Hybir, Inc.

Patent Trials and Appeals Board

Dec 2, 2021

IPR2020-01039 (P.T.A.B. Dec. 2, 2021)

Trials@uspto.gov Paper 35
571-272-7822 Date: December 2, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
VEEAM SOFTWARE CORPORATION,
Petitioner,
v.
HYBIR, INC.,
Patent Owner.
____________

IPR2020-01039
Patent 9,037,545 B2
____________

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

GERSTENBLITH, Administrative Patent Judge.

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

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I. INTRODUCTION
Background
Veeam Software Corporation (“Petitioner”) filed a Petition (Paper 2,
“Pet.”) requesting institution of inter partes review of claims 1–20 (“the
Challenged Claims”) of U.S. Patent No. 9,037,545 B2 (Ex. 1001, “the
’545 patent”). Hybir, Inc. (“Patent Owner”) filed a Preliminary Response
(Paper 5, “Prelim. Resp.”). In accordance with our prior authorization
(Paper 6), Petitioner filed a Reply to the Preliminary Response (Paper 8,
“Prelim. Reply”), limited to responding to Patent Owner’s arguments
regarding 35 U.S.C. § 325(d) and non-enablement of the asserted prior art,
and Patent Owner filed a Sur-reply to Petitioner’s Reply (Paper 10, “Prelim.
Sur-reply”). Applying the standard set forth in 35 U.S.C. § 314(a), we
instituted an inter partes review of the Challenged Claims. Paper 11 (“Inst.
Dec.”).
After institution, Patent Owner filed a Patent Owner Response
(Paper 16, “PO Resp.”), Petitioner filed a Reply to Patent Owner’s Response
(Paper 20, “Pet. Reply”), and Patent Owner filed a Sur-reply (Paper 29, “PO
Sur-reply”).1 Additionally, we requested that each party file initial and
responsive papers on the “ordinary and customary meaning of the term
‘inventory’ as that term is used in the challenged claims.” Paper 27 (Order).
In response, the parties each filed Initial Papers (Paper 30 (Patent Owner’s
Initial Paper) (“PO Initial Paper”), Paper 31(Petitioner’s Initial Paper) (“Pet.
Initial Paper”)) and Responsive Papers (Paper 32 (Petitioner’s Responsive
Paper) (“Pet. Resp. Paper”), Paper 33 (Patent Owner’s Responsive Paper)

1 Patent Owner initially filed its sur-reply for related case IPR2020-01040 as
Paper 24 in this proceeding.
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(“PO Resp. Paper”)). An oral hearing was held on September 23, 2021, and
a copy of the transcript was entered in the record. Paper 34 (“Tr.”).2
We have jurisdiction pursuant to 35 U.S.C. § 6. This Decision is a
Final Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to
the patentability of the claims on which we instituted trial. Petitioner bears
the burden of proving unpatentability of the Challenged Claims, and the
burden of persuasion never shifts to Patent Owner. Dynamic Drinkware,
LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To
prevail, Petitioner must prove unpatentability by a preponderance of the
evidence. See 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2019).
Having reviewed the arguments and the supporting evidence, we determine
that Petitioner has shown, by a preponderance of the evidence, that the
Challenged Claims of the ’545 patent are unpatentable.
Related Proceedings
Petitioner and Patent Owner identify the following related matter:
Hybir, Inc. v. Veeam Software Corp., No. 1:20-cv-10329 (D. Mass) (filed
Feb. 19, 2020). Pet. 3; Paper 4 (Patent Owner’s Mandatory Notices), 2. In
addition, Petitioner filed two petitions challenging claims of related U.S.
Patent No. 8,051,043 B2 in IPR2020-01037 and IPR2020-01038, and a
petition challenging claims of related U.S. Patent No. 9,679,146 B2 in
IPR2020-01040. See Pet. 3.

2 The oral hearings for this proceeding and three related proceedings
(IPR2020-01037, IPR2020-01038, and IPR2020-01040) were held together
because many of the issues presented by the parties overlap. Paper 25
(Order Granting the Parties’ Requests for Oral Hearing), 1.
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Real Parties in Interest
Petitioner identifies Veeam Software Corporation as the real party in
interest. Pet. 3. Patent Owner identifies Hybir, Inc. as the real party in
interest. Paper 4, 2.
The Instituted Grounds of Unpatentability and Declaration
Evidence
Petitioner challenges the patentability of claims 1–20 of the
’545 patent on the following grounds:
Claim(s) Challenged 35 U.S.C. §3 Reference(s)/Basis
1–4, 6–10, 12–20 103(a) Field,4 Anderson5
5 103(a) Field, Anderson, Ackerman6
11 103(a) Field, Anderson, Coombs7
Pet. 4; Inst. Dec. 3. Petitioner supports its challenge with two declarations
by Prashant Shenoy, Ph.D., one submitted with the Petition (Ex. 1002
(Declaration of Dr. Prashant Shenoy, Ph.D.)) and the other submitted with
Petitioner’s Reply (Ex. 1024 (Declaration of Dr. Prashant Shenoy, Ph.D. in
Support of Petitioner’s Reply to Patent Owner’s Response)). Patent Owner
supports its arguments with a declaration by Jon B. Weissman, Ph.D.

3 The Leahy-Smith America Invents Act (“AIA”) included revisions to
35 U.S.C. § 103 that became effective on March 16, 2013. Because the
’545 patent has an effective filing date before March 16, 2013, we apply the
pre-AIA versions of the statutory bases for unpatentability.
4 U.S. Patent Application Publication No. 2006/0212439 A1, published
Sept. 21, 2006 (Ex. 1004, “Field”).
5 U.S. Patent Application Publication No. 2005/0114614 A1, published
May 26, 2005 (Ex. 1005, “Anderson”).
6 U.S. Patent No. 7,966,495 B2, issued June 21, 2011 (Ex. 1006,
“Ackerman”).
7 U.S. Patent Application Publication No. 2004/0030852 A1, published
Feb. 12, 2004 (Ex. 1008, “Coombs”).
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(Ex. 2008 (Declaration of Dr. Jon Weissman, Ph.D. in Support of Patent
Owner’s Response)).
The ’545 Patent
The ’545 patent “relates generally to computer data rights and data
identity.” Ex. 1001, 1:16–17. The ’545 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 a computer system. Id.
at 1:46–49. Another purported inefficiency is that many systems will
maintain multiple copies of the same files. Id. at 2:8–10. An object of the
’545 patent is “to provide a more efficient method and system for managing
files, file rights, and file identity.” Id. at 2:19–21.
Figure 1 of the ’545 patent is reproduced below:

Figure 1 is a block diagram depicting communication system 100, which
includes communication network 104, one or more communication
devices 108, enterprise server 112, backup server 116, and data storage 128.
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Ex. 1001, 3:54–56, 4:51–57. “[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
5:31–34. Additionally, “backup server 116 is provided with a backup
application 124 to enable users to backup files from their respective
communication devices 108 to either the backup server 116 or to the data
storage 128.” Id. at 5:35–38.
Figure 2 of the ’545 patent is reproduced below:

Figure 2 is a block diagram of communication device 108. Ex. 1001, 3:57–
59, 7:22–25. Communication device 108 includes data storage 220, which
includes backup application 228 and restore application 240 “that provides
functionality similar to the backup server 116 described in relation to
FIG. 1.” Id. at 7:57–59, 8:1–4. Backup application 228 can backup files
from communication device 108 to a remote storage location, such as data
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storage 128. Id. at 8:4–8. “To facilitate coordination of a group-based
backup system,” backup application 228 includes scanning module 232 and
file analysis module 236. Id. at 8:8–10. 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 8:11–13. 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 8:25–28.
Figure 3 of the ’545 patent is reproduced below:

Figure 3 is a logical representation of data structure 300, which is used to
manage files and data structures in a backup/restore operation. Ex. 1001,
4:60–62, 9:39–42. The data structure includes descriptor generating
algorithm field 312 and descriptor field 316. Id. at 9:42–45. Each electronic
file or portion of a file may have a descriptor associated with it. Id. at
10:30–31. “[C]ommunication 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 10:34–37.
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 2:44–46.
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Figure 5 of the ’545 patent is shown below:

Figure 5 shows a group-based backup data structure, which is typically
maintained on backup server 116. Ex. 1001, 3:65–67, 11:1–6. Backup
server 116 maintains inventories 504 for each user account. Id. at 11:6–8.
Backup server 116 may maintain a list of backed up files 512 currently
stored in the common data storage 128 and may reference the list of backed
up files 512 through a descriptor mapping. Id. at 11:23–26. “In other
words, the file data itself may be maintained on the data storage 128 and the
backup server 116 may maintain its list of backed up files 512 as a list of
descriptors.” Id. at 11:26–29.
The ’545 patent explains that “backup server 116 can quickly compare
the descriptors associated with each user to the descriptors outlined in the
list of backed up files 512 to determine[] which files each user has access
to.” Ex. 1001, 11:29–33. Thus, “backup server 116 only has to maintain
one copy of any file in the data storage 128 and can utilize a descriptor
mapping to determine which user and/or communication device 108 is
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allowed access to the one copy of a file.” Id. at 11:33–37. The ’545 patent
states:
This is particularly useful in situations where a single file is
stored on a number of different communication devices 108.
Each communication device 108 may utilize the file locally but
desires a backup of the file on the data storage 128. The backup
server 116 can provide the backup facilities for the file but does
not have to maintain a separate copy corresponding to each
copy in the communication system 100.
Id. at 11:37–43.
Figure 6 of the ’545 patent is reproduced below:

Figure 6 depicts a backup routine. Ex. 1001, 4:1–3, 12:13–15. In step 604,
media is selected for backup at communication device 108 or at enterprise
server 112. Id. at 12:19–22. In step 608, scanning module 232 scans the
selected media, creating a snapshot identifying the electronic data (e.g.,
files) on the selected media and the time at which those files resided there,
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and also scans the metadata of the various files in the selected media to
determine if any files have a changed timestamp that is more recent than the
last backup. Id. at 12:30–42.
In step 612, scanning module 232 may update the file inventory for
the selected media. Ex. 1001, 12:43–44. In step 616, scanning module 232
determines if there is any data on the selected media that have been changed
or added and, in step 620, identifies the changed or new electronic data and
updates the inventory of files. Id. at 12:51–61. In step 624, “the backup
application 228 employs the file analysis module 236 to apply the
predetermined descriptor generating algorithm to each identified piece of
data”—the algorithm is applied to “any file, portion of file, chunk of data, or
data structure that has been identified as changed or new to create a new
descriptor corresponding to that piece of data.” Id. at 12:63–13:3.
In step 628, file analysis module 236 updates the descriptor inventory
locally and, following compression in step 632, the compressed inventory is
transmitted across communication network 104 to backup server 116, in
step 636. Ex. 1001, 13:4–7, 13:14–16, 13:21–23. The backup server 116
decompresses the descriptor inventory and stores the inventory as part of
user’s inventory 504 in list of descriptors 508. Id. at 13:23–26. In step 644,
backup server 116 uses backup application 124 to compare the received
descriptor inventory to descriptors in the list of backed up files 512,
“determin[ing] for each descriptor in the received descriptor inventory,
whether the corresponding file, file portion, chunk of data, or data structure
is already stored in the data storage 128.” Id. at 13:30–36. Backup
application 124 generates a list of data portions (e.g., a list of files) that need
to be uploaded because they are not currently on data storage 128 and that
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list, “usually in the form of descriptors,” is sent to communication
device 108 in step 652. Id. at 13:39–44.
Communication device 108 receives the list of descriptors, identifies
the corresponding data or files, and then compresses the identified data using
backup application 228 in step 660. Ex. 1001, 13:45–51. The compressed
data and corresponding descriptors are then uploaded to backup server 116
in step 664. Id. at 13:56–58. The ’545 patent explains that although
additional processing is required to compare descriptors, “by performing this
preliminary check . . . the amount of data transmitted may be greatly reduced
if the backup server 116 has copies of most of the files,” thus reducing the
amount of data required for transmission and thereby increasing the speed of
a backup operation. Id. at 13:58–67.
Figure 7 of the ’545 patent is reproduced below:

Figure 7 is a flow chart depicting aspects of a restore/recover routine.
Ex. 1001, 4:4–6, 14:21–23. As the ’545 patent explains, “[t]he recover
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routine begins with the selection of a backup inventory for the restore” in
step 704, where “a user essentially selects the point-in-time that they would
like to have their communication device 108 restored back to” or is
“automatically selected if there is only one backup for a particular
communication device 108.” Id. at 14:27–33. In step 708, a user selects the
target media (e.g., “a C: drive of a communication device 108 or a particular
network drive associated with the enterprise server 112”) for the restore. Id.
at 14:38–41.
In step 712, restore application 240 of communication device 108
scans the selected target media and compares the selected media with the
inventory. Ex. 1001, 14:42–45. “[R]estore application 240 determines if
there are any differences between the media and the inventory” in step 720.
Id. at 14:58–60. The ’545 patent explains:
If any differences are detected, the method continues by
identifying the changed electronic data and its corresponding
descriptor from the inventory (step 724). More specifically,
after the scanning and comparison step, electronic data that is
identified as potentially different due to timestamp differences
are analyzed to generate the descriptors. If the descriptor is
different from the previous descriptor, then the former
descriptor is added to the list of files to restore. This can
eliminate the need to restore large amounts of data in certain
scenarios. For instance, during a restore of a particular backup
of a communication device 108 over another communication
device 108 such a feature may be useful. However, most
electronic data does not usually change since its previous
backup and such data would be identified as unchanged if not
by the scanning step, then by the comparison of the descriptors.
The descriptors from the inventory represent the electronic data
at the time the last backup occurred. Those files or electronic
data that have changed since the identified point-in-time are
then marked for restoration (step 728). More specifically, in
accordance with certain embodiments of the present invention,
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the descriptors corresponding to the electronic data are marked
for restoration.
Id. at 14:64–15:18.
In step 732, restore application 240 determines if any directories in the
inventory are not present in the target media and, if not present, restore
application 240 creates those directories in the target media in step 736.
Ex. 1001, 15:19–24. In step 740, restore application 240 then requests that
the backup server retrieve the electronic data, which is performed by first
checking locally to see if the most recent backup is on communication
device 108 or some other local media, but, if it is not, restore application 240
provides the list of descriptors marked for restore to backup server 116. Id.
at 15:29–35, 15:44–47. “[B]ackup server 116 utilizes the descriptor to file
mapping to retrieve the requested electronic data from the data storage 128.”
Id. at 15:47–49. Backup server 116 is able to allow communication
device 108 to access only the files and other data listed in the inventory
associated with the device, thus securely maintaining files that the device
never had. Id. at 15:49–52. “Accordingly, the descriptor in this step acts as
a credential to the files or electronic data that were previously backed up
from the communication device 108.” Id. at 15:55–58.
In step 748, backup server 116 downloads the electronic data to
requesting communication device 108, and restore application 240 stores all
of the electronic data on the target media in step 756. Ex. 1001, 15:59–66.
In step 764, “[f]ollowing the reassembly and restoration of the target
media[,] the restore application 240 determines if there are any files or other
electronic data not currently capable of a restore” and identifies and sets
such files for a restore upon reboot. Id. at 16:12–21.
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Illustrative Claims
Claims 1 and 10, the independent claims challenged in this
proceeding, are illustrative of the claimed subject matter and are reproduced
below, with Petitioner’s bracketing added for reference:
1. [1-pre] A method of managing data in an encrypted
system comprising a backup server and a client device having a
first remote storage medium, the client device and backup
server being configured to exchange encrypted communications
with one another, the method comprising:
[1A] receiving, at the client device, a request to backup
data from the first remote storage medium to the backup server;
[1B.1] in response to receiving the request, initiating a
backup routine at the client device, the backup routine
comprising:
[1B.2] identifying a first set of files stored on the
first remote storage medium;
[1B.3] generating, at the client device, a
cryptographic signature value for each file in the first set
of files, wherein the cryptographic signature value is
computed by using actual data of the file as an input to a
cryptographic signature generating algorithm which
computes the cryptographic signature value;
[1B.4] generating, at the client device, 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 value generated for each file
in the first set of files;
[1B.5] transmitting the first inventory from the
client device to the backup server via one or more
encrypted communications; and
[1B.6] causing one or more files from the first set
of files to be transmitted to the backup server for storage
by the backup server upon determining that the
cryptographic signature values generated for each file in
the first set of files allows access to the one or more files
on the backup server.
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10. [10-pre] A client device configured to exchange
encrypted communications with a backup server over a
communication network, the client device comprising:
[10A] a first remote storage medium; and
[10B.1] a backup application configured to execute a
backup routine comprising:
[10B.2] identifying a first set of files stored on the
first remote storage medium;
[10B.3] generating a cryptographic signature value
for each file in the first set of files, wherein the
cryptographic signature value is computed by using
actual data of the file as an input to a cryptographic
signature generating algorithm which computes the
cryptographic signature value;
[10B.4] 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;
[10B.5] transmitting the first inventory from the
client device to the backup server via one or more
encrypted communications; and
[10B.6] causing one or more files from the first set
of files to be transmitted to the backup server for storage
by the backup server upon determining that the
cryptographic signature value generated for each file in
the first set of files allows access to the one or more files
on the backup server.
Ex. 1001, 18:40–19:6 (claim 1), 19:40–20:11 (claim 10).
Level of Ordinary Skill in the Art
Petitioner, supported by Dr. Shenoy’s testimony, proposes that a
person of ordinary skill in the art at the time of the invention would have had
“a B.S. degree in Computer Science, Computer Engineering, Electrical
Engineering, or an equivalent field, as well as at least 3–5 years of academic
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or industry experience in the fields of data backup, data restore, data
replication, and/or data synchronization.” Pet. 11 (citing Ex. 1002 ¶¶ 13–
26).
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. 16 (citing Prelim. Resp. 16). 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. (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 16–17.
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
that a person of ordinary skill in the art at the time of the invention would
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
3–5 years of academic or industry experience in the fields of
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data storage, data backup, data restoration, data replication and
deduplication, and/or data synchronization.
Id. (citing 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. 18. 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’ arguments and proposed constructions.
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“inventory”
The Parties’ Proposed Constructions
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).”8 PO
Resp. 22 (citing Ex. 1001, 8:18–48, 15:19–31; Ex. 2008 ¶ 68); PO Initial
Paper 1.
Petitioner contends that “inventory” should be construed as “an
itemized list of electronic data.” Pet. Reply 1–4; Pet. Initial Paper 1. In
particular, Petitioner contends that “inventory” should be “afforded its
ordinary and customary meaning,” (Pet. Reply 1–2 (citing Pet. 11)), which,
as recited in the Challenged Claims, is “an itemized list of electronic data”
(Pet. Initial Paper 1).
The Parties’ Arguments
a. Patent Owner’s Response9
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. 22 (citing Ex. 1001, 8:18–48, 15:19–31; Ex. 2008 ¶ 68) (emphasis

8 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.
9 As noted above, Patent Owner’s Response was the first instance either
party proposed an express construction of “inventory.”
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omitted). Patent Owner asserts that the Specification explains that “the file
inventory reflects 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. (citing Ex. 1001, 8:18–21, 13:10–12, 15:17–31;
Ex. 2008 ¶ 69). Patent Owner contends that “[t]he electronic data that is part
of the inventory includes raw data and metadata” (id. (citing Ex. 1001, 8:34–
35; 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, 8:35–38, 15:17–18; Ex. 2008 ¶ 69)).
Patent Owner relies on Figure 7 of the ’545 patent, which “is a flow
chart depicting aspects of a restore routine.” Ex. 1001, 4:4–5; 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 (citations omitted). 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, 15:17–
18; Ex. 2008 ¶ 70). Patent Owner notes that the Specification states that
“[a]fter 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, 15:19–22). 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, 15:22–24). Patent Owner refers to the remainder of the
restore process, contending that “the backup inventory provides enough data
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to allow for a complete restore of a client device.” Id. at 24 (citing Ex. 2008
¶ 71).
Additionally, Patent Owner contends that its proposed construction “is
consistent with [inventory’s] ordinary meaning.” PO Resp. 24 (citing
Ex. 2008 ¶ 72). 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 ¶¶ 72–73).
Patent Owner contends that Petitioner and Dr. Shenoy assert that
“inventory” is simply “an itemized list,” which can consist of “a list of
‘signatures corresponding to the one or more selected files for backup.’” PO
Resp. 25 (citing Pet. 37); id. at 25–26 (quoting Ex. 2015 (transcript of
Dr. Shenoy’s deposition), 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 ¶ 75). Although neither Patent Owner nor Dr. Weissman
explains the different use of “inventory” and “list,” Patent Owner points to
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claim 1 of the ’545 patent noting that the following language makes clear
that “a ‘cryptographic signature’ is part of, but not identical to the
inventory”: “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 value
generated for each file in the first set of files.” Id. (citing Ex. 2008 ¶ 75;
Ex. 1001, 18:59–64). Additionally, Patent Owner asserts that Dr. Shenoy
agreed that additional data about the current state of the drive would be
needed to provide a volume backup. Id. at 26–27 (quoting Ex. 2015, 45:3–
15, 46:11–23).
Further, Patent Owner contends that “use of the language ‘reflects a
current state of the first remote storage medium’ indicates that there are
more than just cryptographic signatures for an inventory of electronic data,
e.g., directory structure of the electronic data.” PO Resp. 27 (citing
Ex. 2008 ¶ 76). 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 ¶ 76). Patent Owner further asserts
that its construction “is consistent with the embodiments described and
claimed in the ’545 Patent, in which inventories are transmitted through
encrypted communications 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 28 (citing Ex. 1001,
claims 1, 10, 12, 13; Ex. 2008 ¶ 77).
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b. 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 (transcript of Dr. Weissman’s
deposition), 39:13–40:13; PO Resp. 22).
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 ’545 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 ¶¶ 8–9).
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, 8:18–20, 11:18–22;
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 4–16.
Third, Petitioner asserts that Patent Owner “cannot manufacture a
construction based on nothing more than cherry-picked extrinsic evidence
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and unsupported expert testimony.” Pet. Reply 3. Petitioner contends that
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 notes that
Patent Owner “expressly ignores that [Dr. Shenoy’s construction of
inventory as an itemized list] is derived from the Merriam-Webster
dictionary, which defines ‘inventory’ as ‘an itemized list of current goods or
asserts.’” Id. at 3–4 (emphasis omitted) (citing Ex. 1034 ¶ 117 (citing
Ex. 1029 (The Merriam-Webster Dictionary), 384); Ex. 1024 ¶ 8).
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).
c. PO’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. at 2. Patent Owner contends that “[e]ach aspect of its
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construction adds meaning while at the same time possibly overlapping to
some extent with other aspects.” Id.
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 3–4. 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 process as well as
restoring a storage medium. 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.” PO Sur-reply 4. Patent Owner walks through
each of the four aspects of its construction in response to Petitioner’s
arguments. Id. at 5–10.
d. 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 27, 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
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Specification is consistent with the dictionary definition of “inventory” as
“an itemized list of current goods or assets.” Id. (quoting Ex. 1029, 384)
(citing Ex. 1024 ¶ 8). Petitioner also asserts that Patent Owner’s cited
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 (footnote
omitted). 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 (citations omitted). In particular, each
of Patent Owner’s dictionary definitions includes a version of the phrase “a
detailed [or complete] list.” Id. at 1 (emphasis omitted); 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
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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,
Patent Owner points to element [10B.4] of claim 10 of the ’545 patent,
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.” Ex. 1001, 19:54–20:2; see
PO Initial Paper 3–4. 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
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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
‘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 [’545] 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
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in [the] 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.
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
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“inventory” includes the terms “electronic data” and “list.” Below, we
address the disputed portions of the parties’ proposed constructions, starting
with Patent Owner’s.
a. Patent Owner’s Proposed Construction
As described above, Patent Owner’s proposed construction reflects
four aspects of an “inventory.” Specifically it is “electronic data” that
(1) “reflects the current state of a storage medium,” (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).” PO Initial Paper 1; see PO Resp. 22 (citing Ex. 1001, 8:18–48,
15:19–31; Ex. 2008 ¶ 68). We examine each aspect of Patent Owner’s
construction.
i. 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. 22;
PO Initial Paper 1. For support, Patent Owner relies on the Specification of
the ’545 patent and, particularly, the descriptions of an inventory in
column 8. PO Resp. 22 (citing inter alia Ex. 1001, 8:18–48). This portion
of the Specification describes a “file inventory” that scanning module 232
creates when it scans a particular drive or storage medium. In describing
Figure 2, the Specification 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.” Ex. 1001, 8:16–20 (emphasis added).
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We disagree that the Specification supports Patent Owner’s
arguments. First, this disclosure expressly refers to a “file inventory,”
whereas the term proposed for construction is “inventory.” Second, this
disclosure describes a particular trait of the “file inventory” produced by
scanning module 232 when it scans a particular drive or storage medium.
Third, this disclosure does not indicate that the meaning of “inventory”
should be limited to the description of the “file inventory” created by
scanning module 232 in the described instance. And, we do not agree that it
is appropriate to read a description of the specific “file inventory” produced
by scanning module 232 into the claim term “inventory.” See Liebel-
Flarsheim Co. v. Medrad, Inc., 358 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 the term “inventory” itself as
“reflecting the current state of a storage medium.” With respect to the term
“inventory,” the language of claims 1 and 10 is similar. Claim 1 recites
“generating, at the client device, 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.” Ex. 1001,
18:59–64. Claim 10 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.” Id. at 19:54–
20:2. The claim language for both claims reflects that the first “inventory”
is “for the first set of files.” The claim language also recites two wherein
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clauses further describing the first inventory—first, that the first inventory
reflects a current state of the first remote storage medium, and, second, that
the first inventory includes the cryptographic signature values generated for
each file in the first set of files. As indicated by the first wherein clause, the
claims expressly recite that the “first inventory” “reflects a current state of
the first remote storage medium.” Although the clause indicates which
remote storage medium the first inventory reflects (i.e., the first remote
storage medium), the clause also expressly recites the first aspect of Patent
Owner’s proposed construction of “inventory.”
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 relied on—
they 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

10 Neither party argues that the prosecution history of the ’545 patent
informs as to the meaning of the “inventory.”
11 The parties also rely on competing expert testimony that 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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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 support
Patent Owner’s proposed construction. Despite including adjectives such as
“itemized,” “detailed,” and “complete,” none of those modifiers even
remotely 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.”12
Accordingly, we find that the complete record does not support
construing “inventory”13 to require “electronic data that reflects the current
state of a storage medium.”14

12 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).”
13 Also important to our understanding of “inventory” is Patent Owner’s
agreement that “the claimed inventory may not account for 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 claimed
“inventory” can account for less than all files on a remote storage medium
or drive.
14 We address the express language of similar clauses recited in claims 1 and
10 in our discussion of the application of the prior art to the claims. See
infra §§ III.B.3.a.vi. (limitation 1B.4), III.B.3.b. (limitation 10B.4).
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ii. Includes a List of Files on the Storage Medium
As mentioned, both parties propose construing inventory to include or
constitute a list. PO Resp. 22; Pet. Reply 3–4; 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. 22), whereas Petitioner argues that “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. 21–27. Patent Owner’s Sur-reply, however, points to the ’545 patent’s
description of the restore process. PO Sur-reply 7–8 (citing Ex. 1001,
14:64–15:15, 16:25–27). 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 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.” Ex. 1001, 14:21–23
(emphasis added). Thus, on its face, the Specification describes the
restore/recover routine as applicable to some embodiments, meaning not
every embodiment. Second, in the portion Patent Owner relies on, the
Specification further describes as “an additional embodiment of the present
invention” the ability to generate an inventory of protected media. See id. at
16:25–26. And the Specification expressly states that “[t]his inventory is a
list of all files with corresponding descriptors.” Id. at 16:26–27. This
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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. The patentee’s
failure to do so for all embodiments or to 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.15
Additionally, even the heading of this section of Patent Owner’s
Sur-reply supports Petitioner’s argument that “inventory” may include a list
of files on the storage medium, but is not required to do so. In particular,
Patent Owner’s heading states “[a]n ‘inventory’ may include a ‘list of files
on the storage medium.’” PO Sur-reply 7 (emphasis added). We do not
disagree that it may. We do, however, disagree that “inventory” must
include a list of files on the storage medium, as explained above.
Further, neither the claim language nor the parties’ dictionary
definitions support limiting “inventory” to include a list of files on the
storage medium. Exs. 1029, 2012–2014. In particular, Patent Owner fails to
point to any aspect of the claims as supporting its construction. And, none
of the dictionary definitions set forth such a requirement. Id. Thus, we do
not construe “inventory” to require a “list of files on the storage medium.”

15 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 ’545 patent teaches that “[i]ncluded 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, 11:12–15. 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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iii. 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).
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 10 expressly recite that “the first inventory
includes the cryptographic signature value[(s)] generated for each file in the
first set of files.”16 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.” PO Sur-reply 9. Patent Owner further states that claims 1 and
10 “need to refer to the at least one descriptor, e.g., cryptographic signature,
in each inventory as an antecedent basis to refer to it again later in the
claims.” Id.
Patent Owner’s arguments reflect that Patent Owner (1) does not
provide any support for why the term “inventory” itself requires “at least one
descriptor identifying the file(s)” and (2) expressly equates a cryptographic
signature with a descriptor.17 And, we do not discern any support in the
claims, Specification, or dictionary definitions of “inventory” that the term

16 Claim 1 uses the singular “value,” whereas claim 10 uses the plural
“values.” Compare Ex. 1001, 18:62–64, with id. at 19:56–20:2.
17 The latter portion of Patent Owner’s argument is noteworthy in that Field
discloses cryptographic signatures as discussed further infra.
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“inventory” must require at least one descriptor identifying the file(s) as
Patent Owner proposes.18
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
identifying the file(s).” Accordingly, we do not construe “inventory” to
require such.
iv. Includes the Directory Structure of the File(s)
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. 22. Patent Owner points to the language of claim 1 and
identifies two portions of the Specification as allegedly supporting its
proposed construction. We address each.
Patent Owner argues that the following language from claim 1—“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 value generated for each file
in the first set of files”—makes it clear that a “‘cryptographic signature’ is
part of, but not identical to the inventory.” PO Resp. 26 (citing Ex. 2008
¶ 75). And, Patent Owner asserts that the phrase “‘reflects a current state of
the first remote storage medium’ indicates that there are more than just
cryptographic signatures for an inventory of electronic date, e.g., directory
structure of the electronic data.” PO Resp. 27 (citing Ex. 2008 ¶ 76).

18 We address the express language of similar clauses recited in claims 1 and
10 in our discussion of the application of the prior art to the claims. See
infra §§ III.B.3.a.vi. (limitation 1B.4), III.B.3.b. (limitation 10B.4).
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We disagree that the language of claim 1 quoted by Patent Owner (or
the similar language of claim 10) supports its proposed construction of
“inventory.” In particular, Patent Owner fails to identify any portion of the
claim language that requires the inclusion of “the directory structure of the
file(s)” in the meaning of “inventory.” To the extent Patent Owner’s
argument is that “cryptographic signature” has a different meaning than
“inventory,” we agree. To the extent Patent Owner argues “inventory”
means a list that must include these four aspects of Patent Owner’s
construction, including the directory structure of the file(s), we disagree that
the claim language so requires. Further, the claim language, “reflects a
current state of the first remote storage medium,” is nearly identical to the
language in the Specification, discussed below, which expressly states that a
“file inventory” “may include a description of the hierarchical structure of
the drive.” Ex. 1001, 8:16–20 (emphasis added). As explained just below,
this language is permissive, and, thus, we do not agree that the similar
recitations of this language in claims 1 and 10 somehow means that
“inventory” must include the directory (or hierarchical) structure of the
file(s) or drive.
With respect to the Specification, Patent Owner points to the
discussion in column 8, describing Figure 2, as well as the Specification’s
discussion of Figure 7 and the restore/recover routine described therein.
With respect to column 8, 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
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of the drive.” Ex. 1001, 8:16–20 (emphasis added); see PO Resp. 22 (citing
Ex. 1001, 8:18–21, 13:10–12, 15:17–31; Ex. 2008 ¶ 69).
This portion of the Specification does not support Patent Owner’s
argument. As quoted above, the same statement from the Specification that
says the file inventory produced by scanning module 212 reflects the current
state of the drive also says that the file inventory may include a description
of the hierarchical structure, not that it must be included. Thus, we reject
Patent Owner’s attempt to use the phrase “reflects the current state of the
drive” to require a description of the hierarchical structure/directory
structure19 of the drive/files when the Specification explicitly states that the
file inventory may include such a description. See Ex. 1001, 8:16–20. In
other words, that the file inventory produced by scanning module 202
reflects the current state of the drive does not mean that a directory structure
or hierarchical structure is a required part of that file inventory, especially
where the Specification uses the permissive term “may.”
Patent Owner argues that the term “may,” as used in the Specification
of the ’545 patent, is not permissive. PO 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

19 Dr. Weissman’s deposition testimony acknowledged some relationship
between Patent Owner’s use of “directory structure of the file(s)” and
hierarchical structure of the drive. See, e.g., Ex. 1025, 75:11–15
(acknowledging agreement), 75:16–78:22 (further discussing his
understanding of directory structure and hierarchical structure); see also
Ex. 1024 ¶ 32 (Dr. Shenoy’s reply declaration testimony discussing
Dr. Weissman’s declaration).
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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.
We see nothing in this record that would cause us to interpret the term
“may” as mandatory.20 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) (“[T]hese 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 construing may in accordance with its ordinary and customary

20 The Specification’s use of “may” in several other instances also indicates
the permissive (optional) inclusion of items in an inventory. See Ex. 1001,
8:34–41 (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)), 11:6–19 (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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meaning deprives the ’545 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
narrower “inventory” if, for example, other language in the claim expressly
limits the “inventory” to include one or more of the aspects described in the
Specification as optional.21
As a second disclosure allegedly supporting its proposed construction,
Patent Owner points to the Specification’s discussion of Figure 7 and the
restore/recover routine described therein. 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, 15:19–24) (asserting that
Figure 7 and this description from the Specification supports Patent Owner’s
construction); Tr. 79:1–12 (contending that this statement from the
Specification is definitive that there are directories in this inventory).
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

21 For example, as we noted previously and as discussed further herein,
claims 1 and 10 further limit the “inventory” recited therein. See, e.g.,
Ex. 1001, 18:59–64 (limitation 1B.4).
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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
“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, 14:21–23
(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.
Further, as we noted above, the parties’ dictionary definitions also do
not support Patent Owner’s proposed requirement that an inventory include
the directory structure of the file(s). None of those definitions so limit the
term “inventory.” Exs. 1029, 2012–2014.
Therefore, we do not construe “inventory” to require inclusion of the
directory structure of the file(s).
b. 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 construction is consistent with the language of claims 1 and 10 and also
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consistent with the Specification of the ’545 patent. See, e.g., Ex. 1001,
8:16–18; 11:6–22; 14:9–14. And, Petitioner’s proposed construction is
supported by the dictionary definition of inventory as “an itemized list of
current goods or assets.” Ex. 1029, 4.
Patent Owner objects to Petitioner’s proposed construction on the
grounds that the Specification of the ’545 patent teaches that the term
“inventory” should have all of the requirements set forth in Patent Owner’s
proposed construction. See, e.g., PO Initial Paper 1. 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 Patent Owner proffers 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 an inventory to 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 an inventory as an itemized
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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.22
c. 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.”23
III. ANALYSIS
Legal Standards – Obviousness
The U.S. Supreme Court set forth the framework for applying the
statutory language of 35 U.S.C. § 103 in Graham v. John Deere Co. of
Kansas City, 383 U.S. 1, 17–18 (1966):
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the
obviousness or nonobviousness of the subject matter is
determined. Such secondary considerations as commercial
success, long felt but unsolved needs, failure of others, etc.,

22 As noted previously, important to our understanding of “inventory” is
Patent Owner’s agreement that “the claimed inventory may not account for
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.
23 Construing “inventory” as a “detailed list of electronic data” or a
“complete list of electronic data” would not change the analysis that follows.
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might be utilized to give light to the circumstances surrounding
the origin of the subject matter sought to be patented.
The Supreme Court explained in KSR International Co. v. Teleflex Inc. that
[o]ften, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue. To facilitate review, this
analysis should be made explicit.
550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”)).
“Whether an ordinarily skilled artisan would have been motivated to
modify the teachings of a reference is a question of fact.” WBIP, LLC v.
Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (citations omitted).
“[W]here a party argues a skilled artisan would have been motivated to
combine references, it must show the artisan ‘would have had a reasonable
expectation of success from doing so.’” Arctic Cat Inc. v. Bombardier
Recreational Prods. Inc., 876 F.3d 1350, 1360–61 (Fed. Cir. 2017) (quoting
In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent
Litig., 676 F.3d 1063, 1068–69 (Fed. Cir. 2012)).
Obviousness over Field and Anderson
Petitioner asserts that the combination of Field and Anderson would
have rendered the subject matter of claims 1–4, 6–10, and 12–20 obvious to
one of ordinary skill in the art at the time of the invention. Pet. 11–67.
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Level of Ordinary Skill in the Art
For the reasons discussed above, we find 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. See supra § I.G.
Scope and Content of the Prior Art
a. 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.
Figure 1 of Field is reproduced below:

Figure 1 shows networking environment 100 that includes back end
computing device 102 and target computing device 104. Ex. 1004 ¶¶ 13, 20.
Back end computing device 102 aggregates data received from multiple
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sources (e.g., client computing devices) at a single location (e.g., backup
database 106), to prevent the unnecessary transmission of data. Id. ¶ 22.
Figure 2 of Field is reproduced below:

Figure 2 is a block diagram illustrating components of target computing
device 104, including remote backup module 202. Ex. 1004 ¶¶ 14, 25.
Figure 3 of Field is reproduced below:

Figure 3 shows a flow diagram for remote backup module 202 for
performing a backup of data module 202 and contains blocks 300–318.
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Ex. 1004 ¶¶ 15, 31. 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. ¶ 33. If backup is required, then the module proceeds
to block 306, where it selects a file to be backed up. Id. ¶¶ 33, 35.
In block 308, remote backup module 202 generates a signature of the
selected file. Ex. 1004 ¶ 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, remote backup
module 202 determines if the file is already available to a trusted source by
“caus[ing] 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. ¶ 37. If a matching signature for the selected file is
identified, remote backup module 202 proceeds to block 314. Id. If a
matching signature for the selected file is not identified, remote backup
module 202 proceeds to block 312. Id.
At block 312, remote backup module 202 transmits the selected file to
a remote computing device associated with the trusted source (e.g., back end
computing device 102). Ex. 1004 ¶ 38. Field explains:
If block 312 is reached, the selected file was not previously
transmitted to the trusted source and, therefore, is not available
to the trusted source. Stated differently, a signature of the
selected file could not be identified in the backup database 206
at block 310. Thus, to satisfy the backup command received at
block 300, the selected file is transmitted to the remote
computing device associated with the trusted source, at
block 312. . . . Significantly, a file that was previously made
available to the trusted source is not transmitted by the remote
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backup module 202. Instead, only a signature of the file, which
is a fraction of the size of a complete file, is transmitted to the
trusted source. As a result, the remote backup module 202 is
able to backup data using less network bandwidth and other
resources than is found in the prior art.
Id. At block 314, remote backup module 202 determines if any files that
were the object of the backup command received at block 300 have not
previously been selected and, if so, remote backup module 202 returns back
to block 306 and blocks 306 through 314 repeat until all of the files that
were the object of the backup command have been selected. Id. ¶ 39.
At block 316, “remote backup module 202 performs an update to the
database associated with the trusted source.” Ex. 1004 ¶ 40. Field explains
that “more than one user of the backup service may need the file restored
back onto a computing device. Thus, the backup database 104 maintains an
entry for each user of the backup service.” Id. An “entry in the backup
database 104 associated with a specific user contains ‘pointers’ to operating
system, application program files, and/or user level data that is shared with
other users of the backup service.” Id. Additionally, an entry will store 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 block 316, the
database is updated with this data required to restore files and/or a volume
state, after which remote backup module 202 proceeds to block 318 and
terminates. Id.
b. Anderson
Anderson is directed to “a method and apparatus for differential
bandwidth-efficient and storage-efficient backup and restoration.” Ex. 1005
¶ 12. Anderson describes backing up “articles,” such as “user data, (e.g.,
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text, photos, music, movies, etc.), applications . . . command scripts, byte
codes, [and] configuration data.” Id. ¶ 15.
Figure 9 of Anderson is reproduced below:

Figure 9 illustrates an embodiment where mutliple clients (1–N) can connect
with backup service system 925. Ex. 1005 ¶¶ 11, 128.
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. “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,
[t]he client’s system transmits the CIs to the backup service.
Since these CIs identify articles uniquely, the backup service
can determine whether a [Client-Invariant Content Descriptor
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(CICD)24] 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.
Ex. 1005 ¶ 63.
Differences Between the Prior Art and the Claims;
Motivation to Modify
a. Independent Claim 1
i. 1-Pre25
1-pre, which includes the preamble of claim 1, recites “[a] method of
managing data in an encrypted system comprising a backup server and a
client device having a first remote storage medium, the client device and
backup server being configured to exchange encrypted communications with
one another, the method comprising.” Ex. 1001, 18:40–44. Petitioner
contends, “[t]o the extent the preamble language is deemed limiting, Field in
view of Anderson discloses [it.]” Pet. 27 (citing Ex. 1002 ¶¶ 86–91). In
particular, Petitioner states that “Field describes the backup of data in an
encrypted system between a ‘back end computing device’ (i.e., backup

24 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.
25 1-pre includes the preamble of claim 1. Although we express no
determination on whether the preamble is limiting, for the reasons noted
herein, we find that Petitioner sufficiently establishes that Field teaches 1-
pre.
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server) and one or more client computing devices (i.e., client devices).” Id.
Petitioner points to Field’s Figure 4, which Petitioner asserts “depicts a
‘typical server-based networking environment’ with a ‘plurality of client
computing devices’ as well as ‘back end computing devices’ that perform
the backup of data from the multiple client devices.” Id. at 27–28 (citing
Ex. 1004 ¶¶ 16, 42).
Field’s Figure 4, with Petitioner’s annotations, is reproduced below:

Field’s Figure 4 is reproduced above, including Petitioner’s annotations in
red (identifying client devices as client computing devices 402, 404, 406,
and 408) and green (identifying backup servers as back end computing
devices 410 and 412). Pet. 28. Petitioner contends Field “describes its
back-end computing devices as servers that backup data for multiple client
devices.” Id. at 28–29 (citing Ex. 1002 ¶¶ 87–88; Ex. 1004 ¶¶ 16, 23, 43).
For support, Petitioner asserts Field describes that “[a]n organization may
maintain a ‘server/client-based computer network where resources and
services are provided by server-based computing devices to client-based
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computing devices’” and “existing server-based computing devices
associated with an enterprise organization may be used as a backup store for
client-based computing devices.” Id. at 28 (quoting Ex. 1004 ¶ 43).
Petitioner explains that Field’s Figures 1 and 2 “provide additional
details related to the components and functionality of each system.” Pet. 29.
Petitioner asserts back-end computing device 102 aggregates data from
multiple sources (e.g., target computing device 104), at a single location
(e.g., backup database 106) to prevent unnecessary transmission of data. Id.
(citing Ex. 1004 ¶ 22). Field’s Figure 1, with Petitioner’s annotations, is
reproduced below:

Field’s Figure 1 is reproduced above, including Petitioner’s annotations in
red (identifying a client device as target computing device 104), green
(identifying a backup server as back end computing device 102), and blue
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(identifying a backup data storage medium as backup database 106).
Pet. 29.
Relying on Figure 2, Petitioner contends Field’s target computing
device 104 includes “an operating system 200, a remote backup module 202,
and a network interface 204.” Pet. 30 (citing Ex. 1004 ¶ 25). Additionally,
Petitioner relies upon Field’s description—that target computing device 104
can be any one of a variety of electronic devices having “some type of
memory”—in mapping the memory of the target computing device to the
“first remote storage medium” recited in the preamble of claim 1. Id. at 30
(citing Ex. 1004 ¶ 25) (emphasis omitted).
Further, Petitioner contends Field teaches that “electronic data is
encrypted prior to being transmitted” from client computing device 408 to
back end computing device 412 via the internet. Pet. 30–31 (citing Ex. 1004
¶ 44). Petitioner points to Field’s statement that “[t]ypically, the connection
between the client computing device 408 will use a security mechanism,
such as encryption, to prevent data from being intercepted by a third party.”
Id. at 31 (citing Ex. 1004 ¶ 44) (emphasis omitted).
Patent Owner’s Response does not raise an argument specifically
directed to the preamble of claim 1. See generally PO Resp.
For the reasons explained by Petitioner, we find that Field teaches the
preamble of claim 1.26
ii. Limitation 1A
Limitation 1A recites “receiving, at the client device, a request to
backup data from the first remote storage medium to the backup server.”

26 As noted above, in light of our finding that Field teaches the preamble of
claim 1, we need not determine whether the preamble is limiting.
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Ex. 1001, 18:45–47. Petitioner reiterates its argument from limitation 1-pre
that “Field’s ‘target computing device’ having ‘memory’ teaches the claimed
‘client device’ that has a ‘remote storage medium’” and further contends
“Field’s memory is ‘remote’ because it is located separate from the backup
server.” Pet. 31 (citing Ex. 1004 ¶ 25; Ex. 1002 ¶¶ 92–94) (emphasis
omitted). Additionally, Petitioner asserts Field “teaches receiving a request
at the client device to backup data from the first remote storage medium to
the backup server.” Id. Petitioner relies upon the following description in
Field:
As illustrated in FIG. 3, the remote backup module 202
remains idle, at block 300, until a command to backup data onto
a remote computing device is received. 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 of which the following are only examples. A
computer user may interact with a user interface provided by
the present invention to select between different types of
backup.
Id. at 31–32 (quoting Ex. 1004 ¶ 32) (emphasis omitted). Further, Petitioner
argues that Field teaches that the command is executed “‘at remote backup
module 202’ within a client device.” Id. at 32.
Patent Owner’s Response does not raise an argument specifically
directed to limitation 1A of claim 1. See generally PO Resp.
For the reasons explained by Petitioner, we find that Field teaches
limitation 1A.
iii. Limitation 1B.1
Limitation 1B.1 recites “in response to receiving the request, initiating
a backup routine at the client device, the backup routine comprising.”
Ex. 1001, 18:48–50. Petitioner relies upon its argument directed to
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limitation 1A, reiterating that Field teaches that the client device initiates a
backup routine in response to receiving a command to back up data. Pet. 32
(citing Ex. 1004 ¶ 32; Ex. 1002 ¶ 95). Petitioner points to Field’s Figure 3
as illustrating the backup routine, and specifically blocks 300 and 302 as
illustrating the initiation of the backup routine. Id. (citing Ex. 1004 ¶ 32,
Fig. 3).
Patent Owner’s Response does not raise an argument specifically
directed to limitation 1B.1 of claim 1. See generally PO Resp.
For the reasons explained by Petitioner, we find that Field teaches
limitation 1B.1.
iv. Limitation 1B.2
Limitation 1B.2 recites “identifying a first set of files stored on the
first remote storage medium.” Ex. 1001, 18:51–52. Petitioner contends
Field “teaches that after the client device initiates a backup routine, Field’s
remote backup module identifies one or more files for backup from the
client device’s memory.” Pet. 33. Petitioner asserts Field’s disclosure of
selecting and backing-up one or more files teaches “the claimed
identification of a first set of files stored on the first remote storage
medium.” Id. at 35 (citing Ex. 1002 ¶¶ 96–97). For support, Petitioner
points to the following description in Field of Figure 3:
As illustrated in FIG. 3, at block 306, the remote backup
module 202 selects a file that was designated for backup. As
mentioned previously, in one embodiment of the present
invention, the remote backup module 202 performs a backup of
one or more files. If block 3206 is reached, a backup of one or
many files for storage . . . will be performed.
Id. at 34 (quoting Ex. 1004 ¶ 35) (emphasis omitted).
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Patent Owner’s Response does not raise an argument specifically
directed to limitation 1B.2 of claim 1. See generally PO Resp.
For the reasons explained by Petitioner, we find that Field teaches
limitation 1B.2.
v. Limitation 1B.3
Limitation 1B.3 recites “generating, at the client device, a
cryptographic signature value for each file in the first set of files, wherein
the cryptographic signature value is computed by using actual data of the file
as an input to a cryptographic signature generating algorithm which
computes the cryptographic signature value.” Ex. 1001, 18:53–58.
Petitioner contends “[w]ithin Field’s backup routine, Field discloses
generating a cryptographic signature at the client device at block 308 . . . .”
Pet. 35. Petitioner quotes the following from Field’s description, “[a]t
block 308, the remote backup module 202 generates a signature of the
selected file” and “[f]or each file selected, at block 306, the module 202 will
generate a signature . . . .” Id. (quoting Ex. 1004 ¶¶ 35–36) (emphasis
omitted). Petitioner asserts one of ordinary skill in the art “would have
understood that Field’s description of generating a signature ‘for each file
selected’ would have disclosed ‘generating, at the client device, a
cryptographic signature value for each file in the first set of files’” and that
“‘each file selected’ would have suggested multiple selected files and
multiple corresponding signatures.” Id. (citing Ex. 1002 ¶¶ 98–99)
(emphasis omitted).
Additionally, Petitioner contends Field teaches computing the
signature value by using actual data of the file because “Field explains that
these signatures are generated based on data of the file being backed-up and
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are ‘cryptographic signatures’ in view of the applied ‘SHA-1’ hash
algorithm,” which one of ordinary skill in the art “would have
understood . . . is an example of a cryptographic algorithm that uniquely
identifies files.” Pet. 36 (citing Ex. 1004 ¶¶ 36–37; Ex. 1002 ¶ 99; Ex. 1005
¶ 42).
Patent Owner’s Response does not raise an argument specifically
directed to limitation 1B.3 of claim 1. See generally PO Resp.
For the reasons explained by Petitioner, we find that Field teaches
limitation 1B.3.
vi. Limitation 1B.4
Limitation 1B.4 recites “generating, at the client device, 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 value generated for each file
in the first set of files.” Ex. 1001, 18:59–64. Petitioner raises two
alternative arguments directed to limitation 1B.4. Pet. 37–40.
First, Petitioner contends one of ordinary skill in the art “would have
understood that Field’s description of generating a signature ‘for each file
selected’ would have disclosed ‘generating . . . a first inventory . . . [that]
includes the cryptographic signature value generated for each file in the first
set of files.’” Pet. 37 (emphasis omitted) (citing Ex. 1002 ¶¶ 100–105). In
particular, Petitioner asserts that one of ordinary skill in the art would have
understood that Field suggests multiple selected files and multiple
corresponding signatures and that “[t]his collection of multiple signatures
discloses the claimed ‘first inventory.’” Id. (citing Ex. 1002 ¶¶ 100–105)
(emphasis omitted). Additionally, Petitioner argues that when Field
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generates a signature of a file at a particular point in time, “that signature
represents the state of that file (i.e., its current state) at that point in time.”
Id. at 37–38 (citing Ex. 1002 ¶ 101). Since Field teaches that the process
occurs for each file in the set of files stored on the client device’s memory,
Petitioner contends “Field’s collection of signatures would reflect the current
state of the files stored on the first remote storage medium.” Id. at 38 (citing
Ex. 1002 ¶ 101). Petitioner asserts that claim 1 of the ’545 patent does not
require that the “current state of the first remote storage medium” refer to
every file stored on the remote storage medium because the ’545 patent
teaches an embodiment where an inventory consists only of files that have
been modified since a prior backup. Id. (citing Ex. 1001, 16:39–55)
(emphasis omitted). Thus, Petitioner, in its first argument, contends Field
alone teaches limitation 1B.4.
Second, Petitioner asserts that, if “current state of the first remote
storage medium” refers to every file of the remote storage medium, Field in
combination with Anderson satisfies limitation 1B.4. Pet. 38 (citing
Ex. 1005 ¶ 19; Ex. 1002 ¶ 102) (emphasis omitted). In particular, Petitioner
points to the following from Anderson: (a) generating a CI (which Petitioner
equates to a cryptographic signature) for each article in a contour to “capture
the state of the article contents” and (b) the description of a “contour” as
“compris[ing] a snapshot of the state of every article within a designated
collection of articles . . . at a given time. . . . and can comprise every article
on the client device.” Id. at 38–39 (citing, inter alia, Ex. 1005 ¶¶ 42–43, 55;
Ex. 1002 ¶ 103) (emphasis omitted). Thus, Petitioner contends that “the
collection of signatures for each of these articles discloses the claimed ‘first
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inventory reflect[ing] a current state of the first remote storage medium.’”
Id. at 39 (citing Ex. 1002 ¶ 103) (emphasis omitted).
Petitioner contends that one of ordinary skill in the art would have
been motivated to modify Field in light of Anderson because Field’s backup
process “would have potentially resulted in a very time consuming back-up
process,” which “can create a number of problems.” Pet. 23 (citing Ex. 1002
¶ 79). As examples, Petitioner explains that “if write access to files is not
locked while they are being backed-up, the files can change while the
backup is occurring[, which] can result [in] inconsistent backups” and,
alternatively, if “write access to files . . . [is] locked during the backup
process, . . . this would result in a computer being unusable while the backup
is occurring because no writing to files can occur.” Id. (citing Ex. 1002
¶ 80). Petitioner asserts Anderson provides a solution to allow a user to
interact with files while performing Field’s back-up process. Id. (citing
Ex. 1002 ¶ 80). In particular, Petitioner contends Anderson’s “snapshot”
captures a current state of each file at a given point-in-time, thus allowing
the client device to proceed with the backup process based on the snapshot.
Id. at 24. Petitioner argues that “[b]ecause the snapshot is used for backup,
the user is able to continue interacting with the files even during the
potentially lengthy duration of the backup process.” Id. (citing Ex. 1022,
5:49–62, 12:2–8).27
Petitioner contends one of ordinary skill in the art would have
understood that combining the teachings of Field and Anderson “would have
been merely combining known elements to yield predictable results.”
Pet. 24 (citing Ex. 1002 ¶¶ 83–85). In particular, Petitioner points to the

27 Exhibit 1022 is U.S. Patent No. 7,590,668 B2, issued Sept. 15, 2009.
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similar use of common server and client devices in a network configuration
in each reference. Id. Petitioner asserts, “[i]n view of these common
network devices, a [person of ordinary skill in the art] would have known
how to combine Field and Anderson and would have had a reasonable
expectation of success in creating the combination.” Id. at 26 (citing
Ex. 1002 ¶ 84). Petitioner contends:
For example, both Field and Anderson describe signature
generation at a client device as well as comparing these
signatures at a server to determine whether to backup file data.
EX1004, ¶¶36–38; EX1005, ¶97. The server then determines
whether a matching signature has already been stored.
EX1004, ¶37; EX1005, ¶¶97–98. If not, the client device
transmits the file to the server for storage. EX1004, ¶¶37–38;
EX1005, ¶¶97–98.
Pet. 26–27. Petitioner thus contends one of ordinary skill in the art “would
have been motivated to implement Anderson’s ‘contour’ and ‘snapshot’
framework with Field to allow a user access to files during a backup
process.” Id. at 27 (citing Ex. 1002 ¶ 85). Further, Petitioner asserts one of
ordinary skill in the art would have “found it predictable to combine features
from Field and Anderson in view of the common server and client
components used in both references and would have had a reasonable
expectation of success in forming the combination.” Id. (citing Ex. 1002
¶ 85).
Patent Owner argues that “Field does not teach an ‘inventory’ as
recited in claims 1, 10, 12, and 13.”28 PO Resp. 37 (emphasis omitted).
Patent Owner contends that Petitioner has not shown that “Field, Anderson,

28 Patent Owner argues claims 1, 10, 12, and 13 as a group. See PO
Resp. 37–43.
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Ackerman, or Coombs teaches a backup or restore process that uses an
inventory of electronic data consisting of cryptographic signatures that
reflects the current state of the first remote storage medium to determine
whether to restore or backup the electronic data that is part of said
inventory.” Id. Patent Owner, relying on its proposed construction of
“inventory,” contends that Field does not disclose or suggest “an inventory
of electronic data that is transmitted from the client device to the backup
server.” Id. at 37–38 (noting and relying on Patent Owner’s proposed
construction of “inventory”).
Patent Owner asserts that “[i]n Field, only a file signature, not an
inventory, is transmitted to the backup server,” as shown in Field’s Figure 3.
PO Resp. 39–40 (discussing Field’s Figure 3). Patent Owner contends that
“Field concerns only file signatures of one selected file and Field only
teaches restoring just individual files in its file-by-file method and not the
volume state of a client device.” Id. at 40 (citing Ex. 1004, Fig. 3, ¶ 35;
Ex. 2008 ¶ 96). Patent Owner asserts that “[t]he specification and Fig. 3 of
Field confirm that the backup process does not need to send any other data
of the type included in the ’545 Patent’s claimed inventories since for
individual file backups there is no need to send the current state of the drive
or even the filename or directory.” Id. at 41 (citing Ex. 2008 ¶ 97). Patent
Owner argues that because Field’s backup process “only deals with backing
up one file at a time, the client device and the backup server know which file
the system is processing at any given time.” Id. (citing Ex. 2008 ¶ 97).
Thus, according to Patent Owner, “the file name, directory, or other volume
state data is irrelevant and unnecessary in Field’s file-based backup” and
“[a]s such, in Field, a user would not have the information needed in the
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backup server, including file name and information on the directory
structure, to restore an entire storage medium of a client device.” Id. (citing
Ex. 2008 ¶¶ 97–98).
In its Sur-reply, Patent Owner maintains its arguments that Field fails
to disclose the claimed “inventory” based on Patent Owner’s proposed
construction of “inventory.” PO Sur-reply 10–14. Patent Owner further
contends that Petitioner’s analysis of Field and Field’s generation of
signatures for each file selected, including the collection of signatures as
Petitioner’s proposes, does not establish that the collection of signatures
reflects the current state of the remote storage medium because “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, but this is not disclosed in
Field.” Id. Patent Owner asserts that Dr. Shenoy agreed that this additional
data was needed and Patent Owner contends that the additional data “may
include, but [is] not limited to metadata, e.g., filename or directory.” Id.
(citing PO Resp. 26–27; Ex. 2008 ¶¶ 99, 111). Thus, according to Patent
Owner, Field does not teach that an inventory “reflects the current state of a
storage medium” because Field “does not disclose storing this data with the
signature of a file.” Id. at 11–12.
We find Petitioner’s arguments and evidence persuasive to show that
each of Petitioner’s alternatives—Field alone and Field in combination with
Anderson—teaches or suggests limitation 1B.4. With respect to Petitioner’s
first alternative based on Field alone, we offer the following. First, as
reflected above, Patent Owner’s arguments are primarily based on its
proposed construction of “inventory,” which we have not adopted.
Additionally, Petitioner has shown sufficiently that Field’s description of
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generating a signature “for each file selected” teaches “generating, at the
client device, a first inventory for the first set of files” because that signature
or collection of signatures (in the case of more than one selected file)
constitutes a first “itemized list” for the first set of files. Nothing more is
required by the term “inventory.”29
Second, with respect to the requirement that the first inventory
“includes the cryptographic signature value for each file in the first set of
files,”30 Petitioner’s argument is persuasive that Field teaches this aspect of
limitation 1B.4 because Field generates a signature for each selected file.
See, e.g., Ex. 1004 Fig. 3, ¶¶ 35 (“For each file selected, at block 306, the
module 202 will generate a signature for the file . . . .”), 36 (“At block 308,
the remote backup module 202 generates a signature of the selected file.”).
Hence, Petitioner has persuasively shown that Field teaches that the first
inventory (i.e., first “itemized list of electronic data”) includes the
cryptographic signature value for each selected file.
Third, with respect to the requirement that the first inventory “reflects
a current state of the first remote storage medium,” Petitioner’s argument is
persuasive at least because Patent Owner acknowledges that “the claimed
inventory may not account for every file on the system.” PO Sur-reply 12.
Specifically, Patent Owner agrees with Petitioner that the claimed inventory
“accounts for the data, which may only be a chunk of data, selected by a user

29 Nothing in the claim nor the record supports or is sufficiently persuasive
to require that “inventory” be read as requiring an itemized list of two or
more. An itemized list of one is still an itemized list.
30 We discuss this language of limitation 1B.4 before considering whether
the inventory “reflects a current state of the first remote storage medium” so
that we can more easily discuss Patent Owner’s arguments directed to the
latter clause.
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to be backed up or restored.” Id. Thus, because the claimed inventory need
not account for every file on the system, Petitioner’s argument—that Field’s
signature or collection of signatures would reflect the current state of the
files on the first remote storage medium and correspondingly reflect a
current state of the first remote storage medium—is persuasive.
Additionally, even without Patent Owner’s acknowledgement that the
claimed inventory need not account for all files, Petitioner sets forth an
alternative position that Field, when modified by Anderson, teaches this
aspect of limitation 1B.4. Pet. 38–40. In particular, as discussed above,
Petitioner relies on modifying Field to include Anderson’s contour and
snapshot process, which would have “included every article on the client
device [i.e., first remote storage medium] and would have therefore reflected
the state of its first remote storage medium.” Id. at 39.
We agree with Petitioner that the alternative combination of Field and
Anderson also teaches this aspect of limitation 1B.4 for the reasons set forth
by Petitioner, as reproduced above. In particular, we agree with Petitioner
that one of ordinary skill in the art would have been motivated to modify
Field in light of Anderson, as proposed, and would have had a reasonable
expectation of success in so doing for the reasons explained by Petitioner.
See, e.g., Pet. 23–27, 38–40.
Patent Owner addresses the issue of motivation to combine in several
different places in its Patent Owner Response. Many of Patent Owner’s
arguments on this issue, however, are based on its position that Field teaches
away from Petitioner’s proposed combination, a view that we do not share
and which we find inadequately supported on the record. Therefore, we now
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discuss Patent Owner’s alleged instances of teaching away and then turn to
Patent Owner’s additional arguments on the particulars of the combination.
We begin with Patent Owner’s explanation and discussion of Field.
See PO Resp. 29–34. Patent Owner explains that Field discloses two ways
of backing up a storage device—a full-volume backup and a backup of
individual files.31 Id. at 29 (citing Ex. 2008 ¶ 80). Patent Owner states that
when Field performs a full-volume backup, that process does not involve
generating signatures, as shown on the right-hand side of the flowchart of
Figure 3. See PO Resp. 30. We agree. Patent Owner, however, asserts
further that because Field does not teach using signatures for a full-volume
backup, that means “Field teaches away from generating signatures for a
full-volume backup, which creates a copy of the entire target computing
device system and is not concerned with backing up individual files for
which signatures might be generated in Field.” Id. at 30–31 (citing Ex. 2008
¶ 82); see PO Sur-reply 16 (asserting Field teaches away). On these points,
we disagree.32

31 Petitioner describes this distinction in Field as between a file-based
backup and an image-based backup, noting that Field’s volume-state backup
“captures an image of the entire volume but does not prevent duplication of
data across different users or devices,” whereas Field’s file-based backup is
designed to prevent data duplication through the use of file signatures. See
Pet. Reply 18 (citing Ex. 1024 ¶¶ 51–55; Ex. 1025, 87:19–88:15; Ex. 1004
¶ 29) (emphasis omitted). Our consideration and determination on the issues
presented does not hinge on which characterization is applied.
32 Many of Patent Owner’s arguments stem from the position that the
“inventory” must have enough electronic data to perform a complete restore.
See, e.g., PO Resp. 44 (“the ’545 Patent identifies the need for a solution that
provides a complete backup and restore of an entire storage medium”), 49
(“Contrary to Field, the ’545 Patent teaches a full backup and restore of a
file system using descriptors transmitted as part of an inventory having
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First, it is important to understand Petitioner’s argument. Petitioner
does not propose adding signatures to Field’s full-volume backup. See, e.g.,
Pet. Reply 17–18. Rather, Petitioner relies on Field’s disclosure that its file-
by-file backup process can be used for one or more files. Id. at 17 (citing
Ex. 1004 ¶¶ 32–33; Ex. 1024 ¶ 50). In other words, Petitioner argues, and
we agree, that Field’s file-by-file backup process is not limited to backing up
only one file. Petitioner relies upon that express teaching in Field to argue
that one of ordinary skill in the art would have understood that disclosure to
indicate no upper limit on the number of files that could be backed up using
the file-by-file backup process, which includes the option of backing up all
of the files on a storage medium (in other words, using signatures for a full
backup). Id. And, we agree with Petitioner because the argument is
supported by Field’s disclosure, as Petitioner indicates. Thus, Patent
Owner’s argument that “Field teaches away from generating signatures for a
full-volume backup,” PO Resp. 30–31 (citing Ex. 2008 ¶ 82), is inapposite
because that is not a modification Petitioner proposes.
Second, to the extent Patent Owner is arguing that Field teaches away
from using signatures to backup an entire drive (which is not required by the

sufficient data to reflect the current state of the drive.”). But, Patent
Owner’s acknowledgement that “inventory” need not account for every file
on a remote storage medium demonstrates the fallacy of that position. In
particular, even assuming that a restore is required by the Challenged
Claims, an “inventory” of less than all files on a remote storage medium
(which includes an inventory representing one file) would not perform a
complete restore of that remote medium. Ex. 1024 ¶ 48 (Dr. Shenoy noting
that the ’545 patent explicitly discusses backups of fewer than all files on a
storage medium); Ex. 1025, 40:14–21 (Dr. Weissman confirming that
“inventory” is not required to reflect every file residing on the storage
medium).
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claims), we disagree that Field teaches away from such a backup. In
particular, “[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”). Here,
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 to backup an entire drive. That one backup
(file-by-file) involves generating signatures where the other backup (volume
state), which is used for a complete backup, does not, does not mean that
Field teaches away from using signatures for a complete 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.
Additionally, Patent Owner argues that “Field teaches away from
using an inventory of electronic data consisting of cryptographic signatures
that reflects the current state of the first remote storage medium as described
and claimed in the ’545 Patent.” PO Resp. 34 (citing Ex. 2008 ¶ 86); see PO
Sur-reply 13 (citing PO Resp. 34). Patent Owner contends that
[s]ince Field selects one file for backup at a time, there is no
need or disclosure in Field to send any data to the backup server
other than the signature for that one file, as the backup system
can determine quickly whether that one file is stored in the
storage medium through the use of a single file signature.
PO Resp. 34 (citing Ex. 2008 ¶ 86); see PO Sur-reply 13 (quoting PO
Resp. 34). Patent Owner asserts that because Field only sends one file
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signature at a time, and is concerned with optimizing bandwidth usage, “it
teaches away from creating and sending an inventory which would include
multiple file signatures much less any other data such as data representing
the current state of the drive, filenames, or directories.” Id. (citing Ex. 2008
¶ 87); see PO Sur-reply 16 (“Field teaches away from using a signature file
method for full volume backups of a system”), 16 (“Field’s two backup
processes certainly teach away from performing full backups of electronic
data”)). Thus, Patent Owner contends that one of ordinary skill in the art
“would learn from Field not to create an inventory of electronic data
consisting of cryptographic signatures that reflects the current state of the
first remote storage medium as it would lead to inefficiencies that counteract
the ultimate goal of an efficient backup process.” PO Resp. 34 (citing
Ex. 2008 ¶ 87).
Patent Owner’s argument raises two issues—(1) whether Field teaches
away and (2) whether one of ordinary skill in the art would have been
motivated to modify Field in light of potential inefficiencies. With respect
to whether Field teaches away, Patent Owner’s argument is premised, in
part, on a requirement derived from its proposed construction of
“inventory”—that the claimed “inventory” must include additional data,
such as filenames and directories. As discussed above, we do not agree with
Patent Owner’s construction. Similar to Patent Owner’s earlier argument of
a teaching away, Patent Owner fails to identify anything in Field that
criticizes, discredits, or otherwise discourages one of ordinary skill in the art
from creating an inventory, as properly construed. Accordingly, we do not
find that Field teaches away from using or creating an inventory.
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Further, in its discussion of Anderson (see PO Resp. 35–37), Patent
Owner argues that one of ordinary skill in the art would not have been
motivated to modify Field in light of Anderson (an issue we discuss further
below), and contends that “Field teaches away from backing up multiple
files at the same time.” Id. at 36–37 (citing Ex. 2008 ¶ 89). Patent Owner
does not explain its reasoning for asserting that Field teaches away in this
instance, but, again, Patent Owner fails to identify anything in Field that
criticizes, discredits, or otherwise discourages one of ordinary skill in the art
from backing up multiple files at the same time. Accordingly, we do not
find that Field teaches away from backing up multiple files at the same time.
To summarize, we do not find that Field teaches away from the
combination proposed by Petitioner. We now address Patent Owner’s
additional arguments beyond the alleged instances of teaching away.
Patent Owner argues that one of ordinary skill in the art would not
have modified Field with teachings from Anderson because “it would lead to
inefficiencies that counteract the ultimate goal of an efficient backup
process.” PO Resp. 34 (citing Ex. 2008 ¶ 87). Patent Owner’s argument is
based on the premise that Field “is concerned with optimizing bandwidth
usage.” Id. (citing Ex. 2008 ¶ 87).
Patent Owner’s argument does not identify a deficiency with respect
to Petitioner’s challenge. Field states that it 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) and that Field
explains that its solution “performs optimizations designed to reduce the
amount of time and network bandwidth required to backup a computing
device” (id. ¶ 23). Neither Patent Owner nor Dr. Weissman explains why
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transmitting multiple signatures at the same time would lead to inefficiencies
and we do not agree that it would. Thus, we give Dr. Weissman’s testimony
less weight. Petitioner’s position, supported by Dr. Shenoy’s testimony, is
that the modifications proposed would “reduce network bandwidth” by
transmitting signatures for selected files at the same time. See, e.g.,
Ex. 1002 ¶ 109. Petitioner’s position is logical and fully supported on the
record. Thus, we do not agree with Patent Owner’s arguments that one of
ordinary skill in the art would not have been motivated to modify Field.33
In its section under a heading expressly referring to motivation (see
PO Resp. 43), Patent Owner raises additional arguments as follows. First,
Patent Owner asserts that “[w]hen considering the problems that Field and
Anderson attempt to solve, there is no justifiable reason for a [person of
ordinary skill in the art] at the time of the ’545 Patent to combine these
references.” Id. at 44 (citing Ex. 2008 ¶ 105). Patent Owner’s argument and
the testimony of Dr. Weissman on which Patent Owner relies (see, e.g.,
Ex. 2008 ¶¶ 104–105) refer back to Patent Owner’s previous discussion of
Field and Anderson, where Patent Owner asserts that Field teaches away
from the combination—an argument we have addressed and rejected as
unsupported on the complete record before us.
Second, Patent Owner asserts that “just because Field and Anderson
are in the same general field does not mean it would have been obvious to

33 Patent Owner also attempts to discredit Petitioner’s reliance on
Dr. Shenoy’s testimony, asserting, “Field teaches away from backing up
multiple files at the same time, and only discusses selecting, processing, and
backing up files one at a time, so Dr. Shenoy’s arguments are not
applicable.” PO Resp. 36–37 (referencing Ex. 1002 ¶ 27; citing Ex. 2008
¶ 89). For the reasons explained above, we disagree that Field teaches away
from backing up multiple files at the same time.
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combine them.” PO Resp. 45 (citing Ex. 2008 ¶ 106). We agree with this
statement. But, we understand the position articulated by Petitioner as
directed to explaining that Field and Anderson are analogous art, rather than
providing an additional reason why one of ordinary skill would have been
motivated to combine their teachings. See Pet. 22 (discussing that Field and
Anderson are both directed to efficient data backup across multiple client
devices).
Third, Patent Owner again asserts that Field teaches away from using
a signature file method for full backups of a system simply because Field’s
full-volume-state backup does not use signatures. PO Resp. 47 (citing
Ex. 2008 ¶ 110). We have already addressed this argument and found it
lacking because Patent Owner fails to identify where Field criticizes,
discredits, or otherwise discourages one of ordinary skill in the art from
using signatures with a full backup.34
Considering the complete record before us, for the reasons explained
above we find that Petitioner has established that the combination of Field
and Anderson teaches limitation 1B.4 and that one of ordinary skill in the art
would have had a reason with rational underpinning to modify Field with the
teachings of Anderson as proposed by Petitioner with a reasonable
expectation of success.

34 Patent Owner raises an additional argument as to whether one of ordinary
skill in the art would have been motivated to modify Field, but that argument
is directed to limitation 1B.5 and, thus, we discuss it there. See PO
Resp. 48–50 (addressing whether Field “could be modified to transmit
multiple signatures at the same time”).
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vii. Limitation 1B.5
Limitation 1B.5 recites “transmitting the first inventory from the
client device to the backup server via one or more encrypted
communications.” Ex. 1001, 18:65–67. Petitioner sets forth three positions
as to how limitation 1B.5 is met by the combination of Field and Anderson.
Pet. 40–43.
First, Petitioner contends Field’s disclosure of transmitting a signature
to the backup server teaches limitation 1B.5. Pet. 40–41. Petitioner offers
two reasons: (1) the claim language does not require that all of the signatures
be transmitted at the same time, “thus Field’s disclosure of transmitting
signatures individually until all signatures are sent discloses ‘transmitting the
first inventory’” and (2) even if the claim language requires all signatures to
be transmitted at the same time, “any one of the signatures itself constitutes
the claimed ‘first inventory’ . . . because a ‘set’ of files can be just a single
file,” and thus the transmission of one signature teaches transmitting the first
inventory as recited. Id. at 41 (emphasis omitted) (citing Ex. 1002 ¶ 108).
Second, to the extent the claim language requires that multiple
signatures be transmitted at the same time, Petitioner asserts that one of
ordinary skill in the art “would have found it obvious to send all of Field’s
signatures at the same time.” Pet. 41 (citing Ex. 1002 ¶¶ 109–112).
Petitioner contends Field provides an express motivation to “perform[]
optimizations designed to reduce the amount of time and network bandwidth
required to back up a computing device.” Id. at 41–42 (citing Ex. 1004
¶¶ 22, 23). Thus, Petitioner asserts one of ordinary skill in the art “would
have found it obvious to transmit the generated signatures for the selected
files at the same time (i.e., ‘a first inventory’) to the back end computing
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device to reduce network bandwidth (e.g., overhead).” Id. at 42 (citing
Ex. 1002 ¶ 109) (emphasis omitted); see id. (citing Ex. 1002 ¶ 110).
Third, Petitioner contends Anderson is an example of a method of
reducing network bandwidth, asserting “Anderson teaches concurrently
transmitting multiple content identifiers at the same time for files (i.e.,
‘articles’) to be backed up.” Pet. 42 (citing Ex. 1002 ¶ 111). Petitioner
argues that Anderson’s client generates a CI for each article that is stored on
the client system and then transmits the CIs to the backup service. Id. at 43
(citing Ex. 1005 ¶¶ 63, 97, Fig. 7 (block 730)). Petitioner contends that
implementing this change to Field, “would require nothing more than
executing block 308 of Field’s process depicted in FIG. 3 (i.e., generating a
signature of a selected file) for each file to be backed up prior to transmitting
the signatures to the back end computing device (trusted source) in
block 310.” Id. (citing Ex. 1002 ¶¶ 111–112).
We find Petitioner’s arguments and evidence persuasive to show that
each alternative—Field, Field as modified, and Field as modified by the
teachings of Anderson—teaches or suggests limitation 1B.5 for the reasons
explained by Petitioner.
With respect to Petitioner’s first alternative based on the disclosure of
Field, Patent Owner does not contest that limitation 1B.5 is met based on
Field alone. In particular, Patent Owner does not address the transmission of
one signature except to argue that one signature does not constitute an
itinerary, which relies on Patent Owner’s construction of “inventory” that we
have not adopted. See, e.g., PO Resp. 38 (discussing Patent Owner’s
proposed construction and asserting that Field lacks “disclosure or
suggestion of an inventory of electronic data that is transmitted from the
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client device to the backup server”), 40 (“In Field, only a file signature, not
an inventory, is transmitted to the backup server.”). Nor does Patent Owner
address Petitioner’s arguments (above) that (1) the claim language does not
require that all of the signatures be transmitted at the same time, and “thus
Field’s disclosure of transmitting signatures individually until all signatures
are sent discloses ‘transmitting the first inventory’” and (2) even if the claim
language requires all signatures to be transmitted at the same time, “any one
of the signatures itself constitutes the claimed ‘first inventory’ . . . because a
‘set’ of files can be just a single file,” and thus the transmission of one
signature teaches transmitting the first inventory as recited. Pet. 41
(emphasis omitted) (citing Ex. 1002 ¶ 108). On the present record,
Petitioner’s arguments are uncontested and persuasive for the reasons
explained by Petitioner.35 Thus, for limitation 1B.5, we find that Petitioner
establishes that Field alone teaches limitation 1B.5.
For completeness, we also address Petitioner’s second and third
alternatives and Patent Owner’s arguments as to whether one of ordinary
skill in the art would have been motivated to modify Field to transmit more
than one signature at a time, although these alternatives proposed by
Petitioner are not necessary to our determination regarding limitation 1B.5.
In particular, Patent Owner asserts that “Petitioner’s arguments are . . .
premised on an incorrect assumption that Field could be modified to transmit
multiple signatures at the same time to compare said multiple signatures at
the same time to determine which of the multiple files should be transmitted

35 In particular, as reproduced above, limitation 1B.5 recites “transmitting
the first inventory . . . via one or more encrypted communications.”
Ex. 1001, 18:65–67 (emphasis added).
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to the trusted source.” PO Resp. 49 (citing Ex. 2008 ¶ 114). Patent Owner
asserts that “[s]imply put, 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. (citing Ex. 2008 ¶ 115). Thus,
according to Patent Owner, “there would have been no motivation to
combine the multiple signatures from Anderson into Field.” Id. (citing
Ex. 2008 ¶ 115).36
We find Dr. Shenoy’s testimony particularly persuasive and credible.
Dr. Shenoy’s testimony supports Petitioner’s arguments as to why and how
one of ordinary skill in the art would have modified Field. See Ex. 1002
¶¶ 109–111. In addition, as Petitioner notes, Dr. Weissman acknowledged
during his deposition that one of ordinary skill in the art would have been
capable of modifying Field. See, e.g., Ex. 1025, 112:11–22. Although
Dr. Weissman explained that such modification would not be simple, we
find that one of ordinary skill in the art (as we have defined the level of skill
above), would have recognized the clear possibility of the modification
proposed, been motivated to make the modification for the reasons explained
by Petitioner, and would have had a reasonable expectation of success in so
doing. See, e.g., Ex. 1024 ¶¶ 57–61 (Dr. Shenoy’s testimony in his Reply
Declaration discussing these issues). Thus, based on Petitioner’s second and
third alternative positions relying on (1) the modification of Field alone and

36 We understand Patent Owner’s arguments as responding to Petitioner’s
second and third alternatives that require either a modification of Field alone
or a modification of Field by combining with Anderson.
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(2) the combination of Field and Anderson, we also find that Petitioner
establishes that limitation 1B.5 is met.
viii. Limitation 1B.6
Limitation 1B.6 recites:
causing one or more files from the first set of files to be
transmitted to the backup server for storage by the backup
server upon determining that the cryptographic signature values
generated for each file in the first set of files allows access to
the one or more files on the backup server.
Ex. 1001, 19:1–6. Petitioner contends that the ’545 patent “does not
describe any analyzing of permissions or determining whether to allow
access during the backup process. Rather, the ’545 patent only describes an
analysis of permissions during a restoration process, which occurs after a file
has already been backed-up.” Pet. 43 (citing Ex. 1001, 6:21–41, 6:65–7:3,
11:56–63). Petitioner asserts that the ’545 patent describes comparing
descriptors (e.g., cryptographic signatures) of files, and if a matching
descriptor is not found, access is allowed and the file is backed up. Id. at 44
(citing Ex. 1001, 13:30–39). Thus, Petitioner contends, “by referencing the
backup server ‘allow[ing] access’ in the context of the backup process, this
claim term is merely referring to the backup server determining that a file
should be stored at the backup server.” Id. (citing Ex. 1002 ¶¶ 113–114)
(alteration in original).
Petitioner asserts that Field describes the same process by comparing
signatures and “determining whether to upload data when the backup server
does not identify a matching signature.” Pet. 44 (citing Ex. 1004 ¶¶ 8, 37).
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Petitioner relies upon blocks 310 and 312 of Field’s Figure 3. Id. at 44–45.
Petitioner argues:
Field states that a signature generated by the client device is
“transmitted to the back end computing device where it is
compared to signatures of files already available to the trusted
source.” Id., ¶8. In particular, Field explains that “at
block 310, the 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., ¶37. Field performs this comparison
because of its stated goal of storing only “one copy of a file” in
its backup database for multiple client computing devices. Id.,
¶40. Like the ’545 patent’s goal of storing “a single copy of a
file,” Field’s goal of storing only “one copy of a file” reduces
network bandwidth usage as well as occupied storage space in
the backup storage. Compare id., ¶40 with EX1001, Abstract,
6:65-7:3.
Pet. 45–46 (emphasis omitted). Thus, Petitioner asserts that “Field’s
system determines access (i.e., whether a file can be stored at the
back-up server) based on whether the files has been already backed-
up.” Id. at 46 (citing Ex. 1002 ¶¶ 115–117).
Patent Owner’s Response does not raise an argument specifically
directed to limitation 1B.6 of claim 1. See generally PO Resp.
For the reasons explained by Petitioner, we find that the combination
of Field and Anderson teaches limitation 1B.6.
ix. Summary of Claim 1
For the reasons explained above, on the complete record before us
Petitioner has established that the combination of Field and Anderson
teaches the subject matter of claim 1 and that one of ordinary skill in the art
would have had a reason with rational underpinning to modify Field with the
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teachings of Anderson as proposed by Petitioner with a reasonable
expectation of success.
b. Independent Claim 10
Independent claim 10 is directed to “[a] client device configured to
exchange encrypted communications with a backup server over a
communication network, the client device comprising” (a) “a first remote
storage medium” and (b) “a backup application configured to execute a
backup routine comprising” steps that mirror the steps recited in method
claim 1. Ex. 1001, 19:40–20:11; see Pet. 46 (“Independent claim 10 recites
a system claim directed to a ‘client device’ that performs the operations
described in claim 1.” (emphasis omitted)); Prelim. Resp. 5 (“Independent
claim 10 is directed to a physical device that follows the method described in
claim 1.”).
Petitioner contends that Field “describes a ‘client computing device’
or ‘target computing device’ that discloses the claimed ‘client device’” and
“explains that its client device includes ‘some type of memory’ that
discloses the first remote storage medium.” Pet. 47 (citing Ex. 1004 ¶¶ 13,
16, 25, 42) (emphasis omitted). Petitioner asserts that Field’s client device
also includes “a ‘remote backup module 202,’ which discloses the claimed
‘backup application configured to execute a backup routine[,]’” and
“exchanges encrypted communications with its back end computing device,
which discloses the claimed ‘backup server.’” Id. (citing Ex. 1004 ¶¶ 16, 32,
42, 44) (emphasis omitted).
Petitioner provides a table showing the correspondence between
claims 1 and 10 and identifying the sections of the Petition that apply to each
of claim 10’s limitations. Petitioner’s identification of the limitations of
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claim 10, corresponding limitations of claim 1, and sections of the Petition
addressing each are reproduced below:
Claim 10 Corresponding Limitations of Claim 1 and Petition Sections
[10-pre] A client device configured to
exchange encrypted communications
with a backup server over a
communication network, the client
device comprising:
Claim limitations [1-pre], [1A];
Sections VI.A.4.a-b.
[10A] a first remote storage medium; Claim limitations [1-pre], [1A];
Sections VI.A.4.a-b.
[10B.1] a backup application configured
to execute a backup routine comprising:
Claim limitation [1B.1];
Section VI.A.4.c.
[10B.2] identifying a first set of files
stored on the first remote storage
medium;
Claim limitation [1B.2];
Section VI.A.4.d.
[10B.3] generating a cryptographic
signature value for each file in the first
set of files, wherein the cryptographic
signature value is computed by using
actual data of the file as an input to a
cryptographic signature generating
algorithm which computes the
cryptographic signature value;
Claim limitation [1B.3];
Section VI.A.4.e.
[10B.4] 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;
Claim limitation [1B.4];
Section VI.A.4.f.
[10B.5] transmitting the first inventory
from the client device to the backup
server via one or more encrypted
communications; and
Claim limitation [1B.5];
Section VI.A.4.g.
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Claim 10 Corresponding Limitations of Claim 1 and Petition Sections
[10B.6] causing one or more files from
the first set of files to be transmitted to
the backup server for storage by the
backup server upon determining that the
cryptographic signature value generated
for each file in the first set of files
allows access to the one or more files on
the backup server.
Claim limitation [1B.6];
Section VI.A.4.h.
Pet. 47–48.
Patent Owner addresses claim 10 together with its discussion of
claim 1. See PO Resp. 29–51.
Claim 10, as reflected in Petitioner’s discussion, and reproduced in
part above, is similar to claim 1. We find Petitioner’s arguments and
evidence persuasive for the reasons explained by Petitioner. On the
complete record before us, for the reasons explained in the context of
claim 1 and based on Petitioner’s discussion of claim 10 and evidence
directed thereto, we find that Petitioner has established that the combination
of Field and Anderson teaches the subject matter of claim 10 and that one of
ordinary skill in the art would have had a reason with rational underpinning
to modify Field with the teachings of Anderson as proposed by Petitioner
with a reasonable expectation of success.
c. Dependent Claims 2–4, 6, 8, 12–16, 18, and 20
Petitioner contends the combination of Field and Anderson would
have rendered the subject matter of claims 2–4, 6, 8, 12–16, 18, and 20 of
the ’545 patent obvious to one of ordinary skill in the art at the time of the
invention. Pet. 48–60, 61–62, 64–67. Petitioner provides a detailed
discussion of each claim, identifies how the combination of Field and
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Anderson teaches the subject matter recited therein, and provides reasons
with rational underpinning for each modification proposed. Id.; see also
Inst. Dec. 51–52 (addressing claim 20).
Patent Owner does not raise a separate argument addressing any of
claims 2–4, 6, 8, 12–16, 18, and 20. See generally PO Resp.
We find Petitioner’s arguments and evidence persuasive for the
reasons explained by Petitioner. On the complete record before us, for the
reasons explained in the context of claims 1 and 10, and based on
Petitioner’s discussion of the additional limitations recited expressly by
dependent claims 2–4, 6, 8, 12–16, 18, and 20, we find that Petitioner has
established that the combination of Field and Anderson teaches the subject
matter of claims 2–4, 6, 8, 12–16, 18, and 20 and that one of ordinary skill in
the art would have had a reason with rational underpinning to modify Field
with the teachings of Anderson as proposed by Petitioner with a reasonable
expectation of success.
d. Dependent Claims 7 and 17
Claim 7 depends from claim 1 (Ex. 1001, 19:31), and claim 17
depends from claim 10 (id. at 20:44). The language of each claim is similar.
Claim 7 recites “[t]he method of claim 1, further comprising: compressing
the one or more files prior to causing the one or more files to be transmitted
to the backup server” and claim 17 recites “[t]he client device of claim 10,
wherein the backup application is further configured to compress the one or
more files prior to causing the one or more files to be transmitted to the
backup server.” Id. at 19:31–33 (claim 7), 20:44–47 (claim 17). Thus, each
claim requires compression prior to transmission to the backup server.
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Petitioner contends that “Field in view of Anderson” teaches these
requirements of claims 7 and 17. Pet. 60–61. Petitioner asserts that
Anderson “discloses compressing files before transmitting them from the
client device to the backup server.” Id. at 60 (citing Ex. 1002 ¶ 144); see id.
(citing Ex. 1005 ¶¶ 48, 101 (describing compression of a file using a
zip-type compression or other compression algorithm), 49 (noting that
different compression rates may apply for music, video, or still pictures)).
Petitioner contends that one of ordinary skill in the art would have
been “motivated to incorporate this compression with Field’s system, with a
reasonable expectation of success, to further reduce the size of files or data
transmitted to the backup server.” Pet. 60 (citing Ex. 1002 ¶ 145). Relying
on Dr. Shenoy’s testimony, Petitioner asserts:
Compressing the size of the data would have further reduced
the amount of network bandwidth used when transmitting files
over a network. Further, this compression would have also
reduced storage space occupied at the backup server. A [person
of ordinary skill in the art] would have understood that these
features would have been desirable in view of Field’s stated
goal of reducing network bandwidth usage and minimizing
storage space by storing only one copy of a file. Thus, a
[person of ordinary skill in the art] would have been motivated
to combine Field with Anderson.
Id. at 60–61 (citing Ex. 1002 ¶¶ 145; Ex. 1004 ¶¶ 23, 38). Accordingly,
Petitioner contends that the combination of Field and Anderson teaches the
subject matter of dependent claims 7 and 17.
Patent Owner asserts, in its Response, that “as explained . . . above, it
would in fact not have been obvious to one of ordinary skill in the art to
employ a technique like compressing files used for a full backup as in
Anderson with the backing up of individual files one at a time as discussed
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in Field.” PO Resp. 51 (citing Ex. 2008 ¶ 122). Patent Owner contends that
it “would likely be considered more inefficient and wasteful of resources to
first compress individual files before transmitting them as done in Field, and
thus if anything Field teaches away from this combination.” Id. (citing
Ex. 2008 ¶ 122).
In its Reply, Petitioner reiterates that compressing the size of the data
would reduce network bandwidth used when transmitting files over a
network and that this “reduction in transmission size is expressly in line with
Field’s goal of reducing ‘network bandwidth required to backup a
computing device.’” Pet. Reply 20 (citing Ex. 1004 ¶ 23; Ex. 1024 ¶ 63).
Petitioner notes that Dr. Weissman agreed, during his deposition, that
compression can reduce the file size and amount of data that needs to be sent
over a network. Id. (citing Ex. 1025, 145:9–146:5).
Additionally, Petitioner asserts that Field does not teach away from
incorporating compression techniques. Pet. Reply 20. Rather, Petitioner
points to Dr. Weissman’s testimony, which explains that “if you compress,
there’s a classic tradeoff that’s X computation cycles versus what, you
know, either storage or network bandwidth.” Id. at 21 (quoting Ex. 1025,
134:17, 146:12–22) (emphasis omitted). Petitioner contends that “such a
tradeoff arising from knowledge of alternative implementation techniques
would not have led a [person of ordinary skill in the art] away from
considering and employing compression techniques—especially in view of
Field’s express objective to reduce network bandwidth.” Id. (citing
Meiresonne v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017); Ex. 1004
¶ 23; Ex. 1024 ¶ 65).
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In its Sur-reply, Patent Owner contends that in the context of Field,
which teaches a system that backs up one file at a time, “compressing one
file would actually not be in line of providing an efficient backup system.”
PO Sur-reply 18. Patent Owner also offers additional testimony by
Dr. Weissman, including that one of ordinary skill in the art would not be
led to think that compression was advocated in Field, that compression itself
is time consuming and could, although not necessarily, “overpower the
benefit of reduction in data transmitted,” that compression is normally
applied to an archive or collection of files so it’s not evident that one of
ordinary skill in the art would have gravitated to compression, and that
compression of an individual file in Field’s file-by-file backup method is not
explicitly disclosed. See id. (citing Ex. 1025, 134:17–21, 146:7–11, 147:9–
15).
We find Petitioner’s arguments and evidence persuasive for the
reasons explained by Petitioner. In particular, a given course of action may
have simultaneous advantages and disadvantages. See Medichem, S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (stating that “a given
course of action often has simultaneous advantages and disadvantages, and
this does not necessarily obviate motivation to combine”); see also Winner
Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The
fact that the motivating benefit comes at the expense of another benefit . . .
should not nullify its use as a basis to modify the disclosure of one reference
with the teachings of another. Instead, the benefits, both lost and gained,
should be weighed against one another.”). Dr. Weissman’s testimony is
directly on point and, as noted by Petitioner, highlights the specific
advantages and disadvantages of applying compression to one or more
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file(s) before transmission. See, e.g., Pet. Reply 21 (citing Ex. 1025, 134:17,
146:12–22). In the context here, it is clear that one of ordinary skill in the
art would have been motivated to compress the files, even a single file,
before transmission in light of the evidence presented by Petitioner and
Patent Owner, including Dr. Weissman’s testimony noted above. Even if
compression might not have saved time in each instance, we find that one of
ordinary skill in the art would have understood the advantages of
compression and that the teachings of Field and Anderson would have taught
and suggested applying compression in the context of Field’s file-by-file
backup process.37
On the complete record before us, we find that Petitioner has
established that the combination of Field and Anderson teaches the subject
matter of claims 7 and 17 and that one of ordinary skill in the art would have
had a reason with rational underpinning to modify Field with the teachings
of Anderson as proposed by Petitioner with a reasonable expectation of
success.
e. Dependent Claims 9 and 19
Claim 9 depends from claim 1 (Ex. 1001, 19:37), and claim 19
depends from claim 10 (id. at 20:51). The language of each claim is similar.
Claim 9 recites “[t]he method of claim 1, wherein the cryptographic
signature values comprise multiple file signatures using multiple
cryptographic algorithms,” and claim 19 recites “[t]he client device of

37 Additionally, Patent Owner has not directed us to any evidence supporting
its argument that Field teaches away by criticizing, discrediting, or otherwise
discouraging the combination as proposed. Thus, we do not find that Field
teaches away.
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claim 10, wherein the cryptographic signature values comprise multiple file
signatures using multiple cryptographic algorithms.” Id. at 19:37–39
(claim 9), 20:51–53 (claim 19). Thus, each claim requires that the
cryptographic signature values comprise more than one file signature using
more than one cryptographic algorithm.
Petitioner contends that “both Field and Anderson describe multiple
cryptographic algorithms” and that Field identifies the “SHA-1” algorithm
and states that other algorithms or functions capable of generating a
signature from file data may be used as well. Pet. 62–63 (citing Ex. 1004
¶ 36) (disclosing the SHA-1 algorithm and noting that the description is not
limited to that example). Petitioner also points to Anderson, asserting that
“Anderson also describes ‘using well-known cryptographic hash
algorithms,’ such as ‘MD5’ and SHA-1.’” Id. at 63 (citing Ex. 1005 ¶ 42
(also noting that the algorithms include “content-derived or attribute-derived
signaturing algorithms”)).
Petitioner asserts the following with respect to how one of ordinary
skill in the art would have understood the teachings of Field and Anderson:
In view of Field and Anderson’s disclosures that multiple
signature generating algorithms may be used to uniquely
characterize a file, a [person of ordinary skill in the art] would
have found it obvious to use multiple different cryptographic
signatures in generating the multiple signatures to provide
flexible and adaptable client-server communications. EX1002,
¶151. For example, common considerations when selecting a
particular hash algorithm for use would have been the length of
the resulting hash signature, the level of security required, as
well as the speed of computation. Id. Anderson provides an
example where its CI may vary in length: “the CI is relatively
small in size, e.g., 24-48 bytes.” EX1005, ¶¶ 42, 46. Similarly,
when considering the MD5 and SHA-1 algorithms, both
generate different bit lengths as hash signatures; MD5 generates
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a 128-bit hash while SHA-1 generates a 160-bit hash. EX1002,
¶151. SHA-1 provides additional security over MD5 but at a
trade-off of being slower to compute and having a longer
signature length. Id. An MD5 hash would have been faster to
compute but generally less secure. Id.
Depending on the scenario and design of the client-
backup server system, a [person of ordinary skill in the art]
would have used multiple hash algorithms to provide flexibility.
Id., ¶152. For example, the client may initially generate SHA-1
signatures, but upon detecting an excessive use of network
bandwidth due to the longer signature length, the client may
change to generating MD5 signatures. Id. Having the
flexibility to apply different and multiple types of hash
algorithms would have allowed the client device to adapt to
different networking conditions while balancing the trade-offs
between security and bandwidth usage. Id.; EX1004, ¶¶23, 38;
EX1005, Title, ¶¶12, 35, 94. Similarly, a [person of ordinary
skill in the art] would have also known how to apply two or
more hash algorithms together or in combination with other
data if additional security were required. EX1002, ¶153. For
example, a first signature may be generated using a first hash
algorithm, and then a second signature may be generated by
applying the first signature (with or without additional data) to
a second hash algorithm. Id. Similarly, two signatures may be
generated using different hash algorithms and then
concatenated. Id. These configurations would have provided
additional security. Id.
Pet. 63–64. Thus, Petitioner contends the combination of Field and
Anderson teaches the subject matter of dependent claims 9 and 19.
Patent Owner contends that claims 9 and 19 “require that the
cryptographic signatures included in the first inventory be generated using
different cryptographic algorithms.” PO Resp. 52. Patent Owner asserts
that “[t]his technique allows for different types or amounts of data and is
possible in the [’]545 Patent because the inventories can contain additional
data including the descriptor generating algorithm.” Id. (citing Ex. 1001,
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Fig. 3; Ex. 2008 ¶ 124). Patent Owner argues that the subject matter of
claims 9 and 19 is not disclosed or suggested by the combination of Field
and Anderson because Field backs up files one at a time “and thus Field
teaches away from sending data with multiple signatures much less
signatures generated from multiple signature algorithms” and “[t]o the extent
Anderson may suggest alternative mechanisms to be used in full backup
scenarios . . . it would not have been obvious to combine such mechanisms
with the file-by-file backup with signatures used in Field.” Id. at 52–53
(citing Ex. 2008 ¶ 126).38
We find Petitioner’s arguments and evidence persuasive for the
reasons explained by Petitioner. We addressed, in several instances, Patent
Owner’s arguments that Field teaches away from various aspects of the
combination and this instance, as with the others, is similarly unsupported
for the same reasons. Additionally, we have also addressed whether one of
ordinary skill in the art would have been motivated to modify Field’s file-
by-file backup in light of several teachings by Anderson. Patent Owner’s
arguments here do not lead us to a different conclusion as they reiterate the
same positions we previously addressed.
On the complete record before us, we find that Petitioner has
established that the combination of Field and Anderson teaches the subject
matter of claims 9 and 19 and that one of ordinary skill in the art would have
had a reason with rational underpinning to modify Field with the teachings

38 Although not required, we note for completeness that Patent Owner does
not address claims 9 or 19 in its Sur-reply. See generally PO Sur-reply; see
also id. at 17–19 (discussing dependent claims 7 and 17).
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of Anderson as proposed by Petitioner with a reasonable expectation of
success.
Objective Considerations of Nonobviousness
Neither party presents evidence of objective considerations of
nonobviousness.
Weighing the Graham Factors
“Once all relevant facts are found, the ultimate legal determination [of
obviousness] involves the weighing of the fact findings to conclude whether
the claimed combination would have been obvious to an ordinary artisan.”
Arctic Cat, 876 F.3d at 1361. On balance, considering the complete record
before us, Petitioner has established by a preponderance of the evidence that
the combination of Field and Anderson would have rendered the subject
matter of claims 1–4, 6–10, and 12–20 of the ’545 patent obvious to one of
ordinary skill in the art at the time of the invention.
Obviousness over Field, Anderson, and Ackerman
Petitioner contends the combined teachings of Field, Anderson, and
Ackerman would have rendered the subject matter of claim 5 of the
’545 patent obvious to one of ordinary skill in the art at the time of the
invention. Pet. 67–71.
Level of Ordinary Skill in the Art
Above, we set forth our findings as to the level of ordinary skill in the
art. See supra § I.G.
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Scope and Content of the Prior Art
a. Field and Anderson
The scope and content of Field and Anderson is set forth above. See
supra §§ III.B.2.a., III.B.2.b.
b. Ackerman
Ackerman is directed to “a hierarchical data storage and retrieval
system implemented using a computed statistically unique signature for the
content of given computer data as its basis.” Ex. 1006, code (57); see id. at
1:21–23. Ackerman’s teachings “relate to the efficient storage, backup and
validation of files using hash functions” to generate cryptographic
signatures. Id. at code (57); see id. at 1:14–17, 1:25–28. Ackerman explains
that “[t]he signature is computed by any number of techniques so long as it
is able to produce a statistically unique signature, one example being the
SHA-1 algorithm.” Id. at 1:25–28.
Ackerman teaches that “[t]here are many well[-]known hash
algorithms that are used for computing checksums, message digests and
statistically unique signatures.” Ex. 1006, 8:49–51. To ensure that files are
uniquely identified, Ackerman explains that algorithms should be selected
“so long as they produce a significantly large hash value.” Id. at 8:62–64.
Ackerman provides examples of several hash functions, including “the
SHA-N algorithms, SHA-1(SHA-160), SHA-193, SHA-224, SHA-256,
SHA-384 or SHA-512,” and Ackerman explains that “the numeral
corresponds to the number of bits that are produced by the function.” Id. at
8:57–64.
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Differences Between the Prior Art and Claim 5;
Motivation to Modify
Claim 5 depends from claim 1 and recites “[t]he method of claim 1,
wherein the cryptographic signature values are generated with at least a
256-bit encryption algorithm.” Ex. 1001, 19:25–27. Petitioner contends that
Field discloses generating a cryptographic signature using a hashing
algorithm, but does not explicitly provide a criteria for selecting one
algorithm over another. Pet. 67 (citing Ex. 1002 ¶ 159). Petitioner, relying
on Dr. Shenoy’s testimony, explains in detail why one of ordinary skill in
the art would have considered using a longer key length (including a
256-bit-based algorithm) in the context of Field, including to avoid
“collisions” (instances where two files with different data generate the same
cryptographic key). Id. at 67–68 (citing Ex. 1002 ¶ 160). Petitioner asserts
that “[u]sing Ackerman, a [person of ordinary skill in the art] would have
selected a particular hash algorithm that would produce a sufficiently large
hash value to ensure statistical uniqueness” and would have had a reasonable
expectation of success in using a 256-bit algorithm at least because Field
teaches that other types of algorithms (aside from those disclosed in Field)
can be used to generate signatures. Id. at 69 (citing Ex. 1002 ¶ 163;
Ex. 1004 ¶¶ 36–37). Thus, Petitioner contends that one of ordinary skill in
the art “would have recognized that Ackerman provides details beneficial to
the implementation of Field’s signatures to provide statistical uniqueness.”
Id. at 69–70 (citing Ex. 1002 ¶ 163); see also id. at 70–71 (noting that
Ackerman discloses the “SHA-256” algorithm that teaches a 256-bit
encryption algorithm as recited by claim 5).
Patent Owner reiterates its arguments directed to claim 1, PO
Resp. 54, which we have already addressed, and additionally argues that
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“given the limited nature of the use of signatures in Field . . . there is no
reason to suspect collisions would occur and no suggestion or motivation to
use a stronger algorithm to avoid them,” id. at 55 (citing Ex. 2008 ¶ 132).
Patent Owner asserts that “in as much as Field is focused primarily on
optimizing the backup process, it teaches away from using a signature
generating algorithm which is stronger than needed.” Id. (citing Ex. 2008
¶ 132).39
Petitioner’s arguments and evidence are persuasive for the reasons
explained by Petitioner. First, Field expressly discloses that other types of
algorithms may be used. Ex. 1004 ¶ 36. Second, as with Patent Owner’s
previous arguments that Field teaches away, Patent Owner fails to identify
anything in Field that criticizes, discredits, or otherwise discourages uses a
stronger algorithm, including a 256-bit algorithm, such as that disclosed by
Ackerman. Third, Petitioner provides persuasive evidence as to why one of
ordinary skill in the art would have been motivated to modify the
combination of Field and Anderson to use Ackerman’s algorithm and
persuasive evidence that such combination would have had a reasonable
expectation of success. See Pet. 67–71; Pet. Reply 22–24.
Thus, we find that Petitioner has established that the combination of
Field, Anderson, and Ackerman teaches the subject matter of claim 5 and
that one of ordinary skill in the art would have had a reason with rational
underpinning to modify the combination of Field and Anderson with the

39 Although not required, we note for completeness that Patent Owner does
not address claim 5 in its Sur-reply. See generally PO Sur-reply; see also id.
at 17–19 (discussing dependent claims 7 and 17).
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teachings of Ackerman as proposed by Petitioner with a reasonable
expectation of success.
Objective Considerations of Nonobviousness
As noted above, neither party presents evidence of objective
considerations of nonobviousness.
Weighing the Graham Factors
On balance, considering the complete record before us, Petitioner has
established by a preponderance of the evidence that the combination of
Field, Anderson, and Ackerman would have rendered the subject matter of
claim 5 of the ’545 patent obvious to one of ordinary skill in the art at the
time of the invention.
Obviousness over Field, Anderson, and Coombs
Petitioner contends the combined teachings of Field, Anderson, and
Coombs would have rendered the subject matter of claim 11 of the
’545 patent obvious to one of ordinary skill in the art at the time of the
invention. Pet. 71–74.
Level of Ordinary Skill in the Art
Above, we set forth our findings as to the level of ordinary skill in the
art. See supra § I.G.
Scope and Content of the Prior Art
a. Field and Anderson
The scope and content of Field and Anderson is set forth above. See
supra §§ III.B.2.a., III.B.2.b.
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b. Coombs
Coombs is titled “System and Method for Data Backup” and is
directed to “[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. 1008, codes (54), (57). In relation to
primary storage device 22, Coombs explains that “[a] full backup is a copy
at a particular point in time of all the files to be backed up from primary
storage device 22” and 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. ¶ 35. Coombs teaches that “[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, such as, last-changed time . . . [etc.], that may be desired for
constructing a backup index.” Id. ¶ 45.
Differences Between the Prior Art and Claim 11;
Motivation to Modify
Claim 11 depends from claim 10 and recites “[t]he client device of
claim 10, wherein the first set of files is determined by scanning a list of
files stored in the first remote storage medium and identifying the first set of
files as being one of new and changed since a last backup operation was
performed.” Ex. 1001, 20:12–16. Petitioner contends that although Field
discloses that a user may automatically backup a device at regular intervals
and that a command to perform a backup may be generated automatically as
part of an archival process, “Field does not explicitly disclose how its system
automatically determines which files need to be backed up, but Coombs
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does.” Pet. 71 (citing Ex. 1002 ¶ 166). Petitioner asserts that one of
ordinary skill in the art “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 backed up.” Id. Petitioner
contends that “[t]his would have motivated a [person of ordinary skill in the
art] to seek out other references that describe such determinations, such as
Coombs.” Id. (citing Ex. 1002 ¶ 166).
Petitioner contends that one of ordinary skill in the art “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.” Pet. 72 (citing
Ex. 1002 ¶¶ 168–169). Petitioner further asserts that one of ordinary skill in
the art
would have had a reasonable expectation of success
implementing the techniques of Coombs because no
architectural changes would be required in Field’s process.
[Ex. 1002 ¶¶ 168–169.] Rather, these well-known techniques
could be employed at the start of Field’s backup process.[] Id.
Identifying files that changed since the last backup also aligns
with Field’s goal of “reduc[ing] network bandwidth” by only
attempting to backup files that have changed, rather than having
to transmit signatures of all files across the network for each
backup. Id. Therefore, a [person of ordinary skill in the art]
would have recognized that Coombs provides details beneficial
to the implementation of Field’s automated backup processes.
Id.
Pet. 72–73; see also id. at 73–74 (further explaining the combination of
Field, Anderson, and Coombs).
Patent Owner reiterates its arguments directed to claim 10. See PO
Resp. 57 (“Petitioner has failed to show that Field, Anderson, or Coombs,
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alone or in combination, teach or suggest a backup or restore process that
uses an inventory of electronic data that reflects the current state of the first
remote storage medium to determine whether to restore or backup the
electronic data that is part of said inventory”). We have already addressed
this argument and its deficiencies in the context of our discussion of claims 1
and 10. See supra §§ III.B.3.a.vi. (addressing Limitation 1B.4 of claim 1),
III.B.3.b. (addressing claim 10).
Additionally, Patent Owner contends that one of ordinary skill in the
art “would not be 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.” PO Resp. 57 (citing Ex. 2008 ¶ 140). Patent Owner
asserts that “[s]ince Field uses signatures only when backing up selected
files it would have been inefficient to first check which ones have changed
since a last backup.” Id. (citing Ex. 2008 ¶ 140). Patent Owner argues that
“Field only suggests doing point-in-time and version copies to store
modifications for its full volume backups, not when backing up individual
selected files using file signatures.” Id. (citing Ex. 1004 ¶ 27; Ex. 2008
¶ 140). Thus, Patent Owner asserts that “Field teaches away from being
combined with this aspect of the teachings of Anderson and Coombs.” Id.
(citing Ex. 2008 ¶ 140).40
In its Reply, Petitioner points to Field’s description of backing up
different versions of files in addition to volume-state backups. Pet.
Reply 24–25 (citing Ex. 1004 ¶¶ 32, 41). In particular, Petitioner notes that

40 Although not required, we note for completeness that Patent Owner does
not address claim 11 in its Sur-reply. See generally PO Sur-reply; see also
id. at 17–19 (discussing dependent claims 7 and 17).
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Field refers to automatically backing up different versions of files, not just
different versions of a volume state. Id. And, Petitioner reiterates that
Coombs provides a mechanism, which one of ordinary skill in the art would
have applied to Field’s process of automatic file backup, to determine which
files are new or have changed since the last backup and would have allowed
Field to avoid transmitting signatures of files that have not changed. See id.
at 25 (citing Pet. 73–74; Ex. 1008 ¶¶ 35, 45; Ex. 1024 ¶ 75).
We find Petitioner’s arguments and evidence persuasive for the
reasons explained by Petitioner. In particular, Field is not limited to
automatically backing up full-volume states. Rather, as Petitioner explains,
Field expressly discloses automatic backup of different file versions. See,
e.g., Ex. 1004 ¶ 32. In light thereof, Patent Owner’s argument that Coombs
is inapplicable and one of ordinary skill in the art would not have modified
Field and Anderson because of additional inefficiencies is not supported
sufficiently on the record.
Thus, we find that Petitioner has established that the combination of
Field, Anderson, and Coombs teaches the subject matter of claim 11 and that
one of ordinary skill in the art would have had a reason with rational
underpinning to modify the combination of Field and Anderson with the
teachings of Coombs as proposed by Petitioner with a reasonable
expectation of success.
Objective Considerations of Nonobviousness
As noted above, neither party presents evidence of objective
considerations of nonobviousness.
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Weighing the Graham Factors
On balance, considering the complete record before us, Petitioner has
established by a preponderance of the evidence that the combination of
Field, Anderson, and Coombs would have rendered the subject matter of
claim 11 of the ’545 patent obvious to one of ordinary skill in the art at the
time of the invention.
IV. SUMMARY41
For the reasons discussed above, Petitioner has demonstrated, by a
preponderance of the evidence, that claims 1–20 of the ’545 patent are
unpatentable.
Our conclusions regarding the Challenged Claims are summarized
below:
Claims
Challenged
35
U.S.C. §
Reference(s)
/Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1–4, 6–10,
12–20 103(a)
Field,
Anderson
1–4, 6–10,
12–20
5 103(a)
Field,
Anderson,
Ackerman
5

41 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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11 103(a)
Field,
Anderson,
Coombs
11
Overall
Outcome 1–20
V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–20 of U.S. Patent No. 9,038,545 B2 are
determined to be unpatentable; and
FURTHER ORDERED that, because this a Final Written Decision,
parties to this proceeding seeking judicial review of this Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:

Daniel S. Block
Byron L. Pickard
Michael Q. Lee
Timothy L. Tang
Steven M. Pappas
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
dblock-PTAB@sternekessler.com
bpickard-PTAB@sternekessler.com
mlee-PTAB@sternekessler.com
ttang-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