`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TERADATA OPERATIONS, INC.,
`Petitioner,
`
`v.
`
`REALTIME DATA LLC,
`Patent Owner.
`____________________
`
`Case IPR2017-00557
`Patent No. 7,358,867
`____________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`

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`IPR2017-00557
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`TABLE OF CONTENTS
`
`Introduction ...................................................................................................... 1
`
`I.
`
`II.
`
`Overview of the challenged claims and Petitioner’s Grounds ........................ 2
`
`III.
`
`Petitioner’s proposed claim constructions are irrelevant to the contested
`issues. ............................................................................................................... 5
`
`IV. The Petition is procedurally defective. ............................................................ 6
`
`A.
`
`B.
`
`C.
`
`The Petition fails to ascertain the differences between the prior art and
`the challenged claims. (Grounds 2 and 4-10)........................................ 6
`
`The Petition presents numerous horizontally and vertically redundant
`Grounds without distinguishing between them. (Grounds 1-10) ........13
`
`The Petition fails to meet statutory requirements in Grounds 4, 5, 7, 8,
`9, and 10. .............................................................................................16
`
`V.
`
`There is no evidence that Hsu applies compression or outputs its alleged
`descriptor on a block-by-block basis as required by claim 16 steps C1-C4
`and D1-D3. (Grounds 1, 2, and 5-7) ..............................................................18
`
`A.
`
`Claim 16 requires block-by-block compression and output of the data
`type descriptor. ....................................................................................19
`
`1.
`
`2.
`
`The plain language of claim 16 recites compressing (or not
`compressing) an individual “particular” block and outputting it
`with its descriptor. .....................................................................19
`
`The specification describes a system that operates block-by-
`block consistent with the plain language of claim 16. ..............22
`
`B.
`
`Hsu compresses data blocks in groups and outputs its compression
`history only after it outputs all compressed data blocks. ....................25
`
`VI. There is no evidence that Franaszek teaches the “null data compression type
`descriptor” of claim 16 steps D2 and D3. (Grounds 3 and 10) .....................29
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`VII. There is no evidence that Claim 16 is obvious over any of the Grounds that
`use Franaszek as a base reference. (Grounds 4, 8, and 9) .............................37
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`IPR2017-00557
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`A.
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`Franaszek alone does not render the claims obvious. (Ground 4) ......38
`
`B.
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`Franaszek with Langdon does not render the claims obvious. (Ground
`8) ..........................................................................................................41
`
`C.
`
`Franaszek with Hsu does not render the claims obvious. (Ground 9) 44
`
`VIII. Hsu expressly teaches receiving files as a collection of fixed sized data
`blocks rather than data blocks of variable size as required by claim 32.
`(Grounds 1 and 5) ..........................................................................................47
`
`IX. Conclusion .....................................................................................................50
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`IPR2017-00557
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`I.
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`Introduction
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`In the hopes of overwhelming Patent Owner and the Board, Petitioner
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`asserts ten different Grounds against one independent claim and six dependent
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`claims of U.S. Patent 7,358,867 (the ’867 Patent). But each Ground, and the
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`Petition as a whole, fails both procedurally and substantively to provide a basis for
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`institution as to any challenged claim, as this Preliminary Response will show.
`
`As a threshold matter, the Petition collapses on several procedural grounds.
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`Petitioner does not ascertain the differences between the prior art and any of the
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`challenged claims—a fundamental factual requirement for an obviousness theory.
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`The Petition also fails to ascertain the differences between, or justify its use of, the
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`ten presented Grounds, leading to numerous improper horizontal and vertical
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`redundancies. And with respect to certain claims and certain Grounds, Petitioner
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`gives no explanation at all as to how each claim element is met.
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`The Petition also substantively fails to put forth evidence meeting the
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`threshold for institution as to any claim on any Ground.
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`Five of Petitioner’s Grounds rely on Hsu as the base reference. Each of those
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`Grounds fails because there is no evidence that Hsu teaches outputting a “data type
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`descriptor” or “null data compression type descriptor” with each data block, as
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`independent claim 16 requires. Rather, the only evidence demonstrates that Hsu
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`instead teaches outputting an overall “compression history” for all compressed and
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`IPR2017-00557
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`uncompressed data blocks in one “final output file.”
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`Petitioner’s five other Grounds rely on Franaszek as the base reference.
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`Those Grounds also fail because there is no evidence that Franaszek teaches
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`“providing a null data compression type descriptor representative of said
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`determination not to compress,” as independent claim 16 requires. Petitioner
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`implicitly recognizes that shortcoming and attempts to plug that hole through four
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`other obviousness combinations. But those Franaszek-based combinations also fail
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`to satisfy Petitioner’s evidentiary burden for institution because the Petition
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`provides no actual evidence that a person of ordinary skill in the art would be
`
`motivated to pursue the specific combinations Petitioner asserts. Instead, each of
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`the proposed combinations has no basis other than hindsight bias.
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`Accordingly, despite Petitioner’s attempt to avalanche the Board and Patent
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`Owner with numerous Grounds, the Petition fails both substantively and
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`procedurally to provide any basis for institution as to any challenged claim, and
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`should be denied in its entirety.
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`II. Overview of the challenged claims and Petitioner’s Grounds
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`The ’867 patent relates to data compression. Challenged independent claim
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`16 recites:
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`[Pre] A method comprising:
`
`[A] receiving a plurality of data blocks;
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`[B] determining whether or not to compress each one of said plurality
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`of data blocks with a particular one or more of several encoders;
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`[C1] if said determination is to compress with said particular one or
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`more of said several encoders for a particular one of said plurality of
`
`data blocks:
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`[C2] compressing said particular one of said plurality of data
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`blocks with said particular one or more of said several encoders
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`to provide a compressed data block;
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`[C3] providing
`
`a data
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`compression
`
`type descriptor
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`representative of said particular one or more of said several
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`encoders;
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`[C4] outputting said data compression type descriptor and said
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`compressed data block;
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`[D1] if said determination is to not compress said particular one of
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`said plurality of data blocks:
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`[D2] providing a null data compression type descriptor
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`representative of said determination not to compress; and
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`[D3] outputting said null data compression type descriptor and
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`said particular one of said plurality of data blocks.
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`Petitioner also challenges dependent claims 17-19, 32, 34, and 35, all of
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`which depend directly or indirectly from independent claim 16.
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`Despite challenging only one independent claim and six dependent claims,
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`the Petition presents a confusing combination of ten overlapping grounds with
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`significant horizontal and vertical redundancy. For example, the Petition
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`challenges dependent claim 19 on seven distinct grounds: anticipation by
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`Franaszek (Ground 3), obviousness over Franaszek (Ground 4), obviousness over
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`Hsu in view of Langdon (Ground 6), obviousness over Hsu in view of Franaszek
`
`and Langdon (Ground 7), obviousness over Franszek in view of Langdon (Ground
`
`8), obviousness over Franaszek in view of Hsu (Ground 9), and obviousness over
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`Franaszek in view of Hsu and Langdon (Ground 10).
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`To assist the Board, Patent Owner provides the following chart summarizing
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`the invalidity basis of each Ground and identifying which claims Petitioner alleges
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`are invalid under that Ground:
`
`Claim 16
`X
`
`17
`
`
`18
`
`
`19
`
`
`35
`34
`32
`X X X
`
`Ground 1 - §102
`Hsu
`Ground 2 - §103
`Hsu
`Ground 3 - §102
`Franaszek
`Ground 4 - §103
`Franaszek
`Ground 5 - §103
`Hsu & Franaszek
`Ground 6 - §103
`Hsu & Langdon
`Ground 7 - §103
`Hsu, Franaszek, & Langdon
`Ground 8 - §103
`Franaszek & Langdon
`Ground 9 - §103
`Franaszek & Hsu
`Ground 10 - §103
`Franaszek, Hsu, & Langdon
`
`
`
`X X
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`
`X X X X X X X
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`X X X X X X X
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`
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`
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`X X
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`
`
`X
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`
`
`
`X
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`X
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`X X X X X X X
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`X X X X X X X
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`
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`X
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`As this Preliminary Response demonstrates, Petitioner’s scattershot
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`approach ultimately fails to satisfy Petitioner’s evidentiary burden at the institution
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`stage both procedurally and substantively, and institution as to all claims on all
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`Grounds should thus be denied.
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`III. Petitioner’s proposed claim constructions are irrelevant to the
`contested issues.
`
`Petitioner has proposed a claim construction for the term “a data
`
`compression type descriptor” and “a null data compression type descriptor.” See
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`Petition at 16. Specifically, Petitioner urges that the former should be construed as
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`“any recognizable data token or descriptor that indicates which data encoding
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`technique has been applied to the data” and the latter as “any recognizable data
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`token or descriptor that indicates no data encoding technique has been applied to
`
`the input data block.” Id.
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`The Board does not construe claim terms unnecessary to resolve the
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`controversy. Shenzhen Liown Electronics Co. v. Disney Enterprises, Inc.,
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`IPR2015-01656, Paper 7 at 10 (Feb. 8, 2016) (citing Vivid Techs., Inc. v. Am. Sci.
`
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`For purposes of this Patent Owner Preliminary Response, neither term
`
`requires an express construction. This Response assumes arguendo that
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`Petitioner’s proposed constructions are correct, and nonetheless demonstrates that
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`the cited references do not teach all of the limitations of the challenged claims.
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`Accordingly, the Board should not engage in the needless exercise to construe any
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`terms at this time.
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`IV. The Petition is procedurally defective.
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`Despite challenging only a single independent claim (and six dependent
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`claims), Petitioner proposes ten Grounds using virtually every possible
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`combination of three prior art references. In order to pursue so many Grounds in a
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`single IPR, the Petition attempts to circumvent the word limit by (1) failing to
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`ascertain the differences between the prior art and the challenged claims, (2) failing
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`to distinguish the numerous horizontal and vertical redundancies between grounds,
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`and (3) failing to fully specify the prior art relied upon and where each element of
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`the claim is found in that art. Those failings are critical and require denial of
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`institution on procedural grounds alone.
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`A. The Petition fails to ascertain the differences between the prior
`art and the challenged claims. (Grounds 2 and 4-10)
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`A Petition presenting an obviousness theory of unpatentability must identify
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`the “differences between the prior art and the claims at issue,” and this is “one of
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`the fundamental factual inquiries underlying an obviousness analysis.” See
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`Shopkick Inc. v. Novitaz, Inc., IPR2015-00279, Paper 7 at 27-28 (PTAB May 29,
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`2015) (denying institution because, among other failures, Petitioner did not
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`“identify in the Petition [ ] any differences between the prior art and the claims at
`
`issue,” which Petitioner must) (citing Outside the Box Innovations, LLC v. Travel
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`Caddy, Inc., 695 F.3d 1285, 1295 (Fed. Cir. 2012), and Unigene Labs., Inc. v.
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`Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011)). Although the Petition
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`identifies eight obviousness Grounds (2 and 4-10), it never meaningfully identifies
`
`the differences between the prior art in those eight Grounds and the claims at issue,
`
`as shown below.
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`Ground 2 asserts the obviousness of dependent claims 17 and 18 over Hsu,
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`yet the Petition is silent on the differences between Hsu and the claims at issue.
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`Petition at 25-30. For example, dependent claim 17 contains two limitations
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`relating to transmitting, which the Petition refers to as step 17[A], that recite:
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`transmitting said null data compression type descriptor and said
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`particular one of said plurality of data blocks if said determination is
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`to not compress said particular one of said plurality of data blocks;
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`
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`transmitting said data compression
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`type descriptor and said
`
`compressed data block if said determination is to compress with a
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`particular one or more of said several encoders for a particular one of
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`said plurality of data blocks;
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`The Petition never acknowledges any differences between Hsu and
`
`those two limitations and instead merely urges that using Hsu in an “obvious
`
`manner” would teach both of them. See id. at 27 (“By using Hsu in this
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`obvious manner, the compressed data as well as the compression type
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`descriptors (including the null descriptor, when no compression was used)
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`described in Hsu would be transmitted and subsequently received by the
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`destination device, where the data would subsequently be decompressed.”).
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`Nonetheless, in the very next paragraph, Petitioner argues that “it
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`would have been obvious to a POSITA, having the disclosure of Hsu, to
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`modify Hsu to implement” the “transmitting said null data compression type
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`descriptor” limitation. Id. (emphasis added). The Petition does not
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`correspondingly suggest modifying Hsu to implement the “transmitting said
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`data compression type descriptor” limitation.
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`In other words, Ground 2 never acknowledges that Hsu lacks either of
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`the two transmitting limitations, urges that both are disclosed by using Hsu
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`in an obvious manner, and then finally suggests modifying Hsu to teach only
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`one of them.
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`Ground 4 likewise does not identify any differences between the prior
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`art and the claims—instead, it puts the onus on the Board to identify the
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`differences. The Petition states that “[t]his Ground is presented. . . to the
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`extent the Board finds that Franaszek does not disclose the ‘null data
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`compression type descriptor’” limitation. Id. at 46. Petitioner had previously
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`urged, in Ground 3, that Franaszek discloses that limitation. Id. at 36-37.
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`In Ground 5, Petitioner again shirks its burden and puts the onus on
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`the Board or Patent Owner to identify the differences between the prior art
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`IPR2017-00557
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`and the claims at issue. Whereas Ground 2 previously alleged that Hsu alone
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`rendered dependent claims 17 and 18 obvious, Ground 5 alleges that those
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`same claims are obvious over the combination of Hsu with Franaszek. Id. at
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`49. The Petition does not identify what is missing from Hsu or what was
`
`inadequate about Ground 2. Instead, it presents its new theory with the
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`conditional “[t]o the extent that it can be contended that Hsu does not
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`disclose the . . . limitations of Claim 17[.] Id. Indeed, the following two
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`sentences—which comprise only 48 words, yet cite to over 10 pages of
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`expert declaration—reproduce verbatim the Petition’s entire analysis of how
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`the combination of Hsu and Franaszek disclose the four limitations of Claim
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`17:
`
`Id.
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`To the extent it can be contended that Hsu does not disclose the
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`“transmitting” and/ or “receiving” limitations of claim 17, these
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`requirements are rendered obvious by Hsu in view of Franaszek. Ex.
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`1002, ¶¶114-122, 127-132. Franaszek discloses all the limitations of
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`claim 17. See Section VI.C.2, above.
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`Ground 5 further asserts that dependent claim 32 is obvious over the
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`combination of Hsu with Franaszek. Yet instead of identifying any
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`differences between the prior art and the claim, the Petition expressly asserts
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`that both references fully disclose the claim. Id. at 50 (“Hsu and Franaszek
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`both disclose that the size of each one of said plurality of data blocks is
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`variable.”).
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`Ground 6 again does not identify any differences between the prior
`
`art and the claim at issue. This Ground proposes that the combination of Hsu
`
`and Langdon render dependent claim 19 obvious, but the Petition discusses
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`the teachings of Hsu and Langdon without ever identifying anything missing
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`from either. Id. at 54-57.
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`Ground 7 repeats the same pattern, proposing a fifth Ground based
`
`on Hsu, this time challenging claim 19 based on a combination of Hsu with
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`Franaszek and Langdon, without identifying anything missing from its prior
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`combinations of Hsu with Franaszek (Ground 5) or Hsu with Langdon
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`(Ground 6). It instead puts the onus on the Board to identify something
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`missing only from the combination of Hsu and Franaszek with respect to
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`dependent claim 17. Id. at 59 (“This ground is presented . . . to the extent the
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`Board concludes that Hsu does not disclose the ‘transmitting’ steps of claim
`
`17, from which claim 19 depends.”). The Petition then urges that the two
`
`separate, previously-presented combinations of Hsu with Franaszek and Hsu
`
`with Langdon each address a claim. Id. (“Claim 17 is rendered obvious by
`
`Hsu in view of Franaszek” and “the additional limitation of claim 19 is
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`rendered obvious by Hsu in view of Langdon”). The Petition never
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`addresses the proposed combination of all three references (i.e., Hsu in view
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`of Franaszek and further in view of Langdon) and never provides any
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`motivation to make such a combination. Nonetheless, Petitioner simply
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`asserts that “claim 19 is rendered obvious by Hsu in view of Franaszek and
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`further in view of Langdon, Jr.” Id.
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`Ground 8, like Ground 4, again seeks to shift Petitioner’s burden to
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`Patent Owner or the Board. See id. at 59 (“This ground is presented . . . to
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`the extent the Board concludes that Franaszek does not disclose the ‘null
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`data compression type descriptor’ of claims 16 and 17 and that Franaszek
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`does not render that requirement obvious. This ground is further presented
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`. . . to the extent the Board concludes that Franaszek does not disclose two
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`encoders in a parallel configuration.” (emphasis added)). Petitioner
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`previously asserted, in Grounds 3 and 4, that Franaszek met all of those
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`limitations.
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`Ground 9 proposes yet another obviousness theory based on
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`Franaszek (this time, in combination with Hsu) and yet again fails to identify
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`the differences between the prior art and the claims. See id. at 64 (“This
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`ground is presented . . . to the extent the Board concludes that Franaszek
`
`does not disclose the required ‘null data compression type descriptor’
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`limitations of claims 16 and 17 and that Franaszek does not render those
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`limitations obvious.” (emphasis added)). As in Ground 8, Petitioner
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`previously asserted in Grounds 3 and 4 that Franaszek alone met all of those
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`limitations.
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`Finally, Ground 10 proposes a fifth Ground based on Franaszek,
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`challenging claim 19 with the combination of Franaszek in view of Hsu and
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`further in view of Langdon, and again fails for the same reasons noted
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`above. Id. at 66 (“This ground is presented . . . to the extent the Board
`
`concludes that Franaszek does not disclose the parallel encoders required by
`
`claim 19 and that Franaszek does not render that limitation obvious. This
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`ground is also presented . . . to the extent the Board finds Franaszek does not
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`disclose the ‘receiving’ or ‘transmitting’ limitations of claim 17, from which
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`claim 19 depends.”). The Petition then urges that the two separate,
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`previously-presented combinations of Hsu with Franaszek and Hsu with
`
`Langdon each teach a claim. Id. (“Franaszek in view of Hsu renders claim
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`17 obvious” and “Franaszek in view of Langdon, Jr. renders the additional
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`limitation of claim 19 obvious”). The Petition never addresses the proposed
`
`combination of all three references (i.e., Franaszek in view of Hsu and
`
`further in view of Langdon) and never provides any motivation to make such
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`a combination. Nonetheless, Petitioner simply asserts that “Franaszek in
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`view of Hsu and further in view of Langdon, Jr. renders claim 19 obvious,”
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`Id.
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`Thus, throughout its eight obviousness Grounds, the Petition fails to
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`identify even a single difference between the prior art and the claims at
`
`issue, as it must. Shopkick Inc. v. Novitaz, Inc., IPR2015-00279, Paper 7 at
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`27-28 (PTAB May 29, 2015).
`
`B.
`
`The Petition presents numerous horizontally and vertically
`redundant Grounds without distinguishing between them.
`(Grounds 1-10)
`
`Where a Petitioner presents multiple redundant grounds and makes no
`
`meaningful distinction between them, the Board has consistently declined to
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`address all of those proffered grounds. See, e.g., id. (declining to institute review
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`on various combinations because “Petitioner does not articulate meaningful
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`distinctions between its obviousness argument[s]”); Hyundai Motor Co. v.
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`American Vehicular Sciences LLC, IPR2014-00658, Paper 8 at 23 (PTAB Sep. 18,
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`2014) (declining to institute on redundant grounds because “[a] proper lack of
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`redundancy argument requires a two-way analysis between each pair of grounds at
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`issue; simply identifying differences in the disclosures of the prior art references is
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`insufficient.”); Liberty Mutual Insurance Company v. Progressive Casualty
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`Insurance Company, CBM-2012-00003, Paper 7 at 2 (PTAB Oct. 25, 2012) (“In
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`the present situation, the multiplicity of Grounds requires so much of the petition
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`that the Petitioner has failed to expressly identify the differences between any
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`claim and the prior art in the Petitioner's assertion of obviousness.”).
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`The Board has the authority to deny a Petition on that basis under its
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`discretionary power to “secure the [j]ust, speedy and inexpensive resolution of
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`every proceeding.” 37 C.F.R. § 42.1(b). In exercising that discretion, the Board
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`considers “whether Petitioner articulated meaningful distinctions between its
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`patentability arguments by, for example, explaining the relative strengths and
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`weaknesses of various prior art combinations with respect to one or more claim
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`limitations.” Apple Inc. v. OpenTV, Inc., IPR2015-00980, Paper 11 at 25-26
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`(PTAB Sep. 28, 2015).
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`The Petition here presents numerous horizontally and vertically redundant
`
`grounds. Petitioner alleges invalidity of each claim on a minimum of five separate
`
`Grounds—for example, independent claim 16 is challenged based on anticipation
`
`by Hsu (Ground 1), anticipation by Franaszek (Ground 3), obviousness over
`
`Franaszek (Ground 4), obviousness over Franaszek in view of Lang (Ground 8),
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`and obviousness over Franaszek in view of Hsu (Ground 9).
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`Moreover, the Petition does not evaluate the relative strengths and
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`weaknesses of its duplicative Grounds. For example, with respect to independent
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`claim 16, the Petition states in Ground 1 that “[e]ach and every element of [claim
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`16] is disclosed by Hsu” but then equally states in Ground 3 that “[e]ach and every
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`element of [claim 16] is disclosed by Franaszek.” Compare Petition at 16 with id.
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`at 30. Nonetheless, Ground 4 is “presented as an alternative to Ground 3 . . . to the
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`extent the Board finds that Franaszek does not disclose the ‘null data compression
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`type descriptor’” of claim 16 (Petition at 46), and then Grounds 8 and 9 are both
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`presented as even further alternatives to the extent the Board finds the same “null
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`data compression type descriptor” limitation missing from Grounds 3 and 4.
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`Petition at 59, 64.1 The Petition thus takes five bites at the apple trying to show that
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`the prior art discloses the “null data compression type descriptor” limitation, yet
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`fails to provide any “two-way analysis between each pair of grounds at issue.”
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`Hyundai Motor, IPR2014-00658, Paper 8 at 23.
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`The Petition similarly fails to supply the required redundancy analysis to
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`support its five attempts to invalidate dependent claims 34 and 35 (Grounds 1, 3, 4,
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`8, and 9), six attempts to invalidate dependent claims 17 and 18 (Grounds 2, 3, 4,
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`5, 8, and 9), six slightly different attempts to invalidate dependent claim 32
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`(Grounds 1, 3, 4, 5, 8, and 9), and seven attempts to invalidate dependent claim 19
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`(Grounds 3, 4, 6, 7, 8, 9, and 10).
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`1 The Petition also states that Ground 8 “is further presented as an alternative
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`to Ground 3 with respect to claim 19,” but then does not discuss claim 19 at all.
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`See Petition at 59-64.
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`Accordingly, the Board should decline to review and reject institution on
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`IPR2017-00557
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`Petitioner’s redundant Grounds.
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`C. The Petition fails to meet statutory requirements in Grounds 4, 5,
`7, 8, 9, and 10.
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`The Petition must set forth “[h]ow the construed claim is unpatentable under
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`the statutory grounds identified,” including “specify[ing] where each element of
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`the claim is found in the prior art patents or printed publications relied upon[.]” 37
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`C.F.R. § 42.104(b). Where a Ground fails to provide a mapping of the prior art to
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`the claims or a motivation to combine prior art references relied upon, institution
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`on that Ground must be denied. See, e.g., Fox Factory, Inc. v. Sram, LLC,
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`IPR2017-00118, Paper 8 at 25 (PTAB Apr. 12, 2017) (denying institution as to
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`grounds for which Petitioner provided “no specific mapping to the claims” and “no
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`specific motivation to combine,” and declining “Petitioner’s invitation to piece
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`together a motivation from the motivations presented for the other combinations”).
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`In Grounds 4, 5, 7, 8, 9, and 10, the Petitioner fails to meet those requirements.
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`In Ground 4, the Petitioner alleges that “Franaszek renders obvious claims
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`16-19, 32, 34, and 35.” Petition at 46. Similarly, in Grounds 8 and 9, the Petitioner
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`urges that the same set of claims are rendered obvious over Franaszek in view of
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`Langdon and Franaszek in view of Hsu, respectively. See Petition at 59 (Ground
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`8), 64 (Ground 9). In each of those three Grounds, however, the Petition only
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`discusses one limitation of claim 16 and claim 17. See Petition at 46-49 (Ground
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`4), 59-64 (Ground 8), 64-65 (Ground 9). The below table summarizes the claims
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`challenged versus the claims not discussed for each of those three Grounds:
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` Claims Challenged Claims Not Discussed
`16-19, 32, 34, 35
`18, 19, 32, 34, 35
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`16-19, 32, 34, 35
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`18, 19, 32, 34, 35
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`Ground 4 - §103
`Franaszek
`Ground 8 - §103
`Franaszek & Langdon
`Ground 9 - §103
`Franaszek & Hsu
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`The Petition thus fails to identify “where each element of the claim is found in the
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`16-19, 32, 34, 35
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`18, 19, 32, 34, 35
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`prior art patents or printed publications relied upon” in those Grounds.
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`In Ground 5, the Petitioner alleges that the combination of Hsu and
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`Franaszek renders obvious claims 17, 18, and 32. See Petition at 49. But with
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`respect to claim 32, the Petitioner fails to identify which art it is relying upon.
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`Instead, it simply urges that “Hsu and Franaszek both disclose that the size of each
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`one of said plurality of data blocks is variable.” Petition at 50. Because the Petition
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`does not identify whether it is relying on Hsu or Franaszek as to claim 32, it fails to
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`set forth “the patents or printed publications relied upon” for Ground 5.
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`In Grounds 7 and 10, the Petition is deficient in identifying the motivations
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`to combine that it relies upon. Ground 7 presents a combination of Hsu in view of
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`Franaszek and further in view of Langdon but does not present any discussion of a
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`motivation to combine those references. Id. at 59. Ground 10 uses those same
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`references but changes the order to Franaszek in view of Hsu and further in view of
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`Langdon. Id. at 66. Ground 10 cites prior motivations to combine Franaszek with
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`Hsu (Ground 9) and, separately, Franaszek with Langdon (Ground 8), but never
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`provides any motivation to combine all three references. Id. Accordingly, those
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`Grounds should be denied for failure to identify the motivations to combine relied
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`upon. See, e.g., Fox Factory, IPR2017-00118, Paper 8 at 25 (denying institution as
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`to grounds for which Petitioner provided “no specific motivation to combine” and
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`declining “Petitioner’s invitation to piece together a motivation from the
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`motivations presented for the other combinations”).
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`The Board should therefore reject the Petition as to the Grounds and claims
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`identified above, for which the Petition is deficient.
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`V. There is no evidence that Hsu applies compression or outputs its
`alleged descriptor on a block-by-block basis as required by claim 16
`steps C1-C4 and D1-D3. (Grounds 1, 2, and 5-7)
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`In five of the ten asserted grounds of invalidity, Petitioner relies on Hsu as
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`the sole base reference meeting the requirements of independent claim 16. But
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`independent claim 16 requires a method that compresses and outputs data type
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`descriptors on a block-by-block basis. Indeed, Petitioner expressly acknowledged
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`that fact, stating that “[t]he ’867 Patent explains that ‘data compression is
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`performed on a per data block basis,’ where each data block is sent to the encoder
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`module and compressed by each encoder E1. . . En.” Petition at 7 (quoting and
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`citing ’867 Patent at 8:11-17) (emphasis added).
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`Hsu, by comparison, describes a different approach that groups multiple data
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`IPR2017-00557
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`blocks together and outputs a compression history only once it has compressed an
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`entire file. As shown in this Section, neither the Petition nor the supporting
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`declaration of Petitioner’s expert, Dr. Creusere, explains how Hsu’s file-by-file
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`teachings could teach claim 16’s individual-block method. Petitioner’s five Hsu-
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`based Grounds thus fail.
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`A. Claim 16 requires block-by-block compression and output of the
`data type descriptor.
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`1.
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`The plain language of claim 16 recites compressing (or not
`compressing) an individual “particular” block and
`outputting it with its descriptor.
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`The plain language of claim 16 is expressly structured on a block-by-block
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`basis. The only step of claim 16 that requires more than one data block is the initial
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`step A, which recites “receiving a plurality of data blocks.” After receiving the
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`“plurality of data blocks” in step A, the very next step B is specifically directed to
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`“determining whether or not to compress each one of said plurality of data
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`blocks[.]”
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`The method of claim 16 then recites two sets of steps based on whether the
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`determination in step B was to compress (steps C1-C4) or not compress (step D1-
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`D3) each data block. The first step in each path (steps C1 and D1) both recite “said
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`determination” and thus expressly tie back to the determination made with respect
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`to each one of the data blocks in step B. Moreover, both steps C1 and D1
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`expressly recite t