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
` Don.Steinberg@wilmerhale.com
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`ORACLE AMERICA, INC.
`
`Petitioner
`
`v.
`
`Patent Owner of
`
`U.S. Patent No. 7,415,530 to Fallon
`
`IPR Trial No. IPR2016-00376
`
`PETITION FOR INTER PARTES REVIEW OF
`CLAIM 24
`U.S. PATENT NO. 7,415,530
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`

`
`IPR2016-00376: Petition
`U.S. Patent No. 7,415,530, Claim 24
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1 
`I. 
`II.  MANDATORY NOTICES ............................................................................. 4 
`A. 
`Real Party In Interest ............................................................................. 4 
`B. 
`Related Matters ...................................................................................... 4 
`C. 
`Counsel .................................................................................................. 5 
`D. 
`Service Information ............................................................................... 5 
`III.  LEVEL OF ORDINARY SKILL .................................................................... 5 
`IV.  CERTIFICATION OF GROUNDS FOR STANDING .................................. 5 
`V.  OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .................... 6 
`A. 
`Prior Art ................................................................................................. 6 
`B. 
`Grounds of Challenge ............................................................................ 7 
`VI.  LEGAL PRINCIPLES ..................................................................................... 7 
`VII.  OVERVIEW OF THE ’530 PATENT ............................................................ 9 
`A. 
`Brief Description ................................................................................... 9 
`B. 
`Summary of the Prosecution History .................................................. 13 
`VIII.  CLAIM CONSTRUCTION .......................................................................... 14 
`A. 
`The term “said compression and storage occurs faster than said data
`stream is able to be stored on said memory device in said received
`form” .................................................................................................... 15 
`The term “bandwidth” ......................................................................... 16 
`B. 
`IX.  PRIOR ART REFERENCES ........................................................................ 17 
`A.  Kawashima .......................................................................................... 17 
`B. 
`Sebastian .............................................................................................. 25 
`C. 
`Chu ...................................................................................................... 28 
`THE CHALLENGED CLAIM IS NOT PATENTABLE ............................. 30 
`IDENTIFICATION OF HOW CLAIM 24 IS UNPATENTABLE .............. 31 
`A. 
`Claim 24 is Obvious in View of Kawashima, Sebastian, and Chu ..... 31 
`1.  Motivation to Combine Kawashima, Sebastian, and Chu ........ 31 
`
`X. 
`XI. 
`
`
`
`i
`
`

`
`IPR2016-00376: Petition
`U.S. Patent No. 7,415,530, Claim 24
`2. 
`Independent Claim 24 is Obvious in View of Kawashima,
`Sebastian and Chu. .................................................................... 34 
`i. 
`The preamble of Claim 24 is disclosed in Kawashima. . 35 
`ii. 
`Limitation A of Claim 24 is disclosed in Kawashima.... 36 
`iii. 
`Limitation B of Claim 24 is disclosed in Kawashima. ... 37 
`iv. 
`Limitation C of Claim 24 is disclosed in Kawashima. ... 39 
`v. 
`Limitation D of Claim 24 is obvious in view of
`Kawashima and Sebastian. ............................................. 40 
`Limitation E of Claim 24 is disclosed in Kawashima. ... 41 
`vi. 
`vii.  Limitation F of Claim 24 is obvious in view of
`Kawashima and Sebastian, as well as obvious in view of
`Kawashima and Chu. ...................................................... 42 
`viii.  Limitation G of Claim 24 is obvious in view of
`Kawashima, Sebastian, and Chu. ................................... 48 
`Limitation H of Claim 24 is disclosed in Kawashima.... 52 
`Limitation I of Claim 24 is disclosed in Kawashima. .... 53 
`Limitation J of Claim 24 is obvious in view of
`Kawashima and Sebastian. ............................................. 55 
`xii.  Limitation K of Claim 24 is obvious in view of
`Kawashima and Sebastian. ............................................. 57 
`XII.  Conclusion ..................................................................................................... 59 
`
`
`ix. 
`x. 
`xi. 
`
`
`
`ii
`
`

`
`IPR2016-00376: Petition
`U.S. Patent No. 7,415,530, Claim 24
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Federal Cases
`Graham v. John Deere,
`383 U.S. 1 (1966) .................................................................................................. 8
`
`In re ICON Health & Fitness, Inc.,
`496 F.3d 1374 (Fed. Cir. 2007) .......................................................................... 14
`
`KSR International Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) .................................................................................... 8, 9, 34
`
`Federal Statutes
`
`35 U.S.C. § 102(a), (b), and (e) ........................................................... 6, 7, 17, 25, 28
`
`35 U.S.C. § 103 ...................................................................................................... 7, 8
`
`35 U.S.C. § 103(a) ..................................................................................................... 7
`
`35 U.S.C. § 314(a) ..................................................................................................... 7
`
`Regulations
`
`37 C.F.R § 42.22(a)(1) ............................................................................................... 6
`
`37 C.F.R. § 42.100(b) .............................................................................................. 14
`
`37 C.F.R. § 42.104(a) ................................................................................................. 5
`
`37 C.F.R. § 42.104(b)(1)-(2) ...................................................................................... 6
`
`37 C.F.R. § 42.104(b)(4)-(5) .................................................................................... 31
`
`77 Fed. Reg. 48764 (Aug. 14, 2012) ....................................................................... 15
`
`Other Authorities
`
`Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) .................................................................................................................... 7
`
`
`
`
`
`iii
`
`

`
`IPR2016-00376: Petition
`U.S. Patent No. 7,415,530, Claim 24
`Random House Webster’s, Computer & Internet Dictionary
` (3d ed. 1999)…………………………………………………………………...17
`
`
`
`iv
`
`

`
`IPR2016-00376: Petition
`U.S. Patent No. 7,415,530, Claim 24
`I.
`INTRODUCTION
`
`U.S. Patent No. 7,415,530 (“the ’530 patent”, Ex. 1101) describes the
`
`transmission and storage of both compressed and uncompressed data. By
`
`compressing incoming data before storing it, overall transmission and storage time
`
`is naturally accelerated. See ’530 Patent at Abstract; Ex. 1101. As acknowledged
`
`in the ’530 patent itself, this benefit was well known at the time of the alleged
`
`invention. Id. at 2:12-18. The alleged invention of the ’530 patent is a “data
`
`storage accelerator” that includes “one or a plurality of high speed data
`
`compression encoders that are configured to simultaneously or sequentially
`
`losslessly compress data at a rate equivalent to or faster than the transmission rate
`
`of an input data stream.” Id. at Abstract. The claim of the ’530 patent that is the
`
`subject of this Petition requires that data compression and storage occur faster than
`
`storage alone could occur if the data were left in uncompressed form.
`
`The ’530 patent was the subject of one inter partes reexamination, although
`
`the requester stopped participating after filing the request. The examiner
`
`ultimately concluded that the references relied on by the third party requester did
`
`not disclose this allegedly inventive limitation. Reexamination No. 95/001,927,
`
`5/31/13 Right of Appeal Notice at 6-14; Ex. 1107 (concluding that the references
`
`relied upon did not disclose “said compression and storage occurs faster than said
`
`data stream is able to be stored on said memory device in said received form.”)
`
`
`
`1
`
`

`
`IPR2016-00376: Petition
`U.S. Patent No. 7,415,530, Claim 24
`A prior art reference which was not at issue in that reexamination, however,
`
`U.S. Patent No. 5,805,932 (“Kawashima”, Ex. 1103), indisputably discloses this
`
`limitation. Specifically, Kawashima discloses a high speed data compression
`
`system designed to compress an incoming data stream using a high compression
`
`ratio—through the use of any one or a combination of compression algorithms—
`
`and then to store the compressed data stream more quickly than it could be stored
`
`in uncompressed form. Kawashima at 7:1-15; Ex. 1103.
`
`While Kawashima expressly mentions some exemplary lossless compression
`
`techniques such as the well-known Lempel-Ziv algorithm, Kawashima is agnostic
`
`as to what specific encoding technique is used. Instead, Kawashima states that the
`
`disclosed system can be used with different types of encoding techniques to
`
`achieve its goal.
`
`The challenged claim of the ’530 patent requires that the received data
`
`stream be compressed using at least two different compression algorithms (or
`
`“encoders”) to compress different blocks of data in the stream. Compressing data
`
`using multiple encoders—specifically, compressing data using different techniques
`
`for different types of data—was well-known in the art at the time of the alleged
`
`invention. For example, U.S. Patent No. 5,467,087 to Chu (“Chu”, Ex. 1105),
`
`cited on the face of the ’530 patent, teaches that “high speed lossless data
`
`compression” can be achieved by compressing an input data stream using different
`
`
`
`2
`
`

`
`IPR2016-00376: Petition
`U.S. Patent No. 7,415,530, Claim 24
`compression techniques based on the different data types of the data in the data
`
`stream. Chu at Abstract, Figures 3 and 6, 4:24-65; Ex. 1105. Likewise, U.S.
`
`Patent No. 6,253,264 to Sebastian (“Sebastian”, Ex. 1104), teaches that optimal
`
`compression can be obtained by compressing multiple data blocks using different
`
`compression techniques for each block based on the format or data type of the data
`
`in the data block. See Sebastian at Abstract, 19:31-48; Ex. 1104. Therefore, it
`
`would have been obvious to modify Kawashima to incorporate the use of two or
`
`more compression techniques, such as those compression techniques described by
`
`Kawashima itself, to compress different blocks of data in the incoming data
`
`stream.
`
`Because Kawashima, Sebastian and Chu disclose similar systems and
`
`methods, including systems and methods for analyzing and compressing incoming
`
`data streams while optimizing system performance, and because Kawashima
`
`expressly states that its system can be optimized through the use of various specific
`
`encoding techniques, it would have been obvious to combine the teachings of
`
`Kawashima, Sebastian and Chu. Accordingly, Kawashima in view of Sebastian
`
`and Chu renders claim 24 of the ’530 patent obvious and unpatentable.
`
`
`
`3
`
`

`
`IPR2016-00376: Petition
`U.S. Patent No. 7,415,530, Claim 24
`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 24 of U.S. Patent No. 7,415,530 (the “’530 patent”).
`
`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.
`
`The following co-pending IPRs would affect or could be affected by a
`
`decision in this proceeding: IPR2016-00373; IPR2016-00374; IPR2016-00375;
`
`IPR2016-00377.
`
`
`
`4
`
`

`
`IPR2016-00376: Petition
`U.S. Patent No. 7,415,530, Claim 24
`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; Don.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 ’530 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
`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
`
`
`
`5
`
`

`
`IPR2016-00376: Petition
`U.S. Patent No. 7,415,530, Claim 24
`barred or estopped from requesting an inter partes review challenging the patent
`
`claim 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 24 of the ’530 patent (Ex. 1101) and requests that the challenged claim be
`
`cancelled.
`
`A.
`Prior Art
`Petitioner relies upon the following prior art:1
`
`1.
`
`U.S. Patent No. 5,805,932 to Kawashima (“Kawashima”, Ex. 1103),
`
`which was filed on February 13, 1996, and issued on September 8, 1998, is prior
`
`art under 35 U.S.C. § 102(a) and (e).
`
`2.
`
`U.S. Patent No. 6,253,264 to Sebastian (“Sebastian”, Ex. 1104),
`
`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).
`
`
`1 The systems disclosed in these references will be referred to herein as the
`
`“Kawashima system,” “Sebastian system,” and “Chu system.” Reference to the
`
`operation of each of these systems is limited to the explicit disclosures of these
`
`references.
`
`
`
`6
`
`

`
`IPR2016-00376: Petition
`U.S. Patent No. 7,415,530, Claim 24
`3.
`U.S. Patent No. 5,467,087 to Chu (“Chu”, Ex. 1105), which was filed
`
`on December 18, 1992, and issued on November 14, 1995, is prior art under 35
`
`U.S.C. § 102(a), (b), and (e).
`
`B. Grounds of Challenge
`Petitioner requests cancellation of claim 24 (the “challenged claim”) of the
`
`’530 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. 1102), demonstrates that there is a reasonable
`
`likelihood that Petitioner will prevail with respect to the challenged claim and that
`
`the challenged claim is unpatentable for the reasons cited in this Petition. See 35
`
`U.S.C. § 314(a).
`
`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). As such,
`
`the challenged claim should be analyzed for patentability under pre-AIA 35 U.S.C.
`
`§ 103. A claim is invalid if it would have been obvious, that is “if the differences
`
`between the subject matter sought to be patented and the prior art are such that the
`
`subject matter as a whole would have been obvious at the time the invention was
`
`made to a person having ordinary skill in the art to which [the] subject matter
`
`pertains.” 35 U.S.C. § 103(a).
`
`
`
`7
`
`

`
`IPR2016-00376: Petition
`U.S. Patent No. 7,415,530, Claim 24
`In KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 415 (2007), the U.S.
`
`Supreme Court addressed the issue of obviousness and provided an “expansive and
`
`flexible” approach it considers consistent with the “broad inquiry” set forth in
`
`Graham v. John Deere, 383 U.S. 1 (1966). According to the Supreme Court, a
`
`person of ordinary skill in the art is “a person of ordinary creativity, not an
`
`automaton” and “in many cases a person of ordinary skill will be able to fit the
`
`teachings of multiple patents together like pieces of a puzzle.” KSR, 550 U.S. at
`
`420-21.
`
`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.” Id. at 417. Furthermore, the Supreme Court held that “[w]hen there is
`
`a design need or market pressure to solve a problem and there are a finite number
`
`of identified, predictable solutions, a person of ordinary skill has good reason to
`
`pursue the known options within his or her technical grasp.” Id. at 421. The
`
`Supreme Court confirmed that combinations of known options that yield
`
`predictable results are rarely patentable. Id. at 416 (“The combination of familiar
`
`elements according to known methods is likely to be obvious when it does no more
`
`than yield predictable results.” (emphasis added)). Further, “[i]f a person of
`
`ordinary skill in the art can implement a predictable variation, § 103 likely bars its
`
`patentability.” Id. at 401. The Board must ask, as guided by KSR, whether the
`
`
`
`8
`
`

`
`IPR2016-00376: Petition
`U.S. Patent No. 7,415,530, Claim 24
`claims recite an “improvement [that] is more than the predictable use of prior
`
`art elements according to their established functions.” Id. (emphasis added).
`
`VII. OVERVIEW OF THE ’530 PATENT
`A. Brief Description
`The ’530 patent, titled “Systems and Methods for Accelerated Data Storage
`
`and Retrieval,” was filed on October 26, 2006 and claims priority to several U.S.
`
`patent applications, the earliest of which was Application No. 09/266,394, filed on
`
`March 11, 1999, and issued as U.S. Patent No. 6,601,104 (Ex. 1108).
`
`The ’530 patent is directed to systems and methods for providing
`
`“accelerated” data storage and retrieval (’530 Patent at Abstract; Ex. 1101) and
`
`allegedly teaches systems and methods for improving data storage and retrieval
`
`“bandwidth” by using lossless data compression and decompression (id. at 4:42-
`
`44).
`
`Figure 8 illustrates a detailed block diagram of a system for accelerated data
`
`storage according to the ’530 patent’s preferred embodiment:
`
`
`
`9
`
`

`
`IPR2016-00376: Petition
`U.S. Patent No. 7,415,530, Claim 24
`
`
`
`As shown above, the claimed “data storage accelerator” (10) receives an
`
`incoming “data stream” of “data blocks” and optionally stores the blocks in the
`
`“input data buffer” (15) and sends the blocks to the “data block counter” (20),
`
`where data blocks’ sizes are measured and recorded. See id. at 11:23-34. The
`
`“input data buffer” (15) is typically random access memory (RAM). See Storer
`
`Decl. at ¶ 36; Ex. 1102. The ’530 patent states that “the input buffer 15 and
`
`counter 20 are not required elements of the present invention.” ’530 Patent at
`
`11:23-51; Ex. 1101.
`
`The ’530 patent explains that the data blocks received and compressed by
`
`the “data storage accelerator” may range in size (also referred to in the art as
`
`
`
`10
`
`

`
`IPR2016-00376: Petition
`U.S. Patent No. 7,415,530, Claim 24
`“length”) from “individual bits through complete files or collections of multiple
`
`files,” and that they may be either fixed or variable in size. Id. at 11:26-30; see
`
`also Storer Decl. at ¶ 37; Ex. 1102. The “data block counter” “counts” or
`
`“otherwise enumerates the size” of the data blocks in “any convenient units
`
`including bits, bytes, words, double words.” ’530 Patent at 11:30-33; Ex. 1101.
`
`Data compression is performed by the “encoder module” (25). Id. at 11:40.
`
`This module may include any number of encoders (i.e., compression engines
`
`represented in Figure 8 as “E1,” E2,” E3,” and “En”) that may use any number of
`
`the lossless compression techniques “currently well known within the art” such as
`
`“run length, Huffman, Lempel-Ziv Dictionary Compression, arithmetic coding,
`
`data compaction, and data null suppression.” Id. at 11:40-46; see also id. at 12:41-
`
`46. The ’530 patent discloses that the compression techniques may be selected
`
`based upon their “ability to effectively encode different types of input data” (id. at
`
`11:47-48), that more than one encoder may use the same compression technique
`
`(id. at 12:41-46), and the compression process may be performed in parallel or
`
`sequentially (id. at 11:62-64). In other words, using the compression process
`
`described in the ’530 patent, either the same or different data blocks may be
`
`compressed by different encoders simultaneously (in parallel), or the same or
`
`different data blocks may be compressed by different encoders sequentially, one
`
`block at a time.
`
`
`
`11
`
`

`
`IPR2016-00376: Petition
`U.S. Patent No. 7,415,530, Claim 24
`After a data block is compressed by the “encoder module,” it may be
`
`buffered and its newly compressed size may be measured or “counted” by the
`
`“buffer/counter module” (30). Id. at 12:14-16. Next, the “compression ratio
`
`module” (35) determines the “compression ratio” obtained for each of the encoders
`
`by calculating the ratio of the size of the uncompressed data block to the size of the
`
`compressed block. Id. at 12:20-25. If, for example, a single data block is
`
`compressed by several different encoders E1 . . . En, each using a different
`
`compression technique, the “compression ratio module” may also compare each
`
`calculated ratio with an “a priori-specified compression ratio threshold limit” to
`
`determine if at least one of the compressed blocks were compressed at an equal or
`
`greater ratio. See id. at 12:25-30. If at least one of the compressed blocks was
`
`compressed at an equal or greater ratio, then the block compressed with the highest
`
`ratio is transmitted/stored. Id. at 12:46-49. If none of the compressed blocks were
`
`compressed at an equal or greater ratio, then the uncompressed block is
`
`transmitted/stored. Id. at 12:49-53.
`
`Before the uncompressed or compressed block is transmitted/stored, the
`
`“description module” or “compression type description” module (38) “appends” a
`
`descriptor to the block indicating, for a compressed block, the compression
`
`technique that was used, or else a “null” descriptor indicating that the block was
`
`not compressed. Id. at 12:33-59. The block, with its appended descriptor, is then
`
`
`
`12
`
`

`
`IPR2016-00376: Petition
`U.S. Patent No. 7,415,530, Claim 24
`transmitted/stored, and the descriptor is used for “subsequent data processing,
`
`storage, or transmittal.” Id.
`
`The ’530 patent describes that “accelerated data storage and retrieval” is
`
`achieved “by utilizing lossless data compression and decompression.” Id. at 2:58-
`
`60. For example, data storage can be “accelerated” by compressing an input data
`
`stream at a compression ratio (e.g., 3:1) that is at least equal to the ratio of the
`
`input data transmission rate (e.g., 60 megabytes per second) to the data storage rate
`
`(e.g., 20 megabytes per second) “so as to provide continuous storage of the input
`
`data stream at the input data transmission rate.” Id. at 3:13-18; see also 5:29-43.
`
`By compressing the data at this compression ratio, 60 megabytes worth of
`
`compressed data can be stored per second, even though the target storage device is
`
`capable of storing only 20 megabytes per second, thus “accelerating” the storage of
`
`data. See Storer Decl. at ¶ 41; Ex. 1102.
`
`Summary of the Prosecution History
`
`B.
`The ’530 patent has undergone one reexamination: Reexamination No.
`
`95/001,927 (“the ’927 reexamination”), filed on March 2, 2012. During this
`
`reexamination, independent claims 1 and 24 were found patentable by the
`
`examiner. ’927 Reexamination, 5/31/13 Right of Appeal Notice at 6-14; Ex. 1107.
`
`In finding that these claims were patentable, the examiner found that the primary
`
`references relied upon by the third party requester, U.S. Patent Nos. 4,956,808
`
`
`
`13
`
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`IPR2016-00376: Petition
`U.S. Patent No. 7,415,530, Claim 24
`(“Aakre”, Ex. 1112), 4,593,324 (“Ohkubo”, Ex. 1110), and 5,150,430 (“Chu ’430”,
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`Ex. 1109)2, did not disclose the following limitation: “said compression and
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`storage occurs faster than said data stream is able to be stored on said memory
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`device in said received form.” Id. While the examiner found that references
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`before him did disclose “fast” compression and storage systems, he concluded that
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`none specified that those systems compressed and stored faster than storage of the
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`uncompressed stream could otherwise occur. See id. at 6 (citing Aakre (Ex. 1112)
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`at Abstract, 1:54-59, 1:62-2:4, 2:10-13, 2:17-21, 2:43-47, 3:30-50), 7 (citing
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`Okhubo (Ex. 1110) at Abstract, 1:54-67, 2:62-63, 2:67-3:8, 3:29-31, 4:10-14, 4:22-
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`29), 8 (citing Chu ’430 (Ex. 1109) at 3:65-68, 4:10-12, 4:16-20, 4:24-38, 6:4-28,
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`17:3-6, and Figure 2).
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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).3 In re ICON Health &
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`Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
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`2 Chu ’430 is a different patent than the Chu patent (U.S. Patent No. 5,467,087)
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`that provides the basis for the ground of this petition.
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`3 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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`IPR2016-00376: Petition
`U.S. Patent No. 7,415,530, Claim 24
`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, in order to avoid the prior art,
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`contend that the claim has a construction different from its broadest reasonable
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`interpretation, the appropriate course is for the Patent Owner to seek to amend the
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`claim to expressly correspond to its contentions in this proceeding. See 77 Fed.
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`Reg. 48764 (Aug. 14, 2012).
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`A. The term “said compression and storage occurs faster than said
`data stream is able to be stored on said memory device in said
`received form”
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`1.
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`Independent claim 24 of the ’530 patent recites the term, “said
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`compression and storage occurs faster than said data stream is able to be stored on
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`said memory device in said received form.” The proposed construction wherein
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`the time to compress and store the received data stream is less than the time to
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`store the received data stream without compressing it.
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`As explained in Section VII.A above, the ’530 patent is generally directed to
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`“accelerated data storage and retrieval” (’530 Patent at Abstract; Ex. 1101). The
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`’530 patent teaches that storage “acceleration” can be achieved by receiving a data
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`stream at an input data transmission rate (e.g., 80 megabytes per second) that is
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`greater than the data storage rate of a target storage device (e.g., 20 megabytes per
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`IPR2016-00376: Petition
`U.S. Patent No. 7,415,530, Claim 24
`second) and compressing the data stream at a compression ratio (e.g., 4:1) that
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`provides a compression rate (e.g., 40 megabytes per second) that is greater than the
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`data storage rate. See id. at 2:63-3:3.
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`Accordingly, a person of ordinary skill in the art would understand the
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`broadest reasonable construction of the term “said compression and storage occurs
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`faster than said data stream is able to be stored on said memory device in said
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`received form” to mean “wherein the time to compress and store the received data
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`stream is less than the time to store the received data stream without compressing
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`it.” See Storer Decl. at ¶¶ 44-46; Ex. 1102 (emphasis added).
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`The term “bandwidth”
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`B.
`Independent claim 24 of the ’530 patent recites the term “bandwidth.” The
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`proposed construction is the speed at which data can be transmitted or stored, and
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`is quantified as a certain number of bits per second.
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`The ’530 specification uses “data [] rate” (speed) synonymously with
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`“bandwidth.” See, e.g., ’530 Patent at 5:25-43, 9:18-10:10 (equating “input
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`bandwidth” with “input data rate,” and “bandwidth of the target storage device”
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`with a “data storage device . . . [that] is capable of storing 20 megabytes per
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`second” (number of bits per second)); Ex. 1101. Also, the ’530 specification notes
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`that “[t]iming and counting [(rate)] enables determination of the bandwidth of the
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`input data stream.” Id. at 9:26-27 (emphasis added). This understanding is also
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`IPR2016-00376: Petition
`U.S. Patent No. 7,415,530, Claim 24
`consistent with the dictionary definition of bandwidth, which is “[t]he amount of
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`data that can be transmitted in a fixed amount of time . . . [and] is usually
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`expressed in bits per second (bps) or bytes per second.” Random House
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`Webster’s, Computer & Internet Dictionary at 45 (3d ed. 1999); Ex. 1114.
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`Accordingly, a person of ordinary skill in the art would understand the
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`broadest reasonable construction of the term “bandwidth” to mean “the speed at
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`which data can be transmitted or stored, and is quantified as a certain number of
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`bits per second.” See Storer Decl. at ¶¶ 47-49; Ex. 1102.
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`IX. PRIOR ART REFERENCES
`A. Kawashima
`U.S. Patent No. 5,805,932 to Kawashima (“Kawashima”, Ex. 1103), which
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`was filed on February 13, 1996, and issued on September 8, 1998, is prior art under
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`35 U.S.C. § 102(a) and (e). Kawashima was among hundreds of references cited
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`during the original prosecution of the ’530 patent, but it was never discussed
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`during the original prosecution or the reexamination of the ’530 patent.
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`Kawashima discloses a data compression and transmission/storage system
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`that maximizes the effective bandwidths of the system’s transmissions channels
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`and storage devices while maximizing the system’s storage capacity. Figures 1, 3,
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`and 8 show basic components of the Kawashima system, and will be referred to
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`throughout this petition.
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`U.S. Patent No. 7,415,530, Claim 24
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`U.S. Patent No. 7,415,530, Claim 24
`Kawashima discloses a data transmission/storage system that analyzes the
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`compressibility of data before transmission/storage. Kawashima at Abstract; Ex.
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`1103. Figures 1 and 8 above show a “data transmitting apparatus 1” that is
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`connected to “data source 2” and “data destination 3.” Kawashima at 21:15-18
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`(Figure 1), 25:8-22 (Figure 8); Ex. 1103. “Data source 2” and “data destination 3”
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`each may comprise a “communication device” or an “external memory device
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`having an internal storage medium[.]” Id. at 21:27-34. Similarly, Figure 3 shows
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`a “data transmitting apparatus 1” that is connected to “memories 21, 22” through
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`“data buses 23, 24.” Id. at 22:16-18.
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`Kawashima explains that the “data processing apparatus 1” in Figure 8,
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