Trials@uspto.gov
`571-272-7822
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` Paper 43
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` Date: May 25, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELL INC.; EMC CORPORATION; HEWLETT-PACKARD
`ENTERPRISE CO.; HP ENTERPRISE SERVICES, LLC; TERADATA
`OPERATIONS, INC.; and VERITAS TECHNOLOGIES, LLC,
`Petitioner,
`
`v.
`
`REALTIME DATA LLC,
`Patent Owner.
`____________
`
`Case IPR2017-001761
`Patent 7,161,506 C2
`____________
`
`
`Before JASON J. CHUNG, SCOTT C. MOORE, and
`SHEILA F. MCSHANE, 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 Case IPR2017-00806 has been consolidated with IPR2017-00176. Case
`IPR2017-01688 has been joined with IPR2017-00176.
`
`
`571-272-7822
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`
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`
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` Paper 43
`
`
` Date: May 25, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELL INC.; EMC CORPORATION; HEWLETT-PACKARD
`ENTERPRISE CO.; HP ENTERPRISE SERVICES, LLC; TERADATA
`OPERATIONS, INC.; and VERITAS TECHNOLOGIES, LLC,
`Petitioner,
`
`v.
`
`REALTIME DATA LLC,
`Patent Owner.
`____________
`
`Case IPR2017-001761
`Patent 7,161,506 C2
`____________
`
`
`Before JASON J. CHUNG, SCOTT C. MOORE, and
`SHEILA F. MCSHANE, 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 Case IPR2017-00806 has been consolidated with IPR2017-00176. Case
`IPR2017-01688 has been joined with IPR2017-00176.
`
`
`
`Case IPR2017-00176
`Patent 7,161,506 C2
`
`
`INTRODUCTION
`I.
`Dell Inc., EMC Corporation, Hewlett-Packard Enterprise Co., and HP
`Enterprise Services, LLC (collectively “Petitioner”)2 filed a Petition to
`institute an inter partes review of claims 104 and 105 of U.S. Patent No.
`7,161,506 C2 (“the ’506 patent”). Paper 1 (“Pet.”). Realtime Data LLC
`(“Patent Owner”) filed a Preliminary Response pursuant to 35 U.S.C. § 313.
`Paper 15 (“Prelim. Resp.”).
`Upon consideration of the Petition and the Preliminary Response, on
`November 4, 2016, we instituted inter partes review of claims 104 and 105
`(“instituted claims”), pursuant to 35 U.S.C. § 314. Paper 19 (“Dec.”).
`On January 30, 2017, Teradata Operations, Inc. (“Teradata”) filed a
`second Petition. See IPR2017-00806, Paper 1, 1. The IPR2017-00806
`Petition was substantially similar to the Petition in IPR2017-00176. On
`September 8, 2017, we entered an order consolidating and coordinating
`Teradata’s IPR2017-00806 proceeding with IPR2017-00176. IPR2017-
`00176, Paper 28 (“Consolidation Order”). The Consolidation Order
`provided that IPR2017-00176 and IPR2017-00806 would proceed on the
`same schedule, that Patent Owner would file one common Patent Owner
`Response in both proceedings, that the petitioners would file one common
`Reply for both proceedings, that the parties would file copies of all exhibits
`in both proceedings, and that the August 4, 2017 Deposition of Charles D.
`
`
`2 The other named petitioners were named in the consolidated and joined
`cases. See supra n.1. Although consolidated IPR2017-00806 remains a
`separate proceeding from the other joined proceedings, the portions of each
`Petition that we relied on are substantively identical. For purposes of this
`Decision, we refer to the Paper numbers in IPR2017-00176. The parties are
`not permitted to use this caption.
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`Creusere, Ph.D (Ex. 2003) and any future depositions would be treated as
`having been taken in both proceedings. Consolidation Order 4–5.
`On June 28, 2017, Veritas Technologies LLC (“Veritas”) filed a third
`Petition. See IPR2017-01688, Paper 1, 1. The IPR2017-01688 Petition was
`substantively identical to the Petition in IPR2017-00176 Petition, and was
`accompanied by a motion asking that Veritas be joined as a party to the
`parties in IPR2017-00176. IPR2017-01688, Paper 3. Patent Owner
`Realtime Data LLC did not file a Preliminary Response.
`On November 21, 2017, we granted Veritas’ Motion for Joinder,
`ordering that Veritas be joined as a petitioner in IPR2017-00176, that the
`grounds of unpatentability asserted in IPR2017-00176 remain unchanged,
`that all future filings be made in IPR2017-00176, and that IPR2017-01688
`be terminated as a separate proceeding. IPR2017-01688, Paper 11, 8.
`Therefore, the filings and evidence in IPR2017-00176 govern the claims
`raised by Veritas in IPR2017-01688, and this Decision does not cite
`separately to filings or evidence in the IPR2017-01688.
`On September 22, 2017, Patent Owner filed a Patent Owner Response
`(Paper 30 (“PO Resp.”)), which was accompanied by a supporting
`declaration from Kenneth A. Zeger, Ph.D (Ex. 2004). Petitioner filed a
`Reply to Patent Owner’s Response on December 6, 2017. Paper 34
`(“Reply”).
`An oral hearing was held on February 20, 2018, and a transcript of the
`oral hearing is available in the record. Paper 41 (“Tr.”). Because Petitioner
`raised a claim construction issue in its Reply (see Reply 20–23) about
`whether claims 104 and 105 include conditional limitations that should not
`be given patentable weight pursuant to Ex Parte Schulhauser, 2016 WL
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`6277792, No. 2013-007847 (PTAB 2016) (precedential) (hereinafter,
`“Schulhauser”), we authorized five pages of concurrent additional briefing
`for each party on this issue. Paper 38 (hereinafter, “Additional Briefing”).
`In response, Patent Owner filed additional briefing (Paper 39, “PO Br.”) and
`Petitioner filed additional briefing (Paper 40, “Pet. Br.”).
`On May 15, 2018, the Board issued an order pursuant to the parties’
`written consent modifying the Institution Decisions in the IPR2017-00176,
`IPR2017-00806, and IPR2017-01688 IPR, so that those decisions institute
`review of all challenged claims on all grounds presented in the
`corresponding petitions. Paper 42 (citing Exs. 3001–3006). By consent of
`the parties, this Decision addresses all claims and all grounds raised in the
`petitions. See id.
`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
`shown by a preponderance of the evidence that claims 104 and 105 of the
`’506 patent are unpatentable. See 35 U.S.C. § 316(e).
`
`A. Related Matters
`Petitioner and Patent Owner inform us that the ’506 patent is involved
`in multiple suits in the U.S. District Court and the U.S. Court of Appeals for
`the Federal Circuit. Pet. 4; Paper 6, 4–8; Paper 12, 4–8; Paper 14, 2–3;
`Paper 18, 3–5; Paper 24, 5–8. The parties also inform us that the ’506 patent
`is involved in several Inter Partes Review proceedings. Pet. 4; Paper 6, 2–4;
`Paper 8, 2–4; Paper 12, 2–4; Paper 18, 1–3; Paper 24, 1–5.
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`B. The Instituted Grounds
`Basis
`Instituted Claims
`References3
`§ 103(a)7 104 and 105
`Franaszek4 and Hsu5,6
`Franaszek, Hsu and Sebastian8 § 103(a) 104 and 105
`C. The ’506 Patent
`The ’506 patent describes systems and methods “for providing fast
`and efficient data compression using a combination of content independent
`data compression and content dependent data compression.” Ex. 1001,
`Abst. The ’506 patent further describes the input data type includes a
`plurality of disparate data types. Id.
`
`D. The Instituted Claims
`We instituted inter partes review of claims 104 and 105. Claims 104
`and 105 recite essentially similar limitations. Claims 104 and 105 are
`illustrative and reproduced below:
`
`
`3 Petitioner also relies upon the Declaration of Dr. Charles D. Creusere.
`Ex. 1002. The portions of Dr. Creusere’s declaration that we relied on are
`substantively identical in all three IPRs listed in footnote 1.
`4 U.S. Patent No. 5,870,036 (filed Feb. 24, 1995) (issued Feb. 9, 1999)
`(Ex. 1004, “Franaszek”).
`5 W. H. Hsu and A. E. Zwarico, “Automatic Synthesis of Compression
`Techniques for Heterogeneous Files,” Software—Practice and Experience,
`Vol. 25(10), 1097–1116 (1995) (Ex. 1005, “Hsu”).
`6 Petitioner contends that Hsu was prior art as of 1995. Pet. 13 (citing
`Ex. 1026 ¶ 35). Patent Owner does not dispute the public availability date.
`We accept Petitioner’s contention. See Paper 20, § B.1.b
`7 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.
`8 U.S. Patent No. 6,253,264 B1 (filed Mar. 6, 1998) (issued June 26, 2001)
`(Ex. 1030, “Sebastian”).
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`104. A computer implemented method for compressing data,
`comprising:
`analyzing data within a data block of an input data stream to
`identify one or more data types of the data block, the input data
`stream comprising a plurality of disparate data types;
`performing content dependent data compression with a content
`dependent data compression encoder if a data type of the data
`block is identified; and
`performing data compression with a single data compression
`encoder, if a data type of the data block is not identified;
`wherein the analyzing of the data within the data block to identify
`one or more data types excludes analyzing based only on a
`descriptor that is indicative of the data type of the data within the
`data block.
`Ex. 1001, 6:34–49.
`105. A computer implemented method comprising:
`receiving a data block in an uncompressed form, said data block
`being included in a data stream;
`analyzing data within the data block to determine a type of said
`data block; and
`compressing said data block to provide a compressed data block;
`wherein if one or more encoders are associated to said type,
`compressing said data block with at least one of said one or more
`encoders, otherwise compressing said data block with a default
`data compression encoder, and
`wherein the analyzing of the data within the data block to identify
`one or more data types excludes analyzing based only on a
`descriptor that is indicative of the data type of the data within the
`data block.
`Id. at 6:50–64.
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`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.9 See Graham v. John Deere Co. of Kansas
`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
`
`9 Patent Owner has not raised arguments or produced evidence of secondary
`considerations in this proceeding.
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`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
`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 a minimum of: (i) a bachelor’s degree in computer
`science, computer engineering, electrical and computer
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`engineering, electrical engineering, or electronics; and (ii) 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 in general and, more specifically, data compression and
`decompression techniques associated with various data types.
`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’s Declarant Dr. Kenneth A. Zeger, Ph.D., does not
`disagree with Petitioner’s statements regarding the level of ordinary skill in
`the art. Ex. 2005 ¶ 20. Based on our review of the ’506 patent, the types of
`problems and solutions described in the ’506 patent and cited prior art, and
`the testimony of Dr. Creusere and Dr. Zeger, we adopt and apply Dr.
`Creusere’s definition of a person of ordinary skill in the art at the time of the
`claimed invention for purposes of this Decision.
`
`C. Claim Construction
`1. Determining Whether it is Appropriate To
`Apply Schulhauser to the Present Case
`Patent Owner argues Petitioner did not present timely any argument or
`theory based on Schulhauser, and has waived the ability to present these
`arguments. Patent Owner argues the Board is legally foreclosed from now
`finding unpatentability based on Schulhauser sua sponte. PO Br. 1–2 (citing
`Intelligent Bio-Sytems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
`1369 (Fed. Cir. 2016); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364,
`1381 (Fed. Cir. 2016); Wasica Finance GMBH v. Continental Auto. Systems,
`853 F.3d 1272, 1286 (Fed. Cir. 2017); Ariosa Diagnostics v. Verinata
`
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`Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015); 5 U.S.C. § 554(b)(3);
`77 Fed. Reg. 48,756, 48,768; 37 C.F.R. § 42.23(b). Patent Owner further
`argues Schulhauser’s precedential designation predates the Petition, but the
`Petition did not raise this issue. Moreover, Patent Owner argues it did not
`have a full and fair opportunity to develop responsive evidence or argument.
`PO Br. 2.
`Additionally, Patent Owner argues applying Schulhauser in the
`context of this proceeding would be arbitrary and capricious, and
`unconstitutional. PO Br. 2. Patent Owner explains the Schulhauser decision
`arose in the context of a pending prosecution. Patent Owner argues, in that
`setting, a patentee can address Schulhauser by simply amending claims to
`avoid limitations that will not be given patentable weight. Id.
`Furthermore, Patent Owner argues during prosecution it had no notice
`from the Office of Schulhauser or the prospect that certain limitations of its
`claims would be given no patentable weight. Id. Patent Owner argues that
`during reexamination of the ’506 patent, the Office gave the limitations at
`issue patentable weight. Id. (citing Ex. 1007, 27–28, 32–33, 35; Ex. 1012,
`27–28). Patent Owner argues it maintained the limitations on that basis, and
`made significant investments and expenditures to enforce and defend the
`claims. Id. According to Patent Owner, the Office must undertake notice
`and comment rulemaking to apply the rule of Schulhauser to IPRs, the
`Office has not issued any rule, regulation, or policy complying with the
`requirements of the Administrative Procedure Act (hereinafter, “APA”) that
`extends Schulhauser to issued claims later challenged through inter partes
`review. Id. at 2–3 (citing Aqua Products v. Matal, 872 F.3d 1290, 1319–
`1322, 1328 (Fed. Cir. 2017) (en banc)).
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`Patent Owner argues Schulhauser is directed to prosecution entirely,
`rather than inter partes review. PO Br. 3. Patent Owner also argues there is
`no express Congressional grant to support such retroactive rulemaking, and
`it is thus foreclosed by the APA and United States Supreme Court precedent.
`Id. (citing Bowen v. Georgetown Univ. Hospital, 488 U.S. 204, 208–09
`(1988)). And Patent Owner argues that applying Schulhauser in this case
`would violate the Due Process Clause. PO Br. 3. Patent Owner argues
`Schulhauser only arose here after the time to bring a motion to amend had
`passed. Id. Patent Owner argues depriving it of the weight that the Office
`once afforded to its issued claim limitations would constitute an unlawful
`taking. Id.
`Patent Owner also argues Schulhauser rests entirely on two non-
`precedential Federal Circuit decisions that do not support its holding, and it
`is legally incorrect. Patent Owner argues that the Board should, instead,
`direct its attention to Applera v. Illumina, 375 F. App’x. 12, 21 (Fed. Cir.
`2010) (hereinafter, “Applera”). PO Br. 3–4. Patent Owner argues Applera
`held that all limitations were practiced, not that the claim could be met even
`if some limitations were never practiced. Id. at 4. Patent Owner further
`argues Schulhauser’s quotes from Cybersettle v. Nat’l Arbitration Forum,
`are misplaced. PO Br. 4 (citing 243 F.App’x 603, 607 (Fed. Cir. 2007)).
`Patent Owner argues the broadest reasonable interpretation under Federal
`Circuit standards prohibits a construction that reads out limitations explicitly
`recited in a claim, or that causes the claim to read onto prior art approaches
`expressly taught away from in the specification. Id. (citing In re Suitco
`Surface, 603 F.3d 1255, 1260–61 (Fed. Cir. 2010); In re Smith, 871 F.3d
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`1375, 1382–84 (Fed. Cir. 2017); In re NTP, Inc., 654 F.3d 1279, 1287–88
`(Fed. Cir. 2011)).
`As an initial matter, as discussed further below, we follow
`Schulhauser because it is precedential. Moreover, we find that each of the
`cases cited by Patent Owner is factually distinguishable from Schulhauser.
`The Board’s Standard Operating Procedures (“SOP”) require it to
`follow its precedential decisions. PTAB SOP No. 2, Rev. 9, 3 (Sept. 22,
`2014) (“A precedential opinion is binding authority in subsequent matters
`involving similar facts or issues.”). Because this issue concerns claim
`construction, we conclude the best course of action under these specific
`circumstances is to follow our Tribunal’s SOP and our precedent in
`Schulhauser. To address APA concerns, due process concerns, the
`sufficiency of notice and potential prejudice, we allowed the parties the
`additional opportunity to brief the issue.10 Additional Briefing 1–2. In
`summary, Schulhauser is our precedent and it should apply given its
`potential applicability to the claim construction for the claims at issue.
`Patent Owner’s argument that Schulhauser arose in the context of
`prosecution, such that a patentee could have worked around Schulhauser by
`simply amending claims to avoid limitations that would not be given
`
`
`10 Patent Owner did not identify any Federal Circuit cases that overruled
`Schulhauser. See generally PO Br. 3–5. Petitioner relied on a related Board
`case. Pet. Br. 3–4 (citing Reactive Surfaces LTD., LLP, v. Toyota Motor
`Corp., IPR2016-01914, Paper 60 (PTAB Jan. 12, 2018) (hereinafter,
`“Reactive”)). In Reactive, based on the Board’s SOP, the Board authorized
`additional briefing in a sua sponte post-hearing order to resolve whether
`Schulhauser applies to the conditional method limitations recited in the
`claims. Reactive Paper 60. We agree with the way in which the panel
`handled the Schulhauser issue in Reactive.
`
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`patentable weight, is unpersuasive. To the extent that Patent Owner is
`arguing that we can apply Schulhauser only to patent prosecution matters
`and cannot apply Schulhauser to an inter partes review, we disagree.
`Nothing in Schulhauser explicitly or implicitly limits its holding only to
`prosecution.
`We note Patent Owner’s statement that in the present case,
`Schulhauser was only raised by Petitioner after the time to bring a motion to
`amend had passed. PO Br. 2–3. To the extent that Patent Owner is
`suggesting that it was deprived of the opportunity to file a motion to amend,
`we disagree because Patent Owner should have been aware of Schulhauser
`since at least the filing of Petitioner’s Reply (i.e., December 5, 2017). Yet,
`Patent Owner’s additional briefing filed on March 5, 2018 was the first and
`only time Patent Owner made reference to a motion to amend. PO Br. 2–3.
`Although the time to file a motion to amend, under the Scheduling Order,
`had passed when Petitioner filed its Reply, Patent Owner was free to seek
`leave to file a late motion to amend. However, Patent Owner did not contact
`the Board on this issue.11
`We, therefore, find that it is appropriate to apply Schulhauser in the
`context of this proceeding for at least the reasons explained supra.12
`
`2. Construing Claims 104 and 105 in view of Schulhauser
`Claim terms in an unexpired patent are interpreted according to their
`broadest reasonable construction in light of the specification of the patent in
`
`
`11 The motion to amend due date is not a statutory deadline; as a result, it
`can be adjusted by the panel.
`12 We considered and overrule Patent Owner’s objection (Tr. 38:7–42:7) for
`at least the reasons stated supra in § II.C.1.
`
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`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).
`Because we find that it is appropriate to apply Schulhauser to the
`present case for at least the reasons stated supra in § II.C.1., we construe
`claims 104 and 105 according to the broadest reasonable construction in
`light of the specification (i.e., using Schulhauser) as explained infra. In
`Schulhauser, the Board held that in method claim 1, only one of the
`following conditional limitations needed to be satisfied in the prior art to
`render the claim anticipated or obvious: (1) “triggering an alarm state if the
`electro cardiac signal data is not within the threshold electrocardiac criteria”;
`and (2) “determining the current activity level of the subject from the
`activity level data if the electrocardiac signal data is within the threshold
`electrocardiac criteria.” Schulhauser at 6–8. To paraphrase, in Schulhauser,
`illustrative method claim 1 recited if A, then perform step X; if not A, then
`perform step Y. Id.
`In the same manner, claim 104 of the present case recites “performing
`content dependent data compression with a content dependent data
`compression encoder if a data type of the data block is identified”
`(hereinafter, “if A, then perform step X limitation of claim 104”) and
`“performing data compression with a single data compression encoder, if a
`data type of the data block is not identified” (hereinafter, “if not A, then
`perform step Y limitation of claim 104”). Ex. 1001, 2:34–45. Also, claim
`105 recites “wherein if one or more encoders are associated to said type,
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`compressing said data block with at least one of said one or more encoders”
`(hereinafter, “if A, then perform step X limitation of claim 105”) and
`“otherwise compressing said data block with a default data compression
`encoder” (hereinafter, “if not A, then perform step Y limitation of claim
`105”). Id. at 2:57–60. Therefore, as a matter of law, we determine only one
`condition needs to be satisfied in the prior art to render the claim anticipated
`or obvious.
`Patent Owner argues the broadest reasonable construction in light of
`the specification weighs against construing the claims in this manner. PO
`Br. 4 (citing Ex. 1001, 2:54–3:45). Patent Owner further argues the
`Specification teaches methods “for providing fast and efficient data
`compression using a combination of content independent data compression
`and content dependent data compression.” Id. Patent Owner argues
`interpreting claims 104 and 105 to be met based on a content dependent
`approach only (i.e., ignoring “performing data compression with a single
`data compression encoder, if a data type of the data block is not identified”
`recited in claim 104 and “otherwise compressing said data block with a
`default data compression encoder” recited in claim 105) would be exactly
`what the Specification teaches against and cannot be correct under the
`broadest reasonable interpretation standard. Id. at 4–5. We disagree.
`The Background of the Specification describes “limitations” with
`using content dependent compression, but “does not teach away . . . if it
`merely expresses a general preference for an alternative invention but does
`not ‘criticize, discredit, or otherwise discourage’ investigation into the
`invention claimed.” See DePuy Spine, Inc. v. Medtronic Sofarmor Danek,
`Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009).
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`Moreover, even if the broadest reasonable construction in light of the
`specification were not dictated by Schulhauser, construing claims 104 and
`105 based on the Specification would have led to the same construction. For
`example, without considering Schulhauser, Figures 14A–D illustrates an
`example teaching of a logical path through the flow chart that uses only
`content dependent compression. Ex. 1001, Fig. 14A–D. That is, if we
`follow the ‘YES’ branch at decision 1408 and the ‘YES’ branch at decision
`1448, then the compression method is completed using only content
`dependent compression. Id. In addition, there is no requirement in the
`Specification that the path through Figure 14 must follow both the ‘YES’
`branch at decision 1408 and the ‘NO’ branch at decision 1408. Id.; see
`generally Ex. 1001. Because the broadest reasonable construction in light of
`the specification specifically teaches that one aspect of the present invention
`logically includes a method that relies only on content dependent
`compression (id. at Figs. 14A–D), then the Specification cannot be said to
`teach against using only content dependent compression. Figures 16A–D
`and Figures 18A–D also illustrate example teachings of a logical path
`through the flow chart that uses only content dependent compression.
`Ex. 1001, Fig. 16A–D, 18A–D.
`Lastly, Patent Owner argues the only expert testimony of record
`demonstrates that all of the limitations of claims 104 and 105 must be met
`under Petitioner’s obviousness theory, or else obviousness cannot be found.
`Id. (citing Ex. 2004 ¶¶ 32–38). However, the application of Schulhauser is a
`claim construction issue, which is a matter of law. Although witness
`testimony may be used when “‘technical terms are used, or where the
`qualities of substances . . . or any similar data necessary to the
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`comprehension of the language of the patent are unknown to the judge,’” a
`court, when construing a patent, “‘proceeds upon its own responsibility, as
`an arbiter of the law, giving to the patent its true and final character and
`force.’” Markman v. Westview Instruments, Inc., 517 U.S. 370, 388 (quoting
`2 W. Robinson, Law of Patents § 732, pp. 482–483 (1890); emphasis in
`original); see also 37 C.F.R. § 42.65(a) (“Testimony on United States patent
`law or patent examination practice will not be admitted.”).
`We determine that no other 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).
`
`D. Alleged Obviousness of Independent Claims 104 and 105
`1. The Prior Art
`a. 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.
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`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
`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. Data compressor 220 selects a
`compression method to compress the data. Id. at 4:52–53. Data compressor
`220 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.
`
`b. Overview of Hsu (Ex. 1005)
`Hsu is titled “Automatic Synthesis of Compression Techniques for
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`Heterogeneous Files,” and discloses systems and methods for compressing
`“heterogeneous files”—files that contain “multiple types of data such as text,
`images, binary, audio, or animation.” Ex. 1005, Title, 1097. Hsu teaches a
`heterogeneous compressor that automatically chooses the best compression
`algorithm to use on a given variable-length block of a file, based on both the
`qualitative and quantitative properties of that segment, and “treats a file as a
`collection of fixed size blocks (5K in the current implementation), each
`containing a potentially different type of data and thus best compressed
`using different algorithms.” Id. at 1102. Hsu further teaches a two phase
`system. Id. In the first phase, the system uses statistical methods based on
`analysis of the data within each block to determine a data type of the block
`and to determine the optimal encoder to use in compressing a block. Id. at
`1097; see also id. at 1103 (“The compressibility of a block of data and the
`appropriate algorithm to do so are determined by the type of data contained
`in a block . . . .”). The second phase comprises the actual compression and
`an optimization that maximizes the size of a segment of data to be
`compressed using a particular algorithm. In this optimization, which is
`interleaved with the actual compression, adjacent blocks for
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