BEFORE THE PATENT TRIAL AND APPEAL BOARD IN THE UNITED
`STATES PATENT AND TRADEMARK OFFICE
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`Trial No.:
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`IPR 2013-00596
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`In re:
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`U.S. Patent No. 7,802,310
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`Patent Owners:
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`PersonalWeb Technologies, LLC & Level 3 Communications
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`Petitioner:
`Inventors:
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`Apple, Inc.
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`David A. Farber and Ronald D. Lachman
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`For: CONTROLLING ACCESS TO DATA IN A DATA PROCESSING SYSTEM
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`* * * * * * * * * * *
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`April 24, 2015
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`
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`PATENT OWNER’S REQUEST FOR REHEARING
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`UNDER 37 C.F.R. § 42.71(d)
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`2494693
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`STATES PATENT AND TRADEMARK OFFICE
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`
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`Trial No.:
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`IPR 2013-00596
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`In re:
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`U.S. Patent No. 7,802,310
`
`Patent Owners:
`
`PersonalWeb Technologies, LLC & Level 3 Communications
`
`Petitioner:
`Inventors:
`
`Apple, Inc.
`
`David A. Farber and Ronald D. Lachman
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`For: CONTROLLING ACCESS TO DATA IN A DATA PROCESSING SYSTEM
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`* * * * * * * * * * *
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`April 24, 2015
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`
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`PATENT OWNER’S REQUEST FOR REHEARING
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`UNDER 37 C.F.R. § 42.71(d)
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`2494693
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`Patent Owner’s Request for Rehearing
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`IPR 2013-00596 (US 7,802,310)
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ........................................................................................... 1
`I.
`II. THE PHILLIPS STANDARD SHOULD BE USED TO CONSTRUE
`THE CLAIMS OF THE EXPIRED ‘310 PATENT ..................................... 1
`IV. KSR DEMONSTRATES NONOBVIOUSNESS BECAUSE PRIOR ART
`ELEMENTS ARE NOT USED FOR THEIR INTENDED PURPOSE
`AND DO NOT SERVE THEIR INTENDED FUNCTION IN THE
`ALLEGED COMBINATION ........................................................................ 5
`V. THE GRAHAM FACTORS MUST BE ADDRESSED ............................... 8
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`i
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`Patent Owner’s Request for Rehearing
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`IPR 2013-00596 (US 7,802,310)
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`I.
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`INTRODUCTION
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`The Board on March 25, 2015 issued a Final Written Decision (“FWD”)
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`regarding this IPR of the expired ‘310 patent. Patent owner (PersonalWeb
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`Technologies, LLC) hereby requests rehearing of that decision for at least the
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`reasons herein. Patent owner notes that the Board issued a first FWD (Paper 32)
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`and a second FWD (Paper 33), both on March 25, 2015. The second FWD (Paper
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`33) corrected formality issues in the first FWD. Citations herein are to the second
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`FWD (Paper 33).
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`The issues identified by patent owner in this request for rehearing do not
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`limit the objections that patent owner has to the Board’s decision. Patent owner
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`expressly reserves the right to argue additional issues on appeal or elsewhere.
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`II. THE PHILLIPS STANDARD SHOULD BE USED TO CONSTRUE
`THE CLAIMS OF THE EXPIRED ‘310 PATENT
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`As explained on pages 10-11 of Patent Owner’s Response (“POR”) filed
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`June 16, 2014 (Paper 15), the broadest reasonable construction (“BRC” or “BRI”)
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`standard should not be used. (POR 10-11.) Instead, claim terms should be
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`construed under the Phillips standard applied by district courts. Phillips v. AWH
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`Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). The Board appears to have
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`misapprehended this issue on pages 5-6 of the FWD.
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`IPR 2013-00596 (US 7,802,310)
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`As the Board found on page 5 of the FWD, the ‘310 patent expired on April
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`11, 2015. (POR 10; and FWD 5.) Note the terminal disclaimer that was filed
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`regarding the ‘442 patent. (Ex. APL 1016 at 242.) Accordingly, PO had no
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`reasonable ability to amend the ‘310 patent in this proceeding and no appeal will
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`take place until after expiration of the ‘310 patent. Indeed, the USPTO still has
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`jurisdiction over this proceeding, and the ‘310 patent has already expired. No
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`certificate under 35 U.S.C. § 318(b) can issue, or could have issued, before
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`expiration of the ‘310 patent. Any document (e.g., decision on rehearing,
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`certificate, etc.) authored or generated by the USPTO after the ‘310 patent has
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`expired cannot use the BRC standard, and instead should use and must rely upon
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`the same claim construction standard as the district court laid out in Phillips. (POR
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`10.) See In re Rambus, Inc., 753 F.3d 1253, 1256 (Fed. Cir. 2014). Thus, the BRC
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`standard should not be used for construing claims.
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`The Board on page 6 of the FWD states that patent owner had the ability to
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`file a motion to amend in this proceeding. However, this would have been futile at
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`least because the ‘310 patent has already expired, would have expired prior to any
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`appeal (and has expired prior to any appeal), and any certificate under 35 U.S.C. §
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`318(b) would have issued after expiration of the ‘310 patent. Simply put, there
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`was no opportunity for patent owner to amend claims in this proceeding given the
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`expiration of the ‘310 patent on April 15, 2015. The Board should have used, and
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`should use, the Phillips standard to construe the claims.
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`IPR 2013-00596 (US 7,802,310)
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`This is a meaningful distinction. For example and without limitation, the Board
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`construed “content-dependent name” broadly under the improper BRC standard. (FWD
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`7-8.) If this term had been construed correctly under the Phillips standard, the result
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`would have been different as even the alleged combination would not have met claims 24
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`and 32. (POR 4-5, 33-36.) Unlike a “name,” Woodhill’s binary object identifiers 74 are
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`not used to access binary objects, search for binary objects, or address binary objects.
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`(POR 34.) When a binary object identification record 58 is provided such as at col. 17:44
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`in Woodhill, and a binary object is addressed, Woodhill explains how this is done and it
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`does not involve any binary object identifier 74. (POR 34; Woodhill at col. 11:65 to col.
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`12:7, and col. 9:8-20.) To the contrary, Woodhill’s audit procedure initiates a
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`“restore” by accessing a randomly selected binary object. (Woodhill at col. 18:17-
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`18). Then, and as the binary object is being restored —that is, after both the audit
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`and restore functions have been initiated—only then “a Binary Object Identifier 74
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`is calculated.” (Woodhill at col. 18:24-26.) Woodhill teaches using the binary
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`object identifier 74 for comparing, but not for accessing, searching, or addressing
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`because it is not a “name.” (POR 34.)
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`Furthermore, patent owner pointed out that challenged claims require that
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`the data item corresponding to the name or identifier in the “request” is accessed.
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`(POR 8-10.) The Board erred, under any claim construction standard, by not
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`providing a construction in this respect. (FWD 10.) Claims 24 and 70 require a
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`“request” that includes a content-dependent name (claim 24) or identifier (claim
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`70) for a corresponding data item. These claims then require that the data item
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`corresponding to the name (claim 24) or identifier (claim 70) is accessed by other
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`computer(s) based on the claimed comparison. (POR 8-10.) Thus, independent
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`claim 70 requires that the particular data item corresponding to the content-based
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`identifier in the request is accessed, or permitted to be accessed, by other
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`computer(s) in the network based on the comparison in step (A). Similarly,
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`independent claim 24 requires that the particular data item corresponding to the
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`content-dependent name in the request is provided to or accessed by the second
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`computer when it is determined that access to that data item is authorized based on
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`the comparison. And independent claims 81 and 86 also require that the particular
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`sequence of bits corresponding to the identifier received from another device is
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`provided to or accessed by other devices depending on the comparison. This is
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`important because both parties agreed that in the alleged Woodhill/Stefik
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`combination granules corresponding to contents identifiers in the alleged request
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`(“update request”) are never provided to the requesting computer in response to
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`the request. (POR 8-10, 30-32.) Thus, the Board should have construed these
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`terms, and made a finding that in the alleged Woodhill/Stefik combination granules
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`corresponding to contents identifiers in the alleged request (“update request”) are
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`not provided to the requesting computer in response to the request.
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`Patent Owner’s Request for Rehearing
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`III. KSR DEMONSTRATES NONOBVIOUSNESS BECAUSE PRIOR
`ART ELEMENTS ARE NOT USED FOR THEIR INTENDED PURPOSE
`AND DO NOT SERVE THEIR INTENDED FUNCTION IN THE ALLEGED
`COMBINATION
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`IPR 2013-00596 (US 7,802,310)
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`Both Stefik and Woodhill have access control systems. However, even
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`assuming both have substantially unique identifiers as alleged, neither Stefik nor
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`Woodhill use these identifiers in their access control systems to determine whether
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`access is authorized/unauthorized. The Board overlooked and misapprehended the
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`legal significance of this.
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`The parties agreed that Stefik has both unique identifiers 701 and an access
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`control system, and that Stefik never uses these identifiers for determining whether
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`access to anything is authorized/unauthorized. (POR 18, 23-25; Ex. 1013, col.
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`9:48-49.) The Board agreed. (FWD 19, lines 3-6.) Further, Woodhill does not use
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`binary object identifiers 74 with its access control system to determine whether
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`access is authorized/unauthorized. (POR 21-22, 25.) The Board agreed that
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`Woodhill already has an access control system (FWD 18, lines 9-11) and binary
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`object identifiers 74 (alleged substantially unique identifiers) (FWD 14), which
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`cannot be used together because the access control system in Woodhill is complete
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`before the binary object identifiers 74 are even calculated. (POR 21-22, 25.)
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`Indeed, the art teaches away from the claimed invention because while both
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`references have access control systems neither Woodhill nor Stefik use their
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`identifiers in those access control systems for determining whether access is
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`authorized/unauthorized. (POR 23, 25.) The inventors, directly contrary to Stefik
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`and Woodhill, conceived of a new and nonobvious use for substantially unique
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`identifiers or content-based identifiers in an access control system for determining
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`whether access is authorized/unauthorized, which is not disclosed or suggested in
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`any of the cited art. (POR 25.)
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`As explained by both the Supreme Court and Federal Circuit, it is the
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`combination of old elements for their intended purpose, with each element
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`performing the same function it had been known to perform, that may be obvious.
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`KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 127 S.Ct. 1727, 1739–40, 167 L.Ed.2d
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`705 (2007); and Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
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`1314, 1326 (Fed. Cir. 2009). (POR 24-25.) Here, we have the opposite. Id. The
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`alleged modification to Woodhill does not use Woodhill’s or Stefik’s identifiers for
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`their intended purpose, or to perform the same function they are known to perform,
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`thereby indicating nonobviousness. (POR 24-25.) This is clear evidence of
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`nonobviousness. Id. There is no explanation or reasoning regarding how or why
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`one of ordinary skill in the art would have found it obvious to have used the
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`identifiers of either Woodhill (binary object identifiers 74) or Stefik (unique
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`identifiers 701) in an access control system for determining whether access is
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`authorized/unauthorized, when both Woodhill and Stefik have such systems and do
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`not use these identifiers for this purpose. (FWD 18.) As a matter of law, it would
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`not have been obvious to have used binary object identifiers 74 in an access control
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`IPR 2013-00596 (US 7,802,310)
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`system to determine whether access is authorized or unauthorized in view of
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`Woodhill and Stefik.
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`Moreover, given that Woodhill already has an authorization/unauthorization
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`system based on “access control list data” (which is unrelated to binary object
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`identifiers 74), there would have been no logical reason to have modified Woodhill
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`to have added another authorization/unauthorization checking system to Woodhill
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`as alleged in the FWD. (POR 22.) See Ex Parte Rinkevich et al, Appeal
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`20071317, decided May 29, 2007 (explaining that one of ordinary skill in the art
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`having common sense would not have provided a component to address a problem
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`that did not exist or was already solved). (POR 22.) The Board states that one
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`“would have employed the selective access features of Stefik to be used with
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`Woodhill’s content-dependent identifiers feature to provide access control” (FWD
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`18), but provides no explanation or reasoning regarding why one would have done
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`this given that both Woodhill and Stefik have access control systems but neither
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`uses alleged substantially unique identifiers for determining whether access is
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`authorized/unauthorized.
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`The FWD also states that “the challenged claims have not been limited ‘to
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`control the distribution of files or determine whether access to data is authorized.’”
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`(FWD 20.) This is clear error, as the Board appears to have overlooked and
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`misapprehended the language of the claims. For example, clauses (b)(ii) and
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`(b)(iii) in claim 24 clearly require determining whether accesses to a particular data
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`item is authorized/unauthorized based on the content-dependent name.
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`IV. THE GRAHAM FACTORS MUST BE ADDRESSED
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`The question of obviousness is resolved on the basis of underlying factual
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`determinations, including (1) the scope and content of the prior art; (2) differences
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`between the claimed subject matter and the prior art; (3) the level of skill in the art;
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`and (4) secondary considerations such as commercial success, long felt need,
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`copying by others, etc. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-
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`18 (1966). (POR 11-12.) The Board appears to have overlooked this, because the
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`Board erred by not addressing all of the Graham factors, in particular factors (2)
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`and (3).
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`The Board in the FWD made no finding regarding the level of skill in the
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`art. (E.g., Ex. 2020 at ¶ 18.) This represents legal error.
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`The Board also erred by not explaining what it perceived as the differences
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`between the claimed subject matter and the cited art. While the Board generally
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`addresses Woodhill and Stefik (FWD 13-15), there is no explanation regarding
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`how the claims differ from Woodhill or Stefik. There is no explanation in the
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`FWD regarding how the claims differ from Woodhill, and there is no explanation
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`in the FWD regarding how the claims differ from Stefik. This is legal error, and
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`contributes to other errors discussed herein because there is no concrete
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`explanation regarding the differences between the claims and the cited art and
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`there is no concrete explanation regarding what the alleged modification actually is
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`Respectfully submitted,
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`NIXON & VANDERHYE P.C.
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`
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`By: /Joseph A. Rhoa/
`Joseph A. Rhoa
`Reg. No. 37,515
`Updeep (Mickey) S. Gill
`Reg. No. 37,334
`Counsel for Patent Owner PersonalWeb
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`or involves.
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`JAR:caj
`Nixon & Vanderhye, PC
`901 North Glebe Road, 11th Floor
`Arlington, VA 22203-1808
`Telephone: (703) 816-4000
`Facsimile: (703) 816-4100
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`IPR 2013-00596 (US 7,802,310)
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`CERTIFICATE OF SERVICE
`I hereby certify service of the foregoing Patent Owner’s Request for
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`Rehearing to the following lead counsel for petitioner on April 24, 2015 via email
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`(pursuant to agreement between the parties):
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`David Cornwell
`Sterne, Kessler, Goldstein & Fox PLLC
`1100 New York Ave., NW
`Washington, D.C. 20005
`(davidc-PTAB@skgf.com)
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`
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`By: /Joseph A. Rhoa/
`Joseph A. Rhoa
`Reg. No. 37,515
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`
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`2494693
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