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`EXHIBIT 9
`EXHIBIT 9
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`BEFORE THE PA TENT TRIAL AND APPEAL BOARD IN THE UNITED
`STATES PATENT AND TRADEMARK OFFICE
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`Trial No.:
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`IPR 2013-00596
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`In re:
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`U.S. Patent No. 7,802,310
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`Patent Owners:
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`PersonalWeb Technologies, LLC & Level 3 Communications
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`Petitioner:
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`Inventors:
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`Apple, Inc.
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`David A. Farber and Ronald D. Lachman
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`For: CONTROLLING ACCESS TO DATA IN A DATA PROCESSING SYSTEM
`* * * * * * * * * * *
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`December 26, 2013
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`PATENT OWNER'S PRELIMINARY RESPONSE
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`Patent Owner's Preliminary Response (U.S. Pat. No. 7,802,310)
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`TABLE OF CONTENTS
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`I.
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`II.
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`BACKGROUND ............................................................................................. 1
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`ALLEGED GROUNDS .................................................................................. 1
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`III. CLAIM CONSTRUCTIONS .......................................................................... 3
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`IV. THE EXAMINER CONSIDERED AND ALLOWED THE
`CHALLENGED CLAIMS OVER ALL ART RELIED UPON BY
`PETITIONER DURING ORIGINAL PROSECUTION OF THE '310
`PATENT .......................................................................................................... 7
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`V.
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`BROWNE AND LANGER ARE NOT "PRINTED
`PUBLICATIONS" ........................................................................................ 10
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`VI. LAW REGARDING ANTICIPATION ........................................................ 14
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`VII. GROUNDS 1-3 BASED ON BROWNE SHOULD NOT BE
`INSTITUTED ............................................................................................... 14
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`VIII. GROUNDS 4-6 BASED ON WOODHILL SHOULD NOT BE
`INSTITUTED ............................................................................................... 26
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`IX. GROUNDS 7-8 BASED ON LANGER SHOULD NOT BE
`INSTITUTED ............................................................................................... 3 8
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`X.
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`GROUND 9 BASED ON FARBER PUBLICATION WO 96/32685
`SHOULD NOT BE INSTITUTED ............................................................... 46
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`XI. CONCLUSION ............................................................................................. 47
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`PATENT OWNER'S EXHIBIT LIST
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`CERTIFICATE OF SERVICE
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`I. BACKGROUND
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`Pursuant to 37 C.F.R. § 42.107, PersonalWeb Technologies, LLC ("patent
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`owner" or "PO") submits this Preliminary Response to the petition seeking inter
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`partes review in this matter.
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`U.S. Patent No. 7,802,310 ("the '310 patent") has an effective filing date of
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`April 11, 1995 given its continuity. (Ex. 1001.) While patent owner (PO) reserves
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`the right to establish an earlier date of invention, an effective filing date of April
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`11, 1995 is assumed for purposes of this Preliminary Response (i.e., the "critical
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`date" is no later than April 11, 1995 for purposes of this submission).
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`Petitioner alleges that the challenged claims are not entitled to the claimed
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`April 11, 1995 priority date because of the term "hash" recited in the claims. (Pet.
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`53-54.) PO disagrees with petitioner in this respect, and responds to petitioner's
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`priority date argument in connection with Ground 9. PO's points regarding the
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`April 11, 1995 effective filing date of the challenged claims apply to all Grounds
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`alleged by petitioner.
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`PO notes that another petition for IPR is also pending regarding the '310
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`patent. (See IPR 2014-00062.)
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`II. ALLEGED GROUNDS
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`Petitioner has challenged claims 24, 32, 70, 81, 82 and 86 of the '310 patent
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`based on only, and limited to, the following alleged Grounds:
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`I
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`8.
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`Claims 24, 32, 70, 81, 82, and 86 are allegedly anticipated under
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`35 U.S.C. §102(a) by Browne (Ex. 1009).
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`Claims 24, 32, 70, 81, 82, and 86 are allegedly unpatentable as
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`obvious under 35 U.S.C. §103 over Browne (Ex. 1009).
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`Claims 24, 32, 70, 81, 82, and 86 are allegedly unpatentable as
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`obvious under 35 U.S.C. §103 over Browne (Ex. 1009) in view of
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`Stefik (Ex. 1013).
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`Claims 24, 32, 70, 81, 82, and 86 are allegedly anticipated under
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`35 U.S.C. §§ 102(b) and 102(e) by Woodhill (Ex. 1014).
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`Claims 24, 32, 70, 81, 82, and 86 are allegedly unpatentable as
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`obvious under 35 U.S.C. §103 over Woodhill (Ex. 1014).
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`Claims 24, 32, 70, 81, 82, and 86 are allegedly unpatentable as
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`obvious under 35 U.S.C. §103 over Woodhill (Ex. 1014) in view
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`of Stefik (Ex. 1013 ).
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`Claims 24, 32, 70, 81, 82, and 86 are allegedly anticipated under
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`35 U.S.C. § 102(b) by Langer (Ex. 1015).
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`Claims 24, 32, 70, 81, 82, and 86 are allegedly unpatentable as
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`obvious under 35 U.S.C. §103 over Langer (Ex. 1015) in view of
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`Stefik (Ex. 1013).
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`9.
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`Claims 24, 32, 70, 81, 82, and 86 are allegedly anticipated under
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`35 U.S.C. § I 02(b) by Farber publication WO 96/32685 (Ex. 1033)
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`[note: the Farber publication is alleged by petitioner to be a
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`publication of the priority application of the '310 patent].
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`III. CLAIM CONSTRUCTIONS
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`Currently, the claims of the unexpired '310 patent are to be given their
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`"broadest reasonable construction in light of the specification." 3 7 C.F .R. §
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`42.1 00(b ). Patent Owner has applied that standard in this paper.
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`Under the broadest reasonable construction standard, claim terms are
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`presumed to be given their ordinary and customary meaning as would be
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`understood by one of ordinary skill in the art at the time of the invention. Phillips
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`v. AWHCorp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en bane). However, the
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`inventor may rebut that presumption by providing a definition of the term in the
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`specification with reasonable clarity, deliberateness, and precision. In re Paulsen,
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`30 F.3d 1475, 1480 (Fed. Cir. 1994).
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`The specification of the '310 patent provides a definition for at least the
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`following term in the chart below with reasonable clarity, deliberateness, and
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`precision (i.e., the inventors were their own lexicographer):
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`Claim Term
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`"data item"
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`Correct Construction
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`Sequence of bits. ('310 patent, col. 2:16-17.) As the
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`( claims 24, 32, 70)
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`Board explained in its June 5, 2013 Decision in IPR
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`2013-00082, the "sequence of bits" may include any of
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`the following which represent examples in a non-
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`exhaustive list: (1) the contents of a file; (2) a portion of
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`a file; (3) a page in memory; ( 4) an object in an object-
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`3
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`oriented program; (5) a digital message; (6) a digital
`scanned image; (7) a part of a video or audio signal; (8) a
`directory; (9) a record in a database; (10) a location in
`memory or on a physical device; ( 11) any other entity
`which can be represented by a sequence of bits. (See
`June 5, 2013 Dec. in IPR 2013-00082 at 2-3 [Ex. 2008];
`and May 17, 2013 Dec. in IPR 2013-00082 at 14-15 [Ex.
`2009].)
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`During prosecution of family member U.S. Patent
`No. 7,949,662, applicant and the USPTO Examiner made
`clear that the "data item" may be "any sequence of bits"
`and that "the data item may represent any type/kind of
`data." See, in Ex. 2004, the§ 112 rejection in the Office
`Action dated Sept. 14, 2007, the response thereto, and
`then the Examiner's withdrawal of the§ 112 rejection on
`page 21 of the Office Action dated July 3, 2008. (Ex.
`2004.)
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`The "data item" construction set forth above is correct and should be
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`adopted.
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`Additionally, petitioner proposes overly broad constructions for "selectively
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`permitting" in claim 70 and to "selectively allow" in claims 81 and 86.
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`'"Selectively permitting . .. "(claim 70)
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`PO disagrees with petitioner's proposed construction for "selectively
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`permitting", because petitioner's construction ignores the plain language of claim
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`70. Petitioner contends that "selectively permitting" in claim 70 of the '310 patent
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`should be construed as "permitting based on whether a condition is met"
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`( emphasis added). Petitioner's construction incorrectly ties the "selectively
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`permitting" to be whether any condition is met, and ignores the context of
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`"selectively." However, claim 70 reads as follows:
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`"(A) ... determining whether the content-based identifier for the
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`particular data item corresponds to an entry in a database comprising
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`a plurality of content-based identifiers; and (B) based at least in part
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`on said determining in step (A), selectively permitting the particular
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`data item to be accessed at or by one or more computers in the
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`network ... " ( emphasis added)
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`Petitioner's construction improperly attempts to read the above-underlined
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`language of claim 70 out of the claim. Petitioner would have the Board construe
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`claim 70 so that the "permitting" is performed based on whether any condition is
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`met Contrary to petitioner's construction, the plain language of claim 70 requires
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`that the "selectively permitting ... " is performed based at least on whether a very
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`particular condition is met- namely, whether in step (A) it was determined that the
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`content-based identifier for the data item (i) did correspond to an entry in a
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`database comprising a plurality of content-based identifiers, or (ii) did not
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`correspond to an entry in the database. In other words, the plain language of the
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`claim requires permitting the data item to be accessed when one of conditions (i)
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`and (ii) is determined in step (A), and not permitting the data item to be accessed
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`when the other of conditions (i) and (ii) is determined in step (A). "Selectively
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`permitting ... " in claim 70 is not based on some unspecified "condition."
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`Petitioner's construction is incorrect because it conflicts with the plain language of
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`the claim.
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`'-Selectively allow . .. "(claims 81 and 86)
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`PO also disagrees with petitioner's proposed construction for "selectively
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`allow", because petitioner's construction ignores the plain language of the claims.
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`Petitioner contends that to "selectively allow" in claims 81 and 86 of the '310
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`patent should be construed as "permitting based on whether a condition is met"
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`( emphasis added). Contrary to petitioner's construction, to "allow" in claims 81
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`and 86 is not based on whether any condition is met. And petitioner ignores the
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`context of "selectively" in the claims. For example, claim 81 reads as follows:
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`to ... (b) compare the content-based identifier of the particular
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`sequence of bits to a plurality of values; and to ( c) selectively allow
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`said particular sequence of bits to be provided or accessed by other
`devices depending on whether or not said content-dependent
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`identifier corresponds to one of the plurality of values." ( emphasis
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`added)
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`Petitioner;s construction improperly attempts to read the above-underlined
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`language of claim 81 out of the claim. Petitioner would have the Board construe
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`claim 81 so that to "allow" is performed based on whether any condition is met.
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`Contrary to petitioner's construction, the plain language of claim 81 requires the
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`device to selectively allow the sequence of bits to be provided or accessed by other
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`devices depending on whether in step (b) the content-based identifier of the
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`particular sequence of bits (i) did correspond to one of the plurality of values, or
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`(ii) did not correspond to one of the plurality of values. In other words, the plain
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`language of claim 81 requires the device to allow the sequence of bits to be
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`provided/accessed when one of conditions (i) and (ii) occurs, and not allow the
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`sequence of bits to be provided/accessed when the other of conditions (i) and (ii)
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`occurs. Petitioner's construction of to "selectively allow" in claim 86 is similarly
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`flawed. To "selectively allow ... " in claims 81 and 86 is not based on some
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`unspecified "condition." Petitioner's construction is again incorrect because it
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`conflicts with the plain language of these claims.
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`PO expressly reserves its right to provide its constructions for the other
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`terms identified by petitioner ("digital identifier", "content-based identifier", and
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`"content-dependent name") in its response under Rule 42.120 should this
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`proceeding be instituted as to any applicable claim.
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`IV. THE EXAMINER CONSIDERED AND ALLOWED THE
`CHALLENGED CLAIMS OVER ALL ART RELIED UPON BY
`PETITIONER DURING ORIGINAL PROSECUTION OF THE '310
`PATENT
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`All art relied upon by petitioner was considered by the Examiner during
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`original prosecution of the '310 patent, in its exact or cumulative form. Thus, the
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`Examiner already properly allowed the challenged claims over all art upon which
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`petitioner relies. As part of its consideration of whether to institute, the Board may
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`take into account that the art relied upon by petitioner was already considered by
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`the Examiner. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48765
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`(Aug. 14, 2012).
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`Browne (Ex. 1009) was already considered by the Examiner during original
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`prosecution of the '310 patent, and the Examiner properly allowed the challenged
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`claims over Browne. (Ex. 1001 at 3; and Ex. 1016 at pgs. 0093, 0139 and 0660.)
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`Woodhill (U.S. Patent No. 5,649,196, Ex. 1014) was already considered by
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`the Examiner during original prosecution of the '310 patent, and the Examiner
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`properly allowed the challenged claims over Woodhill. (Ex. 1001 at 2; and Ex.
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`1016 at pgs. 0089, 0135, and 0656.) Woodhill's WO counterpart (WO 95/01599)
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`was also considered by the Examiner during original prosecution of the '310
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`patent. (Ex. 1001 at 3; and Ex. 1016 at pg. 0107.)
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`Langer (Ex. 1015) was already considered by the Examiner during original
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`prosecution of the '310 patent, and the Examiner properly allowed the challenged
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`claims over Langer. (Ex. 1001 at 3; and Ex. 1016 at pgs. 0091, 0137, and 0658.)
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`U.S. Patent No. 5,978,791 to Farber (cumulative of the Farber WO
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`publication at Ex. 1033), and numerous other Farber publications equivalent to Ex.
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`103 3, were already considered by the Examiner during original prosecution of the
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`'310 patent, and the Examiner properly allowed the challenged claims over the
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`Farber publications. (Ex. 1001 at 2; and Ex. 1016 at pgs. 0089 and 0135.) It can
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`be seen by comparing the two exhibits that U.S. Patent No. 5,978,791 (Ex. 2010) is
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`equivalent to the WO Farber publication (Ex. 1033), with respect to both content
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`and both being published well before the alleged October 31, 2007 filing date of
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`the '310 application.
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`U.S. Patent No. 5,638,443 to Stefik et al. (Ex. 2011) was already considered
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`by the Examiner during original prosecution of the '310 patent, and the Examiner
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`properly allowed the challenged claims over Stefik et al. (Ex. 1001 at 2; Ex. 1016
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`at pgs. 0088 and 0134; and Ex. 2011.) U.S. Patent No. 5,638,443 to Stefik et al.
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`(Ex. 2011) is cumulative of ( equivalent to) the Stefik et al. reference (Ex. 1013)
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`cited by petitioner. It can be seen by comparing the two exhibits that U.S. Patent
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`No. 5,638,443 to Stefik et al. (Ex. 2011) is equivalent to U.S. Patent No. 7,359,881
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`to Stefik et al. (Ex. 1013), with respect to both content and the alleged 102(e) date.
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`The drawings and specifications ofExs. 1013 and 2011 are virtually identical, as
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`both have the same drawings ( other than certain lead line shapes) and the same
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`specification ( other than differences in the summary, abstract and claim sections).
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`Everything upon which petitioner relies in Stefik '881 is present in Stefik '443 and
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`was thus considered by the Examiner during the original prosecution of the '310
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`patent.
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`Petitioner does not introduce any new art. Instead, petitioner has essentially
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`copied art that the Examiner already considered. As explained above, all art upon
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`which petitioner relies was considered by the Examiner during original prosecution
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`of the '310 patent, and the Examiner properly allowed the challenged claims over
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`this art. Institution should be denied given that the Examiner is already presumed
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`to have considered all art relied upon by petitioner, especially given the flaws in
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`that art which are discussed herein.
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`V. BROWNE AND LANGER ARE NOT "PRINTED PUBLICATIONS"
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`There is no evidence establishing that Browne and Langer are prior art
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`"printed publications." Petitioner has not met its burden of establishing that these
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`are prior art "printed publications." 37 C.F.R. §42.l(d).
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`Because Browne and Langer have not been established as prior art "printed
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`publications", institution should be denied for all asserted Grounds (i.e., Grounds
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`1-3 and 7-8) that rely wholly or in part on any of Browne and Langer. Synopsys,
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`Inc. v. Mentor Graphics Corp., IPR2012-00042 (Paper No. 16), at *35-36 (PTAB
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`Feb. 22, 2013) (denying institution based on a document where petitioner did not
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`establish that it was a "printed publication"). See also SRI Int 'l, Inc. v. Internet
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`Sec. Sys., Inc., 511 F.3d 1186, 1195-98 (Fed. Cir. 2008) (finding that a paper
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`posted on an open FTP site was not a "printed publication", e.g., due to
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`insufficient evidence of public accessibility via a customary search and insufficient
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`evidence of cataloguing or indexing in a meaningful way); and ResQNet.com, Inc.
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`v. Lansa, Inc., 594 F.3d 860, 865-66 (Fed. Cir. 2010) (finding that a user manual
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`was not a "printed publication").
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`An inter partes review may only be requested on the basis of prior art
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`consisting of patents or printed publications. 35 U.S.C. § 311 (b ). Thus, the statute
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`itself precludes institution based on a document which has not been established as
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`a patent or printed publication. Browne and Langer certainly are not patents. And
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`because neither has been established as a prior art "printed publication", the
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`petition should be denied as to Grounds 1-3 and 7-8.
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`"Public accessibility" is a touchstone of determining whether a reference
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`constitutes a "printed publication." SRI Int 'l, 511 F .3d at 1194. "A given
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`reference is 'publicly accessible' upon a satisfactory showing that such document
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`has been disseminated or otherwise made available to the extent that persons
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`interested and ordinarily skilled in the subject matter or art exercising reasonable
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`diligence, can locate it." Id. Factors considered in the "printed publication"
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`inquiry include whether the document was catalogued or indexed in a meaningful
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`way, and whether a customary search prior to the critical date would have turned
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`up the document. Id. at 1195-98. In SRI Int 'l, for example, the Federal Circuit
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`explained that a paper posted on an open FTP site was not a "printed publication"
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`because it was not catalogued or indexed in a meaningful way and there was no
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`evidence that a customary search would have uncovered it prior to the critical date.
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`Id.
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`As in Synopsys, SRI lnt'l and ResQNet, petitioner has presented no
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`testimony, declaration, or other evidence that any of Browne or Langer was
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`catalogued or indexed in a meaningful way prior to the critical date, or that any of
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`these would have turned up in a customary search prior to the critical date, or that
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`persons interested and ordinarily skilled in the art exercising reasonable diligence
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`would have located any of these documents prior to the critical date. There is no
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`evidence of any search engines, server accessibility, or search techniques for
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`searching by subject matter that were even in existence prior to April 11, 1995 or
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`which could have used to access any of these documents. There is no declaration
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`from any alleged author of any of these documents stating when these documents
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`were created, or to whom they were ever sent.
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`Additionally, the documents themselves support patent owner's point that
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`they are not prior art "printed publications."
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`The Browne document has no date on it indicating when it was allegedly
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`created. Moreover, petitioner's argument that Browne was "published" in
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`February 1995 is contrary to the Browne document itself, because the final page of
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`Browne cites to reference [7] dated "Mar. 1995." (Ex. 1009 at 7.) It is unclear
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`how Browne could have been allegedly "published" in February 1995 as alleged
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`by petitioner, when the document itself has no date on it and references a document
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`from "Mar. 1995" - Browne was undoubtedly created well after the publication
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`date alleged by petitioner. Indeed, a third party (Bea Systems, Inc.) cited the exact
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`same Browne document as having an "Aug. 1995" date, which is well after the
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`critical date, during prosecution of U.S. Patent No. 7,318,237. (Ex. 2002.) The
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`third party's identification of an "Aug. 1995" date for the very same Browne
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`document is yet another indication that petitioner's allegation that Browne
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`published in February of 1995 is incorrect and without basis. (Ex. 2002.) The
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`should be no institution regarding Browne, especially given that: (a) those in the
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`art believed that Browne was dated "Aug. 1995" which is after the '310 patent's
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`effective filing date, (b) Browne has no creation or publication date on it, and ( c)
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`Browne references a date after its alleged publication date - all of which call into
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`serious question petitioner's allegations regarding Browne.
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`Langer is also flawed for the reasons explained above. Langer was allegedly
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`printed off the Internet in 2003 based on the "7/29/2003" date in the lower-right
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`corner of the document. However, there is no evidence of Langer having been in
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`existence or being publicly accessible prior to the April 11, 1995 effective filing
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`date of the patent. There is no evidence of anyone seeing or receiving Langer prior
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`to its apparent printing on July 29, 2003 from "groups.google.com ... " as
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`suggested on the bottom of each page in Langer. The July 29, 2003 date is well
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`after the critical date. Whether a document could have been accessed and printed
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`some seven years after the critical date is of no moment. The fact that Langer is
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`inexplicably missing the Usenet "path" header (required by the standard) raises
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`further suspicions about the document. Moreover, even if Langer was provided to
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`"alt.sources.cl" or "comp.archives" (there is no evidence that it was), this does not
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`mean it qualifies as a "printed publication" for the reasons described by the
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`Federal Circuit. In SRI Int 'l, the court explained that a document posted on an
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`open site was not a "printed publication" because it was not catalogued or indexed
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`in a meaningful way and there was no evidence that a customary search would
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`have uncovered it prior to the critical date. SRI Int'l, 511 F.3d at 1195-98.
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`Accordingly, the petition should be denied as to Grounds 1-3 and 7-8
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`because Browne and Langer have not been established as "printed publications."
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`VI. LAW REGARDING ANTICIPATION
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`"A claim is anticipated only if each and every element as set forth in the
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`claim is found, either expressly or inherently described, in a single prior art
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`reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631
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`(Fed. Cir. 1987). A feature is "inherent" in a reference only if that feature is
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`"necessarily present" in the reference, "not merely probably or possibly present."
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`Trintec Indus., Inc. v. Top-US.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002).
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`Furthermore, in order to anticipate, a prior art reference must not only disclose all
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`elements of the claim, but must also disclose those elements "arranged as in the
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`claim." Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).
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`VII. GROUNDS 1-3 BASED ON BROWNE SHOULD NOT BE
`INSTITUTED
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`There are certain fundamental differences between the '310 patent and
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`Browne which will be explained more fully below in addressing the challenged
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`claims. As a first example, the '310 patent describes a True Name system that
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`controls access to and delivery of data items using True Names that are based on
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`bits of corresponding data items. The system of the '310 patent determines
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`whether access to a given data item is authorized/unauthorized based at least on
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`whether the True Name for that data item corresponds to one or more values in a
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`comparison. Once authorized, access is granted to the data item. However, if
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`unauthorized, the system of the '310 patent denies access to the data item. Browne
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`fails to disclose anything akin to this.
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`As another example, the '310 patent describes the use of True Names for
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`corresponding data items so that two identical data items will have the same True
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`Name. In contrast, Browne uses a Location Independent File Name (LIFN) for a
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`file which is based on both data of the file and additional external information
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`including a naming authority identifier (publisher ID). Because of the additional
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`information (publisher ID) making up the LIFN in Browne, two identical files in
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`Browne from different publishers will not have the same LIFN - directly contrary
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`to the challenged claims. Browne is thus problematic for the reasons explained in
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`the background of the patent. (E.g., '310 patent at col. 2:26-31; and col. 2:41-43.)
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`Even if, for the sake of argument, Browne was considered to be a "printed
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`publication" (which it is not, for the reasons explained above), the Grounds based
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`on Browne still fail because they are flawed from a technical perspective and do
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`not meet the claims. The Examiner was correct in allowing the challenged claims
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`over Browne and Stefik during original prosecution of the '310 patent.
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`Claim 24
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`Petitioner does not provide a detailed analysis of claim 24, does not provide
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`a claim chart for claim 24, and ignores significant portions of the claim. Claim 24
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`states as follows, inter alia:
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`"(a) using a processor, receiving ata first computer from a second computer,
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`a request regarding a particular data item, said request including at least a
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`content-dependent name for the particular data item, the content-dependent
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`name being based, at least in part, on at least a function of the data in the
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`particular data item ... wherein the function that was used comprises a
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`message digest function or a hash function, and wherein two identical data
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`items will have the same content-dependent name; and (b) in response to
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`said request: (i) causing the content-dependent name of the particular data
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`item to be compared to a plurality of values; (ii) hardware in combination
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`with software determining whether or not access to the particular data item
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`is unauthorized based on whether the content-dependent name of the
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`particular data item corresponds to at least one of said plurality of values,
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`and (iii) based on said determining step (ii), not allowing the particular data
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`item to be provided to or accessed by the second computer if it is determined
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`that access to the particular data item is not authorized." (emphasis added.)
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`For example, see the specification of the '310 patent at: Abstract; element 136 in
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`Fig. 1 (b ); Fig. 9; col. 8 :60-62; col. 11 :33-44; and col. 31 :3-32. Browne fails to
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`disclose or suggest at least the above-italicized subject matter of claim 24.
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`Petitioner never alleges what elements in Browne allegedly meet the
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`following elements of claim 24: (i) first computer, (ii) second computer, (iii)
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`plurality of values, and (iv) clauses (b)(i)-(iii). Petitioner's attempt to brush claim
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`24 under the rug is not surprising, since claim 24 cannot be read in any reasonable
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`manner on Browne. Despite the lack of any detailed analysis regarding claim 24
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`and the Browne Grounds in petitioner's papers, PO attempts to address the merits
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`of the Browne Grounds regarding claim 24 as follows.
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`First, Browne fails to disclose or suggest "(iii) ... not allowing the
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`particular data item to be provided to or accessed by the second computer if it is
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`determined that access to the particular data item is not authorized' as required by
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`claim 24. Petitioner's attempt to ignore this italicized claim language is
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`particularly telling. Browne never makes any determination that access to a given
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`data item is "not authorized." To the contrary, Browne never makes any
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`determinations regarding authorization, much less using a LIFN (the alleged
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`content-dependent name). At least because Browne never determines that access
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`to a data item is "not authorized", Browne also fails to disclose or suggest "not
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`allowing" a data item to be provided to or accessed by a given computer based on
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`such a determination. Given that Browne never uses a LIFN comparison to
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`determine that access to a given data item is "not authorized", Browne certainly
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`does not base any such determination on "said determining step (ii)" as required by
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`claim 24. And there would have been no logical reason to have modified Browne
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`to have met claim 24 in these respects. Petitioner's obviousness allegations in
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`Ground 2 cannot cure these flaws in Browne. (Pet. 24-25.) Grounds 1-2 are
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`fundamentally flawed for at least this first set of reasons.
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`To the extent that petitioner were to contend that the above-italicized subject
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`matter of claim 24 would be met by a file access system that merely accesses files
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`via their names (petitioner appears to argue this on page 23 of the petition
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`regarding claim 24), such an argument would be in direct conflict with the file
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`history of the '310 patent. The file history of the '310 patent makes clear that
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`determining, based at least on a name, whether access to a data item is authorized
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`is NOT met by a file access system that s