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`Paper No. 6
`Filed: February 28, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`MICROSOFT CORPORATION
`Petitioner
`
`v.
`
`PROXYCONN, INC.
`Patent Owner
`____________
`
`Case IPR2017-00261
`Patent 6,757,717
`____________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
`[NON-CONFIDENTIAL VERSION]
`
`
`
`
`
`
`
`
`
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`
`
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`I.
`II.
`
`INTRODUCTION .......................................................................................... 1
`BACKGROUND ............................................................................................ 1
`A.
`The ’717 Patent. ................................................................................... 1
`B.
`Prior IPR and Litigation History. ......................................................... 2
`C. Key Terms of the Tolling Agreement. ................................................. 5
`D.
`Petitioner’s Asserted Grounds of Unpatentability. .............................. 6
`III. CLAIM CONSTRUCTION ........................................................................... 6
`IV. THE PETITION IS TIME-BARRED UNDER 35 U.S.C. § 315(B) .............. 7
`PETITIONER FAILS TO SHOW A REASONABLE LIKELIHOOD
`V.
`OF SUCCESS ON GROUNDS 3 OR 4 ....................................................... 10
`The Asserted Prior Art Does Not Disclose Transmitting
`A.
`“Digital Digests” of “One or More Auxiliary Data” from the
`Sender/Computer to the Receiver/Computer, as Required by
`Claims 17, 19, 20, and 21. .................................................................. 10
`The Asserted Prior Art Does Not Disclose Receiving a Message
`that Contains Both a “Principal Digital Digest” of “One or
`More Auxiliary Digital Digests” as Required by Claims 25, 26,
`and 27. ................................................................................................ 12
`VI. CONCLUSION ............................................................................................ 14
`
`B.
`
`
`
`i
`
`

`

`TABLE OF AUTHORITIES
`
`Page
`
`
`Cases
`Apple Inc. v. Rensselear Polytechnic Inst.
`Case IPR2014-00319, Paper 12, 2014 WL 2735064 (PTAB June 12, 2014) ....... 9
`
`
`Atl. Gas Light Co. v. Bennett Regulator Guards
`Case IPR2015-00826, Paper 12, 2015 WL 5159438 (PTAB Sept. 1, 2015) ........ 8
`
`
`Biodelivery Sciences Int’l v. Monsoon Rx, LLC
`Case IPR2013-00315, Paper 31, 2013 WL 8563948 (PTAB Nov. 13, 2013) ....... 7
`
`
`CQG, Inc. v. Trading Techs. Int’l, Inc.
`Case CBM2015-00057, Paper 13, 2015 WL 4467376 (PTAB July 10, 2015) ..... 8
`
`
`eBay, Inc. v. Advanced Auctions LLC
`Case IPR2014-00806, Paper 14, 2014 WL 4854768 (PTAB Sept. 25, 2014) ...... 9
`
`
`Histologics, LLC v. CDX Diagnostics, Inc.
`Case IPR2014-00779, Paper 6, 2014 WL 4629057 (PTAB Sept. 12, 2014) ........ 9
`
`
`LG Electronics, Inc. v. Mondis Tech. Ltd.
`Case IPR2015-00937, Paper 8, 2015 WL 9699396 (PTAB Sept. 17, 2015) .... 7, 8
`
`
`Microsoft Corp. v. Proxyconn, Inc.
`789 F.3d 1292 (Fed. Cir. 2015) ............................................................................. 4
`
`
`Microsoft Corp. v. Virnetx, Inc.
`Case IPR2014-00401, Paper 10, 2014 WL 3704255 (PTAB July 23, 2014) ........ 8
`Statutes
`35 U.S.C. § 315 ............................................................................................. 1, 7, 8, 9
`
`35 U.S.C. § 325 ......................................................................................................... 8
`
`Fed. R. Civ. P. 41 ...................................................................................................... 5
`
`
`
`ii
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`

`

`EXHIBITS
`
`Exhibit No.
`
`Descri 0 tion
`
`Exhibit 2001
`
`Exhibit 2002
`
`Proof of Service of Complaint in Case No. SACVll-l681 upon
`Microsoft Corporation
`Joint Stipulation Requesting Stay of Case Pending Inter Partes
`Review, filed Nov. 2, 2012 in Case No. SACVl 1-1681
`
`
`
`Exhibit 2003
`
`Joint Request for a Status Conference and Report, filed Jan. 8,
`2013 in Case No. SACV11-1681
`
`Exhibit 2004 Order Granting Defendants’ Motion to Dismiss, dated May 16,
`2012 in Case No. SACVl 1—1681
`
`Confidential
`Exhibit 2005
`
`Tolling Agreement, dated January 22, 2013
`
`iii
`
`

`

`
`
`I.
`INTRODUCTION
`More than five years passed between when Microsoft was first served with a
`complaint alleging infringement of the ’717 Patent and when Microsoft filed the
`Petition in this action. During those five years, Microsoft filed two previous IPR
`Petitions, which were combined and fully prosecuted through institution, trial, final
`written decision, appeal, and remand. As those IPR proceedings played out, the
`parties agreed to put their district court litigation on hold, pursuant to a Tolling
`Agreement. Once the IPR proceedings were complete, the district court litigation
`resumed, as the parties had contemplated.
`Now, Microsoft seeks to return to the IPR well for a third time, increasing
`the costs of litigation to Proxyconn and potentially further delaying a final
`resolution that has already been delayed long enough. This untimely Petition is
`barred by 35 U.S.C. § 315(b), and it should be denied institution on that basis. As
`Congress dictated in crafting the statute governing IPRs, the time for bringing IPRs
`challenging a patent is limited to one year after a litigation is filed. After the
`expiration of that time, the issues that remain must be decided in district court.
`Even if the Petition were not barred by § 315(b), it should be denied with
`respect to at least grounds 3 and 4, because Microsoft has failed to establish a
`reasonable likelihood of prevailing on these grounds.1
`II. BACKGROUND
`A. The ’717 Patent.
`As explained in further detail below, the ’717 Patent has been extensively
`considered by the Board and by the Federal Circuit. The Board has provided a
`summary of the patent (Ex. 1008 at 3-7), as has the Federal Circuit (Ex. 1010 at 3-
`
`1 While Proxyconn does not address grounds 1 and 2 in this preliminary response,
`it reserves the right to do so at trial, should the Board institute a proceeding on
`either ground.
`
`
`
`1
`
`

`

`
`
`5), so there is no need for Proxyconn to provide yet another summary of the patent
`in this preliminary response.
`However, it is important to note something that is absent from the ’717
`Patent or its claims. Microsoft devotes a large portion of its Petition to introducing
`three “scenarios” for redundant data, which it calls: (1) “Same Content Different
`Name,” (2) “Same Name Different Content,” and (3) “Overlapping Content.”
`(Petition at 9-20.) Microsoft then argues that the prior art it relies upon addressed
`each of these three “scenarios.” (Id.) This concept of three scenarios cannot be
`found in the disclosure of the ’717 Patent or in its claims. It appears to have
`originated with Microsoft or with its expert. Microsoft should not be permitted to
`introduce its “three scenarios” caricature of the ’717 Patent and then argue the
`patent is invalid because the elements of this caricature can be found in prior art.
`Rather, Microsoft must show that the actual elements of each claim are disclosed
`or rendered obvious by the prior art. As explained in further detail below,
`Microsoft has failed to do so in its Petition.
`B. Prior IPR and Litigation History.
`As Microsoft acknowledges in its Petition, Proxyconn brought suit against
`Microsoft on November 3, 2011, alleging that Microsoft infringed the ’717 Patent.
`Microsoft was served with the complaint in that action on November 4, 2011. (Ex.
`2001.) In the more than five years since Microsoft was served with this complaint,
`Proxyconn and Microsoft have litigated issues related to Proxyconn’s allegations
`of infringement before the Central District of California, before the Board, and
`before the Federal Circuit. The parties are currently still litigating allegations
`raised in the November 2011 complaint in litigation that is pending in the Central
`District of California. On May 16, 2012, the district court granted a motion to
`dismiss that was brought by the defendants. (Ex. 2004.) This dismissal was
`
`
`
`2
`
`

`

`
`
`without prejudice as to certain of Proxyconn’s claims, but it was with prejudice as
`to other claims. (Id. at 10-11.)
`In response to Proxyconn’s November 2011 complaint, Microsoft brought a
`petition for Inter Partes Review, which it filed on September 18, 2012 (IPR2012-
`00026). Microsoft also informed Proxyconn that it wished to file a second petition
`for Inter Partes Review, challenging additional claims, once the Board determined
`whether to institute the first IPR proceeding. (See Ex. 2002 at 1-2.)
`The parties then reached a deal “to conserve both the parties and the Court’s
`resources.” (Ex. 2002 at 2:11-12.) The parties stipulated that they would jointly
`request that the district court stay the litigation, pending the resolution of
`Microsoft’s two IPR petitions, and that Proxyconn would waive its preliminary
`response to the first petition. (Ex. 2002 at 2.) Contingent on the district court
`granting the stay, the parties agreed to additional terms, including that Proxyconn
`would waive its preliminary response to the second petition and would not oppose
`joinder of the two IPR proceedings (in spite of the fact that the second petition was
`to be filed more than a year after the complaint in the district court action was
`served), and that the Microsoft customers who were parties to the district court
`action would agree to be estopped by the IPR proceedings to the same extent as
`Microsoft. (Ex. 2002 at 2-3.) The parties filed the agreed joint stipulation to stay
`on November 2, 2012. (Ex. 2002.) The district court declined to act on this joint
`stipulation to stay.
`On December 21, 2012, the Board instituted trial in IPR2012-00026 on a
`subset of the challenged claims. On January 8, 2013, as Microsoft was preparing
`to file its second IPR petition, the parties filed a Joint Request for a Status
`Conference and Report, seeking to encourage the district court to act on the joint
`stipulation to stay. (Ex. 2003.) On January 11, 2013, Microsoft filed its second
`IPR petition (IPR2013-00109).
`
`
`
`3
`
`

`

`
`
`The district court continued to take no action on the joint stipulation to stay.
`As the parties still wished “to conserve both the parties and the Court’s resources”
`by pausing further litigation in district court until the IPR proceedings were
`resolved, they decided to achieve the effect of their desired stay without court
`action. On January 22, 2013, they entered into a Tolling Agreement (Ex. 2005),
`and on that same date they filed a Joint Stipulation of Voluntary Dismissal Without
`Prejudice (Ex. 1012). In a recital to that Tolling Agreement, the parties explained
`its purpose was to implement the agreement represented by the joint stipulation to
`stay: “The Parties desire to enter into a Tolling Agreement consistent with the
`terms of the Stipulation.” (Ex. 2005.)
`Proxyconn acted in accordance with its obligations under the joint
`stipulation to stay. On January 24, 2013, it filed a waiver of its preliminary
`response in the second IPR (IPR2013-00109, Paper 13), and it did not oppose
`joinder. The Board instituted trial in the second IPR and joined the two IPR
`proceedings.
`On February 19, 2014, the Board issued a final written decision in the joined
`proceedings. (IPR2012-00026, Paper 73; IPR2013-00109, Paper 16.) Microsoft
`appealed this decision to the Federal Circuit, which issued an opinion on June 16,
`2015 affirming-in-part, reversing-in-part, vacating-in-part, and remanding the case
`to the Board. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015).
`The Board issued its decision on remand on December 9, 2015. (IPR2012-00026,
`Paper 80; IPR2013-00109, Paper 20.) The net result of Microsoft’s first two IPR
`petitions was that claims 1, 3, 6, 7, 9-12, 14, and 22-23 were determined to be
`unpatentable, and that claim 24 was determined to be patentable.
`On June 14, 2016, Proxyconn exercised its rights under the Tolling
`Agreement to file a new complaint against Microsoft and Microsoft customers,
`
`
`
`4
`
`

`

`
`
`lifting the “stay” that the parties had achieved through their Tolling Agreement and
`resuming the district court litigation that had first started in 2011.
`On November 15, 2016, more than five years after it was first served with a
`complaint alleging infringement of the ’717 Patent, Microsoft filed the present IPR
`petition. While the parties had sought to conserve resources by resolving the IPR
`issues before litigating further in district court, they are now faced with the cost
`and complexity of litigating an IPR proceeding and district court lawsuit in
`parallel.
`
`C. Key Terms of the Tolling Agreement.
`The Tolling Agreement contains a number of terms that together achieved
`the parties’ stated goal of an agreement “consistent with the terms of” their prior
`agreement to stay the district court action.
`
`
`
`
`
`
`
`
`
`
`
`
`
`5
`
`

`

`>|U! 0 H5 H:7“(D '—4gs:
`
`5 [\J JN N O p—l U.) Q.33H('D OH? H5
`
`Tolling Agreement, the one-year deadline for Microsoft to bring an IPR petition
`
`had already expired.
`
`D.
`
`Petitioner’s Asserted Grounds of Unpatentability.
`
`Petitioner challenges claims 15-17, 19-21, and 25—27 of the ’717 Patent on
`
`four grounds:
`
`m D
`
`
`
`RP Ex.1005
`DRP and Williams EX. 1002
`DRP and Mattis Ex. 1006
`DRP and Mattis and Williams
`
`§103
`
`§ 103
`
`17, 19, 20
`21, 25—27
`
`Ill. CLAIM CONSTRUCTION
`
`The Petition sets forth claim constructions that have previously been adopted
`
`by the Board and Federal Circuit for claims of the ’717 Patent. (Petition at 29-30.)
`
`Proxyconn does not believe that it is necessary to construe any further claim terms
`
`to determine whether trial should be instituted in this matter.
`
`

`

`
`
`IV. THE PETITION IS TIME-BARRED UNDER 35 U.S.C. § 315(B)
`Under 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if
`the petition requesting the proceeding is filed more than 1 year after the date on
`which the petitioner, real party in interest, or privy of the petitioner is served with a
`complaint alleging infringement of the patent.” It is undisputed that the petitioner
`in this proceeding, Microsoft, was served with a complaint alleging infringement
`of the ’717 Patent in 2011, more than five years before the petition in this
`proceeding was filed. Under the unambiguous terms of the statute, an IPR cannot
`be instituted in this case.
`What matters for the purposes of § 315(b) is whether infringement “of the
`patent” is alleged in the complaint, not whether it identifies any of the specific
`claims challenged in the subsequent IPR petition, or even whether those claims
`existed as part of the patent when the complaint was served. Biodelivery Sciences
`Int’l v. Monsoon Rx, LLC, Case IPR2013-00315, Paper 31 at 3, 2013 WL 8563948,
`at *1-2 (PTAB Nov. 13, 2013) (finding that § 315(b) barred petition even though
`challenged claims were added in reexamination after the complaint was filed).
`Further, the one-year deadline of § 315(b) is not reset by the subsequent
`filing of an additional complaint. LG Electronics, Inc. v. Mondis Tech. Ltd., Case
`IPR2015-00937, Paper 8 at 5, 2015 WL 9699396, at *2 (PTAB Sept. 17, 2015)
`(precedential) (“We decline LG’s invitation to amend § 315(b) by inserting either
`‘latest’ or ‘second’ into the statute. . . . This statute prohibits institution of an inter
`partes review if the petition is filed more than one year after the date a petitioner is
`served with ‘a’ complaint.”)
`Microsoft’s Petition argues that the clear prohibition of § 315(b) does not
`apply due to a judge-created exception for cases where the underlying litigation
`has been dismissed without prejudice. E.g., Atl. Gas Light Co. v. Bennett
`Regulator Guards, Inc., Case IPR2015-00826, Paper 12 at 13, 2015 WL 5159438,
`
`
`
`7
`
`

`

`
`
`at *7 (PTAB Sept. 1, 2015) (the effect of dismissing an entire case without
`prejudice is to “restore[ the] ability of parties to pursue courses of action available
`to them before the action had been brought,” and the earlier complaint can be
`disregarded for the purposes of § 315(b)). The basis for this exception is the legal
`fiction that a dismissal without prejudice leaves the parties as if the litigation had
`never been filed. Id. This exception does not apply here.
`First, unlike the cases that Microsoft relies on, the original 2011 complaint
`was dismissed both with prejudice and without prejudice. (Ex. 2004 at 10-11.) In
`an opinion that has been designated precedential, the Board has determined that
`when a complaint has been dismissed both with prejudice and without prejudice,
`that complaint continues to trigger the § 315(b) one-year bar, because it does not
`leave the parties as if the action had never been brought. LG Electronics, Case
`IPR2015-00937, Paper 8 at 6, 2015 WL 9699396, at *3 (precedential) (citing
`Microsoft Corp. v. Virnetx, Inc., Case IPR2014-00401, Paper 10 at 6-7, 2014 WL
`3704255, at *4 (PTAB July 23, 2014)).
`Second, a dismissal without prejudice can still trigger the § 315(b) one-year
`bar. The Board has explained that “[t]reating a case dismissed without prejudice as
`if it never existed . . . depends on the circumstances surrounding the dismissal.”
`CQG, Inc. v. Trading Techs. Int’l, Inc., Case CBM2015-00057, Paper 13 at 8, 2015
`WL 4467376, at *4 (PTAB July 10, 2015) (interpreting § 325(a)(1) and finding
`that a complaint dismissed without prejudice was effective to trigger that provision
`when the parties had agreed the claims in that action could proceed in another
`action). Here, the parties expressly agreed to dismiss the original 2011 litigation
`only after the Court refused to stay the litigation. The purpose of the dismissal
`without prejudice was as an alternative to a stay so that the parties could conserve
`resources. As a result of the Tolling Agreement, the instant litigation picks up
`where the previous litigation left off; it is not as if the previous litigation never
`
`
`
`8
`
`

`

`
`
`occurred. See, e.g. , Histologics, LLC v. CDX Diagnostics, Inc., Case IPR2014-
`00779, Paper 6 at 5, 2014 WL 4629057, at *3 (PTAB Sept. 12, 2014) (finding a
`petition time barred where “the parties are not left in the same legal position as if
`the ’612 action had never been filed.”). For example,
`
`. Apple Inc. v.
`Rensselear Polytechnic Inst., Case IPR2014-00319, Paper 12 at 7, 2014 WL
`2735064, at *4-5 (PTAB June 12, 2014) (applying Third Circuit law concerning
`when a filing of a complaint tolls the statute of limitations in determining whether
`a similar complaint triggers § 315(b).) As another example,
`
`
`
`. See eBay, Inc. v. Advanced Auctions LLC, Case IPR2014-
`00806, Paper 14 at 8, 2014 WL 4854768, *5 (PTAB Sept. 25, 2014) (finding that
`§ 315(b) applied where discovery and relevant orders were reused in the
`subsequent litigation).
`The November 3, 2011 complaint should thus be treated as a triggering
`event for § 315(b) purposes. Microsoft should not be permitted to take advantage
`of the fact that the district court declined to enter a stay on the schedule that the
`parties had anticipated and that the parties thus had to achieve the effects of a stay
`through their Tolling Agreement.
`Treating the November 3, 2011 complaint as a triggering event also furthers
`the intent of § 315(b) because it encourages a defendant to bring all of their IPR
`challenges against a patent in a reasonable time after being sued, rather than
`bringing new challenges to the patent piecemeal over the course of many years. In
`cases where a complaint is dismissed entirely without prejudice and where the
`defendant has no indication that a new complaint will ever be filed, it may be
`reasonable to adopt a rule that the complaint that is dismissed without prejudice
`does not trigger § 315(b). Otherwise, defendants will face a choice between filing
`
`
`
`9
`
`

`

`
`
`an IPR petition when there is no case pending against them or waiting to see
`whether a new complaint is filed, by which time the one-year deadline may have
`passed.
`That concern—that defendants might feel compelled to file IPR petitions
`after the patent owner has already decided not to pursue a case against them—is
`simply not relevant to the current case. Microsoft did not have to decide whether
`to file an IPR after the dismissal without prejudice. Rather, Microsoft had already
`filed two IPR petitions, which it prosecuted vigorously, through appeal to the
`Federal Circuit and remand. And Microsoft had every reason to expect—based
`upon the parties’ agreements—that the district court litigation would resume if
`claims survived the IPR proceedings. There is no legitimate policy aim to be
`served by permitting Microsoft yet another opportunity to challenge the ’717
`Patent via Inter Partes Review at such a late date.
`
`V.
`
`PETITIONER FAILS TO SHOW A REASONABLE
`LIKELIHOOD OF SUCCESS ON GROUNDS 3 OR 4
`
`A. The Asserted Prior Art Does Not Disclose
`Transmitting “Digital Digests” of “One or More
`Auxiliary Data” from the Sender/Computer to the
`Receiver/Computer, as Required by Claims 17, 19, 20,
`and 21.
`Challenged independent claim 17 contains the limitation “creating and
`transmitting digital digest of said principal data and of one or more auxiliary data
`from said sender/computer to said receiver/computer.” Claims 19, 20, and 21
`depend on claim 17 and thus contain the same limitation. The sole prior art
`reference that Microsoft relies upon for this limitation is DRP. (Petition at 39-41,
`46-47.)
`
`
`
`10
`
`

`

`
`
`The Petition identifies the “server” in DRP as the “sender/computer” of
`claim 17, and it identifies the “receiver” in DRP as the “receiver/computer” of
`claim 17, stating that “DRP discloses the server creating (calculating) MD5 digests
`on every file in the server (or selected files) and transmitting those to the receiver
`(client) inside an ‘index file’ . . . .” (Petition at 39.) Thus, to satisfy this limitation,
`Microsoft must point to some disclosure in DRP of “digital digests” of “one or
`more auxiliary data” being transmitted from the DRP server to the DRP receiver.
`The only alleged evidence of transmitting digital digests for auxiliary data in
`DRP that Microsoft points to is a transmission in the wrong direction, from the
`receiver to the server. (Petition at 40 (identifying “a receiver’s Different GET
`request for the home.html data file” (emphasis added)); Ex. 1005 at 8:14-27.) This
`transmission from the receiver to the server contains two MD5 hash values, one
`labeled “Content-ID” and the other labeled “Differential-ID.” (Id.) Microsoft
`alleges that the “Content-ID” value is a digital digest of principal data, and the
`“Differential-ID” value is a digital digest of auxiliary data. (Petition at 40-41.)
`But Microsoft’s Petition does not allege—let alone demonstrate—that DRP
`teaches that the “Differential-ID” value (the alleged digital digest of auxiliary data)
`is one that was sent from the server (sender/computer) to the receiver
`(receiver/computer), as required by claim 17 and its children. The Petition cites
`evidence that the “Content-ID” value (the alleged digital digest of principal data)
`was previously sent from the server to the receiver: “The data fingerprint for the
`desired, updated, version of the home page [i.e., the ‘Content-ID’ value] is the one
`the server earlier sent to the client as part of an index file. . . . DRP also gives an
`example of the receiver requesting that same, desired version of the home.html file
`with a GET request.” (Petition at 40.) But, the Petition is devoid of any similar
`assertion or evidence that the “Differential-ID” (or any other alleged digital digest
`of auxiliary data) was ever sent from the server to the receiver. Indeed, DRP
`
`
`
`11
`
`

`

`
`
`explains that the server may not even have access to the version of the file that
`corresponds to the Differential-ID: “If the server does not have access to the
`version of the file that is indicated by the differential content identifier, it can
`ignore the differential content identifier, and return the entire requested file.” (Ex.
`1005 at 8:32-33.) In that case, the server presumably could not “creat[e] and
`transmit[]” that Differential-ID to the receiver.
`Because Microsoft’s Petition fails to cite evidence that DRP (or any other
`reference) discloses sending a digital digest of auxiliary data from
`the
`sender/computer to the receiver/computer, and because it fails to offer any
`argument that this limitation is obvious, Microsoft has failed to demonstrate a
`reasonable likelihood of success with respect to claims 17, 19, 20, and 21, and
`institution on these claims should be denied.
`B. The Asserted Prior Art Does Not Disclose Receiving a
`Message that Contains Both a “Principal Digital
`Digest” of “One or More Auxiliary Digital Digests” as
`Required by Claims 25, 26, and 27.
`The first step of challenged independent claim 25 requires receiving a
`message that contains both “a principal digital digest” and “one or more auxiliary
`digital digests.” It further requires that “said auxiliary digital digests are correlated
`to data objects similar to the data object represented by said principal digest.”
`Claims 26 and 27 depend from claim 25 and thus contain the same limitations.
`For this step, Microsoft’s Petition points to both the DRP and Williams
`references. For DRP, Microsoft asserts that the index file received by the client
`from the server is the required message. (Petition at 50.) As evidence that these
`index files contain both principal and auxiliary digital digests, Microsoft simply
`asserts that “because a DRP server computer maintains in its file system two or
`more ‘similar’ versions (with different names) of the same file, DRP clients
`
`
`
`12
`
`

`

`
`
`perform this step each time the client receives an index file of the entire server’s
`file system files.” (Petition at 50.) But, the Petition cites to nothing in DRP that
`discloses this. There is nothing in the DRP reference that suggests a single index
`file will contain digital digests for multiple “similar” versions of the same file. To
`the contrary, the goal of the DRP protocol is to keep data at the client “up-to-date”
`(Ex. 1005 at 2:26), and to that end, “[a]n index is a snapshot of the state of a set of
`files at a particular moment in time.” (id. at 4:39). Nothing in DRP suggests that
`the index file would contain digital digests for old, out-of-date versions of files
`alongside the current, up-to-date versions.
`As for Williams, Microsoft states that its MD5 and CRC-128 “subblock
`fingerprints” are not digital digests as defined in the ’717 Patent. (Petition at 51.)
`Nonetheless, Microsoft appears to rely upon these non-digital-digest fingerprints as
`the principal and auxiliary digital digests required by claims 25-27. In particular,
`Microsoft points to the disclosure of sending fingerprints for all subblocks of a data
`block together to the receiver. (Id.) However, merely sending multiple digital
`digests (or non-digital-digest fingerprints) together is not sufficient to meet the first
`step of claim 25. Rather, a single message must contain a principal digital digest
`along with at least one auxiliary digital digest “correlated to data objects similar to
`the data object represented by said principal digest.” Microsoft points to no
`disclosure in Williams that a data block contains subblocks that have “similar” data
`objects.
`As for the combination of DRP and Williams, Microsoft offers no cogent
`explanation for how a message that does not contain auxiliary digital digests (from
`DRP) could be combined with a message that does not contain any digital digests
`(from Williams) to create a message that contains both principal and auxiliary
`digital digests. Nor does it explain how any such combination would have been
`obvious to one skilled in the art.
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`13
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`Because Microsoft’s Petition fails to cite evidence that DRP or Williams (or
`their combination) discloses receiving a message that contains both “a principal
`digital digest” and “one or more auxiliary digital digests” or that “said auxiliary
`digital digests are correlated to data objects similar to the data object represented
`by said principal digest,” Microsoft has failed to demonstrate a reasonable
`likelihood of success with respect to claims 25-27, and institution on these claims
`should be denied.
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`VI. CONCLUSION
`For the foregoing reasons, the Board should deny institution of the Petition.
`
`Respectfully submitted,
`
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`/s/ Neil A. Rubin
`
`Amir Naini (Reg. No. 45,770)
`Neil A. Rubin (Reg. No. 67,030)
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`Fax: (310) 826-6991
`anaini@raklaw.com
`nrubin@raklaw.com
`
`Dated: February 28, 2017
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`14
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`CERTIFICATION REGARDING WORD COUNT
`Pursuant to 37 C.F.R. §42.24(d), Patent Owner certifies that there are 4,307
`words in the paper excluding the portions exempted under 37 C.F.R. §42.24(a)(1).
`
`
`
`
`
`/s/ Neil A. Rubin
`
`Amir Naini (Reg. No. 45,770)
`Neil A. Rubin (Reg. No. 67,030)
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`Fax: (310) 826-6991
`anaini@raklaw.com
`nrubin@raklaw.com
`
`
`
`Dated: February 28, 2017
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
`
`
`The undersigned hereby certifies that the above document was served on
`February 28, 2017, by filing this document through the Patent Review Processing
`System as well as delivering a copy via electronic mail upon the following
`attorneys of record for the Petitioner:
`
`
`John D. Vandenberg, Reg. No. 31,312
`Andrew M. Mason, Reg. No. 64,034
`Klarquist Sparkman, LLP
`john.vandenberg@klarquist.com
`andrew.mason@klarquist.com
`
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`
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`/s/ Neil A. Rubin
`
`Amir Naini (Reg. No. 45,770)
`Neil A. Rubin (Reg. No. 67,030)
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`Fax: (310) 826-6991
`anaini@raklaw.com
`nrubin@raklaw.com
`
`
`
`Date: February 28, 2017
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