DOCKET NO: 0100157-00244
`
`By: Peter Dichiara, Reg. No. 38,005 (Lead Counsel)
`
`David L. Cavanaugh, Reg. No. 36,476 (Back-up Counsel)
`
`Wilmer Cutler Pickering Hale and Dorr LLP
`
`1875 Pennsylvania Avenue NW
`
`Washington, DC 20006
`
`Tel: (202) 663-6025
`
`Email: David.Cavanaugh@wilmerhale.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`EMC Corporation and VMware, Inc.
`
`Petitioner
`
`v.
`
`PersonalWeb Technologies LLC.
`
`Patent Owner
`
`U.S. Patent No. 6,415,280.
`
`IPR Case No. IPR2013-00083
`
`REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(C)–(D)
`OF DECISION TO INSTITUTE INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`
`
`
`By: Peter Dichiara, Reg. No. 38,005 (Lead Counsel)
`
`David L. Cavanaugh, Reg. No. 36,476 (Back-up Counsel)
`
`Wilmer Cutler Pickering Hale and Dorr LLP
`
`1875 Pennsylvania Avenue NW
`
`Washington, DC 20006
`
`Tel: (202) 663-6025
`
`Email: David.Cavanaugh@wilmerhale.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`EMC Corporation and VMware, Inc.
`
`Petitioner
`
`v.
`
`PersonalWeb Technologies LLC.
`
`Patent Owner
`
`U.S. Patent No. 6,415,280.
`
`IPR Case No. IPR2013-00083
`
`REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(C)–(D)
`OF DECISION TO INSTITUTE INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`
`
`
`U.S. Patent 6,415,280
`Request for Rehearing
`THE PETITIONER’S REQUEST FOR REHEARING UNDER 37 C.F.R.
`§ 42.71(C)–(D) OF DECISION TO INSTITUTE INTER PARTES REVIEW
`
`
`
`On May 17, 2013, the Board issued a Decision under 35 U.S.C. § 311 (the
`
`“Decision”) inter alia authorizing inter partes review of claims 36 and 38 of U.S.
`
`Patent No. 6,415,280 (the ‘280 patent) on two of the grounds presented in the
`
`Petition filed December 15, 2013 (the “Petition”), specifically:
`
`A. Claims 36 and 38 as anticipated under 35 U.S.C. § 102(e) by
`Woodhill.
`B. Claims 36 and 38 as unpatentable under 35 U.S.C. § 103(a) over
`Woodhill.
`Decision at 19.
`
`The remaining grounds of unpatentability proposed in the Petition were
`
`determined to be redundant to the above grounds and therefore denied. The
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`Petitioner agrees that the references are redundant insofar as each ground of
`
`unpatentability is sufficient to invalidate the claims.
`
`However, the references and denied grounds are not redundant in all respects
`
`and for all purposes. For example, Woodhill is prior art under § 102(e), whereas
`
`some of the other cited grounds involve § 102(b) references which cannot be
`
`1
`
`
`
`U.S. Patent 6,415,280
`Request for Rehearing
`antedated.1 As outlined in the Petition, each of the references also has different
`
`technical teachings. The Patent Owner may present declarations or propose claim
`
`amendment(s) or new claims that would make these references non-redundant.
`
`The Patent Owner may attempt to distinguish the challenged claims from the
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`references used in the granted grounds of unpatentability in ways that would be
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`wholly insufficient when compared to the presently-denied references. Indeed, the
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`Patent Owner has already confirmed that the references have different technical
`
`substance and attempted to distinguish the references in different ways in its
`
`Preliminary Statements in other, related inter partes reviews. See, e.g., IPR2013-
`
`00082. A key purpose of this Request is thus to address the potential for prejudice
`
`to the Petitioner which could result from removing grounds and references that the
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`Board has already confirmed are highly relevant and in fact provide a reasonable
`
`basis for unpatentability.
`
`The Petitioner recognizes that there are strong principles of administrative
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`efficiency and economy that counsel in favor of a focused proceeding.
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`Consequently, the Petitioner requests that the Board address this Request in one of
`
`
`1 As identified in the Petition, Langer (published August 1991), Satyanarayanan
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`(published May 1990) and Kantor (published August 1993) were each published
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`more than a year before the filing date of the ‘280 patent. Petition at 3-5.
`
`2
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`
`
`U.S. Patent 6,415,280
`Request for Rehearing
`two ways to balance the concerns for a focused, efficient proceeding with the
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`concerns of prejudice to the Petitioner:
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`1. Grant certain grounds of unpatentability, previously denied in error as
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`redundant,2 but hold in abeyance any further application of these
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`2 Petitioner has sought to limit the number of grounds to grant on rehearing in view
`
`of statements already made in the Decision. In particular, Petitioner seeks grant of
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`Ground 1 because it was error to deny it as redundant in that Browne contains
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`different technical substance than Woodhill, compare Petition at 28-39 with
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`Petition at 39-48, a fact confirmed, for example, in Patent Owner’s Preliminary
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`Statement in IPR 2013-00082 (“Prelim. Statement IPR ‘82”) in which it sought to
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`distinguish Woodhill in ways wholly inapplicable to Browne and which were not
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`argued for Browne. Compare Prelim. Statement IPR ‘82 at 18-25 with 35-47.
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`Petitioner also seeks grant of Ground 6 because it was error to deny it as redundant
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`in that Satyanarayanan and Langer are references under § 102(b) and cannot be
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`antedated whereas Woodhill is a § 102(e) reference, and in that Satyanarayanan
`
`and Langer contain different technical substance than Woodhill, see Petition at 51-
`
`56, a fact confirmed, for example, in Prelim. Statement IPR ‘82 in which the Patent
`
`Owner sought to distinguish Woodhill in ways wholly inapplicable to Langer and
`
`that were not argued for Langer. Compare Prelim. Statement IPR ‘82 at 26-34
`
`with 35-47.
`
`3
`
`
`
`U.S. Patent 6,415,280
`Request for Rehearing
`Grounds until and unless the course of the Trial causes one of them to
`
`become non-redundant; or
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`2. Consider the present Request as timely-filed but hold the Request in
`
`abeyance until and unless the course of the Trial causes one of
`
`grounds to become non-redundant. In this case, certain grounds of
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`unpatentability, previously denied in error as redundant, are the same
`
`as those identified above, and the Petitioner would alert the Board of
`
`events which would require the Board to make a Decision on this
`
`Request.
`
`In this manner, the Board, the Patent Owner, and the Petitioner may all focus
`
`their efforts on the grounds granted in the Decision to Institute Trial and proceed in
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`an efficient and timely manner, yet balance the concern for prejudice of removing
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`certain references and grounds that are already acknowledged as providing a
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`reasonable basis for unpatentability and which may become non-redundant as a
`
`result of actions outside of the control of the Petitioner.
`
`4
`
`
`
`U.S. Patent 6,415,280
`Request for Rehearing
`Respectfully Submitted,
`
`/David L. Cavanaugh/
`
`David L. Cavanaugh
`Registration No. 36,476
`
`
`
`
`
`
`
`5
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`
`
`CERTIFICATE OF SERVICE
`
`U.S. Patent 6,415,280
`Request for Rehearing
`
`I hereby certify that, on May 31, 2013, I caused a true and correct copy of the
`foregoing materials:
`
`• REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(C)–(D)
`OF DECISION TO INSTITUTE INTER PARTES REVIEW
`
`to be served via email, as previously agreed between the parties, on the following
`
`attorney of record:
`
`Joseph Rhoa
`
`Nixon Vanderhye, P.C.
`901 North Glebe Road, 11th Floor
`Arlington, Virginia 22203
`
`Joseph A. Rhoa <jar@nixonvan.com>
`
`
`
`/Heather M. Petruzzi/
`
`Heather M. Petruzzi
`
`Registration No. 71,270
`
`6
`
`
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`
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`
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`U.S. Patent 6,415,280
`Request for Rehearing
`Table of Exhibits for U. S. Patent 6,415,280 Petition for Inter Partes Review
`
`Exhibit
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
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`
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`
`
`Description
`
`U.S. Patent No. 6,415,280
`
`S. Browne et al., “Location-Independent Naming for
`Virtual Distributed Software Repositories,” University of
`Tennessee Technical Report CS-95-278 (Feb. 1995)
`
`Albert Langer, “Re: dl/describe (File descriptions),” post
`to the “alt.sources” newsgroup on August 7, 1991
`
`F. Kantor, “The Frederick W. Kantor Contents-Signature
`System Version 1.22,” FWKCS122.REF (August 10,
`1993)
`
`Woodhill et al., U.S. Patent No. 5,649,196, entitled
`“System and Method For Distributed Storage
`Management on Networked Computer Systems Using
`Binary Object Identifiers,”
`
`S. Browne et al., “Location-Independent Naming for
`Virtual Distributed Software Repositories,”
`http://www.netlib.org/utk/papers/lifn/main.html (Nov. 11,
`1994)
`
`K. Moore et al., “An Architecture for Bulk File
`Distribution,” Network Working Group Internet Draft
`(July 27, 1994)
`
`Chart of Patent Family Members
`
`Declaration of Dr. Douglas W. Clark, PH.D
`
`Banisar et al., The Third CPSR Cryptography and Privacy
`Conference at 509 (1993)
`
`G. D. Knott, Hashing functions, The Computer Journal
`(1975), vol. 3, no. 3, p. 265.
`
`R. Rivest, “The MD5 Message-Digest Algorithm,”
`
`i
`
`
`
`U.S. Patent 6,415,280
`Request for Rehearing
`
`Exhibit
`
`Description
`Internet RFC 1321 (Apr. 1992)
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
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`
`
`
`
`
`
`
`
`
`
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`
`
`
`
`
`
`
`
`
`
`
`
`
`McGraw-Hill Dictionary of Scientific and Technical
`Terms, (4th ed., 1989)
`
`B. Kaliski, “A Survey of Encryption Standards, “ IEEE
`Micro (Dec. 1993)
`
`Rabin, Fingerprinting by Random Polynomials, Center
`for Research in Computing Technology, Harvard
`University, Report TR-15-81
`
`U. Manber, “Finding Similar Files in a Large File
`System”, University of Arizona Technical Report (1994)
`
`D.R. McGregor and J.A. Mariani ‘Fingerprinting’ – A
`Technique for File Identification and Maintenance, 12
`Software Practice & Experience 1165 (1982)
`
`T. Berners-Lee et al., “Uniform Resource Locators
`(URL),” Internet RFC 1738 (Dec. 1994)
`
`U. S. Patent 6,415,280 Prosecution History, Response
`(August 22, 2001)
`
`EP Pub. No. EP0826181A1 Prosecution History, Annex
`to the communication dated May 8, 2009
`
`EP Pub. No. EP0826181A1 Prosecution History, Reply to
`communication from the Examining Division dated
`November 18, 2009
`
`EP Pub. No. EP0826181A1 Prosecution History, Annex
`to the communication dated March 14, 2012
`
`EP Pub. No. EP0826181A1 Prosecution History, Closing
`of Application dated June 14, 2012
`
`U.S. Patent No. 6,425,280 Preliminary Amendment (Jan.
`11, 2001)
`
`ii
`
`
`
`Exhibit
`
`Description
`
`U.S. Patent 6,415,280
`Request for Rehearing
`
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`
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`U.S. Patent No. 6,425,280 Office Action (June 5, 2001)
`
`Legent Software, Inc., “ESM: Product Information,”
`Legent Corporation (April 1994)
`
`R. Williams, “An algorithm for matching text”, posted to
`the “comp.compression” newsgroup (January 27, 1992)
`
`R. Williams, “An Introduction to Digest Algorithms,”
`Rocksoft (Nov. 1994)
`
`Satyanarayanan, “Scalable, Secure, and Highly Available
`Distributed File Access,” IEEE Computer, vol. 23, no. 5
`(May 1990)
`
`P. Alsberg and J. Day, “A Principle for Resilient Sharing
`of Distributed Resources”, Proc. of the 2d International
`Conference on Software Engineering (1976)
`
`J. Bartlett, “A ‘NonStop’ Operating System”, Proc. of the
`Eleventh Hawaii International Conference on System
`Sciences (1978)
`
`Invalidity Claim Chart in view of Woodhill
`
`Invalidity Claim Chart in view of ESM
`
`Invalidity Claim Chart in view of LIFN (“Browne”)
`
`Invalidity Claim Chart in view of Langer
`
`Invalidity Claim Chart in view of Satanarayanan
`
`U. S. Patent 7,945,539 Prosecution History, Response to
`Non-Final Office Action (Oct. 5, 2009)
`
`iii
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`1033
`
`1034
`
`1035
`
`1036
`
`1037
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