Patent No. 7,161,506
`Petition for Inter Partes Review
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`NetApp, Inc., Rackspace US, Inc.
`Petitioner
`
`v.
`
`Realtime Data LLC
`Patent Owner
`
`Patent No. 7,161,506
`
`
`_______________
`
`
`
`Inter Partes Review No. IPR2017-01660
`____________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
`
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 et seq.
`
`
`
`dn-193580
`
`

`

`TABLE OF CONTENTS
`
`
`Page
`
`
`TABLE OF AUTHORITIES ..................................................................................iv
`I.
`INTRODUCTION .......................................................................................... 1
`II. NOTICES AND STATEMENTS ................................................................... 3
`III. SUMMARY OF THE ’506 PATENT ............................................................ 5
`A.
`Background of the ’506 Patent ............................................................. 5
`B.
`Priority Date ......................................................................................... 7
`C.
`Prosecution History of the ’506 Patent ................................................ 8
`1.
`Original Prosecution .................................................................. 8
`2.
`First Reexamination ................................................................... 9
`3.
`Second Reexamination ............................................................. 10
`IV. LEVEL OF ORDINARY SKILL IN THE ART .......................................... 11
`V.
`CLAIM CONSTRUCTION ......................................................................... 12
`A.
`“analyzing”/“analyze” ........................................................................ 13
`B.
`“default data compression encoder” ................................................... 13
`VI. GROUNDS OF REJECTION ...................................................................... 13
`VII. DETAILED EXPLANATION UNDER 37 C.F.R. § 42.104(B) ................. 15
`A. Ground 1: Claim 105 is Obvious in View of Hsu and Franaszek ...... 15
`1.
`Summary of Hsu ...................................................................... 15
`2.
`Summary of Franaszek ............................................................ 21
`3.
`Independent Claim 105 Is Obvious in View of Hsu and
`Franaszek ................................................................................. 21
`a.
`Hsu Discloses the Preamble of Claim 105 .................... 22
`b.
`Hsu Discloses Limitation A of Claim 105 .................... 23
`c.
`Hsu Discloses Limitation B of Claim 105 ..................... 24
`d.
`Hsu Discloses Limitation C of Claim 105 ..................... 25
`e.
`Hsu Discloses Limitation D of Claim 105 .................... 26
`
`dn-193580
`
`-i-
`
`

`

`
`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`f.
`
`Implementing Limitation E of Claim 105 in View
`of Hsu and Franaszek Would Have Been Obvious ....... 28
`(i) A Person of Ordinary Skill in the Art Would
`Have Been Motivated to Implement Hsu’s
`System With “a Default Encoder” Such As
`Taught in Franaszek to Provide for
`Maximum Compression ...................................... 29
`(ii) The Combination of Hsu and Franaszek
`Does Nothing More Than Implementing
`One Known Technology with Another
`Known Technology to Produce Predictable
`Results ................................................................. 34
`Hsu Discloses Limitation F of Claim 105 ..................... 37
`g.
`B. Ground 2: Claim 105 is Obvious in View of Hsu and Sebastian ....... 38
`1.
`Summary of Sebastian ............................................................. 38
`2.
`Independent Claim 105 Is Obvious in View of Hsu and
`Franaszek ................................................................................. 39
`a.
`Hsu Discloses the Preamble and Limitations A-D,
`and F of Claim 105 ........................................................ 39
`Implementing Hsu in View of Sebastian to Include
`Limitation E Claim 105 Would Have Been
`Obvious .......................................................................... 39
`C. Ground 3: Claim 105 is Obvious in View of Franaszek and
`Hsu ...................................................................................................... 41
`1.
`Independent Claim 105 Is Obvious in View of Franaszek
`and Hsu .................................................................................... 41
`a.
`Franaszek Discloses the Preamble of Claim 105 .......... 41
`b.
`Franaszek Discloses Limitation A of Claim 105 ........... 41
`c.
`Franaszek Discloses Limitation B of Claim 105 ........... 41
`d.
`Franaszek Discloses Limitation C of Claim 105 ........... 42
`e.
`Franaszek Discloses Limitation D of Claim 105 ........... 43
`
`b.
`
`
`dn-193580
`
`-ii-
`
`
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`f.
`g.
`
`b.
`
`
`
`Franaszek Discloses Limitation E of Claim 105 ........... 43
`Implementing Limitation F of Claim 105 in View
`of Franaszek and Hsu Would Have Been Obvious ....... 44
`D. Ground 4: Claim 105 is Obvious in View of Franaszek and
`Chu ..................................................................................................... 46
`1.
`Summary of Chu ...................................................................... 46
`2.
`Independent Claim 105 Is Obvious in View of Franaszek
`and Chu .................................................................................... 46
`a.
`Franaszek Discloses the Preamble and Limitations
`A-E of Claim 105........................................................... 46
`Implementing Franaszek in View of Chu to
`Include Limitation F of Claim 105 Would Have
`Been Obvious ................................................................. 46
`VIII. CONCLUSION ............................................................................................. 48
`
`
`dn-193580
`
`-iii-
`
`
`
`

`

`TABLE OF AUTHORITIES
`
`
`
`
`Cases
`Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC,
`825 F.3d 1373 (Fed. Cir. 2016) .......................................................................... 31
`
`Page(s)
`
`In re CSB-System Int’l, Inc.,
`832 F.3d 1335 (Fed. Cir. 2016), cert. denied, 137 S. Ct. 1384
`(2017) .................................................................................................................. 12
`
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) ........................................................................................ 12
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 35, 36
`
`McGinley v. Franklin Sports, Inc.,
`262 F.3d 1339 (Fed. Cir. 2001) .......................................................................... 36
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .......................................................... 12
`
`
`
`
`
`
`
`
`dn-193580
`
`-iv-
`
`

`

`Inter Partes Review of USP 7,161,506
`
`Exhibit List for Inter Partes Review of U.S. Patent No. 7,161,506
`
`Exhibit Description
`
`U.S. Patent No. 7,161,506 (the “’506 patent”), including Reexamination
`Certificate No. 7,161,506 C1 and Reexamination Certificate No.
`7,161,506 C2
`
`Hsu and Zwarico, “Automatic Synthesis of Compression Techniques for
`Heterogeneous Files,” Software-Practice and Experience, Vol. 25(10),
`1097-1116 (October 1995) (“Hsu”)
`
`U.S. Patent No. 5,870,036 (“Franaszek”)
`
`U.S. Patent No. 6,195,024 (the “’491 application”)
`
`Declaration of Dr. Daniel Hirschberg (“Hirschberg Decl.”)
`
`July 5, 2006 Notice of Allowability, Application No. 10/668,768
`
`December 15, 2009 Non-Final Office Action, Reexamination No.
`95/000,479
`
`January 18, 2012 Decision on Appeal, Reexamination No. 95/000,479
`
`April 25, 2012 Inter Partes Reexamination Petition, Reexamination No.
`95/001,926
`
`August 16, 2013 Right of Appeal Notice, Reexamination No. 95/001,928
`
`Memorandum Opinion and Order (“Claim Construction Order”)
`
`U.S. Patent No. 6,253,264 (“Sebastian”)
`
`U.S. Patent No. 5,467,087 (“Chu”)
`
`Declaration of Dr. Scott Bennett (“Bennett Decl.”)
`
`D.A. Lelewer and D.S. Hirschberg, “Data compression,” Computing
`Surveys 19:3 (1987) 261-297
`
`Exhibit #
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`
`dn-193580
`
`-iv-
`
`
`
`

`

`Inter Partes Review of USP 7,161,506
`
`Exhibit Description
`
`International Patent Application Publication No. WO 2001/063772
`
`International Patent Application Publication No. WO 2001/050325
`
`Exhibit #
`1016
`
`1017
`
`
`dn-193580
`
`-v-
`
`
`
`

`

`Inter Partes Review of USP 7,161,506
`
`Petitioner NetApp, Inc. and Petitioner Rackspace US, Inc. (collectively
`
`“Petitioner” herein) respectfully petition for inter partes review (IPR) of claim 105
`
`of U.S. Patent No. 7,161,506 (“the ’506 patent” (Ex. 1001)) in accordance with
`
`35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et seq. Claim 105 has been
`
`challenged in other IPR proceedings. This petition relies on similar grounds and
`
`different grounds as presented in the other proceedings.
`
`I.
`
`INTRODUCTION
`
`The ’506 patent relates generally to “[s]ystems and methods for providing
`
`fast and efficient data compression using a combination of content independent
`
`data compression and content dependent data compression.” ’506 patent at
`
`Abstract. For example, claim 105 generally recites a method for compressing a
`
`data block by associating encoders to data types, analyzing the block to identify a
`
`data type by a means that is not based only on a descriptor indicative of the data
`
`type, and using a compression encoder associated with the identified data type if
`
`one is associated to that type. If no encoder is associated to that data type, then the
`
`block is compressed with a default data compression encoder.
`
`The challenged claim, however, does not recite new compression
`
`technology, such as a new compression algorithm. Instead, the challenged claim
`
`merely claims a well-known way to select a well-known compression algorithm to
`
`apply to a data block.
`
`dn-193580
`
`1
`
`

`

`Inter Partes Review of USP 7,161,506
`
`For example, “Automatic Synthesis of Compression Techniques for
`
`Heterogeneous Files,” by Hsu and Zwarico and published in 1995 (“Hsu,”
`
`Ex. 1002) discloses a “compression technique for heterogeneous files, those files
`
`which contain multiple types of data such as text, images, binary, audio, or
`
`animation. The system uses statistical methods to analyze data blocks to determine
`
`parameters of the data blocks that are used to determine the best algorithm to use in
`
`compressing each block of data in a file (possibly a different algorithm for each
`
`block).” Hsu at Abstract. The Hsu system analyzes the data itself within a data
`
`block and compares the pattern of data found to known data patterns to determine
`
`which content dependent data compression encoder to apply. Accordingly, Hsu
`
`discloses analyzing data within a data block to determine a data type based on
`
`something other than a descriptor, and then applying content dependent data
`
`compression when the data type is recognized.
`
`Similarly, Franaszek (U.S. Patent No. 5,870,036 (Ex. 1003)) filed February
`
`24, 1995, discloses using selecting compression methods for data blocks based on
`
`a data type of the data block. Franaszek at 5:49-5:54. When the data type is not
`
`available, Franaszek teaches using one or more default compression methods. Id.
`
`The combination of Hsu and Franaszek discloses all of the limitations of the
`
`challenged claim. As explained below, a person of ordinary skill in the art would
`
`have found claim 105 obvious in view of Hsu’s and Franaszek’s teachings, as well
`
`dn-193580
`
`2
`
`

`

`Inter Partes Review of USP 7,161,506
`
`as the other combinations presented below. Accordingly, the challenged claim is
`
`obvious and unpatentable.
`
`II. NOTICES AND STATEMENTS
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), NetApp Inc., SolidFire LLC,1 and
`
`Rackspace US, Inc. are each a real party-in-interest.
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner identifies the following related
`
`matters. In the Eastern District of Texas, Patent Owner has asserted the
`
`’506 patent in Case Nos.: 6-16-cv-01037, 6-16-cv-01035, 6-16-cv-00961, 6-16-cv-
`
`00089, 6-16-cv-00086, 6-16-cv-00088, 6-16-cv-00087, 6-17-cv-00071, 6-10-cv-
`
`00493, 6-09-cv-00333, 6-09-cv-00327, 6-09-cv-00326, and 6-08-cv-00144. In the
`
`Central District of California, Patent Owner has asserted the ’506 patent in Case
`
`No. 2-16-cv-02743. In the Northern District of California, Patent Owner has
`
`asserted the ’506 patent in Case No. 3-17-cv-02109. In the Southern District of
`
`California, Patent Owner has asserted the ’506 patent in Case No. 3-12-cv-01048.
`
`In the Southern District of New York, Patent Owner has asserted the ’506 patent in
`
`Case Nos.: 1-11-cv-06697, 1-11-cv-06696, 1-11-cv-06698, and 1-09-cv-07868. In
`
`the Norther District of Illinois, Patent Owner has asserted the ’506 patent in Case
`
`No. 1-09-cv-04486. Claim 105 of the ’506 patent is challenged in IPR2017-00176
`
`(instituted) and IPR2017-00806 (pending). Claims of the ’506 patent as originally
`
`
`1 SolidFire LLC is wholly owned by NetApp, Inc.
`
`dn-193580
`
`3
`
`

`

`Inter Partes Review of USP 7,161,506
`
`issued were subject to reexamination in inter partes reexamination nos. 95/000,479
`
`and 95/001,926.
`
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner identifies the following
`
`counsel (and a power of attorney for each petitioner accompanies this Petition).
`
`Backup Counsel for Petitioner
`Jonathan Bockman
`JBockman@mofo.com
`Registration No.: 45,640
`MORRISON & FOERSTER LLP
`1650 Tysons Boulevard
`McLean, VA 22102
`Tel: (703) 760-7769
`Fax: (703) 760-7777
`Backup Counsel for Petitioner
`Rackspace US, Inc.
`Kyle Howard
`kyle.howard.ipr@haynesboone.com
`Registration No.: 67,568
`Haynes and Boone, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`Tel: (972) 739-6931
`Fax: (214) 200-0853
`
`Lead Counsel for Petitioner
`Diek O. Van Nort
`DVanNort@mofo.com
`Registration No.: 60,777
`MORRISON & FOERSTER LLP
`370 Seventeenth Street, Suite 4200
`Denver, CO 80202
`Tel: (650) 813-5696
`Fax: (303) 592-1510
`Backup Counsel for Petitioner
`Rackspace US, Inc.
`David L. McCombs
`david.mccombs.ipr@haynesboone.com
`Registration No.: 32,271
`Haynes and Boone, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`Tel: (214) 651-5533
`Fax: (214) 200-0853
`Backup Counsel for Petitioner
`Rackspace US, Inc.
`Greg Webb
`greg.webb.ipr@haynesboone.com
`Registration No.: 59,859
`Haynes and Boone, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`Tel: (972) 739-8641
`Fax: (214) 200-0853
`
`
`dn-193580
`
`4
`
`

`

`Inter Partes Review of USP 7,161,506
`
`Pursuant to 37 C.F.R. § 42.8(b)(4), service information for lead and backup
`
`counsel is provided above. Petitioner consents to electronic service by email to
`
`35667-506-IPR@mofo.com, david.mccombs.ipr@haynesboone.com,
`
`kyle.howard.ipr@haynesboone.com, and greg.webb.ipr@haynesboone.com.
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ’506 patent is
`
`available for inter partes review, and that Petitioner is not barred or estopped from
`
`requesting an inter partes review challenging the patent claim on the grounds
`
`identified in this Petition.
`
`III. SUMMARY OF THE ’506 PATENT
`
`A. Background of the ’506 Patent
`
`The ’506 patent is directed to a method for analyzing a data block and
`
`selecting a compression method for that block. ’506 patent at Abstract. An
`
`embodiment of the alleged invention is depicted in, and is described with respect
`
`to, Figures 13A and 13B (which were not added to the applications in the
`
`’506 patent’s priority chain until October 29, 2001):
`
`dn-193580
`
`5
`
`

`

`Inter Partes Review of USP 7,161,506
`
`
`
`
`
`The “content dependent data recognition module 1300 analyzes the
`
`
`
`incoming data stream to recognize . . . parameters that may be indicative of either
`
`the data type/content of a given data block or the appropriate data compression
`
`algorithm or algorithms (in serial or in parallel) to be applied.” Id. at 16:29-35.
`
`“Each data block that is recognized by the content data compression module 1300
`
`dn-193580
`
`6
`
`

`

`Inter Partes Review of USP 7,161,506
`
`is routed to a content dependent encoder module 1320, if not the data is routed to
`
`the content independent encoder module 30.” Id. at 16:38-42.
`
`The content dependent encoder module 1320 includes “a set of encoders D1,
`
`D2, D3 . . . Dm [that provide] . . . lossless or lossy encoding techniques currently
`
`well known within the art such as MPEG4, various voice codecs, MPEG3, AC3,
`
`AAC, as well as lossless algorithms such as run length, Huffman, Lempel-Ziv
`
`Dictionary Compression, arithmetic coding, data compaction, and data null
`
`suppression.” Id. at 16:45-52 (emphasis added).
`
`The content independent encoder module 30 includes “a set of encoders E1,
`
`E2, E3 . . . En [that provide] . . . lossless encoding techniques currently well known
`
`within the art such as run length, Huffman, Lempel-Ziv Dictionary Compression,
`
`arithmetic coding, data compaction, and data null suppression.” Id. at 16:58-65
`
`(emphasis added).
`
`B.
`
`Priority Date
`
`The ’506 patent includes a priority claim to a long list of U.S. patent
`
`applications dating back to Application No. 09/210,491 (“the ’491 application”),
`
`filed on December 11, 1998, and issued as U.S. Patent No. 6,195,024 (Ex. 1004).
`
`The challenged claim is not supported in the ’491 application and thus is not
`
`entitled to an effective filing date of December 11, 1998. The ’491 application
`
`does not provide written description support for determining whether to compress a
`
`dn-193580
`
`7
`
`

`

`Inter Partes Review of USP 7,161,506
`
`data block with a content dependent compression technique or a content
`
`independent compression technique. It provides no written description support for
`
`analyzing data blocks in order to determine a compression algorithm to apply,
`
`regardless of whether it is content dependent or content independent. Indeed, the
`
`portions of the ’506 patent that describe analyzing a data block to determine a
`
`compression algorithm to apply (see, e.g., Figs. 13A-13B and associated text) were
`
`not included in any of the earlier filed applications until October 29, 2001.
`
`Accordingly, to the extent that the challenged claim is supported at all in the ’506
`
`patent’s specification, the earliest priority date that the challenged claim is entitled
`
`is October 29, 2001.2 Declaration of Dr. Daniel Hirschberg (“Hirschberg Decl.”)
`
`(Ex. 1005), ¶¶ 19-22.
`
`C.
`
`Prosecution History of the ’506 Patent
`
`The ’506 patent was filed on September 22, 2003 and granted January 9,
`
`2007. It has undergone two inter partes reexaminations, during which thirty-three
`
`claims were cancelled and six were added.
`
`1. Original Prosecution
`Challenged claim 105 was added during the second reexamination of the
`
`’506 patent. During the original prosecution of the patent application that issued as
`
`2 The prior art references relied upon in this Petition are still prior art regardless of
`
`whether the ’506 patent is entitled to the December 11, 1998 priority date.
`
`dn-193580
`
`8
`
`

`

`Inter Partes Review of USP 7,161,506
`
`the ’506 patent, the Examiner allowed the claims of the ’506 patent because the
`
`prior art allegedly did “not teach or suggest a method of compressing data having
`
`steps of performing content dependent data compression, if a data type of data
`
`block is identified and performing data compression with a single data
`
`compression encoder, if a data type of data block is not identified” and allegedly
`
`did “not teach or suggest a method for compressing data if the data type of the data
`
`block is identified, then the method further comprising: performing content
`
`dependent data compression to compress the data block; comparing a content
`
`dependent data compression ratio of the compressed data block against a first
`
`threshold; appending a data compression type descriptor to the compressed data
`
`block; outputting the compressed data block and appended data compression type
`
`descriptor, if the content data compression ratio is above the first threshold; and
`
`performing data compression on the data block with a single data compression
`
`encoder, if the content dependent data compression ratio is not above the first
`
`threshold.” July 5, 2006 Notice of Allowability, Application No. 10/668,768 (Ex.
`
`1006) at 2. The Examiner, however, did not discuss or cite any of the references
`
`relied upon in this Petition.
`
`First Reexamination
`2.
`The first inter partes reexamination petition (Reexamination No.
`
`95/000,479) proposed various anticipation and obviousness rejections based on
`
`dn-193580
`
`9
`
`

`

`Inter Partes Review of USP 7,161,506
`
`various references, including Sebastian and Franaszek, to challenge thirty-eight
`
`claims of the ’506 patent. December 15, 2009 Non-Final Office Action,
`
`Reexamination No. 95/000,479 (Ex. 1007) at 2, 5, 9. During appeal, the Board
`
`affirmed that thirty-three of the challenged claims were invalid. January 18, 2012
`
`Decision on Appeal, Reexamination No. 95/000,479 (Ex. 1008) at 4. Accordingly,
`
`a reexamination certificate was issued that canceled thirty-three claims and
`
`affirmed patentability of five claims the ’506 patent. Reexamination Certificate
`
`No. 7,161,506 C1 (Ex. 1001).
`
`Second Reexamination
`3.
`The second inter partes reexamination (Reexamination No. 95/001,926)
`
`relied on a combination of Sebastian and another reference to reject three claims
`
`that survived the first reexamination. April 25, 2012 Inter Partes Reexamination
`
`Petition, Reexamination No. 95/001,926 (Ex. 1009) at 2. No other references
`
`relied upon in the present Petition were included in the second reexamination
`
`petition. In the resulting reexamination certificate, the Patent Office affirmed the
`
`patentability of the three claims as amended. Reexamination Certificate No.
`
`7,161,506 C2 (Ex. 1001).
`
`The Patent Office also confirmed several new claims that Patent Owner
`
`added during the reexamination, including claim 105, which is the challenged
`
`claim in this Petition. The Patent Office confirmed claim 105 over anticipation
`
`dn-193580
`
`10
`
`

`

`Inter Partes Review of USP 7,161,506
`
`rejections in view of Franaszek and Sebastian. August 16, 2013 Right of Appeal
`
`Notice, Reexamination No. 95/001,928 (Ex. 1010) at 4-5. Specifically, the
`
`Examiner found that Franaszek and Sebastian individually do “not specifically
`
`disclose or fairly teach analyzing data with the data block to identify one or more
`
`data types of data within the data block, wherein the analyzing of the data within
`
`the data block to identify one or more data types excludes analyzing based only on
`
`a descriptor that is indicative of the data type of data within the data block.” Id. In
`
`contrast to this Petition, however, the Patent Office never considered whether
`
`claim 105 is patentable in view of Franaszek combined with other references that
`
`teach this limitation, such as Hsu and Chu (discussed in detail below).
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`
`As of the priority date of the ’506 patent, a person having ordinary skill in
`
`the art relevant to the ’506 patent would have had an undergraduate degree in
`
`computer science, computer engineering, electrical and computer engineering, or
`
`an equivalent field as well as one to three years of experience working with data
`
`compression or a graduate degree with coursework or research in the field of data
`
`compression. Individuals with additional education or additional industrial
`
`experience could still be of ordinary skill in the art if that additional education or
`
`experience compensated for a deficit in one of the other aspects of the
`
`requirements stated above. Hirschberg Decl., ¶¶ 32-33. In this Petition, reference
`
`dn-193580
`
`11
`
`

`

`Inter Partes Review of USP 7,161,506
`
`to a person having ordinary skill in the art refers to a person with these
`
`qualifications.
`
`V. CLAIM CONSTRUCTION
`
`Pursuant to 37 C.F.R. § 42.100(b), a claim of an unexpired patent is given its
`
`broadest reasonable interpretation in light of the specification. See Cuozzo Speed
`
`Techs., LLC v. Lee, 136 S. Ct. 2131 (2016). If, however, a patent expires during an
`
`IPR proceeding, a claim is interpreted according “the Phillips standard for claim
`
`construction.” In re CSB-System Int’l, Inc., 832 F.3d 1335, 1341 (Fed. Cir. 2016),
`
`cert. denied, 137 S. Ct. 1384 (2017). Because the ’506 patent will likely expire
`
`during the IPR, for the purposes of this proceeding, all terms have their meaning
`
`according to Phillips, “which emphasizes considering the plain meaning of the
`
`claim terms themselves in light of the intrinsic record.” Id. at 1340 (citing Phillips
`
`v. AWH Corp., 415 F.3d 1303, 1312-15 (Fed. Cir. 2005) (en banc)). This claim
`
`construction standard, however, does not necessarily result in a narrower
`
`construction. Id. at 1337-38 (“We conclude, however, that the Board’s claim
`
`construction was correct even under the Phillips standard, and we affirm its
`
`rejection of all claims of the [challenged] patent as unpatentable over the prior
`
`art.”).
`
`Petitioner does not believe that any constructions are necessary to resolve
`
`this IPR. Below, however, Petitioner sets forth relevant constructions from the
`
`dn-193580
`
`12
`
`

`

`Inter Partes Review of USP 7,161,506
`
`related district court case involving the ’506 patent. For purposes of this Petition,
`
`the prior art is applied to the challenged claims consistent with these constructions.
`
`“analyzing”/“analyze”
`
`A.
`Patent Owner, in the district court case against Petitioner, has asserted that
`
`“analyzing”/“analyze” “means directly examining / directly examine.” Claim
`
`Construction Order (Ex. 1011) at 32. Additionally, the court adopted this
`
`construction in the claim construction order. Id. at 34. Accordingly, for the
`
`purposes of this Petition this construction is applied
`
`“default data compression encoder”
`
`B.
`In the district court case against Petitioner, Patent Owner and Petitioner
`
`agreed that this term means “an encoder used automatically in the absence of a
`
`designated alternative.” Id. at 35. Accordingly, for the purposes of this Petition
`
`this construction is applied.
`
`VI. GROUNDS OF REJECTION
`
`Petitioner requests cancellation of claim 105 of the ’506 patent in view of
`
`the following references and grounds:
`
`• Ground 1: Claim 105 is obvious over Hsu3 in view of Franaszek;4
`
`• Ground 2: Claim 105 is obvious over Hsu in view of Sebastian;5
`
`3 Exhibit 1002. Hsu qualifies as prior art under §§ 102(a) and (b).
`
`4 Exhibit 1003. Franaszek qualifies as prior art under §§ 102(a), (b), and (e).
`
`dn-193580
`
`13
`
`

`

`Inter Partes Review of USP 7,161,506
`
`• Ground 3: Claim 105 is obvious over Franaszek in view of Hsu; and
`
`• Ground 4: Claim 105 is obvious over Franaszek in view of Chu.6
`
`All of the above references were cited during the original prosecution or the
`
`reexaminations of the ’506 patent, along with hundreds of other references. While
`
`Franaszek has previously been found not to anticipate claim 105, the combination
`
`of Franaszek with Hsu or Chu was not applied to claim 105 during the original
`
`prosecution of the ’506 patent or during either of the reexaminations. In
`
`IPR2017-00176, the PTAB has instituted inter partes review of the ’506 patent,
`
`including claim 105, based on the combination of Franaszek with other references,
`
`including Hsu.
`
`This Petition, supported by the Declaration of Dr. Daniel Hirschberg filed
`
`herewith (Ex. 1006), demonstrates that there is a reasonable likelihood that
`
`Petitioner will prevail in demonstrating that the challenged claim is not patentable.
`
`See 35 U.S.C. § 314(a).
`
`VII. DETAILED EXPLANATION UNDER 37 C.F.R. § 42.104(B)
`Pursuant to Rule 42.104(b)(4)-(5), specific grounds identified below and
`
`discussed in the Hirschberg Declaration show in detail the prior art disclosures that
`
`make the challenged claim obvious.
`
`5 Exhibit 1012. Sebastian qualifies as prior art under §§ 102(a) and (e).
`
`6 Exhibit 1013. Chu qualifies as prior art under §§ 102(a), (b), and (e).
`
`dn-193580
`
`14
`
`

`

`Inter Partes Review of USP 7,161,506
`
`A. Ground 1: Claim 105 is Obvious in View of Hsu and Franaszek
`
`Hsu was among hundreds of prior art references cited by the Patent Owner
`
`during the reexaminations but was never substantively applied to or discussed with
`
`respect to claim 105 of the ’506 patent during the original prosecution or either
`
`reexamination proceeding. As explained below, in addition to Hsu and Franaszek
`
`disclosing each limitation of claim 105, this combination of references also renders
`
`claim 105 obvious. See Hirschberg Decl., ¶¶ 56-63.
`
`Summary of Hsu
`1.
`Hsu was published in the journal Software—Practice and Experience (a
`
`Wiley-Interscience Publication) in October 1995. Hsu at Cover;7 Declaration of
`
`Dr. Scott Bennett (“Bennett Decl.”) (Ex. 1014), ¶ 22. Dr. Bennett confirms that a
`
`copy of Hsu was available in a library in 1995 and that Hsu was accessible to a
`
`person of ordinary skill in the art. Bennett Decl., ¶¶ 36-37. Specifically, in Dr.
`
`Bennett’s opinion, Hsu was available in 1995, from numerous libraries, and an
`
`interested party would have been able to locate Hsu in those libraries without issue.
`
`Id., ¶¶ 28-35. This is not surprising, as Hsu is a journal article that was intended
`
`for distribution among those interested in computer software, including
`
`
`7 Under Rule 803(16) of the Federal Rules of Evidence, Hsu qualifies for the
`
`ancient-document exception to the rule against hearsay.
`
`dn-193580
`
`15
`
`

`

`Inter Partes Review of USP 7,161,506
`
`compression software. Hsu at Editor’s Page (Ex. 1002 at 2). Accordingly, Hsu is
`
`prior art under 35 U.S.C. §102(a) and (b).
`
`Like the ’506 patent, Hsu discloses a technique to select well-known
`
`compression techniques based on a data type of a data block. For example, Hsu
`
`discloses selecting among run length, Huffman, Lempel-Ziv, and arithmetic
`
`encoding, which are the same compression techniques as those identified in the
`
`’506 patent. Compare Hsu at 1107 (Table I) with ’506 patent at 16:46-52. Hsu
`
`recognizes that using such a “system provides better space savings.” Id. at
`
`Abstract.
`
`Hsu’s compression system includes two phases. A first phase that analyzes
`
`data blocks to determine compression encoders8 to use (the analysis phase). A
`
`8 Hsu refers to a “compression algorithm” instead of a compression encoder. See,
`
`e.g., Hsu at Abstract, 1106. The challenged claim uses the term compression
`
`“encoder.” See, e.g., ’506 patent at Claim 105. The rest of the ’506 patent uses the
`
`terms “encoder” and “algorithm” interchangeably. See, e.g., ’506 patent at 23:21-
`
`27 (“The system of FIGS. 17a and 17b additionally uses a priori estimation
`
`algorithms or look-up tables to estimate the desirability of using content
`
`independent data compression encoders and/or content dependent data compression
`
`encoders and selecting appropriate algorithms or subsets thereof based on such
`
`estimation.” (emphasis added)). For ease of discussion, the Petition uses
`
`dn-193580
`
`16
`
`

`

`Inter Partes Review of USP 7,161,506
`
`second phase that compresses the data blocks and ensures that negative
`
`compression (i.e., expansion) does not occur (the compression phase).
`
`In the first phase (the analysis phase), the data within each data block to be
`
`compressed is analyzed. Four routines are used to determine a type of the data.
`
`One routine determines a “data classification” of a data block by analyzing
`
`512-byte segments at the beginning, middle, and end of the data block. The other
`
`three routines each determine a “redundancy metric” that indicates the
`
`“compressibility of a block of data” by various types of compression encoders.
`
`Hsu at 1104.
`
`Hsu’s three redundancy metrics are based on statistical measures of the data
`
`blocks:
`
`
`
`
`
`• “the degree of variation in character frequen