
`Accordingly, several years prior to the effective filing date of the ‘799 patent
`
`it was well known that difference-based update files could be generated by a single
`
`computer, without interaction with another device. (Ex. 1006 at 20:6-10; Ex. 1007
`
`at ¶¶ 17-18).
`
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`10
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`
`
`C. The ‘156 Patent Application
`Application No. 10/452,156 (“the ‘156 application”), which issued at the
`
`‘799 patent, was filed on June 2, 2003, as a continuation of Application No.
`
`09/303,958, filed May 3, 1999, which is now Patent No. 6,574,657 (“the ‘657
`
`patent”).
`
`The ‘156 application describes a mechanism to keep files on remote devices
`
`(including other computers) up-to-date (consistent) with a master set of files. The
`
`technique involves computers in two roles: the holder of the true copy (hereinafter,
`
`“master”) and the remote computer (hereinafter, “client”). The technique is
`
`simple, and consists of four basic steps.
`
`First, the client downloads a copy of the files and subscribes to files with the
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`master. (Ex. 1001 at 7:50-55). The master notes that the client has subscribed and
`
`further generates a set of hashes associated with the blocks of the file (hereinafter,
`
`referred to as the subscription phase). (Id. at 7:64 - 8:6).
`
`Second, the master monitors the files and directories for which there are
`
`outstanding subscriptions. (Id. at 7:55-60). When it is determined that a file has
`
`changed (using date and time stamp comparisons (Id. at 6:59-60)) the master
`
`generates a delta or update file by comparing each segment of the old file with
`
`each segment of the new file. (Id. at 10:66 – 11:8). The delta file comprises copy
`
`commands for each segment of data that existed in both the old and new files, as
`
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`11
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`well as insert commands (with associated raw data) for each segment of data in the
`
`new file that did not match any segment of the old file. (Id. at 11:60 - 12:13; Fig.
`
`11).
`
`Third, as described in the preferred embodiment of the ‘799 patent, the
`
`master packages the delta file into a self extracting executable that is suitable for
`
`emailing, and emails the executable to all clients that are subscribed to the file.
`
`(Id. at 4:30-32; 11:52-57; 12:53-56).
`
`Fourth, the client connects with its mail server, downloads the email
`
`containing the self-extracting delta file, and executes the self-extracting delta file,
`
`thereby updating the files on the client computer. (Id. at 12:53-66).
`
`D. The Prosecution History
`
`During prosecution of the ‘156 application the Examiner raised only
`
`statutory and non-statutory double patenting rejections; however, prior art based
`
`patentability rejections were presented in connection with the parent ‘958
`
`application. In that application, the Patent Owner amended independent claims 1,
`
`11, and 21 to recite the following:
`
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`
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`12
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` 
`
`(Ex. 1002 at November 14, 2002 Patent Owner Response to Office Action, pgs. 11,
`
`14-17). A notice of allowance followed. (Id. at December, 3 2002 Notice of
`
`Allowance).
`
`
`
`Given that similar limitations are present in the ‘156 application claims,
`
`which issued as the ‘799 patent, it appears that the ‘799 patent was allowed
`
`primarily because the Office believed that the prior art failed to teach a method of
`
`updating files between a first and second computer wherein the first computer,
`
`without interacting with the second computer, determines if the second computer
`
`has the latest version of a monitored file and sends an update file to the second
`
`computer if the second computer’s version of the file is out of date.
`
`VI. BROADEST REASONABLE CONSTRUCTION
`
`
`Pursuant to 37 C.F.R. § 42.204(b)(3), the claims subject to inter partes review
`
`shall receive the “broadest reasonable construction in light of the specification of
`
`the patent in which [they] appear[].” See 42 C.F.R. § 100(b); see also In re
`
`Swanson, No. 07-1534 (Fed. Cir. 2008); In re Trans Texas Holding Corp., 498
`
`F.3d 1290, 1298 (Fed. Cir. 2007) (citing In re Yamamoto, 740 F.2d 1569, 1571
`
`(Fed. Cir. 1984)). As the Federal Circuit noted in Trans Texas, the Office has
`
`traditionally applied a broader standard than a Court does when interpreting claim
`
`scope. Moreover, the Office is not bound by any district court claim construction.
`
`Trans Texas, 498 F.3d at 1297-98, 1301. Rather,
`
`
`
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`
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`13
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` 
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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).
`
`Because the standards of claim interpretation used by the Courts in patent
`
`litigation are different from the claim interpretation standards used by the Office in
`
`claim examination proceedings (including inter partes review), any claim
`
`interpretations submitted herein for the purpose of demonstrating a Reasonable
`
`Likelihood of Prevailing are neither binding upon litigants in any litigation, nor do
`
`such claim interpretations correspond to the construction of claims under the legal
`
`standards that are mandated to be used by the Courts in litigation.
`
`All claimed terms not specifically addressed below have been accorded their
`
`broadest reasonable interpretation in light of the patent specification including their
`
`plain and ordinary meaning. For the purposes of this petition, Unified Patents
`
`adopts and applies the Board’s construction of the following terms, which were set
`
`forth in the Board’s decision to institute inter partes review in IPR2013-00073.
`
`(See Ex. 1010 at 7-16).
`
`A.
`Signature List
`A signature list is “a collection (e.g., table) of representations of variable
`
`length segments of a subject file, which representations serve to identify the
`
`
`
`
`
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`14
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` 
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`segments from which they are determined (e.g., a table of hashes).” (Ex. 1010 at
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`9).
`
`B. Update
`
`An update is construed as “information for updating a file or an up-to-date
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`version of a file.” (Ex. 1010 at 10).
`
`C.
`
`Command to Copy
`
`A command to copy is construed to mean “an instruction that causes the
`
`computer to duplicate information or data.” (Ex. 1010 at 11).
`
`D.
`
`Command to Insert
`
`A command to insert is construed to mean “an instruction that causes the
`
`computer to put or introduce certain information or data into another file.” (Ex.
`
`1010 at 13-14).
`
`E.
`
`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 a File
`
`Consistent with the broadest reasonable interpretation of this term, the Board
`
`determined that “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 a file” does not require that the second computer possess some version
`
`of the file prior to “transmitting the update from the first computer to the second
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`computer.” (Ex. 1010 at 14).
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`
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`15
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`F. Without Interaction
`
`The term “without interaction” is interpreted as limiting the interaction
`
`between first and second computers only as specifically recited in the claims. (Ex.
`
`1010 at 15-16).
`
`G.
`
`The Preambles
`
`The Board determined that the preambles of claims 1, 23, and 37 of the ‘799
`
`patent, which correspond to claims 12, 30, and 42, are limiting. (Ex. 1010 at 16).
`
`VII. THE GROUNDS SHOWING THAT PETITIONER HAS A
`REASONABLE LIKELIHOOD OF PREVAILING
`
`The references addressed below each provide the teaching believed by the
`
`Examiner to be missing from the prior art and variously anticipate or render
`
`obvious the claimed subject matter.
`
`A. Claims 1, 5, 9, 10, 12, 16, 20, 21, 23, 24, 30 and 31 Are Rendered
`Obvious by Balcha in view of Miller under 35 U.S.C. § 103
`
`The PTAB instituted trial in IPR-073 on this ground for claims 1, 5, 9, 10,
`
`23 and 24. Ex. 1010 at 31. In this petition, Petitioner includes those claims as well
`
`as their near-identical, storage-claim counterparts: claims 12, 16, 20, 21, 30, and 31.
`
`U.S. Patent No. 6,233,589 to Balcha et al. (“Balcha,” Ex. 1003) was not
`
`considered during the original prosecution of the ‘799 or ‘657 patents, nor is it
`
`cumulative of any prior art considered by the Examiner. Balcha was filed on July
`
`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
`
`‘657 patent. Therefore, Balcha is available as prior art to the ‘799 patent under 35
`
`U.S.C. § 102(e).
`
`U. S. Patent No. 5,832,520 to William A. Miller (“Miller,” Ex. 1004) was
`
`not considered during the original prosecution of the ‘799 or ‘657 patents, nor is it
`
`cumulative of any prior art considered by the Examiner. Miller was filed on
`
`November 22, 1996 and issued on November 3, 1998. The earliest priority date that
`
`the claims of the ‘799 patent may be entitled to is May 3, 1999, which is the filing
`
`date of the ‘657 patent. Therefore, Miller is available as prior art to the ‘799 patent
`
`under 35 U.S.C. § 102(a)/(e).
`
`A skilled artisan would have been motivated to combine the teachings of
`
`Balcha and Miller given their similar purpose of sending delta files to enable remote
`
`nodes to update target files. (Ex. 1007 at ¶¶ 31-32, 39-48). 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. (Id.). With
`
`respect to the execution of updates with delta files, substitution of data with
`
`software files and substitution of self-executing files for manually executed files
`
`were entirely predictable and well known design choices. (Id.).
`
`
`
`
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`17
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` 
`
`The following claim chart demonstrates, on a limitation-by-limitation basis,
`
`how claims 1, 5, 9, 10, 23 and 24 of the ‘799 patent are rendered obvious by Balcha
`
`in view of Miller under 35 U.S.C. § 103(a).
`
`US 6,738,799 Claim
`Language
`1. A method for a first
`computer to generate an
`update for transmission
`to a second computer
`that permits the second
`computer to generate a
`copy of a current
`version of a file
`comprised of a first
`plurality of file
`segments from a copy of
`an earlier version of the
`file comprised of a
`second plurality of file
`segments, such that each
`file segment
`corresponds to a portion
`of its respective file, the
`method comprising the
`steps of: for each
`segment of the current
`version of the file,
`
`
`
`
`
`
`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
`files, that change is reflected in the copy stored on the second
`computer. (Id.)
`
`This is accomplished by first breaking the base file into
`segments, and creat