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. 9,116,908 to Fallon
`
`IPR Trial No. IPR2016-00377
`
`DECLARATION OF PROFESSOR JAMES A. STORER, Ph.D.
`
`CLAIMS 1-2, 4-6, 9, 11, 21-22, 24-25
`U.S. PATENT NO. 9,116,908
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`1
`
`

`
`IPR2016-00377: Storer Declaration
`U.S. Patent No. 9,116,908, Claims 1-2, 4-6, 9, 11, 21-22, 24-25
`TABLE OF CONTENTS
`
`I. 
`BACKGROUND AND QUALIFICATIONS ................................................. 5 
`II.  MATERIALS REVIEWED ............................................................................ 8 
`III.  THE RELEVANT LEGAL STANDARDS .................................................... 9 
`A. 
`Claim Construction ............................................................................... 9 
`B. 
`Obviousness ......................................................................................... 10 
`IV.  STATE OF THE ART AT THE TIME OF THE ’908 PATENT ................. 13 
`V.  OVERVIEW OF THE ’908 PATENT .......................................................... 16 
`A. 
`Brief Description ................................................................................. 16 
`B. 
`Summary of the Prosecution History .................................................. 20 
`1. 
`Reexamination of the ’530 Patent ............................................. 21 
`VI.  CLAIM CONSTRUCTION .......................................................................... 22 
`A. 
`The term “the compression and storage occurs faster than the first and
`second data blocks are able to be stored on the memory device in
`uncompressed form” (claims 1, 21, 25) .............................................. 22 
`VII.  PRIOR ART REFERENCES ........................................................................ 23 
`A.  Kawashima .......................................................................................... 23 
`B. 
`Sebastian .............................................................................................. 32 
`VIII.  THE CHALLENGED CLAIMS ARE NOT PATENTABLE ...................... 35 
`IX. 
`IDENTIFICATION OF HOW CLAIMS 1-2, 4-6, 9, 11, 21-22, 24-25 ARE
`UNPATENTABLE ........................................................................................ 35 
`A.  Ground 1: Claims 1-2, 4-6, 9, 11, 21-22, and 24-25 are Obvious in
`View of Kawashima and Sebastian ..................................................... 35 
`1.  Motivation to Combine Kawashima and Sebastian .................. 35 
`2. 
`Independent Claim 1 is Obvious in View of Kawashima and
`Sebastian. .................................................................................. 38 
`i) 
`The preamble of Claim 1 is disclosed in Kawashima. ... 39 
`ii) 
`Limitation A of Claim 1 is disclosed in Kawashima. ..... 40 
`iii) 
`Limitation B of Claim 1 is obvious in view of
`Kawashima and Sebastian. ............................................. 41 
`Limitation C of Claim 1 is disclosed in Kawashima. ..... 45 
`
`iv) 
`
`
`
`2
`
`

`
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`7. 
`
`IPR2016-00377: Storer Declaration
`U.S. Patent No. 9,116,908, Claims 1-2, 4-6, 9, 11, 21-22, 24-25
`v) 
`Limitation D of Claim 1 is disclosed in Kawashima. ..... 46 
`Dependent Claim 2 is Obvious in View of Kawashima and
`Sebastian. .................................................................................. 48 
`Dependent Claim 4 is Obvious in View of Kawashima and
`Sebastian. .................................................................................. 50 
`Dependent Claim 5 is Obvious in View of Kawashima and
`Sebastian. .................................................................................. 52 
`Dependent Claim 6 is Obvious in View of Kawashima and
`Sebastian. .................................................................................. 53 
`Dependent Claim 9 is Obvious in View of Kawashima and
`Sebastian. .................................................................................. 54 
`Dependent Claim 11 is Obvious in View of Kawashima and
`Sebastian. .................................................................................. 55 
`Independent Claim 21 is Obvious in View of Kawashima and
`Sebastian. .................................................................................. 56 
`i) 
`The preamble of Claim 21 is disclosed in Kawashima. . 57 
`ii) 
`Limitation A of Claim 21 is obvious in view of
`Kawashima and Sebastian. ............................................. 58 
`Limitation B of Claim 21 is disclosed in Kawashima. ... 58 
`iii) 
`Limitation C of Claim 21 is disclosed in Kawashima. ... 59 
`iv) 
`10.  Dependent Claim 22 is Obvious in View of Kawashima and
`Sebastian. .................................................................................. 59 
`11.  Dependent Claim 24 is Obvious in View of Kawashima and
`Sebastian. .................................................................................. 59 
`Independent Claim 25 is Obvious in View of Kawashima and
`Sebastian. .................................................................................. 60 
`i) 
`The preamble of Claim 25 is disclosed in Kawashima. . 60 
`ii) 
`Limitation A of Claim 25 is disclosed in Kawashima.... 60 
`iii) 
`Limitation B of Claim 25 is obvious in view of
`Kawashima and Sebastian. ............................................. 61 
`Limitation C of Claim 25 is disclosed in Kawashima. ... 62 
`iv) 
`Limitation D of Claim 25 is disclosed in Kawashima.... 62 
`v) 
`CONCLUSION .............................................................................................. 62 
`
`12. 
`
`8. 
`
`9. 
`
`X. 
`
`
`
`3
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`

`
`IPR2016-00377: Storer Declaration
`U.S. Patent No. 9,116,908, Claims 1-2, 4-6, 9, 11, 21-22, 24-25
`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
`
`

`
`IPR2016-00377: Storer Declaration
`U.S. Patent No. 9,116,908, Claims 1-2, 4-6, 9, 11, 21-22, 24-25
`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. 1013). 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
`
`

`
`IPR2016-00377: Storer Declaration
`U.S. Patent No. 9,116,908, Claims 1-2, 4-6, 9, 11, 21-22, 24-25
`These are submitted herewith as Exhibits 1017-1019. 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
`
`

`
`IPR2016-00377: Storer Declaration
`U.S. Patent No. 9,116,908, Claims 1-2, 4-6, 9, 11, 21-22, 24-25
`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 U.S. Patent No. 9,116,908 patent (“the ’908
`
`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:
`
` U.S. Patent No. 5,805,932 to Kawashima (“Kawashima”, Ex. 1003),
`
`which was filed on February 13, 1996, and issued on September 8,
`
`1998. I have been informed that Kawashima qualifies as prior art.
`
` U.S. Patent No. 6,253,264 to Sebastian (“Sebastian”, Ex. 1004),
`
`which was filed on March 6, 1998, claims priority to U.S. Provisional
`
`
`
`7
`
`

`
`IPR2016-00377: Storer Declaration
`U.S. Patent No. 9,116,908, Claims 1-2, 4-6, 9, 11, 21-22, 24-25
`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 ’908 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
`
`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.
`
`
`
`8
`
`

`
`IPR2016-00377: Storer Declaration
`U.S. Patent No. 9,116,908, Claims 1-2, 4-6, 9, 11, 21-22, 24-25
`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
`
`’908 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 consistent with the
`
`foregoing principles and through the eyes of one of ordinary skill in the art at the
`
`time of filing (which is discussed in Section 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
`
`
`
`9
`
`

`
`IPR2016-00377: Storer Declaration
`U.S. Patent No. 9,116,908, Claims 1-2, 4-6, 9, 11, 21-22, 24-25
`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
`
`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:
`
`
`
`10
`
`

`
`IPR2016-00377: Storer Declaration
`U.S. Patent No. 9,116,908, Claims 1-2, 4-6, 9, 11, 21-22, 24-25
`
`
`
`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.
`
`26.
`
`I understand that one of ordinary skill in the art has ordinary
`
`creativity, and is not an automaton.
`
`
`
`11
`
`

`
`IPR2016-00377: Storer Declaration
`U.S. Patent No. 9,116,908, Claims 1-2, 4-6, 9, 11, 21-22, 24-25
`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 ’908 Patent
`29. Using multiple compression techniques to accelerate the
`
`transmission/storage of data has been one of the primary applications of
`
`compression since compression was first used in the 1950s and 1960s, and
`
`continues today, as described in more detail below. See generally D. Huffman, “A
`
`Method for the Construction of Minimum-Redundancy Codes,” Proceedings of the
`
`IRE 40, 1098-1101 (1952) (Ex. 1014); U.S. Patent No. 3,394,352 (“Wernikoff”,
`
`Ex. 1012); J. Ziv and A. Lempel, “A Universal Algorithm for Sequential Data
`
`Compression,” IEEE Transactions on Information Theory 23:3, 337-343 (1977)
`
`(Ex. 1015); J. Ziv and A. Lempel, “Compression of Individual Sequences Via
`
`Variable-Rate Coding,” IEEE Transactions on Information Theory (1978) (Ex.
`
`1016). In addition, rate control (adjusting system parameters to accommodate
`
`bandwidths) was well known in the art, and including in established standards
`
`(e.g., MPEG video compression standard).
`
`
`
`12
`
`

`
`IPR2016-00377: Storer Declaration
`U.S. Patent No. 9,116,908, Claims 1-2, 4-6, 9, 11, 21-22, 24-25
`30. U.S. Patent No. 4,956,808 (“Aakre”) discloses a system for managing
`
`efficient compression and storage of data by controlling a continuous flow of
`
`compressed data being written to a storage device. Aakre at 1:54-2:4; Ex. 1011.
`
`Aakre controls the flow of compressed data “as a function of the data acceptance
`
`rate of the [storage] medium” through a buffering mechanism. Id. at 1:68-2:4;
`
`2:25-25. Aakre’s method has the advantage of operating the storage device “in a
`
`continuous or streaming mode thus reducing the time required for the save
`
`operations.” Id. at 3:13-17.
`
`31. U.S. Patent No. 5,794,229 (“French”) discloses a system for
`
`compression and decompression of the data pages. French at Abstract; Ex. 1010.
`
`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 4:18-26. As “objects are streamed to
`
`disk . . . , Manager in turn stores the object on disk using the best compression
`
`methodology known to it [such that] data compression is transparent.” Id. at 4:27-
`
`45, 16:17-24. “Actual compression methodology can be provided using
`
`commercially available compression/decompression libraries,” such as “LZ221,”
`
`“LZRW1,” “LZW” “PKZIP,” and “PKWare.” Id. at 16:25-42.
`
`
`
`13
`
`

`
`IPR2016-00377: Storer Declaration
`U.S. Patent No. 9,116,908, Claims 1-2, 4-6, 9, 11, 21-22, 24-25
`32. U.S. Patent No. 4,593,324 (“Ohkubo”) describes compressing and
`
`transferring image data between a main memory and an auxiliary memory.
`
`Ohkubo at 1:59-68; Ex. 1009. As described by Ohkubo, using the data
`
`compression/expansion device during transfer between the memories results in
`
`increasing the data transfer rate between the main and auxiliary memories,
`
`allowing more data to be stored in the auxiliary memory. Id. at 4:7-14. Ohkubo
`
`manages this by compressing image data at an average compression rate faster than
`
`the rate at which data may be stored to the magnetic disk. Id. at 2:60-3:16. In
`
`some embodiments, “the data compression/expansion device 6 employs a one-
`
`dimensional 60 run length coding system; however, this system may be replaced
`
`by a two-dimensional coding system.” Id. at 3:59-65. Ohkubo describes that “the
`
`image data transfer rate between the main memory 5 and the data compression/
`
`expansion device 6 is greatly increased, i.e. to 40 M bits/sec at maximum.” Id. at
`
`3:25-34.
`
`33. U.S. Patent No. 5,467,087 to Chu (“Chu”) teaches “high speed
`
`lossless data compression” (Chu at Title; Ex. 1007) and discloses systems and
`
`methods for optimally compressing an input data stream using different
`
`compression techniques (e.g., Lempel-Ziv, Huffman, and arithmetic coding) for
`
`the data based on the different data types of the data in the data stream (id. at
`
`Abstract, Figures 3 and 6, 4:24-65). Chu teaches compressing data in this manner
`
`
`
`14
`
`

`
`IPR2016-00377: Storer Declaration
`U.S. Patent No. 9,116,908, Claims 1-2, 4-6, 9, 11, 21-22, 24-25
`in order to “maximiz[e] the compression ratio for that input data stream.” Id. at
`
`Abstract. Chu further teaches that flexible and efficient data compression can be
`
`achieved by “alter[ing] the rate of [data] compression.” Id. at Abstract. Chu
`
`teaches that the speed of compression can be adjusted by applying different
`
`compression techniques—for example by “switching” from one Lempel-Ziv
`
`method (e.g., LZ1 type method) to a different Lempel-Ziv method (e.g., LZ2 type
`
`method). Id. at Figure 6.
`
`V. OVERVIEW OF THE ’908 PATENT
`A. Brief Description
`34. The ’908 patent, titled “Systems and Methods for Accelerated Data
`
`Storage and Retrieval,” was filed on June 12, 2014. I understand that the ’908
`
`patent 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. 1006).
`
`35. The ’908 patent is directed to systems and methods for providing
`
`“accelerated” data storage and retrieval (’908 Patent at Abstract; Ex. 1001) 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, 11:31-36.
`
`
`
`15
`
`

`
`IPR2016-00377: Storer Declaration
`U.S. Patent No. 9,116,908, Claims 1-2, 4-6, 9, 11, 21-22, 24-25
`36. Figure 8 illustrates a detailed block diagram of a system for
`
`accelerated data storage according to the ’908 patent’s preferred embodiment:
`
`
`
`37. 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 11:49-58. One
`
`ordinary skill in the art would understand that a buffer, such as the “input data
`
`buffer” (15), is typically random access memory (RAM). The ’908 patent states
`
`that the “the input buffer 15 and counter 20 are not required elements of the present
`
`invention.” Id. at 11:49-12:10.
`
`
`
`16
`
`

`
`IPR2016-00377: Storer Declaration
`U.S. Patent No. 9,116,908, Claims 1-2, 4-6, 9, 11, 21-22, 24-25
`38. The ’908 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
`
`“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 11:52-56. The
`
`“data block counter” “counts” or “otherwise enumerates the size” of the data
`
`blocks in “any convenient units including bits, bytes, words, double words.” Id. at
`
`11:56-68.
`
`39. Data compression is performed by the “encoder module” (25). Id. at
`
`11:66. 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
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`number of the lossless compression techniques “currently well known within the
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`art” such as “run length, Huffman, Lempel-Ziv Dictionary Compression,
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`arithmetic coding, data compaction, and data null suppression.” Id. at 11:66-12:5;
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`see also id. at 12:67-13:5. The ’908 patent discloses that the compression
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`techniques may be selected based upon their “ability to effectively encode different
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`types of input data” (id. at 12:5-7), that more than one encoder may use the same
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`compression technique (id. at 12:67-13:5), and the compression process may be
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`performed in parallel or sequentially (id. at 12:21-23). In other words, using the
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`compression process described in the ’908 patent, either the same or different data
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`blocks may be compressed by different encoders simultaneously (in parallel), or
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`17
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`IPR2016-00377: Storer Declaration
`U.S. Patent No. 9,116,908, Claims 1-2, 4-6, 9, 11, 21-22, 24-25
`the same or different data blocks may be compressed by different encoders
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`sequentially, one block at a time.
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`40. After a data block is compressed by the “encoder module,” it may be
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`buffered and its newly compressed size may be measured or “counted” by the
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`“buffer/counter module” (30). Id. at 12:40-42. Next, the “compression ratio
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`module” (35) determines the “compression ratio” obtained for each of the encoders
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`by calculating the ratio of the size of the uncompressed data block to the size of the
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`compressed block. Id. at 12:46-51. If, for example, a single data block is
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`compressed by several different encoders E1 . . . En, each using a different
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`compression technique, the “compression ratio module” may also compare each
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`calculated ratio with an “a priori-specified compression ratio threshold limit” to
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`determine if at least one of the compressed blocks were compressed at an equal or
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`greater ratio. See id. at 12:51-56. If at least one of the compressed blocks was
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`compressed at an equal or greater ratio, then the block compressed with the highest
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`ratio is transmitted/stored. Id. at 13:5-8. If none of the compressed blocks were
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`compressed at an equal or greater ratio, then the uncompressed block is
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`transmitted/stored. Id. at 13:8-12.
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`41. Before the uncompressed or compressed block is transmitted/stored,
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`the “description module” or “compression type description” module (38)
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`“appends” a descriptor to the block indicating, for a compressed block, the
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`18
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`IPR2016-00377: Storer Declaration
`U.S. Patent No. 9,116,908, Claims 1-2, 4-6, 9, 11, 21-22, 24-25
`compression technique that was used, or else a “null” descriptor indicating that the
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`block was not compressed. Id. at 12:59-13:18. The block, with its appended
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`descriptor, is then transmitted/stored, and the descriptor is used for “subsequent
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`data processing, storage, or transmittal.” Id.
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`42. The ’908 patent describes that “accelerated” data storage and retrieval
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`is achieved “by utilizing lossless data compression and decompression.” Id. at
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`2:58-60. For example, data storage can be “accelerated” by compressing an input
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`data stream at a compression ratio (e.g., 3:1) that is at least equal to the ratio of the
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`input data transmission rate (e.g., 60 megabytes per second) to the data storage rate
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`(e.g., 20 megabytes per second) “so as to provide continuous storage of the input
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`data stream at the input data transmission rate.” Id. at 3:13-18, 5:56-6:3. By
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`compressing the data at this compression ratio, 60 megabytes worth of compressed
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`data can be stored per second, even though the target storage device is capable of
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`storing only 20 megabytes per second, thus “accelerating” the storage of data.
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`B.
`43.
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`Summary of the Prosecution History
`
`I understand that the ’908 patent has not undergone any reexamination
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`nor inter partes review. I understand that sibling patent U.S. Patent No. 7,415,530
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`(“the ’530 patent”; Ex. 1020), however, underwent one inter partes reexamination
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`(No. 95/001,927 (“the ’927 reexamination”)), which involved claims that contain a
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`similar limitation to the challenged claims of the ’908 patent: “said compression
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`19
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`IPR2016-00377: Storer Declaration
`U.S. Patent No. 9,116,908, Claims 1-2, 4-6, 9, 11, 21-22, 24-25
`and storage occurs faster than said data stream is able to be stored on said memory
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`device in said received form.” See, e.g., ’530 Patent at claims 1 and 24; Ex. 1020.
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`The analogous limitation in the challenged claims of the ’908 patent recites: “the
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`compression and storage occurs faster than the first and second data blocks are able
`
`to be stored on the memory device in uncompressed form.” See, e.g., ’908 Patent
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`at claims 1, 21, and 25; Ex. 1001.
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`Reexamination of the ’530 Patent
`
`1.
`I understand that during reexamination of the ’530 patent, independent
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`44.
`
`claims 1 and 24 of the ’530 patent were found patentable by the examiner. ’927
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`Reexamination, 5/31/13 Right of Appeal Notice at 6-14; Ex. 1005. I have been
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`informed that the examiner found that the primary references relied upon by the
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`third party requester, U.S. Patent Nos. 4,956,808 (“Aakre”, Ex. 1011), 4,593,324
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`(“Ohkubo” , Ex. 1009), and 5,150,430 (“Chu ’430”, Ex. 1008), did not disclose the
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`following limitation: “said compression and storage occurs faster than said data
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`stream is able to be stored on said memory device in said received form.” Id. I
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`have been informed that while the examiner found that references before him did
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`disclose “fast” compression and storage, he concluded that none specified that
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`those systems compressed and stored faster than storage of the uncompressed
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`stream could otherwise occur. See id. at 6 (citing Aakre (Ex. 1011) at Abstract,
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`1:54-59, 1:62-2:4, 2:10-13, 2:17-21, 2:43-47, 3:30-50), 7 (citing Okhubo (Ex.
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`
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`20
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`

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`IPR2016-00377: Storer Declaration
`U.S. Patent No. 9,116,908, Claims 1-2, 4-6, 9, 11, 21-22, 24-25
`1009) at Abstract, 1:54-67, 2:62-63, 2:67-3:8, 3:29-31, 4:10-14, 4:22-29), 8 (citing
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`Chu ’430 (Ex. 1008) at 3:65-68, 4:10-12, 4:16-20, 4:24-38, 6:4-28, 17:3-6, and
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`Figure 2).
`
`VI. CLAIM CONSTRUCTION
`45.
`It is my understanding that a claim in inter partes review is given the
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`“broadest reasonable construction in light of the specification,” as mentioned in
`
`Section III.A above.
`
`A. The term “the compression and storage occurs faster than the
`first and second data blocks are able to be stored on the memory
`device in uncompressed form” (claims 1, 21, 25)
`
`46.
`
`Independent claims 1, 21, and 25 of the ’908 patent recite the term,
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`“the compression and storage occurs faster than the first and second data blocks are
`
`able to be stored on the memory device in uncompressed form.” The proposed
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`construction is wherein the time to compress and store the first and second data
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`blocks is less than the time to store the first and second data blocks without
`
`compressing them.
`
`47. As explained in Section V.A above, the ’908 patent is generally
`
`directed to “accelerated data storage and retrieval” (’908 Patent at Abstract; Ex.
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`1001). The ’908 patent teaches that storage “acceleration” can be achieved by
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`receiving a data stream at an input data transmission rate (e.g., 80 megabytes per
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`second) that is greater than the data storage rate of a target storage device (e.g., 20
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`
`
`21
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`

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`IPR2016-00377: Storer Declaration
`U.S. Patent No. 9,116,908, Claims 1-2, 4-6, 9, 11, 21-22, 24-25
`megabytes per second) and compressing the data stream using a compression ratio
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`(e.g., 4:1) that provides a compression rate (e.g., 40 megabytes per second) that is
`
`greater than the data storage rate.