Page 1
`
`2014 WL 1784058 (Patent Tr. & App. Bd.)
`
`Patent Trial and Appeal Board
`Patent and Trademark Office (P.T.O.)
`
`*1 SILVER PEAK SYSTEMS, INC. PETITIONER
`v.
`RIVERBED TECHNOLOGY, INC. PATENT OWNER
`
`Case IPR2014-00149
`Patent 8,321,580 B2
`
`May 2, 2014
`
`PETITIONER:
`Brian Hoffman (Lead Counsel)
`FENWICK & WEST LLP
`bhoffman@fenwick.com
`
`Jennifer R. Bush (Back-up Counsel)
`jbush@fenwick.com
`PATENT OWNER:
`
`David M. O'Dell (Lead Counsel)
`HAYNES AND BOONE, LLP
`david.odell.ipr@haynesboone.com
`
`Kyle L. Howard (Back-up Counsel)
`kyle.howard.ipr@haynesboone.com
`
`Before JUSTIN T. ARBES, ADAM V. FLOYD, and FRANCES L. IPPOLITO
`Administrative Patent Judges
`IPPOLITO
`Administrative Patent Judge
`
`DECISION
`
`Institution of Inter Partes Review
`
`37 C.F.R. § 42.108
`
`Petitioner Silver Peak Systems, Inc. filed a Petition (“Pet.”) to institute an inter partes review of claims 1-24 of U.S. Pat-
`ent No. 8,321,580 B2 (the ““'580 patent”) pursuant to 35 U.S.C. §§ 311-319. Paper 1. Patent Owner Riverbed Techno-
`logy, Inc. filed a Preliminary Response (“Prelim. Resp.”) to the Petition. Paper 6. We have jurisdiction under 35 U.S.C. §
`314. For the reasons that follow, we institute an inter partes review of claims 1-14 of the '580 patent.
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`KOLCRAFT EXHIBIT 2008-1
`Artsana USA, Inc. v. Kolcraft Enterprises, Inc.
`IPR2014-01053
`
`

`

`Page 2
`
`I. BACKGROUND
`
`The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a):
`THRESHOLD. -- The Director may not authorize an inter partes review to be instituted unless the Director determ-
`ines 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.
`
`Petitioner challenges claims 1-24 of the '580 patent as obvious under 35 U.S.C. § 103(a). Pet. 11-44. We have determined
`that, based on the record before us, there is a reasonable likelihood that Petitioner will prevail in establishing the unpat-
`entability of claims 1-14. Additionally, Petitioner has not demonstrated a reasonable likelihood of prevailing in establish-
`ing the unpatentability of claims 15-24. Accordingly, we grant the petition for inter partes review of the '580 patent as to
`claims 1-14 on the asserted grounds discussed below.
`
`A. Related Proceedings
`
`*2 The '580 patent is the subject of federal district court proceedings in Riverbed Technology, Inc. v. Silver Peak Sys-
`tems, Inc., No. CV-13-2980 (N.D. Cal.). Pet. 1. Petitioner also indicates that commonly-owned and family-related U.S.
`Patent No. 8,271,688 is involved in the above referenced case and in a parallel petition for inter partes review brought by
`Petitioner. [FN1]Id.
`
`Additionally, commonly-owned and family-related U.S. Patent Nos. 7,428,573 (“the '573 patent”) and 7,849,134 (“the
`'134 patent”) are involved in inter partes reexaminations in which Petitioner is the third-party requestor. [FN2] Pet. 1.
`Both of these related patents also are the subject of federal district court proceedings in Riverbed Technology, Inc. v. Sil-
`ver Peak Systems, Inc., C.A. No. 11-484 (D. Del.).Id.
`
`B. The '580 Patent (Ex. 1001)
`
`The '580 patent, titled “Transaction Accelerator for Client-Server Communications Systems,” issued on November 27,
`2012. The '580 patent relates to systems and methods for moving data efficiently through limited-bandwidth channels.
`Ex. 1001, col. 1, ll. 29-33. In networked file systems, applications may use files stored in another location. Id. at col. 1,
`ll. 44-45. One example of a transaction involving such files may include a client sending a request for the file to a server,
`and the server sending the file as a response to the client. Id. at col. 1, ll. 43-57.
`
`The '580 patent further describes accelerating transactions over a networked client-server system where the clients are
`coupled to servers over a network via transaction accelerators. Ex. 1001, col. 8, ll. 10-21. Transaction requests and re-
`sponses between a client and a server are routed through transaction accelerators instead of traveling directly from a cli-
`ent to a server. Id. at col. 10, ll. 43-45. The transaction accelerators (“TAs”) may improve the responsiveness of the
`transaction(s) between clients and servers over network links that are slow in terms of latency and bandwidth. Id. at col.
`9, ll. 56-60. An example of the embodiment just described is shown in Figure 1 of the '580 patent, reproduced below.
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`KOLCRAFT EXHIBIT 2008-2
`Artsana USA, Inc. v. Kolcraft Enterprises, Inc.
`IPR2014-01053
`
`

`

`Page 3
`
`*3 Figure 1, above, depicts networked client-server system 10 with clients 12 coupled to servers 14 over network 16 via
`client-side transaction accelerators (“CTAs”) 20 and server-side transaction accelerators (“STAs”) 22. Ex. 1001, col. 8,
`ll. 10-15. In a typical transaction, client 12 initiates a transaction with server 14 by sending a request message. Id. at col.
`10, ll. 4-6. The request passes through CTA 20 and is routed to STA 22. Id. at col. 10, ll. 19-31. When server 14 receives
`the request, it formulates a response and sends the response to the client via STA 22. Id. at col. 10, ll. 19-21. The CTAs
`and STAs may examine the payloads of their transactions and store/cache strings or other sequences of data (i.e., seg-
`ment data) derived from those payloads. Id. at col. 12, ll. 13-17. When sending the payload from one TA to another, the
`sending TA may replace the segment data with references to the segment data. Id. at col. 12, ll. 17-19. By sending refer-
`ences instead of segment data, the total traffic between TAs during the transaction is reduced. Id. at col. 13, ll. 33-35.
`
`Continuing with the described embodiment, Figure 2 depicts the interconnections of CTA 20 and STA 22 in greater de-
`tail. Figure 2 is reproduced below.
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`KOLCRAFT EXHIBIT 2008-3
`Artsana USA, Inc. v. Kolcraft Enterprises, Inc.
`IPR2014-01053
`
`

`

`Page 4
`
`As shown above in Figure 2, CTA 20 and STA 22 include client 30 or server proxy 40, transaction transformers (“TT”)
`32 and 42, inverse transaction transformers (“ TT-1 ”) 34 and 44, persistent segment stores (“PSS”) 36 and 46, and refer-
`ence resolvers (RR) 38 and 48. Ex. 1001, col. 11, ll. 11-32. In operation, client 12 sends a request to client proxy 30,
`which modifies or forwards the request to TT 32. Id. at col. 13, ll. 15-18. TT 32 determines how to transform the request,
`storing segments and references in PSS 36, if needed, and sends the transformed or unmodified request to TT-1 44. Id. at
`col. 13, ll. 18-23. If needed, TT-1 44 performs inverse transformations and then sends the request to server proxy 40. Id.
`at col. 13, ll. 21-23. For example, the TT-1 may use the contents of its PSS to reconstruct a transformed message by re-
`placing the references with their corresponding segment data. Id. at col. 13, ll. 26-28, 38-40. An analogous path is taken
`for the response. Id. at col. 13, l. 24.
`
`The '580 patent also describes a variation of the described embodiment that includes a proactive segment distributor
`(“PSD”). Where segments need to be moved from PSS to PSS, a PSD can trigger this process in advance of the actual
`need for the segment. Id. at col. 20, ll. 13-17. A PSD can distribute segments or direct the owner of segments to pass
`them around. Id. at col. 20, ll. 20-22. A PSD also may monitor transaction flow from the CTAs and STAs and from that,
`determine which segments are likely to be needed and where. Id. at col. 20, ll. 25-27. When a PSD “determines that a
`segment might be needed, it can send a message to the sending TA. . . . The message would direct the sending TA to per-
`form segmentation, store bindings in its own PSS and even propagate the bindings to other PSS's.'D'Id. at col. 20, ll.
`27-32.
`
`C. Illustrative Claim
`
`*4 Challenged claims 1, 8, 15, and 20 are independent. We reproduce illustrative claim 1:
`1. A method for communicating data over a communication network, the method comprising:
`a first apparatus receiving a data request from a first computer;
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`KOLCRAFT EXHIBIT 2008-4
`Artsana USA, Inc. v. Kolcraft Enterprises, Inc.
`IPR2014-01053
`
`

`

`Page 5
`
`the first apparatus sending the data request to a second apparatus;
`the second apparatus sending the data request to a second computer;
`the second apparatus receiving response data from the second computer, wherein the second computer generates the
`response data based on the data request;
`the second apparatus determining whether a portion of the response data is locally accessible to the first apparatus;
`in response to determining that the portion of the response data is locally accessible to the first apparatus, the second
`apparatus modifying the response data to obtain modified response data, wherein said modifying includes replacing
`the portion of the response data with a reference to the portion of the response data, and wherein the modified re-
`sponse data instructs the first apparatus to use the reference to the portion of the response data to retrieve the portion
`of the response data from a storage that is locally accessible to the first apparatus;
`the second apparatus sending the modified response data to the first apparatus;
`the first apparatus retrieving the portion of the response data based on the reference to the portion of the response
`data, wherein the portion of the response data is retrieved from the storage that is locally accessible to the first appar-
`atus; and
`the first apparatus sending the response data to the first computer.
`
`D. The Prior Art
`
`Petitioner relies on the following prior art:
`1. U.S. Patent No. 6,856,651 B2, issued February 15, 2005 (“Singh”) (Ex. 1004);
`2. Peribit Networks, Inc. SR-50 Sequence Reducer Performance Evaluation, THE TOLLY GROUP (November
`19, 2001) (“Tolly”) (Ex. 1009);
`3. U.S. Patent Publication No. 2003/0004998 A1, published January 2, 2003 (“Datta”) (Ex. 1011); and
`4. Admitted Prior Art (“APA”) -- Petitioner relies on statements made in the “Background of the Invention” sec-
`tion of the '580 patent as “ “describing work of others that is prior art to the '580 patent.” Pet. 12.
`
`Petitioner challenges claims 1-24 of the '580 patent on the following grounds:
`
`E. The Asserted Grounds
`
`Reference[s]
`Datta and APA
`
`Basis
`§ 103
`
`Claim(s) Challenged
`1-5, 7-12, 14-17, and 20-22
`
`Datta, APA, Singh, and Tolly
`
`§
`
`103 6, 13, 18, 19, 23, and 24
`
`Singh and APA
`
`Singh, APA, and Tolly
`
`4F 103
`
`§ 103
`
`1-5, 7, and 15-17
`
`6, 18, and 19
`
`II. ANALYSIS
`
`A. Claim Interpretation
`
`*5 As a step in our analysis, we determine the meaning of the claims for purposes of this decision. In an inter partes re-
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`KOLCRAFT EXHIBIT 2008-5
`Artsana USA, Inc. v. Kolcraft Enterprises, Inc.
`IPR2014-01053
`
`

`

`Page 6
`
`view, we interpret claims of unexpired patents using the “broadest reasonable construction in light of the specification of
`the patent in which [they] appear[].”37 C.F.R. § 42.100(b); seeOffice Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,766 (Aug. 14, 2012). We presume that claim terms have their ordinary and customary meaning. See In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is the meaning that the term
`would have to a person of ordinary skill in the art in question.”(citation and internal quotation marks omitted)).
`
`Any special definition for a claim term must be set forth “with reasonable clarity, deliberateness, and precision.” In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Also, we must be careful not to read a particular embodiment appearing in
`the written description into the claim if the claim language is broader than the embodiment. See In re Van Geuns, 988
`F.2d 1181, 1184 (Fed. Cir. 1993) (stating “limitations are not to be read into the claims from the specification” (citation
`omitted)).
`
`We determine that no terms in the challenged claims need to be construed expressly for purposes of this decision.
`
`B. Asserted Unpatentability over Datta (Ex. 1011) and APA
`
`We turn now to Petitioner's asserted grounds of unpatentability and Patent Owner's arguments in its Preliminary Re-
`sponse to determine whether Petitioner has met the threshold standard of 35 U.S.C. § 314(a). Petitioner contends that un-
`der 35 U.S.C. § 103(a), claims 1-5, 7-12, 14-17, and 20-22 are unpatentable over Datta and APA. Pet. 11. To support its
`position, Petitioner relies on the Declaration of David B. Johnson, Ph.D. Ex. 1003.
`
`We are persuaded that there is a reasonable likelihood that Petitioner will prevail on its assertion that claims 1-5, 7-12,
`and 14 are unpatentable over Datta and APA. For claims 15-17 and 20-22, we are not persuaded that Petitioner has estab-
`lished a reasonable likelihood of prevailing on the same asserted ground.
`
`1. Datta (Ex. 1011)
`
`Datta is directed to systems and methods for caching web page fragments to enable improved web page delivery speeds
`and web site scalability. Ex. 1011 ¶ 2. Generally, a web page consists of text and embedded objects such as graphics. Id.
`¶ 53. When a user requests a web page over the Internet, the user typically uses a local computer to connect, via the In-
`ternet, to a web server of a web site. Id. The web server passes the request to an application server that executes a script
`for generating the web page. Id. An application server may be connected to a content database containing content ele-
`ments for constructing the requested web page. Id.
`
`*6 To improve web page delivery, Datta discloses a network architecture that includes a dynamic proxy cache (“DPC”)
`and a back end monitor, where the back end monitor is part of the web site's infrastructure, and the DPC is outside of the
`web site's infrastructure. Id. ¶ 23. The back end monitor “can observe web page script execution by the website's applica-
`tion server . . . [and] generate” a template of the web page “based on observed web script execution patterns.”Id. ¶ 23.
`The generated template can include a key that references cacheable content stored in the DPC. Id.The DPC receives the
`template, assembles the web page as instructed in the template, and forwards the web page to the user. Id. The template
`may include a “get” and/or a ““set” command. Id. ¶¶ 24-25; see fig. 5. A “get” command in the template instructs the
`DPC to retrieve and insert cacheable content into the web page. Id. ¶ 24. A “set” command instructs the DPC to store the
`cacheable content and its key. Id. ¶ 25.
`
`Figure 3A (reproduced below) depicts an example of the described embodiment.
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`KOLCRAFT EXHIBIT 2008-6
`Artsana USA, Inc. v. Kolcraft Enterprises, Inc.
`IPR2014-01053
`
`

`

`Page 7
`
`Figure 3A depicts a block diagram of network architecture 300 that includes DPC 306 and back end monitor 314. Ex.
`1011 ¶¶ 89-90. As shown, users 102 request web pages from website 105 via the Internet 104. Fig. 3A. DPC 306 receives
`a web page request and passes it to back end monitor 314 via web server 110 and application server 112. Id. ¶ 90. Back
`end monitor 314 observes the application processing of the user request by the application server and generates a tem-
`plate of the page layout. Id. ¶ 95.
`
`During processing, the application server may determine whether cacheable content is contained in the DPC and whether
`the contained content is valid. Ex. 1011 ¶ 97. If the application server determines that the cacheable content is valid and
`contained in the DPC, then a “get” instruction and key representing the content are inserted into the template. Id. ¶ 98. If
`the application server determines that the cacheable content is not contained in the DPC or that the contained content is
`not valid, a “set” instruction and key are inserted into the template. Id. ¶ 99. DPC 306 then receives the template and as-
`sembles the web page based on layout instructions. Id. ¶ 100; fig. 5. For the “get” command, the DPC retrieves the
`cached content and inserts the content into the web page, as instructed by the template. Id. ¶ 101. For the “set” command,
`the DPC stores specific content that can be identified by a key. Id. ¶ 102. Then, the cacheable content can be inserted into
`the web page. Id.
`
`2. APA (Ex. 1001)
`
`*7 Petitioner relies on statements made in the “Background of the Invention” section of the '580 patent as “describing
`work of others that is prior art to the '580 patent.” Pet. 12. This background section describes, among other things, client-
`server network systems where requests are sent by a client to a server and a response is sent back to the client from the
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`KOLCRAFT EXHIBIT 2008-7
`Artsana USA, Inc. v. Kolcraft Enterprises, Inc.
`IPR2014-01053
`
`

`

`Page 8
`
`server. Ex. 1001, col. 1, ll. 52-57. The background section also discloses examples of proxies, such as “(1) Web proxies
`that enhance performance through caching or enhance security by controlling access to servers, (2) mail relays that for-
`ward mail from a client to another mail server, [and] (3) DNS relays that cache DNS name resolutions.” Id. at col. 2, ll.
`49-53. The background section provides that “[e]ach proxy may forward, modify, or otherwise transform the transactions
`as they flow from the client to the server and vice versa.” Id. at ll. 47-49.
`
`3. Analysis
`
`Petitioner contends that Datta and APA teach the limitations of claims 1-5, 7-12, 14-17, and 20-22. In the Preliminary
`Response, Patent Owner does not address specifically Petitioner's contentions, and indicates that it will address the mer-
`its of the asserted ground “if and after the Board initiates inter partes review.”See Prelim. Resp. 6.
`
`Upon review of Petitioner's analysis and supporting Declaration, we are persuaded that Petitioner's asserted ground of
`unpatentability for claims 1-5, 7-12, and 14 based on the combination of Datta and APA has merit. However, we are not
`persuaded that the same is true for claims 15-17 and 20-22.
`
`a. Claims 1-5, 7-12, and 14
`
`Petitioner contends that Datta and APA teach all the limitations of independent claims 1 and 8 and dependent claims 2-5,
`7, 9-12, and 14.
`
`Independent claim 1 recites “a first apparatus receiving a data request from a first computer.”Petitioner asserts that APA
`discloses this limitation because APA describes a client, a server, and proxies that can intercept or forward client-server
`transactions. Pet. 14. Petitioner additionally asserts that Datta discloses “[d]ynamic proxy cache 306 can receive a web
`page request and can pass it to back end monitor 314 via web server 110 and application server 112.”Id. Essentially, Peti-
`tioner argues that APA and Datta teach proxies that constitute a first apparatus and, further, that the client described in
`APA is a “first computer.” Based on the evidence presented, we are persuaded that APA and Datta support Petitioner's
`assertions.
`
`*8 Claim 1 also recites “the first apparatus sending the data request to a second apparatus.”For this limitation, Petitioner
`asserts that APA discloses “the proxy connects to one or more other proxies that in turn connect to the server.”Pet. 14
`(citing Ex. 1001, col. 2, ll. 34-53). We understand Petitioner's position to be that APA's “other” proxy is a “second appar-
`atus.” Based on the current record, we are persuaded that APA supports Petitioner's argument.
`
`Next, claim 1 recites “the second apparatus sending the data request to a second computer.”Petitioner argues that APA
`discloses this limitation because APA describes that client-server transactions, such as web page requests, can be inter-
`cepted and forwarded through proxies. Pet. 15. Petitioner adds that APA discloses that a “proxy connects to one or more
`other proxies that in turn connect to the server.”Id. Petitioner's position is that the “other” proxy is a “second apparatus”
`sending the data request to a server (i.e., a “second computer”).Id. We are persuaded that the current record also supports
`sufficiently this argument.
`
`Claim 1 additionally requires “the second apparatus receiving response data from the second computer, wherein the
`second computer generates the response data based on the data request.”Petitioner contends that APA discloses “a second
`proxy receiving web page data from a server” because APA teaches that a server “generally refers to a computer, com-
`puting device, peripheral, electronics, or the like, that operates in response to requests for data or action made by one or
`more clients.” Id. (citing Ex. 1001, col. 2, ll. 34-53). Petitioner additionally argues that Datta discloses an “application
`server, which is part of a web site, generating response data based on a web page request.”Id. Petitioner's arguments are
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`KOLCRAFT EXHIBIT 2008-8
`Artsana USA, Inc. v. Kolcraft Enterprises, Inc.
`IPR2014-01053
`
`

`

`Page 9
`
`persuasive. As noted by Petitioner, APA teaches that client-server transactions “can be intercepted and forwarded
`through” proxies. See Ex. 1001, col. 2, ll. 34-53.
`
`Claim 1 further recites “the second apparatus determining whether a portion of the response data is locally accessible to
`the first apparatus.”To support its position, Petitioner relies on APA as teaching proxies and Datta as disclosing “using a
`back end monitor to determine whether a portion of a web page data is locally accessible to a dynamic proxy cache.”Pet.
`15-16 (citing Ex. 1011 ¶¶ 55, 91, 93, 95, 97, 141). We understand Petitioner's argument to be that the back end monitor
`in Datta performs the function of “determining whether a portion of the response data is locally accessible to the first ap-
`paratus,” and that it would have been obvious to modify a proxy of APA to perform this function. See Pet. at 13. Petition-
`er additionally contends that a person of ordinary skill in the art would have understood that this combination of elements
`from Datta and APA is a simple substitution of one known element for another to obtain predictable results, and an ap-
`plication of a known technique to a known device (method or product) ready for improvement to yield predictable res-
`ults. Id. at 13.
`
`*9 On this point, we are persuaded by the testimony of Dr. Johnson as set forth in his declaration (Ex. 1003). Dr. Johnson
`states that one of ordinary skill in the art “would find it obvious to perform the functions of Datta's back end monitor in a
`second proxy, such as a proxy disclosed by APA” because the “functions performed by the back end monitor are proxy
`functions in the sense that the back end monitor acts as an intermediary for the web server.”Ex. 1003 ¶ 88. Dr. Johnson
`also asserts that the combination of APA and Datta “simply substitutes one known element for another to obtain predict-
`able results.”Id. Based on the current record, we are persuaded that the evidence presented sufficiently supports this posi-
`tion.
`
`Claim 1 additionally requires the step of:
`in response to determining that the portion of the response data is locally accessible to the first apparatus, the second
`apparatus modifying the response data to obtain modified response data, wherein said modifying includes replacing
`the portion of the response data with a reference to the portion of the response data, and wherein the modified re-
`sponse data instructs the first apparatus to use the reference to the portion of the response data to retrieve the portion
`of the response data from a storage that is locally accessible to the first apparatus.
`
`Petitioner asserts that Datta's back end monitor modifies web page data “in response to determining that the portion of
`the web page data is locally accessible to the dynamic proxy cache.”See Pet. 16. In particular, Petitioner asserts that the
`back end monitor observes the application processing and generates a template of the page layout. Id. The template can
`include page layout instructions, “holes” (placeholders) to indicate where cached fragments can be inserted, and “get” in-
`structions. Id. Based on the current record, we are persuaded by Petitioner's argument that it would have been obvious to
`modify the APA proxy to include the back end monitor functions because the combination of Datta and APA elements is
`a simple substitution of elements, and an application of known technique to a known device ready for improvement. See
`id. at 13, 16.
`
`Claim 1 also requires, “the second apparatus sending the modified response data to the first apparatus.”Petitioner con-
`tends that Datta teaches the back end monitor sending the modified web page to the dynamic proxy cache. Pet. 16. Peti-
`tioner notes that back end monitor 314 generates a template of the page layout and the application server “then sends the
`template to dynamic proxy cache 306.” Id. (citing Ex. 1011 ¶ 95). We are persuaded that the evidence of record suffi-
`ciently supports Petitioner's contention.
`
`*10 Claim 1 further requires:
`the first apparatus retrieving the portion of the response data based on the reference to the portion of the response
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`KOLCRAFT EXHIBIT 2008-9
`Artsana USA, Inc. v. Kolcraft Enterprises, Inc.
`IPR2014-01053
`
`

`

`Page 10
`
`data, wherein the portion of the response data is retrieved from the storage that is locally accessible to the first appar-
`atus.
`Petitioner argues that “Datta discloses a dynamic proxy cache that retrieves the portion of the web page data in order to
`‘insert the cacheable content fragment identified by the key into the web page.’ . . . Specifically, the template can include
`a ‘get’ instruction ‘instructing the dynamic proxy cache to retrieve cached content from its memory.”’ Pet. 17 (citing Ex.
`1011, Abstract; ¶ 101). Petitioner adds that the dynamic proxy cache retrieves the cached content from a locally-ac-
`cessible storage because the cache itself stores dynamic content fragments and includes an in-memory array of pointers
`to cached fragments. Id. (citing Ex. 1011 ¶ 91). We understand Petitioner's argument to be that it would have been obvi-
`ous to modify the APA client, server, and proxy network system to include the dynamic proxy cache as a proxy because
`the combination of Datta and APA elements is a simple substitution of elements, and an application of known technique
`to a known device ready for improvement. See id. at 13. Petitioner's position is supported sufficiently by the current re-
`cord.
`
`Claim 1 also recites “the first apparatus sending the response data to the first computer.”Petitioner contends that Datta
`discloses the dynamic cache sending web page data to a user at a computer, and APA teaches a first proxy sending the
`web page data to the client. Pet. 17. We are persuaded that the evidence of record sufficiently supports Petitioner's argu-
`ment.
`
`Based on the evidence and arguments presented, we are persuaded that Petitioner has established a reasonable likelihood
`that it would prevail in showing that claim 1 is unpatentable over Datta and APA.
`
`Additionally, Petitioner's claim chart and the supporting evidence also sufficiently explain how the cited references teach
`the claimed subject matter recited in independent claim 8 and dependent claims 2-5, 7, 9-12, and 14. Like claim 1, inde-
`pendent claim 8 recites a “first apparatus” and a “second apparatus.” Petitioner relies on the arguments made for claim 1
`to assert that the majority of the limitations recited in claim 8 are taught by APA. Pet. 20. Specifically, Petitioner argues
`that APA teaches a proxy as a “first apparatus” that connects to one or more other proxies, which Petitioner contends
`constitute the “second apparatus.” See id. at 14-15, 20-21.
`
`For claim 8, Petitioner also argues that Datta and APA teach:
`in response to determining that the portion of the response data is not locally accessible to the first apparatus, the
`second apparatus modifying the response data to obtain modified response data, wherein said modifying includes
`adding, to the response data, a reference to the portion of the response data, wherein the modified response data in-
`structs the first apparatus to store the portion of the response data and the reference to the portion of the response
`data in a storage that is locally accessible to the first apparatus.
`*11 Pet. 21. Petitioner asserts that Datta “discloses using the back end monitor to modify web page data in response to
`determining that the portion of the web page data accessible to the dynamic proxy cache.”Id. at 20-21. Petitioner con-
`tends that the back end monitor can add “set” instructions in the template to instruct the dynamic proxy cache to store
`specific content identified by a key. Id. at 21. Petitioner also cites to paragraph 112 of Datta, which indicates that “the
`dynamic proxy cache can store in its memory the key and the corresponding content for each code block 806-810, as in-
`structed by the ‘set’ command.” See id.Petitioner's rationale for the combination of APA and Datta is the same as dis-
`cussed above. Id. at 13.
`
`Thus, for the foregoing reasons, we are persuaded that Petitioner has established a reasonable likelihood that it would
`prevail in showing that claims 1-5, 7-12, and 14 are unpatentable over APA and Datta.
`
`b. Claims 15-17 and 20-22
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`KOLCRAFT EXHIBIT 2008-10
`Artsana USA, Inc. v. Kolcraft Enterprises, Inc.
`IPR2014-01053
`
`

`

`Page 11
`
`Petitioner argues that independent claims 15 and 20 and dependent claims 16-17 and 21-22 are unpatentable over Datta
`and APA. Pet. 11-26. These claims recite various distinct “mechanisms,” such as a “first receiving mechanism,” ““first
`sending mechanism,” “second receiving mechanism,” “determining mechanism,” “modifying mechanism,” and “second
`sending mechanism.” The mechanisms are “configured” to perform various functions. As to the “first receiving mechan-
`ism” recited in claim 15, Petitioner does not identify specifically the structure that it believes constitutes the recited
`mechanism. See Pet. 23. Further, for several of the other “mechanism” limitations recited in these claims, Petitioner ar-
`gues that the recited “mechanism” is “found within the ‘second apparatus”D’ of claim 1. Pet. 22-26. However, in its ana-
`lysis, Petitioner fails to explain sufficiently how the recited mechanisms purportedly are found in the “second apparatus”
`of claim 1.
`
`To illustrate, independent claim 15 recites, among other features, “a first sending mechanism configured to send the data
`request to a computer.”Petitioner asserts that,
`APA discloses this element for the reasons described in conjunction with element [1.3] of Ground 1 above. The first
`sending mechanism is found within the “second apparatus” of element [1.3] and the “computer” of element [15.2] is
`the “second computer” of element [1.3].
`Pet. 23. Element 1.3 (as designated by Petitioner) recites “the second apparatus sending the data request to a second com-
`puter.”Pet. 15. For element 1.3, Petitioner argues that APA discloses that client-server transactions can be intercepted
`and forwarded through proxies, and that a proxy can connect to one or more other proxies that in turn connect to the
`server. Id. As discussed above, for element 1.3, Petitioner argues the “other” proxy and server disclosed in APA consti-
`tute the “second apparatus” and “second computer,” respectively. Thus, for claim 15, Petitioner's argument is that the
`““first sending mechanism” is found within the “other” proxy disclosed in APA.
`
`*12 Petitioner has not explained sufficiently, however, what it considers to be the “first sending mechanism” “within”
`the proxy. Although Petitioner identifies the “other” proxy as teaching the recited structure for the “second apparatus” in
`element 1.3 (Pet. 15), Petitioner does not point to anything within the “other” proxy as a “first sending mechanism” (Pet.
`23). Pursuant to 37 C.F.R. § 42.104(b)(4), a petition for inter partes review must identify how the challenged claim is un-
`patentable and “must specify where each element of the claim is found in the prior art patents or printed publications re-
`lied upon.”(emphasis added). By generally asserting that the recited mechanism can be found within the prior art proxy,
`without identifying what in the proxy teaches the recited mechanism, Petitioner has not satisfied this requirement suffi-
`ciently.
`
`Petitioner's reliance on Dr. Johnson's testimony also is not persuasive on this point. See Pet. 23 (citing Ex. 1003 ¶¶
`120-121). Dr. Johnson states that
`