Hybir, Inc.

Patent Trials and Appeals Board

Dec 2, 2021

IPR2020-01040 (P.T.A.B. Dec. 2, 2021)

Trials@uspto.gov Paper 36
571-272-7822 Date: December 2, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
VEEAM SOFTWARE CORPORATION,
Petitioner,
v.
HYBIR, INC.,
Patent Owner.
____________

IPR2020-01040
Patent 9,679,146 B2
____________

Before BART A. GERSTENBLITH, GARTH D. BAER, and
JOHN R. KENNY, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
Background
Veeam Software Corporation (“Petitioner”) filed a Petition (Paper 2,
“Pet.”) requesting institution of inter partes review of claims 1–7 (“the
Challenged Claims”) of U.S. Patent No. 9,679,146 B2 (Ex. 1001, “the
’146 patent”). Hybir, Inc. (“Patent Owner”) filed a Preliminary Response
(Paper 5, “Prelim. Resp.”). In accordance with our prior authorization
(Paper 6), Petitioner filed a Reply to the Preliminary Response (Paper 8,
“Prelim. Reply”), limited to responding to Patent Owner’s arguments
regarding 35 U.S.C. § 325(d) and non-enablement of the asserted prior art,
and Patent Owner filed a Sur-reply to Petitioner’s Reply (Paper 10, “Prelim.
Sur-reply”). Applying the standard set forth in 35 U.S.C. § 314(a), we
instituted an inter partes review of the Challenged Claims. Paper 11 (“Inst.
Dec.”).
After institution, Patent Owner filed a Patent Owner Response
(Paper 16, “PO Resp.”), Petitioner filed a Reply to Patent Owner’s Response
(Paper 21, “Pet. Reply”), and Patent Owner filed a Corrected Sur-reply1
(Paper 30, “PO Sur-reply”). Additionally, we requested that each party file
initial and responsive papers on the “ordinary and customary meaning of the
term ‘inventory’ as that term is used in the challenged claims.” Paper 28
(Order). In response, the parties each filed Initial Papers (Paper 31 (Patent
Owner’s Initial Paper) (“PO Initial Paper”), Paper 32 (Petitioner’s Initial
Paper) (“Pet. Initial Paper”)) and Responsive Papers (Paper 33 (Patent

1 Patent Owner’s first-filed Sur-reply (Paper 25) included citations to an
improperly filed declaration. With prior authorization, Patent Owner filed
its Corrected Sur-reply (Paper 30) to remove citations to that now-expunged
declaration.
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Owner’s Responsive Paper) (“PO Resp. Paper”)), Paper 34 (Petitioner’s
Responsive Paper) (“Pet. Resp. Paper”)). An oral hearing was held on
September 23, 2021, and a copy of the transcript was entered in the record.
Paper 35 (“Tr.”).2
We have jurisdiction pursuant to 35 U.S.C. § 6. This Decision is a
Final Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to
the patentability of the claims on which we instituted trial. Petitioner bears
the burden of proving unpatentability of the Challenged Claims, and the
burden of persuasion never shifts to Patent Owner. Dynamic Drinkware,
LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To
prevail, Petitioner must prove unpatentability by a preponderance of the
evidence. See 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2019).
Having reviewed the arguments and the supporting evidence, we determine
that Petitioner has shown, by a preponderance of the evidence, that the
Challenged Claims of the ’146 patent are unpatentable.
Related Proceedings
Petitioner and Patent Owner identify the following related matter:
Hybir, Inc. v. Veeam Software Corp., No. 1:20-cv-10329 (D. Mass) (filed
Feb. 19, 2020). Pet. 3; Paper 4 (Patent Owner’s Mandatory Notices), 2. In
addition, Petitioner filed two petitions challenging claims of related U.S.

2 The oral hearings for this proceeding and three related proceedings
(IPR2020-01037, IPR2020-01038, and IPR2020-01039) were held together
because many of the issues presented by the parties overlap. Paper 26
(Order Granting the Parties’ Requests for Oral Hearing), 1.
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Patent No. 8,051,043 B2 (“the ’043 patent”) in IPR2020-01037 and
IPR2020-01038, and a petition challenging claims of related U.S. Patent
No. 9,037,545 B2 (“the ’545 patent”) in IPR2020-01039.3 See Pet. 3.
Real Parties in Interest
Petitioner identifies Veeam Software Corporation as the real party in
interest. Pet. 3. Patent Owner identifies Hybir, Inc. as the real party in
interest. Paper 4, 2.
The Instituted Grounds of Unpatentability and Declaration
Evidence
Petitioner challenges the patentability of claims 1–7 of the ’146 patent
on the following grounds:
Claim(s) Challenged 35 U.S.C. §4 Reference(s)/Basis
1–7 103(a) Field5
1–7 103(a) Strong,6 Field
Pet. 4; Inst. Dec. 3. Petitioner supports its challenge with two declarations
by Prashant Shenoy, Ph.D., one submitted with the Petition (Ex. 1002
(Declaration of Dr. Prashant Shenoy, Ph.D.)) and the other submitted with
Petitioner’s Reply (Ex. 1019 (Declaration of Dr. Prashant Shenoy, Ph.D. in

3 The application that issued as the ’146 patent is a continuation of the
application that issued as the ’545 patent, which itself is a continuation of
the application that issued as the ’043 patent.
4 The Leahy-Smith America Invents Act (“AIA”) included revisions to
35 U.S.C. § 103 that became effective on March 16, 2013. Because the
’146 patent has an effective filing date before March 16, 2013, we apply the
pre-AIA versions of the statutory bases for unpatentability.
5 U.S. Patent Application Publication No. 2006/0212439 A1, published
Sept. 21, 2006 (Ex. 1004, “Field”).
6 U.S. Patent Application Publication No. 2006/0101064 A1, published
May 11, 2006 (Ex. 1005, “Strong”).
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support of Petitioner’s Reply to Patent Owner’s Response)). Patent Owner
supports its arguments with a Declaration by Jon B. Weissman, Ph.D.
(Ex. 2015 (Declaration of Dr. Jon Weissman, Ph.D. in Support of Patent
Owner’s Response)).
The ’146 Patent
The ’146 patent “relates generally to computer data rights and data
identity.” Ex. 1001, 1:19–20. The ’146 patent indicates that a common
inefficiency of most prior art backup techniques is that they rely on taking an
initial image or full backup of the entire contents of a computer system. Id.
at 1:51–53. Another purported inefficiency is that many systems will
maintain multiple copies of the same files. Id. at 2:13–15. An object of the
’146 patent is “to provide a more efficient method and system for managing
files, file rights, and file identity.” Id. at 2:24–26.
Figure 1 of the ’146 patent is reproduced below:

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Figure 1 is a block diagram depicting communication system 100, which
includes communication network 104, one or more communication
devices 108, enterprise server 112, backup server 116, and data storage 128.
Ex. 1001, 3:62–64, 4:61–67. “[B]ackup server 116 is characterized by the
ability to manage a file backup system for a group of users, each of which
may be associated with one or more communication devices 108.” Id. at
5:41–44. Additionally, “backup server 116 is provided with a backup
application 124 to enable users to backup files from their respective
communication devices 108 to either the backup server 116 or to the data
storage 128.” Id. at 5:45–49.
Figure 2 of the ’146 patent is reproduced below:

Figure 2 is a block diagram of communication device 108. Ex. 1001, 3:65–
67, 7:33–36. Communication device 108 includes data storage 220, which
includes backup application 228 and restore application 240 “that provides
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functionality similar to the backup server 116 described in relation to
FIG. 1.” Id. at 8:1–3, 8:12–15. Backup application 228 can backup files
from communication device 108 to a remote storage location, such as data
storage 128. Id. at 8:15–19. “To facilitate coordination of a group-based
backup system,” backup application 228 includes scanning module 232 and
file analysis module 236. Id. at 8:19–22. Scanning module 232 “perform[s]
an initial scan of local files to make a quick determination as to whether file
data has been changed, updated, added, etc.” Id. at 8:22–25. File analysis
module 236 “perform[s] a more in-depth analysis of files that the scanning
module 232 has identified as possibly changed, updated, added, and so on.”
Id. at 8:37–40.
Figure 3 of the ’146 patent is reproduced below:

Figure 3 is a logical representation of data structure 300, which is used to
manage files and data structures in a backup/restore operation. Ex. 1001,
4:1–3, 9:56–59. The data structure includes descriptor generating algorithm
field 312 and descriptor field 316. Id. at 9:59–62. Each electronic file or
portion of a file may have a descriptor associated with it. Id. at 10:51–52.
“[C]ommunication device 108 and backup server 116 can reference a
common file by independently generating a descriptor for the file using an
agreed upon descriptor generating algorithm.” Id. at 10:55–58. The
“descriptor may be a combination of file metadata (e.g., file storage location
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and other bibliographic information pertaining to the file) and cryptographic
signature or signatures.” Id. at 2:50–53.
Figure 5 of the ’146 patent is shown below:

Figure 5 shows a group-based backup data structure, which is typically
maintained on backup server 116. Ex. 1001, 4:6–8, 11:23–28. Backup
server 116 maintains inventories 504 for each user account. Id. at 11:28–29.
Backup server 116 may maintain a list of backed up files 512 currently
stored in the common data storage 128 and may reference the list of backed
up files 512 through a descriptor mapping. Id. at 11:46–49. “In other
words, the file data itself may be maintained on the data storage 128 and the
backup server 116 may maintain its list of backed up files 512 as a list of
descriptors.” Id. at 11:49–52.
The ’146 patent explains that “backup server 116 can quickly compare
the descriptors associated with each user to the descriptors outlined in the
list of backed up files 512 to determine[] which files each user has access
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to.” Ex. 1001, 11:52–56. Thus, “backup server 116 only has to maintain
one copy of any file in the data storage 128 and can utilize a descriptor
mapping to determine which user and/or communication device 108 is
allowed access to the one copy of a file.” Id. at 11:56–60. The ’146 patent
states:
This is particularly useful in situations where a single file is
stored on a number of different communication devices 108.
Each communication device 108 may utilize the file locally but
desires a backup of the file on the data storage 128. The backup
server 116 can provide the backup facilities for the file but does
not have to maintain a separate copy corresponding to each
copy in the communication system 100.
Id. at 11:60–67.
Figure 6 of the ’146 patent is reproduced below:

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Figure 6 depicts a backup routine. Ex. 1001, 4:9–11, 12:38–40. In step 604,
media is selected for backup at communication device 108 or at enterprise
server 112. Id. at 12:44–47. In step 608, scanning module 232 scans the
selected media, creating a snapshot identifying the electronic data (e.g.,
files) on the selected media and the time at which those files resided there,
and also scans the metadata of the various files in the selected media to
determine if any files have a changed timestamp that is more recent than the
last backup. Id. at 12:55–67.
In step 612, scanning module 232 may update the file inventory for
the selected media. Ex. 1001, 13:1–2. In step 616, scanning module 232
determines if there is any data on the selected media that have been changed
or added and, in step 620, identifies the changed or new electronic data and
updates the inventory of files. Id. at 13:10–20. In step 624, “the backup
application 228 employs the file analysis module 236 to apply the
predetermined descriptor generating algorithm to each identified piece of
data”—the algorithm is applied to “any file, portion of file, chunk of data, or
data structure that has been identified as changed or new to create a new
descriptor corresponding to that piece of data.” Id. at 13:21–13:29.
In step 628, file analysis module 236 updates the descriptor inventory
locally and, following compression in step 632, the compressed inventory is
transmitted across communication network 104 to backup server 116, in
step 636. Ex. 1001, 13:30–33, 13:40–42, 13:47–49. The backup server 116
decompresses the descriptor inventory and stores the inventory as part of
user’s inventory 504 in list of descriptors 508. Id. at 13:49–52. In step 644,
backup server 116 uses backup application 124 to compare the received
descriptor inventory to descriptors in the list of backed up files 512,
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“determin[ing] for each descriptor in the received descriptor inventory,
whether the corresponding file, file portion, chunk of data, or data structure
is already stored in the data storage 128.” Id. at 13:56–63. Backup
application 124 generates a list of data portions (e.g., a list of files) that need
to be uploaded because they are not currently on data storage 128 and that
list, “usually in the form of descriptors,” is sent to communication
device 108 in step 652. Id. at 13:65–14:3.
Communication device 108 receives the list of descriptors, identifies
the corresponding data or files, and then compresses the identified data using
backup application 228 in step 660. Ex. 1001, 14:4–10. The compressed
data and corresponding descriptors are then uploaded to backup server 116
in step 664. Id. at 14:15–17. The ’146 patent explains that although
additional processing is required to compare descriptors, “by performing this
preliminary check . . . the amount of data transmitted may be greatly reduced
if the backup server 116 has copies of most of the files,” thus reducing the
amount of data required for transmission and thereby increasing the speed of
a backup operation. Id. at 14:17–27.
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Figure 7 of the ’146 patent is reproduced below:

Figure 7 is a flow chart depicting aspects of a restore/recover routine.
Ex. 1001, 4:12–14, 14:48–50. As the ’146 patent explains, “[t]he recover
routine begins with the selection of a backup inventory for the restore” in
step 704, where “a user essentially selects the point-in-time that they would
like to have their communication device 108 restored back to” or is
“automatically selected if there is only one backup for a particular
communication device 108.” Id. at 14:55–60. In step 708, a user selects the
target media (e.g., “a C: drive of a communication device 108 or a particular
network drive associated with the enterprise server 112”) for the restore. Id.
at 14:66–15:2.
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In step 712, restore application 240 of communication device 108
scans the selected target media and compares the selected media with the
inventory. Ex. 1001, 15:3–6. “[R]estore application 240 determines if there
are any differences between the media and the inventory” in step 720. Id. at
15:19–21. The ’146 patent explains:
If any differences are detected, the method continues by
identifying the changed electronic data and its corresponding
descriptor from the inventory (step 724). More specifically,
after the scanning and comparison step, electronic data that is
identified as potentially different due to timestamp differences
are analyzed to generate the descriptors. If the descriptor is
different from the previous descriptor, then the former
descriptor is added to the list of files to restore. This can
eliminate the need to restore large amounts of data in certain
scenarios. For instance, during a restore of a particular backup
of a communication device 108 over another communication
device 108 such a feature may be useful. However, most
electronic data does not usually change since its previous
backup and such data would be identified as unchanged if not
by the scanning step, then by the comparison of the descriptors.
The descriptors from the inventory represent the electronic data
at the time the last backup occurred. Those files or electronic
data that have changed since the identified point-in-time are
then marked for restoration (step 728). More specifically, in
accordance with certain embodiments of the present invention,
the descriptors corresponding to the electronic data are marked
for restoration.
Id. at 15:26–48.
In step 732, restore application 240 determines if any directories in the
inventory are not present in the target media and, if not present, restore
application 240 creates those directories in the target media in step 736.
Ex. 1001, 15:49–54. In step 740, restore application 240 then requests that
the backup server retrieve the electronic data, which is performed by first
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checking locally to see if the most recent backup is on communication
device 108 or some other local media, but, if it is not, restore application 240
provides the list of descriptors marked for restore to backup server 116. Id.
at 15:60–16:2, 16:8–11. “[B]ackup server 116 utilizes the descriptor to file
mapping to retrieve the requested electronic data from the data storage 128.”
Id. at 16:11–13. Backup server 116 is able to allow communication
device 108 to access only the files and other data listed in the inventory
associated with the device, thus securely maintaining files that the device
never had. Id. at 16:13–19. “Accordingly, the descriptor in this step acts as
a credential to the files or electronic data that were previously backed up
from the communication device 108.” Id. at 16:19–22.
In step 748, backup server 116 downloads the electronic data to
requesting communication device 108 and restore application 240 stores all
of the electronic data on the target media in step 756. Ex. 1001, 16:23–30.
In step 764, “[f]ollowing the reassembly and restoration of the target
media[,] the restore application 240 determines if there are any files or other
electronic data not currently capable of a restore” and identifies and sets
such files for a restore upon reboot. Id. at 16:43–52.
Illustrative Claim
Claim 1, the sole independent claim challenged in this proceeding, is
illustrative of the claimed subject matter and is reproduced below, with
Petitioner’s bracketing added for reference:
1. [1-pre] A method of synchronizing electronic data stored
on a first client device with at least a second client device, the
method comprising:
[1A.1] receiving, at a backup server, a first inventory of
electronic data stored on a first remote storage medium
associated with a first client device, wherein the electronic data
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comprises actual file data to be backed-up from the first remote
storage medium, [1A.2] wherein the first inventory comprises
at least one descriptor and wherein the at least one descriptor
comprises a cryptographic signature computed based on the
actual file data, the cryptographic signature uniquely identifying
the electronic data to be backed-up;
[1B] comparing, at the backup server, the at least one
descriptor of the first inventory to a list of descriptors
associated with a second inventory of electronic data stored on
a backup data storage medium, wherein the second inventory of
electronic data comprises shared electronic data from a second
remote storage medium associated with the at least a second
client device as well a plurality of other storage mediums
different from the first and second remote storage mediums, and
wherein the at least one descriptor of the first inventory is
compared with descriptors in the second inventory that
correspond, at least partially, to data stored on the backup data
storage medium by storage mediums different from the first
remote storage medium;
[1C] determining that a first descriptor from the at least
one descriptor of the first inventory does not match a second
descriptor from the list of descriptors associated with the
second inventory;
[1D] storing, on the backup data storage medium, the
electronic data that is uniquely identified by the cryptographic
signature;
[1E] determining that the second remote storage medium
does not have the electronic data that is uniquely identified by
the cryptographic signature stored therein;
[1F] determining that the second remote storage medium
is permitted to have the electronic data that is uniquely
identified by the cryptographic signature; and
[1G] providing the electronic data that is uniquely
identified by the cryptographic signature from the backup
server to the at least a second client device so that the electronic
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data that is uniquely identified by the cryptographic signature
can be stored on the second remote storage medium.
Ex. 1001, 19:8–20:14.
Level of Ordinary Skill in the Art
Petitioner, supported by Dr. Shenoy’s testimony, proposes that a
person of ordinary skill in the art at the time of the invention would have had
“a B.S. degree in Computer Science, Computer Engineering, Electrical
Engineering, or an equivalent field, as well as at least 3–5 years of academic
or industry experience in the fields of data backup, data restore, data
replication, and/or data synchronization.” Pet. 9 (citing Ex. 1002 ¶¶ 13–18).
As we noted in the Institution Decision, Patent Owner’s Preliminary
Response proposed a level of ordinary skill in the art that was very similar to
Petitioner’s proposal. Inst. Dec. 15 (citing Prelim. Resp. 28). On the
preliminary record at that time, we found both parties’ proposals consistent
with the level of ordinary skill in the art reflected by the prior art of record.
Id. (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re
GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86,
91 (CCPA 1978)). And, on that record, we found that one of ordinary skill
in the art at the time of the invention would have “a Bachelor of Science
degree in Computer Science, Computer Engineering, Electrical Engineering,
Software Engineering, or an equivalent field, as well as at least three to
five years of academic or industry experience in the fields of data storage,
data backup, data restoration, data replication and deduplication, and/or data
synchronization.” Id. at 16.
In its Patent Owner Response, Patent Owner, relying on
Dr. Weissman’s testimony, appears to adopt the same level of ordinary skill
in the art set forth in the Institution Decision, without explicitly stating so.
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PO Resp. 21 (citing Ex. 2015 ¶ 18). In particular, Patent Owner proposes
that a person of ordinary skill in the art at the time of the invention would
at least have a Bachelor of Science degree in Computer
Science, Computer Engineering, Electrical Engineering,
Software Engineering, or an equivalent field, as well as at least
3–5 years of academic or industry experience in the fields of
data storage, data backup, data restoration, data replication and
deduplication, and/or data synchronization.
Id. (citing Ex. 2015 ¶ 18).
As reflected above, Patent Owner agrees with our preliminary finding
regarding the level of ordinary skill in the art and Petitioner does not address
our preliminary finding in its Reply. Accordingly, we see no reason to
disturb that finding, and, therefore, we maintain and reaffirm that one of
ordinary skill in the art at the time of the invention would have had a
Bachelor of Science degree in Computer Science, Computer Engineering,
Electrical Engineering, Software Engineering, or an equivalent field, as well
as at least three to five years of academic or industry experience in the fields
of data storage, data backup, data restoration, data replication and
deduplication, and/or data synchronization.
II. CLAIM CONSTRUCTION
In this inter partes review, claims are construed using the same claim
construction standard that would be used to construe the claims in a civil
action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b) (2019). The
claim construction standard includes construing claims in accordance with
the ordinary and customary meaning of such claims as understood by one of
ordinary skill in the art at the time of the invention. See id.; Phillips v. AWH
Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). In construing
claims in accordance with their ordinary and customary meaning, we take
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into account the specification and prosecution history. Phillips, 415 F.3d at
1315–17.
If the specification “reveal[s] a special definition given to a claim
term by the patentee that differs from the meaning it would otherwise
possess[,] . . . the inventor’s lexicography governs.” Phillips, 415 F.3d at
1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
(Fed. Cir. 2002)). Another exception to the general rule that claims are
given their ordinary and customary meaning is “when the patentee disavows
the full scope of a claim term either in the specification or during
prosecution.” Uship Intellectual Props., LLC v. United States, 714 F.3d
1311, 1313 (Fed. Cir. 2013) (quoting Thorner v. Sony Computer Entm’t Am.,
LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)).
Additionally, only terms that are in controversy need to be construed,
and these need be construed only to the extent necessary to resolve the
controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
803 (Fed. Cir. 1999) (holding that “only those terms need be construed that
are in controversy, and only to the extent necessary to resolve the
controversy”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of
an inter partes review).
“synchronizing electronic data stored on a first client device
with at least a second client device”
The above-quoted limitation is recited in the preamble of claim 1,
which states: “A method of synchronizing electronic data stored on a first
client device with at least a second client device.” Ex. 1001, 19:8–9.
Petitioner contends the preamble of claim 1 is not limiting because it states a
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purpose or intended use for the method recited and neither the term
synchronizing nor the full preamble is referenced again in other claim
elements. Pet. 10 (citing Arctic Cat Inc. v. GEP Power Prods, Inc., 919 F.3d
1320, 1328 (Fed. Cir. 2019)). In our Institution Decision, we preliminarily
determined that the preamble of claim 1 does not limit the scope of the
claim. See Inst. Dec. 18–19. Patent Owner does not contest that preliminary
determination in its Response and confirmed at the oral hearing that it does
not contend the preamble is limiting. See generally PO Resp.; Tr. 107:15–
16 (confirming that Patent Owner does not assert the preamble is limiting).
Accordingly, for the reasons explained in our Institution Decision and
because the parties agree, we maintain our preliminary determination and
reaffirm that the preamble of claim 1 is not limiting, and, therefore, we need
not expressly construe it.
Inventory
Pre-institution, neither party proposed any other claim terms for
construction. Inst. Dec. 20. In the briefing following institution, Patent
Owner proposed a construction for the term “inventory,” see, e.g., PO
Resp. 21–28, and it became clear that the parties dispute the meaning of the
term. Accordingly, we address the parties’ arguments and proposed
constructions.
The Parties’ Proposed Constructions
Patent Owner contends that “inventory” should be construed as
“electronic data that reflects the current state of a storage medium and
includes a list of files on the storage medium[,] at least one descriptor
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identifying the file(s)[,] and the directory structure of the file(s).”7 PO
Resp. 22 (citing Ex. 1001, 8:30–62, 15:49–60; Ex. 2015 ¶ 70); PO Initial
Paper 1 (emphasis omitted).
Petitioner contends that “inventory” should be construed as “an
itemized list of electronic data.” Pet. Reply 1–4; Pet. Initial Paper 1. In
particular, Petitioner contends that “inventory” should be “afforded its
ordinary and customary meaning,” (Pet. Reply 1–2 (citing Pet. 10)), which,
as recited in the Challenged Claims, is “an itemized list of electronic data”
(Pet. Initial Paper 1).
The Parties’ Arguments
a. Patent Owner’s Response8
As set forth above, Patent Owner contends that “inventory” should be
construed as “electronic data that reflects the current state of a storage
medium and includes a list of files on the storage medium[,] at least one
descriptor identifying the file(s)[,] and the directory structure of the file(s).”
PO Resp. 22 (citing Ex. 1001, 8:30–62, 15:49–60; Ex. 2015 ¶ 70) (emphasis
omitted). Patent Owner asserts that the Specification explains that “the file
inventory reflects the current state of the drive and may include a description
of the hierarchical structure of the drive as well as markers identifying sizes
of chunks of files.” Id. (citing Ex. 1001, 8:30–33, 13:36–40, 15:49–60;
Ex. 2015 ¶ 71). Patent Owner contends that “[t]he electronic data that is part

7 Patent Owner’s Initial Paper added two commas to the proposed
construction, which help identify the specific aspects of Patent Owner’s
proposal. PO Initial Paper 1. Whether or not the commas are included, the
analysis below is effectively the same.
8 As noted above, Patent Owner’s Response was the first instance either
party proposed an express construction of “inventory.”
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of the inventory includes raw data and metadata” (id. (citing Ex. 1001, 8:47–
50; Ex. 2015 ¶ 71)), and “[t]he unique descriptor stored in an inventory is
generated from raw data and metadata of a file or portion of a file and the
directory structure of the same file / portion of the same file” (id. (citing
Ex. 1001, 8:47–54, 15:54–56; Ex. 2015 ¶ 71)).
Patent Owner relies on Figure 7 of the ’146 patent, which “is a flow
chart depicting aspects of a restore routine.” Ex. 1001, 4:12–13; see PO
Resp. 22 (citing Ex. 1001, Fig. 7; Ex. 2015 ¶ 71). Patent Owner contends
that Figure 7 and the description thereof in the Specification support its
construction of inventory. PO Resp. 22–24 (citations omitted). In
particular, Patent Owner asserts that “a backup inventory stores descriptors,
which correspond to the electronic data marked for restoration, as well as
directory structures for the restored data.” Id. at 23 (citing Ex. 1001, 15:45–
48; Ex. 2015 ¶ 72). Patent Owner notes that the Specification states that
after the descriptors are marked for restoration, the “‘restore application
continues by determining if any directories in the inventory are not present
in the target media.’” Id. (quoting Ex. 1001, 15:49–52). Patent Owner
states that “[i]f there are directories stored in the backup inventory and not in
the target media, then those directories are created for the target media.” Id.
(citing Ex. 1001, 15:52–54). Patent Owner refers to the remainder of the
restore process, contending that “the backup inventory provides enough data
to allow for a complete restore of a client device.” Id. at 24 (citing Ex. 2015
¶ 73).
Additionally, Patent Owner contends that its proposed construction “is
consistent with [inventory’s] ordinary meaning.” PO Resp. 24 (citing
Ex. 2015 ¶ 74). In particular, Patent Owner points to two extrinsic
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dictionary definitions of “inventory,” which define “inventory” as “a
complete list of items such as property, goods in stock, or the contents of a
building” and “a detailed list of all the things in a place,” and an extrinsic
definition of “data backup inventory” as a “detailed and often descriptive
catalog, aggregate view or list of relevant Data Backup Items that is often
somewhat important, sanctioned or approved in its nature.” Id. (citing
Ex. 2019 (Google webpage showing definition of “inventory” from “Oxford
Languages”), 1; Ex. 2020 (webpage showing definition of “inventory” from
the Cambridge English Dictionary), 1; Ex. 2021 (webpage showing
definition of “data backup inventory” from The International Foundation for
Information Technology), 1; Ex. 2015 ¶¶ 74–75).
Patent Owner contends that Petitioner and Dr. Shenoy assert that
“inventory” is simply “an itemized list,” which can consist of “a list of
‘signatures corresponding to the one or more selected files for backup.’” PO
Resp. 25 (citing Pet. 31); id. at 25–26 (quoting Ex. 2022 (transcript of
Dr. Shenoy’s deposition), 97:18–98:13, 98:24–100:2). Patent Owner asserts
that Petitioner’s construction “is contradicted by the intrinsic evidence
including the claim language itself” because the claims “clearly and
repeatedly use the terms inventory and list in different ways.” Id. at 26
(citing Ex. 2015 ¶ 78). Although neither Patent Owner nor Dr. Weissman
explains the different use of “inventory” and “list,” Patent Owner points to
claim 1 of the ’146 patent noting that the following language makes clear
that “a ‘list of descriptors’ is part of, but not identical to the inventory”:
“comparing, at the backup server, the at least one descriptor of the first
inventory to a list of descriptors associated with a second inventory of
electronic data stored on a backup data storage medium.” Id. (citing
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Ex. 2015 ¶ 79; Ex. 1001, claim 1). Additionally, Patent Owner asserts that
Dr. Shenoy agreed that additional data about the current state of the drive
would be needed to provide a volume backup. Id. at 26–27 (quoting
Ex. 2022, 45:3–15, 46:11–23).
Further, Patent Owner contends that “use of the language ‘associated
with’ indicates that there is more than just a list of descriptors for an
inventory of electronic data, e.g., directory structure of the electronic data.”
PO Resp. 27 (citing Ex. 2015 ¶ 80). And, Patent Owner contends, because
the ordinary meaning of “inventory” includes the terms “detailed” and
“complete,” the extrinsic evidence “does not support Dr. Shenoy’s
construction of inventory as merely an ‘itemized list.’” Id. (citing Ex. 2015
¶ 80). Patent Owner further asserts that its construction “is consistent with
the embodiments described and claimed in the ’146 Patent, in which
inventories are transmitted between the communication device and backup
server to determine which files to backup or restore in view of the current
state of the drive on the communication device.” Id. at 28 (citing Ex. 1001,
claim 1; Ex. 2015 ¶ 81).
b. Petitioner’s Reply
In its Reply, Petitioner contends that “inventory” should be “afforded
its ordinary and customary meaning” and that Patent Owner propounds “an
improperly narrow construction of the term ‘inventory,’ purporting to import
four separate requirements into this single term.” Pet. Reply 1–2. In
particular, Petitioner asserts that Patent Owner’s construction seeks to
require that an inventory: (1) reflect the current state of a storage medium,
(2) include a list of files on the storage medium, (3) include at least one
descriptor identifying the file(s), and (4) include the directory structure of
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the file(s). See id. at 2 (citing Ex. 1020 (transcript of Dr. Weissman’s
deposition), 39:13–40:13; PO Resp. 22).
First, Petitioner contends that “[i]mportation of these four limitations
is improper . . . because the claims themselves define the ‘inventory.’” Pet.
Reply 2 (citations omitted).
Second, Petitioner argues that Patent Owner’s construction “is also
inconsistent with the ’146 patent specification, which provides no definition
for the term ‘inventory’ nor any specific requirements, much less the four
propounded by” Patent Owner. Pet. Reply 3 (citing Ex. 1019 ¶¶ 6–8).
Petitioner contends that “the specification uses the term as an open-ended
construct, merely providing examples of what data may be included in an
inventory—not what must be.” Id. at 3 (citing Ex. 1001, 8:30–33, 11:50–54;
Ex. 1019 ¶¶ 9, 12–13). Petitioner provides additional discussion of each
clause in Patent Owner’s proposed construction, arguing that each is
improper in light of the Specification. See id. at 4–16.
Third, Petitioner asserts that Patent Owner “cannot manufacture a
construction based on nothing more than cherry-picked extrinsic evidence
and unsupported expert testimony.” Pet. Reply 3. Petitioner contends that
even Patent Owner’s “carefully-selected dictionary definitions do not
support [Patent Owner’s] proposed construction” because “[n]one of the four
proposed requirements are expressed or implied by the words ‘detailed’ or
‘complete.’” Id. (citing Ex. 1019 ¶¶ 10–11). Petitioner further notes that
Patent Owner “expressly ignores that [Dr. Shenoy’s construction of
inventory as an itemized list] is derived from the Merriam-Webster
dictionary in related proceedings, which defines ‘inventory’ as ‘an itemized
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list of current goods or asserts.’” Id. at 3–4 (citing Ex. 1025 ¶ 117 (citing
Ex. 1023 (The Merriam-Webster Dictionary), 384); Ex. 1019 ¶ 8).
Further, Petitioner asserts that Patent Owner’s “proposed construction
fails at almost every canon of claim construction: it is confusing, makes
optional information a requirement, duplicates and renders superfluous claim
language, and conflicts with the doctrine of claim differentiation.” Pet.
Reply 4. Instead, Petitioner contends that “inventory” should be construed
in accordance with its ordinary meaning. Id. (citations omitted).
c. PO’s Sur-Reply
In its Sur-reply, Patent Owner contends that “Petitioner incorrectly
focuses the weight of its argument on the linguistic aspects of Patent
Owner’s claim construction of the term ‘inventory’ rather than the
fundamental principles of how one of ordinary skill in the art would have
understood the term based on the specification and claims.” PO Sur-reply 1.
Patent Owner asserts that it “never characterized its construction as having
. . . four requirements nor argued they were entirely independent of one
another.” Id. Patent Owner contends that “[e]ach aspect of its construction
adds meaning while at the same time possibly overlapping to some extent
with other aspects.” Id. at 2.
In particular, Patent Owner contends that “nothing precludes some
potential overlap between portions of a construction. Here, for example, the
list of file(s) and the directory structure of the file(s) may be useful, but not
necessarily sufficient, in determining the current state of the storage
medium.” PO Sur-reply 3. Patent Owner asserts that its construction
“captures the data needed in the inventory according to the specification to
achieve” the requirements of the claimed deduplication process as well as
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restoring a storage medium. Id. at 3–4. Patent Owner contends that its
construction is “based on the fundamental principle of giving claims their
ordinary and customary meaning that would have been accorded by a person
of ordinary skill in the art.” Id. (citation omitted). Additionally, Patent
Owner contends that “patent specifications often use the word ‘may’ even in
reference to requirements.” Id. at 4. Patent Owner walks through each of
the four aspects of its construction in response to Petitioner’s arguments. Id.
at 5–10.
d. Initial and Responsive Papers
In addition to the information provided by the parties in the papers
discussed above, each party filed an Initial Paper and Responsive Paper in
response to our request for each party to set forth “its contentions regarding
the ordinary and customary meaning of the term ‘inventory’ as that term is
used in the challenged claims.’” Paper 28, 1. In its Initial Paper, Petitioner
contends that “the ordinary and customary meaning of the term ‘inventory,’
as recited in the challenged claims, is ‘an itemized list of electronic data.’”
Pet. Initial Paper 1. Petitioner contends that the use of “inventory” in the
Specification is consistent with the dictionary definition of “inventory” as
“an itemized list of current goods or assets.” Id. (quoting Ex. 1025 ¶¶ 117,
180 (citing Ex. 1023, 384); Ex. 1019 ¶ 8 (citing Ex. 1023, 384)). Petitioner
also asserts that Patent Owner’s cited dictionary definitions “further confirm
this understanding.” Id. at 1–2 (citing Exs. 2019–2021).
Additionally, Petitioner reiterates that “[t]he term ‘inventory’ does not
define, describe, or limit the contents of the inventory itself; rather, those
limitations are provided by each challenged claim, which describe[s] what
information the ‘inventory’ must contain.” Pet. Initial Paper 2 (footnote
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omitted). Petitioner contends that “[n]othing, in either the extrinsic or
intrinsic evidence, demands that the term ‘inventory’ must reflect a certain
amount or type of data, or take on any particular form,” although the claims
“do provide additional details.” Id. (citing Pet. Reply 3–4; Ex. 1019 ¶¶ 8–
13).
In its Initial Paper, Patent Owner contends that its construction “is
consistent with the ordinary and customary meaning of the term
‘inventory.’” PO Initial Paper 1. Patent Owner offers six exemplary
dictionary definitions of “inventory” that it contends reflect that “inventory”
is “more than just a list.” Id. at 1–2 (citations omitted). In particular, each
of Patent Owner’s dictionary definitions includes a version of the phrase “a
detailed [or complete] list.” Id. at 1 (emphasis omitted); see id. at 2 (noting
that “inventory” would have been understood as “a ‘complete,’ ‘detailed,’
and ‘often descriptive’ list which includes other data about the items and/or
information identified in the inventory”). Patent Owner asserts that “[t]he
exact nature of the other data kept in a particular inventory would depend on
the nature of the items contained in the inventory, as these definitions
reflect.” Id. at 2.
Additionally, Patent Owner explains that the “elements of the
inventories in the claims are recited to explain which data or storage medium
is being described by the inventory and not to add limitations to what is in
the inventory, as Petitioner suggests.” PO Initial Paper 3. For example,
Patent Owner points to claim 10 of the ’545 patent, which recites
“generating a first inventory for the first set of files, wherein the first
inventory reflects a current state of the first remote storage medium, and
wherein the first inventory includes the cryptographic signature values
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generated for each file in the first set of files.” PO Initial Paper 3–4. Patent
Owner contends that the first wherein clause “informs the reader that the
current state of the in the first inventory is for the first remote storage
medium and not a different storage medium” and that the second wherein
clause “establishes [that the cryptographic signature values] are generated
for the first set of files as opposed to a different set of files.” Id. at 4.
In its Responsive Paper, Petitioner contends that Patent Owner “never
actually explains what the ordinary and customary meaning of ‘inventory’
is” and instead relies on “‘exemplary’ dictionary definitions for the vague
proposition that ‘the ordinary and customary meaning of “inventory” is more
than just a list.’” Pet. Resp. Paper 1. Petitioner asserts, however, that none
of the definitions support Patent Owner’s argument because none define
how much “more” is needed for a list to be considered an “inventory” nor do
any set forth the numerous requirements included in Patent Owner’s
proposed construction. Id. Petitioner explains that “[c]onsistent with these
definitions, an ‘inventory’ is a specific type of list that accounts for all items
being inventoried, whether that be files selected for backup, files present on
a backup server, or—in a different context—items in a grocery store.” Id.
Petitioner asserts that “[t]he very purpose of an inventory is to account for
each subject item, which is why Patent Owner’s cited dictionaries define
‘inventory’ as an ‘itemized,’ ‘detailed,’ or ‘complete’ list of items.” Id.
Petitioner contends, however, that “those dictionaries contemplate what
[P]atent Owner ignores: the form in which those items are represented may
vary, and so the ordinary and customary meaning of the term ‘inventory’ in
no way requires use of any particular attributes to represent the subject
items.” Id. at 1–2 (citing Pet. Initial Paper 2–3).
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Additionally, Petitioner contends that Patent Owner’s citations to the
Specification “do not suggest a different meaning.” Pet. Resp. Paper 2.
“Rather, consistent with the ordinary and customary meaning provided by
Petitioner, the [’146] patent allows for various different types of information
to be present within an inventory.” Id. (citations omitted). Particularly,
Petitioner contends that the Specification explains “that an inventory may
include certain information associated with the inventoried items,” but that
does not “mandate that such information is inherent within the meaning of
‘inventory.’” Id. (citations omitted).
In its Responsive Paper, Patent Owner contends that Petitioner’s
construction of inventory “reads all meaning out of th[e] word.” PO Resp.
Paper 1. Patent Owner asserts that the claims and Specification contradict
any argument that an “inventory” is the same as a list. Id. Additionally,
Patent Owner asserts that “Petitioner’s argument is blatantly inconsistent
with the ordinary and customary meaning of the term ‘inventory’ as set forth
in [the] various dictionaries as including a ‘detailed,’ ‘complete,’ and ‘often
descriptive’ set of data.” Id. at 2 (citing Exs. 2019–2021). And, Patent
Owner contends that its construction is “supported by both the extrinsic
evidence and the patent[ itself] as including specific types of additional and
detailed information about the items.” Id.
Discussion
Above, we set forth the standard that applies in this proceeding, and
we reiterate that “[t]he words of a claim are generally given their ordinary
and customary meaning as understood by a person of ordinary skill in the art
when read in the context of the specification and prosecution history.”
Thorner, 669 F.3d at 1365 (citing Phillips, 415 F.3d at 1313). “There are
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only two exceptions to this general rule: 1) when a patentee sets out a
definition and acts as his own lexicographer, or 2) when the patentee
disavows the full scope of a claim term either in the specification or during
prosecution.” Id. (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
1576, 1580 (Fed. Cir. 1996)).
In this case, neither party contends that either exception to the general
rule of construing claim terms in accordance with their ordinary and
customary meaning applies. We agree with the parties that the term
“inventory” should be given its plain and ordinary meaning because the
patentee did not act as his own lexicographer by defining the term
“inventory” and did not disavow the full scope of the term “inventory.” The
parties disagree, however, as to the ordinary and customary meaning of
“inventory.” Before turning to the parties’ particular disagreements, we
recognize where the parties’ proposed constructions agree. In particular, the
parties agree, as do we, that the ordinary and customary meaning of
“inventory” includes the terms “electronic data” and “list.” Below, we
address the disputed portions of the parties’ proposed constructions, starting
with Patent Owner’s.
a. Patent Owner’s Proposed Construction
As described above, Patent Owner’s proposed construction reflects
four aspects of an “inventory.” Specifically it is “electronic data” that (1)
“reflects the current state of a storage medium,” (2) “includes a list of files
on the storage medium,” (3) includes “at least one descriptor identifying the
file(s),” and (4) includes “the directory structure of the file(s).” PO Initial
Paper 1; see PO Resp. 22 (citing Ex. 1001, 8:30–62, 15:49–60; Ex. 2015
¶ 70). We examine each aspect of Patent Owner’s construction.
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i. Reflects the Current State of a Storage Medium
The first aspect of Patent Owner’s proposed construction is that an
“inventory” “reflects the current state of a storage medium.” PO Resp. 22;
PO Initial Paper 1. For support, Patent Owner relies on the Specification of
the ’146 patent and, particularly, the descriptions of an inventory in
column 8. PO Resp. 22 (citing inter alia Ex. 1001, 8:30–62). This portion
of the Specification describes a “file inventory” that scanning module 232
creates when it scans a particular drive or storage medium. In describing
Figure 2, the Specification states, “[b]y scanning a particular drive or
similar storage medium, the scanning module 232 is capable of creating a
file inventory for the selected drive. The file inventory reflects the current
state of the drive and may include a description of the hierarchical structure
of the drive.” Ex. 1001, 8:28–30 (emphasis added).
We disagree that the Specification supports Patent Owner’s
arguments. First, this disclosure expressly refers to a “file inventory,”
whereas the term proposed for construction is “inventory.” Second, this
disclosure describes a particular trait of the “file inventory” produced by
scanning module 232 when it scans a particular drive or storage medium.
Third, this disclosure does not indicate that the meaning of “inventory”
should be limited to the description of the “file inventory” created by
scanning module 232 in the described instance. And, we do not agree that it
is appropriate to read a description of the specific “file inventory” produced
by scanning module 232 into the claim term “inventory.” See Liebel-
Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 904 (Fed. Cir. 2004)
(“improper to read a limitation from the specification into the claims”).
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Additionally, neither the claim language nor the dictionary definitions
cited by Patent Owner support construing the term “inventory” itself as
“reflecting the current state of a storage medium.” With respect to the term
“inventory,” claim 1 recites
receiving, at a backup server, a first inventory of electronic data
stored on a first remote storage medium associated with a first
client device, wherein the electronic data comprises actual file
data to be backed-up from the first remote storage medium,
wherein the first inventory comprises at least one descriptor and
wherein the at least one descriptor comprises a cryptographic
signature computed based on the actual file data, the
cryptographic signature uniquely identifying the electronic data
to be backed-up . . . .
Ex. 1001, 19:11–20. The claim language reflects that the “first inventory”
comprises at least one descriptor, which comprises a cryptographic
signature.
Considering extrinsic evidence,9 both parties rely on dictionary
definitions.10 A common feature of the definitions proffered by Patent
Owner is the use of the adjective “detailed” and the word “list.” See PO
Initial Paper 1 (“a complete list,” “a detailed list,” “detailed . . . list,”
“detailed . . . list,” “detailed . . . list,” “detailed list”) (citing inter alia
Exs. 2019–2021). Patent Owner states that these dictionary definitions show
that “the ordinary and customary meaning of ‘inventory’ is more than just a
list.” Id. at 2. Petitioner does not disagree. In fact, Petitioner notes the

9 Neither party argues that the prosecution history of the ’146 patent informs
as to the meaning of the “inventory.”
10 The parties also rely on competing expert testimony that is very similar to
the parties’ arguments. See, e.g., Ex. 2015 ¶¶ 70–81 (Dr. Weissman’s
declaration testimony); Ex. 1019 ¶¶ 6–30 (Dr. Shenoy’s reply declaration
testimony).
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same commonality across the dictionary definitions the parties relied on—
they each include a “list” and a modifier describing the list as “itemized,”
“detailed,” or “complete.” Pet. Resp. Paper 1. Petitioner, however, also
asserts that none of the dictionary definitions support Patent Owner’s
attempt to require that the term “inventory” must include all of the
information that the Specification indicates may be included in an inventory.
Id. at 2.
The dictionary definitions shed light on the plain and ordinary
meaning of “inventory,” but, in particular, none of the definitions support
Patent Owner’s proposed construction. Despite including adjectives such as
“itemized,” “detailed,” and “complete,” none of those modifiers even
remotely suggests, supports, or is consistent with Patent Owner’s proposed
construction of “inventory” as “electronic data that reflects the current state
of a storage medium.”11
Accordingly, we find that the complete record does not support
construing “inventory”12 to require “electronic data that reflects the current
state of a storage medium.”

11 Nor do any of the definitions reflect that the ordinary and customary
meaning of “inventory” includes the other three aspects of Patent Owner’s
proposed construction of “inventory”—electronic data that (2) “includes a
list of files on the storage medium,” (3) includes “at least one descriptor
identifying the file(s),” and (4) includes “the directory structure of the
file(s).”
12 Also important to our understanding of “inventory” is Patent Owner’s
agreement that “the claimed inventory may not account for every file on the
system. Instead, the claimed inventory accounts for the data, which may
only be a chunk of data, selected by a user to be backed up or restored.” PO
Sur-reply 12 (agreeing with Petitioner). In other words, even though the
extrinsic definitions modify the term “list” by requiring the list to be
“itemized,” “detailed,” and/or “complete,” it is undisputed that the claimed
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ii. Includes a List of Files on the Storage Medium
As mentioned, both parties propose construing inventory to include or
constitute a list. PO Resp. 22; Pet. Reply 3–4; Pet. Initial Paper 1. The
parties dispute, however, what the list should constitute. Patent Owner
argues that “inventory” requires a list of files on the storage medium (PO
Resp. 22), whereas Petitioner argues that “inventory” does not require the
inclusion of a list of files on the storage medium. Pet. Initial Paper 1.
Patent Owner’s Response does not specifically identify its support for
construing inventory to require a list of files on the storage medium. PO
Resp. 21–28. Patent Owner’s Sur-reply, however, points to the ’146 patent’s
description of the restore process. PO Sur-reply 7–9 (citing Ex. 1001,
15:26–48, 16:56–58). Nothing in that discussion in the Specification,
however, requires “inventory” to include a list of files on the storage
medium and Patent Owner’s discussion does not identify any such
requirement. Rather, we find that this portion of the Specification supports
Petitioner’s argument that inclusion of a list of files is permissible, but not
required. First, the Specification explicitly states that “[w]ith reference now
to FIG. 7, a restore/recover routine will be described in accordance with at
least some embodiments of the present invention.” Ex. 1001, 14:48–50
(emphasis added). Thus, on its face, the Specification describes the
restore/recover routine as applicable to some embodiments, meaning not
every embodiment. Second, in the portion Patent Owner relies on, the
Specification further describes as “an additional embodiment of the present
invention” the ability to generate an inventory of protected media. See id. at

“inventory” can account for less than all files on a remote storage medium
or drive.
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16:56–58. And the Specification expressly states that “[t]his inventory is a
list of all files with corresponding descriptors.” Id. at 16:57–58. This
description reflects that when the patentee intended to refer to a list of files
as part of an inventory, the patentee knew how to do so. The patentee’s
failure to do so for all embodiments or to specifically direct the discussion to
the term “inventory” generally, supports Petitioner’s position that an
“inventory” may include a list of files on the storage medium, but is not
required to do so.13
Additionally, even the heading of this section of Patent Owner’s
Sur-reply supports Petitioner’s argument that “inventory” may include a list
of files on the storage medium, but is not required to do so. In particular,
Patent Owner’s heading states “[a]n ‘inventory’ may include a ‘list of files
on the storage medium.’” PO Sur-reply 7 (emphasis added). We do not
disagree that it may. We do, however, disagree that “inventory” must
include a list of files on the storage medium, as explained above.
Further, neither the claim language nor the parties’ dictionary
definitions support limiting “inventory” to include a list of files on the
storage medium. Exs. 1023, 2019–2021. In particular, Patent Owner fails to
point to any aspect of the claims as supporting its construction. And, none

13 We also find that the Specification suggests that a list of files is not a
required aspect of “inventory.” In particular, in describing the embodiment
of Figure 5, the ’146 patent teaches that “[i]ncluded in a user’s inventory
may be list of descriptors 508. The list of descriptors 508 for each user are a
short-hand representation of the actual files, or portions of files, that have
been recently backed up for the user’s communication device 108.”
Ex. 1001, 11:41–45. This disclosure suggests that an “inventory” need not
require a list of the files themselves, but rather that a list of descriptors could
suffice.
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of the dictionary definitions set forth such a requirement. Id. Thus, we do
not construe “inventory” to require a “list of files on the storage medium.”
iii. Includes at Least One Descriptor Identifying
the File(s)
The third aspect of Patent Owner’s proposed construction of
“inventory” is the inclusion of at least one descriptor identifying the file(s).
Patent Owner’s Response does not specifically identify why “inventory”
should be construed to require this language. Petitioner’s Reply correctly
identifies that claim 1 recites “wherein the first inventory comprises at least
one descriptor.” Pet. Reply 13 (quoting Ex. 1001, 19:15–6). In its
Sur-reply, responding to Petitioner’s argument that the claims expressly
recite this aspect of Patent Owner’s proposed construction of “inventory,”
Patent Owner states “Petitioner does not dispute that an inventory includes at
least one descriptor, and thus whether it is explicitly in the construction or
not, the Board must consider it as a limitation.” PO Sur-reply 9. Patent
Owner further states that claim 1 “needs to refer to the at least one
descriptor, e.g., cryptographic signature, in each inventory as an antecedent
basis to refer to it again later in the claims.” Id.
Patent Owner’s arguments reflect that Patent Owner (1) does not
provide any support for why the term “inventory” itself requires “at least one
descriptor identifying the file(s)” and (2) expressly equates a cryptographic
signature with a descriptor.14 And, we do not discern any support in the
claims, Specification, or dictionary definitions of “inventory” that the term

14 The latter portion of Patent Owner’s argument is noteworthy in that Field
discloses cryptographic signatures as discussed further infra.
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“inventory” must require at least one descriptor identifying the file(s) as
Patent Owner proposes.15
Thus, on the complete record before us, the evidence (claims,
Specification, and extrinsic) does not support Patent Owner’s attempt to
require “inventory” to mean that it “includes at least one descriptor
identifying the file(s).” Accordingly, we do not construe “inventory” to
require such.
iv. Includes the Directory Structure of the File(s)
The fourth aspect of Patent Owner’s proposed construction of
“inventory” is that an “inventory” must include the directory structure of the
file(s). PO Resp. 22. Patent Owner points to the language of claim 1 and
identifies two portions of the Specification as allegedly supporting its
proposed construction. We address each.
Patent Owner argues that the following language from claim 1—
“comparing . . . the at least one descriptor of the first inventory to a list of
descriptors associated with a second inventory”—makes it clear that “a ‘list
of descriptors’ is part of, but not identical to the inventory.” PO Resp. 26
(citing Ex. 2015 ¶ 79). And, Patent Owner asserts that the phrase
“‘associated with’ indicates that there is more than just a list of descriptors
for an inventory of electronic data, e.g., directory structure of the electronic
data.” Id. at 27 (citing Ex. 2015 ¶ 80).
We disagree that the language of claim 1, quoted by Patent Owner
above, supports its proposed construction of “inventory.” In particular,

15 We address the express language of claim 1 in our discussion of the
application of the prior art to the claims. See infra § III.B.3.a.iii.
(limitation 1A.2).
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Patent Owner fails to identify any portion of the claim language that
requires the inclusion of “the directory structure of the file(s)” in the
meaning of “inventory.” Even accepting Patent Owner’s arguments that a
list of descriptors is not identical to an “inventory” and that “associated
with” indicates that there is more than just a list of descriptors for an
inventory, neither of those suppositions leads to the conclusion that the
meaning of “inventory” requires the inclusion of the directory structure of
the file(s) as opposed to something else.
With respect to the Specification, Patent Owner points to the
discussion in column 8, describing Figure 2, as well as the Specification’s
discussion of Figure 7 and the restore/recover routine described therein.
With respect to column 8, Patent Owner relies on the disclosure regarding
scanning module 232, discussed above: “[b]y scanning a particular drive or
similar storage medium, the scanning module 232 is capable of creating a
file inventory for the selected drive. The file inventory reflects the current
state of the drive and may include a description of the hierarchical structure
of the drive.” Ex. 1001, 8:28–33 (emphasis added); see PO Resp. 22 (citing
Ex. 1001, 8:30–33, 13:36–40, 15:49–60; Ex. 2015 ¶ 71).
This portion of the Specification does not support Patent Owner’s
argument. As quoted above, the same statement from the Specification that
says the file inventory produced by scanning module 212 reflects the current
state of the drive also says that the file inventory may include a description
of the hierarchical structure, not that it must be included. Thus, we reject
Patent Owner’s attempt to require a description of the hierarchical
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structure/directory structure16 of the drive/files when the Specification
explicitly states that the file inventory may include such a description. See
Ex. 1001, 8:30–33. In other words, that the file inventory produced by
scanning module 202 reflects the current state of the drive does not mean
that a directory structure or hierarchical structure is a required part of that
file inventory, especially where the Specification uses the permissive term
“may.”
Patent Owner argues that the term “may,” as used in the Specification
of the ’146 patent, is not permissive. PO Sur-reply 4. Patent Owner
contends that “patent specifications often use the word ‘may’ even in
reference to requirements.” Id. Patent Owner, however, cites no support for
this contention. Patent Owner argues, however, that “[e]verything is
described in this patent that’s may this, may that. It’s all permissive
language.” Tr. 76:18–20. Patent Owner asserts that if we construe “may” as
optional (permissive) as opposed to required, then nothing is left of the
patent. See id. at 76:20–77:2 (“Unfortunately, you can’t take these sentences
in isolation and say, well, these are saying permissive, because then nothing
is happening in this patent. Practically everything is described in terms of it
may be this or it may be that. So there’s nothing definitive about anything
here.”). We disagree.

16 Dr. Weissman’s deposition testimony acknowledged some relationship
between Patent Owner’s use of “directory structure of the file(s)” and
hierarchical structure of the drive. See, e.g., Ex. 1020, 75:11–15
(acknowledging agreement), 75:16–78:22 (further discussing his
understanding of directory structure and hierarchical structure); see also
Ex. 1024 ¶ 29 (Dr. Shenoy’s reply declaration testimony discussing
Dr. Weissman’s declaration).
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We see nothing in this record that would cause us to interpret the term
“may” as mandatory.17 Thus, we interpret the term “may” in accordance
with its ordinary, permissive meaning. See Netword LLC v. Centraal Corp.,
242 F.3d 1347, 1358 (Fed. Cir. 2001) (“The specification makes quite clear
that those added limitations are merely permissive, that is to say, they may or
may not be associated with the client computer that is clearly defined in the
specification.” (emphasis added)); In re Johnston, 435 F.3d 1381, 1384 (Fed.
Cir. 2006) (“[T]hese limitations are stated in the permissive form ‘may.’ As
a matter of linguistic precision, optional elements do not narrow the claim
because they can always be omitted.” (emphasis added)). And, we do not
agree that construing may in accordance with its ordinary and customary
meaning deprives the ’146 patent of meaning. That an “inventory” may
include the directory structure of the file(s) means exactly that, it may.
Nothing in our construction precludes an “inventory” from including the
directory structure of the file(s). In other words, there may be claims that
recite the broader term “inventory” and there may be claims that recite a
narrower “inventory” if, for example, other language in the claim expressly

17 The Specification’s use of “may” in several other instances also indicates
the permissive (optional) inclusion of items in an inventory. See Ex. 1001,
8:47–54 (describing the use of a descriptor algorithm to “create the
descriptor that uniquely . . . identifies the file or a portion of the file” and
stating that “[t]he results of the application of the descriptor algorithm (e.g.,
the generated hash corresponding to each file or portion of a file) may also
be added to the inventory to help describe the current state of the drive”
(emphasis added), 11:28–42 (noting, in the context of Figure 5, that “backup
server 116 may be designed to maintain inventories 504 for each user
account” and that “[i]ncluded in a user’s inventory may be a list of
descriptors 508” (emphasis added)).
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limits the “inventory” to include one or more of the aspects described in the
Specification as optional.18
As a second disclosure allegedly supporting its proposed construction,
Patent Owner points to the Specification’s discussion of Figure 7 and the
restore/recover routine described therein. In particular, Patent Owner points
to the statement that “[o]nce the descriptors have been marked for
restoration, the restore application 240 continues by determining if any
directories in the inventory are not present in the target media (step 732). If
there are any directories in the inventory and not in the media, the restore
application 240 creates those directories in the target media (step 736).” See
PO Resp. 22–24 (citing inter alia Ex. 1001, 15:49–54) (asserting that
Figure 7 and this description from the Specification supports Patent Owner’s
construction); Tr. 79:1–12 (contending that this statement from the
Specification is definitive that there are directories in this inventory).
We disagree that this statement in the Specification supports Patent
Owner’s argument that (a) directories are required to be in the specific
inventory referenced and (b) the term “inventory” should be construed as
requiring “the directory structure of the file(s).” This specific statement says
if there are any directories in the inventory and not in the media, then
directories are created. Nothing in that statement requires the presence of
directories in the inventory. The statement is satisfied whether or not
directories are included. If there are no directories in the inventory, then
there are no directories in the inventory that are not in the target media.

18 For example, as we noted previously and as discussed further herein,
claim 1 further limits the “inventory” recited therein. See, e.g., Ex. 1001,
19:15–18 (limitation 1A.2).
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Thus, this statement fails to support Patent Owner’s argument that
“inventory” should be construed as requiring the directory structure of the
file(s).
Additionally, the Specification’s description of Figure 7 explicitly
states that the restore/recover routine is described “in accordance with at
least some embodiments of the present invention.” Ex. 1001, 14:48–50
(emphasis added). Thus, even if we were to read the above-description of
Figure 7 as requiring directories in this specific inventory (which we do not),
this description expressly applies to “at least some embodiments,” meaning
not necessarily all embodiments.
Further, as we noted above, the parties’ dictionary definitions also do
not support Patent Owner’s proposed requirement that an inventory include
the directory structure of the file(s). None of those definitions so limit the
term “inventory.” Exs. 1023, 2019–2021.
Therefore, we do not construe “inventory” to require inclusion of the
directory structure of the file(s).
b. Petitioner’s Proposed Construction
As mentioned above, Petitioner proposes construing “inventory” as
“an itemized list of electronic data.” Pet. Reply 1–2; Pet. Initial Paper 1.
This construction is consistent with the language of claim 1 and also
consistent with the Specification of the ’146 patent. See, e.g., Ex. 1001,
8:28–30; 11:28–45; 14:36–41. And, Petitioner’s proposed construction is
supported by the dictionary definition of inventory as “an itemized list of
current goods or assets.” Ex. 1023, 4.
Patent Owner objects to Petitioner’s proposed construction on the
grounds that the Specification of the ’146 patent teaches that the term
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“inventory” should have all of the requirements set forth in Patent Owner’s
proposed construction. See, e.g., PO Initial Paper 1. As set forth above, we
disagree with that argument by Patent Owner.
Patent Owner also relies on dictionary definitions to oppose
Petitioner’s proposed construction. See PO Initial Paper 1. As discussed
above, a common feature of the definitions Patent Owner proffers is the use
of the adjective “detailed” and the word “list.” See id. (“a complete list,” “a
detailed list,” “detailed . . . list,” “detailed . . . list,” “detailed . . . list,”
“detailed list”) (citing inter alia Exs. 2019–2021). Patent Owner states that
these dictionary definitions show that “the ordinary and customary meaning
of ‘inventory’ is more than just a list.” Id. at 2. Petitioner does not disagree.
In fact, Petitioner notes the same commonality across the dictionary
definitions—they each include a “list” and a modifier describing the list as
“itemized,” “detailed,” or “complete.” Pet. Resp. Paper 1. And Petitioner’s
proposed construction requires an inventory to be more than a list—it must
be an itemized list. Patent Owner has not argued that there is any difference
of significance for this case between construing an inventory as an itemized
list versus a detailed list (aside from using the term “detailed” as a vehicle to
argue all four aspects of its proposed construction). And we see none.19

19 As noted previously, important to our understanding of “inventory” is the
parties’ agreement that “the claimed inventory may not account for every
file on the system. Instead, the claimed inventory accounts for the data,
which may only be a chunk of data, selected by a user to be backed up or
restored.” PO Sur-reply 12 (agreeing with Petitioner). In other words, even
though the extrinsic definitions modify the term “list” by requiring the list to
be “itemized,” “detailed,” and/or “complete,” it is undisputed that the
inventory can account for less than all files on a remote storage medium or
drive.
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c. Construction
Considering the intrinsic and extrinsic evidence of record, we
determine that “inventory” would have been understood by one of ordinary
skill in the art in accordance with its plain and ordinary meaning, which, in
this context, is an “itemized list of electronic data.”20
III. ANALYSIS
Legal Standards – Obviousness
The U.S. Supreme Court set forth the framework for applying the
statutory language of 35 U.S.C. § 103 in Graham v. John Deere Co. of
Kansas City, 383 U.S. 1, 17–18 (1966):
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the
obviousness or nonobviousness of the subject matter is
determined. Such secondary considerations as commercial
success, long felt but unsolved needs, failure of others, etc.,
might be utilized to give light to the circumstances surrounding
the origin of the subject matter sought to be patented.
The Supreme Court explained in KSR International Co. v. Teleflex Inc. that
[o]ften, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue. To facilitate review, this
analysis should be made explicit.

20 Construing “inventory” as a “detailed list of electronic data” or a
“complete list of electronic data” would not change the analysis that follows.
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550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”)).
“Whether an ordinarily skilled artisan would have been motivated to
modify the teachings of a reference is a question of fact.” WBIP, LLC v.
Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (citations omitted).
“[W]here a party argues a skilled artisan would have been motivated to
combine references, it must show the artisan ‘would have had a reasonable
expectation of success from doing so.’” Arctic Cat Inc. v. Bombardier
Recreational Prods. Inc., 876 F.3d 1350, 1360–61 (Fed. Cir. 2017) (quoting
In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent
Litig., 676 F.3d 1063, 1068–69 (Fed. Cir. 2012)).
Obviousness over Field
Petitioner asserts that Field would have rendered the subject matter of
claims 1–7 obvious to one of ordinary skill in the art at the time of the
invention. Pet. 12–42.
Level of Ordinary Skill in the Art
For the reasons discussed above, we find that one of ordinary skill in
the art at the time of the invention would have a Bachelor of Science degree
in Computer Science, Computer Engineering, Electrical Engineering,
Software Engineering, or an equivalent field, as well as at least three to
five years of academic or industry experience in the fields of data storage,
data backup, data restoration, data replication and deduplication, and/or data
synchronization. See supra § I.G.
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Scope and Content of the Prior Art
a. Field
Field is directed to “a system, methods, and a computer-readable
medium for efficiently performing a backup of data in a networking
environment.” Ex. 1004 ¶ 7.
Figure 1 of Field is reproduced below:

Figure 1 shows networking environment 100 that includes back end
computing device 102 and target computing device 104. Ex. 1004 ¶¶ 13, 20.
Back end computing device 102 aggregates data received from multiple
sources (e.g., client computing devices) at a single location (e.g., backup
database 106), to prevent the unnecessary transmission of data. Id. ¶ 22.
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Figure 2 of Field is reproduced below:

Figure 2 is a block diagram illustrating components of target computing
device 104, including remote backup module 202. Ex. 1004 ¶¶ 14, 25.
Figure 3 of Field is reproduced below:

Figure 3 shows a flow diagram for remote backup module 202 for
performing a backup of data module 202 and contains blocks 300–318.
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Ex. 1004 ¶¶ 15, 31. In block 300, remote backup module 202 waits to
receive a command to perform a backup. Id. ¶ 32. In block 302,
module 202 determines whether the command received requires a backup of
one or more files. Id. ¶ 33. If backup is required, then the module proceeds
to block 306, where it selects a file to be backed up. Id. ¶¶ 33, 35.
In block 308, remote backup module 202 generates a signature of the
selected file. Ex. 1004 ¶ 36. Hashing algorithm “SHA-1” can be used to
generate this signature. Id. Alternatively, “other type[s] of algorithms or
functions that are capable of generating a signature from file data may be
used to generate the signature.” Id. In block 310, remote backup
module 202 determines if the file is already available to a trusted source by
“caus[ing] the signature of the selected file to be transmitted to the trusted
source and compared to signatures of files previously submitted to the
trusted source.” Id. ¶ 37. If a matching signature for the selected file is
identified, remote backup module 202 proceeds to block 314. Id. If a
matching signature for the selected file is not identified, remote backup
module 202 proceeds to block 312. Id.
At block 312, remote backup module 202 transmits the selected file to
a remote computing device associated with the trusted source (e.g., back end
computing device 102). Ex. 1004 ¶ 38. Field explains:
If block 312 is reached, the selected file was not previously
transmitted to the trusted source and, therefore, is not available
to the trusted source. Stated differently, a signature of the
selected file could not be identified in the backup database 206
at block 310. Thus, to satisfy the backup command received at
block 300, the selected file is transmitted to the remote
computing device associated with the trusted source, at
block 312. . . . Significantly, a file that was previously made
available to the trusted source is not transmitted by the remote
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backup module 202. Instead, only a signature of the file, which
is a fraction of the size of a complete file, is transmitted to the
trusted source. As a result, the remote backup module 202 is
able to backup data using less network bandwidth and other
resources than is found in the prior art.
Id. At block 314, remote backup module 202 determines if any files that
were the object of the backup command received at block 300 have not
previously been selected and, if so, remote backup module 202 returns back
to block 306 and blocks 306 through 314 repeat until all of the files that
were the object of the backup command have been selected. Id. ¶ 39.
At block 316, “remote backup module 202 performs an update to the
database associated with the trusted source.” Ex. 1004 ¶ 40. Field explains
that “more than one user of the backup service may need the file restored
back onto a computing device. Thus, the backup database 104 maintains an
entry for each user of the backup service.” Id. An “entry in the backup
database 104 associated with a specific user contains ‘pointers’ to operating
system, application program files, and/or user level data that is shared with
other users of the backup service.” Id. Additionally, an entry will store file
metadata “identify[ing] the location (e.g., a file path), name, and permissions
of files that may be restored by the backup service.” Id. At block 316, the
database is updated with this data required to restore files and/or a volume
state, after which remote backup module 202 proceeds to block 318 and
terminates. Id.
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Differences Between the Prior Art and the Claims;
Motivation to Modify
a. Independent Claim 1
i. 1-Pre
1-pre, which includes the preamble of claim 1, recites “[a] method of
synchronizing electronic data stored on a first client device with at least a
second client device, the method comprising.” Ex. 1001, 19:8–10. For the
reasons explained supra, we determined that the preamble of claim 1 is not
limiting. See § II.A. Petitioner contends “[t]o the extent that the preamble
language is deemed limiting, Field discloses the preamble.” Pet. 18 (citing
Ex. 1002 ¶¶ 71–77); see id. at 18–21 (explaining, in detail, how Field
teaches 1-pre).
As we have determined that the preamble of claim 1 is not limiting,
we need not address Petitioner’s arguments showing how the preamble is
taught by Field. For completeness, however, we find that, for the reasons
explained by Petitioner, Field teaches 1-pre.
ii. Limitation 1A.1
Limitation 1A.1 recites “receiving, at a backup server, a first
inventory of electronic data stored on a first remote storage medium
associated with a first client device, wherein the electronic data comprises
actual file data to be backed-up from the first remote storage medium.”
Ex. 1001, 19:11–15. Petitioner contends “Field discloses a ‘backup server’
in the form of a ‘back end computing device’ that ‘may be used as a backup
store for client-based computing devices.’” Pet. 21 (citing Ex. 1004 ¶ 43).
Petitioner asserts “Field also discloses ‘client devices’ in the form of ‘client
computing devices 402, 404, 406, 408,’ which are also referred to by Field
as ‘target computing devices.’” Id. (citing Ex. 1004 ¶¶ 20, 42–43).
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Petitioner relies on Field’s Figure 4, reproduced below with
Petitioner’s annotations:

Field’s Figure 4 is reproduced above, including Petitioner’s annotations in
red (identifying client devices as client computing devices 402, 404, 406,
and 408) and green (identifying backup servers as back end computing
devices 410 and 412). Pet. 22. Petitioner contends Field “explains that its
‘client computing devices’ may be ‘any one of a variety of devices
including . . . personal computing devices, server-based computing devices,
. . . cellular telephones, [or] other electronic devices having some type of
memory.’” Id. (quoting Ex. 1004 ¶ 25). Petitioner asserts the memory “is
the claimed ‘first remote storage medium’; it is ‘remote’ because it is on a
separate device from the ‘back end computing device.’” Id. (citing Ex. 1002
¶¶ 79–82).
Petitioner asserts Field creates an inventory as part of its backup
process by generating a signature of a selected file designated for backup.
Pet. 22–23 (citing Ex. 1004 ¶¶ 33, 34–36, Fig. 3 (blocks 306 and 308)).
Petitioner contends Field then transmits the signature to the trusted source
(i.e., back end computing device 102) at block 310 of Figure 3. Id. at 23–24
(citing Ex. 1004 ¶ 37). Petitioner argues that “because claim 1 only requires
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that the ‘first inventory comprise[] at least one descriptor,’” transmission of
this signature discloses the claimed “first inventory.” Id. at 24.
Additionally, Petitioner presents two positions as to how Field teaches
or suggests receiving the first inventory. First, Petitioner contends that, if
limitation 1A.1 requires that the first inventory be received all at once, Field
teaches this limitation because the “electronic data” recited in
limitation 1A.1 does not require more than data pertaining to one file.
Pet. 24. Thus, by receiving, at a back end computing device, one signature
of a file stored on a first remote storage medium associated with a first client
device, Petitioner asserts Field satisfies limitation 1A.1.21 Id.
Second, Petitioner asserts that, if limitation 1A.1 requires receipt of a
first inventory consisting of more than one signature, one of ordinary skill in
the art “would have found it obvious to transmit the generated signatures for
the selected files at the same time (i.e., ‘a first inventory of electronic data
stored on a first storage medium’) to the back end computing device to
reduce network bandwidth (e.g., overhead).” Pet. 25 (citing Ex. 1002 ¶¶ 83–
86). Petitioner contends “[t]his is consistent with Field’s goal of ‘reduc[ing]
. . . network bandwidth’ because it would even further reduce the amount of
data being sent during Field’s backup process.” Id. (citing Ex. 1002 ¶ 85;
Ex. 1004 ¶ 23). Petitioner explains:
In particular, by sending all of the signatures in one network
message instead of multiple network messages, one can reduce
the amount of packet header overhead that is used. EX1002,
¶85. For example, if each of the signatures were sent
separately, they would each require their own individual packet
headers. Id., ¶85. But if they are all sent in a single message,

21 Petitioner also explains that Field performs a backup of one or more files.
Pet. 24 (citing Ex. 1004 ¶¶ 29, 33).
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they only require a single packet header instead of multiple
packet headers, thereby reducing the total bandwidth used.
Indeed, such methods for reducing network bandwidth were
well known by the earliest priority date of the ’146 patent. Id.,
¶85; EX1008, Anderson, ¶97.
Pet. 25–26.
We find Petitioner’s arguments and evidence persuasive for the
reasons explained by Petitioner.
In its Response, Patent Owner asserts two arguments directed to the
recited “inventory” and limitation 1A.1. We address each.
First, Patent Owner contends that Field does not teach the recited
“inventory.” PO Resp. 34–40. Relying on its proposed construction of
“inventory,” Patent Owner asserts that Field does not teach an “inventory”
because “[i]n Field, only a file signature, not an inventory, is transmitted to
the backup server.” Id. at 37 (citing Ex. 2015 ¶ 97). Patent Owner argues
that “[t]he specification and Fig. 3 of Field confirm that the backup process
does not need to send any other data of the type included in the ’146 Patent’s
claimed inventories since for individual file backups there is no need to send
the current state of the drive or even the filename or directory.” Id. at 38
(citing Ex. 2015 ¶ 98). Thus, Patent Owner contends that, “in Field, a user
would not have the information needed in the backup server, including the
file name and information on the directory structure, to restore an entire
storage medium of a client device.” Id. (citing Ex. 2015 ¶ 99).
As reflected above, Patent Owner’s argument is based on its proposed
construction of “inventory,” which we have not adopted. Additionally,
Petitioner’s argument as to Field’s teachings and alternative argument based
on the modifications that one of ordinary skill in the art would have been
prompted to make are sufficiently supported by the evidence of record. See
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Pet. 21–26. Accordingly, Patent Owner’s argument does not identify a
deficiency with respect to Petitioner’s analysis of limitation 1A.1.
Second, in various instances, Patent Owner asserts that Field “teaches
away from using an inventory of electronic data described and claimed in
the ’146 Patent.” PO Resp. 34 (citing Ex. 2015 ¶ 90). Patent Owner
contends,
As Field clearly discusses only sending one such file signature
at a time, and is concerned with optimizing bandwidth usage, it
teaches away from creating and sending an inventory which
would include multiple file signatures much less any other data
as data representing the current state of the drive, filenames, or
directories.
Id. (citing Ex. 2015 ¶ 91); see id. at 40 (Field “teaches away from the
inventory of electronic data that is part of the backup and restore process of
the ’146 Patent”).
Patent Owner’s argument as to how or why Field teaches away is bit
unclear. Nonetheless, we find that Field teaches receiving a first “inventory”
for the reasons explained by Petitioner and based on our construction of
“inventory” at least because Field receives an itemized list of electronic data
in the form of one or more signatures. Thus, since Field teaches an
“inventory,” we do not agree with Patent Owner that Field teaches away
from an “inventory.” Additionally, “[a] reference may be said to teach away
when a person of ordinary skill, upon reading the reference . . . would be led
in a direction divergent from the path that was taken by the applicant.” In re
Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v.
Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)); see In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding that, to teach away,
the prior art must “criticize, discredit, or otherwise discourage the solution
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claimed”). Patent Owner, however, fails to identify, and we do not discern,
any indication in Field that criticizes, discredits, or otherwise discourages
one of ordinary skill in the art from following Field’s teachings or modifying
Field as proposed by Petitioner. Further, to this latter point, we do not
discern any specific argument by Patent Owner that one of ordinary skill in
the art would not have been motivated to modify Field as Petitioner
proposes, aside from Patent Owner’s assertions of teaching away.22
Considering the complete record before us, for the reasons explained
above we find that Petitioner has established that Field teaches or suggests
limitation 1A.1 and that one of ordinary skill in the art would have had a
reason with rational underpinning to modify Field as proposed by Petitioner
with a reasonable expectation of success.
iii. Limitation 1A.2
Limitation 1A.2 recites “wherein the first inventory comprises at least
one descriptor and wherein the at least one descriptor comprises a
cryptographic signature computed based on the actual file data, the
cryptographic signature uniquely identifying the electronic data to be
backed-up.” Ex. 1001, 19:15–20. Petitioner, relying upon its argument
directed to limitation 1A.1, asserts that Field teaches a first inventory of one
or more signatures corresponding to the one or more selected files for
backup and that the signatures uniquely identify the data to be backed up and
are based on the data being backed up. Pet. 26–27 (citing Ex. 1004 ¶¶ 36–

22 To the extent any of Patent Owner’s arguments are interpreted as
challenging Petitioner’s reason for the modification proposed, Patent
Owner’s arguments do not identify a deficiency in Petitioner’s analysis that
would lead us to a different result.
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37). Petitioner contends that one of ordinary skill in the art “would have
understood Field’s ‘signatures’ are ‘cryptographic signatures’ because Field
teaches the use of SHA-1—a well-known cryptographic algorithm that
uniquely identifies files—as a means of generating a file signature.” Id. at
27 (citing Ex. 1002 ¶¶ 87–89; Ex. 1008 ¶ 42).
Patent Owner does not appear to challenge Petitioner’s analysis with
respect to limitation 1A.2, except in that it recites “inventory.” See
generally PO Resp. We addressed Patent Owner’s arguments with respect
to inventory in the context of our consideration of limitation 1A.1 and that
same analysis and findings apply here as well. Additionally, we find
Petitioner’s arguments and evidence persuasive to show that Field teaches
limitation 1A.2 for the reasons explained by Petitioner.
Accordingly, for the reasons explained by Petitioner, we find that
Petitioner has established that Field teaches limitation 1A.2.
iv. Limitation 1B
Limitation 1B recites:
comparing, at the backup server, the at least one descriptor of
the first inventory to a list of descriptors associated with a
second inventory of electronic data stored on a backup data
storage medium, wherein the second inventory of electronic
data comprises shared electronic data from a second remote
storage medium associated with the at least a second client
device as well a plurality of other storage mediums different
from the first and second remote storage mediums, and wherein
the at least one descriptor of the first inventory is compared
with descriptors in the second inventory that correspond, at
least partially, to data stored on the backup data storage
medium by storage mediums different from the first remote
storage medium.
Ex. 1001, 19:21–34. Petitioner contends:
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Field’s “back end computing device 102” performs a
comparison of a received signature (i.e., descriptor) to other
signatures that have already been stored (“wherein the at least
one descriptor of the first inventory is compared with
descriptors in the second inventory that correspond, at least
partially, to data stored on the backup data storage medium by
storage mediums different from the first remote storage
medium”).
Pet. 27–28 (citing Ex. 1004 ¶ 37). Petitioner points to Field’s description
that a signature generated by the client device is transmitted to the back end
computing device where it is compared to signatures of files already
available to the trusted source. Id. at 28 (citing Ex. 1004 ¶¶ 8, 37).
As discussed previously, Petitioner equates the “signature of the
selected file” in Field with the “first inventory” recited in claim 1. Pet. 28.
Additionally, Petitioner equates “signatures of files previously submitted to
the trusted source” in Field with the “list of descriptors associated with a
second inventory” recited in claim 1 “because it teaches files previously
backed-up at Field’s backup server.” Id. (citing Ex. 1002 ¶¶ 90–92). “Thus,
by describing that the ‘signature of the selected file’ is transmitted and
‘compared’ to signatures of files previously submitted to the trusted source,”
Petitioner contends “Field discloses the claimed ‘comparing.’” Id.
Further, Petitioner asserts that “[t]he ‘signatures of files previously
submitted to the trusted source’ (i.e., the back end computing device) also
correspond to ‘a plurality of other storage mediums different from the first
and second remote storage medium’” because Field explains: (1) “‘one copy
of a file’ may be stored in its backup database and that ‘more than one user
of the backup service may need the file restored back onto a computing
device’” and (2) “that ‘operating system, application program files, and/or
user level data [] is shared with other users of the backup service.’” Pet. 28–
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29 (citing Ex. 1002 ¶ 93; Ex. 1004 ¶ 40) (emphasis omitted) (alteration
added by Petitioner). Petitioner points to Field’s Figure 4, asserting it shows
“the multiple client devices and remote storage mediums that would have
previously submitted signatures to the back end computing device.” Id. at
29. Petitioner asserts that the following teaching from Field “describes the
claimed ‘comparing’ of a received signature from a particular client device
with signatures previously received from multiple other client computing
devices”:
[B]ack end computing device 410 may implement a backup
policy for all of the client computing devices 402, 404, and 406
connected to the internal network 418. In this instance, the
back end computing device 410 may cause data on the client
computing devices 402–406 to be stored on the back end
computing device 410.
Id. at 30 (quoting Ex. 1004 ¶ 43) (citing Ex. 1002 ¶ 94).
In its Response, Patent Owner challenges Petitioner’s analysis with
respect to limitation 1B. See PO Resp. 43–44 (asserting that Field does not
teach the “compare” step because “Field does not explicitly disclose that the
signatures already stored on the trusted source are derived from multiple
devices” (citing Ex. 2015 ¶ 111)). During Dr. Weissman’s deposition,
however, he specifically withdrew his prior testimony regarding this
limitation, stating “[a]nd the second opinion I’m not offering today is
whether [a] signature transmitted as part of the backup from a client device
or user is compared against the signature supplied by another client device
or user.” Ex. 1020 (transcript of Dr. Weissman’s deposition), 20:9–13; see
id. at 22:5–12 (agreeing that he is not offering an opinion that Field alone or
in combination with any other reference teaches comparing signatures from
one client device with signatures that were originally provided from another
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client device); see also Tr. 59:20–60:4 (Petitioner’s counsel noting that
Dr. Weissman withdrew his opinion, offered in his declaration, on this
limitation). In its Reply, Petitioner responds to Patent Owner’s argument
(from the Patent Owner Response), reiterates how Field teaches
limitation 1B, and notes that Dr. Weissman has withdrawn his testimony that
supported Patent Owner’s argument. Pet. Reply 18–19.23
We find that Petitioner sufficiently establishes that Field teaches
limitation 1B. In particular, as described above, Petitioner sets forth the
teachings of Field showing how limitation 1B is met. Additionally, Patent
Owner’s argument, even assuming Patent Owner intends to maintain it, is
unsupported in light of Field’s express disclosure as identified by Petitioner
in the Petition and Reply.
v. Limitation 1C
Limitation 1C recites “determining that a first descriptor from the at
least one descriptor of the first inventory does not match a second descriptor
from the list of descriptors associated with the second inventory.” Ex. 1001,
19:35–38. Petitioner asserts Field teaches limitation 1C by comparing
signatures at block 310 of Figure 3 and provides an example where a
matching signature is not identified. Pet. 30 (citing Ex. 1004 ¶ 37; Ex. 1002
¶¶ 96–98); see id. at 31 (citing Ex. 1004 ¶¶ 8, 18, 38).
Patent Owner does not appear to challenge Petitioner’s analysis with
respect to limitation 1C, except in that it recites “inventory.” See generally
PO Resp. We addressed Patent Owner’s arguments with respect to
inventory in the context of our consideration of limitation 1A.1 and that

23 Although not required, Patent Owner does not raise an argument regarding
limitation 1B in its Sur-reply. See generally PO Sur-reply.
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same analysis and findings apply here as well. Additionally, we find
Petitioner’s arguments and evidence persuasive to show that Field teaches
limitation 1C for the reasons explained by Petitioner.
Accordingly, for the reasons explained by Petitioner, we find that
Petitioner has established that Field teaches limitation 1C.
vi. Limitation 1D
Limitation 1D recites “storing, on the backup data storage medium,
the electronic data that is uniquely identified by the cryptographic
signature.” Ex. 1001, 20:1–3. Petitioner asserts that Field describes a client
device transmitting a file to back end computing device 102 when a
matching signature is not found and then storing the file at the back end
computing device. Pet. 31 (citing Ex. 1004 ¶¶ 8, 18, 38; Ex. 1002 ¶¶ 99–
100). Petitioner contends Field also teaches that a signature, which
“uniquely identifies the file is generated and included in the backup
database 104.” Id. (quoting Ex. 1004 ¶ 37 (emphasis omitted)).
Patent Owner’s Response does not raise an argument specifically
directed to limitation 1D of claim 1. See generally PO Resp.
For the reasons explained by Petitioner, we find that Field teaches
limitation 1D.
vii. Limitation 1E
Limitation 1E recites “determining that the second remote storage
medium does not have the electronic data that is uniquely identified by the
cryptographic signature stored therein.” Ex. 1001, 20:4–6. Petitioner
contends that limitation 1E “has no restriction on whether the determining
occurs at the claimed ‘client device’ or at the ‘backup server.’ Thus, it can
occur at either device.” Pet. 32. Petitioner asserts that “Field teaches
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‘determining that the second remote storage medium does not have the
electronic data’ at its backup server during restoration operations.” Id.
(citing Ex. 1002 ¶¶ 101–103; Ex. 1004 ¶¶ 1, 2, 4, 9, 18, 24). Petitioner
contends Field describes backing up files from a plurality of devices but also
teaches storing a single copy of a file shared by two clients. Id. Petitioner
points to the following from Field: “[O]ne copy of a file that implements the
functionality of an operating system or application program is stored in the
backup database 104. However, more than one user of the backup service
may need the file restored back onto a computing device.” Id. (quoting
Ex. 1004 ¶ 40) (citing Ex. 1004 ¶¶ 16, 42) (emphasis omitted).
Petitioner asserts Field describes identifying files that need to be
restored and determining when a client device does not have data that needs
to be restored. Pet. 32 (citing Ex. 1004 ¶ 10). Petitioner points to Field’s
example of a lost or damaged file and that backup database 106 “tracks
which files are associated with the target computing device 104 and restores
copies of those files when needed.” Id. at 32–33 (quoting Ex. 1004 ¶ 24)
(citing Ex. 1004 ¶¶ 1, 2, 4). Petitioner contends one of ordinary skill in the
art “would have understood that ‘lost data’ would indicate the absence of
data on the second client device . . . [and, therefore,] Field’s description of
recovering and restoring this lost data would thus teach the claimed
‘determining that the second remote storage medium does not have the
electronic data.’” Id. at 33 (citing Ex. 1002 ¶¶ 101–103) (emphasis omitted).
Patent Owner’s Response does not raise an argument specifically
directed to limitation 1E of claim 1. See generally PO Resp.
For the reasons explained by Petitioner, we find that Field teaches
limitation 1E.
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viii. Limitation 1F
Limitation 1F recites “determining that the second remote storage
medium is permitted to have the electronic data that is uniquely identified by
the cryptographic signature.” Ex. 1001, 20:7–9. Petitioner contends
limitation 1F “does not include a restriction on where the determining must
occur” and therefore “can occur at either the backup server or client.”
Pet. 33. Petitioner relies on its discussion of limitation 1E regarding
determining when files are lost or damaged and further asserts Field
“discloses ‘determining that the second remote storage medium is permitted
to have . . . the data’ in the form of a ‘table’ of ‘pointers’ that tracks which
client devices can have access to which data.” Id. (citing Ex. 1002 ¶¶ 104–
107). Petitioner asserts:
Field explains that “the backup database 104 maintains an entry
for each user of the backup service” with pointers associating
access to stored files. See EX1004, ¶40. The pointers “track[]
files stored by [the back end computing device] on behalf of a
user of the backup service.” Id., ¶10. This allows the backup
database “to identify files that need to be restored to the target
computing device when a restore command is issued.” Id.; see
also id., ¶8.
Pet. 33–34 (alterations by Petitioner).
Additionally, Petitioner relies on Dr. Shenoy’s testimony that
identifying files in need of restoration is important in the case of shared files
because “the only way Field would be able to determine that a particular
client is entitled to have a file restored is by consulting the ‘pointers’ in
Field’s backup database.” Pet. 34 (citing Ex. 1002 ¶ 106). “In other words,
using the table of pointers, the backup database is able to determine whether
the target computing device (i.e.[,] client) should receive a file based on
whether there is a pointer for that client or not.” Id. (citing Ex. 1002 ¶ 106).
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Thus, Petitioner contends, that by maintaining a table that tracks the files
associated with each client (and each client’s associated storage medium)
and then later consulting the table to determine whether to restore a file to a
particular client, Field teaches limitation 1F. Id.
Patent Owner’s Response does not raise an argument specifically
directed to limitation 1F of claim 1. See generally PO Resp.
For the reasons explained by Petitioner, we find that Field teaches
limitation 1F.
ix. Limitation 1G
Limitation 1G recites “providing the electronic data that is uniquely
identified by the cryptographic signature from the backup server to the at
least a second client device so that the electronic data that is uniquely
identified by the cryptographic signature can be stored on the second remote
storage medium.” Ex. 1001, 20:10–15. Petitioner contends that Field’s
restore operation teaches limitation 1G. Pet. 34 (citing Ex. 1004 ¶¶ 9, 18;
Ex. 1002 ¶¶ 108–111). Specifically, Petitioner asserts that Field describes
storing one copy of a file for multiple client devices and restoring the file for
multiple client devices, during which backup database 106 tracks the files
associated with a target computing device and restores copies of the files
when needed. Id. at 35 (citing Ex. 1004 ¶¶ 1, 2, 4, 24, 40). Petitioner
contends that, as part of this process, Field generates a cryptographic
signature that uniquely identifies the file that is backed up and stores the
signature in backup database 104. Id. (citing Ex. 1004 ¶ 37). Petitioner
asserts “when that same file is later restored by Field’s ‘restore operation,’
that file corresponds to the unique ‘cryptographic signature’ that was
generated when the file[] was backed-up.” Id.
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Additionally, Petitioner contends “a user may issue a command to
restore copies of files or a volume of data to a previous state,” which results
in the data being transmitted back to the target computing device and
restored. Pet. 35 (citing Ex. 1004 ¶¶ 9, 18, 24). Because Field only
maintains one copy of a file, Petitioner contends the restoration process
allows for the restoration of files to multiple different clients. Id. at 35–36
(citing Ex. 1002 ¶ 111; Ex. 1004 ¶ 40). Petitioner asserts:
when a particular client is backing up its files, Field’s backup
system will not actually back-up a file that has already stored in
its backup database. EX1002, ¶111; EX1004, ¶40. When a
restoration occurs for that particular client, for any files that
were deemed duplicative, Field will simply restore the version
of that file that was backed-up from a different client because it
is the same file. EX1002, ¶111; EX1004, ¶40. Thus, Field also
discloses that the restored data is provided to a “second” remote
storage medium (different from the “first”) in instances where
the original file backed-up did not originate from the client it is
ultimately restored to. EX1002, ¶111; EX1004, ¶40.
Pet. 36.
Patent Owner’s Response does not raise an argument specifically
directed to limitation 1G of claim 1. See generally PO Resp.
For the reasons explained by Petitioner, we find that Field teaches
limitation 1G.
b. Dependent Claims 2–5 and 7
Petitioner contends that Field would have rendered the subject matter
of dependent claims 2–5 and 7 of the ’146 patent obvious to one of ordinary
skill in the art at the time of the invention. Pet. 36–40, 41–42. Petitioner
provides a detailed discussion of claims 2–5 and 7 and identifies how Field
satisfies the limitations of those claims. Id.
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Patent Owner does not raise a separate argument addressing any of
claims 2–5 and 7. See generally PO Resp.
On the complete record before us, for the reasons explained in the
context of claim 1 and Petitioner’s discussion of the additional limitations
recited expressly by dependent claims 2–5 and 7, we find that Petitioner has
established that Field teaches the subject matter of claims 2–5 and 7.
c. Dependent Claim 6
Claim 6 depends from claim 1 and recites “[t]he method of claim 1,
wherein the first client device and the at least a second client device are
associated with a common user.” Ex. 1001, 20:30–32. Petitioner contends
that Field would have rendered the subject matter of dependent claim 6 of
the ’146 patent obvious to one of ordinary skill in the art at the time of the
invention. Pet. 40–41. In particular, Petitioner asserts that “Field describes
different types of client devices that would have implemented the backup
process,” id. at 40 (citing Ex. 1004 ¶¶ 21, 25), and one of ordinary skill in
the art “would have understood that a common user would have used these
different client devices and would have synchronized data among the
different devices,” id. at 30 (citing Ex. 1002 ¶¶ 119–122).
Petitioner asserts the following regarding Field’s teachings and
suggestions pertaining to the subject matter of claim 6:
Field explains that its client computers or “target
computing devices” may be “any one of a variety of devices
including . . . personal computing devices, server-based
computing devices, personal digital assistants, cellular
telephones, other electronic devices having some type of
memory.” EX1004, ¶25. A [person of ordinary skill in the art]
would have recognized that because Field’s invention tracks
data according to a “specific user” and is applied to many
different devices, a single user could and often would have
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multiple devices that are backed-up. EX1004, ¶40; EX1002,
¶120. Moreover, that Field describes devices like [personal
data assistants] and cellular telephones being backed up further
suggests that a user would have more than one device
backed-up. Certainly, an “enterprise user” such as disclosed in
Field would not have only a PDA or cellular telephone with
valuable data that needed to be backed-up. EX1002, ¶¶120-22.
Rather, that user would also have additional devices, such as
desktop computers, laptops, etc., that also have valuable
information needed to be backed-up. Id. Based on the
disclosures of Field, a POSA certainly would have understood
that it would be advantageous for a single user to be able to
access the same files across multiple devices. Id.
Pet. 40–41.
In its Response, Patent Owner asserts that “Field does not explicitly
disclose or suggest that a user performs synchronization of electronic data
with the use of multiple devices.” PO Resp. 44 (citing Ex. 2015 ¶ 114).
Patent Owner contends that “Field, owned by Microsoft, is primarily
concerned with files for an operating system and application program and
thus teaches away from allowing the same user to synchronize such files
across multiple devices.” Id. at 44–45 (citing Ex. 1004 ¶¶ 24, 26–27, 40;
Ex. 2015 ¶ 114). Thus, Patent Owner contends, Field does not teach or
suggest the subject matter of claim 6. Id. at 45.
In its Reply, Petitioner asserts that Field “manages ‘user level data’
and ‘metadata’ that is specific to each user.” Pet. Reply 20 (citing Ex. 1004
¶ 40). Petitioner contends that by storing user data specific to a particular
user (e.g., a user’s files), Field teaches synchronizing (e.g., restoring) data to
another device belonging to the same user. Id. (citing Ex. 1019 ¶ 57).
Additionally, Petitioner notes that, during his deposition, Dr. Weissman
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expressly withdrew his original testimony, from his declaration, in support
of Patent Owner’s argument. Id. at 20–21 (quoting Ex. 1020, 20:3–13).
In its Sur-reply, Patent Owner reiterates its position that Field’s
disclosure does not support “Petitioner’s argument that user data backed up
on one device may then be restored on a different device operated by the
same user.” PO Sur-reply 18. Additionally, Patent Owner contends that
Petitioner “mischaracterizes” Dr. Weissman’s retraction, asserting that
Dr. Weissman was “only referring to a backup / restore operation, and not
synchronization.” Id.
We find Petitioner’s argument persuasive that Field suggests the
subject matter of claim 6 to one of ordinary skill in the art. In particular, as
recited above, claim 6 simply adds that the first and second client devices of
claim 1 are associated with a common user. Field discloses multiple
computing devices, including “laptop computers, tablet computers, [and]
personal digital assistants (PDAs),” and expressly states that its teachings
“can be practiced on other kinds of computing devices” of which those
identified are mere examples. Ex. 1004 ¶ 21; see also id. ¶ 25 (further
identifying cellular telephones and “other electronic devices having some
type of memory, and the like”). Although Field does not expressly state that
two devices may be associated with a common user, Petitioner presents
persuasive, unrebutted,24 evidence that Field’s listing of particular devices,

24 We find that Dr. Weissman withdrew his opinion in support of Patent
Owner’s position. In particular, during his deposition, Dr. Weissman
expressly stated, “[s]o now I am offering no opinions as of today on whether
in Field, or in Field in combination with the other references, discloses the
following: A client device or user can restore data backed up by a different
client device or user.” Ex. 1020, 20:3–8. We reject Patent Owner’s attempt
to minimize Dr. Weissman’s change of opinion, as it applies to claim 6,
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including PDAs and cellular telephones, would suggest to one of ordinary
skill in the art that two devices (e.g., a cellular telephone and a laptop
computer or a desktop workstation and a laptop computer) may be
associated with a common user. See Ex. 1002 ¶¶ 120–121; see also
Ex. 1019 ¶ 57 (“By storing user data specific to the user (e.g., a user’s files),
Field suggests that the specific user is able to synchronize or restore data to
another device belonging to the same user.” (emphasis added)).
On the complete record before us, for the reasons explained above, we
find that Petitioner has established that Field suggests the subject matter of
claim 6 to one of ordinary skill in the art.
Objective Considerations of Nonobviousness
Neither party presents evidence of objective considerations of
nonobviousness.
Weighing the Graham Factors
“Once all relevant facts are found, the ultimate legal determination [of
obviousness] involves the weighing of the fact findings to conclude whether
the claimed combination would have been obvious to an ordinary artisan.”
Arctic Cat, 876 F.3d at 1361. On balance, considering the complete record

based on an alleged distinction between synchronizing and backing-
up/restoring. See PO Sur-reply 18. Patent Owner expressly admitted and
we have determined that the preamble of claim 1, which includes the only
recitation of “synchronizing” (or any form thereof), is not limiting. See
supra §§ II.A., III.B.3.a.i. We agree with Petitioner that the steps of claim 1
(and claim 6) are directed to backing-up and restoring data. See, e.g.,
Pet. 10–12 (discussing the meaning of the preamble of claim 1). As properly
understood, Dr. Weissman’s withdrawal applies to claim 6 as well.
Nonetheless, even if Dr. Weissman had not withdrawn his testimony, we
still find Petitioner’s argument and evidence persuasive for the reasons
discussed above.
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before us, Petitioner has established, by a preponderance of the evidence,
that Field would have rendered the subject matter of claims 1–7 of the
’146 patent obvious to one of ordinary skill in the art at the time of the
invention.
Obviousness over Strong and Field
Petitioner also contends that the combination of Strong and Field
would have rendered the subject matter of claims 1–7 of the ’146 patent
obvious to one of ordinary skill in the art. Pet. 42–72. Because Petitioner’s
challenge based on Field is dispositive as to all of the Challenged Claims,
we need not reach this additional asserted ground. See SAS Inst. v. Iancu,
138 S. Ct. 1348, 1359 (2018) (holding that a petitioner “is entitled to a final
written decision addressing all of the claims it has challenged”); Boston Sci.
Scimed, Inc. v. Cook Grp. Inc., 809 F. App’x 984, 990 (Fed. Cir. 2020)
(nonprecedential) (stating that the “Board need not address issues that are
not necessary to the resolution of the proceeding,” such as “alternative
arguments with respect to claims [the Board] found unpatentable on other
grounds”); SK Hynix Inc. v. Netlist, Inc., IPR2017-00692, Paper 25 at 40
(PTAB July 5, 2018) (determining all challenged claims to be unpatentable
and not addressing additional grounds).
IV. SUMMARY25
For the foregoing reasons, Petitioner has demonstrated, by a
preponderance of the evidence, that claims 1–7 of the ’146 patent are
unpatentable.

25 Should Patent Owner wish to pursue amendment of the Challenged
Claims in a reissue or reexamination proceeding subsequent to the issuance
of this decision, we draw Patent Owner’s attention to the April 2019 Notice
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Our conclusions regarding the Challenged Claims are summarized
below:
Claims
Challenged
35
U.S.C. §
Reference(s)
/Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1–7 103(a) Field 1–7
1–7 103(a) Field, Strong
Overall
Outcome 1–7
V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–7 of U.S. Patent No. 9,679,146 B2 are
determined to be unpatentable; and
FURTHER ORDERED that, because this a Final Written Decision,
parties to this proceeding seeking judicial review of this Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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For PETITIONER:

Daniel S. Block
Byron L. Pickard
Michael Q. Lee
Timothy L. Tang
Steven M. Pappas
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
dblock-PTAB@sternekessler.com
bpickard-PTAB@sternekessler.com
mlee-PTAB@sternekessler.com
ttang-PTAB@sternekessler.com
spappas-ptab@sternekessler.com

For PATENT OWNER:

Seth H. Ostrow
Antonio Papageorgiou
Robert P. Feinland
MEISTER SEELIG & FEIN LLP
sho@msf-law.com
ap@msf-law.com
rf@msf-law.com