VMware, Inc.v.Clouding Corp.

Patent Trial and Appeal Board

Dec 3, 2015

10457670 (P.T.A.B. Dec. 3, 2015)

Trials@uspto.gov Paper No. 38
Tel: 571.272.7822 Filed: December 3, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
VMWARE, INC.,
Petitioner,
v.
CLOUDING CORP.,
Patent Owner.
_______________

Case IPR2014-01292
Patent 7,032,089 B1
_______________

Before JAMESON LEE, JONI Y. CHANG, and DAVID C. MCKONE,
Administrative Patent Judges.

MCKONE, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
A. Background
VMware Inc. (“Petitioner”) filed a Corrected Petition (Paper 4, “Pet.”)
to institute inter partes review of claims 1–24 of U.S. Patent No. 7,032,089
B1 (Ex. 1001, “the ’089 patent”). Clouding Corp.
1
(“Patent Owner”) filed a
Preliminary Response (Paper 10, “Prelim. Resp.”). Pursuant to 35 U.S.C.
§ 314, in our Decision to Institute (Paper 17, “Dec.”), we instituted this
proceeding as to all of the challenged claims of the ’089 patent.
During this trial, Patent Owner filed a Patent Owner Response
(Paper 24, “PO Resp.”) and Petitioner filed a Reply to the Patent Owner
Response (Paper 26, “Reply”). Patent Owner also filed a Contingent Motion
to Amend (Paper 25, “Mot. to Amend”), Petitioner filed an Opposition to the
Motion to Amend (Paper 27, “Opp. to Mot. to Amend”), and Patent Owner
filed a Reply to Petitioner’s Opposition (Paper 30, “Mot. to Amend Reply”).
An oral hearing was held on September 24, 2015 (Paper 37, “Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This decision is a final
written decision under 35 U.S.C. § 318(a) as to the patentability of the
challenged claims. Based on the record before us, Petitioner has
demonstrated by a preponderance of the evidence that claims 1–24 are
unpatentable.

1
The Petition named Clouding IP, LLC, as the patent owner. Clouding
Corp., however, represents that it obtained the ’089 patent from Clouding IP,
LLC. Paper 8, 2.
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B. Related Matters
Patent Owner has asserted the ’089 patent against various companies
in several lawsuits filed in the United States District Court for the District of
Delaware. Pet. 3; Paper 8, 2.
We previously instituted an inter partes review of the ’089 patent,
Rackspace Hosting, Inc. v. Clouding Corp., Case IPR2013-00519
(“Rackspace IPR”) and determined, in a Final Written Decision, that claims
1–24 are unpatentable, Rackspace Hosting, Inc. v. Clouding Corp., Case
IPR2013-00519 (PTAB Jan. 29, 2015) (Paper 22, “Rackspace Final Dec.”).
Patent Owner appealed the Rackspace Final Decision. Rackspace IPR,
Paper 24.

C. References Relied Upon
Our Decision to Institute relied upon the following prior art
references:
Gold (Ex. 1002) WO 99/12098 Mar. 11, 1999
Chefalas (Ex. 1004) US 6,976,039 B2 Dec. 13, 2005
Petitioner relies upon the following additional prior art references in
opposing Patent Owner’s Motion to Amend:
Steve Kelley, Copykill, Save time by purging yourself of redundant
activities, 80 MICROCOMPUTING, ISS. 18, 224–31 (June 1981)
(Ex. 1013, “Kelley”)
Pruett (Ex. 2003) US 5,778,389 July 7, 1998
Petitioner further supports its contentions with the testimony of
Dr. Paul Reynolds (Ex. 1005, “Reynolds Decl.”; Ex. 1019, “Reynolds
Mot. to Amend Decl.”; Ex. 1020, “Reynolds Reply Decl.”).
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D. The Asserted Grounds
We instituted this proceeding on the ground that the challenged claims
are unpatentable as obvious over Gold and Chefalas. Dec. 22.
In opposing Patent Owner’s Motion to Amend, Petitioner challenges
proposed substitute claim 25 on the following grounds (Opp. to Mot. to
Amend, 4):
Reference(s) Basis
Gold and Chefalas 35 U.S.C. § 103(a)
Pruett 35 U.S.C. § 103(a)
Kelley 35 U.S.C. § 103(a)

II. ANALYSIS
A. The ’089 Patent
The ’089 patent generally relates to synchronizing computer data
replicated in different storage areas for backup and disaster recovery
purposes. Ex. 1001, 1:15–18. For example, the ’089 patent describes a
system with a primary node (e.g., a computer) coupled by a network to a
secondary, or backup, node. Id. at Figs. 1, 3. One feature of this system is
that the secondary node includes the same data as the primary node, such
that, if the primary node fails, the secondary node, using the replicated data,
can take over. Id. at 5:36–41, 6:56–62.
The ’089 patent describes a “copy on read” replication technique that
copies data from the primary node to the secondary node after the data is
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read from the primary node’s storage area. Id. at 8:62–65. Figure 3,
reproduced below, illustrates an example:

Figure 3 is a flow diagram of a copy-on-read operation used for replication.
Id. at 4:17–19.
According to the ’089 patent, not all data in the storage area of the
primary node are “relevant” to an application managing the data on the
secondary node. Id. at 8:13–15. To avoid replicating irrelevant data, the
primary node of Figure 3 includes block identifier 316A at primary node
110A that identifies “useful” blocks of data (“storage objects”) for copying
to the secondary node. Id. at 8:18–27.
Block identifier 316A identifies relevant blocks to read and sends a
message to storage area manager 118A, which reads the relevant data from
storage area 140A. Id. at 9:24–47. Storage area replication facility 320A
intercepts this message and allows the message to pass through to storage
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area manager 118A, which retrieves the data from the primary node’s
storage area 140A. Id. at 9:48–55. After storage area manager 118A
retrieves the relevant data, the data are intercepted by storage area
replication facility 320A and sent to storage area replication facility 320B at
secondary node 110B. Id. at 9:56–59.
According to the ’089 patent, the block to be copied to the secondary
node can be compared to a corresponding block already stored on the
secondary node’s storage area, for example, by comparing their checksums.
Id. at 10:46–56. If the checksums match, there is no need to copy the data—
they already are replicated. Id. at 10:59–62.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method comprising:
selecting a first storage object of a first storage area;
determining whether the first storage object contains relevant
data;
if the first storage object contains relevant data, performing
the following:
reading the first storage object; and
when the reading is completed, copying contents of the
first storage object to a second storage object of a
second storage area; and
if the first storage object does not contain relevant data,
selecting a second storage object of the first storage area
without reading the first storage object and without
copying the contents of the first storage object to
the second storage object.

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B. Estoppel
In the Reply, Petitioner contends that we should apply “res judicata,
collateral estoppel, stare decisis, and/or judicial deference” and preclude
Patent Owner from taking positions inconsistent with the Rackspace Final
Decision. Reply 1–2. Petitioner points with particularity to our
constructions at pages 6–21 of the Rackspace Final Decision. Id. at 2. As
explained below, in our Decision to Institute, we preliminarily construed
claim terms consistently with those construed in the Rackspace Final
Decision, at 6–21. Patent Owner does not challenge those constructions.
Thus, Patent Owner is not taking positions inconsistent with that portion of
the Rackspace Final Decision.
Petitioner further argues that, in the Rackspace Final Decision, we
made findings as to what Gold discloses and, “given those conclusions, there
is no reason for this Board to reconsider any issues related to claim scope or
what Gold discloses, even though the issue here is obviousness as opposed
to anticipation.” Reply 4. Although Petitioner makes allegations similar to
those made in the Rackspace IPR, Petitioner’s contentions and evidence are
different as to the applicability of Gold and Chefalas (not raised in the
Rackspace IPR) to the claims of the ’089 patent. The Reply is not clear as to
which findings should be accorded preclusive effect. Nevertheless, as
explained below, our findings in this Decision are consistent with those in
the Rackspace Final Decision.
Petitioner further argues that Patent Owner’s Motion to Amend is
barred by 37 C.F.R. § 42.73(a), which provides “[a] judgment, except in the
case of a termination, disposes of all issues that were, or by motion
reasonably could have been, raised and decided,” and 37 C.F.R.
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§ 42.73(d)(3), which states that “[a] patent applicant or owner is precluded
from taking action inconsistent with the adverse judgment.” Opp. to Mot. to
Amend 1–2. Rule 42.73(a) discusses the effect of a judgment on a
proceeding, but does not address future proceedings beyond that expressly
set forth in Rule 42.73(d). Thus, we look to Rule 42.73(d) to determine
whether estoppel applies. To that end, the Patent Office has explained in its
discussion accompanying the Final Rule, that Rule 42.73(d)(3) applies
estoppel against a party whose claim has been cancelled and not merely held
unpatentable:
Section 42.73(d)(3) applies estoppel against a party whose
claim was cancelled . . . . The rule is consistent with 35 U.S.C.
316(a)(4), as amended, and 326(a)(4), which require that the
Office prescribe regulations establishing and governing the
reviews and the relationship of such reviews to other
proceedings under title 35.
Rules of Practice for Trials Before the Patent Trial and Appeal Board and
Judicial Review of Patent Trial and Appeal Board Decisions, Discussion of
Specific Rules, 77 Fed. Reg. 48,612, 48,625 (Aug. 14, 2012) (emphasis
added); see also 77 Fed. Reg. at 48,614 (Differences Between the Final Rule
and the Proposed Rule) (emphasis added):
Further, the final rule tailors the provisions to provide that a
patent applicant or patent owner whose claim is canceled is
precluded from taking action inconsistent with the adverse
judgment, including obtaining in any patent: (1) A claim that is
not patentably distinct from the finally refused or cancelled
claim[.]
Under 35 U.S.C. § 318(b), a claim is not cancelled until all appeal rights
have terminated. Accordingly, even assuming that Patent Owner’s Motion
to Amend is inconsistent with our ruling in the Rackspace IPR, Rule 42.73 is
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inapplicable in this proceeding. Nevertheless, as explained below, our ruling
in this proceeding is consistent with that in the Rackspace IPR.

C. Claim Construction
We interpret claims of an unexpired patent using the broadest
reasonable construction in light of the specification of the patent in which
they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
793 F.3d 1268, 1278 (Fed. Cir. 2015). Claim terms generally are given their
ordinary and customary meaning, as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. See In re Translogic
Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).

1. Constructions from the Decision to Institute
In the Decision to Institute, we preliminarily addressed the
constructions of the following terms. We also construed several of these
terms in the Rackspace Final Decision:
Claim Phrase Construction in Decision to Institute
“relevant data”
(claims 1, 7, 9, 13,
17, 21)
“data relevant to the purpose for which storage
objects are being copied.” Dec. 6. See also
Rackspace Final Decision 10.
“copy-on-read mode”
(claims 10, 14, 18,
22)
“a mode where data are read from one storage area
and subsequently copied to another storage area.”
Dec. 6–7. See also Rackspace Final Decision 11.
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Claim Phrase Construction in Decision to Institute
First instance of
“selecting means”
(claim 9)
Function: “selecting a first storage object of a first
storage area.”

Corresponding Structure: computer software
executing on a general purpose computer
implementing a block identifier utility and
equivalents thereof.

Dec. 7. See also Rackspace Final Decision 13–14.
Second instance of
“selecting means”
(claim 9)
Function: “selecting a second storage object of the
first storage area without reading the first storage
object and without copying the contents of the first
storage object to the second storage object if the
first storage object does not contain relevant data.”

Corresponding Structure: computer software
executing on a general purpose computer
implementing a block identifier utility and
equivalents thereof.

Dec. 7. See also Rackspace Final Decision 14.
“determining means”
(claim 9)
Function: “determining whether the first storage
object contains relevant data.”

Corresponding Structure: computer software
executing on a general purpose computer
implementing a block identifier utility and
equivalents thereof.

Dec. 8. See also Rackspace Final Decision 15–17.
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Claim Phrase Construction in Decision to Institute
“reading means”
(claim 9)
Function: “reading the first storage object if the
first storage object contains relevant data.”

Corresponding Structure: computer software
executing on a general purpose computer
implementing an application, database, file system,
and/or storage area manager, and equivalents
thereof.

Dec. 8. See also Rackspace Final Decision 17–18.
“copying means”
(claim 9)
Function: “copying contents of the first storage
object to a second storage object of a second
storage area if the first storage object contains
relevant data.”

Corresponding Structure: computer software
executing on a general purpose computer
implementing a storage area replication facility and
equivalents thereof.

Dec. 8. See also Rackspace Final Decision 18–19.
“sending means”
(claim 11)
Function: “sending the contents over a network
connection from the first storage area to the second
storage area.”

Corresponding Structure: computer software
executing on a general purpose computer
implementing a storage area replication facility and
equivalents thereof.

Dec. 9. See also Rackspace Final Decision 19–20.
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Claim Phrase Construction in Decision to Institute
“second copying
means”
(claim 12)
Function: “copying second contents of the first
storage object to the second storage object if the
second contents are relevant data.”

Corresponding Structure: computer software
executing on a general purpose computer
implementing a storage area replication facility and
equivalents thereof.

Dec. 9. See also Rackspace Final Decision 20–21.
“storage object”
(claims 1, 7, 9, 17,
21)
We declined to construe this term expressly.
Dec. 9.
“program managing
the data” (claims 3, 5)
We declined to exclude from “program managing
the data” programs that use the data for backup
purposes. Dec. 10.

The parties do no dispute these constructions in the PO Response or
Reply. On the complete record, we maintain these constructions.

2. “determining whether the first storage object contains
relevant data”
Independent claims 1, 7, 9, 13, 17, and 21 each recite, inter alia,
“determin[e/ing] whether the first storage object contains relevant data” and
“select[ing] a second storage object of the first storage area without reading
the first storage object.” Although Patent Owner does not propose an
explicit construction for “determin[e/ing] whether the first storage object
contains relevant data,” Patent Owner nevertheless argues that Gold and
Chefalas fail to teach the challenged claims because the combination would
read the first storage object before determining its relevance. PO Resp. 4
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(“It is apparent that Gold fails to teach a system or method in which before a
storage object is read, a determination is first made as to whether that
storage object contains relevant data, as recited in claim 1.”), 7 (“Inasmuch
as this operation requires the file be read before its relevance is determined,
the combination of Gold and Chefalas still would not result in the subject
matter of claim 1.”). Presumably, Patent Owner is arguing that the
“select[ing] a second storage object of the first storage area without reading
the first storage object” recitation limits the “determin[e/ing]” recitation.
In the Rackspace Final Decision, we addressed whether the claim
language precluded reading a storage object before or during a relevancy
determination, and concluded that it does not:
“[T]he word ‘comprising’ in the transitional phrase of a patent
claim creates a presumption that the body of the claim is open.”
Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l,
Inc., 246 F.3d 1336, 1350 (Fed. Cir. 2001). The Federal Circuit
has cautioned, however, that “‘[c]omprising’ is not a weasel
word with which to abrogate claim limitations.” Spectrum Int’l,
Inc. v. Sterilite Corp., 164 F.3d 1372, 1380 (Fed. Cir. 1998). In
this case, the claim language “if the first storage object does not
contain relevant data, selecting a second storage object of the
first storage area without reading the first storage object”
pertains to the behavior of the claimed method after a relevancy
determination has been made. Patent Owner does not explain
persuasively how this language addresses the behavior of the
method prior to a relevancy determination. We conclude that
nothing in claim 1 precludes reading before or during a
relevancy determination.
Rackspace Final Dec. 27. We preliminarily construed this term in the same
manner in the Decision to Institute. Dec. 16–17.
In its Response, Patent Owner presents no persuasive argument or
evidence showing that our conclusion in the Rackspace Final Decision was
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incorrect. Patent Owner does not cite to the Specification in support of its
construction. Nor does Patent Owner cite to extrinsic evidence. Patent
Owner appears to rest on the plain language of the claims (PO Resp. 5
(“According to claim 1, ‘determining whether the first storage object
contains relevant data’ occurs before the first storage object is read.”)),
evidence we fully considered in the Rackspace IPR.
For the reasons stated in the Rackspace Final Decision, reproduced
above, we conclude that “determin[e/ing] whether the first storage object
contains relevant data” does not exclude reading the first storage object
before or during a relevancy determination, notwithstanding the claims’
additional recitation of “select[ing] a second storage object of the first
storage area without reading the first storage object.”
Patent Owner’s argument also is inconsistent with the language of
claims 7 and 8. Claim 7 recites “comparing the contents of the first storage
object to the contents of the second storage object; and when the contents of
the first storage object and the contents of the second storage object do not
match, copying the contents of the first storage object to the second storage
object.” Claim 8 depends from claim 7 and recites that the comparing
comprises “comparing a first checksum computed from the contents of the
first storage object with a second checksum computed from the contents of
the second.” In both instances, an additional comparison is performed prior
to copying. Patent Owner contends that similar disclosure in Gold, of using
checksums to determine if a file to be copied already resides on the backup
memory, evidences a read as part of a relevancy determination prior to
copying. PO Resp. 4–5 (“Inasmuch as the determination as to whether or
not to copy the file (i.e., the determination as to whether or not the file is
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‘relevant’) depends on the outcome of the comparison between the signature
and the CRC value, it necessarily follows that the relevancy determination
occurs after the file has been read and the signature computed.”). Thus,
Patent Owner would construe claim 7 to allow a read as part of a relevancy
determination prior to copying while construing claims 1, 13, 17, and 21 to
preclude it.
When questioned at the hearing, Patent Owner conceded that it is
reading “determin[e/ing] whether the first storage object contains relevant
data” to mean something different in claims 7 and 8 than it means in the
remaining claims:
[MR. FAHMI:] The Gold system obtains signatures of files
that are already existing at the remote storage location, and then
computes signatures of files at the local storage site to see
whether or not they need to be backed up.
JUDGE McKONE: Doesn’t the ’089 patent also have this
similar feature where you can read the file to identify redundant
files?
MR. FAHMI: Yes, it does, Your Honor. And that is the
province of claim 7. Claim 7 is different than claim 1 in that
regard.
Dr. Reynolds explained during his deposition testimony that
computing the signature involves reading the file. This is in
Dr. Reynolds’ deposition transcript, Exhibit 2001, beginning at
page 18, line 8.
JUDGE McKONE: Are you conceding that claim 7 is obvious?
This argument then wouldn’t apply to claim 7, so claim 7
would be obvious, is that your position?
MR. FAHMI: Claim 7 is not one that would be saved by this
argument, Your Honor, you are right.
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Dr. Reynolds indicated that computing the signature requires
reading the file. And it is only after the signatures are
computed and compared, in other words, only after files are
read, that their relevance is determined and the copying takes
place.
Tr. 48:3–49:2. Patent Owner then argued that “determin[e/ing] whether the
first storage object contains relevant data,” when used in the claims other
than claims 7 and 8, is directed to a different embodiment that precludes a
read prior to or during a relevancy determination:
JUDGE McKONE: Now, claim 7 has the same language,
determining whether the first storage object contains relevant
data. We know that in that claim it has to be broad enough to
encompass this secondary redundancy check.
Why isn’t that same language in claim 1 also broad enough to
accommodate the redundancy check?
MR. FAHMI: Your Honor, the patent describes the two
embodiments separately. And so the embodiments have to be
read separately. And it is known that claims need not be
construed to encompass all of the disclosed embodiments.
Tr. 49:3–12.
We are not persuaded. “Because claim terms are normally used
consistently throughout the patent, the usage of a term in one claim can often
illuminate the meaning of the same term in other claims.” Phillips v. AWH
Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc). Patent Owner does
not cite to persuasive evidence that the ’089 patent specifically claims two
separate embodiments. Rather, the Specification describes the checksum
comparison as a feature that can be used together with the described “copy-
on-read” embodiment. Ex. 1001, 10:31–35 (“FIG. 5 is a flowchart of an
extended copy-on-read operation in accordance with one embodiment of the
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invention. The ‘copy on read’ mode solution can be combined with the
smart synchronization method described above to further conserve network
bandwidth.”), 3:36–44 (describing the “smart synchronization” process
using checksums). The claim language “determin[e/ing] whether the first
storage object contains relevant data,” in light of the examples in the
Specification, is broad enough to encompass both examples and, thus, may
encompass a read prior to or as part of a relevancy determination.

3. “prior to reading the first storage object, determining
whether the first storage object contains relevant data”
(substitute claim 25)
Proposed substitute claim 25 amends claim 1 to recite “prior to
reading the first storage object, determining whether the first storage object
contains relevant data.” Mot. to Amend, A-1 (Appendix - Listing of the
Claims; underlining indicates addition to claim 1). Patent Owner proposes
construing this language as “requiring that a determination of whether or not
a storage object contains relevant data take place before the storage object is
read.” Id. at 7.
According to Patent Owner, this understanding is consistent with the
plain meaning of the phrase as well as the Specification. Id. In particular,
Patent Owner argues that the Specification describes “that relevant storage
objects are first identified, then read, then copied (in this order) so that non-
useful data was not read, the synchronization process was made more
efficient and bandwidth was conserved.” Id. (citing Ex. 1001, 4:64–67
(“Storage objects containing data and information relevant to managing the
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data by a particular application are identified, read, and copied to a
secondary storage area.”)).
We are not persuaded by Patent Owner. The plain language of claim
25 does not preclude reading prior to or during a relevancy determination.
Rather, it recites that a determination of relevancy be made prior to reading.
In other words, a system that reads a file to determine relevancy and
subsequently reads that file to copy it would meet the literal language of
claim 25. The claim does not require that there be no reading of the file
prior to determining its relevance, a limitation easily specifiable by Patent
Owner, if desired, but not included in the proposed amendment.
At the hearing, Patent Owner clarified that it is arguing that the claim
language means “without reading the first storage object, determining
whether the first storage object contains relevant data,” Tr. 53:3–7, or “prior
to any reading of the first storage object,” id. at 55:1–4. Patent Owner bases
this reading on the description in the Specification:
JUDGE LEE: How about my hypothetical, you read and then
you determine relevance and you read again, so when you look
at the three in that order it meets the language, prior to reading,
which is prior to the second read you determine the relevance?
MR. FAHMI: With respect, Your Honor, I don’t think that that
scenario would be consistent with the specification because
during that first reading you would have copied the storage
object. That’s how copy on read works. And so by doing that
you just defeat the entire purpose of the scheme.
Id. at 55:5–15. We are not persuaded by Patent Owner’s argument. For the
reasons given in Section II.C.2 above, the Specification does not preclude
reading prior to or during a relevancy determination. Thus, construing
“prior to reading the first storage object, determining whether the first
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storage object contains relevant data,” in accordance with its plain meaning,
to allow for a read prior to or during a relevancy determination (as long as
the relevant file also is read subsequently) is not inconsistent with the
Specification.

D. Obviousness over Gold and Chefalas
Petitioner contends that claims 1–24 would have been obvious over
Gold and Chefalas. For the reasons given below, we agree.
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the claimed subject matter and the prior art are “such that the
subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art to which said subject
matter pertains.” We resolve the question of obviousness on the basis of
underlying factual determinations, including: (1) the scope and content of
the prior art; (2) any differences between the claimed subject matter and the
prior art; (3) the level of skill in the art; and (4) objective evidence of
nonobviousness, i.e., secondary considerations.
2
See Graham v. John Deere
Co., 383 U.S. 1, 17–18 (1966).
In an obviousness analysis, some reason must be shown as to why a
person of ordinary skill would have combined or modified the prior art to
achieve the patented invention. See Innogenetics, N.V. v. Abbott Labs., 512
F.3d 1363, 1374 (Fed. Cir. 2008). A reason to combine or modify the prior
art may be found explicitly or implicitly in market forces; design incentives;
the “‘interrelated teachings of multiple patents’”; “‘any need or problem

2
The record does not contain any evidence of secondary considerations.
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known in the field of endeavor at the time of invention and addressed by the
patent’”; and the background knowledge, creativity, and common sense of
the person of ordinary skill. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587
F.3d 1324, 1328–29 (Fed. Cir. 2009) (quoting KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418–21 (2007)).

1. Level of Skill in the Art
In determining the level of ordinary skill in the art at the time of the
invention, various factors may be considered, including “type of problems
encountered in the art; prior art solutions to those problems; rapidity with
which innovations are made; sophistication of the technology; and
educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d
1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan
Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). The level of ordinary skill
in the art also is reflected by the prior art of record. See Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re Oelrich, 579 F.2d 86,
91 (CCPA 1978).
Petitioner contends that a person of ordinary skill in the art would
have had a Bachelor’s Degree in Computer Engineering, Computer Science,
or comparable degree and two years of experience in file system
management. Pet. 8 (citing Ex. 1005 ¶ 28). Patent Owner does not dispute
Petitioner’s statement or propose an alternative. We find that Petitioner’s
statement of the level of ordinary skill is consistent with Dr. Reynold’s
testimony and the technology described in the ’089 patent and the cited prior
art. Accordingly, we adopt Petitioner’s statement of the level of ordinary
skill.
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2. Scope and Content of the Prior Art
a. Overview of Gold
Gold describes a technique for backing up computer files stored on a
client computer to tape media connected to the client by a network.
Ex. 1002, Abstract. Figure 3, reproduced below, illustrates an example:

Figure 3 is a block diagram of a client. Id. at 3:15–16.
3

As shown in Figure 3, client 210a includes dynamic scheduler module
310 that assesses the client’s resources at a scheduled target time to
determine if a client backup can run without seriously impacting the system
performance. Id. at 5:24–31. If a backup can be performed, file differencing
module (“FDM”) 330 selects the files on the client that will be backed up by

3
Exhibit 1002, in its original form, included page numbers at the tops of the
pages. Petitioner added different page numbering at the bottoms of the
pages. We cite to the original page numbering at the tops of the pages.
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determining which files have changed or have been added since a previous
backup. Id. at 7:9–10. FDM 330 identifies files by reading a current
directory tree of local client file system 332, which includes entries
identifying each file’s time and date of modification. Id. at 7:11–13. Those
times and dates are compared to cached times and dates stored in a directory
tree file. Id. FDM 330 also can filter out files, such as temporary files,
Internet cache files, and swap files, that do not need to be backed up. Id. at
7:16–19.
FDM 330 also can communicate with tape backup apparatus 240 to
determine whether a file already is backed up on the tape media (and, thus,
backup would be redundant). Id. at 7:20–23. FDM 330 sends tape backup
apparatus 240 a list of files to be backed up, along with calculated cyclic
redundancy check (“CRC”) codes (corresponding to file name, date and time
stamp, and file size information). Id. at 7:23–25. The tape backup apparatus
returns a list of the files it contains that match those on FDM 330’s list,
along with CRC checksums, or “signature[s]” (corresponding to the actual
data in the files). Id. at 7:25–28. For each file on tape backup apparatus
240’s list that might be redundant, FDM 330 calculates a CRC checksum
signature. Id. at 7:28–30. If the checksums match, the same version of the
same file is already backed up on the tape media, and backing it up again
would be unnecessary. Id.

b. Overview of Chefalas
Chefalas describes a technique for backing up computer data in a data
processing system. Ex. 1004, Abstract. Figure 4, reproduced below,
illustrates an example:
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Figure 4 is a block diagram of components involved in backing up
applications and associated data. Id. at 3:27–29. As shown in Figure 4,
source computer system 400 is connected to backup server 418, which is
connected to storage system 416. Source 400 executes application 408,
which requires a data file (e.g., file 406) to operate upon. Id. at 6:20–27.
For example, application 408 could be the Microsoft Word® word
processing software or Lotus Notes® email software. Id. at 6:27–30; 8:17–
18. File 406 (e.g., a Word file with a “.doc” file extension) is stored in
database 412, along with relational meta data representing the association of
file 406 to application 408. Id. at 6:61–7:2. A user can query database 412,
for example to locate all files associated with application 408. Id. at 8:4–18.
Source 400 also includes backup application 414, which can be any
commercially available backup application, such as Tivoli Storage Manager
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or Veritas Backup Exec. Id. at 7:58–63. When a user (or process) wishes to
backup data for application 408, he or she selects backup application 414,
which reads the relational meta data and presents a menu of files to back up.
Id. at 8:31–39; 11:18–20. Alternatively, the backup process can be
implemented by backup server 418. Id. at 11:15–17. After backup
application 414 presents a menu of files, the user can accept, reject, or alter
the list. Id. at 8:39–41. Backup application 414 queries the relational meta
data in database 412 and builds a list of files to transfer from source 400 to
storage system 416. Id. at 8:45–47; 11:23–29. The identified files then are
transferred to storage system 416. Id. at 11:29–30.

c. Findings from the Rackspace Final Decision
For the reasons stated in the Rackspace Final Decision, we make the
following findings. Except as explained in Section II.D.3 below, Patent
Owner does not contest that Gold and Chefalas teach these limitations:
Gold’s hard disk drive, on which local file system (client file
system 322) resides, is a “first storage area” and Gold’s
description of FDM 330 selecting files to be backed up
by determining which files have changed or have been
added, constitutes a teaching of “selecting a first storage
object of a first storage area,” as recited in claims 1 and
7; a “selecting means for selecting a first storage object
of a first storage area,” recited in claim 9; a “selecting
module configured to select a first storage object of a
first storage area,” recited in claim 13; and “selecting
instructions configured to select a first storage object of a
first storage area,” recited in claims 17 and 21.
Rackspace Final Dec. 24 (citing Ex. 1002, 5:9–10, 7:9–
11).
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Gold’s description of filtering a list of files for excluded files
(e.g., temporary files and Internet cache files) teaches
“determining whether the first storage object contains
relevant data,” of claims 1 and 7; the “determining
means” of claim 9; the “determining module” of claim
13; and the “determining instructions” of claims 17 and
21. Id. at 24–25.
Gold teaches, after this determination, “if the first storage
object contains relevant data . . . reading the first storage
object,” as recited in claim 1; the “reading means” of
claim 9; the “reading module” of claim 13; and the
“reading instructions” of claims 17 and 21. Id. at 27–28
(citing Ex. 1002, 9:13–14, 18:23–26).
Gold’s description of sending files to be backed up to a data
transfer module to be compressed and sent to the tape
backup apparatus (Ex. 1002, 9:5–14) teaches “copying
contents of the first storage object to a second storage
object of a second storage area,” as recited in claim 1; the
“copying means” of claim 9; the “copying module” of
claim 13; and the “copying instructions” of claims 17 and
21. Id. at 28.
Because the files excluded by Gold’s FDM, which do not
contain relevant data, are filtered rather than read and
copied (Ex. 1002, 7:16–19), Gold also teaches “if the
first storage object does not contain relevant data,
selecting a second storage object of the first storage area
without reading the first storage object and without
copying the contents of the first storage object to the
second storage object,” as recited in claims 1 and 7; the
second “selecting means” of claim 9; the second
“selecting module” of claim 13; and the second
“selecting instructions” of claims 17 and 21. Id.
Gold’s description of FDM 330 consulting with the tape backup
apparatus to determine whether a file to be backed up is
already on the tape (Ex. 1002, 7:23–30, 8:30–37, 9:5–23,
10:52–59) teaches the following limitations of claim 7:
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“identifying a second storage object of a second
storage area corresponding to the first storage
object of the first storage area”;
“wherein contents of the second storage object
were previously copied from contents of the first
storage object”;
“comparing the contents of the first storage object
to the contents of the second storage object”; and
“when the contents of the first storage object and
the contents of the second storage object do not
match, copying the contents of the first storage
object to the second storage object.”
Id. at 28–29.
Gold teaches each limitation of dependent claims 2–6, 8, 10–
12, 14–16, 18–20, and 22–24. Id. at 29–30.

3. Differences Between the Claimed Subject Matter and the
Prior Art; Reason to Combine
The parties dispute whether Gold and Chefalas teach “determining
whether the first storage object contains relevant data,” as recited in claim 1,
and the similar limitations of claims 7, 9, 13, 17, and 21. Petitioner argues
that Chefalas’s disclosure of querying database 412 to identify files
associated with application 408 constitutes a teaching of determining that a
file contains relevant data without reading that file. Pet. 28.
Petitioner contends that the references themselves evidence a reason
to combine. Pet. 20–21. Specifically, Chefalas states that it supplies a list of
files determined to need backup “to a standard backup program using
programmatic functions supplied by the present invention.” Ex. 1004, 1:24–
29; see also id. at 3:6–7 (“The files are backed up to a storage system using a
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standard backup program.”), 7:58–61 (“In this example, backup application
414 may be any custom-written backup application or any commercially
available backup applications such as Tivoli Storage Manager, or Veritas
Backup Exec.”). Gold, Petitioner argues, exemplifies one such backup
program. Pet. 21. Additionally, Dr. Reynolds provides testimony that a
skilled artisan would have substituted Chefalas’s means of identifying files
for backup for Gold’s because Chefalas’s is more efficient and flexible.
Id. at 22 (citing Ex. 1005 ¶ 66–68).
Patent Owner does not dispute that a skilled artisan would have had
reason to combine Chefalas’s technique for identifying files for backup with
Gold’s backup system. Nevertheless, Patent Owner contends that a
combination of Gold and Chefalas would not have taught “determin[e/ing]
whether the first storage object contains relevant data.” PO Resp. 7–8.
As explained above, Gold describes calculating a checksum signature
for a file and comparing it against a checksum for the same file on the
backup drive before copying the file to the backup drive in order to avoid
redundant copying. Ex. 1002, 7:20–30. Patent Owner argues that this
constitutes a read of the file as part of a relevancy determination. PO Resp.
2–3. According to Patent Owner, because of this, “Gold fails to teach a
system or method in which before a storage object is read, a determination
is made as to whether that storage object contains relevant data, as recited in
claim 1.” Id. at 4. Moreover, Patent Owner argues, even if a skilled artisan
were to modify Gold with Chefalas’s teaching, the resulting system still
would read a file to calculate a checksum to test for redundancy as part of a
relevancy determination:
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that person of ordinary skill would not abandon Gold’s further
teachings concerning refinement of the candidate list by
eliminat[ing] excluded files and redundant files. Thus, the
combination would still include[] Gold’s process of generating
a signature of a candidate file and comparing that signature
with a CRC value returned by the tape backup apparatus.
Ex. 1002 at 7:28-30. Inasmuch as this operation requires the
file be read before its relevance is determined, the combination
of Gold and Chefalas still would not result in the subject matter
of claim 1.
Id. at 6–7.
In Reply, Petitioner argues that the claims do not preclude a read as
part of a relevancy determination. Reply 5–8. As explained in Section
II.C.2 above, we agree with Petitioner. Thus, under our construction, even if
the combined teachings of Gold and Chefalas necessarily include Gold’s
redundancy check, Gold and Chefalas teach “determining whether the first
storage object contains relevant data.”
Petitioner also argues that a skilled artisan would have known to
combine Gold and Chefalas without including Gold’s redundancy check.
Petitioner relies on testimony from Dr. Reynolds that a skilled artisan would
have determined whether to include or exclude a redundancy check based on
time, bandwidth, and space tradeoffs. Reply 12–13 (citing Ex. 1020 ¶¶ 65–
73, 77). Dr. Reynolds offers examples to show that such tradeoffs and
optimizations were commonplace in the art. Ex. 1020 ¶ 69 (citing
Exs. 1014–16.). We credit Dr. Reynolds’ testimony. Patent Owner does not
introduce persuasive evidence to support its argument that a skilled artisan
would have kept Gold’s redundancy check in a combination with Chefalas.
We find that a skilled artisan would have combined Gold and Chefalas and,
in appropriate circumstances, would have omitted Gold’s redundancy check.
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Cf. In re Mouttet, 686 F.3d 1322, 1332–33 (Fed. Cir. 2012) (“It is well-
established that a determination of obviousness based on teachings from
multiple references does not require an actual, physical substitution of
elements. . . . Rather, the test for obviousness is what the combined
teachings of the references would have suggested to those having ordinary
skill in the art.”). Thus, even under Patent Owner’s construction, we find
that Gold and Chefalas teach “determining whether the first storage object
contains relevant data.”

4. Conclusion of Obviousness
As explained above, we have considered the evidence and argument
presented by Petitioner and Patent Owner and find that Gold and Chefalas
teach every limitation of claims 1–24. Petitioner has shown that a skilled
artisan would have combined Gold and Chefalas. On the complete record,
Petitioner has shown, by a preponderance of the evidence, that claims 1–24
would have been obvious over Gold and Chefalas.

III. PATENT OWNER’S CONTINGENT MOTION TO AMEND
Patent Owner has filed a contingent motion to amend, proposing to
substitute claim 25 for claim 1 should we determine that claim 1 is
unpatentable. Mot. to Amend 1. For the reasons given above, claim 1 is
unpatentable. Thus, we consider Patent Owner’s Motion to Amend.
As the moving party, Patent Owner bears the burden of proof to
establish that it is entitled to the relief requested. See 37 C.F.R. § 42.20(c).
The proposed amendment is not entered automatically, but only upon Patent
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Owner’s having demonstrated the patentability of the substitute claim. As
we have stated, “[f]or a patent owner’s motion to amend, 37 C.F.R.
§ 42.20(c) places the burden on the patent owner to show a patentable
distinction of each proposed substitute claim over the prior art.” Idle Free
Sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 7 (PTAB
June 11, 2013) (Paper 26). Such prior art includes:
a. any material art in the prosecution history of the patent;
b. any material art of record in the current proceeding,
including art asserted in grounds on which the Board did
not institute review; and
c. any material art of record in any other proceeding before
the Office involving the patent.
Masterimage 3D, Inc. v. Reald Inc., Case IPR2015-00040, slip op. at 2
(PTAB July 15, 2015) (Paper 42). For the reasons given below, Patent
Owner has not shown that claim 25 is patentably distinct over the prior art of
record.
Substitute claim 25 is reproduced below, with underlining indicating
Patent Owner’s addition to original claim 1:
25. (Proposed Substitute for Claim 1) A method comprising:
selecting a first storage object of a first storage area;
prior to reading the first storage object, determining
whether the first storage object contains relevant data;
if the first storage object contains relevant data,
performing the following:
reading the first storage object; and
when the reading is completed, copying contents of the
first storage object to a second storage object of a
second storage area; and
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if the first storage object does not contain relevant data,
selecting a second storage object of the first
storage area without reading the first storage object
and without copying the contents of the first
storage object to the second storage object.
In its Motion, Patent Owner argues the patentability of claim 25 over
Gold and Chefalas, as well as Pruett (the Rackspace Final Decision found
that Pruett anticipates claim 1) and Merriman (Patent Owner uncovered
through a commissioned search). Mot. to Amend 9–10. In response,
Petitioner argues that claim 25 is unpatentable over Gold and Chefalas, over
Pruett, and over an additional reference, Kelley. Opp. to Mot. to Amend 5–
25. Because Patent Owner has not shown that claim 25 is patentable over
Gold and Chefalas (explained below), we do not address the remaining
references.
Patent Owner contends that claim 25 is patentable over Gold and
Chefalas for reasons that mirror it contention that claim 1 is patentable.
Specifically, Patent Owner argues that Gold teaches reading a file to
generate a signature as part of its determination of relevancy. Mot. to
Amend 15–16. Thus, Patent Owner argues, Gold does not teach “prior to
reading the first storage object, determining whether the first storage object
contains relevant data,” as recited in claim 25. Id. at 16. As to Chefalas, in
language that tracks its argument as to claim 1, Patent Owner argues that
a combination of Gold and Chefalas may lead a person of
ordinary skill in the art to modify the development of a
candidate list of files for back up by adopting the techniques of
Chefalas in a system such as Gold’s, but that person of ordinary
skill would not abandon Gold’s further teachings concerning
refinement of the candidate list by eliminat[ing] excluded files
and redundant files. Thus, the combination would still
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include[] Gold’s process of generating a signature of a
candidate file and comparing that signature with a CRC value
returned by the tape backup apparatus. Ex. 1002 at 7:28–30.
Inasmuch as this operation requires the file be read before its
relevance is determined, the combination of Gold and Chefalas
still would not result in the subject matter of claim 25.
Id. at 19.
We are not persuaded by Patent Owner’s arguments. As explained in
Section II.C.3 above, the claim language “prior to reading the first storage
object, determining whether the first storage object contains relevant data”
does not preclude a read as part of a relevancy determination. Thus, under
our construction, Gold and Chefalas teach this limitation for the reasons
given for claim 1, detailed above.
Moreover, even assuming that Patent Owner’s construction is correct,
Gold and Chefalas teach “prior to reading the first storage object,
determining whether the first storage object contains relevant data.” As
explained above, for claim 1, a skilled artisan would have known to combine
Gold and Chefalas and, in appropriate circumstances, would have omitted
Gold’s signature calculation and redundancy check.
Gold and Chefalas teach the remaining limitations of claim 25 for the
same reasons as given above for original claim 1. A skilled artisan would
have had reason to combine Gold and Chefalas, as also explained above for
claim 1. Thus, Patent Owner has not shown that proposed substitute claim
25 is patentable over Gold and Chefalas.”
On the complete record, Patent Owner has not met its burden to show
that substitute claim 25 is patentable over Gold and Chefalas. Accordingly,
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Patent Owner has not met its burden to show that it is entitled to an
amendment.

IV. CONCLUSION
Petitioner has demonstrated by a preponderance of the evidence that
claims 1–24 would have been obvious over Gold and Chefalas. Patent
Owner has not shown that it is entitled to substitute claim 25 for original
claim 1.

V. ORDER
For the reasons given, it is
ORDERED, based on a preponderance of the evidence, that claims 1–
24 of U.S. Patent No. 7,032,089 B1 are held unpatentable;
FURTHER ORDERED that Patent Owner’s Contingent Motion to
Amend U.S. Patent No. 7,032,089 is denied; and
FURTHER ORDERED, because this is a final written decision, the
parties to this proceeding seeking judicial review of our Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:
Donald Daybell
Mark Shean
Bas de Blank
Monte M.F. Cooper
Jason Yu
ORRICK, HERRINGTON & SUTCLIFFE LLP
ddaybell@orrick.com
d2dptabdocket@orrick.com
m2sptabdocket@orrick.com
basdeblank@orrick.com
mcooper@orrick.com
jasonyu@orrick.com

PATENT OWNER:
Tarek N. Fahmi
ASCENDA LAW GROUP, PC
tarekfahmi@ascendalaw.com