throbber
Trials@uspto.gov
`571-272-7822
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` Paper 71
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` Date: October 31, 2017
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELL INC.; RIVERBED TECHNOLOGY, INC.; HEWLETT-PACKARD
`ENTERPRISE CO.; HP ENTERPRISE SERVICES, LLC; TERADATA
`OPERATIONS, INC.; ECHOSTAR CORPORATION; HUGHES
`NETWORK SYSTEMS, LLC; ORACLE AMERICA, INC.; and VERITAS
`TECHNOLOGIES, LLC,
`Petitioner,
`
`v.
`
`REALTIME DATA LLC,
`Patent Owner.
`____________
`
`
`Case IPR2016-010021
`Patent 9,116,908 B2
`____________
`
`
`Before JAMES B. ARPIN, JASON J. CHUNG, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`1 Cases IPR2016-01672 and IPR2017-00364 have been joined with this
`proceeding. Paper 53. In our Decision, we refer to the paper numbers from
`IPR2016-01002.
`
`

`

`IPR2016-01002
`Patent 9,116,908 B2
`
`
`I.
`
`INTRODUCTION
`
`Hewlett-Packard Enterprise Company, HP Enterprise Services, LLC,
`
`and Teradata Operations, Inc. (collectively “Petitioner”)2 filed a Petition to
`
`institute an inter partes review of claims 1, 2, 4–6, 9, 11, 21, 22, 24, and 25
`
`of U.S. Patent No. 9,116,908 B1 (“the ’908 patent”). Paper 5 (“Pet.”).
`
`Realtime Data LLC (“Patent Owner”) filed a Preliminary Response pursuant
`
`to 35 U.S.C. § 313. Paper 19 (“Prelim. Resp.”).
`
`Upon consideration of the Petition and the Preliminary Response, on
`
`November 4, 2016, we instituted inter partes review of claims 1, 2, 4–6, 9,
`
`11, 21, 22, 24, and 25 (“instituted claims”), pursuant to 35 U.S.C. § 314.
`
`Paper 25 (“Dec.”).
`
`Subsequent to institution, Patent Owner filed a Corrected Patent
`
`Owner Response. Paper 39 (“PO Resp.”). Petitioner filed a Reply to Patent
`
`Owner’s Response. Paper 48 (“Reply”). An oral hearing was held on June
`
`30, 2017, and a transcript of the oral hearing is available in the record.
`
`Paper 59 (“Tr.”).
`
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`
`and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has not
`
`shown by a preponderance of the evidence that claims 1, 2, 4–6, 9, 11, 21,
`
`22, 24, and 25 of the ’908 patent are unpatentable. See 35 U.S.C. § 316(e).
`
`A. Related Matters
`
`Petitioner and Patent Owner inform us that the ’908 patent is involved
`
`in multiple suits in the U.S. District Court for the Eastern District of Texas.
`
`
`2 The other named petitioners were named in the joined cases. See supra
`n.1.
`
`1
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`

`

`IPR2016-01002
`Patent 9,116,908 B2
`
`
`Pet. 3–4; Paper 11, 2; Paper 14, 1–2. The parties also inform us that the
`
`’908 patent is involved in a suit in the U.S. District Court for the Northern
`
`District of California and several Inter Partes Review proceedings. Pet. 3–
`
`4; Paper 14, 1–2.
`
`B. The Instituted Grounds
`
`We instituted review on the following grounds of unpatentability:
`
`References3
`Instituted Claims
`Basis
`§ 103(a)6 1, 9, 11, 21, 22, 24, and 25
`Franaszek4 and Osterlund5
`Franaszek, Osterlund, and Fall7 § 103(a) 2, 4, 5, and 6
`
`C. The ’908 Patent
`
`The ’908 patent describes systems and methods “for providing
`
`accelerated data storage and retrieval utilizing lossless data compression and
`
`decompression.” Ex. 1001, Abst. The ’908 patent further describes
`
`providing an effective increase of data storage and retrieval bandwidth of a
`
`memory storage device. Id. at 2:60–62. The data storage and retrieval
`
`accelerator method and system reduces the time required to store and
`
`retrieve data from a computer to a disk memory device. Id. at 3:25–28.
`
`
`3 Petitioner also relies upon the Declaration of Dr. Charles D. Creusere,
`Ph.D. Ex. 1002.
`4 U.S. Patent No. 5,870,036, issued Feb. 9, 1999 (Ex. 1004, “Franaszek”).
`5 U.S. Patent No. 5,247,646, issued Sept. 21, 1993 (Ex. 1005, “Osterlund”).
`6 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`125 Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103, effective March 16,
`2013. The ’908 patent was issued prior to the effective date of the AIA.
`Thus, we apply the pre-AIA version of § 103.
`7 U.S. Patent No. 5,991,515, filed July 15, 1997, issued Nov. 23, 1999
`(Ex. 1006, “Fall”).
`
`2
`
`

`

`IPR2016-01002
`Patent 9,116,908 B2
`
`
`D. The Instituted Claims
`
`We instituted inter partes review of claims 1, 2, 4–6, 9, 11, 21, 22, 24,
`
`and 25. Claims 21 and 25 are similar to claim 1, except that claims 21 and
`
`25 are method claims reciting acts that articulate essentially similar
`
`limitations as claim 1. Claim 25 and claim 21 recite essentially similar
`
`limitations, except that claim 25 “receiv[es] a first and second data block
`
`over a communications channel” whereas claim 21 lacks a recitation of
`
`“receiving” and “over a communications channel.” Claims 1, 21, and 25 are
`
`illustrative and reproduced below:
`
`1. A system comprising:
`
`a memory device; and
`
`a data accelerator configured to compress: (i) a first data block
`with a first compression technique to provide a first compressed
`data block; and (ii) a second data block with a second
`compression technique, different from the first compression
`technique, to provide a second compressed data block;
`
`wherein the compressed first and second data blocks are stored
`on the memory device, and the compression and storage occurs
`faster than the first and second data blocks are able to be stored
`on the memory device in uncompressed form.
`
`Ex. 1001, 18:50–62.
`
`21. A method for accelerated data storage of data, comprising:
`
`compressing a first data block with a first data compression
`technique to provide a first compressed data block; and
`
`compressing a second data block with a second data compression
`technique to provide a second compressed data block, wherein
`the first data compression technique and the second data
`compression technique are different;
`
`storing the first and second data compressed blocks on a memory
`device wherein the compression and storage occurs faster than
`the first and second data blocks are able to be stored on the
`
`3
`
`

`

`IPR2016-01002
`Patent 9,116,908 B2
`
`
`memory device in uncompressed form.
`
`Id. at 19:60–20:5.
`
`25. A method for accelerated data storage of data, comprising:
`
`receiving a first and a second data block over a communications
`channel;
`
`compressing the first data block with a first data compression
`technique to provide a first compressed data block; and
`
`compressing the second data block with a second data
`compression technique to provide a second compressed data
`block, wherein the first data compression technique and the
`second data compression technique are different;
`
`storing the first and second data compressed blocks on a memory
`device wherein the compression and storage occurs faster than
`the first and second data blocks are able to be stored on the
`memory device in uncompressed form.
`
`Id. at 20:22–36.
`
`II. ANALYSIS
`
`A. Principles of Law
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
`
`between the subject matter sought to be patented and the prior art are such
`
`that the subject matter as a whole would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said
`
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness is resolved on the basis of underlying
`
`factual determinations, including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
`
`i.e., secondary considerations.8 See Graham v. John Deere Co. of Kansas
`
`
`8 Patent Owner has not raised arguments or produced evidence of secondary
`
`4
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`

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`IPR2016-01002
`Patent 9,116,908 B2
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`City, 383 U.S. 1, 17–18 (1966).
`
`A determination of whether a patent claim is invalid as obvious under
`
`§ 103 requires consideration of all four Graham factors, and it is error to
`
`reach a conclusion of obviousness until all those factors are considered.”
`
`Apple v. Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en
`
`banc) (citations omitted). “This requirement is in recognition of the fact that
`
`each of the Graham factors helps inform the ultimate obviousness
`
`determination.” Id.
`
`“In an [inter partes review], the petitioner has the burden from the
`
`onset to show with particularity why the patent it challenges is
`
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`
`petitions to identify “with particularity . . . the evidence that supports the
`
`grounds for the challenge to each claim”)). This burden of persuasion never
`
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
`
`inter partes review). Furthermore, Petitioner cannot satisfy its burden of
`
`proving obviousness by employing “mere conclusory statements.” In re
`
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`
`Thus, to prevail in an inter partes review, Petitioner must explain how
`
`the proposed combinations of prior art would have rendered the challenged
`
`claims unpatentable. At this final stage, we determine whether a
`
`preponderance of the evidence of record shows that the challenged claims
`
`would have been obvious over the proposed combinations of the teachings
`
`
`considerations in this proceeding.
`
`5
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`IPR2016-01002
`Patent 9,116,908 B2
`
`
`of prior art references.
`
`We analyze the instituted grounds of unpatentability in accordance
`
`with the above-stated principles.
`
`B. Level of Ordinary Skill in the Art
`
`In determining the level of ordinary skill in the art, various factors
`
`may be considered, including the “type of problems encountered in the art;
`
`prior art solutions to those problems; rapidity with which innovations are
`
`made; sophistication of the technology; and educational level of active
`
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`
`(internal quotation and citation omitted). In that regard, Petitioner’s
`
`declarant, Dr. Creusere, testifies that a person with ordinary skill in the art at
`
`the time of the invention
`
`would have had at least a bachelor’s degree in computer science,
`computer engineering, electrical and computer engineering,
`electrical engineering, or electronics and at least two years of
`experience working with data compression or a graduate degree
`focusing in the field of data compression. Such experience
`would have led to familiarity with data compression systems
`using multiple data compression and decompression techniques
`to increase data storage and retrieval bandwidth. As such,
`individuals with additional education or additional industrial
`experience could still be of ordinary skill in the art if that
`additional aspect compensates for a deficit in one of the other
`aspects of the requirements stated above
`
`Ex. 1002 ¶ 26.
`
`Patent Owner confirms that Petitioner’s statements regarding the level
`
`of ordinary skill in the art are partially consistent with Patent Owner’s view,
`
`but, nonetheless, Patent Owner contends that an ordinarily skilled artisan
`
`6
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`Patent 9,116,908 B2
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`would be the “ultimate generalist.” Ex. 2017 ¶¶ 16–17 (citing Ex. 2015,
`
`84:13–20).
`
`We do not observe a meaningful differences between the parties’
`
`assessments of a person of ordinary skill in the art. We further note that
`
`either assessment appears consistent with the level of ordinary skill in the art
`
`at the time of the invention as reflected in the prior art in the instant
`
`proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
`
`2001). Moreover, Dr. Creusere appears to satisfy either assessment. Our
`
`analysis in this Decision is supported by either assessment, but, for purposes
`
`of this Decision, we adopt Petitioner’s assessment.
`
`C. Claim Construction
`
`Claim terms in an unexpired patent are interpreted according to their
`
`broadest reasonable construction in light of the specification of the patent in
`
`which they appear. 37 C.F.R. § 42.100(b). Under that standard, and absent
`
`any special definitions, we give claim terms their ordinary and customary
`
`meaning, as would be understood by one of ordinary skill in the art at the
`
`time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`
`(Fed. Cir. 2007).
`
`The parties do not argue a claim construction for any terms. See
`
`generally PO Resp.; Reply. In the Decision to Institute, we did not construe
`
`any terms. Dec. 4–5.
`
`We determine that no terms require express construction for purposes
`
`of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`
`795, 803 (Fed. Cir. 1999) (only those claim terms or phrases that are in
`
`controversy need to be construed, and only to the extent necessary to resolve
`
`the controversy).
`
`7
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`IPR2016-01002
`Patent 9,116,908 B2
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`D. Alleged Obviousness of Independent Claims 1, 21, and 25
`
`1. Overview of Franaszek (Ex. 1004)
`
`Franaszek relates to systems and methods for compressing and
`
`decompressing data blocks using a plurality of optimal encoders. Ex. 1004,
`
`at [57]. In Franaszek, representative samples of each block are tested to
`
`select an appropriate encoder for the block. Id. The data type of incoming
`
`data blocks is recognized, and the collection of data blocks are compressed
`
`using a plurality of optimal encoders for the different types of data. Id. at
`
`4:30–36, 5:49–53. Figure 2 of Franaszek is reproduced below and depicts
`
`one embodiment of the Franaszek system.
`
`
`
`
`
`Figure 2 illustrates data compressor 220 and data de-compressor 270,
`
`with uncompressed data blocks 210 that may contain type information 205.
`
`Id. at 4:25–31. According to Franaszek, the type information, for example,
`
`may be image data encoded in a given format, source code for a given
`
`programming language, etc. Id. at 4:32–34. Data blocks 210 are input to
`
`8
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`IPR2016-01002
`Patent 9,116,908 B2
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`data compressor 220. Data compressor 220 and data de-compressor 270
`
`share compression method table 240 and memory 250 containing a number
`
`of dictionary blocks. Id. at 4:34–38. Compressor 220 selects a compression
`
`method to compress the data. Id. at 4:52–53. The compressor outputs
`
`compressed data blocks 230, each with compression method description
`
`(“CMD”) 235 that encodes an index identifying the selected compression
`
`method for that block. Id. at 4:55–57. De-compressor 270 de-compresses
`
`the block using the specified method found in compression method table 240
`
`(using the compression method identifier as an index), and outputs
`
`uncompressed data blocks 280. Id. at 5:1–7.
`
`2. Overview of Osterlund (Ex. 1005)
`
`Osterlund relates to an optical disk data storage system where a data
`
`compression device is interposed between a host computer and an optical
`
`disk controller to permit data storage and retrieval operations on an optical
`
`disk to occur faster. Ex. 1005, at [57]. As described in Osterlund, host
`
`computer 19 formats data for storage, which is received by host computer
`
`interface 20. Id. at 5:13–15. This raw data is transmitted from the interface
`
`to compression/decompression module 25, which compresses the data before
`
`it is stored. Id. at 5:15–19. An advantage of this configuration, according to
`
`Osterlund, is that compression reduces the amount of data to be stored and,
`
`thus, reduces the time required to store the data. Id. at 5:20–29. Osterlund
`
`further states, “[s]ince the compression module is capable of compressing
`
`and decompressing data with negligible delay, the device allows the optical
`
`disk storage device to have an overall faster rates [sic] of storage data and
`
`retrieval.” Id. at 5:42–46.
`
`9
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`3. A Person Having Ordinary Skill in the Art on this Record Could Not
`Have Had any Reasonable Expectation of Success in Attempting To
`Combine Franaszek with Osterlund (Claims 1, 21, and 25)
`
`The Supreme Court stated “it can be important to identify a reason
`
`that would have prompted a person of ordinary skill in the relevant field to
`
`combine the elements in the way the claimed new invention does.” KSR,
`
`550 U.S. at 398 (emphases added).
`
`Additionally, the Federal Circuit explained that in order to demonstrate
`
`that the challenged claims are obvious, petitioner must articulate “[1] how
`
`specific references could be combined, [2] which combination(s) of
`
`elements in specific references would yield a predictable result, or [3] how
`
`any specific combination would operate or read on the asserted claims.”
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312,
`
`1327–28 (Fed. Cir. 2012). Moreover, to invalidate a claim based on
`
`obviousness, petitioner must demonstrate “‘that a skilled artisan would have
`
`been motivated to combine the teachings of the prior art references to achieve
`
`the claimed invention, and that the skilled artisan would have had a
`
`reasonable expectation of success in doing so.’” ActiveVideo, 694 F.3d at
`
`1312 (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir.
`
`2007)).
`
`Therefore, we focus on the parties’ arguments pertaining to: (1) how
`
`specific references could be combined, which combination(s) of elements in
`
`specific references would yield a predictable result, or how any specific
`
`combination would operate or read on the asserted claims; which is tethered
`
`to point number (2): whether a person having ordinary skill in the art on this
`
`record could have had a reasonable expectation of success in attempting to
`
`combine the teachings of Franaszek with Osterlund. Pet. 23–28; PO Resp.
`
`10
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`14–22, 36–41. Put another way, we find that there is an important
`
`connection between point numbers (1) and (2) of the preceding sentence and
`
`decline to look at one individual point in a vacuum. Because Petitioner has
`
`the burden of proof (see 35 U.S.C. § 316(e), 37 C.F.R. § 42.20(c)), we begin
`
`with Petitioner’s arguments.
`
`In setting up its obviousness theory, Petitioner argues Franaszek does
`
`not state expressly that compression and storage occurs faster than said data
`
`stream is able to be stored on said memory device in uncompressed form, as
`
`required by claims 1, 21, and 25. Pet. 23, 25. Petitioner further argues a
`
`person having ordinary skill in the art, nonetheless, would have found the
`
`claimed subject matter obvious over the teachings of Osterlund combined
`
`with those of Franaszek. Id. (citing Ex. 1005, 5:45–48; Ex. 1002 ¶¶ 122,
`
`126).
`
`Petitioner also argues that a person having ordinary skill in the art
`
`would have understood Franaszek and Osterlund to be analogous with each
`
`other in that they describe systems pertaining to using data compression to
`
`improve data storage applications. Id. at 26 (citing Ex. 1004, 3:25–28, 4:14–
`
`20; Ex. 1005, 5:42–48; Ex. 1002 ¶¶ 105, 127). Furthermore, Petitioner’s
`
`theory explains how Osterland’s teaches a “data compression device” that is
`
`“interposed between a host computer and an optical disk controller to permit
`
`data storage and retrieval operations . . . to occur at a faster rate than would
`
`otherwise be possible’” “‘using wide multibit data buses for fast data
`
`transfer’” and the use of direct memory access techniques for buffers within
`
`the compressor. Id. at 23–24 (quoting Ex. 1005, Abst., 4:21–23).
`
`According to Petitioner, Osterlund’s arrangement (i.e., data
`
`compression device interposed between a host computer and an optical disk
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`controller) allows the compression module to reduce the amount of data to
`
`be stored and results in storing the data faster in memory. Id. at 24 (citing
`
`Ex. 1005, 5:25–29, 5:42–46). And Petitioner argues that Osterland’s
`
`compression module is capable of compressing and decompressing data with
`
`negligible delay, thereby allowing for overall faster rates of data storage and
`
`retrieval. Id. (citing Ex. 1005, 5:42–46; Ex. 1002 ¶ 123).
`
`Additionally, Petitioner argues that this application of data
`
`compression was a textbook rationale to compress data in data storage
`
`systems. Id. (citing Ex. 1002 ¶ 123). Petitioner also argues that a person
`
`having ordinary skill in the art would have been motivated to modify the
`
`teachings of Franazek in view of those of Osterlund to teach or suggest a
`
`system in which “‘compression and storage occurs faster than said data
`
`stream is able to be stored on said memory device in uncompressed form.’”
`
`Id. at 24–25 (quoting Ex. 1001, 18:59–62; citing Ex. 1002 ¶ 124).
`
`In addition, Petitioner argues in systems in which latency was an
`
`important factor, faster data storage and retrieval would have been
`
`understood as a way to improve system latency and avoid having the host
`
`system reduce data transfer speeds or perform extensive buffering to
`
`accommodate slow storage and retrieval. Id. at 26–27 (citing Sakraida v.
`
`AG pro, Inc., 425 U.S. 273, 282–283 (1976); Dystar Textilfarben GmbH &
`
`Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368–1369 (Fed. Cir.
`
`2006)).
`
`Petitioner argues Osterland’s data storage and retrieval is “faster than
`
`would otherwise be possible,” and a person having ordinary skill in the art
`
`would have been led to improve Franaszek in the same way to make
`
`12
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`Franaszek’s data storage “faster than would otherwise be possible,” based on
`
`Osterlund’s teachings. Pet. 27–28 (citing Ex. 1002 ¶ 126).
`
`Petitioner argues Osterlund’s data compression in data storage
`
`systems was a routine application. Id. at 28 (citing Ex. 1007, 228). In
`
`addition, Petitioner argues Osterlund’s techniques to improve data storage
`
`speed would have been recognized by a person having ordinary skill in the
`
`art as a means to improve “similar devices in a similar way,” and given the
`
`number of different available encoding schemes and known optimizations to
`
`data compressors, such as not compressing if the compression ratio is
`
`unsatisfactory, a person having ordinary skill in the art would have taken no
`
`more work than “the work of a skillful mechanic, not that of the inventor,”
`
`to arrive at the claimed invention. Id. (citing Ex. 1002 ¶¶ 30, 31, 34, 35,
`
`129).
`
`In summary, Petitioner argues that a person having ordinary skill in
`
`the art would have found it obvious to modify Franaszek’s teaching of a data
`
`compression system with Osterlund’s teaching of wide data buses,
`
`positioning in the data stream, and direct memory access for the benefits of:
`
`(1) reducing the data storage amount (id. (citing Ex. 1005, 5:20–23));
`
`(2) reducing the data storage time requirement (id. (citing Ex. 1005, 5:23–
`
`25)); (3) adding minimal compression delay (id. (citing Ex. 1005, 5:42–44));
`
`and (4) ensuring data compression resulting in an overall faster data storage
`
`rate and retrieval (id. (citing Ex. 1005, 5:42–46)).
`
`Moreover, Petitioner argues these benefits would have yielded the
`
`desirable result of providing faster and more efficient operation of the
`
`computer system that was storing and retrieving the data, which provides for
`
`improvement in the end-user experience. Id. (citing Ex. 1002 ¶ 127).
`
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`Petitioner further argues that this modification also would have allowed
`
`Franaszek to store and retrieve more data in a given period of time, allowing
`
`for faster bulk data transfers. Id. (citing Ex. 1002 ¶ 130).
`
`Petitioner argues because the relevant art is predictable and
`
`compression algorithms and transmission times may be modeled, simulated,
`
`and easily tested, a person having ordinary skill in the art would have had a
`
`reasonable expectation of success in combining the teachings of Franaszek
`
`and Osterlund to achieve the claimed invention. Id. (citing Ex. 1002 ¶¶ 131–
`
`132). We disagree with Petitioner.
`
`In Paragraph 131 of his declaration, Dr. Creusere testifies that:
`
`A person of ordinary skill in the art would have expected success
`when combining the fast compressor of Osterlund with
`Franaszek. This is because the compression part of the
`compression and storage process has the potential to be relatively
`slow. Thus speeding up a slow part of the process (the
`compression) would have resulted in speeding up the overall
`process, as one of ordinary skill in the art would expect.
`
`Ex. 1002 ¶ 131 (emphasis added). And, in paragraph 132, Dr. Creusere
`
`testifies that:
`
`This result would have been not only desirable, as faster
`computer systems were generally desired (and continue to be for
`a variety of reasons), but it also would have been entirely
`expected to achieve a faster system using the combination of
`teachings. Replacing the slower parts of a compression system
`or method with faster parts increases speed, in a predictable
`manner that would have been expected by a person of ordinary
`skill in the art. Making these adjustments would have required
`no more than routine skill. The relevant art is predictable.
`Additionally, because compression algorithms and transmission
`times could be modeled, simulated, and easily tested, a person of
`ordinary skill in the art would have had a reasonable expectation
`
`14
`
`

`

`IPR2016-01002
`Patent 9,116,908 B2
`
`
`of success when combining the teachings of the prior art to arrive
`at the claimed invention.
`
`Ex. 1002 ¶ 132 (emphasis added).
`
`As discussed supra, in KSR, the Supreme Court suggests identifying a
`
`reason that would have prompted a person of ordinary skill in the relevant
`
`field to combine the elements in the way the recited invention does. And
`
`because the Federal Circuit explains in ActiveVideo: how specific references
`
`could be combined, which combination(s) of elements in specific references
`
`would yield a predictable result, or how any specific combination would
`
`operate or read on the asserted claims (supra), we find Dr. Creusere’s
`
`testimony is conflicting with the aforementioned requirements under
`
`ActiveVideo.
`
`In particular, Dr. Creusere acknowledges that he does not specify
`
`whether a person having ordinary skill in the art would keep or discard
`
`Franaszek’s sampling approach, or would use only Franaszek’s compression
`
`algorithms or incorporate other algorithms. Id. at 75:18–76:11, 126:20–
`
`127:1. Also significant is Dr. Creusere’s repeated testimony that a person
`
`having ordinary skill in the art would not incorporate Osterlund’s
`
`compression algorithm into Franaszek, or incorporate Franaszek’s
`
`compression algorithms into Osterlund. Id. at 43:3–11, 94:13–95:4.
`
`Furthermore, Dr. Creusere does not have an opinion about whether
`
`using Osterlund’s compression algorithm as part of Franaszek’s compression
`
`method would increase Franaszek’s compression speed. Id. at 94:4–12.
`
`Moreover, Dr. Creusere cannot state whether his hypothetical person having
`
`ordinary skill in the art would modify Franaszek’s set of existing
`
`compression techniques at all, and, if so, what techniques the person having
`
`15
`
`

`

`IPR2016-01002
`Patent 9,116,908 B2
`
`
`ordinary skill in the art would even consider. Id. at 96:4–98:14. Also
`
`notable is Dr. Creusere’s failure to indicate whether combination of the
`
`teachings of Franaszek and Osterlund would apply to some data types or all
`
`data types. Id. at 142:5–10, 143:12–19.
`
`Put another way, we do not find that Petitioner demonstrates a
`
`“reasonable expectation of success” when Dr. Creusere acknowledges that a
`
`person having ordinary skill in the art did not specify whether to discard or
`
`keep Franaszek’s sampling approach, or would use only Franaszek’s
`
`teachings of compression algorithms, or incorporate other such algorithms,
`
`or what data type or data types an intended system teaches would be created
`
`to compress, or what specific goals and objectives the person having
`
`ordinary skill in the art would have had reason to achieve. Compare id. at
`
`75:18–76:19, 126:20–127:1, 76:24–78:6, 94:4–12, 96:4–98:14 with Ex. 1002
`
`¶¶ 121–134; Ex. 2017 ¶¶ 165–167.
`
`Instead, Petitioner simply asserts, in a conclusory manner, that
`
`“[b]ecause the relevant art is predictable and compression algorithms and
`
`transmission times may be modeled, simulated, and easily tested, a person of
`
`ordinary skill in the art would have had a reasonable expectation of success
`
`in combining these various teachings found in the prior art to arrive at the
`
`claimed invention” (emphasis added). Pet. 28 (citing Ex. 1002 ¶¶ 131–132).
`
`Notably, Dr. Creusere acknowledges that the number of possible
`
`permutations faced by a person having ordinary skill in the art would have
`
`been “unlimited” and that it was “impossible” for him to address “all the
`
`permutations of those possibilities.” Id. at 81:21–83:24, 84:13–24, 143:20–
`
`144:3.
`
`16
`
`

`

`IPR2016-01002
`Patent 9,116,908 B2
`
`
`Although Dr. Creusere opines that a person having ordinary skill in
`
`the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 131–
`
`132), on this record, we cannot reconcile paragraphs 131–132 of his
`
`declaration when faced with the plethora of his own testimony on cross-
`
`examination to the contrary, such as his acknowledgement of “unlimited”
`
`permutations that were “impossible” to address. E.g., Ex. 2015, 81:21–
`
`83:24, 84:13–24, 143:20–144:3. Stated differently, in his initial position,
`
`Dr. Creusere testifies a person having ordinary skill in the art would have a
`
`reasonable expectation of success (Ex. 1002 ¶¶ 131–132), while his later
`
`testimony vacillates to a stance that makes it difficult to demonstrate a
`
`reasonable expectation of success–– i.e., the existence of “unlimited”
`
`permutations that were “impossible” to address. Ex. 2015, 81:21–83:24,
`
`84:13–24, 143:20–144:3. We find this testimony contradictory. In
`
`summary, neither the Petition, Dr. Creusere’s declaration, nor his deposition
`
`testimony provide any indication as to how a person having ordinary skill in
`
`the art would select among the countless permutations or further narrow the
`
`set of choices.
`
`Petitioner’s modeling, simulation, and testing theory fails to satisfy
`
`sufficiently its “reasonable expectation of success” theory evidentiary
`
`burden pursuant to the Federal Circuit’s decision in In re Kubin, 561 F.3d
`
`1351, 1359 (Fed. Cir. 2009) (it is “improper” to argue an obviousness theory
`
`on the basis that “it would have been ‘obvious to try’ . . . to vary all
`
`parameters or try each of numerous possible choices until one possibly
`
`arrived at a successful result.”). Leo Pharm. Prod., Ltd. v. Rea, 726 F.3d
`
`1346, 1357 (Fed. Cir. 2013) (“obviousness law in general recognizes an
`
`important distinction between combining known options into ‘a finite
`
`17
`
`

`

`IPR2016-01002
`Patent 9,116,908 B2
`
`
`number of identified, predictable solutions,’ and ‘merely throwing
`
`metaphorical darts at a board’ in hopes of arriving at a successful result.”).
`
`Furthermore, the Federal Circuit explained in Kubin, the Board should not
`
`use hindsight based on allegations that require that the person having
`
`ordinary skill in the art to randomly pick from a board filled with
`
`combinational prior art possibilities. Kubin, 561 F.3d at 1359.
`
`To paraphrase, Petitioner is attempting to bypass its evidentiary
`
`burden of having to proffer particular evidence of a specific combination,
`
`which would teach the “faster than” limitation recited in claims 1, 21, and 25
`
`by instead repeating that “modeling, simulation, and testing” leads to a
`
`reasonable expectation of success (Pet. 28); whereas, in this proceeding, the
`
`number of permutations and variables are “unlimited” and “impossible” to
`
`address, as acknowledged by Dr. Creusere (Ex. 2015, 81:21–83:24, 84:13–
`
`24, 143:20–144:3). That is, Petitioner’s attempt at crafting a theory of
`
`obviousness using non-specific teachings from Franaszek and Osterlund that
`
`allegedly demonstrate a reasonable expectation of success; this attempt,
`
`however, falls significantly short of the Federa

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