Trials@uspto.gov
`571-272-7822
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` Paper 33
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` Entered: March 25, 2015
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`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.
`
`
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`
`
`
`
`
`571-272-7822
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`
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` Paper 33
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`
`
` Entered: March 25, 2015
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`
`
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`
`
`
`
`
`
`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.
`
`
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`IPR2013-00596
`Patent 7,802,310 B2
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`I. INTRODUCTION
`
`Apple, Inc. (“Apple”) filed a Petition (Paper 1, “Pet.”) requesting 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). Patent Owners,
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`PersonalWeb Technologies LLC and Level 3 Communications, LLC
`
`(collectively “PersonalWeb”), filed a Preliminary Response (Paper 8). On
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`March 26, 2014, we instituted an inter partes review of claims 24, 32, 70,
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`81, 82, and 86 on a single ground of unpatentability alleged in the Petition.
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`Paper 9, “Dec.”
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`After institution of trial, PersonalWeb filed a Patent Owner Response
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`(“PO Resp.,” Paper 15) and Apple filed a Reply thereto (“Reply,” Paper 22).
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`An oral argument was held on November 17, 2014. The transcript of the
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`oral hearing has been entered into the record. Paper 31.
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`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
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`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
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`Apple has shown by a preponderance of the evidence that all claims
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`for which trial is instituted, claims 24, 32, 70, 81, 82, and 86 of the ’310
`
`Patent, are unpatentable.
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`
`
`A.
`
`Related Matters
`
`
`
`Apple indicates that the ’310 Patent was asserted against it in
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`PersonalWeb Tech. LLC v. Apple Inc., Case No. 6:12-cv-00660-LED,
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`pending in the U.S. District Court for the Eastern District of Texas. Pet. 2.
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`2
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`IPR2013-00596
`Patent 7,802,310 B2
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`Other petitions seeking inter partes review of PersonalWeb’s patents
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`were filed previously, with those patents and the ’310 Patent sharing a
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`common disclosure. Id. at 3–4. Another Petition, filed in Case IPR2014-
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`00062, was pending regarding the ’310 Patent, but that proceeding, as well
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`as the proceedings involving patents with common disclosures, were
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`terminated based on a settlement reached between the parties. IPR2014-
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`00062, Paper 33.
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`
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`B. The ’310 Patent (Ex. 1001)
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`The ’310 Patent relates to a data processing system that identifies data
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`items using substantially unique identifiers, otherwise referred to as True
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`Names, which depend on all the data in the data item and only on the data in
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`the data item. Ex. 1001, 1:44–48, 3:52–55, 6:20–24. According to the ’310
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`Patent, the identity of a data item depends only on the data and is
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`independent of the data item’s name, origin, location, address, or other
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`information not derivable directly from the data associated therewith. Id. at
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`3:55–58. The invention of the ’310 Patent also provides that the system can
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`publish data items, allowing other, possibly anonymous, systems in a
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`network to gain access to the data items. Id. at 4:32–34.
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`3
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`IPR2013-00596
`Patent 7,802,310 B2
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`C.
`
`Illustrative Claim
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`
`
`The ’310 Patent includes claims 1–87, of which a trial was instituted
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`on claims 24, 32, 70, 81, 82, and 86. Of those the challenged claims, claims
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`24, 70, 81, and 86 are independent claims. Independent claim 70 is
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`reproduced below:
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`70. A computer-implemented method operable in a
`system which includes a network of computers, the system
`implemented at least in part by hardware including at least one
`processor, the method comprising the steps of:
`
`in response to a request at a first computer, from another
`computer, said request comprising at least a content-based
`identifier for a particular data item, the content-based identifier
`for the particular data item being based at least in part on a
`given function of at least some data which comprise the
`contents of the particular data item, wherein the given function
`comprises a message digest or a hash function, and wherein two
`identical data items will have the same content-based identifier:
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`(A) hardware in combination with software, determining
`whether the content-based identifier for the particular data item
`corresponds to an entry in a database comprising a plurality of
`content-based identifiers; and
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`(B) based at least in part on said determining in step (A),
`selectively permitting the particular data item to be accessed at
`or by one or more computers in the network of computers, said
`one or more computers being distinct from said first computer.
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`Ex. 1001, 44:1–23.
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`D. Prior Art Relied Upon
`
`The following prior art references were relied upon in the instituted
`
`ground of unpatentability:
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`
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`4
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`IPR2013-00596
`Patent 7,802,310 B2
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`Woodhill
`Stefik
`
`
`July 15, 1997
`US 5,649,196
`US 7,359,881 B2 Apr. 15, 2008
`
`(Ex. 1014)
`(Ex. 1013)
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`
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`E. Ground of Unpatentability Instituted for Trial
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`The following table summarizes the challenge to patentability that
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`was instituted for inter partes review:
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`References
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`Basis Claims challenged
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`Woodhill and Stefik
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`§ 103
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`24, 32, 70, 81, 82, and 86
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`
`
`II. ANALYSIS
`
`A.
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`Claim Construction
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`In an inter partes review, claim terms in an unexpired patent are given
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`their broadest reasonable construction in light of the specification of the
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`patent in which they appear. 37 C.F.R. § 42.100(b). Absent any special
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`definitions, claim terms are given their ordinary and customary meaning, as
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`would be understood by one of ordinary skill in the art in the context of the
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`entire disclosure. In re Translogic Tech, Inc., 504 F.3d 1249, 1257 (Fed.
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`Cir. 2007).
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`
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`1. The Standard to be Applied in Claim Construction
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`PersonalWeb asserts that the proper claim construction standard to be
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`applied in this proceeding should not be the broadest reasonable construction
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`consistent with the Specification, given the imminent expiration of the ’310
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`Patent on April 11, 2015. PO Resp. 10. PersonalWeb argues that the proper
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`IPR2013-00596
`Patent 7,802,310 B2
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`standard to be applied is that laid out by the United States Court of Appeals
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`for the Federal Circuit in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
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`2005) (en banc). PO Resp. 10. PersonalWeb also argues that it has no
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`ability to amend the patent and that no appeal will take place until after the
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`patent expires. Id. We do not agree. PersonalWeb had the ability to file a
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`Motion to Amend and have it be considered in this proceeding. Such
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`consideration of any motion to amend could have been expedited in view of
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`the expiration of the ’310 Patent, but no such motion was filed or
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`contemplated. See Paper 13, 2.
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`PersonalWeb also argues that:
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`[T]he USPTO has no authority to change the claim construction
`standard required by Phillips for IPR proceedings because an
`IPR is not an examination proceeding and the applicable claim
`construction standard is a substantive issue (not a mere
`procedural issue). Cooper Techs. Co. v. Dudas, 536 F.3d
`1330,1335 (Fed. Cir. 2008).
`
`PO Resp. 10. The Federal Circuit has determined, however, that the claim
`
`construction standard to be applied to claims of an unexpired patent in an
`
`inter partes review is the broadest, reasonable claim construction standard.
`
`See In re Cuozzo Speed Techs., LLC, No. 2014-1301, 2015 WL 448667, at
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`*5–8 (Fed. Cir. Feb. 4, 2015). Therefore, although we acknowledge the
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`imminent expiration of the ’310 Patent, we continue to construe the
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`challenged claims according to the broadest reasonable claim construction
`
`standard.
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`6
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`IPR2013-00596
`Patent 7,802,310 B2
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`2. “data item” and “data” (Claims 24, 32, 70, 81, 82, and 86)
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`
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`In the Decision to Institute, we construed the claim term “data item”
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`as a “sequence of bits,” which includes one of the following: (1) the
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`contents of a file; (2) a portion of a file; (3) a page in memory; (4) an object
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`in an object-oriented program; (5) a digital message; (6) a digital scanned
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`image; (7) a part of a video or audio signal; (8) a directory; (9) a record in a
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`database; (10) a location in memory or on a physical device or the like; and
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`(11) any other entity which can be represented by a sequence of bits. We
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`also construed the claim term “data” as a subset of a “data item.” Dec. 6–8.
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`PersonalWeb does not dispute this construction. PO Resp. 2–3. Having
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`considered whether the construction set forth in the Decision to Institute
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`should be changed in light of evidence introduced during trial; we are not
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`persuaded any modification is necessary.
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`
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`3. “digital identifier”(Claim 86)
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`“content-dependent name” (Claims 24 and 32)
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`“content-based identifier” (Claims 70 and 81)
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`
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`Claim 86 recites that the “digital identifier for a particular sequence of
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`bits, the digital identifier being based, at least in part, on a given function of
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`at least some of the bits in the particular sequence of bits,” with claims 24,
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`70 and 81 reciting very similar recitations for “content-dependent name,”
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`and “content-based identifier.” Claim 32 provides that “the data used by the
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`function to determine the content-dependent name of the particular data item
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`comprises of all of the contents of the particular data item,” according to that
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`IPR2013-00596
`Patent 7,802,310 B2
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`embodiment.
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`In the Decision to Institute, we determined that the claims themselves
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`provide a definition of the claim terms “digital identifier,” “content-
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`dependent name,” and “content-based identifier”—namely, an identifier for
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`a data item “being based at least in part on a given function of at least some
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`of the bits in the particular sequence of bits of the particular data item.”
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`Dec. 8–10.
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`With respect to “digital identifier” and “content-based identifier,”
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`PersonalWeb notes that the above construction conflicts with the district
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`court’s construction of the same terms, but does not dispute this
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`construction. PO Resp. 3–4.
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`With respect to “content-dependent name,” PersonalWeb does dispute
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`this construction, arguing that for claim 32, the limitation should be
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`understood to be based “at least in part on a given function of all of the bits”
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`(id. at 4), and that construing a “name” as an “identifier” would be “wrong,
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`unreasonable and illogical.” Id. PersonalWeb continues that one of ordinary
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`skill in the art would have recognized the significant differences between a
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`“name” and an “identifier,” with the former allowing for reference, access,
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`search and address of that data item. Id. at 4–5. Apple counters that nothing
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`in the Specification of the ’310 Patent provides for such a distinction
`
`between name and identifier, and that PersonalWeb’s declarant, Dr. Robert
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`Dewar, acknowledged the same. Reply 1–3 (citing Ex. 1035, 32). We agree
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`with Apple.
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`Although claim 32 does recite that the data used comprises “all of the
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`8
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`IPR2013-00596
`Patent 7,802,310 B2
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`contents of the particular data item,” we are not persuaded that the
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`construction of the claim term “content-dependent name” should vary with
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`the scope of the claims. Once properly defined, the scope of this term in
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`claim 32 would be different, but that would not require a different
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`construction of the base term.
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`In addition, the Specification of the ’310 Patent provides that “data
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`items . . . are identified by substantially unique identifiers (True Names)”
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`(Ex. 1001, 31:38–42), and we are persuaded that one of ordinary skill in the
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`art, in view of the Specification of the ’310 Patent, would not have
`
`determined that identifiers and names are directed to different aspects of the
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`invention in that context. Although both PersonalWeb and Dr. Dewar opine
`
`about the distinctions between names and identifiers (PO Resp. 4–5; Ex.
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`2020 ¶ 23), these distinctions are not present in the Specification. As such,
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`we are persuaded that it is reasonable to construe “content-dependent name”
`
`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.
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`
`
`4.
`
` “selectively permit” (Claim 70)
`
`“selectively allow” (Claims 81 and 86)
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`
`
`Claim 70 recites “selectively permitting the particular data item to be
`
`accessed,” and claims 81 and 86 recite “selectively allow said particular
`
`sequence of bits to be provided to or accessed by other devices.” In the
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`Decision to Institute, we determined that, in the context of claims 70, 81, and
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`IPR2013-00596
`Patent 7,802,310 B2
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`86, the claim terms “selectively permitting” should be construed as
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`“permitting based on whether the recited condition is met,” and “selectively
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`allow” should be construed as “allowing based on whether the recited
`
`condition is met.” Dec. 10–11. PersonalWeb continues to argue that
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`Apple’s proposed constructions, in the Petition, are wrong (PO Resp. 6–8),
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`but given that the particular constructions were not adopted (Dec. 10–11),
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`these arguments are moot.
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`
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`5.
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`“to be accessed” “accessed by” (Claims 24 and 70)
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`PersonalWeb also argues that claims 24 and 70 require a “request”
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`that includes a content-dependent name or identifier for a corresponding data
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`item. PO Resp. 8. PersonalWeb continues that this is important “because
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`both parties agree that in the alleged Woodhill/Stefik combination granules
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`corresponding to contents identifiers in the alleged request (“update
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`request”) are NEVER provided to the requesting computer in response to the
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`request.” Id. at 9–10. Although PersonalWeb raises this argument in the
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`claim construction section of its Patent Owner’s Response, we are not
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`persuaded that this is an issue of claim construction. We agree that claim 70
`
`requires “selectively permitting the particular data item to be accessed,” and
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`claim 24 requires that “the particular data item corresponding to the content-
`
`dependent name is in the request is provided to or accessed by,” but we find
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`this to be an issue of whether the combination of Woodhill and Stefik meets
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`the elements of the claims, not an issue of claim construction.
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`
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`10
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`IPR2013-00596
`Patent 7,802,310 B2
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`B.
`
`Principles of Law
`
`To prevail in its challenges to the patentability of the claims, Apple
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`must prove unpatentability by a preponderance of the evidence. 35 U.S.C.
`
`§ 316(e); 37 C.F.R. § 42.1(d). A claim is unpatentable under 35 U.S.C.
`
`§ 103(a) if the differences between the subject matter sought to be patented
`
`and the prior art are such that the subject matter as a whole would have been
`
`obvious at the time the invention was made to a person having ordinary skill
`
`in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex
`
`Inc., 550 U.S. 398, 406 (2007). To establish obviousness of a claimed
`
`invention, all the claim limitations must be taught or suggested by the prior
`
`art. See CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir.
`
`2003); In re Royka, 490 F.2d 981, 985 (CCPA 1974).
`
`A patent claim composed of several elements, however, is not proved
`
`obvious merely by demonstrating that each of its elements was known,
`
`independently, in the prior art. KSR, 550 U.S. at 418. In that regard, for an
`
`obviousness analysis it is important to identify a reason that would have
`
`prompted one of skill in the art to combine prior art elements in the way the
`
`claimed invention does. Id. A precise teaching directed to the specific
`
`subject matter of a challenged claim, however, is not necessary to establish
`
`obviousness. Id. Rather, obviousness must be gauged in view of common
`
`sense and the creativity of an ordinarily skilled artisan. Id. Moreover,
`
`obviousness can be established when the prior art, itself, would have
`
`suggested the claimed subject matter to a person of ordinary skill in the art.
`
`In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976).
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`11
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`IPR2013-00596
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`We analyze the instituted ground of unpatentability in accordance
`
`with the above-stated principles.
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`
`
`C.
`
`Priority of the Subject Claims
`
`Apple asserted that claims 24, 32, 70, 81, 82, and 86 of the ’310
`
`Patent are not entitled to the benefit of the filing date of the earliest priority
`
`application under 35 U.S.C. § 120. Pet. 55–57. Specifically, Apple asserted
`
`that the earliest priority application does not provide sufficient written
`
`description support for the claim feature: “a hash function.” Id. at 55. In the
`
`Decision to Institute, we found that that the original disclosure of the earliest
`
`priority application of the ’310 Patent—namely, the application filed on
`
`April 11, 1995—provides sufficient written description support for the
`
`claimed feature “a hash function.” Dec. 11–13. We are not persuaded that
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`any modification is necessary in light of any evidence or argument
`
`introduced during trial. Thus, we determine that Priority Web has
`
`established that it is entitled to the benefit of the April 11, 1995 filing date.
`
`
`
`D. Claims 24, 32, 70, 81, 82, and 86
`– Alleged Obviousness over Woodhill and Stefik
`
`Apple asserts that claims 24, 32, 70, 81, 82, and 86 of the ’310 Patent
`
`are unpatentable under 35 U.S.C. § 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, 70, 81, 82, and 86.
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`12
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`IPR2013-00596
`Patent 7,802,310 B2
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`Id. at 41–42. In support of its asserted ground of unpatentability, Apple
`
`proffers the testimony of Dr. Benjamin F. Goldberg. Ex. 1007 ¶¶ 61–88.
`
`Woodhill discloses a system for distributed storage management on a
`
`computer network system. Ex. 1014, 1:11–17. Figure 1 of Woodhill,
`
`reproduced below:
`
`
`
`
`
`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
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`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
`
`13
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`IPR2013-00596
`Patent 7,802,310 B2
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`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.
`
`We agree with Apple that the Binary Object Identifiers of Woodhill
`
`are equivalent to the “digital identifier,” “content-dependent name,” and
`
`“content-based identifier” recited in claims 24, 70, 81, and 86. Pet. 31.
`
`They are based on a cryptographic hash, with the chance of two objects
`
`being assigned the same Binary Object Identifier being very small.
`
`Ex. 1014, 8:33–36. Based on this, two identical items will have the same
`
`Binary Object Identifier. Ex. 1007 ¶ 67.
`
`
`
`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
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`14
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`IPR2013-00596
`Patent 7,802,310 B2
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`that the request is authorized. Id. at 9:47–49, 31:13–20, 41:60–65. As
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`discussed by Apple, the process of matching the identifier for the work
`
`would involve comparing it with a plurality of values, and providing for
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`selective access. Pet. 42.
`
`Apple further contends 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
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`Stefik to be used with Woodhill’s content-dependent identifiers feature.
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`Pet. 42. We agree in this regard and are persuaded that the combination of
`
`Woodhill and Stefik renders claims 24, 32, 70, 81, 82, and 86 of the ’310
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`Patent unpatentable under 35 U.S.C. § 103.
`
`Turning to PersonalWeb’s arguments against this ground,
`
`PersonalWeb argues that the modification to Woodhill based on Stefik
`
`would not have been obvious because one of ordinary skill in the art would
`
`have wanted to minimize—not maximize—the number of comparison
`
`procedures required for access. PO Resp. 12–18. PersonalWeb continues
`
`that, based on typical large database files being restored in Woodhill, the
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`combination would have a large number comparisons that would need to be
`
`made. Id. at 15–16. In other words, PersonalWeb asserts that the number of
`
`binary object identifiers and content identifiers would be in the thousand to
`
`million range, and the combination of Woodhill and Stefik would require an
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`access determination for each. Id. Based on this, PersonalWeb argues that
`
`one of ordinary skill in the art would have sought to minimize the number of
`
`comparisons, and would have viewed an increase in multiple orders of
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`15
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`IPR2013-00596
`Patent 7,802,310 B2
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`magnitude to be “wasteful, unnecessary, inefficient and costly.” Id. at 17.
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`PersonalWeb also adds that Stefik already has a system for controlling
`
`distribution of files, and that if its usage rights would have been employed in
`
`Woodhill, if at all, they would not utilize Woodhill’s unique identifiers. Id.
`
`at 18.
`
`Apple responds that none of the challenged claims require a
`
`determination of whether access to an entire file is authorized, and that the
`
`claims are satisfied by a determination of whether access to a data item or a
`
`sequence of bits is authorized. Reply 8. In addition, Apple counters that “a
`
`person of ordinary skill in the art would have known to minimize the number
`
`of comparisons required by selecting more convenient (e.g., larger)
`
`maximum sizes for granules and/or binary objects,” and that “Woodhill is
`
`not limited to ‘large database files.’” Id. at 9–10. We agree with Apple.
`
`A person of ordinary skill in the art is not an automaton, and can
`
`apply common sense in arriving at efficient solutions. KSR, 550 U.S. at 421.
`
`As Apple suggests, an ordinarily skilled artisan would have selected larger
`
`sizes for the granules and/or binary objects for larger sized files (Reply 10),
`
`and we are persuaded that PersonalWeb’s view of such ordinarily skilled
`
`artisans would require their rote adoption of the methods of Woodhill and
`
`Stefik without contemplation. Additionally, as discussed above, the claims
`
`specify access to particular data items, but do not require any minimization
`
`of access comparisons. Thus, we do not find PersonalWeb’s argument to be
`
`persuasive.
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`16
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`Patent 7,802,310 B2
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`Next, PersonalWeb argues that, because the system in Woodhill
`
`already has the most recent version of a file, there would have been no
`
`reason to have modified Woodhill to implement methods for checking
`
`whether access is authorized for a previous version of the same file. PO
`
`Resp. 19–22. In essence, PersonalWeb argues that, if the computer already
`
`has been permitted access to the current version of the file, common sense
`
`dictates that the computer also is authorized to access the previous versions
`
`of that same file. Id. PersonalWeb further argues that the rationale put forth
`
`by Apple, namely “to prevent unauthorized users from accessing a different
`
`user’s back up files,” makes no sense because Woodhill is concerned with
`
`current and previous versions of the same file. Id. at 20. We do not agree.
`
`As Apple argues, the Woodhill system includes multiple local
`
`computers connected to the same remote backup file server, which store files
`
`and binary objects from multiple users. Reply 11; Ex. 1014, 3:25–27. It
`
`would have been obvious for one of ordinary skill in the art to have
`
`addressed whether each user or each local computer was authorized to
`
`access a particular binary object. Determining access based on binary object
`
`identifiers would have been consistent with one of the purposes of Stefik.
`
`See Ex. 1013, 9:47–49, 31:13–20, 41:60–65. Given the local area network
`
`disclosed in Woodhill, we are persuaded that one of ordinary skill in the art
`
`would have addressed access to multiple files, and not just multiple versions
`
`of a single file, in considering the combination of Woodhill and Stefik.
`
`PersonalWeb also argues that Woodhill already has a system for
`
`access control, one that acts prior to the binary object identifiers being
`
`17
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`IPR2013-00596
`Patent 7,802,310 B2
`
`created, such that it would not have been obvious to have used those
`
`identifiers for access, and that the “access control list data” of Woodhill,
`
`unrelated to the identifiers, would have been used instead. PO Resp. 21–22.
`
`We do not agree. An obviousness evaluation is not limited necessarily to the
`
`mere substitution of one element for another; although such a substitution
`
`may be simpler, in situations such as this, the obviousness analysis requires
`
`viewing factors such as the totality of the teachings, market forces, and
`
`background knowledge of a person of ordinary skill in the art. KSR, 550
`
`U.S. at 417–18. The fact that Woodhill uses one access control method, and
`
`Stefik uses another, does not mean that one of ordinary skill in the art would
`
`not have combined the aspects of each, instead of the wholesale swapping of
`
`one for another. As discussed above, we are persuaded that one of ordinary
`
`skill in the art would have employed the selective access features of Stefik to
`
`be used with Woodhill’s content-dependent identifiers feature to provide
`
`access control.
`
`PersonalWeb argues that the teachings of Stefik would have led one
`
`of ordinary skill in the art away from the path taken by the inventors of the
`
`challenged claims. PO Resp. 22–24. PersonalWeb continues that Stefik
`
`discloses the use of unique identifiers, but does not use them for determining
`
`access and does not use them as part of Stefik’s “usage rights.” Id. We do
`
`not agree.
`
`At most, Stefik provides for alternative means for determining access
`
`and does not “teach away” from the use of unique identifiers for access.
`
`“[T]he prior art’s mere disclosure of more than one alternative does not
`
`18
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`IPR2013-00596
`Patent 7,802,310 B2
`
`constitute a teaching away from any of these alternatives because such
`
`disclosure does not criticize, discredit, or otherwise discourage the solution
`
`claimed . . . .” In re Fulton,391 F.3d 1195, 1201 (Fed. Cir. 2004). The fact
`
`that Stefik does not teach specifically that unique identifiers are used for
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`determining access is not sufficient to constitute a teaching away, as
`
`PersonalWeb has alleged.
`
`Similarly, PersonalWeb argues that certain aspects of Stefik’s system
`
`are disclosed to be “fundamental” or “key” requirements, and one would not
`
`have modified Woodhill based on Stefik without utilizing such features. PO
`
`Resp. 26. According to PersonalWeb, Stefik determines that the connections
`
`between the usage rights and the works are fundamental, and combining the
`
`teachings of Woodhill and Stefik would render Stefik’s distribution control
`
`system inoperable for its intended purpose if the usage rights were not part
`
`of the corresponding file. Id. at 26–28. We do not agree.
`
`PersonalWeb’s argument in this regard mischaracterizes Stefik’s
`
`disclosure regarding usage rights. Stefik provides that “the usage rights are
`
`treated as part of the digital work” and that “[t]he attachment of usage rights
`
`into a digital work may occur in a variety of ways” (Ex. 1013, 11:15–30
`
`(emphases added)), not necessarily suggesting the bodily incorporation of
`
`those usage rights. Additionally, Stefik provides that “[a] key feature of the
`
`present invention is that the usage rights are permanently ‘attached’ to the
`
`digital work” (id. at 6:44–45 (emphasis added)), with the use of quotation
`
`marks suggesting that the rights need not become a part of the work
`
`necessarily. The connection between the usage rights and the work is key,
`
`19
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`IPR2013-00596
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`indeed, but Stefik does not disclose that this must be accomplished in only
`
`one way. PersonalWeb makes much of Apple’s affiant, Dr. Goldberg,
`
`acknowledging that “because the binary object identifier 74 is calculated
`
`from the contents of the binary object, it cannot be part of the binary object”
`
`(PO Resp. 27; Ex. 2015, 123–124 (emphasis in original)), but we do find
`
`this to be persuasive. Given that the binary object identifier is calculated
`
`from the contents of the binary object, it is connected to, and directly
`
`attributable to, the contents. We are not persuaded that such connections
`
`would run counter to the express concerns in Stefik that the identifier be “a
`
`part of” the digital work. As such, we are not persuaded that combining the
`
`teachings of Woodhill and Stefik would render Stefik’s distribution control
`
`system inoperable for its intended use.
`
`PersonalWeb also argues that the identifiers in Woodhill and Stefik
`
`are not being used for their intended purposes in the combination, and that
`
`they would not perform the same functions. PO Resp. 24–25. We are not
`
`persuaded, however, because we agree with Apple that the challenged
`
`claims have not been limited “‘to control the distribution of files or
`
`determine whether access to data is authorized.’” Reply 13 (citing PO Resp.
`
`25). The challenged claims require, for example, “selectively permitting the
`
`particular data item to be accessed,” but do not limit the use of the claimed
`
`identifiers as PersonalWeb has alleged. As such, we are not persuaded that
`
`the identifiers in Woodhill and Stefik are being used contrary to their
`
`intended purposes in the proffered combination.
`
`20
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`IPR2013-00596
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`Additionally, PersonalWeb argues that granules in Woodhill, in
`
`response to an update request, are never provided to the requesting
`
`computer, such that Woodhill’s granules cannot meet the limitations of the
`
`claims. PO Resp. 30–32. PersonalWeb suggests that the Institution
`
`Decision only relies on the binary objects and content-based identifiers in
`
`Woodhill, instead of the granules. Id. at 30. Even if true, this does not
`
`appear to be an argument against the instant ground in this proceeding and
`
`would appear to moot (i.e., addressing only one aspect of Woodhill).
`
`PersonalWeb also argues that the identifier in the Woodhill/Stefik
`
`combination is not a “name” and is not used for accessing. PO Resp. 32–36.
`
`PersonalWeb reiterates its arguments distinguishing a “name,” from an
`
`“identifier,” as discussed in the claim construction section above, we agree
`
`that the terms may be distinctive, but, in this case, the Specification of the
`
`’310 Patent does not make that distinction. Even so, PersonalWeb argues
`
`that “Woodhill does not use a hash as a file name, or as a substitute for a
`
`name, in a computer network.” Id. at 33. In addition, PersonalWeb argues
`
`that Woodhill’s binary object identifiers are not used to access, search for, or
`
`address binary objects. Id. at 34. PersonalWeb also points out that
`
`Woodhill discloses the use of names, but that this disclosure
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