`
`Katherine Vidal (SBN 194971 / vidal@fr.com)
`Betty H. Chen (SBN 290588 / bchen@fr.com)
`Matthew R. McCullough (SBN 301330 / mccullough@fr.com)
`FISH & RICHARDSON P.C.
`500 Arguello Street, Suite 500
`Redwood City, CA 94063
`Telephone: (650) 839-5070
`Facsimile: (650) 839-5071
`
` OF COUNSEL:
`Thomas M. Melsheimer (melsheimer@fr.com)
`Michael A. Bittner (bittner@fr.com)
`1717 Main Street, Suite 5000
`Dallas, TX 75201
`Telephone: (214) 747-5070
`Facsimile: (214) 747-2091
`
`John Brinkmann (brinkmann@fr.com)
`1221 McKinney Street, Suite 2800
`Houston, TX 77010
`Telephone: (713) 654-5300
`Facsimile: (713) 652-0109
`
`Attorneys for Defendant
`APPLE INC.
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`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`(SAN FRANCISCO DIVISION)
`
`REALTIME DATA, LLC D/B/A/ IXO,
`Case No. 4:16-cv-02595-JD
`
`
` Plaintiff,
`DEFENDANT APPLE INC.’S
`
`INVALIDITY CONTENTIONS
`v.
`
`
`APPLE INC.,
`
` Defendant(s).
`
`
`
`Pursuant to Rule 3-3 and 3-4 of the Local Patent Rules of the Northern District of California
`and the Court’s Scheduling Order (Dkt. No. 61), Defendant Apple Inc. (“Defendant” or “Apple”)
`provides Plaintiff Realtime Data LLC d/b/a IXO (“Plaintiff” or “Realtime”) with notice of its
`
`INVALIDITY CONTENTIONS
`Case No. 4:16-cv-02595-JD
`
`
`
` – PAGE 1
`
`1
`
`Apple v. Realtime
`Proceeding No. IPR2016-01738
`APPLE 1039
`
`

`

`
`
`Invalidity Contentions with respect to those claims asserted against it, collectively being claims 1-
`13, 15-16, 19-20, 22, 24-25, 27, and 29-30 of U.S. Patent No. 7,181,608 (“the ’608 patent”), claims
`1-6, 8-9, 11-13, and 15-16 of U.S. Patent No. 8,090,936 (“the ’936 patent”), and claims 1-6, 8-11,
`13-17, 19, 23-24, 27-29, 31-33, 35-36, 39-40, 43-45, 47-53, 59-60, 63-65, 67, 71-72, 75-77, 79-
`81, 83-84, 87-89, 91-93, 97-98, and 107-109 of U.S. Patent No. 8,880,862 (“the ’862 Patent”)
`(collectively and respectively, “the asserted claims” and “the Patents-in-Suit”) asserted by Plaintiff
`in its Disclosure of Asserted Claims and Infringement Contentions under Patent Rule 3-1.
`I.
`RESERVATIONS
`A.
`General Reservations
`Apple relies on and incorporate by reference, as if originally set forth herein, all invalidity
`positions, and all associated prior art and claim charts, asserted against Realtime in any
`reexamination proceeding, or by any present or former defendants in any of Realtime’s lawsuits,
`or by potential or actual licensees to the Patents-in-Suit. Specifically, Apple relies on and
`incorporates by reference, as if originally set forth herein, all invalidity positions asserted against
`Realtime in reexamination proceedings IPR2016-01365, IPR2016-01366, IPR2016-01737,
`IPR2016-01738, and IPR2016-01739. Moreover, Apple reserves the right, to the extent permitted
`by the Court and the applicable statutes and rules, to supplement these Contentions based on prior
`art currently known to Realtime, including prior art identified or provided to Realtime by any
`present or former defendant or any third parties.
`Consistent with Patent Rule 3-6, Apple reserves the right to amend these Invalidity
`Contentions. The information and documents that Apple produces are provisional and subject to
`further revision. Apple reserves the right to amend or supplement these disclosures and the
`subsequent document production should Realtime: 1) provide any information that it failed to
`provide in its Patent Rule 3-1 and 3-2 disclosures; 2) amend its Patent Rule 3-1 or 3-2 disclosures
`in any way; or 3) attempt to rely upon any information at trial, in a hearing, or during a deposition
`that it failed to provide in its Patent Rule 3-1 and 3-2 disclosures.
`
`INVALIDITY CONTENTIONS
`Case No. 4:16-cv-02595-JD
`
`
`
` – PAGE 2
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`Apple provides the information below, as well as the accompanying production of
`documents, for the sole purpose of complying with Patent Rules 3-3 and 3-4. The information
`provided shall not be deemed an admission regarding the scope of any claims or the proper
`construction of those claims or any terms contained therein. Nothing contained in these Invalidity
`Contentions should be understood or deemed to be an express or implied admission or contention
`with respect to the proper construction of any terms in the asserted claim, or with respect to the
`alleged infringement of that claim.
`B.
`Ongoing Discovery
`Furthermore, because only limited discovery has occurred and because Apple continues its
`search for and analysis of relevant prior art, Apple reserves the right to revise, amend, and/or
`supplement the information provided herein, including identifying, charting, and relying on
`additional references, should Apple’s further search and analysis yield additional information or
`references, consistent with the Patent Local Rules and the Federal Rules of Civil Procedure.
`Apple’s Invalidity Contentions are based upon information reasonably available to Apple
`as of the date of these contentions. Because discovery is ongoing Apple expressly reserves the
`right to clarify, alter, amend, modify, or supplement these Invalidity Contentions, to identify
`additional prior art, and to rely on additional information, tangible things, and testimony obtained
`during discovery, including discovery obtained from third parties.
`Discovery is in its infancy and is ongoing, and Apple’s prior art investigation and third-
`party discovery is therefore not yet complete. Apple reserves the right to present additional items
`of prior art under 35 U.S.C. §§ 102(a), (b), (e), and/or (g), and/or 103 located during the course of
`discovery or further investigation. For example, Apple may issue subpoenas to third parties
`believed to have knowledge, documentation, and/or corroborating evidence concerning some of
`the prior art listed herein and/or additional prior art. These third parties include without limitation
`the authors, inventors, or assignees of the references listed in these disclosures. In addition, Apple
`
`INVALIDITY CONTENTIONS
`Case No. 4:16-cv-02595-JD
`
`
`
` – PAGE 3
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`reserves the right to assert invalidity under 35 U.S.C. § 102(c), (d), or (f) to the extent that
`discovery or further investigation yield information forming the basis for such invalidity.
`Similarly, Apple has not had the opportunity to take any depositions of the patent applicants
`named on the face the Patents-in-Suit or other persons having relevant information. Apple reserves
`the right to revise, amend or supplement these contentions pursuant to Federal Rule of Civil
`Procedure 26(e) and the Orders of record in this matter to the extent appropriate in light of further
`investigation and discovery regarding the defenses, the review and analysis of expert witnesses, or
`supplemental contentions by Realtime.
`C.
`Claim Construction
`Apple reserves the right to revise their ultimate contentions concerning the invalidity of the
`asserted claims of the Patents-in-Suit, which may change depending upon any findings as to the
`priority date of those claims and/or positions that Realtime or expert witness(es) may take
`concerning infringement and/or invalidity issues. Apple does not waive the right to contest any
`claim constructions or to take positions during claim construction proceedings that have yet to
`occur that may be inconsistent with the invalidity contentions herein. Consequently, Apple also
`reserves the right to amend or supplement these Invalidity Contentions in the event that the claims
`are construed differently at some point in the future.
`Apple does not necessarily adopt Realtime’s positions on the scope or construction of the
`claims. In certain instances, Apple has applied the claims to the prior art in view of Realtime’s
`allegations, admissions, or positions for purposes of these contentions only. As such, Apple’s
`Invalidity Contentions are not adoptions or admissions by Apple as to the accuracy of Realtime’s
`allegations, admissions, or positions. Accordingly, these contentions are made in the alternative,
`are not necessarily intended to be consistent with each other, and should not be otherwise
`construed.
`Apple expressly reserves the right to take positions with respect to future claim
`construction or infringement issues that are inconsistent with, or even contradictory to, the claim
`
`INVALIDITY CONTENTIONS
`Case No. 4:16-cv-02595-JD
`
`
`
` – PAGE 4
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`construction or infringement positions expressed or implied in the Invalidity Contentions set forth
`herein.
`
`D.
`Realtime’s Infringement Contentions
`Realtime’s disclosures under Patent Rules 3-1 and 3-2 are deficient in numerous respects.
`For example, Realtime has failed to specifically identify where each element of each claim is found
`within each Accused Instrumentality as required by Patent Rule 3-1. Because such deficiencies
`may lead to further grounds for invalidity, Apple specifically reserves the right to modify, amend,
`or supplement their contentions as Realtime modifies, amends, or supplements its disclosures
`under Patent Rules 3-1, 3-2, and/or 3-6, and/or produces documents in discovery.
`Additionally, Realtime has presented no substantive contentions for indirect infringement,
`i.e., active inducement or contributory infringement. Realtime has not, for example, provided
`detailed contentions that identify how Apple allegedly induces direct infringement of the Patents-
`in-Suit by a third party, or how Apple allegedly contributes to the infringement of the Patents-in-
`Suit by a third party. Nor has Realtime provided detailed contentions regarding any alleged
`infringement by multiple parties pursuant to 35 U.S.C. § 271(a) (i.e., joint infringement). Nor has
`Realtime provided detailed contentions of any alleged infringement under the doctrine of
`equivalents. If Realtime is permitted to provide this and other information relating to alleged
`indirect infringement, joint infringement, or infringement under the doctrine of equivalents, Apple
`will amend and supplement these Invalidity Contentions as appropriate.
`E.
`The Intrinsic Record
`Apple further reserves the right to rely upon applicable industry standards and prior art
`cited in the file histories of the Patents-in-Suit and any related U.S. and foreign patent applications
`as invalidating references or to show the state of the art. Apple further reserves the right to rely
`on the patent applicants’ admissions concerning the scope of the prior art relevant to the asserted
`patents found in, inter alia: the patent prosecution history for the asserted patent and any related
`patents and/or patent applications or reexaminations; any deposition testimony of the named patent
`
`INVALIDITY CONTENTIONS
`Case No. 4:16-cv-02595-JD
`
`
`
` – PAGE 5
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`
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`applicants on the asserted patent; and the papers filed and any evidence submitted by Realtime in
`connection with this litigation.
`F.
`Rebuttal Evidence
`Prior art not included in these Invalidity Contentions, whether known or not known to
`Apple, may become relevant. In particular, Apple is currently unaware of the extent, if any, to
`which Realtime will contend that limitations of the asserted claims of the Patents-in-Suit are not
`disclosed in the prior art identified herein. To the extent that such an issue arises, Apple reserves
`the right to identify other references that would render obvious the allegedly missing limitation(s)
`or the disclosed device or method.
`G.
`Contextual Evidence
`Apple’s claim charts cite particular teachings and disclosures of the prior art as applied to
`the limitation of each of the asserted claims. However, persons having ordinary skill in the art
`generally may view an item of prior art in the context of his or her experience and training, other
`publications, literature, products, and understanding. As such, the cited portions are only
`examples, and Apple reserves the right to rely on uncited portions of the prior art references and
`on other publications and expert testimony as aids in understanding and interpreting the cited
`portions, as providing context thereto, and as additional evidence that the prior art discloses a claim
`limitation or the claimed subject matter as a whole. Apple further reserves the right to rely on
`uncited portions of the prior art references, other publications, and testimony, including expert
`testimony, to establish bases for combinations of certain cited references that render the asserted
`claims obvious. The references discussed in the claim charts may disclose the elements of the
`asserted claims explicitly and/or inherently, and/or they may be relied upon to show the state of
`the art in the relevant time frame. The suggested obviousness combinations are provided in the
`alternative to anticipation contentions and are not to be construed to suggest that any reference
`included in the combinations is not by itself anticipatory.
`
`INVALIDITY CONTENTIONS
`Case No. 4:16-cv-02595-JD
`
`
`
` – PAGE 6
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`H.
`Invalidity Under Section 102(f) Prior Art
`Apple reserves the right to assert that the asserted claims of the Patents-in-Suit are invalid
`under 35 U.S.C. § 102(f) in the event Apple obtains evidence that James J. Fallon, John Buck, Paul
`F. Pickel, and/or Stephen McEerlain, the inventors named on the asserted or related patents, did
`not themselves “invent” the subject matter claimed. Should Apple obtain such evidence, it will
`provide the name of the person(s) from whom and the circumstances under which the claimed
`subject matter or any part of it was derived.
`I.
`Priority And Effective Filing Date
`Apple contends that, for each Patent-in-Suit, Realtime will be unable to demonstrate that
`the asserted claims are entitled to claim a priority date or effective filing date earlier than the actual
`filing date of the application that issued as that patent. No ancestor application, including
`provisional application No. 60/180,114 filed on February 3, 2000, provides a disclosure sufficient
`under 35 U.S.C. § 112(1/a) to support such claim as required by section 119(e) or 120. See Section
`VIII below.
`J.
`No Patentable Weight
`Apple reserves the right to argue that various portions of the asserted claims, such as an
`intended use or result, non-functional descriptive material, and certain preamble language, are
`entitled to no patentable weight. Mapping of a portion of an asserted claim to a prior art reference
`does not represent that such portion of the claim is entitled to patentable weight when comparing
`the claimed subject matter to the prior art.
`II.
`IDENTIFICATION OF PRIOR ART
`At least the prior art listed below, individually or in combination, invalidates the asserted
`claims. See Patent Rule 3-3(a). Appendices A1-C38 provide detailed claim charts showing where
`each claim element may be found in the particular reference being charted.
`Apple identifies the following items of prior art that anticipate or render obvious the
`asserted claims. The identification of prior art below is not exclusive, and Apple’s production
`
`INVALIDITY CONTENTIONS
`Case No. 4:16-cv-02595-JD
`
`
`
` – PAGE 7
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`pursuant to Patent Rule 3-3 contains additional references that render the asserted claims invalid.
`Apple reserves the right to rely upon both the listed and unlisted references produced pursuant to
`Patent Rule 3-3, as well as other art that may become known and/or relevant during the course of
`this or related litigation.
`For those primary references for which detailed claim charts are provided in Appendices
`A1-C38, a reference to the particular Appendix Number is provided in Section IV below.
`References for which Appendix Numbers do not appear are additional prior art references that are
`either included as secondary references in charts contained in Appendices A1- C38, or are
`otherwise pertinent to the invalidity of the Patents-in-Suit, either alone or in combination with
`other references. At this time, Apple is not providing claim charts for each of these additional
`references, either because they are cited in conjunction with primary references for which charts
`have already been provided and are cited therein, and/or because these references have similar
`disclosure to the prior art references for which invalidity charts have been provided and/or may be
`used to show the state of the art.
`Apple also incorporates as if fully set forth herein the complete file histories for the ’608
`patent, the ’936 patent, and the ’862 patent, including any prior art or supporting documents cited
`therein.
`Apple not only relies upon the prior art disclosed herein, but also relies on any commercial
`embodiments and accompanying literature of the various assignees that correspond to the
`respective disclosures found within the prior art disclosed herein. The assignees’ various and
`respective commercial embodiments and/or corresponding literature anticipate and/or render
`obvious the claims of the Patents-in-Suit for at least the reasons disclosed in these Invalidity
`Contentions and claim charts, as well as for other independent reasons found within the
`commercial embodiments and corresponding literature. Apple also reserves the right to rely on
`related patents, published applications, foreign patents or publications, and other patent documents
`as necessary to establish prior art status or clarify the disclosures cited.
`
`INVALIDITY CONTENTIONS
`Case No. 4:16-cv-02595-JD
`
`
`
` – PAGE 8
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`Apple reserves the right to revise their claim charts to rely on any of these references to
`prove the invalidity of the claims of the Patents-in-Suit in a manner consistent with the Federal
`Rules of Civil Procedure, the Court’s Local Rules, the Local Patent Rules and this Court’s Orders.
`A.
`Prior Art Patents And Published Applications
`
`U.S. Patent No. 3,490,690 to Apple
`
`U.S. Patent No. 4,476,526 to Dodd
`
`U.S. Patent No. 4,593,324 to Ohkubo
`
`U.S. Patent No. 4,956,808 to Aakre
`
`U.S. Patent No. 5,003,307 to Whiting
`
`U.S. Patent No. 5,101,490 to Getson
`
`U.S. Patent No. 5,131,089 to Cole
`
`U.S. Patent No. 5,142,680 to Ottman
`
`U.S. Patent No. 5,150,430 to Chu
`
`U.S. Patent No. 5,269,022 to Shinjo (“Shinjo”)
`
`U.S. Patent No. 5,307,497 to Feigenbaum (“Feigenbaum”)
`
`U.S. Patent No. 5,410,671 to Elgamal
`
`U.S. Patent No. 5,420,998 to Horning (“Horning”)
`
`U.S. Patent No. 5,421,031 to De Bey
`
`U.S. Patent No. 5,432,927 to Grote
`
`U.S. Patent No. 5,467,087 to Chu
`
`U.S. Patent No. 5,481,701 to Chambers
`
`U.S. Patent No. 5,519,843 to Moran
`
`U.S. Patent No. 5,530,847 to Schieve
`
`U.S. Patent No. 5,557,777 to Culbert
`
`U.S. Patent No. 5,581,785 to Nakamura
`
`U.S. Patent No. 5,600,766 to Deckys
`
`INVALIDITY CONTENTIONS
`Case No. 4:16-cv-02595-JD
`
`
`
` – PAGE 9
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`U.S. Patent No. 5,619,698 to Lillich (“Lillich ’698”)
`U.S. Patent No. 5,632,024 to Yajima
`U.S. Patent No. 5,652,886 to Tupule
`U.S. Patent No. 5,671,413 to Shipman (“Shipman”)
`U.S. Patent No. 5,696,897 to Dong
`U.S. Patent No. 5,699,539 to Garber
`U.S. Patent No. 5,729,228 to Franaszek
`U.S. Patent No. 5,764,994 to Craft
`U.S. Patent No. 5,790,856 to Lillich (“Lillich ’856”)1
`U.S. Patent No. 5,793,943 to Noll (“Noll”)
`U.S. Patent No. 5,794,052 to Harding
`U.S. Patent No. 5,805,086 to Brown
`U.S. Patent No. 5,805,882 to Cooper
`U.S. Patent No. 5,809,295 to Straub
`U.S. Patent No. 5,812,817 to Hovis (“Hovis”)
`U.S. Patent No. 5,815,705 to Slivka
`U.S. Patent No. 5,819,115 to Hoese
`U.S. Patent No. 5,828,877 to Pearce (“Pearce”)
`U.S. Patent No. 5,836,013 to Greene (“Greene”)
`U.S. Patent No. 5,860,083 to Sukegawa (“Sukegawa”)
`U.S. Patent No. 5,884,074 to Maeda
`U.S. Patent No. 5,901,310 to Rahman (“Rahman”)
`U.S. Patent No. 5,907,703 to Kronenberg
`U.S. Patent No. 5,920,896 to Grimsrud
`U.S. Patent No. 5,925,129 to Combs
`
`
`1 Lillich ’698 and Lillich ’856 are collectively referred to herein as “Lillich.”
`
`INVALIDITY CONTENTIONS
`Case No. 4:16-cv-02595-JD
`
`
`
` – PAGE 10
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`U.S. Patent No. 5,930,358 to Rao
`U.S. Patent No. 5,933,630 to Ballard (“Ballard”)
`U.S. Patent No. 5,940,871 to Goyal
`U.S. Patent No. 5,948,104 to Gluck
`U.S. Patent No. 5,991,542 to Han
`U.S. Patent No. 6,014,694 to Aharoni
`U.S. Patent No. 6,073,232 to Krocker (“Krocker”)
`U.S. Patent No. 6,098,158 to Lay
`U.S. Patent No. 6,108,014 to Dye
`U.S. Patent No. 6,128,094 to Smith
`U.S. Patent No. 6,169,844 to Arai
`U.S. Patent No. 6,175,896 to Bui
`U.S. Patent No. 6,182,122 to Berstis
`U.S. Patent No. 6,212,632 to Surine (“Surine”)
`U.S. Patent No. 6,216,225 to Yoo
`U.S. Patent No. 6,237,080 to Makinen (“Makinen”)
`U.S. Patent No. 6,253,264 to Sebastian
`U.S. Patent No. 6,263,431 to Lovelace
`U.S. Patent No. 6,266,736 to Atkinson
`U.S. Patent No. 6,272,628 to Aguilar
`U.S. Patent No. 6,272,629 to Stewart
`U.S. Patent No. 6,279,092 to Franaszek
`U.S. Patent No. 6,317,818 to Zwiegincew (“Zwiegincew”)
`U.S. Patent No. 6,336,161 to Watts
`U.S. Patent No. 6,370,614 to Teoman (“Teoman”)
`U.S. Patent No. 6,370,631 to Dye
`
`INVALIDITY CONTENTIONS
`Case No. 4:16-cv-02595-JD
`
`
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` – PAGE 11
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`U.S. Patent No. 6,374,353 to Settsu (“Settsu”)
`U.S. Patent No. 6,393,584 to McLaren
`U.S. Patent No. 6,401,202 to Abgrall
`U.S. Patent No. 6,421,776 to Hillis (“Hillis”)
`U.S. Patent No. 6,442,623 to Kim
`U.S. Patent No. 6,434,695 to Esfahani (“Esfahani ’695”)
`U.S. Patent No. 6,452,602 to Morein
`U.S. Patent No. 6,457,175 to Lerche
`U.S. Patent No. 6,473,856 to Goodwin
`U.S. Patent No. 6,564,318 to Gharda
`U.S. Patent No. 6,567,911 to Mahmoud
`U.S. Patent No. 6,622,244 to Eidson
`U.S. Patent No. 6,601,167 to Gibson
`U.S. Patent No. 6,636,963 to Stein
`U.S. Patent No. 6,732,265 to Esfahani (“Esfahani ’265”)2
`U.S. Patent No. 6,823,435 to Wisor
`U.S. Patent No. 7,190,284 to Dye
`U.S. Patent No. 8,176,288 to Dye
`U.S. Patent Application No. 2001/0039612 to Lee (“Lee”)
`U.S. Patent Application No. 2004/0068646 to Stein
`PCT Application No. WO 92/17844 to Miller
`PCT Application No. WO 94/19768 to Kikinis (“Kikinis”)
`PCT Application No. WO 96/13772 to Shipman
`PCT Application No. WO 97/37847 to Brown
`European Patent No. 0713176 to Voce
`
`
`2 Esfahani ’695 and Esfahani ’265 are collectively referred to herein as “Esfahani.”
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`European Patent No. 0788115 to Lee
`European Patent No. 0868063 to Berstis
`German Patent No. DE19721786 to Michael Vers (“Vers”)
`G.B. Patent No. 2276257 to Ingvar (“Ingvar”)
`Japanese Patent No. 06-230974 to Takashi
`Japanese Patent No. 11-316683 to Suziki
`Prior Art Non-Patent References
`Abali et al., “Operating System Support for Fast Hardware Compression of Main
`Memory Contents,” Memory Wall Workshop, June 2000
`Anyimi, “Implementing a Plug and Play BIOS Using Intel's Boot Block Flash
`Memory,” Feb. 1995 (“Anyimi”)
`Baker et al., “Lossless Data Compression for Short Duration 3D Frames in
`Positron Emission Tomography,” Nuclear Science Symposium and Medical
`Imaging Conference, 1993
`M. Beck, et. al, “Linux Kernel Internals” Addison Wesley Longman (1996)
`(“Beck”)
`D. Bennett, “Booting Linux from EPROM,” Linux Journal, January 1997
`(“Bennett”)
`Michael Burrows et al., “On-line data compression in a log-structured file
`System” (“Burrows”)
`Cheng et al., “Fast and highly reliable IBMLZ1 compression chip and algorithm
`for storage,” Hot Chips V11, August 1995 (“Cheng”)
`Craft, “A Fast hardware data compression algorithm and some algorithmic
`extension,” IBM J. Res. Develop., Vol 43, Nov. 1998 (“Craft”)
`Crowley et al., “Dynamic Compression During System Save Operation,” IBM
`Technical Disclosure Bulletin, May 1, 1984
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`Douglis, “One the Role of Compression in Distributed Systems” (“Douglis 1”)
`Douglis, “The Compression Cache: Using On-Line Compression to Extend
`Physical Memory,” Winter 1993 USENIX Conference, Jan 1993 (“Douglis 2”)3
`Fiala, et al., "Data Compression with Finite Windows."
`Grove “System Administration,” LINUX, Mar 1998 (“Grove”)
`Jones, “The Microsoft Interactive TV system: An Experience Report,” July 1997
`(“Jones”)
`Kawaguchi et al., “A Flash-Memory Based File System,” Proceedings of the
`USENIX 1995 Technical Conference Proceedings, 1995
`“Magstar and IBM 3590 High Performance Tape Subsystem Technical Guide,”
`November 1996 (“Magstar”)
`Mealey, B, IBM, “An IP.com Prior Art Database Technical Disclosure,” January,
`1992 (“Mealey”)
`Menon, “A performance comparison of RAID-5 and log-structured arrays,” IBM
`Almaden Research Center (“Menon”)
`Z. Palmer “Fido: A Cache That Learns to Fetch,” Proceedings of the 17th
`International Conference on Very Large Data Bases (Sep. 1991)
`Red Hat Linux 5.0, The Official Red Hat Linux Installation Guide (1995) (“Linux
`Redhat”)4
`Rubini, “Booting the Kernel,” Linux Journal, Jan. 1997 (“Rubini”)
`“Seagate Enters Mid-Range Tape Market with Innovative Sidewinder® 50,” PR
`Newswire, May 19, 1997
`“Sidewinder,” Infoworld, July 14, 1997
`Simpson et al., “A Multiple Processor Approach to Data Compression,”
`Proceedings of the 1998 ACM Symposium on Applied Computing, 1998
`
`3 Douglis 1 and Douglis 2 are collectively referred to herein as “Douglis.”
`4 Beck and Linus Redhat are collectively referred to herein as “Linux Kernel.”
`
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`Wang, et al., “The feasibility of using compression to increase memory system
`perfomance,” ECE Technical Reports, 1993
`Welch et al., “A Technique for High-Performance Data Compression,” IEEE
`Computer, 1984
`Wilson, et al., “The Case for Compressed Caching in Vitrual Memory Systems,”
`Proceedings of the USENIX Annual Technical Conference, June 1999
`Wynn, et al., “The effect of compression on performance in a demand paging
`operating system,” The Journal of Systems and Software (2000) (“Wynn Article”)
`Wynn, “The Effect of Compression on Performance in a Demand Paging
`Operating System,” 1997 (“Wynn Thesis”)5
`Zobel, et al., “Adding compression to a full-text retrieval system,” Software--
`Practice and Experience (Aug. 1995)
`C.
`Prior Art Offered For Sale And/Or Publicly Used Or Known
`Pursuant to Local Patent Rule 3-3(a), Apple provides the following information regarding
`prior art which was the subject of a commercial offer of sale and/or in public use prior to the
`earliest permissible priority date of the asserted patents. The following table further includes
`information regarding derivation, and also regarding prior art which was made in this country and
`not abandoned, suppressed, or concealed and/or otherwise qualifies as prior art under 35 U.S.C. §
`102, including Section 102(g), with an effective date prior to the earliest asserted conception date
`of the asserted patents.
`
`Apple’s 68K Operating System (“The 68K System”). On information and belief,
`this product package was invented and purchased, evaluated, compared, tested,
`implemented, made, used (publicly and/or commercially), disclosed, offered for
`sale, and/or sold by Apple in the United States at least as early as May 1995.
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`5 The Wynn Article and the Wynn Thesis are collectively referred to herein as “Wynn.”
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`Apple’s New World Mac Operating System (“The New World Mac System”). On
`information and belief, this product package was invented and purchased,
`evaluated, compared,
`tested,
`implemented, made, used (publicly and/or
`commercially), disclosed, offered for sale, and/or sold by Apple in the United States
`at least as early as December 1998.
`The Linux Operating System (“Linux OS”). On information and belief, this
`product package was invented and purchased, evaluated, compared, tested,
`implemented, made, used (publicly and/or commercially), disclosed, offered for
`sale, and/or sold by Apple in the United States at least as early as September 1991.
`The Microsoft Windows 2000 Operating System (“Windows 2000”). On
`information and belief, this product package was invented, evaluated, compared,
`tested (including beta testing), implemented, made, used (publicly and/or
`commercially via beta or early release), and/or disclosed, by Microsoft in the
`United States prior to as February 3, 2000.
`D.
`Admitted Prior Art
`The applicant for the Patents-in-Suit has expressly or implicitly admitted that certain
`elements recited in asserted claims of the Patents-in-Suit were known in the prior art and thus part
`of the state of the art. These admissions include, but are not limited to, the following prior art
`concepts. Apple reserves the right to identify additional examples of admitted prior art and to
`further support the admissions identified below by relying on additional portions of the patent
`specification, statements made during the prosecution history of the Patents-in-Suit and the
`prosecution history of any related applications, and any statements by the Plaintiff or the patent
`applicants.
`Patent
`
`Admissions by Patent Applicant
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`608
`
`The ’608 patent admits that the following was already known to persons of skill in
`the art before the alleged invention:
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`Patent
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`Admissions by Patent Applicant
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`the concept of “accelerated data storage,” including “receiving a digital data
`stream at a data transmission rate which is greater than the data storage rate
`of the target storage device, compressing the input data stream at a
`compression rate that increases the effective storage rate of the target storage
`device and storing the compressed data in the target storage device” as
`discussed at 5:47-54 and 24:13-34;
`the concept of “accelerated data retrieval,” including “retrieving a
`compressed digital data stream from a target storage device at a rate equal to,
`e.g., the data access rate of the target storage device and then decompressing
`the compressed data at a rate that increases the effective data access rate of
`the target storage device” that mitigates “the traditional bottleneck associated
`with, e.g., local and network disk accesses” as discussed at 5:62-6:2;
` certain “data compression/decompression techniques” as disclosed in U.S.
`Patent. No. 6,195,024, which “are suitable for compressing and
`decompressing at rate, which provide accelerated data storage and retrieval”
`as discussed at 6:16-20;
` known Ultra DMA, SCSI, Serial Storage Architecture, and Fibre Channel
`disk interfaces, as discussed at 6:28-32;
`the American National Standard for Information Systems (ANSI) AT
`Attachment Interface (ATA/ATSPI-4), as discussed at 6:32-34;
` known standards such as the PCI (Peripheral Component Interconnect) bus
`interface for interfacing with a