Trials@uspto.gov
`571-272-7822
`
`Paper 15
`Entered: February 09, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NETFLIX,INC.,
`Petitioner,
`
`V.
`
`CA,INC.,
`Patent Owner.
`
`IPR2021-01319
`Patent 7,103,794 B2
`
`Before KRISTEN L. DROESCH, NATHAN A. ENGELS,and
`JULIET MITCHELL DIRBA,Administrative Patent Judges.
`
`ENGELS, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 USC. § 314,37 CFR. § 42.4
`
`
`571-272-7822
`
`Paper 15
`Entered: February 09, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NETFLIX,INC.,
`Petitioner,
`
`V.
`
`CA,INC.,
`Patent Owner.
`
`IPR2021-01319
`Patent 7,103,794 B2
`
`Before KRISTEN L. DROESCH, NATHAN A. ENGELS,and
`JULIET MITCHELL DIRBA,Administrative Patent Judges.
`
`ENGELS, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 USC. § 314,37 CFR. § 42.4
`
`
`
`IPR2021-01319
`Patent 7,103,794 B2
`
`I.
`
`INTRODUCTION
`
`Petitioner Netflix, Inc. filed a Petition (Paper2, “Pet.”) requesting
`
`inter partes review ofclaims 1, 3-9, and 11-17 of U.S. Patent No. 7,103,794
`
`B2 (Ex. 1001, “the ’794 patent”). Patent Owner CA,Inc. filed a Preliminary
`
`Response. Paper 7 (Prelim. Resp.”).
`
`Under35 U.S.C. § 314(a), an inter partes review may notbeinstituted
`
`unless the information presented in the Petition and any response thereto
`
`shows“there is a reasonablelikelihood that the petitioner would prevail with
`
`respect to at least 1 of the claims challenged in the petition.” Upon
`
`consideration of the Petition and the evidence of record, we determine
`
`Petitioner has demonstrated a reasonable likelihood of prevailing in
`
`establishing unpatentability of at least one claim of the ’794 patent.
`
`Accordingly, we institute inter partes review.
`
`A. Real Parties in Interest
`
`Petitioner identifies Netflix, Inc. and Netflix Streaming Services, Inc.
`
`as the real parties-in-interest. Pet. 65. Patent Owner identifies CA,Inc. as
`
`the real party-in-interest. Paper5, 1.
`
`B. Related Matters
`
`The parties state that the 794 patent is the subject of CA, Inc.v.
`Netflix, Inc., No. 2:21-cv-00080 (E.D. Tex.)! and Netflix, Inc. v. CA, Inc.,
`
`' After the parties’ briefing, the U.S. Court of Appeals for the Federal
`Circuit ordered the Eastern District of Texas to transfer this case to the
`Northern District of California. In re Netflix, Inc., No. 2022-110, slip op.,
`2022 WL 167470 (Fed.Cir. Jan. 19, 2022). Consequently, we need not
`address Patent Owner’s arguments for discretionary denial under the Fintiv
`factors (see Prelim. Resp. 21-35; Prelim. Sur-Reply 2-5), which were
`premised on the Eastern District of Texas’s trial schedule, which no longer
`applies. See Ex. 3001 (parties’ agreementthat Fintiv arguments are moot).
`
`2
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`Patent 7,103,794 B2
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`3:21-cv-03649 (N.D. Cal.). Pet. 65; Paper 5, 1. Patent Owneralso identifies
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`Esoft, Inc. v. Blue Coat Systems, Inc., 1:06-cv-02192 (D. Colo.) as a related
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`matter. Paper 5, 1.
`
`C. The ’794 Patent
`
`Titled “Network Object Cache Engine,” the ’794 patent describes a
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`cache engine used to cache network objects such as HTML pages, text,
`
`graphics, and frames of streaming audio or video. Ex. 1001, 6:30-35, codes
`
`(54), (57). The ’794 patent states that the cache engine is in communication
`
`with a plurality of client devices and server devices via a network such that
`
`the cache engine receives protocol messages from client devices requesting
`
`network objects from the server devices. Ex. 1001, 3:3:4—19, 43-45. In
`response to the messages, the cache engine obtains the network objects from
`the server devices and transmits the network objects to the requesting client
`
`devices. Ex. 1001, 3:46-51. The cache engine preserves the network
`
`objects in its cache and reuses relevant network objects from its cache to
`
`respondto requests from other client devices. Ex. 1001, 4:1-4.
`
`The ’794 patent states that the cache engine includesa processorthat
`
`may be a general-purpose processor operating under software control.
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`Ex. 1001, 1:20-29. The cache engine also includes a cache which includes
`
`program and data memory and a massstorage, such asa plurality of disk
`
`drives. Ex. 1001, 3:30-41.
`
`The ’794 patent states that the cacheis nota file storage system and
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`network objects and other data maintained in the cacheare transient, except
`
`for a small numberof system objects required for operation. Ex. 1001,
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`4:15-24. The ’794 patentalso states that the cache engine operates
`
`exclusively to perform the operation of caching the network objects and has
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`Patent 7,103,794 B2
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`no separate operating system, no user, and no application programs.
`
`Ex. 1001, 4:34-38.
`
`D.
`
`Illustrative Claim
`
`Claim 1, reproduced below,is illustrative of the challenged claims.
`
`1. A method, including stepsof:
`
`receiving a set of network objects in responseto a first request to
`a server from a client; and
`
`maintaining said network objects in a cache memoryin a cache
`engine, said cache engine connected via a networkto the server
`and the client, said cache memoryincluding massstorage;
`
`wherein said step of maintaining includes steps of recording said
`network objects in said cache memory and retrieving said
`network objects from said cache memory,
`
`so as to substantially minimizes a time required for retrieving
`said network objects from said massstorage.
`
`E. Alleged Grounds of Unpatentability
`
`Petitioner asserts that claims 1, 3-9, 11-17 would have been
`
`unpatentable on the following grounds:
`
`
`
`
`
`Claim(s) Challenged
`1, 3-9, 11-16
`
`35 USS.C.§
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`Reference(s)/Basis
`Medin,? Seltzer?
`Medin, Markatos'
`
`
`
`
`
`2 Based on the June 8, 1998 filing date of the ’794 patent, we apply the pre-
`AIA version of § 103.
`3 U.S. Patent No. 6,370,571 B1, issued Apr. 9, 2002 (Ex. 1004).
`4 Margo Seltzer, An Implementation ofa Log-Structured File System for
`UNIX, Proceedingsof the 1993 Winter USENIX (Jan. 25-29, 1993)
`(Ex. 1005).
`> Evangelos P. Markatos, Main Memory Caching of Web Documents,
`Computer Networks and ISDN Systems, vol. 28, issues 7-11, pp. 893-905
`(May 1996) (Ex. 1006).
`
`
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`Patent 7,103,794 B2
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`A. Level ofOrdinary Skill in the Art
`
`Il. ANALYSIS
`
`In determining the level of skill in the art, we consider the type of
`problems encounteredin theart, the prior art solutions to those problems, the
`rapidity with which innovations are made, the sophistication of the
`
`technology, and the educational level of active workers in the field. Custom
`
`Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed.Cir.
`
`1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983).
`
`Petitioner contends a person of ordinary skill in the art at the time of
`
`the invention would have been a person with a “bachelor’s degree in
`
`electrical engineering, computer engineering, mathematics, or a similar field
`
`with at least two years of experience with computer networks and data
`
`storage, or a person with a master’s degreein electrical engineering,
`
`computer engineering, mathematics, or a similar field with a specialization
`
`in computer networking.” Pet. 24 (citing Ex. 1003 { 26). Petitioner also
`
`states that a person of ordinary skill would have had knowledgeofa list of
`
`topics, including the operation of networks, certain communication
`
`protocols, and caches. Pet. 24—25 (citing Ex. 1003 { 27).
`
`Patent Ownerdoes not addressthe level of skill in the art in its
`
`Preliminary Response. Forthe purposes of this Decision, we apply the level
`
`of ordinary skill advanced by Petitioner in terms of education and
`
`experience,but at this stage, we do not further addressthe lists of topics
`
`purportedly within the knowledgeof a person ofordinaryskill.
`
`B. Claim Construction
`
`Weconstrue claims using the principles set forth in Phillips v. AWH
`
`Corp., 415 F.3d 1303, 1312-17 (Fed. Cir. 2005) (en banc) andrelated cases.
`
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`Patent 7,103,794 B2
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`37 C.F.R. § 42.100(b) (2020). Underthat precedent, the words of a claim
`
`are generally given their “ordinary and customary meaning,” whichis the
`
`meaning the term would haveto a person ofordinary skill at the time of the
`
`invention, in the context of the entire patent including the specification.
`
`Phillips, 415 F.3d at 1312-13.
`
`I.
`
`“receiving a set ofnetwork objects in response to a first requestto
`a serverfrom a client”
`
`Petitioner contends the claim language “receiving a set of network
`
`objects in responseto a first request to a server from a client” would have
`
`been understood by a person of ordinary skill to be a step that must be
`
`performedat the cache engine. Pet. 25. Further, Petitioner states that the
`
`limitation should be construed to mean “receiving a set of network objects at
`
`the cache enginein responseto a first request to a server from a client.”
`
`Pet. 25-26. According to Petitioner, claims 20, 28, 39, and 47 require a
`
`cache engine that performs an equivalent receiving step, and Petitioner
`
`additionally cites certain dependent claims and one passage ofthe
`
`Specification as support for its argument. Pet. 26-27 (citing Ex. 1001, 1:26—
`
`35, 3:42-51, 5:61-67, claims 2-6, 10-14).
`
`Patent Ownerdisagrees with Petitioner’s proposed construction and
`
`contendsthe “receiving” limitation should be given its plain and ordinary
`
`meaning. Prelim. Resp. 34. Patent Owneralso states that the construction
`of “receiving” is immaterial to the argumentsin the Preliminary Response,
`
`and Patent Ownerdoesnot further address the meaning ofthe limitation.
`
`Prelim. Resp. 34.
`
`At this stage, we determineit is unnecessary to expressly interpret the
`
`receiving step for the purposesof institution.
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`Patent 7,103,794 B2
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`2.
`
`“cache engine”
`
`Wenote that neither party appears to have askedthe district court to
`construe “cache engine.” See Ex. 2013. Here, though, Patent Owner
`contends “cache engine” should be construed to mean “a special-purpose
`
`device for caching network objects and optimized for storing and retrieving
`
`cached network objects.” Prelim. Resp. 34-35. According to Patent Owner,
`
`the challenged claims, the ’794 patent’s Specification, and the prosecution
`
`history distinguish a cache engine from an ordinary server and support
`
`Patent Owner’s proposed construction. Prelim. Resp. 34-39 (citing
`
`Ex. 1001, 1:9-67, 2:6-18, 4:15, 4:34-40, 12:36-39, 17:12-17, 18:17-18);
`
`see Prelim. Resp. 38 (arguing the cacheserveris “not just a server that
`
`happenstostore files using a stock operating system andfile system”).
`
`Patent Owneralso contends relevant extrinsic evidence supportsits
`
`construction. Prelim. Resp. 39-41 (citing Ex. 2008 (defining “cache engine”
`in 1998 version of Newton’s Telecom Dictionary)).
`
`Petitioner does not provide an express construction of “cache engine.”
`
`According to Patent Owner, however, Petitioner’s comparisons of Medin to
`
`the challenged claims implicitly construe “cache engine” to include a proxy
`
`computer. Prelim. Resp. 34, 37-38, 42-45.
`
`Having reviewed the parties’ arguments andthe cited portions of the
`intrinsic and extrinsic evidence, at this stage, we apply the claim’s plain
`
`language. First, neither party contends “cache engine” is ambiguous; in fact,
`
`notwithstanding Patent Owner’s proposed construction, Patent Owner
`
`contends “cache engine”hasa plain and ordinary meaning (Prelim. Resp. 40
`
`(arguing “the ’794 Patentat least partially defined the plain and ordinary
`
`meaning of the term ‘cache engine”’”’)). See also Pet. 37-38 (citing Ex. 1003
`
`
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`IPR2021-01319
`Patent 7,103,794 B2
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`{ 136 (describing a person of ordinary skill’s understanding of “cache
`
`engine”)); Ex. 1003 fj 32-35, 69-71, 136 (“A POSITA would have
`
`understood that the regional and local servers of Medin are ‘cache engines’
`
`because the regional and local servers are comprised of hardware(e.g., a
`
`processor, memory, massstorage) and software to perform the function of
`caching networkobjects.”).
`|
`Most notable of the portions of the Specification cited by the parties
`
`(Pet. 38; Prelim. Resp. 6, 35), the Specification states that “cache engine 100
`
`operates exclusively to perform the operation of caching the network
`
`objects 114. There is no separate ‘operating system,’ no user, and there are
`
`no user application programs which execute independently on the
`
`processor 101” (Ex. 1001, 4:34-40). Petitioner quotes part of that passage
`
`without substantively addressing it. Pet. 38 (quoting Ex. 1001, 4:34—35).
`
`Patent Ownerreads that passage andother portions of the Specification to
`
`suggest that a cache engineis not an ordinary, generic server (Prelim.
`
`Resp. 35), but Patent Owner does not appear to argue that the quoted portion
`
`of the Specification limits the claimed “cache engine.” Notably, Patent
`
`Ownerdoesnotdirectly argue that the claimed “cache engine” operates
`
`“exclusively” for caching network objects, and Patent Owner’s proposed
`
`interpretation does not appearto track that or other language in the
`
`Specification. See Prelim. Resp. 39 (citing Ex. 1002, 382-84, 390)
`
`(describing the prosecution history as reflecting that “the applicant amended
`
`the independentclaimsto recite specifically that a cache engine performs
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`network object maintenance operations”).
`
`Wealso note that Patent Owner’s proposed language,“special-
`
`purpose device for caching network objects and optimized for storing and
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`Patent 7,103,794 B2
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`retrieving cached network objects,” seems potentially less clear than the
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`claim languageitself. For example, Patent Owner’s proposed construction
`
`would raise questions regarding the scope and meaning of“special-purpose
`
`device” and what it meansfor a device to be “optimized”for storing and
`
`retrieving cached networkobjects. In particular, it is not clear at this stage
`
`that Patent Owner’s proposed language would exclude a generic server
`
`providing caching operations, particularly given the Specification’s repeated
`
`reference to embodiments of a cache engine implemented using “general
`
`purpose processors and storage devices.” Ex. 1001, 2:61-63; accord
`
`Ex. 1001, 3:20—29; cf Ex. 1001, 1:26—29 (describing known methodsthat
`
`use a general-purpose processor operating under software control to act as a
`
`proxy).
`
`Wedetermineit is unnecessary to construe “cache engine” beyond the
`
`claim language for the purposesofinstitution, but we encouragethe parties
`
`to clarify their positions in future briefing.
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`3.
`
`“minimiz[es/ing]” and “maximizing”
`
`Wenotethat the district court determined the claims’ uses of
`
`“minimiz[es/ing]” and “maximizing”are indefinite. Ex. 2013, 21-30.
`
`Petitioner states that “[w]hile the bounds of ‘substantially mimimiz[ing]’ are
`
`not clear, a [person of ordinary skill in the art] would have understoodthat
`
`the exemplary optimization techniques discussed in the ’794 patentfall
`
`within the scope of the claims.” Pet. 45. Patent Owner does notdirectly
`
`address the termsorthe district court’s determination. In future briefing, the
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`parties are encouraged to address the terms, whether the termsare indefinite,
`
`and if so, whether the Board canstill render a decision regarding
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`Patent 7,103,794 B2
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`patentability. See Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 318-319
`
`(Fed. Cir. 2021).
`
`C. Summary ofPrior Art References
`
`1. Medin
`
`Titled “System and Method for Delivering High-Performance Online
`
`Multimedia Services,” Medin discloses a system and method for delivering
`
`online multimedia services using a distributed network architecture and
`
`processesfor replicating and caching frequently accessed multimedia
`
`content. Ex. 1004, 2:18-24, code (54). Medin’s networkarchitecture
`
`couples a high-speed backbone to multiple network access points of the
`
`Internet, to a network operation center, to a back office system, and to
`
`multiple regional data centers. Ex. 1004, 2:26—29. Each regional data
`
`center couples to several modified head-ends, which in turn couple to
`
`neighborhood nodes, which in turn couple to end user systems. Ex. 1004,
`
`2:29-33.
`
`Medinstates that frequently accessed content is cached within and
`
`replicated amongthe regional data centers. Ex. 1004, 2:54-55. “This
`
`reduces traffic redundancy since an end-user’s request for data that has been
`
`so replicated or cached maybefulfilled by the ‘nearest’ (most closely
`
`coupled) [regional data center].” Ex. 1004, 2:55-58. Frequently accessed
`
`content is also cached within the modified head-ends to further reduce
`
`redundanttraffic. Ex. 1004, 3:1-4.
`
`D. Ground 1: Obviousness Based on Medin and Seltzer
`
`The Petition includes a limitation-by-limitation comparison of Medin
`
`and Seltzer to claims 1, 3—9, and 11-16, and Petitioner contends a person of
`
`ordinary skill “would have been motivated to combine Medin’s teachings of
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`servers that cache content requested overthe Internet, with Seltzer’s
`
`teachings of methods to optimize the recording andretrieval of data”
`
`(Pet. 27) for anumberof reasons. See Pet. 27-48.
`
`Respondingto Petitioner’s arguments, Patent Owner contends Medin
`
`does not teach the “cache engine”recited in each challenged claim. Prelim.
`
`Resp. 41-45. Patent Owneralso contends that Seltzer does not teach a cache
`
`engine, and that Seltzer’s goals are “incompatible with the cache engine of
`
`the ’794 patent.” Prelim. Resp. 45-48.
`
`1. Claim 1
`
`Motivation to combine Medin and Seltzer
`
`Petitioner contends a person of ordinary skill would have been
`
`motivated to combine Medin’s teachings of servers that cache content
`
`requested over the Internet with Seltzer’s teachings of methods to optimize
`
`the recording and retrieval of data. Pet. 27-30. Accordingto Petitioner,
`
`Medin teachesstoring copies of frequently accessed multimedia content on
`
`UNIX-basedlocal and regional servers to improve response times, and
`
`Seltzer teaches techniques for optimizing write and retrieval times on UNIX-
`
`based computers. Pet. 28-29. Amongother things, Petitioner contends a
`
`person of ordinary skill would have understood Seltzer to provide an express
`
`suggestion to improvethe storage techniques of Medin, that combining the
`
`references would have been a combination of familiar elements accordingto
`
`known methodsto yield predictable results, and that a person of ordinary
`
`skill would have expected success in combining the teachings of Medin and
`
`Seltzer. Pet. 28-30 (citing Ex. 1003 ff 114, 115, 118-121).
`
`Patent Owner contendsSeltzer has nothing to do with network
`
`caching and that Seltzer’s goals are not relevant to a cache engine. Pet. 46—
`
`1]
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`47. At this stage, however, Patent Owner’s arguments regarding Seltzer’s
`
`goals and incompatibility amountto attorney argument.
`
`“A method, including steps of:
`
`receiving a set ofnetwork objects in responseto a first request
`to a server from a client; and”
`
`Petitioner contends Medinsatisfies this limitation with its teachings of
`
`caching servers that receive multimedia content in response toafirst request
`
`from an enduserto an Internet server. Pet. 32 (citing Ex. 1003 4 125). At
`
`this stage, Patent Owner doesnot address Petitioner’s showing forthis
`
`limitation.
`
`“maintaining said network objects in a cache memory ina
`cache engine, said cache engine connected via a networkto
`the server and the client, said cache memory including mass
`storage”
`
`Petitioner contends Medin’s regional and local servers teach or
`
`suggest the claimed “cache engines.” Pet. 36, 37-38. According to
`
`Petitioner, Medin teaches that network objects (e.g., multimedia content) are
`
`stored on a disk array of regional servers and on a cache storage device of
`
`the local servers. Pet. 37-39 (citing Ex. 1004, 2:21—25, 2:54—-58, 3:1-4,
`
`5:56—-59, 6:36-44, 9:12-31, 11:23-26, 11:55-60, Figs. 3-6, 11; Ex. 1003
`
`{{ 138-42). Petitioner also contends Medin’s regional and local servers are
`
`part of a private network that connects end users and content servers.
`
`Pet. 39-40.
`
`Patent Ownercriticizes the Petition and Petitioner’s declaration for
`
`failing to address the meaning of “cache engine”andthe intrinsic evidence
`
`cited by Patent Owner. Prelim. Resp. 42-43. Patent Owneralso contends
`
`that Medin discloses “at most, a conventional proxy server” that does not
`
`satisfy Patent Owner’s proposed construction of “cache engine.” Prelim.
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`12
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`Resp. 42. According to Patent Owner, Medin’s regional serversare “typical
`
`multi-purpose servers” with typical server hardware running a general
`
`operating system that governs more than just caching operations, including
`
`server applications that have nothing to do with caching network objects.
`Prelim. Resp. 44-45 (citing Ex. 1004, 7:62—-8:2). Patent Owneralso
`contends that Medin merely states that its local servers “employ typical
`
`server hardware, have a general operating system, operate in pairs, and
`
`perform proxy and caching functions,” without further detail. Prelim.
`
`Resp. 45 (citing Ex. 1004, 6:43-—56).
`
`Asnoted above,at this stage we do not expressly interpret “cache
`
`engine,” and weinstead apply the plain language of the claims. For the
`
`purposeofinstitution, we determine Petitioner has sufficiently shownthat
`
`Medinsatisfies this limitation with its teachings of local and regional servers
`
`that cache frequently accessed information or content and that are connected
`
`via a network to content server and end users.
`
`“wherein said step ofmaintaining includes steps ofrecording
`said network objects in said cache memory andretrieving said
`networkobjects from said cache memory,”
`
`Petitioner contends Medin satisfies this limitation because its local
`
`and regional servers store requested network objects andlater retrieve and
`
`serve those objects from the servers’ cache memory. Pet. 41-44(citing
`
`Ex. 1004, 11:53-55, 11:65—67, Fig. 11; Ex. 1003 9 146-149). Petitioner
`
`also cites Seltzer for its teaching of recording andretrieving objects. Pet. 43
`
`(citing Ex. 1005 p. 307, 309, 311, 315-16, 320).
`
`At this stage, Patent Ownerdoesnot address Petitioner’s showing for
`
`this limitation.
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`13
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`“so as to substantially minimizes a time requiredfor retrieving
`said network objects from said mass storage.”
`
`Petitioner contends the combination of Medin and Seltzer teach this
`
`limitation with Seltzer teaching techniques for optimizing the writing and
`
`retrieval of objects to minimize retrieval times. Pet. 45-48. As noted above,
`
`the district court determined “minimizes”is indefinite (Ex. 2013, 30), but
`
`Petitioner contends a person of ordinary skill “would have understood the
`
`exemplary optimization techniques discussed in the ’794 patent fall within
`
`the scope of the claims” (Pet. 45 (citing Ex. 1001, 12:36—-39; Ex. 1003
`
`q 153)).
`
`At this stage, Patent Owner does not address Petitioner’s showing for
`
`this limitation.
`
`2. Conclusion Regarding Claim I
`
`Based on the current record, we determinePetitioner has made a
`
`sufficient showing for each element of claim 1 for the purposes of
`
`institution. Accordingly, Petitioner has established that it is likely to prevail
`
`in showing that claim 1 is unpatentable in view of the combinedteachings of
`
`Medin andSeltzer.
`
`3. Claims 3—9, 11-16
`
`Petitioner presents a claim-by-claim,limitation-by-limitation
`
`comparison of each of claims 3—9 and 11-16 to the teachings of Medin and
`
`Seltzer. Pet. 31-57. Petitioner’s arguments and evidence largely track those
`
`addressed aboveregarding claim 1, and at this stage, Patent Ownerdoesnot
`
`specifically address Petitioner’s arguments regarding these claims.
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`14
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`E. Ground 2: Obviousness Based on Medin and Markatos
`
`1. Claim 17
`
`Independent claim 17 includes a receiving step and a maintaining step
`
`similar to claim 1, and additionally recites “wherein said step of maintaining
`
`is performed independently ofa file system for said mass storage.” For most
`
`of clam 17, Petitioner cites its comparison of Medin to similar elements in
`
`claim 1, and Petitioner cites Markatos for the “wherein” element of claim 17
`
`quoted above. Pet. 62-64. According to Petitioner, Markatos teaches
`
`improving web servers by “keeping the most frequently accessed documents
`
`in the server’s main memory,thus avoiding disk accesses as much as
`
`possible,” rather than maintaining all content on disks. Pet. 63 (quoting Ex.
`
`1006, 894).
`
`Petitioner contendsa person ofordinary skill would have been
`
`motivated to combine Markatos’s teachings of main memory caching of web
`
`documents with Medin’s teachings of cache servers that store web
`
`documents for several reasons. Pet. 58. According to Petitioner, a person of
`
`ordinary skill would have been motivated to combine Medin and Markatos
`becausethe references share the sameoverall goal of improving speed and
`
`efficiency of responding to requests for content over the internet. Pet. 59.
`Petitioner also contends Markatosis specifically directed to improving
`servers such as those taught by Medin, and Petitioner contends a person of
`
`ordinary skill would have expected success in combining the references’
`
`teachings. Pet. 59-61.
`
`Patent Owner contends Markatos does not teach the “wherein” clause
`of claim 17. According to Patent Owner, Markatos teaches using a main
`memory (RAM)to cachecertain documents, but Patent Ownerargues “[t]he
`
`
`
`IPR2021-01319
`Patent 7,103,794 B2
`
`conventional storage of ‘hot’ objects in a RAM cache, without more, does
`
`not teach maintaining an entire cache (including both RAM and mass
`
`storage) independently of a file system.” Prelim. Resp. 48.
`
`At this stage, Patent Owner’s argument does not appear
`
`commensurate with the plain language of claim 17, in that claim 17 does not
`
`recite “maintaining an entire cache (including both RAM and massstorage)
`
`independently”of a file system. Claim 17 recites that the cache memory
`
`includes massstorage and that the step of maintaining is performed
`
`independently of a file system for said mass storage, but the ’794 patent
`
`recognizes a distinction between the cache’s memory and massstorage. See,
`
`e.g., Ex. 1001, 2:62—67 (noting the distinction between storing objects in
`
`memory and massstorage), 2:8-13 (same). At this stage, we do not
`
`expressly construe claim 17, but we encourage the parties to address the
`
`scope of claim 17 in future briefings.
`
`II. CONCLUSION
`
`For the reasonsset forth above, we determinethat Petitioner has
`
`demonstrated a reasonable likelihood that it will prevail with respect to at
`least one claim of the ’794 patent. Accordingly, weinstitute an inter partes
`
`review asto all challenged claims.
`
`IV. ORDER
`
`In consideration of the foregoing,it is hereby:
`
`ORDEREDthatpursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is instituted as to claims 1, 3—9, and 11-17 of the ’794 patentonall
`
`groundsasserted in the Petition; and
`
`16
`
`
`
`IPR2021-01319
`Patent 7,103,794 B2
`
`FURTHER ORDEREDthat, pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, notice is given ofthe institution of a trial, which
`
`commenceson the entry date of this Decision.
`
`17
`
`
`
`IPR2021-01319
`Patent 7,103,794 B2
`
`FOR PETITIONER:
`
`HarperBatts
`Jeffrey Liang
`Chris Ponder
`SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
`hbatts@sheppardmullin.com
`jliang@sheppardmullin.com
`cponder@sheppardmullin.com
`
`FOR PATENT OWNER:
`
`Daniel Young
`Chad King
`ADSERO IP LLC d/b/a SWANSON & BRATSCHUN LLC
`dyoung@adseroip.com
`chad@adseroip.com
`
`18
`
`
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