Oracle Corp v. CLoudIng IP LLC

1. Case Identification

• Patent #: 6,738,799
• Filed: May 2, 2013
• Petitioner(s): Oracle Corporation
• Patent Owner(s): Clouding IP, LLC
• Challenged Claims: 12, 30, and 42

2. Patent Overview

• Title: File Synchronization Method
• Brief Description: The ’799 patent relates to a system for synchronizing files between a first computer (server) and a second computer (client). The server determines if the client possesses the latest version of a "subscribed-to-file," and if not, generates a "delta" or update file. This delta file is created by comparing a signature list of the current file version with an old signature list, and it contains only the necessary changes to bring the client's file up-to-date.

3. Grounds for Unpatentability

Ground 1: Anticipation over Williams - Claims 12, 30, and 42 are anticipated by Williams under 35 U.S.C. §102(e).

• Prior Art Relied Upon: Williams (Patent 5,990,810).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Williams, which was not considered during prosecution, discloses every limitation of the challenged claims. Williams teaches a "fine-grained incremental backup system" where a first computer (E1) generates an incremental backup file (an update file) and transmits it to a second computer (E2). This update file contains the necessary information for E2 to reconstruct a current version of a file (X) using its older version (Y). Petitioner contended that while Williams does not use the explicit words "command to copy" or "command to insert," its disclosure of transmitting "references to subblocks" for unchanged data and "raw subblocks" for new data inherently teaches these claimed functions.
  • Key Aspects: Petitioner noted that in a related inter partes review (IPR) against other claims of the ’799 patent, the Board had already accepted this interpretation, finding that the instructions in Williams's incremental backup file function as the claimed commands.

Ground 2: Obviousness over Balcha and Miller - Claims 12 and 30 are obvious over Balcha in view of Miller under 35 U.S.C. §103.

• Prior Art Relied Upon: Balcha (Patent 6,233,589) and Miller (Patent 5,832,520).
• Core Argument for this Ground:
  • Prior Art Mapping: Balcha discloses a delta file synchronization method that uses a "retain-by-default" policy, where primitives like "delete" are used and unchanged data is implicitly carried over. Miller discloses a similar method for creating efficient difference files but explicitly teaches a "discard-by-default" policy. In Miller's system, a "copy" command is placed in the difference file to instruct the second computer to copy a specific segment of data from the old file into the new file. Petitioner argued that Balcha teaches most claim elements, and Miller supplies the explicit teaching of using a "copy" command for unchanged data segments.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the teachings of Balcha and Miller, as both address the same problem of efficient file synchronization using delta files. A POSITA would be motivated to incorporate Miller's explicit "copy" command into Balcha's framework as a known, alternative design choice for handling unchanged data, particularly to minimize the amount of data transmitted, which was Miller's stated objective.
  • Expectation of Success: The combination involved applying a known data handling methodology from Miller to a standard file synchronization system from Balcha. This integration of two well-understood differencing techniques would have yielded predictable results.

Ground 3: Obviousness over Balcha and Freivald - Claims 12, 30, and 42 are obvious over Balcha in view of Freivald under 35 U.S.C. §103.

• Prior Art Relied Upon: Balcha (Patent 6,233,589) and Freivald (Patent 5,898,836).

• Core Argument for this Ground:

  • Prior Art Mapping: Balcha provides the fundamental system for generating a delta file based on differences between two file versions. Freivald addresses the specific problem of detecting changes, disclosing a "change-detection server" that, without interaction with a client computer, determines whether the client has the most recent version of a file (e.g., a web page). Freivald's server does this by periodically retrieving files, comparing their checksums to archived checksums, and notifying a client of any changes. The combination of Balcha's delta-file generation with Freivald's server-side change detection teaches the claimed method, including the "determining" and "without interaction" limitations of claim 42.
  • Motivation to Combine: A POSITA would be motivated to integrate Freivald's efficient, server-side change-detection mechanism into Balcha's system. This would provide a known and convenient way to automatically trigger Balcha's delta-file generation process, creating a more robust and fully automated synchronization system without requiring polling requests from the client.
  • Expectation of Success: Integrating a known change-detection module (Freivald) with a differencing engine (Balcha) was a common and predictable task in distributed systems design at the time.

• Additional Grounds: Petitioner also asserted that claim 42 is anticipated by Balcha alone under §102(e), arguing that Balcha's detection of a modification on a first server inherently determines that the second server's copy is no longer the latest version.

4. Key Claim Construction Positions

• Petitioner adopted the claim constructions used by the Board in the instituted related IPR (IPR2013-00073). Key constructions included:
• Command to Copy: Construed as "an instruction that causes the computer to duplicate information or data." This construction was central to the argument that Williams anticipates, as its "references to subblocks" function as such a command.
• Without Interaction: Interpreted as "limiting the interaction between first and second computers only as specifically recited in the claims." This construction supported arguments that server-side change detection, as taught by Freivald and inherent in Williams, meets the claim limitation.
• Update: Construed as "information for updating a file or an up-to-date version of a file."

5. Key Technical Contentions (Beyond Claim Construction)

• Interchangeability of Differencing Policies: A central technical argument was the duality between "retain-by-default" and "discard-by-default" file differencing methodologies. Petitioner, supported by its expert, argued that a POSITA would have understood these two approaches—one using explicit "delete" commands (like Balcha) and the other using explicit "copy" commands (like Miller)—as well-known, interchangeable design choices for creating delta files, making the substitution of one for the other obvious.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that the grounds were not cumulative of art considered by the USPTO examiner. Specifically concerning the Williams reference, Petitioner contended that it was presenting new arguments and evidence that were not before the examiner, "shedding a different light on Williams." Petitioner noted that the Board had already found this reasoning persuasive for instituting the first IPR on other claims of the ’799 patent, suggesting a similar outcome was appropriate for the present petition.

7. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 12, 30, and 42 of Patent 6,738,799 as unpatentable.