Acronis Inc v. Realtime Data LLC

1. Case Identification

• Case #: IPR2018-00706
• Patent #: 8,717,204
• Filed: February 26, 2018
• Petitioner(s): Acronis, Inc.
• Patent Owner(s): Realtime Data LLC
• Challenged Claims: 12-14, 20, and 21

2. Patent Overview

• Title: Methods for Encoding and Decoding Data
• Brief Description: The ’204 patent describes systems and methods for providing accelerated transmission of data, such as financial data and news feeds, using data compression. The invention selects content-dependent encoders based on data characteristics to compress a data stream only if the total time for compression, transmission, and decompression is less than the time for transmitting the data in an uncompressed form.

3. Grounds for Unpatentability

Ground 1: Claims 12-14, 20, and 21 are obvious over Dawson in view of Gormish.

• Prior Art Relied Upon: Dawson (Patent 5,553,160) and Gormish (Patent 5,912,636).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Dawson, which relates to dynamically selecting an image compression process, discloses nearly all limitations of the challenged claims. Dawson teaches a method for processing data by recognizing its characteristics (e.g., image size and color resolution) and selecting an appropriate encoder (lossless or lossy) based on those characteristics. Dawson further discloses compressing data to achieve a high compression ratio (over 4:1) and making the compression decision based on whether the total time to compress, transmit, and decompress is less than transmitting the data uncompressed. Petitioner asserted that the only element of independent claim 12 not explicitly taught by Dawson is the use of "at least one state machine" to perform the compression.
  • Motivation to Combine (for §103 grounds): Petitioner contended that Gormish teaches using a finite state machine (FSM) coder to increase the speed and performance of data compression. Because Dawson’s method is sensitive to the time overhead required for compression, a person of ordinary skill in the art (POSITA) would have been motivated to implement the faster, more efficient FSM taught by Gormish into Dawson’s compression system. The combination would be a straightforward application of a known technique (Gormish's FSM) to improve a known system (Dawson's compression selector) to achieve the predictable result of reduced compression overhead and faster overall data transmission.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success in combining the references because implementing Gormish's FSM would predictably improve the speed of Dawson’s compressors, directly addressing Dawson's stated goal of minimizing transmission time.

4. Key Claim Construction Positions

• Petitioner requested that the terms "recognizing" and "analyzing" in claims 12 and 21 be given their broadest reasonable construction and not be limited to requiring an "active step" of "directly analyzing" data within data blocks. This construction is central to Petitioner's argument that Dawson's method of determining image size and color resolution meets these limitations and that it "excludes analyzing based on a descriptor" as required by claim 21.

5. Arguments Regarding Discretionary Denial

• Petitioner presented extensive arguments that discretionary denial under 35 U.S.C. §325(d) or the General Plastic factors would be inappropriate. The core arguments were:
  • First-Time Petitioner: This was the first IPR petition filed by Acronis against the ’204 patent, making it distinct from follow-on petitions by the same party that are typically scrutinized under these factors.
  • New Grounds and Prior Art: The combination of Dawson and Gormish presented a new and non-duplicative ground of challenge. Petitioner argued that other IPRs filed against the ’204 patent by different parties relied on entirely different prior art related to dissimilar technologies, such as XML data compression and web proxy servers.
  • No Unreasonable Delay: Petitioner asserted that any delay in filing was attributable to the Patent Owner's own delays in providing specific infringement contentions in parallel district court litigation, which were necessary to formulate the IPR petition.
  • Prior Art Not Substantively Reviewed: Although Dawson was cited in an Information Disclosure Statement (IDS) during the original prosecution, it was one of over 1,400 references submitted in that single IDS. Petitioner argued that the sheer volume of the submission meant the examiner could not have, and did not, give Dawson any meaningful consideration.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 12-14, 20, and 21 of the ’204 patent as unpatentable.