`Case 5:18—md-02834-BLF Document 412-3 Filed 04/22/19 Page 1 of 51
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`EXHIBIT 2
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`EXHIBIT 2
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`Case 5:18-md-02834-BLF Document 412-3 Filed 04/22/19 Page 2 of 51
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`BEFORE THE PATENT 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
`* * * * * * * * * * *
`June 16, 2014
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`PATENT OWNER'S RESPONSE PURSUANT TO 37 C.F.R. § 42.120
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`Patent Owner's Response (U.S. Pat. No. 7,802,310)
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`IPR 2013-00596
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`TABLE OF CONTENTS
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`I.
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`II.
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`SOLE INSTITUTED GROUND .................................................................... 1
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`CLAIM CONSTRUCTIONS .......................................................................... 2
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`"data item" ............................................................................................ 2
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`"digital identifier" ( claim 86); "content-based identifier"
`(claims 70, 81) ...................................................................................... 3
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`"content-dependent name" ( claims 24, 32) .......................................... 4
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`"selectively permitting ... " ( claim 70) ................................................ 6
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`"selectively allow ... " ( claims 81 and 86) ........................................... 7
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`Challenged Claims Require that the Data Item Corresponding
`to the Name/Identifier in the "Request" is Accessed ........................... 8
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`G.
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`The BRC Standard is Not Applicable to this Proceeding ................... 10
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`III. LAW .............................................................................................................. 11
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`IV. THE MODIFICATION TO WOODHILL BASED ON STEFIK
`ALLEGED BY PETITIONER'S EXPERT WOULD NOT HAVE
`BEEN OBVIOUS BECAUSE ONE OF ORDINARY SKILL IN THE
`ART WOULD HA VE TRIED TO MINIMIZE (NOT MAXIMIZE).
`THE NUMBER OF COMPARISON PROCEDURES REQUIRED
`TO CHECK WHETHER ACCESS WAS AUTHORIZED ......................... 12
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`V.
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`VI.
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`ONE WOULD NOT HA VE MODIFIED WOODHILL TO CHECK
`WHETHER ACCESS TO A FILE BY A COMPUTER WAS
`AUTHORIZED WHEN THE COMPUTER ALREADY HAD THE
`CURRENT VERSION OF THAT FILE ...................................................... 19
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`STEFIK TEACHES AW A Y FROM THE ALLEGED
`MODIFICATION BY IGNORING UNIQUE IDENTIFIERS AND
`NOT USING THEM TO DETERMINE WHETHER ACCESS IS
`AUTHORIZED ............................................................................................. 22
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`VII. KSR DEMONSTRATES NONOBVIOUSNESS BECAUSE PRIOR
`ART ELEMENTS ARE NOT USED FOR THEIR INTENDED
`PURPOSE AND DO NOT SERVE THEIR INTENDED FUNCTION
`IN THE ALLEGED COMBINATION ......................................................... 24
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`VIII. THE ART TEACHES AW A Y FROM THE ALLEGED
`MODIFICATION BECAUSE "FUNDAMENTAL", "KEY" AND
`"MUST" FEATURES OF STEFIK ARE NOT REFLECTED IN THE
`ALLEGED COMBINATION ....................................................................... 26
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`IX. GRANULES CORRESPONDING TO CONTENTS IDENTIFIERS IN
`THE ALLEGED REQUEST IN WOODHHILL AS ALLEGEDLY
`MODIFIED BY STEFIK ARE NEVER PROVIDED TO THE
`REQUESTING COMPUTER IN RESPONSE TO THE REQUEST .................. 30
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`X.
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`THE ALLEGED IDENTIFIER IN THE WOODHILL/STEFIK
`COMBINATION IS NOT A "NAME" AND IS NOT USED FOR
`ACCESSING .................................................................................................. 32
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`XI.
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`FURTHER FLAWS IN WOODHILL INCLUDING PETITIONER'S
`IMPROPER MIXING OF ALTERNATIVE ALLEGATIONS ................... 36
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`XII. SECONDARY CONSIDERATIONS .......................................................... 41
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`XIII. THE EXAMINER CONSIDERED AND ALLOWED THE
`CHALLENGED CLAIMS OVER ALL ART RELIED UPON BY
`PETITIONER DURING PROSECUTION OF THE '310 PATENT ........... 42
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`XIV. CONCLUSION ............................................................................................. 44
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`PATENT OWNER'S EXHIBIT LIST
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`CERTIFICATE OF SERVICE
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`PersonalWeb Technologies, LLC ("patent owner" or "PO") submits this
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`response to the petition. Petitioner has the burden of proving unpatentability by a
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`preponderance of the evidence. 35 U.S.C. § 316(e). Petitioner has not met its
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`burden for the reasons explained below. See also Dewar Deel. at 11 18-62 [Ex.
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`2020].)
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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 Response (i.e., the "critical date" is no
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`later than April 11, 1995 for purposes of this submission). Petitioner does NOT
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`allege a later effective filing date in connection with the instituted ground, and the
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`Board rejected petitioner's Section 112 arguments in connection with a non(cid:173)
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`instituted ground in Paper 9. Thus, the April 11, 1995 effective filing date is
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`applicable in this proceeding.
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`PO notes that another IPR is also pending regarding the '310 patent. (See
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`IPR 2014-00062.)
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`I. SOLE INSTITUTED GROUND
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`The Board, on March 26, 2014, construed certain claim terms and instituted
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`a trial in this proceeding regarding the '310 patent for only the following:
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`1.
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`Whether claims 24, 32, 70, 81, 82 and 86 are unpatentable as
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`obvious under 35 U.S.C. §103(a) over Woodhill (Ex. 1014- U.S.
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`1
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`Patent No. 5,649,196) and Stefik (Ex. 1013 - U.S. Patent No.
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`7,359,881).
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`The Board ordered that no other grounds of alleged unpatentability were
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`authorized regarding the '310 patent. (Paper 9.) Thus, petitioner is not permitted
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`to argue unpatentability in this proceeding regarding any other ground( s) even if
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`such other ground( s) may have been in the petition.
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`II. CLAIM CONSTRUCTIONS
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`Claim terms are presumed to be given their ordinary and customary meaning
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`as would be understood by one of ordinary skill in the art at the time of the
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`invention. Phillips v. AWHCorp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en bane).
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`However, the inventor may rebut that presumption by providing a definition of the
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`term in the specification with reasonable clarity, deliberateness, and precision.
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`A.
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`·"data item -'~
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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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`(This term appears
`expressly in claims 24,
`32 and 70. This term is
`also contained in the
`below-constructions of
`"digital identifier",
`"content-based
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`Correct Construction
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`Sequence of bits. ('310 patent, col. 2:16-17.) As the
`Board explained in its June 5, 2013 Decision in IPR
`2013-00082, the "sequence of bits" may include any of
`the following which represent examples in a non-
`exhaustive list: (1) the contents of a file; (2) a portion of
`a file; (3) a page in memory; ( 4) an object in an object-
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`identifier" and
`"content-dependent
`name" and is thus also
`relevant thereto.
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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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`B.
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`'"digital identifier" (claim 86); "content-based identifier" (claims 70, 81 ).
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`The Board construed these two terms as "an identifier for a data item being
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`based at least in part on a given function of at least some of the. bits in the
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`particular sequence of bits of the particular data item." (Paper 9, pgs. 8-10.)
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`PO has assumed this construction for these two terms in this proceeding
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`regarding claims 70, 81 and 86, without prejudice to argue for another construction
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`for these terms in other proceeding(s). PO notes that the Board's construction of
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`"digital identifier" conflicts with the district court's construction of that same term
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`in related litigations. (Ex. 2013, pg. 4 7; and Ex. 2014.)
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`C. '"content-dependent name" (claims 24, 32).
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`The Board also construed "content-dependent name" as "an identifier for a
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`data item being based at least in part on a given function of at least some of the bits
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`in the particular sequence of bits of the particular data item." (Paper 9, pgs. 8-10.)
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`This construction is wrong for several reasons. First, the Board's
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`construction conflicts with the express language of claim 32. Claim 32 expressly
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`requires that the content-dependent name of the data item is based on "all of the
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`contents of the particular data item" (emphasis added). Thus, at least with respect
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`to claim 32, the construction of "content-dependent name" should be "a name for
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`a data item being based at least in part on a given function of all of the bits in the
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`particular sequence of bits of the particular data item." (emphasis added.)
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`Claim 11 also states "all."
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`Second, the Board's construction for "content-dependent name" in claims
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`24 and 32 improperly ignores the word "name" in the claim language. It cannot
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`reasonably be said that all identifiers are names. For example, while a fingerprint
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`is an identifier for a person, it is not a ""name" for that person. Contrary to the
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`Board's suggestion, something is not a "name" simply because it is an "identifier."
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`Any attempt to replace "name" with "identifier" in a construction of "content(cid:173)
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`dependent name" would be wrong, unreasonable and illogical. Even W oodhill
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`contrasts the difference between a file "name" and a binary object "identifier" (see
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`e.g., file name 40 and file name 80 in Figs. 3-4 of Woodhill, compared to binary
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`object identifier 74 in Fig. 3 of Woodhill), evidencing that they are not the same
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`thing in this art. One of ordinary skill in the art at the time of the invention would
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`have understood that there is a significant difference between a "name" and a mere
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`"identifier." "Name" should not be removed from the construction, and should
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`not be replaced with "identifier." One of ordinary skill in the art at the time of the
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`invention would have recognized that a "name" for a data item is used not only to
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`identify that data item, but is also used to refer to that data item, to access that data
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`item, search for that data item, and address that data item, both in this art in general
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`and according to the instant specification. (E.g., '310 patent, col. 15:34-37; col.
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`16:32-62; col. 18: 12-35; col. 22:61-67; col. 23:51-64; col. 32:55-67; and Dewar
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`Deel.,~ 23 [Ex. 2020].)
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`Accordingly, in the Board's construction of "content-dependent name" for
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`claim 24, "an identifier" should be replaced with "a name." And at least with
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`respect to claim 32, the construction of "content-dependent name" should be "a
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`name for a data item being based at least in part on a given function of all of the
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`bits in the particular sequence of bits of the particular data item." ( emphasis
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`added.) This is relevant at least because the alleged identifier in the
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`Woodhill/Stefik combination is not a "name."
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`D. ''selectively permitting . .. "(claim 70).
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`Petitioner also 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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`PO disagrees with petitioner's proposed construction for "selectively
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`permitting", at least because petitioner's construction again ignores the plain
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`language of claim 70. Petitioner contends that "selectively permitting" in claim 70
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`of the '310 patent should be construed as "permitting based on whether a condition
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`is met" ( emphasis added). Petitioner's construction incorrectly ties the
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`"selectively permitting" to be whether any condition is met, and ignores the
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`context of "selectively." However, claim 70 reads as follows:
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`"(A) ... determining whether the content-based identifier for the
`particular data item corresponds to an entry in a database comprising
`a plurality of content-based identifiers; and (B) based at least in part
`on said determining in step (A), selectively permitting the particular
`data item to be accessed at or by one or more computers in the
`network ... " ( emphasis added)
`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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`E.
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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", at least because petitioner's construction again ignores the plain language
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`of the claims. Petitioner contends that to "selectively allow" in claims 81 and 86
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`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
`sequence of bits to a plurality of values; and to ( c) selectively allow
`said particular sequence of bits to be provided or accessed by other
`devices depending on whether or not said content-dependent
`identifier corresponds to one of the plurality of values." ( emphasis
`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. "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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`F. Challenged Claims Require that the Data Item Corresponding to the
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`Name/Identifier in the "'Request"is Accessed.
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`Claims 24 and 70 require a "request" that includes a content-dependent
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`name (claim 24) or identifier (claim 70) for a corresponding data item. These
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`claims then require that the data item corresponding to the name ( claim 24) or
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`identifier ( claim 70) is accessed by other computer( s) based on the claimed
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`comparison. For example, claim 70 states:
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`"in response to a request at a first computer, from another computer,
`said request comprising at least a content-based identifier for a
`particular data item . .. (A) ... determining whether the content(cid:173)
`based identifier for the particular data item corresponds to an entry in
`a database comprising a plurality of content-based identifiers; and
`(B) based at least in part on said determining in step (A), selectively
`permitting the particular data item to be accessed at or by one or
`more computers in the network ... " ( emphasis added)
`Thus, independent claim 70 requires that the particular data item corresponding to
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`the content-based identifier in the request is accessed, or permitted to be accessed,
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`by other computer(s) in the network based on the comparison in step (A).
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`Similarly, independent claim 24 requires that the particular data item
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`corresponding to the content-dependent name in the request is provided to or
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`accessed by the second computer when it is determined that access to that data
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`item is authorized based on the comparison. And independent claims 81 and 86
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`also require that the particular sequence of bits corresponding to the identifier
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`received from the another device is provided to or accessed by other devices
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`depending on the comparison.
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`This is important because both parties agree that in the alleged
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`W oodhill/Stefik combination granules corresponding to contents identifiers in the
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`alleged request ("update request") are NEVER provided to the requesting
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`computer in response to the request. (Goldberg Dep. 65-67, 80-82 [Ex. 2015]; and
`Dewar Deel., ,126, 48-51 [Ex. 2020].) Thus, even the alleged combination fails
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`to meet the challenged claims in this respect.
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`G. The BRC Standard is Not Applicable to this Proceeding.
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`3 7 C.F .R. § 42.1 00(b) states that a claim in an "unexpired patent" shall be
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`given its broadest reasonable construction ("BRC" or "BRI") in light of the
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`specification. However, the '310 patent expires on April 11, 2015. Accordingly,
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`PO has no ability to amend the '310 patent in this proceeding and no appeal will
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`take place until after the '310 patent expires. Indeed, the USPTO will have
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`jurisdiction over this proceeding after the '310 patent expires. No certificate under
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`35 U.S.C. § 318(b) can issue before the '310 patent expires. At least any document
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`( e.g., final written decision, decision on rehearing, certificate, etc.) authored or
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`generated by the US PTO after the '310 patent expires cannot use BRC, and instead
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`should use and must rely upon the same claim construction standard as the district
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`court laid out in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en bane).
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`Moreover, the USPTO has no authority to change the claim construction standard
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`required by Phillips for IPR proceedings because an IPR is not an examination
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`proceeding and the applicable claim construction standard is a substantive issue
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`(not a mere procedural issue). Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1335
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`(Fed. Cir. 2008). Thus, the BRC standard should not be used in this proceeding for
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`construing claims.
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`While PO's claim constructions set forth above are submitted to be correct
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`under either the BRC standard or the Phillips standard, the Board should use the
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`Phillips standard to construe claims in this proceeding.
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`III. LAW
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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 MoneylN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).
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`Moreover, a patent claim is unpatentable under 35 U.S.C. § 103(a) if the
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`differences between the claimed subject matter and the prior art are such that the
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`subject matter would have been obvious at the time the invention was made to a
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`person having ordinary skill in the art to which the subject matter pertains. KSR
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`Int'! Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is
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`resolved on the basis of underlying factual determinations, including (1) the scope
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`and content of the prior art; (2) differences between the claimed subject matter and
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`the prior art; (3) the level of skill in the art; and ( 4) secondary considerations such
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`as commercial success, long felt need, copying by others, etc. Graham v. John
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`Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966). A court can take account of
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`the inferences and creative steps that a person of ordinary skill in the art would
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`employ. KSR, 550 U.S. at 418. "A prior art reference may be considered to teach
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`away [from the clamed invention] when 'a person of ordinary skill, upon reading
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`the reference, ... would be led in a direction divergent from the path that was
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`taken by the applicant'." Monarch Knitting Mach. V Sulzer Marat, 139 F.3d 877,
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`885 (Fed. Cir. 1998) ( citation omitted). The "general rule" is that references that
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`teach away "cannot serve to create a prima facie case of obviou.sness." McGinley
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`v. Franklin Sports, Inc., 262 F.3d 1339, 1354 (Fed. Cir. 2001).
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`IV. THE MODIFICATION TO WOODHILL BASED ON STEFIK
`ALLEGED BY PETITIONER'S EXPERT WOULD NOT HA VE BEEN
`OBVIOUS BECAUSE ONE OF ORDINARY SKILL IN THE ART WOULD
`HA VE WANTED TO MINIMIZE (NOT MAXIMIZE) THE NUMBER OF
`COMPARISON PROCEDURES REQUIRED TO CHECK WHETHER
`ACCESS WAS AUTHORIZED
`Woodhill relates to a backup system. (Woodhill, col. 9:1 to col. 10:12, and
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`col. 14:52 to col. 16:15.) Woodhill's granularization restore procedure for large
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`database files, described from column 17: 18 to col. 18 :9 and in Figs. 5H-5I, is the
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`ONLY portion of Woodhill that petitioner alleges would have been obvious to
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`modify in order to meet the challenged claims. (Goldberg Dep. 54-55, 57-67, 71,
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`7 4 [Ex. 2015].) In Woodhill as allegedly modified by Stefik, petitioner contends
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`that the "request" of claims 24 and 70 is the "update request" described in
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`Woodhill at column 17:42-46. (Goldberg Dep. 54-55, 84 [Ex. 2015].) Petitioner
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`contends that the claimed "data items" are either binary objects or granules.
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`(Goldberg Dep. 57-59, 85 [Ex. 2015].) Petitioner's expert refers to these as "two
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`reads" on the challenged claims, one read being where the data items are binary
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`objects and the other read being where the data items are granules. (Goldberg Dep.
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`71, 85 [Ex. 2015].) When the "data items" are binary objects, petitioner contends
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`that the "content-dependent name" of claim 24, "content-based identifier" of
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`claims 70 and 81, and "digital identifier" of claim 86 in the claimed "request" are
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`binary object identifiers 74 allegedly in the "update request", in Woodhill as
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`allegedly modified by Stefik. (Goldberg Dep. 64-67, 71, 84-85 [Ex. 2015].) But
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`when the "data items" are granules, petitioner contends that the "content(cid:173)
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`dependent name" of claim 24, "content-based identifier" of claims 70 and 81, and
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`"digital identifier" of claim 86 in the claimed "request" are "contents identifiers"
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`calculated in step 444 which are in the "update request." (Goldberg Dep. 64-67,
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`71, 84-85 [Ex. 2015].)
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`Petitioner's expert alleges that it would have been obvious to have modified
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`W oodhill 's column 1 7 granularization restore procedure for large database files to
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`have compared binary object identifiers 74 or "contents identifiers" allegedly in
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`Woodhill's "update request" with a plurality of values in order to check whether
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`access by the requesting local computer is authorized. (Goldberg Dep. 31-34, 54-
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`55, 71, 74-75 [Ex. 2015].) This is the ONLY modification to Woodhill which
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`petitioner's expert alleges to meet the challenged claims. Id. Petitioner does not
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`rely on any other procedure in W oodhill as allegedly modified by Stefik to meet
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`the challenged claims. Id.
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`W oodhill' s granularization restore procedure which petitioner seeks to
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`modify is used for processing large database files each of which includes many
`
`binary objects and many granules. ('310 patent at col. 14:52-65, col. 17:18-35;
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`Goldberg Dep. 106-108 [Ex. 2015]; and Dewar Deel.,, 30 [Ex. 2020].) As
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`petitioner's expert testified:
`
`Q. Would you agree that Woodhill's granularization procedure is
`used for large database files?
`
`A. Yes.
`
`(Goldberg Dep. 106 [Ex. 2015].)
`
`Q. Large data, a large database file would include a plurality of
`
`granules, right?
`
`MR. CORNWELL: Objection. Form.
`
`THE WITNESS: I would expect so. Yes.
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`Q. Probably a whole lot of granules, right?
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`MR. CORNWELL: Objection. Form.
`
`THE WITNESS: That's correct.
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`Q. And a whole lot of binary objects?
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`MR. CORNWELL: Objection. Form.
`
`THE WITNESS: Yes.
`
`(Goldberg Dep. 108 [Ex. 2015].) Thus, the parties agree that Woodhill's
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`granularization restore procedure which petitioner seeks to modify under Section
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`103 is for processing large database files, and that each such file includes "a whole
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`lot of granules" and "a whole lot of binary objects." Id. See also Dewar Deel., 1
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`30 [Ex. 2020]. The parties also agree that a binary object is made up of many
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`granules. (Goldberg Dep. 119 [Ex. 2015]; and Dewar Deel., 130 [Ex. 2020].)
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`Simply stated, these are very large files having many binary object and many
`
`granules. Id.
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`In 1995, one of ordinary skill in the art would have expected a "large
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`database file" of the type handled by W oodhill' s granularization procedure to be at
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`least 1 to 2 gigabytes in size. (Dewar Deel., 131 [Ex. 2020].) Woodhill explains
`
`that a binary object is 1 megabyte in size, and that a granule can be 1 kilobyte.
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`(Woodhill, col. 7:54-55, col. 14:58-67.) Given such sizes, a single 1 gigabyte large
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`database file to be processed by Woodhill's granularization restore procedure
`
`would include at least 1,024 binary objects and 1,048,576 granules. (Dewar Deel.,
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`131 [Ex. 2020].) Thus, 1,024 binary object identifiers and 1,048,576 contents
`
`identifiers would correspond to the binary objects and granules of the file,
`
`respectively. Id.
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`The alleged modification would not have been obvious to one of ordinary
`
`skill in the art at the time of the invention because one of ordinary skill would have
`
`sought to minimize the numbers of comparisons needed (not maximize them).
`
`(Dewar Deel., 132 [Ex. 2020].) Under petitioner's first read where the data items
`
`are binary objects and binary object identifiers 74 are compared to determine
`
`whether access is authorized, the allegedly modified granularization restore system
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`of Woodhill would require that each of the 1,024 binary object identifiers be
`
`compared with a plurality of binary object identifiers for a total of 1,024 different
`
`comparison processes in order to determine whether access to the single large
`
`database file being restored is authorized. (Goldberg Dep. 38-39 [Ex. 2015]; and
`Dewar Deel., ,r 32 [Ex. 2020].) And under petitioner's second read where the data
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`items are granules and "contents identifiers" are compared to determine whether
`
`access is authorized, the allegedly modified granularization restore system of
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`Woodhill would require that each of the 1,048,576 "contents identifiers" be
`
`compared with a plurality of contents identifiers for a total of 1,048,576 different
`
`comparison processes in order to determine whether access to the single large
`
`database file being restored is authorized. Id. Accordingly, the number of
`
`different comparison processes needed to be performed by the allegedly modified
`
`restore system would therefore be at least 1,024 (with each of these involving
`
`many different comparisons), just to check if access to the single large database
`
`file was authorized. Id. This would be non-sensical and illogical, as one of
`
`ordinary skill in the art would never have modified a system so that it required at
`
`least 1,024 comparisons to determine if access to a file was authorized. (Dewar
`Deel., ,r 32 [Ex. 2020].) As testified by petitioner's expert:
`
`Q. If you could make a determination regarding whether access to a
`given file was authorized, using one comparison on the one hand, or a
`thousand comparisons on the other hand, which would you pick?
`
`MR. CORNWELL: Objection. Form.
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`THE WITNESS: If that was the only criterion for evaluating the
`efficacy of the system, then certainly one check is better than a thousand.
`(Goldberg Dep. 53 [Ex. 2015].)
`
`One of ordinary skill in the art at the