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
`
`PETITION FOR INTER PARTES REVIEW OF
`CLAIM 48
`U.S. PATENT NO. 7,378,992
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`

`
`IPR2016-00373: Petition
`U.S. Patent No. 7,378,992, Claim 48
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`I.
`II. MANDATORY NOTICES ............................................................................. 3
`A.
`Real Party In Interest ............................................................................. 3
`B.
`Related Matters ...................................................................................... 3
`C.
`Counsel .................................................................................................. 4
`D.
`Service Information ............................................................................... 4
`III. LEVEL OF ORDINARY SKILL .................................................................... 4
`IV. CERTIFICATION OF GROUNDS FOR STANDING .................................. 4
`V. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .................... 5
`A.
`Prior Art ................................................................................................. 5
`B. Grounds of Challenge ............................................................................ 6
`VI. LEGAL PRINCIPLES ..................................................................................... 6
`VII. OVERVIEW OF THE ’992 PATENT ............................................................ 7
`A.
`Priority ................................................................................................... 7
`B.
`Brief Description ................................................................................... 8
`C.
`Summary of the Prosecution History of the ’992 Patent .................... 10
`1.
`The ’478 Reexamination (No. 95/000,478) .............................. 10
`2.
`The ’928 Reexamination (No. 95/001,928) .............................. 11
`VIII. CLAIM CONSTRUCTION .......................................................................... 15
`A.
`The term “receiving a data block”....................................................... 16
`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” ............................................................ 17
`IX. PRIOR ART REFERENCES ........................................................................ 19
`A. Hsu ....................................................................................................... 19
`B.
`Franaszek ............................................................................................. 26
`C.
`Sebastian .............................................................................................. 28
`THE CHALLENGED CLAIM IS NOT PATENTABLE ............................. 30
`
`X.
`
`
`
`i
`
`

`
`IPR2016-00373: Petition
`U.S. Patent No. 7,378,992, Claim 48
`XI.
`IDENTIFICATION OF HOW CLAIM 48 IS UNPATENTABLE .............. 31
`A. Ground 1: Claim 48 is Obvious in View of Hsu and Franaszek ........ 31
`1. Motivation to combine Hsu and Franaszek .............................. 32
`2.
`The preamble of Claim 48 is disclosed in Hsu ......................... 35
`3.
`Limitation A of Claim 48 is disclosed in Hsu and,
`alternatively, in Hsu in view of Franaszek ............................... 37
`Limitation B of Claim 48 is disclosed in Hsu ........................... 40
`Limitation C of Claim 48 is disclosed in Hsu ........................... 42
`Limitation D of Claim 48 is disclosed in Hsu .......................... 45
`Limitation E of Claim 48 is obvious in view of Hsu and
`Franaszek .................................................................................. 47
`Limitation F of Claim 48 is disclosed in Hsu ........................... 50
`8.
`B. Ground 2: Claim 48 is Obvious in View of Hsu and Sebastian .......... 52
`1. Motivation to combine Hsu and Sebastian ............................... 52
`2.
`The preamble and limitations A-D and F of Claim 48 are
`disclosed in Hsu ........................................................................ 56
`Limitation E of Claim 48 is disclosed in Hsu in view of
`Sebastian ................................................................................... 56
`XII. CONCLUSION…………………………………………………………… 60
`
`4.
`5.
`6.
`7.
`
`3.
`
`
`
`
`
`
`
`ii
`
`

`
`IPR2016-00373: Petition
`U.S. Patent No. 7,378,992, Claim 48
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Federal Cases
`In re ICON Health & Fitness, Inc.,
`496 F.3d 1374 (Fed. Cir. 2007) .......................................................................... 16
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) .................................................................................. 7, 37, 57
`
`Realtime Data, LLC v Packeteer, Inc., et al.,
`E.D. Tex. Case No. 6: 08-cv-00144 .................................................................... 17
`
`Federal Statutes
`
`35 U.S.C. § 102 .................................................................................................. 13, 14
`
`35 U.S.C. § 102(a), (b), and (e) ........................................................... 5, 6, 20, 27, 30
`
`35 U.S.C. § 103 .......................................................................................................... 6
`
`35 U.S.C. § 103(a) ..................................................................................................... 7
`
`35 U.S.C. § 112 .................................................................................................. 13, 14
`
`35 U.S.C. § 314(a) ..................................................................................................... 6
`
`Regulations
`
`37 C.F.R § 42.22(a)(1) ............................................................................................... 5
`
`37 C.F.R. § 42.100(b) .............................................................................................. 16
`
`37 C.F.R. § 42.104(a) ................................................................................................. 4
`
`37 C.F.R. § 42.104(b)(1)-(2) ...................................................................................... 5
`
`37 C.F.R. § 42.104(b)(4)-(5) .................................................................................... 33
`
`77 Fed. Reg. 48764 (Aug. 14, 2012) ....................................................................... 17
`
`
`
`iii
`
`

`
`IPR2016-00373: Petition
`U.S. Patent No. 7,378,992, Claim 48
`Other Authorities
`
`Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) .................................................................................................................... 6
`
`
`
`iv
`
`

`
`IPR2016-00373: Petition
`U.S. Patent No. 7,378,992, Claim 48
`I.
`INTRODUCTION
`
`U.S. Patent No. 7,378,992 (“the ’992 patent”, Ex. 1001) is generally directed
`
`to systems and methods for analyzing a data block and applying different
`
`compression methods to different data blocks depending on the type of data
`
`contained in those blocks. The prior art is replete with disclosures of systems and
`
`methods that perform this function by examining a data type descriptor appended
`
`to or associated with the incoming data block. For this reason, the Office cancelled
`
`21 claims of the ’992 patent during two prior inter partes reexaminations of the
`
`’992 patent, even though the petitioners in both reexaminations stopped
`
`participating midway through each proceeding.1 In the second reexamination, the
`
`Patent Owner added new claims, including claim 48, which is the sole claim
`
`challenged in this Petition. The only limitation added to claim 48 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.”
`
`See ’992 Patent at claim 48 (“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.”); Ex.
`
`1 The first petitioner stopped participating after filing the initial request. The
`
`second petitioner did not respond to the Patent Owner’s response amending the
`
`claims. As explained supra, challenged claim 48 issued from those amendments.
`
`
`
`1
`
`

`
`IPR2016-00373: Petition
`U.S. Patent No. 7,378,992, Claim 48
`1001. Claim 48 issued as amended, even though all remaining limitations are
`
`essentially identical to cancelled claim 12.
`
`An article that was not before any of the examiners during prosecution or
`
`reexamination of the ’992 patent, however, discloses this amended limitation and
`
`renders obvious claim 48 of the ’992 patent. “Automatic Synthesis of
`
`Compression Techniques for Heterogeneous Files,” by Hsu and Zwarico (“Hsu”,
`
`Ex. 1003), teaches that the data block analysis includes something other than
`
`analyzing a “descriptor” indicative of the data type of the data within the data
`
`block—Hsu teaches analyzing the data itself. For example, Hsu teaches
`
`analyzing certain bytes within a data block and comparing the pattern of data in
`
`those bytes to a collection of known data patterns in order to determine the data
`
`type of the data within that block. Hsu at 1104; Ex. 1003.
`
`Hsu also expressly discloses every limitation of claim 48 of the ’992 patent
`
`except arguably a “default encoder.” But during both reexaminations, the
`
`examiners found this limitation to be clearly disclosed in the prior art, particularly
`
`by U.S. Patent Nos. 5,870,036 (“Franaszek”, Ex. 1004) and 6,253,264
`
`(“Sebastian”, Ex. 1005). Because those references disclose similar systems and
`
`methods to Hsu, including systems and methods that analyze a data block and
`
`apply different compression methods to different data blocks depending on the
`
`type of data contained in those blocks, it would have been obvious to combine the
`
`
`
`2
`
`

`
`IPR2016-00373: Petition
`U.S. Patent No. 7,378,992, Claim 48
`teachings of Hsu with the teachings of each of Franaszek and Sebastian.
`
`Accordingly, Hsu in view of each of those references renders claim 48 obvious and
`
`unpatentable.
`
`II. MANDATORY NOTICES
`A. Real Party In Interest
`Oracle America, Inc. (“Petitioner”), HP Inc., Hewlett Packard Enterprise
`
`Company, and HP Enterprise Services, LLC are the real parties-in-interest.
`
`Petitioner submits this Petition for Inter Partes Review (“Petition”) for review of
`
`claim 48 of U.S. Patent No. 7,378,992.
`
`B. Related Matters
`The following co-pending litigation matters would affect or could be
`
`affected by a decision in this proceeding: Realtime Data LLC v Actian
`
`Corporation et al., E.D. Tex. Case No. 6:2015-cv-00463, Realtime Data LLC v
`
`Dropbox, Inc., E.D. Tex. Case No. 6:2015-cv-00465, Realtime Data LLC v
`
`EchoStart Corporation et al., E.D. Tex. Case No. 6:2015-cv-00466, Realtime Data
`
`LLC v Oracle America, Inc., Hewlett-Packard Co. and HP Enterprise Services,
`
`LLC, E.D. Tex. Case No. 6:2015-cv-00467, Realtime Data LLC v Riverbed
`
`Technology, Inc. et al., E.D. Tex. Case No. 6:2015-cv-00468, Realtime Data LLC v
`
`SAP America, Inc. et al., E.D. Tex. Case No. 6:2015-cv-00469, Realtime Data LLC
`
`v Teradata Corporation et al., E.D. Tex. Case No. 6:2015-cv-00470, all filed on
`
`May 8, 2015.
`
`
`
`3
`
`

`
`IPR2016-00373: Petition
`U.S. Patent No. 7,378,992, Claim 48
`The following co-pending IPRs would affect or could be affected by a
`
`decision in this proceeding: IPR2016-00374; IPR2016-00375; IPR2016-00376;
`
`IPR2016-00377.
`
`C. Counsel
`Lead Counsel: Monica Grewal (Registration No. 40,056)
`
`Back-up Counsel: Donald Steinberg (Registration No. 37,241)
`
`Service Information
`
`D.
`Email: Monica.Grewal@wilmerhale.com; Donald.Steinberg@wilmerhale.com
`
`Post and hand delivery address: Wilmer Cutler Pickering Hale and Dorr LLP,
`
`60 State Street, Boston, MA 02109 Telephone: (617) 526-6223
`
`Facsimile: (617) 526-5000. Petitioner consents to electronic service.
`
`III. LEVEL OF ORDINARY SKILL
`A person of ordinary skill in the relevant field is a hypothetical person to
`
`whom an expert in the relevant field could assign a routine task with reasonable
`
`confidence that the task would be successfully carried out. The level of skill in the
`
`art is evidenced by prior art references. The prior art discussed herein
`
`demonstrates that a person of ordinary skill in the field, at the time the ’992 patent
`
`was effectively filed, had an undergraduate degree in computer science and two
`
`years’ experience or a graduate degree in the field of data compression.
`
`IV. CERTIFICATION OF GROUNDS FOR STANDING
`
`
`
`4
`
`

`
`IPR2016-00373: Petition
`U.S. Patent No. 7,378,992, Claim 48
`Petitioner certifies pursuant to Rule 42.104(a) that the patent for which
`
`review is sought is available for inter partes review and that Petitioner is not
`
`barred or estopped from requesting an inter partes review challenging the patent
`
`claims on the grounds identified in this Petition.
`
`V. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)-(2), Petitioner challenges
`
`claim 48 of the ’992 patent (Ex. 1001) and requests that it be cancelled.
`
`A.
`Prior Art
`Petitioner relies upon the following prior art:2
`
`1.
`
`“Automatic Synthesis of Compression Techniques for Heterogeneous
`
`Files” by Hsu and Zwarico (“Hsu”, Ex. 1003), which was published in the journal
`
`of Software—Practice and Experience, Vol. 25(10), 1097-1116 (October 1995), is
`
`prior art under 35 U.S.C. § 102(a) and (b).
`
`2.
`
`U.S. Patent No. 5,870,036 to Franaszek et al. (“Franaszek”, Ex. 1004),
`
`which was filed on February 24, 1995 and issued on February 9, 1999, is prior art
`
`under 35 U.S.C. § 102(a), (b), and (e).3
`
`
`2 Reference to the operation of each of the systems described in these references is
`
`limited to the explicit disclosures of these references.
`
`
`
`5
`
`

`
`IPR2016-00373: Petition
`U.S. Patent No. 7,378,992, Claim 48
`3.
`U.S. Patent No. 6,253,264 to Sebastian (“Sebastian”, Ex. 1005),
`
`which was filed on March 6, 1998, claims priority to U.S. Provisional Application
`
`No. 60/036,548 (filed on March 7, 1997), and issued on June 26, 2001, is prior art
`
`under 35 U.S.C. § 102(e).
`
`B. Grounds of Challenge
`Petitioner requests cancellation of claim 48 (the “challenged claim”) of the
`
`’992 patent as unpatentable under 35 U.S.C. § 103.
`
`This Petition, supported by the declaration of Dr. James Storer (“Storer
`
`Declaration” or “Storer Decl.,” Ex. 1002), demonstrates a reasonable likelihood
`
`that Petitioner will prevail with respect to the challenged claim and that it is
`
`unpatentable for the reasons cited in this Petition. See 35 U.S.C. § 314(a).4
`
`VI. LEGAL PRINCIPLES
`The challenged claim was filed prior to the effective date of the Leahy-
`
`Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) and
`
`
`3 As explained in Section VII.A below, the challenged claim is entitled to an
`
`effective filing date no earlier than October 29, 2001. Even assuming a December
`
`11, 1998 filing date, Franaszek would qualify as prior art under 35 U.S.C. § 102(e).
`
`4 Dr. Storer’s patent, U.S. Patent No. 5,379,036 (Ex. 1022), is cited on the face of
`
`the ’992 patent. His book, Data Compression: Methods and Theory, Computer
`
`Science Press (1988) (“Storer 1988”; Ex. 1018), is cited in Hsu.
`
`
`
`6
`
`

`
`IPR2016-00373: Petition
`U.S. Patent No. 7,378,992, Claim 48
`therefore should be analyzed for patentability under pre-AIA 35 U.S.C. § 103. A
`
`claim is invalid if it would have been “obvious.” See 35 U.S.C. § 103(a). The key
`
`inquiry to determine obviousness is whether an “improvement is more than the
`
`predictable use of prior art elements according to their established functions.” KSR
`
`Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 415, 417, 420-21 (2007).
`
`VII. OVERVIEW OF THE ’992 PATENT
`A.
`Priority
`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).
`
`Although all of the prior art relied upon in this Petition predates December
`
`11, 1998, it bears noting that the challenged claim is not entitled to an effective
`
`filing date of December 11, 1998, because there is no support for this claim in the
`
`’491 application. For example, the ’491 application fails to disclose or teach the
`
`claimed “default encoder.” 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 29, 2001, and issued as U.S. Patent No. 6,624,761 (Ex.
`
`
`
`7
`
`

`
`IPR2016-00373: Petition
`U.S. Patent No. 7,378,992, Claim 48
`1026). Second, the Patent Owner, during the ’992 patent’s second reexamination,
`
`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 PO 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 challenged claim is therefore entitled to
`
`an effective filing date no earlier than October 29, 2001.
`
`Brief Description
`
`B.
`The ’992 patent is directed to systems and methods for analyzing a data
`
`block and selecting a compression method to apply to that block. ’992 Patent at
`
`Abstract; Ex. 1001. Figure 13A of the ’992 patent shows an embodiment of the
`
`alleged invention that is relevant to the challenged claim:
`
`
`
`8
`
`
`
`

`
`IPR2016-00373: Petition
`U.S. Patent No. 7,378,992, Claim 48
`The “content dependent data recognition module” 1300 analyzes the
`
`incoming data stream to recognize “data types” and other parameters indicative of
`
`the “data type/content.” See id. at 16:27-33. If this module “recognizes” the data
`
`type of a given data block, the module routes the block to the content dependent
`
`encoder module 1320 (see, e.g., id. at 16:36-40); if not, it routes the block to the
`
`“content independent” (or “default”)5 encoder module 30” (see, e.g., id. at.3:54-55,
`
`3:60-63, 16:4-7, 16:36-40, 18:17-20).
`
`The content dependent encoder module 1320 comprises lossy or lossless
`
`compression encoders (id. at 16:45-53); the content independent encoder module
`
`30 comprises only lossless encoders (id. 16:60-62). Lossy encoders provide for an
`
`“inexact” representation of the original uncompressed data (id. at 1:64-67); lossless
`
`encoders provide for an “exact” representation (id. 2:11-13). 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
`
`
`5 The ’992 patent refers to “content independent” compression as “default content
`
`independent” compression. See id. 20:50-51. The challenged claim refers
`
`explicitly to a “default” encoder and 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; see also Storer Decl. at ¶ 42 n.2; Ex. 1002.
`
`
`
`9
`
`

`
`IPR2016-00373: Petition
`U.S. Patent No. 7,378,992, Claim 48
`various types of textual data, such as financial records (where exact representations
`
`are critical). See Storer Decl. at ¶ 43; Ex. 1002.
`
`The ’992 patent teaches that “[e]ncoding techniques” may be selected
`
`“based upon their ability to effectively encode different types of input data.” ’992
`
`Patent at 12:61-64; Ex. 1001. But the ’992 patent recognizes that many lossy and
`
`lossless encoding techniques were well known within the art (see, e.g., id. at 7:8-
`
`12, 16:45-51) and that compressing data of a known type with a particular
`
`algorithm or default encoder has been known for decades (see id. at 3:16-48
`
`(describing prior art U.S. Patent No. 5,467,087 (“Chu”, Ex. 1012)); see also Storer
`
`Decl. at ¶¶ 29-36; Ex. 1002). The ’992 patent also teaches that well-known
`
`lossless compression algorithms (e.g., run length, Huffman, Lempel-Ziv) may be
`
`used by either the content independent or dependent compression encoders shown
`
`in Figure 13A above. See, e.g., ’992 Patent at 16:45-51, 16:60-64; Ex. 1001;
`
`Storer Decl. at ¶¶ 44-45; Ex. 1002.
`
`Summary of the Prosecution History of the ’992 Patent
`
`C.
`The ’992 patent has undergone two reexaminations. During these
`
`reexaminations, 21 claims were cancelled and 6 new claims were added. The
`
`challenged claim was added during the second reexamination.
`
`1.
`
`The ’478 Reexamination (No. 95/000,478)
`
`
`
`10
`
`

`
`IPR2016-00373: Petition
`U.S. Patent No. 7,378,992, Claim 48
`On May 21, 2009, Blue Coat Systems requested inter partes reexamination
`
`of the ’992 patent based on several patents, including U.S. Patent No. 5,870,036
`
`(“Franaszek”, Ex. 1004) and U.S. Patent No. 6,253,264 (“Sebastian”, Ex. 1005).
`
`’478 Reexamination, 5/21/09 Request for Reexamination; Ex. 1034.6
`
`On January 18, 2012, the Board of Patent Appeals and Interferences
`
`affirmed the examiner’s cancellation of claims 1, 3, 7, 9-15, 18-21, 26-29, 32-33,
`
`and 36. ’478 Reexamination, 1/18/12 Decision on Appeal at 4; Ex. 1035. The
`
`Board affirmed the examiner’s rejection of claims 12 and 20 as being anticipated
`
`by each of Franaszek and Sebastian. Id. at 3-4. Cancelled claims 12 and 20—as
`
`well as challenged claim 48—all claim the step of compressing using the same
`
`type of “default encoder”: “compressing, if said first data type is not the same as
`
`one of said several data types, said data block with a default encoder to provide
`
`said compressed data block” (emphasis added). ’992 Patent at claims 12, 20, and
`
`48; Ex. 1001. The reexamination certificate issued on October 4, 2012. Id. at ’478
`
`Reexamination Certificate.
`
`The ’928 Reexamination (No. 95/001,928)
`
`2.
`On March 2, 2012, prior to issuance of the ’478 reexamination certificate,
`
`Verizon Wireless requested an inter partes reexamination of the ’992 patent and
`
`6 Blue Coat Systems did not participate in this reexamination after filing its
`
`request.
`
`
`
`11
`
`

`
`IPR2016-00373: Petition
`U.S. Patent No. 7,378,992, Claim 48
`sought to invalidate claims 33, 35, and 36. ’928 Reexamination, 3/2/12 Request
`
`for Inter Partes Reexamination; Ex. 1036. Claims 33 and 36 were subsequently
`
`cancelled and claim 35 was subsequently allowed as amended during the
`
`reexamination. ’992 Patent at ’928 Reexamination Certificate; Ex. 1001.
`
`On April 25, 2012, the examiner issued a non-final office action rejecting
`
`claim 35 as being anticipated by the prior art. ’928 Reexamination, 4/25/12 Office
`
`Action at 2-5; Ex. 1037.
`
`On June 25, 2012, the Patent Owner amended claim 35 to recite that
`
`“determining whether or not to compress comprises directly analyzing data.” ’928
`
`Reexamination, 6/25/12 PO Response at 2 (emphasis added); Ex. 1006. The Patent
`
`Owner also added claims 46-51, which claimed “directly analyzing data within the
`
`data block” to determine its data type (id. at 3-5 (emphasis added)), and argued that
`
`the prior art did not disclose these amended features (id. at 16-18).
`
`On July 25, 2012, Verizon submitted comments to the Patent Owner’s
`
`amended and added claims and argued that they were invalid under 35 U.S.C. §
`
`112, as failing to comply with both the written description and enablement
`
`requirements, and under 35 U.S.C. § 102, as anticipated by several references,
`
`including Sebastian and Franaszek. ’928 Reexamination, 7/25/12 Verizon’s
`
`Comments to PO’s Response at 3-18; Ex. 1038.7
`
`7 Verizon did not subsequently participate in this reexamination.
`
`
`
`12
`
`

`
`IPR2016-00373: Petition
`U.S. Patent No. 7,378,992, Claim 48
`On March 5, 2013, the examiner agreed with Verizon and rejected the
`
`amended and added claims under 35 U.S.C. § 112 and 102. ’928 Reexamination,
`
`3/5/13 Action Closing Prosecution at 3-25; Ex. 1007. The examiner found that the
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`amended claims lacked written description under 35 U.S.C. § 112 because the
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`claimed subject matter was not described in the specification in such a way as to
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`reasonably convey to a person of skill in the art that the inventor had possession of
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`the claimed invention. Id. at 3. The examiner also found that the amended claims
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`were not enabled under 35 U.S.C. § 112 because the inventor did not specifically
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`disclose “direct analysis”, and the inventor did not use this phrase or any similar
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`language (such as “directly analyzing”) anywhere in the specification. Id.
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`Furthermore, the inventor “[did] not provide a working example of direct analysis
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`or enough direction to one of ordinary skill in the art such that one [could] make
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`the claimed ‘direct analysis’ invention without undue experimentation.” Id. at 4.
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`The examiner further rejected the amended and added claims as anticipated by
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`several prior art references, including Sebastian and Franaszek. Id. at 6-17.
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`On April 5, 2013, the Patent Owner further amended claims 35 and 46-51 to
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`recite: “analyzing data within the data block . . . wherein the analyzing . . .
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`excludes analyzing based only on a descriptor that is indicative of the data type
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`of the data within the data block.” ’928 Reexamination, 4/5/13 PO Reply at 2-7
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`(emphasis added); Ex. 1008. The amendments to claim 48 are shown below.
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`
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`13
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`

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`IPR2016-00373: Petition
`U.S. Patent No. 7,378,992, Claim 48
`48. (Currently Amended) A computer implemented method comprising:
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`receiving a [[first]] data block;
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`associating at least one encoder to each one of several data types;
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`directly analyzing data within the data block to identify a first data
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`type of said first the data within the data block;
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`compressing, if said first data type is the same . . .
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`compressing, if said first data type is not the same . . .
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`wherein the analyzing of the data within the data block to identify one
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`or more data types excludes analyzing based only on a descriptor that is
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`indicative of the data type of the data within the data block.
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`Id. at 4 (emphasis added).
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`Presumably because of a litigation settlement, Verizon did not respond to the
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`amended claims and the examiner did not conduct a separate prior art search. See
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`MetroPCS Litigation, 4/11/11 Am. Complaint (asserting ’992 patent against
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`Verizon) (Ex. 1029), 9/18/12 Joint Motion to Stay (Ex. 1030), 10/17/12 Joint
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`Motion for Dismissal (Ex. 1031), 10/19/12 Order Dismissing Case (Ex. 1032);
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`’928 Reexamination, 11/21/13 Search Notes; Ex. 1033.
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`On August 16, 2013, the examiner allowed pending claims 35 and 46-51.
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`’928 Reexamination, 8/16/13 Right of Appeal Notice (“RAN”) at 2; Ex. 1009. She
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`stated that the claims were allowed because the prior art of record did not disclose
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`
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`14
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`

`
`IPR2016-00373: Petition
`U.S. Patent No. 7,378,992, Claim 48
`“analyzing data within the data block . . . wherein the analyzing . . . excludes
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`analyzing based only on a descriptor that is indicative of the data type of the data
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`within the data block.” Id. at 2-3. She found support for the amended language in
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`the specification’s description of “analyzing” data blocks “to recognize one of a
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`data type, data structure, data block format, file substructure, and/or file types”
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`and teaching of data analysis by “comput[ing] statistics of a data block” such as the
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`relative frequencies of repeated characters. Id. at 3-4 (citing ’992 Patent at 4:40-
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`46, 16:27-40, 23:25-64 (Ex. 1001)).
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`VIII. CLAIM CONSTRUCTION
`A claim in inter partes review is given the “broadest reasonable construction
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`in light of the specification.” 37 C.F.R. § 42.100(b).8 In re ICON Health &
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`Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
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`The following discussion proposes a construction and support for that
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`construction. Any claim terms not included are given their broadest reasonable
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`interpretation in light of the specification as commonly understood by those of
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`ordinary skill in the art. Should the Patent Owner contend that the claim has a
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`construction different from its broadest reasonable interpretation, the appropriate
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`8 Petitioner adopts this standard and reserves the right to pursue different
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`constructions in a district court, where a different standard is applicable.
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`
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`15
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`

`
`IPR2016-00373: Petition
`U.S. Patent No. 7,378,992, Claim 48
`course is for the Patent Owner to seek to amend the claim to expressly correspond
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`to its contentions in this proceeding. See 77 Fed. Reg. 48764 (Aug. 14, 2012).
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`A. The term “receiving a data block”
`Claim 48 of the ’992 patent recites the term “receiving a data block.” The
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`proposed construction is receiving one or more data blocks.
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`In Realtime Data, LLC v Packeteer, Inc., et al., E.D. Tex. Case No. 6: 08-cv-
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`00144, the court construed a similar claim term, “receiving a data stream,” which
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`appeared in the asserted claims of the parents of the ’992 patent (U.S. Patent Nos.
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`7,161,506 (Ex. 1027) and 6,624,761 (Ex. 1026)).9 The court construed “receiving
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`a data stream” as meaning “receiving one or more data blocks transmitted in
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`sequence.” In doing so, the court rejected the Patent Owner’s argument that the
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`term should be interpreted as meaning “receiving one or more data blocks
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`transmitted in sequence where the transmission of the sequence is not initiated
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`by the [component receiving the data].” 6/22/09 Packateer Order at 40; Ex.
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`1028 (emphasis added).
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`9 The ’992 patent was asserted and claims other than claim 48 (which did not exist
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`at the time) were construed in this litigation. The ’992 patent, however, includes
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`the term “data block,” and does not include the term “data stream.” Petitioner does
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`not assert that the terms “data block” and “data stream” are synonymous, but rather
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`focuses the Board’s attention on the court’s construction of the term “receiving.”
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`
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`16
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`

`
`IPR2016-00373: Petition
`U.S. Patent No. 7,378,992, Claim 48
`Subsequently, during the ’992 patent’s first reexamination (the ‘478
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`reexamination), the Patent Owner once again argued that the term “receiving a data
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`block” refers to the “passive” receipt of data and would therefore exclude the
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`“active process” of “retrieving” or “fetching” of data blocks. ’478 Reexamination,
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`3/15/10 PO Expert Decl. at 3; Ex. 1010. The examiner expressly rejected this
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`argument, finding that the claims were not limited to “passive” reception of data.
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`See ’478 Reexamination, 8/23/10 Action Closing Prosecution at 22 (“In any case,
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`‘passive’ reception is not specifically recited in the rejected claim(s).”); Ex. 1011.
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`Accordingly, a person of ordinary skill in the art would understand that the
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`broadest reasonable construction of the term “receiving a data block” to mean
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`“receiving one or more data blocks.” See Storer Decl. at