Paper No.44
`Trials@uspto.gov
`571-272-7822 Entered: February 7, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`APPLE, INC.,
`Petitioner
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC, and
`LEVEL 3 COMMUNICATIONS, LLC,
`Patent Owners.
`____________
`
`Case IPR2013-00596
`Patent 7,802,310 B2
`____________
`
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`MICHAEL R. ZECHER, Administrative Patent Judges
`
`TURNER, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION ON REMAND
`35 U.S.C. § 144 and 37 C.F.R. § 42.5(a)
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: February 7, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`APPLE, INC.,
`Petitioner
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC, and
`LEVEL 3 COMMUNICATIONS, LLC,
`Patent Owners.
`____________
`
`Case IPR2013-00596
`Patent 7,802,310 B2
`____________
`
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`MICHAEL R. ZECHER, Administrative Patent Judges
`
`TURNER, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION ON REMAND
`35 U.S.C. § 144 and 37 C.F.R. § 42.5(a)
`
`
`
`
`IPR2013-00596
`Patent 7,802,310 B2
`
`I. INTRODUCTION
`We address this case on remand after a decision by the U.S. Court of
`Appeals for the Federal Circuit in Personal Web Technologies, LLC v.
`Apple, Inc., 848 F.3d 987, 987–94 (Fed. Cir. 2017) (“Personal Web Tech.”).
`As background, Petitioner, Apple, Inc. (“Apple”), filed a Petition
`requesting an inter partes review of claims 24, 32, 70, 81, 82, and 86 of U.S.
`Patent No. 7,802,310 B2 (“the ’310 Patent,” Ex. 1001). Paper 1 (“Pet.”).
`Patent Owners, PersonalWeb Technologies LLC and Level 3
`Communications, LLC (collectively “PersonalWeb”), filed a Preliminary
`Response (Paper 8). We determined that the information presented in the
`Petition demonstrated that there was a reasonable likelihood that Apple
`would prevail in challenging of claims 24, 32, 70, 81, 82, and 86 as
`unpatentable under 35 U.S.C. § 103(a). Pursuant to 35 U.S.C. § 314, we
`instituted trial on March 26, 2014, on the ground that the challenged claims
`are unpatentable under § 103(a) over Woodhill1 and Stefik2. Paper 9 (“Dec.
`on Inst.”).
`During the course of trial, PersonalWeb filed a Patent Owner
`Response (Paper 15, “PO Resp.”), to which Apple filed a Reply to the Patent
`Owner Response (Paper 22, “Reply”). We held an oral hearing on
`November 17, 2014, with a transcript of that hearing appearing in the record.
`See Paper 31 (“Tr.”).
`
`
`1 Woodhill, U.S. Patent No. 5,649,196, issued July 15, 1997 (Ex. 1014).
`2 Stefik, U.S. Patent No. 7,359,881 B2, issued Apr. 15, 2008 (Ex. 1013).
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`On March 25, 2015, we issued a Final Written Decision in this
`proceeding in accordance with 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`Paper 33 (“Final Dec.”). We concluded that Apple had demonstrated by a
`preponderance of the evidence that claims 24, 32, 70, 81, 82, and 86 of the
`’310 patent were unpatentable under § 103(a) over the combination of
`Woodhill and Stefik. Final Dec. 25. Subsequently, PersonalWeb requested
`rehearing under 37 C.F.R. § 42.71(d), where that request for rehearing was
`denied. Papers 34, 35. PersonalWeb appealed the Final Written Decision,
`except as to claim 70, to the Federal Circuit. Paper 36.
`The Federal Circuit affirmed the Board’s claim construction of the
`claim terms “content-dependent name,” “content-based identifier,” and
`“digital identifier,” also concluding that PersonalWeb “does not deny that
`Woodhill discloses the required content-based identifier under the Board’s
`construction.” Personal Web Tech., 848 F.3d at 991.
`The Federal Circuit also determined the Board did not sufficiently
`explain and support the following conclusions: (1) Woodhill and Stefik
`disclose all of the elements recited in the challenged claims of the ’310
`Patent; and (2) a relevant skilled artisan would have been motivated to
`combine Woodhill and Stefik in the way the ’310 Patent claims and
`reasonably expected success. Personal Web Tech., 848 F.3d at 991–94.
`Consequently, the Federal Circuit vacated our determination of obviousness
`as to claims 24, 32, 81, 82, and 86 of the ’310 Patent and remanded this case
`to us for further proceedings. Id. at 994. The Federal Circuit’s mandate
`issued on April 7, 2017.
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`On June 22, 2017, we issued an Order instructing the parties to file
`briefs specifically pointing out where Petitioner made out a proper case of
`obviousness on the instituted ground, or where Petitioner failed to make out
`such a case. Paper 39, 2. In accordance with this Order, the parties filed
`briefs on July 12, 2017. Papers 42, 43. PersonalWeb makes clear that it did
`not appeal claim 70, such that we need not address claim 70. Paper 43, 1.
`See also Personal Web Tech., 848 F.3d at 990.
`
`We have reconsidered the record developed during trial anew by
`reviewing the parties’ positions in light of the Federal Circuit’s guidance
`regarding the patentability under 35 U.S.C. § 103(a) over Woodhill and
`Stefik of claims 24, 32, 81, 82, and 86, as well as the parties’ newly-filed
`briefs. For the reasons that follow, we maintain that Apple has demonstrated
`by a preponderance of the evidence that claims 24, 32, 81, 82, and 86 of the
`’310 Patent are unpatentable under § 103(a) over the combination of
`Woodhill and Stefik.
`
`A. The ’310 Patent (Ex. 1001)
`The ’310 Patent relates to a data processing system that identifies data
`items using substantially unique identifiers, otherwise referred to as True
`Names, which depend on all the data in the data item and only on the data in
`the data item. Ex. 1001, 1:44–48, 3:52–55, 6:20–24. According to the ’310
`Patent, the identity of a data item depends only on the data and is
`independent of the data item’s name, origin, location, address, or other
`information not derivable directly from the data associated therewith. Id. at
`3:55–58. The invention of the ’310 Patent also provides that the system can
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`Patent 7,802,310 B2
`publish data items, allowing other, possibly anonymous, systems in a
`network to gain access to the data items. Id. at 4:32–34.
`B. Illustrative Claim
`The ’310 Patent includes claims 1–87, of which a trial was instituted
`
`on claims 24, 32, 70, 81, 82, and 86. Of those the challenged claims, claims
`24, 70, 81, and 86 are independent claims. Independent claim 24 is
`reproduced below:
`
`24. A computer-implemented method implemented at
`least in part by hardware comprising one or more processors, the
`method comprising:
`(a) using a processor, receiving at a first computer from a
`second computer, a request regarding a particular data item, said
`request including at least a content-dependent name for the
`particular data item, the content-dependent name being based, at
`least in part, on at least a function of the data in the particular
`data item, wherein the data used by the function to determine the
`content-dependent name comprises at least some of the contents
`of the particular data item, wherein the function that was used
`comprises a message digest function or a hash function, and
`wherein two identical data items will have the same content-
`dependent name; and
`(b) in response to said request:
`the
`(i) causing
`the content-dependent name of
`particular data item to be compared to a plurality of values;
`(ii) hardware
`in
`combination with
`software
`determining whether or not access to the particular data
`item is unauthorized based on whether the content-
`dependent name of the particular data item corresponds to
`at least one of said plurality of values, and
`
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`(iii) based on said determining in step (ii), not allowing
`the particular data item to be provided to or accessed by
`the second computer if it is determined that access to the
`particular data item is not authorized.
`Ex. 1001, 40:1–26.
`
`II. ANALYSIS
`A. Claim Construction
`In the Final Written Decision, we began our analysis by addressing
`the parties’ arguments regarding claim construction, as well as the standard
`to be applied in claim construction. Final Dec. 5–10. Because the ’310
`Patent expired on April 11, 2015, PersonalWeb argued that we should not
`have relied on the broadest reasonable interpretation standard, and should
`have instead applied the standard of Phillips v. AWH Corp., 415 F.3d 1303,
`1312–13 (Fed. Cir. 2005). Final Dec. 5–6; Personal Web Tech., 848 F.3d at
`990–91. The Federal Circuit found that our construction was correct under
`either standard, rendering moot the issue of the proper claim construction
`standard to be applied. Personal Web Tech., 848 F.3d at 990.
`We construed multiple claim terms in the Institution Decision, with
`those same claim terms also construed in the Final Written Decision.
`Dec. on Inst. 6–11; Final Dec. 5–10. Of import to the remanded case, we
`construed the following terms: “digital identifier” (Claim 86); “content-
`dependent name” (Claims 24 and 32); and “content-based identifier”
`(Claims 70 and 81). We construed these claim terms as “an identifier for a
`data item being based, at least in part, on a given function of at least some of
`the bits in the particular sequence of bits of the particular data item.” Final
`
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`Dec. 7–9. The Federal Circuit affirmed that construction, and also
`acknowledged that PersonalWeb did not deny that Woodhill discloses the
`required content-based identifier under that construction. Personal Web
`Tech., 848 F.3d at 991.
`B. Federal Circuit Decision Regarding Obviousness Determination
`On appeal to the Federal Circuit, PersonalWeb argues that we erred in
`our ultimate obviousness determination. Personal Web Tech., 848 F.3d at
`989. The Federal Circuit determines that we did not adequately support our
`findings that the prior art disclosed all elements of the challenged claims and
`that a relevant skilled artisan would have had a motivation to combine the
`prior art references to produce the claimed inventions with a reasonable
`expectation of success. Id. More specifically, the Federal Circuit
`determines that we did not sufficiently explain and support the conclusions
`that: (1) Woodhill and Stefik disclose all of the elements recited in the
`challenged claims of the ’310 Patent; and (2) a relevant skilled artisan would
`have been motivated to combine Woodhill and Stefik in the way the ’310
`Patent claims and reasonably expected success. Id. at 991–94. The Federal
`Circuit emphasizes that their review of our obviousness determination is
`“rooted not just in the law of obviousness but in basic principles of
`administrative law.” Id. at 992–94.
`With respect to exemplary claim 24, the Federal Circuit finds that the
`portion of the Petition (Pet. 42) relied upon for satisfying the element
`“causing the content-dependent name of the particular data item to be
`compared to a plurality of values” mentions only Stefik, not Woodhill, but
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`that Apple made clear that it relies solely on Woodhill for disclosure of this
`claim element. Id. at 993. The Federal Circuit determines that the Final
`Written Decision does not explain, analyze, or adopt the portion of Apple’s
`Petition that specifically reference the specifically-cited section of Woodhill.
`Id. (citing Final Dec. 14–15; Pet. 33–34).
`The Federal Circuit also concludes our response to another of
`PersonalWeb’s argument is incomplete. Id. PersonalWeb argued that
`Woodhill’s binary object identifiers are not used to access, search for, or
`address binary objects (PO Resp. 34), in response to which we referred to a
`portion of Apple’s Reply that referenced a specific portion of Woodhill.
`Final Dec. 21–22 (citing Reply 5; Ex. 1014 (Woodhill), 17:40–46). The
`Federal Circuit concludes that our opinion “does not explicitly say, let alone
`explain, how Woodhill shows that determination to involve a comparison
`between the content-based identifier and a plurality of values.” Personal
`Web Tech., 848 F.3d at 993.
`With respect to a motivation to combine Woodhill and Stefik, the
`Federal Circuit determines that our reasoning also was deficient. Id. The
`Federal Circuit determines that:
`The Board’s most substantial discussion of this issue merely
`agrees with Apple’s contention that “a person of ordinary skill in
`the art reading Woodhill and Stefik would have understood that
`the combination of Woodhill and Stefik would have allowed for
`the selective access features of Stefik to be used with Woodhill's
`content-dependent identifiers feature.” Id. at *8 (emphasis
`added). But that reasoning seems to say no more than that a
`skilled artisan, once presented with the two references, would
`have understood that they could be combined. And that is not
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`enough: it does not imply a motivation to pick out those two
`references and combine them to arrive at the claimed invention.
`Id. at 993–94 (citations omitted) (emphasis in original). The Federal Circuit
`further finds that “a clear, evidence-supported account of the contemplated
`workings of the combination is a prerequisite to adequately explaining and
`supporting a conclusion that a relevant skilled artisan would have been
`motivated to make the combination and reasonably expect success in doing
`so.” Id. at 994.
`The Federal Circuit vacates our determination of obviousness as to
`claims 24, 32, 81, 82, and 86 of the ’310 Patent and remands this case to us
`for further proceedings. Id.
`C. Alleged Obviousness over Woodhill and Stefik
`Claims 24, 32, 81, 82, and 86
`In its Petition, Apple contends that claims 24, 32, 81, 82, and 86 are
`unpatentable under § 103(a) over the combination of Woodhill and Stefik.
`Pet. 28–43. Apple provides a rationale for modifying Woodhill in light of
`Stefik to arrive at the features of claims 24, 32, 81, 82, and 86. Id. at 41–42.
`In support of its asserted ground of unpatentability, Apple relies on the
`testimony of Dr. Benjamin F. Goldberg. Ex. 1007 ¶¶ 61–88.
`In its Patent Owner Response, PersonalWeb presents a myriad of
`arguments that the modification to Woodhill based on Stefik would not have
`been obvious to a person of ordinary skill in the art, and that certain aspects
`of Woodhill and Stefik, even if combined, would not meet the limitations of
`the challenged claims. PO Resp. 12–41. Apple responds to these arguments
`in its Reply. Reply 4–13. As noted above, both parties provided briefing
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`after remand on whether the Petition explains and supports that Woodhill
`and Stefik disclose all of the elements recited in the challenged claims, and
`whether a skilled artisan would have been motivated to combine Woodhill
`and Stefik as provided in the challenged claims with a reasonable
`expectation of success. Paper 42 (“Pet. Br.”); Paper 43 (“PO Br.”).
`We begin our analysis with brief overviews of Woodhill and Stefik,
`then we address the parties’ arguments as to whether Woodhill and Stefik
`disclose all of the elements of the challenged claims, as well as whether the
`Petition supports and explains that a skilled artisan would have been
`motivated to combine Woodhill and Stefik as provided in the challenged
`claims with a reasonable expectation of success.
`1. Woodhill
`Woodhill discloses a system for distributed storage management on a
`computer network system. Ex. 1014, 1:11–17. Figure 1 of Woodhill,
`reproduced below:
`
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`Figure 1 depicts a computer network system that includes a distributed
`storage management system. As illustrated in Figure 1 of Woodhill, each
`local area network 16 includes multiple user workstations 18 and local
`computers 20. Id. at 3:24–44. Woodhill’s system includes a Distributed
`Storage Manager (“DSM”) program for building and maintaining the File
`Database. Id. at 3:44–49.
`The DSM program views a file as a collection of data streams, and
`divides each data stream into one or more binary objects. Id. at 4:13–23,
`7:40–43; Fig. 5A, item 132. More specifically, the data streams represent
`regular data, extended attribute data, access control list data, etc. Id. at
`7:44–47. For each binary object being backed up, a Binary Object
`Identification Record is created in a File Database and includes a Binary
`Object Identifier to identify a particular binary object uniquely. Id. at 7:60–
`8:1, 8:33–34.
`Binary Object Identifiers are calculated based on the contents of the
`data so that the Binary Object Identifier changes when the contents of the
`binary object changes. Id. at 8:57–62, 8:40–42. Notably, the Binary Object
`Identifier includes a Binary Object Hash field which is calculated against the
`contents of the binary object that is taken one word (16 bits) at a time using
`a hash algorithm. Id. at 8:22–32. Duplicate binary objects can be
`recognized from their identical Binary Object Identifiers, even if the objects
`reside on different types of computers in a heterogeneous network. Id. at
`8:62–65.
`
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`
`2. Stefik
`Stefik discloses a system for preventing the unauthorized access to
`
`digital works. Ex. 1013, 1:17–20. Stefik discloses receiving a request for
`access to a particular digital work from a requester, including a unique
`identifier for the digital work, and only providing access if it is determined
`that the request is authorized. Id. at 9:47–49, 31:13–20, 41:60–65.
`3. Specific Claim Terms
`In its Petition, Apple identifies that the Binary Object Identifiers of
`Woodhill are equivalent to the “digital identifier,” “content-dependent
`name,” and “content-based identifier”3 recited in claims 24, 70, 81, and 86.
`Pet. 31. These Binary Object Identifiers are based on a cryptographic hash,
`with the chance of two different objects being assigned the same Binary
`Object Identifier being very small. Ex. 1014, 8:33–36. In Woodhill, two
`identical items will have the same Binary Object Identifier. Ex. 1007 ¶ 67.
`The Federal Circuit acknowledged that PersonalWeb did not deny that
`Woodhill discloses the required content-based identifier as we had construed
`that term. Personal Web Tech., 848 F.3d at 991.
`4. Apple’s Assertions Regarding Claim 24
`In its Petition, Apple relies in part on its analysis of claim 70 to
`
`demonstrate that elements of claim 24 are taught or suggested by Woodhill
`and/or Stefik, and thereafter extends that analysis to the other challenged
`
`3 The Federal Circuit used the term “content-based identifier” to refer to all
`of the terms in this list (Personal Web Tech., 848 F.3d at 990), and we adopt
`this terminology herein except where specifically referring to claim 81.
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`claims. Pet. 28–43. Given that claim 70 is no longer at issue in this
`proceeding (see PO Br. 1), we examine that analysis in our consideration of
`independent claim 24, still at issue.
`
`Claim 24 is directed to a computer-implemented method implemented
`at least in part by hardware comprising one or more processors. Apple
`identifies that Woodhill is directed to a system and method for the
`distributed management of the storage space and data on a networked
`computer system, where that system includes at least two storage devices for
`storing data files. Pet. 30–31 (citing Ex. 1014, Abs.).
`Claim 24 also provides that a first computer receives a request
`regarding a particular data item from a second computer, with the request
`including at least a content-dependent name for the particular data item.
`Claim 24 continues that the content-dependent name is based, at least in
`part, on at least some of the contents of the particular data item, and that the
`function is a message digest function or a hash function, such that two
`identical data items will have the same content-dependent name. Apple
`identifies the Binary Object Identifier in Woodhill as being equivalent to the
`claimed content-dependent name. Id. at 31–33 (citing Ex. 1014, 8:33–38,
`8:33–38, 58–65; Ex. 1007 ¶ 67). As discussed above, this assertion is not
`denied by PersonalWeb.
`In response to the request, claim 24 recites that the content-dependent
`name of the particular data item is compared to a plurality of values. As
`pointed out by Apple, the anticipation ground applying Woodhill (Pet. 28–
`37, 38–39), which is incorporated into the obviousness ground over
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`Woodhill and Stefik (Pet. 41–43), discusses this aspect of claim 24 in depth.
`Pet. Br. 3. The Petition references the following disclosure of Woodhill
`regarding this limitation:
`Program control then continues with step 446 where the
`Distributed Storage Manager program 448 transmits an ‘update
`request’ to the remote backup file server 12 which includes the
`Binary Object Identification Record 58 for the previous version
`of each binary object as well as the list of ‘contents identifiers’
`calculated in step 444.
`Pet. 33–34 (quoting Ex. 1017, 17:40–46, Figs. 1, 5I). Apple continues that,
`in order “[t]o determine which data needs to be restored by the update
`request, the remote backup file server of Woodhill must be able to reference
`its local files using the information it receives - namely the Binary Object
`Identification Record.” Id. at 34 (citing Ex. 1007 ¶ 70). The Petition then
`relies on the testimony of Dr. Goldberg as to how that referencing
`necessarily must be accomplished, i.e., that the remote backup fileserver
`maintains some sort of file system or other mapping (i.e., a database) that
`allows the Binary Object Identification Record to serve as a lookup for the
`requisite file data that is to be restored. Id. at 35 (citing Ex. 1007 ¶ 72).
`
`We agree with Apple’s argument that Woodhill compares the content-
`dependent name of the particular data item to a plurality of values.
`Woodhill is clear that the remote backup file server “routes” the storage files
`to “magnetic tape or other low cost storage media” (Ex. 1014, 10:13–21, 32–
`34), and it would have been necessary for the remote backup file server to
`maintain some type of system for managing its files, per Dr. Goldberg’s
`testimony (Ex. 1007 ¶ 72). The use of a database in Woodhill to determine
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`which data need to be restored would necessarily require comparisons with a
`plurality of values, per the discussed element of claim 24.
`Claim 24 also recites that the hardware in combination with software
`determines whether or not access to the particular data item is unauthorized
`based on whether the content-dependent name of the particular data item
`corresponds to at least one of the plurality of values. Lastly, based on the
`access authorization step, the particular data item is not allowed to be
`provided to or accessed by the second computer if it is determined that
`access to the particular data item is not authorized.
`Apple identifies the Petition as providing for the above-discussed
`limitations of claim 24 both through Woodhill alone, and in combination
`with Stefik. Pet. Br. 6. The Petition provides an interpretation of these latter
`elements of claim 24 as meaning that “the location can be provided if
`known, and not provided if not known,” which is asserted to be fully taught
`by Woodhill. See Pet. 37–38 (citing Ex. 1007 ¶ 75). In the Decision on
`Institution, we determined that the challenged claims refer to authorized and
`unauthorized access, as opposed to not providing information if not known,
`and, we thus, relied also on the teachings of Stefik for the determining and
`authorization steps. Dec. on Inst. 16–17 (citing Ex. 1013, 1:17–20, 9:47–49,
`31:13–20, 41:60–65). The Petition cites to the teachings of Stefik,
`specifically of a system that addresses the problem of preventing
`unauthorized access to digital works, with an access request utilizing a
`unique identifier for the digital work. Pet. Br. 7–8 (citing Pet. 26, 41–43;
`Ex. 1013, 9:47–61, 41:60–65). See also Section II.C.2. We agree with
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`Apple that access provided in Stefik would necessarily require a comparison
`between the unique identifier and other values to see if a match can be
`obtained. This is further supported by the testimony of Dr. Goldberg. Ex.
`1007 ¶¶ 57, 85). As such, we remain persuaded that the combination of
`Woodhill and Stefik teach the latter limitations of claim 24.
`Turning to a rationale or motivation to combine Woodhill and Stefik,
`Apple points to its Petition as “‘explain[ing] why one of skill would have
`been so motivated’ based on evidence in the references and ‘supported by
`evidence of the knowledge of a skilled artisan’ in the form of Dr. Goldberg’s
`declaration.” Pet. Br. 10 (quoting Outdry Techs. Corp. v. Geox S.p.A., 859
`F.3d 1364, 1370–71 (Fed. Cir. 2017)). Apple points to pages 41 through 43
`of its Petition, citing Dr. Goldberg’s testimony, as demonstrating that a
`skilled artisan would have combined the backup and restore system in
`Woodhill with the repository in Stefik to add an authorization layer to
`prevent unauthorized users from accessing a different user’s back up files.
`Id. (citing Ex. 1007 ¶ 84). Apple indicates that preventing unauthorized
`users from accessing a different user’s back up files is a precise and specific
`reason why a skilled artisan would have modified Woodhill in view of Stefik
`to arrive at the claimed subject matter. Id. at 11.
`Apple further buttresses this by pointing to portions of the Petition
`(Pet. 26, 41–43) that discuss the purpose of Stefik to prevent authorized
`access to digital works, and the testimony of Dr. Goldberg (Ex. 1007 ¶¶ 57,
`85, 88) that both Stefik and Woodhill involve file management and aim to
`solve problems with secure access. Pet. Br. 11. Apple also cites the oral
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`hearing transcript that provides:
`We have two references that are in the same field, file
`management on a network system, two references that are
`addressing the same problem, secure access to data, and then
`each of these two references, Stefik and Woodhill, certainly take
`different approaches or they approach this problem in different
`ways, but they do so in a way that lends itself to a combination
`with the other in the way that the Board described in the decision,
`again, using
`the unique content-dependent
`identifiers of
`Woodhill with the selective access concept of Stefik.
`Id. at 11–12 (quoting Paper 31, 18:19–19:2).
`
`Additionally, Apple points to the Petition and Dr. Goldberg’s
`testimony as explaining and supporting that a skilled artisan would have had
`a reasonable expectation of success in combining the backup and restore
`system of Woodhill with the repository of Stefik. Id. at 13. Apple contends
`that that “the skilled artisan would have had a reasonable expectation of
`success because ‘any particular choice of a unique identifier would have
`been a mere design choice among well-known options, including content-
`dependent identifiers such as message digest identifiers.’” Id. (citing Pet.
`42). Apple also indicates that Dr. Goldberg’s testimony provides support
`that Stefik’s authorization layer would have been added with a reasonable
`expectation of success because modifying Woodhill to perform Stefik’s
`selective access function would have been a mere design choice, with such
`options as using content-dependent identifiers. Id. (citing Ex. 1007 ¶ 87).
`As such, Apple has provided in the Petition a sufficient rationale or
`motivation to combine Woodhill and Stefik, and that combination teaches or
`suggests all of the limitations of claim 24. Therefore, we maintain that
`17
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`IPR2013-00596
`Patent 7,802,310 B2
`Apple has demonstrated by a preponderance of the evidence that claim 24 of
`the ’310 Patent is unpatentable under § 103(a) over the combination of
`Woodhill and Stefik.
`5. PersonalWeb’s Assertions Regarding Claim 24
`PersonalWeb’s briefing focuses on Apple’s alleged failure to make
`out a proper case of obviousness at least because “Apple: (1) failed to meet
`its burden of establishing that the prior art discloses all elements of the
`challenged claims, and (2) failed to meet its burden of establishing that a
`skilled artisan would have been motivated to combine Woodhill and Stefik
`in the way the ‘310 patent claims and reasonably expect success.” PO Br. 1.
`In particular, PersonalWeb argues that Woodhill and Stefik fail to disclose
`comparison of a data item identifier to a plurality of values to determine
`access authorization, and that the Petition fails to meet its burden of
`establishing that a skilled artisan would have been motivated to combine the
`references as claimed with a reasonable expectation of success. Id. at 1–15.
`We consider PersonalWeb’s arguments in each contention below.
`PersonalWeb takes claim 24 as representative and argues that the
`Petition and Institution Decision are “fatally flawed.” Id. at 1–2.
`PersonalWeb points out that the Institution Decision relies, in part, on Stefik
`for the comparison with a plurality of values step of claim 24, whereas the
`Petition relies on Woodhill. Id. (citing Dec. on Inst. 16; Pet. 42). Although
`we agree that we relied, mainly, on different portions of Woodhill and Stefik
`in the Institution Decision, we disagree that Woodhill and Stefik fail to teach
`the cited elements of claim 24.
`
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`IPR2013-00596
`Patent 7,802,310 B2
`As discussed above, the Petition provides that, in order to determine
`which data need to be restored by the update request, in Woodhill, the
`remote backup file server must be able to reference its local files using the
`information it receives, and that such a server would maintain some sort of
`file system or other mapping (i.e., a database) to perform the lookup. See
`Pet. 33−35 (citing Ex. 1017, 17:40–46, Figs. 1, 5I; Ex. 1007 ¶¶ 70, 72). This
`is equivalent to the limitation of claim 24, namely: “causing the content-
`dependent name of the particular data item to be compared to a plurality of
`values.”
`We also note that in another portion of its Briefing, PersonalWeb cites
`to a portion of Woodhill detailing “comparing the current value of the
`binary object identifier associated with a particular binary object to one or
`more previous values of the of the binary object identifier associated with
`that particular binary object.” PO Br. 10, n.1 (citing Ex. 1014, 2:14–17,
`emphases added). Although PersonalWeb cites that portion of Woodhill to
`show that the comparison is made against prior values of the same binary
`object, i.e., not for determination of authorization, that citation demonstrates
`that Woodhill provides for comparison of a binary object identifier with
`other values. The subject step in claim 24, i.e., causing the comparison, does
`not require more, with only subsequent steps of claim 24 using the
`comparison to determine authorization.
`The next element of claim 24 recites “determining whether or not
`access to the particular data item is unauthorized based on whether the
`content-dependent name of the particular data item corresponds to at least
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`IPR2013-00596
`Patent 7,802,310 B2
`one of said plurality of values.” As discussed above, Stefik prevents
`unauthorized access to digital works, with an access request utilizing a
`unique identifier for the digital work, which would necessarily require a
`comparison between the unique identifier and other values to see if a match
`can be obtained. See Pet. 33−35 (citing Ex. 1013, 9:47–61, 41:60–65; Ex.
`1007 ¶¶ 57, 85),
`Although PersonalWeb addresses latter elements recited in claim 24
`as a unitary step, i.e., comparison and determination, obviousness need not
`be determined on such a limited basis. See KSR, 550 U.S. at 418 (explaining
`that obviousness must be gauged in view of common sense and the creativity
`of an ordinarily skilled artisan). As we explain above, Apple properly relies
`upon Woodhill to show the comparison of the content-dependent name to a
`plurality of values, and that comparison would have been used to determine
`authorization, based on the teachings of Woodhill and Stefik. The
`obviousness ground is based on both Stefik and Woodhill, as such the
`arguments raised against either reference individually can be ineffective in
`showing non-obviousness. See In re Merck & Co., Inc., 800 F.2d 1091 (Fed.
`Cir. 1986). Here, PersonalWeb’s arguments that Stefik’s unique identifiers
`701 are not used to determine access to anything unauthorized and are not
`content-based (PO Br. 4) are unavailing in view of the teachings of Woodhill
`of the use of such content dependent identifiers.
`PersonalWeb also a
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