IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`James J. Fallon et al.
`In re Patent of:
`Attorney Docket No.: 45035-0002IP3
`8,934,535
`U.S. Patent No.:
`
`January 13, 2015
`Issue Date:
`
`Appl. Serial No.: 14/033,245
`
`Filing Date:
`September 20, 2013
`Title:
`SYSTEMS AND METHODS FOR VIDEO AND AUDIO
`DATA STORAGE AND DISTRIBUTION
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 8,934,535 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`
`
`

`

`Attorney Docket: 45035-0002IP3
`IPR of U.S. Patent No. 8,934,535
`
`V. 
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1 
`I. 
`II.  MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1) .......................... 4 
`A.  Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ................................ 4 
`B.  Related Matters Under 37 C.F.R. § 42.8(b)(2) ......................................... 4 
`C.  Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ..................... 7 
`D.  Service Information .................................................................................. 7 
`PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................... 7 
`III. 
`IV.  REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ............................ 7 
`A.  Grounds for Standing Under 37 C.F.R. § 42.104(a)................................. 7 
`B.  Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ............... 8 
`THE ’535 PATENT ......................................................................................... 9 
`A.  Overview of the ’535 Patent ..................................................................... 9 
`B.  Original Prosecution Summary ............................................................... 14 
`C.  Level of Ordinary Skill in the Art ........................................................... 15 
`D.  Claim Construction ................................................................................. 15 
`1. 
`“data block” ................................................................................... 16 
`2. 
`“parameter” ................................................................................... 17 
`3. 
`“asymmetric compressor” ............................................................. 18 
`VI.  SUMMARY OF PRIOR ART ....................................................................... 19 
`A.  Summary of Dvir .................................................................................... 19 
`B.  Summary of Ishii .................................................................................... 23 
`C.  Summary of Kalra ................................................................................... 26 
`VII.  THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’535 PATENT IS UNPATENTABLE ............................. 28 
`A.  [GROUND 1] – Claims 15, 16, 17, 19, 21, 22 are obvious over Dvir in
`view of Kalra under 35 U.S.C. § 103 ..................................................... 28 
`1.  Motivation to Combine Dvir and Kalra ........................................ 29 
`B.  [GROUND 2] – Claim 24 is obvious over Dvir in view of Kalra and
`Ishii under 35 U.S.C. § 103 .................................................................... 55 
`1.  Motivation to Combine Dvir, Kalra, and Ishii .............................. 56 
`VIII.  CONCLUSION .............................................................................................. 67 
`
`
`
`
`
`
`i
`
`

`

`Attorney Docket: 45035-0002IP3
`IPR of U.S. Patent No. 8,934,535
`
`EXHIBITS
`
`DISH1001
`
`U.S. Patent No. 8,934,535 to Fallon (“the ’535 Patent”)
`
`DISH1002
`
`Prosecution History of the ’535 Patent (“the Prosecution
`History”)
`
`DISH1003
`
`Declaration of Dr. Scott Acton
`
`DISH1004
`
`U.S. Patent No. 6,557,001 (“Dvir”)
`
`DISH1005
`
`U.S. Patent No. 5,953,506 (“Kalra”)
`
`DISH1006
`
`U.S. Patent No. 5,675,789 (“Ishii”)
`
`DISH1007
`
`U.S. Patent No. 6,216,157 (“Vishwanath”)
`
`DISH1008
`
`Prosecution History of U.S. Patent No. 8,867,610 to Fallon
`(“the ’610 Patent”)
`
`DISH1009
`
`U.S. Patent No. 6,195,024 to Fallon (“the ’024 Patent”)
`
`DISH1010
`
`DISH1011
`
`DISH1012
`
`Realtime Data LLC v. Rackspace US, Inc. et al., Dkt. No. 183,
`Case No. 6-16-cv-00961 (E.D. Tex. June 29, 2016)
`
`Realtime Data LLC v. Actian Corporation et al., Dkt. No. 362,
`Case No. 6-15-cv-00463 (E.D. Tex. May 8, 2015)
`
`Patent Owner’s Infringement Contentions for U.S. Patent No.
`8,934,535 from Realtime Adaptive Streaming LLC v. Sling TV
`L.L.C. et al., Case No. 1:17-cv-02097-RBJ (D. Colo.)
`
`DISH1013
`
`Realtime Data, LLC d/b/a IXO v. Packeteer, Inc., et al., No.
`6:08-cv-00144 Docket No. 371, p. 59 (E.D. Tex. June 22, 2009)
`
`DISH1014
`
`[RESERVED]
`
`ii
`
`

`

`DISH1015
`
`DISH1016
`
`DISH1017
`
`DISH1018
`
`DISH1019
`
`DISH1020
`
`DISH1021
`
`Attorney Docket: 45035-0002IP3
`IPR of U.S. Patent No. 8,934,535
`Held, G. Data Compression: Techniques and Applications,
`Hardware and Software Considerations, John Wiley & Sons,
`1983
`
`Fahie, John Jacob (1884). A History of Electric Telegraphy, to
`the Year 1837. E. & F.N. Spon.
`
`Mag, Lond Mechanics. “Mr. Bain's Electric Printing
`Telegraph.” Journal of the Franklin Institute, of the State of
`Pennsylvania, for the Promotion of the Mechanic Arts; Devoted
`to Mechanical and Physical Science, Civil Engineering, the
`Arts and Manufactures, and the Recording of American and
`Other Patent Inventions (1828-1851) 8.1 (1844): 61.
`
`Huffman, D. A. (1952). A method for the construction of
`minimum-redundancy codes. Proceedings of the IRE, 40(9),
`1098-1101.
`
`Shannon, C. E. (1949). Communication theory of secrecy
`systems. Bell Labs Technical Journal, 28(4), 656-715.
`
`Tekalp, A. M. (1995). Digital video processing. Prentice Hall
`Press.
`
`Bovik, Alan C. Handbook of image and video processing.
`Academic press, 2009.
`
`DISH1022
`
`[RESERVED]
`
`DISH1023
`
`[RESERVED]
`
`DISH1024
`
`Jim Taylor, DVD Demystified (1998)
`
`DISH1025
`
`Zhang, Z. L., Wang, Y., Du, D. H. C., & Su, D. (2000). Video
`staging: A proxy-server-based approach to end-to-end video
`delivery over wide-area networks. IEEE/ACM Transactions on
`networking, 8(4), 429-442.
`
`iii
`
`

`

`Attorney Docket: 45035-0002IP3
`IPR of U.S. Patent No. 8,934,535
`
`DISH1026
`
`ISO/IEC 11172-2: 1993
`
`DISH1027
`
`ISO/IEC 13818-2: 1995
`
`DISH1028
`
`Gringeri et al., Traffic Shaping, Bandwidth Allocation, and
`Quality Assessment for MPEG Video Distribution over
`Broadband Networks, IEEE Network, (November/December
`1998)
`
`DISH1029
`
`U.S. Patent No. 6,020,904 (“Clark”)
`
`
`
`
`
`iv
`
`

`

`Attorney Docket: 45035-0002IP3
`IPR of U.S. Patent No. 8,934,535
`
`I.
`
`INTRODUCTION
`Sling TV L.L.C., Sling Media L.L.C., DISH Network L.L.C., and DISH
`
`Technologies L.L.C. (“Petitioner” or “DISH”) petition for Inter Partes Review
`
`(“IPR”) under 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42 of claims 15-17, 19, 21,
`
`22, and 24 (“the Challenged Claims”) of U.S. Patent No. 9,054,535 (“the ’535
`
`Patent”).
`
`The ’535 Patent is directed to a system that attempts to balance compression
`
`speed and compression ratio to provide accelerated data storage and retrieval. The
`
`’535 Patent recognized that compression algorithms provided varying compression
`
`ratios for different types of data, and that “an optimum algorithmic implementation
`
`for a given input data set may not be optimum for a different data set.” DISH1001-
`
`5:11-32.
`
`Attempting to accelerate data storage and retrieval, the ’535 Patent “select[s]
`
`a suitable compression algorithm based on the data type” of data to be compressed.
`
`DISH1001-11:30-40. To do so, the controller determines the data type and
`
`identifies a suitable compression algorithm. In other words, the controller
`
`accelerates data storage by selecting a compression algorithm optimized for the
`
`type of data to be compressed. DISH1001-8:4-12. Further, the ’535 Patent also
`
`examines the frequency the data is accessed to select the appropriate compression
`
`1
`
`

`

`Attorney Docket: 45035-0002IP3
`IPR of U.S. Patent No. 8,934,535
`algorithm to improve data storage and retrieval and reduce latency associated with
`
`retrieving and decompressing frequently used files. DISH1001-12:1-45.
`
`The prior art, however, had already recognized and addressed the problems
`
`that the ’535 Patent seeks to solve. Prior to ’535 Patent, the proliferation of digital
`
`multimedia (e.g., audio and video) combined with limits on bandwidth, storage,
`
`and computing led to the rapid advancement of data compression technologies.
`
`Given the vast number of available compression technologies, the prior art was
`
`well acquainted with the inverse relationship between compression speed and
`
`compression ratio and the effect that both had on system considerations like
`
`bandwidth and storage efficiency and capacity. Likewise, the prior art recognized
`
`that different types of data present unique challenges in terms of bandwidth and
`
`storage and had in fact already developed standardized compression and
`
`decompression schemes like MPEG suited for particular types of data (e.g., video).
`
`Given the advanced state of the art, it is of no surprise that the prior art
`
`already knew that certain compression algorithms compressed certain types of data
`
`better than others at the time of the ’535 Patent’s alleged invention. And naturally,
`
`the prior art fully appreciated that compression systems could select compression
`
`algorithms that best suit the data requiring compression. Because much of this art
`
`was overlooked or misinterpreted, the ’535 Patent was granted without full
`
`consideration of the prior art, which clearly discloses the selection of suitable
`
`2
`
`

`

`Attorney Docket: 45035-0002IP3
`IPR of U.S. Patent No. 8,934,535
`compression algorithms based on, among other things, data type, as explained
`
`below and supported by Dr. Scott Acton’s declaration (DISH1003). DISH1003-
`
`¶¶1-196.
`
`For example, Dvir1 discloses a system for compressing and transmitting
`
`video and/or audio data from a computer to a remote monitor over a low
`
`bandwidth network. DISH1004-Abstract; 2:23-34. Dvir uses a profile manager to
`
`detect characteristics of the data. Id. Based on the data characteristic, Dvir uses a
`
`compression profile to select the compression method suitable for the data. Id.;
`
`DISH1003-¶¶67-72.
`
`Similarly, Ishii2 discloses a system that “determines the data type and the
`
`access frequency of [a] file for compression” and selects and applies “the file
`
`compression method suitable for said data type and the access frequency.”
`
`DISH1005-Abstract, 5:1-6:57; DISH1003-¶¶73-77.
`
`Additionally, Kalra3 is directed to compression technologies and tailoring
`
`multimedia data “accessed from [a] server” for “each client computer so that the
`
`best” combination of additive digital data streams can be provided to maximize the
`
`
`1 U.S. Patent No. 6,557,001 (DISH1004, “Dvir”).
`
`2 U.S. Patent No. 5,675,789 (DISH1005, “Ishii”).
`
`3 U.S. Patent No. 5,953,506 (DISH1005, “Kalra”)
`
`3
`
`

`

`Attorney Docket: 45035-0002IP3
`IPR of U.S. Patent No. 8,934,535
`resolution of the 3D, audio and video components” (see DISH1005-Abstract, 1:11-
`
`22, 2:5-23, 2:27-50, FIG. 15B) and discloses claimed elements, such as “storing at
`
`least a portion of the compressed data block” (see id., Abstract, 4:5-14, 6:35-53,
`
`27:58-28:16) and “retriev[ing] at least a portion of the at least stored portion of the
`
`at least compressed portion of the data block based upon the throughput of the
`
`communication channel.” See id., Abstract, 4:12-46, 27:58-28:16; DISH1003-
`
`¶¶78-83.
`
`In sum, if the Office had considered this combination of references, or other
`
`references cited herein, the Challenged Claims of the ’535 Patent never would have
`
`issued. DISH1003-¶¶1-196. Petitioners therefore request the Board institute Inter
`
`Partes Review of the Challenged Claims on the grounds set forth below.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Sling TV L.L.C., Sling Media L.L.C., DISH Network L.L.C., and DISH
`
`
`
`Technologies L.L.C. are the real parties-in-interest. No other party had access to
`
`the Petition, and no other party had any control over, or contributed to any funding
`
`of, the preparation or filing of this Petition.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`The ’535 Patent is the subject of two currently pending IPRs filed by Hulu,
`
`LLC (IPR2018-01169 (PTAB Jun. 1, 2018) and IPR2018-01170 (PTAB Jun. 1,
`
`2018)) and a third pending IPR filed by Unified Patents Inc. (IPR2018-00883
`
`4
`
`

`

`Attorney Docket: 45035-0002IP3
`IPR of U.S. Patent No. 8,934,535
`(PTAB Apr. 6, 2018)). Petitioners are also concurrently filing a separate petition
`
`as to claims 1-6, 8-12, and 14.
`
`The ’535 Patent has been asserted by Realtime Adaptive Streaming against
`
`DISH in four cases: Realtime Adaptive Streaming LLC v. DISH Technologies LLC,
`
`Case No. 6-17-cv-00567 (E.D. Tex. Oct. 10, 2017); Realtime Data LLC d/b/a IXO
`
`v. Sling TV LLC., Case No. 1-17-cv-02097 (D. Col. Aug. 31, 2017); Realtime Data
`
`LLC d/b/a IXO v. DISH Network Corp., Case No. 6-17-cv-00421 (E.D. Tex. Jul.
`
`19, 2017); Realtime Data LLC d/b/a IXO v. DISH Corp., Case No. 6-17-cv-00084
`
`(E.D. Tex. Feb. 14, 2017). The cases filed in the Eastern District of Texas against
`
`DISH were ultimately dismissed without prejudice, leaving the Colorado case still
`
`pending.
`
`The ’535 Patent has also been asserted by Realtime Adaptive Streaming
`
`LLC (“Realtime”) in a multitude of separate litigations against other defendants
`
`across the country: Realtime Adaptive Streaming, LLC v. Comcast Cable
`
`Communications, LLC, et al.; Case No. 1:18-cv-01446 (D. Colo. Jun. 11, 2018);
`
`Realtime Adaptive Streaming LLC v. Charter Communications, Inc. et al.; Case
`
`No. 1-18-cv-01345 (D. Colo. Jun. 1, 2018); Realtime Adaptive Streaming LLC v.
`
`Cox Communications, Inc.; Case No. 8-18-cv-00942 (C.D. Cal. May 31, 2018);
`
`Realtime Adaptive Streaming LLC v. LG Electronics Inc. et al.; Case No. 6-18-cv-
`
`00215 (E.D. Tex. May 15, 2018); Realtime Adaptive Streaming LLC v. Advanced
`
`5
`
`

`

`Attorney Docket: 45035-0002IP3
`IPR of U.S. Patent No. 8,934,535
`Micro Devices, Inc.; Case No. 1-18-cv-01173 (D. Colo. May 15, 2018); Realtime
`
`Adaptive Streaming LLC v. Intel Corp.; Case No. 1-18-cv-01175 (D. Colo. May
`
`15, 2018); Realtime Adaptive Streaming LLC v. Mitel Networks, Inc.; Case No. 1-
`
`18-cv-01177 (D. Colo. May 15, 2018); Realtime Adaptive Streaming LLC v. Avaya
`
`Inc.; Case No. 1-18-cv-01046 (D. Colo. May 4, 2018); Realtime Adaptive
`
`Streaming LLC v. Broadcom Corp. et al.; Case No. 1-18-cv-01048 (D. Colo. May
`
`4, 2018); Realtime Adaptive Streaming LLC v. Google LLC et al.; Case No. 2-18-
`
`cv-03629 (C.D. Cal. Apr. 30, 2018); Realtime Adaptive Streaming LLC v. Wowza
`
`Media Systems LLC; Case No. 1-18-cv-00927 (D. Colo. Apr. 20, 2018); Realtime
`
`Adaptive Streaming LLC v. Samsung Electronics Co., Ltd.; Case No. 6-18-cv-
`
`00113 (E.D. Tex. Mar. 9, 2018); Realtime Adaptive Streaming LLC v. Adobe
`
`Systems Inc., Case No. 1-18-cv-10355 (D. Mass. Feb. 23, 2018); Realtime
`
`Adaptive Streaming LLC v. Apple Inc., Case No. 1-17-cv-02869 (D. Colo. Nov. 30,
`
`2017); Realtime Adaptive Streaming LLC v. Netflix, Inc., Case No. 1-17-cv-01692
`
`(D. Del. Nov. 21, 2017); Realtime Adaptive Streaming LLC v. Sony Electronics
`
`Inc., Case No. 1-17-cv-01693 (D. Del. Nov. 21, 2017); Realtime Adaptive
`
`Streaming LLC v. Polycom, Inc., Case No. 1-17-cv-02692 (D. Colo. Nov. 10,
`
`2017); Realtime Adaptive Streaming LLC v. Brightcove Inc., Case No. 1-17-cv-
`
`01519 (D. Del. Oct. 26, 2017); Realtime Adaptive Streaming LLC v. Haivision
`
`Network Video Inc., Case No. 1-17-cv-01520 (D. Del. Oct. 26, 2017); Realtime
`
`6
`
`

`

`Attorney Docket: 45035-0002IP3
`IPR of U.S. Patent No. 8,934,535
`Adaptive Streaming LLC v. Cisco Systems, Inc., Case No. 6-17-cv-00591 (E.D.
`
`Tex. Oct. 18, 2017); Realtime Adaptive Streaming LLC v. Hulu, Inc., Case No. 2-
`
`17-cv-07611 (C.D. Cal. Oct. 17, 2017); Realtime Adaptive Streaming LLC v.
`
`Amazon.com, Inc., Case No. 6-17-cv-00549 (E.D. Tex. Sep. 27, 2017).
`
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Petitioner provides the following designation of counsel.
`
`Lead Counsel
`Ruffin B. Cordell, Reg. No. 33,487
`3200 RBC Plaza,
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070 / Fax 877-769-7945
`
`Backup counsel
`Adam R. Shartzer Reg. No. 57,264
`Brian J. Livedalen Reg. No. 67,450
`3200 RBC Plaza,
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070 / Fax 877-769-7945
`
`
`
`D. Service Information
`Please address all correspondence and service to the address listed above.
`
`Petitioner consents to electronic service by email at IPR45035-0002IP3@fr.com
`
`(referencing No. 45035-0002IP3 and cc’ing PTABInbound@fr.com).
`
`III. PAYMENT OF FEES – 37 C.F.R. § 42.103
`Petitioner authorizes the Patent and Trademark Office to charge Deposit
`
`Account No. 06-1050 for the petition fee set in 37 C.F.R. § 42.15(a) and for any
`
`other required fees.
`
`IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`7
`
`

`

`Attorney Docket: 45035-0002IP3
`IPR of U.S. Patent No. 8,934,535
`Petitioner certifies that the ’535 Patent is available for IPR and Petitioner is
`
`not barred or estopped from requesting IPR.
`
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested
`Petitioner requests IPR of the Challenged Claims on the grounds listed
`
`below. In support, this Petition includes rationales for each of these grounds and
`
`the supporting evidentiary declaration from Dr. Scott Acton. DISH1003-¶¶1-196.
`
`Claims
`Ground
`Ground 1 15, 16, 17, 19,
`21, 22
`24
`
`Ground 2
`
`Basis for Rejection
`Obvious over Dvir in view of Kalra - 35 U.S.C. §
`103
`Obvious over Dvir in view of Kalra and Ishii - 35
`U.S.C. § 103
`
`
`
`The ’535 Patent issued from U.S. Application No. 14/033,245, which is a
`
`continuation of U.S. Patent Application No. 13/154,239, filed on June 6, 2011,
`
`now U.S. Pat. No. 8,553,759, which is a continuation of U.S. Patent Application
`
`No. 12/123,081, filed on May 19, 2008, now U.S. Pat. No. 8,073,047, which is a
`
`continuation of U.S. Patent Application No. 10/076,013, filed on February 13,
`
`2002, now U.S. Pat. No. 7,386,046, which claims the benefit of U.S. Provisional
`
`Application No. 60/268,394, filed on Feb. 13, 2001. Accordingly, the earliest
`
`possible priority date for the ’535 Patent is February 13, 2001 (hereinafter the
`
`“Critical Date”).
`
`Dvir published on April 29, 2003 and issued from U.S. Application No.
`
`8
`
`

`

`Attorney Docket: 45035-0002IP3
`IPR of U.S. Patent No. 8,934,535
`09/438,500, filed on November 12, 1999 and thus qualifies as prior art at least
`
`under 35 U.S.C. §§ 102(a)/102(e).
`
`Kalra published on September 14, 1999, issued from U.S. Application No.
`
`08/768,114, filed on December 17, 1996 and thus qualifies as prior art at least
`
`under 35 U.S.C. §§ 102(a)/102(b)/102(e).
`
`Ishii published on October 8, 1997, issued from U.S. Application No.
`
`08/669,847, filed on June 26, 1996 and thus qualifies as prior art at least under 35
`
`U.S.C. §§ 102(a)/102(b)/102(e).
`
`V. THE ’535 PATENT
`A. Overview of the ’535 Patent
`The ’535 Patent describes data compression and decompression within a
`
`computer system. As noted above, the ’535 Patent recognizes that data
`
`compression effectiveness varies with different data types. For example, a
`
`compression algorithm that provides maximum storage capacity for one data type
`
`may result in read or write times that are too slow for the needs of the data storage
`
`system, or even a decrease in storage capacity for certain data types. DISH1001-
`
`12:1-45. The ’535 Patent, therefore, discloses a system to “select a suitable
`
`compression algorithm that provides a desired balance between execution speed
`
`(rate of compression) and efficiency (compression ratio)” to achieve “the greatest
`
`possible compression, preferably in real-time, regardless of the data content.” Id.,
`
`9
`
`

`

`Attorney Docket: 45035-0002IP3
`IPR of U.S. Patent No. 8,934,535
`1:27-30; 8:8-13. The ’535 Patent’s system is shown in FIG. 1, below. DISH1003-
`
`¶¶43-51.
`
`
`
`As shown in FIG. 1, the ’535 Patent’s system includes a compression system
`
`12 that receives data for processing. A controller 11 uses an “access profile” that
`
`“associates different data types (based on, e.g., a file extension) with preferred
`
`one(s) of the compression algorithms” to select a compression algorithm tailored to
`
`the received data from among multiple compression algorithms 13. DISH1001-
`
`11:31-40. Because various data types have differing access rates, system
`
`10
`
`

`

`Attorney Docket: 45035-0002IP3
`IPR of U.S. Patent No. 8,934,535
`performance can be improved with a compression algorithm customized according
`
`to characteristics of the received data. Preferred algorithms balance “execution
`
`speed (rate of compression) and efficiency (compression ratio)” and are selected
`
`based on the data type. Id., 8:8-13.4 For example, to select a compression
`
`algorithm based on data type, the system implementing the features of the ’535
`
`Patent includes an access profile in the form of a “map that associates different
`
`data types (based on, e.g., a file extension) with preferred […] compression
`
`algorithms” to identify a preferred compression algorithm for a block of data, and
`
`in turn, to generate a signal to activate the preferred compression algorithm for use
`
`in compressing the block of data. Id., 11:25-50. The compression system 12
`
`applies the selected compression algorithm to the received data to optimize storage
`
`access times with respect to compression efficiency.
`
`The ’535 Patent does not claim to have invented compression. Nor does it
`
`teach the public a new compression algorithm. Indeed, the ’535 Patent
`
`
`4 Although the abstract suggests that the invention focuses on “track[ing] and
`
`monitor[ing] the throughput (data storage and retrieval) of a data compression
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`system” to “enable/disable different compression algorithms when, e.g., a
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`bottleneck occurs so as to increase the throughput and eliminate the bottleneck,”
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`the ’535 Patent claims do not recite such subject matter.
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`Attorney Docket: 45035-0002IP3
`IPR of U.S. Patent No. 8,934,535
`specification admits that, at the time of filing, data compression was well-known to
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`provide “several unique benefits,” including “reduc[ing] the time to transmit data”
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`by efficiently utilizing low bandwidth communication channels. Id., 4:21-25. The
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`’535 Patent contends, however, that providing “dynamic modification of
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`compression system parameters” to balance compression rates and ratios was
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`“highly desirable” to address the challenge of selecting optimized compression
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`methods for data sets containing multiple types/formats of data. Id., 1:55-60, 6:43-
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`45. As a solution, the ’535 Patent discloses a system that uses a controller to select
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`and perform well-known compression operations on input data. Id., 10:61-64.
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`With regard to the specific compression operations, the ’535 Patent uses
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`well known symmetric and asymmetric algorithms. DISH1001-8:41-43; 9:53-
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`10:30; 11:6-12:67; 13:1-39; 13:55-14:26; 15:1-10; 16:38-17:24. The ’535 Patent
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`describes symmetric compression algorithms as those “in which the execution time
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`for the compression and the decompression routines are substantially similar.” Id.,
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`10:5-30. In contrast, asymmetric algorithms are those in which “the execution
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`time for the compression and decompression routines differ significantly,”
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`including “dictionary-based compression schemes such as Lempel-Ziv.” Id., 9:63-
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`10:4. The ’535 Patent describes balancing these competing factors and selecting
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`from among “asymmetrical compression algorithm[s]” or “symmetrical
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`algorithm[s]” using the data type to compress input data, but does not claim to
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`Attorney Docket: 45035-0002IP3
`IPR of U.S. Patent No. 8,934,535
`have invented either type of compression or algorithms belonging to either type of
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`compression. Id., 10:1-5. Indeed, the ’535 Patent acknowledges the well-known
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`tradeoff between these two types of compression algorithms, specifically that “an
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`asymmetrical algorithm typically achieves higher compression ratios than a
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`symmetrical algorithm” but that “the total execution time to perform one compress
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`and one decompress of a data set is typically greater” than for symmetrical
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`compression algorithms. Id., 10:10-14.
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`Turning to the claims at issue, representative independent claim 15 is
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`directed to a well-known process including: (1) “determining a parameter of at
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`least a portion of a data block”; (2) “selecting one or more asymmetric
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`compressors from among a plurality of compressors based upon the determined
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`parameter or attribute”; (3) “compressing the at least the portion of the data block
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`with the selected one or more asymmetric compressors to provide one or more
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`compressed data blocks”; and (4) “storing at least a portion of the one or more
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`compressed data blocks.” DISH1001-22:1-13.
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`As explained below, each of these features and combinations of features
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`recited in various dependent claims was either disclosed by the prior art or would
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`have been obvious to a person of ordinary skill in the art at the time of the alleged
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`invention (“POSITA”) in view of the prior art. DISH1003, ¶¶43-51.
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`Attorney Docket: 45035-0002IP3
`IPR of U.S. Patent No. 8,934,535
`
`B. Original Prosecution Summary
`The ’535 Patent application was filed on September 20, 2013 as part of a
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`lengthy string of continuations claiming priority back to February 13, 2001.
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`DISH1002-1-24.
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`Substantive prosecution started on February 26, 2014, when the Examiner
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`issued a non-final Office action rejecting claims in view of a patent to
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`Vishwanath5. DISH1002-269-279.
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`On May 27, 2014, Realtime Data filed claim amendments to incorporate
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`features identified by the Examiner as allowable, limiting the claims to use of an
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`“asymmetric” compression algorithm. DISH1002-431-448. While Realtime Data
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`appears to have responded to the wrong § 102 rejection, as Realtime’s remarks
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`reference completely different prior art cited in prosecution of a different family of
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`Realtime patents, and not Vishwanath, Realtime’s intention to incorporate
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`“allowable” features is indicated by, for example, Realtime’s response in a related
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`application on the same day. DISH1002-431-448; see also DISH1008-399-418.
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`In that related office action response, Realtime Data represented that inserting the
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`“asymmetric” compression algorithm limitation placed similar claims in condition
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`for allowance. DISH1008-399-418. However, Vishwanath explicitly describes the
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`5 U.S. Patent No. 6,216,157 (“Vishwanath”).
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`Attorney Docket: 45035-0002IP3
`IPR of U.S. Patent No. 8,934,535
`use of the Lempel-Ziv compression algorithm (see DISH1006-6:62-67), which the
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`’535 Patent itself admits is “asymmetric.” DISH1001-10:1-5.
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`On December 10, 2014, the Examiner issued a Notice of Allowance, simply
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`reproducing the text of the claims as the reasons for allowance and ignoring
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`Realtime Data’s remarks (which, as noted above, were directed to a prior art
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`reference that was not included in the Examiner’s rejection). DISH1002-548, 585-
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`589. The Examiner never required Realtime Data to respond to the actual rejection
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`based on Vishwanath and Realtime Data never offered to address its error.
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`Furthermore, as detailed below, the specific combinations of prior art
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`references—which were never before the Examiner—teach all elements of the
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`Challenged Claims, and were never addressed by the Examiner or Realtime Data.
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`C. Level of Ordinary Skill in the Art
`In the data compression field, a POSITA generally would have had a
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`bachelor’s degree in electrical engineering, computer engineering, computer
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`science, or the equivalent and 2-3 years of work experience with data compression,
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`storage, retrieval, processing, and transmission, or the equivalent. DISH1003-
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`¶¶33-38.
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`D. Claim Construction
`Under 37 C.F.R. § 42.100(b), claims in an unexpired patent are given their
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`broadest reasonable interpretation (“BRI”) as understood by a POSITA in view of
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`Attorney Docket: 45035-0002IP3
`IPR of U.S. Patent No. 8,934,535
`the specification. The construction of certain terms under the BRI standard is
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`discussed in the relevant sections below.6 DISH1003-¶¶39-42.
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`1. “data block”
`Realtime Data, Realtime’s predecessor in interest, previously has agreed in
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`multiple district court proceedings for related patents that the construction of “data
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`block” is “a single unit of data, which may range in size from individual bits
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`through complete files or collection of multiple files.” See, e.g., DISH1010;
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`DISH1011; DISH1013. Furthermore, the ’535 Patent incorporates by reference the
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`6 On May 9, 2018, the U.S. Patent Office announced proposed rule changes to
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`replace the BRI standard for construing unexpired patent claims and proposed
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`claims with the same standard applied in federal district courts and the
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`International Trade Commission (“ITC”), i.e., the Phillips standard. The
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`Challenged Claims discussed herein are unpatentable under either the Phillips
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`standard or BRI standard, and, to the extent BRI is referenced, this should not be
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`taken as an admission that the same argument/evidence would not prevail under
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`the Phillips standard should the PTAB adopt and apply such a standard during the
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`pendency of the instant IPR. Petitioner submits that the prior art structures and
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`resulting combinations provide all elements of the Challenged Claims as described
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`below, regardless of which claim construction standard applies.
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`Attorney Docket: 45035-0002IP3
`IPR of U.S. Patent No. 8,934,535
`disclosure of what is now U.S. Patent No. 6,195,024 (“’024 Patent”), which
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`describes “data blocks” as ranging “in size from individual bits through complete
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`files or collections of multiple files.” DISH1009-7:9-15. The ’024 Patent provides
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`a specific definition for “data block,” and states that “the size of each input data
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`block” can be counted in “bits, bytes, words, [or] any convenient data multiple or
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`metric, or any combination thereof.” Id. Given this definition, a POSITA would
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`understand that a data block could be counted in any convenient data multiple or
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`metric as a data block is merely a unit for counting data.
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`Thus, the broadest reasonable interpretation (“BRI”) of “data block” in view
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`of the ’535 Patent includes “at least a single unit of data, which may range in size
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`from individual bits through complete files or collection of multiple files.”
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`DISH1003-¶41.
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`2. “parameter”
`The ’535 Patent specification term uses the term “parameter” only 5 times,
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`in various contexts, but does not provide a specific definition. The Eastern District
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`of Texas has adopted the construction of a “parameter” to mean “any recognizable
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`data token or descriptor.” DISH1013. This definition is consistent with the usage
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`of “parameter” in the claims of the ’535 Patent, which indicates that a parameter
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`provides a recognizable indication or description of a particular unit of data.
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`Moreover, the ’535 Patent places no restrictions on the interpretation of the term
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`Attorney Docket: 45035-0002IP3
`IPR of U.S. Patent No. 8,934,535
`“parameter.” From this description, the BRI of “parameter” in view of the ’535
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`Patent includes “any recognizable data token or descriptor.” DISH1003-¶41
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`3. “asymmetric compressor”
`The ’535 Patent states that an asymmetric compressor or compression
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`algorithm is an algorithm where compression of data and decompression of that
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`compressed data take different amounts of time. DISH1001-9:60-10:4, 11:6-17.
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`An asymmetric technique is understood by a POSITA to have an encoding process
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`that is more complex than the decoding process. DISH1003-¶42. Thus, it is more
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`time-consuming for a system to perform compression than decompression. Indeed,
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`a POSITA would have understood that certain types of data are generally encoded
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`very few times relative