Case 5:18-md-02834-BLF Document 412-5 Filed 04/22/19 Page 1 of 49
`Case 5:18—md-02834-BLF Document 412-5 Filed 04/22/19 Page 1 of 49
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`EXHIBIT 4
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`EXHIBIT 4
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`Case 5:18-md-02834-BLF Document 412-5 Filed 04/22/19 Page 2 of 49
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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 2014-00058
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`In re:
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`U.S. Patent No. 8,099,420
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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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`Rackspace US, Inc. & Rackspace Hosting, Inc.
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`Inventors:
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`David A. Farber and Ronald D. Lachman
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`For: ACCESSING DATA IN A DATA PROCESSING SYSTEM
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`* * * * * * * * * * *
`July 15, 2014
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`PATENT OWNER'S RESPONSE PURSUANT TO 37 C.F.R. § 42.120
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`Case 5:18-md-02834-BLF Document 412-5 Filed 04/22/19 Page 3 of 49
`Patent Owner's Response (U.S. Pat. No. 8,099,420)
`IPR 2014-00058
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`TABLE OF CONTENTS
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`I.
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`INSTITUTED GROUNDS ............................................................................. 1
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`II.
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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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`"plurality of identifiers" ........................................................................ 2
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`Authorization is based on a determination of "whether or not"
`the content-dependent identifier corresponds to an entry in a
`database comprising a plurality of identifiers ....................................... 4
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`"data item" ........................................................................................... 6
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`.fi "
`7
`. 1 .d
`d.
`d
`d
`"
`content- epen ent 1g1ta 1 entl 1er ................................................. .
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`"selectively permit ... " ........................................................................ 7
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`Claim 166 Requires that the Particular Data Item
`Corresponding to the Identifier is Selectively Permitted to be
`Accessed/Provided Based on the Result of an Identifier
`Comparison ........................................................................................... 9
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`G.
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`The BRC Standard is Not Applicable to this Proceeding ................... 10
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`III.
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`LAW .............................................................................................................. 11
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`IV. WOOD HILL AND FRANCISCO BOTH FAIL TO DISCLOSE
`COMP ARING OR ANALYZING A DAT A ITEM IDENTIFIER
`WITH RESPECT TO A PLURALITY OF CONTENT-BASED
`IDENTIFIERS IN A DATABASE TO DETERMINE IF ACCESS IS
`AUTHORIZED ............................................................................................. 12
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`V.
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`ONE SKILLED IN THE ART WOULD NOT HA VE MODIFIED
`WOODHILL TO ADD FRANCISCO'S SYSTEM BECAUSE
`WOODHILL ALREADY HAS ACCESS CONTROL THAT IS
`UNRELATED TO BINARY OBJECT IDENTIFIERS ............................... 18
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`Patent Owner's Response (U.S. Pat. No. 8,099,420)
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`IPR 2014-00058
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`VI. 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 ...................................................... 20
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`VII. FRANCISCO AND WOOD HILL BOTH TEACH AW A Y FROM
`THE CLAIMED INVENTION BY USING CONTENET-
`DEPENDENT IDENTIFIERS FOR OTHER PURPOSES .......................... 22
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`VIII. 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 ......................................................... 25
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`IX.
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`FURTHER DEFICIENCIES IN WOODHILL/FRANCISCO ..................... 28
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`X.
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`CLAIM 166 IS ENTITLED TO PRIORITY ON THE APRIL 11, 1995
`FILING DATE UPON WHICH PRIORITY IS CLAIMED ............................... 33
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`XI. THE GROUND INVOLVING FARBER IS BASED ON 35 U.S.C. § 112
`AND SHOULD NOT BE SUBJECT TO AN IPR ............................................. 40
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`XII. THE EXAMINER CONSIDERED AND ALLOWED THE
`CHALLENGED CLAIM OVER THE TWO BASE REFERENCES
`RELIED UPON BY PETITIONER DURING ORIGINAL
`PROSECUTION OF THE '420 PATENT ........................................................ 41
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`XIII. SECONDARY CONSIDERATIONS .......................................................... 42
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`XIV. CONCLUSION ............................................................................................. 43
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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,, 22-61 [Ex.
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`2012].)
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`U.S. Patent No. 8,099,420 ("the '420 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).
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`I. INSTITUTED GROUNDS
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`The Board, on April 15, 2014, instituted a trial in this proceeding regarding
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`the '420 patent for only the following:
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`1.
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`Whether claim 166 is unpatentable as obvious under 35 U.S.C.
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`§103(a) over Woodhill (Ex. 1003 - U.S. Patent No. 5,649,196) and
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`Francisco (Ex. 1004).
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`2.
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`Whether claim 166 is unpatentable under §103(a) over Farber (WO
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`96/32685 - Ex. 1005). It is noted that Farber is the WO publication
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`of the priority document of the '420 patent. Thus, Farber is
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`essentially the same as the instant application as originally filed on
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`April 11, 1995. This ground is based is whether claim 166 is
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`I
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`Patent Owner's Response (U.S. Pat. No. 8,099,420)
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`IPR 2014-00058
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`entitled to priority under 35 U.S.C. § 112, first paragraph, to the
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`original April 11, 1995 filing date upon which priority is claimed.
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`The Board ordered that no other grounds of alleged unpatentability were
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`authorized regarding the '420 patent. (Paper 10.) Thus, petitioner is not permitted
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`to argue unpatentability in this proceeding regarding any other ground(s), or
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`arguments pertaining to any other ground, even if such other ground( s) may have
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`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, one may rebut that presumption by providing a definition of the term in
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`the specification with reasonable clarity, deliberateness, and precision.
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`A. ""plurality of identifiers."
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`The Board construed this term on pages 10-11 of Paper 10.
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`Claim 166 recites:
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`" ... authorization, as resolved based, at least in part, on whether or not
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`at least one of said one or more content-dependent digital identifiers for
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`said particular data item corresponds to an entry in one or more
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`databases, each of said one or more databases comprising a plurality of
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`identifiers, each of said identifiers in each said database corresponding
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`to at least one data item of a plurality of data items, and each of said
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`Case 5:18-md-02834-BLF Document 412-5 Filed 04/22/19 Page 7 of 49
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`Patent Owner's Response (U.S. Pat. No. 8,099,420)
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`IPR 2014-00058
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`identifiers in each said database being based, at least in part, on at least
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`some of the data in a corresponding data item."
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`The Board appears to have correctly recognized that a "plurality" means multiple
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`or more than one. "Plurality" cannot mean just one, or cover just one. (Dewar
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`Deel., 1123 [Ex. 2012].) Of course, each of the identifiers must also be based on
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`data in the corresponding data item as recited in the claim and as reflected in the
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`Board's construction in Paper 10.
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`This is important because Francisco fails to disclose comparing or otherwise
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`analyzing a program identifier with respect to a plurality of content-based
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`identifiers. (Dewar Deel., 1130-36 [Ex. 2012].) Petitioner's expert admits this
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`fundamental flaw in Francisco. Francisco's authentication check merely compares
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`a program identifier ( electronic identification indicia) to a single value in
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`comparator 3 6 for determining whether the program has changed - not to a
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`plurality of values. And, in Francisco's subsequent authorization check, the
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`program identifier is not compared to anything. Accordingly, Francisco compares
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`the program identifier with a single value for making sure that the file is authentic
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`(i.e., that it has not changed), and if the file is found to be authentic then Francisco
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`later compares user information in another comparator 40 to determine if access by
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`a particular user is authorized. Thus, Francisco's program identifier: (i) is only
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`compared to a single value for determining whether the program has changed, and
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`(ii) is not compared to anything for determining whether access is authorized.
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`Case 5:18-md-02834-BLF Document 412-5 Filed 04/22/19 Page 8 of 49
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`Patent Owner's Response (U.S. Pat. No. 8,099,420)
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`IPR 2014-00058
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`Accordingly, it will be appreciated that even providing Francisco's system in
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`Woodhill fails to meet the claimed subject matter.
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`B. Authorization is based on a determination of "'whether or not" the
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`content-dependent identifier corresponds to an entry in a database
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`comprising a plurality o[identi/iers.
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`Claim 166 recites:
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`" ... authorization, as resolved based, at least in part, on whether or
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`not at least one of said one or more content-dependent digital
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`identifiers for said particular data item corresponds to an entry in one
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`or more databases, each of said one or more databases comprising g_
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`plurality o(identifiers, each of said identifiers in each said database
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`corresponding to at least one data item of a plurality of data items, and
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`each of said identifiers in each said database being based, at least in
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`part, on at least some of the data in a corresponding data item."
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`Thus, claim 166 requires the ability to compare or otherwise analyze the content-
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`dependent digital identifier for the particular data item with respect to the plurality
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`of identifiers in the database so as to be able to resolve "whether or not" the
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`identifier corresponds to an entry in the database. It would be impossible to be
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`able to determine or resolve that the identifier does "not" correspond to an entry in
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`the database without being able to compare or otherwise analyze the identifier with
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`the multiple claimed content-based identifiers in the database. (Dewar Deel., 124
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`[Ex. 2012].) For example, assume that a database contained 100 content-based
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`identifiers stored therein. One could not determine that a given identifier did "not"
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`correspond with any of the 100 content-based identifiers in the database unless the
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`Patent Owner's Response (U.S. Pat. No. 8,099,420)
`IPR 2014-00058
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`system was capable of comparing or otherwise analyzing that identifier with
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`respect to the plurality of identifiers in some fashion. Id. Moreover, the "not"
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`aspect of "whether or not" must be determined because this is necessary for the
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`"selectively" permitting of access that is expressly recited in the claim. Id. Thus,
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`claim 166 requires comparing or otherwise analyzing the content-dependent digital
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`identifier for the particular data item with respect to the plurality of content-based
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`identifiers in the database in order to determine whether access to that particular
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`item is authorized. Id.
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`Again, this is important because Francisco fails to-disclose comparing or
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`otherwise analyzing a program identifier with respect to a plurality of content(cid:173)
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`based identifiers. Petitioner's expert admits this fundamental flaw in Francisco.
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`Francisco's authentication check merely compares a program identifier ( electronic
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`identification indicia) to a single value in comparator 36 for determining whether
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`the program has changed - not with respect to a plurality of values. And, in
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`Francisco's subsequent authorization check, the program identifier is not
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`compared to, or analyzed with respect to, anything (no content-dependent
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`identifiers are compared in the authorization check at comparator 40).
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`Accordingly, Francisco compares the program identifier with a single value for
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`making sure that the file is authentic (i.e., that it has not changed), and if the file is
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`found to be authentic then Francisco later compares user information in another
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`comparator 40 to determine if access by a particular user is authorized. Thus,
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`Case 5:18-md-02834-BLF Document 412-5 Filed 04/22/19 Page 10 of 49
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`Patent Owner's Response (U.S. Pat. No. 8,099,420)
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`IPR 2014-00058
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`Francisco's program identifier: (i) is only analyzed with respect to a single value
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`for determining whether the program has changed, and (ii) is not compared to, or
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`analyzed with respect to, anything for determining whether access is authorized.
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`Accordingly, it will be appreciated that even providing Francisco's system in
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`Woodhill fails to meet the claimed subject matter.
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`C.
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`•"data item. "
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`The specification of the '420 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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`Term
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`"data item"
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`I
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`Correct Construction
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`Sequence of bits. ('420 patent, col. 1 :58-59.) As the
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`Board explained in its June 5, 2013 Decision in IPR
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`2013-00082, the "sequence of bits" may include any of
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`the following which represent examples in a non(cid:173)
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`exhaustive list: (1) the contents of a file; (2) a portion of
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`a file; (3) a page in memory; (4) an object in an object(cid:173)
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`oriented program; ( 5) a digital message; ( 6) a digital
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`scanned image; (7) a part of a video or audio signal; (8) a
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`directory; (9) a record in a database; (10) a location in
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`memory or on a physical device; (11) any other entity
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`which can be represented by a sequence of bits. (See
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`June 5, 2013 Dec. in IPR 2013-00082 at 2-3 [Ex. 2008];
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`and May 17, 2013 Dec. in IPR 2013-00082 at 14-15 [Ex.
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`2009].)
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`During prosecution of family member U.S. Patent
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`Case 5:18-md-02834-BLF Document 412-5 Filed 04/22/19 Page 11 of 49
`Patent Owner's Response (U.S. Pat. No. 8,099,420)
`IPR 2014-00058
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`No. 7,949,662, applicant and the USPTO Examiner made
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`clear that the "data item" may be "any sequence of bits"
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`and that "the data item may represent any type/kind of
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`data." See, in Ex. 2004, the§ 112 rejection in the Office
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`Action dated Sept. 14, 2007, the response thereto, and
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`then the Examiner's withdrawal of the§ 112 rejection on
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`page 21 of the Office Action dated July 3, 2008. (Ex.
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`2004.)
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`D. •·content-dependent digital identifier" (claim 166).
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`The Board construed this term as an identifier for a data item being based at
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`least in part on a given function of at least some of the bits in the particular
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`sequence of bits of the particular data item. (Paper 10, pg. 10.)
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`PO has assumed this construction for this proceeding regarding claim 166,
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`without prejudice to argue for another construction in other proceeding(s).
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`E. "Selectively permit ... "(claim 166)
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`Petitioner proposes an overly broad construction for "selectively permit" in
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`claim 166. The Board should also note that petitioner's constructions of
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`"selectively permit" in this IPR conflicts with Apple's construction of "selectively
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`permitting" in IPR 2013-00596.
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`PO disagrees with petitioner's construction for "selectively permit", because
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`petitioner's construction ignores the plain language of the claim. Petitioner's
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`construction incorrectly ignores the word "selectively" in the claim, and
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`Patent Owner's Response (U.S. Pat. No. 8,099,420)
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`IPR 2014-00058
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`improperly attempts to introduce "or" into the construction in a possible attempt to
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`read "selectively" out of the claim. Stated another way, while unreasonable,
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`petitioner could possibly argue that its construction could be met simply by a
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`system to "permit" the recited act - this would improperly read "selectively" out
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`of the claim.
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`Claim 166 reads as follows, inter alia:
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`"(a2) selectively permit the particular data item to be made available
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`for access and to be provided to or accessed by or from at least some
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`of the computers in a network of computers, wherein the data item is
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`not to be made available for access or provided without
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`authorization, as resolved based, at least in part, on whether or not
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`at least one of said one or more content-dependent digital identifiers
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`for said particular data item corresponds to an entry in one or more
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`databases ... each of said identifiers in each said database
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`corresponding to at least one data item of a plurality of data items ..
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`. " ( emphasis added)
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`The plain language of claim 166 requires at least that the data item is not made
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`available for access or provided without authorization, and that the "selectively"
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`permitting in this respect is resolved based on whether or not at least one of said
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`one or more content-dependent digital identifiers for the data item corresponds to
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`an entry in one or more databases. (Dewar Deel., 1127 [Ex. 2012].) This is the
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`correct construction. Petitioner's construction is incorrect because it potentially
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`conflicts with the plain language of the claim. For example, petitioner's
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`construction improperly does not reflect that (i) the data item is not made available
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`Case 5:18-md-02834-BLF Document 412-5 Filed 04/22/19 Page 13 of 49
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`Patent Owner's Response (U.S. Pat. No. 8,099,420)
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`IPR 2014-00058
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`for access or provided without authorization, and (ii) the "selectively ... " is
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`resolved based on whether or not at least one of said one or more content(cid:173)
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`dependent digital identifiers for the data item corresponds to an entry in one or
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`more databases comprising a plurality of identifiers so that access/providing is
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`authorized/permitted when one of these occurs but not when the other occurs.
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`F. Claim 166 Requires that the Particular Data Item Corresponding to the
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`Identifier is Selectively Permitted to be Accessed/Provided Based on the
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`Result o(an Identifier Comparison.
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`Claim 166 reads as follows, inter alia:
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`"( a2) selectively permit the particular data item to be made available
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`for access and to be provided to or accessed by or from at least some
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`of the computers in a network of computers, wherein the data item is
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`not to be made available for access or provided without
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`authorization, as resolved based, at least in part, on whether or not at
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`least one of said one or more content-dependent digital identifiers for
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`said particular data item corresponds to an entry in one or more
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`databases ... " ( emphasis added)
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`Thus, claim 166 requires that the particular data item corresponding to the content(cid:173)
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`dependent identifier is selectively accessed/provided, based on "whether or not at
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`least one of said one or more content-dependent digital identifiers for said
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`particular data item corresponds to an entry in one or more databases comprising a
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`plurality of identifiers ... " The particular data item must be accessed/provided at
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`Case 5:18-md-02834-BLF Document 412-5 Filed 04/22/19 Page 14 of 49
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`Patent Owner's Response (U.S. Pat. No. 8,099,420)
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`IPR 2014-00058
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`least some of the time, based on the resolving of "whether or not at least one of
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`said one or more content-dependent digital identifiers for said particular data item
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`corresponds to an entry in one or more databases comprising a plurality of
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`identifiers ... " (Dewar Deel., ,r 28 [Ex. 2012].)
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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 '420 patent expires on April 11, 2015. Accordingly,
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`PO has no ability to amend the '420 patent in this proceeding and no appeal will
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`take place until after the '420 patent expires. Indeed, the USPTO will have
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`jurisdiction over this proceeding after the '420 patent expires. No certificate under
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`35 U.S.C. § 318(b) can issue before the '420 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 USPTO after the '420 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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`Case 5:18-md-02834-BLF Document 412-5 Filed 04/22/19 Page 15 of 49
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`Patent Owner's Response (U.S. Pat. No. 8,099,420)
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`IPR 2014-00058
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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 herein 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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`It is noted that further claim construction issues may be reflected in the
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`arguments below.
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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 MoneyIN, 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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`Case 5:18-md-02834-BLF Document 412-5 Filed 04/22/19 Page 16 of 49
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`Patent Owner's Response (U.S. Pat. No. 8,099,420)
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`IPR 2014-00058
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`Int 'l 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 obviousness." McGinley
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`v. Franklin Sports, Inc., 262 F.3d 1339, 1354 (Fed. Cir. 2001).
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`IV. WOODHILL AND FRANCISCO BOTH FAIL TO DISCLOSE
`COMPARING OR ANALYZING A DATA ITEM IDENTIFIER WITH
`RESPECT TO A PLURALITY OF CONTENT-BASED IDENTIFIERS IN A
`DATABASE TO DETERMINE IF ACCESS IS AUTHORIZED.
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`Claim 166 recites:
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`" ... authorization, as resolved based, at least in part, on whether or
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`not at least one of said one or more content-dependent digital
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`identifiers for said particular data item corresponds to an entry in one
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`or more databases, each of said one or more databases comprising g_
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`plurality of identifiers, each of said identifiers in each said database
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`corresponding to at least one data item of a plurality of data items, and
`each of said identifiers in each said database being based, at least in
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`part, on at least some of the data in a corresponding data item."
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`Thus, claim 166 requires the ability to compare or otherwise analyze the content-
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`dependent digital identifier for the particular data item with respect to the plurality
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`of content-based identifiers in the database for resolving "whether or not" the
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`identifier corresponds to an entry in the database. It would be impossible to be
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`able to determine or resolve that the identifier does "not" correspond to an entry in
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`the database without being able to compare or otherwise analyze the identifier with
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`multiple claimed content-based identifiers in the database. (Dewar Deel., ,r,r 30-31
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`[Ex. 2012].) For example, assume that a database contained 100 content-based
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`identifiers stored therein. One could not determine that a given identifier did "not"
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`correspond with any of the 100 content-based identifiers in the database unless the
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`system was capable of comparing or otherwise analyzing that identifier with
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`respect to the plurality of identifiers in some fashion. Id. Moreover, the "not"
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`aspect of "whether or not" must be determined because this is necessary for the
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`"selectively" permitting of access that is expressly recited in the claim. Id.
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`Accordingly, claim 166 requires comparing or otherwise analyzing the content(cid:173)
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`dependent digital identifier for the particular data item with respect to the plurality
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`of content-based identifiers in the database in order to determine whether access to
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`that particular item is authorized. (Dewar Deel., ,r 31 [Ex. 2012].) Both Woodhill
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`and Francisco fail to disclose this subject matter. Id. Thus, even the alleged
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`combination (which patent owner does not agree with in any event) fails to meet
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`the claimed subject matter.
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`The decision on institution indicates that Woodhill does not disclose this
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`subject matter, and that Francisco is relied upon in this respect. (Paper 10 at 25-26,
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`30.) In this respect, the decision on institution states that "implementing
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`Francisco's authorization check mechanism in Woodhill's distributed computer
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`network system would have been an obvious improvement." (Paper 10 at 30.)
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`However, Francisco also fails to disclose this claimed subject matter - thus, the
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`alleged combination (which PO disagrees with in any event) also fails to disclose
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`the above-identified claimed subject matter. (Dewar Deel.,,, 32-36 [Ex. 2012].)
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`Francisco first performs an "authentication" check at comparator 36 to
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`determine whether the requested program has changed relative to the base version.
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`(Dewar Deel.,, 32 [Ex. 2012].) Then, "subsequent" to the authentication check,
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`Francisco determines at comparator 40 whether the requesting user is authorized to
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`access the program. (Id.; and Francisco at Fig. 2; col. 1 :40-42; and col. 2:65 to col.
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`3:35.) The program identifier is compared with only a single value in comparator
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`36 during the "authentication" check, and is not compared with, or analyzed with
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`respect to, anything in comparator 40 during the "authorization" check. Id.
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`Francisco's authentication check at comparator 36 merely compares a
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`program identifier ( electronic identification indicia) 34 from generator 32 with a
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`single program identifier 12. (Francisco at Fig. 2; col. 1 :40-42; col. 2:65 to col.
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`3:20; and col. 4:12-28; Mercer Dep. 60 [Ex. 2015]; and Dewar Deel., 132 [Ex.
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`2012].) Thus, there is no comparison of an identifier (12 or 34) with a "plurality of
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`values" in the authentication check at comparator 36. (Dewar Deel., 132 [Ex.
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`2012].) Moreover, comparator 36 merely performs an authentication check to
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`make sure that the requested program has not changed (Mercer Dep. 63 [Ex.
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`2015])- this is not a determination of whether a given user is authorized to access
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`the program. (Dewar Deel., 132 [Ex. 2012].)
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`If there is a match between identifiers 12 and 34 in comparator 36, then the
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`requested program has not changed and it is only then that Francisco moves on to
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`comparator 40 for determining whether the requesting user is authorized to access
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`the program. (Francisco at Fig. 2; col. 3:17-36; col. 4:30-51; and Dewar Deel., ,r
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`33 [Ex. 2012].) Francisco clearly explains that the authorization check is
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`performed "subsequent" to the authentication check. (Francisco at Fig. 2; col.
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`1 :40-42; and Dewar Deel., 133 [Ex. 2012].) Because the authorization check is
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`"subsequent" to the authentication check, they are not the same and are different
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`checks. Id. In making the authorization check at comparator 40, Francisco
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`compares an identification indicia of the requesting user with a user profile 42.
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`(Francisco at Fig. 2; col. 3 :20-36; col. 4:30-33; and col. 4:40-51; Mercer Dep. 61
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`[Ex. 2015]; and Dewar Deel., 133 [Ex. 2012].) Comparator 40 compares these
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`two user indicia with each other in order to determine whether access is authorized.
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`Id. See also Francisco at col. 4:48-51. Importantly, Francisco's comparator 40
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`does not compare program identifier 34 with anything- it merely forwards
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`identifier 34 in a "program release" signal if the two user indicia match each other.
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`(Dewar Deel., 133 [Ex. 2012].) Stated another way, Francisco's comparator 40
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`does not analyze program identifier 34 with respect to any other content-based
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`identifier - it merely forwards identifier 34 in a "program release" signal if the two
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`user indicia match each other. Id.
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`Accordingly, Francisco compares the program identifier (12 or 34) with a
`
`single value in comparator 36 to make sure that the file is authentic (i.e., that it has
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`not changed), and if the file is found to be authentic then Francisco later compares
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`user information in another comparator 40 to determine if access is authorized.
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`(Dewar Deel., 134 [Ex. 2012].) Thus, Francisco's program identifier 34 (or 12):
`
`(i) is only compared to a single value for determining whether the program has
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`changed, and (ii) is not compared to, or analyzed with respect to, anything for
`
`determining whether access by a particular user is authorized. Id. Accordingly,
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`even providing Francisco's system in Woodhill fails to meet the claimed subject
`
`matter.
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`If Francisco's system were provided in Woodhill (with Woodhill's binary
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`object identifiers 74 or records 58 possibly taking the place of Francisco's program
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`identifiers, or alternatively with Francisco's progra1n identifiers being used), the
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`claimed invention would still not be met because the combination would NOT
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`determine whether access to the data item is authorized or not based on the result
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