DOCKET NO: 0100157-00244
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`
` ISSUED: JUL. 2, 2002
`
`
`PATENT: 6,415,280
`INVENTOR: DAVID A. FARBER
`AND RONALD D. LACHMAN
`FILED: APR. 1, 1999
`TITLE: IDENTIFYING AND
`REQUESTING DATA IN A
`NETWORK USING IDENTIFIERS
`WHICH ARE BASED ON THE
`CONTENT OF THE DATA
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,415,280
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
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`

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`U.S. Patent 6,415,280
`Petition for Inter Partes Review
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`TABLE OF CONTENTS
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`Page
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`I. MANDATORY NOTICES ............................................................................. 1 
`A.
`Real Parties-in-Interest .......................................................................... 1 
`B.
`Related Matters ...................................................................................... 1 
`C.
`Counsel .................................................................................................. 2 
`D.
`Service Information ............................................................................... 2 
`E.
`CERTIFICATION OF GROUNDS FOR STANDING ........................ 2 
`II. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .................... 3 
`A.
`Prior Art Patents and Printed Publications ............................................ 3 
`B.
`There is a Reasonable Likelihood that at least One Claim of the
`‘280 Patent is Unpatentable Under 35 U.S.C. §§ 102, 103 .................. 5 
`Relief Requested .................................................................................... 6 
`C.
`III. Claim Construction .......................................................................................... 6 
`IV. OVERVIEW OF THE ‘280 PATENT ............................................................ 7 
`A.
`Brief Description ................................................................................... 8 
`B.
`The Prosecution History of the ‘280 Patent ........................................ 13 
`THE CHALLENGED CLAIMS ARE UNPATENTABLE .......................... 18 
`A.
`There is Nothing New About Using Content-Based Identifiers
`to Request and Obtain a Data File from a Network ............................ 18 
`B. Grounds of Invalidity for Challenged Claims 36 and 38 Based
`on Browne as a Primary Reference ..................................................... 28 
`C. Grounds of Invalidity for Challenged Claims 36 and 38 based
`on Woodhill as a Primary Reference .................................................. 39 
`D. Grounds of Invalidity for Challenged Claims 36 and 38 based
`on the ESM Manual as a Primary Reference ...................................... 48 
`Grounds of Invalidity for Challenged Claims 36 and 38 based
`on Satyanarayanan as a Primary Reference ........................................ 51 
`VI. CONCLUSION .............................................................................................. 59 
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`
`
`V.
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`E.
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`Table of Exhibits for U. S. Patent 6,415,280 Petition for Inter Partes Review ... i 
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`U.S. Patent 6,415,280
`Petition for Inter Partes Review
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`ii
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`CASES
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`U.S. Patent 6,415,280
`Petition for Inter Partes Review
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`TABLE OF AUTHORITIES
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`Page(s)
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`PersonalWeb Technologies LLC v. EMC Corporation and VMware, Inc.
`(No. 6:11-cv-00660-LED) ..................................................................................................1
`
`STATUTES
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`35 U.S.C. §§ 102, 103 ............................................................................................................5, 6
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`35 U.S.C. § 102(a) ....................................................................................................................28
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`35 U.S.C. § 102(b) ..............................................................................................................48, 52
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`35 U.S.C. § 102(e) ....................................................................................................................40
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`35 U.S.C. § 314(a) ......................................................................................................................5
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`35 U.S.C. §112, ¶1 ..............................................................................................................14, 16
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`37 C.F.R. 42.73(d)(ii) .................................................................................................................1
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`37 C.F.R. § 42.100(b) ................................................................................................................6
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`iii
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`U.S. Patent 6,415,280
`Petition for Inter Partes Review
`
`I. MANDATORY NOTICES
`A. Real Parties-in-Interest
`EMC Corporation and VMware, Inc. (“Petitioner”) are the real parties-in-
`
`interest.
`
`B. Related Matters
`The ‘280 patent is one of an extensive patent family of continuation and
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`divisional applications. Exhibit 1008 shows the patent family, with patents in red
`
`and blue including the ‘280 patent being asserted in the litigation PersonalWeb
`
`Technologies LLC v. EMC Corporation and VMware, Inc. (No. 6:11-cv-00660-
`
`LED) (E.D. Tex.), served on December 16, 2012.
`
`Petitioner is also seeking Inter Partes Review of related U.S. Patents Nos.
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`5,978,791, 7,945,539, 7,945,544, 7,949,662, and 8,001,096, and requests that they
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`be assigned to the same Board for administrative efficiency. Moreover, there are
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`several continuing applications related to this family that remain pending (shown
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`on Exhibit 1008 in green). Because they share a common disclosure with the ‘280
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`patent, these applications may be used as a basis to present patentably indistinct
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`claims that may issue prior to the determination of the PTAB in this or related Inter
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`Partes Reviews. The issuance of indistinct claims is at least inconsistent with Rule
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`37 C.F.R. 42.73(d)(ii) and would be an “end-around” the reasonable number of
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`substitute claims that are permitted in an IPR proceeding. Petitioner respectfully
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`requests that the PTAB suspend from further prosecution, sua sponte, the
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`1
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`U.S. Patent 6,415,280
`Petition for Inter Partes Review
`applications in this related family, including the applications shown on Ex. 1008 in
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`green and any further applications that may be filed that depend from this family of
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`patents. If the PTAB determines that that suspension should be requested by
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`written motion, permission to file such a motion is requested at this time.
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`C. Counsel
`Lead Counsel: Peter M. Dichiara (Registration No. 38,005)
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`Backup Counsel: David L. Cavanaugh (Registration No. 36,476)
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`Petitioners will request authorization to file a motion for Cynthia Vreeland
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`to appear pro hac vice. Ms. Vreeland has more than 20 years litigation experience,
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`and has worked with Petitioner EMC on IP litigation matters for more than 10
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`years. As such, Ms. Vreeland has experience and established familiarity with the
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`technology at issue in the case. Petitioners intend to file a motion seeking
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`admission of Ms. Vreeland to appear pro hac vice when authorized to do so.
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`Service Information
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`D.
`Email: Peter Dichiara, Peter.Dichiara@wilmerhale.com
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`Post and Hand Delivery: WilmerHale, 60 State St., Boston MA 02109
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`Telephone: 617-526-6466
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`
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`Facsimile: 617-526-5000
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`E. CERTIFICATION OF GROUNDS FOR STANDING
`Petitioner certifies pursuant to Rule 42.104(a) that the patent for which
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`review is sought is available for inter partes review and that Petitioner is not
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`2
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`U.S. Patent 6,415,280
`Petition for Inter Partes Review
`barred or estopped from requesting an inter partes review challenging the patent
`
`claims on the grounds identified in this Petition.
`
`II. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`A.
`Pursuant to Rules 42.22(a)(1) and 42.104 (b)(1)-(2), Petitioner challenges
`
`Prior Art Patents and Printed Publications
`
`claims 36 and 38 of U.S. Patent No. 6,415,280 (“the ‘280 patent”; Ex. 1001) as
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`anticipated by or unpatentable in view of the following patents and printed
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`publications:
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`1. S. Browne et al., “Location-Independent Naming for Virtual
`
`Distributed Software Repositories,” University of Tennessee
`
`Technical Report CS-95-278 (Feb. 1995) (“Browne ”, Ex. 1002).1
`
`
`1The Browne February 1995 publication qualifies as prior art under 35 USC
`
`102(a), and is used in this petition because it includes illustrations facilitating
`
`explanation of the invalidity of the challenged claims. Petitioner also has attached
`
`as exhibits and included in its claim charts two earlier versions of this publication –
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`S. Browne et al., “Location-Independent Naming for Virtual Distributed Software
`
`Repositories,” http://www.netlib.org/utk/papers/lifn/main.html (Nov. 11, 1994)
`
`(Exhibit 1006); and K. Moore et al., “An Architecture for Bulk File Distribution,”
`
`Network Working Group Internet Draft (July 27, 1994) (Exhibit 1007). As Dr.
`
`Clark confirms in his Decl., the references are substantially the same with respect
`
`to the disclosure relevant to the challenged claims of the ‘280 patent. If the Patent
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`3
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`U.S. Patent 6,415,280
`Petition for Inter Partes Review
`2. 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,” filed Nov. 9,
`
`1995 as a continuation of application 85,596, filed July 1, 1993
`
`(“Woodhill”, Ex. 1005).
`
`3. Legent Software, Inc., “ESM: Product Information,” Legent
`
`Corporation (April 1994) (“ESM Manual”, Ex. 1026).2
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`4. Satyanarayanan, “Scalable, Secure, and Highly Available Distributed
`
`File Access,” IEEE Computer, vol. 23, no. 5 (May 1990), pp. 9–21
`
`(“Satyanarayanan,” Ex. 1029)
`
`5. Albert Langer, “Re: dl/describe (File descriptions),” ),” article
`
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`Owner alleges an earlier priority date of the challenged claims, Petitioner may rely
`
`on the earlier publications for invalidity, alone or in combination with the other
`
`references cited in this petition.
`2 The ESM manual was published by Legent Corporation in April 1994. This
`manual was accessible to the public and made available by Legent sales personnel
`
`to anyone that expressed interest in the Enterprise Storage Manager product. The
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`purpose of the manual was to promote the sales of Enterprise Storage Manager by
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`describing its operation and usefulness, and no purchase was required to receive
`
`this manual. As such, the manual was freely accessible to anyone in the relevant
`
`community of distributed file system and network administrators.
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`4
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`

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`U.S. Patent 6,415,280
`Petition for Inter Partes Review
`<1991Aug7.225159.786@newshost.anu.edu.au> in Usenet
`
`newsgroups “alt.sources.d” and “comp.archives.admin” (August 7,
`
`1991) (“Langer”, Ex. 1003)
`
`6. Kantor, “The Frederick W. Kantor Contents-Signature System
`
`Version 1.22,” FWKCS122.REF (August 10, 1993) (“Kantor”, Ex.
`
`1004).3
`
`B.
`
`There is a Reasonable Likelihood that at least One Claim of the
`‘280 Patent is Unpatentable Under 35 U.S.C. §§ 102, 103
`
`Section VI below explains how the above-cited patents and printed
`
`publications create a reasonable likelihood that Petitioner will prevail with at least
`
`one of the challenged claims. See 35 U.S.C. § 314(a). Indeed, that section
`
`supported by the attached claim charts of Exhibits 1032 through 1036 and the
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`Declaration of Dr. Douglas Clark, a Professor of Computer Science at Princeton
`
`
`3 Kantor’s FWKCS user manual has been publicly and freely available
`continuously since August 1993. Kantor distributed the user manual with the
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`FWKCS program as shareware and posted it online to electronic Bulletin Board
`
`Systems including “The Invention Factory” and “Channel 1” for an extended
`
`period of time, where it could be downloaded by anyone. As such the document
`
`was accessible to others in the relevant community of BBS users and system
`
`operators. (See Kantor at 3, 5; see also 158-59; Ex. 1004.)
`
`5
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`U.S. Patent 6,415,280
`Petition for Inter Partes Review
`University (“Clark Decl.”; Ex. 1009), demonstrate that all of the challenged claims
`
`are anticipated by, or unpatentable in view of, each of these references.
`
`C. Relief Requested
`Petitioner requests cancellation of claims 36 and 38, the challenged claims,
`
`as unpatentable under 35 U.S.C. §§ 102 and 103.
`
`III. Claim Construction
`
`The claim terms should be given their “broadest reasonable construction in
`
`light of the specification.” 37 C.F.R. § 42.100(b).
`
`The claim terms can be understood by their ordinary and plain meanings
`
`except where construed in the specification. The specification includes the
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`following constructions relevant to the challenged claims:
`
`Term
`“data” and “data item”
`
`Construction
`“as used herein refer to sequences of bits. Thus a data
`item may be the contents of a file, a portion of a file, a
`page in memory, an object in an object-oriented
`program, a digital message, a digital scanned image, a
`part of a video or audio signal, or any other entity
`which can be represented by a sequence of bits. (‘280
`patent, col. 1, ll. 53-59, see also col. 1, l. 64 – col. 2, l.
`2 (“data items (the data items being files, directories,
`records in the database, objects in an object-oriented
`programming, locations in memory or on a physical
`device or the like)”); Ex. 1001.)
`
`6
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`

`
`Term
`“file system”
`
`“file”
`
`“location”
`
`“local”
`
`“True Name, data
`identity, and data
`identifier”
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`U.S. Patent 6,415,280
`Petition for Inter Partes Review
`
`Construction
`“a collection of directories. A directory is a collection
`of named files – both data files and other directory
`files” (‘280 patent, col. 5, ll. 45-47; Ex. 1001.)
`
`“a named data item which is either a data file (which
`may be simple or compound) or a directory file. A
`simple file consists of a data segment. A compound
`file consists of a sequence of data segments. A data
`segment is a fixed sequence of bytes” (‘280 patent,
`col. 5, ll. 47-55; Ex. 1001.)
`
`“with respect to a data processing system, refers to 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”
`(‘280 patent, col. 5, l. 66- col. 6, l. 4; Ex. 1001.)
`
`“with respect to a particular processor refers to the
`memory and storage devices of that particular
`processor” (‘280 patent, col. 6, ll. 4-5; Ex. 1001.)
`
`“refer to the substantially unique data identifier for a
`particular item” (‘280 patent, col. 6, ll. 7-11, see also
`col. 14, l. 52-col. l. 24 (describing mechanism for
`calculating True Name using MD hash function); Ex.
`1001.)
`
`IV. OVERVIEW OF THE ‘280 PATENT
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`7
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`U.S. Patent 6,415,280
`Petition for Inter Partes Review
`
`A. Brief Description
`The ‘280 patent is directed to data storage systems that use “substantially
`
`unique data identifiers” – based on all the data in a data item and only the data in
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`the data item – to identify and access data items. (See, e.g., ‘280 patent, Title,
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`Abstract, and col. 1, ll. 12-17; Ex. 1001.) The patent uses these identifiers to
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`perform basic file management functions, such as storing and retrieving replicated
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`copies of computer files or other data items, and eliminating unwanted and
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`unnecessary duplicate copies of these items—admittedly old problems. (See, e.g.,
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`‘280 patent, Background of the Invention, col. 2, l. 45-56; Ex. 1001.)
`
`According to the patent, prior art systems identified data items based on their
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`location or address within the data processing system. (‘280 patent, col. 1, ll. 22-
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`27; Ex. 1001.) For example, files were often identified by their context or
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`“pathname,” that is, information specifying a path through the computer directories
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`to the particular file (e.g., C:\My Documents\Law School\1L\TortsOutline.txt).
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`(‘280 patent, col. 1, ll. 34-41; Ex. 1001.) The patent contends that all prior art
`
`systems operated in this manner: “In all of the prior data processing systems the
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`names or identifiers provided to identify data items. . . are always defined relative
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`to a specific context,” and “there is no direct relationship between the data names
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`and the data item.” (‘280 patent, col. 1, l. 64 – col. 2, l. 2, col. 2, ll. 11-12,
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`emphasis added; Ex. 1001.)
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`8
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`U.S. Patent 6,415,280
`Petition for Inter Partes Review
`According to the patent, this prior art practice of identifying a data item by
`
`its context or pathname resulted in certain shortcomings. For example, with
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`pathname identification, the same data name may refer to different data items, or
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`conversely, two different data names may refer to the same data item. (‘280
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`patent, col. 2, ll. 11-15; Ex. 1001.) Moreover, because there is no correlation
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`between the contents of a data item and its pathname, there is no a priori way to
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`confirm that the data item is in fact the one named by the pathname. (‘280 patent,
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`col. 2, ll. 16-19; Ex. 1001.) Furthermore, context or pathname identification may
`
`more easily result in the creation of unwanted duplicate data items, e.g., multiple
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`copies of a file on a file server.4 (‘280 patent, col. 2, ll. 46-57; Ex. 1001.)
`
`The ‘280 patent purports to address these shortcomings. (‘280 patent, col. 3,
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`ll. 5-19; Ex. 1001.) It suggests that “it is therefore desirable to have a mechanism .
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`. . to determine a common and substantially unique identifier for a data item, using
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`only the data in the data item and not relying on any sort of context.” (‘280 patent,
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`col. 3., ll. 5-10; Ex. 1001.) Moreover, “[i]t is further desirable to have a
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`mechanism for reducing multiple copies of data items… and to have a mechanism
`
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`4 For example, Alice and Bob both download the same copy of the James Bond
`movie Goldfinger. Alice saves her copy at “C:\Movies\Bond\Goldfinger.mov”,
`
`and Bob saves his copy at “C:\Videos\007\Bond-Goldfinger.mov”.
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`9
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`U.S. Patent 6,415,280
`Petition for Inter Partes Review
`which enables the identification of identical data items so as to reduce multiple
`
`copies.” (‘280 patent, col. 3, ll. 11-16; Ex. 1001.)
`
`To do so, the ‘280 patent provides data identifiers that “depend[] on all of
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`the data in the data item and only on the data in the data item.” (‘280 patent, col. 1,
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`ll. 11-16, col. 3, ll. 28-31; Ex. 1001.) Preferred embodiments use either of the
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`well-known MD5 or SHA message digest functions5 to calculate a substantially
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`unique identifier from the contents of the data item. (‘280 patent, col. 12, l. 38-
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`col. 14, l. 24; Ex. 1001.) The system first computes the 16-byte (128-bit) message
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`digest of the data item and then appends the size of the data item to produce a 160-
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`bit identifier. (‘280 patent, Fig. 10A and col. 13, ll. 52-63; Ex. 1001.) The patent
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`calls these context- or location-independent, content-based identifiers a “True
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`Name” – a phrase admittedly “coined by the inventors.” (U.S. Patent No.
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`6,415,280 Prosecution History, Response (Aug. 22, 2001), at 22; Ex. 1019.)
`
`
`5 A message digest function is a transformation of a piece of data into a much
`shorter form. (See, e.g., D. Banisar et al., The Third CSPR Cryptography and
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`Privacy Conference at 509 (1993); Ex. 1010 (describing a message digest function
`
`as “a 128-bit cryptographically strong one-way hash function of the message” that
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`is “somewhat analogous to a ‘checksum’ or CRC error checking code, in that it
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`compactly ‘represents’ the message.”).) The ‘791 patent admits that message
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`digest functions were known. (‘280 patent, col. 12, l. 66 - col. 13, l. 3; Ex. 1001.)
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`10
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`U.S. Patent 6,415,280
`Petition for Inter Partes Review
`With these identifiers, the patent asserts, “data items can be accessed by
`
`reference to their identities (True Names) independent of their present location.”
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`(‘280 patent, col. 34, ll. 20-22; see also col. 34, ll. 41-43; Ex. 1001.) The actual
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`data item corresponding to these location-independent identifiers may reside
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`anywhere, e.g., locally, remotely, offline. (Id. at col. 34, ll. 22-30.) “Thus the
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`identity of a data item is independent of its name, origin, location, address, or other
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`information not derivable directly from the data, and depends only on the data
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`itself.” (Id. at col. 3, ll. 31-33.)
`
`In the preferred embodiments, the substantially unique identifiers are used to
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`“augment” standard file management functions of an existing operating system.
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`(Id. at col. 6, ll. 12-19.) For example, a local directory extensions (LDE) table6 is
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`indexed by a pathname or contextual name of a file and also includes True Names
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`for most files. (Id. at col. 8, ll. 24-31.) A True File registry (TFR) lists True
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`Names, and stores “location, dependency, and migration information about True
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`Files.” (Id. at col. 8, ll. 32-34, 37-39.) True Files are identified in the True File
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`registry by their True Names, and can be looked up in the registry by their True
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`
`6 According to the patent, a LDE table is a data structure which provides
`information about files and directories in the system and includes information in
`
`addition to that provided by the native file system. (‘280 patent, col. 8, ll. 24-31;
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`Ex. 1001.)
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`11
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`U.S. Patent 6,415,280
`Petition for Inter Partes Review
`Names. (Id. at col. 8, ll. 35-37; col. 23, ll. 50-51.) This look-up provides, for each
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`True Name, a list of the locations, such as file servers, where the corresponding file
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`is stored. (Id. at col. 34, ll. 28-30; see also col. 15, ll. 62-64.) When a data item is
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`to be “assimilated” into the system, its True Name can be compared to the True
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`File Registry to see if the data item already exists in the system. (Id. at col. 14, ll.
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`25-32.) The True Name also can be used to identify a file by contents, to confirm
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`that a file matches its original contents, or to compare two files.” (Id.at col. 15, ll.
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`9-11.)
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`The system also includes a “Mirror True File” background mechanism “to
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`mirror (make copies) of the True File available elsewhere in the system.” (‘280
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`patent, col. 35, ll. 15–18; Ex. 1001.) “In operation data items can be accessed by
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`reference to their identities (True Names) independent of their present location.
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`The actual data item or True File corresponding to a given data identifier or True
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`Name may reside anywhere in the system (that is, locally, remotely, offline, etc).”
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`(Id. at col. 34, ll. 21–24.) If a data item is not present locally, the True File registry
`
`may be used to determine the location(s) of copies of the True File corresponding
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`to a given True Name. (Id. at col. 34, ll. 27-31.) Another mechanism, the “Realize
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`True File from Location” primitive mechanism, “tries to make a local copy of a
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`True File, given its True Name and the name of a source location (processor or
`
`media) that may contain the True File.” (Id. at col. 34, ll. 31-35; see also col. 16,
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`12
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`

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`U.S. Patent 6,415,280
`Petition for Inter Partes Review
`ll. 17-19.) If the source location is a remote processor, the Realize True File from
`
`Location mechanism sends a message to that remote processor and waits for a
`
`response. (Id. at col. 15, l. 66 -col. 16, l. 3.) If it receives a positive response, it
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`enters the returned True File into the True File Registry. (Id. at col. 16, ll. 5-7.)
`
`B.
`
` The Prosecution History of the ‘280 Patent
`
`The ‘280 patent is based on an application that was originally filed on April
`
`11, 1995, and is a division of the application that resulted in U.S. Pat. No.
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`5,978,791. The claims were preliminarily amended to include new claims 54, 87
`
`and 89 (among others), which are reproduced below:
`
`
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`****
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`13
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`U.S. Patent 6,415,280
`Petition for Inter Partes Review
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`****
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`
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`(Prelim. Amend. Of Jan. 11, 2001, at 2 and 11, Ex. 1024.)
`
`All of the pending claims were rejected for failing to satisfy 35 U.S.C.
`
`§112, ¶1 and as unpatentable over Nelson (U.S. Pat. No. 5,452,447) in view of
`
`Hamilton (U.S. Pat. No. 5,640,564) (Office Action of June 5, 2001 at 4 and 6, Ex.
`
`1025). In connection with the latter, the office action primarily focused on claim
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`14
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`U.S. Patent 6,415,280
`Petition for Inter Partes Review
`54, and relied on Nelson for the basic components of the recited system and on
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`Hamilton for the recited data identifier:
`
` (Id. at 7; Ex. 1025.) With regard to claims 87 and 89, the office action stated,
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`without separate discussion, that the rejection was based on similar grounds:
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`
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`15
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`U.S. Patent 6,415,280
`Petition for Inter Partes Review
`
`(Id. at 8 Ex. 1025.) In reply to the §112 rejections, the applicants argued:
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`****
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`(Response, Aug. 22, 2001 at 22-23; Ex. 1019.)
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`In addition, the applicants submitted claims charts, purportedly identifying
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`portions of the specification that they alleged taught and supported claims 87 and
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`89, among others. (Id. at 24. Ex. 1019.) Those charts are reproduced below:
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`(Id. at 27 and 38-39; Ex. 1019.)
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`In connection with the prior art rejections, the applicants amended the claims
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`to specifically recite “data files” as opposed to “data items,” and to recite that the
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`request included a hash of the “contents of” the data item, as opposed to merely a
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`hash of the data item. (Id. at 47-58) The applicants’ arguments focused on the
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`purported novelty of the content- based identifier:
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`
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`(Id. at 24; Ex. 1019.) Nowhere did the applicants dispute that Nelson taught the
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`basic system of servers storing copies of files or causing the file to be provided in
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`response to a request.
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`The claims were subsequently allowed, and claims 87 and 89 were
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`renumbered to challenged claims 36 and 38, respectively.
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`V.
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`THE CHALLENGED CLAIMS ARE UNPATENTABLE
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`A. There is Nothing New About Using Content-Based Identifiers to
`Request and Obtain a Data File from a Network
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`The ‘280 claims focus on the concept of using content-based identifiers to
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`store, request and obtain copies of data files from a set of servers. Claim 36, for
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`example, simply requires storing copies of a data file on multiple servers in a
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`network, and causing a copy of the file to be provided to a client in response to a
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`request including a hash of the contents of the file:
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`36. 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:
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`U.S. Patent 6,415,280
`Petition for Inter Partes Review
` 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
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`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.
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`(‘280 patent, col. 43, ll. 54-64; Ex. 1001.)7
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`The applicants indicated in their patent application that they were entitled to
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`these broad claims because “[i]n all of the prior data processing systems the names
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`or identifiers provided to identify data items . . . are always defined relative to a
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`specific context,” and “there is no direct relationship between the data names and
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`the data item.” (‘280 patent, col. 1, l. 64–col. 2. l. 2, col. 2, ll. 11-12, emphasis
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`added; Ex. 1001.)
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`These representations were simply wrong. Prior data processing system did
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`use identifiers based on the content of a data item itself, and not its context or
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`pathname. In fact, these techniques were old and widely used. This is not
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`surprising. The concept of using a mathematical function to create a “fingerprint”
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`or “signature” for a data item based on the content of the data item predates the
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`7 Claim 38 is similar but replaces the reference to a “hash” with the amorphous
`phrase “value determined as a given function.”
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`‘791 patent by decades. For example, IBM developed one of the first hash tables
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`in the 1950s (see, e.g., D. Knott, Hashing functions, The Computer Journal 18
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`(1975), vol. 3, at 274 (discussing “history of hashing”); Ex. 1011), and Professor
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`Ron Rivest of MIT introduced the MD5 algorithm referenced in the ‘791 patent in
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`the early 1990s. (See, e.g., R. Rivest, “The MD5 Message-Digest Algorithm,”
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`Internet RFC 1321 (Apr. 1992); Ex. 1012.) These hashing functions take as input
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`the data contained in a file or other data item, and produce a much smaller-sized
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`output value, commonly called a “hash,” “hash value,” “message digest” (“MD”),
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`or “checksum.” (See, e.g., McGraw-Hill Dictionary of Scientific and Technical
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`Terms, (4th ed., 1989), at 860; Ex. 1013; see also B. Kaliski, “A Survey of
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`Encryption Standards,” IEEE Micro (Dec. 1993), pp. 74–81, at 77; Ex. 1014.) For
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`example, a file that is a million bytes (or even much larger) in size can be used as
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`input to produce a hash value that is a mere 16 bytes in length. Because of the
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`mathematical properties of the function, the odds that two different files will
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`produce the identical 16 byte hash are extremely small: for example, with a 16 byte
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`hash output, the odds that two randomly picked inputs have the same hash are 2–64,
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`or approximately one in sixteen billion billions. (B. Kaliski at 77; Ex. 1014.)
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`Consequently, hashes are known as “signatures” or “fingerprints” because they
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`identify data items with high reliability, just like signatures or fingerprints are used
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`to identify people with a high degree of certainty. (See D.R. McGregor and J.A.
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`U.S. Patent 6,415,280
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`Mariani, ‘Fingerprinting’ – A Technique for File Identification and Maintenance,
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`Software Practice & Experience 1165 (1982), vol. 12, no. 12, at 1165
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`(“fingerprinting” technique “produce[s] a quasi-unique identifier for a file, derived
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`from that file's contents. . .[t]he idea is to provide an identifying deature for every
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`file, which is intrinsically distinctive, and analogous (hopefully) to a human’s
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`fingerprint.”); Ex. 1017.)
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`Although applicants suggested in their application that they were the first to
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`utilize these hashing functions to identify data items for file management
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`applications, others working in the field used them for the same purposes more
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`than a decade before the ‘280 patent. For example, file “fingerprinting” has long
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`been known as a technique to see if two files are identical. (See Rabin,
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`Fingerprinting by Random Polynomials, Center for Research in Computing
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`Technology, Harvard University, Report TR-15-81 at 1 and 9, 1981; Ex. 1015; see
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`also Manber, at 3 (commenting on work of Rabin); Ex. 1016). Likewise, the use of
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`“fingerprints” both to identify files and to check for duplicates also has long been
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`known. (See, e.g., D.R. McGregor and J.A. Mariani, at 1165; Ex. 1017.)8
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`8 This reference was cited and central to the analysis and rejection of EP
`counterpart application EP0826181A1 with claims having a central feature of
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`content-based identifiers. (Annex to the communication, May 8, 2009; Ex. 1020.)
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`Applicant amended the claims to emphasize a “licensing” limitation not found in
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`Many printed publications and patents disclose and use data identifiers
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`exactly like those described and claimed in the ‘280 patent for exactly the same
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`purposes. These publications disclose identifiers that are location- and context-
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`independent, that are determined based on hash of the contents of a data file, and
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`that are formed using the same algorithms mentioned in the ‘791 patent.
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`Browne: For example, researchers at the University of Tennessee and Bell
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`Laboratories disclosed a system that created “location-independent file names” (or
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`“LIFNs”) to identify files on the Interne