Unified Patents Inc.v.Olivistar LLC

Patent Trial and Appeal Board

Nov 20, 2015

12557341 (P.T.A.B. Nov. 20, 2015)

Trials@uspto.gov Paper 15
571-272-7822 Entered: November 20, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

UNIFIED PATENTS INC.,
Petitioner,

v.

OLIVISTAR, LLC,
Patent Owner.
_______________

Case IPR2015-01217
Patent 8,239,347 B2
_______________

Before JAMESON LEE, BARBARA A. PARVIS, and SCOTT C. MOORE,
Administrative Patent Judges.

MOORE, Administrative Patent Judge.

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

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I. INTRODUCTION
Petitioner filed a Petition (Paper 1; “Pet.”) to institute an inter partes
review of claims 1, 3, 4, 8–12, and 17–20 of U.S. Patent No. 8,239,347 B2
(Ex. 1001; “the ’347 Patent”). Patent Owner filed a Preliminary Response
(Paper 12; “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a),
which provides that an inter partes review may not be instituted “unless . . .
there is a reasonable likelihood that the petitioner would prevail with respect
to at least 1 of the claims challenged in the petition.”
On this record and for the reasons discussed below, we do not institute
an inter parties of any claim of the ’347 Patent. The Petition is denied.
II. BACKGROUND
A. Related Proceedings
Patent Owner has filed 21 separate lawsuits alleging infringement of
the ’347 Patent. Pet. 46–47; Paper 6, 2–4. As of the date Patent Owner filed
its Preliminary Response, 19 of these lawsuits were still pending. Paper 6,
2–4.
B. The ’347 Patent
The ’347 Patent is titled “System and Method for Customizing the
Storage and Management of Device Data in a Networked Environment.”
Ex. 1001, Title. The disclosed invention relates to customizing the storage
of data according to data attributes. Id., Abstract.
The Specification of the ’347 Patent explains that many entities
generate large amounts of computer data, including data that can be
processed and discarded, and data that needs to be maintained for a number
of possible uses (“archival” data). Ex. 1001, 1:17–25. Accordingly, these
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entities seek out storage solutions that are appropriate considering the type
and amount of data being archived. Id. However, traditional file
management systems have several disadvantages, including an “inability to
differentiate between different data types” and an inability to “provide a
manner to customize data storage based upon device data attributes” (i.e.,
attributes of the device that generated the data). Id. at 1:51–56. Thus,
according to the Specification, “there is a need for a system and method for
managing the storage and archival of device data, including multi-media
data, according to device data attributes.” Id. at 2:11–13.
The ’347 Patent discloses a system and method that are intended to
address this need. See Ex. 1001, 2:23–24. One disclosed embodiment is a
system that includes monitoring devices that generate “monitoring device
data characterized by one or more data archival attributes.” Id. at 2:50–54.
The system also includes a monitoring device processer that obtains an
“archival profile corresponding to the one or more data archival attributes
and for processing the monitoring device data according to the archival
profile.” Id. at 2:54–58. The system further includes at least one data
repository for storing the monitoring device data “according to the archival
profile.” Id. at 2:58–60.
C. Challenged Claims
Challenged claims 1 and 17 are independent. Ex. 1001, 13:11–33,
14:27–45. Each of challenged claims 3, 4, and 8–12 depends either directly
or indirectly from claim 1. Id. at 13:37–40, 13:55–16:12. Challenged
claims 18–20 depend either directly or indirectly from claim 17. Id. at
14:46–63.
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Independent claim 1 is illustrative and is reproduced below.
1. A system for processing monitoring device
data, the system comprising:
one or more monitoring devices generating
monitoring device data characterized by one
or more data archival attributes;
a monitoring device data processor for obtaining
an archival profile corresponding to the one
or more data archival attributes and for
processing the monitoring device data
according to the archival profile; and
at least one data repository for storing the
monitoring device data according to the
archival profile,
wherein the monitoring device data processor
determines whether the archival profile is
associated with one or more archival
attributes of the monitoring device data, and
wherein, if the archival profile is associated with
one or more archival attributes, the
monitoring device data processor:
processes the monitoring device data having
one or more archival attributes that match
the archived profile into a compressed
format, and
selectively stores the monitoring device data
in the compressed format on the at least
one data repository.
Ex. 1001, 13:11–33.
D. References and Materials Relied Upon
Petitioner relies on the following references and materials in support
of the asserted grounds of unpatentability:
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References and Materials Exhibit No.
U.S. 2003/00225599 (Pub. Feb. 6, 2003) (“Monroe”) 1003
US 6,708,292 (filed Aug. 18, 2000; iss. Mar. 16,
2004) (“Mangasarian”)
1004
US 6,975,617 (filed Mar. 23, 2001; iss. Dec. 13, 2005)
(“Walker”)
1005
Declaration of Zaydoon Jawadi In Support of Petition
for Inter Partes Review of U.S. Patent No. 8,239,347
(“Jawadi Decl.”)
1006
E. Asserted Grounds of Unpatentability
Challenged Claims Statutory Basis Reference(s)
1, 3, 4, 8–12, and 17–20 35 U.S.C. 102(e)
1
Monroe
1, 3, 4, 9, 10, 17, and 20 35 U.S.C. § 103 Mangasarian and
Walker
Pet. 5.
III. ANALYSIS
A. Claim Construction
1. Claim Construction Standard
Consistent with the statute and the legislative history of the AIA, we
interpret claims of an unexpired patent using the broadest reasonable
interpretation in light of the specification of the patent. 37 C.F.R.
§ 42.100(b); In re Cuozzo Speed Techs. LLC, 793 F.3d 1268, 1278 (Fed. Cir.

1
The Leahy-Smith America Invents Act (“AIA”), Pub. L. 112-29, included
revisions to 35 U.S.C. § 102 that became effective on March 16, 2013.
Because the ’347 Patent issued from an application that was filed before
March 16, 2013, we will refer to the pre-AIA version of 35 U.S.C. § 102.
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2015) (“Congress implicitly approved the broadest reasonable interpretation
standard in enacting the AIA”); see also Office Patent Trial Practice Guide,
77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). In general, claim terms are
given their ordinary and customary meaning, as would be understood by a
person of ordinary skill in the art in the context of the specification. See In
re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An
applicant may choose, however, to provide a definition of the term in the
specification with reasonable clarity, deliberateness, and precision. In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a
definition, limitations are not to be read from the specification into the
claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
2. “archival attribute” and “archival profile”
Petitioner proposes that “archival attribute” be construed as
“information included in or characteristics of the data received from the
monitoring device.” Pet. 5–6. Petitioner proposes that “archival profile” be
construed as “a specified set of data characteristics.” Id. at 6–7. Patent
Owner contends that Petitioner’s constructions are overly broad, inter alia,
because they read the word “archival” out of both claim terms. Prelim.
Resp. 3, 6. Patent Owner contends that that the claim language is
sufficiently clear, and that these terms need not be construed. See id. at 5, 7–
8.
We agree with Patent Owner’s position that Petitioner’s constructions
are overbroad. The challenged claims all relate to a system employs
“archival attributes” and “archival profiles” to determine whether to store
data in a “data repository,” or a method of “selectively archiving” data that
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employs “archival attributes” and “archival profiles.” Ex. 1001, 13:11–33,
14:28–46. In the context of computers and computer systems, the term
“archival” refers to long-term, persistent storage of computer data.
2
In
contrast, the term “buffer” ordinarily and customarily refers to memory that
temporarily holds information, for example, to account for differences in
data flow rates between computer components.
3
Similarly, random access
memory (“RAM”) is non-persistent memory that temporarily stores data
while that data is being processed.
4
Thus, the plain and ordinary meaning of

2
See Ex. 3001 (definition from Academic Press Dictionary of Science and
Technology, defining “archival storage” as “[s]torage media, such as off-line
magnetic tapes or disks, used for long-term storage of data seldom
accessed, such as transaction history or backup copies of working
programs”); Ex. 3002 (definition from Webster’s New World Computer
Dictionary, defining “archive” as “an infrequently used but comprehensive
collection of data”).
3
See Ex. 3003 (definition from Webster’s New World Computer Dictionary,
defining “buffer” as “a unit of memory given the task of holding information
temporarily, especially while waiting for slower components to catch up”);
Ex. 3004 (definition from Academic Press Dictionary of Science and
Technology, defining “buffer” as “[a]n intermediate storage area used to
compensate for differences in rates of data flow when information is being
transmitted from one computer device to another”).
4
See, e.g., Ex. 3005 (definition from Webster’s New World Computer
Dictionary, defining “random access memory” as “[t]he computer’s primary
working memory . . . . In RAM, the CPU can write and read data. Most
programs set aside a portion of RAM as a temporary workspace for data so
that one can modify (rewrite) as needed until the data is ready for printing or
storage on secondary storage media, such as a hard or floppy disk. RAM
does not retain its contents when the power to the computer is switched
off.”).
.
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“archival” does not encompass the storage of data in buffer memory or
RAM.
This interpretation of “archival” is consistent with the Specification.
In particular, the Specification indicates that “archival” data is data that
“needs to be maintained for a number of possible uses,” and does not include
data that “can be generated, processed, and discarded after its intended
purpose.” Id. at 1:20–23. The Specification also provides several examples
of “archival” storage, all of which are types of long-term, persistent storage.
See id. at 1:26–36 (indicating that archived data may be stored in “storage
devices, such as magnetic media and optical media that are directly attached
to a computing device generating the data to be archived,” “special-purpose
file management server-computing devices [that] function as a storage
destination for a number of computing devices,” and “multiple file
management servers functioning[] as a storage location for a number of
networked computing devices.”).
Independent claims 1 and 17 both require selectively storing
monitoring device data “if the archival profile is associated with one or more
archival attributes.” Ex. 1001, 13:26–33; 14:39–46. For the reasons set
forth above, based on the current record, and for purposes of this Decision,
we are persuaded that the claim term “archival attribute” does not
encompass an attribute relating to the storage of data in buffer memory or
RAM, and that the claim term “archival profile” does not encompass a
profile relating to the storage of data in buffer memory or RAM. No further
construction of these claim terms is necessary at this time. See Wellman,
Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (quoting
Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
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1999)) (“[C]laim terms need only be construed ‘to the extent necessary to
resolve the controversy.’”).
B. Asserted Grounds of Unpatentability
1. Overview
Petitioner argues that challenged claims 1, 3, 4, 8–12, and 17–20 are
unpatentable under 35 U.S.C. § 102(e) because they are anticipated by
Monroe. Pet. 7. “A claim is anticipated only if each and every element as
set forth in the claim is found, either expressly or inherently described, in a
single prior art reference.” Verdegaal Bros. v. Union Oil Co., 814 F.2d 628,
631 (Fed. Cir. 1987) (citation omitted). The elements must be arranged as
required by the claim, but this is not an ipsissimis verbis test. In re Bond,
910 F.2d 831, 832 (Fed. Cir. 1990). “[U]nless a reference discloses within
the four corners of the document not only all of the limitations claimed but
also all of the limitations arranged or combined in the same way as recited in
the claim, it cannot be said to prove prior invention of the thing claimed, and
thus, cannot anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008); see also In re Arkley,
455 F.2d 586 (CCPA 1972).
Petitioner also argues that challenged claims 1, 3, 4, 9, 10, 17, and 20
are unpatentable under 35 U.S.C. § 103 over Mangasarian and Walker. Pet.
25. A patent claim is unpatentable under 35 U.S.C. § 103 if the differences
between the claimed subject matter and the prior art are “such that the
subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art to which such subject
matter pertains.” The question of obviousness under 35 U.S.C. § 103 is
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resolved on the basis of underlying factual determinations, including: (1)
the scope and content of the prior art; (2) any differences between the
claimed subject matter and the prior art; (3) the level of skill in the art;
5
and
(4) objective evidence of nonobviousness, i.e., secondary considerations.
6

Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
2. Anticipation of Claims 1, 3, 4, 8–12, and 17–20 by Monroe
a. Overview of Monroe
Monroe relates to the collection, sending, archiving, and retrieving of
event data (e.g., video data or event data). Ex. 1003 ¶ 2. Monroe describes
a network-based situational awareness system that consists of intelligent
sensors, servers, and monitor stations interconnected by wired and wireless
network connections. Id. ¶ 25. “[R]aw sensor data such as images, video,
audio, temperature, contact closure and the like” is “collected, analyzed,
archived, and distributed.” Id.

5
For purposes of this Decision, we consider the cited references to be
representative of the level of ordinary skill in the art. See Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
6
The current record does not contain any evidence of secondary
considerations.
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Figure 7 of Monroe is reproduced below.

Figure 7 depicts cameras 201(A) through 201(D), which are disposed around
a facility, and detect scenes of interest. Ex. 1003, ¶ 211. Each camera
contains a motion detector 202 that detects motion in the scenes of interest,
and performs image processing to yield further information concerning, for
example, the location of motion or the amount of direction of the motion.
Id. The cameras may be programmed to transmit to the network only those
video scenes or still images that contain motion of interest. Id. ¶ 213. Video
scenes or still images are optionally compressed in compressors 203. Id.
¶ 212. The video scenes or still images are then conveyed via network 205
to monitor station 206, or to archive server 208 for image storage on disk
209 or tape 210. Id.
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b. Analysis
Independent Claim 1
The second element of claim 1 recites a “monitoring device data
processor.” Ex. 1001, 13:16. The fourth element of claim 1 recites that “the
monitoring device data processor determines whether the archival profile is
associated with one or more archival attributes of the monitoring device
data.” Id. at 13:22–24. The final element of claim 1 recites that “the
monitoring device data processor . . . selectively stores the monitoring
device data in the compressed format on the at least one data repository.”
Ex. 1001, 13:11–33. In order to demonstrate anticipation, Petitioner must
demonstrate that Monroe discloses “not only all of the limitations claimed
but also all of the limitations arranged or combined in the same way as
recited in the claim.” Net MoneyIN, 545 F.3d at 1371. Thus, Petitioner
cannot demonstrate anticipation by picking and choosing different
“monitoring device data processors” when discussing different elements of
claim 1. Instead, Petitioner must identify a “monitoring device data
processor” that performs all of the steps recited above. Petitioner fails to do
so.
The Petition initially alleges that the claimed “monitoring device data
processor” is disclosed by Monroe’s descriptions of “processor[s] of servers,
PCs, intelligent cameras, or intelligent sensors.” Pet. 8.
7
Referring to Figure

7
Petitioner supports its argument that Monroe discloses a “monitoring
device processor” with citations to paragraphs 62 and 68 of the Jawadi
Declaration and the accompanying claim chart. See Pet. 11 (citing Ex. 1006,
¶¶ 62, 68; Ex. 1006, internal exhibit A at claim 1[b]). The claim chart
attached to the Jawadi Declaration is 114 pages in length. See Ex. 1006, 39–

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7 (reproduced above) for purposes of illustration, Petitioner is asserting that
the claimed “monitoring device processor” may be situated at cameras 201
(e.g., a processor located within motion detector 202), PC 206, or archival
server 208. See id., Fig. 7.
In its discussion of the second and fourth elements of claim 1,
Petitioner asserts that the “monitoring device data processor” of claim 1
corresponds to processors within the “intelligent cameras” and “intelligent
sensors” of Monroe. See Pet. 11, 13. Petitioner also emphasizes the
following:
while continuous data is captured by the camera, “only when a
scene changes from the previous captured image is it required
that the image be transmitted to a remote monitoring station,
and more importantly, stored on the archive database. . . . [T]he
level of change is monitored at the camera and only specific
criteria trigger a transmission.” * * * “[T]he camera or encoder
appliance only transmits images or video that has a pre-
indication of a change of a previous scene, greatly reducing the
amount of data to be transmitted over the chosen conduit.”

153. Although our Rules do not prohibit a witness from presenting
testimony in the form of a claim chart, the “practice of citing [a] Declaration
to support conclusory statements that are not otherwise supported in the
Petition . . . amounts to incorporation by reference.” Cisco Systems, Inc. v.
C-Cation Techs., LLC, Case IPR2014-00454, Paper 12, at 9 (PTAB Aug. 29,
2014) (informative). Such incorporation by reference is improper. 37
C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from
one document into another document.”); see also DeSilva v. DiLeonardi,
181 F.3d 865, 866–67 (7th Cir. 1999) (Incorporation by reference “amounts
to a self-help increase in the length of the [] brief . . . . A brief must make all
arguments accessible to the judges, rather than ask them to play archeologist
with the record.”). Accordingly, we consider Petitioner’s claim chart only to
the extent it provides evidentiary support for arguments that are fully set
forth in the Petition.
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Pet. 11–12 (citing Ex. 1003, ¶¶ 32, 36). Thus, Petitioner unequivocally
asserts that the “monitoring device data processor” of the fourth step of
claim 1 is located at an “intelligent camera” or “intelligent sensor.”
In contrast, when discussing the claim limitation requiring that the
“monitoring device data processor . . . selectively stor[e] the monitoring
device data on the [at least one] data repository,” Petitioner cites
descriptions in Monroe of compressed video being “conveyed via network
205 . . . to an archive server 208 for image storage on disk 209 or tape 210.”
Pet. 2, 14–15 (citation omitted). Although Petitioner never explicitly states
which “monitoring processor” allegedly performs this step, the cited portion
of Monroe make clear that the storage of data to disk 209 or tape 210 is
performed by archive server 208. Petitioner does not allege that a processor
situated at an “intelligent camera” or “intelligent sensor” selectively stores
monitoring device data on disk 209 or tape 210. See id.
Because the Petition fails to demonstrate that Monroe discloses the
same “monitoring device data processor” performing all of the steps
required by claim 1, Petitioner has not shown a reasonable likelihood that it
would prevail on its anticipation challenge to claim 1.
Independent Claim 17
Independent claim 17 recites “[a] computer-readable medium having
computer-executable instructions . . . the instructions performing a method”
consisting of several steps. Ex. 1001, 14:27–45. Petitioner does not make
any separate substantive arguments with respect to the steps of claim 17, but
instead incorporates by reference its arguments with respect to claim 1. See
Pet. 22–23. Petitioner concedes that the preamble’s recitation of “a
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computer-readable medium” is limiting, and asserts that Monroe’s teaching
that “the disclosed methodology will be performed by processing devices
executing stored instructions” discloses this limitation. Pet. 23 (citation
omitted).
As discussed above, however, Petitioner has failed to identify a
disclosure in Monroe of the same “monitoring device data processor”
performing the acts required by claim 1. Thus, Petitioner’s argument that
the methodology of Monroe is performed “by processing devices executing
stored instructions” does not establish that Monroe discloses “a computer-
readable medium having computer-executable instructions” that perform all
steps of claim 17, as recited in the preamble.
Though Petitioner never explains its contentions with specificity, it
appears that Petitioner is asserting that the first three steps of claim 17 are
performed by executable instructions residing on a computer-readable
storage medium located within the intelligent cameras and/or intelligent
sensors of Monroe. In contrast, Petitioner appears to assert that the step of
“selectively storing the incoming monitoring device data in the compressed
format on a storage medium” is performed by executable instructions
residing on archive server 208. Ex. 1001, 14:45–46.
Because the Petition fails either to demonstrate that the preamble of
claim 17 is not limiting, or to persuasively show that Monroe discloses the
same “monitoring device data processor having computer-executable
instructions” performing all steps of the claimed method, Petitioner has not
shown a reasonable likelihood that it would prevail on its anticipation
challenge to claim 17.
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Dependent Claims 3, 4, 8–12, and 18–20
Each of claims 3, 4, 8–12, and 18–20, depends from claim 1 or claim
17, and thus incorporates all limitations of claim 1 or claim 17. Petitioner’s
challenges to claims 3, 4, 8–12, and 18–20 suffer from the same deficiencies
discussed above with respect to claims 1 and 17. Thus, Petitioner has not
shown a reasonable likelihood that it would prevail on its anticipation
challenge to claims 3, 4, 8–12, and 18–20.
3. Obviousness of Claims 1, 3, 4, 9, 10, 17, and 20 over Mangasarian
and Walker
a. Overview of Mangasarian
Mangasarian discloses a system and method for gathering data
packets on a network, capturing at least some of the packets in a data buffer,
classifying the captured data, and analyzing the stored data. Ex. 1004, 2:28–
37. Figure 1 of Mangasarian is reproduced below.
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Figure 1 shows a distributed protocol analysis system according that
includes a variety of interconnecting components, including Internet 101,
public switched telephone network (“PSTN”) 102, wide area network
(“WAN”) 103, and local area networks (“LANs”) 104 and 105. Id. at 3:28–
44. LANs 104 and 105 include network appliances 108 (e.g., computers,
printers, file servers, or mass storage) and remote probes 107. Id. at 3:51–
54, 4:37–38. Remote probes 107 are configured to monitor network traffic
and capture all or selected portions of the monitored traffic. Id. at 4:45–49.
Each remote probe 107 includes network interfaces 201 and 202 (not
shown). Id. at 5:6–9. Protocol analyzers 111—which can be part, and/or
separate from, LANs 104 and 105—program remote probes 107, and
retrieve all or selected portions of the traffic captured by remote probes 107.
Id. at 4:50–65.
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b. Overview of Walker
Walker describes a network monitoring system that comprises a
network router with built-in monitoring data gathering. Ex. 1005, 3:25–27.
The network router includes channels through which data pass in packets.
Id. at 3:27–28. The network router also includes channel cards that process
the data that passes through the channels within the router. See id. at 5:20–
23. The network router additionally includes a header copier that generates
copies of the data headers of data packets, and a packet generator that forms
monitoring data packets from the copied headers. Id. at 3:28–35. The
packet generator “may also add a unique identification number to the
monitoring data packet to identify the channel of the router . . . from which
the header copies included in the monitoring data packet were read.” Id. at
7:35–38.
c. Analysis
Independent Claim 1
Petitioner argues that the disclosure of Mangasarian can be read in
two different ways, and refers to these alternative interpretations of
Mangasarian as the “First Perspective” and “Second Perspective.” Pet. 27–
28 (citation omitted).
In the First Perspective, Petitioner alleges that network interface card
202 of Mangasarian is the claimed “monitoring device,” and that the
processor of remote probe 107 operating in conjunction with protocol
analyzer/host 111 is the claimed “monitoring device data processor.” Pet.
27. Petitioner also alleges that the network data packets of Mangasarian
correspond to the “monitoring device data” of the claims (see id. at 27), that
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the class code information for data packets corresponds to the “archival
attributes” of the claims (id. at 29), and that the filter and classification
routines of Mangasarian correspond to the “archival profiles” of the claims
(id. at 30). Petitioner alleges that remote probe 107 (i.e., the monitoring
device data processor) uses the class code information (i.e., archival
attributes) and the filter and classification routines (i.e., the archival profile)
to allow data to pass into “packet buffer 208.” Id. at 32.
As discussed above, however, we construe “archival attributes” and
“archival profiles” to not include attributes and profiles that relate to the
storage of data in buffer memory. The Petition also does not provide any
persuasive evidence or argument that one of ordinary skill would consider
storage of information in packet buffer 208 of Mangasarian to be “archival”
storage. Thus, viewing Mangasarian through the lens of Petitioner’s First
Perspective, we are not persuaded that the reference teaches an “archival
attribute” or “archival profile.”
In the Second Perspective, Petitioner alleges that remote probe 107 is
a “monitoring device,” and that the processor of protocol analyzer/host 111
connected to the host network interface is a “monitoring device data
processor.” Id. at 27. Petitioner also alleges that the network data packets of
Mangasarian correspond to the “monitoring device data” of the claims (see
id. at 33), that the class code information for data packets corresponds to the
“archival attributes” of the claims (id. at 34), and that the filter,
classification, and upload routines of Mangasarian correspond to the
“archival profiles” of the claims (id.). Petitioner alleges that host 111 (i.e.,
the monitoring device data processor) uses the class code information (i.e.,
archival attributes) and upload routines (i.e., the archival profile) to “enable
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intelligent selection of portions of packet buffer to be downloaded” to host
111. 35 (citing Ex. 1004, 6:3–5; Jawadi Decl. ¶¶ 78–79, 95, and Ex. B cl.
1(b))). Petitioner also asserts that the processor of host 111 “includes
sufficient memory and mass storage to store and manipulate the portions of
packet buffer 208 that are downloaded for analysis.” Pet. 35 (citing Ex.
1004, 6:15–26, 4:61–65; Jawadi Decl. ¶¶ 75, 78, 81, 95, and Ex. B cl. 1(b) &
1(e)).
But Mangasarian makes clear that the filter, classification, and upload
routines are software that executes on remote probe 108. See Ex. 1004, 5:5,
5:16–33, 5:66–6:13, Fig. 2. Petitioner has not pointed to any description in
Mangasarian of filter, classification, and upload routines that control how or
where host 111 stores data. See Pet. 40. Petitioner merely alleges that the
“upload routines” of Mangasarian cause network data packets to be
uploaded to host 111. The uploading of data to host 111 may cause data to
be stored in the “working memory (e.g., random access memory or ‘RAM’)”
of the host. See Ex. 1004 at 2:17–19, 6:23–31. Petitioner, however, does
not allege that this uploading would cause data to be stored in the separate
“mass storage” of host 111. Thus, viewing Mangasarian through the lens of
Petitioner’s Second Perspective, we are not persuaded that the reference
teaches an “archival attribute” or “archival profile.”
For the foregoing reasons, Petitioner has not shown a reasonable
likelihood that it would prevail on its obviousness challenge to claim 1.
Independent Claim 17
Claim 17 requires “archival attributes” and “archival profiles” that are
used to “determine whether the monitoring device data is stored in long-term
IPR2015-01217
Patent 8,239,347 B2

21

computer storage.” Ex. 1001, 14:27–45. Petitioner does not set forth
separate substantive arguments regarding these limitations of claim 17, but
instead asserts that “[t]he disclosure in Mangasarian and Walker for the
respective elements of claim 1 are the same for corresponding elements of
claim 17.” See Pet. 38 (citation omitted). In particular, Petitioner’s
arguments regarding the “archival attributes” and “archival profile”
limitations of claim 17 are identical to those set forth by Petitioner with
respect to claim 1. See Pet. 38–39.
Petitioner’s obviousness arguments with respect to claim 17 are
deficient for the same reasons discussed above with respect to claim 1. In
particular, we are not persuaded that Mangasarian, when viewed through the
lens of either Petitioner’s First Perspective or Petitioner’s Second
Perspective, teaches the “archival attributes” or “archival profile” limitations
of claim 17. Thus, Petitioner has not shown a reasonable likelihood that it
would prevail on its obviousness challenge to claim 17.
Dependent Claims 3, 4, 9, 10, and 20
Each of claims 3, 4, 9, 10, and 20 depends from claim 1 or claim 17,
and thus incorporates all limitations of claim 1 or claim 17. Petitioner’s
challenges to claims 3, 4, 9, 10, and 20 suffer from the same deficiencies
discussed above with respect to claims 1 and 17. Thus, Petitioner has not
shown a reasonable likelihood that it would prevail on its obviousness
challenge to claims 3, 4, 9, 10, and 20.
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Patent 8,239,347 B2

22

IV. ORDER
Accordingly, it is
ORDERED that the Petition is denied, and no inter partes review is
instituted on any claim of the ’347 Patent.

For PETITIONER:
Joseph Melnik
jmelnik@jonesday.com

An Doan
apdoan@jonesday.com

Jonathan Stroud
jonathan@unifiedpatents.com

For PATENT OWNER:
Gregory Perrone
perrone@bhp-ip.com

Gary Sorden
sorden@bhp-ip.com