`Case 5:18—md-02834-BLF Document 561-6 Filed 11/01/19 Page 1 of 51
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`EXHIBIT 6
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`EXHIBIT 6
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`Case 5:18-md-02834-BLF Document 561-6 Filed 11/01/19 Page 2 of 51
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD IN THE UNITED
`STATES PATENT AND TRADEMARK OFFICE
`
`Trial N0.:
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`IPR 2013—00596
`
`In re:
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`US. 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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`Apple, Inc.
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`Inventors:
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`David A. Farber and Ronald D. Lachman
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`For: CONTROLLING ACCESS TO DATA IN A DATA PROCESSING SYSTEM
`
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`June 16, 2014
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`PATENT OWNER’S RESPONSE PURSUANT TO 37 C.F.R. § 42.120
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`2020057
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`Patent Owner’s Response (US Pat. No. 7,802,310)
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`IPR 2013-00596
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`TABLE OF CONTENTS
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`Page
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`SOLE INSTITUTED GROUND .................................................................... l
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`II.
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`CLAIM CONSTRUCTIONS .......................................................................... 2
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`A.
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`“data item” ............................................................................................ 2
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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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`“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 .
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`. .” (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................... IO
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`l—< l—t l—t
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`LAW .................. l 1
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`THE MODIFICATION TO WOODHILL BASED ON STEFIK
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`ALLEGED BY PETITIONER’S EXPERT WOULD NOT HAVE
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`BEEN OBVIOUS BECAUSE ONE OF ORDINARY SKILL IN THE
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`ART WOULD HAVE TRIED TO MINIMIZE (NOT MAXIMIZE)
`THE NUMBER OF COMPARISON PROCEDURES REQUIRED
`TO CHECK WHETHER ACCESS WAS AUTHORIZED ......................... 12
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`ONE WOULD NOT HAVE MODIFIED WOODHILL TO CHECK
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`WHETHER ACCESS TO A FILE BY A COMPUTER WAS
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`AUTHORIZED WHEN THE COMPUTER ALREADY HAD THE
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`CURRENT VERSION OF THAT FILE ........................... l9
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`VI.
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`STEFIK TEACHES AWAY FROM THE ALLEGED
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`MODIFICATION BY IGNORING UNIQUE IDENTIFIERS AND
`NOT USING THEM TO DETERMINE WHETHER ACCESS IS
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`AUTHORIZED ............................................................................................. 22
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`Patent Owner’s Response (U.S. Pat. No. 7,802,310)
`IPR 2013—00596
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`VII. KSR DEMONSTRATES NONOBVIOUSNESS BECAUSE PRIOR
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`ART ELEMENTS ARE NOT USED FOR THEIR INTENDED
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`PURPOSE AND DO NOT SERVE THEIR INTENDED FUNCTION
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`IN THE ALLEGED COMBINATION ......................................................... 24
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`VIII. THE ART TEACHES AWAY FROM THE ALLEGED
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`MODIFICATION BECAUSE “FUNDAMENTAL”, “KEY” AND
`“MUST” FEATURES OF STEFIK ARE NOT REFLECTED IN THE
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`ALLEGED COMBINATION ....................................................................... 26
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`IX.
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`GRANULES CORRESPONDING TO CONTENTS IDENTIFIERS IN
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`THE ALLEGED REQUEST IN WOODHHILL AS ALLEGEDLY
`MODIFIED BY STEFIK ARE NEVER PROVIDED TO THE
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`REQUESTING COMPUTER IN RESPONSE TO THE REQUEST .................. 30
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`X.
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`THE ALLEGED IDENTIFIER IN THE WOODHILL/STEFIK
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`COMBINATION IS NOT A “NAME” AND IS NOT USED FOR
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`ACCESSING ........................... 32
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`XI.
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`FURTHER FLAWS IN WOODHILL INCLUDING PETITIONER’S
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`IMPROPER MIXING OF ALTERNATIVE ALLEGATIONS
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`..... 36
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`XII. SECONDARY CONSIDERATIONS .......................................................... 41
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`XIII. THE EXAMINER CONSIDERED AND ALLOWED THE
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`CHALLENGED CLAIMS OVER ALL ART RELIED UPON BY
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`PETITIONER DURING PROSECUTION OF THE ‘3 IO 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 Decl. at 1m 18~62 [EX.
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`20201)
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`US. Patent No. 7,802,310 (“the ‘3 10 patent”) has an effective filing date of
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`April 11, 1995 given its continuity.
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`(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—
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`instituted ground in Paper 9. Thus, the April 11, 1995 effective -iling date is
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`applicable in this proceeding.
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`PO notes that another IPR is also pending regarding the ‘3 10 patent. (See
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`IPR 2014—00062.)
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`1. 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 ‘3 10 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 — US.
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`1
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`Patent Owner’s Response (U.S. Pat. No. 7,802,310)
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`lPR 2013-00596
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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 ‘3 10 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 12. AWH Corp, 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. “data item ”.
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`The specification of the ‘3 10 patent provides a definitionfor 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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`Correct Construction
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`“data item”
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`Sequence ofbiis.
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`(‘3 10 patent, col. 2:16—17.) As the
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`
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`
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`(This term appears
`expressly in claims 24,
`32 and 70. This term is
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`also contained in the
`below—constructions of
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`“digital identifier”,
`“content—based
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`Board explained in its June 5, 2013 Decision in [PR
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`2013—00082, the “sequence of bits” may include any of
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`the following which represent examples in a non-
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`exhaustive list: (1) the contents of a file; (2) a portion of
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`a file; (3) a page in memory; (4) an object in an object-
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`2
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`Patent Owner’s Response (US. Pat. No. 7,802,310)
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`IPR 2013-00596
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`identifier” and
`“content-dependent
`name” and is thus also
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`relevant thereto.
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`
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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; (1 1) any other entity
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`which can be represented by a sequence of bits.
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`(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 US. Patent
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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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`B. “digital identifier” {claim 86); “content—based identifier ” (claims 70Z 812.
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`The Board construed these two terms as “an identifierfor a data item being
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`based at least in part on a given function ofat least some 0ftlzelbz'ts in the
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`particular sequence ofbits 0ftlie 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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`Patent Owner’s Response (U.S. Pat. No. 7,802,310)
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`IPR 2013-00596
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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. 47; and Ex. 2014.)
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`C.
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`‘bontent—a’egendent nameflclaims 24432).
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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 namefor
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`a data item being based at least in part on a given function ofafl 0fthe bits in the
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`particular sequence of bits 0fthe 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 afingerprint
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`is an identifierfor a person, it is £95 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—
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`dependent name” would be wrong, unreasonable and illogical. Even Woodhill
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`Patent Owner’s Response (US. Pat. No. 7,802,310)
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`IPR 2013—00596
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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., ‘3 10 patent, col. 15:34—3 7; 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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`Decl., 1] 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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`namefor a data item being based at least in part on a given function ofall 0ftbe
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`bits in the particular sequence of bits 0ftbe 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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`Patent Owner’s Response (U.S. Pat. No. 7,802,310)
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`IPR 20l3—00596
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`D.
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`‘fS‘éZQCZ‘iVBZMfI’I/Llfl’lg.
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`. .” (cl_aim 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 ‘3 10 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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`I
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`“(A) .
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`.
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`. determining whether the content—based identifier for the
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`particular data item corresponds to an entry in a database comprising
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`a plurality of content—based identifiers; and (B) based at least in part
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`on said determining inJig; (A2, selectively permitting the particular
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`data item to be accessed at or by one or more computers in the .
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`network. . .” (emphasis added)
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`Petitioner’s construction improperly attempts to read the above—underlined
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`language of claim 70 out of the claim. Petitioner would have the Board construe
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`claim 70 so that the “permitting” is performed based on whether any condition is
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`met. Contrary to petitioner’s construction, the plain language of claim 70 requires
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`that the “selectively permitting .
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`. .” 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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`6
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`Patent Owner’s Response (US. Pat. No. 7,802,310)
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`IPR 2013—00596
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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 .
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`. .” 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. “selectively allow. . .”(claims 8] and 862.
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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 8i reads as follows:
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`to .
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`.
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`. (b) compare the content—based identifier of the particular
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`sequence of bits to a plurality of values; and to (c) selectively allow
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`said particular sequence of bits to be provided or accessed by other
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`devices depending on whether or not said content-dependent
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`identifier corresponds to one of the pluralzfi of values.” (emphasis
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`added)
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`Patent Owner’s Response (US. Pat. No. 7,802,310)
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`IPR 2013—00596
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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 ofbits to be
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`provided/accessed when one ofconditions (z) and (it) occurs, and not allow the
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`sequence osz'ts to be provided/accessed when the other ofconditions (I) and (it)
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`occurs. Petitioner’s construction of to “selectively allow” in claim 86 is similarly
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`flawed. “Selectively allow .
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`. .” 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 Corresgonafi/zg 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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`Patent Owner’s Response (US. Pat. No. 7,802,310)
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`IPR 2013-00596
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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,
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`said reguest comprising at least a content—based identifier for a
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`particular data item .
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`.
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`. (A) .
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`.
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`. determining Whether the content—
`
`based identifier for the particular data item corresponds to an entry in
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`a database comprising a plurality of content-based identifiers; and
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`(B) based at least in part on said determining in step (A), selectively
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`permitting the particular data item to be accessed at or by one or
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`more computers in the network .
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`. .” (emphasis added)
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`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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`Woodhill/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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`Patent Owner’s Response (US. Pat. No. 7,802,310)
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`IPR 2013-00596
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`computer in response to the request. (Goldberg Dep. 65-67, 8082 [Ex 2015]; and
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`Dewar Decl., {Hi 26, 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 Proceeciiyg,
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`37 C.F.R. § 42.100(b) states that a claim in an “unexpired patent” shall be
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`given its broadest reasonable construction (“BRC” or “BRl”) in light of the
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`specification. However, the ‘3 10 patent expires on April 11, 2015. Accordingly,
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`PO has no ability to amend the ‘3 10 patent in this proceeding and no appeal will
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`take place until after the ‘3 10 patent expires. Indeed, the USPTO will have
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`jurisdiction over this proceeding after the ‘3 10 patent expires. No certificate under
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`35 U.S.C. § 318(b) can issue before the ‘3 10 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 ‘3 10 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).
`
`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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`Patent Owner’s Response (U.S. Pat. No. 7,802,310)
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`IPR 2013—00596
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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. 12. Union Oil C0. 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
`“necessarily present” in the reference, “not merely probably or possibly present.”
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`Trintec Indus, Inc, v. Top—USA. 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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`Ini’l Co. v. Teleflex Inc, 550 US. 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 C0. ofKansas City, 383 US. 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 US 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, .
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`.
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`. 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.” McGinZey
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`12. 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 HAVE BEEN
`OBVIOUS BECAUSE ONE OF ORDINARY SKILL IN THE ART WOULD
`HAVE WANTED TO MINIMIZE (NOT MAXIMIZE) THE NUMBER OF
`COMPARISON PROCEDURES REQUIRED TO CHECK WHETHER
`ACCESS WAS AUTHORIZED
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`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—51, 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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`74 [Ex. 2015].) In Woodhill as allegedly modified by Steflk, 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
`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-
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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. 6467,
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`71, 84—85 [Ex 2015].)
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`I
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`Petitioner’s expert alleges that it would have been obvious to have modified
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`Woodhill’s column 17 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. 1d. Petitioner does not
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`rely on any other procedure in Woodhill as allegedly modified by Stefik to meet
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`the challenged claims. Id.
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`Woodhill’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
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`binary objects and many granules.
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`(‘3 10 patent at col. 14:52—65, col. 17:18—35;
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`Goldberg Dep. 106—108 [EX. 2015]; and Dewar Decl., 1] 30 [EX. 2020].) As
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`petitioner’s expert testified:
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`Q. Would you agree that Woodhill's granularization procedure is
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`used for large database files?
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`A. Yes.
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`(Goldberg Dep. 106 [EX. 2015].)
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`Q. Large data, a large database file would include a plurality of
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`granules, right?
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`MR. CORNWELL: Objection. Form.
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`THE WITNESS:
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`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.
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`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.
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`THE WITNESS: Yes.
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`(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 Decl., 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 Decl, fi] 30 [Ex. 2020].)
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`Simply stated, these are very large files having many binary object and many
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`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 Woodhill’s granularization procedure to be at
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`least 1 to 2 gigabytes in size. (Dewar Decl., 1] 31 [EX. 2020].) Woodhill explains
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`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
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`would include at least 1,024 binary objects and 1,048,576 granules. (Dewar Decl.,
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`fi] 31 [EX. 2020].) Thus, 1,024 binary object identifiers and 1,048,576 contents
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`identifiers would correspond to the binary objects and granules of the file,
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`respectively. Id.
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`The alleged modification would not have been obvious to one of ordinary
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`skill in the art at the time of the invention because one of ordinary skill would have
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`sought to minimize the numbers of comparisons needed (not maximize them).
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`(Dewar Decl., 1] 32 [Ex 2020].) Under petitioner’s first read where the data items
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`are binary objects and binary object identifiers 74 are compared to determine
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`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
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`compared with a plurality of binary object identifiers for a total of 1,024 different
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`comparison processes in order to determine whether access to the single large
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`database file being restored is authorized. (Goldberg Dep. 38-39 [EX. 2015]; and
`Dewar Decl, H 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
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`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
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`compared with a plurality of contents identifiers for a total of 1,048,576 different
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`comparison processes in order to determine whether access to the single large
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`database file being restored is authorized. Id. Accordingly, the number of
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`different comparison processes needed to be performed by the allegedly modified
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`restore system would therefore be at least 1,024 (with each of these involving
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`many different comparisons), just to check if access to the single large database
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`file was authorized. Id. This would be non—sensical and illogical, as one of
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`ordinary skill in the art would never have modified a system so that it required at
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`least 1,024 comparisons to determine if access to a file was authorized. (Dewar
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`Decl, 1] 32 [Ex 2020].) As testified by petit