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`Case 5:18—md-02834-BLF Document 561-7 Filed 11/01/19 Page 1 of 23
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`EXHIBIT 7
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`EXHIBIT 7
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`Case 5:18—md-02834-BLF Document 561-7 Filed 11/01/19 Page 1 of 23
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`EXHIBIT 7
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`EXHIBIT 7
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD IN THE UNITED
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`STATES PATENT AND TRADEMARK OFFICE
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`Trial No.:
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`IPR 2014—00058
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`In re:
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`US. 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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`,
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`Rackspace US, Inc. and Rackspace Hosting, Inc.
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`V
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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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`*
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`January 18, 2014
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`2020057
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`Patent Owner’s Preliminary Response (US. Pat. No. 8,099,420)
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`IPR 2014—00058
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`TABLE OF CONTENTS
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`m
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`I.
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`BACKGROUND ............................................................................................. 1
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`H.
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`ALLEGED GROUNDS .................................................................................. 1
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`111.
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`CLAIM CONSTRUCTIONS .......................................................................... 2
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`IV.
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`THE EXAMINER CONSIDERED AND ALLOWED THE
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`CHALLENGED CLAIM OVER THE TWO BASE REFERENCES
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`RELIED UPON BY PETITIONER DURING ORIGINAL
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`PROSECUTION OF THE ‘420 PATENT ..................................................... 6
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`V.
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`GROUNDS 1—3 ARE BASED ON 35 U.S.C. § 112 AND SHOULD
`NOT BE INSTITUTED .................................................................................. 7
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`VI. GROUND 4 BASED ON WOODHILL SHOULD NOT BE
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`INSTITUTED ............................................................................................... 10
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`VII. CONCLUSION ............................................................................................. 18
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`PATENT OWNER’S EXHIBIT LIST
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`CERTIFICATE OF SERVICE
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`I. BACKGROUND
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`Pursuant to 37 CPR. § 42.107, Patent Owner PersonalWeb (PO) submits
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`this Preliminary Response to the petition seeking inter partes review in this matter.
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`US. Patent No. 8,099,420 (“the ‘420 patent”) has an effective filing date of April
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`11, 1995 given its continuity. (Ex. 1001.) While PO reserves the right to establish
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`an earlier date of invention, PO assumes an effective filing date of April 11, 1995
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`for purposes of this Preliminary Response (i.e., the “critical date” is no later than
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`April 11, 1995 for purposes of this submission).
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`Petitioner alleges that the challenged claim is not entitled to the claimed
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`April 11, 1995 priority date. PO disagrees, and responds to petitioner’s arguments
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`under 35 U.S.C. §§ 112 and 120 in connection with Grounds 1-3. Moreover,
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`petitioner’s arguments under 35 U.S.C. §§ 1 12 and 120 (Grounds 1~3) are
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`improper as they are contrary to 35 U.S.C. § 311(b) which states that an IPR can be
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`based “only on a ground that could be raised under section 102 or 103” (emphasis
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`added). The statute precludes grounds, such as Grounds 1-3 here, which are based
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`on § 112 written description arguments.
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`II. ALLEGED GROUNDS
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`Petitioner has challenged claim 166 of the ‘420 patent based on only, and
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`limited to, the following alleged “Groundsz”
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`1.
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`Claim 166 is allegedly obvious under 35 U.S.C. §103 over
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`Kinetech [a/k/a Farber; WO 96/32685 at EX. 1005 which is
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`1
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`Patent Owner’s Preliminary Response (U.S. Pat. No. 8,099,420)
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`IPR 2014-00058
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`allegedly a publication of the priority application of the ‘420
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`patent].
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`2.
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`3.
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`Claim 166 is allegedly obvious under 35 U.S.C. §103 over
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`Kinetech (EX. 1005) in View of Brunk (EX. 1006).
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`Claim 166 is allegedly obvious under 35 U.S.C. §103 over
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`Kinetech (Ex. 1005) in View of Francisco (EX. 1004) and Brunk
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`(EX. 1006).
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`4.
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`Claim 166 allegedly obvious under 35 U.S.C. §103 over Woodhill
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`(EX. 1003) in view of Francisco (EX. 1004).
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`III. 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. 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. In
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`re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
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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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`Claim Term
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`Sequence osz'ts. (‘420 patent, col. 2:16-17.) As the
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`1 Correct Construction “data item”
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`(claims 1, 2, 7, 8, 10, Board explained in its June 5, 2013 Decision in IPR
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`Patent Owner’s Preliminary Response (US. Pat. No. 8,099,420)
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`11,14,1649,24,2g
`32,70)
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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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`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.
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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].) Petitioner’s construction of “data item”,
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`improperly, does not reflect the above—underlined aspect
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`of the Board’s prior construction of this term (Pet. 19).
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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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`The “data item” construction set forth above is correct and should be
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`adopted.
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`Patent Owner’s Preliminary Response (US. Pat. No 8,099,420)
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`“Selectively permit. .
`. ” (claim 1662
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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
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`contends that “selectively permit” in claim 166 of the ‘420 patent should be
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`construed as “permit Q1: not permit [the recited act] depending on [the recited
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`selection condition] ” (emphasis added). Petitioner’s construction incorrectly
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`ignores the word “selectively” in the claim, and improperly attempts to introduce
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`“or” into the construction in an attempt to read “selectively” out of the claim.
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`Stated another way, petitioner’s construction would appear to 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 [or 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 .
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`.
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`. 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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`.
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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. This is the correct construction. Petitioner’s
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`' construction is incorrect because it conflicts with the plain language of the claim.
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`For example, petitioner’s construction improperly does not reflect that (i) the data
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`item is not made available for access or provided without authorization, and (ii) the
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`“selectively .
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`. .” is resolved based on whether at least one of said one or more
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`content—dependent digital identifiers for the data item corresponds to an entry in
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`one or more databases so that access/providing is authorized/permitted when one
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`of these occurs but not when the other occurs.
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`Other Terms
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`PO expressly reserves its right to provide constructions for the other terms
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`identified by petitioner (“content-dependent digital identifier” and “plurality of
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`identifiers”) in itsresponse under Rule 42.120 should this proceeding be instituted
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`as to any applicable claim.
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`PO also notes that the Board, in IPR 2013—00085, previously found that
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`“nothing in the language of the term ‘substantially unique data identifier’ or the
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`term ‘data identifier’ suggests that a particular generating or calculating method is
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`required” (Ex. 2002 at pg. 11), and that “we do not find a special definition for the
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`term ‘substantially unique identifier’ in the .
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`.
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`. paten ” (Ex. 2002 at pg. 12). These
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`prior Board statements appear to be contrary to at least some of petitioner’s claim
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`construction arguments.
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`IV. THE EXAMINER CONSIDERED AND ALLOWED THE
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`CHALLENGED CLAIM OVER THE TWO BASE REFERENCES RELIED
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`UPON BY PETITIONER DURING ORIGINAL PROSECUTION OF THE
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`‘420 PATENT
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`The two base references (Kinetech and Woodhill) relied upon by petitioner
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`were considered by the Examiner during original prosecution of the ‘420 patent, in
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`exact or cumulative form. The Examiner properly found that the challenged claims
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`complied with the written description aspect of 35 U.S.C. § 112, were entitled to
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`their claimed April 11, 1995 priority date under 35 U.S.C. § 120, and were
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`allowable over the base references upon which petitioner relies. Petitioner’s
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`second—guessing of the Examiner’s original findings are unsupported and incorrect.
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`As part of its consideration of whether to institute, the Board may take into account
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`that the art relied upon by petitioner was already considered by the Examiner and
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`that the Examiner already presumably found that the claims complied with § 112
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`and § 120. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48765
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`(Aug. 14, 2012).
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`Base reference Woodhill (US. Patent No. 5,649,196, Ex. 1003) was already
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`considered by the Examiner during original prosecution of the ‘420 patent, and the
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`Patent Owner’s Preliminary Response (US. Pat. No. 8,099,420)
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`Examiner properly allowed the challenged claims over Woodhill. (Ex. 1001 at 2;
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`and Ex. 1002 at pg. 1171.) Woodhill’s WO counterpart (WO 95/01599) was also
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`considered by the Examiner during original prosecution of the ‘420 patent. (Ex.
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`1001 at 3; and Ex. 1002 at pgs. 661 and 990—1002.)
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`US Patent No. 5,978,791 to Kinetech/Farber (cumulative of the
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`Kinetech/Farber W0 publication at Ex. 1005), and other Farber publications
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`equivalent to Ex. 1005, were already considered by the Examiner during original
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`prosecution of the ‘420 patent, and the Examiner properly allowed the challenged
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`claims over the Farber publications. (Ex. 1001 at 2; and Ex. 1002 at 1171.) It can
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`be seen by comparing the two exhibits that US. Patent No. 5,978,791 (Ex. 2010)
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`considered by the Examiner is equivalent to the W0 Kinetech/Farber publication
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`(Ex. 1005), with respect to both content and both being published well before the
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`alleged December 22, 2004 filing of the ‘420 application.
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`V. GROUNDS 1-3 ARE BASED ON 35 U.S.C.
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`112 AND SHOULD NOT BE
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`INSTITUTED
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`Grounds 1-3 should not be instituted at least because they are based on 35
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`U.S.C. § 112. Petitioner contends that claim 166 does not meet the written
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`description requirement of § 112, first paragraph, and therefore is not entitled to
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`the claimed April 11, 1995 priority date under § 120. Petitioner’s argument with
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`respect to Grounds 1—3 boils down to its contention that claim 166 fails to meet the
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`“written description” requirement of § 112, with respect to both the ‘420 patent
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`filing and the parent filings. The alleged “prior a ” argument is an afterthought,
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`IPR 2014—00058
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`because petitioner relies on the Kinetech/Farber publication WO 96/32685 (EX.
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`1005) which is alleged to be the W0 publication of the parent application of the
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`‘420 patent.
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`The IPR statute requires that allegations regarding patent claims based
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`primarily on § 112 arguments are to be handled by the federal courts, not the
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`PTAB. 35 U.S.C. § 311(b) states:
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`“(b) SCOPE. A petitioner in an inter partes review may request to
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`cancel as unpatentable 1 or more claims of a patent only on a ground
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`that could be raised under section 102 or 103 and only on the basis of
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`prior art consisting ofpaz‘enz‘s or printedpublication.” (emphasis
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`added.)
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`Allegations of unpatentability in an IPR can be based only on a ground that could
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`be raised under and based on section 102 or 103. Contrary to the statute, Grounds
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`1—3 are based on § 112 arguments. The § 103 arguments in the petition regarding
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`Grounds 1—3 are afterthoughts, and are not the basis for these Grounds. The basis
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`for these Grounds is § 112, and therefore these Grounds are improper under the
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`statute. Institution should be denied as to Grounds 1—3 for at least these reasons.
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`Furthermore, petitioner cannot meet its burden regarding its effective filing
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`date argument. Dr. Mercer discusses the April 11, 1995 filing in paragraphs 48~52
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`of his declaration. (Ex. 1008, {W 48—52.) However, Dr. Mercer does not address
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`or discuss the “Calculate True Name” mechanism described in the ‘420 patent and
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`the April 11, 1995 filing that discusses True Names in various embodiments. (‘420
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`patent, col. 11:56 to col. 13:39.) Dr. Mercer never alleges that the “Calculate True
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`Name” mechanism portion of the specification states “all and only”, and never
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`alleges that the “Calculate True Name” mechanism is limited to “all and only.”
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`Dr. Mercer never alleges how one of ordinary skill in the art would have
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`understood the “Calculate True Name” mechanism portion of the specification.
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`And Dr. Mercer never alleges that the claim does not read on the description filed
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`April 11, 1995. Dr. Mercer’s analysis of the other filings in the chain are similarly
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`flawed. Indeed, while Dr. Mercer admits that original claim 49 was not limited to
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`“all and only”, he never even addresses the “Calculate True Name” mechanism in
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`the specification of the April 11, 1995 filing. Dr. Mercer provides no analysis of
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`the April 11, 1995 filing (or any other filing) as a whole as required by law, and his
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`attempt to ignore the “Calculate True Name” mechanism is particularly telling. In
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`re Peters, 723 F.2d 891 (Fed. Cir. 1983); and In re Rasmussen, 650 F.2d 1212
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`‘ (C.C.P.A. 1981). Thus, the Farber/Kinetech publication WO 96/32685 has not
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`been established as “prior art.” Petitioner’s argument is legally flawed in this
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`respect, and institution of Grounds 1-3 should be denied for these reasons as well.
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`Additionally, PO notes that the Board in IPR 2013—00085 previously stated
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`that “nothing in the language of the term ‘substantially unique data identifier’ or
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`the claim term ‘data identifier’ suggests that a particular generating or calculating
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`method is required” (EX. 2002 at pg. 11), and that “we do not find a special
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`definition for the term ‘substantially unique identifier’ in the .
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`.
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`. patent” (EX. 2002
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`at pg. 12).
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`VI. GROUND 4 BASED ON WOODHILL SHOULD NOT BE INSTITUTED
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`The Examiner was correct in allowing the challenged claims over Woodhill
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`during original prosecution of the ‘420 patent.
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`First, 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 (or access or provided without
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`authorizationz 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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`[or said garticular data item corresponds to an entfl in one or more
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`databases .
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`.
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`. 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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`.
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`.” (emphasis added)
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`For example, see the specification of the ‘420 patent at: Abstract; element 136 in
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`Fig. 1(b); Fig. 9; col. 8:32—34; col. 10:66 to col. 11:11; and col. 31:1-31. The plain
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`language of claim 166 requires at least that the data item is not made availablefor
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`access or provided without authorization, and that the “selectively” permitting in
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`this respect is resolved based on whether or not at least one of said one or more
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`content—dependent digital identifiers for the data item corresponds to an entry in
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`one or more databases.
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`Woodhill fails to disclose or suggest at least the above—identified subject
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`matter of claim 166. Indeed, petitioner’s alleged expert (Dr. Mercer) suggests that
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`Woodhill fails to disclose the above—identified subject matter.
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`(EX. 1008, W 103—
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`104.) Woodhill never discusses any determination that access to a given data item
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`is not authorized. Woodhill fails to disclose or suggest that “the data item is not
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`made available for access or provided without authorization”, especially based on
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`a content—dependent digital identifier as required by the claim.
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`Moreover, Woodhill also fails to disclose or suggest “selectively” permitting
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`being resolved based on whether or not a content-dependent digital identifierfor
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`the data item corresponds to an entry in one or more databases comprising
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`identifiers. Petitioner improperly switches between different embodiments of
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`Woodhill. Petitioner relies on the “restore” procedure of Woodhill’s
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`granularization feature which is discussed in Woodhill at columns 16-17 and Figs.
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`Sh—Si. (Pet. 45.) Petitioner alleges that the “binary object identifiers 74” in
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`Woodhill correspond to the “content—dependent digital identifiers” in claim 166.
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`However, while petitioner relies on the “restore” procedure in Woodhill’s
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`granularization for much of claim 166, petitioner improperly switches to
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`Woodhill’s backup embodiment in an attempt to meet part of the claim. For
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`example, petitioner switches to a description of Woodhill’s backup procedure at
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`column 2:13—19 of Woodhill for part of the claim regarding selectively permitting
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`based on whether a content—dependent identifier for the data item “corresponds” to
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`an entry in a database comprising identifiers.
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`(Pet. 46; and EX. 1008, ii 100 at last
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`sentence.) Woodhill’s description at col. 2:13-19 relates to and tracks the backup
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`procedure described in Woodhill at column 9. Switching between different
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`embodiments of Woodhill in an attempt to meet different aspects of the claim is
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`legally improper. It is well established that in order to meet a claim a reference
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`must not only disclose the elements of the claim, but must also disclose those
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`elements “arranged or combined in the same way as in the claim.” Net MoneyIN,
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`Inc. v. VeriSign, Inc, 545 F.3d 1359, 1369-71 (Fed. Cir. 2008). One cannot do this
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`by switching back and forth between different elements in a reference to meet a
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`given element of a claim. Id. at 1371. Petitioner’s allegations fail as a matter of
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`law.
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`The legal flaws in petitioner’s argument result from the fact that, contrary to
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`petitioner’s allegations, Woodhill cannot meet claim 166 in the above respects.
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`Woodhill’s granularization procedure never compares a binary object identifier 74
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`with a plurality of identifiers. (Woodhill, col. 14:52 to col. 18:9.) Moreover, there
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`would have been no logical reason to have modified Woodhill to have done this,
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`and petitioner provides none.
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`Second, petitioner’s reliance on what Woodhill allegedly “necessarily
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`implies” is flawed as a matter of law. Petitioner alleges that Woodhill “necessarily
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`implies a correspondence determination.” (Pet. 46; Ex. 1008, {l 100.) While PO
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`disagrees with petitioner’s allegation in this respect, the point here is that
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`Patent Owner’s Preliminary Response (US. Pat. No. 8,099,420)
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`[PR 2014—00058
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`“necessarily implies” is much different than “necessarily discloses.” Implying a
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`feature is different than disclosing that feature, and when something is “implied” it
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`is not necessarily present. The issue here is what Woodhill necessarily discloses,
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`not what Woodhill “necessarily implies.” Grounds 1—3 are legally flawed for this
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`reason as well.
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`Third, in the granularization process upon which petitioner relies, Woodhill
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`is not designed to provide, and never provides, any alleged “data item” to a
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`plurality of computers. Petitioner appears to allege that a binary object in
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`Woodhill corresponds to the “data item” in claim 166. However, no binary object
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`is provided to the local computer 20 by the backup file server 12 in Woodhill’s
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`granularization embodiment. No binary object sequence of bits is ever sent from
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`the backup file server 12 to a local computer 20 in the restore procedure of
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`Woodhill’s granularization feature. In Woodhill’s granularization embodiment,
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`the backup file server 12 only sends select “granules” of a large database file to the
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`local computer. (Woodhill, col. 17:60~65.) Binary object identifiers 74 do not
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`identify granules. Woodhill’s granularization embodiment does not send large
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`database files or binary objects from server 12 to the local computer —- just
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`granules. Id. Thus, no alleged “data item” is even provided to any local computer
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`in Woodhill’s granularization embodiment. Because Woodhill’s granularization
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`embodiment never provides any alleged data item to a plurality of computers,
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`Woodhill cannot logically meet the requirements in claim 166 of “selectively
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`Patent Owner’s Preliminary Response (US. Pat. No. 8,099,420)
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`IPR 2014—00058
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`permit the particular data item to be made available for access and to be provided
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`to or accessed by or from at least some of the computers .
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`. .” Reliance on
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`Woodhill’s granularization embodiment is flawed for this reason as well.
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`Fourth, contrary to petitioner’s allegations at 1] 109 of Ex. 1008, it would
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`not have been obvious to have modified Woodhill granularization procedure based
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`on Francisco to have used Woodhill’s binary object identifiers 74 to determine
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`whether alleged access to each binary object was authorized/unauthorized. Such a
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`modification would have been both illogical and unreasonable, and would not have
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`been tried, for at least the following reasons.
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`Woodhill’s granularization process upon which petitioner relies relates only
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`to “large” database files that each have many binary objects and many granules.
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`(Woodhill, col. 14:52-67; col. 15:11—17; col. 17: 1 8—22; col. 17:31-35.) Meanwhile,
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`Francisco discloses checking to see if a user is authorized to access an entire
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`“program” —- not for checking authorization regarding each of many tiny parts of
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`that program. For the “large” database files used in Woodhill’s granularization
`
`procedure, one of ordinary skill in the art would never have checked
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`authorization/unauthorization for each of the many binary objects or each of the
`many granules in that large database file. One would not have checked
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`authorization/unauthorization on a granule—by-granule basis, or on a binary object—
`
`by—binary object basis, as petitioner alleges -- this would have been highly
`
`inefficient, wasteful, illogical, and would have significantly slowed down the
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`Patent Owner’s Preliminary Response (US. Pat. No. 8,099,420)
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`IPR 2014-00058
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`system. Franciso simply discloses checking authorization/unauthorization for an
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`entire program on a program—by-program basis, and does not disclose or suggest
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`checking authorization/unauthorization for each of many tiny portions of a
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`program on a portion—by—portion basis - indeed, no cited reference discloses this.
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`Modifying Woodhill to have checked authorization/unauthorization on a
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`file—by-file basis cannot meet claim 166, because each large database file in
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`Woodhill’s granularization procedure has many binary objects and many granules
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`so that binary object identifiers 74 could not reasonably have been used for file
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`authorization checks. And petitioner has provided no logical reason as to why one
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`of ordinary skill in the art would have ever checked authorization/unauthorization
`
`on a granule~by—granule basis or on a binary object—by—binary object basis in
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`Woodhill’s granularization procedure (as opposed to on a file-by-file basis). The
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`alleged combination is fundamentally flawed for at least this reason.
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`During the backup procedure, Woodhill separates each file being backed up
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`into multiple data streams. (Woodhill, col. 7:41—43.) And petitioner admits that
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`Woodhill states that “these data streams may represent regular data, extended
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`attribute data, access control list data, etc.” (Woodhill, col. 7:44-47.) Petitioner
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`alleges that this “access control list data” relates to authorization checking in
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`Woodhill. (Ex. 1008, {l 104.) However, referring to Fig. 5A of Woodhill, it can be
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`seen that this “access control list data” exists in step 132 ngQLc binary object
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`identifiers 74 are even calculated in step 138. (Woodhill, Fig. 5A, col. 7:40—67.)
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`Patent Owner’s Preliminary Response (US. Pat. No. 8,099,420)
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`IPR 2014—00058
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`Indeed, binary objects in Woodhill include such extended attribute data and access
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`control list data, and Woodhill creates binary object identifiers 74 in part by
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`hashing such extended attribute data and access control list data. (Woodhill, col.
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`7:41-67 and Fig. 5A.) Given that Woodhill’s “access control list data” exists prior
`
`to binary object identifiers 74 even being created, it would be illogical and non-
`
`sensical to modify Woodhill as alleged by petitioner to use the binary object
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`identifiers 74 for checking authorization/unauthorization. Moreover, if Woodhill
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`already had an authorization/unauthorization system based on this “access control
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`list data” as alleged by petitioner (which is unrelated to binary object identifiers
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`74), there would have been no logical reason to have modified Woodhill as alleged
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`by petitioner to add another authorization/unauthorization checking system to
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`Woodhill. See Ex Part6 Rinkevich er a1, Appeal 20071317, decided May 29, 2007
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`(explaining that one of ordinary skill in the art having common sense would not
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`have provided a component to address a problem that did not exist or was already
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`solved).
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`Additionally, Woodhill teaches away from the alleged combination.
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`Woodhill repeatedly teaches goals of minimizing human intervention and costs.
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`(Woodhill, col. 1:61—64; and col. 2245-46.) In contrast with Woodhill’s teachings,
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`the alleged modification would have resulted in dramatic increases in both human
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`intervention and costs which Woodhill teaches would have been undesirable.
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`Francisco’s system requires that each of many users has an authorized user profile
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`Patent Owner’s Preliminary Response (US. Pat. No. 8,099,420)
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`IPR 2014-00058
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`and electronic identification, and that all of this must be stored in the system.
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`(Eg, Francisco, col. 2:53—64.) One of ordinary skill in the art would have
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`recognized that requiring each such user profile to reflect each and every binary
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`object and/or granule in each large database file would have been unreasonable,
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`illogical, inefficient, very costly, and would have required an enormous amount of
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`effort. One of ordinary skill in the art would not have attempted such a
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`modification, especially given Woodhill’s teaching that human intervention and
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`costs needs to be minimized. Again, there is simply no logical reason to have done
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`this. The alleged combination is flawed for this reason as well.
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`Still further, Francisco’s system would have rendered Woodhill’s backup
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`system inoperative. Francisco states that “the algorithm would be periodically
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`varied to enhance system security.” (Francisco, col. 2:43—44.) If this were done in
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`Woodhill, at least the backup system would be inoperable because a binary object
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`identifier 74 for one version of a binary object would be calculated using one
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`algorithm and a binary object identifier 74 for the next version of that binary object
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`would be calculated using another algorithm, which would render Woodhill’s
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`comparisons in the backup procedure unable to achieve their intended goal of
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`detecting change. This is yet another reason why one of ordinary skill in the art
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`would not have tried to modify Woodhill based on Francisco. And this is another
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`reason why one would not have used Woodhill’s binary object identifiers 74 for
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`authorization/unauthorization purposes.
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`Case 5:18-md-02834-BLF Document 561-7 Fi
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