Filed on behalf of Oracle America, Inc.
`By: Monica Grewal, Reg. No. 40,056 (Lead Counsel)
`Donald Steinberg, Reg. No. 37,241 (Back-up Counsel)
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`Phone: (617) 526-6223
`Email: Monica.Grewal@wilmerhale.com
` Donald.Steinberg@wilmerhale.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`ORACLE AMERICA, INC.
`
`Petitioner
`
`v.
`
`REALTIME DATA LLC
`
`Patent Owner of
`
`U.S. Patent No. 7,378,992 to Fallon
`
`IPR Trial No. IPR2016-00373
`
`DECLARATION OF PROFESSOR JAMES A. STORER, Ph.D.
`
`CLAIM 48
`U.S. PATENT NO. 7,378,992
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`1
`
`

`
`IPR2016-00373: Storer Declaration
`U.S. Patent No. 7,378,992, Claim 48
`TABLE OF CONTENTS
`
`I. 
`BACKGROUND AND QUALIFICATIONS ................................................. 4 
`II.  MATERIALS REVIEWED ............................................................................ 7 
`III.  THE RELEVANT LEGAL STANDARDS .................................................... 8 
`A. 
`Claim Construction ............................................................................... 8 
`B. 
`Obviousness ........................................................................................... 9 
`IV.  STATE OF THE ART AT THE TIME OF THE ’992 PATENT ................. 12 
`V.  OVERVIEW OF THE ’992 PATENT .......................................................... 21 
`A. 
`Priority ................................................................................................. 21 
`B. 
`Brief Description ................................................................................. 22 
`C. 
`Summary of the Prosecution History of the ’992 Patent .................... 27 
`VI.  CLAIM CONSTRUCTION .......................................................................... 29 
`A. 
`The term “receiving a data block”....................................................... 29 
`B. 
`The term “wherein the analyzing of the data within the data block to
`identify one or more data types excludes analyzing based only on a
`descriptor that is indicative of the data type of the data within the data
`block” .................................................................................................. 30 
`VII.  PRIOR ART REFERENCES ........................................................................ 32 
`A.  Hsu ....................................................................................................... 32 
`B. 
`Franaszek ............................................................................................. 41 
`C. 
`Sebastian .............................................................................................. 44 
`VIII.  THE CHALLENGED CLAIM IS NOT PATENTABLE ............................. 46 
`IX. 
`IDENTIFICATION OF HOW CLAIM 48 IS UNPATENTABLE .............. 47 
`A.  Ground 1: Claim 48 is Obvious in View of Hsu and Franaszek ........ 47 
`1.  Motivation to combine Hsu and Franaszek .............................. 47 
`2. 
`The preamble of Claim 48 is disclosed in Hsu. ........................ 51 
`3. 
`Limitation A of Claim 48 is disclosed in Hsu and, alternatively,
`in Hsu in view of Franaszek. ..................................................... 52 
`Limitation B of Claim 48 is disclosed in Hsu. .......................... 56 
`Limitation C of Claim 48 is disclosed in Hsu. .......................... 58 
`
`4. 
`5. 
`
`
`
`2
`
`

`
`IPR2016-00373: Storer Declaration
`U.S. Patent No. 7,378,992, Claim 48
`6. 
`Limitation D of Claim 48 is disclosed in Hsu. ......................... 63 
`7. 
`Limitation E of Claim 48 is obvious in view of Hsu and
`Franaszek. ................................................................................. 65 
`Limitation F of Claim 48 is disclosed in Hsu. .......................... 69 
`8. 
`Ground 2: Claim 48 is Obvious in View of Hsu and Sebastian .......... 71 
`1.  Motivation to combine Hsu and Sebastian ............................... 71 
`2. 
`The preamble and limitations A-D and F of Claim 48 are
`disclosed in Hsu. ....................................................................... 75 
`Limitation E of Claim 48 is disclosed in Hsu in view of
`Sebastian. .................................................................................. 75 
`
`B. 
`
`3. 
`
`
`
`
`
`3
`
`

`
`IPR2016-00373: Storer Declaration
`U.S. Patent No. 7,378,992, Claim 48
`I, Prof. James A. Storer, Ph.D., declare as follows:
`I.
`
`BACKGROUND AND QUALIFICATIONS
`1. My name is James Storer. I am a Professor at Brandeis University in
`
`the Computer Science Department. I am an expert in the field of computer
`
`algorithms, including data communications and internet related computing, data
`
`compression, data and image retrieval, storage and processing of large data sets,
`
`and image/video processing. I have studied, researched, and practiced in the field
`
`of computer science for more than 35 years, and have taught Computer Science at
`
`Brandeis since 1981.
`
`2.
`
`I received my Doctor of Philosophy (Ph.D.) degree in the field of
`
`Computer Science from Princeton University in 1979. I received my Masters of
`
`Arts (M.A.) degree in Computer Science from Princeton University and my
`
`Bachelor of Arts (B.A.) degree in Mathematics and Computer Science from
`
`Cornell University.
`
`3.
`
`After receiving my Ph.D. degree, I worked in industry as a researcher
`
`at AT&T Bell Laboratories from 1979 to 1981 before joining the faculty of
`
`Brandeis University.
`
`4.
`
`I have been involved in computer science research since 1976. My
`
`research has been funded by a variety of governmental agencies, including the
`
`National Science Foundation (NSF), National Aeronautics and Space
`
`
`
`4
`
`

`
`IPR2016-00373: Storer Declaration
`U.S. Patent No. 7,378,992, Claim 48
`Administration (NASA), and Defense Advanced Research Projects Agency
`
`(DARPA). In addition, I have received government Small Business Innovation
`
`Research (SBIR) funding, as well as numerous industrial grants.
`
`5.
`
`I regularly teach courses in software and hardware technology for data
`
`compression and communications (including text, images, video, and audio) at
`
`both the undergraduate and graduate level, and in my capacity as co-chair of the
`
`Annual Data Compression Conference, I regularly referee academic papers in these
`
`areas. In addition, much of my consulting activity has been in the areas of
`
`software and hardware for consumer electronic devices, including cell
`
`phones/PDAs (including cellular technology), smartphones, digital cameras, digital
`
`video and audio recorders, and personal computers (“PCs”), as well as devices for
`
`communications over the Internet.
`
`6.
`
`I am the author of two books: An Introduction to Data Structures and
`
`Algorithms and Data Compression: Methods and Theory (Ex. 1018). Both books
`
`have been used as references for undergraduate level computer science courses in
`
`universities. I am the editor or co-editor of four other books, including
`
`Hyperspectral Data Compression and Image and Text Compression.
`
`7.
`
`I have three issued U.S. patents that relate to computer software and
`
`hardware (two for which I am sole inventor and one for which I am co-inventor).
`
`
`
`5
`
`

`
`IPR2016-00373: Storer Declaration
`U.S. Patent No. 7,378,992, Claim 48
`These are submitted herewith as Exhibits 1022-1024. I am the author or co-author
`
`of well over 100 articles and conference papers.
`
`8.
`
`In 1991, I founded the Annual Institute of Electrical and Electronics
`
`Engineers (IEEE) Data Compression Conference (DCC), the first major
`
`international conference devoted entirely to data compression, and have served as
`
`the conference chair since then.
`
`9.
`
`I routinely serve as referee for papers submitted to journals such as,
`
`for example, JACM, SICOMP, Theoretical CS, Computer Journal, J. Algorithms,
`
`Signal Processing, JPDC, Acta Informatica, Algorithmicia, IPL, IPM, Theoretical
`
`CS, J. Algorithms, Networks, IEEE J. Robotics & Automation, IEEE Trans.
`
`Information Theory, IEEE Trans. Computers, IEEE Trans. Image Processing,
`
`Proceedings of the IEEE, IBM J. of R&D, and J. Computer and System Sciences.
`
`10.
`
`I have served as guest editor for a number of professional journals,
`
`including Proceedings of the IEEE, Journal of Visual Communication and Image
`
`Representation, and Information Processing and Management. I have served as a
`
`program committee member for various conferences, including IEEE Data
`
`Compression Conference, IEEE International Symposium on Information Theory,
`
`Combinatorial Pattern Matching (CPM), International Conference on String
`
`Processing and Information Retrieval (SPIRE), Conference on Information and
`
`Knowledge Management (CIKM), Conference on Information Theory and
`
`
`
`6
`
`

`
`IPR2016-00373: Storer Declaration
`U.S. Patent No. 7,378,992, Claim 48
`Statistical Learning (ITSL), Sequences and Combinatorial Algorithms on Words,
`
`Dartmouth Institute for Advanced Graduate Studies Symposium (DAGS),
`
`International Conference on Language and Automata Theory and Applications
`
`(LATA), DIMACS Workshop on Data Compression in Networks and
`
`Applications, Conference on Combinatorial Algorithms on Words.
`
`11. A copy of my latest curriculum vitae (C.V.) is attached as Appendix
`
`A.
`
`12. My compensation is in no way contingent on the results of these or
`
`any other proceedings relating to the above-captioned patent.
`
`II. MATERIALS REVIEWED
`13.
`I have carefully reviewed the U.S. 7,378,992 (’992 patent) patent.
`
`14. For convenience, a list of the information that I considered in arriving
`
`at my opinions is attached as Appendix B. I understand that the prior art relied on
`
`in this petition includes:
`
` “Automatic Synthesis of Compression Techniques for Heterogeneous
`
`Files” by Hsu and Zwarico (“Hsu”, Ex. 1003). Hsu was published in
`
`the journal of Software—Practice and Experience, Vol. 25(10), 1097-
`
`1116 (October 1995). I have been informed that Hsu qualifies as prior
`
`art.
`
` U.S. Patent No. 5,870,036 to Franaszek et al. (“Franaszek”, Ex. 1004).
`
`
`
`7
`
`

`
`IPR2016-00373: Storer Declaration
`U.S. Patent No. 7,378,992, Claim 48
`Franaszek was filed on February 24, 1995 and issued on February 9,
`
`1999. I have been informed that Franaszek qualifies as prior art.
`
` U.S. Patent No. 6,253,264 to Sebastian (“Sebastian”, Ex. 1005).
`
`Sebastian was filed on March 6, 1998, and claims priority to U.S.
`
`Provisional Application No. 60/036,548 (filed on March 7, 1997), and
`
`issued on June 26, 2001. I have been informed that Sebastian
`
`qualifies as prior art.
`
`15. Based on my review of these materials, I believe that the relevant field
`
`for purposes of the ’992 patent is systems and methods of data compression.
`
`16. As described in Section I above, I have extensive experience in
`
`computer science and data compression. Based on my experience, I have a good
`
`understanding of the relevant field in the relevant timeframe (which is discussed in
`
`Section IV below).
`
`III. THE RELEVANT LEGAL STANDARDS
`17.
`I am not an attorney. For the purposes of this declaration, I have been
`
`informed about certain aspects of the law that are relevant to my opinions. My
`
`understanding of the law is as follows:
`
`A. Claim Construction
`18.
`I have been informed that claim construction is a matter of law and
`
`that the final claim construction will ultimately be determined by the Board. For
`
`
`
`8
`
`

`
`IPR2016-00373: Storer Declaration
`U.S. Patent No. 7,378,992, Claim 48
`the purposes of my invalidity analysis in this proceeding and with respect to the
`
`prior art, I have applied the broadest reasonable construction of the claim terms as
`
`they would be understood by one skilled in the relevant art.
`
`19.
`
`I have been informed and understand that a claim in inter partes
`
`review is given the “broadest reasonable construction in light of the specification.”
`
`37 C.F.R. § 42.100(b). I have also been informed and understand that any claim
`
`term that lacks a definition in the specification is therefore also given a broad
`
`interpretation.
`
`B. Obviousness
`20.
`It is my opinion that a person of ordinary skill in the art at the time the
`
`’992 patent was effectively filed, is a person who has an undergraduate degree in
`
`computer science and two years’ industry experience or a graduate degree in the
`
`field of computer science.
`
`21. Based on my experience, I have an understanding of the capabilities
`
`of a person of ordinary skill in the relevant field. I have supervised and directed
`
`many such persons over the course of my career. Further, I had at least those
`
`capabilities myself at the time the patent was filed.
`
`22. The analysis set forth herein evaluates obviousness and priority issues
`
`consistent with the foregoing principles and through the eyes of one of ordinary
`
`
`
`9
`
`

`
`IPR2016-00373: Storer Declaration
`U.S. Patent No. 7,378,992, Claim 48
`skill in the art at the time of filing (which is discussed in Sections V.A and IX
`
`below).
`
`23.
`
`I have been informed and understand that a patent claim can be
`
`considered to have been obvious to a person of ordinary skill in the art at the time
`
`the application was filed. This means that, even if all of the requirements of a
`
`claim are not found in a single prior art reference, the claim is not patentable if the
`
`differences between the subject matter in the prior art and the subject matter in the
`
`claim would have been obvious to a person of ordinary skill in the art at the time
`
`the application was filed.
`
`24.
`
`I have been informed and understand that a determination of whether
`
`a claim would have been obvious should be based upon several factors, including,
`
`among others:
`
`
`
`the level of ordinary skill in the art at the time the application
`
`was filed;
`
`
`
`
`
`the scope and content of the prior art;
`
`what differences, if any, existed between the claimed invention
`
`and the prior art.
`
`25.
`
`I have been informed and understand that the teachings of two or
`
`more references may be combined in the same way as disclosed in the claims, if
`
`such a combination would have been obvious to one having ordinary skill in the
`
`
`
`10
`
`

`
`IPR2016-00373: Storer Declaration
`U.S. Patent No. 7,378,992, Claim 48
`art. In determining whether a combination based on either a single reference or
`
`multiple references would have been obvious, it is appropriate to consider, among
`
`other factors:
`
`
`
`whether the teachings of the prior art references disclose known
`
`concepts combined in familiar ways, and when combined, would yield
`
`predictable results;
`
`
`
`whether a person of ordinary skill in the art could implement a
`
`predictable variation, and would see the benefit of doing so;
`
`
`
`whether the claimed elements represent one of a limited number
`
`of known design choices, and would have a reasonable expectation of
`
`success by those skilled in the art;
`
`
`
`whether a person of ordinary skill would have recognized a
`
`reason to combine known elements in the manner described in the
`
`claim;
`
`
`
`whether there is some teaching or suggestion in the prior art to
`
`make the modification or combination of elements claimed in the
`
`patent; and
`
`
`
`whether the innovation applies a known technique that had been
`
`used to improve a similar device or method in a similar way.
`
`
`
`11
`
`

`
`IPR2016-00373: Storer Declaration
`U.S. Patent No. 7,378,992, Claim 48
`26.
`I understand that one of ordinary skill in the art has ordinary
`
`creativity, and is not an automaton.
`
`27.
`
`I understand that in considering obviousness, it is important not to
`
`determine obviousness using the benefit of hindsight derived from the patent being
`
`considered.
`
`28. Given this standard, the Board should conclude, based on the
`
`information in this petition, that the challenged claims are merely a predictable
`
`combination of old elements that are used according to their established functions.
`
`IV. STATE OF THE ART AT THE TIME OF THE ’992 PATENT
`29. Compressing data of a known type with a particular compression
`
`algorithm or default encoder has been known for decades, as described in detail
`
`below.
`
`30. The Background section of the ’992 patent acknowledges the prior art
`
`teachings of U.S. Pat. No. 5,467,087 to Chu entitled “High Speed Lossless Data
`
`Compression System” (“Chu”). ’992 Patent at 3:11-28; Ex. 1001; see also Ex.
`
`1012 (Chu). In particular, the ’992 patent states that Chu discloses a method for
`
`“selecting an appropriate lossless data compression technique” for a given data
`
`block. ’992 Patent at 3:11-15; Ex. 1001. The ’992 patent summarizes the
`
`disclosure of Chu as follows:
`
`
`
`12
`
`

`
`IPR2016-00373: Storer Declaration
`U.S. Patent No. 7,378,992, Claim 48
`Data compression 1 comprises two phases, a data pre-
`
`compression phase 2 and a data compression phase 3.
`
`Data decompression 4 of a compressed input data stream
`
`is also comprised of two phases, a data type retrieval
`
`phase 5 and a data decompression phase 6. During the
`
`data compression process 1, the data pre-compressor 2
`
`accepts an uncompressed data stream, identifies the data
`
`type of the input stream, and generates a data type
`
`identification signal. The data compressor 3 selects a
`
`data compression method from a preselected set of
`
`methods to compress the input data stream, with the
`
`intention of producing the best available compression
`
`ratio for that particular data type.
`
`
`
`13
`
`

`
`IPR2016-00373: Storer Declaration
`U.S. Patent No. 7,378,992, Claim 48
`
`
`
`Id. at 3:16-28.
`
`31. U.S. Patent No. 7,190,284 (“Dye”), which is cited on the face of the
`
`’992 patent, discloses compressing a data block according to a compression
`
`technique selected from among a range of compression techniques (e.g., lossless
`
`technique, lossy technique and no compression). Dye at 38:26-28, 38-43-50,
`
`39:36-44, and 47:5-20; Exhibit 1039. The Dye system receives a data block (e.g.,
`
`the IMC 140 receives the input data) and determines whether to compress the data
`
`block and by what compression method. Id. at 38:43-46, see also id. at 15:20-51,
`
`16:53-61, 22:46-48, 26:51-27:3, 35:56-36:4, 38:16-39:52, 40:23-43, 44:9-21 and
`
`48:58-67. “The compression mode is preferably determined in response to one or
`
`more of: an address range where the data is to be stored; a requesting agent which
`
`
`
`14
`
`

`
`IPR2016-00373: Storer Declaration
`U.S. Patent No. 7,378,992, Claim 48
`provides the data; and/or a data type of the data.” Id. at 38:51-54. The compressed
`
`data blocks have a data compression type descriptor (e.g., “the header includes a
`
`tag bit used as an indication of the type of compression used”). Id. at 31:57-59, see
`
`also id. at 32:12-27, 37:11-33, 40:44-55, 43:8-31,45:1-13, and claim 1. The data
`
`compression type descriptor is either indicative of the determination not to
`
`compress or the compression technique which was selected and used to compress
`
`the data. Id. at 31:57-59, 32:12-27, 37:11-33, 38:16-29, 38:43-67, 39:36-52,
`
`40:44-55, 40:59-41:12, 43:8-31,45:1-13, and claim 1. Dye teaches that the
`
`compression techniques can be implemented in software or hardware. Id. at 8:49-
`
`62, 9:13-20, 12:61-13:8, 18:36-51, 29:58-63, 35:56-36:9, and 40:60-12.
`
`32. U.S. Patent No. 6,449,658 (“Lafe”) discloses a method and apparatus
`
`for accelerating data transport through communication networks such as the
`
`Internet. Lafe at Abstract; Ex. 1013. The data may include web pages, emails, text
`
`files, pictures, voice or video. Id. Lafe separates the various media types in the
`
`data stream and compresses them according to data-specific algorithms. Id. at 7:2-
`
`13. Lafe teaches that “[l]ossless compression can be used for non-media objects,
`
`such as text, formatting, executables and unsupported media objects. In contrast,
`
`lossy compression algorithms can be used for media objects, such as images, video
`
`and audio. Examples of compression algorithms include, but are not limited to
`
`cellular automata transforms (CAT), discrete cosine transform, wavelets, fractal
`
`
`
`15
`
`

`
`IPR2016-00373: Storer Declaration
`U.S. Patent No. 7,378,992, Claim 48
`image compression, Huffman coding, arithmetic coding and dictionary techniques
`
`(e.g., LZ77 and LZ78.” Id. at 5:33-42).
`
`33. U.S. Patent No. 5,794,229 (“French”) discloses a system for
`
`compression and decompression of the data pages. French at Abstract; Ex. 1014.
`
`The system uses “flags” to select the optimal type of compression from an array of
`
`compression algorithms. Id. at 4:36-43. “The pages are further optimized for
`
`compression by storing in the page header a status flag indicating whether the data
`
`page is a candidate for compression and (optionally) what type of compression is
`
`best suited for the data on that page.” Id. at 4:18-22.
`
`34. U.S. Patent No. 5,504,842 (“Gentile”) discloses a system for
`
`compression and decompression of a “two-dimensional page representation to be
`
`printed has a combination of text, graphic and image representation types.”
`
`Gentile at Abstract; Ex. 1016. An example of such data is shown in Figure 2:
`
`
`
`16
`
`

`
`IPR2016-00373: Storer Declaration
`U.S. Patent No. 7,378,992, Claim 48
`
`
`
`Gentile discloses a “program memory [that] stores program instructions including
`
`a plurality of different algorithms for compressing data associated with
`
`corresponding different representation types and their combinations.” Id. at
`
`Abstract. Gentile further discloses a “processor coupled to the data and program
`
`memories” for:
`
`(a) identifying separate data for each of a plurality of regions
`
`containing collectively the page representation, with the data for each
`
`
`
`17
`
`

`
`IPR2016-00373: Storer Declaration
`U.S. Patent No. 7,378,992, Claim 48
`region corresponding to the portion of the page representation
`
`contained in that region;
`
`(b) determining the types of representations and boundaries of each
`
`type of representation and the combinations of types contained in each
`
`region;
`
`(c) rasterizing and compressing the data associated with
`
`the
`
`determined types of representations for each region with algorithms
`
`based on selected compression factors;
`
`(d) storing sequentially the compressed data for each region; and
`
`(e) when needed for printing, sequentially for each region, reading the
`
`corresponding stored data, decompressing
`
`the read data, and
`
`transmitting the decompressed data to the print device for printing.
`
`Id. Gentile recognizes that “[d]ifferent compression schemes have been found to
`
`be preferable for the different representation types of text, graphics, and images,”
`
`and discloses Lempel-Ziv, run-length, JPEG, and lossless and lossy compression
`
`methods. Id. at 5:15-29. Gentile also describes “compression factors” to measure
`
`the desirability of a particular compression method. See, e.g., id. at claims 13-15.
`
`35. U.S. Patent No. 5,638,498 (“Tyler”), which is cited on the face of the
`
`’992 patent, discloses a system for compression and decompression of “display
`
`
`
`18
`
`

`
`IPR2016-00373: Storer Declaration
`U.S. Patent No. 7,378,992, Claim 48
`data on a computer system.” Tyler at Abstract; Ex. 1017. An example of such
`
`data is shown in Tyler Figure 2:
`
`
`Tyler describes a system where “[d]ata objects to be displayed are organized into
`
`display lists and each data object includes an object type, such as text, graphic, and
`
`image.” Id. at Abstract. In this system, the “data objects are rasterized into an
`
`uncompressed band buffer and divided into non-intersecting bitmap regions each
`
`identified with one or more object types. Each non-empty region is assigned a
`
`compression algorithm dependent upon the type of the region and specified
`
`compression constraints.” Id. Tyler notes that the “present invention compresses
`
`multiple types of data objects using compression mechanisms that are optimized
`
`for each type of object according to user constraints” (id. at 2:49-51), and teaches
`
`
`
`19
`
`

`
`IPR2016-00373: Storer Declaration
`U.S. Patent No. 7,378,992, Claim 48
`using JPEG, PDR (pixel reduction), LZW, Huffman, RLE, Wavelet, and lossless
`
`and lossy compression methods (id. at 24:1-20). Tyler also describes
`
`“compression constraints” to measure the desirability of a particular method. See,
`
`e.g., id. at claim 14.
`
`36. U.S. Patent No. 3,394,352 (“Wernikoff”) discloses systems and
`
`methods that “minimize the number of symbols to be transmitted, and hence the
`
`transmission time, in a communication system, by determining the most efficient
`
`code for encoding sequences of message symbols and transmitting the symbols in
`
`that code.” Wernikoff at 1:13-17; Ex. 1015. Wernikoff teaches the selection
`
`among multiple encoders to choose the encoder that provides the most
`
`compression for the input data. For example, in the Abstract, Wernikoff states:
`
`Determination of the most efficient code can be
`
`accomplished by applying the message symbols to a
`
`plurality of encoders, counting the numbers of symbols
`
`of coded representations of successive message symbols
`
`produced by each encoder, and comparing the numbers to
`
`determine the particular code that introduces the smallest
`
`number of symbols of coded representation consistent
`
`with distortionless message transmission.
`
`Id. at 1:17-25; see also id. at FIG. 1A (as shown below).
`
`
`
`20
`
`

`
`IPR2016-00373: Storer Declaration
`U.S. Patent No. 7,378,992, Claim 48
`
`
`
`V. OVERVIEW OF THE ’992 PATENT
`A.
`Priority
`37. The ’992 patent, titled “Content Independent Data Compression
`
`Method and System,” was filed on April 8, 2006 and claims priority to several U.S.
`
`patent applications, the earliest of which was Application No. 09/210,491 (“the
`
`’491 application”), filed on December 11, 1998, and issued as U.S. Patent No.
`
`6,195,024 (Ex. 1025).
`
`38.
`
`I have been informed that although all of the prior art relied upon in
`
`this declaration predates December 11, 1998, the challenged claim is not entitled to
`
`an effective filing date of December 11, 1998, because there is no support for this
`
`claim in this application. For example, the ’491 application fails to disclose or
`
`teach a “default encoder,” which is required by the challenged claim. First,
`
`Figures 13A-18D (and accompanying text) of the ’992 patent appear to relate to
`
`the claimed “default encoder,” but were added by the Applicant as part of
`
`Application No. 10/016,355 (“the ’355 application”), which was filed on October
`
`
`
`21
`
`

`
`IPR2016-00373: Storer Declaration
`U.S. Patent No. 7,378,992, Claim 48
`29, 2001, and issued as U.S. Patent No. 6,624,761 (Ex. 1026). Second, the Patent
`
`Owner, during the second of two reexaminations of the ’992 patent, cited the ’355
`
`application as support for a prior version of the challenged claim. Reexamination
`
`No. 95/001,928 (“the ’928 reexamination”), 6/25/12 Patent Owner Response at 10-
`
`12; Ex. 1006. Third, the examiner during the ’992 patent’s first reexamination
`
`found October 29, 2001 to be the priority date of subsequently cancelled claim 12,
`
`which claimed the same “default encoder” as challenged claim 48. Reexamination
`
`No. 95/000,478 (“the ’478 reexamination”), 8/23/10 Action Closing Prosecution at
`
`3; Ex. 1011. The only limitation added to claim 48 as compared to claim 12 is a
`
`requirement that analysis of the data block includes something other than analyzing
`
`a “descriptor that is indicative of the data type of the data within the data block.”
`
`The challenged claim is therefore entitled to an effective filing date no earlier than
`
`October 29, 2001.
`
`B.
`Brief Description
`39. The ’992 patent is generally directed to systems and methods for
`
`analyzing a data block and selecting a compression method to apply to that data
`
`block. ’992 Patent at Abstract; Ex. 1001. The ’992 patent identifies the relevant
`
`technical field as “data compression and decompression” (id. at 1:22-26) and
`
`describes a system “for providing fast and efficient data compression using a
`
`
`
`22
`
`

`
`IPR2016-00373: Storer Declaration
`U.S. Patent No. 7,378,992, Claim 48
`combination of content independent data compression and content dependent data
`
`compression” (id. at Abstract).
`
`40. Figure 13A of the ’992 patent shows an embodiment of the alleged
`
`invention that is relevant to the challenged claim:
`
`
`
`41. As shown above, the claimed compression system comprises a data
`
`block counter 10, which “receives as input an uncompressed or compressed data
`
`stream” and “counts the size of each input data block.” See id. at 16:7-9, 16:14.1
`
`Next, the “content dependent data recognition module 1300 analyzes the incoming
`
`data stream to recognize data types, data structures, data block formats, file
`
`1 The input data buffer 20 is optional, and not recited in the challenged claim.
`
`
`
`23
`
`

`
`IPR2016-00373: Storer Declaration
`U.S. Patent No. 7,378,992, Claim 48
`substructures, file types, and/or any other parameters that may be indicative of
`
`either the data type/content of a given data block or the appropriate data
`
`compression algorithm or algorithms . . . to be applied.” Id. at 16:27-33 (emphasis
`
`added).
`
`42.
`
`If the content-dependent data recognition module 1300
`
`“recognizes”—for example, the data type of—a given data block, the module
`
`routes the block to the content dependent encoder module 1320. Id. at 16:36-40
`
`(“Each data block that is recognized by . . . module 1300 is routed to . . . module
`
`1320”). If the recognition module 1300 does not “recognize” the data type of that
`
`data block, it routes the block to the “content independent” (or “default”)2 encoder
`
`module 30. Id.; see also id. at 3:54-56, 3:60-63 (“In one aspect of the invention, a
`
`method for compressing data comprises the steps of: . . . performing content
`
`dependent data compression on the data block, if the data type of the data block is
`
`identified; performing content independent data compression on the data block, if
`
`the data type of the data block is not identified.”), 16:4-7, 16:36-40, 18:17-20.
`
`2 The ’992 patent refers to “content independent” compression as “default content
`
`independent” compression. See id. 20:50-51. The challenged claim does not refer
`
`explicitly to a “content independent” encoder. Instead, it refers to a “default”
`
`encoder. The ’992 patent uses “encoder” to refer generally to a compression
`
`technique or algorithm. See, e.g., id. at 4:63-5:2, 15:64-16-17, 16:28-41.
`
`
`
`24
`
`

`
`IPR2016-00373: Storer Declaration
`U.S. Patent No. 7,378,992, Claim 48
`43. The content dependent encoder module 1320 comprises a set of
`
`encoders that may include any number of lossy or lossless encoders, which are
`
`selected based on their “ability to effectively encode different types of input data.”
`
`Id. at 16:45-53. The content independent encoder module 30 comprises any
`
`number of only lossless encoders. Id. 16:60-62. Lossy encoders provide for an
`
`“inexact” representation of the original uncompressed data (id. at 1:64-67) and
`
`lossless encoders provide for an “exact” representation of such data. Id. 2:11-13.
`
`For example, lossy encoders may be more suitable for some types of audio or
`
`image data (where degradations may not be noticed by the end-user) and lossless
`
`encoders may be more suitable for various types of textual data, such as financial
`
`records (where exact representations are critical). Lossless compression is suitable
`
`for compressing data of an unknown data type. Therefore, lossless compression
`
`algorithms can be used by a general purpose compression utility for compressing
`
`any type of data or file.
`
`44. The ’992 patent teaches that “[e]ncoding techniques” may be selected
`
`“based upon their ability to effectively encode different types of input data” and
`
`that a “full complement of encoders provides for broad coverage of existing and
`
`future data types.” Id. at 12:61-64. But the ’992 patent recognizes that the
`
`following lossy and lossless encoding techniques were already well known within
`
`the art: “MPEG4, various voice codecs, MPEG3, AC3, AAC” (lossy) and “run
`
`
`
`25
`
`

`
`IPR2016-00373: Storer Declaration
`U.S. Patent No. 7,378,992, Claim 48
`length, Huffman, Lempel-Ziv Dictionary Compression, arithmetic coding, data
`
`compaction, and data null suppression” (lossless). See, e.g., id. at 7:8-12, 16:45-
`
`51. The ’992 patent also admits that the method of Figure 1 (as described at
`
`column 3