`571.272.7822
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`Paper No. 6
`Filed: May 24, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VERITAS TECHNOLOGIES, LLC,
`Petitioner,
`
`v.
`
`REALTIME DATA LLC,
`Patent Owner.
`_______________
`
`Case IPR2017-00366
`Patent 8,643,513 B2
`_______________
`
`Before GEORGIANNA W. BRADEN, J. JOHN LEE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
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`Case IPR2017-00366
`Patent 8,643,513 B2
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`I.
`
`INTRODUCTION
`
`A. Background
`On November 30, 2016, Veritas Technologies, LLC (“Petitioner”)
`filed a Petition (Paper 1, “Pet.”) requesting inter partes review of claims 1–
`4, 6, 10–16, 18–20, and 22 (“the challenged claims”) of U.S. Patent No.
`8,643,513 B2 (Ex. 1001, “the ’513 patent”). Concurrently with the Petition,
`Petitioner filed a Motion for Joinder (Paper 3, “Mot.”), requesting that this
`proceeding be joined with Riverbed Technology, Inc. et al. v. Realtime Data
`LLC, Case IPR2016-00978 (“978 IPR”). Mot. 1. Patent Owner Realtime
`Data LLC (“Patent Owner”) did not file an Opposition to the Motion for
`Joinder.
`We have jurisdiction under 35 U.S.C. § 314(a), which provides that an
`inter partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the Petitioners would prevail with respect to at least 1 of the
`claims challenged in the petition.” For the reasons discussed below, we
`institute an inter partes review of all challenged claims and grant
`Petitioner’s Motion for Joinder.
`B. Related Proceedings and Asserted Grounds of Unpatentability
`In the 978 IPR, we instituted an inter partes review of claims 1–4, 6,
`10–16, 18–20, and 22 the ’513 patent under 35 U.S.C. § 103(a) as
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`unpatentable over Wang1, Matsubara2, and Franaszek3. 978 IPR, slip op. at
`29 (PTAB Nov. 1, 2016) (Paper 24).
`The Petition in this proceeding challenges the same claims on
`identical grounds of unpatentability, and relies on the same evidence and
`arguments as presented in the 978 IPR. Pet. 1; Mot. 1–2. Petitioner
`represents that “[i]ntentionally, the Petition is nearly word-for-word identical
`to the petition in the [978] IPR in an effort to avoid multiplication of issues
`before the Board” and relies upon similar evidence, including an “essentially
`identical” expert declaration. Mot. 2. Petitioner notes that its Petition is
`“supplemented with additional support.” Pet. 1. Patent Owner did not file a
`preliminary response and has not presented any arguments regarding the
`merits of the Petition.
`For the above reasons, in particular the fact that the present Petition is
`virtually identical to the petition in the 978 IPR, we determine Petitioner has
`demonstrated sufficiently under 35 U.S.C. § 314 that an inter partes review
`should be instituted in this proceeding on the same grounds of
`unpatentability as the grounds on which we instituted inter partes review in
`the 978 IPR.
`C. The ’513 Patent
`The ’513 patent, titled “Data Compression Systems and Methods,”
`discloses systems and methods for analyzing a data block and selecting a
`
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`1 WO 00/46688, issued August 10, 2009 (978 IPR, Exhibit 1009, “Wang”).
`2 US Patent No. 5,838,821, issued November 17, 1998 (978 IPR, Exhibit
`1010, “Matsubara”).
`3 US Patent No. 5,870,036, issued February 9, 1999 (978 IPR, Exhibit 1011,
`“Franaszek”).
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`compression method to apply to that block. Ex. 1001, Title, Abst. The ’513
`patent further discloses “fast and efficient data compression using a
`combination of content independent data compression and content
`dependent data compression.” Id. at 3:55–58. One embodiment of the ’513
`patent is illustrated in Figure 13A reproduced below.
`
`
`
`As shown above in Figure 13A of the ’513 patent, the system receives an
`input data stream of data blocks. Id. at 15:63–16:5. Content dependent data
`recognition module 1300 analyzes the incoming data stream to recognize
`“data types” and other parameters indicative of the “data type/content.” Id.
`at 16:15–21. If module 1300 recognizes the data type of a given data block,
`module 1300 routes the block to content dependent encoder module 1320
`(id. at 16:24–26); if not, it routes the block to “content independent” (or
`“default”) encoder module 30 (id. at.3:66–67, 4:30–35, 15:56–63, 16:26–27,
`18:17–25).
`Content dependent encoder module 1320 comprises lossy or lossless
`compression encoders (id. at 16:28–37); content independent encoder
`module 30 comprises only lossless encoders (id. at 16:43–50). Lossy
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`encoders provide for an “inexact” representation of the original
`uncompressed data (id. at 2:4–7); lossless encoders provide for an “exact”
`representation (id. at 2:18–20). The ’513 patent teaches that “[e]ncoding
`techniques” may be selected “based upon their ability to effectively encode
`different types of input data.” Id. at 12:54–56.
`
`Another embodiment of the ’513 patent is illustrated in Figure 13B
`reproduced below.
`
`
`As shown above in Figure 13B of the ’513 patent, “compression ratio
`module 1340, operatively connected to the content dependent output
`buffer/counters 1330 and content independent buffer/counters 40 determines
`the compression ratio obtained for each of the enabled encoders and[/]or El
`. . . En . . . .” Id. at 17:28–42. The compression ratio is set “by taking the
`ratio of the size of the input data block to the size of the output data block
`stored in the corresponding buffer/counters BCD1, BCD2, BCD3 . . . BCDm
`and[/]or BCE1, BCE2, BCE3 . . . BCEn.” Id. at 17:39–42.
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`D. Challenged Claims
`
`As noted above, Petitioner challenges claims 1–4, 6, 10–16, 18–20,
`and 22 of the ’513 patent, of which claims 1 and 15 are the only independent
`claims. Claims 1 and 15 are illustrative of the challenged claims and are
`reproduced below (with paragraphing added):
`1. A method of compressing a plurality of data blocks,
`comprising:
`analyzing the plurality of data blocks to recognize when an
`appropriate content independent compression algorithm is to be
`applied to the plurality of data blocks;
`applying the appropriate content independent data compression
`algorithm to a portion of the plurality of data blocks to provide a
`compressed data portion;
`analyzing a data block from another portion of the plurality of
`data blocks for recognition of any characteristic, attribute, or
`parameter that is indicative of an appropriate content dependent
`algorithm to apply to the data block; and
`applying the appropriate content dependent data compression
`algorithm to the data block to provide a compressed data block
`when the characteristic, attribute, or parameter is identified,
`wherein the analyzing the plurality of data blocks to recognize
`when
`the appropriate content
`independent compression
`algorithm is to be applied excludes analyzing based only on a
`descriptor indicative of the any characteristic, attribute, or
`parameter, and
`wherein the analyzing the data block to recognize the any
`characteristic, attribute, or parameter excludes analyzing based
`only on the descriptor.
`Ex. 1001, 26:21–46.
`15. A device for compressing data comprising:
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`a first circuit configured to analyze a plurality of data blocks to
`recognize when an appropriate content independent compression
`algorithm is to be applied to the plurality of data blocks;
`a second circuit configured to apply the appropriate content
`independent data compression algorithm to a portion of the
`plurality of data blocks to provide a compressed data portion;
`a third circuit configured to analyze a data block from another
`portion of the plurality of data blocks for recognition of any
`characteristic, attribute, or parameter that is indicative of an
`appropriate content dependent algorithm to apply to the data
`block; and
`a fourth circuit configured to apply the appropriate content
`dependent data compression algorithm to the data block to
`provide a compressed data block when the any characteristic,
`attribute, or parameter is identified,
`wherein the first circuit is further configured to analyze the
`plurality of data blocks to recognize when the appropriate
`content independent compression algorithm is to be applied by
`excluding analyzing based only on a descriptor indicative of the
`any characteristic, attribute, or parameter, and
`wherein the third circuit is further configured to analyze the data
`block to recognize the any characteristic, attribute, or parameter
`by excluding analyzing based only on the descriptor.
`Id. at 27:32–28:19.
`E. Motion for Joinder
`An inter partes review may be joined with another inter partes
`review, subject to certain statutory provisions:
`(c) JOINDER.—If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition under
`section 311 that the Director, after receiving a preliminary
`response under section 313 or the expiration of the time for filing
`such a response, determines warrants the institution of an inter
`parties review under section 314.
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`35 U.S.C. § 315(c); see also 37 C.F.R. § 42.122 (Any request for joinder
`must be filed, as a motion under § 42.22, no later than one month after the
`institution date of any inter partes review for which joinder is requested).
`A motion for joinder should (1) set forth reasons why joinder is
`appropriate; (2) identify any new grounds of unpatentability asserted in the
`petition; (3) explain what impact (if any) joinder would have on the trial
`schedule for the existing review; and (4) address specifically how briefing
`and discovery may be simplified. See Kyocera Corp. v. Softview LLC, Case
`IPR2013–00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15). As the
`moving party, Petitioner bears the burden of proving that it is entitled to the
`requested relief. 37 C.F.R. § 42.20(c).
`As an initial matter, the present Motion for Joinder meets the
`requirements of 37 C.F.R. § 42.122(b) because the Motion was filed on
`November 30, 2016, which is not later than one month after the 978 IPR was
`instituted on November 1, 2016.
`Additionally, the present Petition challenges the same claims of the
`same patent as those under inter partes review in the 978 IPR, and the
`Petition also asserts the same grounds of unpatentability based on the same
`prior art and the same evidence, including the same declaration testimony.
`Mot. 2; compare Pet. 17, with 978 IPR, Paper 10, 17; Exs. 1016, 1017. The
`Petition does not assert any other grounds of unpatentability not already of
`record in the 978 IPR. Indeed, the Petition repeats almost verbatim most of
`the content of the petition in the 978 IPR. See Pet. 1; Mot. 2. Petitioner
`notes, however, that its Petition is “supplemented with additional support.”
`Pet. 1; see also Exs. 1016, 1017 (indicating differences between (i) the
`present Petition and the 978 IPR petition and (ii) the expert declarations in
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`track changes). We determine this “additional support” does not change
`significantly the asserted ground of unpatentability or the evidence and
`arguments supporting that ground. Additionally, Petitioner asserts that
`granting joinder would not require any alterations to the existing scheduling
`order in the 978 IPR. Mot. 6. Petitioner also represents that the lead
`petitioner in the 978 IPR (Riverbed Technology, Inc.) does not oppose
`joinder of the present proceeding. Id. at 8.
`According to Petitioner, joinder will promote the efficient
`determination of validity of the challenged claims of the ’530 patent, as well
`as simplify briefing and discovery. Id. at 7. Petitioner asserts that Patent
`Owner would not be prejudiced because the schedule of the 978 IPR would
`be unchanged, and Patent Owner would not take on additional costs or
`burden because of the overlap between the present Petition and the 978 IPR
`petition. Id. at 8.
`Based on the facts and circumstances discussed above, we determine
`Petitioner has established good cause for joining this proceeding with the
`978 IPR. Specifically, we find that joinder of this proceeding with the 978
`IPR is unlikely to require any delay or modification to the scheduling order
`already in place for the 978 IPR. We determine that Patent Owner will not
`be prejudiced unduly by the joinder of these proceedings, and joining
`Petitioner’s identical challenges to those in the 978 IPR will lead to greater
`efficiency while reducing the resources necessary from both Patent Owner
`and the Board. Consequently, granting the Motion for Joinder under these
`circumstances would help “secure the just, speedy, and inexpensive
`resolution” of these proceedings. See 37 C.F.R. § 42.1(b). For the above
`reasons, we conclude that the Motion for Joinder should be granted.
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`II. ORDER
`For the reasons given, it is
`ORDERED that, pursuant to 35 U.S.C. § 314, an inter partes review
`in IPR2017-00366 is hereby instituted for claims 1–4, 6, 10–16, 18–20, and
`22 of the ’513 patent under 35 U.S.C. § 103(a) as unpatentable over Wang,
`Matsubara, and Franaszek;
`FURTHER ORDERED that Petitioner’s Motion for Joinder is
`granted, and Petitioner is joined as a petitioner in IPR2016-00978;
`FURTHER ORDERED that IPR2017-00366 is hereby joined with
`IPR2016-00978;
`FURTHER ORDERED that the ground of unpatentability on which
`trial was instituted in IPR2016-00978 is unchanged and remains the only
`ground on which trial has been instituted;
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2016-00978 (Paper 25), as modified by joint stipulations (Papers 26, 27),
`is unchanged and shall govern the schedule of the joined proceeding;
`FURTHER ORDERED that Petitioner and the petitioners in IPR2016-
`00978 will file all papers jointly in the joined proceeding as consolidated
`filings, and will identify each such paper as “Consolidated,” except for
`papers that involve fewer than all of these parties;
`FURTHER ORDERED that IPR2017-00366 is terminated under
`37 C.F.R. § 42.72, and all further filings in the joined proceeding are to be
`made in IPR2016-00978;
`FURTHER ORDERED that a copy of this Decision will be entered
`into the record of IPR2016-00978; and
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`FURTHER ORDERED that the case caption in IPR2016-00978 shall
`be modified to reflect joinder with this proceeding in accordance with the
`attached example.
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`
`
`FOR PETITIONERS:
`Jonathan D. Link
`Lisa K. Nguyen
`LATHAM & WATKINS LLP
`Jonathan.Link@lw.com
`Lisa.Nguyen@lw.com
`
`FOR PATENT OWNER:
`
`Jason D. Eisenberg
`Donald J. Featherstone
`Robert Greene Sterne
`Joseph E. Mutschelknaus
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`jasone-PTAB@skgf.com
`donf-PTAB@skgf.com
`rsterne-PTAB@skgf.com
`jmutsche-PTAB@skgf.com
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`Trials@uspto.gov
`571.272.7822
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`Example Case Caption for Joined Proceeding
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`RIVERBED TECHNOLOGY, INC.; DELL INC.; HEWLETT-PACKARD
`ENTERPRISE CO.; HP ENTERPRISE SERVICES, LLC; TERADATA
`OPERATIONS, INC.; ECHOSTAR CORPORATION; HUGHES
`NETWORK SYSTEMS, LLC; and VERITAS TECHNOLOGIES, LLC,
`Petitioners,
`
`v.
`
`REALTIME DATA LLC,
`Patent Owner.
`_______________
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`Case IPR2016-009781
`Patent 8,643,513 B2
`_______________
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`1 Case IPR2017-00366 has been joined with this proceeding.
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