NETAPP V. REALTIME
`IPR2017-01660
`EXHIBIT 2010
`
`(Declaration of Dr. Kenneth Zeger, previously
`filed in IPR2016-00373 as Exhibit 2022)
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________________________
`
`ORACLE AMERICA, INC.
`Petitioner
`
`v.
`
`REALTIME DATA LLC
`Patent Owner
`
`____________________
`
`Case IPR2016-00373
`Patent No. 7,378,992 B2
`____________________
`
`DECLARATION OF KENNETH A. ZEGER, PH.D., IN SUPPORT OF
`PATENT OWNER’S RESPONSE TO PETITION
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Realtime 2022
`Oracle v. Realtime
`IPR2016-00373
`
`

`

`Case IPR2016-00373
`Patent 7,378,992
`
`I.  
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................ 1  
`Engagement .......................................................................................... 1  
`  
`Background and Qualifications ............................................................ 1  
`  
`II.   MATERIALS CONSIDERED .................................................................... 5  
`III.   OVERVIEW OF THE LAW USED FOR THIS DECLARATION ........ 9  
`The Person of Ordinary Skill in the Art ............................................... 9  
`  
`   Obviousness Law ............................................................................... 10  
`INSTITUTED GROUNDS ......................................................................... 13  
`IV.  
`V.   OVERVIEW OF THE ’992 PATENT ...................................................... 13  
`Background ........................................................................................ 13  
`  
`Specification ....................................................................................... 16  
`  
`Challenged Claim ............................................................................... 17  
`  
`VI.   APPLIED REFERENCES ......................................................................... 19  
`   Hsu ..................................................................................................... 19  
`Franaszek ............................................................................................ 25  
`  
`Sebastian ............................................................................................. 31  
`  
`VII.   ANALYSIS OF THE CHALLENGED CLAIMS AND THE
`ASSERTED REFERENCES ..................................................................... 34  
`   Hsu alone fails to teach a default encoder because the Limpel-
`Ziv compression algorithm by itself does not implicitly teach
`the claimed default encoder. (All Grounds) ....................................... 34  
`   Oracle’s alleged modification of Hsu’s content dependent
`technique to classify data blocks as unidentified or
`unrecognized data types would fundamentally alter how Hsu
`operates and therefore, the combination of Hsu and Franaszek
`or Hsu and Sebastian are not obvious. (All Grounds) ........................ 40  
`Hsu’s fundamental operation is a content dependent
`1.  
`technique, and not a default encoder, that classifies each
`data block as one of ten possible data types using a “most
`applicable” data type classification technique and selects
`and applies a compression algorithm based on the
`
`
`
`

`

`2.  
`
`3.  
`
`Case IPR2016-00373
`Patent 7,378,992
`classified data type and the determined redundancy
`metrics. ..................................................................................... 42  
`The modification of Hsu’s content dependent technique,
`and not a default encoder, that relies on the “most
`applicable” data type classification to classify data blocks
`as unidentified or unrecognized data types would alter
`how Hsu operates and would require substantial
`modifications. ........................................................................... 46  
`Hsu cannot and does not teach that its “most applicable”
`data type classification technique can classify data blocks
`as unidentified or unrecognized data types. ............................. 49  
`   Oracle’s rationales to combine Hsu and Franaszek are
`inadequate. (Ground 1) ....................................................................... 52  
`Oracle’s rationale that it would have been easy to modify
`1.  
`Hsu with Franaszek and accordingly, modify Hsu to
`compress unknown data types is contrary to Hsu’s
`teachings and lacks adequate explanation. ............................... 54  
`Hsu does not allow for compression of
`a)  
`unrecognized or unidentified data types. ....................... 55  
`Adding an entry to Hsu’s Table I and extending
`Hsu’s block analysis routines do not explain how
`and why Hsu could be modified to compress
`unrecognized data types. ................................................ 59  
`Hsu’s teaching that its database could be updated
`and block analysis routines extended do not
`expressly or implicitly explain how Hsu could be
`modified to compress unrecognized data types. ............ 61  
`Oracle’s rationale that a POSA would have combined
`Hsu with Franaszek because they are similar is generic
`and is insufficient to explain why a POSA would have
`combined these specific portions of Hsu and Franaszek to
`arrive at the claimed invention. ................................................ 62  
`Oracle’s rationale that the Hsu/Franaszek combination
`would have been optimal is vague and inadequate to
`explain why a POSA would have combined Hsu’s two-
`pass compression method with Franaszek’s block-by-
`
`b)  
`
`c)  
`
`2.  
`
`3.  
`
`
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`

`

`4.  
`
`5.  
`
`  
`
`Case IPR2016-00373
`Patent 7,378,992
`block analysis and compression system to arrive at the
`claimed invention. .................................................................... 67  
`Oracle never explains how the combination of Hsu and
`Franaszek would operate to teach the invention as
`claimed and instead merely characterizes and quotes
`specific out-of-context teachings of Hsu and Franaszek. ........ 72  
`Dr. Storer’s book does not suggest claimed default
`encoder. .................................................................................... 73  
`   Hsu teaches away from Franaszek because Hsu specifically
`teaches that Franaszek’s compression and analysis on a block-
`by-block basis would lead to an undesirable result where
`additional storage savings would be dominated by overhead.
`(Ground 1) .......................................................................................... 75  
`Oracle’s rationales to combine Hsu and Sebastian are
`inadequate. (Ground 2) ....................................................................... 82  
`Oracle’s rationale that it would have been easy to modify
`1.  
`Hsu with Sebastian and accordingly, modify Hsu to
`compress unknown data types is contrary to Hsu’s
`teachings and lacks adequate explanation. ............................... 83  
`Oracle’s rationale that a POSA would have combined
`Hsu with Sebastian because they are similar is generic
`and is insufficient to explain why a POSA would have
`combined these specific portions of Hsu and Franaszek to
`arrive at the claimed invention. ................................................ 86  
`Oracle’s rationale that the Hsu/Sebastian combination
`would have been optimal is not only generic but also
`vague and is inadequate to explain why a POSA would
`have combined Hsu’s two-pass compression method with
`Sebastian’s generic filter and compression system to
`arrive at the claimed invention. ................................................ 89  
`Oracle never explains how the combination of Hsu and
`Franaszek would operate to teach the invention as
`claimed and instead merely characterizes and quotes
`specific out-of-context teachings of Hsu and Sebastian. ......... 91  
`Dr. Storer’s book does not suggest claimed default
`encoder. .................................................................................... 92  
`
`2.  
`
`3.  
`
`4.  
`
`5.  
`
`
`
`- iv -
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`

`

`  
`
`Case IPR2016-00373
`Patent 7,378,992
`None of Realtime’s positions or my opinions are premised on
`bodily incorporation of Franaszek’s block-by-block analysis or
`Sebastian’s generic filter into the physical structure of Hsu’s
`two-pass compression method. (All Grounds) ................................... 92  
`VIII.   CONCLUSION ........................................................................................... 94  
`
`
`
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`

`

`Case IPR2016-00373
`Patent 7,378,992
`I, Kenneth A. Zeger, Ph.D., a resident of San Diego, California, declare as
`
`follows:
`
`I.  
`
`INTRODUCTION
`   Engagement
`1.  
`I have been retained by Patent Owner Realtime Data LLC (“Realtime”
`
`or “Patent Owner”) through Zunda LLC to provide my opinions in support of their
`
`Response to the Petition for Inter Partes Review of U.S. Patent No. 7,378,992 to
`
`Fallon, issued on May 27, 2008 (“’992 Patent,” Ex. 1001) pursuant to the legal
`
`standards set forth below. Zunda LLC is being compensated for my time at the rate
`
`of $690 per hour for time spent on non-deposition tasks and for deposition time. I
`
`have no interest in the outcome of this proceeding.
`
`2.  
`
`I have also been asked to provide my technical review, analysis,
`
`insights, and opinions regarding the Declaration of Professor James A. Storer,
`
`Ph.D. (“Storer Declaration,” Ex. 1002) on the obviousness of claim 48 of the ’992
`
`Patent and Oracle America, Inc.’s (“Oracle” or “Petitioner”) Petition that relies on
`
`the Storer Declaration.
`
`3.  
`
`The statements made herein are based on my own knowledge and
`
`opinion.
`
`   Background and Qualifications
`I received a Bachelor’s degree in Electrical Engineering and
`
`4.  
`
`Computer Science from the Massachusetts Institute of Technology in 1984.
`
`
`
`- 1 -
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`

`

`
`
`Case IPR2016-00373
`Patent 7,378,992
`I received a Master of Science degree in Electrical Engineering and
`
`
`
`5.  
`
`Computer Science from the Massachusetts Institute of Technology in 1984.
`
`6.  
`
`I received a Master of Arts degree in Mathematics from the University
`
`of California, Santa Barbara, CA in 1989.
`
`7.  
`
`I received a Ph.D. degree in Electrical and Computer Engineering
`
`from the University of California, Santa Barbara, CA in 1990.
`
`8.  
`
`I am currently a Full Professor of Electrical and Computer
`
`Engineering at the University of California, San Diego (UCSD). I have held this
`
`position since 1998, having been promoted from Associated Professor after two
`
`years at UCSD. I have been an active member of the UCSD Center for Wireless
`
`Communications for 18 years. I teach courses full-time at UCSD in the fields of
`
`Electrical and Computer Engineering, and specifically in subfields including
`
`communications and information theory at the undergraduate and graduate levels.
`
`Prior to my employment at UCSD, I taught and conducted research as a faculty
`
`member at the University of Illinois, Urbana-Champaign for four years, and at the
`
`University of Hawaii for two years.
`
`9.   My twenty-plus years of industry experience includes consulting work
`
`for the United States Department of Defense as well as for private companies such
`
`as Xerox, Nokia, MITRE, ADP, and Hewlett-Packard. The topics upon which I
`
`provide consulting expertise include data communications for wireless networks,
`
`
`
`- 2 -
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`

`

`
`
`Case IPR2016-00373
`Patent 7,378,992
`digital communications, information theory, computer software, and mathematical
`
`
`
`analyses.
`
`10.  
`
`I have authored approximately 70 peer-reviewed journal articles, the
`
`majority of which are on the topic of communications, information theory, or
`
`signal processing. I have also authored over 100 papers at various conferences and
`
`symposia over the past twenty-plus years, such as the: IEEE International
`
`Conference on Communications; IEEE Radio and Wireless Symposium; Wireless
`
`Communications and Networking Conference; IEEE Global Telecommunications
`
`Conference; International Symposium on Network Coding; IEEE International
`
`Symposium on
`
`Information Theory; UCSD Conference on Wireless
`
`Communications; International Symposium on Information Theory and Its
`
`Applications; Conference on Advances in Communications and Control Systems;
`
`IEEE Communication Theory Workshop; Conference on Information Sciences and
`
`Systems; Allerton Conference on Communications, Control, and Computing;
`
`Information Theory and Its Applications Workshop; Asilomar Conference on
`
`Signals, Systems, and Computers. Roughly half of those papers relate to data
`
`compression. I also am co-inventor on a US patent disclosing a memory saving
`
`technique for image compression.
`
`11.  
`
`I was elected a Fellow of the IEEE in 2000, an honor bestowed upon
`
`only a small percentage of IEEE members. I was awarded the National Science
`
`
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`

`

`
`
`Case IPR2016-00373
`Patent 7,378,992
`Foundation Presidential Young Investigator Award in 1991, which included
`
`
`
`$500,000 in research funding. I received this award one year after receiving my
`
`Ph.D.
`
`12.  
`
`I have served as an Associate Editor for the IEEE Transactions on
`
`Information Theory and have been an elected member of the IEEE Information
`
`Theory Board of Governors for three, three-year terms. I organized and have been
`
`on the technical advisory committees of numerous workshops and symposia in the
`
`areas of communications and information theory. I regularly review submitted
`
`journal manuscripts, government funding requests, conference proposals, student
`
`theses, and textbook proposals. I also have given many lectures at conferences,
`
`universities, and companies on topics in communications and information theory.
`
`13.  
`
`I have extensive experience in electronics hardware and computer
`
`software, from academic studies, work experience, and supervising students. I
`
`personally program computers on an almost daily basis and have fluency in many
`
`different computer languages.
`
`14.   My curriculum vitae, attached to this declaration as Exhibit 2023
`
`(“Zeger Curriculum Vitae”), lists my publication record in archival journals,
`
`international conferences, and workshops.
`
`
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`
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`Case IPR2016-00373
`Patent 7,378,992
`
`II.   MATERIALS CONSIDERED
`15.  
`I have been asked to provide a technical review, analysis, insights, and
`
`opinions. My technical review, analysis, insights, and opinions are based on almost
`
`35 years of education, research, and experience, as well as my study of relevant
`
`materials.
`
`16.  
`
`I have reviewed and am familiar with the ’992 patent specification,
`
`claims, and prosecution history. I have been asked to assume for the purpose of
`
`this analysis that the ’992 patent claims the benefit of several U.S. Patent
`
`Applications and that the effective filing date is no later than October 29, 2001.
`
`17.  
`
`I have reviewed and am familiar with the Petition for Inter Partes
`
`Review (Paper 2, “Petition”), Patent Owner Preliminary Response (Paper 6,
`
`“POPR”), and the Board’s Decision to Institute Inter Partes Review (Paper 7,
`
`“Institution Decision”). I am aware that the ’992 patent is at issue in district court
`
`litigation.
`
`18.  
`
`I have reviewed the Declaration of James A. Storer, Ph.D. for
`
`IPR2016-00373. (Ex. 1002, “Storer Declaration”.)
`
`19.  
`
`I have reviewed the following listed references. I understand that the
`
`references are true and accurate copies of what they appear to be. I may rely upon
`
`these materials to respond to arguments raised by Petitioner.
`
`Exhibit
`1001
`
`Reference
`U.S. Patent No. 7,378,992 (“’992 Patent”)
`
`
`
`- 5 -
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`

`

`Exhibit
`1002
`
`1003
`
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`
`1011
`
`1012
`1013
`1014
`1015
`1016
`1017
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`1023
`
`
`
`
`
`
`
`Case IPR2016-00373
`Patent 7,378,992
`
`Reference
`Declaration of Professor James A. Storer, Ph.D. (“Storer
`Declaration”)
`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. 6,253,264 (“Sebastian”)
`’928 Reexamination File History, 6/25/12 Patent Owner Response
`’928 Reexamination File History, 3/5/13 Action Closing Prosecution
`’928 Reexamination File History, 4/5/13 Patent Owner Reply
`’928 Reexamination File History, 8/16/13 Right of Appeal Notice
`’478 Reexamination File History, 3/15/10 Patent Owner Expert
`Declaration
`’478 Reexamination File History, 8/23/10 Action Closing
`Prosecution
`U.S. Patent No. 5,467,087 (“Chu”)
`U.S. Patent No. 6,449,658 (“Lafe”)
`U.S. Patent No. 5,794,229 (“French”)
`U.S. Patent No. 3,394,352 (“Wernikoff”)
`U.S. Patent No. 5,504,842 (“Gentile”)
`U.S. Patent No. 5,638,498 (“Tyler”)
`J. Storer, Data Compression: Methods and Theory, Computer
`Science Press (1988) (“Storer 1988”)
`D. Huffman, “A Method for the Construction of Minimum
`Redundancy Codes,” Proceedings of the IRE 40, 1098-1101 (1952)
`J. Ziv and A. Lempel, “A Universal Algorithm for Sequential Data
`Compression,” IEEE Transactions on Information Theory 23:3, 337-
`343 (1977)
`J. Ziv and A. Lempel, “Compression of Individual Sequences Via
`Variable-Rate Coding,” IEEE Transactions on Information Theory
`(1978)
`U.S. Patent No. 5,379,036 (“Storer ’036”)
`U.S. Patent No. 4,876,541 (“Storer ’541”)
`
`- 6 -
`
`

`

`Exhibit
`1024
`1025
`1026
`1027
`1028
`
`1029
`1030
`1031
`1032
`1033
`1034
`
`1035
`1036
`
`1037
`1038
`
`1039
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`
`
`
`
`
`
`Case IPR2016-00373
`Patent 7,378,992
`
`Reference
`U.S. Patent No. 7,079,051 (“Storer ’051”)
`U.S. Patent No. 6,195,024 (“’024 Patent”)
`U.S. Patent No. 6,624,761 (“’761 Patent”)
`U.S. Patent No. 7,161,506 (“’506 Patent”)
`6/22/09 Packeteer Claim Construction Order, Realtime Data, LLC v
`Packeteer, Inc., et al., E.D. Tex. Case No. 6:2008-cv-144
`MetroPCS Litigation, 4/11/11 Amended Complaint
`MetroPCS Litigation, 9/18/12 Joint Motion to Stay
`MetroPCS Litigation, 10/17/12 Joint Motion for Dismissal
`MetroPCS Litigation, 10/19/12 Order Dismissing Case
`’928 Reexamination File History, 11/21/13 Search Notes
`’478 Reexamination File History, 5/21/09 Request for
`Reexamination
`’478 Reexamination File History, 1/18/12 Decision on Appeal
`’928 Reexamination File History, 3/2/12 Request for Inter Partes
`Reexamination
`’928 Reexamination File History, 4/25/12 Office Action
`’928 Reexamination, 7/25/12 Verizon’s Comments to Patent
`Owner’s Response
`U.S. Patent No. 7,190,284 (“Dye”)
` Bryan A. Garner, “The Redbook: A Manual of Legal Style,”
`Thomson/West, 2nd Ed., 2006
`Notice of Intent to Issue a Reexam Certificate dated August31, 2012
`in Control No. 95/000,478
`List of References Cited by Applicant and Considered by
`Examiner dated November 14, 2013 in Control No.95/001,928
`Realtime Data LLC d/b/a IXO v. Actian Corporation, et al.,
`E.D.Tx, No. 6:15-CV-463-RWS-JDL, Defendant Oracle
`America, Inc.’s Exchange of PreliminaryClaim Constructions and
`Extrinsic Evidence, March 21, 2016
`Deposition Exhibit - Storer Declaration in support of Oracle's
`District Court Claim Construction Brief for Civil Action No. 6:15-
`cv-463-RWS-JDL filed June 13, 2016
`
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`

`

`Exhibit
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012-2021
`2022
`2023
`
`2024
`
`
`
`
`
`
`
`Case IPR2016-00373
`Patent 7,378,992
`
`Reference
`Deposition Exhibit – Oracle’s District Court Claim Construction
`Brief for Civil Action No. 6:15-cv-463-RWS-JDL filed June 13,
`2016
`Deposition Exhibit – Creusere Declaration in support of Dell’s
`Petition challenging ’513 patent in IPR2016-00978 filed April 29,
`2016
`Deposition Exhibit – James A. Storer, “An Introduction to Data
`Structures and Algorithm,” Springer Science+Business Media, LLC,
`2002 (“Deposition Exhibit – Springer”)
`Deposition Exhibit - IBM Dictionary of Computing, International
`Edition, McGraw-Hill Inc. (1994) (“Deposition Exhibit – IBM”)
`Plaintiff Realtime Data LLC’s Opening Claim Construction Brief
`for Civil Action No. 6:15-cv-463-RWS-JDL filed May 23, 2016.
`(“Realtime Opening Claim Construction”)
`Storer Deposition Transcript taken on August 11, 2016. (“Storer
`Deposition”)
`
`INTENTIONALLY LEFT BLANK
`RESERVED
`Kenneth A. Zeger Ph.D. Curriculum Vitae (“Zeger Curriculum
`Vitae”)
`Creusere Declaration in Support of Dell’s Petition challenging U.S.
`Patent No. 7,415,530 in IPR2016-00972 filed on April 29, 2016
`(“Creusere Declaration”)
`
`20.   This declaration represents only opinions I have formed to date. I may
`
`consider additional documents as they become available or other documents that
`
`are necessary to form my opinions. I reserve the right to revise, supplement, or
`
`amend my opinions based on new information and on my continuing analysis.
`
`
`
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`Case IPR2016-00373
`Patent 7,378,992
`III.   OVERVIEW OF THE LAW USED FOR THIS DECLARATION
`   The Person of Ordinary Skill in the Art
`I have been asked to consider the level of ordinary skill in the art that
`
`21.  
`
`someone would have had at the time of invention, which I assumed without
`
`comment is no later than October 29, 2001. At that time, with over 15 years of
`
`academic and research experience in image/speech compression and information
`
`theory, I was (and am) sufficiently experienced to understand the relevant level of
`
`ordinary skill, which takes into consideration:
`
`•  
`
`•  
`
`•  
`
`Levels of education and experience of persons working in the field;
`
`Types of problems encountered in the field; and
`
`Sophistication of the technology.
`
`22.   Based on the technologies disclosed in the ’992 patent and the
`
`considerations listed above, a person having ordinary skill in the art (“POSA”)
`
`would have had at least a bachelor’s degree in Computer Science, Electrical
`
`Engineering, Computer Engineering, or a related field, and either a master’s degree
`
`in one of the related fields or at least two years of industry experience in one of the
`
`related fields or equivalent knowledge. Less education could be compensated by
`
`more direct experience and vice versa.
`
`23.   Throughout my declaration, even if I discuss my analysis in the
`
`present tense, I am always making my determinations based on what a POSA
`
`
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`Case IPR2016-00373
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`would have known at the time of the invention. Additionally, in Sections V, VI,
`
`
`
`VII, VIII of this declaration, even if I discuss something stating “I,” I am referring
`
`to a POSA’s understanding at the time of the invention, which is no later than
`
`October 29, 2001.
`
`   Obviousness Law
`I have been instructed by counsel on the law regarding obviousness.
`
`I understand that a patent claim is invalid if the claims would have
`
`24.  
`
`25.  
`
`been obvious to a POSA at the time of the invention. I understand that the
`
`obviousness inquiry should not be done in hindsight but rather from the
`
`perspective of a POSA as of the time of the invention.
`
`26.  
`
`I understand that to obtain a patent, the claims must have, as of the
`
`time of the invention, been nonobvious in view of the prior art.
`
`27.  
`
`I understand that a claim is obvious when the differences between the
`
`subject matter sought to be patented and the prior art are such that the subject
`
`matter as a whole would have been obvious to a POSA at the time of the invention.
`
`28.  
`
`I understand that certain objective indicia can be important evidence
`
`regarding whether a patent is obvious. Such indicia include: industry acceptance;
`
`commercial success of products covered by the patent claims; long-felt need for
`
`the invention; failed attempts by others to make the invention; copying of the
`
`invention by others in the field; unexpected results achieved by the invention as
`
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`compared to the closest prior art; praise of the invention by the infringer or others
`
`
`
`in the field; taking of licenses under the patent by others; expressions of surprise
`
`by experts and those skilled in the art at making the invention; and the patentee
`
`proceeded contrary to the accepted wisdom of the prior art.
`
`29.  
`
`I understand that obviousness can be established by combining
`
`multiple prior art references to meet each and every claim element. I also
`
`understand that to support a combination of multiple prior art references, there
`
`must be a rationale explaining why a skilled artisan would combine the references
`
`in the manner claimed and how the proposed combination meets each and every
`
`claim element. But I also understand that a proposed combination of references can
`
`be susceptible to hindsight bias. When it appears hindsight bias is being used, I
`
`understand the modification or combination is not considered obvious.
`
`30.  
`
`I understand that exemplary rationales that may support a conclusion
`
`of obviousness include: combining prior art elements according to known methods
`
`to yield predictable results; simple substitutions of one known element for another
`
`to obtain predictable results; using a known technique to improve similar devices
`
`in the same way; applying a known technique to a known device ready for
`
`improvement to yield predicable results; choosing from a finite number of
`
`identified, predicable solutions, with a reasonable expectation of success; known
`
`work in one field of endeavor may prompt variations of it for use in either the same
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`field or a different one based on design incentives or other market forces if the
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`variations are predicable to one of ordinary skill in the art; and some teaching,
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`suggestion, or motivation in the prior art that would have led one of ordinary skill
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`to modify the prior art reference or to combine prior art teachings to arrive at the
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`claimed invention.
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`31.  
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`I understand that if the proposed combination results in one or more of
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`the references being unsatisfactory for its intended purpose, a POSA would not
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`have had a motivation to combine or modify the reference(s).
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`32.  
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`I understand that if the proposed combination changes the principle of
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`operation of one or more references, a POSA would not have had a motivation to
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`combine or modify the reference(s).
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`33.  
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`I understand that teaching away, e.g., discouragement from making
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`the proposed modification, is strong evidence that the references are not
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`combinable. I also understand that a disclosure of more than one alternative does
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`not necessarily constitute a teaching away.
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`34.  
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`I understand that the combination does not need to result in the most
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`desirable embodiment, but if the proposed combination does not have a reasonable
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`expectation of success at the time of the invention, a POSA would not have had an
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`adequate teaching, suggestion, or motivation to combine the references.
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`I understand that the test for obviousness is not whether the features of
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`35.  
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`a secondary reference may be bodily incorporated or physically combined into the
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`structure of the primary reference, but whether the claimed invention is rendered
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`obvious by the teachings of the references as a whole.
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`IV.  
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`INSTITUTED GROUNDS
`36.  
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`I understand that in IPR2016-00373, the Board instituted inter partes
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`review of claim 48 of the ’992 Patent in the manner shown in the table below.
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`
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`Grounds
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`Claim
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`48
`48
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`1
`2
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`
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`Type
`
`Primary
`Reference
`Obviousness § 103 Hsu
`Obviousness § 103 Hsu
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`Secondary
`References
`Franaszek
`Sebastian
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`V.   OVERVIEW OF THE ’992 PATENT
`   Background
`37.   The ’992 patent recognizes several existing problems in data
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`compression systems. One fundamental problem is that while “lossless data
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`compression
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`techniques provide an exact representation of
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`the original
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`uncompressed data . . . . most lossless data compression techniques are [] content
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`sensitive.” (Ex. 1001, 2:12-23.) In other words, “the compression ratio achieved is
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`highly contingent upon the content of the data being compressed.” (Id., 2:24-26.)
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`“For example, database files often have large unused fields and high data
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`redundancies, offering the opportunity to losslessly compress data at ratios of 5 to
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`1 or more. In contrast, concise software programs have little to no data redundancy
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`and, typically, will not losslessly compress better than 2 to 1.” (Id., 2:26-31.)
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`38.   Another problem is that when a data block has little or no redundancy,
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`no compression may occur at all. In this case, applying a compression algorithm
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`can increase rather than decrease the data block’s size. This is otherwise known as
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`“negative compression [which] may occur when certain data compression
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`techniques act upon many types of highly compressed data. Highly compressed
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`data appears random and many data compression techniques will substantially
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`expand, not compress[,] this type of data.” (Id., 2:37-41.) Thus, applying a
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`compression technique to content that the compression technique is ill-suited to
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`compress may provide poor compression or no compression at all.
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`39.  
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`In addition to the amount of compression achieved, other factors may
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`impact selection of a compression technique, such as “encoding and decoding
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`processing requirements, encoding and decoding time delays, compatibility with
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`existing standards, and implementation complexity and cost.” (Id., 2:44-48.) These
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`application-specific factors can also affect which compression algorithm may be
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`considered optimal. (See Id., 5:20-23, 9:30-35, FIG. 4.)
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`40.   To “determin[e] the optimal compression technique for a given set of
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`input data and intended application,” the ’992 patent provides that “many
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`conventional content dependent techniques [] may be utilized.” (Id., 2:56-60.) “For
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`instance, file type descriptors are typically appended to file names to describe the
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`application programs that normally act upon the data contained within the file. In
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`this manner[,] data types, data structures, and formats within a given file may be
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`ascertained.” (Id., 2:56-66.) However, the ’992 patent identified at least three
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`problems with this content dependent approach:
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`(1) lack of documentation for all varieties of content— “the extremely
`large number of application programs, some of which do not possess
`published or documented file formats, data structures, or data type
`descriptors” (id., 3:1-3);
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`(2) difficulty in supporting the vast variety of content — “the ability
`for any data compression supplier or consortium to acquire, store, and
`access the vast amounts of data required to identify known file
`descriptors and associated data types, data structures, and formats”
`(id., 3:4-7); and
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`(3) difficulty in supporting new varieties of content — “the rate at
`which new application programs are developed and the need to update
`file format data descriptions accordingly” (id., 3:8-10).
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`41.  
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`In this way, a POSA would have understood that while content
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`dependent compression may provide benefits for some data types, it has limitations
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`when applied to a variety of content.
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`   Specification
`42.   To deal with these problems, the ’992 patent specification “provide[s]
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`fast and efficient data compression using a combination of content independent
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`data compression and content dependent data compression.” (Id., 3:50-53.) The
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`“content independent data compression is applied to a data block when the content
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`of the data block cannot be identified or is not associable with a specific data
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`compression algorithm.” (Id., 16:4-7.) The ’992 patent illustrates a data
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`compression system utilizing a combination of content independent and dependent
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`techniques, for example, in FIGs. 13A and 13B, reproduced side-by-side below.
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`43.   As illustrated in FIG. 13A, the data compression system receives an
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`input data stream. (Id., 16:7-9.) “[T]he system processes the input data stream in
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`data blocks.” (Id., 16:11.) A component of the system called the “content
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`dependent data recognition module 1300 analyzes the incoming data stream to
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`recognize data types, data structures, data block formats, [or] file substructures …
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`that may be indicative of either the data type/content of a given data block or the
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`appropria