PTAB

IPR2018-00703

Acronis Inc v. Realtime Data LLC

Key Events

Petition

petition

Title: Data Compression System and Method
Brief Description: The ’728 patent discloses a data compression system that analyzes data within a block to identify its parameters or attributes. Based on this internal analysis, the system selectively performs either "content dependent data compression" using one or more specialized encoders or "content independent data compression" using a single, default encoder.

Prior Art Relied Upon: Nishigaki (Japanese Patent Application No. 2000-50268).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Nishigaki discloses every element of independent claims 1 and 24. Nishigaki teaches a system with an image processor that analyzes data blocks to determine their type ("character" vs. "non-character") based on internal attributes (e.g., edge attributes). The processor then selects either a "character-type compression unit" (a content-dependent encoder) or a "non-character-type compression unit" (a single/default encoder). This analysis is performed on the data's content, not an external descriptor, thus meeting the claim limitation that excludes analysis based solely on a descriptor. For dependent claim 15, Nishigaki discloses storing the compressed data block in memory after processing.

Prior Art Relied Upon: Nishigaki (Japanese Patent Application No. 2000-50268) and Dawson (Patent 5,553,160).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Nishigaki teaches the fundamental method of analyzing data to select a compression type. Dawson, which discloses dynamically selecting a compression process based on image size and color resolution, was argued to render the additional limitations of claim 25 obvious. Specifically, Dawson teaches determining whether to leave a data block uncompressed if it is small enough (e.g., <4k bytes) to be transferred more quickly without compression. This maps to the claim limitation of determining whether to output the data block in a "received form" or a "compressed form."
- Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Dawson’s teachings with Nishigaki's system to improve efficiency. Adding Dawson's technique for assessing image size allows for a quick determination to forgo compression, making the overall process faster than Nishigaki’s system alone, which always compresses.
- Expectation of Success: A POSITA would have a high expectation of success, as this involves applying a known, advantageous technique (pre-compression size check) to a similar system (multi-encoder compression) to achieve a predictable benefit (increased speed and efficiency).

Prior Art Relied Upon: Nishigaki (Japanese Patent Application No. 2000-50268) and Dawson (Patent 5,553,160).
Core Argument for this Ground:
- Prior Art Mapping: This ground asserted that Dawson cures alleged deficiencies in Nishigaki with respect to several dependent claims. For claim 2 (data from an external source), Dawson explicitly discloses receiving an uncompressed image from an external source. For claims 4-6 ("real-time" compression), Dawson's focus on quickly determining the optimal compression process based on transfer time teaches the claimed time-critical nature. For claims 9, 10, and 20 (associating a token with the compressed data), Dawson teaches attaching "header information" that indicates the compression process used, enabling a receiving device to apply the correct decompression algorithm.
- Motivation to Combine: The motivation was the same as in Ground II: improving Nishigaki's system with Dawson's known techniques. A POSITA would be motivated to add a data token as taught by Dawson to ensure the compressed data could be properly decompressed, a fundamental requirement for any compression system.

Petitioner argued that the term “the data block being included in one or more blocks” in claim 2 should be construed to mean the data block is "included among a group of one or more data blocks." Petitioner contended this construction aligns with the specification and avoids an illogical interpretation where a data block would be contained within other data blocks.

A central contention was that the challenged claims of the ’728 patent are not entitled to a priority date earlier than October 29, 2001, the filing date of a continuation-in-part application. Petitioner argued that the core claimed concept—analyzing data to select between content-dependent and content-independent compression—was new matter added in the 2001 application and was not supported by the parent applications filed in 1998 and 2000. This argument was critical to establishing that Nishigaki (published in 2000) qualifies as prior art under §102.

The petition argued extensively that the Board should not exercise its discretion to deny institution under 35 U.S.C. §314(a) and the General Plastic factors, despite other IPRs having been filed against the ’728 patent by different parties.
Petitioner emphasized this was its first IPR against the patent. More critically, it asserted that the petition presented new and material prior art, primarily Nishigaki, which had never been considered by the patent examiner during prosecution or by the Board in any prior IPR. Petitioner noted that while Dawson appeared in a voluminous Information Disclosure Statement (IDS) with over 1,500 other references, it was never substantively analyzed by the examiner. Therefore, the arguments and art in this petition were not the same or substantially the same as those previously considered.

Petitioner requested institution of an inter partes review and cancellation of claims 1, 2, 4-6, 9, 10, 15, 20, 24, and 25 of Patent 9054728 as unpatentable.