UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`DELL INC.; RIVERBED TECHNOLOGY, INC.; SAP AMERICA, INC.;
`SYBASE, INC.; HEWLETT-PACKARD ENTERPRISE CO.; HP ENTERPRISE
`SERVICES, LLC; TERADATA OPERATIONS, INC.; ECHOSTAR
`CORPORATION; AND HUGHES NETWORK SYSTEMS, LLC
`Petitioner
`
`v.
`
`REALTIME DATA LLC d/b/a IXO
`Patent Owner
`
`
`
`Case: IPR2016-01002
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 9,116,908
`
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313–1450
`Submitted Electronically via the Patent Review Processing System
`
`

`

`C.
`
`E.
`
`A.
`B.
`C.
`D.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ................................................................................. 1
`MANDATORY NOTICES – 37 C.F.R. § 42.8 .................................... 3
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ............................ 3
`Related Matters Under 37 C.F.R. § 42.8(b)(2) ..................................... 3
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) .................. 4
`Service Information Under 37 C.F.R. § 42.8(b)(4) ............................... 4
`PAYMENT OF FEES – 37 C.F.R. § 42.103 ........................................ 4
`REQUIREMENTS FOR IPR – 37 C.F.R. § 42.104 ............................. 4
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ............................. 4
`B.
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested .............................................................................................. 5
`Claim Construction Under 37 C.F.R. §§ 42.100(b), 42.104(b)(3) ........ 6
`1.
`“retrieves the first compressed and the second data blocks from
`the memory device” .................................................................... 6
`D. How the Construed Claims are Unpatentable Under 37 C.F.R. §
`42.104(b)(4) ........................................................................................... 7
`Supporting Evidence Under 37 C.F.R. § 42.104(b)(5) ......................... 7
`the ’908 Patent ....................................................................................... 7
`A. Overview of The Written Description ................................................... 7
`B.
`Overview of the Challenged Claims ..................................................... 8
`Level of Ordinary Skill in the Art ......................................................... 8
`DETAILED EXPLANATION UNDER 37 C.F.R. § 42.104(b) ........... 9
`A. Ground 1: Claims 1, 9, 11, 21, 22, 24, and 25 Would Have Been
`Obvious Under § 103(a) Over Franaszek in View of Osterlund .......... 9
`1.
`Claim 1 Would Have Been Obvious ........................................... 9
`The Teachings of Franaszek and Osterlund .......................................... 9
`a.
`b. Motivation to Combine Franaszek and Osterlund and the Obviousness
`of the Combination of Claimed Features .....................................................25
`2.
`Claim 9 Would Have Been Obvious .........................................29
`3.
`Claim 11 Would Have Been Obvious .......................................31
`
`i
`
`I.
`II.
`
`III.
`IV.
`
`V.
`
`VI.
`VII.
`
`
`
`

`

`4.
`Claim 21 Would Have Been Obvious .......................................32
`Claim 22 Would Have Been Obvious .......................................43
`5.
`Claim 24 Would Have Been Obvious .......................................44
`6.
`Claim 25 Would Have Been Obvious .......................................45
`7.
`Ground 2: Claims 2 and 4-6 Would Have Been Obvious Under §
`103(a) over Franaszek in View of Osterlund Further in View of Fall 50
`1.
`Claim 2 Would Have Been Obvious .........................................50
`2.
`Claim 4 Would Have Been Obvious .........................................54
`3.
`Claim 5 Would Have Been Obvious .........................................58
`4.
`Claim 6 Would Have Been Obvious .........................................59
`CONCLUSION ...................................................................................61
`
`B.
`
`VIII.
`
`
`
`ii
`
`

`

`LIST OF ABBREVIATIONS
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Meaning
`Abstract
`
`Application
`
`March 11, 1999
`
`Patent
`
`U.S. Patent No. 9,116,908
`
`Abbreviation
`
`Abst.
`
`App.
`
`effective filing date
`
`Pat.
`
`’908 patent
`
`
`
`
`
`i
`
`

`

`PETITIONER’S EXHIBIT LIST
`
`EX. NO.
`
`BRIEF DESCRIPTION
`
`1001
`
`1002
`1003
`
`1004
`
`1005
`
`1006
`1007
`
`1008
`
`1009
`
`1010
`
`U.S. Patent No. 9,116,908
`
`Declaration of Dr. Charles Creusere
`Curriculum Vitae of Dr. Charles Creusere
`U.S. Patent No. 5,870,036 to Franaszek et al.
`(“Franaszek”)
`U.S. Patent No. 5,247,646 to Osterlund et al.
`(“Osterlund”)
`U.S. Patent No. 5,991,515 to Fall et al. (“Fall”)
`Mark Nelson, The Data Compression Book (1992)
`STAC 9704 Data Compression Coprocessor Data Sheet,
`Rev. 2.00 (9/91)
`Claims as Allowed from File History
`Tarek M. Sobh, et al., A Comparison of Compressed and
`Uncompressed Transmission Modes, Dept. of Computer
`and Information Sci., School of Eng’g and Applied Sci.,
`Univ. of Penn. (May 1991) (“Sobh”)
`
`
`
`
`
`ii
`
`

`

`Dell Inc.; Riverbed Technology, Inc.; SAP America, Inc.; Sybase, Inc.;
`
`Hewlett-Packard Enterprise Co.; HP Enterprise Services, LLC; Teradata
`
`Operations, Inc.; EchoStar Corporation; and Hughes Network Systems, LLC
`
`(collectively “Petitioner”) petitions for Inter Partes Review under 35 U.S.C. §§
`
`311-319 and 37 C.F.R., Part 42 of claims 1, 2, 4-6, 9, 11, 21, 22, 24, and 25 of U.S.
`
`Patent No. 9,116,908 (“the ’908 patent”). As shown herein, Petitioner is
`
`reasonably likely to prevail in proving those claims are unpatentable. Accordingly,
`
`Petitioner requests that the Board institute trial and cancel all challenged claims.
`
`I.
`
`INTRODUCTION
`
`The ’908 patent relates generally to data compression and decompression
`
`techniques used in data storage systems. Ex. 1001 at 1:15-18, 2:58-60, 4:42-61.
`
`Such systems may speed up the rate at which data can be stored. Id. Independent
`
`claims 1, 21, and 25 of the ’908 patent relate to a “data accelerator,” “accelerated
`
`data storage of data” or “accelerated storage of data” where 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.” Id. at 18:50-62; 19:60-20:5; 20:22-35.
`
`As shown herein, by March 11, 1999—the earliest possible effective filing date of
`
`the ’908 patent—data compression systems and methods that achieved fast
`
`compression and data storage using multiple compression techniques were known
`
`to those of ordinary skill in the art. For example, Osterlund (Ex. 1005) describes
`
`
`
`1
`
`

`

`that storing data “can be completed faster because the compression operation has
`
`reduced the amount of data which must be stored.” Id. at 5:27-29; see also id. at
`
`5:42-46 (“[T]he device allows … [for] overall faster rates of data storage and
`
`retrieval.”). The challenged claims recite only what was old and obvious and do
`
`not yield anything more than predictable results.
`
`Indeed, data compression was a well-established field by the 1999 effective
`
`filing date. Years before 1999, problems associated with data compression
`
`systems had been diagnosed and various solutions and optimizations had been
`
`proposed and implemented. In fact, data compression can find its beginning with
`
`Claude Shannon’s work on information theory at Bell Labs in the 1940s. See Ex.
`
`1007 at 15-16, 29; Ex. 1002, ¶ 30. In the decades that followed, various data
`
`compression algorithms would emerge such as “Huffman coding” (1952) and
`
`“Lempel-Ziv” compression (1977-78). See Ex. 1004 at 2:22-30, Ex. 1007 at 18, 23.
`
`Compressing data in a storage application may effectively increase the
`
`storage capacity of a memory device, as described by both Franaszek and Nelson.
`
`See Ex. 1004 at 4:14-17 (explaining how compression can “increase the number of
`
`data blocks that can be stored in [] memory”); Ex. 1007 at 223 (explaining that
`
`data compression “reduces the use of magnetic tape”). Compressing data leads to
`
`fewer bits needing to be transmitted to storage stored, and thus may also speed up
`
`storage and retrieval of data, as taught by Osterlund and Nelson. See Ex. 1005 at
`
`
`
`2
`
`

`

`Abst., 1:16-20, 5:20-29; Ex. 1007 at 223 (“[T]he effective transfer rate to and from
`
`the tape is increased,” and software compression is “in a sense ‘free.’”).
`
`As we show below, the ’908 patent claims are, at best, the mere combination
`
`of known solutions to address known problems and that achieve only predictable
`
`results. Thus, the challenged claims are unpatentable and should be cancelled.
`
`II. MANDATORY NOTICES – 37 C.F.R. § 42.8
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Dell Inc.; Riverbed Technology, Inc.; Riverbed Holdings, Inc.; Riverbed
`
`Parent, Inc.; SAP America, Inc.; Sybase, Inc.; Hewlett-Packard Enterprise Co.; HP
`
`Enterprise Services, LLC; Teradata Operations, Inc.; Teradata Corporation;
`
`EchoStar Corporation; and Hughes Network Systems, LLC. Hughes Network
`
`Systems, LLC, a real-party-in-interest, is the subsidiary of Hughes
`
`Communications, Inc., which is a subsidiary of Hughes Satellite Systems Corp.,
`
`which is a subsidiary of EchoStar Corporation, which is also a real-party-in-
`
`interest.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`Patent Owner is asserting the ’908 patent in the United States District Court
`
`for the Eastern District of Texas in the following civil actions: 6:15-cv-00463,
`
`6:15-cv-00464, 6:15-cv-00465, 6:15-cv-00466, 6:15-cv-00467, 6:15-cv-00468, and
`
`6:15-cv-00469, as well as in the Northern District of California in civil action:
`
`5:16-cv-01836-PSG. The ’908 patent is also the subject of the following pending
`3
`
`
`
`

`

`Petition for Inter Partes Review by Oracle America, Inc.: IPR2016-00377.
`
`Petitioner has filed petitions against U.S. Pat. No. 7,415,530 (“the ’530 patent”)
`
`which have been assigned trial numbers IPR2016-00878 and IPR2016-00972. The
`
`’530 Patent is also the subject of IPR2016-00375 and IPR2016-00376.
`
`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Lead Counsel: Andrew R. Sommer (Reg. #53,932). Backup Counsel:
`
`Thomas M. Dunham (Reg. #53,932); Corrine S. Davis (pro hac vice to be filed);
`
`Jamie R. Lynn (Reg. # 63,666); Adam R. Shartzer (Reg. #57,264); John D.
`
`Vandenberg (Reg. #31,312); Garth A. Winn (Reg. #33,220); Kyle Howard (Reg.
`
`#67,568); Greg Webb (Reg. #59,859); David M. O’Dell (Reg. #42,044).
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`D.
`Petitioners consent to service by email on the following email addresses:
`
`IPR2016-01002@winston.com; jamie.lynn@bakerbotts.com; shartzer@fr.com;
`
`john.vandenberg@klarquist.com; garth.winn@klarquist.com;
`
`kyle.howard.ipr@haynesboone.com; greg.webb.ipr@haynesboone.com;
`
`David.odell.ipr@haynesboone.com.
`
`III. PAYMENT OF FEES – 37 C.F.R. § 42.103
`The required fee is being paid through PRPS.
`
`IV. REQUIREMENTS FOR IPR – 37 C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ’908 patent is available for IPR. Petitioner is not
`
`
`
`4
`
`

`

`barred or estopped from requesting this IPR.
`
`B.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`
`Petitioner requests cancellation of claims 1, 2, 4-6, 9, 11, 21, 22, 24, and 25
`
`of the ’908 patent in view of the following prior art references: (1) U.S. Pat. No.
`
`5,870,036 to Franaszek et al. (“Franaszek”) (Ex. 1004); (2) U.S. Pat. No. 5,247,646
`
`to Osterlund et al. (“Osterlund”) (Ex. 1005); and (3) U.S. Pat. No. 5,991,515 to
`
`Fall et al. (“Fall”) (Ex. 1006).
`
`Each of these references is prior art under 35 U.S.C. § 102 (pre-AIA).
`
`Franaszek (Ex. 1004) was filed as an application in the United States on February
`
`24, 1995 and issued on February 9, 1999. Franaszek is prior art under 35 U.S.C.
`
`§§ 102 (a), (e). Osterlund (Ex. 1005) was filed as an application in the United
`
`States on July 22, 1991 and issued on September 21, 1993, and thus is prior art
`
`under 35 U.S.C. § 102(b). Fall (Ex. 1006) was filed as an application in the United
`
`States on July 15, 1997 and issued on November 23, 1999 and is thus prior art
`
`under 35 U.S.C. § 102(e).
`
`Petitioner presents the following grounds for trial:1
`
`
`1 Because this petition presents different prior art and different evidence to show
`
`that the challenged claims would have been obvious than the other IPR
`
`
`
`5
`
`

`

`• Ground 1: Claims 1, 9, 11, 21, 22, 24, and 25 would have been obvious
`
`under § 103(a) over Franaszek in view of Osterlund; and
`
`• Ground 2: Claims 2 and 4-6 would have been obvious under § 103(a)
`
`over Franaszek in view of Osterlund further in view of Fall.
`
`C. Claim Construction Under 37 C.F.R. §§ 42.100(b), 42.104(b)(3)
`Pursuant to 37 C.F.R. § 41.100(b), a claim of an unexpired patent is given its
`
`broadest reasonable interpretation in light of the specification. See In re Cuozzo
`
`Speed Technologies, LLC, 793 F.3d 1297 (Fed. Cir. 2015). For the purposes of
`
`this proceeding all terms have their broadest reasonable interpretation read in light
`
`of the ’908 patent’s specification, as would have been understood by a person of
`
`ordinary skill in the art. Unless otherwise addressed below, no express
`
`construction of any term is believed to be needed to resolve the challenges herein.
`
`1.
`
`“retrieves the first compressed and the second data blocks from
`the memory device”
`
`Applying the broadest reasonable interpretation, the phrase “retrieves the
`
`first compressed and the second data blocks from the memory device,” Ex. 1001 at
`
`19:10-12, as found in claim 5, should be interpreted to mean “retrieves the first and
`
`second compressed data blocks from the memory device.” First, the language of
`
`
`proceedings against the ’908 patent, the arguments raised here are substantially
`
`different from those presented by Oracle and 35 U.S.C. § 325(d) is inapplicable.
`
`
`
`6
`
`

`

`claim 1 reveals that the “compressed first and second data blocks are stored on the
`
`memory device.” Id. at 18:58-59. Additionally, the blocks of claim 5 are retrieved
`
`“from the memory device,” id. at 19:11-12, which stores the first and second
`
`compressed data blocks, id. at 18:58-59. The specification further supports this
`
`construction. See, e.g., Ex. 1001 at 8:44-48.
`
`D. How the Construed Claims are Unpatentable Under 37 C.F.R.
`§ 42.104(b)(4)
`See infra, § VII.
`
`Supporting Evidence Under 37 C.F.R. § 42.104(b)(5)
`
`E.
`Supporting evidence is identified in Petitioner’s Exhibit List, in the
`
`Declaration of Dr. Charles Creusere (Ex. 1002), and is cited in this Petition.
`
`V. THE ’908 PATENT
`A. Overview of The Written Description
`The ’908 patent describes the well-known concepts of compression, storage,
`
`and decompression of data. Data compression has been used to decrease the time
`
`it takes to transmit and store data. See Ex. 1001, Abst. The ’908 patent explains
`
`that using data-acceleration techniques:
`
`It is well known within the current art that data
`compression provides several unique benefits. First, data
`compression can reduce the time to transmit data by more
`efficiently utilizing low bandwidth data links. Second,
`data compression economizes on data storage and allows
`
`
`
`7
`
`

`

`more information to be stored for a fixed memory size by
`representing information more efficiently.
`
`Id. at 2:13-19.
`
`The ’908 patent describes a “data storage accelerator” that includes “one or a
`
`plurality of high speed data compression encoders.” Id. at Abst. Compressed data
`
`is then stored in memory. Id. The challenged claims of the ’908 patent require
`
`that data compression and storage occur faster than storage alone would occur if
`
`the data were left in uncompressed form. See id. at 18:58-62, 20:1-5, 20:32-36.
`
`B. Overview of the Challenged Claims
`Claims 1, 21, and 25 are the independent claims challenged in this Petition.
`
`Claims 2, 5, 6, 9, and 11 depend directly from claim 1; claim 4 depends directly
`
`from claim 2, and claims 22 and 24 depend directly from claim 21.
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`As of the earliest possible effective filing date of the ’908 patent, a person
`
`having ordinary skill in the art relevant to the ’908 patent would have had an
`
`undergraduate degree in computer science, computer engineering, electrical and
`
`computer engineering, electrical engineering, or electronics and two years of
`
`experience working with data compression or a graduate degree focusing in the
`
`field of data compression. Individuals with additional education or additional
`
`industrial experience could still be of ordinary skill in the art if that additional
`
`aspect compensates for a deficit in one of the other aspects of the requirements
`8
`
`
`
`

`

`stated above. See Ex. 1002, ¶ 26. In this Petition, reference to a person having
`
`ordinary skill in the art refers to a person with these qualifications.
`
`VII. DETAILED EXPLANATION UNDER 37 C.F.R. § 42.104(B)
`A. Ground 1: Claims 1, 9, 11, 21, 22, 24, and 25 Would Have Been
`Obvious Under § 103(a) Over Franaszek in View of Osterlund
`Claim 1 Would Have Been Obvious
`1.
`
`a.
`
`The Teachings of Franaszek and Osterlund
`
`Franaszek expressly teaches almost all aspects recited by claim 1. However,
`
`Franaszek does not expressly teach that the compression and storage of the data
`
`occurs faster than storing the data in uncompressed form. To eliminate any doubt
`
`about the obviousness of the claimed subject matter, a person of ordinary skill in
`
`the art would have looked to Osterlund for teachings relevant to the claimed “data
`
`accelerator,” Ex. 1001 at 18:52, and the requirement that the data accelerator speed
`
`up data compression and storage. Id. at 18:59-62 (“compression and storage
`
`occurs faster than the first and second data blocks are able to be stored on the
`
`memory device in uncompressed form”).
`
`Specifically, Osterlund teaches a system that can compress and store data
`
`faster than storing data without compressing it. Osterlund effects this accelerated
`
`data storage by inserting its compressor “directly into the data stream immediately
`
`after it exits from the host interface unit after being received from the host.” Ex.
`
`1005 at 5:38-42. Moreover, Osterlund teaches the use of “wide multibit data buses
`
`
`
`9
`
`

`

`for fast data transfer” and the use of direct memory access techniques to transfer
`
`data into and out of the buffer memory within the compressor. Ex. 1005 at 4:21-
`
`26. Further, Osterlund enumerates several advantages to this technique. First, it
`
`reduces the amount of data to be stored, id. at 5:20-23. Second, it reduces the
`
`amount of time required to store the data, id. at 5:23-25. Finally, Osterlund’s
`
`compression scheme results in a faster overall data-storage rate, id. at 5:42-48.
`
`Applying the teachings of Osterlund to Franaszek to ensure that Franaszek’s
`
`data compressor compressed and stored data faster than storing the data in
`
`uncompressed form required no more than the application of Osterlund’s known
`
`solution to solve known problems (the need or desire to speed up data storage) and
`
`obtain only predictable results. See Ex. 1002, ¶¶ 127, 131, 133; see also KSR Int’l
`
`Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“[W]hen a patent claims a structure
`
`already known in the prior art that is altered by the mere substitution of one
`
`element for another known in the field, the combination must do more than yield a
`
`predictable result.”). Thus, claim 1 recites nothing more than an obvious variation
`
`of Franaszek’s data compression and decompression scheme and is unpatentable as
`
`obvious.
`
`Claim 1
`
`1P A system
`comprising:
`
`Franaszek and Osterlund
`“A system … for compressing and decompressing data
`using a plurality of data compression mechanisms.” Ex.
`1004 at Abst.; see also id. at 1:7-9, 4:4-12, 3:29-31, 3:37-
`39, 8:42-53, 9:16-10:8, Figs. 1-3.
`
`
`
`10
`
`

`

`Claim 1
`
`1(a) a memory
`device; and
`
`1(b) a data
`accelerator
`configured to
`compress:
`
`Franaszek and Osterlund
`“Within the same information processing system as the
`CPU 5 or within another ‘remote’ system, there is a second
`memory 20 ….” Ex. 1004 at 4:4-13; see also id. at Fig. 1,
`6:59-62.
`“[T]here is a compressor 30 that compresses data blocks as
`they are transferred to the second memory, and a de-
`compressor 40 that de-compresses data blocks as they are
`transferred to the first memory.” Ex. 1004 at 4:14-20;
`see also id. at 4:5-13, 4:25-35, 4:51-5:17, 6:51-67, 8:42-54,
`9:16-10:8.
`
`
`
`Ex. 1004 Figs. 1, 3, 5.
`
`See also Ex. 1005 at Abst. (“[A] data compression device
`interposed between a host computer and an optical disk
`controller to permit data storage and retrieval operations on
`an optical disk to occur at a faster rate than would
`otherwise be possible.”); see also id. at 4:62-65, 5:20-29,
`5:49-54, 5:30-48.
`
`
`
`11
`
`

`

`
`
`Claim 1
`
`Franaszek and Osterlund
`
`1(c)
`
`(i) a first data
`block with a
`first
`compression
`technique to
`provide a first
`compressed
`data block;
`and
`
`
`
`
`Ex. 1005 at Fig. 1.
`“A system and method for compressing and
`decompressing data using a plurality of data compression
`mechanisms. Representative samples of each block of data
`are tested to select an appropriate one of the data
`compression mechanisms to apply to the block. The block
`is then compressed using the selected one of the
`mechanisms and the compressed block is provided with an
`identifier of the selected mechanism.” Ex. 1004 at Abst.;
`id. at 5:34 (“[T]he block is compressed using the best
`method . . .”); id. at 4:14-20(“[D]ata blocks 25 may be
`stored in a compressed format in the second memory . . .”);
`see also id. at 3:29-36, 4:4-7, 4:14-20, 4:25-35, 5:18-39,
`5:8-6:50, 6:59-67, Figs. 1-4C, Fig. 6.
`
`
`Ex. 1004 at Figs. 1 & 2.
`
`
`
`1(d)
`
`(ii) a second
`data block
`with a second
`compression
`technique,
`different from
`the first
`compression
`technique, to
`
`“[T] here is provided a system and method for
`compressing data using a plurality of data compression
`mechanisms. Representative samples of each block of data
`are tested to select an appropriate one of the data
`compression mechanisms to apply to the block. The block
`is then compressed using the selected one of the
`mechanisms and the compressed block is provided with an
`identifier of the selected mechanism.” Ex. 1004 at 3:29-
`36; see also id. at Abst., 3:9-10, 4:4-7, 5:34, 5:49-54, 7:16-
`
`
`
`12
`
`

`

`Franaszek and Osterlund
`19, 4:14-20, 4:25-35, 5:8-6:50, 6:59-67, Figs. 1-4C, Fig. 6.
`
`
`
`Claim 1
`provide a
`second
`compressed
`data block;
`
`Ex. 1004 at Fig. 2.
`“[D]ata blocks 25 may be stored in a compressed format in
`the second memory . . .” Ex. 1004 at 4:14-19; see also id. at
`5:33-38, 6:59-67, Figs. 1, 2.
`
`
`
`1(e) wherein the
`compressed
`first and
`second data
`blocks are
`stored on the
`memory
`device, and
`
`Ex. 1004 at Fig. 1.
`
`
`
`1(f)
`
`the
`compression
`and storage
`occurs faster
`than the first
`and second
`data blocks
`are able to be
`stored on the
`memory
`
`“[T]he total amount of data to be indexed and stored on the
`disk is reduced. As a result, substantially less time is
`required for the optical disk system 24 to store such data on
`an optical disk. In particular, when data is compressed and
`then written to the optical disk system 24 by the controller
`10, the write task can be completed faster because the
`compression operation has reduced the amount of data
`which must be stored …. Since the compression module is
`capable of compressing and decompressing data with
`negligible delay, the device allows the optical disk storage
`
`
`
`13
`
`

`

`
`
`Claim 1
`device in
`uncompressed
`form.
`
`Franaszek and Osterlund
`device to have an overall faster rates of data storage and
`retrieval. This result is achieved because optical disk
`system 24 no longer slows down the system by storing
`redundant information.” Ex. 1005 at 5:20-48, 4:1-5, 4:21-
`28; Ex. 1004 at 4:14-20 (“To increase the number of data
`blocks that can be stored in the second memory 20 given a
`fixed second memory size, data blocks 25 may be stored in
`a compressed format in the second memory. For this
`purpose there is a compressor 30 that compresses data
`blocks as they are transferred to the second memory, and a
`de-compressor 40 that de-compresses data blocks as they
`are transferred to the first memory.”).
`
`Claim 1, preamble. If the preamble limits claim 1, Franaszek discloses “a
`
`system.” See Ex. 1004 at Abst. (“A system … for compressing and decompressing
`
`data …”); see also id. at 1:7-9, Figs. 1-3; Ex. 1002, ¶ 97.
`
`Claim 1, limitation (a). Franaszek discloses “a memory device,” Ex. 1001
`
`at 18:51, which is what Franaszek calls a “second memory 20.” Ex. 1004 at 4:7-9
`
`& Fig. 1. In Fig. 1, the “second memory 20” is the claimed “memory device”
`
`(highlighted below). Id. at 4:14-17; see also Ex. 1002, ¶ 98.
`
`
`
`
`
`14
`
`

`

`Claim 1, limitation (b). Franaszek discloses “a data accelerator configured
`
`to compress.” Ex. 1001 at 18:52. The ’908 patent uses the phrases “data storage
`
`accelerator” and “data retrieval accelerator” and says that (1) an accelerator
`
`processes data (2) an accelerator uses “data compression and decompression” to
`
`process the data, and (3) although called an “accelerator,” it does not need to speed
`
`up the data rate compared to that of the received data. See e.g., Ex. 1001 at 2:58-
`
`60, 5:35-37, 5:52-53, 5:56-59, 6:4-7, 6:24-26. Franaszek describes a data
`
`accelerator consistent with the description in the ’908 patent. See Ex. 1002, ¶¶
`
`100-01. For example, Franaszek’s Fig. 1 shows a data compressor and a data
`
`decompressor. Ex. 1004, Fig. 1 (reproduced below with highlighting and
`
`annotations added).
`
`Franaszek’s data compressor processes the data, shown as the uncompressed
`
`data blocks 15 in the first memory 10 of Figure 1 (for compression) and shown as
`
`the compressed data blocks 25 in the second memory 20 (for decompression). Id.;
`
`
`
`
`
`15
`
`

`

`see also id. at 4:34-35, 6:51-58, Fig. 5. Since Franaszek’s compressor compresses
`
`and decompresses data, id. at 4:17-20, 1:22-44, Fig. 1, a person of ordinary skill in
`
`the art would have understood that the compressor and decompressor described by
`
`Franaszek constitutes a “data accelerator.”2 See Ex. 1002, ¶ 103; see also Ex. 1007
`
`at 223 (describing benefits of data compression for data storage applications).
`
`Additionally, one of ordinary skill in the art would have understood that
`
`Franaszek’s compressor is “configured to compress” as claimed, Ex. 1001 at
`
`18:52, because the compressor compresses the data blocks as discussed above. See
`
`Ex. 1004 at 4:14-20; Ex. 1002, ¶ 104. This is further reflected by the differences in
`
`sizes of the data blocks shown in Franaszek’s Figures 1 and 2. See Ex. 1004, Figs.
`
`1 & 2.
`
`If the term “data accelerator” requires a structure that changes the rate at
`
`which input data could be stored in the memory, but see Ex. 1001 at 5:56-59, 6:4-
`
`7, it would have been obvious to modify Franaszek to increase the rate in which
`
`
`2Even if the “data accelerator” is found to constitute a purely functional term,
`
`requiring looking to the specification to find the corresponding function, Franaszek
`
`describes a “data accelerator.” See Ex. 1002, ¶ 100. Franaszek also describes a
`
`“data accelerator” with the additional requirements found in claim 1, limitations
`
`(c)-(f), as described below.
`
`
`
`16
`
`

`

`the data could be compressed and stored in memory based on the teachings of
`
`Osterlund. See Ex. 1002, ¶¶ 105-06. Osterlund teaches that
`
`Since the compression module is capable of compressing
`and decompressing data with negligible delay, the device
`allows the optical disk storage device to have an overall
`faster rate of data storage and retrieval.
`
`See Ex. 1005 at 5:42-46. This can be accomplished by placing a compressor in the
`
`bit stream between the host or source of uncompressed data and the storage
`
`medium, using wide data buses, and direct memory access techniques to manage
`
`data in the compressor’s buffer memory. Id. at 4:1-5, 4:21-26. Those of ordinary
`
`skill in the art would have made such a combination for the reasons set forth infra
`
`§ VII.A.1.b.
`
`As such, even if Franaszek’s compressor is not deemed to be a “data
`
`accelerator” as required by claim 1, such a data accelerator would have been
`
`obvious in view of the teachings of Osterlund.
`
`Claim 1, limitation (c). Franaszek discloses that the data accelerator is
`
`configured to compress “(i) a first data block with a first compression technique to
`
`provide a first compressed data block.” Ex. 1001 at 18:52-53. Franaszek describes
`
`a stream of data blocks (210). See Ex. 1004 at Fig. 2 (excerpted, annotated below),
`
`4:30-31.
`
`
`
`17
`
`

`

`
`
`Franaszek also teaches that the compressor compresses data blocks on a block-by-
`
`block basis: “there is a compressor 30 that compresses data blocks as they are
`
`transferred to the second memory ….” Ex. 1004 at 4:17-19, Ex. 1002, ¶ 109.
`
`Figure 2 shows that “data blocks” are converted into “compressed data blocks” by
`
`the “data compressor.” Ex. 1004 at Fig. 2. Thus, Franaszek teaches a data
`
`accelerator that is configured to compress “a first data block … to provide a first
`
`compressed data block.” Ex. 1001 at 18:52-54; Ex. 1002, ¶¶ 109-11.
`
`Franaszek also teaches that the compressor compresses the first data block
`
`“with a first compression technique to provide [the] first compressed data block.”
`
`Ex. 1001 at 18:52-54. Franaszek describes the use of multiple “data compression
`
`mechanisms.” See Ex. 1004 at 3:29-31. To choose the “best” compression
`
`technique, Franaszek’s compressor samples each received data block and applies
`
`data compression techniques to the sample to determine “an appropriate one of the
`
`data compression mechanisms to apply to the block.” See id. at 3:25-34, 5:19-39,
`
`6:22-50. As Franaszek explains “in block 340, the block is compressed using the
`
`best method (and if applicable dictionary) found in block 330, the method or
`
`
`
`18
`
`

`

`method, dictionary) pair is encoded in the CMD area 235 of the block, and the
`
`compressed data block 230 results [is] output.” Ex. 1004 at 5:34-38. Thus,
`
`Franaszek discloses a data accelerator configured to compress the first data block
`
`with “a first compression technique,” namely the “best” compression technique for
`
`that particular data block. Id. at 5:19-39; Ex. 1002, ¶¶ 112-13. This “best”
`
`compression technique is a first compression technique used on a “first” data
`
`block. See 3M Innovative Properties Co. v. Avery Dennison Corp., 350 F.3d 1365,
`
`1371 (Fed. Cir. 2003) (“The use of the terms ‘first’ and ‘second’ is a common
`
`patent-law convention to distinguish between repeated instances of an element or
`
`limitation” and does not “impose a serial or temporal limitation into” the claim.).
`
`Franaszek therefore discloses limitation (c) of claim 1.
`
`Claim 1, limitation (d). Franaszek discloses, or at least renders obvious, a
`
`data accelerator that is configured to compress “(ii) a second block with a second
`
`compression technique, different from the first compression technique, to provide a
`
`second compressed data block.” Ex. 1001 at 18:53-57. As described above,
`
`Franaszek teaches a stream of data blocks including a first and a second data block.
`
`See, e.g., Ex. 1004 at Fig. 2, 4:34-35 (“The data blocks 210 are input to the data
`
`compressor 220.”). Moreover, as we explained in connection with limitation 1(c),
`
`Franaszek discloses assessing each block input into the compressor on a block-by-
`
`block basis to identify the “best” compression technique to use to compress the
`
`
`
`19
`
`

`

`data block. See, e.g., Ex. 1004 at 3:25-34, 5:19-39, 6:22-50. Thus, Franaszek
`
`discloses that the second data block may be compressed using a second data
`
`compression technique by the data accelerator.
`
`Franaszek discloses that “said first and second compression techniques are
`
`different.” Ex. 1001 at 18:34-35. Even if Franaszek did not disclose this limitation
`
`expressly or inherently, it would have been obvious to employ first and second
`
`compression techniques t