`FILED VIA PRPS ON: September 18, 2012
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`FILED VIA THE PATENT REVIEW PROCESSING SYSTEM
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`Trial Number: To be assigned
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`In re Inter Partes Review of:
`U.S. Patent No. 6,757,717
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`Issued: June 29, 2004
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`Applicant: Leonid Goldstein
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`Application No. 09/398,007
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`Filed: September 16, 1999
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`Title: System And Method For Data
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`Access
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`Currently in Litigation Styled:
`Proxyconn Inc. v. Microsoft
`Corporation, et al., Central District of
`California, Case No. SA CV11-1681
`DOC (ANx) [Consolidated With Case
`Nos. SA CV11-1682 DOC (ANx),
`SA CV11-1683 DOC (ANx), and SA
`CV11-1684 DOC (ANx)]
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313–1450.
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`PETITION FOR INTER PARTES REVIEW OF
`CLAIMS 1, 3, 10-12, 14 AND 22-24 OF U.S. PATENT NO. 6,757,717
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`ATTORNEY REFERENCE NO.: 6620-88460-06
`FILED VIA PRPS ON: September 18, 2012
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`TABLE OF CONTENTS
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`Page
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`I.
`
`INTRODUCTION ........................................................................................... 3
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`II.
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`’717 PATENT (EX. 1002) ............................................................................... 7
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`III. CHALLENGED CLAIMS AND THEIR
`BROADEST REASONABLE INTERPRETATIONS (BRI) ......................... 8
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`A.
`
`Summary Of Challenged Claims........................................................... 8
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`B.
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`Features Not Required By Any Challenged Claim’s BRI .................... 9
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`IV. PROPOSED ANTICIPATION GROUNDS NOS. 1-3 ................................... 9
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`A.
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`Claims’ Information Items ..................................................................10
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`B.
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`C.
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`Claims’ Environment ..........................................................................14
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`Claims’ Elements Of A Sender And Receiver ....................................15
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`1.
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`2.
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`Elements Of A Sender ..............................................................15
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`Elements Of Receiver ...............................................................18
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`D.
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`Claims’ Steps Performed By Sender And Receiver, And Their BRI .23
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`1.
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`2.
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`Steps Of A Sender: ....................................................................23
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`Steps Of The Receiver: .............................................................25
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`V.
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`PROPOSED GROUND FOR UNPATENTABILITY NO. 4 (BABER) ......29
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`VI. PROPOSED GROUNDS FOR UNPATENTABILITY
`NOS. 4 AND 5 (OBVIOUS OVER PERLMAN AND YOHE) ...................31
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`A. Obviousness: Level Of Skill In The Art ............................................31
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`B. Obviousness: Arguable Differences From Some Claims ..................32
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`C. Obviousness: Objective Indicia ..........................................................33
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`D. Obviousness: Reasons To Combine Perlman And Yohe ...................34
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`i
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`ATTORNEY REFERENCE NO.: 6620-88460-06
`FILED VIA PRPS ON: September 18, 2012
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`E.
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`This Combination Teaches Each Claimed Combination ....................36
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`VII. PROPOSED GROUND FOR
`UNPATENTABILITY NO. 6 (OBVIOUS OVER
`PERLMAN IN VIEW OF YOHE AND ADMITTED ART) .......................40
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`VIII. CONCLUSION ..............................................................................................41
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`ii
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`ATTORNEY REFERENCE NO.: 6620-88460-06
`FILED VIA PRPS ON: September 18, 2012
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`TABLE OF AUTHORITIES
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`Page
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`Cases
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`Brown v. 3M,
`265 F.3d 1349 (Fed. Cir. 2001) ............................................................................13
`
`In re Antoine de Gaulle,
`Appeal 2008-6183 (BPAI Feb. 10, 2009) ............................................................24
`
`In re Epstein,
`32 F.3d 1559 (Fed. Cir. 1994) ....................................................................... 32, 40
`
`In re Fox,
`471 F.2d 1405 (CCPA 1973) ......................................................................... 32, 40
`
`In re Tiffin,
`448 F.2d 791 (CCPA 1971) ..................................................................................33
`
`In re Vamco Machine & Tool, Inc.,
`752 F.2d 1564 (Fed. Cir. 1985) ............................................................................33
`
`Schumer v. Lab. Computer Sys., Inc.,
`308 F.3d 1304 (Fed. Cir. 2002) ............................................................................13
`
`Statutes
`
`35 U.S.C. § 102 ........................................................................................................41
`
`35 U.S.C. Sec. 112 ........................................................................................... passim
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`35 U.S.C. §§ 311 et seq. ............................................................................................. 1
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`Regulations
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`37 C.F.R. § 42.103 ..................................................................................................... 1
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`37 C.F.R. § 42.104 ..................................................................................................... 1
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`37 C.F.R. § 42.15 ....................................................................................................... 1
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`
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`iii
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`ATTORNEY REFERENCE NO.: 6620-88460-06
`FILED VIA PRPS ON: September 18, 2012
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`Fee: In accordance with 37 C.F.R. §§ 42.15, 42.103, please charge the fee
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`for Inter Partes Review of $27,200.00 to Deposit Account 02-4550.
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`Identification of Challenge: Pursuant to 35 U.S.C. §§ 311 et seq., Petitioner
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`Microsoft Corporation (“Microsoft”) requests inter partes review of claims 1, 3,
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`10-12, 14 and 22-24 of U.S. Patent No. 6,757,717, issued to Proxyconn Inc.
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`Sections I-VII infra and Appendix A provide the required statement of the precise
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`relief requested for each claim challenged, per 37 C.F.R. § 42.104(b).
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`Standing: Microsoft certifies that this patent is available for inter partes
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`review and that Microsoft is not barred or estopped from requesting an inter partes
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`review challenging the patent claims on the grounds identified in this petition.
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`Real-Party-in-Interest: Microsoft is the sole real-party-in-interest.
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`Related Matters: Proxyconn is asserting the ’717 patent against Microsoft
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`and three Microsoft customers (Dell, HP and Acer) in a suit first filed November 3,
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`2011, now styled, Proxyconn Inc. v. Microsoft Corporation, et al., Case No. SA
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`CV11-1681 DOC (ANx) [consolidated with Case Nos. SA CV11-1682 DOC
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`(ANx), SA CV11-1683 DOC (ANx), and SA CV11-1684 DOC (ANx)], pending in
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`the U.S. District Court for the Central District of California (“the ’717 Concurrent
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`Litigation”).
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`Lead and Back-Up Counsel; Service Information:
`
`John D. Vandenberg (Lead Counsel, PTO Reg. No. 31312)
`
`Petition for Inter Partes Review of U.S. Patent No. 6,757,717
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`Page 1
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`ATTORNEY REFERENCE NO.: 6620-88460-06
`FILED VIA PRPS ON: September 18, 2012
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`john.vandenberg@klarquist.com
`Direct: 503-273-2338
`Stephen J. Joncus (Back-up Counsel, PTO Reg. No. 44,809)
`stephen.joncus@klarquist.com
`Direct: 503-473-0910
`Klarquist Sparkman LLP
`121 SW Salmon Street, Suite 1600
`Portland, Oregon 97204
`Tel.: 503-595-5300
`Fax: 503-595-5301
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`Exhibits: An accompanying Appendix and List of Exhibits submits
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`petitioner’s Exhibits 1001 – 1018 in support of this petition, including the
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`following:
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`Ex. 1001: Appendix A (which is a part of this Petition), claim chart
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`mapping the claims to prior art references Perlman, Yohe and Santos.
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`Ex. 1002: The ’717 patent with Certificate of Correction.
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`Ex. 1003: Perlman: Radia J. Perlman et al., U.S. Patent No. 5,742,820,
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`“Mechanism for Efficiently Synchronizing Information Over a Network,” issued
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`Apr. 21, 1998 (“’820” or “Perlman”). Perlman is Section 102(b) prior art.
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`Ex. 1004: Santos: Jonathan Santos et al., “USENIX, Increasing Effective
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`Link Bandwidth by Suppressing Replicated Date,” Proceedings of the USENIX
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`Annual Technical Conference (NO 98) New Orleans, Louisiana, June 1998
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`(“Santos”). Santos is Section 102(b) prior art.
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`Petition for Inter Partes Review of U.S. Patent No. 6,757,717
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`Page 2
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`ATTORNEY REFERENCE NO.: 6620-88460-06
`FILED VIA PRPS ON: September 18, 2012
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`Ex. 1005: Yohe: Thomas Patrick Yohe et al., U.S. Patent No. 5,835,943,
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`“Apparatus and Method for Increased Data Access in a Network File Oriented
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`Caching System,” issued Nov. 10, 1998 on an application filed July 3, 1997
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`(“’943” or “Yohe”). Yohe is Section 102(a) and Section 102(e) prior art. (Its July
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`3, 1997, application is Ex. 1006, which shows that its specification and claims
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`were issued as originally filed.)
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`Ex. 1007: Expert declaration of Professor Darrell D. E. Long.
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`I.
`
`INTRODUCTION
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`Microsoft requests the Board to institute inter partes review on each of the
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`following claims and unpatentability grounds:
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`1. Perlman anticipates claims 1, 3, 10-12, 14, 22-24.
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`2. Yohe anticipates claims 1, 3, 10-12, 14, 22-23.
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`3. Santos anticipates claims 1, 3, 11-12, 14, 22.
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`4. Baber (Exs. 1017, 1018) anticipates claims 1, 3, 10-12, 14, 22-24.
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`5. Perlman in view of Yohe renders obvious claims 1, 3, 10-12, 14, 22-24.
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`6. Yohe in view of Perlman renders obvious claims 1, 3, 10-12, 14, 22-24.
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`7. Perlman in view of Yohe and the Admitted Art (described at ’717,
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`1:18-60, Figs. 1-2) renders obvious claims 1, 3, 10-12, 14, 22-24.
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`This petition includes its 19-page Appendix A (Ex. 1001) which maps each
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`challenged claim to Perlman, Yohe and Santos with specific column and line
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`Petition for Inter Partes Review of U.S. Patent No. 6,757,717
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`Page 3
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`ATTORNEY REFERENCE NO.: 6620-88460-06
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`citations. For each ground, the petition demonstrates at least a reasonable
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`likelihood that at least one of the claims challenged is unpatentable.
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`The ’717 patent describes an algorithm for reducing the amount of redundant
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`data transmitted over a network. The algorithm checks for identity between two
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`sets of data by comparing respective digital fingerprints of that data—similar to
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`checking two human fingerprints to determine if they were taken from the same
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`person. A digital fingerprint is a relatively short number calculated from longer
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`data. (It may be called a digital signature, a hash, an identifier, or a message
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`digest.) Like a human fingerprint, if two digital fingerprints are identical, then it
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`safely can be assumed they were calculated from identical data. These digital
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`identity checks have several uses.
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`One prior art use of this identity check was to reduce the amount of
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`redundant data transported over a computer network. Often, one uses a computer
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`to retrieve data from a source (e.g., a web site) over a network, where the source
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`data changes over time. Rather than re-retrieve the same data each time it is
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`needed (just in case it has changed at its source), instead the receiver computer
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`compares digital fingerprints to determine whether its copy of the data previously
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`retrieved over a network is still identical to the source’s master copy of that data, in
`
`which case the data need not be re-sent over the network. The source transmits a
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`current digital fingerprint of the data; the receiver compares that fingerprint for a
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`Petition for Inter Partes Review of U.S. Patent No. 6,757,717
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`Page 4
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`ATTORNEY REFERENCE NO.: 6620-88460-06
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`match to fingerprints of its own store of previously received data; and, if it finds a
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`match, then it assumes that the source data is still identical to its own copy, and
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`uses its own copy. Otherwise, if there’s no match, the source sends the updated
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`requested data over the network. The receiver saves that received data and may
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`save also a digital fingerprint of that data for later use in this fingerprints-matching
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`process. In other words, digital fingerprints are transmitted over a network to
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`synchronize remote data contents in a manner that reduces the transmission of
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`redundant data over the network.
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`Each of the four asserted prior art references discloses this prior art use of
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`digital fingerprints. Perlman describes it thusly:
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`The invention comprises a mechanism for efficiently synchronizing
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`the contents of databases stored on nodes of a computer network to
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`ensure that those contents are consistent. Generally, the mechanism
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`comprises a database identifier generated by a node of the computer
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`network and distributed to other receiving nodes coupled to the
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`network. The database identifier is uniquely representative of the
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`contents of the distributing node’s database and the receiving nodes
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`compare this unique identifier with their own generated database
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`identifiers to determine if the identifiers, and thus their databases, are
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`consistent and synchronized.
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`(’820 (Ex. 1003), 3:61-4:4; see also id., 8:52-9:2, claims 1, 4-6, 10).
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`Petition for Inter Partes Review of U.S. Patent No. 6,757,717
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`Page 5
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`ATTORNEY REFERENCE NO.: 6620-88460-06
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`And, this old idea is the basic idea of the challenged claims. Claim 11,
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`directed to the sender’s operation, recites it thusly:
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`11. A method performed by a sender/computer in a packet-switched
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`network for increasing data access, said sender/computer including an
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`operating unit, a first memory, a permanent storage memory and a
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`processor and said sender/computer being operative to transmit data to
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`a receiver/computer, the method comprising the steps of: creating and
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`transmitting a digital digest of said data from said sender/computer to
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`said receiver/computer; receiving a response signal from said
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`receiver/computer at said sender/computer, said response signal
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`containing a positive, partial or negative indication signal for said
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`digital digest, and if a negative indication signal is received,
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`transmitting said data from said sender/computer to said
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`receiver/computer. (’717, claim 11).
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`Here, the digital fingerprint is a “digital digest.” “A sender” calculates it and
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`sends it to a receiver. If the sender receives a “negative indication signal” (no
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`match), then the sender sends the full data. Each of Perlman, Yohe, Santos and
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`Baber describes the exact same series of steps. In Perlman, the sender sends a 128-
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`bit message digest or CRC hash of data (database contents) to the receiver. In
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`Yohe, the sender sends an MD5 or CRC based signature of data (e.g., a “directory
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`signature”) to the receiver. In Santos, the sender sends an MD5 or CRC hash of
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`data (e.g., network packets) to the receiver. In Baber, the sender sends a “unique”
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`CRC signature of segment data.
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`Petition for Inter Partes Review of U.S. Patent No. 6,757,717
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`Page 6
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`ATTORNEY REFERENCE NO.: 6620-88460-06
`FILED VIA PRPS ON: September 18, 2012
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`II.
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`’717 PATENT (EX. 1002)
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`Summary of the Invention: The patent describes its basic idea as follows:
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`If a sender/computer in a network is required to send data to another
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`receiver/computer, and the receiver/computer has data with the same
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`digital digest as that of the data to be sent, it can be assumed with
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`sufficient probability for most practical applications that the
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`receiver/computer has data which is exactly the same as the data to be
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`sent. Then, the receiver/computer can use the data immediately
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`without its actual transfer through the network. In the present
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`invention, this idea is used in a variety of ways. (’717, 2:17-25).
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`The term “digital digest” is discussed below, but it includes a (prior art) 128-
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`bit MD5 hash.
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`Admitted Art: The ’717 patent depicts in “Fig. 1 (PRIOR ART)” and “Fig.
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`2 (PRIOR ART),” and describes at 1:18-60, prior art techniques for caching data
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`received over a network for later reuse.
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`Cited Art: Neither Perlman nor Santos were cited in the original
`
`prosecution. Yohe and Baber were cited but not discussed.
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`Reasons for allowance: “The primary reason for allowance of the claims is
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`the inclusion of ‘means for creating digital digests on data’ from the
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`sender/computer and receiver/computer in all of the claims. Van Hoff et al. Patent
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`no. 5,919,247 has any (sic) means for creating digital digests on data from
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`receiver/computer.” (Ex. 1016, p. 1).
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`Petition for Inter Partes Review of U.S. Patent No. 6,757,717
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`Page 7
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`ATTORNEY REFERENCE NO.: 6620-88460-06
`FILED VIA PRPS ON: September 18, 2012
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`III. CHALLENGED CLAIMS AND THEIR
`BROADEST REASONABLE INTERPRETATIONS (BRI)
`
`A.
`
`Summary Of Challenged Claims
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`Four challenged claims are independent: 1, 10, 11 and 22. Claim 11
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`(quoted above) claims a “method performed by a sender/computer” while claim 22
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`claims a “method … performed by a receiver/computer” and does not recite a
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`“sender.” Each of claims 1 and 10 is a hybrid claim reciting both a “system”
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`comprising “a sender/computer” and “a remote receiver/computer,” but also the
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`step (not merely the capability) of the “a sender” and “a receiver” “communicating
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`through” a network. Dependent claim 12 recites an element already required by its
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`independent claim 11. Dependent claims 3, 14, 23 and 24 also are challenged.
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`As seen in Appendix A (Ex. 1001), the nine challenged claims repeat many
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`of the same elements. Collectively, they recite the information items, environment,
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`elements of “a sender” and of “a receiver,” and sender and receiver operations
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`identified infra in Sec. IV. Petitioner below proposes the broadest reasonable
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`interpretation of the claim language, as understood by one of ordinary skill in the
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`art in 1998-99, in the light of the specification (“BRI”). As noted below, several of
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`the claim elements are entitled to no patentable weight when comparing the claim
`
`to the prior art, including if-then steps contingent on a condition occurring, in a
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`claim not requiring that condition to occur.
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`Petition for Inter Partes Review of U.S. Patent No. 6,757,717
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`Page 8
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`ATTORNEY REFERENCE NO.: 6620-88460-06
`FILED VIA PRPS ON: September 18, 2012
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`B.
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`Features Not Required By Any Challenged Claim’s BRI
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`No claim requires that a sender send any “data” to a receiver. As noted
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`below, the only claim element referring to such a transmission step (claim 11) is
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`contingent on a condition that the claim does not positively recite occurring.
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`No claim recites any use or function of the sender’s “permanent memory.”
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`No claim requires that the receiver use a digital digest it calculates.
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`No claim requires that its algorithm be at an application level, as suggested
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`by Proxyconn (Ex. 1011, 12:12-14).
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`IV. PROPOSED ANTICIPATION GROUNDS NOS. 1-3
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`1. Perlman anticipates all challenged claims: 1, 3, 10-12, 14, 22-24.
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`2. Yohe anticipates claims 1, 3, 10-12, 14, 22-23.
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`3. Santos anticipates claims 1, 3, 11-12, 14, 22.
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`Perlman discloses all of the information elements, environment, and sender
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`and receiver elements and operations recited in these challenged claims, under
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`their BRI, and arranged in the same manner as in the claim. See App. A.
`
`Perlman’s illustrative network-router embodiment uses RAM (not permanent
`
`memory) for its cache, but, Perlman is not limited to that embodiment. More
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`broadly, it expressly discloses (’820 (Ex. 1003), Abstract, 1:1-9, 3:60-4:4, 7:12-22,
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`8:52-9:2) and claims (id., claims 1 and 4-6) that its mechanism applies to any type
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`of distributed system and network node, which includes nodes whose cache is in
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`Petition for Inter Partes Review of U.S. Patent No. 6,757,717
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`Page 9
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`ATTORNEY REFERENCE NO.: 6620-88460-06
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`permanent memory in whole or in part, as in Yohe. Yohe and Santos each
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`discloses each claim element, except as otherwise noted below.
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`A. Claims’ Information Items
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`Each of Perlman, Yohe and Santos discloses the same redundancy-reduction,
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`identity-check algorithm as the ’717 patent and each discloses each of the
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`challenged claims’ information items, under their BRI:
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`“Data”/“Data objects” (all claims): BRI: “a file or range of octets in a
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`file, a range of frames in a video stream or RAM-based range of octets, a transport
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`level network packet, or the like.” (’717, 2:5-8). (An “octet” is an 8-bit byte).
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`Prior Art: The network-node database contents (and database fragments) of
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`Perlman; the files, file-system directories and sub-objects of Yohe; and the data
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`packet payloads of Santos, each qualifies as the claims’ “data” and “data objects”
`
`per their BRI. See App. A8:4.
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`“Digital digest [on/of/for] data”/“Digital digest” (all claims): BRI: The
`
`BRI of this claim language is not clear. The patent states:
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`“The term ‘digital digest’ as used herein refers to the per se known
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`MD5 algorithm, described in RFC 1321 by R. Rivest,” (a 128-bit
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`message digest) and also “may be calculated according to the CRC
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`algorithm [cyclic redundancy code]. Other algorithms may, however,
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`just as well be used. For example, a digital digest may be calculated
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`according to the CRC algorithm, or by applying the CRC algorithm to
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`Petition for Inter Partes Review of U.S. Patent No. 6,757,717
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`Page 10
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`different subsets or different reorderings of data, or by consecutively
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`applying CRC and MD5. In addition, any other algorithm may be
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`used, provided that it produces a fixed-size binary value calculated
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`from arbitrarily-sized binary data in such a way that it depends only
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`on the contents of said data and that the probability of two different
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`data having the same digital digest, is low.” (’717, 6:24-36).
`
`But, the patent contradicts itself by asserting that its “digital digest” has a
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`similarity check property (e.g., ’717, 4:46-51, 4:65-67, 8:28-31, 8:34-37, 14:10-
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`12)—something neither an MD5 nor CRC value (nor any other digital fingerprint
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`identified in the patent) has. More generally, the patent gives the following
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`purported partial definition of “digital digest”: “A fixed-size binary value
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`calculated from arbitrary-size binary data in such a way that it depends only on the
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`contents of the data and the low probability that two different data or objects have
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`the same digital digest.” (’717, 2:9-13, 6:32-36). Petitioner proposes that a BRI of
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`this information element includes a fixed-size digital fingerprint (e.g., hash,
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`message digest, signature or identifier) calculated using an MD5 (or other message
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`digest) and/or CRC algorithm and calculated on arbitrary-size data, such that it
`
`represents and depends only on the content of that data. As the patent describes no
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`digital fingerprint having a similarity check property, the BRI should not require
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`that property.
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`Petition for Inter Partes Review of U.S. Patent No. 6,757,717
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`Page 11
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`ATTORNEY REFERENCE NO.: 6620-88460-06
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`Prior Art: The 128-bit “unique, fixed-length digest ‘signature’” (database
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`identifier) of Perlman; the CRC and MD5 based block and directory signatures of
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`Yohe; and the 128-bit MD5 hash of Santos, each qualifies as a “digital digest.”
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`Each is a fixed-size MD5 and/or CRC value calculated on arbitrary-size data, such
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`that it represents and depends only on the content of that data. See App. A8:4.
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`Although the illustrative CRC signature embodiments in Yohe are 32-bit and 64-
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`bit, Yohe discloses that those lengths are sufficient to represent each directory for
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`its purposes (e.g., matching file directories) and thus Yohe assumes that a matching
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`directory signature reliably indicates that the directory on a sender is the same as
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`the directory on a receiver. (E.g., ’943 (Ex. 1005), Fig. 15, steps 722 and 723).
`
`Although the original ’717 prosecution history creates ambiguity on this point, that
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`is not relevant to the BRI in view of the specification, and nothing in the
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`challenged claims or the specification expressly excludes a 32-bit CRC value. For
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`example, nothing in the ’717 patent defines “low probability” in any clear manner,
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`and certainly not in any clear manner that excludes Yohe’s 32-bit CRC values.
`
`“Response signal” (claims 11, 12, 14): BRI: plain meaning.
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`Prior Art: The requests for database contents (e.g., CSNP) or a fragment
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`thereof sent by the receiver in Perlman; the directory retrieval signals sent by the
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`receiver’s Network File Cacher (NFC) in Yohe; and the rejection packet sent by
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`the receiver in Santos, each qualifies as a response signal. Each is transmitted by
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`the receiver in response to its receipt of a “digital digest” over the network and
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`each follows a failure to find that same “digital digest” value at the receiver. See
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`App. A14:10.
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`“Negative indication signal” (claims 11, 12, 14, 22-24): BRI: any
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`indication (e.g., “the absence of a signal”) treated as a request that a sender send
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`the data to a receiver. (See ’717, 8:1-10).
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`Prior Art: Each of the response signals identified immediately above
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`constitutes the claims’ negative indication signal as each indicates that the receiver
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`requests data having the same “digital digest” as that received over the network.
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`See App. A14:10, A15:3.
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`“Positive, partial or negative indication signal” (claims 11, 12, 14): BRI:
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`Under a BRI, this alternative language “positive, partial or negative indication
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`signal” in these method claims is met by a prior art method using only one of the
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`three alternatives. The U.S. Court of Appeals for the Federal Circuit “ha[s]
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`consistently interpreted the word ‘or’ to mean that the items in the sequence are
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`alternatives to each other.” Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304,
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`1311 (Fed. Cir. 2002) (finding infringement of a method claim reciting, as here, a
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`step of receiving certain information, the information described using a sequence
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`of three alternatives using “or”—even though the accused process met only one of
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`the three options); cf. Brown v. 3M, 265 F.3d 1349, 1353 (Fed. Cir. 2001)
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`(apparatus claim reciting “data with years being represented by at least one of two-
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`digit, three-digit, or four-digit year-date representations,” anticipated by reference
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`that disclosed two-digit format only). Thus, the optional signals “positive” and
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`“partial” have no patentable weight and need not be disclosed by a prior art
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`reference that discloses a “negative indication signal.” Proxyconn has implied in
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`its litigation infringement claim allegations that the claimed method does not
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`require each type of signal to be transmitted. (Ex. 1012, p. 30).
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`Prior Art: See above for disclosure of “negative” indication signals.
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`“Message” (claims 22-24): BRI: plain meaning.
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`Prior Art: In each of Perlman, Yohe and Santos, the transmission by a
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`sender to a receiver including a “digital digest” constitutes the claims’ “message.”
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`See App. A14:3, A16:14.
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`B. Claims’ Environment
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`“a packet-switched network” (all claims): BRI: plain meaning.
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`Prior Art: Each of Perlman’s packet-based OSI-protocol network (and “any
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`type” of distributed network system); Yohe’s “world wide web” and “wide area
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`network,” using a client-server protocol with particular “packet formats;” and
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`Santos’s network transmitting “HTTP, FTP, and DNS traffic” and “data at the
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`packet level, mainly due to Web traffic,” discloses a packet-switched network. See
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`App. A2:9.
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`C. Claims’ Elements Of A Sender And Receiver
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`1.
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`Elements Of A Sender
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`“a sender/computer” (claims 1, 3, 10, 11, 12, 14): BRI: any device(s),
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`having the claim-recited elements of a sender, and capable of sending any type of
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`information over a network to a receiver. The “a” sender/computer is not limited
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`to a single machine. (See ’717, claims).
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`Proxyconn’s Proposed Construction: Proxyconn has attempted to
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`distinguish Yohe and Santos by arguing that a computer sending data over a
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`network is not “a sender/computer” if it acts as an intermediary processing data
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`received from another computer. (Ex. 1011, 12:3-7, 13:26-14:3). But, the ’717
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`patent does not even arguably define “a sender/computer” in that restricted fashion.
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`First, nowhere does the patent disclose that the “sender/computer” originates the
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`data in question rather than receiving it from another entity. Second, it certainly
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`does not disclose that its “sender/computer” is limited to such an originator of data.
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`Third, no challenged claim has that limitation Proxyconn seeks. Fourth, even if the
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`patent or a claim had defined “a sender” in that fashion—that it does not receive
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`the data in question from another source—that would be a mere intended use
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`having no significance to the structure of the recited “a sender/computer” and thus
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`having no patentable weight. The concepts client, server, gateway, etc. refer to the
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`intended use of a computer in a protocol, not to any structural/functional property
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`of a computer.
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`Prior Art: Each network-connected computer in each reference is capable of
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`sending information over a network to a receiver. In Yohe, the “a sender”
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`includes, e.g., the “file server computer 18” combined with the “cache verifying
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`agent 54” residing on the “cache verifying computer 14” or “communication server
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`16.” Alternatively, even if the “file server computer 18” were not considered as
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`part of the “a sender,” Yohe’s cache verifying computer, either integrated with its
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`communication server or not, still would disclose the “a sender” and its claim-
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`recited elements and operations. See App. A3:2.
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`“Operating unit,” “First memory,” “Permanent storage memory,” and
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`“Processor” (claims 1, 3, 10, 11, 12, 14): BRI: plain meaning, except for
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`“operating unit” which term the patent does not explain. Although “operating
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`unit” connotes no structure and likely invokes Sec. 112(f), that interpretation
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`would render the term indefinite because the patent links no particular structure to
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`this function. As indefiniteness is not an option here, Petitioner proposes that the
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`BRI of this term encompasses anything found in a computer—other than the
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`recited processor and memories—that is used in its operation.
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`Prior Art: The computers referenced in Perlman, Yohe and Santos include
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`the last three, conventional computer elements. See App. A3:11, A4:4, A4:10,
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`A5:5. Indeed, this claim language is almost a verbatim copy of claim language in
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`Yohe: “a file server computer having an operating system, a first memory, a
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`permanent storage memory and a processor.” (’943 (Ex. 1005), 14:43-44).
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`Perlman discloses that its illustrative embodiment router is a general-purpose
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`computer with operating systems, only “portions of which” are resident in RAM
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`(’820 (Ex. 1003), 5:41-52, Fig. 2), which necessarily had permanent memory (Ex.
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`1007, 12:5-17). And, Perlman expressly discloses that its mechanism applies to
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`“any type” of distributed network system needing to synchronize the database on
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`one node with that of another (’820 (Ex. 1003), 8:52-9:2), which “any type”
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`includes the Yohe system and other such systems whose computers have
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`permanent storage. (Ex. 1007, 12:18-15:9). As for the undefined “operating unit,”
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`the ’717 patent discloses nothing corresponding to this “operating unit” that is not
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`also disclosed in the computers of Perlman, Yohe and Santos. See App. A3:11.
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`“Means for creating digital digests on data” (claims 1, 10): BRI: This
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`element invokes 35 U.S.C. § 112(f), but the patent discloses no counterpart to this
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`element, particularly considering that this element is recited as being in addition to
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`the processor. As unpatentability under Section 112 is not an option here,
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`Petitioner proposes that the BRI of