throbber
UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`Unified Patents Inc.
`Petitioner
`v.
`Checksum Ventures LLC Patent Owner
`_________________________
`Case IPR 2019-00491
`US 8,301,906
`_________________________
`DECLARATION OF DR. PAUL FRANZON
`
`
`
`
`Unified Patents
`EX1002
`Page 1 of 59
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`

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`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ............................................................................................ 1
`
`SUMMARY OF OPINIONS ............................................................................ 3
`
`III. QUALIFICATIONS ......................................................................................... 4
`
`A. Education and Work Experience ...................................................................... 4
`
`B. Compensation ................................................................................................... 7
`
`C. Documents and Other Materials Relied Upon ................................................. 7
`
`IV. STATEMENT OF LEGAL PRINCIPLES....................................................... 8
`
`A. Claim Construction ........................................................................................... 8
`
`B. Anticipation ...................................................................................................... 9
`
`C. Obviousness ...................................................................................................... 9
`
`V. THE LEVEL OF ORDINARY SKILL IN THE ART ...................................10
`
`VI. TECHNOLOGY BACKGROUND OF THE ’906 PATENT ........................11
`
`VII. OVERVIEW OF THE ’906 PATENT ...........................................................11
`
`VIII. THE PRIOR ART ...........................................................................................14
`
`A. Loaiza .............................................................................................................14
`
`B. Tripathi ...........................................................................................................15
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`C. Jutla .................................................................................................................15
`
`D. Duncan ............................................................................................................15
`
`E. Wilcox.............................................................................................................15
`
`F. General Prior Art Concepts ............................................................................15
`
`IX. CLAIM CONSTRUCTION ...........................................................................16
`
`X. CLAIMS 1-10 OF THE ’906 PATENT ARE UNPATENTABLE ...............19
`
`A. Overview of the Prior Art ...............................................................................19
`
`1. Loaiza ..........................................................................................................20
`
`2. Tripathi ........................................................................................................21
`
`3. Jutla ..............................................................................................................21
`
`4. Duncan .........................................................................................................22
`
`5. Wilcox .........................................................................................................22
`
`B. Ground 1: Loaiza in view of Tripathi render claims 1, 3-4, and 6-10
`
`unpatentable under 35 U.S.C. §103 ......................................................................23
`
`1. Each Element of Claim 1 Is Disclosed ........................................................29
`
`2. Each of the Claims 3-4 and 6-10 are Disclosed ..........................................37
`
`C. Ground 2: Loaiza in View of Tripathi and in Further View of Jutla Renders
`
`Obvious Claim 2 of the ’906 Patent .....................................................................45
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`1. Rationale to Combine Loaiza and Triapathi and Jutla ................................45
`
`2. The Elements of Dependent Claim 2 are Disclosed ...................................47
`
`D. Ground 3: Loaiza in View of Tripathi and in further view of Duncan and
`
`Wilcox renders Obvious Claim 5 of the ’906 Patent ............................................48
`
`1. Rationale to Combine Loaiza in View of Tripathi with Duncan and Wilcox
`
`
`
`49
`
`2. The Elements of Dependent Claim 5 are Disclosed ...................................50
`
`XI. CONCLUSION ..............................................................................................53
`
`
`
`
`
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`Exhibit
`EX1001
`
`EX1002
`EX1003
`EX1004
`
`EX1005
`EX1006
`EX1007
`EX1008
`EX1009
`EX1010
`EX1011
`EX1012
`EX1013
`EX1014
`
`EX1015
`
`EX1016
`
`EX1017
`
`EX1018
`
`EX1019
`EX1020
`EX1021
`
`
`
`
`
`
`LIST OF EXHIBITS
`
`Description
`U.S. Patent No. 8,301,906 to Eckleder et al. (“the ’906
`patent”)
`Declaration of Dr. Paul Franzon, Ph.D. (“Franzon”)
`Curriculum Vitae of Dr. Paul Franzon, Ph.D.
`Excerpts of the Prosecution History of U.S. Patent
`No.8,301,906
`Petitioner’s Voluntary Interrogatory Responses
`U.S. Patent No 7,020,835 (“Loaiza”)
`U.S. Patent No. 7,937,404 (“Tripathi”)
`U.S. Patent No. 6,963,976 (“Jutla”)
`Ground 1 Claim Chart
`Ground 2 Claim Chart
`U.S. Patent No. 5,235,585 (“Bish”)
`U.S. Patent No. 8,977,859 (“Ross”)
`Reserved
`N. R. Saxena and E. J. McCluskey, "Analysis of checksums,
`extended-precision checksums, and cyclic redundancy
`checks," in IEEE Transactions on Computers, vol. 39, no. 7,
`pp. 969-975, July 1990.
`J. Fletcher, "An Arithmetic Checksum for Serial
`Transmissions," in IEEE Transactions on Communications,
`vol. 30, no. 1, pp. 247-252, January 1982.
`D. E. Denning, "Cryptographic Checksums for Multilevel
`Database Security," 1984 IEEE Symposium on Security and
`Privacy, Oakland, CA, USA, 1984, pp. 52-52.
`“Data interchange on read-only 120 mm optical data disks
`(CD-ROM)”, Standard ECMA-130, 2nd Edition (June 1996)
`“CD and DVD Forensics”, by P Crowley and L. Liebrock
`(2006, Syngress)
`U.S. Patent Application 2003/0023933 A1 (“Duncan”)
`U.S. Patent No. 5,664,189 (“Wilcox”)
`Ground 3 Claim Chart
`
`
`
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`I, Dr. Paul Franzon, Ph.D, declare as follows:
`INTRODUCTION
`I.
`My name is Dr. Paul Franzon, Ph.D. I have been retained by Unified
`1.
`
`Patents Inc. (“Unified”) to investigate and opine on certain issues relating to U.S.
`
`Patent No. 8,301,906 (“the ’906 patent”) titled “Apparatus for Writing Information
`
`on a Data Content on a Storage Medium” in Unified’s petition for inter partes review
`
`of the ’906 patent (“Unified’s IPR Petition”) requesting the Patent Trial and Appeal
`
`Board (“PTAB”) review and cancel all claims (i.e. claims 1-10) of the ’906 patent
`
`(“Challenged Claims”).
`
`2.
`
`I understand the ’906 patent is a continuation of an application filed on
`
`April 25, 2007. The '906 patent purportedly stems from provisional application No.
`
`60.746,964, filed on May 10, 2006, and provisional application No. 60/747,363,
`
`filed on May 16, 2006. I take no position on the actual priority date, as all of the
`
`references I rely on qualify as prior art even assuming the May 10, 2006 priority
`
`date.
`
`3.
`
`This declaration is based on the information currently available to me.
`
`To the extent that additional information becomes available, I reserve the right to
`
`continue my investigation and study, which may include a review of documents and
`
`information that may be produced, as well as testimony from depositions that may
`
`not yet be taken.
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`4.
`
`In this declaration, I will first discuss the technology background
`
`related to the ’906 patent and then provide my analyses and opinions regarding
`
`claims 1-10 of the ’906 Patent. The discussion of the technology background
`
`includes an overview of that technology as it was known before May 10, 2006, which
`
`I understand as the earliest possible priority date claimed by the ’906 patent. This
`
`overview provides some of the bases for my opinions with respect to the ’906 patent.
`
`5.
`
`In forming my opinions, I have relied on information and evidence
`
`identified in this declaration, including the ’906 patent, the prosecution history of
`
`the ’906 patent, and prior art references listed as Exhibits to the Unified IPR Petition
`
`and listed as appendices of this declaration. The Appendices to this declaration
`
`include a number of references known to those in the art to describe technical
`
`concepts relevant to the subject matter of this declaration, and include (for example)
`
`patents, technical publications, and industry standards. In my opinion, an expert or
`
`a person of ordinary skill in the art in the subject matter relevant to this declaration
`
`would consider each of the Appendices to this declaration relevant to the subject
`
`matter of this declaration and would reasonably rely on such materials to form an
`
`opinion as to the state of the art prior to May 10, 2006, the interpretation of the prior
`
`art references relied upon in Unified’s petition, and the obviousness of the claims
`
`challenged in the petition. I have also relied on my own personal experience in the
`
`field of verifying and ensuring the integrity of computer data storage, which includes
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`the design and development of computing, encryption and networking hardware, and
`
`software.
`
`II.
`
`SUMMARY OF OPINIONS
`Claims 1-10 of the ’906 patent are directed to an apparatus, method, or
`6.
`
`computer program for writing checksum information on a data content on a storage
`
`medium. For the reasons described below, none of the features described in claims
`
`1-10 of the ’906 patent were novel as of May 10, 2006, nor does the ’906 patent
`
`teach a novel and non-obvious way of combining these known features.
`
`7.
`
`Claims 1-10 of the ’906 patent relate to well-known technologies in the
`
`computer industry, such as writing data to a storage medium, calculating checksums,
`
`and using the checksums to verify the integrity of the data written. No element of
`
`claims 1-10 is novel and claims 1-10 do not bring these elements together in a way
`
`that brings any benefit beyond what a person of ordinary skill in the art would expect
`
`from the known functions of the individual components. Claims 1-10 describe
`
`techniques that were well-known in the field and combine them in ways that would
`
`have been readily apparent to a person of ordinary skill in the art with predictable
`
`results.
`
`8.
`
`It is my opinion that each of claims 1-10 is unpatentable under the
`
`patentability standard of 35 U.S.C. § 103 as I understand it and as explained to me
`
`by Unified’s counsel. Within this declaration, I discuss specific grounds of
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`unpatentability of claims 1-10; however, my opinion that claims 1-10 are
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`unpatentable under 35 U.S.C. § 103 is not limited to these specific grounds, and
`
`indeed, it is my opinion that claims 1-10 would have been unpatentable in light of
`
`the general knowledge of a person of ordinary skill in the art at the time of the alleged
`
`invention.
`
`9.
`
`For purposes of my analyses in this declaration only, I provide my
`
`proposed construction of certain terms in claims 1-10 in detail in a later part of this
`
`declaration.
`
`10.
`
`The subsequent sections of this declaration will first provide my
`
`qualifications and experience and then describe details of my analyses and
`
`observations.
`
`III. QUALIFICATIONS
`A. Education and Work Experience
`I am a currently the Cirrus Logic Distinguished Professor and Director
`11.
`
`of Graduate Programs in the Department of Electrical and Computer Engineering at
`
`North Carolina State University (“NCSU”) in Raleigh, North Carolina. I have been
`
`affiliated with NCSU in various roles since 1989. A copy of my CV is attached (EX
`
`1003).
`
`12.
`
`I completed my Ph.D. in Electrical and Electronic Engineering in 1989
`
`from the University of Adelaide in Australia. I obtained two additional degrees from
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`the University of Adelaide: a Bachelor of Engineering in Electrical and Electronic
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`Engineering in 1984 and a Bachelor of Science in Physics and Mathematics in 1983.
`
`13.
`
`I have over 20 years of experience with computing, networking and
`
`communications systems and data storage, data encoding and decoding., data
`
`encryption and decryption. My experience in these areas started in the 1980s.
`
`14.
`
`Over 1981–1982, I interned for Telecom Australia. My job was to
`
`reprogram the monitoring system for the states’ microwave backbone to make it
`
`more responsive to faults and other alarms. A big part of this project was getting the
`
`code to work in the limited storage available.
`
`15.
`
`In 1987, I co-founded Network Communications Pty. Ltd. The initial
`
`goal of the company was to build a wireless modem link that could span several
`
`hundred meters. Though a prototype was built the business model of the company
`
`changed to a service one.
`
`16.
`
`Over 1994-1997, I led a project that included building an AES
`
`encryption/decryption chip. This led to several publications.
`
`17.
`
`From 1993 to 2000 I led a project designing an all optical switching
`
`micro-device. This project was sponsored by the National Science Foundation and
`
`the United States Air Force.
`
`18.
`
`In 2000, I help raised investment funds to start an optical networking
`
`company, initially aimed at new devices and systems for Metropolitan Area
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`Networks. Lightspin Technologies Inc. was formally started in 2000 and I was Vice
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`President for Engineering from the beginning of 2001 to the end of 2002. My group
`
`built and demonstrated a high speed Light Emitting Diode device and investigated
`
`its application in Metropolitan Area Networks. The latter included studying
`
`architectural implications of the new device. From 2001 to 2003, I led a project
`
`designing network processors for a next generation optical networking protocol that
`
`was intended to replace Sonet. This was referred to as a “Just in Time Optical
`
`Networking” protocol as it employed a just in time circuit switching paradigm. Two
`
`granted inventions arose from this work.
`
`19.
`
`Over 1995–2006, I led a project designing hardware to detect unwanted
`
`network intrusion attempts, using filters and behavioral monitoring.
`
`20.
`
`From 2006 to 2014 I worked on a new communications encoding
`
`scheme that fundamentally reduced crosstalk. Referred to as “multimode
`
`interconnect,” it could be used for short and long range data communications.
`
`Several issued patents arose from this work.
`
`21.
`
`I have been involved in the International Technology Roadmap for
`
`Semiconductors (ITRS) and its successor, the International Roadmap for Devices
`
`and Systems (IDRS) since the early 2000s. I have run a workshop on storage devices
`
`and systems, contributed and edited chapters on emerging computing, memory
`
`devices and systems and co-wrote a book chapter on storage class memories.
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`22.
`
`Over my teaching career at NCSU I have taught courses on computer
`
`design, computer programming, and chip design, amongst other topics. For those
`
`courses I have developed projects on computer design, storage systems, networking,
`
`multimedia, graphics, encryption and more. In my courses, I have taught and
`
`conducted projects involving a variety of error detection and correction codes,
`
`including checksum generators and checkers. I’ve taught how to build checksum
`
`generators and checkers in my courses, with a focus on hardware design of such.
`
`23.
`
`Over 2010-14 I codeveloped a unified memory technology and
`
`investigated device, circuit and system ramifications. This led to several patents and
`
`papers.
`
`B. Compensation
`I am being compensated at my hourly consulting rate of $500 for the
`24.
`
`services I am providing in this petition. The compensation is not contingent upon
`
`my performance, the outcome of this inter partes review or any other proceedings,
`
`or any issues involved in or related to this inter partes review or any other
`
`proceedings.
`
`C. Documents and Other Materials Relied Upon
`The documents on which I rely for the opinions expressed in this
`25.
`
`declaration are documents and materials identified in this declaration, including the
`
`’906 patent, the prosecution history for the ’906 patent, and other patents and
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`provisional patents related to the ’906 patent, the prior art references and information
`
`discussed in this declaration, including the references attached as exhibits of the IPR
`
`Petition for the ’906 patent. and any other references specifically identified in this
`
`declaration, in their entirety, even if only portions of these documents are discussed
`
`here in an exemplary fashion.
`
`IV. STATEMENT OF LEGAL PRINCIPLES
`A. Claim Construction
`Unified’s counsel has advised that when construing claim terms of an
`26.
`
`unexpired patent, the same standard is used for a claim subject to inter partes review
`
`as it would receive in other civil litigations.
`
`27.
`
`Claim construction is a question of law that requires construing the
`
`words of a claim in view of their proper context and evidentiary underpinnings. The
`
`meanings of the terms used in the claims are presumed to be the meanings that the
`
`terms would have had to a person having ordinary skill in the art (“PHOSITA”) at
`
`the time of the invention, i.e., as of the effective filing date of the patent application,
`
`in the context of the entire patent. The ordinary meaning of a claim term may be
`
`understood by reference to intrinsic evidence, such as the claims, the patent
`
`specification, and the prosecution history and, if necessary, extrinsic evidence, such
`
`as dictionaries and expert testimony can be considered. Id.
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`28.
`
`I understand the first step in determining whether or not a patent claim
`
`is valid is to properly construe the claims. I understand that each claim of a patent is
`
`to be interpreted in light of the language of the claim, the written description, the
`
`figures, and the prosecution history of the patent.
`
`B. Anticipation
`Unified’s counsel has advised that in order for a patent claim to be
`29.
`
`valid, the claimed invention must be novel. Unified’s counsel has further advised
`
`that if each and every element of a claim is disclosed in a single prior art reference,
`
`then the claimed invention is anticipated, and the invention is not patentable
`
`according to pre-AIA 35 U.S.C. § 102 effective before March 16, 2013. In order for
`
`an invention in a claim to be anticipated, all of the elements and limitations of the
`
`claim must be shown in a single prior reference, arranged as in the claim. A claim is
`
`anticipated only if each and every element as set forth in the claim is found, either
`
`expressly or inherently described, in a single prior art reference. In order for a
`
`reference to inherently disclose a claim limitation, that claim limitation must
`
`necessarily be present in the reference.
`
`C. Obviousness
`Unified’s counsel has also advised me that obviousness under pre- AIA
`30.
`
`35 U.S.C. § 103 effective before March 16, 2013 is a basis for invalidity. I
`
`understand that where a prior art reference does not disclose all of the limitations of
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`a given patent claim, that patent claim is invalid if the differences between the
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`claimed subject matter and the prior art reference are such that the claimed subject
`
`matter as a whole would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the relevant art. Obviousness can be based on a single
`
`prior art reference or a combination of references that either expressly or inherently
`
`disclose all limitations of the claimed invention. In an obviousness analysis, it is not
`
`necessary to find precise teachings in the prior art directed to the specific subject
`
`matter claimed because inferences and creative steps that a person of ordinary skill
`
`in the art would employ can be taken into account.
`
`V. THE LEVEL OF ORDINARY SKILL IN THE ART
`I understand from Unified’s counsel that the claims and specification
`31.
`
`of a patent must be read and construed through the eyes of a person having of
`
`ordinary skill in the art at the time of the priority date of the claims (“PHOSITA”). I
`
`have also been advised that to determine the appropriate level of a person having
`
`ordinary skill in the art, the following factors may be considered: (a) the types of
`
`problems encountered by those working in the field and prior art solutions thereto;
`
`(b) the sophistication of the technology in question, and the rapidity with which
`
`innovations occur in the field; (c) the educational level of active workers in the field;
`
`and (d) the educational level of the inventor.
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`32.
`
`Based on the above considerations and factors, it is my opinion that a
`
`PHOSITA for the ’906 patent should have a Bachelor’s Degree in Computer
`
`Science, Computer Engineering, Electrical Engineering, or a related subject, or one
`
`or more years of experience working with computer data storage devices. This is
`
`because of the nature of the subject matter involving straight forward extensions of
`
`subjects taught to undergraduates in these degrees.
`
`VI. TECHNOLOGY BACKGROUND OF THE ’906 PATENT
`It is my opinion that the ’906 patent recites an obvious and predictable
`33.
`
`combination of elements that were well-known in the art at the time the ’906 patent
`
`was filed and at the time of alleged invention. In this section of my declaration, I
`
`provide an overview of some general principles that were understood in the art at the
`
`time of filing of the ’906 patent, and therefore would be within the knowledge of a
`
`PHOSITA. I use certain references (including both patents and non-patent literature)
`
`to illustrate the background knowledge of a person of ordinary skill in the art, but
`
`the knowledge of a person of ordinary skill in the art at the time regarding the
`
`claimed features would not have been limited to these specific references.
`
`VII. OVERVIEW OF THE ’906 PATENT
`The ’906 patent includes three independent claims – claims 1, 9, and
`34.
`
`10. Claim 1 is generally directed to an apparatus for providing a checksum for use
`
`in validating the integrity of data files, writing that checksum to a storage medium,
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`and reading back the data files and the checksum information. See Ex. 1001 at
`
`Abstract. A checksum is a small “check” word that is derived from a block of digital
`
`data and is used to detect errors in later (stored or transmitted) versions of that block.
`
`In its simplest form, a checksum can be calculated by adding all the words in the
`
`data and chopping off the high order bits to form an m-bit word (“modulo-m
`
`arithmetic.”). See EX1014, p. 970. A primary aspect of the ’906 patent is that a
`
`checksum is used to validate the integrity of data files, but the system can ignore,
`
`skip, or not read the checksum in certain circumstances. See EX1001 at Abstract.
`
`35.
`
`The ’906 patent purportedly discloses an invention in the field of “data
`
`security and content verification.” EX1001, 1:19-20. The “Background” section of
`
`the ’906 patent describes a need to verify and ensure data content on a storage
`
`medium. In particular,
`
`the ’906 patent recites
`
`that “[c]onventional data
`
`administration concepts lack the possibility for users to allow other users to verify
`
`or integrity check data.” EX1001, 1:27-29. In particular, the patent recites a
`
`perceived problem in that:
`
`conventional storage concepts and storage media do not allow to verify
`an origin of data. For example if data is transferred using portable
`storage media, e.g. by sending a CD (CD=Compact Disc) or a DVD
`(DVD-Digital Versatile Disk) by mail, the receiver can not easily prove
`the origin of the data, i.e. verify the integrity of the data.
`
`EX1001, 1:35-40.
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`36.
`
`The means disclosed by the ’906 patent to solve this alleged issue is to
`
`“based on the finding that based on checksums, respectively encrypted checksums,
`
`data validity and integrity can be verified. In one embodiment, this is accomplished
`
`by storing a checksum over each file that is recorded on an optical disc in a file
`
`system independent way.” EX1001, 2:34-38. The ’906 patent indicates that the
`
`checksums may be created using any number of prior art algorithms. EX1001, 3:1-
`
`6. Moreover, the ’906 patent discloses that “any other storage media,” thus
`
`indicating that the storage media, itself, is also in the prior art. See EX1001, 2:52-
`
`58.
`
`37.
`
`Indeed, the key feature on which the patent was allowed appears to be
`
`writing the checksum to a storage medium and then writing the physical or logical
`
`location of that checksum information to the storage medium as well. Reinforcing
`
`this is the fact that the claims were amended to specifically require writing the
`
`claimed control information to overcome a prior art rejection. See EX1004, PDF p.
`
`101 (2011-04-11 Amendment, p. 2). In the remarks, the applicant said that this was
`
`“the most important amendment.” Id., PDF p. 101 (2011-04-11 Amendment, p. 8).
`
`This is also the feature expressly relied upon to overcome the prior art. Id., PDF p.
`
`101 (2011-04-11 Amendment, p. 9). Then in response to the Final Office Action, the
`
`applicant again relied on this same feature. See EX1004, PDF p. 76 (2011-08-09
`
`Amendment, p. 8). There, the applicant went on to say:
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`Specifically, and importantly, the claim does not just say “writing
`control information pertinent to checksum information” as outlined on
`page 5, second line of the Office Action. Instead, Applicant's specific
`control
`information
`is not merely concerned generically with
`checksum, but it is concerned the physical or logical location of the
`checksum information on the storage medium.
`
`EX1004, PDF pp. 76-77 (2011-08-09 Amendment, pp. 8-9). The claims at issue
`
`were allowed, after an appeal brief, with this feature. EX1004, PDF p. 25 (2012-06-
`
`28 Notice of Allowability). But, as shown below, this “key” feature was well known
`
`in the art at the time the ’906 was filed.
`
`VIII. THE PRIOR ART
`As explained below, it is my opinion that the prior art references cited
`38.
`
`in this Declaration disclose all technical features in claims 1-10 of the ’906 patent,
`
`thus rendering them unpatentable.
`
`39.
`
`Based on my review of the prior art references, claims 1 and 3-10 of the
`
`’906 patent are rendered obvious by Loaiza in view Tripathi, while claim 2 of the
`
`’906 patent is rendered obvious by Loaiza in view of Tripathi in further view of
`
`Jutla.
`
`A. Loaiza
`Loaiza issued March 28, 2006 from an application filed April 25, 2002,
`
`40.
`
`which was a continuation-in-part of Application No. 09/765,680, filed on Jan. 18,
`
`2001, and further claims priority to Provisional Application No. 60/241,959, filed
`
`Unified Patents
`EX1002
`Page 19 of 59
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`

`

`on October 19, 2000. The application published with serial no. 2003/0140288 on
`
`July 24, 2003.
`
`B. Tripathi
`U.S. Patent No. 7,937,404 issued on May 3, 2011 from a PCT filed
`
`41.
`
`February 4, 2005.
`
`C. Jutla
`U.S. Patent No. 6,963,976 (“Jutla”) issued on October 3, 1995 from an
`
`42.
`
`application filed June 20, 1994.
`
`D. Duncan
`U.S. Patent Application 2003/0023933 A1 (“Duncan”) was filed on
`
`43.
`
`July 27, 2001 and was published on January 30, 2003.
`
`E. Wilcox
`U.S. Patent No. 5,664,189 (“Wilcox”) was filed on October 21, 1996
`
`44.
`
`and issued on September 2, 1997.
`
`F. General Prior Art Concepts
`The ’906 patent also discloses, but does not provide details, into several
`
`45.
`
`specific issues well known in the prior art at the time of the filing of the ’906 patent.
`
`Two issues in particular are the use of checksums and writing to a storage medium.
`
`46.
`
`Checksums were well known in the prior art at the time of the ’906
`
`patent filing. The earliest reference that I found to a checksum published in the IEEE
`
`is Fletcher (EX1015) who describes the modulus checksum specified above. The
`
`Unified Patents
`EX1002
`Page 20 of 59
`
`

`

`earliest IEEE reference that I found to a cryptographic checksum is Denning. See
`
`EX1016, pp. 247-52; EX1016, pp. 52-53, 55-56.
`
`47.
`
`The ’906 patent uses, but does not claim to have invented, storage
`
`medium. The use of storage medium, especially the types mentioned (but not
`
`detailed) in the ’906 patent, like memory cards, hard discs, magneto-optic memory
`
`devices, ROM (ROM-Read Only Memory), and optical drives. 1:36-40; 2:56-58.
`
`48.
`
`For example, with respect to optical drives in particular, optical discs
`
`(or disks) were well known in the art prior to the priority date of the ’906 patent. See,
`
`e.g., EX1011, 1:28-31 (“Peripheral storage devices include … optical storage
`
`devices.”); 2:16 (“An optical disc is an example of a storage medium…”). Further,
`
`Bish shows that the optical devices comply with a standard requiring a certain
`
`amount of disk space (measured in sectors) to be set aside for user data. EX1011,
`
`2:67-3:3. An optical disk storage “device” is often called an optical disk “drive”,
`
`since the operating system maps it like other hard drives.
`
`IX. CLAIM CONSTRUCTION
`In conducting my analyses of the asserted claims of the ’906 patent, I
`49.
`
`have applied the legal understandings I set out below regarding claim constructions
`
`consistent with being construed under the same claim construction standard as would
`
`be used in a civil action under 35 U.S.C. §282(b). 37 C.F.R. § 42.100(b) (Nov. 13,
`
`2018). I offer them only for this Inter Partes Review.
`
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`Page 21 of 59
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`

`

`50.
`
`I understand that claim terms are given their ordinary and customary
`
`meaning as would be understood by one of ordinary skill in the art in the context of
`
`the entire disclosure. An inventor may rebut that presumption by providing a
`
`definition of the term in the specification with reasonable clarity, deliberateness, and
`
`precision. In the absence of such a definition, limitations are not to be read from the
`
`specification into the claims.
`
`A. “such that a baseline reader and an enhanced reader” (claims 1,
`9, and 10)
`A PHOSITA would understand this element to be a “purpose”
`
`51.
`
`statement. That is, the claim recites a writer that has the purpose of writing data such
`
`that a reader can read the data. As such, it does not appear to be a limitation on the
`
`claim, and therefore it does not need to be in the prior art. Thus, a PHOSITA would
`
`understand that neither the baseline reader nor enhanced reader are actually claimed.
`
`What is recited is that what is written must be able to be processed by a baseline
`
`reader and an enhanced reader.
`
`52.
`
`Regardless, the specification of the ’906 patent makes it clear that the
`
`“baseline reader” and “enhanced reader” are each part of a single disclosed “means
`
`for reading,” or reading component. For example, FIG. 2a shows a “means 160 for
`
`reading the data content and a first checksum information from the storage
`
`medium…” EX1001, 4:20-23. Thus, even in FIG. 2a, the means for reading (which
`
`is a single component 160) encompasses a function of the baseline reader (that is,
`
`Unified Patents
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`Page 22 of 59
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`

`

`reading data content) and a function of an enhanced reader (that is, reading data
`
`content and checksum information). FIG. 2b, which is another embodiment of an
`
`apparatus for verifying a data content, states that the “means 160 for reading being
`
`adapted for reading a first encrypted checksum information and further comprising
`
`a means 175 for decrypting the first encrypted checksum information to obtain the
`
`first checksum information.” Further embodiments of the means 160 add too, but
`
`never subtract from, the functions available to the means for reading; that is, for
`
`example, the means 160 for reading can be “adapted for reading from optical discs”
`
`(EX1001, 4

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