throbber
BEFORE THE PATENT TRIAL AND APPEAL BOARD IN THE UNITED
`
`STATES PATENT AND TRADEMARK OFFICE
`
`Trial N0s.:
`
`IPR 2013—00082 & IPR 2013-00083
`
`Re:
`
`U.S. Patent Nos. 5,978,791 and 6,415,280
`
`Patent Owners:
`
`Personalweb Technologies, LLC & Level 3 Communications
`
`Petitioner:
`
`EMC Corp. and Vl.\/Ivvare, Inc.
`
`DECLARATION OF ROBERT B. K. DEWAR
`
`1. My name is Robert B. K. Dewar.
`
`I reside at 1591 Carpenter Hill Road,
`
`Bennington, VT 05201, and am working for the software company Ada
`
`Core Technologies in New York, New York, that I founded.
`
`I have been
`
`retained by PersonalWeb Technologies, LLC.
`
`I understand that
`
`PersonalWeb is an owner of patents involved in several Inter Parte
`
`Reviews (IPRS). This declaration relates to U.S. Patent No. 5,978,791
`
`(the ‘791 patent) and U.S. Patent No. 6,415,280 (the ‘280 patent), and the
`
`IPRS that they are involved in which I understand to be IPR Nos. 2013-
`
`00082 and 2013-00083.
`
`

`

`2.
`
`I am currently Professor Emeritus at New York University in the
`
`Department of Computer Science. My curriculum Vitae (CV) is attached
`
`at the rear of this declaration. My educational and professional
`
`background is summarized below.
`
`3. To summarize my educational and academic background, I was educated
`
`at a preparatory school in England, and attended one year of public
`
`school there.
`
`I then immigrated to the United States where I attended the
`
`University of Chicago Lab School.
`
`I then attended the University of
`
`Chicago where I earned BS and PhD degrees in the field of Chemistry.
`
`My PhD work in Chemistry involved substantial use of computers. After
`
`receiving my PhD degree, I took a position as Assistant Professor of
`
`Computer Science at the Illinois Institute of Technology in 1968.
`
`4.
`
`I thereafter received tenure as an Associate Professor of Computer
`
`Science at the Illinois Institute of Technology.
`
`I was Full Professor of
`
`Computer Science, CIMS, NYU, since 1975, and am currently Professor
`
`Emeritus at New York University in the Department of Computer
`
`Science.
`
`I was Chairman of the Department of Computer Science from
`
`1977-1980 at CIMS, NYU.
`
`I was Director of Undergraduate Studies,
`
`Computer Science from 1981-1987, CIMS, NYU.
`
`I was Associate
`
`Director of Courant Institute, from 1994-1997.
`
`

`

`5. My teaching experience as a Professor includes (i) undergraduate courses
`
`relating to Introduction to programming for non-majors, first course for
`
`majors (CS1/CS2 equivalents, taught in Fortran, Pascal, SNOBOL, Ada
`
`95), Assembly language and Computer Architecture, Operating Systems,
`
`Microprocessors, Text processing systems, Programming Languages,
`
`Formal language theory, Numerical Analysis, Data processing, and
`
`Introduction to Algol~68, and (ii) graduate courses relating to Formal
`
`language theory, Theory of Computation, Algorithms, Programming
`
`Languages, Compilers, Data Communications, Microprocessor
`
`Architectures, Real Time Systems, Information Theory, and
`
`Programming by Transformation.
`
`6.
`
`I have authored or co—authored numerous articles and books relating to
`
`computer science, programming, and data processing systems, as shown
`
`in my CV.
`
`7. My research has centered on compilers, programming languages,
`
`operating systems, and microprocessor architectures.
`
`I have engaged in
`
`extensive consulting (apart from serving as an expert witness) in the area
`
`of operating systems and distributed systems, including writing several
`
`operating systems for Honeywell used in distributed applications such as
`
`airline reservations and freight management.
`
`

`

`8.
`
`In 1994 I founded Ada Core Technologies to commercially exploit the
`
`work on Ada (programming language) that I was involved with at New
`
`York University.
`
`I became CEO and President of Ada Core
`
`Technologies.
`
`9.
`
`I retired from New York University in 2005.
`
`10.I have received numerous awards including the SIGAda (Special Interest
`
`Group on Ada) award for outstanding Ada Community Contributions, as
`
`well as several other awards, which are listed in my attached CV.
`
`1 1. I am familiar with USENETS and Bulletin Board Systems, and used the
`
`same in the 1980s and 1990s.
`
`12.
`
`I have served as an expert witness on numerous occasions in cases
`
`involving patent and copyright issues. A list of several cases in which I
`
`served as an expert witness can be found in my attached CV.
`
`13. I am being compensated for my time at the rate of $500/hour for service
`
`that I am providing in connection with these Inter Partes Reviews (IPRS).
`
`My compensation is not contingent upon my performance, the outcome
`
`of this review, or any issues involved or related to this review.
`
`14.
`
`I have reviewed and am familiar with at least the following documents,
`
`and any other document mentioned herein: U.S. Patent No. 5,978,791
`
`(the ‘791 patent); U.S. Patent No. 6,415,280 (the ‘280 patent); and U.S.
`
`

`

`Patent No. 5,649,196 to Woodhill et al which I understand to be Exhibit
`
`EMC 1005 (Woodhill). It is my understanding that the ‘791 and ‘280
`
`patents have an effective filing date of April 1 l, 1995.
`
`My Understanding of the Law Regarding Patent Validity
`
`15.
`
`The following is What I have been told about the law regarding validity
`
`of a patent, and it represents my understanding of the same.
`
`It is my
`
`understanding that EMC (who 1 understanding is a “petitioner” in this
`
`proceeding) has the burden of proving invalidity in an IPR proceeding by
`
`a preponderance of the evidence. As explained below, it is my opinion
`
`that the challenged claims of the ‘79l and ‘28() patents are not invalid
`
`over Woodhill under this standard.
`
`16.
`
`Anticipation. It is my understanding that a claim of a patent is
`
`“anticipated” only if each and every element as set forth in the claim is
`
`found, either expressly or inherently described, in a single prior art
`
`reference. If even a single element is missing, the claim is not
`
`anticipated.
`
`It is my understanding that a feature is “inherent” in a
`
`reference only if that feature is necessarily present in the reference — not
`
`merely probably or possibly present. Furthermore, it is my understanding
`
`that in order to anticipate, a prior art reference must not only disclose all
`
`

`

`elements of the claim, but must also disclose those elements arranged as
`
`in the claim.
`
`17. Obviousness. It is my understanding that a patent claim is invalid for
`
`“obviousness” if the claimed invention as a whole would have been
`
`obvious to one of ordinary skill in the art at the time of the invention in
`
`view of a single prior art reference or a combination of prior art
`
`references.
`
`I understand that a determination of whether a claimed
`
`invention would have been obvious requires taking into consideration
`
`factors which include assessing the scope and content of the prior art, the
`
`differences between the prior art and the claimed invention, and the level
`
`of ordinary skill in the art. It is my understanding that the level of
`
`ordinary skill in the art is determined by considering the type of problems
`
`encountered in the art, the prior art solutions to those problems, the
`
`rapidity with which innovations are made, the sophistication of the
`
`technology involved, and the educational level of active workers in the
`
`field.
`
`Level of Ordinary Skill in the Art
`
`18. As of 1995, it is my opinion that a person of ordinary skill in the art to
`
`which the ‘79l and ‘280 patents pertain would likely be a person with a
`
`bachelors degree in computer science with ten to fifteen years of teaching
`
`

`

`or work experience in the field. Of course, one of ordinary skill in the art
`
`might have either more formal education with less experience, or less
`
`formal education with more experience.
`
`Issues Involving the ‘791 Patent
`
`l9.
`
`It is my understanding that a “petitioner” (who I understand includes
`
`EMC) is challenging the validity of only certain claims of the ‘791 patent.
`
`In particular, it is my understanding that the following are at issue:
`
`A.
`
`Whether claims 1-4, 29-33, and 41 ofthe ‘791 patent are
`
`anticipated by Woodhill (Ex. EMC 1005); and
`
`Whether claims 1-4 and 29 of the ‘791 patent are obvious
`
`over Woodhill.
`
`20.
`
`It is my understanding that the Patent Trial and Appeal Board (the
`
`“Board”) has construed certain claim terms in the ’79l patent as follows,
`
`and I have assumed and used those constructions herein:
`
`Claim Term
`
`Board’s Construction
`
`l “data item”
`
`Sequence ofbits. (‘79l patent, col. 1:54-55.) I
`
`understand that the Board explained in a June 5,
`
`2013 Decision, that the “sequence of bits” may
`
`include any of the following which represent
`
`examples in a nomexhaustive list: (1) the
`
`contents of a file; (2) a portion of a file; (3) a page
`
`in memory; (4) an object in an object—oriented
`
`7
`
`

`

`program; (5) a digital message; (6) a digital
`
`scanned image; (7) a part of a Video or audio
`
`signal; (8) a directory; (9) a record in a database;
`
`(l0) a location in memory or on a physical
`
`device; (ll) any other entity which can be
`
`represented by a sequence of bits.
`
`“data”
`
`a subset of a data item.
`
`“location”
`
`With respect to a data piloicessing system, refers to
`
`“any ofa particular processor in the system, a
`
`memory ofa particular processor, a storage
`
`device, a removable storage medium (such as a
`
`floppy disk or compact disk), or any other
`
`physical location in the system.” (‘79l patent at
`
`col. 5:65 to col. 6:3.)
`
`I “Substantially unique
`l identifier” (e.g., claims
`
`An identityfor a data item generated being
`
`determined using and depending on all of the
`
`1, 30, 33 and claims
`
`data in the data item, and only the data in the
`
`depending therefrom)
`
`data item. (B.g., ‘79l patent, col. 1:16-18; col.
`
`3 :6—l l.)
`
`“using the identifier”
`
`Employing the unique identifier of the data item,
`
`with or without other information, to carry out
`
`the recitedfunction.
`
`“existence means for
`
`Construed as a means-plus—function term:
`
`determining whether a
`
`Function: determining whether a particular data
`
`particular data item is
`
`item is present in the system, by examining the
`
`present in the system, by
`
`identifiers of the plurality of data items.
`
`

`

`examining the
`
`Corresponding Structure, Material or Acts: a data
`
`identifiers of the
`
`processor programmed according to step S232
`
`plurality of data items.”
`
`illustrated in Figure 11 or step S260 illustrated in
`
`(claim 1)
`
`Figure 14, and equivalents thereof; see ‘791
`
`patent at col. 14:41-56; and col. 15:52-56.
`
`“local existence means
`
`C01/zstrued as a means-plus-function term.‘
`
`for determining whether
`
`Function: determining whether an instance of a
`
`an instance of a
`
`particular data item is present at a particular
`
`particular data item is
`
`location in the system, based on the identifier of
`
`present at a particular
`
`the data item.
`
`location in the system,
`
`Corres_ponding_Structure, Material or Acts: a data
`
`based on the identifier
`
`processor programmed according to step S260
`
`of the data item.” (claim
`
`illustrated in Fig. 14, and equivalents thereof; see
`
`2)
`
`‘791 patent at col. 15:54-56.
`
`“data associating means
`
`Consrrued as Cl means-pIuS—funcz‘z'0n term.’
`
`1 for making and
`
`Function: making and maintaining, for a data item
`
`maintaining, for a data
`
`in the system, an association between the data
`
`item in the system, a
`
`item and the identifier of the data item.
`
`E
`
`association between the
`
`Corresponding Structure, Material or Acts: a data
`
`data item and the
`
`processor programmed according to the steps
`
`identifier of the data
`
`S230, S232, and S237-239 illustrated in Figure
`
`item.” (claim 4)
`
`1 l, and equivalents thereof; see ‘79l patent at col.
`
`14:51-60.
`
`

`

`WOODHILL DOES NOT ANTICIPATE CLAIM 1 OF THE ‘791
`
`PATENT
`
`21‘. It is my opinion that Woodhill does not anticipate claim 1 ofthe ‘79l
`
`patent for the following reasons. My points regarding Woodhill are
`
`based on how I believe one of ordinary skill in the art would have
`
`interpreted Woodhill at the time of the invention of the ‘79l patent.
`
`A. Woodhill does riot disclose “determining whether 61 particular data
`item is present in the system .
`.
`. ”.
`
`22. Woodhill cannot determine whether a particular data item is present in
`
`the system as required by claim l. It is my understanding that petitioner
`
`alleges that a “binary object” in Woodhill is a “data item” regarding
`
`claim 1, and that a Binary Object Identifier 74 in Woodhill is an identifier
`
`regarding claim 1. However, Woodhill can only determine whether a
`
`particular Binary Object Identifier 74 for a binary object is present for the
`
`most—recently backed up version of a sihglefile. Therefore, Woodhill
`
`cannot determine whether a particular data item is “present in the
`
`system” as in claim l. One of ordinary skill in this art would have
`
`considered a “file” to be much different than a “system.” Woodhill
`
`cannot determine whether a particular binary object is present in the
`
`other files in the system. Woodhill’s determination of whether a Binary
`
`Object Identifier 74 for a particular binary object is present for the most-
`
`10
`
`

`

`recently backed up Version of a single file is much different than being
`
`able to determine whether the object is “present in the system.” The
`
`ability to determine whether something is present in the System requires
`
`an ability to look at more than just information for one file. One of
`
`ordinary skill in the art would have understood that one needs to have the
`
`capability to look at information for all files or all files of like kind in the
`
`system, to be able to determine if something is present in the system.
`
`23. Woodhill’s system includes multiple files.
`
`(E. g., Woodhill; col. 2:3; col.
`
`2:23; col. 3:49-51; col. 5:17-20; col. 5:39-45; col. 5:52-54.) Woodhill
`
`describes that different files are backed up separately.
`
`(E. g., Woodhill,
`
`col. 5:17-20; col. 6:24-40; col. 7:40-44; col. 9:2-27.) The Distributed
`
`Storage Manager program 24 Views a file as a collection of data streams.
`
`(Woodhill, col. 4:12-15.) Woodhill’s system separates each “file” into
`
`multiple “data streams”, and then splits each “data stream” that is larger
`
`than one megabyte into multiple binary objects. (Woodhill; col. 7:40-
`
`64.) “Each data stream is .
`
`.
`
`. processed individually”, and so is each
`
`binary object. Id. Therefore, if the exact same binary object exists in ten
`
`different files, it will have ten Binary Object Identification Records 58.
`
`When a binary object is present in ten different files that are subject to
`
`the backup procedure in Woodhill described at col. 8:66 to col. 9:27,
`
`11
`
`

`

`elements 42, 58 and 74 are stored on a file—by—file basis so that ten of
`
`each would exist. (Woodhill, col. 3:64 to col. 4:14, and Fig. 2.)
`
`24. During backup for a given binary object in a particular file, Woodhill
`
`merely compares the newly calculated Binary Object Identifier 74 with a
`
`corresponding previous Binary Object Identifier 74 associated with the
`
`most recent Backup Instance Record 42 for that particular binary object
`
`in order to determine whether or not that particular binary object of the
`
`given file has changed for that particular file and thus whether that
`
`particular binary object of that particular file should be backed up - if the
`
`binary object has changed for that file, it will be backed up. (Woodhill,
`
`col. 917-27.) Because Woodhill processes and stores binary objects on a
`
`file—specific basis, Woodhill can only determine whether a Binary Object
`
`Identifier 74 for a particular binary object is present for the most—recently
`
`backed up Version of a given file —- Woodhill cannot determine whether
`
`that particular binary object is present in other files in the system and
`
`thus cannot determine whether that particular binary object is present in
`
`the system.
`
`25. As of 1995 the ordinary meaning of the word “whether” was “if it is so
`
`that; if the case is tha .” The American Heritage Dictionary (l 975).
`
`(EX.
`
`2004.) Woodhill cannot determine “if it is so tha ” (or “if the case is
`
`12
`
`

`

`that”) a particular binary object is “present in the system”, because
`
`Woodhill only compares a newly created Binary Object Identifier 74 for
`
`that particular binary object with a prior Binary Object Identifier 74 for
`
`the most recently backed up version of that binary object for orzefile.
`
`Woodhill is incapable of determining whether that particular binary
`
`object is present in any of the other hundreds, thousands or millions of
`
`files that are in Woodhill’s system.
`
`26. As of l995, the ordinary meaning of “determine” was “to decide or
`
`settle conclusively and authoritatively.” The American Heritage
`
`Dictionary (1975).
`
`(EX. 2004.) Woodhill cannot “decide or settle
`
`conclusively and authoritatively” if it is so that a particular binary object
`
`is “present in the system”, because Woodhill is incapable of determining
`
`if that binary object is present in any file in the system save one. In order
`
`to be capable of determining whether a particular binary object is present
`
`in the system, there must be both (a) a capability to determine that the
`
`object is present in the system if that is the case, and (b) a capability to
`
`determine that the object is not present in the system if that is the case —~
`
`Woodhill is incapable of at least the latter because for a given binary
`
`object Woodhill is only capable of analyzing information for one file.
`
`13
`
`

`

`27. For example, assume for first and second different files in Woodhill that
`
`first and second recently changed identical binary objects are respectively
`
`present, and that the first binary object was already stored at the remote
`
`backup file server 12 when the first file was backed up. During backup
`
`of the second file, when Woodhill compares the Binary Object Identifier
`
`74 for the second binary object with a previous version of the Binary
`
`Object Identifier 74 for that binary object in the second file, Woodhill
`
`would detect a change and would then transmit the second binary object
`
`to the remote backup file server 12 for storage even though the identical
`
`first binary object is already stored at the remote backup file server in
`
`connection with the first file. Thus, Woodhill’s technique results in both
`
`the first and second identical binary objects being transmitted to the
`
`remote backup file server for storage, because Woodhill was unable to
`
`determine that that particular binary object of the second file was already
`
`at the backup server for the first file. Woodhill is incapable of
`
`determining whether a particular binary object is present in any of the
`
`many other files in the system. Therefore, while Woodhill is able to
`
`detect a duplicate in a given file, Woodhill is incapable of detecting a
`
`duplicate across a plurality of files.
`
`14
`
`

`

`28. As another example, if a binary object (alleged particular data item) in a
`
`particular file in Woodhill had recently changed and was not present in
`
`the most recent version of that file at the remote backup server l2, but
`
`was in fact present in twenty (20) other files at the remote backup server
`
`l2, Woodhill could not detect that presence of the binary object in the
`
`twenty (20) other files in the system and thus could not determine
`
`whether the binary object was present in the system. Woodhill’s
`
`statement at col. 8:62~65 that “duplicate binary objects, even if resident
`
`on different types of computers in a heterogeneous network, can be
`
`recognized from their identical Binary Object Identifiers 74” confirms
`
`that Woodhill’s procedure operates as explained above —- duplicate binary
`
`objects can be recognized for a given file, but not in different files.
`
`Woodhill cannot and does not determine whether the particular data item
`
`is present in the system as required by claim 1.
`
`B. Woodhill fails to disclose the corresponding structure or its
`equivalengfor the claimed “existence means .
`.
`. ’’in claim 1 Qfthe
`‘79] Qatem‘.
`
`29. It is my understanding that under 35 U.S.C. § 1 12, 1] 6, the Board
`
`construed the corresponding structure in the specification for the
`
`“existence means .
`
`. .” in claim 1 of the 791 patent as “a data processor
`
`15
`
`

`

`programmed according to step S232 illustrated in Figure 11 or step S260
`
`illustrated in Figure 14.” The specification of the ‘791 patent states
`
`“confirm that the True Name exists locally by searching for it in the True.
`
`Name registry or local directory extensions table 135 (Step S260)”,
`
`which contain True Names for many files (‘791 patent, col. 15:52-56;
`
`col. 8:19-34; col. 8:58 to col. 9:40.) The specification also states “look
`
`for an entry for the True Name in the True File registry 126 (Step S232)
`
`and determine whether a True Name entry, record 140, exists in the True
`
`File registry.” (‘79l patent, col. 14:53-56.) Thus, this construction
`
`requires at least searching for the True Name of the particular data item
`
`in a registry or table that includes a plurality of True Names for many
`
`files, or its equivalent.
`
`It is my understanding that under the patent laws
`
`the claim covers this corresponding structure and equivalents thereof. It
`
`is my opinion that Woodhill fails to disclose this structure or anything
`
`equivalent thereto.
`
`30. As I explained above, Woodhill simply compares the newly calculated
`
`Binary Object Identifier 74 for the alleged “particular data item” with a
`
`Binary Object Identifier 74 for a previous version of that binary object —
`
`not with a plurality of Binary Object Identifiers 74 for a corresponding
`
`plurality of data items for different files that are present in the system.
`
`16
`
`

`

`Woodhill never looks for, or searches for, the newly calculated Binary
`
`Object Identifier 74 in a registry or table that includes a plurality of True
`
`Names or Binary Object Identifiers for different files in the system. A
`
`comparison with a predetermined value as in Woodhill is much different
`
`than, and not equivalent to, searching for a value in a table or registry that
`
`includes True Names for many files.
`
`3 l. It is my understanding that an element is equivalent to a claim limitation
`
`if the differences between the two are “insubstantial.” It is my
`
`understanding that structure in a prior art reference is equivalent to the
`
`corresponding structure of a means-plus—function term if the structure in
`
`the reference performs the identical function “in substantially the same
`
`way, with substantially the same result” as the corresponding structure.
`
`Woodhill does not perform the identical function for the reasons
`
`explained above. Moreover, Woodhill does not disclose any function
`
`that is performed in substantially the same way, with substantially the
`
`same result, as the corresponding structure for this means-plus—function
`
`term. The differences between the structure in Woodhill and the
`
`corresponding structure in the ‘79l specification are substantial.
`
`Woodhill never looks for, or searches for, the newly calculated Binary
`
`Object Identifier 74 in a registry or table that includes a plurality of True
`
`l7
`
`

`

`Names or Binary Object Identifiers 74 for many files. Thus, unlike the
`
`‘79l patent, Woodhill is incapable of determining whether a particular
`
`data item is present in the plurality of files in the system, or present in the
`
`plurality of files at a particular location in the system, or present in
`
`Various files at Various locations in the system. As explained above,
`
`Woodhill is only concerned with, and capable of, determining whether a
`
`particular Binary Object Identifier 7-4 for a binary object is present for the
`
`most—recently backed up Version of a Single file —- Woodhill cannot
`
`determine whether that particular binary object is present in other files in
`
`the system. Woodhill’s technique is significantly inferior to that of the
`
`‘79l patent in these respects, as Woodhill has no way of figuring out
`
`whether a particular data item is present in 99.9% of the files in the
`
`system. Woodhill functions in a much different way, and obtains a much
`
`different result, than the corresponding structure in the ’79l patent.
`
`Woodhill does not anticipate claim 1 for this reason as well.
`
`C. Wood//zillfails to disclose the corresponding structurgfgr the
`‘tdentigy means. . .’’in claim I of the ‘791pate/at.
`
`32. Counsel for PersonalWeb has asked me to assume the following means-
`
`plus—function construction for the “identity means .
`
`. .” clause in claim 1
`
`of the ‘79l patent. PersonalWeb’s counsel has explained to me that the
`
`18
`
`

`

`Board currently does not agree with this construction, but has asked me
`
`to assume this construction for purposes of my declaration —— I have done
`
`so.
`
`I have no opinion on whether the construction below is correct, but
`
`have assumed it for this declaration because I was asked to do so by
`
`PersonalWeb’s counsel.
`
`Means-Plus—Function
`
`Assumed Function and Corresponding
`
`Clause
`
`Structure/Material/Acts in Specification
`
`“identity means for
`
`Function: determining, for any of a plurality
`
`determining, for any of a
`
`of data items present in the system, a
`
`plurality of data items
`
`substantially unique identifier, the identifier
`
`present in the system, a
`
`being determined using and depending on all
`
`substantially unique
`
`of the data in the data item and only the data
`
`identifier, the identifier
`
`in the data item, whereby two identical data
`
`being determined using and
`
`items in the system will have the same
`
`depending on all of the data
`
`identifier.
`
`in the data item and only the
`
`Correspgnding Structu_r_e_, Material or Acts: at
`
`l
`
`data in the data item,
`
`least one processor (col. 7:62-63)
`
`whereby two identical data
`
`‘ programmed to perform the Calculate True
`
`items in the system will have
`
`Name mechanism in accordance with ‘79l
`
`the same identifier.” (claim
`
`col. 12:54 to col. 13:19 and col. l4:l—39.
`
`1)
`
`(EX. 1001.)
`
`33. Woodhill fails to disclose the aboVe—identified corresponding structure,
`
`material or acts for this means-plus—function term under the above
`
`19
`
`

`

`construction, and also fails to disclose anything equivalent thereto. The
`
`above construction requires a mechanism determining if the data item is a
`
`simple or compound data item, and when it is a compound data item then
`
`applying a cryptographic hash function MD5 or SHA (performed in
`
`computing a True Name) to each of the segments of the compound data
`
`item to obtain a True Name for each of the segments (or equivalents
`
`thereof). This construction further requires creating a block consisting of
`
`the respective True Names of the plurality of segments, and then
`
`applying the cryptographic hash function (performed in computing a
`
`True Name) to the block of segment True Names in order to compute the
`
`True Name of the compound data item (and equivalents thereof). Thus,
`
`this assumed construction requires a cryptographic hash of cryptographic
`
`hashes when it is determined that the data item is compound. Woodhill
`
`fails to disclose these features or their equivalent.
`
`34. Binary Object Identifiers 74 in Woodhill are used in deciding whether to
`
`back up binary objects. While Woodhill discloses applying a “hash”
`
`function to a binary object (Woodhill, col. 821-31) for use in field 70 of
`
`Binary Object Identifier 74, Woodhillfails to disclose a hash of hashes
`
`when it is determined that the data item is a compound data item as
`
`required by the construction of “identity means .
`
`. .” Woodhill also fails
`
`20
`
`

`

`to disclose anything equivalent thereto. For example, Woodhill does not
`
`apply a hash function to Binary Object Identifiers 74. Furthermore,
`
`Woodhill has no cryptographic hash, and thus has no MD5 or SHA or
`
`anything equivalent thereto.
`
`WOODHILL DOES NOT ANTICIPATE ‘791 CLAIM 2
`
`35. It is my understanding that because claim 2 of the ‘79l patent depends
`
`from claim 1, then claim 2 includes the invention of claim 1 and then the
`
`additional subject matter recited in claim 2. In addition to the reasons set
`
`forth above regarding claim 1, Woodhill does not anticipate claim 2 of
`
`the ‘79l patent for at least the following reasons in my opinion.
`
`36. Claim 2 requires “local existence means for determining whether an
`
`instance ofa particular data item is present at a particular location in
`
`the system, based on the identifier of the data item.” Woodhill fails to
`
`disclose this.
`
`. a particular
`A. Woodhill is incapable of “determining whether. .
`data item ispgesent at a particular location in the system .
`.
`. ”
`
`37. Woodhill fails to disclose “determining whether an instance ofa
`
`particular data item is present at a particular location in the system” as
`
`required by claim 2. See my discussion above regarding claim l.
`
`21
`
`

`

`3 8, It is my understanding that petitioner alleges that the “particular
`
`location” is the remote backup server 12 in Woodhill. However,
`
`Woodhill can only determine whether a Binary Object Identifier 74 for a
`
`particular binary object is present for the most—recent version ofa
`
`particular file at the backup server l2 — Woodhill cannot determine
`
`whether a particular data item is present at a particular location in the
`
`system as required by claim 2. For the reasons I explained above
`
`regarding claim l, Woodhill cannot determine whether that particular
`
`binary object is present in the many other files at that particular location
`
`(eg, at the remote backup server 12). Woodhill’s determination of
`
`whether a Binary Object Identifier 74 for a particular binary object is
`
`present for the most-recent version of one particular file is much different
`
`than being able to determine whether such an object is present at a
`
`particular location such as Woodhill’s backup server 12 that includes
`
`many files. Woodhill cannot determine whether a particular data item is
`
`present at a particular location in a system because Woodhill is only
`
`capable of analyzing information specific to a prior version of one file for
`
`that location and is incapable of analyzing the hundreds or thousands of
`
`other files at that same location.
`
`22
`
`

`

`39. Moreover, it is my understanding that the Board construed “location” as
`
`“any of a particular processor in the system, a memory of a particular
`
`processor, a storage device, a removable storage medium (such as a
`
`floppy disk or compact disk), or any other physical location in the
`
`system.” (‘79l patent at col. 5:65 to col. 6:3.) One of ordinary skill in
`
`the art reading the Board’s construction of “location” would understand
`
`that a single “file” in Woodhill is not a “location.” A “file” is not a
`
`“physical location” and also does not satisfy any of the other language in
`
`the Board’s construction of “location.” Woodhill cannot determine
`
`whether a particular data item is present at a particular location (eg, at
`
`the backup server 12) in Woodhill’s system, because Woodhill is only
`
`capable of analyzing information for a prior version of one file at that
`
`location and is incapable of analyzing the hundreds or thousands of other
`
`files at that location.
`
`B. Woodhill fails to disclose the corresponding structure or its
`equivalentfor the claimed “local existence means .
`.
`. ”
`
`40. It is my understanding that according to the Board’s construction, the
`
`corresponding structure in the specification for the “local existence
`
`means .
`
`. .” in claim 2 is “a data processor programmed according to step
`
`S260 illustrated in Figure 14.” In this respect, specification states
`
`23
`
`

`

`“confirm that the True Name exists locally by searching for it in the True
`
`Name registry or local directory extensions table 135 (Step S260)”,
`
`which contain True Names for many files (‘791 patent, col. 15:52-56;
`
`col. 8:19-34; col. 8:58 to col. 9:40.) Thus, this construction requires at
`
`least searching for the True Name of the particular data item in a registry
`
`or table that includes a plurality of True Names for many files. Woodhill
`
`fails to disclose this or anything equivalent thereto.
`
`41. As I explained above, Woodhill simply compares the newly calculated
`
`Binary Object Identifier 74 for the alleged “particular data item” with its
`
`previous version Binary Object Identifier 74 associated with the most
`
`recent Backup Instance Record 42 for a particular file —- not with a
`
`plurality of Binary Object Identifiers 74 identifiers for a corresponding
`
`plurality of data items for many files that are present in the system.
`
`Woodhill never searches for the newly calculated Binary Object
`
`Identifier 74 in a registry or table that includes a plurality of True Names
`
`in the system for many files. Comparing with a preselected Value for one
`
`file in Woodhill is much different than, and not equivalent to, searching
`
`for a value in a table or registry that includes a plurality of values for
`
`many files.
`
`24
`
`

`

`42. Woodhill does not perform the identical function of this means—plus—
`
`function clause for the reasons I explained above. Moreover, Woodhill
`
`does not disclose any function that is performed in substantially the same
`
`way, with substantially the same result

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