UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`DELL INC.; EMC CORPORATION; HEWLETT-PACKARD
`ENTERPRISE CO.; HP ENTERPRISE SERVICES, LLC; TERADATA
`OPERATIONS, INC.; and VERITAS TECHNOLOGIES, LLC,
`
`Petitioners,
`
`v.
`
`REALTIME DATA LLC d/b/a IXO,
`
`Patent Owner.
`
`
`
`Case: IPR2017-001761
`Patent No. 7,161,506
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER RESPONSE
`
`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
`
`
`
`1 Case IPR2017-00806 has been consolidated with this proceeding. Case IPR2017-
`01688 has been joined with this proceeding.
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`DELL INC.; EMC CORPORATION; HEWLETT-PACKARD
`ENTERPRISE CO.; HP ENTERPRISE SERVICES, LLC; TERADATA
`OPERATIONS, INC.; and VERITAS TECHNOLOGIES, LLC,
`
`Petitioners,
`
`v.
`
`REALTIME DATA LLC d/b/a IXO,
`
`Patent Owner.
`
`
`
`Case: IPR2017-001761
`Patent No. 7,161,506
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER RESPONSE
`
`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
`
`
`
`1 Case IPR2017-00806 has been consolidated with this proceeding. Case IPR2017-
`01688 has been joined with this proceeding.
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`PRELIMINARY STATEMENT ..................................................................... 1
`
`CLAIMS 104 AND 105 WOULD HAVE BEEN OBVIOUS. ....................... 3
`
`A. Patent Owner’s Expert Agrees There Would Have Been
`Advantages to Using Hsu’s Teachings to Improve Franaszek. .............. 3
`
`B. Any Remaining Dispute Is Over How Franaszek’s And Hsu’s
`Teachings Would Have Been Combined. .............................................. 3
`
`C. The Board Should Reject Patent Owner’s Position That the
`Combination of Franaszek and Hsu Would Always Determine a
`Data Type................................................................................................ 4
`
`1.
`
`2.
`
`Patent Owner Makes An Improper Bodily Incorporation
`Argument. ..................................................................................... 5
`
`Patent Owner’s Arguments About What a POSA Would
`Have Done Is Based On Misinterpretation of Testimony
`and Misunderstanding Of the Facts. ............................................. 5
`
`a. Dr. Creusere Never Testified That Hsu Would Always
`Be Used To Determine a Data Type. ...................................... 6
`
`b. Dr. Zeger’s Cross-Examination Testimony Reveals
`Good Reasons Why a POSA Would Not Have Used
`Hsu When Franaszek Lacked a Data Type Descriptor. .......... 7
`
`c. Patent Owner’s Theory Rests On The Unstated And
`Legally-Unsupported Assumption That A POSA
`Would Have Only Seen One Obvious Way To
`Combine Prior Art Teachings. .............................................. 10
`
`d. The Challenge Presented In The Petition Does Not
`Turn On Whether Hsu “Always Identifies a Data
`Type.” .................................................................................... 12
`
`D. Patent Owner’s Criticisms Of The Combination of Franaszek
`and Sebastian Are Not Well-Founded. ................................................. 13
`i
`
`
`
`
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Reliance On Sebastian Is Not Needed To Support A
`Conclusion of Obviousness Because The Instituted
`Combination Of Franaszek, Hsu, And Sebastian
`Encompasses Franaszek And Hsu. ............................................. 13
`
`Petitioners Have Provided “Actual Evidence” In Support
`Of Their Positions In The Form Of Declarations And
`Documents. ................................................................................. 15
`
`Dr. Zeger’s Opinions About The Combination With
`Sebastian Ignore The Facts And Are Conclusory. ..................... 16
`
`A Problem Can Exist In The Prior Art Even If Franaszek
`Is Silent About That Problem. .................................................... 17
`
`Sebastian Does Not Say What Patent Owner Infers From
`Its Text. Nor Does It Make Practical Sense To Interpret
`Sebastian As Patent Owner Does. .............................................. 18
`
`6. Whether The Data Type Is “Available” To Sebastian’s
`System Is Irrelevant. ................................................................... 19
`
`III. PATENT OWNER HAS ADMITTED THE INVALIDITY OF
`CLAIMS 104 AND 105 UNDER THE PROPER LEGAL TEST
`RELATING TO CONDITIONAL METHOD CLAIMS. ............................. 20
`
`IV. CONCLUSION .............................................................................................. 23
`
`
`
`
`
`
`
`ii
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Application of Kronig, 539 F.2d 1300 (CCPA 1976) .............................................. 15
`
`CRFD Res., Inc. v. Dish Network Corp.,
`No. 2016-2198, Slip op. (Fed. Cir. Dec. 5, 2017) .............................................. 14
`
`Cybersettle, Inc. v. Nat’l Arbitration Forum, Inc.,
`243 Fed. App’x 603 (Fed. Cir. Jul. 24, 2007) ..................................................... 22
`
`Graham v. John Deere,
`383 U.S. 1 (1966) .......................................................................................... 10, 11
`
`In re Keller,
`642 F.2d 413 (CCPA 1981) .................................................................................. 5
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 11, 13
`
`Mobotix Corp. v. E-Watch, Inc.,
`IPR2013-00334, Paper 18 (PTAB Jan. 10, 2014) .............................................. 15
`
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) .......................................................................... 11
`
`Ex parte Schulhauser,
`2016 WL 6277792, No. 2013-007847 (PTAB Apr. 28, 2016) ..................... 21, 22
`
`In re Schweikert,
`676 F. App’x 988 (Fed. Cir. 2017) ............................................................... 17, 18
`
`Other Authorities
`
`37 C.F.R. §42.65(a). ............................................................................................. 7, 17
`
`
`
`iii
`
`
`
`
`
`LIST OF ABBREVIATIONS
`
`
`
`Meaning
`
`U.S. Patent No. 7,161,506
`
`Ex parte reexamination certificate
`
`Institution Decision
`
`Petition
`
`Patent Owner Response
`
`
`
`
`
`
`
`
`
`
`
`
`
`Abbreviation
`
`’506 Pat.
`
`cert.
`
`Inst. Dec.
`
`Pet.
`
`POR
`
`
`
`
`
`iv
`
`
`
`PETITIONER’S UPDATED EXHIBIT LIST
`
`EX. NO.
`1001
`1002
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`BRIEF DESCRIPTION
`U.S. Patent No. 7,161,506
`Declaration of Dr. Charles Creusere
`Curriculum Vitae of Dr. Charles Creusere
`U.S. Patent No. 5,870,036 to Franaszek et al.
`(“Franaszek”)
`W.H. Hsu, et al., Automatic Synthesis of Compression
`Techniques for Heterogeneous Files, Software Practice
`& Experience, Vol. 25, No. 10 pp. 1097-1116 (Oct.
`1995) (“Hsu”)
`Notice of Intent to Issue Reexamination Certificate dated
`Nov. 27, 2013, U.S. Inter Partes Reexamination Control
`No. 95/001,926
`Office Action dated Dec. 15, 2009 in U.S. Inter Partes
`Reexamination Control No. 95/001,926
`Appeal Brief dated Oct. 1, 2012 in U.S. Inter Partes
`Reexamination Control No. 95/001,926
`MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND
`TECHNICAL TERMS, Fifth Ed. (1993) (excerpts)
`MICROSOFT PRESS COMPUTER DICTIONARY, Third Ed.
`(1997) (excerpts)
`Reply to Office Action in Inter Partes Reexamination in
`Reexamination Control No. 95/000,479 (Mar. 15, 2010)
`Action Closing Prosecution in Inter Partes
`Reexamination in Reexamination Control No.
`95/000,479 (Aug. 27, 2010)
`Jury Verdict Form in Realtime Data, LLC d/b/a IXO v.
`T-Mobile U.S.A., Inc., No. 6:10-cv-493, Dkt. 660 (E.D.
`v
`
`
`
`
`
`EX. NO.
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`1022
`
`1023
`
`1024
`
`1025
`
`BRIEF DESCRIPTION
`Tex. Feb. 11, 2013)
`Jury Instructions in Realtime Data, LLC d/b/a IXO v. T-
`Mobile U.S.A., Inc., No. 6:10-cv-493, Dkt. 659 (E.D.
`Tex. Feb. 11, 2013)
`Trial Transcript Vol. 5 from Realtime Data, LLC d/b/a
`IXO v. T-Mobile U.S.A., Inc., No. 6:10-cv-493(E.D. Tex.
`Feb. 8, 2013)
`Order Granting in Part Plaintiff’s Motion for Judgment
`as a Matter of Law as to Invalidity, Realtime Data, LLC
`d/b/a IXO v. T-Mobile U.S.A., Inc., No. 6:10-cv-49, Dkt.
`662 (E.D. Tex. Mar. 4, 2013)
`U.S. Patent No. 9,054,728 (“the ’728 patent”)
`Memorandum Opinion and Order, Realtime Data, LLC
`d/b/a IXO v. Packeteer, Inc., No. 6:08-cv-144, Dkt. 371
`(E.D. Tex. Jun. 22, 2009)
`Final Judgment, Realtime Data, LLC d/b/a IXO v. T-
`Mobile U.S.A., Inc., No. 6:10-cv-493, Dkt. 664 (E.D.
`Tex. Mar. 28, 2013)
`Decision on Appeal in Blue Coat Systems, Inc. v.
`Realtime Data LLC, Appeal 2012-002371,
`Reexamination Control No. 95/000,479
`(Reserved)
`(Reserved)
`Amendment in U.S. Patent Application No. 10/668,768
`(Aug. 25, 2004)
`Decision to Institute Inter Partes Review of U.S. Patent
`No. 7,378,992 (IPR2016-00373), Paper No. 7 (Jun. 27,
`2016)
`Decision to Institute Inter Partes Review of U.S. Patent
`No. 8,643,513 (IPR2016-00374) Paper No. 7 (Jun. 27,
`vi
`
`
`
`
`
`EX. NO.
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`BRIEF DESCRIPTION
`2016)
`Declaration of Mr. Scott Bennett and Attachments 1a-h
`William Underwood, Extensions of the UNIX File
`Command and Magic File for File Type Identification,
`Technical Report ITTL/CSITD 09-02, Georgia Tech
`Research Institute (Sept. 2009).
`AT&T UNIX® PC UNIX System V User’s Manual,
`Volume 1 (1986)
`File(1): FreeBSD General Commands Manual (Dec. 8,
`2000)
`Decision to Institute Inter Partes Review of U.S. Patent
`No. 8,643,513 (IPR2016-00978) Paper No. 24 (Nov. 1,
`2016).
`(Reserved)
`Declaration of Kenneth A. Zeger, Ph.D. In Support of
`Patent Owner’s Response in IPR2017-00179 (U.S.
`Patent No. 9,054,728)
`Deposition of Kenneth A. Zeger, Ph.D. (Apr. 10, 2017)
`(taken in IPR2016-00972) (excerpts)
`CRFD Research, Inc. v. Dish Network Corp., No. 16-
`2198 (Fed. Cir. Dec. 5, 2017) (precedential slip opinion)
`Deposition of Kenneth A. Zeger, Ph.D. (Nov. 2, 2017)
`and errata sheet (taken in IPR2017-00176, -179, -806, -
`808).
`
`
`
`
`
`
`
`vii
`
`
`
`I.
`
`PRELIMINARY STATEMENT
`
`Franaszek and Hsu disclose all aspects of the challenged claims. This is
`
`uncontested. Patent Owner’s expert admitted in a declaration submitted in another
`
`proceeding concerning a related patent that a POSA would have seen an advantage
`
`in combining teachings of Franaszek and Hsu. That advantage is mirrored in the
`
`Petitionin this proceeding. The only real dispute is whether a POSA would have
`
`arrived at the claimed subject matter.
`
`Patent Owner’s position—that if a POSA were to have combined Franaszek
`
`and Hsu, the POSA would have produced a system that always used content-
`
`dependent compression because some data type would be identified for each block—
`
`is flawed. First, as exemplified by Patent Owner’s diagram showing how a POSA
`
`might “combine Hsu into Franaszek’s Fig. 4A,” POR, 5-6 (emphasis added), Patent
`
`Owner is arguing about what may happen if Hsu’s methods were bodily incorporated
`
`into Franaszek’s preferred embodiment. But obviousness is not an inquiry about
`
`whether (or how) one reference may be bodily incorporated into the structure of
`
`another reference.
`
`Second, Patent Owner misinterprets Dr. Creusere as saying a POSA “would
`
`always” follow a particular path when he merely said a POSA “could” do so. Third,
`
`the evidence shows that a POSA would not have used Hsu to incorrectly characterize
`
`
`
`1
`
`
`
`unknown data types when the data type was not recognized by the system as
`
`reflected in the absence of Franaszek’s type descriptor. Dr. Zeger’s testimony to the
`
`contrary lacks any support in facts or data, and defies good sense. Fourth, Patent
`
`Owner’s theory about how a POSA would have combined Franaszek and Hsu is
`
`based on the flawed legal premise that a POSA would only see one obvious way to
`
`combine prior art teachings.
`
`Finally, Patent Owner incorrectly criticizes Petitioner’s position about the
`
`combination with Sebastian. As a threshold matter, Patent Owner does not dispute
`
`that Franaszek discloses the single default encoder—and Petitioners cited Sebastian
`
`as an alternative disclosure of that limitation. The Board may evaluate the
`
`combination of Franaszek and Hsu and find obviousness because that combination
`
`is encompassed by the instituted Franaszek, Hsu, and Sebastian ground. In any event,
`
`Patent Owner’s arguments about Sebastian are incorrect and contrary to the realities
`
`that a POSA would have recognized using only routine skill.
`
`But even if the Board sides with Patent Owner in its view of the facts, claims
`
`104 and 105 are still invalid. These are method claims written in conditional format.
`
`Only one branch of the recited condition needs to be satisfied to prove invalidity.
`
`Patent Owner argues that Hsu will always identify a data type and is used for every
`
`data block, resulting in the use of content-dependent data compression for every data
`
`
`
`2
`
`
`
`block. Under the PTAB’s precedent, this is sufficient to show that these method
`
`claims are invalid.
`
`Based on the evidence presented in the Petition, admissions by Patent Owner,
`
`and exposed during Dr. Zeger’s cross-examination, claims 104 and 105 should be
`
`cancelled as unpatentable under §103.
`
`II. CLAIMS 104 AND 105 WOULD HAVE BEEN OBVIOUS.
`A.
`Patent Owner’s Expert Agrees There Would Have Been
`Advantages to Using Hsu’s Teachings to Improve Franaszek.
`
`Patent Owner does not contest the Petition’s showing that Franaszek and Hsu
`
`disclose all steps recited in the challenged claims. And, Patent Owner’s expert Dr.
`
`Zeger agreed in IPR proceedings on the related ’728 patent that a POSA would have
`
`seen advantages to combining Hsu and Franaszek. See Ex. 1032, ¶24 (“I also agree
`
`with Dr. Creusere’s testimony that using Hsu [when Franaszek has a data type
`
`descriptor] would help Franaszek ‘pick a better compression technique and get more
`
`compression.’”); Pet., 33-36.
`
`B. Any Remaining Dispute Is Over How Franaszek’s And Hsu’s
`Teachings Would Have Been Combined.
`
`Instead of contesting the teachings of the prior art or whether there were
`
`reasons to combine Franaszek’s and Hsu’s teachings, Patent Owner argues that the
`
`result of any combination of Franaszek and Hsu would not meet the limitations of
`
`claims 104 and 105. Patent Owner’s logic is: (1) when combined with Franaszek,
`3
`
`
`
`
`
`Hsu will always be used to attempt to determine a data type of every data block,
`
`POR, 4-6, (2) when Hsu analyzes the data type of the block, Hsu will always produce
`
`one of the ten data types disclosed by Hsu, POR, 7-11, and (3) because Hsu will
`
`always be used and will always identify one of its ten disclosed data types,
`
`“limitation 104[c] cannot be met,” POR, 11-12.
`
`With respect to claim 105, Patent Owner also contends that Petitioner’s
`
`proposed combination of Franaszek, Hsu, and Sebastian does not show
`
`unpatentability because Sebastian only addresses situations in which an encoder is
`
`“installed” or not, and the combined teachings of the references would lead a POSA
`
`to conclude that there are always encoders associated with known data types.
`
`There are a number of legal and factual problems with Patent Owner’s
`
`argument. As we show below, the prima facie case of obviousness set forth in the
`
`Petition is only further bolstered by the fully-developed record.
`
`C. The Board Should Reject Patent Owner’s Position That the
`Combination of Franaszek and Hsu Would Always Determine a
`Data Type.
`
`Patent Owner’s contention that the Petition fails to establish obviousness
`
`because a POSA would have combined Franaszek and Hsu in a way that would
`
`prevent the “single” or “default” compression steps in claims 104 and 105 from ever
`
`being performed suffers from several problems.
`
`
`
`4
`
`
`
`1.
`
`Patent Owner Makes An Improper Bodily Incorporation
`Argument.
`
`Patent Owner’s real quibble is about what it believes would happen if Hsu
`
`were physically substituted into Franaszek to produce a system (even though the
`
`challenged claims are method claims). This is clear through Patent Owner’s
`
`repeated use of phrases like “combined system,” POR, 1, the “ensuing system,”
`
`POR, 12, “ensuing combination system,” POR, 13, and “incorporat[ing] the data
`
`type analysis approach of Hsu,” POR, 13. It is further cemented by Patent Owner’s
`
`depiction of how a POSA might “combine Hsu into Franaszek’s Figure 4A,” POR,
`
`5-6 (emphasis added) (showing incorporation of Hsu into a process disclosed in
`
`Franaszek). The relevant question, however, is what the teachings of the references
`
`would have suggested to a POSA, not whether one reference may be bodily
`
`incorporated into the structure of another. In re Keller, 642 F.2d 413, 425 (CCPA
`
`1981). Seen for what it really is, Patent Owner’s argument about what would happen
`
`when Hsu is placed into Franaszek should be rejected as a matter of law.
`
`2.
`
`Patent Owner’s Arguments About What a POSA Would
`Have Done Is Based On Misinterpretation of Testimony and
`Misunderstanding Of the Facts.
`
`Patent Owner’s conclusion that a prima facie case of obviousness has not been
`
`made out is predicated on the view that Dr. Creusere testified that, in the asserted
`
`
`
`5
`
`
`
`combination, Hsu would always be used to determine a data type. Patent Owner is
`
`mistaken.
`
`a.
`
`Dr. Creusere Never Testified That Hsu Would Always
`Be Used To Determine a Data Type.
`
`Dr. Creusere testified that in instances in which Franaszek’s optional data type
`
`was missing, “you could then apply Hsu to finding data type . . . .” Ex. 2003, 131:13-
`
`132:15 (emphasis added). Both Patent Owner and its expert conclude that when Dr.
`
`Creusere said that one “could” use Hsu to determine a data type even if Franaszek
`
`lacked a data type, Dr. Creusere meant a person of ordinary skill “would always”
`
`determine some data type with Hsu. POR, 4 (“[A] POSA combining Franaszek with
`
`Hsu would always use Hsu to identify a data type and three redundancy metrics for
`
`each of Franaszek’s data blocks.” (emphasis original)). Dr. Zeger parrots the Patent
`
`Owner Response. See Ex. 2004, ¶22. Both Dr. Zeger and Patent Owner present a
`
`graphical depiction of how they contend Franaszek and Hsu would look when Hsu
`
`is bodily incorporated into Franaszek’s Figure 4A. See id., ¶24; POR, 6.
`
`“Could” does not mean “would always.” Yet, Dr. Creusere’s testimony is the
`
`only evidence Patent Owner cites to support its argument beyond Dr. Zeger’s
`
`opinion the latter of which, which relies exclusively on the same flawed
`
`interpretation of Dr. Creusere’s testimony. See POR, 4-6; Ex. 1035, 59:14-24 (“Q:
`
`Okay. Besides Dr. Creusere’s testimony and your opinion that it makes sense to
`
`
`
`6
`
`
`
`you, is there any other facts or data that you’re relying on to support your conclusion
`
`as to this third opinion that we’ve identified? . . . A: It’s possible there’s something
`
`else in my declaration that directly relates to that. I don’t remember offhand. I mean,
`
`unless I’m forgetting, that’s kind of the main gist of it.”); id., 43:16-44:1 (explaining
`
`that Dr. Zeger’s characterization of Dr. Creusere’s testimony was a “third opinion”);
`
`Ex. 2004, ¶¶23-24 (citing only Dr. Creusere’s deposition testimony).
`
`The evidence relied on by Patent Owner does not support a conclusion that
`
`Hsu would always have been used to identify a data type if a POSA were to have
`
`considered their teachings together. To the contrary, and as Dr. Zeger’s testimony
`
`confirms, there were good reasons a POSA would not have used Hsu’s techniques
`
`on every data block.
`
`b.
`
`Dr. Zeger’s Cross-Examination Testimony Reveals
`Good Reasons Why a POSA Would Not Have Used
`Hsu When Franaszek Lacked a Data Type
`Descriptor.
`
`Dr. Zeger’s declaration testimony that “the POSA would rely on Hsu’s
`
`powerful data type recognition and compressibility analysis approach to identify a
`
`data type and three redundancy metrics for each of Franaszek’s data blocks” is
`
`unsupported by any facts or data, and thus violates the requirements of 37 C.F.R.
`
`§42.65(a). Ex. 2004, ¶23. It is also contradicted by his deposition testimony, which
`
`reveals compelling reasons why a POSA would not use Hsu when Franaszek lacks
`
`
`
`7
`
`
`
`a data type. Rather, Dr. Zeger’s deposition testimony demonstrates that a POSA
`
`would have understood that if Franaszek lacks an indication of data type, using Hsu
`
`would likely result in a determination of the wrong data type.
`
`Dr. Zeger explained that Franaszek might lack a descriptor where the data was
`
`of an unknown type:
`
`Q: . . . What you said was – after you said mislabeled
`“It just was inadvertently left unlabeled. It could be that
`there was no accurate type that was available for it.”
`That’s what you said.
`So, could you explain that for me a little bit more?
`A: That’s basically the situation where it’s an unknown type.
`Ex. 1035, 55:1-13; see also id., 53:24-54:17 (agreeing that Franaszek might not have
`
`a descriptor because the block “might be an unknown data type”). Situations in
`
`which data types are unrecognized are a reality in the field of data compression. Id.,
`
`55:16-22.
`
`A POSA would have seen that relying on Hsu where Franaszek lacks a data
`
`type in its data type field (205) would have been counterproductive. According to
`
`Dr. Zeger, Hsu will always return one of ten data types specified in Hsu—whether
`
`or not the data is actually one of those ten types. See, e.g., Ex. 2004, ¶¶27, 29. When
`
`Hsu receives a block with a data type that is not specified in Hsu’s system, Hsu will
`
`guess at the data type knowing full well that the guess is wrong:
`8
`
`
`
`
`
`Q: So would it be fair to say that when Hsu encounters a data block
`that doesn’t, you know, contain one of the classes of data that are
`spelled out here, it will do its best to classify it as one of these types,
`but it might be wrong?
`A: That’s generally the way any kind of recognition algorithm works.
`That’s how – anything that’s trying to tell you what category
`something fits in or any type of pattern matching will tell you that –
`its best guess form among a predefined set of values. And in this
`case there’s ten different types, and Hsu would try to give you its
`best guess. . . . .
`Ex. 1035, 97:18-98:9. When asked about how Hsu would handle “randomized data”
`
`(a type not specified by Hsu), Dr. Zeger testified that Hsu would classify that data
`
`into one of Hsu’s ten types—even though it would be wrong. Id., 98:10-25. The
`
`same wrong guess would occur with video data (a type also not specified by Hsu).
`
`Id., 95:25-97:17. Dr. Creusere acknowledged that Hsu may “guess the file type
`
`regardless of whether the guess was made confidently or not.” Ex. 1002, ¶65.
`
`Using Hsu to provide the wrong data type has adverse consequences when
`
`viewed in combination with a POSA’s understanding of Franaszek. A POSA would
`
`have understood that Franaszek’s data type is missing when the file type is unknown.
`
`Ex. 1035, 53:1-13, 53:24-54:17; Ex. 1002, ¶131 (Franaszek uses a “default” encoder
`
`to compress “a data block having an unknown data type”). Under Dr. Zeger’s view
`
`of Hsu, a POSA would have been left with a binary choice when a data type is
`9
`
`
`
`
`
`unrecognized: (1) use Hsu to guess at the data type knowing it would be wrong and
`
`use Franaszek’s encoders tailored to the wrong data type, contrary to Franaszek’s
`
`teachings, see Ex. 1004, 5:49-54, or (2) use Franaszek’s “default list of compression
`
`methods,” which a POSA would have understood to be designed for use when “no
`
`data type is available,” see id., 5:53-54. Rather than apply Hsu knowing it would
`
`arrive at the wrong result, a POSA would have found it obvious to use the tool meant
`
`for unknown data types—i.e., Franaszek’s single default encoder. Patent Owner’s
`
`argument to the contrary should be rejected.
`
`c.
`
`Patent Owner’s Theory Rests On The Unstated And
`Legally-Unsupported Assumption That A POSA
`Would Have Only Seen One Obvious Way To
`Combine Prior Art Teachings.
`
`Patent Owner presupposes that a POSA would have only seen one obvious
`
`variation on the prior art. The law does not require a showing that a combination of
`
`prior art teachings is the most obvious way to combine teachings. Nor does the law
`
`require proof that a POSA would not have seen other obvious ways to combine
`
`teachings. Graham does not require seeking out those facts. See Graham v. John
`
`Deere, 383 U.S. 1, 17 (1966). When addressing the concept of teaching away
`
`(something Patent Owner does not rely on here), the Federal Circuit has explained
`
`that “just because better alternatives exist in the prior art does not mean that an
`
`
`
`10
`
`
`
`inferior combination is inapt for obviousness purposes . . . .” In re Mouttet, 686 F.3d
`
`1322, 1333-34 (Fed. Cir. 2012).
`
`To accept the premise underlying Patent Owner’s argument is to turn a blind
`
`eye to variations on the prior art that would have been obvious to those in the field—
`
`even if perhaps not the most obvious variations. This would unseat §103 from its
`
`role in ensuring patents satisfy their constitutional purpose. Graham, 383 U.S. at 5-
`
`17 (“Congress may not authorize the issuance of patents whose effects are to remove
`
`existent knowledge from the public domain . . . .”). Acceptance of Patent Owner’s
`
`“if-then” proposition would allow patents on “advances that would occur in the
`
`ordinary course without real invention,” thereby “retard[ing] progress . . . ,” KSR
`
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Showing one variant of the prior
`
`art would also have been obvious does not detract from a showing that a different
`
`variant on the prior art would also have been obvious.
`
`Here, Patent Owner’s position that a POSA presented with Franaszek and Hsu
`
`would have used Hsu (if at all) all of the time, does not lead to the conclusion that a
`
`POSA would not also have found it obvious to apply Hsu only when Franaszek’s
`
`data blocks have data type information. Indeed, the fully developed record supports
`
`the analysis presented in the Petition, i.e., that using Franaszek’s type descriptors
`
`
`
`11
`
`
`
`along with Hsu’s method would help Hsu more quickly identify applicable data
`
`types. Pet., 33-36.
`
`d.
`
`The Challenge Presented In The Petition Does Not
`Turn On Whether Hsu “Always Identifies a Data
`Type.”
`
`Patent Owner makes much of its conclusion that Hsu will always classify a
`
`data block as one of the types listed out in Hsu’s Table 1. POR, 7-11. But Dr.
`
`Creusere explained that his opinion would be unchanged whether or not Hsu works
`
`this way. Specifically, in his declaration, Dr. Creusere observed that a POSA “would
`
`have understood Hsu’s ‘new file’ to be implemented in one of two possible
`
`manners”: (1) it could return “data” if “matches are not found to existing data types,”
`
`or (2) it could “attempt to guess the file type regardless of whether the guess was
`
`made confidently or not.” Ex. 1002, ¶65. Guessing, Dr. Creusere noted, has “a
`
`number of downsides.” Id. But, at bottom, Dr. Creusere determined that regardless
`
`of which approach a POSA would have understood from Hsu, it is not “material to
`
`my opinions regarding the obviousness of the subject matter of the claims.” Id.
`
`Hsu may return an indication that the data type is unknown or may incorrectly
`
`determines a data type for data types that are not on Hsu’s list. It does not matter.
`
`There is no question that—regardless of which view of the facts is taken—the
`
`combined teachings of Franaszek and Hsu present a POSA with “a finite number of
`
`
`
`12
`
`
`
`identified, predictable solutions”
`
`to
`
`the known problem of compressing
`
`heterogeneous files. See KSR, 550 U.S. at 421. A “person of ordinary skill has good
`
`reason to pursue the known options within his or her technical grasp” by using only
`
`Franaszek’s encoder intended for unknown data types, and not Hsu’s techniques
`
`when a data type cannot reliably be determined. See id. Nothing in the Petition or
`
`Dr. Creusere’s testimony suggests that a POSA would believe that every aspect of
`
`Hsu’s methodology would always be used to evaluate every data block and return
`
`one of the ten specified data types.
`
`D.
`
`Patent Owner’s Criticisms Of The Combination of Franaszek and
`Sebastian Are Not Well-Founded.
`
`Patent Owner offers a number of critiques of the combination of Franaszek
`
`and Sebastian. We respond to the merits of those critiques in the sections that follow,
`
`but we first note that addressing the merits of those criticisms is unnecessary to
`
`support a conclusion of obviousness.
`
`1.
`
`Reliance On Sebastian Is Not Needed To Support A
`Conclusion of Obviousness Because The Instituted
`Combination Of Franaszek, Hsu, And Sebastian
`Encompasses Franaszek And Hsu.
`
`Before we turn to showing why Patent Owner’s challenges to the combination
`
`of Franaszek and Sebastian are not well-founded, we first show that the Board need
`
`not even reach those issues in its Final Written Decision.
`
`
`
`13
`
`
`
`The Petition demonstrated that Franaszek disclosed the limitation “wherein if
`
`one or more encoders are associated . . . .” See Pet., 39-41 (quoting Ex. 1001 (Cert.),
`
`2:57-60). Patent Owner has not disputed Petitioner’s showing that Franaszek
`
`discloses this limitation (which Patent Owner calls [d1] and [d2]). The Petition
`
`presents Sebastian as an alternative argument in case Patent Owner attempted to
`
`show (incorrectly) that Franaszek lacks a single or default encoder. Pet., 29-31.
`
`Patent Owner and its expert acknowledged that the Petition presents Sebastian as an
`
`“alternative” theory for the “single” and “default” limitations of claims 104 and 105.
`
`But, they did not contend that Franaszek lacks a single default encoder.
`
`As laid out in the Petition, the combination of Franaszek, Hsu, and Sebastian
`
`encompasses the combination of Franaszek and Hsu. While the Board exercised its
`
`discretion and denied institution based on Franaszek and Hsu alone for efficiency
`
`reasons, see Inst. Dec., 18-19, the analysis of Franaszek and Hsu was intertwined
`
`with the alternative argument based on Franaszek, Hsu, and Sebastian. Barring
`
`Petitioners from pursuing a ground raised in the Petition and was “expressly
`
`incorporated into other proposed grounds of unpatentability on which the Board
`
`instituted would . . . unfairly prejudice” Petitioners. CRFD Res., Inc. v. Dish
`
`Network Corp., No. 2016-2198, Slip op., p.29 (Fed. Cir. Dec. 5, 2017) (Ex. 1034).
`
`At least one Board decision further confirms that the Board need not reach
`
`
`
`14
`
`
`
`Sebastian’s teachings to find the challenged claims obvious. Mobotix Corp. v. E-
`
`Watch, Inc., IPR2013-00334, Paper 18 (PTAB Jan. 10, 2014) (where trial instituted
`
`on three-way combination of references “Petitioner is free to prove the obviousness
`
`of claims 1-10 based on” one reference alone); cf. Application of Kronig, 539 F.2d
`
`1300, 1302-03 (CCPA 1976) (affirming Board obviousness rejection based on three
`
`references where examiner relied on four reference combination because three
`
`reference combination was not a new grounds of rejection). Nonetheless, the
`
`combination of Franaszek, Hsu, and Sebastian renders claims 104 and 105 obvious
`
`as described in the Petition.
`
`2.
`
`Petitioners Have Provided “Actual Evidence” In Support
`Of Their Positions In The Form Of Declarations And
`Documents.
`
`While Patent Owner contends that “Petitioners do not provide actual evidence
`
`that a POSA would have reason to believe that Franaszek’s system will ever fail to
`
`associate at least one encoder with an identified data type,” POR, 15, that argument
`
`ignores Dr. Creusere’s opinions and the documents he cites. See Pet., 42-43 (citing
`
`Ex. 1002, ¶¶65, 146, 174-177 to explain why a POSA would have understood that
`
`data might arrive in Franaszek’s system and not be recognized by that system). Dr.
`
`Creusere explains how in the 1998-2001 timeframe, “those skilled in the art were
`
`aware that the number of different data types was increasing,” and how the UNIX
`
`
`
`15
`
`
`
`“magic file” was “created as part of the ‘file’ command” to address the increase in
`
`the number of data file types. Ex. 1002, ¶175; see also id., ¶¶65, 147 (discussing
`
`UNIX “magic file”). Dr. Creusere further explains that “in some circumstances
`
`Franaszek may not be able to understand the particular type . . . .” Id., ¶176. Dr.
`
`Zeger testified that he encountered systems that did not know data types too. Ex.
`
`1035, 55:16-19, 77:14-18. Testimony is “actual evidence.” So are the documents
`
`Dr. Creusere cites. See, e.g., Ex. 1002, ¶¶65, 146, 171-77; Ex. 1027; Ex. 1028; Ex.
`
`1029.
`
`3.
`
`Dr. Zeger’s Opinions About The Combination With
`Sebastian Ignore The Facts And Are Conclusory.
`
`Patent Owner’s reliance on Dr. Zeger’s conclusion that a POSA would have
`
`understood that Franaszek would never fail to associate an encoder with an identified
`
`data type does not help Patent Owner’s cause. POR,
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