Post on 03-Jun-2020
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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
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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 dvannort@mofo.com 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 JBockman@mofo.com 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
35667-530-IPR@mofo.com.
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 de- compressor 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
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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.
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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
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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
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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:
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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.
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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,
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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.
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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
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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
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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.
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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.
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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
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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
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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
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“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
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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
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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
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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”
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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.
2. Claim 18 Is Obvious
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.
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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
1. Claim 2 Is Obvious
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.
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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
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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
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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
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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;
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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.
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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.”);
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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
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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
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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
1. Claim 19 Is Obvious
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.
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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’”).
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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.
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2. Claim 20 Is Obvious
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.
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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.
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E. Ground 5: Claims 1 and 18-20 Are Obvious Over Osterlund in View of Franaszek
1. Claim 1 Is Obvious
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
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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.
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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
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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
said second data block with a second compression technique.” ’530 patent at
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
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compressor chooses a data compression for each block, Franaszek discloses
“compressing said first data block with a first compression technique and
said second data block with a second compression technique.” ’530 patent at
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.
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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
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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.
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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
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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.
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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
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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.
2. Claim 18 Is Obvious
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.
3. Claim 19 Is Obvious
Claim 19 depends from claim 1 and further requires “said data stream
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.”).
4. Claim 20 Is Obvious
Claim 20 depends from claim 1 and further requires “said data stream
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
1. Claim 2 Is Obvious
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.
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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 dvannort@mofo.com 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
Inter Partes Review of USP 7,415,530
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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 dvannort@mofo.com Registration No.: 60,777 MORRISON & FOERSTER LLP 370 Seventeenth Street, Suite 4200 Denver, CO 80202 Tel: (650) 813-5696