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

`
`
`
`TABLE OF CONTENTS
`
`EXHIBIT LIST ........................................................................................................ iv
`I.
`INTRODUCTION ............................................................................................... 1
`II. MANDATORY NOTICES .................................................................................. 3
`A. Real Party-In-Interest ........................................................................................ 4
`B. Related Matters ................................................................................................. 4
`C. Lead and Back-Up Counsel .............................................................................. 5
`D. Service Information .......................................................................................... 5
`III. PAYMENT OF FEES ....................................................................................... 6
`IV. REQUIREMENTS FOR INTER PARTES REVIEW ..................................... 6
`A. Grounds for Standing ........................................................................................ 6
`B. Identification of Challenge ............................................................................... 6
`1. The Specific Art and Statutory Ground(s) on Which the Challenge is Based
`
`7
`2. How the Construed Claims are Unpatentable under the Statutory Grounds
`Identified in 37 C.F.R. § 42.204(b)(2) and Supporting Evidence Relied upon to
`Support the Challenge .......................................................................................... 8
`V. FACTUAL BACKGROUND .............................................................................. 9
`A. Declaration Evidence ........................................................................................ 9
`B. The State of the Art ......................................................................................... 10
`C. The ‘156 Patent Application ........................................................................... 12
`D. The Prosecution History ................................................................................. 14
`VI. BROADEST REASONABLE CONSTRUCTION ........................................ 15
`A. Signature List .................................................................................................. 16
`B. Update ............................................................................................................. 16
`C. Command to Copy .......................................................................................... 16
`D. Command to Insert ......................................................................................... 16
`
`
`
`ii
`
`

`
`
`
`E. Determining Whether the Second Computer has a Latest Version of a File
`and Generating an Update, if the Second Computer does not have a Latest
`Version of a File .................................................................................................... 16
`F. Without Interaction ......................................................................................... 17
`G. The Preambles ................................................................................................. 17
`VII. THE GROUNDS SHOWING THAT PETITIONER HAS A REASONABLE
`LIKELIHOOD OF PREVAILING .......................................................................... 17
`A. Claims 1, 5, 9, 10, 12, 16, 20, 21, 23, 24, 30 and 31 Are Rendered Obvious
`by Balcha in view of Miller under 35 U.S.C. § 103(a) ......................................... 17
`B. Claims 37 and 42 Are Anticipated by Balcha under 35 U.S.C. § 102(e) ....... 28
`C. Claims 6-8 and 17-19 Are Rendered Obvious by Balcha, Miller and Freivald
`under 35 U.S.C. § 103(a) ...................................................................................... 31
`D. Claims 1, 12, 23, 24, 30, 31, 37 and 42 Are Anticipated by Williams under 35
`U.S.C. § 102(e)...................................................................................................... 34
`E. Claims 5-10 and 16-21 Are Rendered Obvious by Williams in View of Miller
`under 35 U.S.C. § 103(a) ...................................................................................... 44
`F. Claims 1, 12, 23, 30, 37 and 42 are Rendered Obvious by Balcha in view of
`Freivald under 35 U.S.C. § 103(a) ........................................................................ 49
`VIII. CONCLUSION ............................................................................................... 59 
`
`iii
`
`
`
`
`
`

`
`
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`
`
`
`
`EXHIBIT LIST
`
`U.S. Patent No. 6,738,799 to Dickinson
`
`Excerpts from Prosecution history of Application No.
`09/303,958, the parent application of the ‘799 patent
`
`U.S. Patent No. 6,233,589 to Balcha et al.
`
`U.S. Patent No. 5,832,520 to Miller
`
`U.S. Patent No. 5,898,836 to Freivald et al.
`
`U.S. Patent No. 5,990,810 to Williams
`
`Petition in IPR2013-00073
`
`Board’s Decision Instituting Inter Partes Review in IPR2013-
`00073
`
`Declaration of Dr. Andrew Grimshaw
`
`iv
`
`

`
`
`
`I.
`
`INTRODUCTION
`
`Petitioner SAP America Inc., (“SAP” or “Petitioner”) respectfully requests
`
`inter partes review (IPR) of claims 1, 5-10, 12, 16-21, 23, 24, 30, 31, 37, and 42 of
`
`U.S. Patent No. 6,738,799 (the “‘799 patent,” attached as Ex. 1001) in accordance
`
`with 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et seq.
`
`The ‘799 patent has been the subject of two terminated IPRs: IPR2013-00073
`
`(“IPR-073”) and IPR2013-00261 (“IPR-261”), and is currently the subject of
`
`IPR2013-00586 (“IPR-586”). In IPR-073, the PTAB instituted trial, and the case
`
`settled shortly after the patent owner attempted to amend its claims, thus conceding
`
`to the unpatentability of the challenged claims over the prior art of record. (See
`
`e.g., Exs. 1007, 1008). The instant petition challenges the same claims under the
`
`same grounds on which the PTAB instituted trial in the IPR-073 petition. The
`
`instant petition also includes an additional ground from the IPR-261 petition that
`
`directly refutes the arguments that the Patent Owner made to distinguish its claims
`
`in the IPR-073 petition. The instant petition is identical in substance to the IPR-586
`
`petition, which was filed on September 16, 2013, and therefore Petitioner
`
`respectfully requests that this petition be joined with the IPR-586 petition. In view
`
`of the pending petitions, the PTAB should institute trial.
`
`The ‘799 patent is generally directed to methods for synchronizing files
`
`between a first computer and a second computer. More particularly, the ‘799
`
`
`
`1
`
`

`
`
`
`patent is directed to a file synchronization technique wherein a first computer (such
`
`as a server) determines whether a second computer (such as a client) has the latest
`
`version of a subscription file. (Ex. 1001 at 3:36-44). A subscription file is a
`
`shared network document in which multiple clients are interested in keeping track
`
`of changes to the document such that the client’s local version of the file is up-to-
`
`date. (Id. at 6:46-56, 7:56-57). If the client’s file is out of date, the server
`
`generates a “delta” or update file by comparing the signature list of the most
`
`current version of the subscription file with an old signature list representing the
`
`version of subscription file last transmitted to the client computer. (Id. at 3:45 -
`
`4:1, 4:16-23). The delta or update file is sent to the client computer, which
`
`thereafter alters the file as prescribed in the delta or update file such that the
`
`client’s file is updated to match the current version of the file stored at the server.
`
`(Id. at 4:30-32, 3:45-49).
`
`Delta file synchronization and document push techniques were well known to
`
`a person of ordinary skill in the art well before the earliest claimed priority date of
`
`the ‘799 patent. (Id.). For example, U.S. Patent No. 6,233,589 to Balcha
`
`(“Balcha,” Exhibit 1003), discloses a “differencing mechanism that quickly and
`
`efficiently determines the differences between two files, . . . generates a delta file
`
`reflecting those differences” and then sends the delta file to a remote computer
`
`which uses the delta file to update its local copy and thereby generate a revised,
`
`
`
`2
`
`

`
`
`
`updated file. (Ex. 1003 at 4:48-5:3). U.S. Patent No. 5,832,520 to Miller
`
`(“Miller,” Ex. 1004) similarly describes a method for generating “very efficient
`
`difference files . . . from an old file and a new file so that a difference file can be
`
`transmitted to a second computer system where the difference file and a duplicate
`
`of the old file can quickly be used to create a copy of the new file, duplicating the
`
`new file as it existed on the first computer system.” (Ex. 1004 at 2:38-48).
`
`Further, U.S. Patent No. 5,990,810 to Williams (“Williams,” Ex. 1006) discloses a
`
`“fine-grained incremental backup system” wherein a first computer generates and
`
`transmits an incremental backup file (i.e., an update file) to a second computer
`
`which in turn uses the incremental backup file to generate a copy of the current
`
`version of the complete file stored at the first computer. (See Ex. 1006 at 19:29-
`
`33).
`
`The Balcha, Miller, and Williams references, none of which were considered
`
`by the Examiner, anticipate or render obvious the challenged claims of the ‘799
`
`patent.
`
`II. MANDATORY NOTICES
`Pursuant to 37 C.F.R. § 42.8(a)(1), SAP provides the following mandatory
`
`disclosures.
`
`
`
`3
`
`

`
`
`
`A. Real Party-In-Interest
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that SAP is the real
`
`party-in-interest, and further certifies that no other party exercised control or could
`
`exercise control over SAP’s participation in this proceeding, the filing of this
`
`petition, or the conduct of any ensuing trial.
`
`B. Related Matters
`The ‘799 patent was the subject of two IPRs that are now terminated:
`
`IPR2013-00073 and IPR2013-00261. The ‘799 patent is currently the subject of
`
`IPR2013-00586 filed by Unified Patents on September 16, 2013. The ‘799 patent
`
`is also the subject of many district court litigations:
`
`1.
`
`Clouding IP, LLC v. EMC Corp., et al., D. Del., Case No. 1:13-cv-
`
`01455.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Clouding IP, LLC v. Dropbox Inc., D. Del., Case No. 1:13-cv-01454.
`
`Clouding IP, LLC v. SAP AG, et al., D. Del., Case No. 1:13-cv-01456.
`
`Clouding IP, LLC v. Verizon Inc., D. Del., Case No. 1:13-cv-01458.
`
`Clouding IP, LLC v. Rackspace, Hosting Inc., D. Del., Case No. 1:12-
`
`cv-00675.
`
`6.
`
`Clouding IP, LLC v. Amazon.com Inc., D. Del., Case No. 1:12-cv-
`
`00641.
`
`
`
`4
`
`

`
`
`
`7.
`
`Clouding IP, LLC v. Oracle Corp., D. Del., Case No. 1:12-cv-00642
`
`(terminated).
`
`8.
`
`9.
`
`Clouding IP, LLC v. Google Inc., D. Del., Case No. 1:12-cv-00639.
`
`Clouding IP, LLC v. Apple Inc., D. Del., Case No. 1:12-cv-00638
`
`(terminated).
`
`10.
`
`Clouding IP, LLC v. Microsoft Corp., D. Del., Case No. 1:12-cv-00640
`
`(terminated).
`
`C. Lead and Back-Up Counsel
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner provides the following
`
`designation of counsel: Lead counsel is Frank C. Cimino, Jr. (Reg. No. 39,945) and
`
`back-up counsel is Megan S. Woodworth (Reg. No. 53,655) and S. Gregory
`
`Herrman (Reg. No. 66,271).
`
`Service Information
`
`D.
`Pursuant to 37 C.F.R. § 42.8(b)(4), papers concerning this matter should be
`
`served on the following.
`
`Address: Frank C. Cimino, Jr.
`Dickstein Shapiro LLP
`1825 Eye Street, NW
`Washington, DC 20006-5403
`
`
`Email:
`
`ciminof@dicksteinshapiro.com, and
`IPDocketing-DC@dicksteinshapiro.com
`
`Telephone: (202) 420-2200
`Fax:
`(202) 420-2201
`
`5
`
`
`
`

`
`
`
`
`PAYMENT OF FEES
`
`III.
`
`The fee required by 37 C.F.R. § 42.15(a) for this Petition for inter partes
`
`review is being paid by credit card. The undersigned authorizes payment for any
`
`additional fees that might be due in connection with this Petition to be charged to
`
`Deposit Account No. 04-1073.
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW
`As set forth below and pursuant to 37 C.F.R. § 42.104, each requirement for
`
`inter partes review of the ‘799 patent is satisfied.
`
`A. Grounds for Standing
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner hereby certifies that the ‘799
`
`patent is available for inter partes review and that the Petitioner is not barred or
`
`estopped from requesting inter partes review challenging the claims of the ‘799
`
`patent on the grounds identified herein. This is because the ‘799 patent has not
`
`been subject to a previous estoppel based proceeding of the AIA, and the
`
`complaint served on SAP referenced above in Section II(B) was served within the
`
`last 12 months.
`
`Identification of Challenge
`
`B.
`Pursuant to 37 C.F.R. §§ 42.104(b) and (b)(1), Petitioner requests inter
`
`partes review of claims 1, 5-10, 12, 16-21, 23, 24, 30, 31, 37, and 42 of the ‘799
`
`
`
`6
`
`

`
`
`
`patent (“the challenged claims”), and requests that the Patent Trial and Appeal
`
`Board (“PTAB”) cancel those claims.
`
`1.
`
`The Specific Art and Statutory Ground(s) on Which the
`Challenge is Based
`Pursuant to 37 C.F.R. § 42.204(b)(2), inter partes review of the ‘799 patent
`
`is requested in view of the following references, each of which is prior art to the
`
`‘799 patent under 35 U.S.C. § 102(a), (b), and/or (e):
`
`(1) U.S. Patent No. 6,233,589 to Balcha et al. (“Balcha,” Ex. 1003),
`
`issued May 15, 2001 from an application filed July 31, 1998. Balcha is prior art to
`
`the ‘799 patent under at least 35 U.S.C. § 102(e).
`
`(2) U.S. Patent No. 5,832,520 to William A. Miller (“Miller,” Ex. 1004),
`
`issued November 3, 1998 from an application filed November 22, 1996. Miller is
`
`prior art to the ‘799 patent under at least 35 U.S.C. § 102(a)/(e).
`
`(3) U.S. Patent No. 5,898,836 to Freivald et al. (“Freivald,” Ex. 1005),
`
`issued April 27, 1999 from an application filed January 14, 1997. Freivald is prior
`
`art to the ‘799 patent under at least 35 U.S.C. § 102(a)/(e).
`
`(4)
`
`(4) U.S. Patent No. 5,990,810 to Williams (“Williams,” Ex. 1006),
`
`issued November 23, 1999 from PCT Application No. PCT/AU96/00081 filed
`
`February 15, 1996 and entered the U.S. national stage under 35 U.S.C. § 371 on
`
`August 15, 1997. Williams is prior art to the ‘799 patent under at least 35 U.S.C. §
`
`102(e).
`
`
`
`7
`
`

`
`
`
`Grounds of Unpatentability
`
`1. Williams anticipates claims 1, 12, 23, 24, 30, 31, 37, and 42 under §
`
`102(e).
`
`2. Williams and Miller render obvious claims 5-10 and 16-21 under § 103.
`
`3. Balcha anticipates claims 37 and 42 under § 102(e).
`
`4. Balcha and Miller render obvious claims 1, 5, 9, 10, 12, 16, 20, 21, 23,
`
`24, 30, and 31 under § 103.
`
`5. Balcha, Miller, and Freivald render obvious claims 6-8 and 17-19 under §
`
`103.
`
`6. Balcha and Freivald render obvious claims 1, 12, 23, 30, 37 and 42 under
`
`§ 103.
`
`2. How the Construed Claims are Unpatentable under the
`Statutory Grounds Identified in 37 C.F.R. § 42.204(b)(2)
`and Supporting Evidence Relied upon to Support the
`Challenge
`
`Pursuant to 37 C.F.R. § 42.204(b)(4), an explanation of how the challenged
`
`claims are unpatentable under the statutory grounds identified above, including the
`
`identification of where each element of the claim is found in the prior art, is
`
`provided in Section VII, below, in the form of claim charts. Pursuant to 37 C.F.R. §
`
`42.204(b)(5), the appendix numbers of the supporting evidence relied upon to
`
`support the challenges and the relevance of the evidence to the challenges raised,
`
`
`
`8
`
`

`
`
`
`including identifying specific portions of the evidence that support the challenges,
`
`are provided in Section VII, below, in the form of claim charts.
`
`V.
`
`FACTUAL BACKGROUND
`A. Declaration Evidence
`This Petition is supported by the declaration of Professor Andrew Grimshaw
`
`from the University of Virginia (attached as Ex. 1009). Professor Grimshaw offers
`
`his opinion with respect to the content and state of the prior art.
`
`Dr. Grimshaw is a Professor of Computer Science in the University of
`
`Virginia’s School of Engineering and Applied Science. Prof. Grimshaw is the
`
`author of over 50 publications and book chapters in the field of distributed
`
`computing. (Id. ¶ 1). He was the chief designer and architect of Mentat, an object-
`
`oriented parallel processing systems designed to directly address the difficulty of
`
`developing architecture-independent parallel programs and Legion, a nationwide
`
`metasystem built on Mentat. (Id. at ¶ 4). In 1999 he co-founded Avaki
`
`Corporation, and served as its Chairman and Chief Technical Officer until 2005
`
`when Avaki was acquired by Sybase. (Id. at ¶ 5). He is a member of the Global
`
`Grid Forum (GGF) Steering Committee and the Architecture Area Director in the
`
`GGF. (Id. at ¶ 6). Prof. Grimshaw has served on the National Partnership for
`
`Advanced Computational Infrastructure (NPACI) Executive Committee, the DoD
`
`MSRC Programming Environments and Training (PET) Executive Committee, the
`
`
`
`9
`
`

`
`
`
`CESDIS Science Council, the NRC Review Panel for Information Technology, and
`
`the Board on Assessment of NIST Programs. (Id.)
`
`The State of the Art
`
`B.
`From the 1970s until the present day, a substantial body of research has
`
`reported on the advent and subsequent advancement in distributed computing
`
`systems. (Id. at ¶ 12). Distributed systems represent a collection of stand-alone
`
`computing machines (servers, client-PCs, etc.) that are connected through a
`
`network, such as the internet or a corporate intranet. (Id.) One area of distributed
`
`system research which is of particular relevance to the ‘799 patent is commonly
`
`referred to as event-based notification. (Id.)
`
`Event-based notification systems are used to push notifications from a
`
`publisher to a subscriber regarding a specified event. (Id. at ¶ 13). In a
`
`publish/subscribe system, clients subscribe to events in which they are interested
`
`and, when that event occurs, a server is used to push the published data to the client.
`
`(Id.) By 1996, the publish/subscribe (push) methodology was being used to
`
`automatically deliver web content (such as news headlines, weather forecasts, etc.)
`
`and software updates to subscribed clients. (Id.)
`
`Developing in parallel to these advancements was a body of research
`
`regarding efficient mechanisms for synchronizing changes to identical files saved at
`
`multiple locations across a network. (Id. at ¶ 14). For example, a master copy of a
`
`
`
`10
`
`

`
`
`
`file may be located at a server (“computer A”), and a replica of the file may be
`
`saved at a client PC (“computer B”). (Id. at ¶ 15). When the master copy is
`
`updated, it does not make sense to transfer the entire new file to computer B. (Id.)
`
`Rather, only the differences between the two files should be transferred to computer
`
`B. (Id.)
`
`To address this issue, the “RSYNC algorithm” was developed by Andrew
`
`Tridgell and Paul Mackerras in 1996. (Id. at ¶ 16). RSYNC operated by identifying
`
`segments of an old and new file that are identical to one another and only
`
`transmitting raw data for those parts of the new file that did not previously exist in
`
`the old file. (Id.) In this manner, and following the scenario described above
`
`involving computers A and B, when computer A updated its copy of the shared file,
`
`computer B received an executable delta file that would allow computer B to
`
`generate a copy of the up-to-date file as it existed at computer A. (Id.) RSYNC,
`
`and a variety of other differenced-based update algorithms, such as that disclosed
`
`by U.S. Pat. No. 5,765,173 to Cane et al. (Ex. 1009 at ¶ 18) and U.S. Pat. No.
`
`5,990,810 to Williams ( Ex. 1006), were also deployed to implement incremental
`
`file backup systems. (Ex. 1006 at 19:27-28; Ex. 1009 at ¶ 18). In an incremental
`
`file backup system, a single computer, without interaction with any other device,
`
`executes a difference algorithm to identify all portions of a file which have been
`
`modified since a previous backup of the file. (Ex. 1006 at 19:29-51; Ex. 1009 at ¶
`
`
`
`11
`
`

`
`
`
`18). The modifications, along with instructions to recreate the updated version of
`
`the file, are transmitted and saved to a backup server or tape drive. (Ex. 1006 at
`
`19:51-56; Ex. 1009 at ¶ 18).
`
`Accordingly, several years prior to the effective filing date of the ‘799 patent
`
`it was well known that difference-based update files could be generated by a single
`
`computer, without interaction with another device. (Ex. 1006 at 20:6-10; Ex. 1009
`
`at ¶¶ 17-18).
`
`C. The ‘156 Patent Application
`Application No. 10/452,156 (“the ‘156 application”), which issued as the
`
`‘799 patent, was filed on June 2, 2003, as a continuation of Application No.
`
`09/303,958, filed May 3, 1999, which is now Patent No. 6,574,657 (“the ‘657
`
`patent”).
`
`The ‘156 application describes a mechanism to keep files on remote devices
`
`(including other computers) up-to-date (consistent) with a master set of files. The
`
`technique involves computers in two roles: the holder of the true copy (hereinafter,
`
`“master”) and the remote computer (hereinafter, “client”). The technique is
`
`simple, and consists of four basic steps.
`
`First, the client downloads a copy of the files and subscribes to files with the
`
`master. (Ex. 1001 at 7:50-55). The master notes that the client has subscribed and
`
`
`
`12
`
`

`
`
`
`further generates a set of hashes associated with the blocks of the file (hereinafter,
`
`referred to as the subscription phase). (Id. at 7:64 - 8:6).
`
`Second, the master monitors the files and directories for which there are
`
`outstanding subscriptions. (Id. at 7:55-60). When it is determined that a file has
`
`changed (using date and time stamp comparisons (Id. at 6:59-60)) the master
`
`generates a delta or update file by comparing each segment of the old file with
`
`each segment of the new file. (Id. at 10:66 – 11:8). The delta file comprises copy
`
`commands for each segment of data that existed in both the old and new files, as
`
`well as insert commands (with associated raw data) for each segment of data in the
`
`new file that did not match any segment of the old file. (Id. at 11:60 - 12:13; Fig.
`
`11).
`
`Third, as described in the preferred embodiment of the ‘799 patent, the
`
`master packages the delta file into a self extracting executable that is suitable for
`
`emailing, and emails the executable to all clients that are subscribed to the file.
`
`(Id. at 4:30-32; 11:52-57; 12:53-56).
`
`Fourth, the client connects with its mail server, downloads the email
`
`containing the self-extracting delta file, and executes the self-extracting delta file,
`
`thereby updating the files on the client computer. (Id. at 12:53-66).
`
`
`
`13
`
`

`
`
`
`D. The Prosecution History
`During prosecution of the ‘156 application the Examiner raised only
`
`statutory and non-statutory double patenting rejections; however, prior art based
`
`patentability rejections were presented in connection with the parent ‘958
`
`application. In that application, the Patent Owner amended independent claims 1,
`
`11, and 21 to recite the following:
`
`
`(Ex. 1002 at November 14, 2002 Patent Owner Response to Office Action, pgs. 11,
`
`14-17). A notice of allowance followed. (Id. at December, 3 2002 Notice of
`
`Allowance).
`
`Given that similar limitations are present in the ‘156 application claims,
`
`which issued as the ‘799 patent, it appears that the ‘799 patent was allowed
`
`primarily because the Office believed that the prior art failed to teach a method of
`
`updating files between a first and second computer wherein the first computer,
`
`without interacting with the second computer, determines if the second computer
`
`has the latest version of a monitored file and sends an update file to the second
`
`computer if the second computer’s version of the file is out of date.
`
`
`
`14
`
`

`
`
`
`VI. BROADEST REASONABLE CONSTRUCTION
`Pursuant to 37 C.F.R. § 42.204(b)(3), the claims subject to inter partes
`
`review shall receive the “broadest reasonable construction in light of the
`
`specification of that patent in which [they] appear[].” See 42 C.F.R. § 100(b).
`
`Because the standard of claim interpretation used by the federal courts are different
`
`from the standards used by the Patent Office in claim examination proceedings
`
`(including this inter partes review), any claim interpretation used or applied in
`
`these proceedings are neither binding upon Petitioner in patent infringement
`
`litigation or on any other litigants, nor do such claim interpretations correspond to
`
`the construction of claims under the legal standards used by the courts.
`
`Accordingly, any interpretation of claims presented either implicitly or explicitly
`
`herein should not be viewed as constituting, in whole or in part, Petitioner’s own
`
`interpretation and/or construction of such claims for the purposes of litigation.
`
`Instead, any constructions in this proceeding should be viewed only under the
`
`“broadest reasonable construction” standard required here.
`
`All claimed terms not specifically addressed below have been accorded their
`
`broadest reasonable interpretation in light of the patent specification including their
`
`plain and ordinary meaning. For the purposes of this petition, SAP adopts and
`
`applies the Board’s construction of the following terms, which were set forth in the
`
`
`
`15
`
`

`
`
`
`Board’s decision to institute inter partes review in IPR2013-00073. (See Ex. 1008
`
`at 7-16).
`
`Signature List
`
`A.
`A signature list is “a collection (e.g., table) of representations of variable
`
`length segments of a subject file, which representations serve to identify the
`
`segments from which they are determined (e.g., a table of hashes).” (Ex. 1008 at
`
`9).
`
`B. Update
`An update is construed as “information for updating a file or an up-to-date
`
`version of a file.” (Ex. 1008 at 10).
`
`C. Command to Copy
`A command to copy is construed to mean “an instruction that causes the
`
`computer to duplicate information or data.” (Ex. 1008 at 11).
`
`D. Command to Insert
`A command to insert is construed to mean “an instruction that causes the
`
`computer to put or introduce certain information or data into another file.” (Ex.
`
`1008 at 13-14).
`
`E. Determining Whether the Second Computer has a Latest Version
`of a File and Generating an Update, if the Second Computer does
`not have a Latest Version of a File
`
`Consistent with the broadest reasonable interpretation of this term, the Board
`
`determined that “determining whether the second computer has a latest version of a
`
`
`
`16
`
`

`
`
`
`file” and “generating an update, if the second computer does not have a latest
`
`version of a file” does not require that the second computer possess some version
`
`of the file prior to “transmitting the update from the first computer to the second
`
`computer.” (Ex. 1008 at 14).
`
`F. Without Interaction
`The term “without interaction” is interpreted as limiting the interaction
`
`between first and second computers only as specifically recited in the claims. (Ex.
`
`1008 at 15-16).
`
`G. The Preambles
`The Board determined that the preambles of claims 1, 23, and 37 of the ‘799
`
`patent, which correspond to claims 12, 30, and 42, are limiting. (Ex. 1008 at 16).
`
`VII. THE GROUNDS SHOWING THAT PETITIONER HAS A
`REASONABLE LIKELIHOOD OF PREVAILING
`
`The references addressed below each provide the teaching believed by the
`
`Examiner to be missing from the prior art and variously anticipate or render
`
`obvious the claimed subject matter.
`
`A. Claims 1, 5, 9, 10, 12, 16, 20, 21, 23, 24, 30 and 31 Are Rendered
`Obvious by Balcha in view of Miller under 35 U.S.C. § 103(a)
`
`The PTAB instituted trial in IPR-073 on this ground for claims 1, 5, 9, 10, 23
`
`and 24. (Ex. 1008 at 31). In this petition, Petitioner includes those claims as well as
`
`their near-identical, storage-claim counterparts: claims 12, 16, 20, 21, 30, and 31.
`
`
`
`17
`
`

`
`
`
`U.S. Patent No. 6,233,589 to Balcha et al. (“Balcha,” Ex. 1003) was not
`
`considered during the original prosecution of the ‘799 or ‘657 patents, nor is it
`
`cumulative of any prior art considered by the Examiner. Balcha was filed on July
`
`31, 1998 and issued on May 15, 2001. The earliest priority date that the claims of
`
`the ‘799 patent may be entitled to is May 3, 1999, which is the filing date of the
`
`‘657 patent. Therefore, Balcha is available as prior art to the ‘799 patent under 35
`
`U.S.C. § 102(e).
`
`U. S. Patent No. 5,832,520 to William A. Miller (“Miller,” Ex. 1004) was
`
`not considered during the original prosecution of the ‘799 or ‘657 patents, nor is it
`
`cumulative of any prior art considered by the Examiner. Miller was filed on
`
`November 22, 1996 and issued on November 3, 1998. The earliest priority date
`
`that the claims of the ‘799 patent may be entitled to is May 3, 1999, which is the
`
`filing date of the ‘657 patent. Therefore, Miller is available as prior art to the ‘799
`
`patent under 35 U.S.C. § 102(a)/(e).
`
`A skilled artisan would have been motivated to combine the teachings of
`
`Balcha and Miller given their similar purpose of sending delta files to enable
`
`remote nodes to update target files. (Ex. 1007 at ¶¶ 31-32, 39-49). A skilled artisan
`
`would have recognized that Miller’s commentary about what was generally known
`
`in the art concerning use of delta files to update software would be fully applicable
`
`to and predictably combined with Balcha’s method for updating data files. (Id.).
`
`
`
`18
`
`

`
`
`
`With respect to the execution of updates with delta files, substitution of data with
`
`software files and substitution of self-executing files for manually executed files
`
`were entirely predictable and well known design choices. (Id.).
`
`The following claim chart demonstrates, on a limitation-by-limitation basis,
`
`how claims 1, 5, 9, 10, 23 and 24 of the ‘799 patent are rendered obvious by
`
`Balcha in view of Miller under 35 U.S.C. § 103(a).
`
`US 6,738,799 Claim
`Language
`1. A method for a
`first computer to
`generate an update
`for transmission to a
`second computer
`that permits the
`second computer to
`generate a copy of a
`current version of a
`file comprised of a
`first plurality of file
`segments from a
`copy of an earlier
`version of the file
`comprised of a
`second plurality of
`file segments, such
`that each file
`segment corresponds
`to a portion of its
`respective file, the
`method comprising
`the steps of: for each
`segment of the
`current version of
`
`
`
`Correspondence to Balcha in View of Miller
`
`Balcha discloses a method and system for reflecting
`differences between two files (hereinafter, “base files”)
`stored on a first computer and a second computer,
`respectively. (Ex. 1003 at 4:51-67). When a change is
`made to one of the base files, that change is reflected in the
`copy stored on the second computer. (Id.)
`
`This is accomplished by first breaking the base file into
`segments, and creating a signature for each segment:
`
`...generating, from a base file, a base signature file
`that includes a plurality of base bit patterns. Each
`bit pattern is generated as a function of a portion of
`data in the base file. (Id. at 3:1-3).
`
`When a copy of the base file (stored on the first computer,
`for example) is updated, a revised signature file is created:
`
`A revised signature file, including a plurality of
`revised bit patterns, is generated from the revised
`file. (Id. at 3:4-6).
`
`Once the revised signature file is created, the first computer
`compares the base signature file to the revised signature file
`and creates a delta file to be transmitted to the second
`
`19
`
`

`
`
`
`US 6,738,799 Claim
`Language
`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;
`
`
`
`Correspondence to Balcha in View of Miller
`
`computer:
`
`Based on differences between the base signature file
`and the revised signature file, the revised file is
`accessed and a delta file reflecting the differences
`between the base file and the revised file is
`generated. (Id. at 3:7-11).
`
`The updated version of the base file, which is a copy of the
`current version of the file stored at the first computer, is
`created at the second computer using the de