Case 5:18-md-02834-BLF Document 412-11 Filed 04/22/19 Page 1 of 23
`Case 5:18-md-02834-BLF Document 412-11 Filed 04/22/19 Page 1 of 23
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`EXHIBIT 10
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`Case 5:18-md-02834-BLF Document 412-11 Filed 04/22/19 Page 1 of 23
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`EXHIBIT 10
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`Case 5:18-md-02834-BLF Document 412-11 Filed 04/22/19 Page 2 of 23
`Case 5:18-md-02834-BLF Document 412-11 Filed 04/22/19 Page 2 of 23
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD IN THE UNITED
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`STATES PATENT AND TRADEMARK OFFICE
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`Trial No.:
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`IPR 2013-00084
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`In re:
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`USS. Patent No. 7,945,544
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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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`EMCCorporation
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`Inventors:
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`David A. Farber and Ronald D. Lachman
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`For: SIMILARITY-BASED ACCESS CONTROL OF DATAIN A DATA
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`PROCESSING SYSTEM
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`at
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`March 20, 2013
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`2020057
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`Case 5:18-md-02834-BLF Document 412-11 Filed 04/22/19 Page 3 of 23
`Case 5:18-md-02834-BLF Document 412-11 Filed 04/22/19 Page 3 of 23
`Patent Owner’s Preliminary Response (U.S. Pat. No. 7,945,544)
`IPR 2013-00084
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`TABLE OF CONTENTS
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`Page
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`TL.
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`BACKGROUND.ocssccssseccssssescossssscessssesssssuvessrivesesusvesssisessssivesssasesestsvessesueeeeen 1
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`I.
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`ASSERTED GROUNDS ....cccssssesssssssessssseessssesssssevsssresessvevesarstessstseessseeseen 2
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`TIT.
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`CLAIM CONSTRUCTIONS .o.cc.cccccsscssssssecssssseessssesssssesesevsevesssssesestsvesessseeeen 2
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`IV. KANTOR, LANGER AND BROWNE ARE NOT“PRINTED
`PUBLICATIONS”. ..eccssssesssssssecsssssesesssecessrsecessvevesarsvessssessaraeesssueesstsiesesenveeeen 4
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`V.
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`LAW REGARDING ANTICIPATION.....cccssscccssssecsssseesssevesssseesestsveseesveseen 9
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`VI.
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`THE GROUNDS BASED ON BROWNE DO NOT MEET CLAIM1.......10
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`VI. WOODHILL DOES NOT ANTICIPATE CLAIM 1 v.cccesssscssseecseseessseneee 13
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`VIII. CONCLUSION, .ccccccccsssesessssesecssssessesssseesstseessssivessssseessrivessssivesssivesssisesesesvvees 19
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`PATENT OWNER’S EXHIBIT LIST
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`CERTIFICATE OF SERVICE
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`Case 5:18-md-02834-BLF Document 412-11 Filed 04/22/19 Page 4 of 23
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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” ) submits this Preliminary Response to the petition seeking inter partes
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`review in this matter. This filing is timely, as it is being filed within three months
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`of the December 21, 2012 “Notice of Filing Date Accorded to Petition and Time
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`for Filing Patent Owner Preliminary Response.”
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`U.S. Patent No. 7,945,544 (“the ‘544 patent”) has an effective filing date of
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`April 11, 1995 given its continuity.
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`(Ex. 1001.) Petitioner! does not disputethis,
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`and acknowledgesthat the ‘544 patent 1s based on an application that was
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`originally filed on April 11, 1995. (Pet. 12.) And petitioner’s declarant, Mr. Clark,
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`states that “the ‘544 patent is considered to have been filed on April 11, 1995 for
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`the purposes of determining whether a reference will qualify as prior art.” (Ex.
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`1009 at 3-4.) Accordingly, while patent owner reserves the right to establish an
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`earlier date of invention, an effective filing date of April 11, 1995 is assumedfor
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`purposesof this Preliminary Response(1.e., the “critical date” 1s no later than April
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`11, 1995 for purposes of this submission).
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`' “Petitioner” herein refers to the petitioner expressly identified in the petition.
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`Patent ownerreservesthe right to establish that there are other real parties in
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`interest and/or that other parties are in privy with the expressly identified
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`petitioner.
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`1
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`Case 5:18-md-02834-BLF Document 412-11 Filed 04/22/19 Page 5 of 23
`Patent Owner’s Preliminary Response (U.S. Pat. No. 7,945,544)
`IPR 2013-00084
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`IL ASSERTED GROUNDS
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`Petitioner has challenged claim 1 of the ‘544 patent based on only, and
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`limited to, the following alleged Grounds:
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`1.
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`Claim 1 1s allegedly anticipated under 35 U.S.C. §102(b) by
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`Kantor (Ex. 1004).
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`Claim 1 is allegedly unpatentable as obvious under 35 U.S.C. §103
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`over Kantor (Ex. 1004) in view of Woodhill (Ex. 1005).
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`Claim 1 1s allegedly anticipated under 35 U.S.C. §102(a) by
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`Browne (Ex. 1002).
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`Claim 1 is allegedly unpatentable as obvious under 35 U.S.C. §103
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`over Browne (Ex. 1002) in view of Woodhill (Ex. 1005).
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`Claim 1 1s allegedly anticipated under 35 U.S.C. §102(b) by
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`Langer (Ex. 1003).
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`Claim 1 1s allegedly unpatentable as obvious under 35 U.S.C. §103
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`over Langer (Ex. 1003) in view of Woodhill (Ex. 1005).
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`Claim 1 is allegedly anticipated under 35 U.S.C. §102(e) by
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`Woodhill (Ex. 1005).
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`Il. CLAIM CONSTRUCTIONS
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`In this proceeding, the claims of the unexpired ‘544 patent are to be given
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`their “broadest reasonable construction 1n light of the specification.” 37 C.F.R. §
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`42.100(b). Patent Owner has applied that standard.
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`Patent Owner’s Preliminary Response (U.S. Pat. No. 7,945,544)
`IPR 2013-00084
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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. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). 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. Jn re Paulsen,
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`30 F.3d 1475, 1480 (Fed. Cir. 1994). The specification of the patent provides
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`definitions of at least the following terms in the challenged claims with reasonable
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`clarity, deliberateness, and precision(1.e., the inventors were their own
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`lexicographer):
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`Correct Construction
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`(Pet. 6.)
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`“data” and “data item”|Sequence of bits. (‘544 patent at col. 2:17-18.) Petitioner
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`(claim 1)
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`and patent owner appear to agree on this construction.
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`Inexplicably, petitioner also identifies proposed constructions for the terms
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`“True Name”, “data identity” and “data identifier.” However, these terms are not
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`recited in any challenged claim and patent owner 1s unaware of any reason to
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`construe them in this proceeding at this juncture. In any event, patent owner has
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`provided the correct constructions for “True Name” and “data identifier” in its
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`Preliminary Response in IPR 2013-00085 wherethe termsare recited in claim(s).
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`Patent Owner’s Preliminary Response (U.S. Pat. No. 7,945,544)
`IPR 2013-00084
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`IV. KANTOR, LANGER AND BROWNE ARE NOT “PRINTED
`PUBLICATIONS”
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`There 1s no evidence establishing that Kantor (Ex. 1004), Langer (Ex. 1003)
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`and Browne (Ex. 1002) are prior art “printed publications.” Despite having a year
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`to prepare andfile its petition, petitioner has provided no such evidence and has
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`not shown that any of these qualify as prior art “printed publications.” It is
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`petitioner’s burden to establish that these are prior art “printed publications”;
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`petitioner has not met its burden. 37 C.F.R. §42.1(d).
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`Because Kantor, Langer and Brownehave not been established as prior art
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`“printed publications”, institution should be denied for all asserted Grounds(1.e.,
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`Grounds 1-6) that rely wholly or in part on any of Kantor, Langer, and Browne.
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`Svnopsys, Inc. v. Mentor Graphics Corp., IPR2012-00042 (Paper No. 16), at *35-
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`36 (PTAB Feb. 22, 2013) (denying institution based on a document where
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`petitioner did not establish that it was a “printed publication”). See also SRI Int 7,
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`Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1195-98 (Fed. Cir. 2008) (finding
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`that a paper posted on an open FTP site was not a “printed publication”, e.g., due
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`to insufficient evidence of public accessibility via a customary search and
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`insufficient evidence of cataloguing or indexing in a meaningful way), and
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`kesQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 865-66 (Fed. Cir. 2010) (finding
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`that a user manual 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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`Patent Owner’s Preliminary Response (U.S. Pat. No. 7,945,544)
`IPR 2013-00084
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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. Kantor, Langer and Brownecertainly are not
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`patents. And because there 1s no evidencethat any of these unauthenticated
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`documents qualifies as a prior art “printed publication”, the statute requires that the
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`petition must be denied as to Grounds 1-6.
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`“Public accessibility” is a touchstone of determining whether a reference
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`constitutes a “printed publication.” SRI {nt 7, 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.” /d. Factors considered in the “printed publication”
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`inquiry include whether the document wascatalogued 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.
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`/d. at 1195-98. In Sk/ Int 7, for example, the Federal Circuit
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`explained that a paper posted on an open FTPsite 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 uncoveredit prior to the critical date.
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`Td.
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`As in Synopsys, SRI Int tT and ResONet, petitioner has presented no
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`testimony, declaration, or other evidence that any of Kantor (Ex. 1004), Langer
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`(Ex. 1003) or Browne (Ex. 1002) was catalogued or indexed in a meaningful way
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`Patent Owner’s Preliminary Response (U.S. Pat. No. 7,945,544)
`IPR 2013-00084
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`prior to the critical date, or that any of these would have turned up in a customary
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`search prior to the critical date, or that persons interested and ordinarily skilled in
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`the art exercising reasonable diligence would have located any of these documents
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`prior to the critical date. There is no evidence of any search engines, server
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`accessibility, or search techniques for searching by subject matter that were even in
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`existence prior to April 11, 1995 or which could have been used to access any of
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`these three documents. There is no declaration from any alleged author of any of
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`these documents stating when these documents were created, or to whom they
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`were ever sent. And there is no evidence that any person skilled in the art even
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`accessed or received any of these documents prior to the critical date.
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`Under 37 C.F.R. § 42.62, the Federal Rules of Evidence apply to the
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`admissibility of evidence allegedly supporting petitioner’s affirmative case. Here,
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`petitioner has failed to establish that any of these three documents wassufficiently
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`publicly accessible prior to the critical date to constitute a prior art “printed
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`publication.” Notestimony (e.g., declarations or other testimony) has been
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`provided by petitioner in any of these respects. While petitioner provides attorney
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`argument to support its allegations, it 1s well established that attorney argumentis
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`neither evidence nor a substitute for evidence. Sharp Corp. v. AU Optronics
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`Corp., 2005 WL 1457747, *3 (N.D. Cal. 2005) (denying Defendants’ motion for
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`summary judgment of invalidity because Defendants did not submit testimony in
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`support of their invalidity arguments).
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`Patent Owner’s Preliminary Response (U.S. Pat. No. 7,945,544)
`IPR 2013-00084
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`The Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48763 (Aug.
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`14, 2012), explains that “[t]he Board expects that most petitions and motions will
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`rely upon affidavits of experts.” Nevertheless, petitioner here has provided no
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`affidavits/declarations to establish that any of these documents qualify as prior art
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`“printed publications.”
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`Moreover, the fact that patent owner may have submitted a version of
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`Browne and Langer to the Examiner in an IDS during original prosecution of the
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`*544 patent does not somehow convert these documents into printed publications.
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`ResONet.com, 594 F.3d at 866.
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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.” Kantor, by its own words, is merely a
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`computer “file.” (Ex. 1004 at 22.) The printout of Kantor submitted by petitioner
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`has not been authenticated/certified in any respect, and 1s thus inadmissible under
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`37 C.F.R. §42.61(a)-(b). Moreover, there 1s no indication in Kantoritself
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`regarding to whom, or when, the “file” was ever disseminated. And there is no
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`indication in the Kantor documentthat it was ever catalogued or indexed in a
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`meaningful way, or that it would have turned up in a customary search prior to the
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`critical date. Nor is there any indication in Kantor of any search engine or search
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`technique for searching by subject matter that could have been used to access
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`Kantor prior to the critical date.
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`Patent Owner’s Preliminary Response (U.S. Pat. No. 7,945,544)
`IPR 2013-00084
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`Langer is flawed for the same reasons discussed above. Additionally, any
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`allegation that someone may have printed Langer via “groups.google.com .. .” on
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`July 29, 2003 as suggested on the bottom of each page in Langer1s irrelevant,
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`because that was well after the critical date. Whether a document could have been
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`accessed and printed some seven yearsafter the critical date is of no moment.
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`Moreover, even if Langer was provided to “alt.sources.d” (there is no evidence
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`that it was), this does not mean it qualifies as a “printed publication” for the
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`reasons described by the Federal Circuit. In SR/ fmt 7, the court explained that a
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`document posted on an open site was not a “printed publication” because it was
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`not catalogued or indexed in a meaningful way and there was no evidencethat a
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`customary search would have uncovered it prior to the critical date. SR/ Int 7, 511
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`F.3d at 1195-98.
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`Browne1s also flawed for the reasons discussed above. In addition, the
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`Browne document has no date on it indicating exactly whenit wascreated.
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`Indeed, petitioner’s attorney argument that Browne was “published” in February
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`1995 is contrary to the documentitself, because the final page of Brownecites to
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`reference [7] dated “Mar. 1995.” (Ex. 1002 at 7.) It is unclear how Browne could
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`have been allegedly “published” in February 1995 as alleged by petitioner’s
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`attorney argument, when the documentitself references a document from “Mar.
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`1995” — Browne was undoubtedly created well after the publication date alleged
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`by petitioner. Indeed, a third party (Bea Systems, Inc.) cited the exact same
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`Case 5:18-md-02834-BLF Document 412-11 Filed 04/22/19 Page 12 of 23
`Patent Owner’s Preliminary Response (U.S. Pat. No. 7,945,544)
`IPR 2013-00084
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`Browne document as having an “Aug. 1995” date, which is well after the critical
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`date, during prosecution of U.S. Patent No. 7,318,237. CEx. 2001.) The third
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`party’s identification of an “Aug. 1995” date for the very same Browne document
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`is yet another indication that petitioner’s allegation that Browne published in
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`February of 1995 is incorrect and without basis. (Ex. 2001.) Given that those in
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`the art believed Browne was dated “Aug. 1995”, petitioner’s lack of evidence is
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`not surprising.
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`Accordingly, the petition should be denied as to Grounds 1-6 because
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`Kantor, Langer and Browne have not been established as “printed publications.”
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`V. 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., Inc. v. Union Oil Co. ofCalifornia, 814 F.2d 628,
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`631 (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-U.S.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 discloseall
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`elements of the claim, but must also disclose those elements “arranged as in the
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`claim.” Net MonevIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).
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`Patent Owner’s Preliminary Response (U.S. Pat. No. 7,945,544)
`IPR 2013-00084
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`VIL_THE GROUNDS BASED ON BROWNE DO NOT MEET CLAIM 1
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`There are certain fundamental differences between the “544 patent and
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`Browne which will be explained more fully below in addressing the challenged
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`claim.
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`Even if, for the sake of argument, Browne was considered to be a “printed
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`publication” (whichit is not, for the reasons explained above), the Grounds based
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`on Brownestill fail because they are flawed from a technical perspective and do
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`not meet the challenged claim.
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`Browne was considered by the Examiner during prosecution of the ‘544
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`patent. As part of its consideration of whether or not to institute, the Board may
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`take into account that Browne was already considered by the Examiner. See Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48765 (Aug. 14, 2012). The
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`same applies to Langer.
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`Petitioner contends, as Ground 3, that claim 1 1s allegedly anticipated under
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`35 U.S.C. §102(a) by Browne (Ex. 1002). Petitioner also contends, as Ground 4,
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`that claim 1 is allegedly unpatentable as obvious under 35 U.S.C. §103 over
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`Browne in view of Woodhill (Ex. 1005). However, for the reasons explained
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`above and below, even if Browne was consideredto be a “printed publication”
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`(whichit is not), petitioner still has failed to show that there is a reasonable
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`likelihood that it will prevail with respect to claim 1.
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`Claim 1 of the “544 patent states, inter alia:
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`IPR 2013-00084
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`"for a first data item comprising a first plurality of parts, (al) applying a
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`first function to each part of said first plurality of parts to obtain a
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`corresponding part value for each part of said first plurality of parts...
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`said first function comprises a hash function; and (a2) obtaining a first
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`value for the first data item, said first value obtained by applying a second
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`function to the part values ofsaid first plurality of parts of said first data
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`item, said second function comprising a second hash function ...
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`Thus, claim 1 ofthe 544 patent requires applying a hash function to each ofa
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`plurality ofparts to obtain a corresponding part value for each of the plurality of
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`parts, and then applying a hash function to these part values (1.e., a hash of
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`hashes). E.g., see the “544 specification at col. 13:43-61 and Fig. 10(b). Browne
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`fails to disclose at least the claimed subject matter quoted above.
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`In Browne’s system, multiple naming authorities assign namesto files. Each
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`file name assigned by Browne’s naming authorities contains information about the
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`naming authority that gave out the nameanda string that may contain a hash
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`derived from the file’s content. However, Browne fails to disclose a first value for
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`a data item obtained by applying a hash function to a plurality of prior hashes.
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`Brownestates that “[o]ne case is where a resource consists of a numberofrelated
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`files, for example the files making up a software package.” (Ex. 1002 at 6.) For
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`this “first case”, Brownestates that:
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`“The first case is handled by ordering the files making up the resource and
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`considering the ordered list of LIFNsfor these files to be the contents of
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`anotherfile which wecall the composite-parts-list for the resource. The
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`IPR 2013-00084
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`composite-parts-list file itself has a LIFN, andit is this LIFN that is
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`associated with the URN for the resource.” (Ex. 1002 at 6.)
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`However, it 1s unclear in Browne how the LIFN for the composite-parts-list
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`is determined.
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`(Ex. 1002 at 6.) For instance, Brownefails to disclose that the
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`LIFN for the composite-parts-list is based on a second given function (e.g., hash
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`such as MD5) of the plurality LIFNs in the ordered list of LIFNs — and the LIFN
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`for the composite-parts-list in Browneis not necessarily formed in such a manner.
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`The composite-parts-list in Browne already includes hashes, andit is not
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`necessarily the case that another hash would have been applied. It is possible, for
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`example, that the LIFN for the composite-parts-list in Browne is made up of the
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`ordered list of LIFNs preceded by a publisher [ID — in which case claim 1 certainly
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`would not be met because the LIFN for the composite-parts-list would not have
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`been obtained by applying a second hash function to the composite-parts-list. And
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`while Brownealso discloses that a set of files could be made available “instead as
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`a single tar file”, Brownefails to disclose howatar file would be treated or
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`processed. Browne cannot anticipate claim 1 for at least this reason.
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`Moreover, petitioner does not contend that it would have been obvious to
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`have modified Browne to have met the claim in this respect. In particular,
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`petitioner’s allegations concerning modifying Browne do not cure the aforesaid
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`flaws in Browne. (Pet. 43.)
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`Case 5:18-md-02834-BLF Document 412-11 Filed 04/22/19 Page 16 of 23
`Case 5:18-md-02834-BLF Document 412-11 Filed 04/22/19 Page 16 of 23
`Patent Owner’s Preliminary Response (U.S. Pat. No. 7,945,544)
`IPR 2013-00084
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`VIL_ WOODHILL DOES NOT ANTICIPATE CLAIM 1
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`There is a fundamental difference between the “544 patent and Woodhill.
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`While Woodhill uses a hash algorithm,it 1s not used as a file name or as a
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`substitute for the file name. Instead, Woodhill employs the hash algorithm to
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`compare the same file components to determine whether there has been a change
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`thereto. Such verification uses of hash algorithms were known in the art and were
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`considered by the Examiner during prosecution of the ‘544 patent. In contrast, the
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`“544 patent describes an identifier, obtained by employing a hash of hashes,as a
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`name of a compound data item having a plurality of parts in a computer network.
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`The identifier may be created by applying a hash algorithm to each of the plurality
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`of parts to obtain part identifiers, and then applying a hash algorithm to the part
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`identifiers.
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`Indeed, Woodhill (Ex. 1005) was considered by the Examiner during
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`prosecution of the ‘544 patent. As part of its consideration of whetheror notto
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`institute, the Board may take into account that Woodhill 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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`Petitioner contends, as Ground 7, that Claim 1 1s allegedly anticipated under
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`35 U.S.C. §102(e) by Woodhill (Ex. 1005). However, for the reasons explained
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`below, petitioner has failed to show that there is a reasonable likelihood that it will
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`prevail with respect to this alleged Ground.
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`Case 5:18-md-02834-BLF Document 412-11 Filed 04/22/19 Page 17 of 23
`Case 5:18-md-02834-BLF Document 412-11 Filed 04/22/19 Page 17 of 23
`Patent Owner’s Preliminary Response (U.S. Pat. No. 7,945,544)
`IPR 2013-00084
`
`Claim 1 of the «544 patent states, inter alia:
`
`"for a first data item comprising a first plurality of parts, (al) applying a
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`first function to each part of said first plurality of parts to obtain a
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`corresponding part value for each part of said first plurality of parts...
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`said first function comprises a hash function; and (a2) obtaining a first
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`value for the first data item, said first value obtained by applying a second
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`function to the part values ofsaid first plurality of parts of said first data
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`item, said second function comprising a second hash function ...
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`Thus, claim 1 ofthe 544 patent relates to applying a hash function to each ofa
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`plurality ofparts ofa first data item to obtain a corresponding part value for each
`
`of the plurality ofparts, and then obtaining a “first value for the first data item” by
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`applying a hash function to these part values. E.g., see the “544 specification at
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`col. 13:43-61 and Fig. 10(b).
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`Claim 1 1s not anticipated by Woodhill for at least two reasons to be more
`
`fully explained below. First, Woodhillfails to disclose applying a second function
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`comprising a hash to either the contents of shadowfiles or to the contents of
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`Binary Object Identifiers 74 (there is no hash of hashes in Woodhill). Second,
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`even if there was a “first value” obtained by applying a hash function to a shadow
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`file (which there 1s not in Woodhill), claim 1 still would not be anticipated because
`
`such a “first value” would be for identifying the shadow file — not the alleged “first
`
`data item” which1s an original binary object that was subdivided into granules
`
`(i.e., 1t would not be for “the first data item” as require by clause (a2) of claim 1).
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`Case 5:18-md-02834-BLF Document 412-11 Filed 04/22/19 Page 18 of 23
`Case 5:18-md-02834-BLF Document 412-11 Filed 04/22/19 Page 18 of 23
`Patent Owner’s Preliminary Response (U.S. Pat. No. 7,945,544)
`IPR 2013-00084
`
`Woodhill describes a backup verification system that employs a hash to
`
`compare current and previous versionsof a binary object from a particularfile to
`
`determine if there has been a modification/changeto the binary object from that
`
`file. If there has been a change, then the binary object is backed up. If no change
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`is detected, then the binary object is not backed up. In particular, in Woodhill a
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`Backup Queue Database 26 contains a Backup Queue Record 75 which includes a
`
`File Location 78 and a File Name 80. (Ex. 1005 at col. 4:48-58; and Fig. 4.) No
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`hash is provided in the Backup Queue Record 75. Woodhill creates a Binary
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`Object Identifier 74 for a binary object that was taken from a data stream ofa file
`
`being backed up. The Binary Object Identifier 74 1s part of a Binary Object
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`Identification Record 58. (Ex. 1005 at col. 4:30-47; col. 7:60-67; and Fig. 3.) The
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`Binary Object Identifier 74 includes numerous components, including hash field
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`70, CRC32 field 66, and size field 64. CEx. 1005 at Fig. 2 and col. 7:64 to col.
`
`8:4.)
`
`Binary Object Identifiers 74 are employed in backing up binary objects. Ifa
`
`data stream 1s larger than one megabyte, the stream 1s split into multiple binary
`
`objects.
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`(Ex. 1005 at col. 7:51-59.) During backup, for a given binary object,
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`Woodhill compares a newly calculated Binary Object Identifier 74 with a
`
`corresponding previous Binary Object Identifier 74 in order to determine whether
`
`or not the binary object has changed and thus whether the binary object should be
`
`backed up G.e., if the binary object has changed, it will be backed up). CEx. 1005
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`15
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`Case 5:18-md-02834-BLF Document 412-11 Filed 04/22/19 Page 19 of 23
`Case 5:18-md-02834-BLF Document 412-11 Filed 04/22/19 Page 19 of 23
`Patent Owner’s Preliminary Response (U.S. Pat. No. 7,945,544)
`IPR 2013-00084
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`at col. 9:7-27.) Importantly, Woodhill fails to disclose applying a hash function to
`
`a Binary Object Identifier 74, and therefore cannot anticipate claim 1 1n this
`
`respect (petitioner does not appear to contend that Woodhill applies a hash to a
`
`Binary Object Identifier 74).
`
`Elsewhere, for “large” database files, Woodhill describes a
`
`“sranularization” technique which subdividesa large databasefile into granules
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`for backup on remote file server 12, and provides a “contents identifier” for each
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`granule. (Ex. 1005 at col. 14:52 to col. 15:25.) The Binary Object Identifier 74
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`discussed above is not mentioned in connection with this “granularization”
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`technique. Woodhill’s “granularization” technique 1s used for backups on remote
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`file server 12, but not for storing binary objects on local computers. (Ex. 1005 at
`
`col. 15:4-8.) Each “contents identifier” includes a hash number. (Ex. 1005 at col.
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`15:24-30.) For each granule in the binary object currently being processed,
`
`program 24 creates a “shadow file” which includes the “contents identifier” for the
`
`granule. (Ex. 1005 at col. 15:22-29). Whenit is not the first time a binary object
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`from a particular file is being backed up, Woodhill compares a newly calculated
`
`contents identifier with a corresponding previous contents identifier in order to
`
`determine whether or not a particular granule has changed and thus whether the
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`granule should be backed up. CEx. 1005 at col. 15:53 to col. 16:15.) If the granule
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`has changed then the granule, but not the shadowfile, 1s compressed and
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`Case 5:18-md-02834-BLF Document 412-11 Filed 04/22/19 Page 20 of 23
`Case 5:18-md-02834-BLF Document 412-11 Filed 04/22/19 Page 20 of 23
`Patent Owner’s Preliminary Response (U.S. Pat. No. 7,945,544)
`IPR 2013-00084
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`transmitted to the remote backup server 12 for backup storage. (Ex. 1005 at col.
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`15:45-52.)
`
`Petitioner contends that Woodhill’s “granularization” technique described at
`
`col. 14:52 to col. 16:15 anticipates claim 1. Petitioner argues that in Woodhill:
`
`“said first data item”1s a first original binary object that is subdivided into
`
`granules at col. 14:53 to col. 15:25; the “first plurality of parts” are the granules of
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`the first original binary object; the “part values” for the first plurality of parts are
`
`“contents identifiers” of the granules of the first original binary object; and that the
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`“first value for the first data item” is a Binary Object Identifier for a shadowfile.
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`(Pet. 55.) Petitioner’s argument is fundamentally flawed for a numberof reasons.
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`In Woodhill’s “granularization”, “contents identifiers” (each including a
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`hash) and “change identifiers” are included in the shadowfile for a binary object.
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`However, Woodhill fails to disclose applying a second function comprising a hash
`
`to the contents of the shadow file (or to the contents of a Binary Object Identifier
`
`74 as explained above), and this certainly does not necessarily occur in Woodhill.
`
`Woodhill fails to describe hashing the contents of the shadow file. Thus, Woodhill
`
`fails to disclose clause (a2) of claim 1.
`
`A shadow file is created in Woodhill during a backup process, and contrary
`
`to petitioner’s allegation there is no disclosure in Woodhill that a Binary Object
`
`Identifier 1s ever created for a “shadowfile.” CEx. 1005 at col. 15:9-65.) And
`
`shadow files are not subdivided into “granules” in Woodhill — Woodhill only
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`Case 5:18-md-02834-BLF Document 412-11 Filed 04/22/19 Page 21 of 23
`Case 5:18-md-02834-BLF Document 412-11 Filed 04/22/19 Page 21 of 23
`Patent Owner’s Preliminary Response (U.S. Pat. No. 7,945,544)
`IPR 2013-00084
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`granularizes “large” database files. (Ex. 1005 at col. 14:52 to col. 15:53.) Shadow
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`files are tiny, and would not have been subdivided into “granules” in Woodhill’s
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`granularization process which is for “large” databasefiles.
`
`Even if there was a Binary Object Identifier of a shadow file (whichthere is
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`not in Woodhill), claim 1 still would not be anticipated because such a Binary
`
`Object Identifier (alleged “first value”) would identity the shadow file — not the
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`binary object (alleged “first data item”) that was subdivided into granules. In other
`
`words, such a Binary Object Identifier (alleged “first value”) would not be “for the
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`first data item” as required in clause (a\2) of claim 1. Therefore, even if there
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`was a “first value” obtained by applying a second hash function to a shadow file
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`for identifying that shad
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