I hereby certify that this paper (along with any paper referred to as being
`attached or enclosed) is being transmitted today Via the Office electronic
`filing system (EFS—Web) in accordance with 37 CFR §1.6 (a)(4).
`
`Date: March 2, 2012
`
`Signature: /Andrea Beck/
`Printed Name: Andrea Beck
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Application of:
`
`Inventors: James J. Fallon
`
`REQUEST FOR REEXAMINATION UNDER
`
`35 U.S.C. §§ 311 ET SEQ., AND 37 CFR.
`
`Patent No.: 7,378,992
`
`§§ 1.913 AND 1.915
`
`Filed: April 8, 2006
`
`For; CONTENT INDEPENDENT DATA
`COMPRESSION METHOD AND
`
`SYSTEM
`
`Mail Stop Inter Partes Reexamination
`ATTN: Central Reexamination Unit
`
`Commissioner for Patents
`
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`REQUEST FOR INTER PARTES REEXAMINATION OF US PATENT 7,378,992
`
`NetApp; Rackspace
`
`Exhibit 1012
`
`Page 1
`
`NetApp; Rackspace Exhibit 1012 Page 1
`
`

`

`TABLE OF CONTENTS
`
`REQUEST FOR INTER PARTES REEXAMINATION OF U.S. PATENT 7,378,992 ....... ..I
`
`TABLE OF EXHIBITS ............................................................................................................. ..III
`
`A.
`
`B.
`
`C.
`
`D.
`
`PRIOR ART (PA) ................................................................................................... .. III
`
`RELEVANT PATENT MATERIALS (PAT) ................................................................ .. III
`
`CLAIM CHARTS (CC) ............................................................................................ .. III
`
`OTHER DOCUMENTS (OTH) .................................................................................. .. III
`
`REQUEST FOR INTER PARTES REEXAMINATION OF U.S. PATENT 7,378,992 ...... .. 1
`
`II.
`
`REQUIREMENTS FOR INTER PARTES REEXAMINATION UNDER 37 C.F.R.
`
`§ 1.915 ............................................................................................................................... .. 2
`
`III.
`
`OVERVIEW .................................................................................................................... .. 3
`
`A.
`
`B.
`
`C.
`
`DESCRIPTION OF THE '992 PATENT .......................................................................... ..3
`
`THE '992 PATENT APPLICATION PROSECUTION HISTORY ........................................ ..3
`
`RELATED CO-PENDING LITIGATION REQUIRES TREATMENT WITH SPECIAL
`DISPATCH AND PRIORITY OVER ALL OTHER CASES ............................................... ..5
`
`D.
`
`CLAIM CONSTRUCTION ........................................................................................... ..5
`
`IV.
`
`SUMMARY OF EACH REASONABLE LIKELIHOOD THAT THE REQUESTER
`
`WILL PREVAIL ("RLP") WITH RESPECT TO AT LEAST ONE OF THE
`CLAIMS AND MANNER OF APPLYING THE CLAIMS AS REQUIRED BY 37
`
`C.F.R. § 1.915(B)(3) ........................................................................................................ .. 6
`
`A.
`
`B.
`
`C.
`
`DYE PRESENTS AN RLP WITH RESPECT TO CLAIM S 33, 35 AND 36 ....................... ..6
`
`FRENCH PRESENTS AN RLP WITH RESPECT TO CLAIM 35 ...................................... ..8
`
`SEBASTIAN IN VIEW OF KAWASHIMA PRESENTS AN RLP WITH RESPECT TO
`
`CLAIM 35 ................................................................................................................ ..9
`
`V.
`
`MANNER OF APPLYING THE CLAIMS AS REQUIRED BY 37 C.F.R. § 1.915
`(B)(3) — APPLICATION OF REFERENCES THAT PREDATE JULY 29, 1998
`
`10
`
`A.
`
`B.
`
`C.
`
`CLAIMS 33, 35 AND 36 ARE ANTICIPATED BY DYE UNDER 35 U.S.C. § 102 ......... ..10
`
`CLAIM 35 IS ANTICIPATED BY FRENCH UNDER 35 U.S.C. § 102 ........................... ..12
`
`CLAIM 35 IS RENDERED OBVIOUS BY SEBASTIAN IN VIEW OF KAWASHIMA
`
`UNDER35 U.S.C. § 103 ........................................................................................ ..14
`
`VI.
`
`CONCLUSION ............................................................................................................. .. 17
`
`NetApp; Rackspace
`
`Exhibit 1012
`
`ii
`Page 2
`
`NetApp; Rackspace Exhibit 1012 Page 2
`
`

`

`TABLE OF EXHIBITS
`
`LIST OF EXHIBITS
`
`The exhibits to the present Request are arranged in four groups: prior art (“PA”), relevant patent
`prosecution file history, patents, and claim dependency relationships (“PAT”), claim charts
`(“CC”), and other (“0TH”).
`
`A. PRIOR ART (PA)
`
`PA-SBOSA/B USPTO Form SB/08A/B
`
`PA-A
`
`US. Patent No. 7,190,284 to Dye et al. ("Dye")
`
`PA-B
`
`PA-C
`
`US. Patent No. 5,794,229 to French et al. ("French")
`
`US. Patent No. 6,253,264 to Sebastian ("Sebastian")
`
`PA-D
`
`US. Patent No. 5,805,932 to Kawashima et al. ("Kawashima")
`
`B. RELEVANT PATENT MATERIALS (PAT)
`
`PAT-A
`
`PAT-B
`
`PAT-C
`
`US. Patent No. 7,378,992 (“the ‘992 patent”)
`
`Prosecution History for US. Patent No. 7,378,992
`
`Prosecution History for Reexamination Control No. 95/000,478
`
`C. CLAIM CHARTS (CC)
`
`CC-A
`
`CC-B
`
`CC-C
`
`Claim chart comparing claims 33, 35 and 36 of the ‘992 patent to the
`disclosure of Dye
`
`Claim chart comparing claims 33 and 35 of the ‘992 patent to the disclosure
`of French
`
`Claim chart comparing claims 33 and 35 of the ‘992 patent to the disclosure
`of Sebastian in View of Kawashima
`
`D. OTHER DOCUMENTS (0TH)
`
`OTH-A
`
`Complaint filed in Realtz'me Data LLC v. MetroPCS Texas, LLC, et al. Case
`No. 6:10-cv-00493-LED
`
`NetApp; Rackspace
`
`Exhibit 1012
`
`iii
`Page 3
`
`NetApp; Rackspace Exhibit 1012 Page 3
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Application of:
`
`Inventors: James J. Fallon
`
`REQUEST FOR REEXAMINATION UNDER
`
`35 U.S.C. §§ 311 ETSEQ., AND
`
`37 CPR §§ 1.913,1.915
`
`Patent No.: 7,378,992
`
`Filed: April 8, 2006
`
`For; CONTENT INDEPENDENT DATA
`COMPRESSION METHOD AND
`
`SYSTEM
`
`Mail Stop Inter Partes Reexamination
`ATTN: Central Reexamination Unit
`
`Commissioner for Patents
`
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`REQUEST FOR INTER PARTES REEXAMINATION OF US PATENT 7,378,992
`
`Dear Sir:
`
`Pursuant
`
`to 37 C.F.R.
`
`§ 1.915(b)(8),
`
`the Real Party in Interest, Verizon Wireless,
`
`(hereinafter “Requester”) hereby respectfully requests reexamination pursuant to 35 U.S.C. §§ 311
`
`et seq. and 37 C.F.R. § 1.902 et seq., of Original Claims 33, 35 and 36 ofU.S. Patent No. 7,378,992
`
`(“the “992 patent”) filed April 8, 2006 and issued May 27, 2008 to Fallon. See Exhibit PAT-A.
`
`This Request is based on the cited prior art documents set forth herein and on the
`
`accompanying Form PTO-SB/08A/B. See Exhibit PA-SB/08A/B. All of the cited prior art
`
`patents and publications constitute effective prior art as to the claims of the ‘992 patent under
`
`35 U.S.C. § 102 and 35 U.S.C. § 103.
`
`Pursuant to 37 C.F.R. § 1.915(b)(8), Requester hereby respectfully requests reexamination
`
`pursuant to 35 U.S.C. §§ 311 et seq. and 37 C.F.R. § 1.902 et. seq., of Original Claims 33, 35 and
`
`36 of the “992 patent. Reexamination is requested in view of the showing that there is a reasonable
`
`likelihood that the Requester will prevail ("RLP") with respect to at
`
`least one of the claims
`
`challenged in the request as set forth in detail below and in the accompanying claim charts.
`
`NetApp; Rackspace
`
`Exhibit 1012
`
`1
`Page 4
`
`NetApp; Rackspace Exhibit 1012 Page 4
`
`

`

`Requester reserves all rights and defenses available including, without limitation, defenses as to
`
`invalidity and unenforceability. By simply filing this Request in compliance with applicable
`
`statutes, rules, and regulations, Requester does not represent, agree or concur that the '992 patent is
`
`enforceable. As alleged by Patent Owner in the below defined Underlying Litigation, and as
`
`required by 37 C.F.R. § 1.913,
`
`the ‘992 patent is still within its period of enforceability for
`
`reexamination purposes,
`
`to the extent that the ‘992 patent has not
`
`lapsed for failure to pay
`
`maintenance fees, has not been the subject of any Terminal Disclaimer, and has not yet been held
`
`unenforceable in a court of competent jurisdiction. By asserting the proposed rejections herein,
`
`Requester specifically asserts that Original Claims 33, 35 and 36 of the ‘992 patent are in fact not
`
`patentable.
`
`Accordingly, the US. Patent and Trademark Office (“the Office”) should reexamine and
`
`find Claims 33, 35 and 36 of the ‘992 patent unpatentable and cancel these claims, rendering them
`
`null, void, and otherwise unenforceable.
`
`11.
`
`REQUIREMENTS FOR INTER PARTES REEXAMINATION UNDER 37 C.F.R.
`§ 1.915
`
`Requester satisfies each requirement for Inter Partes reexamination of the ‘992 patent
`
`pursuant to 37 C.F.R. § 1.915. A filll copy of the ‘992 patent is submitted herein as Exhibit PAT-
`
`A in accordance with 37 C.F.R. § l.9lS(b)(5).
`
`Pursuant to 37 C.F.R. § l.9l5(b)(7), Requester certifies that the estoppel provisions of 37
`
`C.F.R. § 1907 do not prohibit the filing of this Inter Partes reexamination.
`
`Pursuant to 37 C.F.R. §l.9l5(b)(4), a copy of every patent or printed publication relied
`
`upon to present an RLP is submitted herein at Exhibits PA-A through PA-D, citation of which
`
`may be found on the accompanying Form PTO-SB/08A as Exhibit PTO-SB/08A in accordance
`
`with 37 C.F.R. § 1.915(b)(2). Each of the cited prior art publications constitute effective prior art
`
`as to the claims of the ‘992 patent under 35 U.S.C. § 102 and 35 U.S.C. § 103. Furthermore, each
`
`piece of prior art submitted was either not considered by the Office during the prosecution of the
`
`‘992 patent or is being presented in a new light under MPEP § 2642 as set forth in the detailed
`
`explanation below and in the attached claim charts.
`
`A statement pointing out each rejection with a reasonable likelihood to prevail based on
`
`the cited patents and printed publications, and a detailed explanation of the pertinency and
`
`manner of applying the patents and printed publications to Claims 33, 35, and 36 of the ‘992
`
`NetApp; Rackspace
`
`Exhibit 1012
`
`2
`Page 5
`
`NetApp; Rackspace Exhibit 1012 Page 5
`
`

`

`patent, is presented below and in attached claim charts in accordance with 37 C.F.R. § 1.915
`
`(b)(3)-
`
`A copy of this request has been served in its entirety on the patent owner in accordance
`
`with 37 C.F.R. § 1.915(b)(6) at the following address:
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`1100 NEW YORK AVENUE, N.W.
`WASHINGTON DC 20005
`
`In accordance with 37 C.F.R. § 1.915(a), a credit card authorization to cover the Fee for
`
`reexamination of $8,800.00 is attached. If this authorization is missing or defective, please
`
`charge the Fee to the Novak Druce and Quigg Deposit Account No. 14-1437.
`
`111.
`
`OVERVIEW
`
`A. DESCRIPTION OF THE '992 PATENT
`
`The '992 Patent states that it is directed to a system and method for providing "fast and
`
`efficient data compression using a combination of content independent data compression and
`
`content dependent data compression." '992 at 3:51-54. The system typically operates by inputting
`
`a first data block in the input data stream to a counter module that counts the size of the data
`
`block. '992 at 8:6-14. Then the data block is stored in a buffer until it is sent to an encoder for
`
`compression.
`
`'992 at 15-17. Each encoder
`
`then outputs the encoded data block to a
`
`corresponding buffer, where the encoded block size is counted.
`
`'992 at 17-21. Based on a
`
`comparison between the input data and the encoded data, the system selects an output format,
`
`either original or compressed, and associates a descriptor with the data for processing storage
`
`and transmittal. '992 at 822-93. The '992 patent then goes on to describe different embodiments
`
`that encompass slight variations from the above described system.
`
`B. THE '992 PATENT APPLICATION PROSECUTION HISTORY
`
`US. Patent No. 7,378,992 was filed as Application No. 11/400,533 on April 8, 2006
`
`having original claims 1-13.
`
`In a Non-Final Office Action mailed on July 10, 2007, the Examiner rejected claims 1-3,
`
`5-8, 10, and 11, allowing claims 12 and 13, and objecting to 4 and 9 as being allowable if
`
`rewritten in independent format. Claims 1-3, 5-8, and 10 were rejected under the doctrine of non-
`
`statutory double patenting over US. Patent 7,161,506 in view of US. Patent No. 5,237,675. July
`
`NetApp; Rackspace
`
`Exhibit 1012
`
`3
`Page 6
`
`NetApp; Rackspace Exhibit 1012 Page 6
`
`

`

`10, 2007 OA at pp. 2-4. Claim ll was rejected as anticipated by US. Patent No. 6,272,178 to
`
`Nieweglowski et al.
`
`The Applicant responded on January 10, 2008 by filing terminal disclaimers with respect
`
`to the ‘506 and ‘675 patents to overcome the double patenting rejection. Further, Patent Owner
`
`amended claims 4 and 9 to overcome the Offices objection. Finally, Patent Owner argued that
`
`the Nieweglowski patent does not "compress a data block with an encoder if the data type cannot
`
`be identified." January 10, 2008 Response at 15. Patent Owner also added claims 14-45.
`
`A Notice of Allowance was mailed by the Office on February 12, 2008, wherein the
`
`Examiner stated that the prior art did not teach, with respect to claim 1, "compressing, if said
`
`data type is not identified, said data block with at least one encoder associated to a non-
`
`identifiable data type to provide said compressed data block; and storing said data block having
`
`no further reasons for allowance." February 12, 2008 Notice of Allowance at p. 2. Further, the
`
`Examiner found that with respect to claim 4, the prior art does not teach "if said data type is not
`
`identified, said data block with at least one encoder associated to a non-identifiable data type to
`
`provide said compressed data block; and transmitting a data compressed type descriptor; and
`
`decompressing said compressed data block based on said data compression type descriptor."
`
`February 12, 2008 Notice of Allowance at pp. 2-3. With respect to claim 9, The Examiner found
`
`that the prior art doesn’t teach compressing, if said first data type is not the same as one of
`
`several data types; said data block with a default encoder to provide said compressed data block;
`
`and transmitting a data compressed type descriptor; and decompressing said compressed data
`
`block based on said data compression type descriptor." February 12, 2008 Notice of Allowance
`
`at p. 3. With respect to claim ll, The Examiner found that the prior art failed to teach
`
`compressing said data block with said second encoder if said data type is the same as said second
`
`data type; and compressing said data block with a third encoder if said data type cannot be
`
`identified." February 12, 2008 Notice of Allowance at p. 3. Finally, with respect to claim 12, The
`
`Examiner found that the prior art failed to teach compressing compressed, if a data type is not
`
`identified, said data block with said at least one second encoder to provide said compressed data
`
`block; and transmitting a data." February 12, 2008 Notice of Allowance at p. 3.
`
`Reexamination Control No 95/000,478
`
`On May 21, 2009,
`
`the ‘992 patent was placed into reexamination. Importantly, on
`
`January 18, 2012, the Board has affirmed the Office’s rejection of claims l-3, 7, 9-15, 18-21, 26-
`
`NetApp; Rackspace
`
`Exhibit 1012
`
`4
`Page 7
`
`NetApp; Rackspace Exhibit 1012 Page 7
`
`

`

`29, 32, 33, and 36. The Board affirmed the Examiner’s rejection in part because the Patent
`
`Owner withdrew any arguments as to the patentability of these claims.
`
`C. RELATED CO-PENDING LITIGATION REQUIRES TREATMENT WITH SPECIAL
`DISPATCH AND PRIORITY OVER ALL OTHER CASES
`
`The ‘992 patent is presently the subject of the following cases (collectively referred to
`
`herein as "the Underlying Litigation"):
`
`0 Realtime Data LLC V. MetroPCS Texas, LLC, et al. Case No. 6:10-cv-00493-LED. See
`Exhibits OTH-A
`
`Accordingly,
`
`the Requester
`
`respectfully urges that
`
`this Request be granted and
`
`reexamination conducted not only with "special dispatch," but also with "priority over all
`
`other cases" in accordance with MPEP §2661, due to the ongoing nature of the Underlying
`
`Litigation.
`
`D. CLAIM CONSTRUCTION
`
`For purposes of this Request, the claim terms are presented by the Requester in accordance
`
`with 37 C.F.R. § 1.555(b) and MPEP § 2111. Specifically, each term of the claims is to be given its
`
`“broadest reasonable construction” consistent with the specification. MPEP § 2111; In re Swanson,
`
`No. 07-1534 (Fed. Cir. 2008); In re Trans Texas Holding Corp, 498 F.3d 1290, 1298 (Fed. Cir.
`
`2007) (citing In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984)). As stated by the Federal
`
`Circuit, “[i]n a reexamination, claims should be given the broadest reasonable interpretation, as is
`
`done in an original or reissue examination, rather than the more charitable interpretation appropriate
`
`in an infringement suit. In a reexamination, the patent owner has the opportunity to amend the
`
`claims." In re Yamamoto, 740 F.2d at 1571. This principle is reinforced by MPEP § 2111.01:
`
`“Although claims of issued patents are interpreted [in judicial proceedings]
`
`in light of the
`
`specification, prosecution history, prior art and other claims,
`
`this is not the mode of claim
`
`interpretation to be applied during examination." MPEP § 2111.01 (emphasis in original); see In re
`
`American Academy of Science Tech Center, 367 F.3d 1359, 1369, 70 USPQ2d 1827, 1834 (Fed.
`
`Cir. 2004); see also, In re Zletz, 893 F.2d 319, 321, 13 U.S.P.Q.2d 1320, 1322 (Fed. Cir. 1989).
`
`Although the District Court has yet to rule on the scope of these claim limitations, the
`
`Federal Circuit noted in Trans Texas that the Office has traditionally applied a broader standard than
`
`a Court does when interpreting claim scope. MPEP § 2111. The Office applies to the verbiage of the
`
`NetApp; Rackspace
`
`Exhibit 1012
`
`5
`Page 8
`
`NetApp; Rackspace Exhibit 1012 Page 8
`
`

`

`proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would
`
`be understood by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054-55, 44
`
`U.S.P.Q.2d 1023, 1027-28 (Fed. Cir. 1997). The rationale underlying the “broadest reasonable
`
`construction” standard is that it reduces the possibility that a claim, after issue or certificate of
`
`reexamination, will be interpreted more broadly than is justified. 37 C.F.R. § 1.555(b), MPEP
`
`§ 21 1 1.
`
`Because the standards of claim interpretation used in the courts in patent litigation are
`
`different
`
`from the claim interpretation standards used in the Office in claim examination
`
`proceedings (including reexamination), any claim interpretations submitted herein for the purpose
`
`of demonstrating an RLP are neither binding upon Requester in any litigation related to the ‘992
`
`patent; nor do such claim interpretations necessarily correspond to the construction of claims under
`
`the legal standards that are mandated to be used by the Courts in patent litigation. See 35 U.S.C.
`
`§ 314; see also MPEP § 2686.04 II (determination of an RLP is made independently of a court’s
`
`decision on validity because of different standards of proof and claim interpretation employed by
`
`the District Courts and the Office); see also Trans Texas Holding, 498 F.3d at 1297-98; In re Zletz,
`
`893 F.2d 319, 322, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
`
`The interpretation and/or construction of the claims in the '992 patent presented either
`
`implicitly or explicitly herein should not be Viewed as constituting,
`
`in whole or in part,
`
`Requester’s own interpretation and/or construction of such claims, but instead should be Viewed
`
`as constituting an interpretation and/or construction of such claims as may be raised by the
`
`Patent Owner through a broadest reasonable claim construction. In fact, Requester expressly
`
`reserves the right to present
`
`its own interpretation of such claims at a later time, which
`
`interpretation may differ, in whole or in part, from that presented herein.
`
`IV. SUMMARY OF EACH REASONABLE LIKELIHOOD THAT THE
`
`REQUESTER WILL PREVAIL ("RLP") WITH RESPECT TO AT LEAST ONE
`OF THE CLAIMS AND MANNER OF APPLYING THE CLAIMS AS
`
`REQUIRED BY 37 C.F.R. § 1.915(B)(3)
`
`A. DYE PRESENTS AN RLP WITH RESPECT To CLAIM S 33, 35, AND 36
`
`Dye et al.
`
`is US. Patent No. 7,190,284 that was filed on January 29, 1999,
`
`is a
`
`continuation-in-part of an application filed on April 16, 1993, and was issued on August 11,
`
`1998, thereby qualifying as prior art under 35 U.S.C. 102. Dye is cited in the ‘992 patent but was
`
`not asserted in an Office Action. Dye is of record in the ‘992 patent, but was not considered on
`
`NetApp; Rackspace
`
`Exhibit 1012
`
`6
`Page 9
`
`NetApp; Rackspace Exhibit 1012 Page 9
`
`

`

`the merits and was not applied in any rejection of the claims, therefore Dye is being presented in
`
`a new light pursuant to MPEP § 2642. MPEP § 2642 states that art cannot raise an RLP if the art
`
`has been previously considered, however, in this case since the art has not been applied or used
`
`in any rejection by the Office, and can be considered in a new light when presented differently
`
`"as compared with its use in the earlier examinations." See MPEP § 2642. Since Dye was not
`
`previously applied or used, it is being presented in a new light herein below. Accordingly, the
`
`teachings of Dye present an RLP since they teach the elements of the claims of the '992 patent.
`
`This reference is not cumulative of any art previously of record, and its teachings are such that a
`
`reasonable examiner would have considered it pertinent in deciding the question of patentability.
`
`Dye discloses a method comprising providing several compression techniques (e.g.,
`
`lossless technique, lossy technique and no compression). Dye at 38:26-28, 38-43-50, 39:36-44,
`
`and 47:5-20. Dye discloses receiving a data block (e.g., the IMC 140 receives the input data)
`
`and determining whether or not to compress the data block (e. g., “In step 804 the method
`
`determines a compression mode for the data). Dye at 38:43-46, see also 15:20-51, 16:53-61,
`
`22:46-48, 26:51-27:3, 35:56-36:4, 38:16-29, 38:43-46, 38:55-67, 39:36-52, 40:23-43, 44:9-2land
`
`48:58-67. Dye discloses providing a data compression type descriptor (e. g., “the header includes
`
`a tag bit used as an indication of the type of compression used.”) with the compressed data block.
`
`Dye at 31:57-59, see also 32:12-27, 37:11-33, 40:44-55, 43:8-3l,45:l-l3, and claim 1. The data
`
`compression type descriptor (e.g.,
`
`the tag bit
`
`in the header)
`
`is either indicative of the
`
`determination not to compress (e.g., no compression) or the determined one of the several
`
`compression techniques (e.g., lossy or lossless). Dye at 31:57-59, 32:12-27, 37:11-33, 38:16-29,
`
`38:43-67, 39:36-52, 40:44-55, 40:59-41:12, 43:8-3l,45:l-l3, and claim 1. After compressing the
`
`data, Dye transmit the data compression type descriptor (e. g., the tag bit in the header) with the
`
`compressed data block (step 816). Dye at 40:60-3, see also 29:19-39, 31 :57-59, 32:12-27, 40:17-
`
`22, and claim 1. The size of the data block can be variable. For example, Dye recites that, “[i]n
`
`the preferred embodiment, the compression block size, representing the input data block before
`
`compression, is dynamic and can be adjusted in size to reduce latency of operation.” Dye at 47:4-
`
`7, see also 4:25-33, 5:17-27, 37:55-63. The compression techniques can be software (e.g.,
`
`software compression application). Dye at 8:49-62, 9:13-20, l2:6l-l3:8, 18:36-51, 29:58-63,
`
`35:56-36:9, and 40:60-12.
`
`NeMpp; Rackspaoe
`
`Exhibit 1012
`
`7
`Page 10
`
`NetApp; Rackspace Exhibit 1012 Page 10
`
`

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`B. FRENCH PRESENTS AN RLP WITH RESPECT To CLAIM 35
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`French et al. is US. Patent No. 5,794,229 that was filed on December 11, 1995, is a
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`continuation-in-part of an application filed on April 16, 1993, and was issued on August 11,
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`1998,
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`thereby qualifying as prior art under 35 U.S.C. 102. French is before the Office in
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`reexamination control number 95/000,478 ("'487 reexam") and French is used to reject claim 33
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`of the '992 patent. However, Requester is presently requesting reexamination of claim 35, which
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`is not a requested claim in the '478 reexam. Therefore, French is being presented in a new light
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`based on its application to claim 35 instead the claims at issue in the '478 reexam. Accordingly,
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`the teachings of French present an RLP since they teach the elements of the claim 35 of the '992
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`patent. This reference is not cumulative of any art previously of record, and its teachings are such
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`that a reasonable examiner would have considered it pertinent in deciding the question of
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`patentability.
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`French discloses a system that can utilize multiple compression techniques, including
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`LZQ compression, LZS compression, and Run-Length Encoding compression. French at 14:1-
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`14. Upon reception of a data block, French can determine whether to compress the data and if so,
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`what
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`type of compression should be used. French at 16:17-24, 4:18-26, and 42:38-65.
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`Specifically, "[t]he pages are optimized for compression by storing in the page header a status
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`flag indicating whether the data page is a candidate for compression and (optionally) what type
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`of compression is best suited for the data on that page." French at 4:18-26. French teaches that
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`the compression can be transmitted with the page to specify the compression type to employ, and
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`that the pages are stored at a disk. French at 4:27-35 and 24:10-19; see also 4:36-43, 15:19-26,
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`and 42:38-49.
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`Further, regarding claim 35, French discloses a database system with a parameter (nBlks)
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`indicating how many physical blocks are included in a page. French at 31: 23-25. Accordingly,
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`page sizes are multiples of the physical block size. French at 17:49-61
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`There was no explicit reason for allowance. However, as shown immediately above,
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`French teaches each and every limitation of claim 35 of the '992 patent. In light of this, the
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`Examiner would consider French important
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`in determining patentability as it presents the
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`limitations of the claims that the Examiner considered absent in the prior art and deemed
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`important during the prosecution of the '992 patent. Such a proposed rejection is not cumulative
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`and is reasonably likely to result in a rejection, as the combination meets all the claim limitations
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`NeMpp; Rackspaoe
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`Exhibit 1012
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`8
`Page 11
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`NetApp; Rackspace Exhibit 1012 Page 11
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`

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`for claims, and such combination was not presented or discussed during the prosecution of the
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`'992 patent.
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`In view of the above, reexamination should be ordered, and the aforementioned claims
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`should be rendered null, void, and otherwise unenforceable in light of this reexamination request.
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`C. SEBASTIAN IN VIEW OF KAWASHIMA PRESENTS AN RLP WITH RESPECT TO
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`CLAIM 35
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`Sebastian is US. Patent No. 6,253,264 that was filed on March 6, 1998, claims the
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`benefit of a provisional application filed on March 7, 1997 and issued on June 26, 2001, making
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`it effective prior art under 35 U.S.C. § 102. Kawashima is US. Patent No. 5,805,932 has an has
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`a 102(e) date of February 13, 1996 based on a PCT filing, and was issued on September 8, 1998
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`making it effective prior art under 35 U.S.C. § 102. Sebastian and Kawashima are before the
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`Office in the '487 reexam. Claim 35 is dependent from claim 33, which the Office has rejected as
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`obvious over Sebastian in view of Kawashima. However, Sebastian in view of Kawashima has
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`not been applied against claim 35, thereby presenting Sebastian and Kawashima in a new light
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`compared to the '487 reexam. Accordingly, the teachings of Sebastian in view of Kawashima
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`raise an RLP since they teach the pertinent elements of the claims of the '992 patent. Further,
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`Sebastian in view of Kawashima is not cumulative of any art previously of record, and their
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`teachings are such that a reasonable Examiner would have considered Sebastian in view of
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`Kawashima pertinent in deciding the question of patentability.
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`Sebastian teaches a method where a high performance data compression system can
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`provide a "precise pre-determined model" that allows for "format-specific compression"
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`depending on the file format being compressed. Sebastian at 1:13-22 and 1:45-60. The encoder
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`of the system taught by Sebastian can receive a block of data and then dynamically select
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`whether to compress the data block or to allow the data block to remain uncompressed. Sebastian
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`at 22:60-23:8 and 1:19-23; see also 3:66-4:6, 4:65-5:10, 1:13-22, and 1:45-60. Sebastian also
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`includes in the data stream an "identification code" that indicates what filter is used to encode the
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`data, and this can be combined with Kawashima to show that the "identification code" of
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`Sebastian can also be used to indicate that no compression has taken place. Sebastian at 5:14-18;
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`Kawashima at 29:30-30:23. Finally, the "identification code" is transmitted with the streaming
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`data. Sebastian at 5:14-18; see also 1:36-44, 2:43-47, 3:37-45, 3:56-59, and 6:58-59.
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`NeMpp; Rackspaoe
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`Exhibit 1012
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`9
`Page 12
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`NetApp; Rackspace Exhibit 1012 Page 12
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`Further, regarding claim 35 Sebastian in view of Kawashima, teaches that the input data,
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`which is disclosed as one logical block having a size that is the number of physical blocks
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`making up the one logical block, and this number of physical blocks is variable, because
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`Kawashima further discloses “compressed data or pre-compression data over two or more
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`physical blocks may be recorded in physically spaced portions in units of a physical block.”
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`Kawashima at 113-6 and 12:33-36.
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`There was no explicit reason for allowance. However, as shown immediately above,
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`Sebastian in view of Kawashima teaches each and every limitation of claim 35 of the '992 patent.
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`In light of this, the Examiner would consider Sebastian in view of Kawashima important in
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`determining patentability as it presents the limitations of the claims that the Examiner considered
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`absent in the prior art and deemed important during the prosecution of the '992 patent. Such an
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`RLP is not cumulative, as the combination meets all the claim limitations for claims, and such
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`combination was not presented or discussed during the prosecution of the '992 patent.
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`In view of the above, reexamination should be ordered, and the aforementioned claims
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`should be rendered null, void, and otherwise unenforceable in light of this reexamination request.
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`V.
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`MANNER OF APPLYING THE CLAIMS AS REQUIRED BY 37 C.F.R. § 1.915
`(B)(3) — APPLICATION OF REFERENCES THAT PREDATE JULY 29, 1998
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`A. CLAIMS 33, 35 AND 36 ARE ANTICIPATED BY DYE UNDER 35 U.S.C. § 102
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`Please see attached Exhibit CC-A for a detailed comparison of the disclosure of Dye
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`applied to the claims of the ‘992 patent.
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`Analysis:
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`33. A method comprising: providing several compression techniques;
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`Dye discloses a method comprising providing several compression techniques (e.g.,
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`lossless technique, lossy technique and no compression). Dye at 38:26-28, 38-43-50, 39:36-44,
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`and 47:5-20.
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`receiving a data block;
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`Dye discloses receiving a data block (e.g., the IMC 140 receives the input data). Dye at
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`22:46-48, 26:51-27:3, 35:56-36:4, and 38:26-28.
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`determining whether or not to compress the data block and,
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`NeMpp; Rackspace
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`Exhibit 1012
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`10
`Page 13
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`NetApp; Rackspace Exhibit 1012 Page 13
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`Dye discloses determining whether or not to compress the data block (e.g., “In step 804
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`the method determines a compression mode for the data. The compression mode preferably
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`comprises one of lossless compression, lossy compression, or no compression.”) Dye at 38:43-
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`46, see also 15:20-51, 16:53-61, 38:16-29, 38:55-67, 39:36-52, 40:23-43, 44:9-21and 48:58-67.
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`if the data block is to be compressed, determining which one of the several
`compression techniques to utilize to compress the data block and
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`Dye discloses determining which one of the several compression techniques (e.g.,
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`lossless, lossy, or no compression) to utilize to compress the data block (step 804). Dye at
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`38:16-29, 38:43-67, 39:36-52, and 40:59-41:12.
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`compressing the data block with the determined one of the several
`compression techniques to provide a compressed data block;
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`Dye discloses compressing the data block with the determined one of the several
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`compression techniques (e.g., lossless, lossy, or no compression) to provide a compressed data
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`block. Dye at 38:16-29 and 39:36-44.
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`providing a data compression type descriptor with the compressed data
`block,
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`Dye discloses providing a data compression type descriptor (e.g., “the header includes a
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`tag bit used as an indication of the type of compression used.”) with the compressed data block.
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`Dye at 31:57-59, see also 32:12-27, 37:11-33, 40:44-55, 43:8-3l,45:l-l3, and claim 1.
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`wherein the data compression type descriptor is either indicative of the
`determination not
`to compress or
`the determined one of the several
`compression techniques; and
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`Dye discloses the data compression type descriptor (e.g., the tag bit in the header) is
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`either indicative of the determination not to compress (e.g., no compression) or the determined
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`one of the several compression techniques (e.g., lossy or lossless). Dye at 31:57-59, 32:12-27,
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`37:11-33, 38:16-29, 38:43-67, 39:36-52, 40:44-55, 4