Trials@uspto.

gov Paper 9
571-272-7822 Entered: March 28, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

UNIFIED PATENTS INC.,

Petitioner,

v.

INTELLECTUAL VENTURES I LLC,

Patent Owner.
____________

Case IPR2016-01643
Patent 6,775,745 B1
____________

Before BARBARA A. BENOIT, GEORGIANNA W. BRADEN, and

STACY B. MARGOLIES, Administrative Patent Judges.

MARGOLIES, Administrative Patent Judge.

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

I. INTRODUCTION
Unified Patents Inc. (Petitioner) filed a Petition for inter partes
review of claims 14, 69, and 1117 of U.S. Patent No. 6,775,745 B1
(Ex. 1001, the 745 patent). Paper 2 (Pet.). Intellectual Ventures I LLC
(Patent Owner) filed a Preliminary Response. Paper 7 (Prelim. Resp.).
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Institution of an inter partes review is authorized by statute when the

information presented in the petition . . . and any response . . . shows that
there is a reasonable likelihood that the petitioner would prevail with respect
to at least 1 of the claims challenged in the petition. 35 U.S.C. 314(a);
see 37 C.F.R. 42.108. Upon consideration of the Petition and the
Preliminary Response, we conclude that the information presented shows
that there is a reasonable likelihood that Petitioner would prevail in
establishing the unpatentability of claims 1, 2, 4, 12, and 14 of the
745 patent.

A. Related Matters
The parties identify the following district court cases in which the
745 patent has been asserted: Intellectual Ventures I, LLC v. NetApp, Inc.,
No. 1:16-cv-10868-IT (D. Mass); and Intellectual Ventures I, LLC v. Lenovo
Grp. Ltd., No. 1:16-cv-10860-IT (D. Mass). Pet. 2; Paper 5, 1.

B. The 745 Patent

The 745 patent is directed to a hybrid data caching mechanism. Ex.
1001, 1:610. The 745 patent explains as background that disk input/output
(I/O) can take significant amounts of time while searching for and loading
programs and data. Id. at 1:1720. According to the patent, accessing a file
requires first accessing the directory, which keeps track of file locations, and
then accessing the file itself. Id. at 1:2831. The 745 patent adds that
[m]ultiple seeks are typically required to locate a file in the directory,
especially if the file is not in the first part of the root directory. Id. at 1:31
33. Also, according to the patent, when more than one program is
requesting data, the file system driver can end up reading a small amount of
data for a first program, then seeking to a different area on the disk to read

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another small amount for a second program, then seeking back to the
original area to read the next small amount of data for the first program, and
so forth. Id. at 1:4248. The patent explains that to circumvent these
problems, file system drivers do a certain amount of caching. Id. at 2:13.
According to the 745 patent, caching programs strictly use the MRU-LRU
(most recently used-least recently used) mechanism as their sole means of
deciding what data to keep and what data to discard. Id. at 2:1417.
According to the patent, in using the MRU-LRU approach, an important file
that has not been used recently will be discarded when the cache reaches a
target capacity and is forced to free up additional capacity. Id. at 2:1720.
The 745 patent states that [s]trictly adhering to the MRU-LRU mechanism
fails to ensure that files which have been used often, but may not have been
used recently, are maintained in the cache. Id. at 2:2023.
The 745 patent discloses a caching mechanism that minimizes seeks
and reads to a hard drive and which keeps data in the cache based upon
currency of use and the number of times the data is used. Id. at 2:3135.
The patent states that system performance is enhanced through the hybrid
caching mechanism where a file that been used often but not recently used is
maintained in the cache. Id. at 3:4850.
Specifically, the 745 patent discloses identifying a least frequently
used file which has not been recently used and discarding that file when the
cache needs additional capacity to store files. Id. at 4:3944. Figure 2A of
the 745 patent is shown below:

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Figure 2A above depicts a structure of a cache according to an

embodiment of the invention. Id. at 5:5355. Cache 120 includes files F1
through F7. Id. at 5:5556. File F7 132 is the least recently used (LRU)
file. Id. at 5:5657. In other words, file F7 132 has gone the longest time as
compared to the other files in the cache without being used by the operating
system. Id. at 5:5760. File F2 142 is the most recently used (MRU) file.
Id. at 5:63. According to the 745 patent, a frequency factor is assigned to
each file in the cache. Id. at 5:6566. For example, as illustrated above, file
F7 has a frequency factor of seven, file F6 has a frequency factor of four, file
F1 has a frequency factor of twenty-nine, and so on. Id. at 6:48. In one
embodiment, the frequency factor is increased with each use of the file; in
another embodiment, the frequency factor is decreased with the lack of use
of the corresponding file. Id. at 5:666:4.

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The 745 patent discloses that once the target capacity of the cache is
reached, the frequency factors are scanned, beginning (in one embodiment)
with the frequency factor for the LRU file and ending with the MRU file.
Id. at 6:813. The scanning of the frequency factors determines which
file . . . is the least frequently used (LFU) file which has been least recently
used. Id. at 6:1821. The 745 patent discloses an embodiment in which
the frequency factor for the MRU file is not considered when determining
the LFU file since the MRU file has been so recently placed in the cache and
has not had an opportunity to be reused. Id. at 6:3943. In the example
illustrated in Figure 2A above, the scan will find file F6 134 as the LRU file
with the lowest frequency factori.e., the LFU file which has been least
recently used. Id. at 6:4649. A new file to be placed in the cache, such as
file F9 158, will replace file F6 134. Id. at 6:5255.
The 745 patent describes implementing the improved caching
mechanism in conjunction with reading extending segments of data. Id. at
4:3236. The 745 patent states that large reads (greater than 64 Kbyte)
eliminate the overhead, i.e., seek times, rotational latencies, transfer times,
etc., associated with performing two, four or more reads at 32 Kbytes or less
as performed in the prior art. Id. at 5:3842. For example, the 745 patent
describes that when the first block of the file is read[,] an additional 64,
128, or 256 Kbytes of data are read with it. Id. at 11:2226. The 745
patent states that the reads of the extended segments allows for the
minimization of seeks and reads from the storage medium, since the files are
transferred to cache upon the initial read. Id. at 11:4548.

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C. Illustrative Claims
Among the challenged claims (claims 14, 69, and 1117), claims 1,
4, 8, 12, and 15 are independent. Claims 4 and 8 are illustrative of the
subject matter of the challenged claims and read as follows:
4. A caching method for enhancing system performance
of a computer, comprising:
reading an extended segment of data in response to a
request from an operating system;
storing copies of files associated with the extended
segment in a cache;
assigning frequency factors to each of the files stored in
the cache, the frequency factors indicating how often each of the
corresponding files are requested by the operating system;
scanning the frequency factors, the scanning being
performed in response to a target capacity of the cache being
attained;
identifying a least frequently and least recently used file;
and
eliminating the least frequently and least recently used file
to liberate capacity of the cache.
8. A method for caching files in a cache of a random
access memory (RAM) of a computer, comprising:
requesting files, the files being stored on a storage
medium;
reading the files;
copying the files to the cache;
assigning a frequency factor to each of the copied files, the
frequency factor reflecting how often each of the copied files is
accessed;
in response to reaching a target capacity in the cache, the
method further includes,

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scanning the frequency factor for each of the files, the

scanning being configured to identify a least frequently used file
that has been least recently used without considering a frequency
factor corresponding to a most recently used file; and
discarding the least frequently used file to free up capacity
in the cache.

Id. at 12:5413:4, 13:1432.

D. Asserted Grounds of Unpatentability

Petitioner contends that claims 14, 69, and 1117 of the 745 patent
are unpatentable based on the following specific grounds (Pet. 34, 1970):

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Reference(s) Basis Challenged Claim(s)

Karedla1 35 U.S.C. 102(b)2 1, 3, 4, 69, and 1117
1, 4, 6, 8, 9, 11, 12, 15,
Burton 3 and Karedla 35 U.S.C. 103(a)
17 4
Burton 35 U.S.C. 102(e) 8 and 9
Karedla, Robinson
885,5 and the Robinson 35 U.S.C. 103(a) 3, 6, 7, 13, 15, and 16
article 6,7
Karedla and Otterness 8 35 U.S.C. 103(a) 2
Burton, Karedla, and
35 U.S.C. 103(a) 2
Otterness

In its analysis, Petitioner relies on the declaration testimony of Dr. Paul

Franzon (Ex. 1002).

1
Ramakrishna Karedla et al., Caching Strategies to Improve Disk System
Performance, Computer, Vol. 27, No. 3, 3846 (March 1994) (Ex. 1004,
Karedla).
2
The Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29, 125
Stat. 284, 28788 (2011), revised 35 U.S.C. 102 and 103, effective March
16, 2013. Because the challenged patent was filed before March 16, 2013,
we refer to the pre-AIA versions of 102 and 103 in this decision.
3
U.S. Patent No. 6,738,865, issued May 18, 2004 (Ex. 1006, Burton).
4
Even though Petitioner identifies claims 1, 4, 69, and 1117 for this
ground in its summary chart, Petitioner does not address claims 7, 13, 14,
and 16 in its analysis of this ground. See Pet. 3, 3956.
5
U.S. Patent No. 5,043,885, issued Aug. 27, 1991 (Ex. 1007, Robinson
885).
6
John T. Robinson & Murthy V. Devarakonda, Data Cache Management
Using Frequency-Based Replacement, Performance Evaluation Rev., Vol.
18, No. 1, 134142 (May 1990) (Ex. 1005, Robinson article).
7
In its summary chart, Petitioner does not identify specifically the Robinson
article as part of this ground. See Pet. 3. In its analysis, however, Petitioner
relies on teachings from the Robinson article. See, e.g., Pet. 57 (relying on
the Robinson FBR algorithm (i.e., Robinson 885 and the Robinson
Article).
8
U.S. Patent No. 6,460,122, issued Oct. 1, 2002 (Ex. 1008, Otterness).
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II. DISCUSSION

A. Claim Construction
In an inter partes review, we construe claim terms in an unexpired
patent according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. 42.100(b);
Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 214446 (2016)
(upholding the use of the broadest reasonable interpretation standard).
Consistent with the broadest reasonable construction, claim terms are
presumed to have their ordinary and customary meaning as understood by a
person of ordinary skill in the art in the context of the entire patent
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). In addition, the Board may not construe claims during [an inter
partes review] so broadly that its constructions are unreasonable under
general claim construction principles. Microsoft Corp. v. Proxyconn, Inc.,
789 F.3d 1292, 1298 (Fed. Cir. 2015) (emphasis omitted). An inventor may
provide a meaning for a term that is different from its ordinary meaning by
defining the term in the specification with reasonable clarity, deliberateness,
and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
Petitioner proposes constructions for the following terms/phrases:
reading extending segment(s) of data; files; frequency factor(s); and
self-tuning. Pet. 1519. Patent Owner asserts that only frequency
factor needs to be construed at this preliminary stage. Prelim. Resp. 59.
For purposes of this decision, we determine that only frequency factor
requires express construction.
The term frequency factor (or frequency factors) is recited in each
challenged claim. Petitioner contends that frequency factor should be

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construed to mean an indicator for distinguishing data based in part on its

frequency of use. Pet. 18 (emphasis added). Petitioner acknowledges that
the 745 patent discloses that the frequency factor reflects how often the file
is accessed. Id. at 17. Petitioner, however, argues that, according to the
745 patent, the frequency factors could be weighted based on other
considerations, for example, by weighting certain files with frequency
factors on their initial read into the cache to guarantee they remain above
others. Id. at 1718 (quoting Ex. 1001, 7:810). Petitioner also notes that
the specification discloses that the frequency factors for reading directory
and file allocation table (FAT) data would be weighed heavier[;] i.e., the
frequency factor would be incremented by a factor of more than one for each
time the directory or FAT data is accessed. Id. at 18 (quoting Ex. 1001,
9:45).
Patent Owner contends that the broadest reasonable construction of
frequency factor is an indication of how often a file is requested or access
by the operating system. Prelim. Resp. 5. Patent Owner argues that every
independent claim except claim 15 includes express claim language
essentially defining frequency factor. Id. For example, Patent Owner
asserts, claim 1 expressly recites that a frequency factor reflect[s] how
frequent each of the files is accessed and claims 4 and 12 state that the
frequency factors indicat[e] how often each of the corresponding files are
requested by the operating system. Id. at 56. Patent Owner asserts that
[t]he claim term frequency factor should be defined consistently with the
express claim language. Id. at 6. Patent Owner also argues that
Petitioners proposed construction is unreasonably broad, and would render
frequency factor almost meaningless, by causing it to cover an indicator

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that is only tangentially and minimally related to the frequency of use of a

file. Id. at 7. Patent Owner acknowledges that the 745 patent specification
discloses embodiments in which some reads increase an accessed files
frequency factor more than other reads, but argues that nothing in the
specification suggests that the weights are so significant that they
overwhelm the frequency of use essentially to the point of irrelevance. Id.
at 8.
We determine on the current record and for institution purposes that
the broadest reasonable interpretation of frequency factor is an indicator
of frequency of use or access. As noted by Patent Owner, some of the 745
patent claims expressly state what the frequency factor reflects or indicates,
and others do not. Independent claim 1 requires associating a frequency
factor to each of the files in the cache, the frequency factor of each of the
files reflecting how frequent each of the files is accessed. Independent
claim 8 similarly requires assigning a frequency factor to each of the copied
files, the frequency factor reflecting how often each of the copied files is
accessed. Independent claims 4 and 12 each recite the frequency factors
indicating how often each of the corresponding files are requested by the
operating system. Claim 15 is the only independent claim that does not
further specify what the claimed frequency factors reflect or indicate.
The specification of the 745 patent repeatedly uses the term
frequency factor to refer to how often a corresponding file is used or
accessed. For example, like the claim language discussed above, the
specification discloses in the Summary of the Invention section that the
frequency factors indicate how often each of the corresponding files is
accessed by the operating system (Ex. 1001, 2:4548), that the frequency

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factor reflects how often each of the copied files is accessed (id. at 2:59
61), and that the [t]he frequency factor . . . reflects how frequent each of the
files is accessed (id. at 3:3940). The 745 patent further discloses that, in
one embodiment, [t]he frequency factor is increased with each use of the
file so that the frequency factor indicates how often a file is accessed, and
in another embodiment, the frequency factor is decreased with the lack of
use of the corresponding file. Id. at 5:656:4. The 745 patent also
describes a file with the lowest frequency factor as the file that is least
frequently used. See, e.g., id. at 6:4649. The 745 patent also uses the
terms frequency factor, frequency of use, frequency of use factor,
frequency of use count, and frequency count interchangeably. See id. at
10:125. Moreover, in describing the flow chart of Figure 4, the 745 patent
equates frequencies shown in the figure with frequency factors. Id. at
10:4446, 10:5455.
The 745 patent, however, also describes scenarios for weighting or
decrementing frequency factors based on criteria other than frequency of use
or access. See id. at 6:567:15, 8:659:3. For example, the 745 patent
describes an embodiment in which a user finishes watching a movie and
begins word processing operations, but the cache has files from the movie,
which were frequently used. Id. at 6:5760. The 745 patent describes
decrementing the frequency factor associated with the movie files to bring
down the frequency factor so that the files are removed from the cache. Id.
at 6:6366. The patent also describes weighting certain files with
frequency factors on their initial read into the cache to guarantee they remain
above others. Id. at 7:311; see also id. at 8:659:3 (disclosing that the
frequency factor would be incremented by a factor of more than one for

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each time the directory or FAT data is accessed). Thus, the specification
describes frequency factors that are based in part on frequency of use and
based in part on other criteria, such as nature of the data accessed.
Dependent claim 3 also recites a limitation directed to decrementing the
frequency factor based on criteria other than frequency of access. Id. at
12:5154 (claim 3 reciting providing a driver for decrementing a frequency
factor after a time period of non-use of a corresponding file).
Accordingly, based on the current record, the specification
considered in its entiretydoes not limit frequency factor to a one-to-one
correspondence with frequency of use or access, even though many
examples of a frequency factor are that it has a value that is the same as the
number of times a corresponding file is used or accessed. We, therefore,
determine on the current record and at this preliminary stage that Petitioners
proposed constructionthat the frequency factor is an indicator for
distinguishing data based in part on its frequency of useis too narrow in
that may exclude a frequency factor that is based entirely on frequency of
use. We also determine that Patent Owners proposed constructionan
indication of how often a file is requested or access by the operating
systemmay be read as too narrow in that it potentially may exclude a
frequency factor that is based only in part on frequency of use. Patent
Owners position that the frequency factor cannot be only tangentially
related to frequency of use is too vague and amorphous on the current
record. The general term frequency factor does not dictate a particular
formula for how much frequency must be weighed. The 745 patent
discloses generally that the frequency factor may be decreased or increased
because of, for example, expected non-use or because the data is directory

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data. Id. at 6:637:3, 8:659.3. The specification but does not limit how
much the frequency factor is affected by such criteria. Even so, given the
use of the word frequency in the claim term, the frequency factor must be
based to some extent on frequency of access or use.
For the above reasons, and for purposes of institution and on the
current record, we determine that the broadest reasonable interpretation of
frequency factor is an indicator based on frequency of use or access.

B. Asserted Anticipation by Karedla

Petitioner contends that claims 1, 3, 4, 69, and 1117 are
unpatentable under 35 U.S.C. 102(b) as anticipated by Karedla. Pet. 3, 4,
1939. Relying in part on the testimony of Dr. Franzon, Petitioner
purportedly explains how Karedla discloses each claim limitation. Id. at 19
39 (citing Ex. 1002).

1. Summary of Karedla
Karedla is an article from the March 1994 issue of Computer titled
Caching Strategies to Improve Disk System Performance. Ex. 1004, 1, 6.9
The cover page and table of contents of Karedla are dated March 1994 and
the second page of Karedla has a stamp of the Copyright Office of the
Library of Congress dated March 22, 1994. Id. at 1, 2, 4.
Karedla characterizes its disclosure as follows:
In this article, we examine the use of caching as a means to
increase system response time and improve the data throughput
of the disk subsystem. After explaining some basic caching
issues . . . , we examine some popular caching strategies and

9
Even though Petitioner cites to the original page numbers of Karedla rather
than the exhibit page numbers added by Petitioner, for ease of reference to
the entire exhibit, we cite to the exhibit page numbers.
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cache replacement algorithms, as well as the advantages and

disadvantages of caching at different levels of the computer
system hierarchy. Finally, we investigate the performance of
three cache replacement algorithms: random replacement (RR),
least recently used (LRU), and a frequency-based variation of
LRU known as segmented LRU (SLRU).
Id. at 6.
Karedla discloses that one of the main parameters in I/O cache design
is the line replacement algorithm. Id. at 7. Karedla explains that vendors
attempt to design efficient replacement algorithms that can offer higher
cache performance for relatively small cache sizes. Id. Karedla describes
some of the more popular cache replacement algorithms, including least
recently used (LRU), least frequently used (LFU), and variations on LRU.
Id. at 8. Karedla describes the LRU algorithm as one that evicts the cache
line used least in the recent past on the assumption that it wont be used in
the near future. Id. Karedla also states that LRU uses only the time since
last access and does not take into account the access frequency of lines when
making replacement decisions. Id. Karedla describes the LFU algorithm as
one that maintains a frequency-of-access count for all its lines and replaces
the line that has been used least frequently. Id. Karedla disclose that a
disadvantage of the LFU algorithm is that lines with large frequency counts
that will not be accessed again (such as a recently active but currently cold
file) tend to remain entrenched in the cache, preventing newer additions to
the cache from gathering sufficient reference counts to stay in the cache.
Id.
Karedla describes variations on the LRU algorithm, stating that a
growing trend is toward algorithms that generally are combinations of
LRU, LFU, and read-ahead strategies, with varying thresholds on the

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amount of data that is prefetched. Id. Karedla discloses that [a] read-
ahead strategy known as prefetching exploits the principle of spatial locality
in an attempt to minimize latency in data access by anticipating future
requests for data and bringing it into the cache. Id.
Karedla further discloses that the authors simulated the behavior of
three cache replacement algorithms: random replacement, least recently
used, and segmented LRU. Id. at 1011. According to Karedla, the
simulated segmented LRU algorithm is the simplest variation on frequency-
based LRU replacement algorithms; it modif[ies] the LRU replacement
algorithm to distinguish between lines that have been accessed only once
and lines that have been accessed multiple times. Id. at 11.
Figure 3 of Karedla is shown below:

Id. Figure 3 above depicts the logical flow of SLRU cache lines between a
protected segment and a probationary segment. Id. Karedla describes the
segmented LRU cache as follows:

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An SLRU cache is divided into two segments, a probationary

segment and a protected segment. Lines in each segment are
ordered from the most to the least recently accessed . . . . Hits
are removed from wherever they currently reside and added to
the most recently accessed end of the protected segment. Lines
in the protected segment have thus been accessed at least twice.
The protected segment is finite, so migration of the line from the
probationary segment to the protected segment may force the
migration of the LRU line in the protected segment to the most
recently used (MRU) end of the probationary segment, giving
this line another chance to be accessed before being
replaced . . . . Whenever data must be discarded from the cache,
lines are obtained from the LRU end of the probationary
segment.
Id.

2. Analysis

a. Karedla as prior art

Petitioner contends that Karedla is prior art to the 745 patent under
35 U.S.C. 102(b). Pet. 4, 19 (citing, e.g., Ex. 1004, 23; Ex. 1013; Ex.
1012 3). Patent Owner does not challenge in its Preliminary Response that
Karedla is prior art under 35 U.S.C. 102(b). See generally Prelim. Resp.
Petitioner sufficiently shows on the current record, and for purposes
of institution, that Karedla was published in March 1994. See Pet. 19; Ex.
1004, 1 (March 1994), 2 (Library of Congress stamp dated MAR 22
1994), 4 (March 1994); Ex. 1013 (printout from Library of Congress
website identifying publication history and frequency). Petitioner, thus,
sufficiently shows that Karedla is prior art to the 745 patent, which issued
from an application filed September 7, 2001, under 35 U.S.C. 102(b).

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b. Claim 4
Petitioner contends that Karedla discloses each limitation of
independent claim 4. Id. at 2028. For example, Petitioner asserts that
Karedla discloses the claimed reading an extended segment of data in
response to a request from an operating system by describing the read-
ahead strategy known as prefetching, which anticipat[es] future requests
for data and bring[s] it into the cache. Id. at 21 (quoting Ex. 1004, 8).
Petitioner also relies on Karedlas descriptions of the LFU algorithm
maintaining a frequency-of-access count for all lines in the cache and of the
segmented LRU algorithm discarding data from the LRU end of the
probationary segment (which, according to Petitioner, is the least frequently
and least recently used file, as claimed). Id. at 2328.
Patent Owner asserts that Petitioner improperly relies on separate
embodiments described in Karedla for meeting the reading extended data
limitation and thus does not show that Karedla discloses all of the limitations
as arranged in the claim. Prelim. Resp. 1114. Patent Owner also argues
that Karedlas description of the variations on LRU embodiment does not
disclose assigning frequency factors to each of the files stored in the
cache, as claimed, and Petitioners reliance on a separate referencethe
Robinson articleto show this for anticipation by Karedla is improper. Id.
at 1518. Patent Owner further argues that Karedlas description of the
segmented LRU embodiment also does not disclose assigning frequency
factors to each of the files stored in the cache, as claimed. Id. at 1820.
Based on the current record, the information presented establishes a
reasonable likelihood that Petitioner would prevail in showing that claim 4 is
unpatentable under 35 U.S.C. 102(b) as anticipated by Karedla. See Pet.

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2028. For example, Petitioner sufficiently shows that Karedla discloses

that variations on replacement algorithms generally are combinations of
LRU, LFU, and read-ahead strategies, and that, with the LFU algorithm,
[t]he cache maintains a frequency-of-access count for all its lines. Pet.
2123 (quoting Ex. 1004, 8). Petitioner also sufficiently shows that Karedla
discloses identifying a least frequently and least recently used file by
disclosing that, with the segmented LRU algorithm, [w]henever data must
be discarded from the cache, lines are obtained from the LRU end of the
probationary segment. Pet. 27 (quoting Ex. 1004, 11).
Patent Owners arguments that Petitioner improperly relies on
separate embodiments of Karedla lack merit on the current record because
Petitioner sufficiently shows for purposes of institution that Karedla
provides a survey of caching strategies and cache replacement algorithms
and discloses that recent algorithms are combinations of LRU, LFU, and
read-ahead strategies. See, e.g., Pet. 2022. Petitioner thus sufficiently
shows that the general statements in Karedla regarding read-ahead strategies
are applicable to the teachings regarding variations on LRU and segmented
LRU. Patent Owners argument that Karedlas LRU embodiments do not
assign a frequency factor to each line in the cache also is unavailing because
Petitioner relies on Karedlas express disclosure in connection with the LFU
feature for showing this claim limitation. See Pet. 23 (quoting Ex. 1004, 8).
We also are satisfied, for this ground, that Petitioners citations to
Karedla alone are sufficient for institution purposes and do not rely on any
of Petitioners citations to the Robinson article or Robinson 885. See, e.g.,
Pet. 23, 2425 (citing Exs. 1005 and 1007).

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c. Claims 1 and 12
Petitioner asserts that claims 1 and 12 are substantively identical to
claim 4, noting that claims 1 and 12 are respectively directed to a similar
method and media for identifying a least frequently and least recently used
file. Pet. 28. Petitioner asserts that Karedla discloses the feature recited in
claims 1 and 12, but not in claim 4, of the cache being located in a random
access memory. Pet. 2831 (citing, e.g., Ex. 1004, 7, 9; Ex. 1002 104,
107). Patent Owner raises the arguments discussed above in connection
with claim 4 also for claims 1 and 12. See Prelim. Resp. 920.
Claim 1 is a method claim that recites limitations that are very similar
to those of method claim 4, with the additional requirement of the cache
being located in a random access memory (RAM) of the computer. Claim
12 recites [a] computer readable media having program instructions for a
caching method comprising program instructions for performing functions
nearly identical to those recited in claim 4. Like claim 1, claim 12
additionally requires that the cache be located in a random access memory of
the computer.
For the reasons explained above in connection with claim 4, and
because Petitioner sufficiently shows for institution purposes that Karedla
discloses that the cache is located in a random access memory, the
information presented establishes a reasonable likelihood that Petitioner
would prevail in showing that claims 1 and 12 are unpatentable under
35 U.S.C. 102(b) as anticipated by Karedla. We also are satisfied, for this
ground, that Petitioners citations to Karedla are sufficient for institution
purposes and do not rely on any of Petitioners citations to the Robinson
article. See, e.g., Pet. 29 (citing Ex. 1005).

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d. Claims 8, 9, and 11
Petitioner asserts that claim 8 is substantively identical to claim 4.
Pet. 28. Petitioner, however, notes that, unlike claim 4, claim 8 requires
scanning the frequency factor . . . without considering a frequency factor
corresponding to a most recently used file. Id. at 31; see Ex. 1001, 13:26
30. Petitioner asserts that Karedla discloses this limitation because
Karedlas SLRU variation does not consider the frequency factor
corresponding to the MRU file. Pet. 33 (citing Ex. 1002 116).
Specifically, Petitioner asserts that [b]ecause the MRU end of the protected
segment is protected and only the LRU probationary entry is chosen for
discarding, the SLRU algorithm . . . does not consider the frequency factor
corresponding to the MRU file in the protected segment. Pet. 33 (quoting
Ex. 1004, 11). Petitioner also cites to the Robinson article and Robinson
885 for descriptions of the Robinson FBR algorithm, which Petitioner
asserts also does not consider the frequency factor corresponding to the
MRU file. Id. at 3133.
Patent Owner asserts that Karedla does not disclose scanning the
frequency factor for each of the files, as recited in claim 8. Prelim. Resp.
20. Patent Owner specifically asserts that the scanning limitation of claim 8
expressly requires scanning the frequency factor of every file in the cache
to determine which files to replace in the cache, and that [b]oth Karedla
embodiments scan only a subset of cache lines to determine which cache
lines to replace in the cache. Id. With respect to the variations on LRU
embodiment, Patent Owner asserts that an ordinarily skilled artisan would
understand that Karedlas disclosure that a cache line that is not
subsequently referenced ages into the bottom part of the list by LRU

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replacement and is finally evicted if not referenced to mean that only the
cache lines in the bottom section of the stack are scanned to determine which
cache lines to replace. Id. at 2021. With respect to the segmented LRU
embodiment, Patent Owner asserts that only the probationary segment is
scanned to determine which cache lines to replace. Id. at 21.
Having reviewed the record, we determine that Petitioner does not
show sufficiently that Karedla discloses scanning the frequency factor for
each of the files, as required by claim 8. Petitioner relies on Karedlas
disclosures that a cache line, after being referenced, is placed in the
topmost section of the stack and that the line ages into the bottom part of
the list . . . and is finally evicted if not referenced (Pet. 32 (citing Ex. 1004,
8)); that the SLRU linked list runs from the MRU end of the protected
segment to the LRU end of the probationary segment (id. at 33 (citing Ex.
1004, 11)); and that the LRU probationary entry is chosen for discarding
(id. (citing Ex. 1004, 11)). These excerpts from Karedla, however, do not
describe scanning the frequency factor for each of the files. Petitioner fails
to address this specific requirement of the claim or explain how Karedla
expressly or inherently discloses this limitation. See Pet. 3133. Indeed,
Petitioner does not even quote this part of the claim language when
explaining how claim 8 differs from claim 4. Id. at 31.
We, therefore, determine that the information presented does not show
a reasonable likelihood that Petitioner would prevail in demonstrating that
claim 8 is anticipated by Karedla, or that claims 9 and 11, which depend
from claim 8, are anticipated by Karedla.

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e. Claims 1517
Petitioner asserts that claim 15 is substantively identical to claim 4.
Pet. 28. Petitioner, however, notes that, unlike claim 4, claim 15 requires
that the frequency factors are scanned from a frequency factor for a LRU
file to a frequency factor for a MRU file, not including the frequency factor
for the MRU file. Pet. 3334; see Ex. 1001, 14:3942.
Petitioner relies on its analysis of the scanning limitation of claim 4
and asserts that a person of ordinary skill in the art would understand that
Karedla discloses scanned from a frequency factor for a LRU file to a
frequency factor for a MRU file, not including the frequency factor for the
MRU file. Id. at 3334.
Patent Owner argues that claim 15 requires scanning every frequency
factor except the frequency factor for the MRU file and asserts that
Karedlas variations on LRU embodiment scans only the cache lines in the
bottom section of a three-segment stack and the segmented LRU
embodiment scans only the cache lines in the probationary segment of a
two-segment cache. Prelim. Resp. 2122.
Having reviewed the record, we determine that Petitioner does not
show sufficiently that Karedla discloses the frequency factors are scanned
from a frequency factor for a LRU file to a frequency factor for a MRU file,
not including the frequency factor for the MRU file, as required by claim
15. Petitioner does not rely on any express disclosure in Karedla. Rather,
Petitioner relies on a disclosure in Robinson 885 that [f]inding a block to
replace then consists of scanning the blocks (from LRU to MRU) in each
such LRU chain (in ascending count order) until a block is found in the old
section. Pet. 34 (quoting Ex. 1007, 5:1518). Petitioner then asserts that a

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[person of ordinary skill in the art] reading Karedla would understand that
Karedla discloses scanned from a frequency factor for a LRU file to a
frequency factor for a MRU file, not including the frequency factor for the
MRU file. Id. (citing Ex. 1002 119) (emphasis omitted). The cited
declaration testimony likewise relies on the quoted disclosure from
Robinson 885 and repeats the assertion that a skilled artisan would
understand that Karedla discloses the claim limitation. See Ex. 1002 119
(emphasis omitted). Karedla, however, does not cite Robinson 885, let
alone incorporate by reference this particular disclosure from Robinson
885. See, e.g., Ex. 1004, 8, 14. Petitioner, thus, fails to show that Karedla
expressly or inherently discloses this claim limitation.
For these reasons, we determine that the information presented does
not show a reasonable likelihood that Petitioner would prevail in
demonstrating that claim 15 is anticipated by Karedla, or that claims 16 and
17, which depend from claim 15, are anticipated by Karedla.
f. Dependent claims 3, 7, and 13
Claim 3 recites that the method recited in claim 1 further includes
providing a driver for decrementing a frequency factor after a time period
of non-use of a corresponding file. Petitioner asserts that a person of
ordinary skill in the art reading Karedla would understand that the
frequency factors may be decremented periodically in the Robinson FBR
algorithm, as described in both the Robinson Article and Robinson 885.
Pet. 36 (citing Ex. 1007, Ex. 1005) (emphasis omitted). Petitioner does not
rely on any express disclosure in Karedla. Id. We determine that Petitioner
fails to show sufficiently that Karedla itself, which does not incorporate by
reference the relied-upon disclosures from the Robinson article or Robinson

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885, discloses this claim limitation. See, e.g., Ex. 1004, 40, 46 n.4. We,
therefore, determine that the information presented does not show a
reasonable likelihood that Petitioner would prevail in demonstrating that
claim 3 is unpatentable under 35 U.S.C. 102(b) as anticipated by Karedla.
Claim 7 depends from claim 4 and recites wherein the caching
method is self tuning. Claim 13 depends from claim 12 and similarly
recites that program instructions for the caching method are self-tuning.
Petitioner asserts that Karedla discloses the self-tuning limitations of claims
7 and 13. Pet. 3637. Petitioner also relies on disclosures from the
Robinson article and Robinson 885 that purportedly disclose the claimed
self-tuning. Id. at 36. Patent Owner does not raise any arguments specific to
the limitations added by dependent claims 7 and 13 in its Preliminary
Response. See Prelim. Resp. 922. The burden, however, remains on
Petitioner to demonstrate unpatentability. See Dynamic Drinkware, LLC v.
Natl Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the
burden of proof in inter partes review).
Having reviewed the record, we determine that the information
presented does not establish a reasonable likelihood that Petitioner would
prevail in showing that claims 7 and 13 are unpatentable under 35 U.S.C.
102(b) as anticipated by Karedla. Petitioner asserts that Karedla discloses
that the cache line sizes could be tunable and that one such cache
dynamically partitions the cache into three partitions for small, medium and
large transfers, depending on the request size distribution. Pet. 3637
(quoting Ex. 1004, 8). Petitioner also asserts that Karedla discloses
adaptively sizing the cache. Id. at 37 (quoting Ex. 1004, 9). Petitioner also
relies on the last passage of Karedla, which notes that future I/O caches will

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be self-adaptive, that [m]ore intelligence will be put into cache

management, and caches will adapt to the changing access patterns of the
user, and that cache performance monitoring tools . . . assist one in making
informed decisions about whether to vary the read/write cache threshold, the
cache line size, and so forth. Id. (quoting Ex. 1004, 14). Petitioner reasons
that [b]ecause changing cache line sizes is disclosed in the 745 patent as
part of the self-tuning actions of changing the size of the reads, Karedla
discloses the claimed self-tuning. Id. at 37 (citing Ex. 1002 128). Neither
Petitioner nor Petitioners declarant, however, explain how Karedlas
disclosures regarding cache line sizes, varying the size of the cache, and
partitioning the cache based on small, medium, and large transfers disclose
self-tuning of the size of the reads. See id. at 3637; Ex. 1002 128. Nor
does Petitioner or Petitioners declarant explain how the general disclosure
that future I/O caches will be self-adaptive or the description of making
informed decisions about whether to vary the read/write cache threshold or
the cache line size discloses the claimed self-tuning. Moreover, Petitioner
fails cite to a passage in the 745 patent in support of the statement that
changing cache line sizes is disclosed in the 745 patent as part of the self-
tuning actions of changing the size of the reads. Pet. 37. Finally,
Petitioner relies on disclosures in Robinson 885 and the Robinson article,
but neither of those disclosures are incorporated by reference into Karedla.
See id. at 36 (citing Ex. 1007, 9:910; Ex. 1005, 11 10); see also Ex. 1004, 8,
14 n.4 (Karedla citing, but not incorporating the contents of, the Robinson

10
Even though Petitioner cites to the original page numbers of the Robinson
article rather than the exhibit page numbers added by Petitioner, for ease of
reference to the entire exhibit, we cite to the exhibit page numbers.
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article). We, thus, determine that Petitioner does not show sufficiently that
Karedla discloses the self-tuning recited in claims 7 and 13.
g. Dependent claims 6 and 14
Claim 6 depends from claim 4 and recites wherein the scanning the
frequency factors further includes: scanning from a frequency factor
corresponding to a LRU file to a frequency factor corresponding to a MRU
file. Petitioner relies on its analysis of claim 15 for showing Karedla
anticipates claim 6. Pet. 37. For the reasons explained above in connection
with claim 15, we determine that the information presented does not show a
reasonable likelihood that Petitioner would prevail in demonstrating that
claim 6 is unpatentable under 35 U.S.C. 102(b) as anticipated by Karedla.
Claim 14 recites that the computer readable media as recited in claim
12 further comprises program instructions for allowing a user to adjust a
size of the extended segment that is read. Petitioner relies on its analysis of
claim 4 and additionally relies, for example, on a passage in Karedlas
description of read-ahead strategies stating that vendors also offer a tunable
read-ahead threshold to minimize both cache pollution and the latency in
transferring large amounts of data from the disk to the I/O bus. Pet. 3839
(citing Ex. 1004, 8). Patent Owner does not raise, in its Preliminary
Response, any arguments specific to the limitation added by dependent
claim 14. See Prelim. Resp. 922. The burden, however, remains on
Petitioner to demonstrate unpatentability. See Dynamic Drinkware, 800
F.3d at 1378. Based on the current record, the information presented
establishes a reasonable likelihood that Petitioner would prevail in showing
that claim 14 are unpatentable under 35 U.S.C. 102(b) as anticipated
Karedla. See Pet. 3639.

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h. Summary
For the above reasons, we determine that the information presented
(i) establishes a reasonable likelihood that Petitioner would prevail in
showing that claims 1, 4, 12, and 14 are unpatentable under 35 U.S.C.
102(b) as anticipated by Karedla alone (and not including Robinson 885
or the Robinson article) and (ii) does not establish a reasonable likelihood
that Petitioner would prevail in showing that claims 3, 69, 11, 13, and 15
17 are unpatentable under 35 U.S.C. 102(b) as anticipated Karedla.

C. Asserted Obviousness over Burton and Karedla

Petitioner contends that claims 1, 4, 6, 8, 9, 11, 12, 15, and 17 of the
745 patent are unpatentable under 35 U.S.C. 103(a) as obvious over
Burton and Karedla. Pet. 3956. Relying in part on the testimony of Dr.
Franzon, Petitioner explains how the references allegedly teach or suggest
the claim limitations and provides purported reasoning for combining the
teachings of the references. Id. (citing Ex. 1002 133135, 141, 142, 144
148, 150, 151, 154158).

1. Summary of Burton
Burton is a U.S. patent titled Method, System, and Program for
Demoting Data from Cache Based on Least Recently Accessed and Least
Frequently Accessed Data. Ex. 1006, [54]. Burton issued May 18, 2004
from an application filed June 9, 2000, and is prior art to the 745 under
35 U.S.C. 102(e). Compare id. [22], [45], with Ex. 1001, [22], [45].
Burton describes as background a least recently used (LRU) algorithm
for managing data in a cache. Ex. 1006, 1:3949. Burton explains that
when a track is added to the cache, a pointer to the track is placed at the top
of the LRU linked list. Id. at 1:3942. Burton explains that when the cache

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manager determines that data must be demoted or removed from cache to

make room for subsequent data accesses, the cache manager will demote
tracks having pointers at the bottom of the list, representing those tracks that
were accessed the longest time ago relative to other tracks in the cache. Id.
at 1:4449. Burton states that LRU algorithms are not optimal for
randomly accessed data because a demoted track in a cache, even though it
is the least recently accessed, may be more likely to be subsequently
accessed than those less frequently accessed. Id. at 1:5058.
Burton discloses a caching method that is an improvement over prior
art techniques that do not take into account the frequency of access when
demoting cache entries. Id. at 2:3134. According to Burton, an entry
that is more frequently accessed relative to another entry is more likely to be
accessed again in the future. Id. at 2:2629. Burton discloses select[ing]
for demotion those entries less likely to be accessed in the future with
respect to other entries. Id. at 2:2931.
Figure 1 of Burton illustrates Burtons cache architecture and is
shown below:

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Id. at 2:5556. As illustrated in Figure 1 above, cache 2 includes cache

entries 4a, 4b, 4c, 4d, into which tracks or pages of data from storage 6 may
be placed. Id. at 2:5558. Burton discloses that when a track or page of data
is staged into a cache entry, new entry 8a is added to the top of LRU linked
list 10. Id. at 2:5860. According to Burton, for each cache entry 4a, 4b, 4c,
4d, LRU linked list 10 includes one entry 8a, 8b, 8c, 8d, respectively. Id. at
2:6061. Burton discloses that each entry in LRU linked list 10 includes
LRU rank value 12a, b, c, d and pointer 14 a, b, c, d to one cache entry 4a, b,
c, d, respectively. Id. at 2:6266. Burton discloses that when an
input/output request is serviced from the cache (i.e., a cache hit), then the
entry in the LRU linked list including the pointer is moved to the top of the
LRU linked list. Id. at 2:663:3.

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Burton discloses that the LRU rank provides a value for each entry in
[the cache] that indicates both how frequently the entry is accessed and the
time of last access. Id. at 3:1113. Burton states that [t]he purpose of this
weighting is to allow the process [of] demoting entries from cache to take
into account the frequency with which an entry was accessed and remove
those less frequently accessed entries. Id. at 3:1317 (reference numerals
omitted). Burton describes its ranking methodology, which uses time
counter 18 (shown in Figure 1 above), as follows:
The . . . LRU rank is weighted for previous accesses. Because
the time counter 18 is incremented for every I/O access, the value
added to the LRU rank for subsequently accessed cache entries
increases substantially in a short period of time. Thus, LRU
entries recently accessed or added to cache will have a
substantially higher LRU rank than the LRU rank of entries that
have not been accessed recently, even those entries accessed
numerous times. However, to the extent entries have not been
accessed for the same amount of time, the entry that was accessed
more frequently will have a higher LRU rank because its LRU
rank will be weighted with previous accesses. Thus, to the extent
entries were last accessed at about the same time, which in terms
of cache operations is within fractions of a second of each other,
the more frequently accessed entry will have a greater weighting.
Id. at 3:544:2. Burton explains that the more frequently accessed entry is
given a greater weighting because a cache entry more frequently accessed
in the past is likelier to be accessed in the future over less frequently
accessed entries that were last accessed at about the same time. Id. at 4:2
5.
Burton also discloses that when the number of cached entries reaches
an upper threshold, the cache determines from the last 1024 entries in the
LRU linked list thirty-two entries that have the lowest LRU rank. Id. at 4:7

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11. According to Burton, the cache then demotes those thirty-two entries
from the cache. Id. at 4:1113. Burton states that those entries having the
lowest LRU rank marked for demotion are both the least recently accessed
and[,] among those entries least recently accessed, are less frequently
accessed. Id. at 4:1922. Thus, according to Burton, the algorithm . . .
ensures that more frequently accessed cache entries . . . remain in cache
longer. Id. at 4:2224.

2. Analysis
a. Claim 4
Petitioner contends that claim 4 of the 745 patent is unpatentable
under 35 U.S.C. 103(a) as obvious over Burton and Karedla. Pet. 3, 40
50. Relying in part on the testimony of Dr. Franzon, Petitioner explains how
the references allegedly teach or suggest the claim limitations and provides
purported reasoning for combining the teachings of the references. Id. at
4050 (citing Ex. 1002 134, 135, 141, 142, 144148, 150). Specifically,
Petitioner asserts that Burton discloses all of the limitations of claim 4,
except reading an extended segment of data in response to a request from
an operating system, which Petitioner asserts Karedla discloses. Id. at 40
49. Petitioner also asserts that a person of ordinary skill in the art would
have been motivated to combine Burtons cache replacement mechanism
with Karedlas cache strategies to improve system performance, and that the
combination provides a cost-effective method to increase performance and
data throughput, minimize latency in data access, reduce cache lookup time,
and increase the speed of cache directory searches. Id. at 4950 (citing Ex.
1002 158; Ex. 1006, 1:6162; Ex. 1004, 8).

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Patent Owner asserts that Burton does not disclose assigning

frequency factors to each of the files, as claim 4 requires. Prelim. Resp.
2330. Patent Owner asserts Burtons LRU rank value is overwhelmingly
an indicator of recency of use, not frequency of use, and that properly
construed, the claimed frequency factor is not an indicator that is only
tangentially and minimally related to the frequency of use of a file. Id. at
23 (emphasis omitted). Patent Owner explains its position using [a]n
example application of the algorithm illustrated in Burtons Figure 2. Id. at
2529. As Patent Owner argues, Burton discloses that the LRU rank for the
most recently accessed cache entry is incremented, per block 110 of Figure
2, by the modulo (i.e., the remainder) of the time counter divided by 512.
Id. at 25. Patent Owner describes an example in which three tracks of the
cache have a higher LRU than a track A, even though they were accessed
fewer times than track A. Id. at 2829. According to Patent Owner, the
LRU rank so heavily favors the most recently used track over the most
frequently used track that it would be a rare and merely coincidental
circumstance in which the highest LRU rank would correspond to the track
with the highest frequency of use. Id. at 29.
Patent Owner, however, also asserts that the term frequency factor
does not demand[] a perfect correlation with frequency of use. Id.
According to Patent Owner, the 745 patent does allow for at least some
degree of weighting in which some accesses affect the frequency factor more
than other accesses. Id. at 2930. But, according to Patent Owner, a metric
such as Burtons LRU rank that is so dominated by recency of use and has
so little correlation to frequency of use . . . cannot fairly be called a
frequency factor. Id. at 30.

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Based on the current record, the information presented establishes a

reasonable likelihood that Petitioner would prevail in showing that claim 4 is
unpatentable under 35 U.S.C. 103(a) as obvious over Burton and Karedla.
See Pet. 4050. As explained above, for purposes of institution, we construe
frequency factor to mean an indicator based on frequency of use or
access. Claim 4 additionally expressly recites the frequency factors
indicating how often each of the corresponding files are requested by the
operating system. Petitioner shows sufficiently at this preliminary stage
that Burton discloses frequency factors indicating how often each of the
corresponding files are requested. For example, Petitioner cites Burtons
express disclosure that [f]or each entry in cache, a variable indicates both a
time when the cache entry was last accessed and a frequency of accesses to
the cache entry. Pet. 43 (quoting Ex. 1006, 2:35, 5:2730 (emphasis
added)). Petitioner also cites Burtons description that the LRU rank shown
in Figure 1 provides a value that indicates both how frequently the entry is
accessed and the time of last access. Id. at 44 (quoting Ex. 1006, 3:1113
(emphasis added)). We also note that even though Patent Owner relies on
the particular algorithm illustrated in Burtons Figure 2in which the value
of the remainder of the time counter divided by 512 is added to the LRU
rankBurton states that [i]n alternative embodiments, the time counter 18
may be divided by other values. Ex. 1006, 3:4344. Burton also states:
Preferred embodiments described a specific technique for
weighting a variable with the frequency a track or page of data
in cache has been accessed. In alternative embodiments,
different algorithms may be used to factor in both the time of the
most recent access and the frequency of accesses to an entry in
cache.

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Id. at 5:1318 (emphasis added). Thus, although Patent Owner relies on the
specific algorithm shown in Figure 2 for distinguishing Burton, Burton
discloses that other algorithms may be used.
Petitioner also sufficiently shows that Burton discloses the other
limitations of claim 4, except for reading extended segments of data,
which Petitioner sufficiently shows Karedla discloses. See Pet. 3949.
Patent Owner again argues that Petitioner does not establish that Karedla
discloses reading extended segments of data as claimed because Petitioner
improperly relies on different embodiments in Karedla. Prelim. Resp. 30
31. As explained above in connection with the anticipation ground based on
Karedla, at this preliminary stage, Petitioner sufficiently shows that Karedla
discloses the claimed reading extended segments of data.
Petitioner also provides, on the current record and for institution
purposes, sufficient reasoning with rational underpinning for combining the
teachings of Burton and Karedla as claimedto improve system
performance such as to minimize latency in data excess, to reduce cache
lookup time, and to increase the speed of cache directory searches. See Pet.
4950.
For the above reasons, the information presented shows a reasonable
likelihood that Petitioner would prevail in demonstrating that claim 4 is
unpatentable for obviousness over Burton and Karedla.
b. Claims 1 and 12
Petitioner asserts that claims 1 and 12 are substantively identical to
claim 4, noting that claims 1 and 12 are respectively directed to a similar
method and media for identifying a least frequently and least recently used
file. Pet. 50. Petitioner also asserts that Burton discloses the feature recited

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in claims 1 and 12 (but not in claim 4) of the cache being located in a

random access memory. Pet. 5153 (citing, e.g., Ex. 1005, 1:1617, 1:26
27; Ex. 1002 160). Patent Owner raises the same arguments for claims 1
and 12 discussed above in connection with claim 4. See Prelim. Resp. 22
31.
Claim 1 is a method claim that recites limitations that are very similar
to those of method claim 4, with the additional requirement of the cache
being located in a random access memory (RAM) of the computer. Claim
12 recites [a] computer readable media having program instructions for a
caching method comprising program instructions for performing functions
nearly identical to those recited in claim 4. Like claim 1, claim 12
additionally requires that the cache be located in a random access memory of
the computer. For the reasons explained above in connection with claim 4,
and because Petitioner sufficiently shows for institution purposes that Burton
discloses that the cache is located in a random access memory, the
information presented establishes a reasonable likelihood that Petitioner
would prevail in showing that claims 1 and 12 are unpatentable for
obviousness over Burton and Karedla.
c. Claim 8
Petitioner asserts that claim 8 is substantively similar to claim 4.
Pet. 52. Petitioner however notes that, unlike claim 4, claim 8 requires
scanning the frequency factor . . . without considering a frequency factor
corresponding to a most recently used file. Id.; see Ex. 1001, 13:2630.
Petitioner asserts that Burton discloses this limitation because Burton
discloses (i) that the MRU entry has an LRU rank substantially higher than
even those entries accessed numerous times, (ii) that the cache determines

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the least frequently used and least recently used files from the bottom of the
LRU linked list, and (iii) that the thirty-two entries that have the lowest LRU
rank from the last 1024 entries are identified. Id. (citing Ex. 1006, 3:67,
3:5861, 4:911; Ex. 1002 162, 163).
Patent Owner does not specifically address Petitioners contention that
the subject matter of claim 8 is rendered obvious by the combination of
Burton and Karedla, but does address Petitioners contention that the subject
matter of claims 9 and 11which depend from claim 8would have been
obvious in view of Burton and Karedla. See Prelim. Resp. 3132. Patent
Owner asserts that the scanning limitation of claim 8 expressly requires
scanning the frequency factor of every file in the cache to determine which
files to replace in the cache, and that Burton expressly discloses that it
scans only a subset of cache entries to determine which cache entries to
replace in the cache. Id. at 31. In addition, in response to Petitioners
contention that claim 8 is anticipated by Burton, Patent Owner asserts that
Burton does not disclose assigning a frequency factor to each of the copied
files or scanning the frequency factor for each of the files, as recited in
claim 8. Prelim. Resp. 34.
Having reviewed the record, we determine that Petitioner fails to
show sufficiently that the subject matter of claim 8 would have been obvious
in view of Burton and Karedla. Petitioner fails to address how Burton
discloses the claim requirement of scanning the frequency factor for each
of the files, which is not recited in independent claim 4. See Pet. 52. Burton
states that the cache determines . . . from the last 1024 entries in the LRU
linked list 8, thirty-two entries that have the lowest LRU rank 12a, b, c, d.
The cache 2 then demotes . . . those determined thirty-two entries from

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cache 2. Ex. 1006, 4:713. Petitioner fails to show, in view of this express
disclosure in Burton, how Burton teaches scanning the frequency factor for
each of the files in the cache. Petitioner does not rely on any disclosure in
Karedla for meeting this claim limitation of scanning the frequency factor
for each of the files. See Pet. 52. We, therefore, determine that the
information presented does not show a reasonable likelihood that Petitioner
would prevail in demonstrating that the subject matter of claim 8 would have
been obvious over Burton and Karedla.
d. Claim 15
Petitioner asserts that claim 15 is substantively identical to claim 4.
Pet. 50. Petitioner however notes that, unlike claim 4, claim 15 requires that
the frequency factors are scanned from a frequency factor for a LRU file to
a frequency factor for a MRU file, not including the frequency factor for the
MRU file. Id. at 53; see also Ex. 1001, 14:3942. Petitioner asserts that
Burton teaches this limitation in that (i) Burton discloses that the top of the
LRU linked list is the MRU entry and the bottom of the LRU linked list is
the LRU entry, (ii) Burton discloses that the bottom section of the LRU
linked list is scanned for the least recently accessed and least frequently
accessed data, (iii) a person of ordinary skill in the art reviewing Burton
would understand that the frequency factor of the MRU file is not scanned in
Burtons scanning process because only the bottom portion is scanned,
(iv) because Burton discloses scanning the bottom section of the LRU linked
list, the scanning is neither haphazard nor from the MRU to the LRU, and
(v) a skilled artisan reading Burton would understand that the scanning
process necessarily must scan from the MRU to the LRU, and there would

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be no way for the system to identify this block without such scanning. Id.
at 54 (citing, e.g., Ex. 1002 165, 167).
Patent Owner argues that claim 15 expressly requires scanning the
frequency factor of every file in the cache, except the MRU file, to
determine which files to replace in the cache and that Burton does not
disclose this limitation because Burton expressly discloses that only a subset
of cache entries are scanned to determine which cache entries to replace in
the cache. Prelim. Resp. 3233 (bold emphasis omitted).
Having reviewed the record, we determine that Petitioner fails to
show sufficiently that the subject matter of claim 15 would have been
obvious in view of Burton and Karedla. Burton expressly discloses scanning
a bottom section of the cache, but does not disclose scanning the frequency
factors from a frequency factor for a LRU file to a frequency factor for a
MRU file, not including the frequency factor for the MRU file, as required
by claim 15. See Ex. 1006, 4:813. Petitioner relies on testimony of its
expert to purportedly show that Burton inherently discloses this limitation
that the scanning necessarily must scan from the MRU to the LRU, and
there would be no way for the system to identify this block without such
scanning. Pet. 54 (citing Ex. 1002 167). Neither Petitioner nor Dr.
Franzon, however, explains why the scan must be from the MRU file to the
LRU file or why there would be no way for the system to identify the bottom
block without scanning all of the files. See id.; Ex. 1002 167. Given
Burtons express disclosure of scanning a particular subsection of the cache,
Petitioners lack of explanation in support of its inherency argument is
insufficient. Petitioner does not rely on any disclosure in Karedla for
disclosing this limitation. Pet. 54. For these reasons, we determine that the

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information presented does not show a reasonable likelihood that Petitioner

would prevail in demonstrating that the subject matter of claim 15 would
have been obvious over Burton and Karedla.
e. Claims 6, 9, 11, and 17
Petitioner contends that claims 6, 9, 11, and 17 of the 745 patent are
unpatentable under 35 U.S.C. 103(a) as obvious over Burton and Karedla.
Pet. 3, 39. Claims 9 and 11 depend from claim 8; claim 17 depends from
claim 15. For the reasons explained above in connection with claims 8 and
15, the information presented does not show a reasonable likelihood that
Petitioner would prevail in demonstrating that the subject matter of claims 9,
11, and 17 would have been obvious over Burton and Karedla.
Claim 6 depends from claim 4 and recites wherein the scanning the
frequency factors further includes: scanning from a frequency factor
corresponding to a LRU file to a frequency factor corresponding to a MRU
file. In addressing claim 6, Petitioner relies on its analysis of claim 15.
Pet. 55. As explained above in connection with claim 15, Petitioner does not
show sufficiently that Burton discloses scanning from the LRU file to the
MRU file. Petitioner asserts that even though Burton expressly discloses
scanning only a subset of the cache files, Burton purportedly inherently
discloses this claim limitation. Pet. 54. Petitioner does not provide
sufficient support, however, for its conclusory statements that the scan must
be from the MRU file to the LRU file or why there would be no way for the
system to identify the bottom block without scanning all of the files. See In
re Magnum Oil Tools Intl, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016)
(Petitioner cannot satisfy its burden of proving obviousness by employing
mere conclusory statements.). Accordingly, we determine that the

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information presented does not show a reasonable likelihood that Petitioner

would prevail in demonstrating that the subject matter of claim 6 would have
been obvious over Burton and Karedla.
f. Summary
For the above reasons, we determine that the information presented
(i) establishes a reasonable likelihood that Petitioner would prevail in
showing that claims 1, 4, and 12 are unpatentable under 35 U.S.C. 103(a)
as obvious over Burton and Karedla and (ii) does not establish a reasonable
likelihood that Petitioner would prevail in showing that claims 6, 8, 9, 11,
15, and 17 are unpatentable under 35 U.S.C. 103(a) as obvious over
Burton and Karedla.

D. Asserted Anticipation by Burton

Petitioner contends that claims 8 and 9 are unpatentable under
35 U.S.C. 102(e) as anticipated by Burton. Pet. 3, 56. Relying in part on
the testimony of Dr. Franzon, Petitioner purportedly explains how Burton
discloses the subject matter of claims 8 and 9. Id. at 56 (citing Ex. 1002).
Patent Owner asserts that Burton does not disclose assigning a
frequency factor to each of the copied files or scanning the frequency
factor for each of the files, as recited in claim 8. Prelim. Resp. 34. Patent
Owner asserts that the scanning limitation of claim 8 expressly requires
scanning the frequency factor of every file in the cache to determine which
files to replace in the cache, and that Burton expressly discloses that it
scans only a subset of cache entries to determine which cache entries to
replace in the cache. Id. at 31.
Having reviewed the record, we determine that Petitioner fails to
show sufficiently that claim 8 is anticipated by Burton. Petitioner fails to

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address how Burton discloses the claim requirement of scanning the

frequency factor for each of the files, which is not recited in independent
claim 4. See Pet. 56. Burton states that the cache determines . . . from the
last 1024 entries in the LRU linked list 8, thirty-two entries that have the
lowest LRU rank 12a, b, c, d. The cache 2 then demotes . . . those
determined thirty-two entries from cache 2. Ex. 1006, 4:713. Petitioner
fails to show, in view of this express disclosure in Burton, how Burton
discloses scanning the frequency factor for each of the files in the cache.
See Pet. 56. We, therefore, determine that the information presented does
not show a reasonable likelihood that Petitioner would prevail in
demonstrating that claim 8 or claim 9, which depends from claim 8, is
anticipated by Burton.

E. Asserted Obviousness over Karedla, Robinson 885, and

the Robinson article
Petitioner contends that claims 3, 6, 7, 13, 15, and 16 of the 745
patent are unpatentable under 35 U.S.C. 103(a) as obvious over Karedla,
Robinson 885, and the Robinson article. Pet. 3, 5766. Relying, in part, on
the testimony of Dr. Franzon, Petitioner explains how the references
allegedly teach or suggest the claim limitations and provides purported
reasoning for combining the teachings of the references. Id. at 5766 (citing
Ex. 1002 172178, 183188).

1. Summary of Robinson 885

Robinson 885 is a U.S. patent titled Data Cache Using Dynamic
Frequency Based Replacement and Boundary Criteria. Ex. 1007, [54].
Robinson 885 issued August 27, 1991 and is prior art to the 745 patent
under 35 U.S.C. 102(b). Compare Ex. 1007, [45], with Ex. 1001, [22].

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Robinson 885 discloses a method and apparatus for making cache

block replacement decisions based on a combination of least recently used
(LRU) stack distance and data reference frequencies. Ex. 1007, 1:1114.
Figure 1 of Robinson 885 is shown below:

Figure 1 above illustrates how a combination of block aging, boundary

condition and reference count techniques may be used. Id. at 3:3740.
Each cache directory entry 12 in cache directory 10 is a reference count.
Id. at 4:2431. According to Robinson 885, when a new block is brought
into the cache, the associated cache directory entry is placed into most
recently used (MRU) position 14 and the reference count is initialized to
one. Id. at 4:2431. Robinson 885 discloses that the cache directory
essentially works in LRU fashion, with a cache directory entry being put in
the MRU position each time a block is referenced. Id. at 4:3437.
However, according to Robinson 885, the block associated with the cache
directory entry in the LRU position 16 will not necessarily be the one that is
replaced when there is a cache miss. Id. at 4:3740.

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As shown in Figure 1, the cache directory has age boundary 18. The
section of the cache directory on the MRU side of the boundary is the
local section; the section on the other side of the boundary is the non-
local section. Id. at 4:4647. Robinson 885 discloses that when there is a
hit on the local section, the count remains the same; when there is a hit on
the non-local section, the count is incremented. Id. at 4:4852. Robinson
885 discloses ways of using the reference counts to select blocks to replace,
including select[ing] the least recently used block in the non-local section
whose count is below a preselected threshold. Id. at 4:5557.
Figure 2 of Robinson 885, shown below, illustrates an alternative
embodiment in which the cache directory is divided into three sections using
two boundaries:

Id. at 4:6466. Figure 2, above, shows a cache directory having a local

section, a middle section, and an old section. Id. at 4:665:1. Robinson
885 discloses that blocks with reference counts in the old section are the
blocks from which replacement selections are made. Id. at 5:13.
Specifically, Robinson 885 discloses that a block is selected to be replaced
by finding the block (or blocks) with the smallest count in the old section
and then replacing that block (or least recently used such block if there is
more than one) if the count is below a predetermined threshold. Id. at 5:4

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8. Robinson 885 further describes maintaining a separate LRU chain for

blocks with a count of 1, another separate LRU chain for blocks with a count
of 2, and so on. Id. at 5:1014. Robinson 885 discloses finding a block to
replace by scanning the blocks (from LRU to MRU) in each such LRU
chain (in ascending count order) until a block is found in the old section.
Id. at 5:1518.

2. Summary of the Robinson article

The Robinson article is an article titled Data Cache Management
Using Frequency-Based Replacement authored by John T. Robinson and
Murthy V. Devarakonda. Ex. 1005, 9. The Robinson article discloses a
cache replacement algorithm based on a combination of reference
frequency and block age. Id. The Robinson article states that [l]ike
previously studied algorithms, reference counts are maintained for each
block in the cache; unlike previous algorithms, reference counts are not
incremented on every reference. Id. at 10. The article discloses that
references are incremented only for those blocks that have aged out of a
new section of the cache. Id.
Figure 2.2 of the Robinson article, below, illustrates the sections of
the cache:

Id. at 11. As illustrated in Figure 2.2 above, the cache includes a new
section, a middle section, and an old section. Id. The Robinson article

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discloses that the basis of its algorithm is the LRU replacement algorithm, in
which the cache consists of a stack of blocks, with the most recently
referenced block always pushed to the top of the stack. Id. at 10. The
Robinson article discloses that a certain portion of the top part of the stack is
set as aside as the new section, a bottom part of the stack is defined as the
old section, and the remaining part of the stack between the new and old
sections is the middle section. Id. at 11. According to the Robinson article,
replacement choices are confined to those blocks that have aged into an
old section of the cache. Id. at 10.

3. Analysis
a. Claim 3
Claim 3 depends from claim 1 and further recites providing a driver
for decrementing a frequency factor after a time period of non-use of a
corresponding file. Petitioner asserts that Robinson 885 discloses this
limitation in that it discloses that in order to adapt to changes in the
underlying frequency distribution, all counts periodically may be
decremented or multiplied by a reduction factor. Pet. 61 (quoting Ex. 1007,
9:712), 64 (same). Petitioner also cites to Karedlas disclosure of
periodically adjusting reference counts so as to approximate reference
frequencies and avoid practical problems. Pet. 61 (quoting Ex. 1004, 135),
64 (same). Despite these citations, Petitioner does not show sufficiently that
either Karedla or Robinson 885 discloses decrementing a frequency factor
after a time period of non-use of a corresponding file, as claimed. Nor
does Petitioner rely on the Robinson article for disclosing this feature.
Additionally, Petitioner fails to demonstrate that the combined teachings of
the cited references would have taught the challenged limitation to one of

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ordinary skill in the art. We, therefore, determine that the information
presented does not show a reasonable likelihood that Petitioner would
prevail in demonstrating that subject matter of claim 3 would have been
obvious over Karedla, Robinson 885, and the Robinson article.
b. Claims 6, 15, and 16
Claim 6 requires scanning from a frequency factor corresponding to
a LRU file to a frequency factor corresponding to a MRU file. Claim 15
similarly requires the frequency factors are scanned from a frequency factor
for a LRU file to a frequency factor for a MRU file, not including a
frequency factor for the MRU file. As explained in Sections II.C.2.e and
II.C.2.g above, we determine that the information presented does not
establish a reasonable likelihood that Petitioner would prevail in showing
that claims 6 and 15 are unpatentable under 35 U.S.C. 102(b) as
anticipated by Karedla. Petitioner further asserts that the subject matter of
claims 6 and 15 would have been obvious in view of Karedla, Robinson
885, and the Robinson article. Pet. 57, 6466. Specifically, Petitioner
asserts that Robinson 885 discloses the claimed scanning by disclosing that
[f]inding a block to replace . . . consists of scanning the blocks (from LRU
to MRU) in each such LRU chain (in ascending count order) until a block is
found in the old section. Pet. 64, 66 (quoting Ex. 1007, 5:1518); see also
Ex. 1002 119 (same).
Having reviewed the record, we determine that the information
presented does not establish a reasonable likelihood that Petitioner would
prevail in showing that claims 6 and 15 are unpatentable under 35 U.S.C.
103(a) as obvious over Karedla, Robinson 885, and the Robinson article.
Petitioner fails to explain how the quoted passage from Robinson 885

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teaches the scan required by the claimsscanning from a frequency factor

corresponding to a LRU file to a frequency factor corresponding to a MRU
file, either including or not including the frequency factor for the MRU
filegiven that Robinson 885 discloses that the scan ends upon finding a
block in the old section. Robinson 885 discloses that the old section is
only part of the entire cache, as shown in Figure 2 below:

Figure 2 above illustrates a cache including three sections: a local

section, a middle section, and an old section. Ex. 1007, 4:645:1. Robinson
disclosesin a sentence preceding the one quoted by Petitioner
maintaining a separate LRU chain for blocks with a count of 1, another
separate LRU chain for blocks with a count of 2, and so forth up to the
preselected threshold count. Id. at 5:1014. Given that, according to
Robinson 885, the scan proceeds from LRU to MRU in each such LRU
chain until a block is found in the old section, blocks in the middle section
and local section may not be scanned, and, thus, the scan will not proceed to
a frequency factor corresponding to a MRU file, as required the claims. See
id. at 5:1018; see Prelim. Resp. 3537. Petitioner fails to provide any
explanation of how Robinson 885 would have taught this claim requirement
to a person of ordinary skill in the art in view of the express disclosure that
the scanning is up until a block is found in the old section. See Pet. 5766.

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Petitioners declarant simply repeats the statements from the Petition without
providing any further explanation, and thus, fails to help Petitioner carry its
burden. See Ex. 1002 184, 188. Petitioner also does not explain
sufficiently how the combination of Karedla, Robinson 885, and the
Robinson article teach this feature. See Pet. 5766. Accordingly, we
determine that the information presented does not establish a reasonable
likelihood that Petitioner would prevail in showing that the subject matter of
claims 6 or 15, or claim 16, which depends from claim 15, would have been
obvious over Karedla, Robinson 885, and the Robinson article.
c. Claims 7 and 13
Claim 7 depends from claim 4 and recites wherein the caching
method is self tuning. Claim 13 depends from claim 12 and recites that
program instructions for the caching method are self-tuning. Petitioner
asserts that Karedla discloses the self-tuning limitations as explained in
connection with the anticipation ground and asserts that Robinson 885 and
the Robinson article expressly teach[] a more complete description of these
elements. Pet. 57. Specifically, Petitioner cites to the disclosure in
Robinson 885 that in order to adapt to changes in the underlying frequency
distribution, all counts periodically may be decremented or multiplied by a
reduction factor. Id. at 61 (quoting Ex. 1007, 9:712); see also Ex. 1002
188 (same).
In its Preliminary Response, Patent Owner does not raise any
arguments specific to the limitations added by dependent claims 7 and 13.
See Prelim. Resp. 3435. The burden, however, remains on Petitioner to
demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.

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Having reviewed the record, we determine that the information

presented does not establish a reasonable likelihood that Petitioner would
prevail in showing that claims 7 and 13 are unpatentable under 35 U.S.C.
103(a) as obvious over Karedla, Robinson 885, and the Robinson article.
As explained above in connection with the anticipation ground, Petitioner
does not show sufficiently that Karedla discloses the claimed self-tuning.
See supra Section II.B.2.f. Petitioner also fails to show sufficiently that
Robinson 885 or the Robinson article discloses the self-tuning feature.
Petitioner merely quotes one sentence from Robinson 885 without
explaining how the described periodic decrementing of all reference counts
falls within the claimed self-tuning. See Pet. 61, 6466. Petitioners
declarant likewise simply quotes the one passage and fails to explain how
that passage discloses the claimed feature. See Ex. 1002 188. Thus,
Petitioner fails to demonstrate how the combined teachings of the cited
references would have taught the challenged limitations to one of ordinary
skill in the art.
d. Summary
For the above reasons, we determine that the information presented
does not establish a reasonable likelihood that Petitioner would prevail in
showing that claim 3, 6, 7, 13, 15, or 16 is unpatentable under 35 U.S.C.
103(a) as obvious over Karedla, Robinson 885, and the Robinson article.

F. Asserted Obviousness over either (i) Karedla and Otterness or

(ii) Burton, Karedla, and Otterness
Petitioner contends that claim 2 of the 745 patent is unpatentable
under 35 U.S.C. 103(a) as obvious over either (i) Karedla and Otterness or
(ii) Burton, Karedla, and Otterness. Pet. 34, 6770. Relying, in part, on

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the testimony of Dr. Franzon, Petitioner explains how the references

allegedly teach or suggest the claim limitations and provides purported
reasoning for combining the teachings of the references. Id. at 6770 (citing
Ex. 1002 191195).

1. Summary of Otterness
Otterness is a U.S. patent that issued October 1, 2002 from an
application filed September 30, 1999, and is prior art to the 745 patent
under 35 U.S.C. 102(e). Compare Ex. 1008, [22], [45], with Ex. 1001,
[22], [45]. Otterness discloses a multiple level caching method that
distributes caching operations across multiple processors to provide higher
input/output processing performance. Ex. 1008, 1:1017. Otterness
discloses using a cache line descriptor (CLD) to keep track of all of the data
stored in the cache. Id. at 9:2325.
Figure 5 of Otterness is shown below:

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Figure 5, above, illustrates an exemplary embodiment in which each

cache data line has its own associated CLD. Id. at 10:3637. Otterness
discloses that [t]he CLDs provide various pointers to manage data
movement. Id. at 9:4647. Otterness also discloses that the cache line
stores data (for example 8 kbyte, 16 kbyte, 32 kbyte, 64 kbyte, or the like of
data). Id. at 10:3740.

2. Analysis
Claim 2 recites [t]he method as recited in claim 1, wherein the
extended segments are one of 64 Kbytes, 128 Kbytes and 256 Kbytes in
size. Petitioner asserts that a person of ordinary skill in the art reading
Otterness would have understood that, although Otterness does not
expressly list out cache line sizes of 128 kbyte or 256 kbyte, a skilled

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artisan would have understood that Otternesss disclosure of or the like of

data refers to such sizes. Pet. 68 (citing Ex. 1002 193). Petitioner also
asserts that Karedla discusses multilevel caching and allocating memory
between a host cache and a controller cache, and that a person of ordinary
skill in the art would have found it obvious to combine the disclosure of
multiple level cache structure of Otterness with the method as taught by
Karedla. Id. at 69 (emphases omitted) (citing Ex. 1002 191). Petitioner
further asserts that a skilled artisan would have been motivated to combine
Otterness, Karedla, and Burton to improve the performance of systems
and that [t]his combination would have involved combining familiar
elements (e.g., multidevice controllers, cache memory, storage devices) and
familiar concepts (e.g., multilevel I/O caches, multilevel caching, or the like)
in a simple manner to yield the same predictable results. Id. at 69.
Petitioner also notes that the three references relate[] to the same field of
endeavor (using cache to enhance computer system performance). Id. at 68
(citing Ex. 1002 191).
In its Preliminary Response, Patent Owner does not raise any
arguments specific to the limitation added by dependent claim 2 or in
response to Petitioners assertions regarding the reasons to combine the
teachings of Otterness, Karedla, and Burton. See Prelim. Resp. 38. The
burden, however, remains on Petitioner to demonstrate unpatentability. See
Dynamic Drinkware, 800 F.3d at 1378.
Based on the current record, Petitioner shows sufficiently for
institution purposes that the combination of either Karedla and Otterness or
Burton, Karedla, and Otterness teaches wherein the extended segments are
one of 64 Kbytes, 128 Kbytes and 256 Kbytes in size. See, e.g., Ex. 1008,

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10:3740. As explained above, Petitioner sufficiently shows that Karedla

discloses reading extended segments of data as required by claim 1. See
supra Section II.B.2.b (analyzing a nearly identical limitation of claim 4).
Petitioner also shows sufficiently that the combination of Karedla and
Otterness teaches one of the specific sizes of the extended data segments,
as recited in claim 2. In addition, Petitioner and its declarant provide
sufficient reasons with rational underpinning for combining the teachings of
Karedla and Otterness or Burton, Karedla, and Otterness. See, e.g., Ex. 1002
191194. Thus, for these reasons and the reasons explained above in
connection with Petitioners contentions that claim 1 is unpatentable as
anticipated by Karedla or obvious over Karedla and Burton, the information
presented establishes a reasonable likelihood that Petitioner would prevail in
showing that claim 2 is unpatentable under 35 U.S.C. 103(a) as obvious
over Karedla and Otterness or over Burton, Karedla, and Otterness.

G. Petitioners Exhibit Citations

Throughout its Petition, Petitioner cites to exhibits by combining an
abbreviation for the word exhibit with the particular exhibit number (e.g.,
EX1002). By using this approach, Petitioner creates one word for what
would be counted as two words if the exhibit abbreviation and exhibit
number were separated by a space. Petitioners lead counsel certifies,
pursuant to 37 C.F.R. 42.24(d), that the word count for the Petition is
13,973. Pet. 2, 72.
Patent Owner argues that Petitioners exhibit citation format is non-
standard and that, [b]ecause more than 350 of these non-standard citations
appear in the Petition, the Petition is over the word limit by about 350 or
more words. Prelim. Resp. 41. Patent Owner also points out that Petitioner

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did not file a motion seeking to waive the word count. Id. at 41. Patent
Owner argues the Board should exercise its discretion to deny the Petition
or to impose another appropriate remedy. Id. at 42.
We agree with Patent Owner that Petitioner uses an atypical citation
format for its exhibit cites in that the common practice is to cite an exhibit
using a space separating the abbreviation for exhibit from the exhibit
number. We are, however, unaware of a requirement that an exhibit be cited
using two separate wordsone for an abbreviation of the word exhibit
and one for the exhibit number. We, therefore, decline to exercise our
discretion to deny the Petition, as requested by Patent Owner. We, however,
recognize a potential advantage of being able to use more words in a
submission by using this atypical exhibit citation practice. Accordingly, we
note that Patent Owner, in its Patent Owner Response in the inter partes
review instituted herein, may use a similar atypical format for citing to
exhibits. Moreover, we encourage Petitioner to use the common practice for
citing exhibits in its Reply and any other papers subsequently filed in the
proceeding.

III. CONCLUSION
For the above reasons, we determine that the information presented
establishes a reasonable likelihood that Petitioner would prevail in showing
that (i) claims 1, 4, 12, and 14 are unpatentable under 35 U.S.C. 102(b) as
anticipated Karedla, (ii) claims 1, 4, and 12 are unpatentable under
35 U.S.C. 103(a) as obvious over Burton and Karedla, and (iii) claim 2 is
unpatentable under 35 U.S.C. 103(a) as obvious over either Karedla and
Otterness or Burton, Karedla, and Otterness. We also determine that the
information presented does not show a reasonable likelihood that Petitioner

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would prevail in demonstrating the unpatentability of claims 3, 69, 11, 13,

and 1517 based on the asserted grounds.
At this preliminary stage, the Board has not made a final
determination with respect to the patentability of the challenged claims or
any underlying factual and legal issues.

IV. ORDER
Accordingly, it is:
ORDERED that pursuant to 35 U.S.C. 314(a), an inter partes
review is instituted as to (i) claims 1, 4, 12, and 14 of the 745 patent on the
ground of anticipation by Karedla, (ii) claims 1, 4, and 12 of the 745 patent
on the ground of obviousness over Burton and Karedla, (iii) claim 2 on the
ground of obviousness over Karedla and Otterness, and (iv) claim 2 on the
ground of obviousness over Burton, Karedla, and Otterness.
FURTHER ORDERED that no other ground set forth in the Petition is
authorized for inter partes review; and
FURTHER ORDERED that pursuant to 35 U.S.C. 314(c) and
37 C.F.R. 42.4, notice is hereby given of the institution of a trial, which
commences on the entry date of this decision.

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FOR PETITIONER:

P. Andrew Riley
James D. Stein
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
andrew.riley@finnegan.com
james.stein@finnegan.com
IV745-IPR@finnegan.com

Jonathan Stroud
UNIFIED PATENTS INC.
jonathan@unifiedpatents.com

FOR PATENT OWNER:

John R. King
Ted M. Cannon
KNOBBE, MARTENS, OLSON & BEAR, LLP
2jrk@knobbe.com
2tmc@knobbe.com
Tim R. Seeley
James R. Hietala
INTELLECTUAL VENTURES
tim@intven.com
jhietala@intven.com

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