Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 19
`Filed: May 30, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`DELL, INC.; EMC CORPORATION; HEWLETT-PACKARD
`ENTERPRISE CO.; and HP ENTERPRISE SERVICES, LLC
`Petitioner,
`
`v.
`
`REALTIME DATA LLC d/b/a IXO,
`Patent Owner.
`_______________
`
`Case IPR2017-00176
`Patent 7,161,506 C2
`_______________
`
`Before GEORGIANNA W. BRADEN, J. JOHN LEE, and JASON J.
`CHUNG, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`
`
`571.272.7822
`
`
`Paper No. 19
`Filed: May 30, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`DELL, INC.; EMC CORPORATION; HEWLETT-PACKARD
`ENTERPRISE CO.; and HP ENTERPRISE SERVICES, LLC
`Petitioner,
`
`v.
`
`REALTIME DATA LLC d/b/a IXO,
`Patent Owner.
`_______________
`
`Case IPR2017-00176
`Patent 7,161,506 C2
`_______________
`
`Before GEORGIANNA W. BRADEN, J. JOHN LEE, and JASON J.
`CHUNG, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`
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`
`INTRODUCTION
`I.
`Petitioner, Dell, Inc., EMC Corporation, Hewlett-Packard Enterprise
`Co., and HP Enterprise Services, LLC, filed a Petition requesting an inter
`partes review of claims 104 and 105 (“the challenged claims”) of U.S.
`Patent No. 7,161,506 C2 (Ex. 1001, “the ’506 patent”). Paper 1 (“Pet.”). In
`response, Patent Owner, Realtime Data LLC d/b/a IXO, filed a Preliminary
`Response. Paper 15 (“Prelim. Resp.”). We have jurisdiction under
`35 U.S.C. § 314, which provides that an inter partes review may not be
`instituted “unless . . . the information presented in the petition . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.”
`For the reasons set forth below, we institute an inter partes review of
`the challenged claims.
`A. Related Proceedings
`Petitioner and Patent Owner inform us that the ’506 patent is involved
`in multiple suits in the U.S. District Courts for the Eastern District of Texas
`and Northern District of California and several inter partes review
`proceedings. Pet. 4; Paper 6, 2–8; Paper 8, 2–4; Paper 12, 1–10; Paper 14,
`1–2; Paper 18, 1–5.
`B. The ’506 Patent
`The ’506 patent describes systems and methods “for providing fast
`and efficient data compression using a combination of content independent
`data compression and content dependent data compression.” Ex. 1001,
`Abst. The ’506 patent further describes the input data type includes a
`plurality of disparate data types. Id.
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`C. Challenged Claims
`
`As noted above, Petitioner challenges claims 104 and 105 of the ’506
`patent, both of which are independent claims. Claim 104 and 105 are
`reproduced below:
`104. A computer implemented method for compressing data,
`comprising:
`analyzing data within a data block of an input data stream to
`identify one or more data types of the data block, the input data
`stream comprising a plurality of disparate data types;
`performing content dependent data compression with a content
`dependent data compression encoder if a data type of the data
`block is identified; and
`performing data compression with a single data compression
`encoder, if a data type of the data block is not identified;
`wherein the analyzing of the data within the data block to identify
`one or more data types excludes analyzing based only on a
`descriptor that is indicative of the data type of the data within the
`data block.
`Ex. 1001, 6:34–49.
`105. A computer implemented method comprising:
`receiving a data block in an uncompressed form, said data block
`being included in a data stream;
`analyzing data within the data block to determine a type of said
`data block; and
`compressing said data block to provide a compressed data block;
`wherein if one or more encoders are associated to said type,
`compressing said data block with at least one of said one or more
`encoders, otherwise compressing said data block with a default
`data compression encoder, and
`wherein the analyzing of the data within the data block to identify
`one or more data types excludes analyzing based only on a
`descriptor that is indicative of the data type of the data within the
`data block.
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`Id. at 6:50–64.
`D. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of the ’506 patent based on the
`following grounds under 35 U.S.C. § 103(a)1:
`References
`Basis
`Franaszek2 and Hsu3,4
`§ 103(a)
`Franaszek, Hsu, and
`§ 103(a)
`Sebastian5
`
`Claims Challenged
`104 and 105
`104 and 105
`
`Additionally, Petitioner relies on the Declarations of Charles D.
`Creusere, Ph.D. (Ex. 1002) and Mr. Scott Bennett (Ex. 1026) to support its
`challenges.
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`125 Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103, effective March 16,
`2013. The ’506 patent was issued prior to the effective date of the AIA.
`Thus, we apply the pre-AIA version of § 103.
`2 U.S. Patent No. 5,870,036, filed Feb. 24, 1995, issued Feb. 9, 1999
`(Ex. 1004, “Franaszek”).
`3 W. H. Hsu and A. E. Zwarico, “Automatic Synthesis of Compression
`Techniques for Heterogeneous Files,” Software—Practice and Experience,
`Vol. 25(10), 1097–1116 (1995) (Ex. 1005, “Hsu”).
`4 Petitioner contends that Hsu was prior art as of 1995. Pet. 13 (citing
`Ex. 1026 ¶ 35). Patent Owner does not dispute the public availability date at
`this juncture. On this record, we accept Petitioner’s contention for purposes
`of institution.
`5 US Patent No. 6,253,264 B1, filed Mar. 6, 1998, issued June 26, 2001
`(Ex. 1030, “Sebastian”).
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`II. DISCUSSION
`
`A. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (“We
`conclude that [37 C.F.R. § 42.100(b)] represents a reasonable exercise of the
`rulemaking authority that Congress delegated to the Patent Office.”).
`Consistent with the broadest reasonable construction, claim terms are
`presumed to have their ordinary and customary meaning as understood by a
`person of ordinary skill in the art in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). Also, we must be careful not to read a particular embodiment
`appearing in the written description into the claim if the claim language is
`broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184
`(Fed. Cir. 1993) (“[L]imitations are not to be read into the claims from the
`specification.”). An inventor, however, may provide a meaning for a term
`that is different from its ordinary meaning by defining the term in the
`specification with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Neither Petitioner nor Patent
`Owner contest any terms. Pet. 11; see generally Prelim. Resp.
`At this stage of the proceeding, and based on the record before us, we
`determine that no terms require express construction for purposes of this
`Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (only those claim terms or phrases that are in
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`controversy need to be construed, and only to the extent necessary to resolve
`the controversy).
`B. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`In that regard, an obviousness analysis “need not seek out precise
`teachings directed to the specific subject matter of the challenged claim, for
`a court can take account of the inferences and creative steps that a person of
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see
`Translogic, 504 F.3d at 1259, 1262.
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden of persuasion never
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
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`inter partes review and citing Tech. Licensing Corp. v. Videotek, Inc., 545
`F.3d 1316, 1326–27 (Fed. Cir. 2008)). Furthermore, Petitioner cannot
`satisfy its burden of proving obviousness by employing “mere conclusory
`statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed.
`Cir. 2016).
`Thus, to prevail in an inter partes review, Petitioner must explain how
`the proposed combinations of prior art would have rendered the challenged
`claims unpatentable. At this preliminary stage, we determine whether the
`information presented in the Petition shows there is a reasonable likelihood
`that Petitioner would prevail in establishing that one of the challenged
`claims would have been obvious over the proposed combinations of prior
`art. We analyze the challenges presented in the Petition in accordance with
`the above-stated principles.
`C. Challenge of Claims 104 and 105 Based on Franaszek, Hsu, and
`Sebastian
`Petitioner asserts that claims 104 and 105 are unpatentable under
`35 U.S.C. § 103(a) in view of Franaszek, Hsu, and Sebastian. Pet. 14–44.
`To support its contentions, Petitioner provides explanations as to how the
`prior art teaches or suggests each claim limitation. Id. Patent Owner
`disputes Petitioner’s contentions. Prelim. Resp. 5–29. For the reasons that
`follow, we determine Petitioner has demonstrated a reasonable likelihood of
`prevailing as to this ground.
`1. Overview of Franaszek (Ex. 1004)
`Franaszek relates to systems and methods for compressing and
`decompressing data blocks using a plurality of optimal encoders. Ex. 1004,
`at [57]. In Franaszek, representative samples of each block are tested to
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`select an appropriate encoder for the block. Id. The data type of incoming
`data blocks is recognized, and the collection of data blocks are compressed
`using a plurality of optimal encoders for the different types of data. Id. at
`4:30–36, 5:49–53. Figure 2 of Franaszek is reproduced below, and depicts
`one embodiment of the Franaszek system.
`
`
`Figure 2 illustrates data compressor 220 and data de-compressor 270,
`with uncompressed data blocks 210 that can contain type information 205.
`Id. at 4:25–31. According to Franaszek, the type information can be, for
`example, image data encoded in a given format, source code for a given
`programming language, etc. Id. at 4:32–34. Data blocks 210 are input to
`data compressor 220. Data compressor 220 and data de-compressor 270
`share compression method table 240 and memory 250 containing a number
`of dictionary blocks. Id. at 4:34–38. Compressor 220 selects a compression
`method to compress the data. Id. at 4:52–53. The compressor outputs
`compressed data blocks 230, each with compression method description
`(“CMD”) 235 that encodes an index identifying the selected compression
`method for that block. Id. at 4:55–57. De-compressor 270 de-compresses
`the block using the specified method found in compression method table 240
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`(using the compression method identifier as an index), and outputs
`uncompressed data blocks 280. Id. at 5:1–7.
`2. Overview of Hsu (Ex. 1005)
`Hsu is titled “Automatic Synthesis of Compression Techniques for
`Heterogeneous Files,” and discloses systems and methods for compressing
`“heterogeneous files”—files that contain “multiple types of data such as text,
`images, binary, audio, or animation.” Ex. 1005, Title, 1097. Hsu teaches a
`heterogeneous compressor that automatically chooses the best compression
`algorithm to use on a given variable-length block of a file, based on both the
`qualitative and quantitative properties of that segment, and “treats a file as a
`collection of fixed size blocks (5K in the current implementation), each
`containing a potentially different type of data and thus best compressed
`using different algorithms.” Id. at 1102. Hsu further teaches a two phase
`system. Id. In the first phase, the system uses statistical methods based on
`analysis of the data within each block to determine a data type of the block
`and to determine the optimal encoder to use in compressing a block. Id. at
`1097; see also id. at 1103 (“The compressibility of a block of data and the
`appropriate algorithm to do so are determined by the type of data contained
`in a block . . . .”). The second phase comprises the actual compression and
`an optimization that maximizes the size of a segment of data to be
`compressed using a particular algorithm. In this optimization, which is
`interleaved with the actual compression, adjacent blocks for which exactly
`the same method have been chosen are merged into a single block. Id. at
`1102. Specifically, during the second phase, the heterogeneous compressor
`applies the selected algorithms to the blocks separately. Id. at 1098.
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`The approach in Hsu uses a program synthesis technique, meaning
`that a compression plan, consisting of instructions for each block of input
`data, is generated based on the statistical properties of the input data. Id.
`According to Hsu, its system chooses each algorithm (as well as the duration
`of its applicability) before compression begins, rather than modifying the
`technique for each file during compression. Id. at 1100. The heterogeneous
`compressor in Hsu bases its compression upon statistics gathered from larger
`blocks of five kilobytes. Id. Hsu states that “[t]his allows us to handle much
`larger changes in file redundancy types. This makes our system less
`sensitive to residual statistical fluctuations from different parts of a file.” Id.
`Hsu further teaches that “in-depth statistical analysis in order to make a
`more informed selection from the database of algorithms” when looking at
`the blocks of data to be compressed, and such computations are considered
`for an entire block (as opposed to sporadic or random sampling from parts of
`each block). Id. at 1101.
`Hsu discloses that the compressibility of a block of data and the
`appropriate algorithm to do so are determined by the type of data contained
`in a block and the type of redundancy (if any) in the data. Id. at 1103.
`These two properties are represented by four parameters: the block type, and
`the three redundancy metrics. Id. The block type describes the nature of a
`segment of input data. Id. The redundancy metrics are quantitative
`measures that are used to determine the compressibility of a block of data.
`They are: the degree of variation in character frequency or alphabetic
`distribution, MAD; the average run length of the block, MRL; and the string
`repetition ratio of the block, MSR. Id. at 1104. According to Hsu, these three
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`manifestations of redundancy are independent, and each of the redundancy
`types is exploited by different compression algorithms. Id.
`The compression algorithms and attendant heuristics of Hsu are
`organized into the 10 by 3 table shown Table 1, reproduced below.
`
`
`As shown in Table 1, the 10 file descriptors are the row indices and the 3
`metrics are the column indices. Id. at 1106. Each entry of the table contains
`descriptors that are used to access the code for an algorithm-heuristic pair.
`Id. Hsu teaches the use of four basic compression algorithms to be used in
`its system: arithmetic coding, Lempel-Ziv, run length encoding (RLE), and
`JPEG for image/graphics compression. Id. An optimal algorithm is selected
`for each data block of a file, and the system creates a record of each data
`block and its optimal algorithm, which Hsu refers to as the file’s
`“compression plan.” Id. at 1109. Hsu notes that “recent implementations of
`‘universal’ compression programs execute the Lempel-Ziv algorithm and
`dynamic Huffman coding in succession, thus improving performance by
`combining the string repetition-based compression of Lempel-Ziv with the
`frequency based compression strategy of dynamic Huffman coding.” Id. at
`1100.
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`3. Overview of Sebastian (Ex. 1030)
`Sebastian teaches a preferred coding network that integrates format-
`specific compression into a general purpose compression tool that serves a
`wide range of data formats. Ex. 1030, Abst., 1:45–50. Sebastian teaches
`that source data is parsed into block of similar data and each parsed block is
`compressed using a respectively selected compression algorithm. Id. at
`Abstr. According to Sebastian, the algorithm can be chosen from a static
`model of the data or it can be adaptive to the data in the parsed block. Id.
`Sebastian teaches that the parsed blocks are then combined into an encoded
`data file. Id.
`In one embodiment, Sebastian teaches a system with different “filters”
`that each support a specific “data format,” such as for Excel XLS worksheets
`or Word DOC files. Id. at 1:50–51. If an installed filter “matches the format
`of the data to be encoded, the advantages of format-specific compression can
`be realized for that data.” Id. at 1:55–57. Otherwise, a “generic” filter is
`used which achieves performance similar to other non-specific data
`compression systems (such as PKZip, Stacker, etc.). Id. at 1:58–60; see also
`id. at 4:9–23 (other suitable generic filters include those similar to Lempel-
`Ziv (LZ) variants).
`Sebastian also discloses an embodiment with a preferred encoder
`using a Base-Filter-Resource (BFR) network, which is shown in Figure 2,
`reproduced below.
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`Figure 2 illustrates that encoder 3' is based on the use of a plurality of filters
`10a, . . , 10x, . . , 10z which serve specific file formats. See id. at 4:1–3.
`According to Sebastian, one filter 10a may support several versions of the
`DBF database format, while another filter 10z may support several versions
`of the DOC format used by the Microsoft Word software program. Id. at
`4:3–6. Sebastian teaches that the individual filters provide respective
`selection criteria 12 to filter selection system 22, which receives source data
`2 and checks the selection criteria 12a, . . , 12x, . . , 12z of all filters 10a, . . ,
`10x, . . , 10z installed in the system to see if any of them support the source
`data’s format. Id. at 4:6–12. If the specific filters do not, then a “generic”
`filter is used, which provides compression performance similar to other
`generic compression systems, such as Lempel-Ziv (LZ) engines. Id. at
`4:12–15. Sebastian then teaches that in a particular preferred embodiment of
`the invention, the generic compression system would use an SZTP
`compression engine. Id. at 4:15–17.
`4. Analysis
`Petitioner asserts that the subject matter of claims 104 and 105 would
`have been obvious in view of Franaszek, Hsu, and Sebastian under
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`35 U.S.C. § 103(a). Pet. 14–44. Petitioner explains where each limitation of
`claims 104 and 105 is taught in Franaszek, Hsu and Sebastian. Id.
`We are satisfied at this stage of the proceeding that, for purposes of
`institution, the present record supports sufficiently the argument that
`Franaszek teaches data compressor 220 compresses data blocks 210 that
`comprise type information 205; and the type information 205 includes image
`data encoded in a format, source code for a programming language, etc.;
`which correspond to the limitations of claims 104 and 105. Id. at 17–18, 37
`(citing Ex. 1004, 4:25–35). The present record supports sufficiently that
`Franaszek teaches if a data type (e.g., text, image, etc.) for an uncompressed
`block is available, the compression method list is set to a list of compression
`methods that have been preselected for that data type; otherwise, if the data
`type is unavailable, the compression method list is set to a default list of
`compression methods; which corresponds to the limitations of claims 104
`and 105. Pet. 18, 20–21, 23–24, 26, 39 (citing Ex. 1004, 5:49–53).
`The present record also supports sufficiently the argument that Hsu
`teaches that a “‘heterogeneous compressor treats a file as a collection of
`fixed size [data] blocks [. . .], each containing a potentially different type of
`data and thus best compressed using different algorithms,’” which
`corresponds to the limitations of claims 104 and 105. Id. at 19, 37–38
`(quoting Ex. 1005, 1102). The present record supports sufficiently the
`argument that Hsu teaches analyzing samples of bytes located at the first,
`middle, and end portions of data blocks to determine a file type, which
`corresponds to the limitations of claims 104 and 105. Id. at 32–33, 43–44
`(citing Ex. 1005, 1102, 1104).
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`We are satisfied at this stage of the proceeding that, for purposes of
`institution, the present record supports sufficiently the argument that
`Sebastian teaches if a filter is installed that matches the format of the data to
`be encoded, then the data gets compressed according to the filter; otherwise
`a generic filter is used to compress a data block including a data type that is
`not yet supported by an encoder installed into the system; which corresponds
`to the limitations of claims 104 and 105. Id. at 29–30, 41–42 (citing
`Ex. 1030, 1:50–60).
`According to Petitioner, a person having ordinary skill would have
`been motivated to combine Franaszek’s teachings with Hsu’s analyzing
`samples of bytes located at the first, middle, and end portions of data blocks
`to determine a file type so that the best encoder is chosen for each block
`using more robust information about the data in a block, as required by
`claims 104 and 105 of the ’506 Patent. Pet. 33–34, 43–44 (citing Ex. 1002
`¶¶ 140–149). Petitioner contends that Franaszek does not address expressly
`the situation in which a particular data block may include more than one
`type of data in the block itself, and that Hsu teaches files could be
`heterogeneous. Id. at 34–35, 43–44 (citing Ex. 1005, 1097). Relying on Dr.
`Creusere’s testimony, Petitioner further contends that an artisan of ordinary
`skill would have been motivated to combine Franaszek and Hsu to handle
`increasingly ubiquitous heterogeneous files, including data blocks that may
`have more than one type of data within the data block, and to select encoders
`for such files by sampling the content of the data block and comparing the
`samples to known patterns to identify the block type rather than relying
`solely on the data type included in the file. Id. at 34, 43–44 (citing Ex. 1002
`¶¶ 146–148).
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`According to Petitioner, a person having ordinary skill would have
`been motivated to combine Franaszek and Sebastian to speed up
`compression by using a generic compression algorithm that compresses data
`in a way that is similar to other generic compression systems such as
`Lempel-Ziv. Id. at 30 (citing Ex. 1030, 4:12–15; Ex 1002 ¶¶ 125–126). In
`addition, Petitioner argues a person having ordinary skill in the art would
`have also recognized the possibility of design trade-offs such as that
`compression ratio may be sacrificed in favor of speed. Id. at 30–31 (citing
`Ex 1002 ¶¶ 126–127).
`Based on the present record, Petitioner’s contentions and evidence are
`sufficient for institution. On this record, we are not persuaded by Patent
`Owner’s contention that Petitioner’s proposed combination fails to teach or
`suggest “performing data compression with a single data compression
`encoder if a data type of the data block is not identified.” Prelim. Resp. 5–
`15, 19–21. In particular, Patent Owner contends that Franaszek only teaches
`the claimed “single data compression encoder” when the data type is not
`identified (id. at 5–10, 13–14) and Hsu teaches a data analysis technique that
`always identifies the data type (id. at 10–13, 19–21). According to Patent
`Owner, because Hsu teaches always identifying the data type, the
`combination of Franaszek and Hsu would never teach or suggest a scenario
`when claim 104’s (and similarly recited claim 105) “a data type of the data
`block is not identified” occurs. Id. at 10–13, 15, 19–21 (citing Ex. 1005,
`1102–1104).
`The test for obviousness, however, is what the combined teachings of
`the references would have suggested to a person of ordinary skill in the art,
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`not whether one reference may be bodily incorporated into the structure of
`another reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
`Moreover, based on the current record, we are not persuaded by
`Patent Owner’s contention that Sebastian does not remedy the defect in the
`combination of Franaszek and Hsu. Prelim. Resp. 16–17. Rather, on the
`present record, we are satisfied Petitioner has shown for purposes of
`institution that Sebastian teaches a generic filter that compresses a data block
`including a data type that is not yet supported by an encoder installed into
`the system, which corresponds to the limitations of claims 104 and 105. Pet.
`29–30, 41–42 (citing Ex. 1030, 1:50–60).
`On this record, we also are not persuaded by Patent Owner’s
`contention that Petitioner’s modification to Franaszek based on Sebastian
`would eliminate Franaszek’s intended purpose and, thus, would fail to
`provide a rationale for a skilled artisan to combine them as a matter of law.
`Prelim. 17–19. Specifically, Patent Owner refers to a related inter partes
`review in which Dr. Creusere acknowledged, “it appears to be a major goal
`of Franaszek [] to maximize the amount of data that could be stored in a
`storage media.” Id. at 17–18. And Patent Owner points to Dr. Creusere’s
`testimony that “Franaszek does not consider the speed of the compression
`algorithm in its decision to – on whether or not to choose that compression
`algorithm.” Id. at 18 (quoting Ex. 2002, 87:9–17). Dr. Creusere does not
`state, however, that Franaszek’s maximizing data storage precludes
`considering Sebastian’s system that increases speed. Pet. 30–31, 42–43
`(citing Ex. 1002 ¶¶ 125–127, 176–177); see also Crocs, Inc. v. U.S. Int’l
`Trade Comm’n, 598 F.3d 1294 (Fed. Cir. 2010).
`
`17
`
`
`
`IPR2017-00176
`Patent 7,161,506 C2
`
`On this record, we are unpersuaded at this time by Patent Owner’s
`contention that Petitioner’s assertion of combining Franaszek and Sebastian
`fails because Sebastian teaches there is always an encoder associated with
`the data type, but that encoder may not always be installed. Prelim. Resp.
`21–22. As noted above, the test for obviousness is what the combined
`teachings of the references would have suggested to a person of ordinary
`skill in the art, not whether one reference may be bodily incorporated into
`the structure of another reference. Keller, 642 F.2d at 425.
`For the reasons explained above and based on the present record,
`Petitioner has demonstrated a reasonable likelihood of prevailing on its
`challenge against claims 104 and 105 of the ’506 patent as obvious in view
`of the combination of Franaszek, Hsu, and Sebastian.
`D. Remaining Grounds Challenging the Claims of the ’506 Patent
`As referenced above, Petitioner proffered two different grounds:
`(1) claims 104 and 105 as obvious over the combination of Franaszek and
`Hsu; and (2) claims 104 and 105 as obvious over the combination of
`Franaszek, Hsu, and Sebastian. Pursuant to 35 U.S.C. § 316(b), rules for
`inter partes proceedings were promulgated to take into account the
`“regulation on the economy, the integrity of the patent system, the efficient
`administration of the Office, and the ability of the Office to timely complete
`proceedings.” The promulgated rules provide that they are to “be construed
`to secure the just, speedy, and inexpensive resolution of every proceeding.”
`37 C.F.R. § 42.1(b). As a result, and in determining whether to institute an
`inter partes review of a patent, the Board, in its discretion, may “deny some
`or all grounds for unpatentability for some or all of the challenged claims.”
`37 C.F.R. § 42.108(b). We exercise our discretion and decline to institute
`
`18
`
`
`
`IPR2017-00176
`Patent 7,161,506 C2
`
`review based on any grounds that are not identified below as being part of
`the trial. See, e.g., Pet. 7 (we exercise our discretion and decline to institute
`review based on the combination of Franaszek and Hsu); 37 C.F.R.
`§ 42.108(a).
`
`III. CONCLUSION
`For the foregoing reasons, we are persuaded that the information
`presented in the Petition establishes a reasonable likelihood that Petitioner
`would prevail in establishing unpatentability of claims 104 and 105 as
`obvious over Franaszek, Hsu, and Sebastian.
`IV. ORDER
`
`Accordingly, it is
`ORDERED that, pursuant to 35 U.S.C. § 314, an inter partes review
`is hereby instituted on the ground that claims 104 and 105 of the ’506 patent
`are unpatentable under 35 U.S.C. § 103(a) in view of Franaszek, Hsu, and
`Sebastian;
`FURTHER ORDERED that no other grounds are authorized for this
`inter partes review; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`commences on the entry date of this decision.
`
`
`
`
`
`
`19
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`IPR2017-00176
`Patent 7,161,506 C2
`
`PETITIONER:
`Andrew R. Sommer
`Thomas M. Dunham
`WINSTON & STRAWN LLP
`asommer@winston.com
`tdunham@winston.com
`
`Garth A. Winn
`KLARQUIST SPARKMAN, LLP
`garth.winn@klarquist.com
`
`
`
`PATENT OWNER:
`William Rothwell
`Kayvan Noroozi
`NOROOZI PC
`william@noroozipc.com
`kayvan@noroozipc.com
`
`Jason D. Eisenberg
`Donald J. Featherstone
`Robert Greene Sterne
`Joseph E. Mutschelknaus
`Tyler Dutton
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`jason-ptab@skgf.com
`donf-ptab@skgf.com
`rsterne@skgf.com
`jmutsche-ptab@skgf.com
`tdutton-ptab@skgf.com
`
`20
`
`
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