throbber
Trials@uspto.gov Paper 79
`571-272-7822 Entered: April 15, 2014
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`RECORD OF ORAL HEARING
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` UNITED STATES PATENT AND TRADEMARK OFFICE
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` ________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` ________________
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` EMC Corporation
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` Petitioner1
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` V.
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` Patent of Personal Web Technologies, LLC
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` Patent Owner
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` ________________
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` Case IPR2013-00082 (Patent 5,978,791)
` Case IPR 2013-00083 (Patent 6,415,280)
` Case IPR 2013-00084 (Patent 7,945,544)
` Case IPR2013-00085 (Patent 7,945,539)
` Case IPR2013-00086 (Patent 7,949,662)
` Case IPR2013-00087 (Patent 8,001,096)
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` ________________
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` Record of Oral Hearing
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`WITNESSES
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`Before JONI CHANG, MICHAEL ZECHER and KEVIN TURNER (via video
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`hookup), Administrative Patent Judges
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`1 Note that the petitioners for IPR2013-00082 and IPR2013-
`00083 are EMC Corporation and VMware, Inc.
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`

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`Case IPR2013-00082 (Patent 5,978,791)
`Case IPR 2013-00083 (Patent 6,415,280)
`Case IPR 2013-00084 (Patent 7,945,544)
`Case IPR2013-00085 (Patent 7,945,539)
`Case IPR2013-00086 (Patent 7,949,662)
`Case IPR2013-00087 (Patent 8,001,096)
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`APPEARANCES:
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`ON BEHALF OF THE APPELLANT:
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`JOSEPH A. RHOA
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`Nixon & Vanderhye, P.C.
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`901 North Glebe Road
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`11th Floor
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`Arlington, VA 22203
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` P R O C E E D I N G S
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`JUDGE CHANG: Good afternoon. Welcome to the
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`Patent Trial and Appeal Board. This is the final hearing for
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`six inter partes reviews, Case IPR2013-00082, IPR2013-00083,
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`IPR2013-00084, IPR2013-00085, IPR2013-00086, and
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`IPR2013-00087.
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`The Board instituted these trials for six related
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`patents owned by PersonalWeb Technologies on May 17, 2013.
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`The transcript of this final oral-hearing will be entered in
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`each of the cases, and it will be usable for all cases.
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`At this time, we would like to have the counsel
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`to introduce themselves, beginning with the Petitioner.
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`MR. DICHIARA: Thank you, Your Honor. My name is
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`Peter Dichiara, and we represent the Petitioners, EMC and
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`

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`Case IPR2013-00082 (Patent 5,978,791)
`Case IPR 2013-00083 (Patent 6,415,280)
`Case IPR 2013-00084 (Patent 7,945,544)
`Case IPR2013-00085 (Patent 7,945,539)
`Case IPR2013-00086 (Patent 7,949,662)
`Case IPR2013-00087 (Patent 8,001,096)
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`VMware.
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`With me I have my partners, Cindy Vreeland and
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`David Cavanaugh, who will also represent the Petitioners.
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`From the Petitioners we have Mr. Lynn from
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`VMware, Mr. Brown, Mr. Gupta and Mr. Clark from EMC, and then
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`we also have Dr. Clark from Princeton University.
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`JUDGE CHANG: Welcome.
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`MR. RHOA: Good afternoon, Your Honors, Joe Rhoa,
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`on behalf of PersonalWeb, and with me is Mickey Gill, on
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`behalf of PersonalWeb.
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`JUDGE CHANG: Welcome. Thank you.
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`Just want to remind the parties that from our
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`last order, we said that each party has two hours, okay, to
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`present their arguments.
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`This is -- so Petitioner will proceed first,
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`okay, to present its case as to the challenged claims and
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`grounds the Board instituted for these six cases.
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`Thereafter, the Patent Owner will respond to the Petitioner's
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`case. And the Petitioner may reserve rebuttal time for its
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`case. And we'll proceed this way, okay?
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`And starting with the Petitioner.
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`MR. DICHIARA: Thank you, Your Honor.
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`

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`Case IPR2013-00082 (Patent 5,978,791)
`Case IPR 2013-00083 (Patent 6,415,280)
`Case IPR 2013-00084 (Patent 7,945,544)
`Case IPR2013-00085 (Patent 7,945,539)
`Case IPR2013-00086 (Patent 7,949,662)
`Case IPR2013-00087 (Patent 8,001,096)
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`JUDGE CHANG: Do you have any handouts or
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`demonstratives?
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`MR. DICHIARA: I do.
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`JUDGE CHANG: Can we have the copies of the
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`slides?
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`MR. DICHIARA: Okay.
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`(Whereupon, there was a pause in the
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`proceedings.)
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`JUDGE CHANG: Please provide one for the court
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`reporter.
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`You may begin.
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`MR. DICHIARA: Good afternoon. May it please the
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`Board, as I mentioned before, I'm Peter Dichiara,
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`representing the Petitioner in this case which is both EMC
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`and VMware. EMC and VMware are the Petitioners in IPRs 82
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`and 83, and for the remainder of the Petitioners, just EMC.
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`And as the Board is aware, the PersonalWeb
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`patents relate to unique data identifiers and that those
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`identifiers are based on the contents of the data and which
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`are used for basic file management functions.
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`Petitioners have shown that these identifiers and
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`the patents used with these identifiers are old. Indeed, the
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`Case IPR2013-00082 (Patent 5,978,791)
`Case IPR 2013-00083 (Patent 6,415,280)
`Case IPR 2013-00084 (Patent 7,945,544)
`Case IPR2013-00085 (Patent 7,945,539)
`Case IPR2013-00086 (Patent 7,949,662)
`Case IPR2013-00087 (Patent 8,001,096)
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`prior art not only meets all of the limitations of the
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`challenged claims, but it operates just like the embodiments
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`of the PersonalWeb patents. And here is the agenda we would
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`like to follow this afternoon. We would like to do a brief
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`overview of the PersonalWeb patents, followed by a very brief
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`overview of the primary references, Woodhill, Langer and
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`Kantor, and then go much more time to the disputed claim
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`limitations. And as you had mentioned, we would like to
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`reserve some time for rebuttal.
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`JUDGE CHANG: Can you tell me how much time do you
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`want in rebuttal?
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`MR. DICHIARA: We're shooting for an hour.
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`JUDGE CHANG: For an hour. Okay.
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`JUDGE ZECHER: Quick question. The disputed claim
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`limitations is the patent order there, the numbers, do they
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`coincide with 82 through 7 chronologically there?
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`MR. DICHIARA: Not exactly. Because we -- in the
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`interest of efficiency, we, for example, we do the '87 case,
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`the '096 after the '539 because the subject matter overlaps
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`so much.
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`But I will have very clear chapter slides saying
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`what we are switching between, which patents.
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`Case IPR2013-00082 (Patent 5,978,791)
`Case IPR 2013-00083 (Patent 6,415,280)
`Case IPR 2013-00084 (Patent 7,945,544)
`Case IPR2013-00085 (Patent 7,945,539)
`Case IPR2013-00086 (Patent 7,949,662)
`Case IPR2013-00087 (Patent 8,001,096)
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`JUDGE ZECHER: Okay. That's all I ask, that you
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`tell us which one you are referring to so we can look at the
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`records.
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`MR. DICHIARA: Yeah, I'll do my best.
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`So, all of the challenged patents share a common
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`patent specification and the PersonalWeb patents concerned
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`data processing systems that process data, obviously.
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`And, as the patents explain, the data item may be
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`a file, may be a portion of a file, may be an object in an
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`object-oriented programming -- program, or it can be in any
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`other entity which can be represented by a sequence of bits.
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`PersonalWeb patents, for example, describe processing data
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`items that are either simple or made up of other data items
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`and each data item has a corresponding unique identifier,
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`which the patents typically refer to in the patent spec as
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`the True Name.
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`And as the patent summary explained, the identity
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`or the identifier depends only on the data.
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`The PersonalWeb patent describes something it
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`refers to as a True File registry. And the True File
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`registry is a database which stores the various True Names
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`and the data items and other information about those data
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`Case IPR2013-00082 (Patent 5,978,791)
`Case IPR 2013-00083 (Patent 6,415,280)
`Case IPR 2013-00084 (Patent 7,945,544)
`Case IPR2013-00085 (Patent 7,945,539)
`Case IPR2013-00086 (Patent 7,949,662)
`Case IPR2013-00087 (Patent 8,001,096)
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`items.
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`And as we explained in our petitions, the patents
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`use these identifiers to perform basic file management
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`functions.
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`Now, the inventors of the PersonalWeb patents
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`thought that all the prior art used something known as
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`context-based names.
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`And a context-based name is more of a
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`conventional name that you probably are familiar with.
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`C:\mydirectory/myfile, things of that nature.
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`And the inventors also thought that, in the prior
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`art, there was no direct relationship between the data names
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`and the data item.
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`And, indeed, the inventors believe that they had
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`invented content-based names. This was an argument that they
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`emphasize in their patents themselves and it is an argument
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`that they pursued during prosecution. And in this slide, for
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`example, all of that emphasis is in the original. That's not
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`stuff we put in there to embellish the slide.
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`But the inventors were wrong, as we state in our
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`petitions. Everyone can now agree that multiple prior art
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`references had content-based names.
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`Case IPR2013-00082 (Patent 5,978,791)
`Case IPR 2013-00083 (Patent 6,415,280)
`Case IPR 2013-00084 (Patent 7,945,544)
`Case IPR2013-00085 (Patent 7,945,539)
`Case IPR2013-00086 (Patent 7,949,662)
`Case IPR2013-00087 (Patent 8,001,096)
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`And the Board, in its decision to institute trial
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`in these cases, has focused on three in particular as primary
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`references: Woodhill, Langer and Kantor.
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`And each of these references have the same
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`content-based identifiers, have the same infrastructure and
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`were used for the same basic file management functions.
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`So, as I said earlier, I would like to briefly
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`review the primary references, and I'll begin with Woodhill.
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`And I will do this before diving into the disputed claim
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`limitations.
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`So, Woodhill, figure 1 is clear on each of the
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`processes. And, in Woodhill, it processes data items such as
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`files. Binary objects are something sometimes referred to as
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`BOBs. And just like the PersonalWeb patents, Woodhill
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`processes files of one or more binary objects.
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`And just like the PersonalWeb patents, Woodhill
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`identified binary objects with something it calls binary
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`object identifiers or sometimes they'll use the acronym BOBID
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`for short.
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`Indeed, as it is right out of Woodhill, Woodhill
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`recognizes that the critical feature is to create a binary
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`object identifier based on the content of the data.
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`Case IPR2013-00082 (Patent 5,978,791)
`Case IPR 2013-00083 (Patent 6,415,280)
`Case IPR 2013-00084 (Patent 7,945,544)
`Case IPR2013-00085 (Patent 7,945,539)
`Case IPR2013-00086 (Patent 7,949,662)
`Case IPR2013-00087 (Patent 8,001,096)
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`Woodhill, like the True File registry, has
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`something it refers to more simply as just the file database.
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`The file database has the content-based identifiers, the
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`binary object identifier shown in the slide along with other
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`file information.
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`And as we explained in our petitions, Woodhill
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`uses the binary object identifiers for basic file management
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`function such as identifying and accessing data, managing
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`backups, comparing binary objects to recognize duplicates.
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`And the next reference I would like to turn to is
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`the Langer reference. Langer is a Usenet posting dated to
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`By way of background, Usenet was a network of
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`computers used to disseminate information to something known
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`as newsgroups. Langer was distributed to several newsgroups
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`as you can see here in the header that's explored at
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`alt.sources.d.comp.archives.admin.
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`Langer was concerned with sharing content on the
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`Internet as it then existed. This predates the Internet that
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`we now know and love with the worldwide web and html browsers
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`and the days when people used something called ftp or file
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`transfer protocol.
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`Case IPR2013-00082 (Patent 5,978,791)
`Case IPR 2013-00083 (Patent 6,415,280)
`Case IPR 2013-00084 (Patent 7,945,544)
`Case IPR2013-00085 (Patent 7,945,539)
`Case IPR2013-00086 (Patent 7,949,662)
`Case IPR2013-00087 (Patent 8,001,096)
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`Langer processes data items such as files and
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`packages of files. And just like the PersonalWeb patent, it
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`identifies those files with MD5 hashes or MD5 codes. And,
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`likewise, the packages, you know, identify those with MD5
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`codes that are hash of hashes.
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`Like the True File registry, Langer uses the
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`unique identifiers with the central database. And they
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`mentioned Archie and WAIS, for example. My slide is the
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`instance where they were referring to Archie and used that
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`database to associate the MD5 code with other information
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`about the file such as its physical location.
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`And just like the PersonalWeb patents used
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`identifiers to access a file in the system, Langer uses an
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`MD5 code to access the file in a network. And, indeed,
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`PersonalWeb admits to this in its briefings.
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`The next reference I would like to turn to is
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`Kantor.
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`Kantor discloses something it calls the FWKCS
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`Contents Signature System. It's an acronym for the
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`developer, Frederick W. Kantor, CS is the content signature.
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`In particular, it concerns version 22 and it is used in BBS
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`content. It's used in a BBS context to address the problem
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`Case IPR2013-00082 (Patent 5,978,791)
`Case IPR 2013-00083 (Patent 6,415,280)
`Case IPR 2013-00084 (Patent 7,945,544)
`Case IPR2013-00085 (Patent 7,945,539)
`Case IPR2013-00086 (Patent 7,949,662)
`Case IPR2013-00087 (Patent 8,001,096)
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`with duplicate files on a bulletin board service.
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`Version 22 of Kantor dates back to August 10,
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`1993.
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`Kantor processes data items such as files and
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`subject files just like the patents. Kantor identifies the
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`files with a content-based identifier. It is a CRC hash and
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`a link pinned together. In fact, they call it a content
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`signature and it identifies zipfiles with a zipfile content
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`signature, which is just like the patent with a hash of
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`hashes. And just as the name suggests, depends on the
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`contents of the data items.
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`Like the True File registry, Kantor has something
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`that it calls the CSLIST, which stands for content signature
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`list. And the content signature list includes the content
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`signatures and it includes other information about those
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`files.
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`And here is one of the excerpts from Kantor that
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`shows the format of the content signature list.
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`May I approach?
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`And I'll just note, so the first row appears.
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`What are those columns about? The first column is
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`16_character_cs. It's the content signature. And underneath
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`Case IPR2013-00082 (Patent 5,978,791)
`Case IPR 2013-00083 (Patent 6,415,280)
`Case IPR 2013-00084 (Patent 7,945,544)
`Case IPR2013-00085 (Patent 7,945,539)
`Case IPR2013-00086 (Patent 7,949,662)
`Case IPR2013-00087 (Patent 8,001,096)
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`it, the row underneath, you'll see 32bitCRC32bitLen. That is
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`a normal content signature. The CRC hash and the length
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`appended.
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`Underneath it you'll see CRCsum32LENSum32. It
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`shows right here that this file content signature right at
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`the hash of hashes of whatever inner files were in that
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`zipfile along with other file information as you proceed left
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`to right.
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`Kantor uses the content signatures just like the
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`patent does. The PersonalWeb patent uses for basic file
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`management functions or partitions outlined in a number of
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`these instances. Here is one such excerpt in which it talked
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`about comparing a -- the file content signature with all the
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`other files in an entire bulletin board service. And then
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`Kantor explains it recognizes as redundant a zipfile is made
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`up of pieces even if it is scattered throughout the system.
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`And it can prevent wasteful duplication and protect against
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`unwanted files.
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`Kantor was published two separate ways. One was
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`via a CD-ROM that was popular at the time. In particular, as
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`our papers explained, there was one Walnut Creek, October of
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`1993 CD-ROM.
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`Case IPR2013-00082 (Patent 5,978,791)
`Case IPR 2013-00083 (Patent 6,415,280)
`Case IPR 2013-00084 (Patent 7,945,544)
`Case IPR2013-00085 (Patent 7,945,539)
`Case IPR2013-00086 (Patent 7,949,662)
`Case IPR2013-00087 (Patent 8,001,096)
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`Here is a screen shot from our declarant, a
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`gentleman by the name of Mr. Sadofsky, an Internet archivist.
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`And he has entered a couple of declarations in this dispute,
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`and here is one of them. You'll see a similar screen shot in
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`paragraph five of Patent Owners Declarant Mr. Thompson. And
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`as you'll see on the screen shot up in the menu bar, you'll
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`see it say -- it might be a little tough to read,
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`FWKCS122.ZIP. You'll also notice the timestamps, August
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`10th, 1993.
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`As the Board noted in its own decisions, Kantor
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`speaks about another form of publication, namely from the
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`bulletin board service called the Invention Factory. We had
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`another declarant in this case, Mr. Sussil, who was the owner
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`and system operator for the Invention Factory, and he too
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`testified about this alternative means of publication and
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`public accessibility, mainly the way to download the
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`materials from the bulletin board service.
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`So now that we've reviewed the patents quickly
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`and the art quickly, we would like to turn to the disputed
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`claim limitations and begin with '791 patent, which is
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`IPR'82, and I would like to focus in particular on the claim
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`limitations which are in dispute.
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`
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`13
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`Case IPR2013-00082 (Patent 5,978,791)
`Case IPR 2013-00083 (Patent 6,415,280)
`Case IPR 2013-00084 (Patent 7,945,544)
`Case IPR2013-00085 (Patent 7,945,539)
`Case IPR2013-00086 (Patent 7,949,662)
`Case IPR2013-00087 (Patent 8,001,096)
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`As you're aware, Patent Owner has not disputed
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`all the claims, at least independently. All the claim
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`petitions, for example, they claim separately claims 29, 31
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`or 32. And for several other claims there were claim
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`limitations they didn't raise any dispute in their Patent
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`Owner response. So, in the interest of time, I'd like to
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`focus on the ones where there does seem to be a dispute.
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`Woodhill is the primary reference.
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`The Board correctly recognized that Woodhill
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`satisfied the identity --
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`JUDGE CHANG: Can I interrupt you?
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`MR. DICHIARA: Yes.
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`JUDGE CHANG: Okay. Before we get into the
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`dispute claim limitations and Woodhill, can you talk about --
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`a little bit about claim construction, because there is a
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`claim constructions question --
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`MR. DICHIARA: Certainly.
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`JUDGE CHANG: -- regarding the Patent Owner's
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`response.
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`In their response, they offer a different claim
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`construction than ours in the decision on institution, and we
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`need to discuss function limitations identifying means for
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`Case IPR2013-00082 (Patent 5,978,791)
`Case IPR 2013-00083 (Patent 6,415,280)
`Case IPR 2013-00084 (Patent 7,945,544)
`Case IPR2013-00085 (Patent 7,945,539)
`Case IPR2013-00086 (Patent 7,949,662)
`Case IPR2013-00087 (Patent 8,001,096)
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`determining for any of a plurality of data items and so
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`forth.
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`Can you comment on that, whether you agree with
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`the Patent Owner's proposed constructions now or not?
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`MR. DICHIARA: We disagree.
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`JUDGE CHANG: Okay.
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`MR. DICHIARA: We think that the Board has
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`correctly construed the term and construed it correctly under
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`the procedures of inter partes review that brought us
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`reasonable construction, and we think that's true for a
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`couple different reasons.
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`One, as the Board noted in its decision, the
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`patent specifications certainly don't demand that there be
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`compound data items. They could all be just regular old
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`files.
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`As it gets to the issue of whether to use
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`something like an MD5 signature or something like that in
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`particular, one of the items here on the screen addresses
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`exactly that.
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`I had the opportunity to cross-examine Patent
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`Owners' expert, Dr. Dewar, and I asked him about the specific
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`claim language which refers to identical data items will have
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`15
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`
`Case IPR2013-00082 (Patent 5,978,791)
`Case IPR 2013-00083 (Patent 6,415,280)
`Case IPR 2013-00084 (Patent 7,945,544)
`Case IPR2013-00085 (Patent 7,945,539)
`Case IPR2013-00086 (Patent 7,949,662)
`Case IPR2013-00087 (Patent 8,001,096)
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`the same identifier, and he admitted all hash functions, even
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`trivial hash functions, satisfy that claim language. So, we
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`maintained that the Board's construction is the broadest
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`reasonable. We saw nothing in the Patent Owner's response
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`which suggested that you went beyond reason or beyond
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`broadest reasonable or why their proposal was the broadest
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`reasonable. They want it, but they haven't explained why
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`it's the broadest reasonable and why yours was too broad.
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`JUDGE ZECHER: Can I follow-up on my questioning?
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`MR. DICHIARA: Certainly.
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`JUDGE ZECHER: Obviously, your construction that
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`they proposed in their Patent Owner response has a few
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`citations, one of which is column 12, line 54 through column
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`13, line 19.
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`Somewhat similar to what we cited when we
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`construed the function limitations, we focused primarily on
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`columns. Column 13, line 15 through 19 which talk about
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`Hash(K) is an important basis for the competition. And you
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`seem to indicate -- they seem to indicate that starting in
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`column 12, that the function -- if we're looking at line 61,
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`the function MP must have the following properties. Almost
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`as if we need to read these properties into their
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`
`Case IPR2013-00082 (Patent 5,978,791)
`Case IPR 2013-00083 (Patent 6,415,280)
`Case IPR 2013-00084 (Patent 7,945,544)
`Case IPR2013-00085 (Patent 7,945,539)
`Case IPR2013-00086 (Patent 7,949,662)
`Case IPR2013-00087 (Patent 8,001,096)
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`construction of a treeing mechanism. How would you respond
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`to that?
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`MR. DICHIARA: I think that's not the broadest
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`reasonable construction. I mean, there is support in this for
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`that kind of calculation and there is support for broader as
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`well as Dr. Dewar has admitted. So, I don't believe their
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`construction is the broadest reasonable. I think it is
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`purely driven, that after the decision in institute -- things
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`weren't in their opening argument that it must be this, and
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`it in must be that, and it must be the next thing, is a
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`result of your decision where they're trying to narrow the
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`construction at this point. Narrow the claimed scope to a
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`claim constructions.
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`JUDGE CHANG: I think we recognize that. This is a
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`means plus function. So, under 35 USC 112, 6, you know, we
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`have to look at the construction that restricts the
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`specifications.
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`MR. DICHIARA: Right.
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`JUDGE CHANG: So, I guess I would like to know
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`your five, on why isn't this in the hashline structure?
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`MR. DICHIARA: 112,6 demands minimum corresponding
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`structure, which you will see in all of your means plus
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`17
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`Case IPR2013-00082 (Patent 5,978,791)
`Case IPR 2013-00083 (Patent 6,415,280)
`Case IPR 2013-00084 (Patent 7,945,544)
`Case IPR2013-00085 (Patent 7,945,539)
`Case IPR2013-00086 (Patent 7,949,662)
`Case IPR2013-00087 (Patent 8,001,096)
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`function instructions where data processes a program a
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`certain way. And, in this case, you would correctly identify
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`that it is a data processor program to calculate the hash and
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`then it provided those as examples.
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`And I think that is the right construction. It
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`could be that. It is not limited to that. SHA, for example,
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`one of the ones you mentioned, the H is for hash. And so we
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`believe that the broadest reasonable construction, which is
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`supposed to govern this proceeding, is your construction is
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`right and this is too narrow, their proposal is too narrow.
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`JUDGE CHANG: Let me follow-up with one more
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`question.
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`There are five listed functions. So, are they the
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`basic functions that any -- I heard you say that, but I just
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`wanted to verify that that's what you said. Those five
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`functions, is it always included in any MD algorithms?
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`MR. DICHIARA: I can't answer it that broadly for
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`any. I do know that the claim language when it says that
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`identical data items will have the same identifier, that you
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`don't need an MD5 for that. We confirmed that with their
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`expert.
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`
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`The other characteristics listed in there, I'm
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`18
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`Case IPR2013-00082 (Patent 5,978,791)
`Case IPR 2013-00083 (Patent 6,415,280)
`Case IPR 2013-00084 (Patent 7,945,544)
`Case IPR2013-00085 (Patent 7,945,539)
`Case IPR2013-00086 (Patent 7,949,662)
`Case IPR2013-00087 (Patent 8,001,096)
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`sure that the MD5 satisfies that. I should say I believe
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`that MD5 satisfies that. I don't know whether it's all MD5
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`for whatever.
`
`JUDGE CHANG: It's the same.
`
`MR. DICHIARA: Same thing with SHA. The SHA, as I
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`mentioned, the H is for secured hash algorithm, the same
`
`referring to hash N.
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`JUDGE CHANG: Thank you.
`
`MR. DICHIARIA: So, I'll just proceed on to the
`
`next slide, because I think your questions address this.
`
`So, the next element that PersonalWeb disputes is
`
`the functional phrase and existence means and, in particular,
`
`the phrase that says for determining whether a particular
`
`data item is present in the system.
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`And, PersonalWeb contends that Woodhill doesn't
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`perform this function. And in fact, this is their longest,
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`most repeated argument in their response. They devote the
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`most pages to it. They repeat it the most times. And the
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`Board correctly recognized that Woodhill satisfies this
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`limitation relying on column 8. And I have that portion up
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`here on the screen where Woodhill is explicit that it detects
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`duplicate binary objects, that they can be recognized that
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`19
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`Case IPR2013-00082 (Patent 5,978,791)
`Case IPR 2013-00083 (Patent 6,415,280)
`Case IPR 2013-00084 (Patent 7,945,544)
`Case IPR2013-00085 (Patent 7,945,539)
`Case IPR2013-00086 (Patent 7,949,662)
`Case IPR2013-00087 (Patent 8,001,096)
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`the binary object identifiers are identical.
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`And, on its face, this is showing that Woodhill
`
`determines whether a particular data item is present in the
`
`system, not once but twice. That's what duplicate means. It
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`exists twice at two very particular locations. The Board was
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`correct in relying on this passage for Woodhill.
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`And then, we also have on this slide, there is
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`more corroboration on this point.
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`The next quote I have produced is from Woodhill
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`column 9. This is the portion of Woodhill which is talking
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`about a backup procedure where it maintains a BOB by BOB
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`decision on whether to back one up to a backup device. It's
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`trying to detect whether the BOB has changed or where it is
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`something that's duplicate. And as the passage says, the
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`binary object identifiers are calculated and then they're
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`compared against their counterparts in the database. And
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`this is just what the Board's decision of existence means.
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`You'll go back and you'll see that the construction referred
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`to step S 232 of the '791 patent, and that's what it says.
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`It says to calculate the True Name before it in the database.
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`So that's another piece of corroboration.
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`The next item that I have up here is again some
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`
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`Case IPR2013-00082 (Patent 5,978,791)
`Case IPR 2013-00083 (Patent 6,415,280)
`Case IPR 2013-00084 (Patent 7,945,544)
`Case IPR2013-00085 (Patent 7,945,539)
`Case IPR2013-00086 (Patent 7,949,662)
`Case IPR2013-00087 (Patent 8,001,096)
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`right out of our petition, and it's from the '791 patent.
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`And it goes to the point that I raised earlier that Woodhill
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`operates just like the embodiments of the patent. And in this
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`passage you see the '791 patent says that the True Name of
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`the file can be used to identify a file by contents. We
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`talked about that earlier. No dispute on that. And then it
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`continues.
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`To confirm that the file matches its original
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`contents or to compare two files. This is precisely what
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`Woodhill is doing years earlier. It's comparing the current
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`version of a file to a prior version of a file. Current
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`version of a file to its original content.
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`And I would invite you also to review Dr. Clark's
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`direct testimony on this in this petition. At paragraph 87
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`he noted other similarities between '791 patent and Woodhill.
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`And, for example, he pointed out to column 36 of Woodhill,
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`lines 42 to 45, where it is explicit -- strike that. I think
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`I gave you -- said Woodhill's. It is column 36, lines 42 to
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`45 of the '791 patent. And the '791 patent is explicit that
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`it uses True Names for backups. That is exactly what Woodhill
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`is doing. It's just like the embodiment in the patent.
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`JUDGE ZECHER: Counsel, how did you respond to
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`
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`Case IPR2013-00082 (Patent 5,978,791)
`Case IPR 2013-00083 (Patent 6,415,280)
`Case IPR 2013-00084 (Patent 7,945,544)
`Case IPR2013-00085 (Patent 7,945,539)
`Case IPR2013-00086 (Patent 7,949,662)
`Case IPR2013-00087 (Patent 8,001,096)
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`Patent Owner's arguments that this comparison -- they seem to
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`be arguing that it is only done on a single file whereas in
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`their invention it does it on all of the files, or different
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`files or any of the many files in the system.
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`MR. DICHIARA: I would respond in a couple of
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`ways.
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`The first way I would respond is that Woodhill
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`determines whether a particular date item is present in the
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`system in a particularly efficient way. It is looking for
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`duplicate content exactly where you would expect to find
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`duplicate content. It's where you would expect to find
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`duplicate content is in a prior version of a file. You might
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`be editing a file, 99 percent of it is still what you had
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`before. It is looking for it there.
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`This is just what you would do if you were trying
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`to construe a claim term and you looked for a claim term in
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`the dictionary. If you were trying to construe the word
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`widget, we would turn to a particular page, you would if
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`widget's there. Maybe it's there, maybe it's not. You
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`wouldn't go through every page in the dictionary to say its
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`not there, just at the particular spot that you would expect
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`to find it. So, I say Woodhill determines in a particularly
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`22
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`

`
`Case IPR2013-00082 (Patent 5,978,791)
`Case IPR 2013-00083 (Patent 6,415,280)
`Case IPR 2013-00084 (Patent 7,945,544)
`Case IPR2013-00085 (Patent 7,945,539)
`Case IPR2013-00086 (Patent 7,949,662)
`Case IPR2013-00087 (Patent 8,001,096)
`
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`efficient way.
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`The other thing I would like to say on that is
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`that the Patent Owner, at a point, tries to criticize
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`Woodhill saying it doesn't duplicate content in all the other
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`instances and all the other spots in the system. And we've
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`already heard, at least in the Eastern District of Texas
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`case, t

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