Ex Parte 7,400,274 et al

Patent Trial and Appeal Board

Oct 28, 2015

95001544 (P.T.A.B. Oct. 28, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/001,544 02/14/2011 7,400,274 2855.001REX4 6059
26111 7590 10/29/2015
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
HUGHES, DEANDRA M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
10/29/2015 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CME GROUP, INC., NEW YORK MERCANTILE EXCHANGE, INC.,
and BOARD OF TRADE OF THE CITY OF CHICAGO, INC.,
Requester,

v.

REALTIME DATA LLC.,
Patent Owner.
____________

Appeal 2015-007687
Reexamination Control 95/001,544
Patent 7,400,274 B2
Technology Center 3900
____________

Before ALLEN R. MacDONALD, THU A. DANG, and STEPHEN C. SIU,
Administrative Patent Judges.

SIU, Administrative Patent Judge

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Patent 7,400,274 B2

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DECISION
In an earlier Decision, Appeal No. 2013-007871, mailed November 1,
2013 (“Decision”), we reversed the Examiner’s decision not to reject claim
12 under 35 U.S.C. § 102(b) as anticipated by XMill;
1
claims 1–5 and 8–10
under 35 U.S.C. § 103(a) as unpatentable over XMill and Birdwell;
2
claims
5–7 under 35 U.S.C. § 103(a) as unpatentable over XMill, Birdwell, and
Willis;
3
claims 1–8 and 10 under 35 U.S.C. § 103(a) as being unpatentable
over XMill and Zusman.
4
Our reversal of the Examiner’s decision was
designated as a NEW GROUND OF REJECTION pursuant to 37 C.F.R.
§ 41.77(b). Decision 8.
We are told that this case is related to Reexamination Control Nos.
95/000,464; 95/000,479; 95/001,533; 95/001,517; 95/001,581; 90/009,428;
95/000,466; 95/000,478; and 95/000,486 and co-pending litigation Realtime
Data LLC v. CME Group Inc., et al., No. 1:11-cv-6697, originally filed
7/22/2009; Realtime Data LLC v. Thomson Reuters, et al., No. 1:11-cv-
6698, originally filed 7/23/2009; and Realtime Data LLC v. Morgan Stanley,
et al., No. 1:11-cv-6696, originally filed 7/22/2009, all pending in the
Southern District of New York. 3PR App. Br. 1–2.
Patent Owner elected to reopen prosecution under 37 C.F.R.
§ 41.77(b)(1) (Corrected Request to Reopen Prosecution Before the
Examiner Under 37 C.F.R. § 41.77(b), filed March 11, 2014, (“PO

1
Hartmut Lierfke and Dan Suciu, “XMill, an Efficient Compressor for
XML Data,” Oct. 1999 (“XMill”).
2
U.S. Patent No. 6,032,197 (issued February 29, 2000) (“Birdwell”).
3
U.S. Patent No. 4,745,559 (issued May 17, 1988) (“Willis”).
4
U.S. Patent No. 5,987,432 (issued November 16, 1999) (“Zusman”).
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Request”)) and submitted a Declaration of Dr. James W. Modestino under
37 C.F.R. § 1.132 (“Modestino Dec.”). Patent Owner also proposed new
claims 47–49. PO Request 5–6.
Requester filed comments pursuant to 37 C.F.R. § 41.77(c) in
response to Patent Owner’s request to reopen prosecution (Third Party
Requester’s Response to Patent Owner’s Request to Reopen Prosecution
Before the Examiner (37 C.F.R. § 41.77(c), filed March 19, 2014, (“3PR
Comments”)) and Declaration Under 37 C.F.R. § 1.132 of Paul C. Clark
(“Clark Dec.”). Requester appears to propose rejections of new claims 47–
49 under 35 U.S.C. § 103(a) as unpatentable over XMill, alone or in
combination with any of Danskin,
5
Sebastian,
6
Carr,
7
XML,
8
or RFC2507.
9

See, e.g., 3PR Comments 21–26. Requester also proposes a rejection of
claim 48 under 35 U.S.C. § 112, 1
st
paragraph as lacking written description
support. 3PR Comments 20.
In accordance with 37 C.F.R. § 41.77(e), the Examiner determined
that “[t]he Decision makes . . . new grounds of rejection” and that “Third
Party Requester rejections for new claims 47-49 are adopted” (Examiner’s
Determination Under 37 C.F.R. § 41.77(d), filed October 10, 2014,
(“Examiner’s Determination”) at 3) (emphasis omitted). Hence, the
Examiner rejects the claims as follows: claim 12 under 35 U.S.C. § 102(b)

5
Danskin, J., “Compressing the X Graphics Protocol,” Jan. 1995,
(“Danskin”).
6
U.S. Pat. No. 6,253,264 B1 (issued June 26, 2001) (“Sebastian”).
7
U.S. Pat. No 5,293,379 (issued March 8, 1994) (“Carr”).
8
XML-Xpress White Paper, December 2000 (“XML”).
9
M. Degermark, et al., “IP Header Compression,” Network Working
Group, Request for Comments: 2507, February 1999 (“RFC2507”).
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as anticipated by XMill; claims 1–5 and 8–10 under 35 U.S.C. § 103(a) as
unpatentable over XMill and Birdwell; claims 5–7 under 35 U.S.C. § 103(a)
as unpatentable over XMill, Birdwell, and Willis; claims 1–8, and 10 under
35 U.S.C. § 103(a) as being unpatentable over XMill and Zusman; claims
47–49 under 35 U.S.C. § 103(a) as being unpatentable over XMill, alone or
in combination with any of Danskin, Sebastian, Carr, XML, or RFC2507;
and claim 48 under 35 U.S.C. § 112, 1
st
paragraph as lacking written
description support.
In response to Examiner’s Determination, Patent Owner filed
Comments in Response to Examiner’s Determination Under 37 C.F.R.
§ 41.77(e), filed November 10, 2014 (“PO Comments on Exr’s Determ.”)
and Requester filed Third Party Requester’s Comments in Response to
Examiner’s Determination Under 37 C.F.R. § 41.77(D), filed November 10,
2014 (“3PR Comments on Exr’s Determ.”). Subsequently, Patent Owner
filed a reply to Requester’s comments (Patent Owner’s Reply to Third Party
Requester’s Comments Under 37 C.F.R. § 41.77(e), filed December 10,
2014 (“PO Reply”)) and Requester filed a reply to Patent Owner’s
comments (Third Party Requester’s Comments in Response to Patent
Owner’s Comments in Response to Examiner’s Determination Under 37
C.F.R. § 41.77(E), filed December 10, 2014 (“3PR Reply”)).
Pursuant to 37 C.F.R. § 41.77(f), the proceeding has been returned to
the Board so that we may reconsider the matter and issue a new decision.
Patent Owner argues that XMill discloses that “[d]ata items are
grouped into containers” and that “[t]here is no indication that” the
“containers” of XMill “apply to, or operate on ‘data packets.’” PO Request
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24. In other words, Patent Owner argues that XMill fails to disclose a
“packet,” as recited in claim 1. PO Request 23. We are not persuaded by
Patent Owner’s argument for at least the reasons set forth by Requester.
3PR Comments 4–11.
Patent Owner argues that the “container” of XMill differs from the
“packet,” as recited in claim 1 because, according to Patent Owner, XMill
supposedly discloses “compressing XML data” and that “XML is a markup
language that defines a set of rules.” PO Request 23–24 (citing Modestino
Dec 32 and S. Holzner, XML Complete, 2 (McGraw-Hill 1998)). We are
not persuaded by Patent Owner’s argument because, even assuming Patent
Owner to be correct that XMill discloses “compressing XML data” and that
“XML is a markup language,” Patent Owner does not explain sufficiently
how this would have indicated to one of skill in the art that the “container”
of XMill differs from the “packet,” as recited in claim 1 or what any such
differences might be.
Patent Owner argues that “[t]here is no indication that the container-
specific encoders in XMill apply to, or operate on ‘data packets.’” PO
Request 24 (citation omitted). Hence, Patent Owner argues that XMill
discloses specific encoders “apply to, or operate on” “containers” but fails to
disclose that the specific encoders “apply to, or operate on” “data packets.”
We are not persuaded by Patent Owner’s argument at least because, even
assuming Patent Owner’s argument to be correct that XMill discloses
encoders that “apply to, or operate on” “containers,” Patent Owner does not
explain sufficiently a difference between the “container” of XMill and the
“packet,” as recited in claim 1, for example.
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According to Patent Owner, Dr. Modestino testifies that “[a] container
is not a ‘packet,’” that “[d]ata items are grouped into containers and each
container is compressed separately,” that “[d]ata values are sent to various
data containers,” that “[c]ontainers are kept in a main memory window of
fixed size,” and that “a container is simply a block of memory that stores
values.” PO Request 24–25 (citing Modestino Dec. ¶ 35). We are not
persuaded by Patent Owner’s arguments at least because none of the cited
statements of Dr. Modestino assert or demonstrate a sufficient difference
between a “container” of XMill and the “packet,” as recited in claim 1, for
example.
Patent Owner argues that one of skill in the art would have understood
that a “packet,” as recited in claim 1, for example, “requires a packet with
structure.” PO Request 19 (citing Modestino Dec. 18). Hence, Patent
Owner argues that the “container” of XMill differs from a “packet,” as
recited in claim 1, because a “container” lacks a “structure” that Patent
Owner alleges is required in a “packet,” as claimed. We are not persuaded
by Patent Owner’s argument at least because Patent Owner does not
demonstrate sufficiently that a “packet,” as recited in claim 1, “requires . . .
structure.”
“Claims are to be given their broadest reasonable interpretation
consistent with the specification, and the language should be read in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re American Academy of Science Tech Center, 367 F.3d 1359, (Fed.
Cir. 2004). “To begin with, the context in which a term is used in the
asserted claim can be highly instructive.” “[T]he claims themselves provide
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substantial guidance as to the meaning of particular claim terms.” Phillips v.
AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005), citing Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir 1996).
Claim 1 recites “recognizing a data field type of a data field in a
packet.” Hence, claim 1 recites a data packet contains data. Claim 1 does
not recite additional characteristics of a “packet.” Specifically, claim 1 does
not recite that a data packet must include “structure.” Thus, based on the
context of the claims themselves, one of ordinary skill in the art would
understand the term “data packet” only to include data.
The Specification “is always highly relevant to the claim construction
analysis. Usually, it is dispositive; it is the single best guide to the meaning
of a disputed term.” Vitronics Corp., 90 F.3d at 1582. In the present case,
Patent Owner does not indicate that the Specification provides an explicit
definition of the term “data packet.” We note that the Specification
discloses “packets having fields” (Abstract). We do not identify, and Patent
Owner does not assert, that the Specification also discloses that a packet
must include a specific “structure.” Hence, one of skill in the art would have
understood, under a broadest reasonable construction and in light of the
Specification that a “packet” includes data but need not contain any specific
“structure.”
Even though extrinsic evidence has been considered “less significant
than the intrinsic record,” the court has also stated that “extrinsic evidence
‘can shed useful light on the relevant art” and that “dictionaries and treatises
can be useful in claim construction.” Phillips, 415 F.3d at 1317–1318
(citing Renishaw PLC v. Marposs Societa per Azioni, 158 F.3d 1243, 1250
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(Fed. Cir. 1998) and Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1344
(Fed. Cir. 2001)). As Patent Owner points out, a “packet” is defined as “a
block of information that is transmitted within a single transfer operation” or
a “unit of information transmitted from one device to another on a network.”
Microsoft Computer Dictionary, 327 (4
th
ed. 1999). A similar definition is
provided in the Authoritative Dictionary of IEEE Standards Terms, 787 (7
th

ed. 2000)—e.g., “a block of information that is transmitted within a single
transfer operation.” We note that these dictionary definitions do not require
the presence of any specific “structure.” Also, these proposed dictionary
definitions are consistent with data, as supported in the Specification.
Hence, we need not consider whether XMill discloses whether the
“container” of XMill contains a specific “structure” or not.
Claim 47 recites that the packet comprises a header. Requester argues
that each of Danskin or Carr discloses this feature. 3PR Comments 22–23.
We agree with Requester. For example, Carr discloses a “packet” that
contains “header data.” Carr 7:29–40. Patent Owner does not explain
sufficiently how this differs from a packet that comprises a header.
Patent Owner argues that none of Birdwell, Willis, or Zusman
discloses a “packet.” PO Request 25–27. We need not consider this issue in
view of the discussion above regarding XMill, Danskin, or Carr.
New claim 49 recites a packet independent encoder. Patent Owner
argues that XMill fails to disclose “packet independence.” PO Request 29.
However, XMill discloses “containers” of data that are compressed
“independently.” XMill 9. In view of XMill’s explicit disclosure of
container “independence,” Patent Owner does not demonstrate a sufficient
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difference between the “independence” of XMill and packet
“independence,” as allegedly recited in the disputed claims.
Patent Owner argues that Dr. Modestino, testifies that “XMill operates
on complete XML files,” that “XMill’s compression scheme is based on a
dictionary derived from at least the entire file,” that “while parsing the input
string, the LZ77 compressor keeps the text seen previously,” and that “XMill
fails to disclose packet independence.” PO Request 29 (citing Modestino
Dec. 46). We are not persuaded by Patent Owner’s arguments for at least
the reasons set forth by Requester. 3PR Comments 14–15. For example,
Patent Owner fails to demonstrate sufficiently that any of Dr. Modestino’s
cited alleged statements show persuasively that the “containers” (or
“packets”) of XMill are not “independent,” particularly in view of the
explicit disclosure in XMill of such “independence,” as previously
discussed.
Patent Owner argues that none of Birdwell, Willis, or Zusman
discloses “packet independence.” PO Request 29 (citation omitted). We
need not consider this issue in view of the discussion above regarding XMill.
Claim 1 further recites “recognizing a data field type of a data field in
a packet.” Similarly, new claim 48 recites “the recognizing comprising only
analyzing data within each data field.” Patent Owner argues that XMill fails
to teach or suggest “recognizing” or “analyzing.” PO Request 31–33 (citing
Modestino Dec.). We are not persuaded by Patent Owner’s argument for at
least the reasons set forth by Requester. 3PR Comments 16–19; “Request
for Inter Partes Reexamination,” filed February 14, 2011 (“Orig. Req.”) 86–
87 (citing XMill 1, 2, 7).
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For example, as Requester explains, XMill discloses that ‘[d]ata items
are grouped into containers, and each container is compressed separately[]
[f]or example, all data items form one container, while all
items form a second container’” and that the data “contains tagged fields.”
See Orig. Req. 86–87 (citing XMill 1–7). In other words, XMill discloses
data being grouped into different “containers” based on data type (e.g., name
or phone) and that different encoders or compressors are applied to the
different “containers.” Hence, XMill discloses that encoders (or
compressors) are selected based on analyses of content (e.g., one encoder
applied to a “name” container while a “different” encoder applied to a
“phone” container). In order to apply the desired encoder to a container of a
desired data type in XMill, some form of “recognition” or “analysis” would
be performed to determine the content of data. Otherwise, a desired encoder
would not be applied to a corresponding container, such “recognition” or
“analysis” not having been performed, and the user in XMill would not be
able to encode (or decode) the data, not knowing the data content or type of
the container to be encoded (or decoded). Hence, we are not persuaded by
Patent Owner’s (and Dr. Modestino’s) argument.
Patent Owner argues that Dr. Modestino testifies that “XMill is
instead directed to a ‘tool for compressing XML data,’” that “XML . . . is a
set of rules,” that “XML data consists of data values that are identified by
tags or attributes,” that there are “three kinds of tokens: tags, attributes, and
data values,” that XMill discloses that “the compression proceeds in three
steps,” and that “XMill relies on the user to specify tag information.” PO
Request 32–33. Based on this alleged testimony of Dr. Modestino, Patent
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Owner argues that “Dr. Modestino concludes that ‘[t]his process of
extracting previously encoded tags . . . does not disclose the active analysis
of individual ‘data packets’ . . . to recognize data types.” Id. at 33 (citing
Modestino Decl. ¶ 61). We are not persuaded by Patent Owner’s arguments
for at least the reasons set forth by Requester. 3PR Comments 16–19.
For example, Patent Owner fails to demonstrate sufficiently that any
of Dr. Modestino’s cited alleged statements (e.g., that XML is a set of rules
or that XMill discloses a tool for compressing XML data), even if assumed
to be true, show persuasively a difference between the “analysis” and
“recognition” of XMill and the disputed claim limitation, as previously
discussed.
Patent Owner argues that none of Birdwell, Willis, or Zusman
discloses “recognizing.” PO Request 33–35. We need not consider this
issue in view of the discussion above regarding XMill.
Patent Owner argues that the District Court did not construe any claim
terms in a related litigation proceeding but that the parties in that proceeding
agreed to the construction of various claim terms. See e.g., PO Request 36–
37. Patent Owner further “requests that the []claim constructions agreed to
by the parties in this reexamination are incorporated by the Examiner and
used to confirm all claims.” PO Request 37. We acknowledge Patent
Owner’s statement that the parties supposedly agreed to the construction of
various claim terms and that the District Court did not construe claim terms
but we do not further consider Patent Owner’s comments in this regard
because Patent Owner does not provide sufficient arguments regarding
construction of claim terms under a broadest reasonable construction or
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(with the exception of the previously discussed issues) the relevance of any
alleged claim construction to specific issues.
As indicated above, Requester also proposes a rejection of claim 48
under 35 U.S.C. § 112, 1
st
paragraph as lacking written description support.
In particular, Requester argues that claim 48 recites that “the analyzing of
the data within each data field is distinct from analyzing based on a
descriptor that is indicative of the data type of the data within the data
block” but that the Specification fails to disclose this claim limitation. PO
Comments 20.
Patent Owner argues that “Application No. 10/016,355, which issued
as U.S. Patent No. 6,[6]24,761 (‘the ’761 patent’)” provides support for the
disputed claim limitation and that the ’761 patent is incorporated by
reference. PO Comments on Exr’s Determ. 16–17 (citing the ’761 patent
16:26–32).
Even if a specific portion of the Specification of the ’761 patent that is
now desired is “fully incorporated” (Spec. 6:12–13) into the ’568 patent
merely by a generalized statement regarding the entire Specification of the
’761 patent (or corresponding application), we note that the cited portion of
the ’761 patent merely discloses a “recognition module” that “analyzes the
incoming data stream to recognize data types . . . that may be indicative of
. . . data type . . . or the . . . algorithm . . . applied.” ’761 patent 16:26–32.
Patent Owner does not demonstrate sufficiently that the Specification (or the
’761 patent, supposedly incorporated by reference) also discloses that
analyzing of the data within each data field is distinct from analyzing based
on a descriptor that is indicative of the data type of the data within the data
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block. Hence, the Examiner did not err in rejecting claim 48 as lacking
written description support.
Patent Owner does not provide additional arguments in support of
claims 1–10, 12, and 47–49. The Examiner did not err in rejecting claims 1–
10, 12, and 47–49.
DECISION
We affirm the Examiner’s rejection of claim 12 under 35 U.S.C.
§ 102(b) as anticipated by XMill; claims 1–5 and 8–10 under 35 U.S.C.
§ 103(a) as unpatentable over XMill and Birdwell; claims 5–7 under 35
U.S.C. § 103(a) as unpatentable over XMill, Birdwell, and Willis; claims 1–
8, and 10 under 35 U.S.C. § 103(a) as being unpatentable over XMill and
Zusman; claims 47–49 under 35 U.S.C. § 103(a) as being unpatentable over
XMill, alone or in combination with any of Danskin, Sebastian, Carr, XML,
or RFC2507; and claim 48 under 35 U.S.C. § 112, 1
st
paragraph as lacking
written description support.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

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AFFIRMED

Patent Owner:

STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005

Third Party:

BAKER BOTTS L.L.P.
910 LOUISIANA STREET
ONE SHELL PLAZA
HOUSTON, TX 77002