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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––
`
`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`CA, Inc.,
`Patent Owner.
`
`––––––––––
`
`
`IPR2021-01319
`
`U.S. Patent No. 7,103,794
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`––––––––––
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`
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`PETITIONER’S REPLY
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`I.
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`TABLE OF CONTENTS
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`CLAIM CONSTRUCTION ............................................................................ 8
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`A.
`
`“cache memory” .................................................................................... 8
`
`1.
`
`2.
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`3.
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`4.
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`5.
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`The Challenged Claims do not require “cache memory”
`to include volatile memory/main memory ................................10
`
`Patent Owner does not identify evidence of lexicography
`or disavowal ..............................................................................12
`
`Prosecution history confirms that the inventors did not
`intend to disavow the ordinary scope of “memory” .................14
`
`Patent Owner seeks to import limitations into the claims ........15
`
`Extrinsic evidence confirms that the term “memory” is
`not limited to main memory ......................................................17
`
`B.
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`“wherein said step of maintaining is performed independently
`of a file system for said mass storage” ................................................21
`
`II.
`
`THE CHALLENGED CLAIMS ARE OBVIOUS .......................................23
`
`A. Ground 1—Independent Claims 1 and 9 .............................................23
`
`1.
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`Indefiniteness of claims 1 and 9................................................23
`
`2. Medin teaches maintaining network objects in “cache
`memory . . . including mass storage” ........................................24
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`3.
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`4.
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`The combination of Medin and Seltzer also teaches
`maintaining network objects in volatile memory .....................25
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`It would have been obvious to combine Medin and
`Seltzer ........................................................................................26
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`Dependent Claims 3-8, 11-16..............................................................30
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`Independent Claim 17 .........................................................................31
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`-2-
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`B.
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`C.
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`1.
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`2.
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`The combination of Medin and Markatos teaches
`maintaining network objects in volatile memory .....................31
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`The combination of Medin and Markatos teaches
`maintaining network objects in a cache memory
`independently of a file system for the mass storage .................31
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`III. CONCLUSION ..............................................................................................33
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`EXHIBIT LIST
`
`
`1003
`1004
`1005
`
`1006
`
`1007
`1008
`
`1009
`
`1010
`
`1011
`1012
`
`1013
`
`Exhibit No. Description
`U.S. Patent No. 7,103,794 to Malcolm (“the ’794 patent”)
`1001
`Prosecution File History for the ’794 patent (“Prosecution
`1002
`History”)
`Declaration of Henry H. Houh
`U.S. Patent No. 6,370,571 to Medin (“Medin”)
`Margo Seltzer, An Implementation of a Log-Structured File
`System for UNIX, Proceedings of the 1993 Winter USENIX (Jan.
`25-29, 1993) (“Seltzer”)
`Evangelos P. Markatos, Main memory caching of Web
`document, Computer Networks and ISDN Systems, vol. 28,
`issues 7-11, pp. 893-905 (May 1996) (“Markatos”)
`U.S. Patent No. 6,167,438 to Yates, et al. (“Yates”)
`S. Ghandeharizadeh, D. Ierardi, D. H. Kim, and R.
`Zimmermann, Placement of Data in Multi-Zone Disk Drives,
`Second International Baltic Workshop on Databases and
`Information Systems, Tallinn, Estonia, 12-14 June 1996
`(“Ghandeharizadeh”)
`Excerpts from IBM Dictionary of Computing (McGraw-Hill, 10th
`Ed. 1993) (“IBM Dictionary”)
`Alan Jay Smith, Cache memories, ACM Computing Surveys,
`Vol. 14, No. 3, pp. 473-530, September 1982 (“Smith”)
`U.S. Patent No. 6,065,058 to Hailpern, et al. (“Hailpern”)
`A. Luotonen and K. Altis, World-Wide Web Proxies, Computer
`Networks and ISDN Systems, Vol. 27, No. 2, pp. 147-154
`(November 1994) (“Luotonen”)
`D. Neal, The Harvest Object Cache in New Zealand, Computer
`Networks and ISDN Systems, vol. 28, pp. 1415-1430 (May
`1996) (“Neal”)
`Anawat Chankhunthod, Peter B. Danzig, Chuck Neerdaels,
`Michael F. Schwartz, and Kurt J. Worrell, A Hierarchical
`Internet Object Cache, Proceedings of USENIX 1996 Annual
`Technical Conference, pp. 153–164 (January 1996)
`(“Chankhunthod”)
`T. Johnson and D. Shasha, 2Q: A Low Overhead High
`Performance Buffer Management Replacement Algorithm,
`Proceedings of the 20th International Conference on Very Large
`
`1014
`
`1015
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`-4-
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`
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`1016
`
`1017
`
`1018
`
`Exhibit No. Description
`Data Bases, (VLDB’94), Santiago de Chile, Chile (September
`12-15, 1994) (“Johnson”)
`Robert Van Renesse, Andrew S. Tanenbaum, and Annita
`Wilschut, The Design of a High-Performance File Server,
`Proceedings of the 9th International Conference on Distributed
`Computer Systems, Newport Beach, CA, pp. 22-27 (June 1989)
`(“Bullet”)
`Marshall K. McKusick, William N. Joy, Samuel J. Leffler, and
`Robert S. Fabry, A Fast File System for UNIX, ACM
`Transactions on Computer Systems, Vol. 2, No. 3, pp. 181-197
`(August 1984) (“McKusick”)
`Mendel Rosenblum and John K. Ousterhout, The Design and
`Implementation of a Log-Structured File System, ACM
`Transactions on Computer Systems, Vol. 10, No. 1, pp. 26-52
`(February 1992)
`James O. Dyal, Michael K. Draughn, Performance Aspects of
`Disk Space Management, Proceedings of the 13th Conference on
`Winter Simulation, Vol. 1, pp. 69–77 (January 1981) (“Dyal”)
`U.S. Patent No. 6,023,659 to Seilhamer, et al. (“Seilhamer”)
`U.S. Patent No. 5,864,852 to Luotonen (“Luotonen ’852”)
`U.S. Patent No. 5,944,780 to Chase, et al. (“Chase”)
` U.S. Patent No. 5,255,211 to Redmond, et al. (“Redmond”)
`Excerpts from Peter Dyson, Dictionary of Networking (SYBEX,
`2nd Ed. 1995) (“Dictionary of Networking”)
`Excerpts from Computer Dictionary (Microsoft Press, 3rd Ed.
`1997) (“Microsoft Dictionary”)
`Silvano Maffeis, Design and Implementation of a Configurable
`Mixed-Media File System, ACM SIGOPS Operating Systems
`Review (Oct. 1994) (“Maffeis”)
`D. Raggett, A review of the HTML + document format,
`Computer Networks and ISDN Systems, vol. 27, No. 2, pp. 35-
`145, November 1994 (“Raggett”)
` U.S. Patent No. 5,758,165 to Shuff, et al. (“Shuff”)
` U.S. Patent No. 5,819,251 to Kremer, et al. (“Kremer”)
` Excerpt from Brad Hansen, The Dictionary of Multimedia
`Terms & Acronyms (Franklin, Beedle & Associates, 1997)
`(“Multimedia Dictionary”)
`U.S. Patent No. 5,852,717 to Bhide, et al. (“Bhide”)
`
`1019
`
`1020
`1021
`1022
`1023
`1024
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`1025
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`1026
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`1027
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`1028
`1029
`1030
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`1031
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`-5-
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`1038
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`1039
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`1040
`1041
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`1042
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`1043
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`1044
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`Exhibit No. Description
`Declaration of Margo Seltzer (“Seltzer Declaration”)
`1032
`Declaration of Shahram Ghandeharizadeh
`1033
`Declaration of Gordon Macpherson (“Decl. Macpherson I”)
`1034
`Declaration of Sylvia Hall-Ellis, Ph.D. (“Hall-Ellis Declaration”)
`1035
`Transcript of Board Conference Call on Nov. 22, 2021
`1036
`Order, SEVEN Networks, LLC v. Apple, Inc., Case No. 2:19-cv-
`1037
`115 (E.D. Tex. Sept. 22, 2020)
`Memorandum Order, Arbor Global Strategies LLC v. Samsung
`Elecs. Co., Ltd., Case No. 2:19-cv-333 (E.D. Tex. Jan. 7, 2021)
`Petition for Writ of Mandamus, In re: Netflix, Inc., Case No. 22-
`110 (Fed. Cir. Nov. 1, 2021)
`Calendar of Judge Rodney Gilstrap for April 18, 2022
`LexMachina, Federal District Court Patent Case Summary
`(2017-2022) for Judge Rodney Gilstrap
`Second Amended Docket Control Order, CA, Inc., et al. v.
`Netflix, Inc., Case No. 2:21-cv-80 (E.D. Tex. Nov. 23, 2021)
`1600 PTAB & Beyond, “How reliable are trial dates relied on by
`the PTAB in the Fintiv analysis?”, Andrew T. Dufresne, et al.,
`Oct. 29, 2021 (https://www.1600ptab.com/2021/10/how-reliable-
`are-trial-dates-relied-on-by-the-ptab-in-the-fintiv-analysis/)
`The New York Times, Texas Coronavirus Map and Case Count,
`January 9, 2022
`(https://www.nytimes.com/interactive/2021/us/texas-covid-
`cases.html)
`Defendant’s Stipulation Regarding Invalidity Contentions, CA,
`Inc., et al. v. Netflix, Inc., Case No. 2:21-cv-80 (E.D. Tex. Jan.
`10, 2022)
`Declaration of Jonathan DeFosse in Support of Motion for Pro
`Hac Vice Admission
`Excerpt from Brad Hansen, The Dictionary of Multimedia Terms
`& Acronyms (Franklin, Beedle & Associates, 1997)
`(“Multimedia Dictionary II”)
`Excerpt from A Dictionary of Computing (4th Ed., Oxford
`University Press, 1997) (“Dictionary of Computing”)
`Excerpt from McGraw-Hill Dictionary of Scientific and
`Technical Terms (5th Ed., McGraw-Hill, 1994) (“McGraw-Hill”)
`Excerpt from Newton’s Telecom Dictionary (11th Ed., Flatiron
`Publishing, 1996) (“Newton’s”)
`
`1045
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`1046
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`1047
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`1048
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`1049
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`1050
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`Exhibit No. Description
`Infringement Contentions for U.S. Patent No. 7,103,794 in CA,
`1051
`Inc., et al. v. Netflix, Inc., Case No. 2:21-cv-80 (E.D. Tex. Nov.
`23, 2021) (“CA Infringement Contentions”)
`Transcript of Deposition of Dr. Karthikeyan Sundaresan (July 8,
`2022) (“Sundaresan Dep.”)
`Reply Declaration of Henry H. Houh
`U.S. Patent No. 6,038,601 to Lambert, et al. (“Lambert”)
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`
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`1053
`1054
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`1052
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`The Patent Owner Response (“POR”) fails to rebut the evidence of invalidity
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`set forth in the Petition.
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`I.
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`CLAIM CONSTRUCTION
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`Patent Owner does not formally propose any claim constructions. See POR
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`21-22. But Patent Owner unmistakably raises arguments that rest on implicit claim
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`construction positions. Those implicit constructions should be rejected.
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`A.
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`“cache memory”
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`Every Challenged Claim requires “maintaining said network objects in a
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`cache memory in a cache engine, . . . said cache memory including mass
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`storage.” See Ex. 1001 (’794 patent), independent claims 1, 9, 17.
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`While Patent Owner does not propose any formal construction for “cache
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`memory,” Patent Owner argues that the “cache memory” must include a volatile
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`memory component that acts as main memory. POR 35-38. For example, Patent
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`Owner argues that “the ’794 patent uses the term ‘cache memory’ to refer to a
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`cache with volatile memory, such as RAM.” POR 36; see also id. at 9 (“the cache
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`comprises both main memory (e.g., RAM) and mass storage (e.g., disk drives)”).
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`Patent Owner’s expert—Dr. Sundaresan—similarly opines that the “cache
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`memory” must include volatile memory that is “the CPU’s main memory.” Ex.
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`1052, 76:16-77:9; see also id., 75:18-24 (“cache memory” includes “main
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`memory”), 76:16-78:25 (same), 90:7-20 (same); Ex. 2018, ¶¶59-60. According to
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`Dr. Sundaresan, this “main memory” component of the “cache memory” must be
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`the memory that “sits closest to the CPU.” Ex. 1052, 89:4-90:3; see also id., 159:8-
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`160:2.
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`Patent Owner thus seeks to implicitly construe the Challenged Claims to
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`inject the following requirement:
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`[b] maintaining said network objects in a cache memory
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`in a cache engine, . . . said cache memory including mass
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`storage and a volatile memory acting as a main
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`memory;
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`Dr. Sundaresan confirmed that his opinions are based on this construction:
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`Q. As I understand your opinion, you have construed
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`the maintaining step to say, “said cache memory
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`including mass storage and main memory”; is that
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`fair?
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`MR. YOUNG: Objection to form.
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`A. Yes.
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`Ex. 1052, 85:25-86:6 (emphasis added); see also id., 85:2-6, 115:16-20, 119:3-7,
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`145:5-16.
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`This implicit construction of “cache memory” forms the basis for multiple
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`arguments in the POR. For example, Patent Owner argues that Medin does not
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`teach “maintaining said network objects in a cache memory” because Medin
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`teaches caching network objects only in nonvolatile memory (e.g., on disk) and not
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`in main memory (e.g., in RAM). POR 35, 38-42, 49.
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`Patent Owner’s implicit construction should be rejected. The intrinsic and
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`extrinsic evidence confirms that “cache memory” is not limited to any particular
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`type of memory, but instead encompasses any type of memory used to store
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`network objects.
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`1.
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`The Challenged Claims do not require “cache memory” to
`include volatile memory/main memory
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`Patent Owner largely ignores the language of the claims themselves. See
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`POR 35-38. Indeed, Patent Owner begins and ends its analysis “[o]utside the
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`Challenged Claims,” focusing first on examples of “memory” from the
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`specification before shifting to extrinsic evidence. See id. Such an approach is
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`legally improper. E.g., Power Integrations, Inc. v. Fairchild Semiconductor Int’l,
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`Inc., 711 F.3d 1348, 1360 (Fed. Cir. 2013) (“Claim construction begins with the
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`language of the claim.”).
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`Patent Owner’s failure to analyze the language of the Challenged Claims
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`was no oversight. None of the Challenged Claims states or implies that “cache
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`memory” must include main memory or volatile memory. Instead, every
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`Challenged Claim expressly defines “cache memory” as “including mass storage,”
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`which the parties agree is a form of nonvolatile memory. Ex. 1052, 78:8-14, 80:13-
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`19. As Dr. Houh explains, this language is consistent with the ordinary meaning of
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`“memory,” which a POSITA would have understood to refer to a device that stores
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`data, including mass storage devices. Ex. 1053, ¶7. While “cache memory” may
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`also include other types of memory, such as volatile memory, the claims do not
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`require those additional components. Ex. 1053, ¶8; see also Hewlett–Packard Co.
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`v. Repeat–O–Type Stencil Mfg. Corp., Inc., 123 F.3d 1445, 1451, 43 USPQ2d
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`1650, 1655 (Fed. Cir.1997) (term “including” permits the inclusion of unnamed
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`components).
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`To the extent Patent Owner contends that the word “memory” within the
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`term “cache memory” itself refers to main memory, the language of the Challenged
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`Claims likewise refutes any such assertion.1 In particular, the claims require “cache
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`memory including mass storage.” POR 35-56; see also Ex. 1052, 78:15-20. As Dr.
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`Sundaresan admitted, main memory cannot “include” mass storage:
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`1 Patent Owner’s precise argument is ambiguous. At times, Patent Owner argues
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`that “cache memory” must include mass storage and main memory/volatile
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`memory. POR 35 (arguing that cache memory must have “both” mass storage and
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`volatile memory). At other times, Patent Owner argues that “memory” refers only
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`to main memory/volatile memory. Id. (arguing that “memory” refers “exclusively”
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`to volatile memory). In any event, both arguments fail. The claims do not state that
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`“cache memory” must include volatile memory/main memory. And “memory”
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`cannot itself mean volatile memory/main memory because “cache memory” must
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`“include” mass storage.
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`Q. You would agree with me that a main memory would
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`not include mass storage, right?
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`A. Yes. Main memory is different than mass storage.
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`Ex. 1052, 143:13-16; see also id., 144:21-145:4; Ex. 1053, ¶8.
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`2.
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`Patent Owner does not identify evidence of lexicography or
`disavowal
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`Patent Owner argues that “cache memory” must be limited to require
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`specific types of memory because “the ’794 patent uses the term ‘memory’
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`exclusively to refer to volatile memory, such as RAM.” POR 35; see also id. at 9.
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`Patent Owner’s argument is legally and factually deficient.
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`Patent Owner makes no attempt to satisfy the legal requirement governing
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`when the specification can be used to narrow a term such as “memory” to refer to
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`only certain types of memory. As the Federal Circuit has cautioned, “[t]here is a
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`heavy presumption that claim terms carry their accustomed meaning in the relevant
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`community at the relevant time.” Azure Networks, LLC v. CSR PLC, 771 F.3d
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`1336, 1347 (Fed. Cir. 2014). “Departure from the ordinary and customary
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`meaning is permissible only when the patentee has acted as his own lexicographer
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`or disavowed claim scope in the specification or during the prosecution
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`history.” Id. at 1348.
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`Patent Owner does not (and cannot) argue that the patentees acted as
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`lexicographers to define “cache memory” as requiring main memory/volatile
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`memory. “To act as a lexicographer, a patentee must clearly set forth a definition
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`of the disputed claim term and clearly express an intent to redefine the
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`term.” Luminara Worldwide, LLC v. Liown Electronics Co., 814 F.3d 1343, 1353
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`(Fed. Cir. 2016). Here, the ’794 patent provides no express definition of “cache
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`memory” (nor “memory”). See Ex. 1052, 133:10-141:24. Indeed, the term “cache
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`memory” is not used outside of the claims. See id., 225:5-19.
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`Patent Owner cites examples from the specification where RAM is referred
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`to as “memory.” POR 35-36. Patent Owner also observes that the ’794 patent uses
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`the terms “memory” and “mass storage” together, allegedly supporting an
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`inference that the inventors intended to exclude mass storage from the scope of
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`“cache memory.” See id.; see also, e.g., Ex. 1052, 137:12-20. But none of these
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`references includes a clear definition that would express an intent to define
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`“memory” (let alone “cache memory”) to exclude common types of memory
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`known to a POSITA (e.g., nonvolatile memory, fixed memory, flash memory, disk
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`memory, etc.). See Ex. 1052, 80:20-25, 82:9-83:7. More importantly, the
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`Challenged Claims expressly require that “cache memory” include mass storage,
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`thus refuting Patent Owner’s inference that using the terms “memory” and “mass
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`storage” together was intended to exclude mass storage from the scope of “cache
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`memory.”
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`Patent Owner also cannot satisfy the “exacting” standard necessary to show
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`disavowal. Akamai Techs., Inc. v. Limelight Networks, Inc., 805 F.3d 1368, 1375
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`(Fed. Cir. 2015). Patent Owner does not identify any “expressions of manifest
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`exclusion or restriction” in the ’794 patent that would disavow types of memory
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`other than volatile memory/main memory. See Epistar Corp. v. ITC , 566 F.3d
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`1321, 1335 (Fed. Cir. 2009). Patent Owner argues that the examples of “memory”
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`(not “cache memory”) in the ’794 patent are of volatile memory, but the Federal
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`Circuit has repeatedly held that such examples do not trigger disavowal. Unwired
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`Planet, LLC v. Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016) (“[I]t is not
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`enough that the only embodiments, or all of the embodiments, contain a particular
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`limitation to limit claims beyond their plain meaning.”).
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`3.
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`Prosecution history confirms that the inventors did not
`intend to disavow the ordinary scope of “memory”
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`Patent Owner’s efforts to narrow the ordinary meaning of “memory” are also
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`directly contradicted by the applicants’ statements during prosecution. Indeed,
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`the applicants expressly stated that “memory” in the claims of the ’794 patent is
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`meant to “broadly encompass” many types of memory:
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`Applicants note that the term ‘memory’ in the claims is meant to
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`broadly encompass both fixed memories such as DRAMs,
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`SRAMs, hard disks, caches, etc., as well as removable memories
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`such as floppy disks, CD-ROMs, data tapes, etc.
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`Ex. 1002 (Prosecution History), p. 482. In light of this statement, a POSITA would
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`have understood that the ’794 patent does not restrict the terms “memory”—much
`
`less “cache memory”—to require volatile memory or main memory. Ex. 1053, ¶11.
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`4.
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`Patent Owner seeks to import limitations into the claims
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`Patent Owner’s construction of “cache memory” is also wrong because
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`Patent Owner seeks to import limitations into the claims from embodiments.
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`Indeed, Patent Owner openly argues that “cache memory” should be construed to
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`require volatile memory because “every time the ’794 patent refers to cache 102, it
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`refers to the cache including both memory 103 and mass storage 104.” POR 36;
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`see also Ex. 1052, 159:8-160:2. Patent Owner’s argument fails for at least two
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`reasons.
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`First, “it is improper to read limitations from a preferred embodiment
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`described in the specification—even if it is the only embodiment—into the claims
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`absent a clear indication in the intrinsic record that the patentee intended the claims
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`to be so limited.” Liebel–Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed.
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`Cir. 2004). Here, Patent Owner offers no intrinsic evidence that the patentees
`
`intended “cache memory” to require volatile memory.
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`Second, maintaining network objects in volatile memory is an optional
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`feature of certain embodiments of the ’794 patent, not a requirement of the claimed
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`invention. For example, the ’794 patent states: “In a preferred embodiment, the
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`cache engine 100 uses the memory 103 as a cache for those network objects 114
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`maintained using the mass storage 104[.]” Ex. 1001, 4:9-14. In other embodiments,
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`“memory 103” is used for different purposes, such as to store software and other
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`types of data. See id., 3:25-29 (cache engine performs tasks “under control of
`
`software maintained in program and data memory 103.”); 12:65-13:2 (“A tree
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`structure of blocks . . . can be held in memory 103 for use.”); see also Ex. 1052,
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`147:11-15, 148:21-149:2 (not all embodiments require maintaining network
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`objects in main memory); Ex. 1053, ¶9. For example, in the embodiment shown in
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`FIG. 1, network objects 114 are maintained in mass storage 104, but there is no
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`teaching that those objects are maintained in volatile memory 103:
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`Ex. 1053), ¶9; accord Ex. 1052, 149:10-150:21.
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`5.
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`Extrinsic evidence confirms that the term “memory” is not
`limited to main memory
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`Patent Owner also points to a variety of extrinsic evidence, but none
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`supports interpreting “memory” (much less “cache memory”) as requiring volatile
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`memory/main memory.
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`a.
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`Dictionary definitions confirm that “memory” is not
`limited to main memory
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`Patent Owner cites the definition of “memory” from the Microsoft Computer
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`Dictionary. POR 37. But the Microsoft Dictionary defines “memory” as “[a]
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`device where information can be stored and retrieved. In the most general
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`sense, memory can refer to external storage such as disk drives or tape
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`drives[.]” Ex. 2020 (Microsoft Dictionary), p. 4. This definition is consistent with
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`the broad definition of “memory” that the applicants provided during prosecution.
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`Compare id. with Ex. 1002 (Prosecution History), p. 482. Patent Owner
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`nonetheless argues that a later portion of the definition states that, in “common
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`usage,” “memory” refers to “the fast semiconductor storage (RAM) directly
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`connected to the processor.” POR 37. But a POSITA would not have understood
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`that portion of the definition to abrogate the broader definition of “memory,” nor
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`the (many) examples of “memory” other than RAM that are provided in Ex. 2020.
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`Ex. 1053, ¶12.
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`Patent Owner’s narrow construction of “memory” is also rebutted by other
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`dictionaries. Ex. 1053, ¶13. For example, at the time of the application for the ’794
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`patent, the Multimedia Dictionary defined “memory” as “[t]he place where data is
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`recorded and stored, either permanently or temporarily.” Ex. 1047 (Multimedia
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`Dictionary), p. 3; see also Ex. 1048 (Dictionary of Computing), p. 3 (“A device or
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`medium that can retain information for subsequent retrieval.”); Ex. 1049 (McGraw
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`Hill), p. 3 (“Any apparatus in which data may be stored and from which the same
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`data may be retrieved.”); Ex. 1050 (Newton’s), p. 3 (“The part of a computer or
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`sophisticated phone system which stores information or instructions for use.
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`Memory comes in many variations.”).
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`All of the dictionary definitions of record thus confirm that “memory” does
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`not require main memory/volatile memory. See Ex. 1052, 56:2-61:9 (admitting
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`these dictionaries accurately define “memory”). Rather, the definitions of
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`“memory” are entirely consistent with the language of the Challenged Claims
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`stating “said cache memory including mass storage.” Ex. 1053, ¶14.
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`b.
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`Prior art references do not define “memory” as being
`limited to volatile or main memory
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`Patent Owner also argues that “memory” requires volatile memory/main
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`memory because various prior art references use the term “memory” to refer to
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`main memory. POR 36. This is a logical fallacy. Use of the term “memory” to
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`refer to a type of memory (e.g., main memory) does not support an inference that
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`the term “memory” (much less “cache memory”) excludes other types of memory
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`(e.g., nonvolatile memory). Moreover, citing random examples of “memory” in
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`other references provides no evidence of the meaning of “cache memory” in the
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`context of the ’794 patent.
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`c.
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`Petitioner did not interpret “cache memory” to
`require volatile memory
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`Patent Owner also argues that Petitioner “interprets the term ‘cache
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`memory’ to require [volatile] memory.” POR 37-38; see also id. at 42. Not so.
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`Petitioner argues that Medin teaches maintaining objects in “cache memory”
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`because Medin teaches maintaining objects in mass storage (nonvolatile
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`memory)—i.e., on disk arrays and cache storage devices. Pet. 36, 37, 42-43.
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`Patent Owner cites parts of the Petition where Petitioner explained that the
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`combination of Medin and Seltzer also teaches maintaining network objects in
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`volatile memory before those objects are written contiguously to disk. Pet. 43, 47.
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`But Petitioner never argued that the claims require such use of volatile memory.
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`Rather, Petitioner was advancing an additional reason why the combination of
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`Medin and Seltzer renders the Challenged Claims obvious. In particular, while
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`“cache memory” must include “mass storage,” the claims do not require storing
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`network objects exclusively in the mass storage. Rather, the cache memory may
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`optionally include other types of memory (such as volatile memory). Where the
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`cache memory also includes volatile memory, maintaining network objects in the
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`volatile memory satisfies “maintaining said network objects in cache memory.”
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`The combination of Medin and Seltzer thus teaches the “maintaining” step in two
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`different ways—(i), by maintaining network objects in the mass storage, and (ii),
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`by recording and retrieving network objects in volatile memory before writing
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`those objects contiguously to mass storage. Raising these alternative ways of
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`satisfying the claims in no way advanced the position that “cache memory”
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`requires volatile memory.
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`B.
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`“wherein said step of maintaining is performed independently of a
`file system for said mass storage”
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`Claim 17 requires that the “step of maintaining is performed independently
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`of a file system for said mass storage.” In the Preliminary Response, Patent Owner
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`interpreted this limitation as requiring that the “entire cache” of network objects be
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`maintained independently of a file system for the mass storage. POPR 48-49. The
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`Board rejected Patent Owner’s argument, finding that it “does not appear
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`commensurate with the plain language of claim 17, in that claim 17 does not recite
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`‘maintaining an entire cache (including both RAM and mass storage)
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`independently’ of a file system.” D.I., 16. The Board encouraged the parties to
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`address the scope of claim 17 in future briefing. Id.
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`Despite the Board’s invitation, Patent Owner does not offer any formal
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`construction for the “wherein” limitation of claim 17. Instead, Patent Owner
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`reprises the argument that the “wherein” limitation requires maintaining all cached
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`network objects—i.e., the entire cache—independently of a file system for the
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`mass storage. See POR 50-58; Ex. 1052, 218:22-219:2, 222:7-11. Dr. Sundaresan
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`thus opines that a caching system does not teach the “wherein” limitation of claim
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`17 if the system maintains any portion of the cached network objects using a file
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`system for the mass storage. Ex. 1052, 196:23-198:24, 218:22-219:2, 222:7-11.
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`For example, Patent Owner argues that Markatos (Ex. 1006) does not teach the
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`“wherein” limitation because Markatos only maintains 60-90% of network objects
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`independently of the file system for mass storage. Because 10-40% of the network
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`objects are maintained in mass storage, Patent Owner argues that Markatos fails to
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`teach the “wherein” limitation. POR 56-58.
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`As the Board has already found, Patent Owner’s interpretation of the
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`“wherein” limitation is not commensurate with the plain language of the claim.
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`Patent Owner construes claim 17 as “maintaining all sets of network objects
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`independently of a file system for mass storage.” This construction ignores the
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`antecedent basis of the “wherein” limitation, which refers back to maintaining “a
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`set of network objects” (not “all sets of network objects,” nor the “entire cache of
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`network objects”):
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`17. A method, including steps of:
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`receiving a set of network objects in response to a first request to
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`a server from a client; and
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`maintaining said network objects in a cache memory in a cache
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`engine, said cache engine connected via a network to the server
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`and the client, said cache memory including mass storage;
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`wherein said step of maintaining is performed independently
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`of a file system for said mass storage.
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`As reflected above, maintaining “a set” of network objects in a cache
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`memory independently of a file system for a mass storage is sufficient to teach the
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`“wherein” limitation of claim 17, even if a caching system maintains other sets of
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`network objects using the file system. See, e.g., Unwired Planet, LLC v. Google
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`Inc., 841 F.3d 995, 1002 (Fed. Cir. 2016) (“It is enough that the combination
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`would sometimes perform all the method steps[.]”); Software Rights Archive, LLC
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`v. Facebook, Inc., 659 Fed. Appx. 627 (Fed. Cir. 2016) (“The fact that they do not
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`in all cases mandate the use of [the step of the method] does not mean that they do
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`not teach the [step].”).
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`Tellingly, in the co-pending district court case, Patent Owner took the
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`position that maintaining a portion of cached network objects in main memory
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`satisfies the “wherein” limitation of claim 17. Indeed, Patent Owner advanced a
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`theory that maintaining hot objects in main memory satisfies the “wherein”
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`limitation. See Ex. 1051, pp. 38-39 (arguing that “wherein” limitation is satisfied
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`where “[p]opular files are locked into memory rather than fetched constantly from
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`disk.”). Patent Owner’s contradictory positions—attempting to now disavow a
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`claim interpretation that it advanced in district court—is further evidence of the
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`meritless nature of Patent Owner’s implicit construction of claim 17.
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`II. THE CHALLENGED CLAIMS ARE OBVIOUS
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`A. Ground 1—Independent Claims 1 and 9
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`1.
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`Indefiniteness of claims 1 and 9
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`The Board observed in the Institution Decision that the district court has
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`found claims 1 and 9 invalid as indefinite. D.I. 9. The Board encouraged the parties
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`to address whether “substantially minimizing” is indefinite and, if so, whether the
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`Board can still render a decision. Id. Patent Owner did not respond to the Board’s
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`request. Petitioner’s position is set forth in the Petition: claims 1 and 9 are
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`indefinite because the scope the claims is unclear, but the Board can still issue a
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`decision because a POSITA would have understood that the exemplary techniques
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`discussed in the ’794 patent fall within the otherwise indefinite scope of the claims.
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`Pet. 45. Patent Owner did not dispute Petitioner’s position (nor deny that Seltzer
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`teaches the exemplary techniques discussed in the ’794 patent).
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`2. Medin teaches maintaining network objects in “cache
`memory . . . including mass storage”
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`Patent Owner argues that “the Petition fails even to allege that Medin does
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`disclose or suggest a cache memory with mass storage[.]” POR 34. Not so. See
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`Pet. 36-43. As explained in the Petition, Medin teaches maintaining network
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`objects in “cache memory . . . including mass storage” because Medin teaches that
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`network objects are stored on disk arrays and cache storage devices. Pet. 36-43; see
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`also Ex. 1004 (Medin) 11:65-67, 11:53-55, FIG. 11.
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`Patent Owner next argues that Medin fails to disclose “maintaining said
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`network objects in a cache memory” because Medin’s regional disk arrays and
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`cache storage devices are not “‘memory’ as the ’794 Patent uses that term (e.g.
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`RAM).” POR 35-42. Pa