BEFORE THE PATENT TRIAL AND APPEAL BOARD IN THE UNITED
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`STATES PATENT AND TRADEMARK OFFICE
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`Trial No.:
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`IPR 2013—00083
`
`In re:
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`US. Patent No. 694153280
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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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`EMC Corporation and VMware, Inc.
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`Inventors:
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`David A. Farber and Ronald D. Lachman
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`For:
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`IDENTIFYING AND REQUESTING DATA IN NETWORK USING
`IDENTIFIERS WHICH ARE BASED ON CONTENTS OF DATA
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`March 21,2013
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`2020057
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`STATES PATENT AND TRADEMARK OFFICE
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`Trial No.:
`
`IPR 2013—00083
`
`In re:
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`US. Patent No. 694153280
`
`Patent Owners:
`
`PersonalWeb Technologies, LLC & Level 3 Communications
`
`Petitioner:
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`EMC Corporation and VMware, Inc.
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`Inventors:
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`David A. Farber and Ronald D. Lachman
`
`For:
`
`IDENTIFYING AND REQUESTING DATA IN NETWORK USING
`IDENTIFIERS WHICH ARE BASED ON CONTENTS OF DATA
`
`*
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`*
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`*
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`*
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`*
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`*
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`*
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`*
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`*
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`*
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`March 21,2013
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`2020057
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`Patent Owner’s Preliminary Response (U.S. Pat. No. 6,415,280)
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`[PR 2013~00083
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`TABLE OF CONTENTS
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`Tim
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`I
`
`BACKGROUND ............................................................................................. 1
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`II.
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`AS SERTED GROUNDS ................................................................................ 2
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`III.
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`CLAIM CONSTRUCTIONS .......................................................................... 3
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`IV. KANTOR, LANGER, BROWNE AND THE ESM MANUAL ARE
`NOT “PRINTED PUBLICATIONS” ............................................................. 4
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`V.
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`CONCLUSION ............................................................................................. 10
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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 C.F.R. § 42.107, PersonalWeb Technologies, LLC (“patent
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`owner”) submits this Preliminary Response to the petition seeking inter partes
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`review in this matter. This filing is timely, as it is being filed within three months
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`of the December 21, 2012 “Notice of Filing Date Accorded to Petition and Time
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`for Filing Patent Owner Preliminary Response.”
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`US. Patent No. 6,415,280 (“the ‘280 patent”) has an effective filing date of
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`April 11, 1995 given its continuity.
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`(EX. 1001.) Petitioner1 does not dispute this,
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`and acknowledges that the ‘280 patent is based on an application that was
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`originally filed on April 1 1, 1995. (Pet. 13.) And petitioner’s declarant, Mr. Clark,
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`states that “the ‘280 patent is considered to have been filed on April 11, 1995 for
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`the purposes of determining whether a reference will qualify as prior art.” (EX.
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`1009 at 4.) Accordingly, while patent owner reserves the right to establish an
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`earlier date of invention, an effective filing date of April 11, 1995 is assumed for
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`purposes of this Preliminary Response (i.e., the “critical date” is no later than April
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`11, 1995 for purposes of this submission).
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`
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`1 “Petitioner” herein refers to the petitioners expressly identified in the petition.
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`Patent owner reserves the right to establish that there are other real parties in
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`interest and/or that other parties are in privy with EMC and/or VMware.
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`1
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`Patent Owner’s Preliminary Response (US. Pat. No. 6,415,280)
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`IPR 2013-00083
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`II. ASSERTED GROUNDS
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`Petitioner has challenged claims 36 and 38 of the ‘280 patent based on only,
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`and limited to, the following alleged grounds:
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`1.
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`Claims 36 and 38 are allegedly anticipated under 35 U.S.C.
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`§102(a) by Browne (EX. 1002).
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`Claims 36 and 38 are allegedly unpatentable as obvious under 35
`
`U.S.C. §103 over Browne (EX. 1002) in view of Langer (EX.
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`1003).
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`Claims 36 and 38 are allegedly anticipated under 35 U.S.C.
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`§102(e) by Woodhill (EX. 1005).
`
`Claims 36 and 38 are allegedly unpatentable as obvious under 35
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`U.S.C. §103 over Woodhill (Ex. 1005).
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`Claims 36 and 38 are allegedly anticipated under 35 U.S.C.
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`§102(b) by the ESM Manual (EX. 1026).
`
`Claims 36 and 38 are allegedly unpatentable as obvious under 35
`
`U.S.C. §103 over Satyanarayanan I (Ex. 1029) in view of Langer
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`(Ex. 1003).
`
`Claims 36 and 38 are allegedly unpatentable as obvious under 35
`
`U.S.C. §103 over Satyanarayanan I (EX. 1029) in View of Kantor
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`(Ex. 1004).
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`Patent Owner’s Preliminary Response (US. Pat. No. 6,415,280)
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`IPR 2013—00083
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`III. CLAIM CONSTRUCTIONS
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`in this proceeding, the claims of the unexpired ‘280 patent are to be given
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`their “broadest reasonable construction in light of the specification.” 37 C.F.R. §
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`42.100(b). Patent Owner has applied that standard.
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`Under the broadest reasonable construction standard, claim terms are
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`presumed to be given their ordinary and customary meaning as would be
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`understood by one of ordinary skill in the art at the time of the invention. Phillips
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`v. AWH Corp, 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en bane). However, the
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`inventor may rebut that presumption by providing a definition of the term in the
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`specification with reasonable clarity, deliberateness, and precision. In re Paulsen,
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`30 F.3d 1475, 1480 (Fed. Cir. 1994). The specification of the patent provides
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`definitions of at least the following terms in the challenged claims with reasonable
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`clarity, deliberateness, and precision (i.e., the inventors were their own
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`lexicographer):
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`
`Correct Construction
`Claim Term
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`“data” and “data item” Sequence of bits. (‘280 patent at 001. 1:53—55.) Petitioner
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`and patent owner appear to agree on this construction.
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`(Pet. 6,)
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`“file system”
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`A collection ofdirectories. A directory is a collection of
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` “data file”
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`namedfiles. (‘280 patent at col. 5:46-48.) Petitioner and
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`patent owner appear to agree on this construction. (Pet.
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`7.)
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`A named data item that appears in a directory and which
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`Patent Owner’s Preliminary Response (US. Pat. No. 6,415,280)
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`IPR 2013—00083
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`is a datafile (which may be simple or compound).
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`(‘280
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`patent at col. 5:46-50.)
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`Petitioner proposes a construction of “file” — instead of “data file.” Patent
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`owner submits that the proper term to construe is “data file” because this is what
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`appears in the claim. The correct construction for this term is set forth above.
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`Inexplicably, petitioner also identifies proposed constructions for the terms
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`“location”, “local” and “True Name, data identity, and data identifier.” However,
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`these terms do not appear in any challenged claim and patent owner is unaware of
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`any reason to construe them in this proceeding at this juncture. These terms should
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`not be construed in this proceeding because they are unrelated to any challenged
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`claim. In any event, patent owner has provided the correct consti actions of
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`“location”, “True Name” and “data identifier” in its Preliminary Response filed in
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`IPR 2013—00085 where these terms actually appear in challenged claims.
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`IV. KANTORz LANGER2 BROWNE AND THE ESM MANUAL ARE NOT
`“PRINTED PUBLICATIONS”
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`There is no evidence establishing that Kantor (Ex. 1004), Langer (EX. 1003),
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`Browne (Ex. 1002), and the “ESM Manual” (Ex. 1026) are prior art “printed
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`publications.” Despite having a year to prepare and file its petition, petitioner has
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`provided no such evidence and has not shown that any of these qualify as prior art
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`“printed publications.” It is petitioner’s burden to establish that these are prior art
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`“printed publications”; petitioner has not met its burden. 37 C.F.R. §42.1(d).
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`Patent Owner’s Preliminary Response (US. Pat. No. 6,415,280)
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`IPR 2013-00083
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`Because Kantor, Langer, Browne and the ESM Manual have not been
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`established as prior art “printed publications”, institution should be denied for all
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`asserted grounds (i.e., grounds 1—2 and 5—7) that rely wholly or in part on any of
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`Kantor, Langer, Browne, and the ESM Manual. Synopsys, Inc. v. Mentor Graphics
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`Corp, IPR2012-00042 (Paper No. 16), at *35—36 (PTAB Feb. 22, 2013) (denying
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`institution based on a document where petitioner did not establish that it was a
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`“printed publication”). See also SR1 Int’l, Inc. v. Internet Sec. Sys., Inc, 511 F.3d
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`1 186, 1195-98 (Fed. Cir. 2008) (finding that a paper posted on an open FTP site
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`was not a “printed publication”, e.g., due to insufficient evidence of public
`
`accessibility via a customary search and insufficient evidence of cataloguing or
`
`indexing in a meaningful way); and ResQNet.com, Inc. v. Lansa, Inc, 594 F.3d
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`860, 865—66 (Fed. Cir. 2010) (finding that a user manual was not a “printed
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`publication”).
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`An inter partes review may only be requested on the basis of prior art
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`consisting of patents or printed publications. 35 U.S.C. § 31 1(b). Thus, the statute
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`itself precludes institution based on a document which has not been established as
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`a patent or printed publication. Kantor, Langer, Browne and the ESM Manual
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`certainly are not patents. And because there is no evidence that any of these
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`unauthenticated documents qualifies as a prior art “printed publication”, the statute
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`requires that the petition must be denied as to grounds 1—2 and 5—7.
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`Patent Owner’s Preliminary Response (US. Pat. No. 6,415,280)
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`lPR 20l3—00083
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`“Public accessibility” is a touchstone of determining whether a reference
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`constitutes a “printed publication.” SR1 [M7, 511 F.3d at 1194. “A given
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`reference is ‘publicly accessible’ upon a satisfactory showing that such document
`
`has been disseminated or otherwise made available to the extent that persons
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`interested and ordinarily skilled in the subject matter or art exercising reasonable
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`diligence, can locate it.” Id. Factors considered in the “printed publication”
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`inquiry include whether the document was catalogued or indexed in a meaningful
`
`way, and whether a customary search prior to the critical date would have turned
`
`up the document. Id. at 1 195—98. In SKID/1t ’Z, for example, the Federal Circuit
`
`explained that a paper posted on an open FTP site was not a “printed publication”
`
`because it was not catalogued or indexed in a meaningful way and there was no
`
`evidence that a customary search would have uncovered it prior to the critical date.
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`1d.
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`As in Synapsys, SR1 Int ’1 and ResQNet, petitioner has presented no
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`testimony, declaration, or other evidence that any of Kantor (Ex. 1004), Langer
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`(Ex. 1003), Browne (Ex. 1002), or the ESM Manual (Ex. 1026) was catalogued or
`
`indexed in a meaningful way prior to the critical date, or that any of these would
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`have turned up in a customary search prior to the critical date, or that persons
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`interested and ordinarily skilled in the art exercising reasonable diligence would
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`have located any of these documents prior to the critical date. There is no evidence
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`of any search engines, server accessibility, or search techniques for searching by
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`Patent Owner’s Preliminary Response (US. Pat. No. 6,415,280)
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`IPR 2013—00083
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`subject matter that were even in existence prior to April 11, 1995 or which could
`
`have been used to access any of these documents. There is no declaration from
`
`any alleged author of any of these documents stating when these documents were
`
`created, or to whom they were ever sent. And there is no evidence that any person
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`skilled in the art even accessed or received any of these documents prior to the
`
`critical date.
`
`Under 37 CPR. § 42.62, the Federal Rules of Evidence apply to the
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`admissibility of evidence allegedly supporting petitioner’s affirmative case. Here,
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`petitioner has failed to establish that any of these documents was sufficiently
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`publicly accessible prior to the critical date to constitute a prior art “printed
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`publication.” No testimony (e.g., declarations or other testimony) has been
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`provided by petitioner in any of these respects. While petitioner provides attorney
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`argument to support its allegations, it is well established that attorney argument is
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`neither evidence nor a substitute for evidence. Sharp Corp. v. A U Optronics
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`Corp, 2005 WL 1457747, *3 (ND. Cal. 2005) (denying Defendants’ motion for
`
`summary judgment of invalidity because Defendants did not submit testimony in
`
`support of their invalidity arguments).
`
`The Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48763 (Aug.
`
`14, 2012), explains that “[t]he Board expects that most petitions and motions will
`
`rely upon affidavits of experts.” Nevertheless, petitioner here has provided no
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`Patent Owner’s Preliminary Response (US. Pat. No. 6,415,280)
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`IPR 2013—00083
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`affidavits/declarations to establish that any of these documents qualify as prior art
`
`“printed publications.”
`
`Additionally, the documents themselves support patent owner’s point that
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`they are not prior art “printed publications.” Kantor, by its own words, is merely a
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`computer “file.” (Ex. 1004 at 22.) The printout of Kantor submitted by petitioner
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`has not been authenticated/certified in any respect, and is thus inadmissible under
`
`37 C.F.R. §42.6l(a)—(b). Moreover, there is no indication in Kantor itself
`
`regarding to whom, or when, the “file” was ever disseminated. And there is no
`
`indication in the Kantor document that it was ever catalogued or indexed in a
`
`meaningful way, or that it would have turned up in a customary search prior to the
`
`critical date. Nor is there any indication in Kantor of any search engine or search
`
`technique for searching by subject matter that could have been used to access
`
`Kantor prior to the critical date.
`
`Langer is flawed for the same reasons discussed above. Additionally, any
`
`allegation that someone may have printed Langer via “groupsgooglecom .
`
`. .” on
`
`July 29, 2003 as suggested on the bottom of each page in Langer is irrelevant,
`
`because that was well after the critical date. Whether a document could have been
`
`accessed and printed some seven years after the critical date is of no moment.
`
`Moreover, even if Langer was provided to “alt.sources.d” (there is no evidence
`
`that it was), this does not mean it qualifies as a “printed publication” for the
`
`reasons described by the Federal Circuit. In SR1 1m ’1, the court explained that a
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`Patent Owner’s Preliminary Response (US. Pat. No. 6,415,280)
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`IPR 2013—00083
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`document posted on an open site was not a “printed publication” because it was
`
`not catalogued or indexed in a meaningful way and there was no evidence that a
`
`customary search would have uncovered it prior to the critical date. SR1 Int ’1, 511
`
`F.3d at 1195—98.
`
`Browne is also flawed for the reasons discussed above.
`
`In addition, the
`
`Browne document has no date on it indicating exactly when it was created.
`
`Indeed, petitioner’s attorney argument that Browne was “published” in February
`
`1995 is contrary to the document itself, because the final page of Browne cites to
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`reference [7] dated “Mar. 1995.” (Ex. 1002 at 7.) It is unclear how Browne could
`
`have been allegedly “published” in February 1995 as alleged by petitioner’s
`
`attorney argument, when the document itself references a document from “Mar.
`
`1995” —— Browne was undoubtedly created well after the publication date alleged
`
`by petitioner. Indeed, a third party (Bea Systems, Inc.) cited the exact same
`
`Browne document as having an “Aug. 1995” date, which is well after the critical
`
`date, during prosecution of US. Patent No. 7,318,237. (Ex. 2002.) The third
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`party’s identification of an “Aug. 1995” date for the very same Browne document
`
`is yet another indication that petitioner’s allegation that Browne published in
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`February of 1995 is incorrect and without basis. (Ex. 2002.) Given that those in
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`the art believed Browne was dated “Aug. 1995”, petitioner’s lack of evidence is
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`not surprising.
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`Patent Owner’s Preliminary Response (US. Pat. No. 6,415,280)
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`IPR 2013—00083
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`The ESM Manual is also flawed for the reasons discussed above. For
`
`example, there is no indication in the ESM Manual itself regarding to whom, or
`
`when, the manual was ever disseminated. There is no evidence as to publication or
`
`public accessibility of the manual. There is no indication that it was ever
`
`catalogued or indexed in a meaningful way, or that it would have turned up in a
`
`customary search prior to the critical date. Nor is there any indication of any
`
`search engine or search technique for searching by subject matter that could have
`
`been used to access the manual prior to the critical date. ResQNet.c0m, 594 F.3d at
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`865-66 (finding that a user manual was not a “printed publication”).
`
`Accordingly, the petition should be denied as to grounds 1—2 and 5—7
`
`because Kantor, Langer, Browne and the ESM Manual have not been established
`
`as “printed publications.”
`
`For the foregoing reasons, inter partes review should not be instituted
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`regarding the ‘280 patent regarding at least Grounds 1—2 and 5-7.
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`The Commissioner is hereby authorized to charge any deficiency in the
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`fee(s) filed, or asserted to be filed, or which should have been filed herewith, to our
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`Account No. 14—1140.
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`10
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`Patent Owner’s Preliminary Response (US. Pat. No. 6,415,280)
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`IPR 2013—00083
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`Respectfully submitted,
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`NIXON & VANDERHYE P.C.
`
`By:
`
`/Joseph A. Rhoa/
`Joseph A. Rhoa
`Reg. No. 37,515
`Updeep (Mickey) S. Gill
`Reg. No. 37,334
`Counsel for Patent Owner PersonalWeb
`
`JAchaj
`Nixon & Vanderhye, PC
`901 Notth Glebe Road, 1 1th Floor
`Arlington, VA 22203-1808
`Telephone: (703) 816—4000
`Facsimile: (703) 816—4100
`
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`Patent Owner’s Preliminary Response (US. Pat. No. 6,415,280)
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`IPR 2013—00083
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`PATENT OWNER’S EXHIBIT LIST
`
`
`Exhibit No.
`Brief Description
`
`
`
`
`2003.
`
`2001
`Claim construction of “substantially unique identifier” by the US.
`
`District Court for the District of Massachusetts.
`
`2002
`US. Patent No. 7,318,237, and portion of prosecution history
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`thereof citing Browne.
`Altnet’s Opening Claim Construction Brief, in case styled Altnez‘
`Inc. v. Streamcasr Networks, Inc, CV—06—5086, dated March 29,
`2007.
`
`2003
`
`2004
`
`CWIS’ Opening Markrnan Brief, CV—02—11430, dated July 25,
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`——=..
`CERTIFICATE OF SERVICE
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`I hereby certify service of the foregoing Preliminary Response of Patent
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`Owner, and exhibits, to the following lead counsel for petitioner on March 21,
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`2013 Via email (pursuant to agreement between the parties):
`
`Peter M. Dichiara
`
`WilmerHale
`
`60 State Street
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`Boston, MA 02109
`(peter.dichiara@wilmerhale.com)
`
`By:
`
`/Joseph A. Rhoa/
`Joseph A. Rhoa
`Reg. No. 37,515
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`12
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`2020057
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