- Dell Inc. / EMC Corporation et al. v. Realtime Data LLCAll claims unpatentablePTAB · May 25, 2018 · IPR2017-00806 · APJ Jason J Chung · IPR · Final written decision
Claims 104 and 105 are unpatentable as obvious over Franaszek and Hsu, and over Franaszek, Hsu, and Sebastian.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“present case for at least the reasons stated supra in § II.C.1., we construe claims 104 and 105 according to the broadest reasonable construction in light of the specification (i.e., using Schulhauser) as explained infra. In Schulhauser, the Board held that in method claim 1, only one of the following conditional limitations needed to be satisfied in the prior art to render the claim anticipated or obvious: (1) “triggering an alarm state if the electro cardiac signal data is not within the threshold electrocardiac criteria”; and (2) “determining the current activity level of the subject from the activity level data if the electrocardiac signal data is within the threshold electrocardiac criteria.” Schulhauser at 6–8. To paraphrase, in Schulhauser, illustrative method claim 1 recited if A, then perform step X; if not A, then perform step Y. Id. In the same manner, claim 104 of the present case recites “performing content dependent data compression with a content dependent data compression encoder if a data type of the data block is identified” (hereinafter, “if A, then perform step X limitation of claim 104”) and “performing data compression with a single data compression encoder, if a data type of the data block is not identified” (hereinafter, “if not A, then perform step Y limitation of claim 104”). Ex. 1001, 2:34–45. Also, claim 105 recites “wherein if one or more encoders are associated to said type, compressing said data block with at least one of said one or more encoders” (hereinafter, “if A, then perform step X limitation of claim 105”) and “otherwise compressing said data block with a default data compression encoder” (hereinafter, “if not A, then perform step Y limitation of claim 105”). Id. at 2:57–60. Therefore, as a matter of law, we determine only one condition needs to be satisfied in the prior art to render the claim anticipated or obvious.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (internal quotation and citation omitted). In that regard, Petitioner’s declarant, Dr. Creusere, testifies that a person with ordinary skill in the art at the time of the invention” slip op. at 8
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“using Hsu’s approach will always identify a result for a block’s data type (id.); we agree with Dr. Creusere’s testimonial admission. In particular, in response to Patent Owner’s question of whether Hsu’s approach always identifies a given data block, Dr. Creusere answered: As far as the – as the data type information as output by Hsu’s new file routine, that, that’s – that will – that should in my, in my opinion, as a person of ordinary skill in the art, my best estimate is that will always output something. It will always give you something. Id. (quoting Ex. 2003, 21:13–22:6).” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“combine to be unpersuasive because it was based on the assumption that both alternate steps of claim 104 must be met. We, therefore, also find that Dr. Zeger’s testimony does not counter persuasively Petitioner’s showing that a PHOSITA would have had reason to combine Franaszek and Hsu in a manner that would have taught the if A, then perform step X limitation of claim 104. Accordingly, we are persuaded Petitioner has established by a preponderance of the evidence that: (1) Franaszek and Hsu teaches the if A, then perform step X limitation of claim 104; and (2) a PHOSITA would have combined Franaszek and Hsu.17 Petitioner has made sufficient” slip op. at 37
Patent outcomesUS 7,161,506 unpatentableClaim construction§ 103 obviousnesscites Markman · KSR · GrahamPatents in suitUS 7,161,506 - Dell Inc. / EMC Corporation et al. v. Realtime Data LLCAll claims unpatentablePTAB · May 25, 2018 · IPR2017-00176 · APJ Jason J Chung · IPR · Final written decision
Claims 104 and 105 are unpatentable as obvious under § 103(a) over Franaszek and Hsu, and over Franaszek, Hsu, and Sebastian.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“present case for at least the reasons stated supra in § II.C.1., we construe claims 104 and 105 according to the broadest reasonable construction in light of the specification (i.e., using Schulhauser) as explained infra. In Schulhauser, the Board held that in method claim 1, only one of the following conditional limitations needed to be satisfied in the prior art to render the claim anticipated or obvious: (1) “triggering an alarm state if the electro cardiac signal data is not within the threshold electrocardiac criteria”; and (2) “determining the current activity level of the subject from the activity level data if the electrocardiac signal data is within the threshold electrocardiac criteria.” Schulhauser at 6–8. To paraphrase, in Schulhauser, illustrative method claim 1 recited if A, then perform step X; if not A, then perform step Y. Id. In the same manner, claim 104 of the present case recites “performing content dependent data compression with a content dependent data compression encoder if a data type of the data block is identified” (hereinafter, “if A, then perform step X limitation of claim 104”) and “performing data compression with a single data compression encoder, if a data type of the data block is not identified” (hereinafter, “if not A, then perform step Y limitation of claim 104”). Ex. 1001, 2:34–45. Also, claim 105 recites “wherein if one or more encoders are associated to said type, compressing said data block with at least one of said one or more encoders” (hereinafter, “if A, then perform step X limitation of claim 105”) and “otherwise compressing said data block with a default data compression encoder” (hereinafter, “if not A, then perform step Y limitation of claim 105”). Id. at 2:57–60. Therefore, as a matter of law, we determine only one condition needs to be satisfied in the prior art to render the claim anticipated or obvious.” slip op. at 14
- Strike new argumentNew argument consideredDecided for patent owner
“As an initial matter, as discussed further below, we follow Schulhauser because it is precedential. Moreover, we find that each of the cases cited by Patent Owner is factually distinguishable from Schulhauser. The Board’s Standard Operating Procedures (“SOP”) require it to follow its precedential decisions. PTAB SOP No. 2, Rev. 9, 3 (Sept. 22, 2014) (“A precedential opinion is binding authority in subsequent matters involving similar facts or issues.”). Because this issue concerns claim construction, we conclude the best course of action under these specific circumstances is to follow our Tribunal’s SOP and our precedent in Schulhauser. To address APA concerns, due process concerns, the sufficiency of notice and potential prejudice, we allowed the parties the additional opportunity to brief the issue.10 Additional Briefing 1–2. In summary, Schulhauser is our precedent and it should apply given its potential applicability to the claim construction for the claims at issue.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We find Dr. Zeger’s testimony regarding the absence of a rationale to combine to be unpersuasive because it was based on the assumption that both alternate steps of claim 104 must be met. We, therefore, also find that Dr. Zeger’s testimony does not counter persuasively Petitioner’s showing that a PHOSITA would have had reason to combine Franaszek and Hsu in a manner that would have taught the if A, then perform step X limitation of claim 104. Accordingly, we are persuaded Petitioner has established by a preponderance of the evidence that: (1) Franaszek and Hsu teaches the if A, then perform step X limitation of claim 104; and (2) a PHOSITA would have combined Franaszek and Hsu.17 Petitioner has made sufficient” slip op. at 37
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Accordingly, we are persuaded Petitioner has established by a preponderance of the evidence that: (1) Franaszek and Hsu teaches the if A, then perform step X limitation of claim 104; and (2) a PHOSITA would have combined Franaszek and Hsu.17 Petitioner has made sufficient 16 Supra § II.C. 17 We considered Patent Owner’s objections (Tr. 30:1–34:4, 63:17–23) and dismiss them as moot because we did not rely on Petitioner’s theory that Franaszek does not have a data type, then if you were to use Hsu in that showings that both grounds would have taught the remaining limitations of claim 104 (Pet. 14–36) and Patent Owner does not dispute these assertions (Paper 20, § B.1.b.) (“[A]ny arguments for patentability not raised in the response will be deemed waived.”). e. Conclusion In conclusion, and having performed the factual inquiries required by Graham, for the reasons given above and based on our review of the arguments and evidence of record, Petitioner has shown by a preponderance of the evidence that the combination of: (1) Franaszek and Hsu; and (2) Franaszek, Hsu, and Sebastian render obvious the subject matter of claim 104 of the ’506 patent.18” slip op. at 37
Patent outcomesUS 7,161,506 unpatentableClaim construction§ 103 obviousnesscites Markman · KSR · GrahamPatents in suitUS 7,161,506 - Dell Inc. / Riverbed Technology, Inc. et al. v. Realtime Data LLCNo claims unpatentablePTAB · May 15, 2018 · IPR2017-00365 · APJ Per Curiam · IPR · Final written decision
Claims 1–5, 9–12, 14, 18, 19, and 24 were not shown unpatentable under § 103 because Petitioner failed to establish a specific combination with a reasonable expectation of success.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We do not observe a meaningful difference between the parties’ assessments of a person of ordinary skill in the art. We further note that either assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Moreover, Dr. Creusere appears to satisfy either assessment. Our analysis in this Decision is supported by either assessment, but, for purposes of this Decision, we adopt Petitioner’s assessment.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties do not argue a claim construction for any terms. See generally PO Resp.; Reply. In the Decision to Institute, we did not construe any terms. Dec. 5–6. We determine that no terms require express construction for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those claim terms or phrases that are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 9
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 168– 69), on this record, we cannot reconcile these portions of his declaration Dr. Creusere’s his own testimony on cross-examination to the contrary, such as his acknowledgement of “unlimited” permutations that were “impossible” to address. E.g., Ex. 2015, 81:21–83:24, 84:13–24, 143:20–144:3. Stated differently, in his initial position, Dr. Creusere testifies that a person having ordinary skill in the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 168–69), while his later testimony vacillates to a stance that makes it difficult to demonstrate a reasonable expectation of success–– i.e., the existence of “unlimited” permutations that were “impossible” to address. Ex. 2015, 81:21–83:24, 84:13–24, 143:20–144:3. We find this testimony contradictory. In summary, neither the Petition, nor Dr. Creusere’s declaration, nor his deposition testimony, provide any indication as to how a person having ordinary skill in the art would select among the countless permutations or further narrow the set of choices.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successReasonable expectation not foundNot shown unpatentable
“Put another way, we do not find that Petitioner demonstrates a “reasonable expectation of success” when Dr. Creusere acknowledges that a person having ordinary skill in the art did not specify whether to discard or keep Franaszek’s sampling approach, or would use only Franaszek’s teachings of compression algorithms, or incorporate other such algorithms, or what data type or data types an intended system teaches would be created to compress, or what specific goals and objectives the person having ordinary skill in the art would have had reason to achieve. Compare id. at 75:18–76:19, 126:20–127:1, 76:24–78:6, 94:4–12, 96:4–98:14 with Ex. 1002 ¶¶ 154–71; Ex. 2017 ¶¶ 187–89.” slip op. at 17
Patent outcomesUS 7,415,530 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,415,530 - Dell Inc. / Riverbed Technology, Inc. et al. v. Realtime Data LLCNo claims unpatentablePTAB · May 15, 2018 · IPR2016-01671 · APJ Christopher L Crumbley · IPR · Final written decision
Petitioner failed to prove claims 1–5, 9–12, 14, 18, 19, and 24 unpatentable as obvious because it did not establish a specific combination with a reasonable expectation of success.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We do not observe a meaningful difference between the parties’ assessments of a person of ordinary skill in the art. We further note that either assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Moreover, Dr. Creusere appears to satisfy either assessment. Our analysis in this Decision is supported by either assessment, but, for purposes of this Decision, we adopt Petitioner’s assessment.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The parties do not argue a claim construction for any terms. See generally PO Resp.; Reply. In the Decision to Institute, we did not construe any terms. Dec. 5–6. We determine that no terms require express construction for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those claim terms or phrases that are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“Put another way, we do not find that Petitioner demonstrates a “reasonable expectation of success” when Dr. Creusere acknowledges that a person having ordinary skill in the art did not specify whether to discard or keep Franaszek’s sampling approach, or would use only Franaszek’s teachings of compression algorithms, or incorporate other such algorithms, or what data type or data types an intended system teaches would be created to compress, or what specific goals and objectives the person having ordinary skill in the art would have had reason to achieve. Compare id. at 75:18–76:19, 126:20–127:1, 76:24–78:6, 94:4–12, 96:4–98:14 with Ex. 1002 ¶¶ 154–71; Ex. 2017 ¶¶ 187–89. Instead, Petitioner simply asserts, in a conclusory manner, that: Because the relevant art is predictable and compression algorithms and transmission times may be modeled, simulated, and easily tested, a person of ordinary skill in the art would have had a reasonable expectation of success in combining these various teachings found in the prior art to arrive at the claimed invention. Pet. 34 (emphasis added)(citing Ex. 1002 ¶¶ 169–71). Notably, Dr. Creusere acknowledges that the number of possible permutations faced by a person having ordinary skill in the art would have been “unlimited” and that it was “impossible” for him to address “all the permutations of those possibilities.” Ex. 2015, 81:21–83:24, 84:13–24, 143:20–144:3.” slip op. at 17
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 168– 69), on this record, we cannot reconcile these portions of his declaration Dr. Creusere’s his own testimony on cross-examination to the contrary, such as his acknowledgement of “unlimited” permutations that were “impossible” to address. E.g., Ex. 2015, 81:21–83:24, 84:13–24, 143:20–144:3. Stated differently, in his initial position, Dr. Creusere testifies that a person having ordinary skill in the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 168–69), while his later testimony vacillates to a stance that makes it difficult to demonstrate a reasonable expectation of success–– i.e., the existence of “unlimited” permutations that were “impossible” to address. Ex. 2015, 81:21–83:24, 84:13–24, 143:20–144:3. We find this testimony contradictory. In summary, neither the Petition, nor Dr. Creusere’s declaration, nor his deposition testimony, provide any indication as to how a person having ordinary skill in the art would select among the countless permutations or further narrow the set of choices. Petitioner’s modeling, simulation, and testing theory fails to satisfy sufficiently its “reasonable expectation of success” evidentiary burden. Pursuant to the Federal Circuit’s decision in In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009), it is “improper” to argue an obviousness theory on the basis that “it would have been ‘obvious to try’ . . . to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result.” Id. at 1359–60 (quoting In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988); see also Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 1357 (Fed. Cir. 2013) (“[O]bviousness law in general recognizes an important distinction between combining known options into ‘a finite number of identified, predictable solutions,’ and ‘merely throwing metaphorical darts at a board’ in hopes of arriving at a successful result.”). Furthermore, as the Federal Circuit explained in Kubin, the Board should not use hindsight based on allegations that require that the person having ordinary skill in the art to randomly pick from a board filled with combinational prior art possibilities. Kubin, 561 F.3d at 1359. To paraphrase, Petitioner is attempting to bypass its evidentiary burden of having to proffer particular evidence of a specific combination, which would teach the “faster than” limitation recited in claims 1 and 24 by instead repeating that “model[ing], simulat[ion], and test[ing]” leads to a reasonable expectation of success (Pet. 34); whereas, in this proceeding, the number of permutations and variables are “unlimited” and “impossible” to address, as acknowledged by Dr. Creusere (Ex. 2015, 81:21–83:24, 84:13– 24, 143:20–144:3). That is, Petitioner attempts to craft a theory of obviousness using non-specific teachings from Franaszek and Osterlund that allegedly demonstrate a reasonable expectation of success; this attempt, however, falls significantly short of the Federal Circuit’s requirements. Another obstacle to our reliance on Dr. Creusere’s vacillating opinions is Patent Owner’s declarant, Dr. Zeger. Dr. Zeger opines in his declaration that Franaszek illustrates complex choices a person having ordinary skill in the art would face in considering whether and how to modify Franaszek in light of Osterlund on this record. Ex. 2017 ¶¶ 152–69. In particular, Dr. Zeger opines that Franaszek’s approach requires numerous steps that each create delays before compression occurs, which are illustrated in Dr. Zeger’s figure below. Id.” slip op. at 18
Patent outcomesUS 7,415,530 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,415,530 - Dell Inc. / Riverbed Technology, Inc. et al. v. Realtime Data LLCNo claims unpatentablePTAB · May 15, 2018 · IPR2016-00972 · APJ Christopher L Crumbley · IPR · Final written decision
Petitioner did not prove claims 1–5, 9–12, 14, 18, 19, and 24 unpatentable under § 103 because it failed to show a specific combination with a reasonable expectation of success.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (internal quotation and citation omitted). In that regard, Petitioner’s declarant, Dr. Creusere, testifies that a person with ordinary skill in the art at the time of the invention would have had at least a bachelor’s degree in computer science, computer engineering, electrical and computer engineering, electrical engineering, or electronics and at least two years of experience working with data compression or a graduate degree focusing in the field of data compression. Such experience would have led to familiarity with data compression systems using multiple data compression and decompression techniques to increase data storage and retrieval bandwidth. As such, individuals with additional education or additional industrial experience could still be of ordinary skill in the art if that additional aspect compensates for a deficit in one of the other aspects of the requirements stated above.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b). Under that standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The parties do not argue a claim construction for any terms. See generally PO Resp.; Reply. In the Decision to Institute, we did not construe any terms. Dec. 5–6. We determine that no terms require express construction for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those claim terms or phrases that are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the recited invention does. And as the Federal Circuit elaborates in ActiveVideo (supra), this analysis involves consideration of how specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims. We find Dr. Creusere’s testimony is insufficient under the aforementioned requirements under ActiveVideo. In particular, Dr. Creusere acknowledges that he does not specify whether a person having ordinary skill in the art would keep or discard Franaszek’s sampling approach, or would use only Franaszek’s compression algorithms or incorporate other algorithms. Ex. 2015 at 75:18–76:11, 126:20–127:1. Also significant is Dr. Creusere’s repeated testimony that a person having ordinary skill in the art would not incorporate Osterlund’s compression algorithm into Franaszek, or incorporate Franaszek’s compression algorithms into Osterlund. Id. at 43:3–11, 94:13–95:4. Furthermore, Dr. Creusere did not have an opinion about whether using Osterlund’s compression algorithm as part of Franaszek’s compression method would increase Franaszek’s compression speed. Id. at 94:4–12. Moreover, Dr. Creusere could not state whether his hypothetical person having ordinary skill in the art would modify Franaszek’s set of existing compression techniques at all, and, if so, what techniques the person having ordinary skill in the art would even consider. Id. at 96:4–98:14. Also notable is Dr. Creusere’s failure to indicate whether combination of the teachings of Franaszek and Osterlund would apply to some data types or all data types. Id. at 142:5–10, 143:12–19. Put another way, we do not find that Petitioner demonstrates a “reasonable expectation of success” when Dr. Creusere acknowledges that a person having ordinary skill in the art did not specify whether to discard or keep Franaszek’s sampling approach, or would use only Franaszek’s teachings of compression algorithms, or incorporate other such algorithms, or what data type or data types an intended system teaches would be created to compress, or what specific goals and objectives the person having ordinary skill in the art would have had reason to achieve. Compare id. at 75:18–76:19, 126:20–127:1, 76:24–78:6, 94:4–12, 96:4–98:14 with Ex. 1002 ¶¶ 154–71; Ex. 2017 ¶¶ 187–89.” slip op. at 16
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 168– 69), on this record, we cannot reconcile these portions of his declaration Dr. Creusere’s his own testimony on cross-examination to the contrary, such as his acknowledgement of “unlimited” permutations that were “impossible” to address. E.g., Ex. 2015, 81:21–83:24, 84:13–24, 143:20–144:3. Stated differently, in his initial position, Dr. Creusere testifies that a person having ordinary skill in the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 168–69), while his later testimony vacillates to a stance that makes it difficult to demonstrate a reasonable expectation of success–– i.e., the existence of “unlimited” permutations that were “impossible” to address. Ex. 2015, 81:21–83:24, 84:13–24, 143:20–144:3. We find this testimony contradictory. In summary, neither the Petition, nor Dr. Creusere’s declaration, nor his deposition testimony, provide any indication as to how a person having ordinary skill in the art would select among the countless permutations or further narrow the set of choices.” slip op. at 18
Patent outcomesUS 7,415,530 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,415,530 - Apple, Inc. v. Realtime Data LLCAll claims unpatentablePTAB · Mar 16, 2018 · IPR2016-01738 · APJ Georgianna W Braden · IPR · Final written decision
Claims 8–12, 14–22, 59–82, 101–104, 114, 115, and 117 are unpatentable as obvious; the motion to amend is granted for substitute claims 174–218.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“substitute claims “without placing the burden of persuasion on the patent owner.” Aqua Products, 872 F.3d at 1328. Yet, Patent Owner’s proposed substitute claims still must meet the statutory requirements of 35 U.S.C. § 316(d) and the procedural requirements of 37 C.F.R. § 42.121. See also “Guidance on Motions to Amend in view of Aqua Products” (Nov. 21, 2017) (https://www.uspto.gov/sites/default/files/documents/guidance_ on_motions_to_amend_11_2017.pdf) (“Guidance”). Accordingly, Patent Owner must demonstrate (1) the amendment responds to a ground of unpatentability involved in the trial; (2) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter; (3) the amendment proposes a reasonable number of substitute claims; and (4) the proposed claims are supported in the original disclosure. See 37 C.F.R. § 42.121.” slip op. at 51
- ExcludeMotion to exclude, deniedDenied
“substitute claims. Furthermore, Patent Owner’s arguments on this exhibits goes to the weight to be accorded to the evidence. The Board is capable of determining and assigning the appropriate weight to the evidence. For these reasons, we deny Patent Owner’s motion as to Exhibit 1043.” slip op. at 72
- Strike new argumentOther
“IV. CHALLENGE TO PETITIONER’S REPLY ARGUMENTS Patent Owner filed a list of alleged improper reply arguments (Paper 34) to which Petitioner filed a Reply (Paper 35). Patent Owner lists several portions of Petitioner’s Reply and evidence allegedly beyond the scope of what can be considered appropriate for a reply. See Paper 34. We have considered Patent Owner’s listing, but disagree that the cited portions of Petitioner’s Reply and reply evidence are beyond the scope of what is appropriate for a reply. Replies are a vehicle for responding to arguments raised in a corresponding patent owner response. Petitioner’s arguments and evidence that Patent Owner objects to are not beyond the proper scope of a reply; rather, we find that they fairly respond to Patent Owner’s arguments raised in Patent Owner’s Response. See Idemitsu Kosan Co. v. SFC LTD, 870 F.3d 1376, 1381: This back-and-forth shows that what Idemitsu characterizes as an argument raised “too late” is simply the by-product of one party necessarily getting the last word. If anything, Idemitsu is the party that first raised this issue, by arguing—at least implicitly—that Arkane teaches away from non-energy-gap combinations. SFC simply countered, as it was entitled to do. We also note for each of the items in Patent Owner’s list, Petitioner cites to pages in the Petition for support. See e.g., Paper 35, 2 (“Support for Petitioner’s argument can be found at, for example, pages 13–16 of the Petition.”), 4 (“Support for Petitioner’s argument can be found at, for example, pages 39–41 of the Petition.”); 5 (“Support for Petitioner’s argument can be found, for example, at pages 6–16, 28–29, and 32–34 of the Petition.”); 6 (“Support for Petitioner’s argument can be found, for example, at pages 11–16 of the Petition.”); 8 (“Support for Petitioner’s argument can be found, for example, at pages 11–16 of the Petition.”).” slip op. at 72
- Expert testimonyPetitioner expert creditedOther
“updating boot data lists by removing an association of control information that is associated with management information Table 3A. Specifically, we credit the testimony of Dr. Neuhauser, who explains how and why Sukegawa renders obvious updating a boot data list by disassociating non-accessed boot data from the boot data list. See Ex. 1003 ¶¶ 474–478 (citing Ex. 1005, 7:40–55). Dr. Neuhauser concludes an ordinarily skilled artisan “would have []found it obvious based on their knowledge of cache operation that upon the deletion of the non-accessed control information, or boot data, that management information table 3A is updated to reflect the deletion.” Ex. 1003 ¶ 474. Accordingly, we find Petitioner has established by a preponderance of the evidence that claims 20, 102, and 104 of the ’862 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over Sukegawa and Dye.” slip op. at 42
Patent outcomesUS 8,880,862 unpatentableClaim construction§ 103 obviousnesscites Markman · KSR · GrahamPatents in suitUS 8,880,862 - Apple, Inc. v. Realtime Data LLCAll claims unpatentablePTAB · Mar 13, 2018 · IPR2016-01739 · APJ Georgianna W Braden · IPR · Final written decision
Claims 5, 35–46, 97, 98, and 112 are unpatentable under § 103 over at least one instituted combination; claim 46 was not shown unpatentable over Settsu alone or with Zwiegincew.
RulingsFinal written decision- BurdenFwd mixedUnpatentable
“IV. CONCLUSION For the foregoing reasons, we conclude Petitioner has shown by a preponderance of the evidence that (1) Claims 5, 35–45, and 97 are unpatentable under 35 U.S.C. § 103(a) in view of Settsu; (2) Claims 5, 35– 45, 97, 98, and 112 as unpatentable under 35 U.S.C. § 103(a) in view of Settsu and Zwiegincew; (3) Claims 5, 35–46, and 97 as unpatentable under 35 U.S.C. § 103(a) in view of Settsu and Dye; and (4) Claims 5, 35–46, 97, 98, and 112 as unpatentable under 35 U.S.C. § 103(a) in view of Settsu, Zwiegincew, and Dye. V. ORDER Accordingly, it is ORDERED that, by a preponderance of the evidence, claims 5, 35–46, 97, 98, and 112 of the ’862 patent are unpatentable;” slip op. at 46
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b). Therefore, we consult the patent’s specification to help clarify the meaning of claim terms. Trading Techs. Int’l, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1352 (Fed. Cir. 2010) (holding claims “must be read in view of the specification, of which they are a part” (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996))). We must be careful, however, not to import improperly limitations into the claims or to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Given our mandate under 37 C.F.R. § 42.100(b) and the patent’s various descriptions of “boot data list,” we understand that the examples laid out in the specification are exemplary and are not to be read as limitations in the claims. Patent Owner’s proffered claim construction imports selected limitations from specific embodiments in the specification into the claim and provides an overly narrow interpretation of the claim term. Additionally, Patent Owner has not pointed to any definitions or disavowals in the specification or otherwise clearly explained why the specification’s disclosure of “boot data lists” should not guide our claim construction analysis. Thus, we are unpersuaded by Patent Owner’s contentions, which appear to be based on a narrow reading of the claim that is inconsistent with the broadest reasonable interpretation of the claims. Accordingly, we decline to adopt Patent Owner’s claim construction as it would limit unnecessarily the scope of the claims. Instead, we find the broadest reasonable construction of “boot data list” to encompass a “list of boot data.”” slip op. at 8
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner does not dispute Dr. Neuhauser’ testimony. See generally PO Resp. Patent Owner’s Declarant, Dr. Godmar Back (“Dr. Back”), however, provides his own assessment regarding a person of ordinary skill in the art relevant to the ’862 patent and agrees with Dr. Neuhauser’s testimony. Ex. 2008 ¶ 50. We do not observe a meaningful differences between the parties’ assessments of a person of ordinary skill in the art. We further note that either assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Our analysis in this Decision is supported by either assessment. Based on our review of the ’862 patent, the types of problems and solutions described in the ’862 patent and cited prior art, and the testimony of Dr. Neuhauser and Dr. Back, we adopt and apply Dr. Back’s definition of a person of ordinary skill in the art at the time of the claimed invention for purposes of this Decision. D. Overview of the Asserted Prior Art” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Settsu fails to teach “updating a boot list.” Rather, we agree with the testimony of Dr. Neuhauser regarding the similarities between Settsu’s OS and the functionality of the Windows 98 OS, and why a person of ordinary skill in the art would have considered updates to have occurred to the boot data lists in Settsu. See Ex. 1003 ¶ 117; Ex. 1003, 5:39–51, 13:55–65, 14:44–52, 16:7–17:62, Figs. 12, 20(ST213). Specifically, we determine that a person of ordinary skill in the art would have understood that OS modules, such as Settsu’s, would have required updates when new, updated code becomes available. See Ex. 1003 ¶ 117 (citing O’Reilly 110–112). We agree with Dr. Neuhauser that to accomplish these updates, a person of ordinary skill in the art would have understood that updates occur to boot data lists in Settsu; namely, updates to lists of boot data included within OS functional module files stored in boot device 3, as well as updates to lists of boot data, such as the function definition file 71 or the OS main body module 8. See id. Given the explicit teaching of Settsu and the credible testimony of Dr. Neuhauser regarding the state of the art and the knowledge of one of skill the art, we are unmoved by Patent Owner’s argument regarding the prosecution history of the ’862 patent or that the Examiner fully understood the implications of Settsu’s Figure 20. Accordingly, based on the entirety of the record and evidence, and crediting the testimony from Dr. Neuhauser (see Ex. 1003 ¶¶ 78, 116–118), we determine that “updating the boot data list” is taught or suggested by Settsu, and the subject matter of the claim as whole would have been obvious to a person of ordinary skill in art in view of Settsu.” slip op. at 22
Patent outcomesUS 8,880,862 unpatentableClaim construction§ 103 obviousnesscites Markman · KSR · GrahamPatents in suitUS 8,880,862 - Apple, Inc. v. Realtime Data LLCAll claims unpatentablePTAB · Mar 13, 2018 · IPR2016-01737 · APJ Georgianna W Braden · IPR · Final written decision
Claims 1–4, 6, 7, 13, 23–34, 47–58, 83–96, 99, 100, 105–111, 113, and 116 are unpatentable as obvious; substitute claims 118–173 are allowed.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b). Therefore, we consult the patent’s specification to help clarify the meaning of claim terms. Trading Techs. Int’l, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1352 (Fed. Cir. 2010) (holding claims “must be read in view of the specification, of which they are a part” (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996))). We must be careful, however, not to import improperly limitations into the claims or to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Given our mandate under 37 C.F.R. § 42.100(b) and the patent’s various descriptions of “boot data list,” we understand that the examples laid out in the specification are exemplary and are not to be read as limitations in the claims. Patent Owner’s proffered claim construction imports selected limitations from specific embodiments in the specification into the claim and provides an overly narrow interpretation of the claim term. Additionally, Patent Owner has not pointed to any definitions or disavowals in the specification or otherwise clearly explained why the specification’s disclosure of “boot data lists” should not guide our claim construction analysis. Thus, we are unpersuaded by Patent Owner’s contentions, which appear to be based on a narrow reading of the claim that is inconsistent with the broadest reasonable interpretation of the claims. Accordingly, we decline to adopt Patent Owner’s claim construction as it would limit unnecessarily the scope of the claims. Instead, we find the broadest reasonable construction of “boot data list” to encompass a “list of boot data.”” slip op. at 9
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner does not dispute Dr. Neuhauser’ testimony. See generally PO Resp. Patent Owner’s Declarant, Dr. Godmar Back (“Dr. Back”), however, provides his own assessment regarding a person of ordinary skill in the art relevant to the ’862 patent and agrees with Dr. Neuhauser’s testimony. Ex. 2008 ¶ 55. We do not observe a meaningful differences between the parties’ assessments of a person of ordinary skill in the art. We further note that either assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Our analysis in this Decision is supported by either assessment. Based on our review of the ’862 patent, the types of problems and solutions described in the ’862 patent and cited prior art, and the testimony of Dr. Neuhauser and Dr. Back, we adopt and apply Dr. Back’s definition of a person of ordinary skill in the art at the time of the claimed invention for purposes of this Decision. D. Overview of the Asserted Prior Art” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Based on (1) the teachings of Dye that are directed to improved memory capacity and performance, specifically improved data density, efficiency, and bandwidth (Ex. 1008, at [57], 2:42–46), (2) the teachings of Dye ’284 directed to implementing Dye’s techniques to hard disk drives and flash memory, and (3) crediting of the persuasive testimony of Dr. Neuhauser demonstrating both the applicability of Dye to Sukegawa and explaining why a person of ordinary skill in the art would have combined the prior art teachings, we find Petitioner has articulated sufficient reasoning with rational underpinning to combine the references as asserted.” slip op. at 33
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“of right, but rather must be proposed as a part of a Motion to Amend. 35 U.S.C. § 316(d). The Board must assess the patentability of proposed substitute claims “without placing the burden of persuasion on the patent owner.” Aqua Products, 872 F.3d 1290. Yet, Patent Owner’s proposed substitute claims still must meet the statutory requirements of 35 U.S.C. § 316(d) and the procedural requirements of 37 C.F.R. § 42.121. See also “Guidance on Motions to Amend in view of Aqua Products” (Nov. 21, 2017) (https://www.uspto.gov/sites/default/files/documents/guidance_ on_motions_to_amend_11_2017.pdf) (“Guidance”). Accordingly, Patent Owner must demonstrate (1) the amendment responds to a ground of unpatentability involved in the trial; (2) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter; (3) the amendment proposes a reasonable number of substitute claims; and (4) the proposed claims are supported in the original disclosure. See Guidance. For reasons set forth below, we determine Patent Owner has satisfied its burden with respect to the above-discussed requirements of 37 C.F.R. § 42.121. Patent Owner seeks to add fifty-five (55) substitute claims to replace the fifty-five (55) challenged claims found unpatentable, and each substitute claim adds limitations that purport to narrow the scope of the original claim it replaces. See Mot. 2–4, Claim Appendix, iii–xii. Patent Owner also identifies disclosures in the originally-filed application that fall within the scope of proposed substitute claims 118–173. Mot. 4–17 (citing Ex. 2010; Ex. 2017; Ex. 2022). Patent Owner further identifies support in the original specification for the limitation in substitute independent claims 118, 122, and 124 that the preloading may occur into volatile memory. Mot. 5–6 (citing Ex. 2017, 12:16–18 (“[T]he cache 13 may comprise volatile or non-volatile memory, or any combination thereof. Preferably, the cache 13 is implemented in SDRAM (static dynamic random access memory), 41:4– 9, 42:17–20, 43:13–14, Fig. 7B), 8–15.” According to the testimony of Dr. Back, a person of ordinary skill in the art would have understood that SDRAM is volatile memory. See Ex. 2022 ¶ 23. We note that further support for substitute claims 118–173 can be found in the original specification’s discussion of preloading portions of the computer operating system from the boot device (e.g., hard disk) into the onboard cache memory. Ex. 2017, 41:4–5. We, thus, find written description support for Patent Owner’s proposed substitute claims. Moreover, Patent Owner proposes a narrowing limitation in each proposed substitute claim in direct response to the grounds of unpatentability involved in this trial. Therefore, Patent Owner has satisfied the procedural” slip op. at 44
Patent outcomesUS 8,880,862 unpatentableClaim construction§ 103 obviousnesscites Markman · KSR · GrahamPatents in suitUS 8,880,862 - Netapp Inc. v. Realtime Data LLCInstitution deniedPTAB · Jan 25, 2018 · IPR2017-01660 · APJ Jason J Chung · IPR · Institution
The Board denied institution of NetApp’s petition challenging claim 105 under § 314(a), applying the General Plastic factors to the circumstances of this follow-on challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“2. whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it; 3. whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition; 4. the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition; 5. whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent; 6. the finite resources of the Board; and 7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review. IPR2016-01357 Paper 19, 9–10 (citations omitted). We recognize that in General Plastic the factors were used to analyze a situation in which the same party files multiple petitions challenging the same patent. However, our discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) is not limited to situations where the same party files multiple petitions, and we find that the General Plastic factors provide a useful framework for analyzing the facts and circumstances present in this case, in which a different petitioner filed a petition challenging a patent that had been challenged already by previous petitions. Applying the General Plastic factors to the present Petition, we conclude that the circumstances present here warrant discretionary denial of institution.” slip op. at 9
Discretionary denialPatents in suitUS 7,161,506 - Apple, Inc. v. Realtime Data LLCAll claims unpatentablePTAB · Jan 17, 2018 · IPR2016-01365 · APJ Debra K Stephens · IPR · Final written decision
Claims 1–31 are unpatentable as obvious over Sukegawa and Dye under § 103.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts, through its declarant Dr. Neuhauser, one of ordinary skill would be a person with a Bachelor’s Degree in electrical engineering, computer engineering, or a related area of study. In addition, this person would have between three and five years of practical experience in the design and implementation of computer systems, such as personal computers. Alternatively, a person with a Master’s Degree in the area of electrical engineering, computer engineering, or a related area of study and somewhat less practical experience would be similarly qualified (Ex. 1003 ¶ 15). Patent Owner does not appear to dispute the educational level or experiential aspects of Petitioner’s definition, and indeed, Patent Owner’s declarant, Dr. Back, agrees with Dr. Neuhauser as to the level of ordinary skill in the art (Ex. 2003 ¶ 42). We agree with and adopt Petitioner’s assessment of a level of skill in the art. We note also that the applied prior art reflects the appropriate level of skill at the time of the claimed invention (see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The prefix “pre” means “before,” but absent additional information, does not convey how long “before” is. As such, Patent Owner’s proposed interpretation is too narrow. For example, Dictionary of Computer and Internet Words defines “load” as “[t]o transfer a program from a storage device into a computer’s memory” (Ex. 2005, 3). The IEEE Standard Computer Dictionary defines “load” as “[t]o copy computer instructions or data from external storage to internal storage or from internal storage to registers” (Ex. 2006, 3–4; see Ex. 2008, 4). Indeed, none of the proffered definitions includes any time component for use of the loaded data. “Preloading,” thus, would be copying computer instructions or data from external storage to internal storage or from internal storage to registers before an unspecified event occurs.” slip op. at 16
- Expert testimonyPetitioner expert creditedDecided for petitioner
“technology (Ex. 1008, Abstract). In particular, Dye teaches Compression Enhanced Flash Memory controller (CEFMC) allow data to be stored in normal or compressed format or transmitted and stored on a medium in normal or compressed format (id. at 3:66–4:8, 7:35–43, 8:6–12). Dye ’284 teaches data may be stored in compressed form on non-volatile memory (Ex. 1009, 4:16–24) and that such data may include program data and operating system data (id. at 11:32–35, 38:30–42, Figs. 22, 23). As set forth by Petitioner’s declarant, Dr. Neuhauser, Dye ’284 “describes benefits of using compression in several types of computer system storage devices, including hard disks, such as Sukegawa’s HDD2, and flash memory devices, such as Sukegawa’s flash memory unit” (Ex. 1003 ¶ 62 (citing Ex. 1009, 4:16–24, 8:44–53, 11:28–37, 11:54–12:33; Ex. 1008, Abstract, 7:34–43)). We credit Dr. Neuhauser’s statement that Sukegawa’s HDD2 and flash memory unit 1 are “hard disks and flash memory,” respectively, as described in Dye ’284 (id.). We further credit Dr. Neuhauser’s statement that “[b]ased on the clear teachings of Dye with respect to the advantages of data compression, one of ordinary skill [would] have been motivated to apply Dye to the system of Sukegawa to obtain improved performance of [Sukegawa’s] Flash Memory Unit 1” (id. ¶ 67; see id. ¶¶ 119–121).” slip op. at 40
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“combination of Sukegawa and Dye teaches the disputed limitation. “‘To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents’” (Apple Inc. v. International Trade Comm’n, 725 F.3d 1356, 1362 (Fed. Cir. 2013)). The host document must “[cite the] material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein” (Advanced Display Sys. Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed.Cir.2000)). Here, unlike in the cases cited by Patent Owner (PO Resp. 46, n.138), Dye specifically states the U.S. patent application (now Dye ’284) is “incorporated by reference in its entirety as though fully and completely set forth herein” (Ex. 1008, 6:3–9). Indeed, as noted by Petitioner (Pet. Reply 24–25), the specific material to be incorporated is identified with detailed particularity: U.S. patent application Ser. No. 09/239,659 titled “Bandwidth Reducing Memory Controller Including Scalable Embedded Parallel Data Compression and Decompression Engines[,]” which was filed on Jan. 29, 1999 (5143-01700), is hereby incorporated by reference in its entirety as though fully and completely set forth herein (Ex. 1008, 6:3–9). Dye additionally refers to specific features of Dye ’284 (id. at 3:66–4:19). Thus, Dye cited Dye ’284 in a manner that makes clear that Dye ’284 is effectively part of Dye, as if it were explicitly therein, and accordingly, Dye properly incorporates Dye ’284 by reference. We further note that Dye is a continuation-in-part of Dye ’284 and thus, has a significant amount of overlapping disclosure (id. at 1:9–13, [63]). Petitioner relies on the combination of Sukegawa’s HDD2 (boot drive) and Dye’s teaching of compressed data on the boot device (Pet. 33– 35). Petitioner asserts because “‘the storage area of the flash memory is limited’ in Sukegawa, a [person of ordinary skill in the art] would have appreciated how compression would have improved storage capacity of Sukegawa’s flash memory unit 1, as well as speed of data access” (Pet. 10 (citing Ex. 1003 ¶ 241; Ex. 1005, 2:28–29)). According to Petitioner, “a [person of ordinary skill in the art] would have been motivated to modify Sukegawa to increase the effective density and read access rate of the non-volatile storage devices in Sukegawa’s system, and to thereby achieve further reduction in the time required for booting up” (Pet. 34 (citing Ex. 1003 ¶¶ 118–121)). Petitioner points to Dye as explaining “how compression ‘improves system wide memory density and data bandwidth” and “allows lower cost systems due to smaller data storage” and “reduced bandwidth requirements’” (Pet. Reply 26 (citing Ex. 1008, Abstract)(emphasis omitted)). Petitioner further asserts Dye renders compression on Sukegawa’s hard disk drive obvious (Pet. 33–34 (citing Ex. 1008, Abstract, 2:42–4:55, 7:34–9:5, 10:19–41); Pet. Reply 27 (citing Ex. 1008, Abstract, 2:42–4:55, 7:34–9:5, 10:19–41)). Petitioner additionally contends “Dye ’284 [] describes the use of a controller including ‘the compression/decompression engine’ to compress the same types of data that are stored in Sukegawa’s HDD2 and flash memory unit 1: namely, ‘application data’ and ‘operating system data’” (Pet. 14 (citing Ex. 1009 11:32–35, 38:29–39:44, FIGS. 22, 23)). Therefore, Petitioner asserts “a [person of ordinary skill in the art] would have been motivated by Dye to store Sukegawa’s control information (e.g., OS/AP) on HDD2 in compressed form and load the compressed control information from the HDD2 into Sukegawa’s flash memory unit 1 as compressed data (Pet. 34 (citing Ex. 1003 ¶ 120)). Dye teaches use of parallel compression and decompression technology (Ex. 1008, Abstract). In particular, Dye teaches Compression Enhanced Flash Memory controller (CEFMC) allow data to be stored in normal or compressed format or transmitted and stored on a medium in normal or compressed format (id. at 3:66–4:8, 7:35–43, 8:6–12). Dye ’284 teaches data may be stored in compressed form on non-volatile memory (Ex. 1009, 4:16–24) and that such data may include program data and operating system data (id. at 11:32–35, 38:30–42, Figs. 22, 23). As set forth by Petitioner’s declarant, Dr. Neuhauser, Dye ’284 “describes benefits of using compression in several types of computer system storage devices, including hard disks, such as Sukegawa’s HDD2, and flash memory devices, such as Sukegawa’s flash memory unit” (Ex. 1003 ¶ 62 (citing Ex. 1009, 4:16–24, 8:44–53, 11:28–37, 11:54–12:33; Ex. 1008, Abstract, 7:34–43)). We credit Dr. Neuhauser’s statement that Sukegawa’s HDD2 and flash memory unit 1 are “hard disks and flash memory,” respectively, as described in Dye ’284 (id.). We further credit Dr. Neuhauser’s statement that “[b]ased on the clear teachings of Dye with respect to the advantages of data compression, one of ordinary skill [would] have been motivated to apply Dye to the system of Sukegawa to obtain improved performance of [Sukegawa’s] Flash Memory Unit 1” (id. ¶ 67; see id. ¶¶ 119–121). Furthermore, Petitioner is not relying on incorporation of Dye’s controller, but rather on Dye’s data compression/decompression and storage of compressed/decompressed data (Pet. 33–35).” slip op. at 38
Patent outcomesUS 7,181,608 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 7,181,608
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.