Delphix Corporationv.ACTIFIO, INC.

Patent Trial and Appeal Board

Feb 10, 2016

12947438 (P.T.A.B. Feb. 10, 2016)

Trials@uspto.gov Paper 8
571-272-7822 Entered: February 10, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

DELPHIX CORP.,
Petitioner,

v.

ACTIFIO, INC.,
Patent Owner.
____________

Case IPR2015-01678
Patent 8,299,944 B2
____________

Before THOMAS L. GIANNETTI, DAVID C. McKONE, and
ROBERT L. KINDER, Administrative Patent Judges.

KINDER, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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Delphix Corp. (“Petitioner”) filed a Petition pursuant to 35 U.S.C.
§§ 311–19 to institute an inter partes review of claims 1–4 (all claims) of
U.S. Patent No 8,299,944 B2, issued on October 30, 2012 (Ex. 1001, “the
’944 patent”). Paper 1 (“Pet.”). Actifio, Inc. (“Patent Owner”) filed a
Preliminary Response. Paper 6 (“Prelim. Resp.”). We have jurisdiction
under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a).
To institute an inter partes review, we must determine that the
information presented in the Petition shows “a reasonable likelihood that the
petitioner would prevail with respect to at least 1 of the claims challenged in
the petition.” 35 U.S.C. § 314(a). Having considered both the Petition and
the Preliminary Response, we are not persuaded that Petitioner has
demonstrated a reasonable likelihood that it would prevail in showing the
unpatentability of any of claims 1–4 of the ’944 patent on any alleged
ground. Accordingly, we do not institute an inter partes review of any claim
on the record before us.

I. BACKGROUND
A. The ʼ944 patent (Ex. 1001)
The ʼ944 patent is titled “System and Method for Creating
Deduplicated Copies of Data Storing Non-Lossy Encodings of Data Directly
in a Content Addressable Store.” The “invention relates generally to data
management, data protection, disaster recovery and business continuity.”
Ex. 1001, 1:44–48. The ’944 patent discloses improvements for storing data
in a redundant fashion. Id. at 2:4–31.
The ’944 patent describes a unified Data Management Virtualization
System (“DMVS”) for data management activities. See id. at 3:20–31. The
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claims of the ’944 patent relate to certain aspects of this system, such as
“storing deduplicated images in which a portion of the image is stored in
encoded form directly in a hash table” and storing hashes pointing to the
stored data. Id. at Abstract, 1:44–48, 34:5–46. The disclosed DMVS
abstracts physical storage resources into a series of virtualized data
protection storage pools.
The capacity optimized storage pool, also called the content
addressable store (“CAS”), “provides a way of storing common subsets of
different objects only once, where those common subsets may be of varying
sizes.” Id. at 25:61–65. The CAS stores data as content addressable objects.
Id. at 27:56–59, 26:19–22. The system generates a data structure called a
“handle” and associates the handle with each content addressable object
(data object) to be stored. Id. at 27:56–59. The “handle” includes
information about the data object, including the size of the data object, and a
“hash” of the data object. See id. at 27:59–63. The handle relates to the
claimed “hash structure” as further explained below. See Pet. 7–8 (“A ‘hash
structure’ in the claims refers to what the specification describes as a
‘handle’. . . .”).
Figure 12, depicted below, “shows how the handle for a content
addressed object is generated.” Ex. 1001, 27:56–57.
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Referring to Figure 12, the data object manager references all content
addressable objects with a content addressable handle. Each handle “is
made up of three parts,” including a hash of the data object (1203), so that it
can be readily identified. Id. at 27:59–63.
The hash in the handle can be either: (i) the fixed length hash key of
an object the handle points to generated via a hashing algorithm such as
SHA-1 that “generates a secure cryptographic hash with a uniform
distribution and a probability of hash collision near enough zero,” or (ii) a
non-lossy encoding of the data segment itself. Id. at 27:2–12, claim 1. The
non-lossy encoding of the data segment is stored as a hash value when the
segment fits within the field for containing a hash. Id. at 27:64–28:4,
claim 1.
The hash (1203) of the data object “optionally includes a tag
indicating that the hash field is a non-lossy encoding of the underlying data.”
Id. at 27:62–64. The Specification further discloses “[t]he tag indicates the
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encoding scheme used, such as a form of run-length encoding (RLE) of data
used as an algorithmic encoding if the data chunk can be fully represented as
a short enough RLE.” Id. at 27:64–28:1.
B. Illustrative Claim
Claim 1, reproduced below, is the only independent claim and is
illustrative of the claims at issue:
1. A method of storing deduplicated images in which a portion
of the image is stored in encoded form directly in a hash table,
the method comprising:
[1A] organizing unique content of each data object as a
plurality of content segments and storing the content segments
in a data store;
[1B] for each data object, creating an organized arrangement
of hash structures, wherein each structure, for a subset of the
hash structures, includes a field to contain a hash signature for a
corresponding content segment and is associated with a
reference to the corresponding content segment,
[1C] wherein the logical organization of the arrangement
represents the logical organization of the content segments as
they are represented within the data object;
[1D] receiving content to be included in the deduplicated
image of the data object;
[1E] generating a new hash structure for the received content;
[1F] determining if the received content may be encoded
using a predefined non-lossy encoding technique and in which
the encoded value would fit within the field for containing a
hash signature;
[1G] if so, placing the encoding in the field of the new hash
structure instead of placing a hash signature for the received
content in the field, and marking the new hash structure to
indicate that the field contains encoded content for the
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deduplicated image, so that the received content is not stored
since the received content can be derived from the encoding;
[1H] if not, generating a hash signature for the received
content and placing the hash signature in the field of the new
hash structure and placing the received content in a
corresponding content segment in said data store if it is unique.
Ex. 1001, 34:6–39 (bracketed numbering and paragraphing added).
C. Related Proceedings
Petitioner and Patent Owner identify a related litigation in the District
of Massachusetts involving the ʼ944 patent: Actifio, Inc. v. Delphix Corp.,
Case No. 1:14-cv-13247-DJC. Pet. 1; Paper 5.
D. Real Party-in-Interest
Petitioner certifies that the real party-in-interest for this Petition is
Delphix Corporation. Pet. 1.
E. References
Petitioner relies on the following references:
Reference Date Exhibit
Patterson US 7,143,251 B1 Nov. 28, 2006 Ex. 1002
Zhu

US 6,928,526 B1 Aug. 9, 2005 Ex. 1003
Terao US 2004/0199570 A1 Oct. 7, 2004 Ex. 1004
Li US 7,689,633 B1 Sept. 15, 2004 (filed)
Mar. 30, 2010 (issued)
Ex. 1005

F. Grounds Asserted
Petitioner challenges the patentability of claims 1–4 of the ʼ944 patent
on the following two grounds (Pet. 3):
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Reference(s) Basis Claims Challenged
Patterson (incorporating
Zhu), and Terao § 103(a) 1, 3, and 4
Patterson, (incorporating
Zhu), Terao, and Li § 103(a) 2

II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. See 37 C.F.R. § 42.100(b);
In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015),
cert. granted sub nom., Cuozzo Speed Techs., LLC v. Lee, No. 15–446, 2016
WL 205946 (U.S. Jan. 15, 2016).
Petitioner proposes the construction of three terms (Pet. 7–8), and
Patent Owner does not challenge these proposed claim constructions
(Prelim. Resp. 29). Only the term “hash structure” is relevant for our
analysis, and we construe it as follows.
The term “hash structure” appears in claim 1. The Specification
describes the claimed “hash structure” as a handle. Pet. 7–8, Prelim. Resp.
6. See also Ex. 1001, 27:55–59 (“The data object manager references all
content addressable objects with a content addressable handle.”). Petitioner
contends that the term “hash structure” should be construed as “a structure
for holding a value generated via a hash function.” Pet. 8 (emphasis added).
Petitioner relies on the Specification and its explanation that a hash is
generated via a hashing algorithm such as SHA-1. Id. (citing Ex. 1001,
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27:1–12). Petitioner also quotes two dictionaries providing definitions for
the term “hash.” Id.
On this record, we adopt Petitioner’s proposed construction as the
broadest reasonable interpretation. Thus, “hash structure” is construed to
mean “a structure for holding a value generated via a hash function.”
B. Obviousness of Claim 1, 3, and 4 Over Patterson, Zhu, and Terao
Petitioner contends that claims 1, 3, and 4 would have been obvious
over Patterson, Zhu,1 and Terao. Pet. 3. Having considered the arguments
and evidence before us, for the reasons set forth below, Petitioner does not
make a sufficient showing that the subject matter of any of claims 1, 3, and 4
would have been obvious over Patterson, Zhu, and Terao.
1. Patterson
Patterson relates to “a data storage system and method that efficiently
eliminate[s] redundancy.” Ex. 1002, 1:5–8. As depicted in Figure 3 below,
Patterson receives a segmented data stream (300) and uses a hash table in
determining whether each segment in the stream has been stored previously
(306). Ex. 1002, Fig. 3, 4:35–38, 5:62–6:22.

1 Petitioner argues that Zhu is incorporated by references into Patterson or,
alternatively, that certain aspects of Zhu would have been obvious to
incorporate into embodiments disclosed in Patterson. Pet. 14.
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Figure 3 of Patterson is a flowchart illustrating the write process used for
storing a segmented data stream. Ex. 1002, 1:60–61.
If the system determines that an identical data segment has not been
stored previously, the data segment is added to data segment storage and
associated with a unique identifier that is added to a hash table (steps 306,
314, 316, 318). Id. at Fig. 3, 4:33–58, 6:3–9, 6:19–22. If there is an
identical stored data segment (306), the incoming segment is not added to
data segment storage, but instead the unique identifier for the data segment
is looked up (308) and added to a reconstruction list (312). Id. at 4:46–48,
6:14–19. The reconstruction list is a sequence of unique identifiers stored in
the same order in which the data segments were received in the data stream
and later used to reconstruct the original data stream with the contents of
stored data segments. Id. at 3:14–16, 4:4–22, 4:46–57, 6:3–9, 6:14–19.
Patterson describes various types of unique identifiers that may be
used. Id. at 4:23–24. For example, the unique identifiers stored in the
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reconstruction lists can be derived from “content derived summaries” or
fingerprints such as hashes. Id. at 2:37–54; 5:31–47. Patterson also
discloses that the unique identifiers can be the data segments themselves.
Id. at 4:31–32. A data segment’s unique identifier is associated with the
memory location of the data segment that it represents. Id. at 2:45–54, 3:60–
4:3, 5:13–47, Figs. 2B and 5A. For example, referring to Figure 5A, a
unique identifier in the reconstruction list is an index into a table that
includes a corresponding fingerprint of the data segment and a memory
location where the data segment is stored. See id. at 5:12–19. Patterson
explains that the system retrieves the data segments stored at the memory
addresses associated with each unique identifier found in the reconstruction
list and assembles the data segments in that order. Id. at 4:58–5:2, 7:34–59,
Fig. 7.
Patterson discloses how data can be looked up using unique
identifiers. Ex. 1002, 3:30–5:2; 5:13–59. In one embodiment, a hash table
illustrated in Figure 2A is used to determine if a data segment is already
stored by comparing the data segment’s hash value to the entries in the table.
Ex. 1002, 3:30–59; 4:33–57. The second table illustrated in Figure 2B is
used to locate a data segment during a read operation. Id. at 3:60–4:3. In a
second embodiment, referring to Figures 5A, 5B, 6 and 7, Patterson
discloses using a single table instead of two tables for writing and looking up
data segment locations. See id. at 5:13–7:59, 5:3–12 (“in some
embodiments, a combined table is used for both the reading and the writing
of data”).
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2. Zhu
Petitioner contends that Zhu is incorporated by reference into
Patterson and thus, Patterson “includes Zhu’s description as if it was itself
recited in Patterson.” Pet. 9. Patent Owner does not challenge this
contention.
Zhu is entitled “Efficient Data Storage System.” Zhu’s “system
determines whether a data segment has been stored previously” and if so,
“an identifier for the previously stored data segment is returned.” Ex. 1003,
Abstract. Zhu receives a data stream from a backup server or other data
source and divides the stream into segments. Id. at 2:65–3:2. The system
passes these segments to an ID generator that generates a segment ID to be
associated with each of the data segments from the input data stream. Id. at
2:65–3:2, 3:15–19. Zhu discloses that these segment IDs can be hash
signatures generated by a cryptographic hash function such as the MD5
algorithm, a fingerprint, or “the ID is the segment data itself.” Id. at 3:24–
33.
Once a data segment’s segment ID is generated, the system sends the
segment ID and other metadata to a segment redundancy check engine that
determines whether the segment has been previously stored in a content
addressable segment database. Id. at 3:34–4:27, 5:12–30, 7:36–8:47. If the
engine determines that an identical data segment has not previously been
stored, the data segment is added to a segment database. Id. at 8:1–4, 8:27–
40.
Zhu discloses that data segments also may be stored in compressed
form. For example, Zhu describes that the data segments may be encoded
using a lossless compression algorithm such as Lempel-Ziv. Id. at 5:1–5.
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Referring to Figure 3 of Zhu, the segment data is compressed and stored in
its associated content segment (i.e., data store (304)). See id. at Fig. 3, 4:63–
5:11.
3. Terao
Terao relates to an information processing system for holding and
providing information as processing objects. Ex. 1004 ¶ 4. Terao discloses
that a server computer may divide a piece of incoming data into a sequence
of data fragments and calculate a characteristic value for each data fragment.
Id. at Abstract, ¶¶ 8, 9, 12, 31. Terao describes that a characteristic value
may be a hash value. Id. ¶ 29. Terao discloses comparing the size of each
data fragment with the size of that fragment’s hash value. Id. ¶¶ 12, 38. If
the data fragment is larger than its characteristic value, the server stores the
data fragment. Id. ¶¶ 12, 39. If the characteristic value is larger than the
data fragment, Terao describes that the server may simply use the data
fragment as its own “characteristic value.” Id. ¶¶ 12, 37, 38. In this
disclosed embodiment, the “data fragment per se”—i.e., the raw data
fragment—is used as the characteristic value. Id. ¶ 12. Thus, Terao’s data
fragment also is stored as raw data, regardless of whether it is larger or
smaller than the characteristic value. Id. ¶¶ 12, 37–39.
4. Claim 1
Petitioner contends that the combination of Patterson, Zhu, and Terao
teaches or suggests each limitation of claim 1. Pet. 18–32. Petitioner
supports its contentions with citations to the references and with the
testimony of Prashant Shenoy, Ph.D. Ex. 1009. Petitioner alleges that both
Patterson and Zhu disclose hash-based deduplication of stored data. Pet. 9.
Petitioner identifies Patterson’s “unique identifier” as the claimed “hash
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signature” and Patterson’s “reconstruction list” as the “hash structure” of the
claims. Id. at 23–24. According to Petitioner, “Patterson further discloses
that each unique identifier in the reconstruction list is associated with a
reference to the corresponding data segment, specifically a memory location
where the data segment is stored.” Id. at 23 (“a unique identifier in the
reconstruction list is an index into a table that includes a corresponding
fingerprint of the data segment and a memory location where the data
segment is stored”). Petitioner relies on Zhu for its disclosure that a segment
ID can be the segment data itself or a digital signature (cryptographic hash
or a fingerprint) generated from a hash function computed using the segment
data. Id. at 10, 24. Petitioner also relies on Zhu for its disclosure that the
data segments can be stored in compressed form using a lossless
compression encoding technique. Id. at 19. Petitioner contends it would
have been obvious to store such a compressed encoding in the reconstruction
list (hash structure) of Patterson in further view of Terao. According to
Petitioner, Terao discloses use of a data segment as an identifier in a hash
structure if it is smaller than the output of a given hash function used to
generate an identifier of a data segment. Id. at 28. Thus, Petitioner relies on
Terao as teaching the claimed step of determining if the encoded value
would fit within the field for containing a hash signature. See step 1F below.
Patent Owner challenges whether the combination of Patterson, Zhu,
and Terao teach or suggest limitations found in steps 1B, 1F, and 1G of
claim 1. Prelim. Resp. 38–46. We focus our analysis on limitations found
in steps 1F and 1G for the reasons set forth below.
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i. Steps 1F and 1G of Claim 1
Step 1F requires, “determining if the received content may be encoded
using a predefined non-lossy encoding technique and in which the encoded
value would fit within the field for containing a hash signature.” Ex. 1001,
34:24–27. If the conditons of step 1F are met, step 1G further requires
“placing the encoding in the field of the new hash structure . . . and marking
the new hash structure to indicate that the field contains encoded content for
the deduplicated image so that the received content is not stored since the
received content can be derived from the encoding.” Id. at 34:28–34.
ii. Petitioner’s Contentions for Steps 1F and 1G
Petitioner relies on Zhu’s compression technique integrated into
Patterson’s embodiments, as well as portions of Terao, as meeting the
limitations of steps 1F and 1G. Pet. 27–31. Petitioner alleges “[i]t would be
obvious to one skilled in the art that the data segments in the Patterson
embodiments could also be compressed with a non-lossy encoding technique
such as Lempel-Ziv.” Pet. 28. Petitioner then concludes “it would be
obvious to one skilled in the art that storing data segments in Patterson’s
embodiments in the compressed form as described in Zhu would render the
deduplicated storage system even more efficient.” Pet. 28.
Petitioner further relies on Terao as teaching a comparison of an
encoded data segment to a unique identifier to determine if the encoded data
segment would fit into a field in the reconstruction list. Id. at 29. Using
Terao’s comparison technique, Petitioner contends
that a losslessly encoded data segment itself, as described in
Zhu incorporated in Patterson, can be stored in Patterson’s
reconstruction list rather than the unique identifier of that data
segment if the encoded data segment is smaller than the unique
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identifier calculated from a hash of the segment, and thus would
fit into a field in the reconstruction list that is designed to store
larger unique identifiers, because both Patterson and Zhu
describe that an identifier can be the data segment itself and
Patterson explicitly explains the advantage of having “shorter”
identifiers.
Pet. 29. Based on this proposed combination, Petitioner argues
there must be a way for the system to distinguish such entries
[(i.e., the stored encoded data segment)] from those that include
a hash based identifier of the data segment so that the system
can determine whether the data segment needs to be retrieved
from storage using the segment identifier or can be obtained
directly from the list of segment identifiers.
Id. at 30 (citing the expert declaration of Prashant Shenoy, Ph.D (“Shenoy
Decl.”) ¶ 81).
Petitioner contends that the marking requirement of limitation 1G is
met by “an indicator as to whether the unique identifier is the encoded data
segment itself or a value derived from a hash function of the data
segment . . . .” Id. (citing Shenoy Decl. ¶ 81).
iii. Patent Owner’s Contentions for Steps 1F and 1G
Patent Owner contends that the references do not teach or suggest the
limitations of steps 1F and 1G, either alone or in combination. Prelim. Resp.
1, 12, 14, 15, 20, 21, 33, 38–46. Patent Owner argues that “in the only
disclosed embodiment of Zhu that actually uses compression, the
compressed data is stored in fields and structures separate from any hash
structures.” Id. Likewise, Patent Owner argues that “nothing in Zhu
discloses storing the encoding in the hash structure and there are no
disclosures in Patterson or Zhu that would teach a [person of ordinary skill
in the art] to do this.” Id. at 39. According to Patent Owner, “[n]either
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Petitioner nor its expert explain why a [person of ordinary skill in the art]
would try to encode data and then store it specifically in a hash structure.”
Id. Patent Owner further argues Terao teaches away from encoding data
because it only discloses storing raw, non-encoded data and any storage
gained from compression would be padded away. Id. at 39, 25 (citing
Ex. 1004, ¶ 33 (“the tail is prefereably padded with a predetermined
value”)).
Patent Owner further contends that the combination of prior art fails
to teach or suggest marking the new hash structure to indicate that the field
contains encoded content for the deduplicated image as required by step 1G
of claim 1. Id. at 42–45. According to Patent Owner, because none of the
references discloses placing encoded data in a hash structure, the references
also do not and cannot disclose marking the new hash structure to indicate
that the field contains encoded content as claimed. Id. at 43. Patent Owner
reasons that “it would not have been obvious to include a marking in the
hash structure to indicate the presence of such an encoding, because there
was no need in those references to differentiate a hash structure that stores a
hash signature from a hash structure that stores an encoding.” Id. at 44.
Patent Owner also argues Terao cannot support marking as claimed because
Terao teaches that the received content is always stored in raw form. Id.
Thus, a person of ordinary skill in the art would have had no reason to
modify Patterson and Zhu in light of Terao to mark the hash structure to
indicate that it has encoded content. Id.
Finally, Patent Owner argues that the Petition fails to identify the
differences between the prior art references and the claims of the ’944 patent
(id. at 29–32), lacks an adqueate reason or motivation to combine or modify
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the references as proposed (id. at 23–28), and uses impermissible hindsight
to make modifications not contemplated by the references (id. at 26, 28).
iv. Analysis of Steps 1F and 1G
Petitioner has not persuasively established that the proposed
combination of prior art teaches or suggests the requirements of steps 1F and
1G. We agree with Patent Owner that neither Patterson nor Zhu teaches or
suggests determining if content may be encoded in a hash structure using a
predefined non-lossy encoding technique. Zhu discloses that data segments
may be stored in compressed (encoded) form. Ex. 1003, 5:1–5. Yet, in this
embodiment (see id., Fig. 3), the segment data is compressed and stored in
its associated content segment (data store), but not in a hash structure.
Likewise, Terao does not teach or suggest encoding data in a hash
strucuture. Terao also does not teach or suggest comparing an encoded
value to determine if it would fit within the field for containing a hash
signature.
Petitioner contends both Patterson and Zhu disclose that a data
segment itself could be used as its segment identifier, and that Zhu discloses
compressing the contents of data segments. Pet. 28. Based on these
disclosures, Petitioner reaches the conclusion that “[i]t would be obvious to
one skilled in the art that the data segments in the Patterson embodiments [in
a hash structure] could also be compressed with a non-lossy encoding
technique . . . .” Id. Petitioner cites Dr. Shenoy’s testimony, which simply
reiterates, without support, Petitioner’s conclusion that it would have been
obvious to store data segments in Patterson’s embodiments in the
compressed form as described in Zhu to make the deduplicated storage
system more efficient. Shenoy Decl. ¶ 77. Neither Patent Owner nor
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Dr. Shenoy accounts for the difference between storing a data segment itself
in a hash structure and storing a portion of the data in encoded form directly
in a hash structure, as required by claim 1. The claimed invention (see step
1F) applies encodings to received portions of the data and determines if the
encodings would fit within a hash structure. Yet, Petitioner has not cited in
the references any teaching of storing an encoding in a hash structure and
Petitioner fails to explain persuasively how the combination of the three
references resolves that deficiency. Instead, Petitioner and Dr. Shenoy
provide mere conclusory statements to support the assertion that the
combination of references teaches determining if received content can be
encoded in the hash structure. See Pet. 28, 29.
We agree with Patent Owner that “[n]either Petitioner nor its expert
explain why a [person of ordinary skill in the art] would try to encode data
and then store it specifically in a hash structure” as required in step 1F.
Prelim. Resp. 39. Petitioner does not adequately explain why or how a
person of ordinary skill in the art would arrive at the modifications necessary
to meet the requirements of step 1F. Petitioner’s reasons for combining the
references – such as reducing the amount of data stored in each field or
making the storage system more efficient (Pet. 27–28) – do not adequately
address the modifications needed by each reference to reach the determining
step (1F). See Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed.
Cir. 2013) (“Where, as here, the necessary reasoning is absent, we cannot
simply assume that an ordinary artisan would be awakened to modify prior
art in such a way as to lead to an obviousness rejection.” (internal quotation
marks and citation omitted)).
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Based on the record before us, Petitioner has also not persuasively
established that it would have been obvious to “mark[] the new hash
structure to indicate that the field contains encoded content for the
deduplicated image . . . .” as also required by claim 1 (step 1G). Petitioner’s
argument related to this limitation is not supported by persuasive evidence.
Instead, Petitioner presents a conditional argument “that if a unique identifier
for a particular data segment in the reconstruction list or the ID sequence is
the encoded data segment itself, there must be a way for the system to
distinguish such entries . . . .” Pet. 30 (emphasis added). As explained
above, however, Petitioner’s showing of an encoded data segment as a
unique identifier in a hash structure is conclusory and not supported by
persuasive evidence.
In support of its contention that marking the hash structure would
have been obvious, Petitioner again relies on conclusory testimony from Dr.
Shenoy. Pet. 31 (citing Shenoy Decl. ¶ 81). This testimony concludes,
without support, that it would have been obvious to include “an indicator as
to whether the unique identifier is the encoded data segment itself or a value
derived from a hash function of the data segment to specify in the
reconstruction process whether or not an additional lookup is required to
retrieve the stored data segment.” Shenoy Decl. ¶ 81. Such conclusory
testimony is entitled to little weight. See 37 C.F.R. § 42.65(a). Petitioner
does not cite to any evidence where a hash structure is marked to indicate a
field contains encoded content as claimed. Further, Petitioner has not
persuasively identified a reason or need in Patterson or Zhu to differentiate a
hash structure that stores an encoding as claimed.
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Terao also does not teach or suggest marking the new hash structure
to indicate that the field contains encoded content. According to claim 1,
marking is done “so that the received content is not stored since the received
content can be derived from the encoding.” Ex. 1001, 34:32–34. Yet, as
Patent Owner points out, “Terao teaches that the received content is always
stored.” Prelim Resp. 45; see also Terao ¶¶ 38, 39 (storing either a “data
fragment per se as a characteristic value” or a “data fragment”). Thus, we
do not agree that Terao teaches marking or supports modifying Patterson and
Zhu to include marking as claimed.
In sum, there are multiple instances in which Petitioner has failed to
show a teaching of a claim limitation in the prior art. Petitioner has
attempted to fill those gaps with conclusory expert testimony that, itself,
does not cite to evidentiary support. Viewing Petitioner’s evidence and
argument as a whole, we are persuaded that Petitioner’s proposed
combination of Patterson, Zhu, and Terao is not driven by the teachings of
those references but, rather, is built on impermissible hindsight. See In re
NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011) (“Care must be taken to
avoid hindsight reconstruction by using the patent in suit as a guide through
the maze of prior art references, combining the right references in the right
way so as to achieve the result of the claims in suit.” (internal quotation
marks and citations omitted)).
On the record before us, we do not agree that Patterson, Zhu, and
Terao, teach or suggest “determining if the received content may be encoded
using a predefined non-lossy encoding technique and in which the encoded
value would fit within the field for containing a hash signature” (1F) or
“marking the new hash structure to indicate that the field contains encoded
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Patent 8,299,944 B2

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content for the deduplicated image” (1G). Ex. 1001, 34:24–34. We
therefore determine that Petitioner has not demonstrated a reasonable
likelihood of prevailing on its challenge to claim 1 of the ʼ944 patent as
obvious.
5. Claims 3 and 4
Claims 3 and 4 depend from claim 1. For the same reasons set forth
for claim 1, Petitioner has not demonstrated a reasonable likelihood of
prevailing on its challenge to claims 3 and 4 of the ʼ944 patent as obvious.
C. Obviousness of Claim 2 Over Patterson, Zhu, Terao, and Li
Claim 2 depends from claim 1. Petitioner does not allege Li teaches
or suggests the requirements of steps 1F and 1G discussed above for claim 1
and missing from Patterson, Zhu, and Terao. See Pet. 36 (Li teaches “the
non-lossy encoding disclosed in Zhu can be a run-length encoding”).
Therefore, for the reasons set forth above, we determine that Petitioner has
not demonstrated a reasonable likelihood of prevailing on its challenge to
claim 2 of the ʼ944 patent as obvious.
III. CONCLUSION
The information presented in the Petition does not establish a
reasonable likelihood that Petitioner would prevail on any of the following
challenges to the patentability of the ʼ944 patent:
A. Obviousness of claims 1, 3, and 4 over Patterson, Zhu, and Terao;
and
B. Obviousness of claim 2 over Patterson, Zhu, Terao, and Li.
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Patent 8,299,944 B2

22
IV. ORDER
It is, therefore,
ORDERED that the Petition is denied as to all challenged claims and
no trial is instituted.
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Patent 8,299,944 B2

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PETITIONER:
David Hadden
Saina Shamilov
Fenwick & West LLP
dhadden-ptab@fenwick.com
sshamilov-ptab@fenwick.com

PATENT OWNER:
Robert Steinberg
Jonathan Link
Latham & Watkins LLP
bob.steinberg@lw.com
jonathan.link@lw.com
ACTIFIOINC.IPRACTIONS.LWTEAM@lw.com