`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`SAP AMERICA INC.
`Petitioner
`v.
`CLOUDING IP, LLC
`Patent Owner
`____________
`Case IPR 2014-00306
`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
`
`2. Overview of U.S. Patent 6,738,799 ............................................................. 2
`
`3. Claim Terms Requiring Construction .......................................................... 3
`
`  
`  
`  
`  
`  
`  
`  
`  
`  
`  
`  
`  
`  
`  
`
`A. Claims 1, 12, 23, and 30 Require that a Command to Copy be Written
`into the Update. ........................................................................................... 6
`
`B. Claims 37 and 42 Requires that a Check is Made to Determine Whether
`a Second Computer Has a Version of a File. ................................................. 8
`
`C. The Signature List Recited in Claims 1, 12, 23, and 30 is a
`Representation of a Segment of File. ........................................................... 10
`
`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. ........................... 11
`
`4. Argument ................................................................................................... 13
`
`A. The Present Petition is Redundant in View of IPR2013-00586 and
`Presents No Issues that Will Not Be Determined in That Proceeding. ....... 13
`
`B. Claims 37 and 42 Are Not Anticipated by Balcha. ............................... 14
`
`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. .......................................................................... 19
`
`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. ...................................................... 30
`
`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. ....................................................................... 33
`
`F. The Petition Fails to Establish any Reasonable Likelihood that Claims 1,
`12, 23, 24, 30, and 31 are Anticipated by Williams. ................................... 35
`
`ii  
`
`

`

`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. .......................................................................... 41
`
`H. The Petition Fails to Establish any Reasonable Likelihood that Claims
`37 and 42 are Anticipated by Williams. ...................................................... 44
`
`  
`  
`
`5. Conclusion ................................................................................................ 46
`
`
`
`
`
`  
`
`iii  
`
`

`

`Table of Authorities
`
`
`Cases
`
`Bayer Schering Pharm. AG v. Barr Labs., Inc., 575 F.3d 1341 (Fed. Cir. 2009)
`(Newman, J., dissenting) ............................................................................ 26
`
`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002) ............. 6
`
`Ex parte Levy, 17 USPQ2d 1461 (Bd. Pat. App. & Inter. 1990) .................... 39
`
`Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027 (PTAB June 11,
`2013) ........................................................................................................ 4, 5
`
`In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359 (Fed. Cir. 2004) .................. 5
`
`In re Fine, 837 F.2d 1071 (Fed. Cir. 1988) .................................................... 44
`
`In re Yamamoto, 740 F.2d 1569 (Fed. Cir. 1984) ............................................ 5
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ............................. 19, 25, 42
`
`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008) ....... 18, 41
`
`Richardson v. Suzuki Motor Co., 868 F.2d 1226 (Fed. Cir. 1989) ................... 18
`
`SAS Inst., Inc. v. ComplementSoft, LLC, IPR2013-00581 (PTAB Dec. 30,
`2013) .......................................................................................................... 14
`
`Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628 (Fed. Cir. 1987) 45
`
`W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983),
`cert. denied, 469 U.S. 851 (1984) ......................................................... 28, 43
`
`ZTE Corp. et al. v. ContentGuard Holdings, Inc., IPR2013-00454 (PTAB Sept.
`25, 2013) .............................................................................................. 13, 14
`
`        
`  
`
`iv  
`
`

`

`Statutes
`
`    
`
`35 USC § 326(d) ............................................................................................. 4
`
`Other Authorities
`
`157 Cong. Rec. S1375 (daily ed. March 8, 2011) ............................................ 4
`
`157 Cong. Rec. S1375 (Mar. 8, 2011) ............................................................. 1
`
`H.R. Rep. No. 112-98 (part 1) at 47 (2011) .................................................... 1
`
`MPEP § 2112 ................................................................................................ 39
`
`MPEP § 2142 ................................................................................................ 29
`
`MPEP § 2173.01 ..................................................................................... 10, 11
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14,
`2012) ............................................................................................................ 4
`
`      
`
`Regulations
`
`37 C.F.R. § 1.75(d)(1) ..................................................................................... 6
`
`37 C.F.R. § 42.108(c) ...................................................................................... 2
`
`37 C.F.R. § 42.304(b)(4) ................................................................................. 5
`
`
`
`
`  
`
`v  
`
`

`

`Pursuant to 37 C.F.R. § 42.107(a) Patent Owner, Clouding IP, LLC,
`
`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 has
`
`not met the high standard1 required by Patent Office regulations to
`
`                                                                                                                
`
`1 The “reasonable likelihood” standard was intended by Congress to be a
`
`substantially higher barrier to patent validity challenges than the former
`
`“substantial new question of patentability” test used for inter partes
`
`reexaminations. See H.R. Rep. No. 112-98 (part 1) at 47 (2011) (“The
`
`threshold for initiating an inter partes review is elevated from ‘significant new
`
`question of patentability’ – a standard that currently allows 95% of all requests
`
`to be granted – to a standard requiring petitioners to present information
`
`showing that their challenge has a reasonable likelihood of success.”). Thus, the
`
`new standard makes inter partes review available only in exceptional cases where
`
`serious doubts about the patent’s validity are raised and a prima facie case has
`
`been established. See 157 Cong. Rec. S1375 (Mar. 8, 2011) (statement of Sen.
`
`Kyl (D-Ariz)).
`
`  
`
`1  
`
`

`

`demonstrate a reasonable likelihood that at least one of the claims challenged in
`
`the Petition is unpatentable. 37 C.F.R. § 42.108(c).
`
`
`
`2. Overview of U.S. Patent 6,738,799
`
`
`
`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
`
`current version of a file from a copy of an earlier version thereof. Ex. 1001 at
`
`Abstract; col. 3, ll. 45-49. To facilitate this process, files are segmented and
`
`each segment is represented by a signature. Id. at col. 8, ll. 7 et seq. Signatures
`
`are representations of variable length segments of a subject file, which
`
`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.
`
`at col. 10:66 – 11:50. The update file includes instructions (e.g., copy, insert)
`
`for a recipient computer to construct the current version of the subject file from
`
`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
`
`  
`
`computer, for example via email. Id. at 11:51-52.
`
`2  
`
`

`

`
`
`Importantly, for purposes of the present proceedings, one of the
`
`instructions included in the update file is a
`
`“command . . . to copy an old segment of the
`
`[receiving] computer’s copy of the earlier version of
`
`the file into the [receiving] computer’s copy of the
`
`current version of the file”. Id. at Claim 1, 14:53-
`
`57; Claim 23, 16:61-65. Examples of such commands are illustrated in Fig. 11,
`
`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
`
`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
`
`computer’s copy of the current version of the file, wherein the old segment
`
`corresponds to the segment for which a match was detected in step (a).
`
`
`
`3. Claim Terms Requiring Construction
`
`
`
` When considering whether to institute a patent trial the Board has
`
`indicated that it will interpret the claims of a challenged patent using a
`
`“broadest reasonable construction” approach. Office Patent Trial Practice
`
`  
`
`3  
`
`

`

`Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012). Whether or not this is a
`
`correct standard to be applied in this proceeding,2 it is important to recognize
`
`                                                                                                                
`2  The AIA does not mandate the use of a broadest reasonable interpretation
`
`(“BRI”) standard in proceedings such as the one at bar. In fact, the only
`
`mention of the “broadest reasonable interpretation” standard in the legislative
`
`history of the AIA is Senator Kyl’s comments that BRI is the current
`
`reexamination standard, and not a proposed standard of review for IPR
`
`proceedings. 157 Cong. Rec. S1375 (daily ed. March 8, 2011). Unlike
`
`reexaminations, no right to freely amend the claims exists in an IPR
`
`proceeding. Instead, a patent owner’s only options with respect to the original
`
`claims of a challenged patent are to have them examined in the form they were
`
`issued or to cancel them in their entirety. 35 USC § 326(d). While “a
`
`reasonable number” of substitute claims may be proposed by way of
`
`amendment, even this one opportunity requires approval by the Board. See,
`
`e.g., Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 at pp.
`
`3-6 (PTAB June 11, 2013) (recognizing that the right to move to amend claims
`
`of a patent involved in an AIA trial is not “unfettered” and is subject to Board
`
`approval before ever even reaching the substantive merits of the amendment).
`
`Thus IPR proceedings lack the hallmarks on which authorization of the BRI
`
`  
`
`4  
`
`

`

`that the broadest reasonable construction of claim language is not one that
`
`permits any reading thereof. Instead, it is one that must be made “in light of
`
`the specification as it would be interpreted by one of ordinary skill in the art.”
`
`In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
`
`Further, unless the patentee has clearly demonstrated an intention to stray,
`
`there is a “heavy presumption” that a claim term carries its ordinary and
`
`customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
`
`                                                                                                                                                                                                                                                                                                                                          
`
`standard was approved in Yamamoto. See In re Yamamoto, 740 F.2d 1569,
`
`1572 (Fed. Cir. 1984) (distinguishing the USPTO’s BRI approach from the
`
`claim constructions applied in the federal courts on the basis that in reissue and
`
`reexamination proceedings, applicants have the ability to freely amend their
`
`claims to arrive at their proper scope). Like proceedings in the federal district
`
`court, post-grant proceedings such as the present IPR is a challenge to the
`
`validity of a patent, not an examination. See, e.g., 37 C.F.R. § 42.304(b)(4)
`
`(petitioners are required to specify how a claim is “unpatentable” under various
`
`identified grounds). Idle Free, IPR2012-00027, supra, Paper 26 at p. 6. Thus,
`
`rather than the BRI standard for construing patent claims, this proceeding
`
`should use the same approach as that used in other adjudicative processes which
`
`consider patent validity.
`
`  
`
`5  
`
`

`

`(Fed. Cir. 2002). Of course, patent claims must “conform to the invention as
`
`set forth in the remainder of the specification and the terms and phrases used in
`
`the claims must find clear support or antecedent basis in the description so that
`
`the meaning of the terms in the claims may be ascertainable by reference to the
`
`description.” 37 C.F.R. § 1.75(d)(1).
`
`
`
`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
`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
`
`language of the claim, and the one that the Board should adopt when
`
`construing the claim (for it is the broadest reasonable construction of same), is
`
`that a command to copy be written into the update.
`
`
`
`The specification provides ample examples of the kinds of commands
`
`that are written into the update, making it clear that it is a command to copy that
`
`is being recited in the claims. For example and referring to Figure 10,
`
`  
`
`6  
`
`

`

`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,
`
`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
`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
`
`7  
`
`
`
`  
`
`

`

`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
`
`“command . . . to copy” referred to in claims 1, 12, 23, and 30 and that such a
`
`command is written into the update that is provided to the second computer.
`
`Thus, when construing the claims, the Board should require that a command to
`
`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,
`
`8  
`
`

`

`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.
`
`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
`
`  
`
`9  
`
`

`

`computer). Absent such a version, there is nothing for the second computer to
`
`“copy” when trying to execute the instructions included in the update. Indeed,
`
`copy commands would be utterly meaningless if the second computer did not
`
`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
`
`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
`
`version of a file to which an update relates and the Board should so construe
`
`the claim.
`
`
`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
`
`  
`
`10  
`
`

`

`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.
`
`
`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
`
`11  
`
`  
`
`

`

`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
`
`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
`
`update is something that is to be applied to an existing copy of a file at the
`
`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
`
`synchronization is accomplished through the updates that allow computer to
`
`  
`
`12  
`
`

`

`bring current their local copies of files by application of the updates to those
`
`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.
`
`
`
`4. Argument
`
`A. The Present Petition is Redundant in View of IPR2013-00586
`and Presents No Issues that Will Not Be Determined in That
`Proceeding.
`The Board should reject the Petition because “the same or substantially
`
`the same prior art or arguments previously were presented to the [Board]” in
`
`IPR2013-00586 and there is no good reason for the Board to institute a second
`
`proceeding that will consider the same claims in view of the same cited
`
`references. See ZTE Corp. et al. v. ContentGuard Holdings, Inc., IPR2013-
`
`00454, Paper 12 at 4-5 (PTAB Sept. 25, 2013). As the Board noted in ZTE
`
`Corp., 35 U.S.C. § 325(d) provides that:
`
`In determining whether to institute or order a proceeding under
`this chapter, chapter 30, or chapter 31, the Director may take into
`account whether, and reject the petition or request because, the
`
`13  
`
`  
`
`

`

`same or substantially the same prior art or arguments previously
`were presented to the Office.
`
`Id. (quoting § 325(d)). As the Board did in rejecting a petition for inter partes
`
`review in ZTE Corp., the Board should take into account that the same art and
`
`argument that SAP AMERICA INC. presents in its Petition previously were
`
`presented in IPR2013-00586 and reject this Petition.
`
`Serial filings, even when presented by different petitioners, on the same
`
`grounds create an undue burden on both the Board and the Patent Owner.
`
`Further, instituting a second proceeding on identical grounds already in
`
`progress runs counter to the Board’s mandate “to secure the just, speedy, and
`
`inexpensive resolution of every proceeding.” SAS Inst., Inc. v. ComplementSoft,
`
`LLC, IPR2013-00581, Paper 15 at 22-23 (PTAB Dec. 30, 2013). Accordingly,
`
`inasmuch as all of the issues raised by Petitioner will be addressed in IPR2013-
`
`00586, there remains no good reason for this proceeding to be instituted.
`
`  
`
`B. Claims 37 and 42 Are Not Anticipated by Balcha.
`The Petition alleges that claims 37 and 42 are anticipated Balcha, U.S.
`
`Patent 5,832,520 (Ex. 1003) under 35 U.S.C. § 102(e). 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
`
`  
`
`14  
`
`

`

`version of the file”. Ex 1001 at 18:32-37 and 18:56-19:7. Balcha fails to teach
`
`such features and, therefore, Balcha cannot anticipate Claims 37 and 42.
`
`Balcha discloses sharing changes between two base files wherein a change
`
`to a first version of the base file indicates that a second version of the same base
`
`file is now not the same as the first version of the base file. Ex. 1003 at 4:52-67.
`
`As explained by Balcha with reference to Figure 1, provided above:
`
`
`
`Each of servers 22 and 24 maintain a copy of a base
`file 21, 27, respectively and are interconnected via a
`network 26. Base files 21, 27 should be
`identical to one another and thus changes
`made to one copy should eventually be
`reflected in the other copy. A base signature
`file, as described in more detail herein, is generated
`on one of the servers 22, 24 and copied to the other
`server. The base signature file is maintained on server
`22 as file 20, and maintained on server 24 as file 28.
`
`  
`
`15  
`
`

`

`Either base file 21 or 27 can be modified at either
`server.
`
`Upon detection of a modification to the file, the
`detecting server, for example server 22, uses the
`respective base signature file, for example, base
`signature file 20, to generate a new delta file, and
`communicates the delta file over network 26 to
`server 24. Server 24 then uses the delta file to update
`the base file 27, and recalculates the base signature
`file 28.
`
`Id. at 4:52-67, emphasis added.
`
`Thus, when a modification of base file 21 is detected by server 22, server
`
`22 generates a new delta file and communicates that delta file to server 24,
`
`which then proceeds to modify base file 27 using the delta file. However, the
`
`detection of the modification of base file 21 is in no way related to a
`
`determination that base file 21 is the latest version of the base file. Instead,
`
`Balcha only discloses detecting whether a base file has been modified, regardless
`
`of when that modification may have occurred relative to other copies of the
`
`same base file.
`
`The significance of this difference is demonstrated by considering
`
`situations in which base file 27 has been modified more recently than base file
`
`  
`
`16  
`
`

`

`21 and, as a consequence, base file 27 is the latest version of the file. If a
`
`modification of base file 21 is detected, Balcha will perform the updating of
`
`base file 27 to be consistent with base file 21 even though base file 27 is the
`
`latest version of the file. In such a circumstance, the “updating” of Balcha will
`
`serve to inappropriately overwrite the modifications made to base file 27 and
`
`adversely modify the latest version of the base file (i.e., base file 27) to an older
`
`version of the base file (i.e., base file 21). Such a circumstance is all the more
`
`likely in Balcha because “[b]ase files 21, 27 should be identical to one another
`
`and thus changes made to one copy should eventually be reflected in the
`
`other copy.” Ex. 1003 at 4:54-56 (emphasis added). Furthermore, the
`
`probability of an inappropriate file update occurring when using Balcha’s file
`
`synchronization approach as the system scales. The method and computer
`
`readable program code of claims 37 and 42, respectively avoids problems such
`
`as inappropriate file updating by determining whether the second computer has
`
`a latest version of a file and, in this way, establishes that the latest version of the
`
`file will not be overwritten by changes to a file that occurred previously to the
`
`changes of the latest version of the base file.
`
`To anticipate a claim, “The identical invention must be shown in as
`
`complete detail as is contained in the … claim.” Richardson, supra, 868 F.2d at
`
`  
`
`17  
`
`

`

`1236. Here, Balcha fails to meet this requirement. Stated differently, Balcha
`
`fails to disclose “within the four corners of the document not only all of the
`
`limitations claimed but also all of the limitations arranged or combined in the
`
`same way as recited in the claim, [hence] it cannot be said to prove prior
`
`invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. §
`
`102.” Net MoneyIN, Inc., supra, 545 F.3d at 1371.
`
`Additionally, neither the Petition nor Professor Grimshaw’s declaration
`
`demonstrate that Balcha teaches all of the elements of claims 37 and 42 in the
`
`manner in which those elements are arranged in the claim. Instead, Professor
`
`Grimshaw states only that, “[b]ecause [Balcha indicates] base files 21 and 27
`
`were initially maintained in a consistent state and should remain identical to
`
`one another, a change to either file indicates to the detecting server that the
`
`disclosed differencing process must be initiated.” Ex. 1009 at ¶ 34. Claims 37
`
`and 42, however, require “determining whether a second computer has a latest
`
`version of a file”. The forgoing comments by Professor Grimshaw fail to
`
`demonstrate how Balcha teaches this feature.
`
`  
`
`18  
`
`

`

`
`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.
`The key to supporting any rejection under Section 103 is the clear
`
`articulation of the reasons why the claimed invention would have been obvious.
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). The present Petition fails to
`
`meet this requirement because even if a person of ordinary skill in the art were
`
`to combine the teachings of Balcha and Miller, the resulting combination
`
`would not yield the invention recited in any of independent claims 1, 12, 23 or
`
`30. Consequently, the Board should deny the Petition.
`
`The Petition alleges that claims 1, 5, 9, 10, 12, 16, 20, 21, 23, 24, 30,
`
`and 31 are obvious under 35 U.S.C. § 103 in view of the combined teachings
`
`of Balcha, and Miller, U.S. Patent 5,832,520 (Ex. 1004). Claims 1, 12, 23, and
`
`30 are independent claims, each specifying:
`
`writing a command in the update for the second computer
`to copy an old segment of the second computer's copy of
`the earlier version of the file into the second computer's
`copy of the current version of the file.
`
`As discussed above, a plain meaning reading of this requirement demands that a
`
`command to copy be written in the update that is used by the second computer
`
`  
`
`19  
`
`

`

`to generate a copy of the current version of the file. The Balcha-Miller
`
`combination fails to teach or suggest same.
`
`
`
`As illustrated in Figure
`
`3, reproduced here, Balcha,
`
`describes a scheme for
`
`reflecting the differences
`
`between two files (a base file
`
`and a revised file), within a
`
`so-called “delta file”. In
`
`particular, the delta file is created based on a comparison