IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________
`
`COMCAST CABLE COMMUNICATIONS, LLC
`
`Petitioner
`
`v.
`
`REALTIME ADAPTIVE STREAMING, LLC
`
`Patent Owner
`
`___________
`
`Case IPR2019-00760
`Patent No. 8,934,535
`___________
`
`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
`
`

`

`Patent No. 8,934,535 – Petition for Inter Partes Review
`
`TABLE OF CONTENTS
`
`V.
`
`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) ................ 6
`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 ........... 7
`THE ’535 PATENT ........................................................................................ 8
`A.
`Overview of the ’535 Patent ................................................................. 8
`B.
`Original Prosecution Summary .......................................................... 14
`C.
`Level of Ordinary Skill in the Art ...................................................... 15
`D.
`Claim Construction............................................................................. 16
`1.
`“data block” .............................................................................. 16
`2.
`“parameter” .............................................................................. 17
`3.
`“asymmetric compressors” / “asymmetric data
`compression” ............................................................................ 18
`“access profile” ........................................................................ 19
`4.
`SUMMARY OF PRIOR ART ...................................................................... 20
`A.
`Summary of Dvir ................................................................................ 20
`B.
`Summary of Ishii ................................................................................ 24
`VII. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ’535 PATENT IS UNPATENTABLE ................... 27
`A.
`[GROUND 1] – Claims 1, 2, 9, 10, 14 are anticipated by Dvir
`under 35 U.S.C. § 102 ........................................................................ 27
`
`VI.
`
`i
`
`

`

`Patent No. 8,934,535 – Petition for Inter Partes Review
`
`B.
`
`C.
`
`[GROUND 2] – Claims 1, 2, 9, 10, 14 are obvious over Dvir
`under 35 U.S.C. § 103 ........................................................................ 40
`[GROUND 3] – Claims 3-6, 8, 11, 12 are obvious over Dvir in
`view of Ishii under 35 U.S.C. § 103 ................................................... 42
`1.
`Motivation to Combine Dvir and Ishii ..................................... 43
`VIII. CONCLUSION ............................................................................................. 65
`
`ii
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`

`

`Patent No. 8,934,535 – Petition for Inter Partes Review
`
`LIST OF EXHIBITS
`
`Exhibit
`
`Description
`
`EX1001 U.S. Patent No. 8,934,535 to Fallon (“the ’535 Patent”)
`
`EX1002
`
`Prosecution History of the ’535 Patent (“the Prosecution
`History”)
`
`EX1003 Declaration of Dr. Scott Acton
`
`EX1004 U.S. Patent No. 6,557,001 (“Dvir”)
`
`EX1005 U.S. Patent No. 5,675,789 (“Ishii”)
`
`EX1006 U.S. Patent No. 6,216,157 (“Vishwanath”)
`
`EX1007
`
`Prosecution History of U.S. Patent No. 8,867,610 to Fallon (“the
`’610 Patent”)
`
`EX1008 U.S. Patent No. 6,195,024 to Fallon (“the ’024 Patent”)
`
`EX1009
`
`EX1010
`
`EX1011
`
`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.)
`
`EX1012
`
`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)
`
`EX1013 Held, G. Data Compression: Techniques and Applications,
`Hardware and Software Considerations, John Wiley & Sons,
`1983
`
`EX1014
`
`Fahie, John Jacob (1884). A History of Electric Telegraphy, to
`the Year 1837. E. & F.N. Spon.
`
`iii
`
`

`

`Patent No. 8,934,535 – Petition for Inter Partes Review
`
`Exhibit
`
`Description
`
`EX1015 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.
`
`EX1016 Huffman, D. A. (1952). A method for the construction of
`minimum-redundancy codes. Proceedings of the IRE, 40(9),
`1098-1101.
`
`EX1017
`
`EX1018
`
`EX1019
`
`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.
`
`EX1020
`
`Jim Taylor, DVD Demystified (1998)
`
`EX1021
`
`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.
`
`EX1022
`
`ISO/IEC 11172-2: 1993
`
`EX1023
`
`ISO/IEC 13818-2: 1995
`
`EX1024 Gringeri et al., Traffic Shaping, Bandwidth Allocation, and
`Quality Assessment for MPEG Video Distribution over
`Broadband Networks, IEEE Network, (November/December
`1998)
`
`EX1025 U.S. Patent No. 6,020,904 (“Clark”)
`
`EX1026
`
`Executed Assignment U.S. Patent No. 8,934,535
`
`iv
`
`

`

`Patent No. 8,934,535 – Petition for Inter Partes Review
`
`Exhibit
`
`EX1027
`
`Description
`
`Complaint for Patent Infringement - Realtime v EchoStar
`Technologies, et al., Case No. 6-17-cv-00567 (E.D. Tex. Oct. 10,
`2017)
`
`EX1028 Amended Complaint for Patent Infringement - Realtime
`Adaptive Streaming LLC v Sling TV LLC et al., Case No. 1-17-
`02097 (D. Col. Oct. 10, 2017)
`
`v
`
`

`

`Patent No. 8,934,535 – Petition for Inter Partes Review
`
`I.
`
`INTRODUCTION
`
`Petitioner Comcast Cable Communications, 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”).
`
`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.” EX1001-
`
`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.
`
`EX1001-11:30-40. 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.” EX1001-8:4-12. 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
`
`1
`
`

`

`Patent No. 8,934,535 – Petition for Inter Partes Review
`
`improve data storage and retrieval and reduce latency associated with retrieving
`
`and decompressing frequently used files. EX1001-12:1-45.
`
`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
`
`

`

`Patent No. 8,934,535 – Petition for Inter Partes Review
`
`compression algorithms based on, among other things, data type, as explained
`
`below and supported by Dr. Scott Acton’s declaration (EX1003). EX1003-¶¶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. EX1004-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.;
`
`EX1003-¶¶73-79
`
`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.”
`
`EX1005-Abstract, 5:1-6:57; EX1003-¶¶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. EX1003-¶¶1-220. Petitioners therefore request that the Board institute
`
`Inter Partes Review of the Challenged Claims on the grounds set forth below.
`
`1 U.S. Patent No. 6,557,001 (EX1004, “Dvir”).
`
`2 U.S. Patent No. 5,675,789 (EX1005, “Ishii”).
`
`3
`
`

`

`Patent No. 8,934,535 – Petition for Inter Partes Review
`
`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)
`
`The real parties-in-interest are Comcast Cable Communications, LLC and
`
`Comcast Corporation. No unnamed entity is funding, controlling, or directing this
`
`petition or has the opportunity to control or direct this petition or Petitioner’s
`
`participation in any resulting inter partes review.
`
`B.
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`The ’535 Patent is the subject of several pending IPRs. Review has been
`
`instituted in IPR2018-01169 (the “Netflix IPR”). Petitioner filed for review of the
`
`same claims on the same grounds in IPR2019-00684 and has filed a motion to join
`
`the Netflix IPR. Additionally, ARRIS Solutions, Inc. (and others) filed for review
`
`in IPR2019-00674 and also filed a motion to join the Netflix IPR.
`
`The ’535 Patent has been asserted by Realtime Adaptive Streaming against
`
`Petitioner in the following district court case: Realtime Adaptive Streaming LLC v.
`
`Comcast Cable Communications, LLC et al., Case No. 1:18-cv-01446, District of
`
`Colorado.
`
`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. Charter Communications, Inc. et
`al.; Case No. 1-18-cv-01345 (D. Colo. Jun. 1, 2018);
`
`4
`
`

`

`Patent No. 8,934,535 – Petition for Inter Partes Review
`
`• 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 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);
`
`5
`
`

`

`Patent No. 8,934,535 – Petition for Inter Partes Review
`
`• 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., 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); and
`
`• Realtime Adaptive Streaming LLC v. Amazon.com, Inc., Case No. 6-
`17-cv-00549 (E.D. Tex. Sep. 27, 2017).
`
`Certain of these lawsuits have been dismissed.
`
`C.
`
`Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`Petitioner appoints James L. Day (Reg. No. 72,681) of Farella Braun +
`
`Martel LLP as lead counsel and appoints Daniel Callaway (Reg. No. 74,267) of
`
`Farella Braun + Martel LLP as back-up counsel.
`
`6
`
`

`

`Patent No. 8,934,535 – Petition for Inter Partes Review
`
`D.
`
`Service Information
`
`Service of any documents to lead and back-up counsel can be made via
`
`hand-delivery to Farella Braun + Martel LLP, 235 Montgomery Street, 17th Floor,
`
`San Francisco, California, 94104. Petitioner consents to electronic service to the
`
`following email addresses: jday@fbm.com, dcallaway@fbm.com, and
`
`calendar@fbm.com.
`
`III. PAYMENT OF FEES – 37 C.F.R. § 42.103
`
`The Board is authorized to charge fees for this petition to Deposit Account
`
`No. 602061.
`
`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.
`
`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. EX1003-¶¶1-220.
`
`Basis for Rejection
`Claims
`Ground
`Ground 1 1, 2, 9, 10, 14 Anticipated by Dvir - 35 U.S.C. § 102
`Ground 2 1, 2, 9, 10, 14 Obvious over Dvir - 35 U.S.C. § 103
`Ground 3 3-6, 8, 11, 12
`Obvious over Dvir in view of Ishii - 35 U.S.C.
`§ 103
`
`7
`
`

`

`Patent No. 8,934,535 – Petition for Inter Partes Review
`
`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. 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 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. EX1003-¶¶45-53. As noted above, the ’535 Patent recognizes
`
`that data compression effectiveness varies with different data types. For example,
`
`8
`
`

`

`Patent No. 8,934,535 – Petition for Inter Partes Review
`
`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. EX1001-
`
`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.,
`
`1:27-30, 8:8-13. The ’535 Patent’s system is shown in FIG. 1, below.
`
`9
`
`

`

`Patent No. 8,934,535 – Petition for Inter Partes Review
`
`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. EX1001-
`
`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., 8:8-13.3 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
`
`3 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.
`
`10
`
`

`

`Patent No. 8,934,535 – Petition for Inter Partes Review
`
`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
`
`“highly desirable” to address the challenge of selecting optimized compression
`
`methods for data sets containing multiple types/formats of data. Id., 1:55-60, 6:43-
`
`45. As a solution, the ’535 Patent discloses a system that uses a controller to select
`
`and perform well-known compression operations on input data. Id., 10:61-64.
`
`With regard to the specific compression operations, the ’535 Patent uses
`
`well known symmetric and asymmetric algorithms. EX1001-8:41-43, 9:53-10:30,
`
`11:6-12:67, 13:1-39, 13:55-14:26, 15:1-10, 16:38-17:24. The ’535 Patent
`
`describes symmetric compression algorithms as those “in which the execution time
`
`for the compression and the decompression routines are substantially similar.” Id.,
`
`11
`
`

`

`Patent No. 8,934,535 – Petition for Inter Partes Review
`
`10:5-30. In contrast, asymmetric algorithms are those in which “the execution
`
`time for the compression and decompression routines differ significantly,”
`
`including “dictionary-based compression schemes such as Lempel-Ziv.” Id.,
`
`9:63-10:4. The ’535 Patent describes balancing these competing factors and
`
`selecting from among “asymmetrical compression algorithm[s]” or “symmetrical
`
`algorithm[s]” using the data type to compress input data, but does not claim to
`
`have invented either type of compression or algorithms belonging to either type of
`
`compression. Id., 10:1-5. Indeed, the ’535 Patent acknowledges the well-known
`
`tradeoff between these two types of compression algorithms, specifically that “an
`
`asymmetrical algorithm typically achieves higher compression ratios than a
`
`symmetrical algorithm” but that “the total execution time to perform one compress
`
`and one decompress of a data set is typically greater” than for symmetrical
`
`compression algorithms. Id., 10:10-14.
`
`Turning to the claims at issue, challenged independent claims 1 and 14 each
`
`recite a well-known process including: (1) “determining a parameter or an
`
`attribute of at least a portion of a data block”; (2) “selecting an access profile from
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`among a plurality of access profiles based upon the determined parameter or
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`attribute,” where, as noted above, the “access profile” enables the controller to link
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`the data parameter to the compression algorithm (EX1001-20:29-42); and
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`(3) “compressing the at least the portion of the data block with one or more
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`Patent No. 8,934,535 – Petition for Inter Partes Review
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`compressors [...] to create one or more compressed data blocks” using “asymmetric
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`data compression.” EX1001-20:29-41, 21:45-67.4
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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) (EX1001-
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`20:47-55, 21:20-22); “storing at least a portion of the one or more compressed data
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`blocks” (claim 6) (Id., 20:56-58); selecting the compressors “based upon a number
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`of reads of at least a portion of a first compressed data block” (claim 8) (Id., 21:1-
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`7); determining the parameter or attribute without doing so “based only upon
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`reading a descriptor of the at least the portion of the data block” (claim 9) (Id.,
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`21:8-12); and “storing at least” a portion of the compressed data blocks (claim 12)
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`(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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`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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`4 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
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`one slow compress encoder and at least one fast decompress decoder. EX1001-
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`21:45-67.
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`Patent No. 8,934,535 – Petition for Inter Partes Review
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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. EX1003, ¶¶45-72.
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`B.
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`Original Prosecution Summary
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`The ’535 Patent application was filed on September 20, 2013 as part
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`of a lengthy string of continuations claiming priority back to February 13,
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`2001. EX1002-1-24.
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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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`Vishwanath.5 EX1002-269-279.
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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. EX1002-431-448. 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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`5 U.S. Patent No. 6,216,157 (“Vishwanath”).
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`Patent No. 8,934,535 – Petition for Inter Partes Review
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`application on the same day. EX1002-431-448; see also EX1007-399-418. In that
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`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. EX1007-399-418. However, Vishwanath explicitly describes the
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`use of the Lempel-Ziv compression algorithm (see EX1006-6:62-67), which the
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`’535 Patent itself admits is “asymmetric.” EX1001-10:1-5.
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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). EX1002-548, 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.
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`Level of Ordinary Skill in the Art
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`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. EX1003-
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`Patent No. 8,934,535 – Petition for Inter Partes Review
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`¶¶34-39.
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`D.
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`Claim Construction
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`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. The construction of certain terms under the BRI standard is
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`discussed in the relevant sections below.6 EX1003-¶¶40-44.
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`1.
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`“data block”
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`Realtime Data, Realtime’s predecessor in interest, previously has agreed in
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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
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`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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`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 – Petition for Inter Partes Review
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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., EX1009; EX1010;
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`EX1012. Furthermore, the ’535 Patent incorporates by reference the disclosure of
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`what is now U.S. Patent No. 6,195,024 (“’024 Patent”), which describes “data
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`blocks” as ranging “in size from individual bits through complete files or
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`collections of multiple files.” EX1008-7:9-15. The ’024 Patent provides a specific
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`definition for “data block,” and states that “the size of each input data block” can
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`be counted in “bits, bytes, words, [or] any convenient data multiple or metric, or
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`any combination thereof.” Id. Given this definition, a POSITA would understand
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`that a data block could be counted in any convenient data multiple or metric as a
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`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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`EX1003-¶41
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`2.
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`“parameter”
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`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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`Patent No. 8,934,535 – Petition for Inter Partes Review
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`data token or descriptor.” EX1012. This definition is consistent with the usage of
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`“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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`“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.” EX1003-¶42.
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`3.
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`“asymmetric compressors” / “asymmetric data
`compression”
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`The ’535 Patent states that an asymmetric algorithm is an algorithm where
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`compression of data and decompression of that compressed data take different
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`amounts of time. EX1001-9:60-10:4, 11:6-17. An asymmetric technique is
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`understood by a POSITA to have an encoding process that is more complex than
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`the decoding process. EX1003-¶¶43, 54-72. Thus, it is more time-consuming for a
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`system to perform compression than decompression. Indeed, a POSITA would
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`have understood that certain types of data are generally encoded very few times
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`relative to the number of times it is decoded. Id.
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`Given the decoding frequency of a type of data, a POSITA would have
`
`understood that implementing an asymmetric compression technique would
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`achieve the efficiency the ’535 Patent seeks to provide, i.e., reducing end-user
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`latency, by providing for fast decoding. Id. Moreover, a POSITA would have
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`understood that asymmetric data compression indicates compression and
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`Patent No. 8,934,535 – Petition for Inter Partes Review
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`decompressi