throbber
ATTORNEY REFERENCE NO.: 6620-88460-06
`FILED VIA PRPS ON: September 18, 2012
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`FILED VIA THE PATENT REVIEW PROCESSING SYSTEM
`
`Trial Number: To be assigned
`
`In re Inter Partes Review of:
`U.S. Patent No. 6,757,717
`
`Issued: June 29, 2004
`
`Applicant: Leonid Goldstein
`
`Application No. 09/398,007
`
`Filed: September 16, 1999
`
`Title: System And Method For Data
`
`Access
`
`Currently in Litigation Styled:
`Proxyconn Inc. v. Microsoft
`Corporation, et al., Central District of
`California, Case No. SA CV11-1681
`DOC (ANx) [Consolidated With Case
`Nos. SA CV11-1682 DOC (ANx),
`SA CV11-1683 DOC (ANx), and SA
`CV11-1684 DOC (ANx)]
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313–1450.
`
`PETITION FOR INTER PARTES REVIEW OF
`CLAIMS 1, 3, 10-12, 14 AND 22-24 OF U.S. PATENT NO. 6,757,717
`
`
`
`
`
`

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`ATTORNEY REFERENCE NO.: 6620-88460-06
`FILED VIA PRPS ON: September 18, 2012
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`INTRODUCTION ........................................................................................... 3
`
`II.
`
`’717 PATENT (EX. 1002) ............................................................................... 7
`
`III. CHALLENGED CLAIMS AND THEIR
`BROADEST REASONABLE INTERPRETATIONS (BRI) ......................... 8
`
`A.
`
`Summary Of Challenged Claims........................................................... 8
`
`B.
`
`Features Not Required By Any Challenged Claim’s BRI .................... 9
`
`IV. PROPOSED ANTICIPATION GROUNDS NOS. 1-3 ................................... 9
`
`A.
`
`Claims’ Information Items ..................................................................10
`
`B.
`
`C.
`
`Claims’ Environment ..........................................................................14
`
`Claims’ Elements Of A Sender And Receiver ....................................15
`
`1.
`
`2.
`
`Elements Of A Sender ..............................................................15
`
`Elements Of Receiver ...............................................................18
`
`D.
`
`Claims’ Steps Performed By Sender And Receiver, And Their BRI .23
`
`1.
`
`2.
`
`Steps Of A Sender: ....................................................................23
`
`Steps Of The Receiver: .............................................................25
`
`V.
`
`PROPOSED GROUND FOR UNPATENTABILITY NO. 4 (BABER) ......29
`
`VI. PROPOSED GROUNDS FOR UNPATENTABILITY
`NOS. 4 AND 5 (OBVIOUS OVER PERLMAN AND YOHE) ...................31
`
`A. Obviousness: Level Of Skill In The Art ............................................31
`
`B. Obviousness: Arguable Differences From Some Claims ..................32
`
`C. Obviousness: Objective Indicia ..........................................................33
`
`D. Obviousness: Reasons To Combine Perlman And Yohe ...................34
`
`i
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`

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`ATTORNEY REFERENCE NO.: 6620-88460-06
`FILED VIA PRPS ON: September 18, 2012
`
`E.
`
`This Combination Teaches Each Claimed Combination ....................36
`
`VII. PROPOSED GROUND FOR
`UNPATENTABILITY NO. 6 (OBVIOUS OVER
`PERLMAN IN VIEW OF YOHE AND ADMITTED ART) .......................40
`
`VIII. CONCLUSION ..............................................................................................41
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`
`
`
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`
`
`ii
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`

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`ATTORNEY REFERENCE NO.: 6620-88460-06
`FILED VIA PRPS ON: September 18, 2012
`
`TABLE OF AUTHORITIES
`
`Page
`
`Cases
`
`Brown v. 3M,
`265 F.3d 1349 (Fed. Cir. 2001) ............................................................................13
`
`In re Antoine de Gaulle,
`Appeal 2008-6183 (BPAI Feb. 10, 2009) ............................................................24
`
`In re Epstein,
`32 F.3d 1559 (Fed. Cir. 1994) ....................................................................... 32, 40
`
`In re Fox,
`471 F.2d 1405 (CCPA 1973) ......................................................................... 32, 40
`
`In re Tiffin,
`448 F.2d 791 (CCPA 1971) ..................................................................................33
`
`In re Vamco Machine & Tool, Inc.,
`752 F.2d 1564 (Fed. Cir. 1985) ............................................................................33
`
`Schumer v. Lab. Computer Sys., Inc.,
`308 F.3d 1304 (Fed. Cir. 2002) ............................................................................13
`
`Statutes
`
`35 U.S.C. § 102 ........................................................................................................41
`
`35 U.S.C. Sec. 112 ........................................................................................... passim
`
`35 U.S.C. §§ 311 et seq. ............................................................................................. 1
`
`Regulations
`
`37 C.F.R. § 42.103 ..................................................................................................... 1
`
`37 C.F.R. § 42.104 ..................................................................................................... 1
`
`37 C.F.R. § 42.15 ....................................................................................................... 1
`
`
`
`iii
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`

`

`ATTORNEY REFERENCE NO.: 6620-88460-06
`FILED VIA PRPS ON: September 18, 2012
`
`Fee: In accordance with 37 C.F.R. §§ 42.15, 42.103, please charge the fee
`
`for Inter Partes Review of $27,200.00 to Deposit Account 02-4550.
`
`Identification of Challenge: Pursuant to 35 U.S.C. §§ 311 et seq., Petitioner
`
`Microsoft Corporation (“Microsoft”) requests inter partes review of claims 1, 3,
`
`10-12, 14 and 22-24 of U.S. Patent No. 6,757,717, issued to Proxyconn Inc.
`
`Sections I-VII infra and Appendix A provide the required statement of the precise
`
`relief requested for each claim challenged, per 37 C.F.R. § 42.104(b).
`
`Standing: Microsoft certifies that this patent is available for inter partes
`
`review and that Microsoft is not barred or estopped from requesting an inter partes
`
`review challenging the patent claims on the grounds identified in this petition.
`
`Real-Party-in-Interest: Microsoft is the sole real-party-in-interest.
`
`Related Matters: Proxyconn is asserting the ’717 patent against Microsoft
`
`and three Microsoft customers (Dell, HP and Acer) in a suit first filed November 3,
`
`2011, now styled, Proxyconn Inc. v. Microsoft Corporation, et al., Case No. SA
`
`CV11-1681 DOC (ANx) [consolidated with Case Nos. SA CV11-1682 DOC
`
`(ANx), SA CV11-1683 DOC (ANx), and SA CV11-1684 DOC (ANx)], pending in
`
`the U.S. District Court for the Central District of California (“the ’717 Concurrent
`
`Litigation”).
`
`Lead and Back-Up Counsel; Service Information:
`
`John D. Vandenberg (Lead Counsel, PTO Reg. No. 31312)
`
`Petition for Inter Partes Review of U.S. Patent No. 6,757,717
`
`Page 1
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`

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`ATTORNEY REFERENCE NO.: 6620-88460-06
`FILED VIA PRPS ON: September 18, 2012
`
`john.vandenberg@klarquist.com
`Direct: 503-273-2338
`Stephen J. Joncus (Back-up Counsel, PTO Reg. No. 44,809)
`stephen.joncus@klarquist.com
`Direct: 503-473-0910
`Klarquist Sparkman LLP
`121 SW Salmon Street, Suite 1600
`Portland, Oregon 97204
`Tel.: 503-595-5300
`Fax: 503-595-5301
`
`Exhibits: An accompanying Appendix and List of Exhibits submits
`
`petitioner’s Exhibits 1001 – 1018 in support of this petition, including the
`
`following:
`
`Ex. 1001: Appendix A (which is a part of this Petition), claim chart
`
`mapping the claims to prior art references Perlman, Yohe and Santos.
`
`Ex. 1002: The ’717 patent with Certificate of Correction.
`
`Ex. 1003: Perlman: Radia J. Perlman et al., U.S. Patent No. 5,742,820,
`
`“Mechanism for Efficiently Synchronizing Information Over a Network,” issued
`
`Apr. 21, 1998 (“’820” or “Perlman”). Perlman is Section 102(b) prior art.
`
`Ex. 1004: Santos: Jonathan Santos et al., “USENIX, Increasing Effective
`
`Link Bandwidth by Suppressing Replicated Date,” Proceedings of the USENIX
`
`Annual Technical Conference (NO 98) New Orleans, Louisiana, June 1998
`
`(“Santos”). Santos is Section 102(b) prior art.
`
`Petition for Inter Partes Review of U.S. Patent No. 6,757,717
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`Page 2
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`

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`ATTORNEY REFERENCE NO.: 6620-88460-06
`FILED VIA PRPS ON: September 18, 2012
`
`Ex. 1005: Yohe: Thomas Patrick Yohe et al., U.S. Patent No. 5,835,943,
`
`“Apparatus and Method for Increased Data Access in a Network File Oriented
`
`Caching System,” issued Nov. 10, 1998 on an application filed July 3, 1997
`
`(“’943” or “Yohe”). Yohe is Section 102(a) and Section 102(e) prior art. (Its July
`
`3, 1997, application is Ex. 1006, which shows that its specification and claims
`
`were issued as originally filed.)
`
`Ex. 1007: Expert declaration of Professor Darrell D. E. Long.
`
`I.
`
`INTRODUCTION
`
`Microsoft requests the Board to institute inter partes review on each of the
`
`following claims and unpatentability grounds:
`
`1. Perlman anticipates claims 1, 3, 10-12, 14, 22-24.
`
`2. Yohe anticipates claims 1, 3, 10-12, 14, 22-23.
`
`3. Santos anticipates claims 1, 3, 11-12, 14, 22.
`
`4. Baber (Exs. 1017, 1018) anticipates claims 1, 3, 10-12, 14, 22-24.
`
`5. Perlman in view of Yohe renders obvious claims 1, 3, 10-12, 14, 22-24.
`
`6. Yohe in view of Perlman renders obvious claims 1, 3, 10-12, 14, 22-24.
`
`7. Perlman in view of Yohe and the Admitted Art (described at ’717,
`
`1:18-60, Figs. 1-2) renders obvious claims 1, 3, 10-12, 14, 22-24.
`
`This petition includes its 19-page Appendix A (Ex. 1001) which maps each
`
`challenged claim to Perlman, Yohe and Santos with specific column and line
`
`Petition for Inter Partes Review of U.S. Patent No. 6,757,717
`
`Page 3
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`

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`ATTORNEY REFERENCE NO.: 6620-88460-06
`FILED VIA PRPS ON: September 18, 2012
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`citations. For each ground, the petition demonstrates at least a reasonable
`
`likelihood that at least one of the claims challenged is unpatentable.
`
`The ’717 patent describes an algorithm for reducing the amount of redundant
`
`data transmitted over a network. The algorithm checks for identity between two
`
`sets of data by comparing respective digital fingerprints of that data—similar to
`
`checking two human fingerprints to determine if they were taken from the same
`
`person. A digital fingerprint is a relatively short number calculated from longer
`
`data. (It may be called a digital signature, a hash, an identifier, or a message
`
`digest.) Like a human fingerprint, if two digital fingerprints are identical, then it
`
`safely can be assumed they were calculated from identical data. These digital
`
`identity checks have several uses.
`
`One prior art use of this identity check was to reduce the amount of
`
`redundant data transported over a computer network. Often, one uses a computer
`
`to retrieve data from a source (e.g., a web site) over a network, where the source
`
`data changes over time. Rather than re-retrieve the same data each time it is
`
`needed (just in case it has changed at its source), instead the receiver computer
`
`compares digital fingerprints to determine whether its copy of the data previously
`
`retrieved over a network is still identical to the source’s master copy of that data, in
`
`which case the data need not be re-sent over the network. The source transmits a
`
`current digital fingerprint of the data; the receiver compares that fingerprint for a
`
`Petition for Inter Partes Review of U.S. Patent No. 6,757,717
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`Page 4
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`

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`ATTORNEY REFERENCE NO.: 6620-88460-06
`FILED VIA PRPS ON: September 18, 2012
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`match to fingerprints of its own store of previously received data; and, if it finds a
`
`match, then it assumes that the source data is still identical to its own copy, and
`
`uses its own copy. Otherwise, if there’s no match, the source sends the updated
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`requested data over the network. The receiver saves that received data and may
`
`save also a digital fingerprint of that data for later use in this fingerprints-matching
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`process. In other words, digital fingerprints are transmitted over a network to
`
`synchronize remote data contents in a manner that reduces the transmission of
`
`redundant data over the network.
`
`Each of the four asserted prior art references discloses this prior art use of
`
`digital fingerprints. Perlman describes it thusly:
`
`The invention comprises a mechanism for efficiently synchronizing
`
`the contents of databases stored on nodes of a computer network to
`
`ensure that those contents are consistent. Generally, the mechanism
`
`comprises a database identifier generated by a node of the computer
`
`network and distributed to other receiving nodes coupled to the
`
`network. The database identifier is uniquely representative of the
`
`contents of the distributing node’s database and the receiving nodes
`
`compare this unique identifier with their own generated database
`
`identifiers to determine if the identifiers, and thus their databases, are
`
`consistent and synchronized.
`
`(’820 (Ex. 1003), 3:61-4:4; see also id., 8:52-9:2, claims 1, 4-6, 10).
`
`Petition for Inter Partes Review of U.S. Patent No. 6,757,717
`
`Page 5
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`

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`ATTORNEY REFERENCE NO.: 6620-88460-06
`FILED VIA PRPS ON: September 18, 2012
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`And, this old idea is the basic idea of the challenged claims. Claim 11,
`
`directed to the sender’s operation, recites it thusly:
`
`11. A method performed by a sender/computer in a packet-switched
`
`network for increasing data access, said sender/computer including an
`
`operating unit, a first memory, a permanent storage memory and a
`
`processor and said sender/computer being operative to transmit data to
`
`a receiver/computer, the method comprising the steps of: creating and
`
`transmitting a digital digest of said data from said sender/computer to
`
`said receiver/computer; receiving a response signal from said
`
`receiver/computer at said sender/computer, said response signal
`
`containing a positive, partial or negative indication signal for said
`
`digital digest, and if a negative indication signal is received,
`
`transmitting said data from said sender/computer to said
`
`receiver/computer. (’717, claim 11).
`
`Here, the digital fingerprint is a “digital digest.” “A sender” calculates it and
`
`sends it to a receiver. If the sender receives a “negative indication signal” (no
`
`match), then the sender sends the full data. Each of Perlman, Yohe, Santos and
`
`Baber describes the exact same series of steps. In Perlman, the sender sends a 128-
`
`bit message digest or CRC hash of data (database contents) to the receiver. In
`
`Yohe, the sender sends an MD5 or CRC based signature of data (e.g., a “directory
`
`signature”) to the receiver. In Santos, the sender sends an MD5 or CRC hash of
`
`data (e.g., network packets) to the receiver. In Baber, the sender sends a “unique”
`
`CRC signature of segment data.
`
`Petition for Inter Partes Review of U.S. Patent No. 6,757,717
`
`Page 6
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`

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`ATTORNEY REFERENCE NO.: 6620-88460-06
`FILED VIA PRPS ON: September 18, 2012
`
`II.
`
`’717 PATENT (EX. 1002)
`
`Summary of the Invention: The patent describes its basic idea as follows:
`
`If a sender/computer in a network is required to send data to another
`
`receiver/computer, and the receiver/computer has data with the same
`
`digital digest as that of the data to be sent, it can be assumed with
`
`sufficient probability for most practical applications that the
`
`receiver/computer has data which is exactly the same as the data to be
`
`sent. Then, the receiver/computer can use the data immediately
`
`without its actual transfer through the network. In the present
`
`invention, this idea is used in a variety of ways. (’717, 2:17-25).
`
`The term “digital digest” is discussed below, but it includes a (prior art) 128-
`
`bit MD5 hash.
`
`Admitted Art: The ’717 patent depicts in “Fig. 1 (PRIOR ART)” and “Fig.
`
`2 (PRIOR ART),” and describes at 1:18-60, prior art techniques for caching data
`
`received over a network for later reuse.
`
`Cited Art: Neither Perlman nor Santos were cited in the original
`
`prosecution. Yohe and Baber were cited but not discussed.
`
`Reasons for allowance: “The primary reason for allowance of the claims is
`
`the inclusion of ‘means for creating digital digests on data’ from the
`
`sender/computer and receiver/computer in all of the claims. Van Hoff et al. Patent
`
`no. 5,919,247 has any (sic) means for creating digital digests on data from
`
`receiver/computer.” (Ex. 1016, p. 1).
`
`Petition for Inter Partes Review of U.S. Patent No. 6,757,717
`
`Page 7
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`

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`ATTORNEY REFERENCE NO.: 6620-88460-06
`FILED VIA PRPS ON: September 18, 2012
`
`III. CHALLENGED CLAIMS AND THEIR
`BROADEST REASONABLE INTERPRETATIONS (BRI)
`
`A.
`
`Summary Of Challenged Claims
`
`Four challenged claims are independent: 1, 10, 11 and 22. Claim 11
`
`(quoted above) claims a “method performed by a sender/computer” while claim 22
`
`claims a “method … performed by a receiver/computer” and does not recite a
`
`“sender.” Each of claims 1 and 10 is a hybrid claim reciting both a “system”
`
`comprising “a sender/computer” and “a remote receiver/computer,” but also the
`
`step (not merely the capability) of the “a sender” and “a receiver” “communicating
`
`through” a network. Dependent claim 12 recites an element already required by its
`
`independent claim 11. Dependent claims 3, 14, 23 and 24 also are challenged.
`
`As seen in Appendix A (Ex. 1001), the nine challenged claims repeat many
`
`of the same elements. Collectively, they recite the information items, environment,
`
`elements of “a sender” and of “a receiver,” and sender and receiver operations
`
`identified infra in Sec. IV. Petitioner below proposes the broadest reasonable
`
`interpretation of the claim language, as understood by one of ordinary skill in the
`
`art in 1998-99, in the light of the specification (“BRI”). As noted below, several of
`
`the claim elements are entitled to no patentable weight when comparing the claim
`
`to the prior art, including if-then steps contingent on a condition occurring, in a
`
`claim not requiring that condition to occur.
`
`Petition for Inter Partes Review of U.S. Patent No. 6,757,717
`
`Page 8
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`

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`ATTORNEY REFERENCE NO.: 6620-88460-06
`FILED VIA PRPS ON: September 18, 2012
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`B.
`
`Features Not Required By Any Challenged Claim’s BRI
`
`No claim requires that a sender send any “data” to a receiver. As noted
`
`below, the only claim element referring to such a transmission step (claim 11) is
`
`contingent on a condition that the claim does not positively recite occurring.
`
`No claim recites any use or function of the sender’s “permanent memory.”
`
`No claim requires that the receiver use a digital digest it calculates.
`
`No claim requires that its algorithm be at an application level, as suggested
`
`by Proxyconn (Ex. 1011, 12:12-14).
`
`IV. PROPOSED ANTICIPATION GROUNDS NOS. 1-3
`
`1. Perlman anticipates all challenged claims: 1, 3, 10-12, 14, 22-24.
`
`2. Yohe anticipates claims 1, 3, 10-12, 14, 22-23.
`
`3. Santos anticipates claims 1, 3, 11-12, 14, 22.
`
`Perlman discloses all of the information elements, environment, and sender
`
`and receiver elements and operations recited in these challenged claims, under
`
`their BRI, and arranged in the same manner as in the claim. See App. A.
`
`Perlman’s illustrative network-router embodiment uses RAM (not permanent
`
`memory) for its cache, but, Perlman is not limited to that embodiment. More
`
`broadly, it expressly discloses (’820 (Ex. 1003), Abstract, 1:1-9, 3:60-4:4, 7:12-22,
`
`8:52-9:2) and claims (id., claims 1 and 4-6) that its mechanism applies to any type
`
`of distributed system and network node, which includes nodes whose cache is in
`
`Petition for Inter Partes Review of U.S. Patent No. 6,757,717
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`Page 9
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`ATTORNEY REFERENCE NO.: 6620-88460-06
`FILED VIA PRPS ON: September 18, 2012
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`permanent memory in whole or in part, as in Yohe. Yohe and Santos each
`
`discloses each claim element, except as otherwise noted below.
`
`A. Claims’ Information Items
`
`Each of Perlman, Yohe and Santos discloses the same redundancy-reduction,
`
`identity-check algorithm as the ’717 patent and each discloses each of the
`
`challenged claims’ information items, under their BRI:
`
`“Data”/“Data objects” (all claims): BRI: “a file or range of octets in a
`
`file, a range of frames in a video stream or RAM-based range of octets, a transport
`
`level network packet, or the like.” (’717, 2:5-8). (An “octet” is an 8-bit byte).
`
`Prior Art: The network-node database contents (and database fragments) of
`
`Perlman; the files, file-system directories and sub-objects of Yohe; and the data
`
`packet payloads of Santos, each qualifies as the claims’ “data” and “data objects”
`
`per their BRI. See App. A8:4.
`
`“Digital digest [on/of/for] data”/“Digital digest” (all claims): BRI: The
`
`BRI of this claim language is not clear. The patent states:
`
`“The term ‘digital digest’ as used herein refers to the per se known
`
`MD5 algorithm, described in RFC 1321 by R. Rivest,” (a 128-bit
`
`message digest) and also “may be calculated according to the CRC
`
`algorithm [cyclic redundancy code]. Other algorithms may, however,
`
`just as well be used. For example, a digital digest may be calculated
`
`according to the CRC algorithm, or by applying the CRC algorithm to
`
`Petition for Inter Partes Review of U.S. Patent No. 6,757,717
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`Page 10
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`ATTORNEY REFERENCE NO.: 6620-88460-06
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`different subsets or different reorderings of data, or by consecutively
`
`applying CRC and MD5. In addition, any other algorithm may be
`
`used, provided that it produces a fixed-size binary value calculated
`
`from arbitrarily-sized binary data in such a way that it depends only
`
`on the contents of said data and that the probability of two different
`
`data having the same digital digest, is low.” (’717, 6:24-36).
`
`But, the patent contradicts itself by asserting that its “digital digest” has a
`
`similarity check property (e.g., ’717, 4:46-51, 4:65-67, 8:28-31, 8:34-37, 14:10-
`
`12)—something neither an MD5 nor CRC value (nor any other digital fingerprint
`
`identified in the patent) has. More generally, the patent gives the following
`
`purported partial definition of “digital digest”: “A fixed-size binary value
`
`calculated from arbitrary-size binary data in such a way that it depends only on the
`
`contents of the data and the low probability that two different data or objects have
`
`the same digital digest.” (’717, 2:9-13, 6:32-36). Petitioner proposes that a BRI of
`
`this information element includes a fixed-size digital fingerprint (e.g., hash,
`
`message digest, signature or identifier) calculated using an MD5 (or other message
`
`digest) and/or CRC algorithm and calculated on arbitrary-size data, such that it
`
`represents and depends only on the content of that data. As the patent describes no
`
`digital fingerprint having a similarity check property, the BRI should not require
`
`that property.
`
`Petition for Inter Partes Review of U.S. Patent No. 6,757,717
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`Page 11
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`ATTORNEY REFERENCE NO.: 6620-88460-06
`FILED VIA PRPS ON: September 18, 2012
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`Prior Art: The 128-bit “unique, fixed-length digest ‘signature’” (database
`
`identifier) of Perlman; the CRC and MD5 based block and directory signatures of
`
`Yohe; and the 128-bit MD5 hash of Santos, each qualifies as a “digital digest.”
`
`Each is a fixed-size MD5 and/or CRC value calculated on arbitrary-size data, such
`
`that it represents and depends only on the content of that data. See App. A8:4.
`
`Although the illustrative CRC signature embodiments in Yohe are 32-bit and 64-
`
`bit, Yohe discloses that those lengths are sufficient to represent each directory for
`
`its purposes (e.g., matching file directories) and thus Yohe assumes that a matching
`
`directory signature reliably indicates that the directory on a sender is the same as
`
`the directory on a receiver. (E.g., ’943 (Ex. 1005), Fig. 15, steps 722 and 723).
`
`Although the original ’717 prosecution history creates ambiguity on this point, that
`
`is not relevant to the BRI in view of the specification, and nothing in the
`
`challenged claims or the specification expressly excludes a 32-bit CRC value. For
`
`example, nothing in the ’717 patent defines “low probability” in any clear manner,
`
`and certainly not in any clear manner that excludes Yohe’s 32-bit CRC values.
`
`“Response signal” (claims 11, 12, 14): BRI: plain meaning.
`
`Prior Art: The requests for database contents (e.g., CSNP) or a fragment
`
`thereof sent by the receiver in Perlman; the directory retrieval signals sent by the
`
`receiver’s Network File Cacher (NFC) in Yohe; and the rejection packet sent by
`
`the receiver in Santos, each qualifies as a response signal. Each is transmitted by
`
`Petition for Inter Partes Review of U.S. Patent No. 6,757,717
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`Page 12
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`

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`ATTORNEY REFERENCE NO.: 6620-88460-06
`FILED VIA PRPS ON: September 18, 2012
`
`the receiver in response to its receipt of a “digital digest” over the network and
`
`each follows a failure to find that same “digital digest” value at the receiver. See
`
`App. A14:10.
`
`“Negative indication signal” (claims 11, 12, 14, 22-24): BRI: any
`
`indication (e.g., “the absence of a signal”) treated as a request that a sender send
`
`the data to a receiver. (See ’717, 8:1-10).
`
`Prior Art: Each of the response signals identified immediately above
`
`constitutes the claims’ negative indication signal as each indicates that the receiver
`
`requests data having the same “digital digest” as that received over the network.
`
`See App. A14:10, A15:3.
`
`“Positive, partial or negative indication signal” (claims 11, 12, 14): BRI:
`
`Under a BRI, this alternative language “positive, partial or negative indication
`
`signal” in these method claims is met by a prior art method using only one of the
`
`three alternatives. The U.S. Court of Appeals for the Federal Circuit “ha[s]
`
`consistently interpreted the word ‘or’ to mean that the items in the sequence are
`
`alternatives to each other.” Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304,
`
`1311 (Fed. Cir. 2002) (finding infringement of a method claim reciting, as here, a
`
`step of receiving certain information, the information described using a sequence
`
`of three alternatives using “or”—even though the accused process met only one of
`
`the three options); cf. Brown v. 3M, 265 F.3d 1349, 1353 (Fed. Cir. 2001)
`
`Petition for Inter Partes Review of U.S. Patent No. 6,757,717
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`Page 13
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`

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`ATTORNEY REFERENCE NO.: 6620-88460-06
`FILED VIA PRPS ON: September 18, 2012
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`(apparatus claim reciting “data with years being represented by at least one of two-
`
`digit, three-digit, or four-digit year-date representations,” anticipated by reference
`
`that disclosed two-digit format only). Thus, the optional signals “positive” and
`
`“partial” have no patentable weight and need not be disclosed by a prior art
`
`reference that discloses a “negative indication signal.” Proxyconn has implied in
`
`its litigation infringement claim allegations that the claimed method does not
`
`require each type of signal to be transmitted. (Ex. 1012, p. 30).
`
`Prior Art: See above for disclosure of “negative” indication signals.
`
`“Message” (claims 22-24): BRI: plain meaning.
`
`Prior Art: In each of Perlman, Yohe and Santos, the transmission by a
`
`sender to a receiver including a “digital digest” constitutes the claims’ “message.”
`
`See App. A14:3, A16:14.
`
`B. Claims’ Environment
`
`“a packet-switched network” (all claims): BRI: plain meaning.
`
`Prior Art: Each of Perlman’s packet-based OSI-protocol network (and “any
`
`type” of distributed network system); Yohe’s “world wide web” and “wide area
`
`network,” using a client-server protocol with particular “packet formats;” and
`
`Santos’s network transmitting “HTTP, FTP, and DNS traffic” and “data at the
`
`packet level, mainly due to Web traffic,” discloses a packet-switched network. See
`
`App. A2:9.
`
`Petition for Inter Partes Review of U.S. Patent No. 6,757,717
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`Page 14
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`

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`ATTORNEY REFERENCE NO.: 6620-88460-06
`FILED VIA PRPS ON: September 18, 2012
`
`C. Claims’ Elements Of A Sender And Receiver
`
`1.
`
`Elements Of A Sender
`
`“a sender/computer” (claims 1, 3, 10, 11, 12, 14): BRI: any device(s),
`
`having the claim-recited elements of a sender, and capable of sending any type of
`
`information over a network to a receiver. The “a” sender/computer is not limited
`
`to a single machine. (See ’717, claims).
`
`Proxyconn’s Proposed Construction: Proxyconn has attempted to
`
`distinguish Yohe and Santos by arguing that a computer sending data over a
`
`network is not “a sender/computer” if it acts as an intermediary processing data
`
`received from another computer. (Ex. 1011, 12:3-7, 13:26-14:3). But, the ’717
`
`patent does not even arguably define “a sender/computer” in that restricted fashion.
`
`First, nowhere does the patent disclose that the “sender/computer” originates the
`
`data in question rather than receiving it from another entity. Second, it certainly
`
`does not disclose that its “sender/computer” is limited to such an originator of data.
`
`Third, no challenged claim has that limitation Proxyconn seeks. Fourth, even if the
`
`patent or a claim had defined “a sender” in that fashion—that it does not receive
`
`the data in question from another source—that would be a mere intended use
`
`having no significance to the structure of the recited “a sender/computer” and thus
`
`having no patentable weight. The concepts client, server, gateway, etc. refer to the
`
`Petition for Inter Partes Review of U.S. Patent No. 6,757,717
`
`Page 15
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`

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`ATTORNEY REFERENCE NO.: 6620-88460-06
`FILED VIA PRPS ON: September 18, 2012
`
`intended use of a computer in a protocol, not to any structural/functional property
`
`of a computer.
`
`Prior Art: Each network-connected computer in each reference is capable of
`
`sending information over a network to a receiver. In Yohe, the “a sender”
`
`includes, e.g., the “file server computer 18” combined with the “cache verifying
`
`agent 54” residing on the “cache verifying computer 14” or “communication server
`
`16.” Alternatively, even if the “file server computer 18” were not considered as
`
`part of the “a sender,” Yohe’s cache verifying computer, either integrated with its
`
`communication server or not, still would disclose the “a sender” and its claim-
`
`recited elements and operations. See App. A3:2.
`
`“Operating unit,” “First memory,” “Permanent storage memory,” and
`
`“Processor” (claims 1, 3, 10, 11, 12, 14): BRI: plain meaning, except for
`
`“operating unit” which term the patent does not explain. Although “operating
`
`unit” connotes no structure and likely invokes Sec. 112(f), that interpretation
`
`would render the term indefinite because the patent links no particular structure to
`
`this function. As indefiniteness is not an option here, Petitioner proposes that the
`
`BRI of this term encompasses anything found in a computer—other than the
`
`recited processor and memories—that is used in its operation.
`
`Prior Art: The computers referenced in Perlman, Yohe and Santos include
`
`the last three, conventional computer elements. See App. A3:11, A4:4, A4:10,
`
`Petition for Inter Partes Review of U.S. Patent No. 6,757,717
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`Page 16
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`

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`ATTORNEY REFERENCE NO.: 6620-88460-06
`FILED VIA PRPS ON: September 18, 2012
`
`A5:5. Indeed, this claim language is almost a verbatim copy of claim language in
`
`Yohe: “a file server computer having an operating system, a first memory, a
`
`permanent storage memory and a processor.” (’943 (Ex. 1005), 14:43-44).
`
`Perlman discloses that its illustrative embodiment router is a general-purpose
`
`computer with operating systems, only “portions of which” are resident in RAM
`
`(’820 (Ex. 1003), 5:41-52, Fig. 2), which necessarily had permanent memory (Ex.
`
`1007, 12:5-17). And, Perlman expressly discloses that its mechanism applies to
`
`“any type” of distributed network system needing to synchronize the database on
`
`one node with that of another (’820 (Ex. 1003), 8:52-9:2), which “any type”
`
`includes the Yohe system and other such systems whose computers have
`
`permanent storage. (Ex. 1007, 12:18-15:9). As for the undefined “operating unit,”
`
`the ’717 patent discloses nothing corresponding to this “operating unit” that is not
`
`also disclosed in the computers of Perlman, Yohe and Santos. See App. A3:11.
`
`“Means for creating digital digests on data” (claims 1, 10): BRI: This
`
`element invokes 35 U.S.C. § 112(f), but the patent discloses no counterpart to this
`
`element, particularly considering that this element is recited as being in addition to
`
`the processor. As unpatentability under Section 112 is not an option here,
`
`Petitioner propo

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