UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`UNIFIED PATENTS, Inc.
`Petitioner
`v.
`Patent of CLOUDING IP, LLC
`Patent Owner
`____________
`Case IPR 2013-000586
`Patent 6,738,799
`____________
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,738,799
`UNDER 35 USC §§ 311-319 AND 37 CFR §42.100 ET SEQ.
`
`
`
`
`
`

`
`Table of Contents
`1. Introduction ................................................................................................ 1
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`2. Overview of U.S. Patent 6,738,799 .............................................................. 2
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`3. Claim Terms Requiring Construction .......................................................... 3
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`A. Claims 1, 12, 23, and 30 Require that a Command to Copy be Written
`into the Update. ........................................................................................... 4
`
`B. Claims 37 and 42 Requires that a Check is Made to Determine Whether
`a Second Computer Has a Version of a File. ................................................. 7
`
`C. The Signature List Recited in Claims 1, 12, 23, and 30 is a
`Representation of a Segment of File. ............................................................. 9
`
`D. An Update is an Item that Allows a Second Computer to Build a
`Current Version of a File From a Local Copy of the File. ........................... 10
`
`4. Argument ................................................................................................... 12
`
`A. The Petition Fails to Identify All of the Real Parties in Interest, and is
`Barred Because More than One Year Has Passed Since the Real Parties in
`Interest were Served with a Complaint. ...................................................... 12
`
`B. Claims 37 and 42 Are Not Anticipated by Balcha. ............................... 20
`
`C. The Petition Fails to Establish a Reasonable Likelihood that at Least
`One Challenged Claim is Unpatentable Over Balcha When Considered in
`Combination with Miller. ........................................................................... 24
`
`D. The Petition Fails to Establish a Reasonable Likelihood that at Least
`One Challenged Claim is Unpatentable Over Balcha When Considered in
`Combination with Miller and Freivald. ...................................................... 36
`
`E. The Petition Fails to Establish a Reasonable Likelihood that Claims 1,
`12, 23, 30, 37, and 42 are Unpatentable Over Balcha When Considered in
`Combination with Freivald. ........................................................................ 38
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`5. Conclusion ................................................................................................. 52
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`F. The Petition Fails to Establish any Reasonable Likelihood that Claims 1,
`12, 23, 24, 30, and 31 are Anticipated by Williams. ................................... 41
`
`G. The Petition Fails to Establish any Reasonable Likelihood that Claims 5-
`10 and 16-21 are Unpatentable in View of Williams When Considered in
`Combination with Miller. ........................................................................... 47
`
`H. The Petition Fails to Establish any Reasonable Likelihood that Claims
`37 and 42 are Anticipated by Williams. ...................................................... 50
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`iii  
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`Table of Authorities
`
`
`Cases
`
`Bayer Schering Pharm. AG v. Barr Labs., Inc.,
`575 F.3d 1341 (Fed. Cir. 2009) (Newman, J., dissenting) ............................. 32
`
`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002) ............. 4
`
`Ex parte Levy, 17 USPQ2d 1461 (Bd. Pat. App. & Inter. 1990) .................... 45
`
`In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359 (Fed. Cir. 2004) ................... 4
`
`In re Fine, 837 F.2d 1071 (Fed. Cir. 1988) .................................................... 50
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ............................. 25, 31, 48
`
`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008) ....... 24, 47
`
`Richardson v. Suzuki Motor Co., 868 F.2d 1226 (Fed. Cir. 1989) ................... 23
`
`Verdegaal Bros. v. Union Oil Co. of California,
`814 F.2d 628 (Fed. Cir. 1987) ....................................................................... 51
`
`W.L. Gore & Associates, Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) ......... 34, 49
`
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`
`Statutes
`
`  
`
`35 U.S.C. § 312 (a)(2) ............................................................................. 12, 15
`
`35 U.S.C. § 315 (b) ....................................................................................... 19
`
`Regulations
`
`37 C.F.R. § 1.75(d)(1) ..................................................................................... 4
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`iv  
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`37 C.F.R. § 42.8(b) ................................................................................. 12, 15
`
`37 CFR § 42.101 ........................................................................................... 20
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`37 C.F.R. § 42.108(c) ...................................................................................... 2
`
`
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`Other Authorities
`
`157 Cong. Rec. S1375 (Mar. 8, 2011) ............................................................. 1
`
`157 Cong. Rec. S936-S953 (February 28, 2011) ........................................... 16
`
`H. Rep. 112-98 (2011) .................................................................................. 19
`
`H.R. Rep. No. 112-98 (part 1) (2011) ............................................................. 1
`
`Hearing before the Subcommittee on Intellectual Property, Competition and
`the Internet of the Committee on the Judiciary, House of Representatives,
`Serial No. 112-8 (February 11, 2011) ......................................................... 18
`
`MPEP § 2112 ................................................................................................ 45
`
`MPEP § 2142 ................................................................................................ 35
`
`MPEP § 2173.01 ......................................................................................... 8, 9
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012) ... 4, 12
`
`Patent Reform: The Future of American Innovation: Hearing Before the S.
`Comm. on the Judiciary, 110th Cong. (2007) ............................................ 17
`
`Senate Report No. 111-18, "Patent Reform Act of 2009" .............................. 17
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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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`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.”
`
`vi  
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`Pursuant to 37 C.F.R. § 42.107(a) Patent Owner, Clouding IP, LLC,
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`submits the following preliminary response to the Petition, setting forth reasons
`
`why no inter partes review should be instituted under 35 U.S.C. § 314.
`
`1. Introduction
`
`
`
`The Board should not institute inter partes review because Petitioner,
`
`Unified Patents, Inc., has not met the high standard1 required by Patent Office
`
`                                                                                                                
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`1 The “reasonable likelihood” standard was intended by Congress to be a
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`substantially higher barrier to patent validity challenges than the former
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`“substantial new question of patentability” test used for inter partes
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`reexaminations. See H.R. Rep. No. 112-98 (part 1) at 47 (2011) (“The
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`threshold for initiating an inter partes review is elevated from ‘significant new
`
`question of patentability’ – a standard that currently allows 95% of all requests
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`to be granted – to a standard requiring petitioners to present information
`
`showing that their challenge has a reasonable likelihood of success.”). Thus, the
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`new standard makes inter partes review available only in exceptional cases where
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`serious doubts about the patent’s validity are raised and a prima facie case has
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`been established. See 157 Cong. Rec. S1375 (Mar. 8, 2011) (statement of Sen.
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`Kyl (D-Ariz)).
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`regulations to demonstrate a reasonable likelihood that at least one of the claims
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`challenged in the Petition is unpatentable. 37 C.F.R. § 42.108(c).
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`
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`2. Overview of U.S. Patent 6,738,799
`
`
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`U.S. Patent 6,738,799 (the “’799 Patent”) (Ex. 1001) describes systems
`
`and methods for generating update files that permit a computer to generate a
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`current version of a file from a copy of an earlier version thereof. Ex. 1001 at
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`Abstract; col. 3, ll. 45-49. To facilitate this process, files are segmented and
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`each segment is represented by a signature. Id. at col. 8, ll. 7 et seq. Signatures
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`are representations of variable length segments of a subject file, which
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`representations serve to identify the segments from which they are determined.
`
`Id. at Fig. 4; col. 8, ll. 18-20, 29-54. Differences between a current version of a
`
`file and an earlier version thereof are determined using these signatures. See,
`
`e.g., Id. at 10:5-14. Based on these differences, an update file is constructed. Id.
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`at col. 10:66 – 11:50. The update file includes instructions (e.g., copy, insert)
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`for a recipient computer to construct the current version of the subject file from
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`its earlier version thereof and data included in the update file. Id. and see Fig.
`
`11 (reproduced here). Once created, the update file is provided to the recipient
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`computer, for example via email. Id. at 11:51-52.
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`2  
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`
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`Importantly, for purposes of the present proceedings, one of the
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`instructions included in the update file is a
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`“command . . . to copy an old segment of the
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`[receiving] computer’s copy of the earlier version of
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`the file into the [receiving] computer’s copy of the
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`current version of the file”. Id. at Claim 1, 14:53-
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`57; Claim 23, 16:61-65. Examples of such commands are illustrated in Fig. 11,
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`supra. Therefore, steps (b) in Claims 1, 12, 23, and 30 are properly understood
`
`as reciting the requirement of writing in the update, an instruction that causes
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`the second computer to duplicate information or data from an old segment of
`
`the second computer’s copy of the earlier version of the file into the second
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`computer’s copy of the current version of the file, wherein the old segment
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`corresponds to the segment for which a match was detected in step (a).
`
`
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`3. Claim Terms Requiring Construction
`
`
`
` Consistent with the statute and legislative history of the America Invents
`
`Act, when considering whether to institute a patent trial the Board has
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`indicated that it will interpret the claims of a challenged patent using a
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`“broadest reasonable construction” approach. Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012). In applying such a
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`standard, it is important to recognize that the broadest reasonable construction
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`of claim language is not one that permits any reading thereof. Instead, it is one
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`that must be made “in light of the specification as it would be interpreted by
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`one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
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`1359, 1364 (Fed. Cir. 2004). Further, unless the patentee has clearly
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`demonstrated an intention to stray, there is a “heavy presumption” that a claim
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`term carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick
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`Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Of course, patent claims must
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`“conform to the invention as set forth in the remainder of the specification and
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`the terms and phrases used in the claims must find clear support or antecedent
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`basis in the description so that the meaning of the terms in the claims may be
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`ascertainable by reference to the description.” 37 C.F.R. § 1.75(d)(1).
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`A. Claims 1, 12, 23, and 30 Require that a Command to Copy be
`Written into the Update.
`Each of claims 1, 12, 23, and 30 recites,
`
`writing a command in the update for the second computer
`to copy an old segment of the second computer's copy of
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`the earlier version of the file into the second computer's
`copy of the current version of the file
`
`The plain meaning of this limitation, the only one that is consistent with the
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`language of the claim, and the one that the Board should adopt when
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`construing the claim (for it is the broadest reasonable construction of same), is
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`that a command to copy be written into the update.
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`
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`The specification provides ample examples of the kinds of commands
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`that are written into the update, making it clear that it is a command to copy that
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`is being recited in the claims. For example and referring to Figure 10,
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`If step 1002 determines that there is a match between the
`new segment signature and the old segment signature, then
`the method 1000 writes a command in the update file to copy
`the old segment into the client computer's copy of the
`current version of the subscription file at step 1003.
`
`Ex. 1001 at col. 11, ll. 19-23 (emphasis added). Further,
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`FIG. 11 illustrates an update file generated by the method
`according to the present invention illustrated in FIG. 10
`applied to the earlier and current versions of the signature
`list illustrated in FIGS. 4 and 7, respectively. . . . The
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`command 1101 implements
`the copy of segment A1 into
`segment C1 illustrated by
`the arrow 910 shown in
`FIG. 9. . . . The copy
`command 1103
`implements the copying of
`segment A3 into segment
`C3 shown by arrow 911 in
`FIG. 9. The command
`1104 implements the
`copying of segment B4 into segment C4 illustrated by arrow
`921 shown in FIG. 9. The command 1105 implements the
`copying of segment B5 into segment C5 illustrated by the
`arrow 922 shown in FIG. 9. The command 1106
`implements the copying of the segment A5 into segment C6
`illustrated by arrow 912 shown in FIG. 9. The copy
`command 1107 implements the copying of segment A6 into
`segment C7 illustrated by arrow 913 in FIG. 9. Each of the
`copy commands 1101, 1103, 1106, and 1107 must specify
`for the client computer 201 where the segments to which
`they pertain are actually stored on the client computer.
`Id. at col. 11, l. 57 – col 12, l. 13 (emphasis added).
`
`These and other passages in the specification make it clear that the
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`
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`“command . . . to copy” referred to in claims 1, 12, 23, and 30 and that such a
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`command is written into the update that is provided to the second computer.
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`Thus, when construing the claims, the Board should require that a command to
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`copy be written in the update.
`
`
`
`B. Claims 37 and 42 Requires that a Check is Made to Determine
`Whether a Second Computer Has a Version of a File.
`Claims 37 and 42 recite,
`
`determining whether the second computer has a latest
`version of a file . . . ; and
`
`generating an update, if the second computer does not have
`a latest version of the file,
`
`The plain meaning of this limitation, and the one that the Board should adopt
`
`when construing the claim, is that the second computer must currently possess
`
`some version of the file.
`
`
`
`By articulating a process that requires a first computer to determine
`
`whether a second computer has a copy of a file (i.e., a latest version of that file),
`
`claims 37 and 42 necessarily implies that the second computer must already
`
`possess some version of the file. This is confirmed by studying the very “Field
`
`of the Invention” to which the ‘799 Patent is directed: “the present invention
`
`involves the synchronization of the local copies of files on user's [sic] client
`
`computer hard disk to the current versions of the files on a network drive.” Ex.
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`7  
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`1001 at col. 1, ll. 24-27. Inherent in the invention is the recognition that
`
`various versions of files are stored on various client computers and what is being
`
`proposed is a procedure for synchronizing those different versions. Such
`
`synchronization makes sense only in a context where the different versions of
`
`the files exist on the different computers. Absent such different versions, there is
`
`no need for the synchronization in the first place.
`
`
`
`Consider also the discussion above regarding the “copy command”. A
`
`copy command only has applicability in a regime where the second computer
`
`possesses some version of the subject file (e.g., in local storage at the second
`
`computer). Absent such a version, there is nothing for the second computer to
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`“copy” when trying to execute the instructions included in the update. Indeed,
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`copy commands would be utterly meaningless if the second computer did not
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`have a version of a file to which an update relates.
`
`The best source for determining the meaning of a claim is the
`
`specification. MPEP § 2173.01. Here, both the literal claim language and the
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`specification (and all of the examples included therein) dictate that claims 37
`
`and 42 be construed to require the second computer to currently possess a
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`version of a file to which an update relates and the Board should so construe
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`the claim.
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`8  
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`C. The Signature List Recited in Claims 1, 12, 23, and 30 is a
`Representation of a Segment of File.
`Each of claims 1, 12, 23, and 30 recites a “signature list”. As illustrated
`
`graphically in the ‘799 Patent, a
`
`signature list is a collection (e.g., a table)
`
`of representations of variable length
`
`segments of a subject file, which
`
`representations serve to identify the
`
`segments from which they are
`
`determined. Ex. 1001 at Fig. 4; col. 8, ll. 18-20, 29-54. One example of a
`
`signature list provided in the ‘799 Patent is a table of hashes. Id. at col. 8, ll. 20-
`
`28.
`
`The best source for determining the meaning of a claim is the
`
`specification. MPEP § 2173.01. Here, both the literal claim language and the
`
`specification require that the “signature list” of claims 1, 12, 23, and 30 be
`
`considered a collection of representations of segments of a file.
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`D. An Update is an Item that Allows a Second Computer to Build
`a Current Version of a File From a Local Copy of the File.
`Each of claims 1, 12, 23, 30, and 37 and 42 recite, “an update”. The
`
`‘799 Patent explains that an update (or update file) is an item that is
`
`transmitted from a first computer to a second computer and that includes
`
`information that allows the second computer to build a current version of a file
`
`from an earlier, locally stored version of that file:
`
`According to the present invention, the new or changed
`segments B2, B4 and B5 are extracted from the current
`version of the subscription file stored on the network drive
`202 by the server computer 203, and are packaged in an
`update file 801 for transmission to the client computer 201
`shown in FIG. 2 so that the client computer 201 can build
`a copy of the current version of the subscription file from
`its copy of the earlier version of the subscription file.
`
`Id. at col. 10, ll. 15-22. In its simplest form, the update may contain just
`
`changes made to a file (e.g., in a compressed state), but the ‘799 Patent also
`
`advocates the use of updates that include primitives, i.e., commands, that
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`instruct the second computer as to how to build the new version of the file
`
`using the data included in the update. Id. at col. 11, l. 60 – col. 12, l. 13.
`
`Regardless of the contents, however, the ‘799 Patent makes clear that an
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`update is something that is to be applied to an existing copy of a file at the
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`second computer that allows the second computer to build the newer version
`
`on that file. Even the “Field of the Invention” to which the ‘799 Patent is
`
`directed: “the present invention involves the synchronization of the local copies
`
`of files on user's client computer hard disk to the current versions of the files on
`
`a network drive”, Ex. 1001 at col. 1, ll. 24-27, includes a recognition that
`
`various versions of files are stored on various client computers and what is being
`
`proposed is a procedure for synchronizing those different versions. Such
`
`synchronization makes sense only in a context where the different versions of
`
`the files exist on the different computers (after all, absent such different
`
`versions, there is no need for the synchronization in the first place) and the
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`synchronization is accomplished through the updates that allow computer to
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`bring current their local copies of files by application of the updates to those
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`local copies.
`
`The plain meaning of “update” then, and the one that the Board should
`
`adopt when construing the claims, is an item that allows a second computer to
`
`build a current version of a file from a local copy of that file.
`
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`4. Argument
`
`A. The Petition Fails to Identify All of the Real Parties in
`Interest, and is Barred Because More than One Year Has
`Passed Since the Real Parties in Interest were Served with a
`Complaint.
`The Petition fails to identify all the real parties-in-interest; hence, the
`
`PTAB lacks statutory authority to institute the requested proceedings. The
`
`America Invents Act requires that, “A petition filed under section 311 may be
`
`considered only if . . . (2) the petition identifies all real parties in interest. 35
`
`U.S.C. § 312 (a)(2). Further, PTAB rules require that the petitioner provide
`
`certain mandatory notices, including of the real parties-in-interest:
`
`Each of the following notices must be filed: (1)
`
`"Identify each real party-in-interest for the party.
`
`37 C.F.R. § 42.8(b).
`
`Although the term "real party-in-interest" generally means a party "that
`
`desires review of the patent," see Office Patent Trial Practice Guide, 77 Federal
`
`Register 48756, 48759, an important consideration in identifying a “real party-
`
`in-interest” is whether the non-party “has the actual measure of control or
`
`opportunity to control that might reasonably be expected between two formal
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`coparties.” Id., citing Charles Alan Wright, Arthur R. Miller & Edward H.
`
`Cooper, Federal Practice & Procedure§§ 4451. Here, the Petition fails to
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`identify any of the real parties-in-interest other than Petitioner itself. Yet
`
`Petitioner is not the sole entity in control.
`
`A report by Bloomberg L.P.’s Susan Decker published October 14,
`
`2013, entitled “Google, NetApp Sidestep Courts to Combat Patent Claims”
`
`notes that, “For small companies that may be unable to finance patent
`
`challenges, Google and NetApp started Unified Patents Inc. to help them pool
`
`resources.” Ex. 2001 at p. 3. That is, Google Inc. was identified as one of the
`
`founding principals of Petitioner, Unified Patents, Inc. Petitioner, itself
`
`confirmed this relationship stating, “Founding members in Unified Patents
`
`include technology leaders Google and NetApp.” Ex. 2005 at p. 1.
`
`Petitioner promotes itself as “counter[ing] the risk and cost of patent
`
`troll litigation by protecting strategic technologies.” Ex. 2003 at p. 2. With
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`specific reference to the ‘799 Patent at issue in these proceedings, Petitioner has
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`formed a “Cloud Storage Micro-Pool, which introduces a cost-effective solution
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`for companies to protect strategic technologies from NPE encroachment, like
`
`cloud storage.” Id. That is, Petitioner accepts money from others who pay
`
`Petitioner for filing inter partes review petitions in which Petitioner names itself
`
`as the sole real party in interest. The payments are the quid pro quo in exchange
`
`for the filing of the petitions and the scheme is intended to allow the true entity
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`13  
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`concerned about the underlying patent to avoid the estoppel effects of inter
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`partes review should the patent survive. Thus, Petitioner (and it’s clients) are
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`behaving in precisely the activities found objectionable in the Troll Busters
`
`reexamination proceedings.
`
`Inter partes reexamination 95/001,045 concerned U.S. Patent 6,869,779.
`
`Troll Buster’s, Inc. an entity that self-described it’s business as “invalidat[ing]
`
`patents, not just any patents but patents being asserted by patent trolls, those
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`ugly beasts who try to dominate the innovations of others.” Troll Busters “takes
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`aim [at the patents] and fires in our own name. The patent Troll will never
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`know who or how many are behind the ‘hit’.” Ex. 2004 at pp. 7-8.
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`If Troll Busters had filed an ex-parte re-examination request the real
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`party in question would not have been an issue. However, in inter partes
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`reexamination, “an entity named as the sole real party in interest may not
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`receive a suggestion from another party that a particular patent should be the
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`subject of a request… and be compensated by that party for the filing of the
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`request …without naming the [other] party[.]” Id. Furthermore, “an entity
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`may not be paid, or be directed or controlled as to the manner in which the
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`request for inter partes reexamination is filed for a given patent, without
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`naming the party or parties who paid for, or directed/controlled, the filing of
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`14  
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`the request for inter partes reexamination.” Id. at 8. Troll Busters’ failure to
`
`identify all of the real parties in interest resulted in the filing date accorded the
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`request for inter partes reexamination being vacated.
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`Just as 35 U.S.C. §§ 315 and 317 and 37 C.F.R. § 1.907 were intended
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`to limit the potential for circumvention of the inter partes reexamination
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`estoppel provisions, 35 U.S.C. § 312 (a)(2) and 37 C.F.R. § 42.8(b) are
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`intended to prevent a petitioner, and its privies, from filing petitions for inter
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`partes review under cover of anonymity in an effort to harass the patent owner.
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`Throughout the discussions in Congress preceding the passage of the AIA, it is
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`clear that Congress wanted to prevent repeated challenges to the validity of a
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`patent at the PTO and in district courts:
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`The bill would … establish an adversarial inter partes
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`review, with a higher threshold for initiating a
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`proceeding and procedural safeguards to prevent a
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`challenger from using the process to harass patent
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`owners. It also would include a strengthened
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`estoppel standard to prevent petitioners from raising
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`in a subsequent challenge the same patent issues that
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`were raised or reasonably could have been raised in a
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`prior challenge. The bill would significantly reduce
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`the ability to use post-grant procedures for abusive
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`serial challenges to patents.
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`157 Cong. Rec. S936-S953 (February 28, 2011). In particular, Congress
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`recognized that the inter partes reexamination proceedings unfairly burdened
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`patent owners with repeated challenges to the validity of the patent and wanted
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`to ensure that patent owners were not similarly burdened under the AIA:
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`It thus bears considering the problems with the
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`current system of inter partes re-examination and the
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`burdens that it imposes on patent owners. These are,
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`in summary: it costs a patent owner hundreds of
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`thousands of dollars to defend his patent in these
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`proceedings; it is difficult to license or enforce a
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`patent during the pendency of a re-examination; …
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`and competitors and infringers are allowed to bring
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`serial challenges to the same patent … It is not
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`uncommon for the competitors of a patent’s owner
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`or licensee to coordinate their efforts and bring serial
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`  
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`inter partes challenges to a patent, one after the
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`16  
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`other, each raising a different set of prior art in its
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`challenge.
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`Senate Report No. 111-18, "Patent Reform Act of 2009," pp. 54-55. In
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`addition, Jon W. Dudas, then Under Secretary of Commerce For Intellectual
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`Property, and Director, U.S. Patent and Trademark Office, also expressed a
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`desire to prohibit repeated challenges to the same patent in multiple forums:
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`if you are going to have a post-grant review, that you
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`have very real estoppel, that you have a choice
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`between litigation and post-grant review, that we
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`should not have a situation where we set up forum
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`shopping or giving several bites at the apple, that
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`there should be true estoppel
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`Patent Reform: The Future of American Innovation: Hearing Before the S. Comm.
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`on the Judiciary, 110th Cong. (2007), p. 7.
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`The Honorable Paul Michel (Ret.), former Chief Judge, U.S. Court of
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`Appeals for the Federal Circuit concurred by recognizing “the need for things
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`to not be forever challenged and rechallenged and rechallenged in the PTO
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`before you can even get a court decision against the rights to have adequate
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`challenges.” Hearing before the Subcommittee on Intellectual Property,
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`  
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`17  
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`Competition and the Internet of the Committee on the Judiciary, House of
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`Representatives, Serial No. 112-8; February 11, 2011, pp. 42-43. The House
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`judiciary committee also recognized the need to avoid repeated challenges
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`against a patent:
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`The Committee recognizes the importance of quiet
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`title to patent owners to ensure continued
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`investment resources. While this amendment is
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`intended to remove current disincentives to current
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`administrative processes, the changes made by it are
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`not to be used as tools for harassment or a means to
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`prevent market entry through repeated litigation and
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`administrative attacks on the validity of a patent.
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`Doing so would frustrate the purpose of the section
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`as providing quick and cost effective alternatives to
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`litigation. Further, such activity would divert
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`resources from the research and development of
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`inventions. As such, the Committee intends for the
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`USPTO to address potential abuses and current
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`  
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`18  
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`inefficiencies under its expanded procedural
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`authority.
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`H. Rep. 112-98 (2011) at p. 48.
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`Thus, the legislative history of the AIA clearly indicates that Congress
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`included an estoppel provision from patent office decisions in post grant
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`proceedings and a time limit to bring such challenges to avoid repeated and
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`drawn-out challenges against a patent. Petitioner seeks nothing but to
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`circumvent these protections by adopting the same business model found
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`objectionable in Troll Busters and allowing its founding member, Google Inc.,
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`to avoid the effects of the one year deadline for filing a petition for inter partes
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`review.
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`A defendant in a patent infringement lawsuit seeking inter partes Review
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`must file a petition within one year of service of the complaint in the lawsuit.
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`Specifically, the applicable law states that “[a]n inter partes review may not be
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`instituted if the petition requesting the proceeding is filed more than 1 year
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`after the date on which the petitioner, real party in interest, or privy of the
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`petitioner is served with a complaint alleging infringement of the patent. 35
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`U.S.C. § 315 (b). Similarly, the corresponding rule states that “[a] person may
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`file a petition for Inter Partes Review unless: … more than one year has passed
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`19  
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`since service of a complaint alleging patent infringement upon a) the Petitioner,
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`b) the Petitioner’s Real Party-In-Interest, or c) a privy or Petitioner, Real Party-
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`In-Interest or Privy is estopped.” 37 CFR § 42.101. Here, more than one year
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`has passed since Google, an unidentified, but nevertheless real party in interest
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`in these proceedings, was served with a complaint in this matter.
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`Google was served with a complaint alleging infringement of the ‘799
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`Patent on May 24, 2012 in Stec IP v. Google Inc., civil action no. 12-cv-00639
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`(D. Del.). Ex. 2002. The present petition was filed September 16, 2013, more
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`than one year after the date of service on Google. Hence, these proceedings are
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`statutorily barred.
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`  
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`B. Claims 37 and 42 Are Not Anticipated by Balcha.
`The Petition alleges that claims 37 and 42 are anticipated Balcha, U.S.
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`Patent 5,832,520 (Ex. 1004) under 35 U.S.C. § 102(e). See, e.g., Petition at pp.
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`26 et seq. Claims 37 and 42 recite “determining whether the second computer
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`has a latest version of a file .