Invalidity of the U.S. Patent No. 6,415,280 Over U.S. Pat. No. 5,649,196 to Woodhill et al.
`
`Exhibit B-1
`
`Each of the Asserted Claims is anticipated by United States Patent No. 5,649,196 to Woodhill et al. (“Woodhill”), which issued on
`July 15, 1997, is a continuation of U.S. Patent App. No. 08/085,596, filed on July 1, 1993, and thus is available as prior art at least
`under 35 USC § 102(e).
`
`To the extent PersonalWeb contends that Woodhill does not meet one or more limitations of the Asserted Claims, the claims are
`obvious over the Woodhill patent, alone, in combination with the knowledge of a person of ordinary skill in the art, and/or in
`combination with other prior art references identified in the cover pleading or herein including any of the following:
` Langer, “Re: dl/describe (File descriptions)”, was an article posted to the “alt.sources” newsgroup on August 7, 1991
`(cid:120)
`(“Langer”), and thus is available as prior art at least under 35 USC § 102(b).
`
`The charts below provide representative examples of where specifically each element of each asserted claim is found within Woodhill
`and the other references, at least under PersonalWeb’s apparent construction of the Asserted Claims as applied in PersonalWeb’s
`infringement contentions. The charts also identify, for each element governed by 35 U.S.C. § 112, ¶ 6, the structure(s), act(s), or
`material(s) that performs the claimed function in the prior art references. The charts also identify, for combinations of prior art items
`that make a claim obvious, the motivation to combine such items.
`
`The cited portions of the prior art references are only examples, and Defendants reserve the right to rely on any further uncited
`portions of the prior art references as additional evidence that the references disclose and/or render obvious a claim limitation.
`
`1
`
`PersonalWeb Technologies LLC v. EMC Corporation and VMware, Inc. (No. 6:11-cv-00660-LED) (E.D. Tex.)
`EMCVMW 1032
`
`

`

`The ‘280 Patent Claims
`[36a] A method of delivering a data file in
`a network comprising a plurality of
`processors, some of the processors being
`servers and some of the processors being
`clients, the method comprising:
`
`U.S. Pat. No. 5,649,196 to Woodhill et al.
`Woodhill discloses a method of delivering a data file in a network comprising a
`plurality of processors, some of the processors being servers and some of the
`processors being clients. For example, the data processing system of Woodhill
`includes a remote backup file server and one or more local computers (clients and
`servers) connected to one or more local area networks. For example:
`
`“FIG. 1 illustrates a simplified representation of a typical networked computer system
`10 in which the system and method of the present invention for distributed storage
`management on networked computer systems may be employed. A remote backup file
`server 12 is in communication, via data path 13, with a wide area network 14. The wide
`area network 14 is, in turn, in communication with a plurality of local area networks 16
`via data paths 15. Those of ordinary skill in the art will recognize that any number of
`wide area networks 14 may be in communication with remote backup file server 12 and
`that any number of local area networks 16 (from 1 to more than 100) may be in
`communication with each wide area network 14. Those of ordinary skill in the art will
`also recognize that the means for communication between remote backup file server 12,
`wide area network 14 and local area networks 16 over data paths 13 and 15 is well
`known.
`
`Each local area network 16 includes multiple user workstations 18 and local computers
`20 each in communication with their respective local area network 16 via data paths 17.
`Again, those of ordinary skill in the art will recognize that the means for communication
`between user workstations 18, local computers 20 and local area networks 16 via data
`paths 17 is well known.” (Woodhill at col. 3, lines 6-31).
`
`See also Woodhill at ‘Field of Invention,’ col. 1, line 66- col. 2, line 49, col. 3, lines 6-
`67, col. 4, line 62 – col. 5, line 11, col. 5, lines 13-20, col. 9, lines 30-44, and Figures 1
`and 2.
`
`2
`
`PersonalWeb Technologies LLC v. EMC Corporation and VMware, Inc. (No. 6:11-cv-00660-LED) (E.D. Tex.)
`
`

`

`The ‘280 Patent Claims
`
`U.S. Pat. No. 5,649,196 to Woodhill et al.
`
`[36b] storing the data file is [sic] on a first
`server in the network and storing copies of
`the data file on a set of servers in the
`network distinct from the first server; and
`
`Woodhill discloses storing the data file on a first server in the network and storing
`copies of the data file on a set of servers in the network distinct from the first
`server. For example, the data processing system runs a Backup/Restore routine on
`each local computer. During operation of this program, binary objects (data files)
`are stored somewhere on the local area network other than the local computer
`being backed up and on the remote backup server (servers). For example:
`
`“The Distributed Storage Manager program 24 performs two concurrent backup
`operations. In most cases, the Distributed Storage Manager program 24 stores a
`compressed copy of every binary object it would need to restore every disk drive 19 on
`every local computer 20 somewhere on the local area network 16 other than on the local
`computer 20 on which it normally resides. At the same time, the Distributed Storage
`Manager program 24 transmits every new or changed binary object to the remote
`backup file server 12.” (Woodhill at col. 9, lines 30-38).
`
`See also element [36a].
`
`To the extent PersonalWeb contends that the limitation of “storing the data file is
`[sic] on a first server and storing copies of the data file on a set of servers distinct
`from the first server” is not met by Woodhill, a person of ordinary skill in the art
`would have found it obvious to modify Woodhill to meet that limitation. For
`example, it would have been obvious to add an additional remote backup file
`server or servers to Woodhill’s system for additional data security. Adding
`additional remote backup file servers to Woodhill would constitute applying a
`known technique to a known device, method, or product ready for improvement to
`yield predictable results, and therefore it would be obvious to a person of ordinary
`
`3
`
`PersonalWeb Technologies LLC v. EMC Corporation and VMware, Inc. (No. 6:11-cv-00660-LED) (E.D. Tex.)
`
`

`

`The ‘280 Patent Claims
`
`U.S. Pat. No. 5,649,196 to Woodhill et al.
`skill in the art exercising ordinary creativity.
`
`[36c] responsive to a client request for the
`data file, the request including a hash of the
`contents of the data file, causing the data
`file to be provided to the client.
`
`Woodhill discloses, responsive to a client request for the data file, the request
`including a hash of the contents of the data file, causing the data file to be provided
`to the client. For example, the data processing system of Woodhill allows restores
`(client request) of binary objects (data files) using their Binary Object Identifiers
`during the Backup/Restore Routine. Also, the data processing system of Woodhill
`performs periodic self-audits by initiating a restore of a randomly selected binary
`object, identified by its Binary Object Identification Record, which includes its
`Binary Object Identifier. A Binary Object Identifier includes a hash value
`calculated by a hash function of the contents of the binary object that it identifiers.
`For example:
`
`“Since most restores of files on a local area network 16 consist of requests to restore the
`most recent backup version of a file, 30 the local copies of binary objects serve to
`handle very fast restores for most restore requests that occur on the local area network
`16.” (Woodhill at col. 10, lines 27 – 32).
`
`Binary objects backed up by a local computer are requested from another local
`computer or from the remote backup file server using their Binary Object
`Identification Record, which includes their Binary Object Identifier, to identify
`them. For example:
`
`“The Distributed Storage Manager program 24 is able to perform self-audits on a
`periodic basis to ensure that the binary objects that have been backed up can be restored.
`To perform an audit, the Distributed Storage Manager program 24 executes the steps
`illustrated in the flow chart of FIG. 5j. Program control begins at step 500 where the
`Distributed Storage Manager program 24 initiates a restore of a randomly selected
`binary object identified by a Binary Object Identification Record 58 stored in File
`
`4
`
`PersonalWeb Technologies LLC v. EMC Corporation and VMware, Inc. (No. 6:11-cv-00660-LED) (E.D. Tex.)
`
`

`

`The ‘280 Patent Claims
`
`U.S. Pat. No. 5,649,196 to Woodhill et al.
`Database 25. Program control continues with step 502 where the selected binary object
`is restored from either a compressed storage file 32 residing on one of the disk drives 19
`of one of the local computers 20 or from the remote backup file server 12.” (Woodhill
`patent at col. 18, lines 11-23).
`
`“In step 138, a Binary Object Identification Record 58 is created in File Database 25 for
`each of the binary objects currently being processed. Each of these Binary Object
`Identification Records 58 are associated with the Backup Instance Record 42 created in
`step 130. The Binary Object Identifier 74 portion of each Binary Object Identification
`Record 58 is comprised of the Binary Object Size field 64, the Binary Object CRC32
`field 66, the Binary Object LRC field 68 and the Binary Object Hash field 70. Each of
`the fields of the Binary Object Identifier 74 may be four (4) bytes in length and is
`calculated from the contents of each binary object. The Binary Object Size field 64 may
`be set equal to the byte-size of the binary object. The Binary Object CRC32 field 66
`may be set equal to the standard 32-bit Cyclical Redundancy Check number calculated
`against the contents of the binary object taken one (1) byte (8 bits) at a time. Those of
`ordinary skill in the art will readily recognize the manner in which the Cyclical
`Redundancy Check number is calculated. The Binary Object LRC field 68 may be set
`equal to the standard Longitudinal Redundancy Check number calculated against the
`contents of the binary object taken four (4) bytes (32 bits) at a time using the following
`algorithm:
`
`The Binary Object Hash field 70 is calculated against the contents of the binary object
`taken one (1) word (16 bits) at a time using the following algorithm:
`
`5
`
`PersonalWeb Technologies LLC v. EMC Corporation and VMware, Inc. (No. 6:11-cv-00660-LED) (E.D. Tex.)
`
`

`

`The ‘280 Patent Claims
`
`U.S. Pat. No. 5,649,196 to Woodhill et al.
`
`Since the Binary Object Identifier 74 is used to uniquely identify a particular binary
`object, it is important that the possibility of two different binary objects being assigned
`the same Binary Object Identifier 74 be very small. This is the reason for implementing
`the Binary Object Identifier 74 using 128 bits and four separate calculations. Although a
`Binary Object Identifier 74 may be calculated in various ways, the key notion is that the
`Binary Object Identifier is calculated from the contents of the data instead of from an
`external and arbitrary source. By incorporating the Binary Object Size field 64 within
`the Binary Object Identifier 74, only binary objects that are exactly the same size can
`generate duplicate Binary Object Identifiers 74. Further, the calculations used to
`determine the Binary Object CRC32 field 66, the Binary Object LRC field 68 and the
`Binary Object Hash field 70 are relatively independent of each other. Using the
`calculations set forth above, the probability that the Distributed Storage Manager
`program 24 will generate the same Binary Object Identifier 74 for two different binary
`objects is extremely low. Those of ordinary skill in the art will recognize that there exist
`many different ways of establishing the Binary Object Identifier 74 (e.g., establishing a
`Binary Object Identifier 74 of a different length or utilizing different calculations) and
`that the procedure set forth above is only one way of establishing the Binary Object
`Identifier 74. The critical feature to be recognized in creating a Binary Object Identifier
`74 is that the identifier should be based on the contents of the binary object so that the
`Binary Object Identifier 74 changes when the contents of the binary object changes. In
`this way, 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.” (Woodhill at col. 7, line 60 – col. 8, line 65).
`
`6
`
`PersonalWeb Technologies LLC v. EMC Corporation and VMware, Inc. (No. 6:11-cv-00660-LED) (E.D. Tex.)
`
`

`

`The ‘280 Patent Claims
`
`U.S. Pat. No. 5,649,196 to Woodhill et al.
`
`(Woodhill at Figure 3).
`
`7
`
`PersonalWeb Technologies LLC v. EMC Corporation and VMware, Inc. (No. 6:11-cv-00660-LED) (E.D. Tex.)
`
`

`

`The ‘280 Patent Claims
`
`U.S. Pat. No. 5,649,196 to Woodhill et al.
`See also Woodhill at col. 4, lines 12-47, col. 11, lines 12-15,and Figures 5A and 5J.
`
`“The Distributed Storage Manager program 24 is able to perform self-audits on a
`periodic basis to ensure that the binary objects that have been backed up can be restored.
`To perform an audit, the Distributed Storage Manager program 24 executes the steps
`illustrated in the flow chart of FIG. 5j. Program control begins at step 500 where the
`Distributed Storage Manager program 24 initiates a restore of a randomly selected
`binary object identified by a Binary Object Identification Record 58 stored in File
`Database 25. Program control continues with step 502 where the selected binary object
`is restored from either a compressed storage file 32 residing on one of the disk drives 19
`of one of the local computers 20 or from the remote backup file server 12.” (Woodhill
`patent at col. 18, lines 11-23).
`
`To the extent Woodhill does not expressly disclose the request including a hash of
`the contents of the data file, it would have been obvious to combine Woodhill with
`the knowledge of a person of ordinary skill and/or other prior art references to
`meet that limitation. For example, Langer discloses that the request includes a
`hash of the contents of the data file (e.g., an MD5 hash of the contents). A person
`of ordinary skill would have found it obvious to apply the teachings of Langer to
`Woodhill. Langer provides an express motivation to do so, by disclosing that the
`MD5 signature provides a simple method of defining a unique identifier with
`negligible chances of collision. Such combination of Woodhill with Langer would
`have been the application of Langer’s known technique to the known device of
`Woodhill, ready for improvement, to yield the predictable result of requesting data
`files with a reduced change of collision. As such, the combination would have been
`the mere combination of prior art elements, according to known methods, to yield
`predictable results. Further, design incentives and market forces would have
`prompted the application of Langer to Woodhill, because the resulting system
`would have achieved the desired uniqueness of the identifiers at a minimum of
`complexity. Finally, the combination would have required no more than ordinary
`
`8
`
`PersonalWeb Technologies LLC v. EMC Corporation and VMware, Inc. (No. 6:11-cv-00660-LED) (E.D. Tex.)
`
`

`

`The ‘280 Patent Claims
`
`U.S. Pat. No. 5,649,196 to Woodhill et al.
`creativity, taking into account the inferences and creative steps that a person of
`ordinary skill in the art would employ. Langer discloses, for example:
`
`“A simple ftp implementation would just hardlink every file available for ftp to a
`filename encoding of it's MD5 token. Users would then ftp the directory path and
`filename of the MD5 token and obtain the file. An archie or similar lookup could first
`determine which nearby systems have the file (though come to think of it, that database
`lookup may as well also provide the local directory and filename for it). For dial-up
`sites a mail-server request could be chained until it reached a site with directory access,
`and the files requested added to temporary caches on the way back.” Langer at 4–5.
`
`Likewise the code for a tar or cpio or ZIP archive etc or a collection of shar files (with
`or without uuencoding etc) could be the code obtained by applying MD5 again to the
`concatenation of the codes of the extracted files, in numeric order. (This deliberately
`loses any date and mode or ownership information and also loses the filename and
`directory structure information although there are arguments for retaining the latter and
`it could be done easily enough by preceding each MD5 code with the filepath relative to
`directory . as the top of the package).” Langer at 5.
`
`See also Langer at 2-5.
`
`[38a] A method of delivering a data file in
`a network comprising a plurality of
`processors, some of the processors being
`servers and some of the processors being
`clients, the method comprising:
`
`Woodhill discloses a method of delivering a data file in a network comprising a
`plurality of processors, some of the processors being servers and some of the
`processors being clients. For example, the data processing system of Woodhill
`includes a remote backup file server and one or more local computers (clients and
`servers) connected to one or more local area networks. For example:
`
`See element [36a].
`[38b] storing the data file is [sic] on a first Woodhill discloses storing the data file on a first server and storing copies of the
`
`9
`
`PersonalWeb Technologies LLC v. EMC Corporation and VMware, Inc. (No. 6:11-cv-00660-LED) (E.D. Tex.)
`
`

`

`The ‘280 Patent Claims
`server and storing copies of the data file on
`a set of servers distinct from the first
`server; and
`
`U.S. Pat. No. 5,649,196 to Woodhill et al.
`data file on a set of servers distinct from the first server. For example, the data
`processing system runs a Backup/Restore routine on each local computer. During
`operation of this program, binary objects (data files) are stored somewhere on the
`local area network other than the local computer being backed up and on the
`remote backup server (servers). For example:
`
`[38c] responsive to a client request for the
`data file, the request including a value
`determined as a given function of the
`contents of the data file, providing the data
`file to the client.
`
`See element [36b].
`
`To the extent PersonalWeb contends that the limitation of “storing the data file is
`[sic] on a first server and storing copies of the data file on a set of servers distinct
`from the first server” is not met by Woodhill, a person of ordinary skill in the art
`would have found it obvious to modify Woodhill to meet that limitation. For
`example, it would have been obvious to add an additional remote backup file
`server or servers to Woodhill’s system for additional data security. Adding
`additional remote backup file servers to Woodhill would constitute applying a
`known technique to a known device, method, or product ready for improvement to
`yield predictable results, and therefore it would be obvious to a person of ordinary
`skill in the art exercising ordinary creativity.
`
`Woodhill discloses, responsive to a client request for the data file, the request
`including a value determined as a given function of the contents of the data file,
`providing the data file to the client. For example, the data processing system of
`Woodhill allows restores (client request) of binary objects (data files) using their
`Binary Object Identifiers during the Backup/Restore Routine. Also, the data
`processing system of Woodhill performs periodic self-audits by initiating a restore
`of a randomly selected binary object, identified by its Binary Object Identification
`Record, which includes its Binary Object Identifier. A Binary Object Identifier
`includes a hash value calculated by a hash function of the contents of the binary
`object that it identifiers. For example:
`
`10
`
`PersonalWeb Technologies LLC v. EMC Corporation and VMware, Inc. (No. 6:11-cv-00660-LED) (E.D. Tex.)
`
`

`

`The ‘280 Patent Claims
`
`U.S. Pat. No. 5,649,196 to Woodhill et al.
`
`See element [36c].
`
`To the extent Woodhill does not expressly disclose the request including a value
`determined as a given function of the contents of the data file, it would have been
`obvious to combine Woodhill with the knowledge of a person of ordinary skill
`and/or other prior art references to meet that limitation. For example, Langer
`discloses that the request includes a value determined as a given function of the
`contents of the data file (e.g., an MD5 hash of the contents). A person of ordinary
`skill would have found it obvious to apply the teachings of Langer to Woodhill.
`Langer provides an express motivation to do so, by disclosing that the MD5
`signature provides a simple method of defining a unique identifier with negligible
`chances of collision. Such combination of Woodhill with Langer would have been
`the application of Langer’s known technique to the known device of Woodhill,
`ready for improvement, to yield the predictable result of requesting data files with
`a reduced change of collision. As such, the combination would have been the mere
`combination of prior art elements, according to known methods, to yield
`predictable results. Further, design incentives and market forces would have
`prompted the application of Langer to Woodhill, because the resulting system
`would have achieved the desired uniqueness of the identifiers at a minimum of
`complexity. Finally, the combination would have required no more than ordinary
`creativity, taking into account the inferences and creative steps that a person of
`ordinary skill in the art would employ. Langer discloses, for example:
`
`See element [36c].
`
`11
`
`PersonalWeb Technologies LLC v. EMC Corporation and VMware, Inc. (No. 6:11-cv-00660-LED) (E.D. Tex.)
`
`