Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 12
`Entered: May 19, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAP AMERICA INC.
`Petitioner
`
`v.
`
`CLOUDING IP, LLC
`Patent Owner
`____________
`
`Case IPR2014-00306
`Patent 6,738,799
`____________
`
`Before JAMESON LEE, JUSTIN BUSCH, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`BUSCH, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 12
`Entered: May 19, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAP AMERICA INC.
`Petitioner
`
`v.
`
`CLOUDING IP, LLC
`Patent Owner
`____________
`
`Case IPR2014-00306
`Patent 6,738,799
`____________
`
`Before JAMESON LEE, JUSTIN BUSCH, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`BUSCH, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`IPR2014-00306
`Patent 6,738,799
`
`I. INTRODUCTION
`
`A. Background
`
`On January 22, 2013, SAP America Inc. (“SAP”) filed a corrected
`
`petition to institute an inter partes review of claims 1, 5-10, 12, 16-21, 23,
`
`24, 30, 31, 37, and 42 (the “challenged claims”) of U.S. Patent No.
`
`6,738,799 (Ex. 1001, “the ’799 Patent”) pursuant to 35 U.S.C. §§ 311-319.
`
`Paper 5 (“Pet.”). In response, Clouding IP, LLC (“Clouding”) filed a Patent
`
`Owner Preliminary Response. Paper 7 (“Prelim. Resp.”). We have
`
`jurisdiction under 35 U.S.C. § 314.
`
`The standard for instituting an inter partes review is set forth in
`
`35 U.S.C. § 314(a), which provides as follows:
`
`THRESHOLD – The Director may not authorize an inter partes
`review to be instituted unless the Director determines that
`the information presented in the petition filed under section
`311 and any response filed under section 313 shows that
`there is a reasonable likelihood that the petitioner would
`prevail with respect to at least 1 of the claims challenged in
`the petition.
`
`The information presented in the Petition sets forth SAP’s contentions
`
`of unpatentability of the challenged claims under 35 U.S.C. §§ 102 and 103
`
`based on the following specific grounds (Pet. 17-57):
`
`Reference[s]
`
`Basis
`
`Claims challenged
`
`Williams1
`
`§ 102(e)
`
`1, 12, 23, 24, 30, 31, 37,
`and 42
`
`Williams and Miller2
`
`§ 103(a)
`
`5-10 and 16-21
`
`
`1 U.S. Patent No. 5,990,810, issued Nov. 23, 1999 (Ex. 1006) (“Williams”).
`2 U.S. Patent No. 5,832,520, issued Nov. 3, 1998 (Ex. 1004) (“Miller”).
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` 2
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`IPR2014-00306
`Patent 6,738,799
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`Reference[s]
`
`Basis
`
`Claims challenged
`
`Balcha3
`
`§ 102(e)
`
`37 and 42
`
`Balcha and Miller
`
`§ 103(a)
`
`1, 5, 9, 10, 12, 16, 20, 21,
`23, 24, 30, and 31
`
`Balcha, Miller, and
`Freivald4
`
`§ 103(a)
`
`6-8 and 17-19
`
`Balcha and Freivald
`
`§ 103(a)
`
`1, 12, 23, 30, 37, and 42
`
`Upon consideration of the Petition and Patent Owner Preliminary
`
`Response, for the reasons described below, we determine that SAP has
`
`demonstrated a reasonable likelihood of prevailing on at least one ground on
`
`each of the challenged claims. Accordingly, pursuant to 35 U.S.C. § 314,
`
`we grant the Petition and institute inter partes review as to claims 1, 5-10,
`
`12, 16-21, 23, 24, 30, 31, 37, and 42 of the ’799 Patent.
`
`B. Related Proceedings
`
`SAP indicates that the ’799 Patent was the subject of the following
`
`terminated inter partes reviews before the Board: Oracle Corp. v. Clouding
`
`IP, LLC, IPR2013-000735 and Oracle Corp. v. Clouding IP, LLC, IPR2013-
`
`00261. Pet. 4. SAP indicates that the ’799 Patent also is the subject of the
`
`pending inter partes review before the Board, Unified Patents, Inc. v.
`
`Clouding IP, LLC, IPR2013-00586. Pet. 4. SAP indicates that the ’799
`
`Patent is or was the subject of the following federal district court cases:
`
`Clouding IP, LLC v. EMC Corp., et al., Case No. 1:13-cv-01455 (D. Del.);
`
`Clouding IP, LLC v. Dropbox Inc., Case No. 1:13-cv-01454 (D. Del.);
`
`
`3 U.S. Patent No. 6,233,589 B1, issued May 15, 2001 (Ex. 1003) (“Balcha”).
`4 U.S. Patent No. 5,898,836, issued Apr. 27, 1999 (Ex. 1005) (“Freivald”).
`5 SAP identifies IPR2012-00073 as a related matter. Pet. 4. However,
`IPR2013-00073 is the related inter partes review involving the ’799 Patent.
`
` 3
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`IPR2014-00306
`Patent 6,738,799
`
`Clouding IP, LLC v. SAP AG, et al., Case No. 1:13-cv-01456 (D. Del.);
`
`Clouding IP, LLC v. Verizon Inc., Case No. 1:13-cv-01458 (D. Del.);
`
`Clouding IP, LLC v. Rackspace, Hosting Inc., Case No. 1:12-cv-00675 (D.
`
`Del.); Clouding IP, LLC v. Amazon.com Inc., Case No. 1:12-cv-00641 (D.
`
`Del.); Clouding IP, LLC v. Oracle Corp., Case No. 1:12-cv-00642 (D. Del.)
`
`(terminated); Clouding IP, LLC v. Google Inc., Case No. 1:12-cv-00639 (D.
`
`Del.); Clouding IP, LLC v. Apple Inc., Case No. 1:12-cv-00638 (D. Del.)
`
`(terminated); Clouding IP, LLC v. Microsoft Corp., Case No. 1:12-cv-00640
`
`(D. Del.) (terminated). Pet. 4-5.
`
`C. The ’799 Patent
`
`The ’799 Patent is related to a method for file synchronization using a
`
`signature list. Ex. 1001, Title. In particular, the ’799 Patent discloses a
`
`method for synchronizing the local copies of files on client computers to the
`
`current versions of the files on a network drive. Ex. 1001, 1:24-27.
`
`According to the ’799 Patent, an object of the method is to provide a
`
`mechanism by which a user can be provided automatically with a current
`
`version of a subscription file in an efficient manner. Ex. 1001, 3:36-41.
`
`This is accomplished by having a server computer monitor network files for
`
`changes, and then send users email notifications and updates when there is a
`
`change to the files. Ex. 1001, 3:41-44.
`
`Of the challenged claims, claims 1, 12, 23, 30, 37, and 42 are
`
`independent claims.
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`
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`IPR2014-00306
`Patent 6,738,799
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`Claims 1 and 37 are illustrative of the claimed subject matter
`
`of the ’799 Patent, and are reproduced as follows (emphasis added):
`
`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,
`
`(a) searching an earlier version of a signature list
`corresponding to an earlier version of the file for an old
`segment signature which matches a new segment signature
`corresponding to the segment;
`
`(b) if step (a) results in a match, 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,
`wherein the old segment corresponds to the segment for which
`a match was detected in step (a); and
`
`(c) if step (a) results in no match, writing a command in
`the update for the second computer to insert a new segment of
`the current version of the file into the second computer’s copy
`of the current version of the file;
`
`wherein the new segment of the current version of the
`file is written into the update and the unchanged segment is
`excluded from the update; and
`
`wherein steps (a) through (c) are performed by the first
`computer, without interaction with the second computer, in
`response to the first computer detecting a change between the
`current version of the file and the earlier version of the file.
`
`
` 5
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`IPR2014-00306
`Patent 6,738,799
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`37. A method for a first computer to provide updates for
`transmission to a second computer that permits the second
`computer to obtain most recent versions of files, the method
`comprising the steps of:
`
`(a) determining whether the second computer has a latest
`version of a file, wherein said determining is performed by the
`first computer without interaction with the second computer;
`
`(b) generating an update, if the second computer does not
`have a latest version of the file, wherein said generating is
`performed by the first computer without interaction with the
`second computer; and
`
`(c) transmitting the update from the first computer to the
`second computer.
`
`D. Claim Construction
`
`Consistent with the statute and the legislative history of the Leahy-
`
`Smith America Invents Act,6 the Board will interpret claims of an unexpired
`
`patent using the broadest reasonable construction in light of the specification
`
`of the patent. See Office Patent Trial Practice Guide, 77 Fed. Reg. at
`
`48,766; 37 C.F.R. § 42.100(b). Claims are to be given their broadest
`
`reasonable interpretation consistent with the specification, reading the claim
`
`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).
`
`SAP argues the construction of “signature list,” “update,” “command
`
`. . . to copy,” “command to insert,” “determining whether the second
`
`computer has a latest version of a file and generating an update, if the second
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`computer does not have a latest version of a file,” “without interaction,” and
`
`the preambles for the claims (collectively, “the previously construed terms”)
`
`
`6 Pub. L. 112-29, 125 Stat. 284, 329 (2011).
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` 6
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`IPR2014-00306
`Patent 6,738,799
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`should be the construction given the terms by the Board in IPR2013-00073.
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`Pet. 16-17 (citing Ex. 1008 at 7-16). We provide a brief analysis of the
`
`construction for each of the previously construed terms below.
`
`1.
`
`“signature list”
`
`SAP proposes adopting the construction of a “signature list” as “a
`
`collection (e.g., table) of representations of variable length segments of a
`
`subject file, which representations serve to identify the segments from which
`
`they are determined.” Pet. 16 (citing Ex. 1008 at 9). Clouding’s proposed
`
`construction is that “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,” for example, a table of hashes. Prelim. Resp. 10-11 (citing Ex.
`
`1001, 8:18-20, 29-54, Fig. 4). Therefore, SAP and Clouding propose the
`
`same construction for “signature list.”
`
`Figure 4 of the ’799 Patent depicts an exemplary signature list
`
`comprising a list of segment locations, sizes, and signatures. The
`
`Specification of the ’799 Patent does not provide any specific definition of
`
`how the segment identifiers are determined and suggests that the
`
`determination may use a hashing method, signature algorithm, or cyclic
`
`redundancy check. Ex. 1001, 8:20-28. Therefore, we agree with SAP and
`
`Clouding that a “signature list” should be construed as a collection (e.g.,
`
`table) of representations of variable length segments of a subject file, which
`
`representations serve to identify the segments from which they are
`
`determined.
`
`2.
`
`“update”
`
`SAP proposes adopting the construction of “update” as “information
`
`for updating a file or an up-to-date version of a file.” Pet. 16 (citing Ex.
`
` 7
`
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`IPR2014-00306
`Patent 6,738,799
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`1008 at 10). Clouding’s proposed construction is that an “update” is “an
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`item that allows a second computer to build a current version of a file from a
`
`local copy of that file.” Prelim. Resp. 11-13 (citing Ex. 1001, 1:24-27;
`
`10:15-22; 11:60-12:13).
`
`The claim term “update” has the following dictionary definition:
`
`“current information for updating something” or “an up-to-date version,
`
`account, or report.”7 Although the ’799 Patent provides examples where a
`
`second computer maintains a version of the file, suggesting that, in some
`
`cases, an “update” could be limited to “information for updating a file,” we
`
`do not see, nor does Clouding point to, any definition in the Specification of
`
`the ’799 Patent excluding a construction encompassing an up-to-date version
`
`of a file. Therefore, in the context of file synchronization, we construe the
`
`claim term “update” broadly, but reasonably, as information for updating a
`
`file or an up-to-date version of a file.
`
`3.
`
`“command . . . to copy”
`
`Each of claims 1, 12, 23, and 30 recites the following claim phrase:
`
`“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.” Ex. 1001,
`
`claims 1, 12, 23, 30 (emphasis added). Hereinafter, we refer to this claim
`
`phrase as “command . . . to copy.”
`
`SAP proposes adopting the construction of “command . . . to copy” as
`
`“an instruction that causes the computer to duplicate information or data.”
`
`Pet. 16 (citing Ex. 1008 at 11). Clouding argues the only construction of
`
`7 MERRIAM-WEBSTER DICTIONARY, http://www.merriam-
`webster.com/dictionary/update (last visited May. 15, 2014) (emphasis
`added).
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` 8
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`IPR2014-00306
`Patent 6,738,799
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`“command . . . to copy” that is consistent with the language of the claim is a
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`plain meaning “that a command to copy be written into the update.” Prelim.
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`Resp. 6-8. Clouding points to examples in the Specification of the ’799
`
`Patent, which Clouding asserts support its position that the claim phrase
`
`“command . . . to copy” requires that “a command to copy be written in the
`
`update.” Prelim. Resp. 7-8 (citing Ex. 1001, 11:19-23; 11:57-12:13; Figs 9-
`
`11).
`
`We note that the recited language merely requires that a command
`
`that causes the second computer to copy a portion of a file be written in the
`
`update. The claim does not limit the command to a specific format.
`
`Therefore, we broadly, but reasonably, construe “command . . . to copy” as
`
`“an instruction that causes the computer to duplicate information or data.”
`
`4.
`
`“command . . . to insert”
`
`Each of claims 1, 12, 23, and 30 recites the following claim phrase:
`
`“writing a command in the update for the second computer to insert a new
`
`segment of the current version of the file into the second computer’s copy of
`
`the current version of the file.” Ex. 1001, claims 1, 12, 23, 30 (emphasis
`
`added). Hereinafter, we refer to this claim phrase as “command . . . to
`
`insert.”
`
`SAP proposes adopting the construction of “command . . . to insert”
`
`as “an instruction that causes the computer to put or introduce certain
`
`information or data into another file.” Pet. 16 (citing Ex. 1008 at 13-14).
`
`Clouding does not present a proposed construction of “command . . . to
`
`insert.”
`
`Similar to the claim phrase “command . . . to copy,” the claim
`
`language of the phrase “command . . . to insert” does not limit the claimed
`
` 9
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`IPR2014-00306
`Patent 6,738,799
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`“command” to any specific format or form written in the update file for
`
`instructing the second computer to perform the function “to insert.” The
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`claim term “insert” ordinarily is understood as “to put or introduce into the
`
`body of something.”8
`
`Therefore, for purposes of this decision, in the context of the
`
`Specification of the ’799 Patent and the claimed subject matter, we construe
`
`the claim phrase “command . . . to insert” to mean an instruction that causes
`
`the computer to put or introduce certain information or data into another file.
`
`5.
`
`“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”
`
`SAP proposes adopting the construction of “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” as not requiring
`
`the second computer to possess some version of the file prior to
`
`“transmitting the update from the first computer to the second computer.”
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`Pet. 16-17 (citing Ex. 1008 at 14). Clouding asserts the plain meaning of
`
`these phrases requires “the second computer [to] currently possess some
`
`version of the file.” Prelim. Resp. 9. Clouding argues “[b]y 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 impl[y] that the second computer must already possess some
`
`version of the file.” Id. To support its contention, Clouding directs our
`
`attention to the Specification of the ’799 Patent (specifically, “‘the present
`
`
`8 MERRIAM-WEBSTER DICTIONARY, http://www.merriam-
`webster.com/dictionary/insert (last visited May 15, 2014).
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`IPR2014-00306
`Patent 6,738,799
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`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’”), and to its discussion regarding the “copy command.”
`
`Prelim. Resp. 9-10 (quoting Ex. 1001, 1:24-27).
`
`The portion of the Specification of the ’799 Patent cited by Clouding
`
`does not provide a specific definition that supports Clouding’s proposed
`
`construction to require the additional limitation. Nothing in the claim or the
`
`Specification of the ’799 Patent requires that a prior version must exist
`
`already at the second computer. In a case where no copy of the relevant file
`
`exists at the second computer, the recited determining step would determine
`
`that the second computer does not have a latest version (or any version) of a
`
`file, resulting in the generating step generating an update, which we have
`
`construed as information for updating a file or an up-to-date version of a file.
`
`Requiring the second computer to have a copy of the file would be importing
`
`a limitation from the specification into the claim, which we decline to do.
`
`See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (“[L]imitations
`
`are not to be read into the claims from the specification.”).
`
`Therefore, for purposes of the decision, we determine the phrases
`
`“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” do not require that the second computer has a copy of the file.
`
`6.
`
`“without interaction”
`
`SAP proposes adopting the construction of “without interaction” as
`
`“limiting the interaction between first and second computers only as
`
`specifically recited in the claims.” Pet. 17 (citing Ex. 1008 at 15-16).
`
`Clouding does not present a proposed construction of “without interaction.”
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`IPR2014-00306
`Patent 6,738,799
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`We agree with SAP’s proposed construction because it is consistent
`
`with the claim language. Specifically, the claims do not require the various
`
`computer systems to operate completely independently of one another but
`
`only require that a system take certain actions without interaction from
`
`another system. For example, the limitation “determining whether the
`
`second computer has a latest version of a file, wherein said determining is
`
`performed by the first computer without interaction with the second
`
`computer,” recited in claim 37, merely limits the first computer’s interaction
`
`with the second computer in the context of determining whether the second
`
`computer has a latest version of a file. By comparison, step (c) of claim 37
`
`does not recite “without interaction,” and, thus, the first computer may
`
`interact with the second computer when transmitting the update to the
`
`second computer (see step (c) of claim 37). For purposes of the decision, we
`
`determine “without interaction” merely limits the interaction between first
`
`and second computer systems where specifically recited in the claims.
`
`7.
`
`The Preambles
`
`SAP proposes adopting the determination that the preambles of claims
`
`1, 23, and 37 are limiting. Pet. 17 (citing Ex. 1008 at 16). Clouding does
`
`not present a proposal regarding treatment of the preambles.
`
`The language in each preamble provides antecedent basis for many of
`
`the important terms in the respective claim body (e.g., “a first computer,”
`
`“an update,” “second computer,” “a copy of a current version of a file,” and
`
`“file segments”). Further, the language in each preamble expressly states
`
`that the transmission of the update permits the second computer to obtain the
`
`most recent version of a file, while the respective claim body may have set
`
`forth such a limitation implicitly.
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`IPR2014-00306
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`Because the bodies of independent claims 1, 23, and 37 depend on
`
`their preambles for completeness, we determine that the preambles of those
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`claims are entitled to patentable weight. See Catalina Marketing Int’l., Inc.
`
`v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002); Pitney Bowes,
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`Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (A
`
`preamble limits the invention if it recites essential structure or steps, or if it
`
`is “necessary to give life, meaning, and vitality” to the claim.).
`
`
`
`II. ANALYSIS
`
`A. Clouding’s Assertion of Redundancy
`
`Clouding asserts that the instant petition is redundant in view of the
`
`pending inter partes review of the ’799 Patent in Unified Patents, Inc. v.
`
`Clouding, LLC, IPR2013-00586. Prelim. Resp. 13-14. Clouding argues the
`
`Board should not institute review in this case because substantially the same
`
`art and arguments are presented in this case as in IPR2013-00586. Id. We
`
`do not agree with Clouding’s arguments and conclusions. We consider each
`
`petition by a different petitioner on its own merits, in part, because a second
`
`petitioner has no control over the decision to see a review through a
`
`determination on the merits if the second petitioner is not a party in that
`
`matter. Therefore, we decline to deny institution of review on the grounds
`
`that a review involving substantially the same art and arguments is currently
`
`instituted in IPR2013-00586, which involves a different petitioner.
`
`B. Asserted Anticipation Ground Based on Williams
`
`1.
`
`Overview of Williams (Ex. 1006)
`
`Williams describes a fine-grained incremental backup system and
`
`process. Ex. 1006, 19:26-22:14. Figure 25 of Williams, reproduced below,
`
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`IPR2014-00306
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`illustrates the backup process for two network computers.
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`
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`As shown in Figure 25 of Williams, each of the network computers
`
`(E1 and E2) has a version of the same file (X and Y). When file X on
`
`computer E1 is modified, computer E2 will reconstruct a duplicate version
`
`of file X using file Y and the incremental backup file D sent from computer
`
`E1 to computer E2, rather than importing the entire file X from computer
`
`E1. Ex. 1006, 19:29-34, 19:63-20:2.
`
`For further improvement, Williams indicates that copies of the
`
`previous versions of the file system should be retained. Ex. 1006, 21:62-65.
`
`This means that computer E2 should maintain both file Y (the previous
`
`version) and a duplicate version of file X. Id.
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`As explained in Williams, computer E1 compares the hash of file Y
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`against the hash of file X to determine whether file X has changed. Ex.
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`1006, 19:44-46. If file X has changed, computer E1 partitions file X into
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`subblocks, and compares the hashes of these subblocks with the hashes of
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`file Y that are stored in shadow file S of computer E1, to find all identical
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`hashes. Ex. 1006, 19:48-51. “Identical hashes identify identical subblocks
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`in [file] Y that can be transmitted by reference.” Ex. 1006, 19:51-52.
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`Computer E1 then transmits the incremental backup file D as a mixture of
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`raw subblocks and references to subblocks whose hashes appear in the
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`shadow file S and which are known to appear as subblocks in file Y. Ex.
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`1006, 19:52-55.
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`To reconstruct a duplicate version of file X from file Y and
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`incremental backup file D, computer E2 partitions file Y into subblocks and
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`calculates the hashes of subblocks. Ex. 1006, 19:66-20:1. “It then processes
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`the incremental backup information, copying subblocks that were
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`transmitted raw and looking up the references” in file Y. Ex. 1006, 20:2-5.
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`2.
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`Analysis of Asserted Ground of Anticipation by Williams
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`SAP argues that claims 1, 12, 23, 24, 30, 31, 37, and 42 are
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`anticipated by Williams and provides claim charts reading those claims on
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`Williams, as well as a declaration by Dr. Andrew Grimshaw. Pet. 33-43
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`(citing Ex. 1009 ¶¶ 33, 56-58, 66).
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`In its Preliminary Response, Clouding argues that SAP fails to
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`establish a reasonable likelihood that claims 1, 12, 23, 24, 30, 31, 37, and 42
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`are anticipated by Williams. Prelim. Resp. 35-41, 44-45. In particular, with
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`respect to claims 1, 12, 23, 24, 30, and 31, Clouding asserts that “Williams
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`does not teach a command to copy or a command to insert.” Prelim. Resp.
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`35. Regarding claims 37 and 42, Clouding argues Williams “does not teach
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`determining whether the second computer has a latest version of a file and
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`generating an update if the second computer does not have a latest version of
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`the file,” but rather “generates the update when the backup system
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`determines that a backup should be made.” Prelim. Resp. 45.
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`Clouding’s arguments are based on narrow interpretations of the
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`disputed claim phrases, which we decline to adopt. Furthermore, Clouding
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`fails to consider Williams from the perspective of a person of ordinary skill
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`in the art. See In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (quoting In
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`re LeGrice, 301 F.2d 929, 936 (CCPA 1962)) (“A reference anticipates a
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`claim if it discloses the claimed invention ‘such that a skilled artisan could
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`take its teachings in combination with his own knowledge of the particular
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`art and be in possession of the invention.’”).
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`Clouding’s argument regarding claims 1, 12, 23, 24, 30, and 31 that
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`Williams does not describe the recited “command . . . to copy” is based on
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`Clouding’s proposed narrow claim construction, which we decline to adopt.
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`As discussed previously, we construe the claim phrase “command . . . to
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`copy” as an instruction that causes the computer to duplicate information or
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`data. Under the proper construction in light of the evidence before us, the
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`claim language does not limit the claimed “command” to a specific format
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`or form.
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`Clouding’s argument does not address that, as explained in Williams,
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`the subblocks of file Y are duplicated in computer E2, and that is caused by
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`the instructions in the incremental backup file D. In that regard, Williams
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`describes that the incremental backup file D contains instructions that cause
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`the computer E2 to duplicate certain subblocks of file Y, so that a duplicate
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`version of file X is reconstructed from file Y and the incremental backup file
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`D, and computer E2 may maintain both file Y (the previous version) and the
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`duplicate version of file X. Ex. 1006, 19:26-22:14.
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`Additionally, Clouding’s arguments focus narrowly on limited
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`portions of Williams that merely contain the word “copy,” without
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`considering the entire disclosure of Williams’s fine-grained incremental
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`backup process relied upon by SAP. See, e.g., Prelim. Resp. 35-37 (citing
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`Ex. 1006, 19:29-34, 22:1-6). Those arguments are misplaced because the
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`reference need not satisfy an ipsissimis verbis test to anticipate. See In re
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`Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
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`We have reviewed SAP’s arguments and the supporting citations, and
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`find them persuasive. We conclude that, on this record, SAP has established
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`a reasonable likelihood of prevailing on its anticipation challenge to claims
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`1, 12, 23, 24, 30, and 31 based on Williams.
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`With respect to claims 37 and 42, Clouding’s argument again is based
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`on Clouding’s proposed narrow claim construction of “determining whether
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`the second computer has a latest version of a file” and “generating an
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`update, if the second computer does not have a latest version of the file,”
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`which we have not adopted. As previously discussed, we do not construe
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`these phrases as requiring that the second computer has a copy of the file.
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`Clouding argues the first computer cannot determine with certainty whether
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`the second computer has a latest version of a file prior to initiating a backup
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`procedure. Prelim. Resp. 44-45. Clouding further asserts Williams
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`“generates the update when the backup system determines that a backup
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`should be made.” Id. at 45.
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`As discussed above, Clouding’s arguments do not address the portion
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`of Williams describing how a duplicate of the file is reconstructed from the
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`file stored on the second computer and the backup (or difference) file. Ex.
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`1006, 19:26-22:14. Clouding also does not address that Williams discusses
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`initiating a backup action only when the original file has changed. Ex. 1006,
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`19:49-50.
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`Therefore, we also find persuasive SAP’s arguments and supporting
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`citations regarding claims 37 and 42 and conclude that SAP has established
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`a reasonable likelihood of prevailing on its anticipation challenge to claims
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`37 and 42 based on Williams.
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`C. Asserted Obviousness Ground Based on Williams and Miller
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`SAP asserts that claims 5-10, which depend from claim 1, and claims
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`16-21, which depend from claim 12, are unpatentable under 35 U.S.C. §
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`103(a) over Williams and Miller. Pet. 43-48. In particular, SAP alleges that
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`the combination of the cited prior art references describes all of the claim
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`limitations and provides a rationale for combining the references. Id.
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`Clouding counters that the combination of Williams and Miller “leads
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`to a difference file without a ‘command to copy.’” Prelim. Resp. 42. We
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`are not persuaded by Clouding’s arguments. Rather, we determine that
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`Williams describes “command . . . to copy,” as recited in claims 1 and 12 for
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`the reasons set forth above.
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`We have reviewed SAP’s analysis and supporting evidence, and
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`determine that SAP’s assertion has merit. On this record, SAP has
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`demonstrated that there is a reasonable likelihood that it would prevail with
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`respect to claims 5-10 and 16-21 based on the ground that these claims are
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`unpatentable over Williams and Miller.
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`D. Asserted Anticipation Ground Based on Balcha
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`1.
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`Overview of Balcha (Ex. 1003)
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`Balcha discloses a method for synchronization of files. Ex. 1003, 1:5-
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`7. In particular, a synchronized file exists on two different servers, and
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`changes made to one file must be reflected in the other file. Ex. 1003, 1:42-
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`44. Figure 1 of Balcha, reproduced below, illustrates a computer network
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`with two servers using file synchronization.
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`As shown in Figure 1 of Balcha, servers (22 & 24) are interconnected
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`via network 26, and each server (22 & 24) maintains a copy of a base file
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`(21 & 27) and a base signature file (20 & 28). Ex. 1003, 4:51-53. The base
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`files (21 & 27) should be identical, but either base file can be modified at
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`either server. Ex. 1003, 4:53-61. Upon detection of a modification to the
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`file, the detecting server (e.g., server 22), uses the respective base signature
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`file (e.g., base signature file 20) to generate a new delta file, and
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`communicates the delta file over network 26 to server 24. Ex. 1003, 4:61-66
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`(emphasis added). Server 24 uses the delta file to update base file 27, and
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`recalculates base signature file 28. Ex. 1003, 4:66-67. As a consequence,
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`the base files on the servers will stay in synchronization with minimal
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`transfer of data over network 26. Ex. 1003, 5:1-3.
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`Figure 3 of Balcha, reproduced below, illustrates the relationship of
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`the files.
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`Referring to Figure 3 of Balcha, the base signature file (42) contains a
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`plurality of cyclic redundancy check (CRC) values derived from the data
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`contained in the base file (38). Ex. 1003, 3:1-3, 3:21-28, 7:46-49. When a
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`revised version of the base file (44) is created, a revised signature file (48),
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`including a plurality of revised bit patterns, is generated from the revised file
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`(44). Ex. 1003, 3:4-6, 7:49-53. “Each revised bit pattern is compared to the
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`base bit patterns in base signature file 42.” Ex. 1003, 7:57-59 (emphasis
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`added). “For each revised bit pattern that matches a base bit pattern in base
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`signature file 42, it is stored in revised signature file 48, along with an offset
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`indic
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