UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`Unified Patents Inc.
`Petitioner
`v.
`Checksum Ventures LLC
`Patent Owner
`_________________________
`
`IPR2019-00491
`U.S. 8,301,906
`_________________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,301,906
`
`
`
`
`
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`Unified Patents Inc.
`Petitioner
`v.
`Checksum Ventures LLC
`Patent Owner
`_________________________
`
`IPR2019-00491
`U.S. 8,301,906
`_________________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,301,906
`
`
`
`
`
`
`Case No. IPR2019-00491
`U.S. Patent No. 8,301,906
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ............................................................................................... 1
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ....................................... 1
`
`A. Real Party-In-Interest ....................................................................................... 1
`
`B. Related Matters ................................................................................................. 2
`
`C. Lead and Backup Counsel ................................................................................ 2
`
`D. Service Information .......................................................................................... 3
`
`III. GROUNDS FOR STANDING......................................................................... 3
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`IV. GROUNDS FOR UNPATENTABILITY ........................................................ 3
`
`V. U.S. 8,301,906 ..................................................................................................... 6
`
`VI. THE LEVEL OF ORDINARY SKILL IN THE ART ...................................11
`
`VII. CLAIM CONSTRUCTION ...........................................................................11
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`A. “a provider for providing checksum information based on a data content;
`
`and” (Claim 1).......................................................................................................11
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`B. “such that a baseline reader and an enhanced reader can read the data
`
`content, the enhanced reader can read and process the control information and
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`the checksum information and the baseline reader ignores, skips or does not read
`
`the checksum information” (Claims 1, 9, and 10) ................................................12
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`C. Other Claim Terms .........................................................................................16
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`VIII. GROUND 1: LOAIZA IN VIEW OF TRIPATHI RENDERS CLAIMS 1, 3-
`
`4, AND 6-10 UNPATENTABLE UNDER 35 U.S.C. § 103 ..................................16
`
`A. Overview of Loaiza ........................................................................................16
`
`B. Overview of Tripathi ......................................................................................18
`
`C. Rationales to Combine Loaiza and Tripathi; Reasonable Expectation of
`
`Success ..................................................................................................................20
`
`D. Independent Claim 1 is Obvious ....................................................................22
`
`(a) An apparatus for writing checksum information on a data content on a
`
`storage medium, comprising: ............................................................................22
`
`(b)
`
`a provider for providing checksum information based on a data content;
`
`and 23
`
`(c)
`
`a writer for writing the data content, the checksum information and
`
`control information on a physical or logical location of the checksum
`
`information on the storage medium, ..................................................................26
`
`(d)
`
`such that a baseline reader and an enhanced reader can read the data
`
`content, ...............................................................................................................35
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`(e)
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`the enhanced reader can read and process the control information and the
`
`checksum information; ......................................................................................37
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`(f) the baseline reader ignores, skips or does not read the checksum
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`information.........................................................................................................38
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`E. Claim 3 is Obvious over Loaiza in view of Tripathi ......................................39
`
`F. Claim 4 is Obvious over Loaiza in view of Tripathi ......................................42
`
`G. Claim 6 is Obvious over Loaiza in view of Tripathi ......................................44
`
`H. Claim 7 is Obvious over Loaiza in view of Tripathi ......................................46
`
`I. Claim 8 is Obvious over Loaiza in view of Tripathi ......................................46
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`J. Claim 9 is Obvious over Loaiza in view of Tripathi ......................................48
`
`K. Claim 10 is Obvious over Loaiza in view of Tripathi ....................................50
`
`IX. GROUND 2: LOAIZA IN VIEW OF TRIPATHI, FURTHER IN VIEW OF
`
`JUTLA RENDERS CLAIM 2 OF THE ’906 PATENT UNPATENTABLE
`
`UNDER 35 U.S.C. § 103 .........................................................................................53
`
`A. Overview of Jutla............................................................................................53
`
`B. Rationales to Combine Loaiza with Tripathi and Jutla; Reasonable
`
`Expectation of Success .........................................................................................55
`
`C. Dependent Claim 2 is Obvious .......................................................................56
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`X. GROUND 3: LOAIZA IN VIEW OF TRIPATHI IN FURTHER VIEW OF
`
`DUNCAN AND WILCOX RENDERS CLAIM 5 UNPATENTABLE UNDER 35
`
`U.S.C. § 103 .............................................................................................................59
`
`A. Overview of Duncan and Wilcox ...................................................................59
`
`B. Rationales to Combine Loaiza in view of Tripathi with Duncan and Wilcox;
`
`Reasonable Expectation of Success ......................................................................60
`
`C. Dependent Claim 5 is Obvious .......................................................................60
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`XI. CONCLUSION ..............................................................................................63
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`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
`
`
`vi
`
`Exhibit
`EX1001
`
`EX1002
`EX1003
`EX1004
`
`EX1005
`EX1006
`EX1007
`EX1008
`EX1009
`EX1010
`EX1011
`EX1012
`EX1013
`EX1014
`
`EX1015
`
`EX1016
`
`EX1017
`
`EX1018
`
`EX1019
`EX1020
`EX1021
`
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`Case No. IPR2019-00491
`U.S. Patent No. 8,301,906
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`I.
`
`INTRODUCTION
`Unified Patents Inc. (“Unified” or “Petitioner”) requests inter partes review
`
`of claims 1-10 of U.S. Patent No. 8,301,906 B2 (EX1001) (“the ’906 patent”). The
`
`’906 patent, assigned to Checksum Ventures LLC, is directed to an apparatus for
`
`writing checksum information on a data content on a storage medium. As
`
`described below, such apparatus for writing checksum information on a data
`
`content on a storage medium were well known before the purported priority date of
`
`the ’906 patent. This challenge is based on prior art not reviewed during
`
`prosecution of the ’906 patent. The prior art discloses all of the features alleged as
`
`novel by the applicant for the ’906 patent and renders the claims obvious.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`A. Real Party-In-Interest
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Unified Patents
`
`Inc. is the real party-in-interest, and further certifies that no other party exercised
`
`control or could have exercised control over Unified’s participation in this
`
`proceeding, the filing of this petition, or the conduct of any ensuing trial. In view
`
`of Worlds Inc. v. Bungie, Inc., No. 2017-1481, 2018 WL 4262564 (Fed. Cir. Sept.
`
`7, 2018), Unified has submitted voluntary discovery in support of its certification.
`
`See EX1005 (Petitioner’s Voluntary Interrogatory Responses).
`
`
`
`1
`
`
`
`B. Related Matters
`The ’906 patent is asserted in CheckSum Ventures, LLC v. Dell Inc., Case
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`No. 1:18-cv-06321 (N.D. Ill, 2018), filed on September 17, 2018.
`
`The ’906 patent was asserted in the following cases:
`
`• CheckSum Ventures LLC v. Backblaze, Inc., Case No. 1-18-cv-00759
`(N.D. Ill, 2018), terminated on July 30, 2018.
`
`• CheckSum Ventures LLC, CertainSafe, Inc., Case No. 1-18-cv-00760
`(N.D. Ill, 2018), terminated on June 21, 2018.
`
`• CheckSum Ventures LLC v. Jungle Disk, LLC, Case No. 1-18-cv-
`00761 (N.D. Ill, 2018), terminated on September 4, 2018.
`
`• CheckSum Ventures LLC v. SpiderOak, Inc., Case No. 1-18-cv-02810
`(N.D. Ill, 2018), terminated on September 24, 2018.
`
`
`C. Lead and Backup Counsel
`Petitioner identifies the following lead and backup counsel:
`
`Lead Counsel
`P. Andrew Riley (Reg. No. 66,290)
`Mei & Mark LLP
`818 18th Street NW
`Suite 410
`Washington, DC 20006-3506
`Telephone: 888-860-5678 x 721
`Email: ariley@meimark.com
`
`Backup Counsel
`Roshan S. Mansinghani (Reg. No.
`62,429)
`Jonathan Stroud (Reg. No. 72,518)
`Unified Patents Inc.
`1875 Connecticut Ave. NW, Floor 10
`Washington, DC 20009
`Telephone: 214-945-0200
`Email: roshan@unifiedpatents.com
`Email: jbowser@unifiedpatents.com
`
`Robert A. Hall (Reg. No. 66,235)
`Lei Mei (Reg. No. 56,913)
`Mei & Mark LLP
`818 18th Street NW
`
`
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`Suite 410
`Washington, DC 20006-3506
`Telephone: 888-860-5678
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`
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`Service Information
`D.
`Unified consents to electronic service via email at the following addresses:
`
`ariley@meimark.com, rhall@meimark.com, jonathan@unifiedpatents.com, and
`
`roshan@unifiedpatents.com.
`
`III. GROUNDS FOR STANDING
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ’906 patent is
`
`available for IPR and that Petitioner is not barred or estopped from requesting this
`
`review.
`
`IV. GROUNDS FOR UNPATENTABILITY
`Petitioner respectfully requests inter partes review under 35 U.S.C. § 311 of
`
`claims 1-10 of the ’906 patent and cancellation of those claims as unpatentable
`
`under 35 U.S.C. § 103, in view of the following grounds:
`
`
`
`References
`
`Claims
`
`U.S. Patent No. 7,020,835 (“Loaiza”) – EX1006
`
`1, 3-4, 6-10
`
`U.S. Patent No. 7,937,404 (“Tripathi”) – EX1007
`
`Loaiza – EX1006
`
`2
`
`3
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`Ground
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`1
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`2
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`Tripathi – EX1007
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`U.S. Patent No. 6,963,976 (“Jutla”) – EX1008
`
`3
`
`Loaiza – EX1006
`
`Tripathi – EX1007
`
`5
`
`U.S. Patent App. 2003/0023933 (“Duncan”) – EX1019
`
`U.S. Patent No. 5,664,189 (“Wilcox”) – EX1020
`
`
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`Loazia was filed on April 25, 2002, and claims priority to and is a
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`continuation-in-part application of U.S. 09/765,680, filed on January 18, 2001,
`
`which claims priority to U.S. 60/241,959 filed on October 19, 2000. EX1006 at
`
`1:7-15. On July 24, 2003, the Patent Office published the application that lead to
`
`Loazia. Id. at 1. Therefore, Loazia qualifies as prior art under 35 U.S.C. § 102(b)
`
`because it was a printed publication before the earliest possible priority date of
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`May 10, 2006 for the ’906 patent.
`
`Tripathi was filed as a PCT application on February 4, 2005 and was
`
`published as WO2006/082592 on August 10, 2006. EX1007 at 1. Thus, Tripathi
`
`qualifies as prior art under pre-AIA 35 U.S.C. § 102(e).
`
`Jutla was filed on November 3, 2000 and issued on November 8, 2005, thus
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`predating the earliest possible priority date of May 10, 2006 for the ’906 patent.
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`EX1008 at 1. Julta, therefore, qualifies as prior art under 35 U.S.C. §§ 102(b) and
`
`102(e).
`
`Duncan was filed on July 27, 2001 and was published on January 30, 2003,
`
`which predates the earliest possible priority date of May 10, 2006 for the ’906
`
`patent. EX1019 at 1. Thus, Duncan qualifies as prior art 35 U.S.C. § 102(b).
`
`Wilcox was filed on October 21, 1996 and issued on September 2, 1997,
`
`which predates the earliest possible priority date of May 10, 2006 for the ’906
`
`patent. EX1020 at 1. Thus, Wilcox qualifies as prior art 35 U.S.C. § 102(b).
`
`These references were not considered during the original prosecution of the
`
`’906 patent. See EX1001 at cover page (item 56, “References Cited”); see also,
`
`generally, EX1004. Accordingly, denial of institution under 35 U.S.C. § 325(d) is
`
`not warranted. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-
`
`01586, Paper 8 at 17-18 (PTAB Dec. 15, 2017) (informative). Moreover, none of
`
`seven discretionary factors set forth in General Plastics weigh in favor of denying
`
`institution. General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-
`
`01357, Paper 19 at 15-16 (PTAB Sept. 6, 2017) (Sec. II.B.4.i precedential). As
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`shown below, at least one of the challenged claims is unpatentable and institution
`
`is warranted. 35 U.S.C. § 314.
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`V. U.S. 8,301,906
`The ’906 patent is a continuation of Application No. PCT/EP2007/003658,
`
`filed on April 25, 2007, and claims priority to Provisional Application No.
`
`60/746,964, filed on May 10, 2006, and Provisional Application No. 60/747,363,
`
`filed on May 16, 2006.1
`
`In a non-final rejection on July 13, 2010, each of the application claims 1-20
`
`were rejected under 35 USC § 102 as being anticipated by U.S. Pub. No.
`
`2008011498 to Hars; claims 10 and 19 were rejected under 35 USC § 101 as
`
`disclosing a “computer program that is not embodied in tangible form or described
`
`as statutory subject matter.” See EX1004 at 197-98. In an amendment dated
`
`October 13, 2010, claims 10 and 19 were amended to overcome the rejection under
`
`35 USC § 101, and the applicant argued that Hars was not prior art; no substantive
`
`arguments were made. Id. at 141. A second non-final rejection dated December 21,
`
`2010 did not maintain the rejection under 35 USC § 101, but rejected application
`
`claims 1-20 under a new ground: 35 U.S.C. § 102(a) as being anticipated by U.S.
`
`Pub. No. 20050246392 to Ishizaka. Id. at 120-21.
`
`
`1 Petitioner takes no position here as to the validity of the priority claim, as each
`
`asserted reference is prior art under at least 35 U.S.C. § 102(e), even assuming the
`
`claims are entitled to the earliest possible priority date of May 10, 2006.
`
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`In an amendment dated April 11, 2011, various amendments were made
`
`attempting to overcome the rejections, including ones showing that control
`
`information comprised a physical or logical location of a checksum. EX1004 at 95,
`
`101 (“The most important amendment in the independent claims is that, in
`
`addition to the data content and the checksum information, control information on
`
`the physical or logical location of the checksum information is written and used for
`
`verifying the checksum.”).
`
`The claims were rejected in a final rejection dated June 9, 2011, after which
`
`the applicant made several arguments in an after-final response dated August 9,
`
`2011, and from which an appeal requested. Id. at 85-90; 69-80. Rather than take
`
`the case to appeal, the Examiner reopened prosecution, dropped the grounds of
`
`rejection, and indicated that application claims 1-10 (to an apparatus for writing)
`
`were allowed; the Examiner maintained the rejection of application claims 11-20
`
`(to an apparatus for verifying). EX1004 at 38. The applicant canceled application
`
`claims 11-20 and went to issuance with application claims 1-10. EX1004 at 32
`
`(indicating only that rejected application claims 11-20 are cancelled “in the interest
`
`of compact prosecution”).
`
`The ’906 patent thus issued with and includes three independent claims –
`
`claims 1, 9, and 10. Claim 1 is generally directed to an apparatus for providing a
`
`checksum used in validating the integrity of data files and writing that checksum,
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`the data associated with that checksum, and control information about the
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`checksum to a storage medium, such that a “baseline reader” can read the data files
`
`and an “enhanced reader” can read the checksum and control information. See
`
`EX1001, Abstract. (Relevantly, a checksum is a small datum derived from a larger
`
`block of digital data that helps to efficiently detect errors that may have been
`
`introduced during its transmission or storage.) See EX1002 at ¶34.
`
`Where and how the checksum itself is saved as a data file to a storage
`
`medium is central to the ’906 patent. See EX1002 at ¶37. For example, the ’906
`
`patent discloses the data structure of an optical disk comprising a data section, a
`
`checksum section, and a control section. EX1001, 4:60-67. The ’906 patent
`
`discloses that data is written to the data section and checksums are written to the
`
`checksum section. EX1001, 4:60-64. The control section has information written to
`
`it regarding the association of the data information and the checksum data having
`
`information on the association of data information and information on checksum
`
`data or encrypted checksum data; that is, control information. EX1001, 4:64-67.
`
`The control section could include a chunk table which provides the means by
`
`which the data and the checksum are correlated. EX1001, 5:1-7. Thus, the data, the
`
`checksum, and the control information are all written to a particular portion of the
`
`optical disc. See EX1001, 4:59-67; Fig. 3.
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`EX1001, Fig. 3. The ’906 patent discloses that the “user data area” can be used to
`
`store the checksums. EX1001, 2:61-63; 11:17-22 (“the writer is adapted for writing
`
`on an optical disc, the optical disc having a user data area being adapted for storing
`
`the data content, wherein the writer is adapted for writing the control information
`
`on the physical or logical location of the checksum information or integrity
`
`information into the user data area.”).
`
`Another 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
`
`when appropriate. See EX1001, 3:57-60; EX1002 at ¶34.
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`Claims 9 and 10 are a method and computer program claims, respectively,
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`for implementing claim 1. EX1001, 12:8-34 (claims 9 and 10); EX1002 at ¶¶34,
`
`89, 90. The ’906 patent discloses that the method therein described “can be
`
`implemented in hardware or in software.” EX1001, 10:40-41. Further, the ’906
`
`patent recites:
`
`the present invention is, therefore, a computer program product with a
`program code stored on a machine-readable carrier, the program code
`being operated for performing the inventive methods when the
`computer program product runs on a computer. In other words, the
`inventive methods are, therefore, a computer program having a
`program code for performing at least one of the inventive methods
`when the computer program runs on a computer.
`
`EX1001, 10:46-53. Thus, claims 1, 9, and 10 are different implementations of the
`
`same inventive methods, and claims 9 and 10 are obvious for the same reasons as
`
`claim 1, as specifically discussed herein.
`
`
`
`The applicant considered writing the physical or logical location of the
`
`checksum information on the storage medium to be a key inventive concept of the
`
`’906 patent, and relied on that feature to overcome prior art rejections. See
`
`EX1004, at 56; 76-77 (“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
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`the physical or logical location of the checksum information on the storage
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`medium.”); see also id. at 101 (“The most important amendment in the
`
`independent claims is that, in addition to the data content and the checksum
`
`information, control information on the physical or logical location of the
`
`checksum information is written and used for verifying the checksum.”).
`
`VI. THE LEVEL OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art (“PHOSITA”) for the ’906 patent would
`
`have had a Bachelor’s Degree in Computer Science, Computer Engineering, or a
`
`related subject, or one or more years of experience working with computer data
`
`storage devices. EX1002 at ¶¶31-32.
`
`VII. CLAIM CONSTRUCTION
`The claims of the ’906 patent challenged in this petition are 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).
`
`A.
`
`“a provider for providing checksum information based on a data
`content; and” (Claim 1)
`This claim element should be construed as having its plain and ordinary
`
`meaning, and thus requires no special construction.
`
`There is a rebuttable presumption against finding that this term is a means
`
`plus function limitation under pre-AIA 35 U.S.C. § 112, sixth paragraph, since the
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`word “means” is not in the claim. Williamson v. Citrix Online, LLC, 792 F.3d
`
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`11
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`1339, 1348 (Fed. Cir. 2015) (“[T]he failure to use the word ‘means’ also creates a
`
`rebuttable presumption—this time that § 112, para. 6 does not apply”). To the
`
`extent the Board finds this presumption has been rebutted, the specification
`
`discloses various algorithms for this software feature. See id. at 3:1-6 (“Algorithms
`
`used for building the checksums can be chosen from a number of different options,
`
`including but not restricted to conventional algorithms as, for example, SHA-1
`
`(SHA-Secure Hash Algorithm), SHA-256, MD5 (MD=Message Digest Algorithm)
`
`or custom AES-128 (AES-Advanced Encryption Standard).”).
`
`If the Board finds that this claim is a means plus function claim, the function
`
`is “providing checksum information based on a data content,” and the
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`corresponding structure is the SHA-1 (SHA-Secure Hash Algorithm), the SHA-
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`256, the MD5 (MD=Message Digest Algorithm), the AES-128 (AES-Advanced
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`Encryption Standard), and equivalents thereof.
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`B.
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`“such that a baseline reader and an enhanced reader can read the
`data content, the enhanced reader can read and process the control
`information and the checksum information and the baseline reader
`ignores, skips or does not read the checksum information” (Claims
`1, 9, and 10)
`Initially, when read in the context of the broader claim, the portion of the
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`claim beginning with “such that…” indicates that “a writer for writing” must write
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`the data content, checksum information, and control information to a storage
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`medium, “such that a baseline reader and an enhanced reader can read the data
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`content, the enhanced reader can read and process the control information and the
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`checksum information and the baseline reader ignores, skips or does not read the
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`checksum information . . . .” In other words, the claim recites a writer that writes
`
`data for the purpose of (i.e., to intend the result of or how to use what was written)
`
`a baseline reader and an enhanced reader each being able to read the data in
`
`different manners. This limitation does not further specify how or what the writer
`
`writes aside from what the claim previously recited. As it recites a purpose, this
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`element does not limit the claim, as such purposes statements are not given weight
`
`in a claim. See, e.g., Minton v. National Association of Securities Dealers, Inc.,
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`336 F.3d 1373, 1381 (Fed. Cir. 2003) (claim language “not given weight when it
`
`simply expresses the intended result”); Lockheed Martin Corp. v. Space Sys./Loral,
`
`Inc., 324 F.3d 1308, 1319 (Fed. Cir. 2003) (“[A] whereby clause that merely states
`
`the result of the limitations in the claim adds nothing to the substance of the
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`claim”); Astrazeneca Lp v. Apotex Inc., 633 F.3d 1042 (Fed. Cir. 2011) (affirming
`
`invalidity where a portion of the claim language was entitled to no patentable
`
`weight, given it merely explained how to use the product).
`
`If the Board finds that the “such that” clause should be given weight, it
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`should find that this limitation requires neither a baseline nor an enhanced reader.
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`Rather, it merely requires writing the data so that a baseline reader and an
`
`enhanced reader could read it as claimed. Notably, the original claims reciting a
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`reader were cancelled during prosecution. For example, application claim 11
`
`recited, in relevant part, “a reader for reading the data content and control
`
`information from the storage medium…” EX1004, at 72. Application claim 11 and
`
`related claims were rejected and eventually cancelled. EX1004, at 32 (indicating
`
`rejected application claims 11-20 are cancelled “in the interest of compact
`
`prosecution”); 39 (showing application claims 11-20 were rejected); 72 (showing
`
`application claim 11 reads, in relevant part, “a reader for reading the data content
`
`and control information from the storage medium…”). Thus, to the extent this
`
`limitation is given any weight, it should only be construed to require that the data
`
`content, checksum information, and control information be written to a storage
`
`medium in a manner that allows a baseline reader to ignore, skip, or not read the
`
`checksum information and that allows an enhanced reader to read and process the
`
`control information and the checksum information. Neither the enhanced reader
`
`nor the baseline reader themselves are required.
`
`It should also be noted that the specification of the ’906 patent explains that
`
`the “baseline reader” and “enhanced reader” are each part of a single disclosed
`
`reading component representing different capabilities. See EX1002 at ¶¶52-54. For
`
`example, the ’906 patent, in describing Figure 2a, discloses a single component
`
`160a for reading the data content and the checksum. EX1001, 4:20-23, Fig. 2a.
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`
`
`EX1001, Fig. 2a (showing a single means for reading). Thus, single component
`
`160 encompasses a function of the baseline reader (that is, reading data content)
`
`and a function of an enhanced reader (that is, reading checksum information). The
`
`specification, explaining Fig. 2b, which is another embodiment of an apparatus for
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`verifying a data content, explains that component 160 can be “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.” EX1001, 4:31-34.
`
`Further embodiments of component 160 add other functions; for example,
`
`component 160 can be “adapted for reading from optical discs” (EX1001, 4:44-
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`45), “adapted for reading control information…” (EX1001, 45-46), and “adapted
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`for reading a chunk table…” (EX1001, 4:51-53.). Thus, the ’906 patent teaches
`
`that, while the baseline reader and enhanced reader delineate certain functionality,
`
`they can be functions of a single component. EX1002 at ¶52.
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`For this reason, a baseline reader can be a subset of a reading component
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`that reads data content without reading the checksum; an enhanced reader can be
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`another subset of the same reading component that can read data content as well as
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`read and process control information and checksum information.
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`C. Other Claim Terms
`All claim terms not discussed herein are to be given their plain and ordinary
`
`meaning, as understood by one of ordinary skill in the art and consistent with the
`
`disclosure.
`
`VIII. GROUND 1: LOAIZA IN VIEW OF TRIPATHI RENDERS CLAIMS
`1, 3-4, AND 6-10 UNPATENTABLE UNDER 35 U.S.C. § 103
`Loaiza in view of Tripathi discloses, or at least renders obvious, every
`
`element of each of these claims.
`
`A. Overview of Loaiza
`Loaiza, which was published on July 24, 2003, discloses that “data
`
`corruption is a problem that can affect almost any individual and an issue that
`
`continues to plague both the computer hardware and computer software
`
`industries.” EX1006, 1:29-33. Loaiza teaches that the prior art shows that
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`checksums may be used to identify corrupt data by generating a checksum from a
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`block of data and then storing the checksum. See EX1006, 2:16-18; 2:37-39. An
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`exemplary method of Loaiza’s disclosure is shown in its figure 4B:
`
`
`
`EX1006, Fig. 4B. Figure 4B is a flow diagram that illustrates an example of a
`
`multi-level verification sequence for verifying the integrity of data that is read
`
`from nonvolatile memory. Id., 4:28-30, Fig. 4B.
`
`Through use of a lookup table, Loaiza discloses saving, to the storage
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`medium, the association of a checksum with its location on a storage medium.
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`EX1002 at ¶78. An additional step in checking for corrupt data of performing a
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`“logical check on the information within the data block” is also disclosed. See
`
`EX1006, 2:68. Loaiza indicates that the “logical step” can “dramatically affect the
`
`efficiency and response time” of an application using the data block. See EX1006,
`
`3:4-6. Thus, Loaiza discloses that “there is a need for a mechanism for reducing
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`the overhead that is typically associated with storing and retrieving data from
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`disk.” EX1006, 3:16-18.
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`Loaiza is relevant art to the ’906 patent, as it is in the data or file
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`management field. EX1002 at ¶64.
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`A PHOSITA would have understood that one objective of Loaiza is to
`
`reduce the time required to access a file on the storage medium while still checking
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`for corrupt data. See EX1002 at ¶58.
`
`B. Overview of Tripathi
`Tripathi, which was published as WO2006/082592 on August 10, 2006,
`
`discloses that “disc access times,” and specifically “disc input/output operations,”
`
`are a bottleneck in the overall performance of computers. See EX1007, 1:13-15.
`
`Two techniques disclosed by Tripathi for mitigating this issue are caching and
`
`prefetching. See EX1007, 1:15-16. Tripathi discloses an improvement over the
`
`implementation of caching or prefetching that “mitigate some of the problems of
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`the prior art.” See EX1007, 1:2:6-14; EX1002 at ¶59. In particular, Tripathi
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`discloses storing primary data and related data separately; the location of the
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`related data is also stored so that when the primary data is read, the related data can
`
`be located and prefetched with the primary data. EX1007, 4:25-45; EX1002 at ¶59.
`
`Figure 2 shows a computer system, having a file system, according to an
`
`embodiment disclosed by Tripathi. EX1007, 3:66-67.
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`EX1007, Fig. 2.
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