Hybir, Inc.

Patent Trials and Appeals Board

Dec 2, 2021

IPR2020-01038 (P.T.A.B. Dec. 2, 2021)

Trials@uspto.gov Paper 37
571-272-7822 Entered: December 2, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

VEEAM SOFTWARE CORP.,
Petitioner,

v.

HYBIR INC.,
Patent Owner.
____________

IPR2020-01038
Patent 8,051,043 B2
____________

Before BART A. GERSTENBLITH, GARTH D. BAER, and
JOHN R. KENNY, Administrative Patent Judges.

KENNY, Administrative Patent Judge.

DECISION
Final Written Decision
Determining Some Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
Veeam Software Corporation (“Petitioner”) filed a Petition to institute
an inter partes review of claims 30–40 (the “challenged claims”) of U.S.
Patent No. 8,051,043 B21 (Ex. 1001, the “’043 patent,” “challenged patent”)
pursuant to 35 U.S.C. § 311 et seq. Paper 2 (“Pet.”). Hybir, Inc. (“Patent
Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). With our
authorization, Petitioner filed a Reply to the Preliminary Response (Paper 9,
“Prelim. Reply”), and Patent Owner filed a Sur-reply (Paper 11, “Prelim.
Sur-reply”).
On December 4, 2020, we instituted inter partes review of all
challenged claims. Paper 14 (“Institution Decision,” “Inst. Dec.”).
Patent Owner filed a Patent Owner’s Response (Paper 19, “PO Resp.”).
Petitioner filed a Reply to Patent Owner’s Response (Paper 22, “Pet.
Reply”), and Patent Owner filed a Sur-reply (Paper 31,2 “Sur-reply”).
Pursuant to our request (Paper 29), the parties also filed papers
regarding the ordinary meaning of the term inventory. Petitioner filed its
Initial Paper Regarding Ordinary and Customary Meaning of Inventory
(Paper 33, “Pet. Initial Paper”) and its Responsive Paper Regarding the
Ordinary and Customary Meaning of Inventory (Paper 34, “Pet. Resp.
Paper”). Patent Owner filed its Initial Paper Regarding Ordinary and

1 The application that issued as the ’043 patent was filed on May 4, 2007,
and claims the benefit of a provisional application filed on May 5, 2006.
Ex. 1001, codes (22), (60).
2 Patent Owner initially filed Paper 26 as its Sur-reply. Patent Owner
subsequently sought and was given permission to file Paper 31 as its
corrected Sur-reply. Paper 30.
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Customary Meaning of Inventory (Paper 32, “PO Initial Paper”) and its
Reply to Petitioner’s Initial Paper (Paper 35, “PO Resp. Paper”).
At the parties’ requests (Papers 24, 25), an oral hearing was held on
September 23, 2021, a transcript of which is included in the record.3
Paper 36 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. For the reasons discussed
below, we determine that Petitioner has shown, by a preponderance of the
evidence, that claims 30, 32, 33, 35, and 37–40 are unpatentable, but has not
proven, by a preponderance of the evidence, that claims 31, 34, and 36 are
unpatentable.
A. Related Matters
The parties identify the following related, district court litigation:
Hybir, Inc. v. Veeam Software Corp., No. 1-20-cv-10329 (D. Mass.). Pet. 3;
Paper 5, 2.
Regarding PTAB proceedings, in IPR2020-01037, Petitioner filed a
petition challenging claims 1–29 and 34 of the ’043 patent. In IPR2020-
01039 and IPR2020-01040, Petitioner filed petitions challenging related
patents.
B. Challenged Patent
The ’043 patent “relates generally to computer data rights and data
identity.” Ex. 1001, 1:6–11. The ’043 patent indicates that a common
inefficiency of most prior art backup techniques is that they rely on taking an
initial image or full backup of the entire contents of an operating system. Id.

3 The oral hearings for this proceeding and three related proceedings
(IPR2020-01037, IPR2020-01039, and IPR2020-01040) were held together
because many of the issues presented by the parties overlap. Paper 27
(Order Granting the Parties’ Requests for Oral Hearing), 1.
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at 1:39–42. Another purported inefficiency is that many systems will
maintain multiple copies of the same files. Id. at 2:1–3. An object of the
’043 patent is “to provide a more efficient method and system for managing
files, file rights, and file identity.” Id. at 2:12–14. Figure 1 of the ’043
patent is reproduced below:

Figure 1 above shows communication system 100 with network 104,
communication devices 108, enterprise server 112, backup server 116, and
data storage 128. Ex. 1001, 4:44–50. “[B]ackup server 116 is characterized
by the ability to manage a file backup system for a group of users, each of
which may be associated with one or more communication devices 108.” Id.
at 5:23–27. Further, in certain embodiments, “backup server 116 is provided
with a backup application 124 to enable users to backup files from their
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respective communication devices 108 to either the backup server 116 or to
the data storage 128.” Id. at 5:27–31.
Figure 2 of the ’043 patent is reproduced below:

Figure 2 above is a block diagram of communication device 108. Ex. 1001,
3:51–53. Communication device 108 includes data storage 220, which
includes backup application 228, which can backup files from
communication device 108 to data storage 128. Id. at 7:64–8:1. Backup
application 228 includes scanning module 232 and file analysis module 236.
Id. at 8:1–3. Scanning module 232 “perform[s] an initial scan of local files
to make a quick determination as to whether file data has been changed,
updated, added, etc.” Id. at 8:4–9. File analysis module 236 “perform[s] a
more in-depth analysis of files that the scanning module 232 has identified
as possibly changed, updated, added, and so on.” Id. at 8:18–21.
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Figure 3 of the ’043 patent is reproduced below:

Figure 3 above shows data structure 300, which is used to manage files and
data structures in a backup operation. Ex. 1001, 9:32–35. The data structure
includes descriptor generating algorithm field 312 and descriptor 316. Id. at
9:35–38. Each stored electronic file may have a descriptor associated with
it. Id. at 10:23–24. Communication device 108 and backup server 116 can
reference a common file by independently generating a descriptor for the file
using an agreed upon descriptor generating algorithm. Id. at 10:28–30. The
“descriptor may be a combination of file metadata (e.g., file storage location
and other bibliographic information pertaining to the file) and cryptographic
signature or signatures.” Id. at 2:37–39.
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Figure 5 of the ’043 patent is shown below:

Figure 5 above shows a group-based backup data structure, which is
typically maintained on backup server 116. Ex. 1001, 10:61–65. With this
structure, backup server 116 maintains inventories 504 for each user
account. Id. at 10:66–11:1. List 512 can specify the files maintained at the
backup server 116 using descriptors, which allows the backup server to
reference the list using descriptor mapping. Id. at 11:16–22.
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Figure 6 of the ’043 patent is reproduced below:

Figure 6 above depicts a backup routine. Ex. 1001, 3:62–64. In step 604,
media is selected for backup at communication device 108 or at enterprise
server 112. Id. at 12:12–15. In step 636, communication device 109 or
enterprise server 112 upload a compressed inventory of their files to backup
server 116. Id. at 13:14–16. In steps 640 and 644, backup server 116
decompresses the inventory and compares it to a stored descriptor list. Id. at
13:16–25. In steps 648 and 652, backup server 116 identifies data not yet
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stored on backup server 116 and returns a list of the data that needs to be
uploaded. Id. at 13:25–37.
C. Challenged Claims
Petitioner challenges claims 30–40. Pet. 1. Claims 30, 35, and 40 are
independent. Ex. 1001, 22:9–24:35. Claim 30, with bracketed identifiers
provided by Petitioner for claim limitations, recites:
30. A method, comprising:
[30A] receiving a request from a remote storage medium to
perform a restore operation;
[30B.1] referencing a backup inventory for the remote storage
medium, wherein the backup inventory for the remote storage
medium comprises a list of descriptors associated with electronic
data that was resident on the remote storage medium at a point in
time prior to receiving the request to perform a restore operation,
[30B.2] wherein the electronic data comprises actual file data,
and wherein a descriptor in the list of descriptors comprises a
cryptographic signature computed with the actual file data such
that the actual file data is uniquely identified by the descriptor;
[30C] retrieving selected electronic data from the backup data
storage medium having a descriptor that matches descriptors in
the list of descriptors associated with the remote storage medium;
and
[30D] providing the selected electronic data to the remote storage
medium.
Ex. 1001, 22:9–28; Pet. 75.
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D. Asserted Challenges to Patentability and Prior Art
Petitioner challenges claims 30–40 based on the grounds in the table
below.
Claim(s)
Challenged 35 U.S.C. § Reference(s)
30–37, 39 103 Field4
38 103 Field, Anderson5
40 103 Field, Anderson, Coombs6
Pet. 5.
Petitioner relies on the Declaration of Dr. Prashant Shenoy, Ph.D.
(Ex. 1002) and the Declaration of Dr. Prashant Shenoy, Ph.D in Support of
Petitioner’s Reply to Patent Owner’s Response (Ex. 1024). Patent Owner
relies on the Declaration of Dr. Jon Weissman, Ph.D. in Support of Patent
Owner’s Response (Ex. 2008).
E. Level of Skill in the Art
To determine the level of an ordinarily skilled artisan, various factors
may be considered, including the “type of problems encountered in the art;
prior art solutions to those problems; rapidity with which innovations are
made; sophistication of the technology; and educational level of active
workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
(quotation omitted).
Petitioner, citing Dr. Shenoy’s testimony, proposes that an ordinarily
skilled artisan at the time of the invention would have had “a B.S. degree in

4 US 2006/0212439 A1, published Sept. 21, 2006 (Ex. 1004).
5 US 2005/0114614 A1, published May 26, 2005 (Ex. 1005).
6 US 2004/0030852 A1, published Feb. 12, 2004 (Ex. 1006).
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Computer Science, Computer Engineering, Electrical Engineering, or an
equivalent field, as well as at least 3–5 years of academic or industry
experience in the fields of data backup, data restore, data replication, and/or
data synchronization.” Pet. 10 (citing Ex. 1002 ¶¶ 22–23).
As we noted in the Institution Decision, Patent Owner’s Preliminary
Response proposed a level of ordinary skill in the art that was very similar to
Petitioner’s proposal. Inst. Dec. 20 (citing Prelim. Resp. 21). On the
preliminary record at that time, we found both parties’ proposals consistent
with the level of ordinary skill in the art reflected by the prior art of record.
Id. at 20–21 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich,
579 F.2d 86, 91 (CCPA 1978)). And, on that record, we found that one of
ordinary skill in the art at the time of the invention would have a Bachelor of
Science degree in Computer Science, Computer Engineering, Electrical
Engineering, Software Engineering, or an equivalent field, as well as at least
three to five years of academic or industry experience in the fields of data
storage, data backup, data restoration, data replication and deduplication,
and/or data synchronization. Id. at 21.
In its Patent Owner Response, Patent Owner, relying on
Dr. Weissman’s testimony, appears to adopt the same level of ordinary skill
in the art set forth in the Institution Decision, without explicitly stating so.
PO Resp. 21 (citing Ex. 2008 ¶ 18). In particular, Patent Owner proposes,
via Dr. Weissman’s testimony, that a person of ordinary skill in the art at the
time of the invention would have:
at least have a Bachelor of Science degree in Computer
Science, Computer Engineering, Electrical Engineering,
Software Engineering, or an equivalent field, as well as at least
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3–5 years of academic or industry experience in the fields of
data storage, data backup, data restoration, data replication and
deduplication, and/or data synchronization.
Ex. 2008 ¶ 18.
As reflected above, Patent Owner agrees with our preliminary finding
regarding the level of ordinary skill in the art and Petitioner does not address
our preliminary finding in its Reply. Accordingly, we see no reason to
disturb that finding, and, therefore, we maintain and reaffirm that one of
ordinary skill in the art at the time of the invention would have had a
Bachelor of Science degree in Computer Science, Computer Engineering,
Electrical Engineering, Software Engineering, or an equivalent field, as well
as at least three to five years of academic or industry experience in the fields
of data storage, data backup, data restoration, data replication and
deduplication, and/or data synchronization.
II. CLAIM CONSTRUCTION
In this inter partes review, claims are construed using the same claim
construction standard that would be used to construe the claims in a civil
action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b) (2019). The
claim construction standard includes construing claims in accordance with
the ordinary and customary meaning of such claims as understood by one of
ordinary skill in the art at the time of the invention. See id.; Phillips v. AWH
Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). In construing
claims in accordance with their ordinary and customary meaning, we take
into account the specification and prosecution history. Phillips, 415 F.3d at
1315–17.
If the specification “reveal[s] a special definition given to a claim
term by the patentee that differs from the meaning it would otherwise
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possess[,] . . . the inventor’s lexicography governs.” Phillips, 415 F.3d at
1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
(Fed. Cir. 2002)). Another exception to the general rule that claims are
given their ordinary and customary meaning is “when the patentee disavows
the full scope of a claim term either in the specification or during
prosecution.” Uship Intellectual Props., LLC v. United States, 714 F.3d
1311, 1313 (Fed. Cir. 2013) (quoting Thorner v. Sony Computer Entm’t Am.,
LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)).
Additionally, only terms that are in controversy need to be construed,
and these need be construed only to the extent necessary to resolve the
controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
803 (Fed. Cir. 1999) (holding that “only those terms need be construed that
are in controversy, and only to the extent necessary to resolve the
controversy”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of
an inter partes review).
In the Institution Decision, we noted that neither party proposed any
claim terms for construction at that stage of the proceeding, and we did not
construe any claim terms expressly as none of the terms were in dispute.
Inst. Dec. 22. In the briefing following institution, Patent Owner proposed a
construction for the term “inventory,” see, e.g., PO Resp. 21–28, and it
became clear that the parties dispute the meaning of the term. Accordingly,
we address the parties’ proposed constructions for “inventory” and the
arguments they present for those constructions.
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A. The Parties’ Proposed Constructions for “Inventory”
Patent Owner contends that “inventory” should be construed as
“electronic data that reflects the current state of a storage medium and
includes a list of files on the storage medium[,] at least one descriptor
identifying the file(s)[,] and the directory structure of the file(s).”7 PO
Resp. 21 (citing Ex. 1001, 8:11–41, 15:12–24; Ex. 2008 ¶ 68); PO Initial
Paper 1.
Petitioner contends that “inventory” should be construed as “an
itemized list of electronic data.” Pet. Reply 1–2; Pet. Initial Paper 1. In
particular, Petitioner contends that “inventory” should be “afforded its
ordinary and customary meaning,” (Pet. Reply 1–2 (citing Pet. 10)), which,
as recited in the challenged claims, is “an itemized list of electronic data.”
(Pet. Initial Paper 1).
B. The Parties’ Arguments
1. Patent Owner’s Response8
As set forth above, Patent Owner contends that “inventory” should be
construed as “electronic data that reflects the current state of a storage
medium and includes a list of files on the storage medium[,] at least one
descriptor identifying the file(s)[,] and the directory structure of the file(s).”
PO Resp. 21 (citing Ex. 1001, 8:11–41, 15:12–24; Ex. 2008 ¶ 68). Patent
Owner asserts that the Specification explains that “the file inventory reflects

7 Patent Owner’s Initial Paper added two commas to the proposed
construction, which help identify the specific aspects of Patent Owner’s
proposal. PO Initial Paper 1. Whether or not the commas are included, the
analysis below is effectively the same.
8 As noted above, Patent Owner’s Response was the first instance either
party proposed an express construction of “inventory.”
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the current state of the drive and may include a description of the
hierarchical structure of the drive as well as markers identifying sizes of
chunks of files.” Id. at 21–22 (citing Ex. 1001, 8:11–13, 13:3–15, 15:10–24;
Ex. 2008 ¶ 69). Patent Owner contends that “[t]he electronic data that is part
of the inventory includes raw data and metadata” (id. at 22 (citing Ex. 1001,
8:27–29; Ex. 2008 ¶ 69)), and “[t]he unique descriptor stored in an inventory
is generated from raw data and metadata of a file or portion of a file and the
directory structure of the same file / portion of the same file” (id. (citing
Ex. 1001, 8:29–31, 15:10–11; Ex. 2008 ¶ 69)).
Patent Owner relies on Figure 7 of the ’043 patent, which “is a flow
chart depicting aspects of a restore routine.” Ex. 1001, 3:65–67; see PO
Resp. 22 (citing Ex. 1001, Fig. 7; Ex. 2008 ¶ 69). Patent Owner contends
that Figure 7 and the description thereof in the Specification support its
construction of inventory. PO Resp. 22–24. In particular, Patent Owner
asserts that “a backup inventory stores descriptors, which correspond to the
electronic data marked for restoration, as well as directory structures for the
restored data.” Id. at 23 (citing Ex. 1001, 15:10–11). Patent Owner notes
that the Specification states that after the descriptors are marked for
restoration, the “‘restore application continues by determining if any
directories in the inventory are not present in the target media.’” Id.
(quoting Ex. 1001, 15:12–15). Patent Owner states that “[i]f there are
directories stored in the backup inventory and not in the target media, then
those directories are created for the target media.” Id. (citing Ex. 1001,
15:15–17). Patent Owner refers to the remainder of the restore process,
contending that “the backup inventory provides enough data to allow for a
complete restore of a client device.” Id. at 24 (citing Ex. 2008 ¶ 70).
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Additionally, Patent Owner contends that its proposed construction “is
consistent with [inventory’s] ordinary meaning.” PO Resp. 24 (citing
Ex. 2008 ¶ 71). In particular, Patent Owner points to two extrinsic
dictionary definitions of “inventory,” which define “inventory” as “a
complete list of items such as property, goods in stock, or the contents of a
building” and “a detailed list of all the things in a place,” and an extrinsic
definition of “data backup inventory” as a “detailed and often descriptive
catalog, aggregate view or list of relevant Data Backup Items that is often
somewhat important, sanctioned or approved in its nature.” Id. (citing
Ex. 2012 (Google webpage showing definition of “inventory” from “Oxford
Languages”), 1; Ex. 2013 (webpage showing definition of “inventory” from
the Cambridge English Dictionary), 1; Ex. 2014 (webpage showing
definition of “data backup inventory” from The International Foundation for
Information Technology), 1; Ex. 2008 ¶¶ 71–72)).
Patent Owner contends that Petitioner and Dr. Shenoy assert that
“inventory” can consist of “a list of ‘signatures corresponding to the one or
more selected files for backup.’” PO Resp. 24 (citing Pet. 31); id. at 25–26
(quoting Ex. 2015 (Deposition Transcript of Dr. Shenoy), 97:18–98:13,
98:24–100:2). Patent Owner asserts that Petitioner’s construction “is
contradicted by the intrinsic evidence including the claim language itself”
because the claims “clearly and repeatedly use the terms inventory and list in
different ways.” Id. at 26 (citing Ex. 2008 ¶ 76). Although neither Patent
Owner nor Dr. Weissman explains the different use of “inventory” and
“list,” Patent Owner points to claims 1and 30 of the ’043 patent, noting that
the following language from claims 1 and 30, respectively, makes clear that
“a list of descriptors’ is part of, but not identical to the inventory:
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“comparing . . . the at least one descriptor of the first inventory to a list of
descriptors associated with a second inventory of electronic data” and
“referencing a backup inventory for the remote storage medium, wherein the
backup inventory . . . comprises a list of descriptors associated with
electronic data that was resident on the remote storage medium . . . wherein
the electronic data comprises actual file data, and wherein a descriptor in the
list of descriptors comprises a cryptographic signature computed with the
actual file data.” Id. (citing Ex. 2008 ¶ 76; Ex. 1001, claims 1 and 30).
Additionally, Patent Owner asserts that “Dr. Shenoy agreed that additional
data about the current state of the drive would need to be provided from the
client device to the backup server at some point.” Id. at 26–27 (citing
Ex. 2015, 45:3–15, 46:11–23).
Further, Patent Owner contends that the “use of the language
‘associated with’ indicates that there are more than just a list of descriptors
for an inventory of electronic data, e.g., directory structure of the electronic
data.” PO Resp. 27 (citing Ex. 2008 ¶ 77). And, Patent Owner contends,
because the ordinary meaning of “inventory” includes the terms “detailed”
and “complete,” the extrinsic evidence “does not support Dr. Shenoy’s
construction of inventory as merely an ‘itemized list.’” Id. (citing Ex. 2008
¶ 77). Patent Owner further asserts that its construction “is consistent with
the embodiments described and claimed in the ’043 Patent, in which
inventories are transmitted between the communication device and backup
server to determine which files to backup or restore in view of the current
state of the drive on the communication device.” Id. at 27–28 (citing
Ex. 1001, claims 30, 31, 35, 36, 40; Ex. 2008 ¶ 78).
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2. Petitioner’s Reply
In its Reply, Petitioner contends that “inventory” should be “afforded
its ordinary and customary meaning” and that Patent Owner propounds “an
improperly narrow construction of the term ‘inventory,’ purporting to import
four separate requirements into this single term.” Pet. Reply 1–2. In
particular, Petitioner asserts that Patent Owner’s construction seeks to
require that an inventory: (1) reflect the current state of a storage medium,
(2) include a list of files on the storage medium, (3) include at least one
descriptor identifying the file(s), and (4) include the directory structure of
the file(s). See id. at 2 (citing Ex. 1025, 39:13–40:13; PO Resp. 21).
First, Petitioner contends that “[i]mportation of these four limitations
is improper . . . because the claims themselves define the ‘inventory.’” Pet.
Reply 2 (citations omitted).
Second, Petitioner argues that Patent Owner’s construction “is also
inconsistent with the ’043 patent specification, which provides no definition
for the term ‘inventory’ nor any specific requirements, much less the four
propounded by” Patent Owner. Pet. Reply 2–3 (citing Ex. 1024 ¶ 9).
Petitioner contends that “the specification uses the term as an open-ended
construct, merely providing examples of what data may be included in an
inventory—not what must be.” Id. at 3 (citing Ex. 1001, 8:31–34, 11:11–15;
Ex. 1024 ¶¶ 9, 12–13). Petitioner provides additional discussion of each
clause in Patent Owner’s proposed construction, arguing that each is
improper in light of the Specification. See id. at 4–15.
Third, Petitioner asserts that Patent Owner “cannot manufacture a
construction based on nothing more than cherry-picked extrinsic evidence
and unsupported expert testimony.” Pet. Reply 3. Petitioner contends that
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even Patent Owner’s “carefully-selected dictionary definitions do not
support [Patent Owner’s] proposed construction” because “[n]one of the four
proposed requirements are expressed or implied by the words ‘detailed’ or
‘complete.’” Id. (citing Ex. 1024 ¶¶ 10–11). Petitioner further argues that
Patent Owner “expressly ignores that [Dr. Shenoy’s interpretation of
inventory as an itemized list] is derived from the Merriam-Webster
dictionary, which defines ‘inventory’ as ‘an itemized list of current goods or
assets.’” Id. at 3–4 (emphasis omitted) (citing Ex. 1002 ¶ 74, 176, Ex. 1019
(The Merriam-Webster Dictionary), 384; Ex. 1024 ¶ 11).
Further, Petitioner asserts that Patent Owner’s “proposed construction
fails at almost every canon of claim construction: it is confusing, makes
optional information a requirement, duplicates and renders superfluous claim
language, and conflicts with the doctrine of claim differentiation.” Pet.
Reply 4. Instead, Petitioner contends that “inventory” should be construed
in accordance with its ordinary meaning. Id. (citations omitted).
3. Patent Owner’s Sur-reply
In its Sur-reply, Patent Owner contends that “Petitioner incorrectly
focuses the weight of its argument on the linguistic aspects of Patent
Owner’s claim construction of the term ‘inventory’ rather than the
fundamental principles of how one of ordinary skill in the art would have
understood the term based on the specification and claims.” PO Sur-reply 1.
Patent Owner asserts that it “never characterized its construction as having
. . . four requirements nor argued they were entirely independent of one
another.” Id. Patent Owner contends that “[e]ach aspect of its construction
adds meaning while at the same time possibly overlapping to some extent
with other aspects.” Id. at 2.
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In particular, Patent Owner contends that “nothing precludes some
potential overlap between portions of a construction. Here, for example, the
list of file(s) and the directory structure of the file(s) may be useful, but not
necessarily sufficient, in determining the current state of the storage
medium.” PO Sur-reply 3. Patent Owner asserts that its construction
“captures the data needed in the inventory according to the specification to
achieve” the requirements of the claimed deduplication and restoration
processes. Id. at 4. Patent Owner contends that its construction is “based on
the fundamental principle of giving claims their ordinary and customary
meaning that would have been accorded by a person of ordinary skill in the
art.” Id. (citation omitted). Additionally, Patent Owner contends that
“patent specifications often use the word ‘may’ even in reference to
requirements.” Id. Patent Owner walks through each of the four aspects of
its construction in response to Petitioner’s arguments. Id. at 5–10.
4. Initial and Responsive Papers
In addition to the information provided by the parties in the papers
discussed above, each party filed an Initial Paper and Responsive Paper in
response to our request for each party to set forth “its contentions regarding
the ordinary and customary meaning of the term ‘inventory’ as that term is
used in the challenged claims.’” Paper 29, 1. In its Initial Paper, Petitioner
contends that “the ordinary and customary meaning of the term ‘inventory,’
as recited in the challenged claims, is ‘an itemized list of electronic data.’”
Pet. Initial Paper 1. Petitioner contends that the use of “inventory” in the
Specification is consistent with the dictionary definition of “inventory” as
“an itemized list of current goods or assets.” Id. (quoting Ex. 1019, 384)
(citing Ex. 1024 ¶ 8). Petitioner also asserts that Patent Owner’s cited
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dictionary definitions “further confirm this understanding.” Id. at 1–2
(citing Exs. 2012–2014).
Additionally, Petitioner reiterates that “[t]he term ‘inventory’ does not
define, describe, or limit the contents of the inventory itself; rather, those
limitations are provided by each challenged claim, which describe[s] what
information the ‘inventory’ must contain.” Pet. Initial Paper 2. Petitioner
contends that “[n]othing, in either the extrinsic or intrinsic evidence,
demands that the term ‘inventory’ must reflect a certain amount or type of
data, or take on any particular form,” although the claims “do provide
additional details.” Id. (citing Pet. Reply 3–4; Ex. 1024 ¶¶ 8–13).
In its Initial Paper, Patent Owner contends that its construction “is
consistent with the ordinary and customary meaning of the term
‘inventory.’” PO Initial Paper 1. Patent Owner offers six exemplary
dictionary definitions of “inventory” that it contends reflect that “inventory”
is “more than just a list.” Id. at 1–2. In particular, each of Patent Owner’s
dictionary definitions includes a version of the phrase “a detailed [or
complete] list.” Id. at 1; see id. at 2 (noting that “inventory” would have
been understood as “a ‘complete,’ ‘detailed,’ and ‘often descriptive’ list
which includes other data about the items and/or information identified in
the inventory”). Patent Owner asserts that “[t]he exact nature of the other
data kept in a particular inventory would depend on the nature of the items
contained in the inventory, as these definitions reflect.” Id. at 2.
Additionally, Patent Owner explains that the “elements of the
inventories in the claims are recited to explain which data or storage medium
is being described by the inventory and not to add limitations to what is in
the inventory, as Petitioner suggests.” PO Initial Paper 3. For example,
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Patent Owner points to an element of claim 10 of the ’545 patent, 9 which
recites “generating a first inventory for the first set of files, wherein the first
inventory reflects a current state of the first remote storage medium, and
wherein the first inventory includes the cryptographic signature values
generated for each file in the first set of files.” See PO Initial Paper 2–4.
Patent Owner contends that the first wherein clause “informs the reader that
the current state in the first inventory is for the first remote storage medium
and not a different storage medium” and that the second wherein clause
“establishes [that the cryptographic signature values] are generated for the
first set of files as opposed to a different set of files.” Id. at 4.
In its Responsive Paper, Petitioner contends that Patent Owner “never
actually explains what the ordinary and customary meaning of ‘inventory’
is” and instead relies on “‘exemplary’ dictionary definitions for the vague
proposition that ‘the ordinary and customary meaning of “inventory” is more
than just a list.’” Pet. Resp. Paper 1. Petitioner asserts, however, that none
of the definitions support Patent Owner’s argument because none define
how much “more” is needed for a list to be considered an “inventory” nor do
any set forth the numerous requirements included in Patent Owner’s
proposed construction. Id. Petitioner explains that “[c]onsistent with these
definitions, an ‘inventory’ is a specific type of list that accounts for all items
being inventoried, whether that be files selected for backup, files present on
a backup server, or—in a different context—items in a grocery store.” Id.
Petitioner asserts that “[t]he very purpose of an inventory is to account for
each subject item, which is why Patent Owner’s cited dictionaries define

9 U.S. 9,037,545 B2, which is a continuation of the ’043 patent and is
challenged in, and is Exhibit 1001 in, IPR2020-01039.
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‘inventory’ as an ‘itemized,’ ‘detailed,’ or ‘complete’ list of items.” Id.
Petitioner contends, however, that “those dictionaries contemplate what
[P]atent Owner ignores: the form in which those items are represented may
vary, and so the ordinary and customary meaning of the term ‘inventory’ in
no way requires use of any particular attributes to represent the subject
items.” Id. at 1–2 (citing Pet. Initial Paper 2–3).
Additionally, Petitioner contends that Patent Owner’s citations to the
Specification “do not suggest a different meaning.” Pet. Resp. Paper 2.
“Rather, consistent with the ordinary and customary meaning provided by
Petitioner, the [’043] patent allows for various different types of information
to be present within an inventory.” Id. (citations omitted). Particularly,
Petitioner contends that the Specification explains that an inventory may
include certain information associated with the inventoried items, but that
does not mandate that such information is “inherent within the meaning of
‘inventory.’” Id. (citations omitted).
In its Responsive Paper, Patent Owner contends that Petitioner’s
construction of inventory “reads all meaning out of th[e] word.” PO Resp.
Paper 1. Patent Owner asserts that the claims and Specification contradict
any argument that an “inventory” is the same as a list. Id. Additionally,
Patent Owner asserts that “Petitioner’s argument is blatantly inconsistent
with the ordinary and customary meaning of the term ‘inventory’ as set forth
in various dictionaries as including a ‘detailed,’ ‘complete,’ and ‘often
descriptive’ set of data.” Id. at 2 (citing Exs. 2012–2014). And, Patent
Owner contends that its construction is “supported by both the extrinsic
evidence and the patent[ itself] as including specific types of additional and
detailed information about the items.” Id.
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C. Discussion
Above, we set forth the standard that applies in this proceeding, and
we reiterate that “[t]he words of a claim are generally given their ordinary
and customary meaning as understood by a person of ordinary skill in the art
when read in the context of the specification and prosecution history.”
Thorner, 669 F.3d at 1365 (citing Phillips, 415 F.3d at 1313). “There are
only two exceptions to this general rule: 1) when a patentee sets out a
definition and acts as his own lexicographer, or 2) when the patentee
disavows the full scope of a claim term either in the specification or during
prosecution.” Id. (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
1576, 1580 (Fed. Cir. 1996)). In this case, neither party contends that either
exception to the general rule of construing claim terms in accordance with
their ordinary and customary meaning applies. We agree with the parties
that the term “inventory” should be given its plain and ordinary meaning
because the patentee did not act as his own lexicographer by defining the
term “inventory” and did not disavow the full scope of the term “inventory.”
The parties disagree, however, as to the ordinary and customary meaning of
“inventory.” Before turning to the parties’ particular disagreements, we
recognize where the parties’ proposed constructions agree. In particular, the
parties agree, as do we, that the ordinary and customary meaning of
“inventory” includes the terms “electronic data” and “list.” Below, we
address the disputed portions of the parties’ proposed constructions, starting
with Patent Owner’s.
1. Patent Owner’s Proposed Construction
Patent Owner’s proposed construction has four aspects. Specifically,
with that proposed construction, inventory is electronic data that (i) reflects
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the current state of a storage medium and (ii) includes a list of files on the
storage medium (iii) includes at least one descriptor identifying the file(s)
and (iv) includes the directory structure of the file(s). PO Resp. 21 (citing
Ex. 1001, 8:11–41, 15:12–24; Ex. 2008 ¶ 68); PO Initial Paper 1. We
examine each aspect of Patent Owner’s proposed construction.
a. Reflects the Current State of a Storage Medium
The first aspect of Patent Owner’s proposed construction is that an
“inventory” “reflects the current state of a storage medium.” PO Resp. 21;
PO Initial Paper 1. To support this argument, Patent Owner relies on the
Specification of the ’043 patent and, particularly, the descriptions of an
inventory in column 8. PO Resp. 21–22; Sur-reply 6. This portion of the
Specification describes the file inventory that scanning module 232 creates
when it scans a particular drive or storage medium. Ex. 1001, 8:9–34. In
particular, in describing Figure 2, the Specification in column 8 states, “[b]y
scanning a particular drive or similar storage medium, the scanning
module 232 is capable of creating a file inventory for the selected drive. The
file inventory reflects the current state of the drive and may include a
description of the hierarchical structure of the drive.” Id. at 8:9–13
(emphasis added); see also id. at 8:31–34.
This disclosure describes a particular trait of the file inventory
produced by scanning module 232. This disclosure does not indicate that the
term “inventory” should be limited to the file inventory created by scanning
module 232, and it would be inappropriate to read a limitation regarding the
file inventory produced by scanning module 232 from the Specification into
the claim term “inventory.” See Liebel-Flarsheim Co. v. Medrad, Inc., 358
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F.3d 898, 904 (Fed. Cir. 2004) (“improper to read a limitation from the
specification into the claims.”).
Additionally, neither the claim language nor the dictionary definitions
cited by Patent Owner support construing “inventory” itself as reflecting the
current state of a storage medium.
Patent Owner cites to the language of claims 1 and 30. PO Resp. 26.
Claim 1 recites:
receiving, at a backup server, a first inventory of electronic data
stored on a first remote storage medium, wherein the electronic
data comprises actual file data to be backed-up from the first
remote storage medium, wherein the first inventory comprises at
least one descriptor and wherein the at least one descriptor
comprises a cryptographic signature computed based on the
actual file data.
Ex. 1001, 18:33–64. Claim 30 recites:
referencing a backup inventory for the remote storage medium,
wherein the backup inventory for the remote storage medium
comprises a list of descriptors associated with electronic data that
was resident on the remote storage medium at a point in time
prior to receiving the request to perform a restore operation,
wherein the electronic data comprises actual file data, and
wherein a descriptor in the list of descriptors comprises a
cryptographic signature computed with the actual file data such
that the actual file data is uniquely identified by the descriptor.
Id. at 22:9–28. The claim language for both claims reflects that the first
“inventory” or backup inventory is “of electronic data stored on a first
remote storage medium.” The claim language for both claims further
describes that the first inventory or backup inventory comprises at least one
descriptor. Further, claim 1 describes that the descriptor comprises a
cryptographic signature computed based on the actual file data. Claim 30
further describes that the descriptor comprises a cryptographic signature
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computed with the actual file data such that the actual file data is uniquely
identified by the descriptor. Neither claim defines “inventory” as reflecting
the current state of a storage medium.
Considering extrinsic evidence,10 both parties rely on dictionary
definitions.11 A common feature of the definitions proffered by Patent
Owner is the use of the adjective “detailed” and the word “list.” See PO
Initial Paper 1 (“a complete list,” “a detailed list,” “detailed . . . list,”
“detailed . . . list,” “detailed . . . list,” “detailed list”) (citing inter alia
Exs. 2012–2014). Patent Owner states that these dictionary definitions show
that “the ordinary and customary meaning of ‘inventory’ is more than just a
list.” Id. at 2. Petitioner does not disagree. In fact, Petitioner notes the
same commonality across the dictionary definitions the parties rely on—the
definitions each include a “list” and a modifier describing the list as
“itemized,” “detailed,” or “complete.” Pet. Resp. Paper 1. Petitioner,
however, also asserts that none of the dictionary definitions support Patent
Owner’s attempt to require that the term “inventory” must include all of the
information that the Specification indicates may be included in an inventory.
Id. at 2.
The dictionary definitions shed light on the plain and ordinary
meaning of “inventory,” but, in particular, none of the definitions proffered

10 Neither party argues that the prosecution history of the ’043 patent
informs as to the meaning of the “inventory.”
11 The parties also rely on competing expert testimony, which testimony is
very similar to the parties’ arguments. See, e.g., Ex. 2008 ¶¶ 68–77
(Dr. Weissman’s declaration testimony); Ex. 1024 ¶¶ 6–33 (Dr. Shenoy’s
reply declaration testimony).
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by Patent Owner12 support Patent Owner’s proposed construction that
“inventory” reflects the current state of a storage medium or that “inventory”
should be construed to include any of the other requirements in Patent
Owner’s proposed construction. Despite including adjectives such as
“detailed,” and “complete,” none of those modifiers suggests, supports, or is
consistent with Patent Owner’s proposed construction of “inventory” as
“electronic data that reflects the current state of a storage medium.”13
Accordingly, we find that the record does not support construing
“inventory” to “reflect the current state of a storage medium.”
b. Includes a List of Files on the Storage Medium
As mentioned, both parties propose construing inventory to include or
constitute a list. PO Resp. 21; Pet. Reply 1–2; Pet. Initial Paper 1. The
parties dispute, however, what the list should constitute. Patent Owner
argues that “inventory” requires a list of files on the storage medium, PO
Resp. 21, whereas Petitioner argues “inventory” does not require the
inclusion of a list of files on the storage medium. Pet. Initial Paper 1.
Patent Owner’s Response does not specifically identify its support for
construing inventory to require a list of files on the storage medium. PO
Resp. 21–28. The Response, however, cites to the disclosure in the ’043

12 Neither party argues that the dictionary definition proffered by Petitioner
(Ex. 1019) supports construing the term “inventory” as reflecting the current
state of the storage medium. The definition in Exhibit 1019 uses the term
“current.”
13 Nor do any of the definitions reflect that the ordinary and customary
meaning of “inventory” includes the other three aspects of Patent Owner’s
proposed construction of “inventory”—electronic data that (2) “includes a
list of files on the storage medium,” (3) includes “at least one descriptor
identifying the file(s),” and (4) includes “the directory structure of the
file(s).”
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patent that scanning module 232 is capable of producing a file inventory. Id.
at 21–22 (citing Ex. 1001, 8:11–13). The term being construed, however, is
“inventory,” not “file inventory,” and the Specification of the ’043 patent
teaches that the contents of its inventories are not limited to files, but can
also include other electronic data. Ex. 1001, 15:42–45 (“those files and
other electronic data listed in the inventory”); see also 15:5–6 (“The
descriptors from the inventory represent the electronic data at the time the
last backup occurred. Those files or electronic data . . . .”). So the
Specification does not support requiring that an “inventory” be a list of just
files on the storage medium: an inventory can list other electronic data. Id.
Patent Owner’s Sur-reply points to the ’043 patent’s description of a
restore process. Sur-reply 7–8 (citing Ex. 1001, 14:57–66, 15:1–11, 16:18–
20). Nothing in that discussion in the Specification, however, requires
“inventory” to include a list of files on the storage medium, and Patent
Owner’s discussion does not identify any such requirement. Rather, we find
that this portion of the Specification supports Petitioner’s argument that
inclusion of a list of files is permissible, but not required. First, the cited
descriptions are from the Specification’s discussion of the restore/recover
routine of Figure 7. Ex. 1001, 14:14–16:20. The Specification explicitly
states that “[w]ith reference to FIG. 7, a restore/recover routine will be
described in accordance with at least some embodiments of the present
invention.” Id. at 14:14–16 (emphasis added). Thus, on its face, the
Specification describes the restore/recover routine of Figure 7 as applicable
to some embodiments, meaning not every embodiment. Second, in the
portion Patent Owner relied on, the Specification further describes as “an
additional embodiment of the present invention” the ability to generate an
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inventory of protected media. See id. at 16:18–19. And the Specification
expressly states that “[t]his inventory is a list of all files with corresponding
descriptors.” Id. at 16:19–20. This description reflects that when the
patentee intended to refer to a list of files as part of an inventory, the
patentee knew how to do so. And, that the patentee did not do so for all
embodiments or specifically direct the discussion to the term “inventory”
generally, supports Petitioner’s position that an “inventory” may include a
list of files on the storage medium, but is not required to do so.14
Further, the dictionary definitions provided by the parties do not
support limiting “inventory” to a list of files. Exs. 1019, 2012–2014. None
of those dictionary definitions set forth such a requirement. Id. Thus, we do
not construe “inventory” to require a “list of files on the storage medium.”
c. Includes at Least One Descriptor Identifying the
File(s)
The third aspect of Patent Owner’s proposed construction of
“inventory” is the inclusion of at least one descriptor identifying the file(s).
PO Resp. 21. Patent Owner’s Response does not specifically identify why
“inventory” should be construed to require this language. Petitioner’s Reply
correctly identifies that claims 1 and 15 expressly recite that “wherein the
first inventory comprises at least one descriptor” and “independent claims 30

14 We also find that the Specification suggests that a list of files is not a
required aspect of “inventory.” In particular, in describing the embodiment
of Figure 5, the ’043 patent teaches that “included in a user’s inventory may
be list of descriptors 508. The list of descriptors 508 for each user are a
short-hand representation of the actual files, or portions of files, that have
been recently backed up for the user’s communication device 108.”
Ex. 1001, 11:11–15. This disclosure suggests that an “inventory” need not
require a list of the files themselves, but rather that a list of descriptors could
suffice.
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and 35 recite ‘wherein the backup inventory for the remote storage medium
comprises a list of descriptors.’” Pet. Reply 12–13. In its Sur-reply,
responding to Petitioner’s argument that the claims expressly recite this
aspect of Patent Owner’s proposed construction of “inventory,” Patent
Owner states “Petitioner does not dispute that an inventory includes at least
one descriptor, and thus whether it is explicitly in the construction or not, the
Board must consider it as a limitation.” Sur-reply 8–9. Patent Owner
further states, that claims 1, 15, 30, and 35 “need to refer to the at least one
descriptor in each inventory as an antecedent basis to refer to it again later in
the claims.” Id. at 9.
Patent Owner does not provide any support for why the term
“inventory” itself requires “at least one descriptor identifying the file(s).”
And, we do not discern any support in the claims, Specification, or
dictionary definitions of “inventory” that the term “inventory” must require
at least one descriptor identifying the file(s) as proposed by Patent Owner.
As discussed above, both claims 1 and 15 describe that the recited first
inventory includes at least one descriptor. Patent Owner’s proposed
construction renders this recitation superfluous because the term
“inventory,” as construed by Patent Owner, would already require at least
one descriptor, and constructions that render claim language superfluous are
disfavored. Becton, Dickinson & Co., 616 F.3d at 1257; Curtiss-Wright, 438
F.3d at 1381.
Thus, on the complete record before us, the evidence (claims,
Specification, and extrinsic) does not support Patent Owner’s attempt to
require “inventory” to mean that it “includes at least one descriptor
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identifying the file(s).” Accordingly, we do not construe “inventory” to
require such.
d. Includes the Directory Structure of the Files
The fourth aspect of Patent Owner’s proposed construction of
“inventory” is that an “inventory” must include the directory structure of the
file(s). PO Resp. 21. Patent Owner points to the language of the challenged
claims and identifies two portions of the Specification as allegedly
supporting its proposed construction. We address each.
Patent Owner argues that the use of the language “associated with” in
the challenged claims indicates that “there is more than just a list of
descriptors for an inventory of electronic data, e.g., directory structure of the
electronic data.” PO Resp. 27 (citing Ex. 2008 ¶ 77). The cited testimony
makes clear that Patent Owner is referring to the use of the phrase
“associated with” in the following recitations of claims 1 and 30:
(i) comparing . . . the at least one descriptor of the first
inventory to a list of descriptors associated with a second
inventory of electronic data (claim 1) and
(ii) referencing a backup inventory for the remote storage
medium, wherein the backup inventory . . . comprises a list of
descriptors associated with electronic data that was resident on
the remote storage medium . . . wherein the electronic data
comprises actual file data, and wherein a descriptor in the list of
descriptors comprises a cryptographic signature computed with
the actual file data (claim 30).
Ex. 2008 ¶¶ 76–77.
Neither Patent Owner nor Dr. Weissman, however, explain why the
recitation “associated with” means that the term “inventory” should be
construed to require a directory structure of the electronic data. PO
Resp. 27; Ex. 2008 ¶ 77. And we see no reason why the recitation of
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“associated with” should lead to such a construction. The phrase “associated
with” in these recitations specifies that the recited descriptors are associated
with the recited electronic data. It does not define the term “inventory” to
include a directory structure.
Turning to the Specification, Patent Owner relies on the disclosure
regarding scanning module 232 discussed above: “[b]y scanning a
particular drive or similar storage medium, the scanning module 232 is
capable of creating a file inventory for the selected drive. The file inventory
reflects the current state of the drive and may include a description of the
hierarchical structure of the drive.” Ex. 1001, 8:9–13 (emphasis added); see
PO Resp. 21 (citing Ex. 1001, 8:11–41, 15:12–24; Ex. 2008 ¶ 68). This
disclosure expressly teaches that a file inventory may include a description
of the hierarchical structure of a drive, not that it must.
Patent Owner suggests that the term “may” as used in the
Specification of the ’043 patent is not permissive. Sur-reply 4. Patent
Owner contends that “patent specifications often use the word ‘may’ even in
reference to requirements.” Id. Patent Owner, however, cites no support for
this contention. Patent Owner argues, however, that “[e]verything is
described in this patent that’s may this, may that. It’s all permissive
language.” Tr. 76:18–20. Patent Owner asserts that if we construe “may” as
optional (permissive) as opposed to required, then nothing is left of the
patent. See id. at 76:20–77:2 (“Unfortunately, you can’t take these sentences
in isolation and say, well, these are saying permissive, because then nothing
is happening in this patent. Practically everything is described in terms of it
may be this or it may be that. So there’s nothing definitive about anything
here.”). We disagree.
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We see nothing in this record that would cause us to interpret the term
“may” as mandatory.15 Thus, we interpret the term “may” in accordance
with its ordinary, permissive meaning. See Netword LLC v. Centraal Corp.,
242 F.3d 1347, 1358 (Fed. Cir. 2001) (“The specification makes quite clear
that those added limitations are merely permissive, that is to say, they may or
may not be associated with the client computer that is clearly defined in the
specification” (emphasis added)); In re Johnston, 435 F.3d 1381, 1384 (Fed.
Cir. 2006) (“these limitations are stated in the permissive form ‘may.’ As a
matter of linguistic precision, optional elements do not narrow the claim
because they can always be omitted.” (emphasis added)). And, we do not
agree that interpreting “may” in accordance with its ordinary and customary
meaning deprives the ’043 patent of meaning. That an “inventory” may
include the directory structure of the file(s) means exactly that, it may.
Nothing in our construction precludes an “inventory” from including the
directory structure of the file(s). In other words, there may be claims that
recite the broader term “inventory” and there may be claims that recite a

15 The Specification’s use of “may” in several other instances also indicates
the permissive (optional) inclusion of items in an inventory. See Ex. 1001,
8:27–34 (describing the use of a descriptor algorithm to “create the
descriptor that uniquely . . . identifies the file or a portion of the file” and
stating that “[t]he results of the application of the descriptor algorithm (e.g.,
the generated hash corresponding to each file or portion of a file) may also
be added to the inventory to help describe the current state of the drive”
(emphasis added), 10:66–11:12 (noting, in the context of Figure 5, that
“backup server 116 may be designed to maintain inventories 504 for each
user account” and that “[i]ncluded in a user’s inventory may be a list of
descriptors 508” (emphasis added)).

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narrower “inventory” if other language in the claim expressly limits the
“inventory,” for example, to include one or more of the aspects described in
the Specification as optional.
Patent Owner also points to the Specification’s discussion of Figure 7
and the restore/recover routine described to support its proposed requirement
that an “inventory” include at least one descriptor identifying the file(s) and
the directory structure of the file(s). In particular, Patent Owner points to the
statement that:
[o]nce the descriptors have been marked for restoration, the
restore application 240 continues by determining if any
directories in the inventory are not present in the target media
(step 732). If there are any directories in the inventory and not
in the media, the restore application 240 creates those directories
in the target media (step 736).
See PO Resp. 22–24 (citing, inter alia, Ex. 1001, 15:12–17) (asserting that
Figure 7 and this description from the Specification supports Patent Owner’s
construction); Tr. 79:1–12 (contending that this statement is definitive in that
there are directories in this inventory); see Ex. 1001, 15:12–17.
We disagree that this statement in the Specification supports Patent
Owner’s argument that (a) directories are required to be in the specific
inventory referenced and (b) the term “inventory” should be construed as
requiring “the directory structure of the file(s).” This specific statement says
if there are any directories in the inventory and not in the media, then
directories are created. Nothing in that statement requires the presence of
directories in the inventory. The statement is satisfied whether or not
directories are included. If there are no directories in the inventory, then
there are no directories in the inventory that are not in the target media.
Thus, this statement fails to support Patent Owner’s argument that
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“inventory” should be construed as requiring the directory structure of the
file(s).
Additionally, the Specification’s description of Figure 7 explicitly
states that the restore/recover routine is described “in accordance with at
least some embodiments of the present invention.” Ex. 1001, 14:14–16
(emphasis added). Thus, even if we were to read the above-description of
Figure 7 as requiring directories in this specific inventory (which we do not),
this description expressly applies to “at least some embodiments,” meaning
not necessarily all embodiments.
The dictionary definitions cited by the parties also do not support
Patent Owner’s proposed requirement that “inventory” include the directory
structure of the file(s). None of those definitions so limit the term
“inventory.” Exs. 1019, 2012–2014.
Therefore, we do not construe the term “inventory” to require the
directory structure of the file(s),
2. Petitioner’s Proposed Construction
As mentioned above, Petitioner proposes construing “inventory” as
“an itemized list of electronic data.” Pet. Reply 1–2; Pet. Initial Paper 1.
This proposed construction is consistent with the Specification of the ’043
patent. The inventories described in the ’043 patent are itemized lists of
electronic data. See, e.g., Ex. 1001, 8:9–11; 11:1–15; 14:2–7. Further,
Petitioner’s proposed construction is consistent with the language of
claims 1 and 15, both of which recite “inventory” and “electronic data.” In
addition, Petitioner’s proposed construction is supported by the dictionary
definition of inventory as “an itemized list of current goods or assets.”
Ex. 1019.
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Patent Owner objects to Petitioner’s proposed construction on the
grounds that the Specification of the ’043 patent teaches that the term
“inventory” should have all of the requirements set forth in Patent Owner’s
proposed construction. Sur-reply 3–10; PO Initial Paper 1–4; PO Resp.
Paper 1–2. As set forth above, we disagree with that argument by Patent
Owner.
Patent Owner also relies on dictionary definitions to oppose
Petitioner’s proposed construction. See PO Initial Paper 1. As discussed
above, a common feature of the definitions proffered by Patent Owner is the
use of the adjective “detailed” and the word “list.” See id. (“a complete list,”
“a detailed list,” “detailed . . . list,” “detailed . . . list,” “detailed . . . list,”
“detailed list”) (citing inter alia Exs. 2012–2014). Patent Owner states that
these dictionary definitions show that “the ordinary and customary meaning
of ‘inventory’ is more than just a list.” Id. at 2. Petitioner does not disagree.
In fact, Petitioner notes the same commonality across the dictionary
definitions—they each include a “list” and a modifier describing the list as
“itemized,” “detailed,” or “complete.” Pet. Resp. Paper 1. And Petitioner’s
proposed construction requires that an inventory must be more than a list—it
must be an itemized list. Patent Owner has not argued that there is any
difference of significance for this case between construing “inventory” as an
itemized list versus a detailed list (aside from using the term “detailed” as a
vehicle to argue all four aspects of its proposed construction). And we see
none.16

16 As noted previously, important to our understanding of “inventory” is
Patent Owner’s agreement that “the claimed inventory may not account for
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3. Construction
Considering the intrinsic and extrinsic evidence of record, we
determine that “inventory” would have been understood by one of ordinary
skill in the art in accordance with its plain and ordinary meaning, which, in
this context, is an “itemized list of electronic data.”17
III. ASSERTED GROUNDS
A. Objective Indicia of Nonobviousness
At this stage, neither party has argued objective indicia of
nonobviousness. Thus, we do not address objective indicia of
nonobviousness in the analyses below.
B. Asserted Obviousness over Field
Petitioner asserts that claims 30–37 and 39 would have been obvious
over Field. Pet. 11.
1. Field
Field is directed to a system, methods, and a computer-readable
medium for efficiently performing a backup of data in a networking
environment. Ex. 1004 ¶ 7.

every file on the system. Instead, the claimed inventory accounts for the
data, which may only be a chunk of data, selected by a user to be backed up
or restored.” PO Sur-reply 12 (agreeing with Petitioner). In other words,
even though the extrinsic definitions modify the term “list” by requiring the
list to be “itemized,” “detailed,” and/or “complete,” it is undisputed that the
inventory can account for less than all files on a remote storage medium or
drive.
17 Construing “inventory” as a “detailed list of electronic data” or a
“complete list of electronic data” would not change the analysis that follows.
Under each of these plain and ordinary meanings, the result is the same—
none requires (a) a list of files on the storage medium, (b) at least one
descriptor identifying the file(s), or (c) the directory structure of the file(s),
as Patent Owner proposes.
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Figure 1 of Field is reproduced below:

Figure 1 above shows a networking environment 100 that includes a back
end computing device 102 and target computing device 104. Ex. 1004 ¶ 13.
Back end computing device 102 aggregates data received from multiple
sources (e.g., client devices) at a single location (e.g., backup database 106),
to prevent the unnecessary transmission of data. Id. ¶ 22.
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Figure 2 of Field is reproduced below:

Figure 2 above illustrates components of target computing device 104,
including remote back module 202. Ex. 1004 ¶ 14.
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Figure 3 of Field is reproduced below:

Figure 3 above shows a flow diagram for module 202 that contains
blocks 300–318. Ex. 1004 ¶ 15. In block 300, remote backup module 202
waits to receive a command to perform a backup. Id. ¶ 32. In block 302,
module 202 determines whether the command received requires a backup of
one or more files. Id. If a backup is required, then the module proceeds to
block 306, where it selects a file to be backed up. Id. ¶ 33. In block 308,
module 202 generates a signature of the selected file. Id. ¶ 36. Hashing
algorithm “SHA-1” can be used to generate this signature. Id.
Alternatively, “other type[s] of algorithms or functions that are
capable of generating a signature from file data may be used to generate the
signature.” Id. In block 310, module 202 determines if the file is already
available to a trusted source. Id. ¶ 37. In particular, in block 310, “the
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remote backup module 202 causes the signature of the selected file to be
transmitted to the trusted source and compared to signatures of files
previously submitted to the trusted source.” Id. If the file is not already
available to the trusted source, in block 312, module 202 transmits the file to
the trusted source. Id. ¶¶ 37–38. In block 314, if there are additional files to
be backed up, module 202 returns to block 306. Id. ¶ 39.
2. Claim 30
Below, we first address the parties’ arguments for claim 30, starting
with Petitioner’s showing in the Petition, which Petitioner provided on a
limitation-by-limitation basis. Then, we address Patent Owner’s arguments
in the Patent Owner Response, which were not provided on a limitation-by-
limitation basis.18 Then, we address the arguments in Petitioner’s Reply and
Patent Owner’s Sur-reply. After which, we provide our analysis.
a. Parties’ Arguments
i. The Petition
(a). Preamble
The preamble of claim 30 recites “[a] method.” Ex. 1001, 22:9. In
the Petition, Petitioner argues that Field teaches the preamble of claim 30 by
disclosing “efficiently performing a backup of data in a networking
environment.” Pet. 15 (citing Ex. 1004, code (57), ¶ 7). Petitioner further
argues that Field discloses that “[t]he present invention relates to computing
devices and, more particularly, to restoring a computing device to recover
lost data.” Id. at 17 (quoting Ex. 1004 ¶ 1). Petitioner further argues that
Field discloses methods for accomplishing this objective. Id. (citing

18 Many of Patent Owner’s arguments, however, appear to be directed to
limitation 30B.1.
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Ex. 1004 ¶¶ 1, 24, 37–44, claims 1–3; Ex. 1002 ¶ 69). Petitioner asserts that,
for example, claim 2 of Field discloses techniques to restore a file from a
backup device to a client device: “in response to receiving a command to
restore [a] file, transmitting the file from the second computing device to the
first computing device.” Id. (quoting Ex. 1004, Claim 2; Ex. 1002 ¶ 69).
(b). [30A] receiving a request from a remote
storage medium to perform a restore operation;
Petitioner argues that Field discloses “restoring a computing device to
recover lost data.” Pet. 17 (quoting Ex. 1004 ¶ 1). Petitioner further asserts
that “Field discloses that ‘[a] command to backup data onto a remote
computing device, such as the back end computing device 102 (FIG. 1), may
be received in a number of contexts,” and a “computer user may choose to
perform a backup in which one or more files will be restored.” Id.
(emphasis omitted) (quoting Ex. 1004 ¶ 32). According to Petitioner, “[a]s
such, ‘a user may restore [a] volume state or file to any one of a number of
available versions.’” Id. at 17–18 (emphasis added by Petitioner) (quoting
Ex. 1004 ¶ 32).
Petitioner asserts that, based on this disclosure, an ordinarily skilled
artisan “would have recognized that a request would be received from a
client device operated by the user (‘remote storage medium’) when
previously backed up files needed to be restored.” Pet. 18 (emphasis
omitted) (citing Ex. 1002 ¶ 71). Petitioner further argues that claim 2 of
Field recites “receiving a command to restore the file,” and claim 10 of Field
recites “a command to restore the volume to the previous state.” Id. (citing
Ex. 1004, claims 2 and 10). Further, Petitioner asserts that Field discloses
that “a user may issue a command to restore the volume to a previous state,”
from which an ordinarily skilled artisan would similarly understand that a
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user may also issue a command to restore files as opposed to a volume state
(in the case that files were previously selected for backup). Id. Petitioner
also argues that Field discloses that “the backup database is able to identify
files that need to be restored to the target computing device when a restore
command is issued.” Id. (citing Ex. 1004 ¶¶ 9, 10; Ex. 1002 ¶ 71).
(c). [30B.1] referencing a backup inventory for the
remote storage medium, wherein the backup
inventory for the remote storage medium
comprises a list of descriptors associated with
electronic data that was resident on the remote
storage medium at a point in time prior to
receiving the request to perform a restore
operation,
Petitioner argues that Field discloses that its “backup database 106
stores files and/or data that represents a volume state on behalf of users who
participate in the backup service provided by the present invention.” Pet. 18
(citing Ex. 1004 ¶ 40). Petitioner asserts that as part of Field’s backup
process, for files stored in the backup database, Field’s process generates
and stores signatures of the files, and these signatures are included in Field’s
backup database. Id. at 18–19 (citing Ex. 1004 ¶ 37).
Petitioner argues that Field discloses that “[t]he signature of files in
the backup database 104 are generated with the same hashing algorithm that
was used to generate the signature of the selected file.” Pet. 19 (citing
Ex. 1004 ¶ 37). According to Petitioner, Field further explains:
[f]or example, the existing hashing algorithm commonly known
‘SHA-1’ may be used to generate the signature. However, other
type of algorithms or functions that are capable of generating a
signature from file data may be used to generate the signature
used by the module 202 without departing from the scope of the
present invention.
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Id. (citing Ex. 1004 ¶ 36). Further, Petitioner asserts that Field also
discloses that the generated signature “uniquely identifies the file.” Id.
(citing Ex. 1004 ¶ 37; Ex. 1002 ¶ 73). Petitioner contends that, thus, each
file signature provides a “descriptor associated with electronic data.” Id.
(citing Ex. 1002 ¶ 73).
Petitioner further argues that Field discloses that the backup database
“tracks files stored by a trusted source on behalf of a user of the backup
service. In this way, the backup database is able to identify files that need to
be restored to the target computing device when a restore command is
issued.” Pet. 19 (citing Ex. 1004 ¶ 10, claim 1). Petitioner asserts that, for
example, Field discloses that “the backup database 104 maintains an entry
for each user of the backup service” that, “among other items,” “contains
‘pointers’ to operating system, application program files, and/or user level
data that is shared with other users of the backup service.” Id. at 19–20
(citing Ex. 1004 ¶ 40). According to Petitioner, these entries can also
include other file metadata “identify[ing] the location (e.g., a file path),
name, and permissions of files that may be restored by the backup service.”
Id. at 20 (citing Ex. 1004 ¶ 40). Petitioner argues that, in this manner, the
backup database maintains entries for each user that track the files backed up
on behalf of that user. Id. (citing Ex. 1002 ¶ 74).
Petitioner argues that, accordingly, an ordinarily skilled artisan would
have understood that the backup database maintains an “inventory” of the
files backed up from a user’s computing device, including information such
as the user-specific database entries and associated file signatures for files
backed up from a user’s computing device. Pet. 20 (citing Ex. 1002 ¶ 75).
Petitioner asserts that, “thus, this information stored in Field’s backup
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database provides ‘a backup inventory for the remote storage medium’ that
‘comprises a list of descriptors [(i.e., file signatures)] associated with
electronic data.’” Id. (citing Ex. 1002 ¶ 75) (emphasis omitted).
Petitioner argues that Field further discloses that “‘a user of the
backup service provided by the present invention may automatically backup
a computing device at regular intervals’ and, ‘[t]hus, the backup database
104 may contain different versions of the same file(s) and/or volume states
representative of data on a computing device at a specific point-in-time.’”
Pet. 20 (citing Ex. 1004 ¶ 41) (emphasis omitted). Petitioner asserts that,
consequently, at least in this scenario, Field’s backup inventory would
represent electronic data (e.g., files) that was resident on the remote storage
medium at a point in time prior to receiving the request to perform a restore
operation. Id. at 20–21 (citing Ex. 1002 ¶ 76).
Petitioner also argues that Field discloses that the backup inventory
information stored in Field’s backup database includes the type of data
required to restore files and/or a volume state. Pet. 21 (citing Ex. 1004
¶ 40). According to Petitioner, therefore, an ordinarily skilled artisan would
have understood that this information would be referenced as part of Field’s
restore process. Id. (citing Ex. 1002 ¶ 77; Ex. 1004, claims 2 and 3).
(d). [30B.2] wherein the electronic data comprises
actual file data, and wherein a descriptor in the
list of descriptors comprises a cryptographic
signature computed with the actual file data
such that the actual file data is uniquely
identified by the descriptor;
Petitioner argues that Field teaches using cryptographic algorithms to
generate signatures from actual file data. Pet. 21–22 (citing Ex. 1002 ¶¶ 78–
79; Ex. 1004 ¶¶ 36–37). Petitioner further argues that Field’s signatures are
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computed with actual file data and uniquely identify a file with their
descriptors. Id. at 22 (citing Ex. 1002 ¶¶ 78–79; Ex. 1004 ¶ 37).
(e). [30C] retrieving selected electronic data from
the backup data storage medium having a
descriptor that matches descriptors in the list of
descriptors associated with the remote storage
medium; and
Petitioner argues that, during Field’s operation to restore files, Field
retrieves and transmits files from the backup database that have descriptors
that match the descriptors in Field’s backup database that are associated with
the remote storage medium. Pet. 23 (citing Ex. 1004 ¶¶ 10, 32, 37; Ex. 1002
¶ 80). Petitioner asserts that Field discloses that the “computer user may
choose to perform a backup in which one or more files will be restored.” Id.
(quoting Ex. 1004 ¶ 32). Further, Petitioner argues that Field discloses that
its backup database tracks files stored by a trusted source on behalf of a user
of the backup service, and in this way, the backup database is able to
identify files that need to be restored to the target computing device when a
restore command is issued. Id. (citing Ex. 1004 ¶ 10). Petitioner asserts that
each tracked file has an associated file signature (descriptor) stored in
Field’s backup database. Id. (citing Ex. 1004 ¶ 37). According to Petitioner,
because files to be restored must have already been backed up using Field’s
backup process, Field teaches that such files, i.e., the list of files tracked for
a user by the backup database to be restored, would each have a descriptor
that matches descriptors in the list of descriptors associated with the remote
storage medium. Id. (citing Ex. 1002 ¶ 80).
Petitioner further asserts that claim 2 of Field further discloses restore
operations for each file to be restored: “in response to receiving a command
to restore the file, transmitting the file from the second computing device to
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the first computing device.” Pet. 23–24 (quoting Ex. 1004, claim 2).
Petitioner argues that an ordinarily skilled artisan would have understood
that in order to transmit a file from Field’s backup database to the user’s
computing device, the file would first need to be retrieved from the backup
database for transmission. Id. at 24 (citing Ex. 1004, Fig. 1). Petitioner
argues that Field teaches performing these restore operations for each of the
identified files to be restored. Id. (citing Ex. 1004 ¶ 10; Ex. 1002 ¶ 81).
(f). [30D] providing the selected electronic data to
the remote storage medium.
Petitioner argues that Field teaches providing selected files to the
user’s computing device. Pet. 24 (citing Ex. 1002 ¶ 82; Ex. 1004 ¶ 10).
Petitioner quotes the recitation in claim 2 of Field that “in response to
receiving a command to restore the file, transmitting the file from the second
computing device to the first computing device.” Id. (quoting Ex. 1004,
claim 2). Petitioner argues that Field’s first computing device is the remote
storage medium. Id.
ii. Patent Owner Response
In the Patent Owner Response, Patent Owner argues that Field
discloses two distinct and separate ways of backing up a storage device as
shown in Figure 3, neither of which is a full and complete backup of a
storage medium using signatures. PO Resp. 40–41 (citing Ex. 2008 ¶ 112).
Patent Owner argues that the first backup method disclosed in Field is a full
volume backup where the disk state service is designed to take point-in-time
copies of a volume of data. Id. at 41–42 (citing Ex. 1004 ¶ 27, Figs. 2, 3;
Ex. 2008 ¶ ¶ 115–117; Ex. 2015, 35:17–24, 40:18–25).
Patent Owner argues that the second type of backup process discussed
in Field relates to the backup of individual files. PO Resp. 42 (citing
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Ex. 1004, Fig. 3; Ex. 2008 ¶ 118). Patent Owner argues that in Figure 3 of
Field, a file is selected for backup and a signature is generated from the file.
Id. (citing Ex. 1004, Fig. 3; Ex. 2008 ¶ 118). Patent Owner asserts that Field
explains that only one signature for one file is transmitted to the trusted
source at a time. Id. (citing Ex. 2008 ¶ 118). Further, Patent Owner argues
that Dr. Shenoy confirmed that only a file signature is transmitted in Field.
Id. at 42–43 (citing Ex. 2015, 79:8–12). Patent Owner argues that, in Field,
it is sufficient to send only the signature, and not include metadata, i.e.,
filename or directory, since the operating system knows which signature
from which file is sent each time. Id. at 43 (citing Ex. 2008 ¶ 119). Patent
Owner contends that thus, regardless of whether the response is to backup or
not backup a file based on the signature, the system knows which file that
response is directed to. Id. (citing Ex. 2008 ¶ 119).
Patent Owner further argues that Field does not disclose the use of a
backup inventory for a restore process. PO Resp. 43 (citing Ex. 2008 ¶ 143).
Patent Owner asserts that Field even teaches away from using and
transmitting signatures from a backup data storage medium to a remote
storage medium during a restore process. Id. (citing Ex. 2008 ¶ 144). Patent
Owner argues that, instead, for example, claim 2 states “in response to
receiving a command to restore the file, transmitting the file from the second
computing device to the first computing device.” Id. (citing Ex. 1004,
claim 2). Patent Owner argues that again, in Field, the selected file is
transmitted rather than the selected electronic data having at least one
descriptor that was stored in a backup inventory as described and claimed in
the ’043 patent. Id. (citing Ex. 2008 ¶ 144).
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Patent Owner argues that, further, Field only discusses restoring files
on a one-to-one basis as demonstrated in its claim 2. PO Resp. 44 (citing
Ex. 2008 ¶ 145). Patent Owner asserts that, thus, even though Field
discusses restoring each identified file, the restoration process is rather
lengthy as only one identified file may be restored at a time. Id. (citing
Ex. 2008 ¶ 145).
Patent Owner argues that, in addition, Field does not teach restoring
the directory structure of a client device. PO Resp. 44 (citing Ex. 2008
¶ 146). Thus, Field can only restore individual files to a remote storage
medium that still has enough metadata to know the file names and locations
where the files are stored, though even that is not disclosed in Field. Id.
(citing Ex. 2008 ¶ 146).
Patent Owner argues that, on the other hand, the ’043 patent provides
for a full restore of a client device including, but not limited to, individual
files, portions of files, and directory structures, which is determined by the
inventories and descriptors. PO Resp. 44 (citing Ex. 2008 ¶ 147).
iii. Reply
In Petitioner’s Reply, Petitioner responds, arguing that Field does
teach the use of a backup inventory for a restore process. Pet. Reply 18
(citing Ex. 1004 ¶¶ 10, 40, claim 1). Petitioner argues that Field discloses a
backup inventory for a restore process by disclosing that “‘backup database
104 maintains an entry for each user of the backup service,’ which ‘contains
“pointers” to operating system, application program files, and/or user level
data,’ as well as ‘file metadata “identify[ing] the location (e.g., a file path),
name, and permissions of files that may be restored by the backup
service.”’” Id. (citing Ex. 1004 ¶ 40). Petitioner argues that, thus, an
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ordinarily skilled artisan would have understood that Field’s backup
database maintains an inventory of the files backed up from a user’s
computing device, including information such as the user specific database
entries and associated file signatures for files backed up from a user’s
computing device. Id. (citing Ex. 1002 ¶ 75; Ex. 1024 ¶ 59).
Petitioner also argues that claim 30 (and claim 35) does not recite
transmitting signatures/descriptors from the backup storage medium to the
client device. Pet. Reply 18–19 (citing Ex. 1024 ¶¶ 60–61). Petitioner also
argues that restoring the directory structure of a client device is not a
limitation of claim 30 (or of claim 35). Id. at 19. Petitioner further argues
that Field discloses restoring metadata, including locations where files are
stored. Id. (citing Ex. 1004 ¶ 40, claim 3; Ex. 1025, 74:19–75:2). Petitioner
also argues that whether the restoration process of Field is lengthy is
irrelevant. Id. (citing Ex. 1024 ¶ 64).
iv. Sur-reply
In its Sur-reply, Patent Owner responds, reiterating its contention that
the ’043 patent claims require that directory structures be backed up. Sur-
reply 16. Patent Owner argues that Field’s backup database does not have
descriptors that correspond to electronic data and is not used and transmitted
by both the storage medium and the backup storage medium. Id. at 17.
Patent Owner also argues that a backup inventory is not analogous to backup
database that maintains an entry for each user of a backup service. Id.
b. Discussion
i. Disputed Issues
In light of the parties’ arguments, the disputed issues for claim 30 are:
(i) whether Field teaches or suggests a backup inventory for a restore
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process, (ii) whether claim 30 requires transmitting signatures/descriptors
from the backup storage medium to the client device, (iii) whether the
purported length of Field’s backup process is relevant, and (iv) whether
claim 30 requires restoring the directory structure of a client device.
Pet. 15–24; PO Resp. 40–45; Pet. Reply 18–19; Sur-reply 16–17.
First, we find that Field teaches and suggests a backup inventory for a
restore process. In Field, backup database 104 maintains an entry for each
user of the backup service, which contains pointers to the operating system,
application program files, and/or user level data, as well as file metadata
identifying the location (e.g., a file path), name, and permissions of files that
may be restored by the backup service. Ex. 1004 ¶ 40. This constitutes an
itemized list of electronic data, meaning an inventory. See Section II.C.3
above; Ex. 1002 ¶ 74. In particular, the operating system, application
program files, and user level data are electronic data. Ex. 1002 ¶ 74. The
entries maintained by the backup database 104 collectively are an itemized
list (they list, by item, the operating system, application program files, and
user level data). Id.
Field further teaches or suggests using this backup inventory (backup
database 104) for a restore operation. Ex. 1002 ¶¶ 71–78. Field teaches that
the backup database “tracks files stored by a trusted source on behalf of a
user of the backup service. In this way, the backup database is able to
identify files that need to be restored to the target computing device when a
restore command is issued.” Ex. 1004 ¶ 10 (emphasis added); Ex. 1002
¶ 73. Field further discloses that the “backup inventory” information stored
in Field’s backup database includes the “type of data required to restore files
and/or a volume state.” Ex. 1004 ¶ 41; Ex. 1002 ¶ 76. Therefore, an
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ordinarily skilled artisan would have understood that this information would
be referenced as part of Field’s restore process. Ex. 1002 ¶ 77. Further,
claim 2 of Field recites “in response to receiving a command to restore the
file, transmitting the file from the second computing device to the first
computing device.” Ex. 1004, claim 2. Further, claim 3 of Field recites,
“referencing the backup inventory” information stored in Field’s backup
database: “wherein the file is restored on the first computing device with the
same path, name, and permissions that were associated with the file when
transmitted from the first computing device to the second computing
device.” Ex. 1004, claim 3. These recitations of claims 2 and 3 of Field
further teach or suggest using backup database 104 for a restore operation.
Ex. 1002 ¶ 76.
As mentioned, Patent Owner contends that Field does not teach the
use of a backup inventory for a restore process. PO Resp. 43. To support
this contention, Patent Owner argues that Field teaches away from using and
transmitting signatures from a backup data storage medium to a remote
storage medium during a restore process. Id. at 44 (citing Ex. 2008 ¶ 144).
Claim 30, however, does not require transmitting signatures from the backup
storage medium to the remote storage medium during a restore process.
As mentioned, Patent Owner also argues that Field restores files on a
one-to-one basis or purportedly has a long restoration process. PO Resp. 44.
Whether Field restores files on a one-to-one basis or has a lengthy
restoration process, however, is irrelevant to whether backup database 104 is
a backup inventory used in a restore process. Ex. 1024 ¶ 64. Patent Owner
provides no reason why backup database 104 cannot be used as a backup
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inventory even if files are sent on a one-on-one basis or in a lengthy restore
process.
As mentioned, Patent Owner also argues that Field does not teach
restoring the directory structure of a client device. PO Resp. 44 (citing
Ex. 2008 ¶ 146). Claim 30 does not recite restoring the directory structure
of a client device, and we did not adopt Patent Owner’s proposed
construction for “inventory” that requires an inventory include the directory
structure of files. PO Resp. 22; see Section II.C above.
Thus, we resolve the disputed issues concerning claim 30 in favor of
Petitioner.
ii. Undisputed Issues
For the portions of Petitioner’s showing that were not directed to the
disputed issues above, we have reviewed Petitioner’s arguments and cited
evidence and find that Petitioner has proven that Field teaches or suggests
the preamble and every limitation of claim 30. Pet. 15–28 (and the exhibits
cited therein). Thus, we determine that Petitioner has proven that claim 30
would have been obvious over Field.
3. Claim 35
Claim 35 sets forth limitations that are similar to those in claim 30.19
Ex. 1001, 22:51–23:8. In the Petition, Petitioner sets forth how Field
teaches or suggests the preamble and each limitation of claim 35. Pet. 25–
28. In the Patent Owner Response, Patent Owner argues claims 30 and 35
together. PO Resp. 43–45. In Petitioner’s Reply and in Patent Owner’s Sur-

19 The preamble of claim 35 recites “a device for managing an electronic
data backup system.” Ex. 1001, 22:51–52.
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reply, Petitioner and Patent Owner also argue claims 30 and 35 together.
Pet. Reply 18–19; Sur-reply 14–16.
Thus, the disputed issues for claim 35 are the same as for claim 30.
As set forth above, we resolved those disputed issues in favor of Petitioner.
For the portions of the preamble and limitations of claim 35 that are not
recited in claim 30, we have reviewed Petitioner’s arguments and evidence
for claim 35 and are persuaded that Field teaches or suggests the preamble
and claim limitations. Pet. 25–28 (and the exhibits cited therein). Thus, we
find that Field teaches or suggests all limitations of claim 35. Accordingly,
we determine Petitioner has proven that claim 35 would have been obvious
over Field.
4. Claims 31 and 36
Claim 31 depends from claim 30 and recites:
receiving a second inventory from the remote storage
medium, wherein the second inventory for the remote storage
medium comprises a list of descriptors associated with electronic
data currently resident on the remote storage medium
(“limitation 31A”); and
removing the electronic data corresponding to descriptors
included in the second inventory from the selected electronic
data prior to providing the selected electronic data to the remote
storage medium (“limitation 31B”).
Ex. 1001, 22:29–38. Claim 36 depends from claim 35 and also recites
limitations 31A and 31B. Id. at 23:9–18. For our analysis of claims 31 and
36, we focus on limitation 31B, which is disputed by the parties.
In the Petition, Petitioner argues that Field teaches limitation 31B.
Pet. 28. Petitioner asserts that Field discloses that a “user may interact with
[a] user interface and identify the files that will be capable of being
restored,” and “a user may restore the volume state or file to any one of a
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number of available versions.” Id. at 29 (quoting Ex. 1004 ¶ 32). Petitioner
asserts that, based on this disclosure, an ordinarily skilled artisan would have
understood that the user could select only to restore files that are not
currently resident on the client device. Id. at 29–30 (citing Ex. 1002 ¶ 85).
Petitioner argues that this aligns with the purpose of file restoration, which is
generally not needed for files currently resident on a user’s computer. Id. at
30 (citing Ex. 1002 ¶ 85). Petitioner contends that, thus, files selected to be
restored could exclude the electronic data corresponding to descriptors
included in the second inventory. Id. (citing Ex. 1002 ¶ 85). Additionally,
according to Petitioner, an ordinarily skilled artisan would have understood
that using the process taught by Field, a user could choose to restore files
from a particular backup (e.g., “any one of a number of available versions”),
which would exclude files not included in that backup. Id. (citing Ex. 1002
¶ 86). Petitioner contends that thus, as part of the selection of files to be
restored, Field’s process “remov[es] the electronic data corresponding to
descriptors included in the second inventory from the selected electronic
data,” which occurs “prior to providing the selected electronic data to the
remote storage medium.” Id. (citing Ex. 1002 ¶ 86).
In the Patent Owner Response, Patent Owner argues that Field does
not teach limitation 31B. PO Resp. 45–46. Patent Owner argues that
removing electronic data should be performed at the backend side of the
system. Id. (citing Ex. 2008 ¶ 148).
In Petitioner’s Reply, Petitioner argues that claims 31 and 36 do not
require that the removal of electronic data be performed on the backend side.
Pet. Reply 19 (citing Ex. 1001, claims 31, 36; Ex. 1024 ¶¶ 65–66).
Petitioner further argues that selecting to restore only files that are not
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currently resident on the client device removes electronic data as required by
the claims. Id. at 19–20 (citing Ex. 1024 ¶¶ 65–66).
In Patent Owner’s Sur-reply, Patent Owner argues that in order to
determine the electronic data to restore that is not already on the client
device requesting the restore, the backup data storage medium (backend
side) has to remove the electronic data that corresponds to the descriptors
already stored on the client device to avoid the restoration of duplicated data.
Sur-reply 17–18.
We find that Petitioner has not proven that Fields teaches, suggests, or
otherwise renders obvious limitation 31B. The limitation requires the
electronic data corresponding to descriptors that are included in a second
inventory be removed. Petitioner has not shown that any such electronic
data is removed from a second inventory. Petitioner, in fact, does not
identify anything in Field that purportedly constitutes the second inventory
from which the recited electronic data is removed. Pet. 28–30; Ex. 1002
¶¶ 84–86; Pet. Reply 19–20; Ex. 1024 ¶¶ 65–66. As limitation 31A sets
forth, the recited second inventory is received from the remote storage
medium. Petitioner has not identified what constitutes that second inventory
received from the remote storage medium. Pet. 28–30; Ex. 1002 ¶¶ 84–86;
Pet. Reply 19–20; Ex. 1024 ¶¶ 65–66. Petitioner also has not identified how
electronic data corresponding to the descriptors contained in that inventory
are removed. Pet. 28–30; Ex. 1002 ¶¶ 84–86; Pet. Reply 19–20; Ex. 1024
¶¶ 65–66. Petitioner merely indicates that a user could decide not to restore
certain files, but that is not what is recited in limitation 31B. Pet. 28–30;
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Ex. 1002 ¶¶ 85–86; Pet. Reply 19–20; Ex. 1024 ¶¶ 65–66.20 Limitation 31B
requires removing electronic data from the received second inventory, not
merely deciding not to restore particular files.
Thus, we determine that Petitioner has not proven that claims 31 and
36 would have been obvious over Field.
5. Claims 32 and 37
Claim 32 depends from claim 30 and recites:
wherein at least one electronic file from the selected electronic
data was originally uploaded to the backup data storage medium
by a second remote storage medium that is different than the
remote storage medium (“limitation 32A”).
Ex. 1001, 22:39–42. Claim 37 depends from claim 35 and recites:
wherein at least one electronic file from the selected electronic
data was originally uploaded to the backup data storage medium
by a second remote storage medium that is different from the
remote storage medium which transmitted the request to perform
a restore operation (“limitation 37A”).
Id. at 23:19–23. As indicated above, limitation 37A adds the following
clause to limitation 32A: “which transmitted the request to perform a restore
operation.”

20 At oral argument, Petitioner provided arguments regarding how Field
might teach removing electronic data. See, e.g., Tr. 44–50, 122–27. Some
of the arguments, however, are not reflected in Petitioner’s briefing or cited
expert testimony. We limit our consideration of the arguments at the oral
hearing to those that are reflected in the briefing and cited expert testimony,
which we have addressed here. See Consolidated Office Trial Practice
Guide (Nov. 2019), https://www.uspto.gov/about-us/news-
updates/consolidated-trial-practice-guide-november-2019, 85–86; Paper 27,
3.

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In the Petition, Petitioner argues that Figure 4 of Field shows that files
previously submitted to the trusted source come from multiple clients.
Pet. 30–31. Petitioner further argues that Field discloses that “the backup
database 106 stored files and/or data that represents a volume state on behalf
of users who participate in the backup service provided by the present
invention.” Id. at 31 (quoting Ex. 1004 ¶ 40). Further, Petitioner asserts that
the entire point of Field is to reduce the amount of data that needs to be
transmitted to and stored by the backup database. Id. (citing Ex. 1002 ¶ 89).
Petitioner quotes Field’s disclosure that:
a high percentage of files on the target computing device 104
may already be stored in the backup database 106. Thus, the
optimization performed by the present invention determines
whether a file that was submitted for backup by the target
computing device 104 is already stored in the backup database
106.
Ex. 1004 ¶ 24 quoted by Pet. 31. Petitioner argues that, therefore, an
ordinarily skilled artisan would have understood data already stored in
Field’s backup database would have often come from another user’s client
device backing up the same data. Pet. 31–32 (citing Ex. 1002 ¶ 90).
In the Patent Owner Response, Patent Owner argues that there is no
support for Petitioner’s argument that an ordinarily skilled artisan “would
have understood that data already stored in Field’s backup database would
have often come from another user’s client device backing up the same data
as part of its backup operation.” PO Resp. 47 (citing Pet. 31–32; Ex. 2008
¶ 154). Patent Owner argues that if a user backs up his or her computer
regularly, it is often the user’s data that is already in the backup storage
medium. Id. (citing Ex. 2008 ¶ 154). Patent Owner further argues that, for a
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shared OS or application code, there is one copy that can be accessed by
multiple client devices. Id.
In it Reply, Petitioner argues that, in Field, user data can be shared
with other users. Pet. Reply 20 (citing Ex. 1024 ¶ 68). Petitioner asserts
that Field discloses user-level data that is shared with other users of the
backup service. Id. (citing Ex. 1004 ¶ 40; Ex. 1024 ¶ 68; Ex. 1025, 143:3–
5). Petitioner also argues that Field teaches that “files that implement the
functionality of the operating system may be provided by a software vendor”
or by “an individual user who participates in the backup service.” Id. at 21
(quoting Ex. 1004 ¶ 24). Petitioner argues that, in both cases, the files are
uploaded by a remote storage medium different from the one that is
requesting the restore operation. Id. (citing Ex. 1024 ¶ 69).
Patent Owner does not address claims 32 and 37 in its Sur-reply.
We find that Field teaches limitations 32A and 37A. Field discloses
that:
a high percentage of files on the target computing device 104
may already be stored in the backup database 106. Thus, the
optimization performed by the present invention determines
whether a file that was submitted for backup by the target
computing device 104 is already stored in the backup database
106.
Ex. 1004 ¶ 24. Field further discloses “user level data that is shared with
other users of the backup service.” Id. Field teaches that “files that
implement the functionality of the operating system may be provided by a
software vendor” or by “an individual user who participates in the backup
service.” Id. (quoting Ex. 1004 ¶ 24). We find that these combined
disclosures teach or at least suggest “wherein at least one electronic file from
the selected electronic data was originally uploaded to the backup data
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storage medium by a second remote storage medium that is different from
the remote storage medium which transmitted the request to perform a
restore operation.” Ex. 1002 ¶ 90.
As mentioned, Patent Owner argues that if a user backs up his or her
computer regularly, it is often the user’s data that is already in the backup
storage medium. PO Resp. 47 (citing Ex. 2008 ¶ 154). Even if data on the
backup storage medium includes the data of the user performing the restore,
that does not preclude a user from obtaining via a restore operation a file that
was not provided by that user to the backup storage medium (e.g., shared
data or operating system files). Ex. 1002 ¶¶ 86–89; Ex. 1024 ¶¶ 67–69.
Thus, although in Field files that were provided to the backup storage
medium by the user performing the restore could be the subject of the
restore, Field also teaches that the files recited by limitations 32A and 37A
could also be restored as part of that process. Ex. 1002 ¶¶ 86–89; Ex. 1024
¶¶ 67–69.
As mentioned, Patent Owner also argues that, for a shared OS or
application code, there is one copy that can be accessed by multiple client
devices. PO Resp. 47 (citing Ex. 2008 ¶ 154). Even if this were correct,
Field teaches or suggests that that copy can be obtained in a restore
operation by a user who did not provide that copy to the backup storage
medium. Ex. 1002 ¶¶ 86–89; Ex. 1024 ¶¶ 67–69.
Thus, we find that Petitioner has proven that Field teaches or suggests
limitations 32A and 37A. Accordingly, we determine that Petitioner has
proven that claims 32 and 37 would have been obvious over Field.
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6. Claim 33
Claim 33 depends from claim 32. Ex. 1001, 22:39–42. Patent Owner
does not separately argue claim 33 from claim 32. We have reviewed
Petitioner’s arguments and evidence regarding the limitation that claim 33
adds to claim 32 and are persuaded that Petitioner has shown that Field
teaches or suggests that limitation. See Pet. 32–33 (and exhibits cited
therein). Thus, we determine that Petitioner has proven that claim 33 would
have been obvious over Field.
7. Claim 34
Claim 34 depends from claim 22. Ex. 1001, 22:47–50. In the
Petition, Petitioner argues that claim 34’s dependence from claim 22 might
have been a typographical error and that Applicant may have intended for
claim 34 to depend from claim 32. Pet. 33–34. Petitioner addresses both
options. In related case IPR2020-01037, Petitioner argues that claim 34
would have been obvious as currently written (i.e., depending from
claim 22). In the instant Petition, Petitioner argues that claim 34 would have
been obvious if the dependency were changed to claim 32. Id. We gave
Patent Owner the opportunity to move to petition the Director to correct the
alleged typographical error in claim 34 if Patent Owner believed that
claim 34 had such an error. Inst. Dec. 39. Patent Owner did not file such a
petition. Therefore, here, we accept claim 34 as written.
Because, as written, claim 34 depends from claim 22, not claim 32,
Petitioner’s showing in this proceeding—that claim 34 would have been
obvious if it depended from claim 32—is insufficient because Petitioner
does not address the limitations of claim 22 or claim 15 (from which
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claim 22 depends). Thus, we determine that, in this proceeding, Petitioner
has not proven that claim 34 would have been obvious over Field.21
8. Claim 39
Claim 39 depends from claim 35 and recites “wherein the
cryptographic signature is computed without the metadata
(“limitation 39A”). Ex. 1001, 23:26–27.
In the Petition, Petitioner argues that Field discloses that
cryptographic algorithms such as “SHA-1” and “other type[s] of algorithms
or functions that are capable of generating a signature from file data may be
used to generate the signature used by the module 202 without departing
from the scope of the present invention.” Pet. 33 (quoting Ex. 1004 ¶ 36).
Petitioner asserts that an ordinarily skilled artisan would have understood
that algorithms, such as SHA-1 are typically executed based on a file’s
content, i.e., “computed without the metadata.” Id. (emphasis omitted)
(quoting Ex. 1002 ¶ 108). Petitioner contends that Anderson discloses the
same “secure hash algorithm (e.g., SHA-1)” that is used in Field, which
Anderson explains provides “a signature value characterizing the specific
article’s content.” Id. (emphasis omitted) (citing Ex. 1002 ¶ 108; Ex. 1005
¶ 42).
In the Patent Owner Response, Patent Owner argues that the restore
operation disclosed in Field does not teach or suggest using and transmitting
signatures for a complete restore of a remote storage medium. PO Resp. 47–
48 (citing Ex. 2008 ¶ 162). Patent Owner also argues that the restore
operation in Field fails to disclose a backup inventory that contains a list of

21 In IPR2020-01037, we address Petitioner’s contention that claim 34 (as
written) would have been obvious over Field and Anderson.
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descriptors that comprise cryptographic signatures computed with actual file
data, which descriptors are used to determine the electronic data to restore.
Id. at 48 (citing Ex. 2008 ¶ 162). Patent Owner contends that, as Field does
not teach or suggest a restore operation having a backup inventory
containing descriptors comprised of cryptographic signatures, it cannot teach
the limitation of claim 39 where the same cryptographic signatures are
computed without metadata. Id. (citing Ex. 2008 ¶ 162).
In Petitioner’s Reply, Petitioner argues that neither claim 39 nor
claim 35, from which claim 39 depends, requires a complete restore. Pet.
Reply 21. Petitioner also argues that Patent Owner does not dispute that
Field discloses signatures computed without metadata. Id. at 22.
Patent Owner does not address claim 39 in its Sur-reply.
We find that Petitioner has proven that Field teaches or suggests
limitation 39A. As Petitioner notes, Fields discloses that “SHA-1” and
“other type[s] of algorithms or functions that are capable of generating a
signature from file data may be used to generate the signature used by the
module 202.” Ex. 1004 ¶ 36. We credit Dr. Shenoy’s testimony that an
ordinarily skilled artisan would have understood that algorithms such as
SHA-1 are typically executed based on a file’s content, i.e., computed
without the metadata. Ex. 1002 ¶ 107 (citing Ex. 1005 ¶ 42).
As for Patent Owner’s argument that Field does not teach or suggest a
backup inventory that contains a list of descriptors that comprise
cryptographic signatures computed with actual file data, we disagree. Field
teaches that backup module 202 generates signatures that are compared to
the signatures that are available to the trusted source. Ex. 1004 ¶ 35. As
mentioned, Field further teaches that backup module 202 uses the algorithm
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SHA-1 to generate those signatures. Id. ¶ 36. Algorithms, such as SHA-1
are cryptographic hash algorithms. Ex. 1002 ¶ 78. Further, Field teaches
that “[t]he signatures of files in the backup database 104 are generated with
the same hashing algorithm that was used to generate the signature of the
selected file.” Ex. 1004 ¶ 37. Further, Field teaches or suggests using actual
file date to generate these signatures. Field teaches that its generated
signature uniquely identifies the file. Id. Field further teaches that in
addition to SHA-1, “other type of algorithms or functions that are capable of
generating a signature from file data may be used to generate the signature.”
Id. ¶ 36. Further, we credit Dr. Shenoy’s testimony that SHA-1 is
commonly used to generate a signature from file or data content. Ex. 1002
¶ 78. We credit Dr. Shenoy’s testimony that these disclosures in Field teach
a backup inventory that contains a list of descriptors that comprise
cryptographic signatures computed with actual file data. Id.
Regarding Patent Owner’s argument that Field does not teach a
complete restore, claims 39 and 35 (from which claim 39 depends) do not
require a complete restore of a remote storage medium.
Thus, we find that Petitioner has shown that Field teaches or suggests
limitation 39A. Accordingly, we determine that Petitioner has proven that
claim 39 would have been obvious over Field.
C. Asserted Obviousness over Field and Anderson
Petitioner asserts that claim 38 would have been obvious over Field
and Anderson. Pet. 5.
1. Anderson
Anderson is directed to “a method and apparatus for differential
bandwidth-efficient and storage-efficient backup and restoration.” Ex. 1005
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¶ 12. Anderson describes backing up “articles,” such as “user data, (e.g.,
text, photos, music, movies, etc.), applications . . . command scripts, byte
codes, [and] configuration data.” Id. ¶ 15.
Figure 9 of Anderson is reproduced below:

Figure 9 above illustrates an embodiment where mutliple clients (1–N) can
connect with backup service system 925. Ex. 1005 ¶ 11.
When backing up data, the client generates a content identifier (CI)
for each article that is stored on the client system. Ex. 1005 ¶ 63. A content
identifier includes a signature of the article’s contents. Id. ¶ 42. A signature
value characterizing the specific article’s content is generated using a well
known cryptographic hash algorithm, e.g., a “secure hash algorithm” such as
“SHA-1.” Id. ¶ 42. “By using one or more content-signaturing mechanisms
to generate CI values, the CI uniquely identifies, for all practical purposes,
the contents of a particular article, not just on the user’s system, but across
the sample space of all computer systems.” Id. ¶ 43.
Anderson explains that after a client generates a CI for each article
stored on the client system:
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The client’s system transmits the CIs to the backup service.
Since these CIs identify articles uniquely, the backup service can
determine whether a CICD [Client-Invariant Content
Decriptor22] corresponding to the CI exists on the backup
service’s designated storage device. If the backup service
determines that it already has a CICD for an article’s CI, there is
no need for the client system to upload the article contents for
backup on the server. If the CICD is not present on the backup
service’s designated storage device, the client transfers the
article’s contents and possibly additional data, to the backup
service.
Id. at ¶ 63.
2. Claim 38
Claim 38 depends from claim 35 and further recites “the
cryptographic signature is also computed with the metadata”
(“limitation 38A”). Ex. 1001, 23:24–25.
a. Parties’ Arguments
In the Petition, Petitioner argues that Field discloses generating
signatures of files selected for backup using cryptographic algorithms.
Pet. 41 (quoting Ex. 1004 ¶ 36). Petitioner further argues that Field
discloses that the signatures of files in the backup database 104 are
generated with the same hashing algorithm that was used to generate the
signature of the selected file. Id. (quoting Ex. 1004 ¶ 37). Petitioner argues
that an ordinarily skilled artisan would understand that the file data from
which the signature was generated can include both file content and

22 A Client-Invariant Content Descriptor “includes a CI, article contents and
can also include commonly shared metadata (e.g., article location (e.g., path
name), access permissions, article size, etc.). In one embodiment, a content
signaturing mechanism identifier is included in [a] CICD . . . to reflect the
algorithm used to generate the CI.” Ex. 1005 ¶ 57.
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metadata. Id. (citing Ex. 1002 ¶ 138). Petitioner argues that Anderson
discloses the use of cryptographic signatures that take into account both file
data and file metadata. Id. at 41–42 (citing Ex. 1005 ¶ 42). Petitioner
further argues that Anderson discloses incorporating metadata into its
signature-generating algorithm to create a more robust signature. Id. at 42
(quoting Ex. 1005 ¶ 46). Petitioner further argues that an ordinarily skilled
artisan would have been motivated to use Anderson’s augmented signature-
generating algorithm in relatively large environments in which many
different clients and files were subject to the backup process, such as in a
large enterprise environment as discussed by Field. Id. (citing Ex. 1002
¶¶ 138–139; Ex. 1004 ¶ 40).
Petitioner further argues that both Field and Anderson are directed to
efficient data backup across multiple client devices. Pet. 38 (citing
Ex. 1004, code (57); Ex. 1005 ¶ 12). Petitioner further argues that both
Field and Anderson disclose similar processes for backing up files, including
selecting files to be backed up on a client device, generating content
signatures for files based on file data, determining whether files to be backed
up are already stored at a backup device, and obviating the need to send file
content to the backup device when the file content has already been
previously transmitted by the same or a different client device. Id. (citing
Ex. 1004 ¶¶ 31–41, Fig. 3; Ex. 1005 ¶¶ 63, 94–106; Ex. 1002 ¶¶ 122–31).
Petitioner further argues that an ordinarily skilled artisan would have
been motivated to include file metadata as an input to Field’s signature-
generating algorithm in certain implementations, in addition to the file
content. Pet. 39 (citing Ex. 1002 ¶ 132).
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In the Patent Owner Response, Patent Owner argues that Field fails to
disclose a backup inventory that contains a list of descriptors, which
comprise cryptographic signatures computed with actual file data, that are
used to determine the electronic data to restore. PO Resp. 53 (citing
Ex. 2008 ¶ 159). Patent Owner argues that the restore operation disclosed in
Field does not teach or suggest using and transmitting signatures for a
complete restore of a remote storage medium and thus cannot teach
limitation 38A. Id. (citing Ex. 2008 ¶ 159).
Patent Owner also argues that just because Field and Anderson are in
the same general field does not mean that it would have been obvious to
combine them. PO Resp. 52 (citing Ex. 2008 ¶ 111). Patent Owner asserts
that Field and Anderson discuss different backup processes, which
undermines Petitioner’s motivation to combine their teachings. Id. (citing
Ex. 2008 ¶ 112). According to Patent Owner, Anderson is designed to
perform a full backup system using file signatures, e.g., content identifiers
that identify multiple articles. Id. (citing Ex. 2008 ¶ 112). Patent Owner
argues that, on the other hand, Field teaches two distinct and separate ways
of backing up a storage device, neither of which is a full and complete
backup of a storage medium using signatures. Id. (citing Ex. 2008 ¶ 112).
Patent Owner also argues that Petitioner’s proffered motivation to
combine is weak because there is no suggestion in Field of any concern for
the robustness of a signature. PO Resp. 54 (citing Ex. 2008 ¶ 160). Patent
Owner argues that instead Petitioner teaches a file-by-file backup process
that selects only one file at a time. Id. (citing Ex. 2008 ¶ 160). Patent
Owner argues that this means there is only one file signature generated from
that file to compare to the signatures already stored on the trusted source.
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Id. (citing Ex. 2008 ¶ 160; Ex. 1004 ¶ 2). According to Patent Owner,
computing a cryptographic signature with metadata is unnecessary in Field,
and there is no motivation to add this step in view of Field’s technological
solution. Id. (citing Ex. 2008 ¶ 160).
In Petitioner’s Reply, Petitioner argues that Field need not expressly
disclose the modification to modify it. Pet. Reply 23. Petitioner also argues
that it is irrelevant whether Field backs up files one at a time because Field’s
backup process still applies to large environments where many different
clients and files are involved, like Anderson’s. Id. In such environments,
Petitioner argues that augmenting Field’s signature-generating algorithm
with content-related metadata, as disclosed in Anderson, improves collision
resistance while still preventing duplicate data from being stored. Id. at 23–
24 (Ex. 1024 ¶¶ 71–72).
In its Sur-reply, Patent Owner does not address claim 38.
b. Discussion
i. Combination of Field and Anderson
We find that an ordinarily skilled artisan would have been motivated
to combine Field and Anderson in the manner proposed by Petitioner and
would have had a reasonable expectation of success in so doing.
Both Field and Anderson are in the same general field of electronic
data backup and restoration, and both specifically address problems of
processing and network efficiency. Ex. 1004, code (57), ¶ 23 (“[T]he
present invention performs optimizations designed to reduce the amount of
time and network bandwidth required to backup a computing device.”), ¶ 38
(“[T]he remote backup module 202 is able to backup data using less network
bandwidth and other resources than is found in the prior art.”); Ex. 1005 ¶ 12
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(“The Embodiments discussed herein generally relate to a method and
apparatus for differential bandwidth-efficient and storage-efficient backup
and restoration.”); Ex. 1002 ¶ 135.
Both Field and Anderson are directed to efficient data backup across
multiple client devices. Ex. 1004, code (57); Ex. 1005 ¶ 12. Field and
Anderson disclose similar processes for backing up files, including selecting
files to be backed up on a client device, generating content signatures for
files based on file data, determining whether files to be backed up are
already stored at a backup device, and obviating the need to send file content
to the backup device when the file content was previously transmitted by the
same or a different client device. See Ex. 1004 ¶¶ 31–41, Fig. 3; Ex. 1005
¶¶ 63, 94–106; Ex. 1002 ¶¶ 122–131. An ordinarily skilled artisan would
have naturally looked to Anderson for additional implementation details for
Field’s backup and restore processes. Ex. 1002 ¶ 134.
Although Field discloses that its file signatures are generated “from
file data,” (Ex. 1004 ¶ 36), Field does not disclose whether that file data is
only file content, or metadata in addition to the file content. Ex. 1002 ¶ 132.
Based on the teachings of Anderson, an ordinarily skilled artisan would have
been motivated to include file metadata as an input to Field’s signature-
generating algorithm in certain implementations, in addition to the file
content. Id.
Anderson discloses the use of signature algorithms that take into
account both file data and file metadata. Anderson discloses that its CIs for
articles (e.g., files) are “generated using a cryptographic hash algorithm,
such as a message digest algorithm (e.g., MD5) or secure hash algorithm
(e.g., SHA-1). Ex. 1002 ¶ 132. Anderson further discloses incorporation of
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metadata into its signature-generating algorithm to create a more robust
signature:
[f]or example, a content signature generated by an MD5 secure
hash algorithm may be augmented with article size information
(appropriately formatted by a content signaturing mechanism) to
produce a more robust CI. It is preferable to employ a CI derived
only from the contents (e.g., cryptographic hash of the article
contents) or metadata concerning the contents (e.g., content
length).
Ex. 1005 ¶ 46; Ex. 1002 ¶ 132.
An ordinarily skilled artisan would recognize that augmenting the
signature-generating algorithm with metadata such as file size creates a more
robust signature, reducing the potential for signature value collisions.
Ex. 1002 ¶ 133. Further, an ordinarily skilled artisan would have been
motivated to use such an augmented signature generating algorithm in
relatively large environments in which many different clients and files were
subject to the backup process. Id. This would motivate an ordinarily skilled
artisan to use such signatures in Field’s embodiment in which: “the present
invention is implemented in an enterprise-type organization.” Ex. 1004
¶ 43; Ex. 1002 ¶ 133. An ordinarily skilled artisan would have had a
reasonable expectation of success implementing such a signature-generating
algorithm in Field because this would involve nothing more than employing
the well-known hashing techniques, disclosed in both Field and Anderson,
using certain metadata along with file content as inputs to the cryptographic
hash algorithm, which was within the skill of an ordinarily skilled artisan.
Ex. 1002 ¶ 133.
As discussed above, Patent Owner contends that just because Field
and Anderson are in the same general field does not mean that it would have
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been obvious to combine them. PO Resp. 52 (citing Ex. 2008 ¶ 111).
Although we accept that contention, Petitioner has not merely shown that
Field and Anderson are in the same general field. Petitioner has shown that
Field and Anderson specifically address problems of processing and network
efficiency. Ex. 1004, code (57), ¶¶ 23, 38; Ex. 1005 ¶ 12; Ex. 1002 ¶ 135.
Petitioner has further shown both are directed to data backup across multiple
client devices. Ex. 1004, code (57); Ex. 1005 ¶ 12; Ex. 1002 ¶ 135.
Petitioner has also shown that Field and Anderson disclose similar processes
for backing up files, including selecting files to be backed up on a client
device, generating content signatures for files based on file data, determining
whether files to be backed up are already stored at a backup device, and
obviating the need to send file content to the backup device when the file
content was previously transmitted by the same or a different client device.
Ex. 1002 ¶ 135. Further, Petitioner has provided a specific motivation for
modifying Field based on Anderson’s teachings: augmenting Field’s
signature-generating algorithm with metadata such as file size creates a more
robust signature, reducing the potential for signature value collisions. Id.
¶ 132.
As discussed above, Patent Owner argues that Field and Anderson
discuss different backup processes, which allegedly undermines Petitioner’s
motivation to combine their teachings. PO Resp. 52–53 (citing Ex. 2008
¶ 112). Patent Owner argues that Anderson is designed to perform a full
backup system using file signatures, e.g., content identifiers that identify
multiple articles, whereas Field teaches two distinct and separate ways of
backing up a storage device, neither of which is a full and complete backup
of a storage medium using signatures. Id. at 53 (citing Ex. 2008 ¶ 112). We
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do not agree, however, that an ordinarily skilled artisan would view the
teachings of Anderson as inapplicable to Field because Anderson is directed
to a full backup system using file signatures and Field’s full backup system
purportedly does not use signatures.
The motivation to modify Field to produce more robust signatures
does not depend on whether a full backup is performed or a partial backup is
performed. It has to do with the fact that Field is disclosed as applicable to
large organizations that could have many different clients and files, like
Anderson, and for that reason augmenting Field’s signature generating
algorithm with content-related metadata, as disclosed in Anderson, would
improve collision resistance and prevent duplicate data from being stored.
Ex. 1024 ¶¶ 70–72; Ex. 1005 ¶ 46. Further, we do not agree that Anderson’s
backup system can only perform full backups. Anderson discloses backing
up a contour that “can comprise every article on the client device or a
proper subset of articles on the client device.” Ex. 1005 ¶ 19 (emphasis
added); Ex. 1024 ¶ 45.
As discussed above, Patent Owner argues there is no suggestion in
Field of any concern for the robustness of a signature and that Field teaches
a file-by-file backup process that selects only one file at a time. PO Resp. 54
(citing Ex. 2008 ¶ 160). Patent Owner argues that the latter means that there
is only one file signature generated from that file to compare to the
signatures already stored on the trusted source and computing a
cryptographic signature with metadata is unnecessary in Field, and there is
no motivation to add this step in view of Field’s technological solution. Id.
(citing Ex. 2008 ¶ 160; Ex. 1004 ¶ 2). We disagree. Field does not need to
suggest the use of a more robust signature for Petitioner’s proposed
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combination; Anderson does that. Further, Petitioner’s proffered motivation
to modify Field to provide a more robust signature does not depend on any
simultaneous transmission of signatures. Ex. 1024 ¶¶ 70–72. It has to do
with the fact that Field is disclosed as applicable to large organizations that
would have many different clients and files, like Anderson’s, and for that
reason augmenting Field’s signature generating algorithm with content-
related metadata, as disclosed in Anderson, would improve collision
resistance and prevent duplicate data from being stored. Id.; Ex. 1005 ¶ 46.
We find that an ordinarily skilled artisan would have been motivated
to combine Field and Anderson in the manner proposed by Petitioner and
would have had a reasonable expectation of success in so doing. Ex. 1002
¶¶ 120–134; Ex. 1024 ¶¶ 43–58.
ii. Limitation 38A
We find that Field and Anderson teach limitation 38A, which, as
mentioned, reads “the cryptographic signature is also computed with the
metadata.” Ex. 1001, 23:24–25.
Field discloses generating signatures of files selected for backup using
cryptographic algorithms:
In an exemplary embodiment of the present invention, a hashing
algorithm is used, at block 308, to process the selected file and
generate the signature. For example, the existing hashing
algorithm commonly known “SHA-1” may be used to generate
the signature. However, other type[s] of algorithms or functions
that are capable of generating a signature from file data may be
used to generate the signature used by the module 202 without
departing from the scope of the present invention.
Ex. 1004 ¶ 36. Field also discloses that “[t]he signatures of files in the
backup database 104 are generated with the same hashing algorithm that was
used to generate the signature of the selected file.” Id. ¶ 37. An ordinarily
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skilled artisan would have understood that the “file data” from which the
signature is generated can include both file content and file metadata.
Ex. 1002 ¶ 138. As discussed above, Anderson discloses the use of
cryptographic signature algorithms that take into account both file data and
file metadata. Ex. 1002 ¶ 138. Anderson discloses that its CIs for articles
(e.g., files) are “generated using a cryptographic hash algorithm, such as a
message digest algorithm (e.g., MD5) or secure hash algorithm (e.g.,
SHA-1). In this embodiment using well-known cryptographic hash
algorithms, a signature value characterizing the specific article’s content is
generated.” Ex. 1005 ¶ 42.
As discussed above, Anderson further discloses incorporation of
metadata into its signature generating algorithm to create a more robust
signature. Ex. 1005 ¶ 46. An ordinarily skilled artisan would have been
motivated to use such an augmented signature generating algorithm in
Field’s environment. Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40. Thus, an
ordinarily skilled artisan would have modified Field’s cryptographic
signature generating algorithm so it would compute a file’s signature using a
file’s metadata. Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40. Accordingly, Field
and Anderson disclose that “the cryptographic signature is also computed
with the metadata.” Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40.
As discussed above, Patent Owner argues that the restore operation in
Field fails to disclose a backup inventory that contains a list of descriptors
that comprise of cryptographic signatures computed with actual file data and
that are used to determine the electronic data to restore. PO Resp. 53 (citing
Ex. 2008 ¶ 159). Patent Owner asserts that as Field does not teach or even
suggest a restore operation having a backup inventory containing descriptors
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comprised of cryptographic signatures, it cannot teach the limitation where
the same cryptographic signatures are computed with metadata. Id. (citing
Ex. 2008 ¶ 159). As set forth in Section III.B.2 above, we find that Field
does teach a backup inventory that contains a list of descriptors that
comprise cryptographic signatures computed with actual file data and that.
backup inventory is used to determine electronic data to restore.
As discussed above, Patent Owner also argues that the restore
operation disclosed in Field does not teach or suggest using and transmitting
signatures for a complete restore of a remote storage medium. PO Resp. 53
(citing Ex. 2008 ¶ 153). Neither claim 38, nor claim 35 from which
claim 38 depends, however, recites a complete restore.
We find that Petitioner has proven that Field and Anderson teach
limitation 38A. Thus, we find that Petitioner has proven that claim 38 would
have been obvious over Field and Anderson.
D. Asserted Obviousness over Field, Anderson, and Coombs
Petitioner asserts that claim 40 would have been obvious over Field,
Anderson, and Coombs. Pet. 5.
1. Coombs
Coombs is directed to “[a] method and system of data backup for a
computer system.” Ex. 1006, code (57). Coombs discloses that its
disclosure “relates to the backup of data in a data processing system,
including backup data management and restore.” Id. ¶ 2.
Coombs discloses periodic full and incremental backups of user files.
Ex. 1006 ¶ 35. For example, Coombs discloses that:
An incremental backup is a copy at a particular point in time of
data files to be backed up from primary storage device 22 and
that were changed or added to primary storage device 22
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subsequent to a previous backup. The incremental backup may
be performed relative to a full backup or [] another incremental
backup.
Id. Coombs further discloses: “[w]hether performing a full or incremental
backup, the entire file structure at the primary data storage device is scanned
to establish a list of every file and their file attributes,” and “[f]or an
incremental backup, the contents of only those files that have a last-changed
date that is newer than the corresponding last-change date for the respective
files determined from the parent backup index are stored.” Id. ¶ 45.
2. Claim 40
Petitioner sets forth its arguments and evidence as to why an
ordinarily skilled artisan would have been motivated to combine Coombs
with Field and Anderson. Pet. 42–49. Further, Petitioner separately sets
forth—for the preamble and each limitation of claim 40—the arguments and
evidence that it contends show that Field, Anderson, and Coombs teach or
suggest the preamble and each limitation. Id. at 50–73.
Patent Owner disputes that an ordinarily skilled artisan would have
been motivated to combine Field, Anderson, and Coombs to achieve the
claimed invention. PO Resp. 55–60. Further, Patent Owner disputes that
Field, Anderson, and Coombs teach the use of a first and a second inventory
during a backup or restore process as recited in claim 40. Id. at 60–61.
We focus our discussion here on these disputed issues.
a. Motivation to Combine
i. Parties’ Arguments
(a). Petition
In the Petition, Petitioner argues that an ordinarily skilled artisan
would have been motivated to combine Field and Anderson with a
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reasonable expectation of success for the same reasons as set forth for
claim 38. Pet. 44. Petitioner asserts that Field discloses that each signature
of files selected for backup “is transmitted to the back end computing device
where it is compared to signatures of files already available to the trusted
source.” Id. (quoting Ex. 1004 ¶ 8). Petitioner argues that Field also
explains that files that are determined to be duplicative of files already
stored at Field’s backup database are not transmitted by the client device.
Id. (citing Ex. 1004 ¶ 38).
Petitioner argues that an ordinarily skilled artisan would have
recognized that Field would need some method of informing the client
device not to transmit files in the cases where signatures indicate the files are
duplicative. Pet. 44 (citing Ex. 1002 ¶ 153). Petitioner asserts that this
would have motivated an ordinarily skilled artisan, looking to implement
Field’s teachings, to seek out references that disclose how a backup server
can notify a client that a file is already stored on the backup server. Id. at 45
(citing Ex. 1002 ¶ 153). Petitioner asserts that if Anderson’s backup process
“determines that files do not need to be transmitted,” the process “completes
and a message is sent to the client informing the client that there is no need
to transmit article contents to the server.” Id. (quoting Ex. 1005 ¶ 98)
(emphasis omitted).
Petitioner further argues that an ordinarily skilled artisan would have
found it obvious to employ Anderson’s “message” in the process of Field
when a file “was previously made available to the trusted source” to inform
the client device that no further action is necessary. Pet. 45 (citing Ex. 1002
¶ 154). Petitioner argues that an ordinarily skilled artisan would have had a
reasonable expectation of success employing Anderson’s “message” in the
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process of Field because this operation would be a simple addition to Field’s
disclosed process, to the extent not already employed, merely adding a well-
known transmission of an informative message to the client device. Id. at
45–46 (citing Ex. 1002 ¶ 154).
Petitioner asserts that, based on the disclosure of Anderson, an
ordinarily skilled artisan would have been motivated to transmit a message
to the client device in Field’s backup process to inform not only the client
device itself, but also the user of the client device, when a file “was
previously made available to the trusted source” and does not need to be
retransmitted. Id. (quoting Ex. 1004 ¶ 38) (citing Ex. 1002 ¶ 155).
Petitioner argues that additionally an ordinarily skilled artisan would
have been motivated to look to Anderson for details regarding how to inform
client devices in Field when files need to be transmitted to the backup
service. Pet. 46 (citing Ex. 1002 ¶ 156). Petitioner asserts that Anderson
explains that “[a]rticles [(e.g., files)] that are not stored at the designated
storage device (as determined by indexing the database/catalog with the
associated CIs) are added to the article request list.” Id. (citing Ex. 1005
¶ 98). Petitioner argues that an ordinarily skilled artisan would have been
motivated to incorporate Anderson’s request list operation into Field’s
backup process at least for purposes of reducing network bandwidth. Pet. 47
(citing Ex. 1002 ¶ 157).
Petitioner further argues that Field teaches “the present invention
performs optimizations designed to reduce the amount of time and network
bandwidth required to backup a computing device.” Pet. 59 (citing Ex. 1004
¶¶ 22, 23). Petitioner asserts that, based on this express motivation of Field,
as part of transmitting signatures for the selected files to be backed up, an
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ordinarily skilled artisan would have found it obvious to transmit the
generated signatures for the selected files to the back end computing device
at the same time to reduce network bandwidth (e.g., overhead). Id. (citing
Ex. 1002 ¶¶ 180–82).
Petitioner further argues that Anderson teaches concurrently
transmitting multiple content identifiers at the same time for files (i.e.,
“articles”) selected to be backed up. Pet. 60 (citing Ex. 1002 ¶ 182).
Petitioner asserts that Anderson discloses that a “client generates a CI
[(content identifier)] for each article that is stored on the client system,” and
then “[t]he client’s system transmits the CIs to the backup service.” Id.
(quoting Ex. 1005 ¶ 63) (citing id. ¶ 97, Fig. 7 (block 720)). According to
Petitioner, consistent with Field’s goal of “reduc[ing] . . . network
bandwidth[,]” an ordinarily skilled artisan would have been motivated to
concurrently transmit Field’s generated signatures as in Anderson because it
would further reduce the amount of network overhead in Field’s backup
process. Id. (quoting Ex. 1004 ¶ 23) (citing Ex. 1002 ¶ 182).
Petitioner also argues that an ordinarily skilled artisan would have had
a reasonable expectation of success incorporating Anderson’s request list
operations into Field’s backup process. Pet. 47 (citing Ex. 1002 ¶ 158).
Petitioner also argues that an ordinarily skilled artisan would have had a
reasonable expectation of success in concurrently transmitting Field’s
signatures. Pet. 60–61 (citing Ex. 1002 ¶ 182).
Petitioner argues that Field also discloses that “a user of the backup
service provided by the present invention may automatically backup a
computing device at regular intervals” and “a command to perform a backup
may be generated automatically as part of an archival process.” Pet. 48
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(quoting Ex. 1004 ¶¶ 32, 41). According to Petitioner, Field does not
explicitly disclose how its system automatically determines which files need
to be backed up, but Coombs does, and such techniques were well-known at
the time of the ’043 patent. Id. (citing Ex. 1002 ¶ 159). Petitioner argues
that an ordinarily skilled artisan looking to implement the teachings of Field
using an automatic backup process would have needed to understand
techniques for determining which files needed to be automatically backed
up. Id. Petitioner asserts that this would have motivated an ordinarily
skilled artisan to seek out other references that describe such determinations,
such as Coombs. Id. (citing Ex. 1002 ¶ 159).
Petitioner argues that, in the same field of endeavor as Field and
Anderson, Coombs discloses “[a] method and system of data backup for a
computer system” in which “[f]ull and incremental backups of data stored to
a first storage device coupled to the computer system are stored to a backup
storage device coupled to the computer system.” Pet. 48–49 (quoting
Ex. 1006, Abstract). According to Petitioner, Coombs explains that “[a]n
incremental backup is a copy at a particular point in time of data files to be
backed up from primary storage device 22 and that were changed or added
to primary storage device 22 subsequent to a previous backup.” Id. (quoting
Ex. 1006 ¶ 35). Further, Petitioner argues that as part of performing an
“incremental backup,” Coombs discloses, “the entire file structure at the
primary data storage device is scanned” to identify files that were changed
or added since the last backup. Id. (quoting Ex. 1006 ¶ 45).
Petitioner argues that an ordinarily skilled artisan would have
recognized that Coombs’s process of scanning a client device to determine
which files changed since the last backup would have naturally allowed
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Field to perform its automatic backup at regular intervals. Pet. 49 (citing
Ex. 1002 ¶ 161). Petitioner further argues that an ordinarily skilled artisan
would have had a reasonable expectation of success implementing the
techniques of Coombs because no architectural changes would be required
in Field’s process, as this determination of which files to backup would
simply occur at the start of Field’s backup process. Id. (citing Ex. 1002
¶ 161).
(b). Patent Owner Response
In the Patent Owner Response, Patent Owner argues that, during
cross-examination, Dr. Shenoy contradicted Petitioner’s arguments that
Field can transmit multiple signatures and confirmed that only one file
signature is able to be transmitted to the trusted source at a time in Field. PO
Resp. 56 (citing Ex. 2015, 79:8–12; Ex. 2008 ¶ 120). Patent Owner asserts
that Petitioner’s arguments are thus premised on an incorrect assumption
that Field could be modified to transmit multiple signatures at the same time
and to compare said multiple signatures at the same time to determine which
of the multiple files should be transmitted to the trusted source. Id. (citing
Ex. 2008 ¶ 120). Patent Owner contends that in Field if more than one
signature is transmitted from the trusted source to a client device during a
backup or restore operation, then the operating system is unable to identify
which files to backup and restore or where such files should be stored, since
metadata, e.g., file name or directory, is not transmitted with the file
signature. Id. (citing Ex. 2008 ¶ 120). Patent Owner further asserts that
Field teaches a file-by-file backup and restore process for individual files
and there is no evidence that Field can successfully transmit multiple
signatures and then backup and restore multiple files at the same time. Id.
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(citing Ex. 2008 ¶ 122). Patent Owner argues that thus there would have
been no motivation to combine the multiple signatures from Anderson into
Field. Id. at 56–57 (citing Ex. 2008 ¶ 122).
Patent Owner argues that, contrary to Field, the ’043 patent teaches a
full backup and restore of a file system using descriptors transmitted as part
of an inventory having sufficient data to reflect the current state of a drive.
PO Resp. 57 (citing Ex. 2008 ¶ 123).
Patent Owner also argues that there is no motivation to combine Field
and Anderson to teach transmitting the second inventory to inform the client
device which files to backup. PO Resp. 57 (citing Ex. 2008 ¶ 165). Patent
Owner asserts that an ordinarily skilled artisan would not have been
motivated to combine Field and Anderson in this manner because a message
that the selected file is already stored on a backup storage medium would
create an unnecessary step and would be more inefficient than Field’s
process. Id. at 57–58 (citing Ex. 2008 ¶ 166). Patent Owner argues that
Field uses signatures in a file-by-file-based backup system only and teaches
away from using signatures in a full backup of a system. Id. at 58 (citing
Ex. 2008 ¶ 166). Patent Owner argues that instead Field teaches a file-based
backup system that performs a backup of one selected file at a time where
one signature of one file is sent at a time, and not of a group of selected files.
Id. (citing Ex. 2008 ¶ 166). According to Patent Owner, thus, in Field, if a
selected file is already stored on the server, then the system immediately
moves to see if additional files are to be backed up as shown in Figure 3 of
Field. Id. (citing Ex. 1004, Fig. 3; Ex. 2008 ¶ 166).
Patent Owner also asserts that Petitioner’s motivation to combine
statements are conclusory as it would be inefficient and unnecessary for
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Field to first report to the client device that the individual file was already
stored on the system. PO Resp. 59 (citing Ex. 2008 ¶ 128). Patent Owner
argues that Field’s stated solution is to perform optimizations designed to
reduce the amount of time and network bandwidth required to backup a
computing device. Id. Patent Owner contends that reporting a message or
transmitting a second inventory to the client device to inform the client
device that a file is already stored is unnecessary and there is no motivation
to add this step in view of Field’s technological solution. Id. (citing
Ex. 2008 ¶ 128). Patent Owner asserts that, instead, as only one selected file
at a time undergoes the Field backup process, the client device knows
whether the next step is to transmit the file (if a message is received) or to
check if additional files were selected for backup (no message received). Id.
(citing Ex. 2008 ¶ 128). According to Patent Owner, as such, an ordinarily
skilled artisan would not have been motivated to combine Field and
Anderson to teach a more inefficient system. Id. (citing Ex. 2008 ¶ 128).
Patent Owner argues that, furthermore, the backup and restore
operation in Coombs does not teach the use of inventories similar to Field as
well as signatures, in determining which files, portions of files, or data
structures to backup or restore. PO Resp. 59 (citing Ex. 2008 ¶ 114).
Further, Patent Owner asserts that an ordinarily skilled artisan would not
have been motivated to combine Coombs with Field as Field relies on file
signatures to provide an efficient file-by-file-based backup process and
Coombs does not. Id. (citing Ex. 2008 ¶ 114).
(c). Reply
Petitioner argues that the ’043 patent claims do not require
transmitting all file signatures at the same time. Pet. Reply 24. Petitioner
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argues that it would nevertheless have been obvious to transmit all file
signatures at the same time. Id. (citing Ex. 1005 ¶ 53). Petitioner argues
that, although Patent Owner challenges whether this could be done in Field,
Dr. Weissman acknowledged that this could be accomplished given the high
skill in the art. Id. (citing Ex. 1025, 112:11–22, 113:5–114:9; Ex. 1024
¶¶ 53–55).
Petitioner further argues that claim 40 does not require transmitting a
message that a selected file is already stored on the backup storage medium.
Pet. Reply 24–25 (citing Ex. 1001, claim 4). Petitioner argues that claim 40
requires “transmitting the second inventory” to the client device, which
includes signatures identifying files “not found . . . in the backup system”;
that is, files which have not been stored on the backup storage medium. Id.
at 25 (citing Ex. 1024 ¶¶ 76–77). Petitioner asserts that Patent Owner does
not challenge that Anderson discloses this operation or the motivation to
incorporate such operation into Field’s backup process. Id.
Petitioner further argues that Coombs’s scanning techniques are
readily applicable to Field’s backup process, regardless of whether Coombs
discloses an “inventory” with Patent Owner’s proposed construction. Pet.
Reply 25 (citing Ex. 1024 ¶ 58).
(d) Sur-reply
Patent Owner argues that Petitioner ignores that Field, Anderson, and
Coombs disclose different backup processes. Sur-reply 15. Patent Owner
contends that Anderson does not teach a file-based backup where one file at
a time is backed up, but rather a full backup system using content identifiers
that identify various data. Id. According to Patent Owner, Coombs claims a
backup process that consists of automatic “full” and “incremental” backups
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of data stored in a first storage device such as system configuration files and
user files. Id. (citing Ex. 1006 ¶ 35). Patent Owner further argues that Field
teaches away from using a signature file method for full volume backups of
a system. Id. (citing Ex. 2017 ¶ 13). According to Patent Owner, Field’s
volume-based backup does not use signatures of files to protect against
duplicated data from being stored and restored. Id. (citing Ex. 2017 ¶ 13).
Further, Patent Owner asserts that Field’s file-based backup fails to disclose
the transmittance of multiple signatures and the ability to backup multiple
files at the same time unlike in Anderson. Id. (citing Ex. 2017 ¶ 14).
Patent Owner further asserts that it never alleged that the ’043 Patent
claims only teach a full backup of a system. Sur-reply 16. Patent Owner
argues that the ’043 Patent claims teach a backup process where not only
files are being backed up, but directory structures as well, which in turn
allows for a complete backup of the selected electronic data. Id. Patent
Owner further asserts that the electronic data may consist of complete files,
chunks of data, and even complete systems, which allows for a full restore.
Id. According to Patent Owner, on the other hand, Field’s two backup
processes teach away from performing full backups of electronic data. Id.
Patent Owner asserts that specifically, Field’s file-based process identifies
one file to backup at a time and uses a signature of that file to determine
whether to backup that file. Further Patent Owner asserts that Field’s file-
based backup does not perform a backup of the directory structure of the
system to allow for a complete backup or restore of one, specific file. Id.
Patent Owner argues that Field is incapable of doing so. Id.
Patent Owner further argues that backing up all files on a device using
Field’s file-based backup process is a tedious and inefficient process as a
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user would only be able to backup one file at a time. Sur-reply 16. Patent
Owner asserts that doing such a backup would defy the goals of Field, which
includes creating an efficient backup system. Id. According to Patent
Owner, thus, an ordinarily skilled artisan would be discouraged from using
Field when having to backup all files on a device using Field’s file-based
backup process. Id.
ii. Discussion
We find that Petitioner has proven that an ordinarily skilled artisan
would have been motivated to combine Field, Anderson, and Coombs in the
manner proposed by Petitioner and would have had a reasonable expectation
of success in so doing.
We find that an ordinarily skilled artisan would have found it obvious
to employ Anderson’s “message” in the process of Field when a file “was
previously made available to the trusted source” to inform the client device
that no further action is necessary. Ex. 1002 ¶ 153. Although Field does not
explicitly disclose how its “back end computing device” informs a client that
a file has already been stored in the backup database, Field requires some
method of doing so. Id.; Ex. 1004, Fig. 3. Incorporating Anderson’s
“message” into Field would result in Field’s “back end computing device”
instructing the client device not to transmit the file to the back end
computing device and allows the backup process on the client device to
complete (or proceed further as necessary), freeing up computing resources,
rather than having Field wait to determine whether files need to be submitted
to the backend computing device. Ex. 1002 ¶ 153. We further find that an
ordinarily skilled artisan would have had a reasonable expectation of success
employing Anderson’s “message” in the process of Field because this
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operation would be a simple addition to Field’s disclosed process, to the
extent not already employed, merely adding a well-known transmission of
an informative message to the client device. Id. Field already discloses
communication between the back end computing device and the target
computing device (the device backing up files), so this would not involve
any new techniques. Id.; Ex. 1004 ¶ 42.
We further find that an ordinarily skilled artisan would have been
motivated to transmit a message to the client device in Field’s backup
process to inform not only the client device itself, but also the user of the
client device, when a file was previously made available to the trusted
source and does not need to be retransmitted. Ex. 1004 ¶ 38; Ex. 1002
¶ 155. This would be a simple addition to Field’s disclosed process, merely
adding a well-known transmission of an informative message. Ex. 1002
¶ 155. Such a message would prevent the user from wondering whether the
backup process has successfully completed. Id. In other words, the user
would not feel the need to reattempt backup, as might commonly be done
without any assurance that the backup process completed successfully. Id.
Additionally, we find that an ordinarily skilled artisan would have
been motivated to look to Anderson for details regarding how to inform
client devices in Field when files need to be transmitted to the backup
service. Ex. 1002 ¶ 155. In particular, Field discloses that files selected for
backup that do not exist in the backup database are “transmitted to the
remote computing device associated with the trusted source.” Ex. 1004
¶ 38; Ex. 1002 ¶ 155. Field does not explicitly disclose the exact mechanism
used to inform the client device when files need to be transmitted from the
client device. Ex. 1002 ¶ 156. Anderson discloses such a mechanism in the
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form of an article request list. Ex. 1002 ¶ 156; Ex. 1005 ¶ 89. Anderson
explains that “[a]rticles [(e.g., files)] that are not stored at the designated
storage device (as determined by indexing the database/catalog with the
associated CIs) are added to the article request list.” Ex. 1005 ¶ 98;
Ex. 1002 ¶ 156. Anderson then discloses that “the backup service transmits
the article request list (including CIs only, as there is no need to send any
metadata back) to the client's system.” Ex. 1005 ¶ 98; Ex. 1002 ¶ 156.
We find that an ordinarily skilled artisan would have been motivated
to incorporate Anderson’s request list operation into Field’s backup process
at least for purposes of reducing network bandwidth. Ex. 1002 ¶ 156. Field
seeks to provide “a system that performs a backup of user data on a remote
computing device . . . without requiring excessive network bandwidth.”
Ex. 1004 ¶ 6, see also id. ¶ 23; Ex. 1002 ¶ 156. An ordinarily skilled artisan
would have understood that by generating a request list that is transmitted to
the client, Field would only need to send a single message to the client
informing which files need to be transmitted to the back end computing
device, rather than a separate message for each file. Ex. 1002 ¶ 156.
Further, because the request list only includes file signatures, the size of the
message can be minimized since the size of a signature is the fraction of the
size of the actual file. Id.; Ex. 1004 ¶ 38 (“a signature of the file, which is a
fraction of the size of a complete file”). Further, because the client receives
a single list of files to be transmitted to the backup server, transmission of
the required files to the back end computing device in Field can be
optimized, for example by using a single or batch transmission. Ex. 1002
¶ 156.
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We find that an ordinarily skilled artisan would have had a reasonable
expectation of success incorporating Anderson’s request list operations into
Field’s backup process. Ex. 1002 ¶ 157. Doing so would apply a known
technique (i.e., generation of a list of items and transmission of the list in a
message) to the backup process of Field and would yield predictable results.
Id. Rather than compare and transmit each file separately, Field’s process
(as depicted in Figure 3) could instead compare at the back end computing
device each of the generated signatures of selected files before any files are
transmitted from the client to the back end computing device (step 312). Id.
This would allow the client to receive the request list and subsequently
transmit the required files at the same time. Id. Field already discloses
communication between the back end computing device and the target
computing device (the device backing up files), so this would not involve
any new techniques. Id.; Ex. 1004 ¶ 42.
Further, we find that Field discloses that “a user of the backup service
provided by the present invention may automatically backup a computing
device at regular intervals” and “a command to perform a backup may be
generated automatically as part of an archival process.” Ex. 1004 ¶¶ 32, 41;
Ex. 1002 ¶ 158. Field, however, does not explicitly disclose how its system
automatically determines which files need to be backed up, but Coombs
does, and such techniques were well-known at the time of the ’043 patent.
Ex. 1002 ¶ 158. An ordinarily skilled artisan looking to implement the
teachings of Field using an automatic backup process would have needed to
understand techniques for determining which files needed to be
automatically backed up. Id. This would have motivated an ordinarily
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skilled artisan to seek out other references that describe such determinations,
such as Coombs. Id.
We find that Coombs discloses “[a] method and system of data
backup for a computer system” in which “[f]ull and incremental backups of
data stored to a first storage device coupled to the computer system are
stored to a backup storage device coupled to the computer system.”
Ex. 1006, code (57). Coombs explains that “[a]n incremental backup is a
copy at a particular point in time of data files to be backed up from primary
storage device 22 and that were changed or added to primary storage device
22 subsequent to a previous backup.” Id. Further, as part of performing an
“incremental backup,” Coombs discloses, “the entire file structure at the
primary data storage device is scanned” to identify files that were changed
or added since the last backup. Id.; Ex. 1002 ¶ 159.
We find that an ordinarily skilled artisan would have recognized that
Coombs’s process of scanning a client device to determine which files
changed since the last backup would have naturally allowed Field to perform
its automatic backup at regular intervals. Ex. 1002 ¶ 160. At the time of the
’043 patent, this was a traditional way to examine each file for changes. Id.
An ordinarily skilled artisan would have had a reasonable expectation of
success implementing the techniques of Coombs because no architectural
changes would be required in Field’s process, as this determination of which
files to backup would simply occur at the start of Field’s backup process. Id.
These techniques could be employed at the start of Field’s backup process
without affecting any other steps. Id. Further, identifying files that changed
since the last backup also aligns with Field’s goal of reducing network
bandwidth by only attempting to backup files that have changed, rather than
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having to transmit signatures of all files across the network for each backup,
which is required for Field to perform its comparison of each file signature
to signatures of files already available to the trusted source at the back end
computing device. Id.; Ex. 1004 ¶ 8. For these reasons, an ordinarily skilled
artisan would have recognized that Coombs provides details beneficial to
Field’s automated backup process and would have applied Coombs’s
teachings to Field’s process. Ex. 1002 ¶ 160.
As discussed above, Patent Owner argues that, during cross-
examination, Dr. Shenoy contradicted Petitioner’s arguments that Field can
transmit multiple signatures and confirmed that only one file signature is
able to be transmitted to the trusted source at a time. PO Resp. 56 (citing
Ex. 2015, 79:8–12; Ex. 2008 ¶ 120). We disagree. The cited testimony
reads as follows:
Q. . . . So is there anything else being sent in Field aside from the
signature in this sentence?
A· ·In this particular sentence, it does say that it is causing the
signature of a selected file. That is what is being sent.
Ex. 2015, 79:8–12. In that testimony, Dr. Shenoy does not opine whether
Field’s process could be modified to send more than one signature at time.
He merely testifies that one particular sentence in Field discloses sending
one signature at a time.
As discussed above, Patent Owner argues that an ordinarily skilled
artisan would not have been motivated to combine Field and Anderson to
transmit a message that a selected file is already stored on a backup storage
medium because that would create an unnecessary step and be more
inefficient than Field’s process. PO Resp. 57–58 (citing Ex. 2008 ¶ 166).
Claim 40 actually does not require that its method transmit a message that a
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selected file is already stored on the backup storage. Claim 40 recites
“generating a second inventory, the second inventory including the
cryptographic signatures found in the first inventory and not found in the list
containing all cryptographic signatures identifying actual data currently
stored in the backup system” and “transmitting that second inventory from
the backup server to the client device.” Ex. 1001, 23:28–24:36. Thus, this
transmitted second inventory sets forth what is not stored on the backup
storage, rather than what is stored on the backup storage. Petitioner has
shown that Field and Anderson teach these recited steps. Pet. 66–71 (and
the exhibits cited therein). Further, we disagree with Patent Owner’s
argument that, with Field’s process, it would be undesirable to have the
backup server transmit a message to the client device indicating whether a
selected file is already stored on the backup storage medium. See Ex. 1024
¶ 153.
Patent Owner also argues that there is no motivation to combine Field
and Anderson to teach transmitting the second inventory to inform the client
device which files to backup. PO Resp. 57 (citing Ex. 2008 ¶ 165). Patent
Owner asserts that an ordinarily skilled artisan would not have been
motivated to combine Field and Anderson in this manner because a message
that the selected file is already stored on a backup storage medium would
create an unnecessary step and would be more inefficient than Field’s
process. Id. at 57–58 (citing Ex. 2008 ¶ 166). We disagree. Although Field
does not explicitly disclose how its back end computing device informs a
client that a file has already been stored in the backup database, Field
requires some method of doing so. Ex. 1024 ¶ 153. Incorporating
Anderson’s “message” into Field would result in Field’s back end
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computing device instructing the client device not to transmit the file to the
back end computing device and allowing the backup process on the client
device to complete (or proceed further as necessary), freeing up computing
resources, rather than waiting to determine whether files need to be
submitted to the back end computing device. Id.
As discussed above, Patent Owner argues that Field uses signatures in
a file-by-file-based backup system only and teaches away from using
signatures in a full backup of a system. PO Resp. 58 (citing Ex. 2008
¶ 166). We disagree. A reference may be said to teach away when a person
of ordinary skill, upon reading the reference . . . would be led in a direction
divergent from the path that was taken by the applicant.” In re Haruna, 249
F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich.
Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)); see In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004) (holding that, to teach away, the prior art must
“criticize, discredit, or otherwise discourage the solution claimed”). Patent
Owner fails to identify, and we do not discern, any indication in Field that
criticizes, discredits, or otherwise discourages one of ordinary skill in the art
from using signatures with a full backup. That one backup (file-by-file)
involves generating signatures, where the other backup (volume state) does
not, does not mean that Field teaches away from using signatures in a full
backup simply because it is not disclosed. Patent Owner’s argument would
effectively mean that any lack of disclosure is a teaching away, which it is
not. Further, the claims do not require a full backup of a system, and
Anderson discloses the use of its teachings for both full and partial backups,
disclosing backing up a contour that “can comprise every article on the
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client device or a proper subset of articles on the client device.” Ex. 1005,
¶ 19; Ex. 1024 ¶ 45.
As discussed above, Patent Owner argues that the backup and restore
operation in Coombs does not teach the use of inventories similar to Field as
well as signatures, in determining which files, portions of files, or data
structures to backup or restore. PO Resp. 59 (citing Ex. 2008 ¶ 114).
Petitioner, however, does not rely upon Coombs for the recited inventories,
and Patent Owner has not addressed the applicability of Coombs’s scanning
techniques, which Petitioner does rely upon. Pet. 48–49; PO Resp. 59. As
set forth above, Petitioner has shown that an ordinarily skilled artisan would
apply those scanning techniques to Field’s process as modified by
Anderson’s teachings. Ex. 1002 ¶ 160.
As discussed above, Patent Owner further argues that backing up all
files on a device using Field’s file-based backup process is a tedious and
inefficient process as a user would only be able to backup one file at a time.
Sur-reply 16. Nothing in claim 40, however, requires every file to be backed
up on a device. Further, Petitioner has proposed modifying Field with
Anderson to concurrently transmit Field’s generated signatures,
demonstrated a motivation for so doing, and shown that an ordinarily skilled
artisan would have a reasonable expectation of success in so doing.
Ex. 1002 ¶ 182.
In sum, we find that an ordinarily skilled artisan would have
combined Field, Anderson, and Coombs in the manner proposed by
Petitioner and would have had a reasonable expectation of success in so
doing.
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b. Inventory
The disputed issue between the parties regarding whether the
combination of Field, Anderson, and Coombs teaches or suggests every
limitation of claim 40 is whether that combination of references teaches or
suggests the use of a first and second inventory during a backup and restore
process. In the Patent Owner Response, Patent Owner argues:
Similar to other claims above, claim 40 includes an “inventory”
limitation. (Ex. 2008 ¶ 168.) Petitioner has failed to show that
Ground 3 teaches the use of a first and second inventory during
a backup or restore process as claimed in claim 40. (Id.) More
specifically, Petitioner has not shown that Field, Anderson, or
Coombs teaches a backup or restore process that uses an
inventory of electronic data to determine whether to restore or
backup the electronic data that is part of said inventory. (Id.)
Thus, Field, Anderson, and Coombs in combination fail to teach
all the elements of claim 40. (Id. ¶ 169.)
PO Resp. 60–61.
Claim 40 recites “generating, at the first client device, a first
inventory” and “transmitting the first inventory from the client device to the
backup server.” Claim 40 also recites “generating a second inventory” and
“transmitting the second inventory from the backup server to the client
device.”
In Petitioner’s proposed combination of Field, Anderson, and
Coombs, Field’s process generates a collection of signatures and, as
modified due to Anderson’s, that process transmits the collection of
signatures at one time from the client to the backup server. Pet. 55–61 (and
the exhibits cited therein). Petitioner argues that this collection of signatures
is the recited “first inventory.” Id. (and the exhibits cited therein).
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In Petitioner’s proposed combination of Field, Anderson, and
Coombs, Field’s process, as modified by Anderson’s teachings, generates a
list of cryptographic signatures for the files not found on Field’s backup
server and transmits that list to the client device. Pet. 66–72 (and exhibits
cited therein). Petitioner argues that this collection of signatures is the
recited “second inventory.” Id.
As mentioned above, Patent Owner argues that Petitioner has not
shown that Field’s process generates a first and second inventory, but Patent
Owner does not specifically address Petitioner’s arguments regarding the
collection of signatures identified at pages 55–61 and 66–72 of the
Petition.23
We find that the combination of Field, Anderson, and Coombs teaches
or suggests the recited first and second inventories. Both collections of
signatures are itemized lists of electronic data. The first collection of
signatures that is transmitted from the client device to the backup server is a
collection of the signatures of the files designated for backup. Ex. 1002
¶ 177. The second collection of signatures that is transmitted from the
backup server to the client device is a collection of signatures that were
designated to be backed up but were not on the backup server. Id. ¶¶ 199–
200. Both are itemized lists of electronic data. The first collection itemizes
the list of files for backup (i.e., there is one descriptor per file). The second
collection of signatures itemizes the list of files from the first collection that

23 Patent Owner’s cited testimony from Dr. Weissman also does not
specifically address Petitioner’s arguments regarding the collection of
signatures addressed in pages 55–61 and 66–72 of the Petition. Ex. 2008
¶¶ 168–169.
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were not on the backup storage medium (i.e., there is one descriptor per each
of those files). As such, both collections are inventories. See Section II.C
above. Thus, we find that Petitioner has proven that Field, Anderson, and
Coombs teach the recited first and second inventories.
c. Other Limitations
As mentioned above, Petitioner separately sets forth the arguments
and evidence that it contends show that Field, Anderson, and Coombs teach
or suggest the preamble and each limitation of claim 40. Pet. 50–73. With
respect to those limitations, Patent Owner only disputed that Field,
Anderson, and Coombs teach or suggest the recited first and second
inventories. We addressed that disputed issue in Section III.D.2.b above.
For the remaining limitations and recitations of claim 40, we have reviewed
the arguments and evidence set forth by Petitioner and are persuaded that
Field, Anderson, and Coombs, teach or suggest each of those limitations.
See Pet. 50–73 (and the exhibits cited therein). Thus, we determine that
Petitioner has proven that claim 40 would have been obvious over Field,
Anderson, and Coombs.
IV. CONCLUSION
As set forth in the following table, Petitioner has proven that
claims 30, 32, 33, 35, and 37–40 are unpatentable, but has not proven that
claims 31, 34, and 36 are unpatentable:
Claim(s) 35 U.S.C. § Reference(s)/ Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
30–37, 39 103 Field 30, 32, 33, 35, 37, 39
31, 34, 36
38 103 Field, Anderson 38

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Claim(s) 35 U.S.C. § Reference(s)/ Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
40 103
Field,
Anderson,
Coombs
40
Overall: 30, 32, 33, 35, 37–40
31, 34, 36
V. ORDER
It is:
ORDERED that claims 30, 32, 33, 35, and 37–40 have been shown,
by a preponderance of the evidence, to be unpatentable;24
FURTHER ORDERED that claims 31, 34, and 36 have not been
shown, by a preponderance of the evidence, to be unpatentable; and
FURTHER ORDERED that because this is a Final Written Decision,
the parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

24 Should Patent Owner wish to pursue amendment of the challenged
claims in a reissue or reexamination proceeding subsequent to the
issuance of this decision, we draw Patent Owner’s attention to the April
2019 Notice Regarding Options for Amendments by Patent Owner
Through Reissue or Reexamination During a Pending AIA Trial
Proceeding. See 84 Fed. Reg. 16,654 (Apr. 22, 2019). If Patent Owner
chooses to file a reissue application or a request for reexamination of
the challenged patent, we remind Patent Owner of its continuing
obligation to notify the Board of any such related matters in updated
mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).

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FOR PETITIONER:
Daniel S. Block
Michael Q. Lee
Byron L. Pickard
Steven M. Pappas
STERNE, KESSLER, GOLDSTEIN & FOX
dblock-ptab@sternekessler.com
mlee-ptab@sternekessler.com
bpickard-ptab@sternekessler.com
spappas-ptab@sternekessler.com

FOR PATENT OWNER:
Seth H. Ostrow
Antonio Papageorgiou
Robert P. Feinland
MEISTER SEELIG & FEIN LLP
sho@msf-law.com
ap@msf-law.com
rf@msf-law.com