`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`GOOGLE LLC
`Petitioner
`
`v.
`
`REALTIME ADAPTIVE STREAMING LLC
`Patent Owner
`
`_________________
`
`Patent No. 8,934,535
`_________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,934,535
`
`

`

`Petition for Inter Partes Review
`Patent No. 8,934,535
`
`V. 
`
`TABLE OF CONTENTS
`I. 
`INTRODUCTION .......................................................................................... 1 
`II.  MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ....................... 4 
`A. 
`Real Parties-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 .................................................. 8 
`III. 
`IV.  REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ........................... 8 
`A.  Grounds for Standing Under 37 C.F.R. § 42.104(a) ............................ 8 
`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 .......................................................... 15 
`C. 
`Level of Ordinary Skill in the Art ...................................................... 16 
`D. 
`Claim Construction ............................................................................ 17 
`1. 
`“data block” .............................................................................. 18 
`2. 
`“parameter” .............................................................................. 19 
`3. 
`“asymmetric compressors” / “asymmetric data
`compression” ............................................................................ 19 
`“access profile” ........................................................................ 20 
`4. 
`VI.  SUMMARY OF PRIOR ART ...................................................................... 21 
`A. 
`Summary of Dvir ................................................................................ 21 
`B. 
`Summary of Ishii ................................................................................ 27 
`VII.  THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ’535 PATENT IS UNPATENTABLE ................... 29 
`A. 
`[GROUND 1] – Claims 1, 2, 9, 10, 14 are anticipated by Dvir
`under 35 U.S.C. § 102 ........................................................................ 29 
`[GROUND 2] – Claims 1, 2, 9, 10, 14 are obvious over Dvir
`under 35 U.S.C. § 103 ........................................................................ 43 
`[GROUND 3] – Claims 3-6, 8, 11, 12 are obvious over Dvir in
`view of Ishii under 35 U.S.C. § 103 ................................................... 45 
`1.  Motivation to Combine Dvir and Ishii ..................................... 45 
`VIII.  CONCLUSION ............................................................................................. 69 
`
`
`B. 
`
`C. 
`
`i
`
`

`

`1001
`1002
`
`1003
`1004
`1005
`1006
`1007
`
`1008
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`
`Petition for Inter Partes Review
`Patent No. 8,934,535
`
`EXHIBITS
`U.S. Patent No. 8,934,535 to Fallon (“the ’535 Patent”)
`Prosecution History of the ’535 Patent (“the Prosecution
`History”)
`Declaration of Dr. Scott Acton
`U.S. Patent No. 6,557,001 (“Dvir”)
`U.S. Patent No. 5,675,789 (“Ishii”)
`U.S. Patent No. 6,216,157 (“Vishwanath”)
`Prosecution History of U.S. Patent No. 8,867,610 to Fallon
`(“the ’610 Patent”)
`U.S. Patent No. 6,195,024 to Fallon (“the ’024 Patent”)
`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.)
`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)
`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.
`
`ii
`
`

`

`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`1021
`
`1022
`1023
`1024
`
`1025
`
`
`Petition for Inter Partes Review
`Patent No. 8,934,535
`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.
`Jim Taylor, DVD Demystified (1998)
`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.
`ISO/IEC 11172-2: 1993
`ISO/IEC 13818-2: 1995
`Gringeri et al., Traffic Shaping, Bandwidth Allocation, and
`Quality Assessment for MPEG Video Distribution over
`Broadband Networks, IEEE Network,
`(November/December 1998)
`U.S. Patent No. 6,020,904 (“Clark”)
`
`
`iii
`
`

`

`
`Petition for Inter Partes Review
`Patent No. 8,934,535
`Comparison between the current Petition and petition in
`IPR2018-01342
`
`1026
`
`
`
`iv
`
`

`

`
`Petition for Inter Partes Review
`Patent No. 8,934,535
`
`I.
`
`INTRODUCTION
`Google LLC (“Petitioner”) petitions for Inter Partes Review (“IPR”) under
`
`35 U.S.C. §§ 311-319 and 37 C.F.R. § 42 of claims 1-6, 8-12, and 14 (“the
`
`Challenged Claims”) of U.S. Patent No. 8,934,535 (“the ’535 Patent”). This
`
`Petition is being submitted concurrently with a Motion for Joinder. Specifically,
`
`Petitioner requests institution and joinder with Sling TV L.L.C. v. Realtime
`
`Adaptive Streaming, LLC, IPR2018-01342 (“the Sling IPR” or “the Sling
`
`proceeding”), which the Board instituted on January 31, 2019. This Petition is
`
`substantially identical to the petition in the Sling IPR; it contains the same grounds
`
`(based on the same prior art, combinations, and supporting evidence) against the
`
`same claims. (See Ex. 1026, illustrating changes between the instant Petition and
`
`the petition in IPR2018-01342.)
`
`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.” Ex. 1001,
`
`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.
`
`1
`
`

`

`
`Petition for Inter Partes Review
`Patent No. 8,934,535
`Ex. 1001, 11:30-40. The controller uses an “access profile,” which “enables the
`
`controller to determine a compression routine that is associated with a data type of
`
`the data to be compressed.” Ex. 1001, 8:4-12. In other words, the controller
`
`accelerates data storage by selecting a compression algorithm optimized for the
`
`type of data to be compressed. Id. Further, the ’535 Patent also examines the
`
`frequency the data is accessed to select the appropriate compression algorithm to
`
`improve data storage and retrieval and reduce latency associated with retrieving
`
`and decompressing frequently used files. Ex. 1001, 12:1-45.
`
`The prior art, however, had already recognized and addressed the problems
`
`that the ’535 Patent seeks to solve. Prior to the ’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
`
`2
`
`

`

`
`Petition for Inter Partes Review
`Patent No. 8,934,535
`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
`
`compression algorithms based on, among other things, data type, as explained
`
`below and supported by Dr. Scott Acton’s declaration (Ex. 1003). Ex. 1003, ¶¶1-
`
`220.
`
`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. Ex. 1004, 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.; Ex.
`
`1003, ¶¶73-79.
`
`
`1 U.S. Patent No. 6,557,001 (Ex. 1004, “Dvir”).
`
`3
`
`

`

`
`Petition for Inter Partes Review
`Patent No. 8,934,535
`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.” Ex.
`
`1005, Abstract, 5:1-6:57; Ex. 1003, ¶¶80-85.
`
`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. Ex. 1003, ¶¶1-220. Petitioner therefore requests 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 Parties-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Petitioner identifies Google LLC and YouTube LLC as the real parties-in-
`
`interest.3
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`The ’535 Patent is the subject of the following currently pending IPRs:
`
`IPR2018-01342 (instituted Jan. 31, 2019), IPR2018-01169 (instituted Jan. 17,
`
`
`2 U.S. Patent No. 5,675,789 (Ex. 1005, “Ishii”).
`
`3 Google LLC is a subsidiary of XXVI Holdings Inc., which is a subsidiary of
`
`Alphabet Inc. XXVI Holdings Inc. and Alphabet Inc. are not real parties-in-
`
`interest to this proceeding.
`
`4
`
`

`

`
`Petition for Inter Partes Review
`Patent No. 8,934,535
`2019), IPR2019-00684 (filed Feb. 15, 2019), and IPR2019-00674 (filed Feb. 15,
`
`2019). As noted above, Petitioner is concurrently filing a motion to join the Sling
`
`proceeding (IPR2018-01342).
`
`The ’535 Patent was also the subject of the following now-terminated IPRs:
`
`IPR2018-00883, IPR2018-01170, IPR2018-01332, and IPR2018-01384.
`
`The ’535 Patent has been asserted by Realtime Adaptive Streaming LLC
`
`(“Realtime”) against Google in Realtime Adaptive Streaming LLC v. Google LLC
`
`et al., Case No. 2:18-cv-03629 (C.D. Cal. Apr. 30, 2018). The case is still
`
`pending.
`
`The ’535 Patent has also been asserted by Realtime in a multitude of
`
`separate litigations against other defendants across the country: Realtime Adaptive
`
`Streaming, LLC v. Adobe Systems Inc., Case No. 2:18-cv-09344 (C.D. Cal. Oct.
`
`31, 2018); Realtime Adaptive Streaming, LLC v. Comcast Cable Communications,
`
`LLC, et al., Case No. 1:18-cv-01446 (D. Colo. June 11, 2018); Realtime Adaptive
`
`Streaming LLC v. Charter Communications, Inc. et al., Case No. 1:18-cv-01345
`
`(D. Colo. June 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
`
`

`

`
`Petition for Inter Partes Review
`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. 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 Adaptive Streaming LLC v. Cisco Systems, Inc.,
`
`6
`
`

`

`
`Petition for Inter Partes Review
`Patent No. 8,934,535
`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. DISH Technologies LLC, Case No. 6:17-cv-00567
`
`(E.D. Tex. Oct. 10, 2017); Realtime Adaptive Streaming LLC v. Amazon.com, Inc.,
`
`Case No. 6:17-cv-00549 (E.D. Tex. Sep. 27, 2017); Realtime Data LLC d/b/a IXO
`
`v. Sling TV LLC., Case No. 1:17-cv-02097 (D. Colo. Aug. 31, 2017); Realtime
`
`Data LLC d/b/a IXO v. DISH Network Corp., Case No. 6:17-cv-00421 (E.D. Tex.
`
`July 19, 2017); and Realtime Data LLC d/b/a IXO v. DISH Corp., Case No. 6:17-
`
`cv-00084 (E.D. Tex. Feb. 14, 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:
`
`Naveen Modi (Reg. No. 46,224). Backup counsel: (1) Joseph E. Palys (Reg. No.
`
`46,508), (2) Phillip W. Citroën (Reg. No. 66,541), and (3) S. Emily Lee (Reg. No.
`
`75,896).
`
`D. Service Information
`Service information is Paul Hastings LLP, 875 15th St. N.W., Washington,
`
`D.C., 20005, Tel.: 202.551.1700, Fax: 202.551.1705, email:
`
`PH-Google-Realtime-IPR@paulhastings.com. Petitioner consents to electronic
`
`service.
`
`7
`
`

`

`
`Petition for Inter Partes Review
`Patent No. 8,934,535
`
`III. PAYMENT OF FEES – 37 C.F.R. § 42.103
`Petitioner authorizes the Patent and Trademark Office to charge Deposit
`
`Account No. 50-2613 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)
`Petitioner certifies that the ’535 Patent is available for IPR and Petitioner is
`
`not barred or estopped from requesting IPR. This Petition is accompanied by a
`
`Motion for Joinder, and is being submitted no later than one month after the
`
`institution date of the Sling 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. Ex. 1003, ¶¶1-220.
`
`Ground
`Ground 1
`Ground 2
`Ground 3
`
`Basis for Rejection
`Claims
`1, 2, 9, 10, 14 Anticipated by Dvir - 35 U.S.C. § 102
`1, 2, 9, 10, 14 Obvious over Dvir - 35 U.S.C. § 103
`3-6, 8, 11, 12 Obvious over Dvir in view of 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,
`
`8
`
`

`

`
`Petition for Inter Partes Review
`Patent No. 8,934,535
`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 February 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.
`
`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).
`
`Ishii published on October 7, 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. Ex. 1003, ¶¶45-53. 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
`
`9
`
`

`

`
`iew
`
`for Inter PPartes Rev
`
`
`Patent NNo. 8,934,5535
`
`system, or even a decrease inn storage ccapacity foor certain ddata types.
`Ex. 1001,
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`Petition
`
`
`
`
`
`
`
`
`
`
`
`
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`12:1-455. The ’5355 Patent, thherefore, ddiscloses a
`
`
`
`
`
`
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`system to
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`“select a s
`
`uitable
`
`
`
`compression algorrithm that pprovides aa desired baalance betwween execuution speedd
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`(rate of
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`
`
`
`compressiion) and effficiency (ccompressioon ratio)” tto achieve
`
`
`
`
`
`
`
`
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`“the greateest
`
`
`
`possiblee compresssion, preferrably in reaal-time, reggardless off the data ccontent.” IId.,
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`
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`
`
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`
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`
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`
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`1:27-300; 8:8-13. TThe ’535 PPatent’s system is shoown in FIGG. 1, beloww.
`
`
`
`
`
`
`
`10
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`

`

`
`Petition for Inter Partes Review
`Patent No. 8,934,535
`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. Ex. 1001,
`
`11:31-40. Because various data types have differing access rates, system
`
`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
`
`
`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
`
`system” to “enable/disable different compression algorithms when, e.g., a
`
`bottleneck occurs so as to increase the throughput and eliminate the bottleneck,”
`
`the ’535 Patent claims do not recite such subject matter.
`
`11
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`

`

`
`Petition for Inter Partes Review
`Patent No. 8,934,535
`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
`
`specification admits that, at the time of filing, data compression was well-known to
`
`provide “several unique benefits,” including “reduc[ing] the time to transmit data”
`
`by efficiently utilizing low bandwidth communication channels. Id., 4:21-25. The
`
`’535 Patent contends, however, that providing “dynamic modification of
`
`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. Ex. 1001, 8:41-43; 9:53-10:30;
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`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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`Patent No. 8,934,535
`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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`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, challenged independent claims 1 and 14 each
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`recite a well-known process including: (1) “determining a parameter or an attribute
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`of at least a portion of a data block”; (2) “selecting an access profile from among a
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`plurality of access profiles based upon the determined parameter or attribute,”
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`where, as noted above, the “access profile” enables the controller to link the data
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`Patent No. 8,934,535
`parameter to the compression algorithm (Ex. 1001, 20:29-42); and (3)
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`“compressing the at least the portion of the data block with one or more
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`compressors [...] to create one or more compressed data blocks” using “asymmetric
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`data compression.” Ex. 1001, 20:29-41; 21:45-67.5
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`Other challenged claims include additional features, such as the data blocks
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`or compressed data blocks including “one or more files” (claims 3-5, 11) (Ex.
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`1001, 20:47-55; 21:20-22); “storing at least a portion of the one or more
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`compressed data blocks” (claim 6) (Id., 20:56-58); selecting the compressors
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`“based upon a number of reads of at least a portion of a first compressed data
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`block” (claim 8) (Id., 21:1-7); determining the parameter or attribute without doing
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`so “based only upon reading a descriptor of the at least the portion of the data
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`block” (claim 9) (Id., 21:8-12); and “storing at least” a portion of the compressed
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`data blocks (claim 12) (Id., 21:23-35).
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`Thus, the claims of the ’535 Patent focus on selecting one of already well-
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`known symmetric or asymmetric compression algorithms based on factors
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`
`5 Claim 14 does not explicitly recite “asymmetric data compression” and instead
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`recites the function of an asymmetric encoder inasmuch as it requires “at least one
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`slow compress encoder and at least one fast decompress decoder. Ex. 1001, 21:45-
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`Patent No. 8,934,535
`including “a parameter or an attribute of at least a portion of a data block having
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`video or audio data” that is to be compressed or a “number of reads” of at least a
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`portion of such a data block. As explained below, each of these features and
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`combinations of features was either disclosed by the prior art or would have been
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`obvious to a person of ordinary skill in the art at the time of the alleged invention
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`(“POSITA”) in view of the prior art. Ex. 1003, ¶¶45-72.
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`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. Ex.
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`1002, 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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`Vishwanath6. Ex. 1002, 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. Ex. 1002, 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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`6 U.S. Patent No. 6,216,157 (“Vishwanath”).
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`Patent No. 8,934,535
`Realtime’s 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. Ex. 1002, 431-448; see also Ex. 1007, 399-418. In
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`that related office action response, Realtime represented that inserting the
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`“asymmetric” compression algorithm limitation placed similar claims in condition
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`for allowance. Ex. 1007, 399-418. However, Vishwanath explicitly describes the
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`use of the Lempel-Ziv compression algorithm (see Ex. 1006, 6:62-67), which the
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`’535 Patent itself admits is “asymmetric.” Ex. 1001, 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). Ex. 1002, 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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`Patent No. 8,934,535
`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. Ex. 1003, ¶¶34-
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`39.
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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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`the specification.7 The construction of certain terms under the BRI standard is
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`discussed in the relevant sections below.8 Ex. 1003, ¶¶40-44.
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`
`7 While the claim construction standard has changed from BRI to Phillips for
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`petitions filed on or after November 13, 2018, the Board should apply the BRI
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`standard to the instant petition because Google is simply seeking joinder as a co-
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`petitioner to the Sling proceeding. If the Board deems that its rule(s) require
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`application of the Phillips standard to this Petition, Google seeks waiver of such
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`rule(s) pursuant to 37 C.F.R. § 42.5(b).
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`8 The Challenged Claims discussed herein are unpatentable under either the
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`Phillips standard or BRI standard, and, to the extent BRI is referenced, this should
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`not be taken as an admission that the same argument/evidence would not prevail
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`under the Phillips standard should the PTAB adopt and apply such a standard
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`during the pendency of the instant IPR. Petitioner submits that the prior art
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`Patent No. 8,934,535
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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
`
`through complete files or collection of multiple files.” See, e.g., Ex. 1009; Ex.
`
`1010; Ex. 1012. Furthermore, the ’535 Patent incorporates by reference the
`
`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.” Ex. 1008, 7:9-15. The ’024 Patent provides a
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`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.
`
`
`structures and resulting combinations provide all elements of the Challenged
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`Claims as described below, regardless of which claim construction standard
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`applies.
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`Patent No. 8,934,535
`Thus, the broadest reasonable interpretation of “data block” in view of the
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`’535 Patent includes “at least a single unit of data, which may range in size from
`
`individual bits through complete files or collection of multiple files.” Ex. 1003, ¶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 de