Commvault Systems Inc v. Realtime Data LLC

1. Case Identification

• Case #: IPR2017-02178
• Patent #: 9,054,728
• Filed: September 26, 2017
• Petitioner(s): Commvault Systems, Inc.
• Patent Owner(s): Realtime Data LLC
• Challenged Claims: 1-25

2. Patent Overview

• Title: Content-Dependent Data Compression System
• Brief Description: The ’728 patent describes systems and methods for data compression that analyze a data block to identify parameters or attributes. Based on this analysis, the system selects either a content-dependent compression encoder or a single, default compression encoder.

3. Grounds for Unpatentability

Ground 1: Obviousness over Medina’93 - Claims 1, 3-10, 15, 18, 20, 21, and 24 are obvious over Medina’93.

• Prior Art Relied Upon: Medina’93 (Patent 5,274,474).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Medina’93, a patent on fax-data compression, teaches all elements of the independent claims. Medina’93 discloses a telefacsimile system that analyzes a data block (a scanned page) using optical character recognition (OCR) to identify recognizable characters (a parameter/attribute). If characters are identified, a content-dependent encoder (ASCII encoding) is used; if not, a single/default encoder (standard facsimile compression) is used. The analysis is not based solely on a descriptor, as OCR directly examines the page image itself. Dependent claims reciting features like real-time operation, data tokens, and storage were argued to be inherent or obvious elements of the fax system described in Medina’93.
  • Motivation to Combine (for §103 grounds): This ground relies on a single reference. Petitioner asserted it would have been obvious to a person of ordinary skill in the art (POSA) to implement the functions described in Medina’93 using a standard microprocessor, as was common practice for such systems.
  • Expectation of Success (for §103 grounds): A POSA would have a high expectation of success, as Medina’93 expressly teaches a complete, operational system for performing the claimed functions.

Ground 2: Obviousness over Medina’93 in view of Medina’98 - Claims 2, 11-13, 19, 22, and 25 are obvious over Medina’93 in view of Medina’98.

• Prior Art Relied Upon: Medina’93 (Patent 5,274,474) and Medina’98 (Patent 5,801,842).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the teachings of Medina’93. Petitioner asserted that Medina’98, by the same inventor, taught modifying the integrated system of Medina’93 into a plug-in module. This module receives data from an "external source" (a conventional host fax machine), thereby teaching the limitation of claim 2. For claims 11-13, Medina'98 taught an optional second encoder that preserves more character attributes (font, pitch), allowing for both lossy (standard ASCII) and less-lossy/lossless compression depending on the character data. This also taught the ability to select between encoders based on a "desirability factor" (e.g., speed vs. quality) for claim 19.
  • Motivation to Combine (for §103 grounds): A POSA would combine these references because they describe the same core technology by the same inventor, and Medina’98 explicitly incorporates Medina’93 by reference. The combination provided the benefit of applying the advanced compression of Medina’93 to legacy fax machines via a flexible plug-in module.
  • Expectation of Success (for §103 grounds): Success would be expected because the combination involved applying a known improvement (modularization) from Medina'98 to the system of Medina'93, with both references addressing the same technical problem.

Ground 3: Obviousness over Medina’93 in view of Bodson and/or the Fax Standard - Claims 9, 10, and 20 are obvious over Medina’93 in view of Bodson and/or the Fax Standard.

• Prior Art Relied Upon: Medina’93 (Patent 5,274,474), Bodson (a 1995 IEEE publication), and the Fax Standard (ITU-T Recommendations T.4 and T.30).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed the "data token" limitations in claims 9, 10, and 20. While Petitioner argued Medina'93 alone taught these, it presented this ground as an alternative. Bodson and the Fax Standard describe "Mixed Mode" fax operation, which is analogous to the high-speed mode in Medina’93. They explicitly teach using data tokens—such as a special bit at the start of a scan line or an End-of-Line (EOL) code—to signal a switch between character-coded data and standard graphics data. These tokens are associated with and indicative of the compression type being used.
  • Motivation to Combine (for §103 grounds): A POSA implementing the mode-switching system of Medina’93 would have been motivated to look to established industry standards like the Fax Standard and related publications like Bodson for known methods of signaling such mode changes. Using standard tokens would ensure interoperability and was a well-known technique for the exact problem.
  • Expectation of Success (for §103 grounds): A POSA would have a reasonable expectation of success because the combination involved applying a standard, documented technique (using tokens) to a known system (the fax machine in Medina'93) to achieve a predictable result.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including grounds that claims 14, 16, 17, 18, and 23 are obvious over Medina’93 in view of references like Moffat, Hunter, Hoffman, and Zidar. These references were used to supply teachings on lossy vs. lossless compression, handling data expansion, and corroborating known processing times for fax compression and OCR.

4. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: A central contention was that the ’728 patent is not entitled to its claimed 1998 priority date. Petitioner argued that the parent 1998 application was directed solely to "content independent data compression" and lacked support for the key limitations of content-dependent analysis and dual-encoder systems. These concepts were allegedly first introduced in a 2001 continuation-in-part application. Establishing the later 2001 priority date was critical for asserting Medina’98 (patented in 1998) as prior art.

5. Arguments Regarding Discretionary Denial

• Not Redundant of Prior Art or Other Proceedings: Petitioner argued that institution would not be redundant under §325(d). It contended that the anchor prior art reference, Medina’93, was never considered during the original prosecution. Furthermore, it argued this petition was distinct from other pending IPRs against the ’728 patent, as those proceedings relied on different anchoring prior art that did not describe fax compression technology.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-25 of the ’728 patent as unpatentable.