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 discloses systems and methods for accelerated data transmission using content-dependent data compression. The core concept involves determining whether to compress data by comparing the total time for compression, transmission, and decompression against the time for transmitting the data in its original, 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 is directed to dynamically selecting an image compression process, teaches all key limitations of independent claim 12. Dawson discloses a method for processing image data by first "recognizing" data characteristics (image size and color resolution). Based on these recognized parameters, Dawson "selects an encoder" (either a lossless or lossy compressor) to optimize performance. A central teaching of Dawson is its consideration of processing overhead; it teaches forgoing compression if transmitting the uncompressed image is faster than the combined time to compress, transmit, and decompress. This maps directly to the ’204 patent’s core time-saving limitation. Dawson's system also achieves compression ratios greater than 4:1 and performs point-to-point transmission between two "agents" (analogous to the claimed server and client).
  • To address the "at least one state machine" limitation of claim 12, Petitioner asserted that Gormish teaches using a finite state machine (FSM) coder for data compression. Petitioner argued that implementing a well-known compression algorithm like those in Dawson using a state machine was a common and well-understood technique in the art for improving processing speed.
  • For the dependent claims, Petitioner contended that Dawson also explicitly teaches the limitations. Claim 13's decompression at the client is taught by Dawson's receiving agent decompressing the image. Claim 14's data packet with multiple messages is taught by Dawson's data packets containing header information and partitioned image data. Claim 20's server-based compression is taught by Dawson's transmitting "agent," which Petitioner argued a POSITA would understand to be a server. Claim 21's limitation of analyzing data within fields (rather than relying on a descriptor) is taught by Dawson's process of calculating image size and resolution directly from the image data itself.
  • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA), seeking to improve the performance of Dawson’s system, would have been motivated to implement Dawson’s compressors using the FSM taught by Gormish. Gormish explicitly discloses that its FSM coder "provides increased speed for entropy coding" and reduces processing overhead by using a single look-up table. Since Dawson's system is already focused on minimizing overall transmission time, a POSITA would have naturally looked to known methods like Gormish's FSM to make the compression step faster and more efficient.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success in combining the references, as it involved applying a known technique (Gormish's FSM) to a known system (Dawson's compressors) to achieve a predictable improvement in speed and efficiency.

4. Key Claim Construction Positions

• Petitioner argued that the terms "recognizing" and "analyzing" in claims 12 and 21 should be given their broadest reasonable construction. Specifically, Petitioner contended these terms should not be construed to require an "active step" of directly analyzing data within data blocks, as the ’204 patent specification does not define or require such a step.

5. Arguments Regarding Discretionary Denial

• Petitioner presented extensive arguments that the Board should not exercise its discretion to deny institution under 35 U.S.C. §325(d) or the General Plastic factors, which are typically applied to follow-on petitions.
• The primary argument was that this was the first IPR petition filed by this specific Petitioner (Acronis) against the ’204 patent, so the General Plastic factors aimed at preventing abusive serial petitions by the same party should not apply.
• Petitioner further contended that, even if the factors were considered, they would favor institution. The grounds presented (Dawson in view of Gormish) were new and different from the prior art and arguments asserted in previously filed IPRs by other petitioners against the ’204 patent. Those other petitions relied on references related to XML compression and web proxy servers, whereas Dawson and Gormish relate to image compression.
• Regarding §325(d), Petitioner argued that the primary reference, Dawson, was not substantially considered by the USPTO during prosecution. Although Dawson was listed in an Information Disclosure Statement (IDS), it was one of 1,441 references submitted in that single IDS, and the Examiner never mentioned it in any office action or notice of allowance.
• Petitioner also provided an explanation for the timing of its petition, stating it was filed less than two months after receiving the Patent Owner's infringement contentions in parallel district court litigation, which was the first time Petitioner had a clear understanding of the infringement allegations.

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.