Trial@uspto.gov
`571-272-7822
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`Paper 9
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` Entered: March 26, 2014
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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
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`
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`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`571-272-7822
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`Paper 9
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` Entered: March 26, 2014
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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
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`
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`
`
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`
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`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`Case IPR2013-00596
`Patent 7,802,310 B2
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`I.
`
`INTRODUCTION
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`Apple Inc. (“Apple”) filed a Petition (Paper 1, “Pet.”) requesting inter
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`partes review of claims 24, 32, 70, 81, 82, and 86 of U.S. Patent No.
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`7,802,310 B2 (“the ’310 Patent”). Patent owners, PersonalWeb
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`Technologies LLC and Level 3 Communications, LLC (collectively
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`“PersonalWeb”), filed a Preliminary Response (Paper 8, “Prelim. Resp.”).
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`We have jurisdiction under 35 U.S.C. § 314.
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`The standard for instituting an inter partes review is set forth in 35
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`U.S.C. § 314(a), which provides:
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`THRESHOLD --The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311
`and any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
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`Taking into account PersonalWeb’s Preliminary Response, we
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`conclude that the information presented in the Petition demonstrates that
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`there is a reasonable likelihood that Apple will prevail in challenging claims
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`24, 32, 70, 81, 82, and 86 as unpatentable under 35 U.S.C. § 103. Pursuant
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`to 35 U.S.C. § 314, we hereby authorize an inter partes review to be
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`instituted as to claims 24, 32, 70, 81, 82, and 86 of the ’310 Patent.
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`2
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`Case IPR2013-00596
`Patent 7,802,310 B2
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`A.
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`Related Matters
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`
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`Apple indicates that the ’310 Patent was asserted against it in
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`PersonalWeb Tech. LLC and Level 3 Commc’ns., LLC v. Apple Inc., Case
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`No. 6:12-cv-00660-LED, pending in the U.S. District Court for the Eastern
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`District of Texas. Pet. 2.
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`Other petitions seeking inter partes review of PersonalWeb’s patents
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`have been filed, with those patents and the ’310 Patent sharing a common
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`disclosure. Id. at 3-4. PersonalWeb also notes that another petition, namely
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`IPR2014-00062, is also pending regarding the ’310 Patent. Prelim. Resp. 1.
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`
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`B. The Invention of 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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`C.
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`Challenged Claims
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`
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`Independent claims 24, 70, 81, and 86, as well as dependent claims 32
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`and 82, are challenged by Apple in this inter partes review. 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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`
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`D. Prior Art Relied Upon
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`
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`Apple relies upon the following prior art references:
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`Woodhill
`Stefik
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`Farber
`
`
`US 5,649,196
`US 7,359,881
`WO 96/32685
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`Jul. 15, 1997
`Apr. 15, 2008
`Oct. 17, 1996
`
`(Ex. 1014)
`(Ex. 1013)
`(Ex. 1033)
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`Albert Langer, “Re: dl/describe (File descriptions),” post to the
`“alt.sources.d” and “comp.archives.admin” Newsgroups on Aug. 7, 1991
`(Ex. 1015)(hereinafter “Langer”).
`
` Shirley Browne et al. “Location-Independent Naming for Virtual
`Distributed Software Repositories,” University of Tennessee Technical
`Report CS-95-278 (Feb. 1995)(Ex. 1009)(hereinafter “Browne”).
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`
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`E. Alleged Grounds of Unpatentability
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`Apple asserts the following grounds of unpatentability:
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`Basis
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`Reference(s)
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`Claims
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`§ 102(a)
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`Browne
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`24, 32, 70, 81, 82, and 86
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`§ 103
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`Browne
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`24, 32, 70, 81, 82, and 86
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`§ 103
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`Browne and Stefik
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`24, 32, 70, 81, 82, and 86
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`§ 102(e) Woodhill
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`24, 32, 70, 81, 82, and 86
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`§ 103
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`Woodhill
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`24, 32, 70, 81, 82, and 86
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`§ 103
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`Woodhill and Stefik
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`24, 32, 70, 81, 82, and 86
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`§ 102(b)
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`Langer
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`24, 32, 70, 81, 82, and 86
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`§ 103
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`Langer and Stefik
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`24, 32, 70, 81, 82, and 86
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`§ 102(b)
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`Farber
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`24, 32, 70, 81, 82, and 86
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`II. ANALYSIS
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`A. Claim Construction
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`As a first step in our analysis for determining whether to institute a
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`trial, we determine the meaning of the claims. In an inter partes review,
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`claim terms in an unexpired patent are given their broadest reasonable
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`construction in light of the specification of the patent in which they appear.
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`37 C.F.R. § 42.100(b). Under the broadest reasonable construction standard,
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`claims are to be given their broadest reasonable interpretation consistent
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`with the specification, and the claim language should be read in light of the
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`specification as it would be interpreted by one of ordinary skill in the art.
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`In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
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`This means that the words of the claim will be given their plain meaning
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`unless the plain meaning is inconsistent with the specification. In re Zletz,
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`893 F.2d 319, 321 (Fed. Cir. 1989). In this regard, an inventor is entitled to
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`be his or her own lexicographer of patent claim terms by providing a
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`definition of the term in the specification with reasonable clarity,
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`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
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`1994).
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`
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`1. “data item” and “data” (Claims 24, 32, 70, 81, 82, and 86)
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`
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`In EMC Corporation v. PersonalWeb Technologies LLC, IPR2013-
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`00082, we construed the claim terms “data item” and “data” that appeared in
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`the claims of U.S. Patent No. 5,978,791 (“the ’791 patent”), which issued
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`from an application for which the ’310 patent claims the benefit under 35
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`U.S.C. § 120. See IPR2013-00082, Paper 21, 14-15. Apple has not
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`construed these claim limitations, but PersonalWeb clarifies that the
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`specification of the ’310 Patent sets forth a definition for the claim term
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`“data item” with “reasonable clarity, deliberateness, and precision.” Prelim.
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`Resp. 3-4.
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`Indeed, we observe that the specification of the ’310 patent provides:
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`In general, the terms “data” and “data item” 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.
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`Ex. 1001, 2:16-21 (emphasis added). That disclosure also appears in the
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`’791 patent (IPR2013-00082, Ex. 1001, 1:54-60). Based on our review of
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`the specifications of the ’310 patent and the ’791 patent, we note that the
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`claim terms “data item” and “data” are used similarly in both patent
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`disclosures. We also discern no reason to deviate from our claim
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`constructions for the claim terms “data item” and “data” in IPR2013-00082.
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`See NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir.
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`2005) (When construing claim terms in patents that derive from the same
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`parent application and share common terms, “we must interpret the claims
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`consistently across all asserted patents.”).
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`Therefore, consistent with our claim constructions set forth in
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`IPR2013-00082, we construe the claim term “data item” as a “sequence of
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`bits,” which includes one of the following: (1) the contents of a file; (2) a
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`portion of a file; (3) a page in memory; (4) an object in an object-oriented
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`program; (5) a digital message; (6) a digital scanned image; (7) a part of a
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`video or audio signal; (8) a directory; (9) a record in a database; (10) a
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`location in memory or on a physical device or the like; and (11) any other
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`entity which can be represented by a sequence of bits. We also construe the
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`claim term “data” as a subset of a “data item.”
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`
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`2. “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 81reciting very similar recitations for “content-dependent name,” and
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`“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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`embodiment. PersonalWeb has not proposed a claim construction for the
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`claimed name or identifier limitations. Prelim. Resp. 3-7.
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`
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`Alternatively, Apple urges the Board to construe the claim terms
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`“digital identifier,” “content-dependent name,” and “content-based
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`identifier” as “an identity for a data item generated by processing all of the
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`data in the data item, and only the data in the data item, through an algorithm
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`that makes the identifier substantially unique.” Pet. 8-9 (emphasis in
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`8
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`original). According to Apple, the claim terms are not defined nor recited in
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`the specification of the ’310 Patent outside the claims. Id.
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`Apple’s proposed construction for the claim terms “digital identifier,”
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`“content-dependent name,” and “content-based identifier” would import
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`improperly a limitation from the specification into the claim. See, e.g.,
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`Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir.
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`2004) (“Though understanding the claim language may be aided by the
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`explanations contained in the written description, it is important not to
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`import into a claim limitations that are not a part of the claim.”).
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`A substantially unique identifier is based on “all of the data in the
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`data item, and only the data in the data item.1” There would be no occasion
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`in which a substantially unique identifier would be determined using and
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`depending on some of the data of the data item. Put simply, the claim terms
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`“digital identifier,” “content-dependent name,” and “content-based
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`identifier” essentially would be defined as “a substantially unique
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`identifier,” requiring that the identifier be based on “all of the data in the
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`data item, and only the data in the data item.” Such a construction would be
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`more restrictive than the claim language “each said content-dependent
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`digital identifier being based at least in part on a given function of at least
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`some of the bits in the particular sequence of bits of the particular data item,”
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`
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`1 In IPR2013-00082, we previously construed the term “substantially unique
`identifier” as “an identity for a data item generated being determined using
`and depending on all of the data in the data item, and only the data in the
`data item.” IPR2013-00082, Paper 21, 13-14.
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`recited in the subject claims. Therefore, we decline to adopt Apple’s
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`proposed construction.
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`Rather, the claims themselves provide a definition of the claim terms
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`“digital identifier,” “content-dependent name,” and “content-based
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`identifier” —namely, an identifier for a data item “being based at least in
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`part on a given function of at least some of the bits in the particular sequence
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`of bits of the particular data item.” We discern no reason to deviate from
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`that express definition.
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`
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`3.
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` “selectively permit” (Claim 70)
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`“selectively allow” (Claims 81 and 86)
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`
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`Claim 70 recites “selectively permitting the particular data item to be
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`accessed” and claims 81 and 86 recite “selectively allow said particular
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`sequence of bits to be provided to or accessed by other devices.” Apple
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`alleges that the terms do not appear in the specification of the ’310 Patent
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`outside the claims, and the broadest reasonable definition is “permitting
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`based on whether a condition is met.” Pet. 9.
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`
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`However, PersonalWeb disagrees with Apple’s proposed claim
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`construction, because it would require that the permitting or allowing be
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`“performed based on whether any condition is met,” and not the condition
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`specifically delimitated in the claims. Prelim. Resp. 6-7. We agree with
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`PersonalWeb. In the context of claims 70, 81, and 86, we construe the claim
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`terms “selectively permitting” as “permitting based on whether the recited
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`condition is met,” and “selectively allow” as “allowing based on whether the
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`recited condition is met.”
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`B. Principles of Law
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`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
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`differences between the claimed subject matter and the prior art are such that
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`the subject matter, as a whole, would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
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`(2007). The question of obviousness is resolved on the basis of underlying
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`factual determinations including: (1) the scope and content of the prior art;
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`(2) any differences between the claimed subject matter and the prior art;
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`(3) the level of ordinary skill in the art; and (4) objective evidence of
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`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
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`The level of ordinary skill in the art is reflected by the prior art of
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`record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
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`In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich,
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`579 F.2d 86, 91 (CCPA 1978).
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`C. Priority of the Subject Claims
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`Apple asserts that claims 24, 32, 70, 81, 82, and 86 of the ’310 Patent
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`are not entitled to the benefit of the filing date of the earliest priority
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`application under § 120. Pet. 55-57. Specifically, Apple asserts that the
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`earliest priority application does not provide sufficient written description
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`support for the claim feature: “a hash function.” Id. at 55. All of the subject
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`claims recite “wherein the given function comprises a message digest
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`function or a hash function,” or similar limitations. Apple acknowledges
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`that the term “message digest” and “message digest function” appear in the
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`priority applications, but alleges that “hash function” appears for the first
`
`time in the application which matured into the ’310 Patent. Id. Apple
`
`acknowledges that “[t]he exemplary SHA algorithm (Secure Hash
`
`Algorithm) was listed in the specification of the alleged priority applications,
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`but was only described as in the family of message digest functions.” Id.
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`PersonalWeb argues that accepting Apples’ premise that Farber has an
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`“identical disclosure” to the earliest priority application, which was filed
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`April 11, 1995, Farber expressly discloses MD4, MD5, and SHA hash
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`functions. Prelim. Resp. 46, Ex. 1033, 23:8-12. PersonalWeb notes that
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`MD5 is a hash function and it was known that SHA stood for Secure Hash
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`Algorithm, as acknowledged by Apple. Prelim. Resp. 47. Based on these
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`disclosures, PersonalWeb argues that the priority applications specifically
`
`disclosed hash functions and that the claims are entitled to their April 11,
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`1995 effective filing date. We agree.
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`On this record, we are persuaded that the disclosure of a known hash
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`function, along with the disclosure of digest functions, is sufficient to
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`support the limitation “a message digest function or a hash function.” Apple
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`argues that the priority document “fails to reconcile or describe the
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`differences between ‘a message digest (function)’ and a ‘hash function,’”
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`(Pet. 56-57), but there is no requirement that a priority document provide
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`such. As long as it would have been clear to ordinarily skilled artisans at the
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`time what was being disclosed, the priority document need not describe the
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`differences. Not explaining those differences does not render one a subset of
`
`the other and, thus, superfluous, as Apple has alleged. Pet. 56. On this
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`record, we are persuaded that the original disclosure of the earliest priority
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`application of the ’310 Patent provides sufficient written description support
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`for the claimed feature “a hash function.”
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`As noted above, Farber is a publication of International Application
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`No. PCT/US96/04733, that was published after the filing date of the earliest
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`priority application of the ’310 Patent. Given that, Farber cannot be applied
`
`against the instant claims as prior art.
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`For the foregoing reasons, Apple has not demonstrated that there is a
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`reasonable likelihood of claims 24, 32, 70, 81, 82, and 86 of the ’310 Patent
`
`being anticipated under § 102(b) by Farber.
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`D. Obviousness over Woodhill and Stefik
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`
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`Apple asserts that claims 24, 32, 70, 81, 82, and 86 of the ’310 Patent
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`are unpatentable under 35 U.S.C. § 103(a) over the combination of Woodhill
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`and Stefik. Pet. 28-43. Apple provides a rationale for modifying Woodhill
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`in light of Stefik to arrive at the features of claims 24, 32, 70, 81, 82, and 86.
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`Id. at 41-42. In support of its asserted ground of unpatentability, Apple
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`proffers the testimony of Dr. Goldberg. Ex. 1007 ¶¶ 61-88.
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`
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`PersonalWeb opposes and argues that Woodhill does not disclose or
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`suggest the “causing the content-dependent name of the particular data item
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`to be compared to a plurality of values” or the conditional allowance of
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`providing or accessing the particular data item, as recited in the subject
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`claims. Prelim. Resp. 26-34. PersonalWeb also advances several arguments
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`under the premise that there is insufficient reason to combine the teachings
`
`of Woodhill and Stefik. Id. at 34-36. We are not persuaded by
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`PersonalWeb’s arguments. Rather, we determine Apple’s explanations and
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`supporting evidence are persuasive.
`
`Woodhill discloses a system for distributed storage management on a
`
`computer network system. Ex. 1014, 1:11-17. Figure 1 of Woodhill,
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`reproduced below, depicts a computer network system that includes a
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`distributed storage management system.
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`As illustrated in Figure 1 of Woodhill, each local area network 16
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`includes multiple user workstations 18 and local computers 20. Id. at 3:24-
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`44. Woodhill’s system includes a Distributed Storage Manager (DSM)
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`program for building and maintaining the File Database. Id. at 3:44-49.
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`The DSM program views a file as a collection of data streams, and
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`divides each data stream into one or more binary objects. Id. at 4:13-23;
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`7:40-43; fig. 5A, item 132. More specifically, the data streams represent
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`regular data, extended attribute data, access control list data, etc. Id. at 7:44-
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`47. For each binary object being backed up, a Binary Object Identification
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`Record is created in a File Database and includes a Binary Object Identifier
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`to identify a particular binary object uniquely. Id. at 7:60-8:1; 8:33-34.
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`Binary Object Identifiers are calculated based on the contents of the
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`data so that the Binary Object Identifier changes when the contents of the
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`binary object changes. Id. at 8:57-62; 8:40-42. Notably, the Binary Object
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`Identifier includes a Binary Object Hash field which is calculated against the
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`contents of the binary object that is taken one word (16 bits) at a time using
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`a hash algorithm. Id. at 8:22-32. Duplicate binary objects can be recognized
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`from their identical Binary Object Identifiers, even if the objects reside on
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`different types of computers in a heterogeneous network. Id. at 8:62-65.
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`We agree with Apple that the Binary Object Identifiers of Woodhill
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`are equivalent to the “digital identifier,” “content-dependent name,” and
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`“content-based identifier” recited in claims 24, 70, 81, and 86. Pet. 31.
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`They are based on a cryptographic hash, with the chance of two objects
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`being assigned the same Binary Object Identifier being very small.
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`Ex. 1014, 8:33-36. Based on this, two identical items will have the same
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`Binary Object Identifier. Ex. 1007 ¶ 67.
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`
`
`Stefik discloses a system for preventing the unauthorized access to
`
`digital works. Ex. 1013, 1:17-20. Stefik discloses receiving as request for
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`access to a particular digital work from a requester, including a unique
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`identifier for the digital work, and only providing access if it is determined
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`that it is authorized. Id. at 9:47-49, 31:13-20, 41:60-65. As discussed by
`
`Apple, the process of matching the identifier for the work would involve
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`comparing it with a plurality of values, and providing for selective access.
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`Pet. 42.
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`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
`
`Stefik to be used with Woodhill’s content-dependent identifiers feature. Pet.
`
`42. We agree and we are persuaded that the combination would likely
`
`render claims 24, 32, 70, 81, 82, and 86 of the ’310 patent unpatentable
`
`under 35 U.S.C. § 103.
`
`Turning to PersonalWeb’s arguments against this ground, in its
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`preliminary response, PersonalWeb argues that Woodhill never makes a
`
`determination as to whether access to a given data item is not authorized,
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`(Prelim. Resp. 27-29), that Woodhill never compares a binary object
`
`identifier to a plurality of values, (id. at 29-31), and that Woodhill’s
`
`processes never provide an alleged data item to a second computer, (id. at
`
`32-33). However, all of these arguments address Woodhill alone and do not
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`Case IPR2013-00596
`Patent 7,802,310 B2
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`address the combination of Woodhill and Stefik. In each case, as discussed
`
`above, we agree with Apple that the aspects disputed by PersonalWeb are
`
`disclosed in Stefik. Nonobviousness cannot be established by attacking
`
`references individually where, as here, the ground of unpatentability is based
`
`upon the teachings of a combination of references. In re Keller, 642 F.2d
`
`413, 426 (CCPA 1981). Rather, the test for obviousness is whether the
`
`combination of references, taken as a whole, would have suggested the
`
`patentees’ invention to a person having ordinary skill in the art. In re Merck
`
`& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
`
`PersonalWeb also argues that Woodhill does not use binary object
`
`identifiers or contents identifiers as names, and alleges their use as names
`
`was not added to the Woodhill disclosure until after the effective filing date
`
`of the ’310 Patent. Id. at 33-34. However, that does not address the
`
`obviousness of using the binary object identifiers as names in view of
`
`Woodhill, nor has PersonalWeb submitted evidence that the contemplation
`
`of binary object identifiers as names actually occurred after the effective
`
`filing date. We do not find PersonalWeb’s arguments to be persuasive.
`
`PersonalWeb also argues that the combination of Woodhill and Stefik
`
`is flawed, based on the arguments made above. Prelim. Resp. 34. We do
`
`not find those arguments to be persuasive. Additionally, PersonalWeb
`
`argues that Stefik also fails to disclose or suggest authorization based on
`
`whether the content-dependent name corresponds to at least one of a
`
`plurality of values in a comparison. Id. PersonalWeb elaborates that there
`
`are no content-dependent names in Stefik, and no comparisons and no
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`17
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`Case IPR2013-00596
`Patent 7,802,310 B2
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`authorizations based on the comparisons in Stefik. Id. at 35. It is not
`
`surprising, however, that Stefik fails to disclose or use content-dependent
`
`names as this aspect is not relied upon for this ground; Woodhill is relied
`
`upon for the use of content-dependent names. We are not persuaded that
`
`this is a deficiency in the ground of unpatentability over Woodhill and
`
`Stefik.
`
`PersonalWeb also argues that, even if Woodhill and Stefik were
`
`somehow combined, Stefik’s usage rights would be used in Woodhill, and
`
`the limitations of claim 24 would still not be met. Id. We do not agree. As
`
`discussed above, the use of Woodhill’s binary object identifiers would allow
`
`for file selection and Stefik’s usage rights would authorize access to the
`
`selected files. PersonalWeb makes similar arguments with respect to claims
`
`70, 81, and 86, but we find them to be no more persuasive. Prelim. Resp.
`
`36-37.
`
`For the foregoing reasons, we conclude that there is a reasonable
`
`likelihood that Apple will prevail on its assertion that claim 24, 32, 70, 81,
`
`82, and 86 of the ’310 Patent are unpatentable over the combination of
`
`Woodhill and Stefik.
`
`
`
`E. Remaining Grounds of Unpatentability
`
`Apple also contends that claims 24, 32, 70, 81, 82, and 86 are also
`
`unpatentable under 35 U.S.C. §§ 102 and 103 based in whole or in part on
`
`Browne or Langer. Pet. 13-28, 43-53. Those grounds of unpatentability are
`
`redundant to the grounds of unpatentability on which we initiate an inter
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`18
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`Case IPR2013-00596
`Patent 7,802,310 B2
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`parties review. Accordingly, we do not authorize an inter partes review on
`
`the remaining grounds of unpatentability asserted by Apple against claims
`
`24, 32, 70, 81, 82, and 86 of the ’310 Patent. See 37 C.F.R. § 42.108(a).
`
`Apple has indicated that the proposed grounds are not cumulative of
`
`one another, with the other references disclosing different methods and
`
`systems, and that “at this early stage, it is not yet foreseeable how the Patent
`
`Owners may attempt to construe or amend the challenged claims in ways
`
`that may place even greater importance on the tangible differences between
`
`the asserted references.” Pet. 59. While we are mindful of such concerns,
`
`the Board is charged with securing the just, speedy, and inexpensive
`
`resolution of every proceeding. 37 C.F.R. § 42.1(b). The possibility that
`
`PersonalWeb may amend a challenged claim or propose an alternative
`
`construction of a claim to recite something other than what Apple has cited
`
`initially does not generally present a genuine need for granting redundant
`
`grounds.
`
`Moreover, we note that the proper focus of a redundancy designation
`
`is on whether Apple articulates a meaningful distinction in terms of relative
`
`strengths and weaknesses with respect to the application of the prior art
`
`disclosures to one or more claim limitations. See Liberty Mutual Ins. Co. v.
`
`Progressive Casualty Inc. Co., CBM2012-00003, Paper 7, 2 (PTAB, Oct.
`
`25, 2012). In this case, even though Apple indicates that Browne, Woodhill,
`
`Langer, and Stefik each disclose different methods and systems, Apple does
`
`not explain adequately the relative strengths or weaknesses between these
`
`applied prior art references. For instance, Petitioner does not explain why
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`19
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`Case IPR2013-00596
`Patent 7,802,310 B2
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`the grounds of unpatentability based, in whole or in part, on Browne and
`
`Langer are stronger or weaker than the grounds of unpatentability on which
`
`this inter partes review was instituted. Simply proposing different grounds
`
`of unpatentability based on different methods and systems does not
`
`distinguish meaningfully the applied prior art references.
`
`
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that the information
`
`presented in Apple’s petition shows that there is a reasonable likelihood that
`
`Apple would prevail with respect to claims 24, 32, 70, 81, 82, and 86 of the
`
`’310 Patent. Accordingly, the petition is granted.
`
`At this stage in the proceeding, no final determination with respect to
`
`the patentability of the challenged claims has been made.
`
`
`
`
`
`
`
`IV. ORDER
`
`For the foregoing reasons, it is
`
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is hereby instituted as to claims 24, 32, 70, 81, 82, and 86 of the ’310
`
`Patent for the following ground of unpatentability:
`
`Claims 24, 32, 70, 81, 82 as unpatentable under 35 U.S.C.
`
`§ 103(a) over Woodhill and Stefik.
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`FURTHER ORDERED that no other grounds of unpatentability
`
`are authorized for this inter partes review;
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`20
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`Case IPR2013-00596
`Patent 7,802,310 B2
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`
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37
`
`C.F.R. § 42.4, notice is hereby given of the institution of a trial. The trial
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`will commence on the entry date of this decision.
`
`
`
`It is FURTHER ORDERED that an initial conference call with the
`
`Board is scheduled for 2PM EDT on May 5, 2014. The parties are directed
`
`to the Office Trial Practice Guide, 77 Fed. Reg. 48756, 48765-66 (Aug. 14,
`
`2012) for guidance in preparing for the initial conference call, and should
`
`come prepared to discuss any proposed changes to the Scheduling Order
`
`entered herewith and any motions the parties anticipate filing during the
`
`trial.
`
`
`
`
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`21
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`Case IPR2013-00596
`Patent 7,802,310 B2
`
`For PETITIONER:
`
`David K.S. Cornwell
`Mark W. Rygiel
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`davidc-PTAB@skgf.com
`mrygiel-PTAB@skgf.com
`
`
`For PATENT OWNER:
`
`Joseph A. Rhoa
`Updeep S. Gill
`NIXON & VANDERHYE P.C.
`jar@nixonvan.com
`usg@nixonvan.com
`
`
`
`
`22
`
`
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