Ex Parte 7,417,568 et al

Patent Trial and Appeal Board

Oct 28, 2015

95001533 (P.T.A.B. Oct. 28, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/001,533 03/01/2011 7,417,568 2855.001REX3 8183
26111 7590 10/29/2015
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
HUGHES, DEANDRA M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
10/29/2015 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

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

v.

REALTIME DATA LLC.,
Patent Owner.
____________

Appeal 2015-007686
Reexamination Control 95/001,533
Patent 7,417,568 B2
Technology Center 3900
____________

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

SIU, Administrative Patent Judge

DECISION

Appeal 2015-007686
Reexamination Control 95/001,533
Patent 7,417,568 B2

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In an earlier Decision, Appeal No. 2013-007689, mailed November 1,
2013 (“Decision”) and Erratum, mailed November 15, 2013, we reversed the
Examiner's decision not to reject claims 6, 10, 12, 14, 15, 17, 18, 20-26, 29-
32, 40, and 46-48 under 35 U.S.C. § 102(b) as anticipated by XMill;
1
claims
3, 6-8, 33-37, 51, 53-56, and 60-62 under 35 U.S.C. § 103(a) as unpatentable
over XMill, Danskin-1,
2
and Birdwell;
3
claims 26, 27, and 49 under 35
U.S.C. § 103(a) as unpatentable over XMill and Willis;
4
claims 41 and 45
under 35 U.S.C. § 102 as being anticipated by Hauck;
5
and claim 67 as
unpatentable over Hauck and Birdwell. Decision 14, Erratum 2-3. Our
reversal of the Examiner's decision was designated as a new ground of
rejection pursuant to 37 C.F.R. § 41.77(b). Id.
We are told that this case is related to Reexamination Control Nos.
95/000,464; 95/000,479; 95/001,544; 95/001,517; 95/001,581; 90 009,428;
95/000,466; 95/000,478; and 95/000,486 and co-pending litigation Realtime
Data LLC v. CME Group Inc., et al., No. 1:11-cv-6697, originally filed
7/22/2009; Realtime Data LLC v. Thomson Reuters, et al., No. 1:11-cv-
6698, originally filed 7/23/2009; and Realtime Data LLC v. Morgan Stanley,
et al., No. 1:11-cv-6696, originally filed 7/22/2009, all pending in the
Southern District of New York. 3PR App. Br. 1-2.

1
Hartmut Lierfke and Dan Suciu, “XMill, an Efficient Compressor for XML
Data,” Oct. 1999 (“XMill”).
2
Danskin, J., “Compressing the X Graphics Protocol,” Jan. 1995 (“Danskin-
1”).
3
U.S. Patent No. 6,032,197 (issued February 29, 2000) (“Birdwell”).
4
U.S. Patent No. 4,745,559 (issued May 17, 1988) (“Willis”).
5
U.S. Patent No. 4,626,829 (issued December 2, 1986) (“Hauck”).
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Patent Owner elected to reopen prosecution under 37 C.F.R.
§ 41.77(b)(1) (“Corrected Request to Reopen Prosecution Before the
Examiner Under 37 C.F.R. § 41.77(b),” filed March 11, 2014, “PO
Request”) and submitted a “Declaration of Dr. James W. Modestino under
37 C.F.R. § 1.132” (“Modestino Dec.”). Patent Owner also proposed new
claims 71-73. PO Request 10-11.
Requester filed comments pursuant to 37 C.F.R. § 41.77(c) in
response to Patent Owner's request to reopen prosecution (“Third Party
Requester's Response to Patent Owner’s Corrected Request to Reopen
Prosecution Before the Examiner (37 C.F.R. § 41.77(c)),” filed March 19,
2014, “3PR Comments”) and “Declaration Under 37 C.F.R. § 1.132” of Paul
C. Clark (“Clark Dec”). Requester appears to propose rejections of new
claims 71-73 as anticipated under 35 U.S.C. § 102(b) by XMill or as
unpatentable under 35 U.S.C. § 103(a) over the XMill, alone or in
combination with any of Danskin-1, Sebastian,
6
Carr,
7
Hauck, or XML.
8

See, e.g., 3PR Comments 23-29. Requester also proposes a rejection of
claim 72 under 35 U.S.C. § 112, 1
st
paragraph as lacking written description
support. 3PR Comments 22-23.
In accordance with 37 C.F.R. § 41.77(e), the Examiner determined
that “[t]he Decision and Erratum makes . . . new grounds of rejection” and
that “Third Party Requester [proposes] rejections for new claims 71-73 [that]
are adopted” (“Examiner’s Determination Under 37 C.F.R. § 41.77(d),”
dated October 3, 2014, “Examiner’s Determination” at 3). Hence, the

6
U.S. Pat. No 6,253,264 B1 (issued June 26, 2001) (“Sebastian”).
7
U.S. Pat. No. 5,293,379 (issued March 8, 1994) (“Carr”).
8
XML-Xpress White Paper, December 2000 (“XML”).
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Examiner rejects the claims as follows: claims 6, 10, 12, 14, 15, 17, 18, 20-
26, 29-32, 40, 41, and 45-48 under 35 U.S.C. § 102(b) as anticipated by
XMill; claims 3, 6-8, 33-37, 51, 53-56, and 60-62 under 35 U.S.C. § 103(a)
as unpatentable over XMill alone or in combination with any one of
Danskin-1, Birdwell, or Willis; claims 26, 27, and 49 under 35 U.S.C.
§ 103(a) as unpatentable over XMill and Willis; claims 41 and 45 under 35
U.S.C. § 102 as being anticipated by Hauck; claim 67 as unpatentable over
Hauck and Birdwell; new claims 71-73 under 35 U.S.C. § 103(a) as
unpatentable over XMill, alone or in combination with any of Danskin-1,
Sebastian, Carr, Hauck, or XML; and new claim 72 under 35 U.S.C. 112, 1
st

paragraph as failing to comply with the written description requirement.
In response to Examiner’s Determination, Patent Owner filed
“Comments in Response to Examiner’s Determination Under 37 C.F.R.
§ 41.77(e),” filed November 3, 2014 (“PO Comments on Exr’s Determ”)
and Requester filed “Third Party Requester’s Comments in Response to
Examiner’s Determination Under 37 C.F.R. § 41.77(D),” filed November 3,
2014 (“3PR Comments on Exr’s Determ”). Subsequently, Patent Owner
filed a reply to Requester’s comments (“Patent Owner’s Reply to Third
Party Requester’s Comments Under 37 C.F.R. § 41.77(e),” dated December
3, 2014 (“PO Reply”)) and Requester filed a reply to Patent Owner’s
comments (“Third Party Requester’s Comments in Response to Patent
Owner’s comments in Response to Examiner’s Determination Under 37
C.F.R. § 41.77(E),” dated December 3, 2014 (“3PR Reply”)).
Pursuant to 37 C.F.R. § 41.77(f), the proceeding has been returned to
the Board so that we may reconsider the matter and issue a new decision.
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Claim 1, for example, recites “packet.” Patent Owner argues that
XMill fails to “disclose a data packet” because “[a] container [of XMill] is
not a ‘data packet.’” PO Request 30, 32; see also PO Request 29-32 (citing
Modestino Dec. 32-37). Specifically, Patent Owner argues that “[t]here is
no indication that the container . . . encoders in XMill apply to . . . ‘data
packet’,” that “the term ‘packet’ or ‘data packet’ is not used anywhere in
XMill,” that XMill supposedly refers to “Claude Elwood Shannon” who
allegedly published a “classic paper”
9
and that “[t]here is no mention of
packet, or data packet throughout the Shannon paper.” PO Request 30-31.
Hence, Patent Owner and Dr. Modestino argue that XMill fails to disclose
the term “data packet” or “packet” and refers to the “Shannon paper” that
also allegedly does not disclose the term “data packet” or “packet,” so that
XMill fails to disclose the “packet” as recited in claim 1.
Even assuming Patent Owner is correct that XMill does not use the
specific term “packet,” that XMill refers to the “Shannon paper,” and that
the “Shannon paper” also does not use the specific term “packet,” we are not
persuaded by Patent Owner’s argument because this is not an “ipsissimis
verbis” test. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Thus, it is
immaterial if XMill (or the “Shannon paper”) uses the precise term “packet”
or not. Nor does Patent Owner or Dr. Modestino demonstrate sufficiently a
difference between the data transmitted in XMill and the data packet, as
recited in claim 1, for example, for at least the previously stated reasons.
Decision 5-8.

9
C.E. Shannon, A Mathematical Theory of Communication, Bell System
Technical Journal, 27:379-423 and 623-656, July and October 1948. PO
Request 31, fn. 31.
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Similarly, Patent Owner argues that Hauck “reveals no mention of
‘packet’ . . .” and fails to disclose a “data packet” as “requiring a data block
encapsulated with appropriate control information.” PO Request 34-35. To
the extent Patent Owner argues that Hauck fails to use the precise term
“packet,” even assuming this presumed contention to be correct, we are not
persuaded by Patent Owner for at least the previously stated reasons. To the
extent that Patent Owner argues that a “data packet,” as recited in claim 41,
for example, must include “a data block encapsulated with appropriate
control information,” we are also not persuaded by Patent Owner for at least
the previously discussed reasons. Decision 5-8, 13-14.
For example, claims are to be given their broadest reasonable
interpretation consistent with the specification, and the language should be
read in light of the specification as it would be interpreted by one of ordinary
skill in the art. In re American Academy of Science Tech Center, 367 F.3d
1359, 1369 (Fed. Cir. 2004) (citations omitted). “To begin with, the context
in which a term is used in the asserted claim can be highly instructive.”
“[T]he claims themselves provide substantial guidance as to the meaning of
particular claim terms.” Phillips v. AWH Corp., 415 F.3d 1301, 1314 (Fed.
Cir. 2005), citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
(Fed. Cir 1996).
Claim 1 recites that a “data field is included in a packet.” Hence,
claim 1 recites a packet that has a data field. Claim 1 does not recite
additional characteristics of a “packet.” Specifically, claim 1 does not recite
that a packet must include “appropriate control information.” Thus, based on
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the context of the claims themselves, one of ordinary skill in the art would
understand the term “packet” to include only a grouping of data.
The Specification “is always highly relevant to the claim construction
analysis. Usually, it is dispositive; it is the single best guide to the meaning
of a disputed term.” Vitronics Corp., 90 F.3d at 1582. In the present case,
Patent Owner does not indicate that the Specification provides an explicit
definition of the term “packet.” Patent Owner does not indicate that the
Specification discloses that a “packet” must include “appropriate control
information” (or what such “appropriate control information” would include
even if such a disclosure in the Specification did exist). We do not
independently identify such a disclosure in the Specification. Hence, one of
skill in the art would have understood, under a broadest reasonable
construction and in light of the Specification that a “packet” includes a
grouping of data but that a “packet” need not contain “control information.”
Even though extrinsic evidence has been considered “less significant
than the intrinsic record,” the court has also stated that “extrinsic evidence
‘can shed useful light on the relevant art’” and that “dictionaries and
treatises can be useful in claim construction.” Phillips, 415 F.3d at 1317–
1318 (citing Renishaw PLC v. Marposs Societa per Azioni, 158 F.3d 1243,
1250 (Fed. Cir. 1998) and Rexnord Corp. v. Laitram Corp., 274 F.3d 1336,
1344 (Fed. Cir. 2001)). As Patent Owner points out, a “packet” is defined as
“a block of information that is transmitted within a single transfer operation”
or a “unit of information transmitted from one device to another on a
network.” Microsoft Computer Dictionary, 327 (4
th
ed. 1999). A similar
definition is provided in the Authoritative Dictionary of IEEE Standards
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Terms, 787 (7
th
ed. 2000) – e.g., “a block of information that is transmitted
within a single transfer operation.” We note that these dictionary definitions
do not require the presence of or encapsulation by any “appropriate control
information.” Also, these proposed dictionary definitions are consistent with
a grouping of data, as supported in the Specification.
Patent Owner argues that Dr. Modestino testifies that “the process of
adding control information to data blocks” is “called data encapsulation,”
that one cited reference
10
discloses that a “data block presented to the
application layer is successively encapsulated with control information,” and
that, in another reference,
11
“the message or data block is encapsulated with
control information.” PO Request 27. Even if Patent Owner’s expert’s
testimony that the process of adding control information is called data
encapsulation and that data blocks may be encapsulated with control
information, Patent Owner provides insufficient evidence that the
transmitted data of XMill differs from the “packet” as recited in claim 1.
For example, Patent Owner does not demonstrate persuasively that any of
the cited references discloses that a “packet” must contain “control
information.” We are not persuaded by Patent Owner’s argument.
Claim 3 and new claim 73 recite “a packet independent encoder.”
Claim 15 recites “packet independent data compression.” Patent Owner
argues that “XMill does not disclose ‘Packet Independence’.” PO Request
36. Requester argues that XMill discloses “packet independent” data
decoding and encoding. 3PR Comments 14-15 (citing XMill 9). As

10
A. Tannenbaum, Computer Networks, 7 (Prentice hall, 3
rd
ed. 1996).
11
J.F. Kurose and K.W. Ross, Computer Networking, 52 (Pearson-Addison
Wesley, 2008) (2000).
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Requester indicates, XMill discloses “containers” of data that are
compressed “independently.” XMill 9. In view of XMill’s explicit
disclosure of container “independence,” Patent Owner does not demonstrate
a sufficient difference between the “independence” of XMill and packet
“independence,” as allegedly recited in the disputed claims.
Patent Owner argues that the Specification discloses one example in
which a system accepts “data blocks from an input data stream and stores the
input data block in an input buffer or cache” and that one of skill in the art
would thus understand that the Specification must be suggesting that the
system “operates independently and sequentially on each data block and
produces a compressed associated block for subsequent transmission” and
that, presumably, this feature must be imported into the claims. PO Request
35. However, even assuming Patent Owner’s contention to be correct that
the Specification discloses that data blocks are stored in an input buffer,
Patent Owner and Dr. Modestino do not explain sufficiently how this would
imply to one of skill in the art that the system operates “independently and
sequentially on each data block and produces a compressed associated block
for subsequent transmission.” Indeed, the two concepts appear to be
unrelated to each other.
Even assuming that one of ordinary skill in the art would have
assumed that a system operates independently and sequentially and produces
a compressed block for subsequent transmission based on the presumed
disclosure that data blocks are stored in an input buffer, Patent Owner and
Dr. Modestino do not explain sufficiently why a non-disclosed presumption
based on one example allegedly disclosed in the Specification should be
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imported into the claims. “Though understanding the claim language may
be aided by explanations contained in the written description, it is important
not to import into a claim limitations that are not part of the claim. For
example, a particular embodiment appearing in the written description may
not be read into a claim when the claim language is broader than the
embodiment.” Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870,
875 (Fed. Cir. 2004).
Thus, we need not consider whether or not XMill (or any of the other
cited references) discloses that the system operates “independently and
sequentially on each data block and produces a compressed associated block
for subsequent transmission.”
Claim 6, for example, recites “recognizing a data field type.” Patent
Owner argues that Dr. Modestino “declares that ‘[o]ne of ordinary skill in
the art would realize that XMill does not disclose ‘recognizing a data field
type of a data filed in a data stream,’ as recited . . . in claim 6.” Patent
Owner provides similar arguments in support of claims 20, 22-24, 40, 53,
62, 67, and new claims 71-73. PO Request 39-40 (citing Modestino Dec.
63). Even assuming Patent Owner’s contention to be correct that Dr.
Modestino testifies that XMill fails to disclose “recognizing,” we are not
persuaded that XMill, in fact, fails to disclose “recognizing,” as recited in
claim 6, for example, for at least the reasons set forth by Requester. 3PR
Comments 18-20; “Replacement Request for Inter Partes Reexamination,”
filed March 1, 2011 (“Orig. Req.”) 87-88 (citing XMill 2).
For example, as Requester explains, XMill discloses that “[d]ata items
are grouped into containers, and each container is compressed separately . . .
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[f]or example all data items form one container, while all
items form a second container.” Orig. Req. 87-88 (citing XMill 2). In other
words, XMill discloses data being grouped into different “containers” based
on data type (e.g., name or phone) and that different encoders or
compressors are applied to the different “containers.” Hence, XMill
discloses that encoders (or compressors) are selected based on analyses of
content (e.g., one encoder applied to a “name” container while a “different”
encoder applied to a “phone” container). In order to apply the desired
encoder to a container of a desired data type in XMill, some form of
“recognition” would be performed to determine the content of data.
Otherwise, a desired encoder would not be applied to a corresponding
container, such “recognition” not having been performed and the user in
XMill would not be able to encode (or decode) the data, not knowing the
data content or type of the container to be encoded (or decoded). Hence, we
are not persuaded by Patent Owner’s (and Dr. Modestino’s) argument.
Patent Owner argues that the District Court did not construe any claim
terms in a related litigation proceeding but that the parties in that proceeding
agreed to the construction of various claim terms. See e.g., PO Request 45-
46. Patent Owner further “requests that the . . . claim constructions agreed
to by the parties in this reexamination are incorporated by the Examiner and
used to confirm all claims.” PO Request 46. We acknowledge Patent
Owner’s statement that the parties supposedly agreed to the construction of
various claim terms and that the District Court did not construe claim terms
but we do not further consider Patent Owner’s comments in this regard
because Patent Owner does not provide sufficient arguments regarding
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construction of claim terms under a broadest reasonable construction or
(with the exception of the previously discussed issues) the relevance of any
alleged claim construction to specific issues.
Patent Owner also argues that Danskin-1, Willis, and Birdwell fail to
disclose a “packet” and that Danskin-1, Willis, Hauck, and Birdwell fail to
disclose “packet independence” or “recognizing.” PO Request 32-34, 37-39,
42-44. We need not consider Patent Owner’s arguments in view or our
analysis as discussed above.
As indicated above, Requester also proposes a rejection of claim 72
under 35 U.S.C. § 112, 1
st
paragraph as lacking written description support.
In particular, Requester argues that claim 72 recites “outputting an
executable file that is used to process a stream of data by recognizing data
field types, the recognizing comprising only analyzing data within each data
field in the data stream . . . wherein the analyzing of the data within each
data field is distinct from analyzing based on a descriptor that is indicative of
the data type of the data within the data block” but that the Specification
fails to disclose this claim limitation. 3PR Comments 22-23.
Patent Owner argues that “Application No. 10/016,355, which issued
as U.S. Patent No. 6,62[]4,761 (‘the ’761 patent’)” provides support for the
disputed claim limitation and that the ’761 patent is incorporated by
reference. PO Comments on Exr’s Determ. 20 (citing the ’761 patent 16:26-
32).
The Examiner adopts this proposed rejection and finds that “the
description [disclosed in the ’761 patent] indicates that the analysis of data
field is coupled with the identification of the descriptor, rather than distinct
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from the descriptor, as the claim requires.” Examiner’s Determination 7.
We agree with the Examiner.
Even if a specific portion of the Specification of the ’761 patent that is
now desired is “fully incorporated” (Spec. 6:12-13) into the ’568 patent
merely by a generalized statement to that effect regarding the entire
Specification of the ’761 patent (or corresponding application), we agree
with the Examiner that the cited portion of the ’761 patent merely discloses a
“recognition module” that “analyzes the incoming data stream to recognize
data types . . . that may be indicative of . . . data type . . . or the . . . algorithm
. . . applied.” ’761 patent 16:26-32. Patent Owner does not demonstrate
sufficiently that the Specification (or the ’761 patent, supposedly
incorporated by reference) also discloses outputting an executable file that is
used to process a stream of data by recognizing data field types, the
recognizing comprising only analyzing data within each data field in the data
stream . . . wherein the analyzing of the data within each data field is
distinct from analyzing based on a descriptor that is indicative of the data
type of the data within the data block.
The Examiner did not err in rejecting claim 72 as lacking written
description support.
Patent Owner does not provide further arguments in support of claims
1-70 or new claims 71-73. The Examiner did not err in rejecting claims 1-
73.
DECISION
We affirm the Examiner’s rejection of claims 6, 10, 12, 14, 15, 17, 18,
20-26, 29-32, 40, 46-48, and 71-73 under 35 U.S.C. § 102(b) as anticipated
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by XMill; claims 3, 6-8, 33-37, 51, 53-56, and 60-62 under 35 U.S.C.
§ 103(a) as unpatentable over XMill, Danskin-1, and Birdwell; claims 26,
27, and 49 under 35 U.S.C. § 103(a) as unpatentable over XMill and Willis;
claims 41 and 45 under 35 U.S.C. § 102 as being anticipated by Hauck;
claim 67 as unpatentable over Hauck and Birdwell; claims 71-73 under 35
U.S.C. § 103(a) as unpatentable over XMill, alone or in combination with
any of Danskin-1, Sebastian, Carr, Hauck, or XML; and claim 72 under 35
U.S.C. § 112, 1
st
paragraph as failing the written description requirement.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

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15
Patent Owner:

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

Third Party:

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