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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`COMMVAULT SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`REALTIME DATA LLC,
`Patent Owner.
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`
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`
`Case No. TBD
`U.S. Patent No. 9,054,728
`
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`DECLARATION OF PROFESSOR JAMES STORER, PH.D.
`
`Commvault Ex. 1002
`Commvault v. Realtime
`US Patent No. 9,054,728
`
`

`

`Commvault Systems v. Realtime Data
`IPR Petition - U.S. Patent No. 9,054,728
`
`
`
`
`Table of Contents
`
`
`
`I. BACKGROUND AND QUALIFICATIONS ........................................................ 1
`
`II. INFORMATION AND MATERIALS CONSIDERED ....................................... 5
`
`III. APPLICABLE LEGAL STANDARDS .............................................................. 5
`
`A.
`
`B.
`
`Claim Construction................................................................................ 6
`
`Obviousness ........................................................................................... 6
`
`IV. LEVEL OF ORDINARY SKILL ........................................................................ 8
`
`V. SUMMARY OF OPINIONS ................................................................................ 9
`VI. OVERVIEW OF THE ’728 PATENT ..............................................................12
`
`A.
`
`B.
`
`C.
`
`Priority .................................................................................................12
`
`Brief Description .................................................................................13
`
`Summary of the Prosecution History ..................................................16
`
`1.
`
`Reexamination of the ancestor patent .......................................16
`Prosecution of the ’728 patent ..................................................18
`2.
`VII. STATE OF THE ART AT THE TIME OF THE ’728 PATENT ....................21
`
`A.
`
`B.
`
`Background .........................................................................................21
`
`Art applied to the claims in this declaration ........................................30
`
`1. Medina’93 .................................................................................32
`
`-i-
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`Commvault Systems v. Realtime Data
`IPR Petition - U.S. Patent No. 9,054,728
`2. Medina’98 .................................................................................37
`
`3.
`
`4.
`
`The Fax Standard ......................................................................38
`
`Bodson ......................................................................................39
`
`5. Moffat ........................................................................................40
`
`6.
`
`7.
`
`8.
`
`9.
`
`Hunter ........................................................................................41
`
`Hoffman ....................................................................................41
`
`Zidar ..........................................................................................42
`
`Alsulaiman ................................................................................43
`
`VIII. CLAIM CONSTRUCTION ............................................................................43
`
`A.
`
`B.
`
`C.
`
`D.
`
`Parameter or attribute (claims 1, 24, 25) .............................................44
`
`Real time (claims 4-8) .........................................................................45
`
`Data token (claims 9, 10, and 20)........................................................46
`
`Received form (claim 25) ....................................................................46
`
`IX. ANALYSIS OF THE ’728 PATENT CLAIMS ................................................47
`
`A. Ground 1: Claims 1, 3-10, 15, 18, 20, 21, and 24 would have been
`
`obvious over Medina’93 ......................................................................47
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Claim 1 (independent) ...............................................................47
`
`Claim 3 (depends on claim 1) ...................................................51
`
`Claims 4-8 (each depends on claim 1) ......................................52
`
`Claims 9 and 20 (each depends on claim 1) .............................54
`
`Claims 10 and 20 (each depends on claim 1) ...........................55
`
`Claim 15 (depends on claim 1) .................................................56
`
`-ii-
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`

`

`Commvault Systems v. Realtime Data
`IPR Petition - U.S. Patent No. 9,054,728
`7.
`Claim 18 (depends on claim 1) .................................................57
`
`8.
`
`9.
`
`Claim 21 (depends on claim 1) .................................................61
`
`Claim 24 (independent) .............................................................62
`
`B.
`
`Ground 2: Claims 2, 11-13, 19, 22, and 25 would have been obvious
`
`over Medina’93 in view of Medina’98 ...............................................64
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`5.
`
`Claim 2 (depends on claim 1) ...................................................65
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`Claim 11 (depends on claim 1) .................................................67
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`Claim 12 (depends on claim 1) .................................................70
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`Claims 13 and 22 (each depends on claim 1) ...........................71
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`Claim 19 (depends on claim 1) .................................................73
`
`Claim 25 (independent) .............................................................74
`
`C.
`
`Ground 3: Claims 9, 10, and 20 would have been obvious over
`
`Medina’93 in view of Bodson and/or the Fax Standard .....................80
`
`1.
`
`2.
`
`Claims 9 and 20 (each depends on claim 1) .............................80
`
`Claims 10 and 20 (each depends on claim 1) ...........................84
`
`D. Ground 4: Claims 14 and 23 would have been obvious over
`
`Medina’93 in view of Moffat and/or the Fax Standard ......................86
`
`1.
`
`2.
`
`Claim 14 (depends on claim 1) .................................................86
`
`Claim 23 (depends on claim 1) .................................................88
`
`E.
`
`Ground 5: Claims 16 and 17 would have been obvious over Medina in
`
`view of Hunter and/or the Fax Standard .............................................90
`
`-iii-
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`

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`Commvault Systems v. Realtime Data
`IPR Petition - U.S. Patent No. 9,054,728
`Ground 6: Claim 18 would have been obvious over Medina’93 in
`F.
`
`view of Moffat, Hunter, Hoffman, Zidar, and/or Alsulaiman.............92
`
`X. CONCLUSION ...................................................................................................96
`
`
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`-iv-
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`

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`Commvault Systems v. Realtime Data
`IPR Petition - U.S. Patent No. 9,054,728
`I, Professor James Storer, declare and state as follows:
`I. BACKGROUND AND QUALIFICATIONS
`
`1.
`
`I have been retained by Commvault Systems, Inc. (“Petitioner”) to
`
`provide expert opinions in connection with this proceeding. I have been asked by
`
`counsel to review relevant materials and render my expert opinion in connection
`with the petition for inter partes review of U.S. Patent No. 9,054,728 (“the ’728
`
`patent”). I previously prepared an expert declaration relating to the ’728 patent in
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`IPR2017-00108. I understand the previous declaration is public record.
`
`2.
`
`I am a Professor at Brandeis University in the Computer Science
`
`Department. I am an expert in the field of computer algorithms, including data
`
`communications and network computing, data compression, data and image
`
`retrieval, storage and processing of large data sets, and image/video processing. I
`
`have studied, researched, and practiced in the field of computer science for more
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`than 35 years, and have taught Computer Science at Brandeis since 1981.
`
`3.
`
`I received my Doctor of Philosophy (Ph.D.) degree in the field of
`
`Computer Science from Princeton University in 1979. I received my Masters of
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`Arts (M.A.) degree in Computer Science from Princeton University and my
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`Bachelor of Arts (B.A.) degree in Mathematics and Computer Science from
`
`Cornell University.
`
`-1-
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`

`

`Commvault Systems v. Realtime Data
`IPR Petition - U.S. Patent No. 9,054,728
`4.
`After receiving my Ph.D. degree, I worked in industry as a researcher
`
`at AT&T Bell Laboratories from 1979 to 1981 before joining the faculty of
`
`Brandeis University.
`
`5.
`
`I have been involved in computer science research since 1976. My
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`research has been funded by a variety of governmental agencies, including the
`
`National Science Foundation
`
`(NSF), National Aeronautics and Space
`
`Administration (NASA), and Defense Advanced Research Projects Agency
`
`(DARPA). In addition, I have received government Small Business Innovation
`
`Research (SBIR) funding, as well as numerous industrial grants.
`
`6.
`
`I regularly teach courses in software and hardware technology for data
`
`compression and communications (including text, images, video, and audio) at
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`both the undergraduate and graduate level, and in my capacity as co-chair of the
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`annual Data Compression Conference, I regularly referee academic papers in these
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`areas. In addition, much of my consulting activity has been in the areas of
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`software and hardware for consumer electronic devices,
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`including cell
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`phones/PDAs (including cellular technology), smartphones, digital cameras, digital
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`video and audio recorders, and personal computers, as well as devices for
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`communications over the Internet.
`I am the author of two books: An Introduction to Data Structures and
`7.
`Algorithms and Data Compression: Methods and Theory. Both books have been
`
`-2-
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`

`

`Commvault Systems v. Realtime Data
`IPR Petition - U.S. Patent No. 9,054,728
`used as references for undergraduate
`
`level computer science courses in
`
`universities. I am the editor or co-editor of four other books, including
`Hyperspectral Data Compression and Image and Text Compression.
`
`8.
`
`I have three issued U.S. patents that relate to computer software and
`
`hardware (two for which I am sole inventor and one for which I am co-inventor). I
`
`am the author or co-author of well over 100 articles and conference papers.
`
`9.
`
`In 1991, I founded the annual Institute of Electrical and Electronics
`
`Engineers (IEEE) Data Compression Conference (DCC),
`
`the first major
`
`international conference devoted entirely to data compression, and have served as
`
`the conference chair since then. This conference continues to be the world’s
`
`premier venue devoted to data compression research and development.
`
`10.
`
`I routinely serve as referee for papers submitted to journals such as,
`
`for example, JACM, SICOMP, Theoretical CS, Computer Journal, J. Algorithms,
`
`Signal Processing, JPDC, Acta Informatica, Algorithmica, IPL, IPM, Networks,
`
`IEEE J. Robotics & Automation, IEEE Trans. Information Theory, IEEE Trans.
`
`Computers, IEEE Trans. Image Processing, Proceedings of the IEEE, IBM J. of
`
`R&D, and J. Computer and System Sciences.
`
`11.
`
`I have served as guest editor for a number of professional journals,
`
`including Proceedings of the IEEE, Journal of Visual Communication and Image
`
`Representation, and Information Processing and Management. I have served as a
`
`-3-
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`

`

`Commvault Systems v. Realtime Data
`IPR Petition - U.S. Patent No. 9,054,728
`program committee member for various conferences, including IEEE Data
`
`Compression Conference, IEEE International Symposium on Information Theory,
`
`Combinatorial Pattern Matching (CPM), International Conference on String
`
`Processing and Information Retrieval (SPIRE), Conference on Information and
`
`Knowledge Management (CIKM), Conference on Information Theory and
`
`Statistical Learning (ITSL), Sequences and Combinatorial Algorithms on Words,
`
`Dartmouth Institute for Advanced Graduate Studies Symposium (DAGS),
`
`International Conference on Language and Automata Theory and Applications
`
`(LATA), DIMACS Workshop on Data Compression
`
`in Networks and
`
`Applications, and Conference on Combinatorial Algorithms on Words.
`12. A copy of my latest curriculum vitae (CV) is submitted with this
`
`declaration as Ex. 1003.
`
`13.
`
`I am not an employee, consultant, or contractor of either party. I am
`
`being compensated for my time in connection with developing and rendering
`
`opinions in this matter at my customary rate of $785 per hour. My compensation
`
`is in no way contingent on the results of this or any other proceeding relating to the
`
`above-captioned patent.
`
`14. Between now and any time that I may be asked to testify further, I
`
`expect to continue my review, evaluation, and analysis of evidence presented
`
`before and/or at the hearing. I expect to review any additional declarations and
`
`-4-
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`

`

`Commvault Systems v. Realtime Data
`IPR Petition - U.S. Patent No. 9,054,728
`other evidence submitted by Patent Owner. I reserve the right to amend or
`
`supplement this declaration, as appropriate, after considering the opinions set forth
`
`by other experts. In the event that additional relevant information becomes
`
`available to me, I also reserve the right to review and consider that information in
`
`further developing or refining my opinions.
`II. INFORMATION AND MATERIALS CONSIDERED
`
`15.
`
`In order to render my opinions in this matter, I have carefully
`
`reviewed the specification, claims, and file history of the ’728 patent (Exs.
`
`1001 and 1018). I have also reviewed the following materials:
`
`a. U.S. Patent No. 8,717,204
`
`b. U.S. Patent No. 7,415,530
`
`c. U.S. Patent No. 9,116,908
`
`d. Exhibits 1004-1032.
`
`16. The above references are in addition to any other materials referenced
`
`directly or indirectly in this declaration. I expect to review additional materials
`
`that are provided by the parties as this proceeding progresses.
`III. APPLICABLE LEGAL STANDARDS
`
`17.
`
`I am not an attorney. For purposes of this declaration, I have been
`
`informed about certain aspects of the law that are relevant to my opinions. My
`
`understanding of the law is as follows:
`
`-5-
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`

`

`Commvault Systems v. Realtime Data
`IPR Petition - U.S. Patent No. 9,054,728
`A. Claim Construction
`I have been informed and understand that a claim in inter partes
`18.
`
`review is given the “broadest reasonable construction in light of the specification.”
`
`37 C.F.R. §42.100(b). I have also been informed and understand that any claim
`
`term that lacks a definition in the specification is therefore also given a broad
`
`interpretation. I applied these standards to the ’728 patent in this declaration.
`
`Nevertheless, I have been informed that claim construction is a matter of law and
`
`that the final claim construction will ultimately be determined by the Board.
`I understand that, in the Decision re Institution of Inter Partes Review
`
`19.
`
`(Paper 20) in IPR2017-00179, the Board initially determined that no claim terms in
`
`the ’728 patent required construction.
`B. Obviousness
`20.
`I have been informed and understand that a patent claim can be
`
`considered to have been obvious to a person of ordinary skill in the art at the time
`
`the application was filed. This means that, even if all of the requirements of a
`
`claim are not found in a single prior art reference, the claim is not patentable if the
`
`differences between the subject matter in the prior art and the subject matter in the
`
`claim would have been obvious to a person of ordinary skill in the art at the time
`
`the application was filed.
`
`-6-
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`

`

`Commvault Systems v. Realtime Data
`IPR Petition - U.S. Patent No. 9,054,728
`21.
`I have been informed and understand that a determination of whether
`
`a claim would have been obvious should be based upon several factors, including,
`
`among others:
`
`a.
`
`the level of ordinary skill in the art at the time the application was
`
`b.
`
`c.
`
`filed;
`
`the scope and content of the prior art;
`
`what differences, if any, existed between the claimed invention and
`
`the prior art.
`
`22.
`
`I have been informed and understand that the teachings of two or
`
`more references may be combined in the same way as disclosed in the claims, if
`
`such a combination would have been obvious to one having ordinary skill in the
`
`art. In determining whether a combination based on either a single reference or
`
`multiple references would have been obvious, it is appropriate to consider, among
`
`other factors:
`
`a.
`
`whether the teachings of the prior art references disclose known
`
`concepts combined in familiar ways, and when combined, would yield
`
`predictable results;
`
`b.
`
`whether a person of ordinary skill in the art could implement a
`
`predictable variation, and would see the benefit of doing so;
`
`-7-
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`

`

`Commvault Systems v. Realtime Data
`IPR Petition - U.S. Patent No. 9,054,728
`c.
`whether the claimed elements represent one of a limited number of
`
`known design choices, and would have a reasonable expectation of
`
`success by those skilled in the art;
`
`d.
`
`whether a person of ordinary skill would have recognized a reason to
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`combine known elements in the manner described in the claim;
`
`e.
`
`whether there is some teaching or suggestion in the prior art to make
`
`the modification or combination of elements claimed in the patent;
`
`and
`
`f.
`
`whether the innovation applies a known technique that had been used
`
`to improve a similar device or method in a similar way.
`
`23.
`
`I understand that one of ordinary skill in the art has ordinary
`
`creativity, and is not an automaton.
`
`24.
`
`I understand that in considering obviousness, it is important not to
`
`determine obviousness using the benefit of hindsight derived from the patent being
`
`considered.
`
`IV. LEVEL OF ORDINARY SKILL
`It is my opinion that a person of ordinary skill in the art at the time the
`
`25.
`
`’728 patent was effectively filed, is a person who has an undergraduate degree in
`
`computer science and two years’ industry experience or a graduate degree in the
`
`field of computer science.
`
`-8-
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`

`

`Commvault Systems v. Realtime Data
`IPR Petition - U.S. Patent No. 9,054,728
`26. Based on my experience, I have an understanding of the capabilities
`
`of a person of ordinary skill in the relevant field. I have supervised and directed
`
`many such persons over the course of my career. Further, I had at least those
`
`capabilities myself at the time the patent was filed.
`
`27. The analysis set forth herein evaluates obviousness consistent with the
`
`foregoing principles and through the eyes of one of ordinary skill in the art at the
`
`time of filing.
`
`V. SUMMARY OF OPINIONS
`
`28.
`
`I have been asked to provide opinions regarding the earliest effective
`
`priority date of the ’728 patent based on written description. I understand the ’728
`
`patent purports to be a continuation of U.S. Patent No. 6,624,761 (Ex. 1014, “the
`
`2001 application”), through intervening applications. I also understand the 2001
`
`application purports to be a continuation-in-part of U.S. Patent No. 6,195,024 (Ex.
`
`1013, “the 1998 application”) through an intervening application. Based on my
`
`review, it is my opinion that the 1998 application does not fully describe the
`
`claims.
`
`29.
`
`I also have been asked to provide testimony regarding whether the
`
`following references are analogous art to the ’728 patent:
`
`a.
`
`b.
`
`U.S. Patent No. 5,274,474 (Ex. 1004, “Medina’93”)
`
`U.S. Patent No. 5,801,842 (Ex. 1005, “Medina’98”)
`
`-9-
`
`

`

`Commvault Systems v. Realtime Data
`IPR Petition - U.S. Patent No. 9,054,728
`Dennis Bodson et al., Measurement of Data Compression in
`c.
`Advanced Group 4 Facsimile Systems, 73 Proc. IEEE 731 (1995) (Ex.
`
`d.
`
`e.
`
`1006, “Bodson”)
`Alistair Moffat et al., Lossless Compression for Text and Images, 8
`
`Int’l J. High Speed Electronics & Sys. 179 (1997) (Ex. 1007,
`
`“Moffat”)
`Roy Hunter & A. Harry Robinson, International Digital Facsimile
`Coding Standards, 68 Proc. IEEE 854 (1980) (Ex. 1011, “Hunter”)
`
`f.
`
`Int’l Telecomms. Union, ITU-T Recommendation T.4 (1996)
`
`(Ex. 1008) and Int’l Telecomms. Union, ITU-T Recommendation
`
`T.30 (1996) (Ex. 1010) (collectively, “the Fax Standard”)
`
`g.
`
`Roy Hoffman, Data Compression in Digital Systems (1997) (Ex.
`
`1016, “Hoffman”)
`Judith A. Zidar, 18 Text Recognition and Optical Scanning,
`
`h.
`
`Encyclopedia of Microcomputers 157–81 (Allen Kent & James G.
`
`Williams eds., 1996) (Ex. 1019, “Zidar”)
`i. Mansour Alsulaiman, An investigation of storage and communication
`codes for an electronic library (1987) (Ex. 1020, “Alsulaiman”)
`
`I was specifically asked whether these references are analogous art to the claimed
`
`invention either because (1) the art is from the same endeavor, regardless of the
`
`-10-
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`

`

`Commvault Systems v. Realtime Data
`IPR Petition - U.S. Patent No. 9,054,728
`problem addressed; or (2) if the reference is not within the field of the inventors’
`
`endeavor, whether the reference is still reasonably pertinent to the particular
`
`problem with which the inventors were concerned. In my opinion, they are
`
`analogous art to the ’728 patent.
`
`30. Finally, I have been asked to provide opinions which I understand are
`
`relevant to whether the ’204 patent is patentable under 35 U.S.C. §103. Based on
`
`my review, it is my opinion that a person of ordinary skill in the art would have
`
`concluded the ’728 patent claims are a predictable modification or combination of
`
`old elements that are used according to their established functions. Specifically, it
`
`is my opinion that:
`
`a.
`
`Claims 1, 3-10, 15, 18, 20, 21, and 24 would have been obvious over
`
`Medina’93.
`
`b.
`
`Claims 2, 11-13, 19, 22, and 25 would have been obvious over
`
`Medina’93 in view of Medina’98.
`
`c.
`
`Claims 9, 10, and 20 would have been obvious over Medina’93 in
`
`view of Bodson and/or the Fax Standard.
`
`d.
`
`Claims 14 and 22 would have been obvious over Medina’93 in view
`
`of Moffat and/or the Fax Standard.
`
`e.
`
`Claims 16 and 17 would have been obvious over Medina’93 in view
`
`of Hunter and/or the Fax Standard.
`
`-11-
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`

`

`Commvault Systems v. Realtime Data
`IPR Petition - U.S. Patent No. 9,054,728
`Claim 18 would have been obvious over Medina’93 in view of
`f.
`
`Moffat, Hunter, Hoffman, Zidar, and/or Alsulaiman.
`VI. OVERVIEW OF THE ’728 PATENT
`
`A.
`
`Priority
`
`31. The ’728 patent, titled “Data Compression Systems and Methods,”
`
`was filed on September 24, 2014 and claims priority to several U.S. patent
`
`applications. The 1998 application, filed on December 11, 1998, is the earliest
`
`application in the priority chain.
`
`32.
`
`I was asked whether the independent claims of the ’728 patent have
`
`written description support in the 1998 application. In my opinion, they don’t. For
`
`example, the 1998 application does not disclose the claimed “content dependent”
`
`analysis and compression. First, Figures 13-18 (and accompanying text) of the
`
`’728 patent relate to the claimed “content dependent” analysis; these were added
`
`by the Applicant as part of the 2001 application, which was filed on October 29,
`
`2001.
`
`33. Second, Patent Owner admissions and examiner findings relating to
`
`similar claims during reexamination of an ancestor patent corroborate my
`
`conclusions. Ex. 1012 (Excerpts from File History of U.S. Control No.
`
`95/000,479) at 700-02, 1377 (Examiner finding October 29, 2001 to be the priority
`
`date of similar claims reciting “content dependent” analysis and compression and
`
`-12-
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`

`

`Commvault Systems v. Realtime Data
`IPR Petition - U.S. Patent No. 9,054,728
`“single data compression encoder”); id. at 1417-19 (Patent Owner citing Figures
`
`13-18 as support for these claim limitations).
`B.
`
`Brief Description
`
`34. The ’728 patent is directed to systems and methods for analyzing a
`
`data block and selecting a compression method to apply to that block. Ex. 1001
`
`(’728 patent) at abstract. Figure 13A of the ’728 patent shows an embodiment of
`
`the alleged invention that is relevant to the challenged claims:
`
`
`
`-13-
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`

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`Commvault Systems v. Realtime Data
`IPR Petition - U.S. Patent No. 9,054,728
`35. The “content dependent data recognition module” 1300 analyzes the
`
`incoming data stream to recognize “data types . . . and/or any other parameters that
`may be indicative of either the data type/content of a given data block.” See id. at
`
`16:22-28. If this module “recognize[s]” the data type of a given data block, the
`module routes the block to the content dependent encoder module 1320 (see, e.g.,
`id. at 16:31-34); if not, it routes the block to the “content independent” encoder
`module 30 (see, e.g., id. at 3:62-63, 4:1-3, 15:63-16:4, 16:30-34, 18:7-11).
`
`36. The content dependent encoder module 1320 comprises lossy or
`lossless compression encoders (id. at 16:37-47); the content independent encoder
`module 30 comprises only lossless encoders (id. at 16:53-55). The lossy encoders
`provide for an “inexact” representation of the original uncompressed data (id. at
`2:7-10); the lossless encoders provide for an “exact” representation (id. at 2:21-22).
`
`Lossy encoders may be more suitable for some types of data (such as audio or
`
`image data, where degradations may be acceptable or not noticed by the end-user)
`
`and lossless encoders may be more suitable for other types of data, such as (where
`
`exact representations are critical).
`
`37. The ’728 patent teaches that “[e]ncoding techniques” may be selected
`
`“based upon their ability to effectively encode different types of input data” and
`
`that a “full complement of encoders provides for broad coverage of existing and
`future data types.” Id. at 12:60-64. But the ’728 patent recognizes that the
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`IPR Petition - U.S. Patent No. 9,054,728
`following lossy and lossless encoding techniques were well known within the art:
`
`“MPEG4, various voice codecs, MPEG3, AC3, AAC” (lossy) and “run length,
`
`Huffman, Lempel-Ziv Dictionary Compression, arithmetic coding, data
`compaction, and data null suppression” (lossless). See, e.g., id. at 7:12-17, 16:37-
`
`44.
`
`38. The ’728 patent also admits that the method of Figure 1 as well as the
`methods in U.S. Patent No. 5,467,087 (Ex. 1025, “Chu”) are prior art. Id. at fig. 1,
`
`3:20-52. The methods disclosed in Chu include detecting the “data type” in an
`
`input data stream by analyzing a pre-defined number of bytes of that data stream,
`
`providing a data type identifier to that data, and then based on that identifier
`
`selecting one or more compression techniques optimal for that data type, such as a
`dictionary-type data compression technique followed by Huffman encoding. Id. at
`
`3:20-52. The ’728 patent also teaches that well-known lossless compression
`
`algorithms such as “run length, Huffman, Lempel-Ziv Dictionary Compression,
`
`arithmetic coding, data compaction, and data null suppression” may be used by
`
`either the content independent or dependent compression encoders shown in Figure
`13A above. Id. at 16:37-44 (content dependent), 16:53-57 (content independent).
`
`39. Finally, the ’728 patent also teaches that the compression ratios of the
`
`data compressed by the various content independent or content dependent
`
`compression encoders (ratio of the size in bytes of the data in uncompressed form
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`to the size in bytes of the data in compressed form) may be calculated and
`considered in determining which compressed data blocks to output for storage. Id.
`
`at 17:32-18:3. For example, one data block may be compressed by more than one
`
`content independent encoder and another data block may be compressed by more
`than one content dependent encoder. Id. at 16:63-17:31. The data block
`
`compressed by a content independent encoder that resulted in the highest
`
`compression ratio may be selected for output, so long as that compression ratio is
`higher than a preset threshold compression ratio. Id. at 17:32-18:3. Similarly, the
`
`data block compressed by a content dependent encoder that resulted in the highest
`
`compression ratio may be selected for output, so long as that compression ratio is
`also higher than a preset threshold compression ratio. Id. The concept of
`
`compressing with a plurality of compressors and choosing the output from the one
`
`that gives the most compression was well known at the time of the filing of the
`
`’728 patent; for example, it is described in the Wernikoff patent (U.S. Patent No.
`
`3,394,352 (Ex. 1009)), which was filed in 1965 and is discussed in more detail
`
`below.
`C.
`
`Summary of the Prosecution History
`1.
`40.
`
`Reexamination of the ancestor patent
`
`I have been informed that prior to the prosecution of the ’728 patent,
`
`ancestor patent U.S. Patent No. 7,161,506 (Ex. 1015, “the ’506 patent”) underwent
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`IPR Petition - U.S. Patent No. 9,054,728
`prosecution and two reexaminations during which limitations similar to those in
`
`the challenged ’728 claims were added. I mentioned one of the reexaminations
`
`above, with respect to the priority date of the ’728 patent.
`
`41.
`
`I have also been informed that the ’506 patent was filed on September
`
`22, 2003 with 22 claims. Ex. 1026 (Excerpts from File History of U.S. Application
`
`No. 10/668,768) at 49-54. On February 20, 2004, the Examiner issued a first
`office action. Id. at 95. In response, applicant filed amended claim 1, canceled
`claims 2-22, and added claims 23-31. Id. at 113-15. Claim 1 was amended to add
`
`the “single data compression encoder” limitation also found in certain of the
`
`challenged ’728 claims. Amended claim 1 recited:
`
`
`Id. at 113. Prior to allowance, the applicant canceled claims 26-29, added claims
`32-93, and filed a terminal disclaimer. Id. at 127, 149-59, 187-92.
`
`42.
`
`I have been informed that, during the first reexamination of the ’506
`
`patent, the Patent Owner pointed to sections of the ’506 specification describing
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`Commvault Systems v. Realtime Data
`IPR Petition - U.S. Patent No. 9,054,728
`“content independent data compression” as support for “single data compression
`
`encoder.” Ex. 1012 (Excerpts from File History of U.S. Control No. 95/000,479)
`
`at 1418 (citing the ’506 patent at 18:34-39, 21:25-28, 24:21-24).
`
`43.
`
`I have also been informed that during the second reexamination of the
`
`’506 patent, the Patent Owner amended certain claims to add the “excludes
`
`analyzing based only on a descriptor” limitation also found in certain of the
`
`challenged ’506 claims, as will be discussed in more detail below. Ex. 1027
`
`(Excerpts from File History of U.S. Control No. 95/001,926) at 898-99.
`2.
`44.
`
`Prosecution of the ’728 patent
`
`I have been informed that the ’728 patent was filed on September 24,
`
`2014 with 25 claims. Ex. 1018 (Excerpts from File History of U.S. Application
`
`No. 14/495,574) at 50-54. I have also been informed that on October 23, 2014, the
`Examiner issued a first office action. Id. at 240-46. I have further been informed
`
`that, in response, applicant filed a terminal disclaimer and amended claims 1-3, 5-
`6, 8-10, 12, 14, 16-17, 19-20, and 23-25. Id. at 411, 425-37.
`
`45. Amended claim 1 recited:
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`
`46. Amended claim 24 recited:
`
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`IPR Petition - U.S. Patent No. 9,054,728
`
`47. Amended claim 25 recited:
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`Commvault Systems v. Realtime Data
`IPR Petition - U.S. Patent No. 9,054,728
`
`
`48.
`I have been informed that the claims were allowed on February
`27, 2015. Id. at 575-82.
`VII. STATE OF THE ART AT THE TIME OF THE ’728 PATENT
`
`A.
`
`Background
`
`49. Compressing data without regard to the parameters or attributes of the
`
`data (such as data types or redundancy metrics) with a particular algorithm or
`
`encoder has been known for decades. Additionally, analyzing data to identify a
`
`known parameter or attribute and compressing data based on these known
`
`parameters or attributes with a particular compression algorithm or encoder has
`
`also been known for decades, as described in detail below.
`
`50. The Background section of the ’728 patent acknowledges the prior art
`
`teachings of U.S. Patent No. 5,467,087 to Chu entitled “High Speed Lossless Data
`Compression System” (“Chu”). Ex. 1001 (’728 patent) at 3:20-36; see also Ex.
`
`1025 (Chu). In particular, the ’728 patent states that Chu discloses a method for
`
`“selecting an appropriate lossless data compression technique” for a given data
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`block. Ex. 1001 (’728 patent) a