DENVER-#190542-v3-7415530 - IPR Petition for Inter Partes ... · Inter Partes Review of USP 7,415,530 dn-190542-iii- Exhibit List for Inter Partes Review of U.S. Patent No. 7,415,530

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Patent No. 7,415,530 Petition For Inter Partes Review

UNITED STATES PATENT AND TRADEMARK OFFICE _______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________

NETAPP INC., Petitioner

v.

REALTIME DATA LLC Patent Owner.

Patent No. 7,415,530

_______________

Inter Partes Review No. IPR2017-01195 ____________________________________________________________

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,415,530 UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 et seq.

TABLE OF CONTENTS

Page

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TABLE OF AUTHORITIES ................................................................................... iv

I. INTRODUCTION .......................................................................................... 1

II. NOTICES AND STATEMENTS ................................................................... 2

III. SUMMARY OF THE ’530 PATENT ............................................................ 4

A. Background of the ’530 Patent ............................................................. 4

B. Prosecution History of the ’530 Patent ................................................ 6

IV. LEVEL OF ORDINARY SKILL IN THE ART ............................................ 7

V. CLAIM CONSTRUCTION ........................................................................... 7

VI. GROUNDS OF REJECTION ........................................................................ 8

VII. DETAILED EXPLANATION UNDER 37 C.F.R. § 42.104(B) ................. 10

A. Ground 1: Claims 1 and 18 Are Obvious Over Franaszek in View of Osterlund .............................................................................. 10

1. Claim 1 Is Obvious .................................................................. 10

a. Disclosure of Franaszek and Osterlund ......................... 10

b. Motivation to Combine Franaszek and Osterlund ......... 32

2. Claim 18 Is Obvious ................................................................ 36

B. Ground 2: Claims 2-4 Are Obvious over Franaszek in View of Osterlund and Fall .............................................................................. 37

1. Claim 2 Is Obvious .................................................................. 37

2. Claims 3 and 4 Are Obvious .................................................... 41

C. Ground 3: Claim 12 Is Obvious Over Franaszek in View of Osterlund and Assar ........................................................................... 44

D. Ground 4: Claims 19 and 20 Are Obvious Over Franaszek in View of Osterlund and Crawford ....................................................... 46

1. Claim 19 Is Obvious ................................................................ 46

2. Claim 20 Is Obvious ................................................................ 49

E. Ground 5: Claims 1 and 18-20 Are Obvious Over Osterlund in View of Franaszek .............................................................................. 51

TABLE OF CONTENTS (continued)

Page

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1. Claim 1 Is Obvious .................................................................. 51

a. Disclosure of Osterlund and Franaszek ......................... 51

b. Motivation to Modify Osterlund in view of Franaszek ....................................................................... 59

2. Claim 18 Is Obvious ................................................................ 61

3. Claim 19 Is Obvious ................................................................ 62

4. Claim 20 Is Obvious ................................................................ 62

F. Ground 6: Claims 2-4 Are Obvious over Osterlund in View of Franaszek and Fall .............................................................................. 63

1. Claim 2 Is Obvious .................................................................. 63

2. Claims 3 and 4 Are Obvious .................................................... 64

G. Ground 7: Claim 12 Is Obvious Over Osterlund in View of Fanaszek and Kitagawa ...................................................................... 65

VIII. CONCLUSION ............................................................................................. 66

Inter Partes Review of USP 7,415,530

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Exhibit List for Inter Partes Review of U.S. Patent No. 7,415,530

Exhibit Description Exhibit #

U.S. Patent No. 7,415,530 to Fallon (the “’530 patent”) 1001

Declaration of Daniel Hirschberg (“Hirschberg Decl.”) 1002

95/001,927 Reexamination File History, 5/31/13 Right of Appeal Notice (“Right of Appeal Notice”)

1003

U.S. Patent No. 5,247,646 (“Osterlund”) 1004

U.S. Patent No. 5,034,914 (“Osterlund ’914”) 1005

U.S. Patent No. 5,870,036 (“Franaszek”) 1006

U.S. Patent No. 5,991,515 (“Fall”) 1007

U.S. Patent No. 5,479,638 (“Assar”) 1008

U.S. Patent No. 5,771,354 (“Crawford”) 1009

U.S. Patent No. 6,078,541 (“Kitagawa”) 1010

D.A. Lelewer and D.S. Hirschberg, “Data compression,” Computing Surveys 19:3 (1987) 261-297 (“Lelewer”)

1011


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TABLE OF AUTHORITIES

Page(s)

Cases

3M Innovative Props. v. Avery Dennison, 350 F.3d 1365 (Fed. Cir. 2003) .............................................................. 24, 38, 43

Blue Calypso LLC v. Groupon Inc., 815 F.3d 1331 (Fed. Cir. 2016) .......................................................................... 23

Cuozzo Speed Techs. v. Lee, 136 S. Ct. 2131 (2016) .......................................................................................... 7

Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356 (Fed. Cir. 2006) .................................................................... 34, 60

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) .....................................................................................passim

Minton v. Nat’l Ass’n of Sec. Dealers, Inc., 336 F.3d 1373 (Fed. Cir. 2003) ............................................................................ 8

Statutes

35 U.S.C. §§ 311-319 ............................................................................................................ 1 § 314(a) ............................................................................................................... 10

Other Authorities

37 C.F.R. § 41.100(b) ............................................................................................................ 7 § 42.8(b)(1) ........................................................................................................... 2 § 42.8(b)(2) ........................................................................................................... 2 § 42.8(b)(3) ........................................................................................................... 3 § 42.8(b)(4) ........................................................................................................... 3 § 42.100 et seq. ..................................................................................................... 1 § 42.104(a) ............................................................................................................ 3 § 42.104(B) ......................................................................................................... 10


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Figs. 1-4C, Fig. 6 ..................................................................................................... 16

IPR2016-00972, IPR2016-01671 .......................................................................... 1, 3

U.S. Patent No. 5,034,914 ........................................................................................ 62

U.S. Patent No. 7,415,530 .................................................................................passim


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Petitioner NetApp Inc. (“Petitioner”) respectfully petitions for inter partes

review of claims 1-4, 12, and 18-20 of U.S. Patent No. 7,415,530 (the “’530

patent”) (Ex. 1001) in accordance with 35 U.S.C. §§ 311-319 and 37 C.F.R.

§ 42.100 et seq.

Claim 20 has not previously been challenged in an IPR proceeding. The

other claims in this Petition, claims 1-4, 12, 18 and 19, have been challenged in the

following IPRs: IPR2016-00972 (instituted), IPR2016-01671 (instituted), and

IPR2017-00365. This Petition includes instituted grounds of rejection from those

proceedings as well as new additional grounds of rejection the Board has not had

the opportunity to consider.

I. INTRODUCTION

The ’530 patent relates generally to data compression and decompression

systems. ’530 patent at 1:15-18. The ’530 patent acknowledges a “well known”

benefit of such systems is a reduction in “the time to transmit data by more

efficiently utilizing low bandwidth data links.” Id. at 2:12-15. An additional

purported benefit of the ’530 patent is using multiple compression encoders so that

the encoders’ compression ratios can be compared before selecting a particular

encoder. Id. at 12:20-30. As explained in detail below, however, these features

(improved transfer speeds and multiple compression encoders) were already


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disclosed in the prior art, including Franaszek and Osterlund (the basis for this

Petition), before the priority date of the ’530 patent.

Thus, the ’530 patent claims are, at best, the mere combination of these

known solutions used to address known problems and that achieve predictable and

beneficial results. Hirschberg Decl. (Ex. 1002), ¶ 24. Therefore, each of the

challenged claims is unpatentable.

II. NOTICES AND STATEMENTS

Pursuant to 37 C.F.R. § 42.8(b)(1), NetApp Inc. and SolidFire LLC1 are

each a real party-in-interest.

Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner identifies the following related

matters. In the Eastern District of Texas Patent Owner has asserted the ’530 patent

in Case Nos. 6-17-cv-00119, 6-17-cv-00120, 6-17-cv-00121, 6-17-cv-00122, 6-17-

cv-00123, 6-17-cv-00124, 6-17-cv-00125, 6-17-cv-00126, 6-17-cv-00118, 6-16-

cv-01037, 6-16-cv-01035, 6-16-cv-00961, 6-16-cv-00089, 6-16-cv-00086, 6-16-

cv-00087, 6-17-cv-00071, 6-15-cv-00885, 6-15-cv-00463, 6-15-cv-00464, 6-15-

cv-00465, 6-15-cv-00466, 6-15-cv-00467, 6-15-cv-00468, 6-15-cv-00469, 6-15-

cv-00470, and 6-10-cv-00493. In the Northern District of California, Patent

Owner has asserted the ’530 patent in Case Nos. 3-16-cv-02595 and 3-16-cv-

01836. In the Central District of California, Patent Owner has asserted the ’530

1 SolidFire LLC is wholly owned by NetApp, Inc.


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patent in Case No. 2-16-cv-02743. In the Southern District of California, Patent

Owner has asserted the ’530 patent in Case No. 3-12-cv-01048. The inter partes

review nos. IPR2017-00365, IPR2016-01671, IPR2016-00972, IPR2016-00878,

IPR2016-00375, and IPR2016-00376 challenge claims of the ’530 patent. This

Petition relies on different grounds as inter partes review nos. IPR2016-00375 and

IPR2016-00376. Additionally, this Petition relies on grounds that are included in

inter partes review nos. IPR2017-00365, IPR2016-01671, and IPR2016-00972 and

additional grounds not included in those proceedings.

Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner identifies the following

counsel (and a power of attorney accompanies this Petition).

Lead Counsel for Petitioner Backup Counsel for Petitioner

Diek O. Van Nort [email protected] Registration No.: 60,777 MORRISON & FOERSTER LLP 370 Seventeenth Street, Suite 4200 Denver, CO 80202 Tel: (650) 813-5696 Fax: (303) 592-1510

Jonathan Bockman [email protected] Registration No.: 45,640 MORRISON & FOERSTER LLP 1650 Tysons Boulevard McLean, VA 22102 Tel: (703) 760-7769 Fax: (703) 760-7777

Pursuant to 37 C.F.R. § 42.8(b)(4), service information for lead and back-up

counsel is provided above. Petitioner consents to electronic service by email to

[email protected].

Pursuant to 37 C.F.R. § 42.104(a), Petitioners certify that the ’530 patent is

available for inter partes review and that Petitioners are not barred or estopped


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from requesting an inter partes review challenging the patent claims on the

grounds identified in this Petition.

III. SUMMARY OF THE ’530 PATENT

A. Background of the ’530 Patent

The ’530 patent simply describes the well-known concepts of compression,

storage, and decompression of data as acceleration techniques. The ’530 patent

explains:

It is well known within the current art that data

compression provides several unique benefits. First, data

compression can reduce the time to transmit data by more

efficiently utilizing low bandwidth data links. Second,

data compression economizes on data storage and allows

more information to be stored for a fixed memory size

by representing information more efficiently.

’530 patent at 2:12-18.

Claim 1 of the ’530 patent recites (emphasis added):

A system comprising:

a memory device; and

a data accelerator, wherein said data accelerator is

coupled to said memory device, a data stream is received

by said data accelerator in received form, said data

stream includes a first data block and a second data

block, said data stream is compressed by said data


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accelerator to provide a compressed data stream by

compressing said first data block with a first compression

technique and said second data block with a second

compression technique, said first and second

compression techniques are different, said compressed

data stream is stored on said memory device, said

compression and storage occurs faster than said data

stream is able to be stored on said memory device in

said received form, a first data descriptor is stored on

said memory device indicative of said first compression

technique, and said first descriptor is utilized to

decompress the portion of said compressed data stream

associated with said first data block.

The plain language of the claim simply requires the data accelerator to compress a

first data block with a first compression technique and a second data block with a

different second compression technique before storing the compressed data blocks

in a memory device. Further, the “compression and storage occurs faster than

said data stream is able to be stored on said memory device in said received

form.”

Importantly, the ’530 patent does not describe any new compression

techniques or other new techniques that can be used to achieve the above “faster

than” limitation. Hirschberg Decl., ¶ 52. Instead, the ’530 patent simply states

that “encoding techniques currently well known within the art” can be selected


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based on compression ratio. ’530 patent at 11:40-48, 12:20-30. The ’530 patent’s

claims similarly fail to describe any structure or techniques to accomplish the

“faster than” limitation. Id. Rather, the claims simply claim the result (i.e., that

compression and storage is “faster than” storing the data stream in its received

form).

B. Prosecution History of the ’530 Patent

The inter partes reexamination of the ’530 patent is relevant to the current

proceeding. During this proceeding claims 1, 2, 16-21, and 23 of the ’530 patent

were rejected as obvious over a variety of references. Claim 1 survived because it

requires that the data “compression and storage occurs faster than said data stream

is able to be stored on said memory device in said received form.” Right of

Appeal Notice (Ex. 1003) at 8-9, 11, 13. The reexamination examiner found that

this limitation distinguished these claims over the prior art at issue in the

reexamination. Id. As shown below, however, this feature was known to those

skilled in the art. For example, Osterlund (Ex. 1004) describes that storing data

“can be completed faster because the compression operation has reduced the

amount of data which must be stored.” Osterlund at 5:25-29; see also id. at 5:42-

46 (“[T]he device allows … [for] overall faster rates of data storage and

retrieval.”). Accordingly, Osterlund teaches the very limitation of the claims of

the ’530 patent that led to allowance. At most, the challenged claims recite only


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what was old and obvious and do not yield anything more than predictable results.

Hirschberg Decl., ¶¶ 18-30.

IV. LEVEL OF ORDINARY SKILL IN THE ART

When the ’530 patent was filed, a person having ordinary skill in the art

relevant to the ’530 patent would have had an undergraduate degree in either

computer science, computer engineering, electrical and computer engineering, or

an equivalent field and one to three years of experience working with data

compression or a graduate degree with course work or research in the field of data

compression. Individuals with additional education or additional industrial

experience could still be of ordinary skill in the art if that additional education or

experience compensates for a deficit in one of the other aspects of the

requirements stated above. Hirschberg Decl., ¶ 32. In this Petition, reference to a

person having ordinary skill in the art refers to a person with these qualifications.

V. CLAIM CONSTRUCTION

Pursuant to 37 C.F.R. § 41.100(b), a claim of an unexpired patent is given

its broadest reasonable interpretation in light of the specification. See Cuozzo

Speed Techs. v. Lee, 136 S. Ct. 2131 (2016). For the purposes of this proceeding,

unless noted herein, all terms have their broadest reasonable interpretation read in

light of the specification, as would have been understood by a person of ordinary

skill in the art.


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Claim terms are not given patentable weight if the term merely recites an

intended result. See, e.g., Minton v. Nat’l Ass’n of Sec. Dealers, Inc., 336 F.3d

1373, 1381 (Fed. Cir. 2003) (holding that the district court was correct in not

giving weight to the phrase “traded efficiently” because the term “efficiently” did

not inform the mechanics of how the trade is executed and was instead a laudatory

term characterizing the result of the executing step). Claim 1 recites

“compression and storage occurs faster than said data stream is able to be stored

on said memory device in said received form.” Nothing in claim 1 (or the rest of

the specification) describes how this claim term is accomplished or achieved. See

Hirschberg Decl., ¶ 52; infra § VII.A.1.a. Instead, the ’530 patent is attempting to

claim an intended result instead of the structure. Accordingly, “compression and

storage occurs faster than said data stream is able to be stored on said memory

device in said received form” should not be given patentable weight.

If, however, the Board determines that this limitation carries patentable

weight, this term should be given its broadest reasonable interpretation in light of

the specification. Petitioner does not believe any further claim construction is

necessary to address the grounds of rejection presented below.

VI. GROUNDS OF REJECTION

Petitioner requests cancellation of claims 1-4, 12, and 18-20 of the ’530

patent in view of the following references and grounds:


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Ground 1: Claims 1 and 18 are obvious over Franaszek2 in view of

Osterlund3;

Ground 2: Claims 2-4 are obvious over Franaszek in view of

Osterlund and Fall4;

Ground 3: Claim 12 is obvious over Franaszek in view of Osterlund

and Assar5;

Ground 4: Claims 19 and 20 are obvious over Franaszek in view of

Osterlund and Crawford6;

Ground 5: Claims 1 and 18-20 are obvious over Osterlund in view of

Franaszek;

Ground 6: Claims 2-4 are obvious over Osterlund in view of

Franaszek and Fall; and

2 Exhibit 1006. Franaszek qualifies as prior art under §§ 102(a), (e).

3 Exhibit 1004. Osterlund qualifies as prior art under § 102(b). Osterlund

incorporates by reference Osterlund ’914, which is also prior art under § 102(b).

4 Exhibit 1007. Fall qualifies as prior art under § 102(e).

5 Exhibit 1008. Assar qualifies as prior art under § 102(b).

6 Exhibit 1009. Crawford qualifies as prior art under §§ 102(a), (e).


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Ground 7: Claim 12 is obvious over Osterlund in view of Franaszek

and Kitagawa.7

This Petition, supported by Declaration of Dr. Dan Hirschberg filed

herewith (Ex. 1002), demonstrates that there is a reasonable likelihood that

Petitioner will prevail with respect to at least one challenged claim and that each

of the challenged claims is not patentable. See 35 U.S.C. § 314(a).

VII. DETAILED EXPLANATION UNDER 37 C.F.R. § 42.104(B)

A. Ground 1: Claims 1 and 18 Are Obvious Over Franaszek in View of Osterlund

1. Claim 1 Is Obvious

a. Disclosure of Franaszek and Osterlund

Franaszek expressly teaches most of the features recited in claim 1. In

particular, Franaszek teaches a compression system that provides an improved

compression ratio by using multiple different compression techniques. Each data

block to be compressed is analyzed to determine an available compression

algorithm that will produce the best compression ratio. The data block is then

compressed with the selected algorithm and the compressed data block is stored

with an indication of which compression algorithm was used.

7 Exhibit 1010. Kitagawa qualifies as prior art under § 102(e).


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To eliminate any doubt about the obviousness of the claimed subject

matter, a person of ordinary skill in the art would have looked to any number of

references, including Osterlund, for teachings relevant to the claimed “data

accelerator,” ’530 patent at 18:26, and the requirement that the data accelerator

speed up data storage by compressing data first, id. at 18:36-38 (“compression

and storage occurs faster than said data stream is able to be stored on said

memory device in said received form”). Hirschberg Decl., ¶¶ 72-75

Specifically, Osterlund teaches a system that can compress and store data in

faster than storing data without compressing it. Id. ¶¶ 57-64. Osterlund affects

this accelerated data storage by inserting its compression module “directly into

the data stream immediately after it exits from the host interface unit after being

received from the host.” Osterlund at 5:38-42; Hirschberg Decl., ¶ 57. Osterlund

teaches the use of “wide multibit data buses for fast data transfer” and the use of

direct memory access techniques employed to transfer data into and out of the

buffer memory within the compressor. Osterlund at 4:21-26; Hirschberg Decl., ¶

61. Osterlund enumerates several advantages to this technique. First, it reduces

the amount of data to be stored. Osterlund at 5:20-23; Hirschberg Decl., ¶ 60.

Second, it reduces the amount of time required to store the data. Hirschberg

Decl., ¶ 60-64, 73-74; Osterlund at 5:23-25. Finally, Osterlund’s compression


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scheme results in a faster overall data-storage rate. Id. at 5:42-48; Hirschberg

Decl., ¶¶ 60-64.

Applying Osterlund to Franaszek to ensure that Franaszek’s data

compressor compressed and stored data at a faster rate than without the

compressor required no more than the application of Osterlund’s known solution

to solve known problems (the need or desire to speed up data storage) and obtain

only predictable results. Hirschberg Decl., ¶¶ 72-75; see also KSR Int’l Co. v.

Teleflex Inc., 550 U.S. 398, 416 (2007) (“[W]hen a patent claims a structure

already known in the prior art that is altered by the mere substitution of one

element for another known in the field, the combination must do more than yield

a predictable result.”). Thus, claim 1 recites nothing more than an obvious

variation of Franaszek’s data compression and decompression scheme and is

unpatentable as obvious.


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TABLE I: Exemplary ’530 patent, claim 1 versus exemplary disclosures in Franaszek and Osterlund

Claim 1 Franaszek and Osterlund 1P A system

comprising: “A system … for compressing and decompressing data using a plurality of data compression mechanisms.” Franaszek at Abstract; see also id. at 1:7-9, 4:4-12, 3:29-31, 3:37-39, 8:42-53, 9:16-10:8, Figs. 1-3. “In an optical disk storage system, a data compression device is interposed between a host computer and an optical disk controller to permit data storage and retrieval operations on an optical disk to occur at a faster rate than would otherwise be possible.” Osterlund at Abstract; see also id. at 2:3-27.

1(a) a memory device; and

“Within the same information processing system as the CPU 5 or within another ‘remote’ system, there is a second memory 20.” Franaszek at 4:4-13; see also id. at Fig. 1, 6:59-62. “In order to accomplish this result, an optical disk controller unit 10 is interposed between the computer 19 (which may be substantially any host computer) and the optical disk system 24 (which may likewise be substantially any optical disk storage system).” Osterlund at 4:1-5.

1(b) a data accelerator, wherein said data accelerator is coupled to said memory device,

“[T]here is a compressor 30 that compresses data blocks as they are transferred to the second memory, and a de-compressor 40 that de-compresses data blocks as they are transferred to the first memory.” Franaszek at 4:14-20; see also id. at 4:5-13, 4:25-35, 4:51-5:17, 6:51-67, 8:42-53, 9:16-10:8, Figs. 1, 3, and 5. “[A] data compression device is interposed between a host computer and an optical disk controller to permit data storage and retrieval operations on an optical disk to occur at a faster rate than would otherwise be possible.” Osterlund at Abstract; see also id. at 4:62-65, 5:20-29, 5:49-54, 5:30-48, Fig. 1.


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Claim 1 Franaszek and Osterlund 1(c) a data stream is

received by said data accelerator in received form,

“In general, data compression involves taking a stream of symbols and transforming them into codes. If the compression is effective, the resulting stream of codes will be smaller than the original symbol stream ….” Franaszek at 1:11-29; see also, id. at 4:4-12, 4:14-20, 4:25-35, 5:8-11, 5:33-39, Figs. 1-3. “In the present invention, after raw data formatted by the host 19 for storage on a magnetic media storage device has been received by the host interface unit 20, it is transmitted to the compression/decompression module 25 where said data is compressed.” Osterlund at 5:13-17.

1(d) said data stream includes a first data block and a second data block,

“[U]ncompressed blocks 210 are compressed by a data compressor 220 before being stored as compressed blocks 230.” Franaszek at 6:64-66; see also id. at 3:9-10, 3:25-36, 4:4-7, 4:14-20, 4:25-35, 5:8-11, 5:33-39, Figs. 1-3. “. . . the sequence of records is received at the host interface means and is transferred to the data compression means . . . .” Osterlund at 3:1-3.

1(e) said data stream is compressed by said data accelerator to provide a compressed data stream by compressing said first data block with a first compression technique and said second data block with a second compression technique,

“A system and method for compressing and decompressing data using a plurality of data compression mechanisms. Representative samples of each block of data are tested to select an appropriate one of the data compression mechanisms to apply to the block. The block is then compressed using the selected one of the mechanisms and the compressed block is provided with an identifier of the selected mechanism.” Franaszek at Abstract; id. at 5:34 (“the block is compressed using the best method”); see also id. at 3:29-36, 4:14-20, 5:8-6:50, Figs. 1-4C. “. . . the sequence of records is received at the host interface means and is transferred to the data compression means; the sequence of records is compressed by the data compression means . . . .” Osterlund at 3:1-5; see also, id. at Fig. 2.


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Claim 1 Franaszek and Osterlund 1(f) said first and

second compression techniques are different,

“[T]here is provided a system and method for compressing data using a plurality of data compression mechanisms. Representative samples of each block of data are tested to select an appropriate one of the data compression mechanisms to apply to the block ….” Franaszek at 3:29-36; see also id. at Abstract, 5:34, 5:49-54, 7:16-19, 4:14-20, 5:8-6:50, Figs. 1-4C, Fig. 6.

1(g) said compressed data stream is stored on said memory device,

“[D]ata blocks 25 may be stored in a compressed format in the second memory ….” Franaszek at 4:14-20; see also id. at 5:33-38, 6:59-67, Figs. 1-2. “. . . the sequence of compressed records and the record directory are stored on the optical media storage device.” Osterlund at 3:14-16.

1(h) said compression and storage occurs faster than said data stream is able to be stored on said memory device in said received form,

“One advantage of the present invention is that, by compressing the data before it is sent to the optical disk, the total amount of data to be indexed and stored on the disk is reduced. As a result, substantially less time is required for the optical disk system 24 to store such data on an optical disk …. Since the compression module is capable of compressing and decompressing data with negligible delay, the device allows the optical disk storage device to have an overall faster rates of data storage and retrieval. This result is achieved because optical disk system 24 no longer slows down the system by storing redundant information.” Osterlund at 5:20-48; Franaszek at 4:14-20.


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Claim 1 Franaszek and Osterlund 1(i) a first data

descriptor is stored on said memory device indicative of said first compression technique, and said first descriptor is utilized to decompress the portion of said compressed data stream associated with said first data block.

“Compressed data blocks 230, with the compression method identifier M and for dictionary-based methods dictionary block identifier D encoded in the CMD area 235 are input to the de-compressor 270. The decompressor 270 de-compresses the block using the specified method found in the compression method table 240 (using the compression method identifier as an index), and for dictionary-based methods, specified dictionary block found in the dictionary block memory 250, and outputs uncompressed data blocks 280.” Franaszek at 4:65-5:7; see also id. at 3:29-36, 3:40-45, 4:54-5:7, Abstract & Fig. 2 (excerpted and annotated below).

Claim 1, preamble. Even if the preamble limits claim 1, Franaszek

discloses “a system.” Franaszek at Abstract (“A system … for compressing and

decompressing data ….”); see also id. at 1:7-9, Figs. 1-3; Hirschberg Decl., ¶ 44.


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Claim 1, limitation (a). Franaszek discloses “a memory device,” ’530

patent at 18:25, which is what Franaszek calls a “second memory 20,” Franaszek

at 4:7-9 & Fig. 1. In Fig. 1, the “second memory 20” is the claimed “memory

device” (highlighted above). Id. at 4:14-17; see also Hirschberg Decl., ¶¶ 47, 49.

Claim 1, limitation (b). Franaszek discloses “a data accelerator, wherein

said data accelerator is coupled to said memory device.” ’530 patent at 18:26-27;

Hirschberg Decl., ¶¶ 48-53. The ’530 patent uses the phrases “data storage

accelerator” and “data retrieval accelerator,” and says that (1) an accelerator

receives and processes data, (2) an accelerator uses “data compression and

decompression” to process the data, and (3) although called an “accelerator,” it

does not need to speed up the data rate compared to that of the receipt of the input

data. See, e.g., ’530 patent at 2:58-60, 5:8-10, 5:25-26, 5:29-32, 5:44-47, 5:64-66.

Franaszek describes a data accelerator consistent with the ’530 patent. Hirschberg

Decl., ¶¶ 48-53. For example, Franaszek’s Fig. 1 shows a data compressor and a


dn-190542 -18-

data decompressor (hereafter “data compressor”). Franaszek, Fig. 1 (highlighted

and annotated below).

Franaszek’s data compressor processes the data, shown as the

uncompressed data blocks 15 in the first memory 10 of Fig. 1 (for compression)

and shown as the compressed data blocks 25 in the second memory 20 (for

decompression). Id.; see also id. at 4:34-35, 6:51-58, Fig. 5; Hirschberg Decl.,

¶ 49. Since Franaszek’s compressor compresses and decompresses data,

Franaszek at 4:17-20, 1:22-44, Fig. 1, a person of ordinary skill in the art would

have understood that the compressor and decompressor described by Franaszek is

a “data accelerator,”8 Hirschberg Decl., ¶ 51; see also Lelewer (Ex. 1011) at 2

(describing benefits of data compression for data storage applications).

8 Even if the “data accelerator” is found to constitute a purely functional term, requiring looking to the specification to find the corresponding function, Franaszek describes a “data accelerator.” See Hirschberg Decl., ¶¶ 48-53. Franaszek also describes a “data accelerator” with the additional requirements found in claim 1, limitations (c)-(i), as described below.


dn-190542 -19-

Fig. 1 shows Franaszek’s compressor/decompressor coupled to memory

device 20. Franaszek at Fig. 1, 4:7-13; Hirschberg Decl., ¶ 49. As described

above, memory device 20 is the memory device of claim 1. Thus, Franaszek

shows a “data accelerator” coupled to said memory device.

If the term “data accelerator” requires a structure that changes the rate of

the data stream (e.g., bits per second) between the input of the device and the

output of the device, but see ’530 patent at 5:29-32, 5:44-47, it would have been

obvious to modify Franaszek to increase the rate in which the data could be

compressed and stored in memory based on Osterlund. Hirschberg Decl., ¶¶ 72-

75. Osterlund teaches:

Since the compression module is capable of compressing

and decompressing data with negligible delay, the device

allows the optical disk storage device to have an overall

faster rate[] of data storage and retrieval.

Osterlund at 5:42-46. This can be accomplished by placing a compressor in the

bit stream between the host or source of uncompressed data and the storage

medium and using wide data buses and direct memory access techniques to

manage data in the compressor’s buffer memory. Id. at 4:1-5, 4:21-26;

Hirschberg Decl., ¶¶ 57-61. Those of ordinary skill in the art would have made


dn-190542 -20-

such a combination for the reasons set forth infra § VII.A.1.b.; Hirschberg Decl.,

¶¶ 72-75.

Even if Franaszek’s compressor was not considered to be a “data

accelerator” as required by claim 1, such a data accelerator would have been

obvious in view of Osterlund.

Claim 1, limitation (c). Franaszek discloses “a data stream is received by

said data accelerator in received form.” ’530 patent at 18:27-28; Hirschberg

Decl., ¶ 50. Franaszek teaches that “data compression involves taking a stream of

symbols and transforming them into codes.” Franaszek at 1:11-12; Hirschberg

Decl., ¶ 50. Franaszek’s Fig. 2 shows a stream of data blocks received by a data

compressor. Franaszek at Fig. 2; see also Fig. 3 (showing uncompressed data

block 210 received by the data compressor 220); Hirschberg Decl., ¶ 50.

Franaszek’s data compressor would have been understood by a person of ordinary

skill in the art to be part of the claimed data accelerator (or at least rendered a data

accelerator obvious in view of Osterlund) for reasons already discussed. See

supra § VII.A.1.a (limitation (b)); Hirschberg Decl., ¶ 48. Because Franaszek’s

data compressor receives the stream of data blocks, a person of ordinary skill in

the art would have read Franaszek to disclose receipt of a stream of data—i.e.,

multiple data blocks—by the data accelerator. Hirschberg Decl., ¶ 50. The

“received form” of the data stream includes the uncompressed form of the data


dn-190542 -21-

blocks making up the data stream. See, e.g., Franaszek at 4:5-7 (“The system

includes a CPU 5 which accesses a first memory 10 containing uncompressed

data blocks 15.”); id. at 4:14-20 (describing “a compressor 30 that compresses

data blocks as they are transferred to the second memory”); see also Hirschberg

Decl., ¶ 50. Thus, Franaszek teaches that a data stream is received by said data

accelerator in received form. Hirschberg Decl., ¶ 50.

Claim 1, limitation (d). Franaszek discloses “said data stream includes a

first data block and a second data block.” ’530 patent at 18:28-29; Hirschberg

Decl., ¶ 50. Franaszek’s Fig. 2 shows a data stream including at least two

data blocks (210), as discussed above. Hirschberg Decl., ¶ 50. Franaszek refers

to the first and second data block as “uncompressed data blocks.” See, e.g.,

Franaszek at Fig. 2, 4:30-31. A data stream including first and second data blocks

is shown in the annotated excerpt from Franaszek’s Fig. 2, below:


dn-190542 -22-

Franaszek thus teaches that the data stream received by the data accelerator

includes “a first data block and a second data block.” ’530 patent at 18:28-29;

Hirschberg Decl., ¶ 50.

Claim 1, limitation (e). Claim 1 further requires that “said data stream is

compressed by said data accelerator to provide a compressed data stream by

compressing said first data block with a first compression technique and

said second data block with a second compression technique.” ’530 patent at

18:29-34; Hirschberg Decl., ¶ 51. For the reasons described above with respect

to limitation (b), Franaszek includes a data stream and describes, or renders

obvious (when taken in view of Osterlund), a “data accelerator.” Franaszek’s data

accelerator compresses the data stream on a block-by-block basis: “there is a

compressor 30 that compresses data blocks as they are transferred to the second

memory ….” Franaszek at 4:17-19; Hirschberg Decl., ¶ 51. Fig. 2 shows the

compressed data blocks passed through the data compressor. Hirschberg Decl., ¶

51. These compressed data blocks are then stored in memory as shown in

Franaszek’s Figs. 1 and 2.


dn-190542 -23-

Franaszek at Fig. 2 (annotated, excerpted) & Fig. 1; Hirschberg Decl., ¶ 51. The

received data stream is converted into a compressed data stream through the

compression of the data blocks using compression techniques. Hirschberg Decl.,

¶ 51; Franaszek at Fig. 2 (item 240), 3:29-34, 5:19-39. Therefore, the data

accelerator provides a compressed data stream, which is then stored in the second

memory. Franaszek at 4:14-20 (“data blocks 25 may be stored in a compressed

format in the second memory”), Figs. 1-3; Hirschberg Decl., ¶ 51.

Franaszek also teaches that the compressor uses multiple “data compression

mechanisms.” Franaszek at 3:29-31; Hirschberg Decl., ¶ 51. To choose the

“best” compression technique, Franaszek’s data compressor samples each

received data block and applies data compression techniques to the sample to

determine “an appropriate one of the data compression mechanisms to apply to

the block.” Franaszek at 3:25-34, 5:19-28, 6:22-50; Hirschberg Decl., ¶ 51.

Franaszek evaluates each data block in the data stream individually, and chooses

the best method for each block in the stream. See, e.g., Franaszek at 3:29-34,

5:19-39; Hirschberg Decl., ¶ 51. Therefore, based on Franaszek, “a person of

ordinary skill in the art, reading the reference, would at once envisage” that a first

block is compressed with a first technique and a second block is compressed with

a second technique. Cf. Blue Calypso LLC v. Groupon Inc., 815 F.3d 1331, 1343

(Fed. Cir. 2016) (quoting Kennametal v. Ingersoll Cutting Tool, 780 F.3d 1376,


dn-190542 -24-

1381 (Fed. Cir. 2015) (internal quotations omitted)); 3M Innovative Props. v.

Avery Dennison, 350 F.3d 1365, 1371 (Fed. Cir. 2003) (“The use of the terms

‘first’ and ‘second’ is a common patent-law convention to distinguish

between repeated instances of an element or limitation” and does not “impose a

serial or temporal limitation into” the claim.); Hirschberg Decl., ¶ 51. This is the

reason that Franaszek tests each of the blocks to determine which blocks to

encode with which compression methods. Id. The use of a variety of

compression methods is also the reason that each block has a CMD area to

identify the compression technique applicable to that block, as discussed further

with respect to limitation (i), infra. Hirschberg Decl., ¶ 54-55. Such a sampling

technique would be unnecessary—and even wasteful—if all blocks were to be

compressed using a single compression technique. Id.

Franaszek therefore discloses limitation (e) of claim 1. Hirschberg Decl., ¶

51.

Claim 1, limitation (f). Franaszek discloses that “said first and second

compression techniques are different.” ’530 patent at 18:34-35; Hirschberg Decl.,

¶¶ 45, 51. Even if Franaszek did not disclose this limitation expressly or

inherently, it would have been obvious to employ first and second compression

techniques that are different, for example, when encoding diverse data stream

having multiple file types. Hirschberg Decl., ¶¶ 45, 51.


dn-190542 -25-

Franaszek teaches a “plurality of data compression mechanisms,”

Franaszek at 3:29-31, including: run-length coding, arithmetic coding, and

dictionary compression / LZ1 coding, id. at Fig. 7, 7:11-18; Hirschberg Decl., ¶¶

45, 51-53. Because Franaszek teaches a block-by-block analysis, selecting one of

several compression techniques to compress each block, and (as explained below)

including a CMD area for each compressed block, a person of ordinary skill in the

art would have understood that Franaszek teaches using different data

compression mechanisms for compressing different data blocks. Hirschberg

Decl., ¶¶ 55-56. For example, a person of ordinary skill in the art would have

understood that a first data block consisting of plain text could be encoded with a

LZ1 compression technique while a second data block consisting of an image

and text could be compressed with the run-length compression technique.

Hirschberg Decl., ¶ 45. A primary purpose of Franaszek’s analysis of each block

in the stream is to permit compression using different compression techniques

based on which is the deemed best. See supra (limitation 1(e) discussion);

Hirschberg Decl., ¶ 44. Franaszek discloses that the data blocks may include a

data “type” indicator that will allow Franaszek’s compressor to obtain a “list of

compression methods that have been preselected for that data type.” Franaszek at

5:49-54; see also id. at 4:32-35; Hirschberg Decl., ¶¶ 46, 55-56. Therefore, a


dn-190542 -26-

person of ordinary skill would have read Franaszek as disclosing the use of

different encoding schemes for different blocks. Hirschberg Decl., ¶¶ 44-45.

One of ordinary skill in the art would have understood that using different

compression techniques on different data blocks was the purpose of Franaszek’s

sampling process. Id. ¶¶ 44-45, 51. Even if Franaszek does not show an example

of how two data blocks are compressed using different compression

techniques, using different compression techniques on different data blocks

would have been an obvious implementation of Franaszek’s technology,

particularly when compressing a data stream of diverse files since different types

of data are optimally compressed using different compression techniques

depending on the data in the particular data block. Id. Compressing first and

second data blocks using different compression techniques would have been a

direct and common sense application of Franaszek’s disclosed data compressor

according to its intended purpose. Id. Thus “said first and second compression

techniques are different,” ’530 patent at 18:34-35, is also obvious in light of

Franaszek. Hirschberg Decl., ¶ 51.

Claim 1, limitation (g). Franaszek discloses “said compressed data stream

is stored on said memory device.” ’530 patent at 18:35-36; Hirschberg Decl., ¶

52. Franaszek teaches that a “compressor 30 … compresses data blocks as they

are transferred to the second memory,” Franaszek at 4:17-20. Because the data


dn-190542 -27-

stream is made up of data blocks, and the data blocks are compressed, e.g.,

Franaszek at Abstract, Fig. 2, one of ordinary skill in the art would have

understood that Franaszek’s compressor compresses the data stream, Hirschberg

Decl., ¶¶ 50-51. Fig. 1 shows that uncompressed blocks are read from a first

memory, compressed, and stored in a second memory, i.e., the claimed “memory

device.” Franaszek at Fig. 1; Hirschberg Decl., ¶¶ 48-51. Based on these

disclosures, a person of ordinary skill in the art would have understood that the

compressed data blocks in memory are the compressed data blocks of the

compressed data stream and that the compressed data stream is thus stored

in memory. Id.

Claim 1, limitation (h). Claim 1 further requires that “said compression

and storage occurs faster than said data stream is able to be stored on said

memory device in said received form.” ’530 patent at 18:36-38. To the extent

this limitation carries patentable weight (see supra § V), Franaszek discloses that

compressing data can “increase the number of data blocks that can be stored in the

second memory,” Franaszek at 4:14-17, thus teaching that fewer bits are output

from the compressor than are input to it. Hirschberg Decl., ¶ 45. Franaszek

recommends compressing the full data block if a compression of at least 30% can

be achieved. Id.; Franaszek at 5:29-32.


dn-190542 -28-

Franaszek does not expressly discuss compression speed or explicitly state

that the “compression and storage occurs faster than said data stream is able to be

stored on said memory device in said received form.” ’530 patent at 18:36-38;

Hirschberg Decl., ¶ 53. Nonetheless, a person of ordinary skill in the art would

have appreciated from Osterlund that it was already known in the art to compress

and store data at a faster rate than was possible if the data had just been stored in

received form. Hirschberg Decl., ¶¶ 60-64. Modifying Franaszek to ensure such

an operation would have been obvious based on Osterlund for the reasons

discussed below. Id. at ¶¶ 72-75; see also infra § VII.A.1.b.

Osterlund describes a “data compression device” that is “interposed

between a host computer and an optical disk controller to permit data storage and

retrieval operations … to occur at a faster rate than would otherwise be possible.”

Osterlund at Abstract; Hirschberg Decl., ¶¶ 57-60. Osterlund teaches connecting

the compression module, host computer, and optical disc controller using “wide

multibit data buses for fast data transfer,” Osterlund at 4:21-23, and the use of

direct memory access techniques for buffers within the compressor, id. at 4:23-26;

Hirschberg Decl., ¶ 61. Osterlund also teaches inserting the compressor directly

into the data stream immediately after the data stream exits the host interface unit.

Osterlund at 4:1-5, 5:38-42; Hirschberg Decl., ¶ 57.


dn-190542 -29-

Osterlund teaches that this arrangement allows the compression module to

reduce the amount of data to be stored, which, in turn, makes the data storage rate

faster:

[W]hen data is compressed and then written to the optical

disk system 24 by the controller 10, the write task can be

completed faster because the compression operation has

reduced the amount of data which must be stored.

Osterlund at 5:25-29.

Osterlund further explains that “[s]ince the compression module is capable

of compressing and decompressing data with negligible delay, the device allows

… [for] overall faster rates of data storage and retrieval.” Id. at 5:42-46;

Hirschberg Decl., ¶¶ 63-64. This use of data compression was a textbook reason

to compress data in data storage systems. Id., ¶¶ 26-27 (citing Lelewer at 1,

which explains that “[w]hen the amount of data to be transmitted is reduced, the

effect is that of increasing the capacity of the communication channel.”).

A person of ordinary skill in the art would therefore have understood

Osterlund to teach a system in which “compression and storage occurs faster than

said data stream is able to be stored on said memory device in said received

form,” ’530 patent at 18:36-38; Hirschberg Decl., ¶¶ 57-64. A person of ordinary

skill in the art would have been motivated to modify Franaszek such that


dn-190542 -30-

compression and storage occurred faster than it would have without the use of

data compression for the reasons discussed infra § VII.A.1.b.

Thus, claim 1’s requirement that “said compression and storage occurs

faster than said data stream is able to be stored on said memory device in said

received form,” ’530 patent at 18:36-38, would have been obvious over Franaszek

in view of Osterlund. Hirschberg Decl., ¶¶ 72-75.

Claim 1, limitation (i). Franaszek discloses “a first data descriptor is stored

on said memory device indicative of said first compression technique, and said

first descriptor is utilized to decompress the portion of said compressed data

stream associated with said first data block.” ’530 patent at 18:38-42; Hirschberg

Decl., ¶ 159. Franaszek teaches that compressed data blocks are stored in

memory. Franaszek at 4:17-20 (“[C]ompressor 30 … compresses data blocks as

they are transferred to the second memory.”). Franaszek also teaches that “[e]ach

block of [compressed] data includes a coding identifier which is indicative of the

method or mechanism used to compress the block.” Franaszek at 3:40-42;

Hirschberg Decl., ¶¶ 54-56. This “coding identifier” is also referred to as a

“compression method description (CMD),” and each compressed block includes a

CMD area. Id.; Franaszek at 4:54-59; see also id. at 4:65-5:7, 3:29-36, 3:40-45,

Abstract, Fig. 2 (showing CMD 235 as part of the compressed blocks 230). The

CMD area includes “an index (M) 232 identifying the selected compression


dn-190542 -31-

method,” and may include a “dictionary block identifier (D).” Franaszek at 4:55-

57. A person of ordinary skill in the art would have understood that the

compression method description or “coding identifier” is the claimed first data

descriptor, since it indicates “the selected compression method,” Franaszek at

4:55-59, and thus is “indicative of said first compression technique,” ’530 patent

at 18:39-40; Hirschberg Decl., ¶¶ 54-56.

Franaszek discloses that a “first descriptor is utilized to decompress the

portion of said compressed data stream associated with said first data block,” ’530

patent at 18:40-42; Hirschberg Decl., ¶ 56. Franaszek explains that

[T]he compression method used to compress the block is

found (by decoding the CMD field), along with the

dictionary identifier of the dictionary used if the method

is dictionary based. Next, … the compression method

and dictionary (if applicable) is used to decompress the

block ….”

Franaszek at 6:52-59.

Because of Franaszek’s block-by-block decompression scheme, a person of

ordinary skill in the art would have understood (1) that the descriptor is “stored on

said memory device” with the particular block to be decompressed when retrieved

(e.g., Franaszek, Fig. 2), and (2) that the data decompressor uses the descriptor to


dn-190542 -32-

“decompress the portion of said compressed data stream associated with said first

data block,” ’530 patent at 18:40-42; Hirschberg Decl., ¶¶ 54-56.

b. Motivation to Combine Franaszek and Osterlund

As explained in § VII.A.1.a, supra, Franaszek does not call the disclosed

data compressor a “data accelerator” and also does not expressly disclose that

“said compression and storage occurs faster than said data stream is able to be

stored on said memory device in said received form,” ’530 patent at 18:36-38;

Hirschberg Decl., ¶¶ 72-75. A person of ordinary skill in the art would have

found it obvious to modify Franaszek to have compression and storage occur

“faster than said data stream is able to be stored on the memory device in said

received form” based on Osterlund’s teaching of a data compressor arrangement

that ensures that the storage device has “an overall faster rate[] of data storage and

retrieval.” Osterlund at 5:45-46; Hirschberg Decl., ¶¶ 72-75.

A person of ordinary skill in the art would have understood Franaszek and

Osterlund to be analogous in that both systems relate to the use of data

compression to improve data storage applications. Franaszek at 3:25-28, 4:14-20;

Osterlund at 5:42-48; Hirschberg Decl., ¶¶ 72-75. A person of ordinary skill in

the art would have found it obvious to modify Franaszek’s data compression

system, for example as discussed with respect to claim 1, limitation (h), supra, by

using Osterlund’s disclosed wide data buses, positioning in the data stream, and


dn-190542 -33-

direct memory access techniques, Osterlund at 4:1-5, 4:21-28, 5:38-42, to achieve

the stated benefits of Osterlund, namely: (1) reducing the amount of data to be

stored, id. at 5:20-23; (2) reducing the time required to store the data, id. at 5:23-

25; (3) adding minimal compression delay, id. at 5:42-44; and (4) ensuring that

data compression results in “an overall faster rate[] of data storage and retrieval,”

id. at 5:42-46, because such improvements would have yielded the desirable result

of providing faster and more efficient operation of the computer system that was

storing and retrieving the data—providing, for example, an improved end-

user experience. See, e.g., Hirschberg Decl., ¶¶ 72-75. It also would have

allowed Franaszek to store and retrieve more data in a given period of time,

allowing for faster bulk data transfer rates. Id.

In systems in which latency was an important consideration, faster data

storage and retrieval rates would have been understood as a way to improve

system latency and avoid having the host system reduce data transfer speeds or

perform extensive buffering to accommodate slow storage and retrieval. Id.

Improvements such as achieving a known result faster have long been held

to be obvious. For example, in Sakraida v. Ag Pro, a system for removing

manure from a dairy barn was found to be obvious even though the invention

produced “a desired result in a cheaper and faster way,” and which “enjoy[ed]

commercial success,” since “[t]hese desirable benefits ‘without invention will not


dn-190542 -34-

make patentability.’” 425 U.S. 273, 282-83 (1976) (citing Anderson’s-Black Rock

Inc. v. Pavement Salvage Co., 396 U.S. 57, 60 (1969) and Great A. & P. Tea v.

Supermarket Equip., 340 U.S. 147, 153 (1950)). As the Federal Circuit has

explained:

[W]e have repeatedly held that an implicit motivation to

combine exists not only when a suggestion may be

gleaned from the prior art as a whole, but when the

‘improvement’ is technology-independent and the

combination of references results in a product or process

that is more desirable, for example, because it is stronger,

cheaper, cleaner, faster, lighter, smaller, more durable, or

more efficient.

* * *

In situations where a motivation to combine is based on

these principles, the invention cannot be said to be

nonobvious.

Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d

1356, 1368-69 (Fed. Cir. 2006).

Here, Osterlund teaches a system where data storage and retrieval is “faster

than would otherwise be possible,” and a person of ordinary skill in the art would

have been led to improve Franaszek in the same way to make Franaszek’s data

storage “faster than would otherwise be possible,” based on Osterlund.

Hirschberg Decl., ¶¶ 72-75. This was a routine application of data compression in


dn-190542 -35-

data storage systems. Id. (discussing The Data Compression Book at 228).

Osterlund’s techniques to improve data storage speed would have been

recognized by a person of ordinary skill in the art as a way to improve “similar

devices in the same way,” KSR, 550 U.S. at 417, and given the number of

different available encoding schemes and known optimizations to data

compressors, a person of ordinary skill in the art would have taken no more than

“the work of the skillful mechanic, not that of the inventor,” Sakraida, 426 U.S. at

279 (quoting Hotchkiss v. Greenwood, 11 How. 248, 267 (1850)) to arrive at the

claimed invention. See also Hirschberg Decl., ¶¶ 72-75. 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. Hirschberg

Decl., ¶¶ 72-75.

Moreover modifying Franaszek with compression/decompression modules

that have “negligible delay,” as taught in Osterlund, would not have changed the

operation of Franaszek. Specifically, as long as the compression techniques

implemented in Franaszek have “negligible delay,” then Franaszek’s technique

that choses the “best” compression technique for a given data block would still

produce improved compression efficiency. In other words, choosing the “best”


dn-190542 -36-

available compression technique is not mutually exclusive with the available

compression techniques having “negligible delay.” Additionally, the ’530 patent

does not disclose any new or improved compression techniques to implement the

data accelerator. Rather, the ’530 patent states that “well known” and

“conventional” compression techniques can be used, which are also disclosed by

Franszek and Osterlund. ’530 patent 11:5-10, 11:41-48.


Claim 18 depends from claim 1 and further requires “said first compression

technique comprises compressing with a first encoder.” ’530 patent at 20:1-2.

Franaszek discloses that a first compression technique includes “compressing”

data “with a first encoder.”

For example, Franaszek discloses the use of a “run length” encoder as one

of the available compression techniques. Franaszek at Fig. 2 (item 240), Fig. 6

(item 601), Fig. 7 (item 240), 8:35-37, 9:9-11; Hirschberg Decl., ¶ 53. A person

of ordinary skill in the art would have understood that, based upon the results of

the testing of “[r]epresentative samples of each block of data,” run length

encoding may be selected to encode the particular data block, thereby using a

“first encoder” (a run-length encoder) as the “first compression technique.”

Franaszek at Figs. 2 (item 240), Fig. 6 (item 601), Fig. 7 (item 240), 3:29-36,

8:35-37, 9:9-11; Hirschberg Decl., ¶ 185.


dn-190542 -37-

Therefore, claim 18 would have been obvious over Franaszek in view of

Osterlund and is thus unpatentable. Hirschberg Decl., 53.

B. Ground 2: Claims 2-4 Are Obvious over Franaszek in View of Osterlund and Fall


Claim 2 depends from claim 1 and further requires that “said data

accelerator stores said first descriptor to said memory device.” ’530 patent at

18:43-44. Franaszek discloses this additional feature. Hirschberg Decl., ¶¶ 80-

82.

Franaszek describes a compressor—i.e., part of the claimed “data

accelerator” as explained above, supra § VII.A.1—that outputs and stores

compressed data blocks to the memory device. Franaszek at 4:14-17 (“[D]ata

blocks 25 may be stored in a compressed format in the second memory.”); id. at

6:64-66 (“[U]ncompressed blocks 210 are compressed by a data compressor 220

before being stored as compressed blocks 230.”); Hirschberg Decl., ¶¶ 54-56.

During the compression process, Franaszek’s compressor (1) chooses a

compression method, see e.g., Franaszek at 3:31-34, (2) compresses the data

block with the chosen compression method, see e.g., id. at 3:34-35, (3) adds an

identifier to the compressed data block to identify the chosen compression method

for that data block, id. at 3:35-36, 4:54-59, Abstract, and (4) stores the

compressed data block (including the identifier) to the memory device, id. at Fig.


dn-190542 -38-

2, 4:14-20, 6:64-66, 4:54-59, Fig. 4C (step 475 showing “method (E)” stored in

“CMD area of” compressed data block “B”). Hirschberg Decl., ¶¶ 54-56.

Franaszek teaches that “[e]ach block of [compressed] data includes a

coding identifier which [indicates] the method or mechanism used to compress

the block.” Franaszek at 3:40-42; Hirschberg Decl., ¶¶ 45-46, 54-56. This

“coding identifier” is also referred to as a “compression method description

(CMD),” and each compressed block includes a CMD area. Franaszek at 4:55-59;

see also id. at 4:65-5:7, 3:29-36, 3:40-45, Abstract, Fig. 2 (showing CMD 235 as

part of the compressed blocks 230). The CMD area includes “an index (M) 232

identifying the selected compression method,” and may include “dictionary

block identifier (D).” Franaszek at 4:55-59. A person of ordinary skill in the

art would have understood that the CMD, i.e., the “coding identifier” is a “first

descriptor,” since it indicates “the selected compression method” of an arbitrary

“first data block.” Franaszek at 4:55-59; Hirschberg Decl., ¶ 191; see also 3M

Innovative, 350 F.3d at 1371. As such, Franaszek describes a “data accelerator”

with the additional requirements found in claim 2. Hirschberg Decl., ¶¶ 45-46,

54-56. Because the compressor encodes the CMD field and outputs each

compressed data block, a person of ordinary skill in the art would have

also understood that the compressor stores the “first descriptor to the memory


dn-190542 -39-

device,” as required by claim 2. Id. Claim 2 would have therefore been obvious

and is unpatentable. Id.

To the extent it is argued that Franaszek’s data compressor does not store

the first descriptor to memory, this feature is explicitly described by Fall. Fall

teaches that the “compressor attempts to compress the data … using the assigned

compression algorithm and stores the compressed data in the compressed band

buffer.” Fall at 33:5-12; see also id. at 3:27-30 (“compression mechanism …

stores the compressed [data] … in digital read/write compressed memory

associated with an output device”); Hirschberg Decl., ¶ 65. Fall also teaches the

storage of the “type of compression used to process the object data,” thus

teaching the storage of a descriptor. Fall at 11:19-26; Hirschberg Decl., ¶¶ 65-

66. Based on these teachings, a person of ordinary skill in the art would have

understood that Fall discloses a data compressor that “stores said first descriptor

to said memory device,” as required by claim 1. Hirschberg Decl., ¶¶ 80-82.

It would have been obvious to one of ordinary skill in the art to further

combine Franaszek and Osterlund (as discussed above), in light of Fall’s teaching

that the compressor stores “said first descriptor to said memory device.”

Hirschberg Decl., ¶¶ 80-82. A person of ordinary skill in the art would have

understood that Franaszek and Fall both relate to data compression for use in data

storage systems and the use of multiple compression schemes to optimize data


dn-190542 -40-

storage. Id.; Franaszek at 5:19-39, 6:64-66; Fall at 3:27-30, 9:14-16 (the

compressor includes “one or more compression engines”), 25:40-42 (“The ‘best’

compression algorithm for a region is estimated to produce the best compression

ratio ….”). Because Franaszek and Fall solve similar problems in similar ways, it

would have been obvious to look to Fall for teachings about how a compressor

might be configured to operate in a data storage system. Hirschberg Decl., ¶¶ 81-

82. To the extent that Franaszek’s data compressor does not itself store the data

in memory, it would have been obvious to modify Franaszek’s compressor so that

the compressor itself stores data including the descriptor in memory since the two

compressors perform similar functions in similar and predictable ways. Id.; see

also KSR, 550 U.S. at 417-18 (predictable use of one technology for another

likely to be obvious if the elements are used for their established functions). One

of ordinary skill in the art would have been motivated to modify Franaszek such

that Franaszek’s data accelerator handles the storing and retrieval of data because

this would have been a known method for performing these tasks and the

modification would have resulted in predictable storage and retrieval of data.

Hirschberg Decl., ¶¶ 80-82; KSR, 550 U.S. at 417-18. One advantage having the

accelerator itself store the descriptor is that the write requests to the memory can

be made in a manner such that the specific request can be made along with the

transmission of the data block to be stored on the memory, thus simplifying the


dn-190542 -41-

system, reducing ambiguity in the data that is to be stored, and allowing

more precise knowledge of the memory location where a particular block is

stored by the compressor so that the decompressor can retrieve the specific block

at a later time. Hirschberg Decl., ¶¶ 80-82. The modification would have been

no more than a simple substitution of one known way of storage and retrieval

for another known way of storage and retrieval. Id., ¶ 82. Therefore, for this

additional reason, claim 2 would have been obvious and is thus unpatentable. Id.,

¶¶ 80-82.

2. Claims 3 and 4 Are Obvious

Claim 3 depends from claim 1 and requires that “said data accelerator

retrieves said first descriptor and said compressed data stream from said memory

device.” ’530 patent at 18:45-47. Claim 4 also depends from claim 1, and unlike

claim 3, which requires both the first descriptor and the compressed data stream to

be retrieved, it only requires that the “data accelerator retrieves said compressed

data stream from said memory device.” Id. at 18:48-50. Thus, a showing that

claim 3 is unpatentable necessarily shows that claim 4 is unpatentable. Franaszek

teaches a decompressor portion of a data accelerator, and thus a data accelerator,

that functions as required by both claims 3 and 4. Hirschberg Decl., ¶¶ 46, 51, 56.

As disclosed in Franaszek, compressed data blocks are “de-compressed by

a data de-compressor 270 when they are retrieved.” Franaszek at 6:62-67;


dn-190542 -42-

Hirschberg Decl., ¶¶ 46, 51, 56. Franaszek’s data decompressor would have been

understood by a person of ordinary skill in the art to be part of the claimed data

accelerator, or at least render it obvious, for reasons already discussed. See supra

§ VII.A.1; Hirschberg Decl., ¶¶ 46, 51, 56. Franaszek’s Fig. 5 shows that the data

decompressor retrieves both the descriptor and the compressed data block in that

it finds the method from the CMD (item in the compressed data block), and then

uses the method to decompress each block using its respective method. Franaszek

at Fig. 5, 3:37-45, 6:51-58; Hirschberg Decl., ¶¶ 46, 51, 56.

From these disclosures, one of ordinary skill in the art would have understood that

Franaszek’s data decompressor retrieves the various data blocks that constitute the

data stream, thereby retrieving the data stream from the memory device.

Hirschberg Decl., ¶¶ 46, 51, 56; Franaszek at 6:62-66. This is underscored by

Fig. 2, which shows a stream of compressed data blocks input into the

decompressor portion of the data accelerator. Franaszek at Fig. 2; Hirschberg

Decl., ¶¶ 46, 51, 56.


dn-190542 -43-

Since each data block includes a CMD field that includes data identifying

the encoding method, a person of ordinary skill in the art would have understood

from Franaszek that the descriptor is retrieved by the decompressor portion

of Franaszek’s data accelerator too. Hirschberg Decl., ¶¶ 55-56; see also

Franaszek at Fig. 2. Since the decompressor of the data accelerator of Franaszek

retrieves the descriptor for each compressed block, one of ordinary skill in the art

would have understood that the data accelerator of Franaszek retrieves the “first

descriptor” from memory. See 3M Innovative Props., 350 F.3d at 1371;

Hirschberg Decl., ¶ 203. In light of the foregoing, the subject matter of claims 3

and 4 is disclosed by Franaszek. Hirschberg Decl., ¶¶ 46, 51, 55-56.

To the extent that it is argued that Franaszek does not disclose the subject

matter of claims 3 and 4, Fall teaches a data accelerator that retrieves a descriptor

and compressed data stream from the memory device: “decoder 430 begins the

retrieval of data from compressed memory.” Fall at 11:39-41; see also id. at

11:14-19 (“Processor 26 thereafter examines each object stored in compressed

memory (RAM 28) … by retrieving object descriptors as described below.”);


dn-190542 -44-

Hirschberg Decl., ¶¶ 80-82. Based on these teachings, one of ordinary skill in the

art would have understood that Fall’s encoder itself retrieves the first

descriptor and the compressed data block from memory. Id.

For the reasons described above in § VII.B.1, it would have been obvious to

combine the data compression, storage, and decompression system of Franaszek,

as modified by Osterlund with Fall’s teaching of a data decompressor that

retrieves data from memory such that the “data accelerator retrieves said first

descriptor and said compressed data stream from said memory device.” ’530

patent at 18:45-47; Hirschberg Decl., ¶¶ 80-82. Any such modification to

Franaszek would have combined well known features of data compressors and

decompressors to achieve predictable results according to the typical use of data

compressors and data decompressors. Id.; KSR, 550 U.S. at 417-18. Namely, it

would have resulted in a compressor with the ability to read from the memory

device on which compressed data is stored, which would have had advantages

such as the simplification of passing read requests from a host to the memory.

Hirschberg Decl., ¶¶ 80-82. Thus, Franaszek and Osterlund and further in view of

Fall renders claims 3 and 4 obvious. Id.

C. Ground 3: Claim 12 Is Obvious Over Franaszek in View of Osterlund and Assar

Claim 12 depends from claim 1, further limits the claimed “memory

device” to a specific type of memory device, namely a “solid-state mass storage


dn-190542 -45-

device.” ’530 patent at 19:3-4. Franaszek refers to the use of the disclosed

system in the context of “semiconductor memories.” Franaszek at 4:8-12;

Hirschberg Decl., ¶ 49. Franaszek further teaches that the memories can be

“magnetic storage” such as “a disk.” Franaszek at 4:8-12. Despite teaching that

the disclosed system can be used with “any … suitable type of information

storage media,” which would include mass-storage media, Franaszek at 4:10-11;

Hirschberg Decl., ¶ 49, Franaszek does not expressly state that the “memory

device is a solid-state mass storage device,” ’530 patent at 19:3-4.

Assar teaches that “[a] semiconductor mass storage device can be

substituted for a rotating hard disk.” Assar at Abstract; Hirschberg Decl., ¶¶ 67,

83. Assar further explains that rotating magnetic disks suffer from a number of

deficiencies including “inherent latency,” significant power consumption, and

susceptibility to physical shock that may compromise data. Assar at 1:12-23;

Hirschberg Decl., ¶¶ 67, 83. Thus, Assar recommends “replacing a hard disk with

a semiconductor non-volatile memory.” Assar at 1:6-9; Hirschberg Decl., ¶¶ 67,

83.

Given Franaszek’s explicit statement that the disclosed data

compression system can be used with “ any [ ] suitable type of information

storage media,” including magnetic storage media like a disk, Franaszek at 4:9-

12, and Assar’s teaching that magnetic rotating disks should be replaced with


dn-190542 -46-

solid state semiconductor mass- storage media, a person of ordinary skill in the art

would have found the subject matter of claim 12 obvious. Hirschberg Decl., ¶ 67,

83. A person of ordinary skill in the art would have found it obvious to further

modify Franaszek in light of Assar because “[s]olid state memory is an ideal

choice for replacing a hard disk drive for mass storage because it can resolve”

problems such as excess power consumption, resilience to physical shock, and

latency issues. Assar at 1:12-25; Hirschberg Decl., ¶ 67, 83. Beyond the express

motivations to combine the claimed features, a person of ordinary skill in the art

would have found this combination of elements to be nothing more than the

combination of elements according to their known functions in a predictable

manner in that one form of known memory is merely being substituted for

another. Id. Thus, a person having ordinary skill in the art would have found the

subject matter of claim 12 obvious. Id.

D. Ground 4: Claims 19 and 20 Are Obvious Over Franaszek in View of Osterlund and Crawford


Claim 19 depends from claim 1 and further requires “said data stream

comprises a collection of multiple files.” ’530 patent at 20:3-4. Franaszek

discloses data compression techniques “used when storing database records,

spreadsheets, or word processing files,” Franaszek at 1:25-32, and that a stream of

“data blocks” may be fed into a data accelerator’s compressor, id. at Figs. 1 & 2.


dn-190542 -47-

Franaszek therefore discloses a collection of multiple files—namely multiple

database records, spreadsheets, and word processing files. Hirschberg Decl., ¶ 83.

A person of ordinary skill in the art would have understood based on these

disclosures that Franaszek contemplates a data stream can include multiple files.

Id.

To eliminate any doubt that the claimed subject matter was not inventive,

Crawford discloses a system focused on transmitting and storing multiple files,

and in particular, discloses “[a]n online computer system providing commercial

backup services to remote customer computers over the Internet ….” Crawford at

60:18-20; Hirschberg Decl., ¶¶ 68-70. One of ordinary skill in the art would have

understood that “backup” of files is a common term for storing files (albeit

in a different location from another copy). Hirschberg Decl., ¶¶ 68-70. A person

having ordinary skill in the art would have also understood that a backup of

files “online” or over the Internet would have required transmitting those files to

the storage device in a data stream. Id. Crawford describes backing up customer

files. Crawford at 14:46-48 (“Customer files … are automatically copied to on-

line service virtual disks for offsite archiving”). Specifically, Crawford discloses

backing up multiple files at once (for example, a typical user command

“‘COPY A:*.* C:’ commands the computer to copy all files within a particular

portion of a drive called ‘A’ to a particular portion of another drive called ‘C’”).


dn-190542 -48-

Id. at 21:30-34. Because multiple files are transmitted to the storage device as a

data stream for backup, one of ordinary skill in the art would have understood that

the customer files of Crawford are a “collection of multiple files” in a data stream

required by claim 19. Hirschberg Decl., ¶¶ 68-70.

It would have been obvious to use Franaszek’s data compression and

storage system in the context of Crawford’s online backup and storage system.

Id. ¶ 84. One of ordinary skill in the art would have been motivated to use

Franaszek’s compression system to compress Crawford’s collection of files in a

data stream because (1) the two systems use data compression techniques, see

e.g., Crawford at 33:60-63, 61:10-13; and (2) storing multiple files from a data

stream would have allowed Franaszek’s system to be used to backup varied data

sources such as hard drives or other computers with user data, Hirschberg Decl., ¶

84. Merely modifying the content of the input data stream would have led to only

predictable results and would have been a natural and common sense application

of Franaszek’s data compression system, and is even suggested by Franaszek’s

reference to multiple files and file types. Id.; Franaszek at 1:28-31. Thus, claim

19 would have been obvious over Franaszek and Osterlund and further in view of

Crawford. Hirschberg Decl., ¶ 84.


dn-190542 -49-


Claim 20 was not previously challenged in any of the earlier IPR petitions

filed for the ’530 patent. Presumably claim 20 was not challenged because claim

20 was not asserted against the petitioners in those IPR proceedings. Claim 20

does not add significant limitations to the earlier challenged claims. Instead, claim

20 depends from claim 1 and further adds the trivial requirement that “said data

stream includes a third data block and a fourth data block.” ’530 patent at 20:5-6.

Franaszek in Fig. 1, reproduced below, discloses that the input data stream may

include a third and fourth data block (there are four uncompressed data blocks 15

depicted).

Additionally, Fig. 1 depicts five compressed data blocks 25 that were previously

compressed by compressor 30 when they were received as part of the data stream.

Franaszek at 4:14-20.


dn-190542 -50-

Furthermore, Franaszek Fig. 2, reproduced below, shows that the data

stream includes a third and fourth block by including the ellipsis between the two

depicted data blocks 210. Fig. 2 also shows additional data blocks in the form of

compressed data blocks 230, which were previously compressed by data

compressor 220. Franaszek thus discloses that the “data stream includes a third

data block and a fourth data block.”

To the extent Patent Owner argues that Franaszek does not disclose the

above limitation, a person would have found it obvious to use a data stream that

includes a third and fourth data block. Hirschberg Decl., ¶ 50. For example,

Franaszek discloses block sizes of 4,096 bytes. Franaszek at 7: 6-9. When

compressing any data stream larger than three blocks (12,288 bytes), the data

stream would include a third and fourth data block. Compressing files much larger

than 12,288 bytes was very common as of the priority date of the ’530 patent.

Hirschberg Decl., ¶ 50. Thus a person of ordinary skill in the art would have found

it obvious for the data stream to include a third and fourth data block.


dn-190542 -51-

E. Ground 5: Claims 1 and 18-20 Are Obvious Over Osterlund in View of Franaszek


a. Disclosure of Osterlund and Franaszek

As set forth in Table I in § VII.A.1.a above, Osterlund expressly teaches

most of the features recited in claim 1. Specifically, Osterlund teaches a

compression system that compresses data blocks for storage on a memory such

that the compression and storage occur faster than the storage of the data blocks

can occur in received form. Osterlund does not teach compressing data blocks

with a first technique and a different second technique. Such a modification,

however, would have been obvious to a person of ordinary skill in the art based

on Franaszek’s teachings of the benefits of a multi-compression technique system.

Franaszek at 3:29-36, 5:18-38.

Applying Franaszek’s teaching of using multiple compression techniques to

Osterlund would have required no more than the application of Franaszek’s

known solution to solve known problems (increasing compression ratios by using

data type specific compression techniques) to obtain predictable results and well

recognized benefits. Hirschberg Decl., ¶¶ 76-79; see also KSR, 550 U.S. at 416

(“[W]hen a patent claims a structure already known in the prior art that is altered

by the mere substitution of one element for another known in the field, the

combination must do more than yield a predictable result.”). Thus, claim 1 recites


dn-190542 -52-

nothing more than an obvious variation of Osterlund’s data compression and

decompression scheme and is unpatentable as obvious.

Claim 1, preamble. Even if the preamble limits claim 1, Osterlund

discloses “a system.” Osterlund at Abstract (“A system … for compressing and

decompressing data ….”); see also id. at 2:3-27, Fig. 2.

Claim 1, limitation (a). Osterlund discloses “a memory device” in the form

of “optical media storage.” Osterlund at 2:28-32, Abstract. The ’530 patent

describe optical storage as one type of a memory device. ’530 patent at 2:51-54.

Claim 1, limitation (b). Osterlund discloses “a data accelerator, wherein

said data accelerator is coupled to said memory device.” ’530 patent at 18:26-27.

The ’530 patent uses the phrases “data storage accelerator” and “data retrieval

accelerator,” and says that (1) an accelerator receives and processes data, (2) an

accelerator uses “data compression and decompression” to process the data, and

(3) although called an “accelerator,” it does not need to speed up the data rate

compared to that of the received data. See, e.g., ’530 patent at 2:58-60, 5:8-10,

5:25-26, 5:29-32, 5:44-47, 5:64-66. Osterlund thus describes a data accelerator

consistent with the ’530 patent.

For example, Osterlund’s Fig. 2, reproduced below, shows a data

compression/decompression module.


dn-190542 -53-

The compression/decompression Module 25 compresses blocks of data received

from the host before the compressed blocks are sent to the buffer memory and

eventually the optical storage. Osterlund at 2:2-26, Fig. 2. The module also

decompresses blocks of data retrieved from the optical storage before sending the

uncompressed data blocks to the host. The compression/decompression happens

with negligible delay so that “the write task can be completed faster because the

compression operation has reduced the amount of data which must be stored.”

Osterlund at 5:25-29, 5:42-46. Accordingly, the compression/decompression

module 25 in Osterlund meets all the limitations of the data accelerator of claim 1.

Claim 1, limitation (c). Osterlund discloses “a data stream is received by

said data accelerator in received form.” ’530 patent at 18:27-28. Osterlund

teaches that the compression/decompression module receives “a request from a

host computer to store a sequence of records.” Osterlund at 2:64-68. The

sequence of records is simply blocks of a data stream. The “received form” of the

data stream includes the uncompressed form of the sequence of records which are

later compressed by the compression/decompression module. See, e.g., Osterlund


dn-190542 -54-

at 3:1-5, Fig. 2. Thus, Osterlund teaches that a data stream is received by said

data accelerator in received form.

Claim 1, limitation (d). Osterlund discloses “said data stream includes a

first data block and a second data block.” ’530 patent at 18:28-29. Osterlund

discloses that the data stream includes a first data block and a second data block

in the form of a sequence of records. Osterlund at 2:64-3:16, 5:13-19.

Claim 1, limitation (e). Claim 1 further requires that “said data stream is

compressed by said data accelerator to provide a compressed data stream by

compressing said first data block with a first compression technique and


18:29-34. Osterlund discloses compressing the first data block with a first

compression technique. Osterlund at 3:4-5, 4:68-5:5.

While Osterlund does not disclose compressing a second data block with a

second compression technique, Franaszek discloses this limitation. Franaszek

teaches that its compressor uses multiple “data compression mechanisms.”

Franaszek at 3:29-31; Hirschberg Decl., ¶¶ 44-45, 51. To choose the “best”

compression technique, Franaszek’s data compressor samples each received data

block and applies data compression techniques to the sample to determine “an

appropriate one of the data compression mechanisms to apply to the block.”

Franaszek at 3:25-34, 5:19-28, 6:22-50; Hirschberg Decl., ¶ 45. Since the data


dn-190542 -55-

compressor chooses a data compression for each block, Franaszek discloses

“compressing said first data block with a first compression technique and


18:31-34.

Osterlund in combination with Franaszek therefore discloses limitation (e)

of claim 1.

Claim 1, limitation (f). Franaszek discloses that “said first and second

compression techniques are different.” ’530 patent at 18:34-35. Franaszek

teaches a “plurality of data compression mechanisms,” Franaszek at 3:29-31,

including: run-length coding, arithmetic coding, and dictionary compression /

LZ1 coding, id. at Fig. 7, 7:11-18. Because Franaszek teaches a block-by-block

analysis, selecting one of several compression techniques to compress each block,

and (as explained below) including a CMD area for each compressed block, a

person of ordinary skill in the art would have understood that Franaszek teaches

using different data compression mechanisms for compressing different data

blocks. Hirschberg Decl., ¶¶ 44-45, 51. For example, a person of ordinary skill

in the art would have understood that a first data block consisting of plain text

could be encoded with a LZ compression technique, while a second data block

consisting of an image and text could be compressed with a run-length

compression technique. Hirschberg Decl., ¶ 45.


dn-190542 -56-

Claim 1, limitation (g). Osterlund discloses “said compressed data stream

is stored on said memory device.” ’530 patent at 18:35-36. Osterlund teaches

that “data is compressed and then written to the optical disk system.” Osterlund

at 5:25-26, 3:6-16. The Osterlund’s “data” is the sequence of records, which are

compressed by the compression/decompression module. Osterlund at 3:1-5, 3:14-

16.

Claim 1, limitation (h). Claim 1 further requires that “said compression and

storage occurs faster than said data stream is able to be stored on said memory

device in said received form.” ’530 patent at 18:36-38. To the extent this

limitation carries patentable weight (see supra § V), Osterlund states using its

compression/decompression module in the data stream path “permit[s] data storage

and retrieval operations … to occur at a faster rate than would otherwise be

possible.” Osterlund at Abstract, 4:1-5, 5:38-42; Hirschberg Decl., ¶¶ 57-64.

Osterlund also teaches connecting the compression/decompression module, host

computer, and optical disc controller using “wide multibit data buses for fast data

transfer,” Osterlund at 4:21-23, and the use of direct memory access techniques for

buffers within the compressor, id. at 4:23-26; Hirschberg Decl., ¶ 61.

Osterlund further explains that “[s]ince the compression module is capable

of compressing and decompressing data with negligible delay, the device allows

… [for] overall faster rates of data storage and retrieval.” Id. at 5:42-46 (emphasis


dn-190542 -57-

added); Hirschberg Decl., ¶¶ 64. This use of data compression was a textbook

reason to compress data in data storage systems. Hirschberg Decl., ¶ 27 (discussing

Lelewer at 1, which explains that “[w]hen the amount of data to be transmitted is

reduced, the effect is that of increasing the capacity of the communication

channel.”).

Osterlund teaches that the arrangement allows the compression module to

reduce the amount of data to be stored with “negligible delay,” which enables

storage of the data in less time, even when accounting for compression:

[W]hen data is compressed and then written to the optical disk

system 24 by the controller 10, the write task can be completed faster

because the compression operation has reduced the amount of data

that must be stored.

Osterlund at 5:25-29. Osterlund thus discloses this limitation.

Claim 1, limitation (i). While Osterlund does not explicitly disclose this

limitation, Franaszek discloses “a first data descriptor is stored on said memory

device indicative of said first compression technique, and said first descriptor is

utilized to decompress the portion of said compressed data stream associated with

said first data block.” ’530 patent at 18:38-42; Hirschberg Decl., ¶¶ 45-46, 55-56.

It would have been obvious to a person of ordinary skill in the art to include this

feature of Franaszek in Osterlund’s system when modifying Osterlund to work

with multiple types of compression.


dn-190542 -58-

Franaszek teaches that compressed data blocks are stored in memory.

Franaszek at 4:17-20 (“[C]ompressor 30 … compresses data blocks as they are

transferred to the second memory.”). Franaszek also teaches that “[e]ach block of

[compressed] data includes a coding identifier which is indicative of the method

or mechanism used to compress the block.” Franaszek at 3:40-42; Hirschberg

Decl., ¶¶ 45-46, 55-56. This “coding identifier” is also referred to as a

“compression method description (CMD),” and each compressed block includes a

CMD area. Hirschberg Decl., ¶¶ 45-46, 55-56; Franaszek at 4:54-59; see also id.

at 4:65-5:7, 3:29-36, 3:40-45, Abstract, Fig. 2 (showing CMD 235 as part of the

compressed blocks 230). The CMD area includes “an index (M) 232 identifying

the selected compression method,” and may include a “dictionary block identifier

(D).” Franaszek at 4:55-57. A person of ordinary skill in the art would have

understood that the compression method description or “coding identifier” is the

recited first data descriptor, since it indicates “the selected compression method,”

Franaszek at 4:55-59, and thus is “indicative of said first compression technique,”

’530 patent at 18:39-40; Hirschberg Decl., ¶¶ 45-46, 55-56.

Franaszek also discloses that a “first descriptor is utilized to decompress the

portion of said compressed data stream associated with said first data block,” ’530

patent at 18:40-42; Hirschberg Decl., ¶¶ 45-46, 55-56; Franaszek at 6:52-59.

Because of Franaszek’s block-by-block decompression scheme, a person of


dn-190542 -59-

ordinary skill in the art would have understood: (1) that the descriptor is “stored

on said memory device” with the particular block to be decompressed when

retrieved (e.g., Franaszek, Fig. 2), and (2) that the data decompressor uses the

descriptor to “decompress the portion of said compressed data stream associated

with said first data block,” ’530 patent at 18:40-42; Hirschberg Decl., ¶¶ 45-46,

55-56; Franaszek at 6:52-59.

Further, a person of ordinary skill in the art implementing Franaszek’s

multi-compression algorithm scheme in Osterlund’s system would have

understood that it was necessary for the combined system to include the ability to

identify what compression algorithm was used to compress the stored compressed

data blocks so that the appropriate decompression technique could be used when

retrieving the compressed data block. Hirschberg Decl., ¶ 78. A person of

ordinary skill in the art would have been incentivized to use the straight forward

method already implemented in Franaszek (i.e., the CMD area described above)

because it was a known solution to the above requirement. Id.

b. Motivation to Modify Osterlund in view of Franaszek

A person of ordinary skill in the art would have found it obvious to

modify Osterlund to use multiple compression techniques, as disclosed in

Franaszek based on Franaszek’s ability to provide improved compression

efficiency by using compression techniques specific to a given data type.


dn-190542 -60-

Franaszek at 3:25-28; Hirschberg Decl., ¶¶ 76-79. Such a modification would

have only required implementing: (1) functionality for selecting a compression

technique, (2) compression descriptor functionality and (3) additionally, a

compression/decompression module that implements another compression

technique while maintaining the “negligible delay” described in Osterlund.

Osterlund at 5:42-46. The first two features are expressly taught in Franaszek and

the third feature is taught in Osterlund.

A person of ordinary skill in the art would have understood Franaszek and

Osterlund to be analogous in that both systems relate to the use of data

compression to improve data storage applications. Franaszek at 3:25-28, 4:14-20;

Osterlund at 5:42-48; Hirschberg Decl., ¶¶ 76-79. A person of ordinary skill in

the art would have found it obvious to modify Osterlund’s data compression

system, for example as discussed with respect to claim 1, limitation (e), (f), and

(i), supra, by using Franaszek’s disclosed multi-compression technique system to

ensure that the best compression technique is used for each data record. It also

would have allowed Osterlund to store more data in a given amount of storage

space, which is a stated goal of Osterlund. Osterlund at 5:49-54.

Improvements such as achieving a known result more efficiently have long

been held to be obvious. Dystar, 464 F.3d at 1368-69 (there is a motivation to

make a combination that is “more efficient”). Here, Franaszek teaches a system


dn-190542 -61-

that selects the best compression technique for a given block of data. Hirschberg

Decl., ¶¶ 76-79. As noted in Osterlund 5:49-54, an advantage of Osterlund’s

invention is that it enables more data to be stored on the optical device. Being

able to store more data was perhaps the most common and well-known reason to

use data compression. Hirschberg Decl., ¶¶ 76-79. Franaszek’s technique to

improve data storage efficiency would have been recognized by a person of

ordinary skill in the art as a way to improve “similar devices in the same way.”

KSR, 550 U.S. at 417. Further, given the number of different available encoding

schemes and known optimizations to data compressors, this work would have

been easily within the skill level of a person of ordinary skill in the art.

Hirschberg Decl., ¶¶ 76-79. 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. Hirschberg Decl., ¶¶ 76-79.


Claim 18 depends from claim 1 and further requires “said first compression

technique comprises compressing with a first encoder.” ’530 patent at 20:1-2.

Osterlund discloses that a first compression technique includes “compressing”

data “with a first encoder.” For example, Osterlund discloses the


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compression/decompression module that relies on an encoder. Osterlund at 4:68-

5:5. Therefore, claim 18 would have been obvious over Osterlund in view of

Franaszek and is thus unpatentable.



comprises a collection of multiple files.” ’530 patent at 20:3-4. Osterlund

discloses that the data stream for its compression/decompress system includes a

collection of multiple files. For example, U.S. Patent No. 5,034,914 (“Osterlund

’914 patent”) (Ex. 1005), which Osterlund incorporates by reference, Osterlund

3:50-52, discloses that the data stream to be stored on the optical disk storage

includes multiple files. Osterlund ’914 at 1:44-52, 2:26-37, 10:22-24 (“It is

understood that disks may store data from one or more files.”).



includes a third data block and a fourth data block.” ’530 patent at 20:5-6.

Osterlund discloses that record directories contain a sequence of records (i.e., at

least two records). Osterlund at 3:12-16. Osterlund further discloses creating

more than one record directory. Osterlund at 2:41-44. Accordingly, Osterlund

discloses at least four data records (at least two data records in at least two record


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directories). As explained above, “data block” in the ’530 patent encompasses

Osterlund’s data records. Thus, Osterlund discloses a third and fourth data block.

Additionally, Osterlund discloses that the data stream includes up to 500

data records and thus discloses a third block and a fourth block. Osterlund ’914 at

10:32-37, 10:56-62, Fig. 5.

To the extent Patent Owner argues that Osterlund does not disclose a third

and fourth data block and does not render this limitation obvious, Franaszek

discloses this limitation and makes such a limitation obvious, as explained in

§ VII.D.2, above.

F. Ground 6: Claims 2-4 Are Obvious over Osterlund in View of Franaszek and Fall


Claim 2 depends from claim 1 and further requires that “said data

accelerator stores said first descriptor to said memory device.” ’530 patent at

18:43-44. Franaszek discloses this additional feature as part of Franaszek’s CMD

area, as explained above in § VII.B.1. Hirschberg Decl., ¶¶ 45-46, 54-56. As

explained in § VII.E.1.a with respect to limitation (i), it would have been obvious

to incorporate this feature into Osterlund’s system.

To the extent it is argued that Franaszek’s data compressor does not store

the first descriptor to memory, this feature is explicitly described by Fall, as

explained above in § VII.B.1. It would have been obvious to incorporate the


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teachings of Fall into Osterlund and Franaszek for the same reasons explained in

that above in that section. Hirschberg Decl., ¶¶ 45-46, 54-56, 65-66, 80-82.

2. Claims 3 and 4 Are Obvious

Claim 3 depends from claim 1 and requires that “said data accelerator

retrieves said first descriptor and said compressed data stream from said

memory device.” ’530 patent at 18:45-47 (emphasis added). Claim 4 also

depends from claim 1 but only requires that the “data accelerator retrieves said

compressed data stream from said memory device.” Id. at 18:48-50 (emphasis

added). Thus, a showing that claim 3 is unpatentable necessarily shows that claim

4 is unpatentable. Osterlund teaches that the compression/decompression module

includes a decompression portion, which necessarily retrieves the compressed

data so that uncompressed data can be produced.

As explained above, it would have been obvious to include additional

compression/decompression modules in view of Franaszek’s teachings. In

Franaszek, as part of the decompression process, the CMD field data is retrieved

with the compressed data. Franaszek at 6:52-59. The CMD field data is used to

determine which decompression algorithm to use. As explained in § VII.E.1.a

with respect to limitation (i), it would have been obvious to modify Osterlund to

include this functionality. Hirschberg Decl., ¶¶ 45-46, 54-56, 65-66, 80-82.


dn-190542 -65-

G. Ground 7: Claim 12 Is Obvious Over Osterlund in View of Fanaszek and Kitagawa

Claim 12 depends from claim 1, further limits the claimed “memory

device” to a specific type of memory device, namely a “solid-state mass storage

device.” ’530 patent at 19:3-4.

While Osterlund’s memory device is an optical disk, Osterlund’s teaching

of a compression/decompression module with “negligible delay” that allows write

tasks to be completed in less time has general applicability to other storage media

types. Hirschberg Decl., ¶¶ 57-64. It would have been obvious to a person of

ordinary skill in the art to use Osterlund’s compression/decompression module

with solid-stage storage because such a combination would have required nothing

more than applying a known improvement to a known storage technology.

Hirschberg Decl., ¶ 85. Kitagawa, for example, discloses that solid-state storage

is useful to store compressed data. Kitagawa at 3:25-42; Hirschberg Decl., ¶ 71.

Kitagawa further teaches that solid-state memories are generally interchangeable

with other types of non-volatile memories, including optical memories and are an

advantageous type of non-volatile memory. Kitiagawa at 6:44-50; Hirschberg

Decl., ¶¶ 71, 85. A person of ordinary skill in the art would have used

Osterlund’s system with Osterlund’s compression/decompression module in order

to apply the benefits of Osterlund (e.g., higher storage efficiency and improved

storage access times) to solid-state storage.


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VIII. CONCLUSION

Based on the foregoing, it is clear that the challenged claims of the ’530

patent are obvious in view of the prior art references cited in this Petition.

Accordingly, the Petitioner requests institution of an inter partes review to cancel

those claims.

Dated: March 30, 2017 Respectfully submitted, By /Diek Van Nort/ Diek O. Van Nort [email protected] Registration No.: 60,777 MORRISON & FOERSTER LLP 370 Seventeenth Street, Suite 4200 Denver, CO 80202 Tel: (650) 813-5696


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Certification of Word Count (37 C.F.R. § 42.24)

I hereby certify that this Petition for Inter Partes Review has 13,827 words

(as counted by the “Word Count” feature of the Microsoft Word™ word-

processing system used to create this Petition), exclusive of “a table of contents, a

table of authorities, mandatory notices under § 42.8, a certificate of service or word

count, or appendix of exhibits or claim listing.”

Dated: March 30, 2017

By /Diek Van Nort/ Diek Van Nort


dn-190542 -68-

Certificate of Service (37 C.F.R. § 42.6(e)(4))

I hereby certify that the attached Petition for Inter Partes Review and

supporting materials were served as of the below date by UPS, which is a means at

least as fast and reliable as U.S. Express Mail, on the Patent Owner at the

correspondence address indicated for U.S. Patent No. 7,415,530.

STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 New York Avenue, N.W. Washington DC 20005

Dated: March 30, 2017 /Diek Van Nort/ Diek O. Van Nort [email protected] Registration No.: 60,777 MORRISON & FOERSTER LLP 370 Seventeenth Street, Suite 4200 Denver, CO 80202 Tel: (650) 813-5696

Documents

DENVER-#190542-v3-7415530 - IPR Petition for Inter Partes ... · Inter Partes Review of USP 7,415,530 dn-190542-iii- Exhibit List for Inter Partes Review of U.S. Patent No. 7,415,530