BEFORE THE PATENT TRIAL AND APPEAL BOARD IN THE UNITED
`STATES PATENT AND TRADEMARK OFFICE
`
`Trial N0.:
`
`IPR 2013—00596
`
`In re:
`
`US. Patent No. 7,802,310
`
`Patent Owners:
`
`PersonalWeb Technologies, LLC & Level 3 Communications
`
`Petitioner:
`
`Apple, Inc.
`
`Inventors:
`
`David A. Farber and Ronald D. Lachman
`
`For: CONTROLLING ACCESS TO DATA IN A DATA PROCESSING SYSTEM
`
`>l<
`
`>l<
`
`>l<
`
`>¥<
`
`>k
`
`>l<
`
`>i<
`
`>l<
`
`>l<
`
`>l<
`
`>l<
`
`June 16, 2014
`
`PATENT OWNER’S RESPONSE PURSUANT TO 37 C.F.R. § 42.120
`
`2020057
`
`
`STATES PATENT AND TRADEMARK OFFICE
`
`Trial N0.:
`
`IPR 2013—00596
`
`In re:
`
`US. Patent No. 7,802,310
`
`Patent Owners:
`
`PersonalWeb Technologies, LLC & Level 3 Communications
`
`Petitioner:
`
`Apple, Inc.
`
`Inventors:
`
`David A. Farber and Ronald D. Lachman
`
`For: CONTROLLING ACCESS TO DATA IN A DATA PROCESSING SYSTEM
`
`>l<
`
`>l<
`
`>l<
`
`>¥<
`
`>k
`
`>l<
`
`>i<
`
`>l<
`
`>l<
`
`>l<
`
`>l<
`
`June 16, 2014
`
`PATENT OWNER’S RESPONSE PURSUANT TO 37 C.F.R. § 42.120
`
`2020057
`
`
`
`Patent Owner’s Response (US Pat. No. 7,802,310)
`
`IPR 2013-00596
`
`TABLE OF CONTENTS
`
`Page
`
`SOLE INSTITUTED GROUND .................................................................... l
`
`II.
`
`CLAIM CONSTRUCTIONS .......................................................................... 2
`
`A.
`
`“data item” ............................................................................................ 2
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`“digital identifier” (claim 86); “content—based identifier”
`(claims 70, 81) ...................................................................................... 3
`
`“content—dependent name” (claims 24, 32) .......................................... 4
`
`“selectively permitting .
`
`. .” (claim 70) ................................................ 6
`
`“selectively allow. . .” (claims 81 and 86)............. ............................. 7
`
`Challenged Claims Require that the Data Item Corresponding
`to the Name/Identifier in the “Request” is Accessed ........................... 8
`
`G.
`
`The BRC Standard is Not Applicable to this Proceeding................... 10
`
`l—< l—i l—i
`
`LAW .................. l 1
`
`THE MODIFICATION TO WOODHILL BASED ON STEFIK
`
`ALLEGED BY PETITIONER’S EXPERT WOULD NOT HAVE
`
`BEEN OBVIOUS BECAUSE ONE OF ORDINARY SKILL IN THE
`
`ART WOULD HAVE TRIED TO MINIMIZE (NOT MAXIMIZE)
`THE NUMBER OF COMPARISON PROCEDURES REQUIRED
`TO CHECK WHETHER ACCESS WAS AUTHORIZED ......................... 12
`
`ONE WOULD NOT HAVE MODIFIED WOODHILL TO CHECK
`
`WHETHER ACCESS TO A FILE BY A COMPUTER WAS
`
`AUTHORIZED WHEN THE COMPUTER ALREADY HAD THE
`
`CURRENT VERSION OF THAT FILE ........................... l9
`
`VI.
`
`STEFIK TEACHES AWAY FROM THE ALLEGED
`
`MODIFICATION BY IGNORING UNIQUE IDENTIFIERS AND
`NOT USING THEM TO DETERMINE WHETHER ACCESS IS
`
`AUTHORIZED ............................................................................................. 22
`
`2020057
`
`
`
`Patent Owner’s Response (U.S. Pat. No. 7,802,310)
`
`IPR 2013—00596
`
`VII.
`
`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 ......................................................... 24
`
`VIII.
`
`THE ART TEACHES AWAY FROM THE ALLEGED
`
`MODIFICATION BECAUSE “FUNDAMENTAL”, “KEY” AND
`“MUST” FEATURES OF STEFIK ARE NOT REFLECTED IN THE
`
`ALLEGED COMBINATION ....................................................................... 26
`
`IX.
`
`GRANULES CORRESPONDING TO CONTENTS IDENTIFIERS IN
`
`THE ALLEGED REQUEST IN WOODHHILL AS ALLEGEDLY
`MODIFIED BY STEFIK ARE NEVER PROVIDED TO THE
`
`REQUESTING COMPUTER IN RESPONSE TO THE REQUEST .................. 30
`
`THE ALLEGED IDENTIFIER IN THE WOODHILL/STEFIK
`
`COMBINATION IS NOT A “NAME” AND IS NOT USED FOR
`
`ACCESSING ........................... 32
`
`XI.
`
`FURTHER FLAWS IN WOODHILL INCLUDING PETITIONER’S
`
`IMPROPER MIXING OF ALTERNATIVE ALLEGATIONS
`
`,,,,, 36
`
`XII.
`
`SECONDARY CONSIDERATIONS .......................................................... 41
`
`XIII.
`
`THE EXAMINER CONSIDERED AND ALLOWED THE
`
`CHALLENGED CLAIMS OVER ALL ART RELIED UPON BY
`
`PETITIONER DURING PROSECUTION OF THE ‘3 IO PATENT ........... 42
`
`XIV.
`
`CONCLUSION ............................................................................................. 44
`
`PATENT OWNER’S EXHIBIT LIST
`
`CERTIFICATE OF SERVICE
`
`2020057
`
`
`
`PersonalWeb Technologies, LLC (“patent owner” or “PO”) submits this
`
`response to the petition. Petitioner has the burden of proving unpatentability by a
`
`preponderance of the evidence. 35 U.S.C. § 316(e). Petitioner has not met its
`
`burden for the reasons explained below. See also Dewar Decl. at 1m 18~62 [EX.
`
`20201)
`
`US. Patent No. 7,802,310 (“the ‘3 10 patent”) has an effective filing date of
`
`April 11, 1995 given its continuity.
`
`(EX. 1001.) While patent owner (PO) reserves
`
`the right to establish an earlier date of invention, an effective filing date of April
`
`11, 1995 is assumed for purposes of this Response (i.e., the “critical date” is no
`
`later than April 11, 1995 for purposes of this submission). Petitioner does NOT
`
`allege a later effective filing date in connection with the instituted ground, and the
`
`Board rejected petitioner’s Section 112 arguments in connection with a non—
`
`instituted ground in Paper 9. Thus, the April 11, 1995 effective filing date is
`
`applicable in this proceeding.
`
`PO notes that another IPR is also pending regarding the ‘3 10 patent. (See
`
`IPR 2014—00062.)
`
`1. SOLE INSTITUTED GROUND
`
`The Board, on March 26, 2014, construed certain claim terms and instituted
`
`a trial in this proceeding regarding the ‘3 10 patent for only the following:
`
`1.
`
`Whether claims 24, 32, 70, 81, 82 and 86 are unpatentable as
`
`obvious under 35 U.S.C. §103(a) over Woodhill (EX. 1014 — US.
`
`1
`
`,
`
`2020057
`
`
`
`Patent Owner’s Response (U.S. Pat. No. 7,802,310)
`
`lPR 2013-00596
`
`Patent No. 5,649,196) and Stefik (EX. 1013 —— U.S. Patent No.
`
`7,359,881).
`
`The Board ordered that no other grounds of alleged unpatentability were
`
`authorized regarding the ‘3 10 patent. (Paper 9.) Thus, petitioner is not permitted
`
`to argue unpatentability in this proceeding regarding any other ground(s) even if
`
`such other ground(s) may have been in the petition.
`
`II. CLAIM CONSTRUCTIONS
`
`Claim terms are presumed to be given their ordinary and customary meaning
`
`as would be understood by one of ordinary skill in the art at the time of the
`
`invention. Phillips 12. AWH Corp, 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
`
`However, the inventor may rebut that presumption by providing a definition of the
`
`term in the specification with reasonable clarity, deliberateness, and precision.
`
`A. “data item ”.
`
`The specification of the ‘3 10 patent provides a definitionfor at least the
`
`following term in the chart below with reasonable clarity, deliberateness, and
`
`precision (i.e., the inventors were their own lexicographer):
`
`
`Claim Term
`
`Correct Construction
`
`“data item”
`
`Sequence Osz'ts.
`
`(‘3 10 patent, col. 2:16—17.) As the
`
`
`
`
`
`(This term appears
`expressly in claims 24,
`32 and 70. This term is
`
`also contained in the
`below—constructions of
`
`“digital identifier”,
`“content—based
`
`Board explained in its June 5, 2013 Decision in [PR
`
`2013—00082, the “sequence of bits” may include any of
`
`the following which represent examples in a non-
`
`exhaustive list: (1) the contents of a file; (2) a portion of
`
`a file; (3) a page in memory; (4) an object in an object-
`
`2
`
`2020057
`
`
`
`Patent Owner’s Response (US. Pat. No. 7,802,310)
`
`IPR 2013-00596
`
`
`
`identifier” and
`“content-dependent
`name” and is thus also
`
`relevant thereto.
`
`
`
`oriented program; (5) a digital message; (6) a digital
`
`scanned image; (7) a part of a Video or audio signal; (8) a
`
`directory; (9) a record in a database; (10) a location in
`
`memory or on a physical device; (1 1) any other entity
`
`which can be represented by a sequence of bits.
`
`(See
`
`June 5, 2013 Dec. in IPR 2013—00082 at 2-3 [EX. 2008];
`
`and May 17, 2013 Dec. in IPR 2013—00082 at 14-15 [Ex
`
`2009])
`
`During prosecution of family member US. Patent
`
`No. 7,949,662, applicant and the USPTO Examiner made
`
`clear that the “data item” may be “any sequence of bits”
`
`and that “the data item may represent any type/kind of
`
`data.” See, in EX. 2004, the § 112 rejection in the Office
`
`Action dated Sept. 14, 2007, the response thereto, and
`
`then the Examiner’s withdrawal of the § 112 rejection on
`
`page 21 of the Office Action dated July 3, 2008. (EX.
`
`
`
`
`
`2004)
`
`
`B. “digital identifier” {claim 86); “content—based identifier ” (claims 70Z 812.
`
`The Board construed these two terms as “an identifierfor a data item being
`
`based at least in part on a given function ofat least some 0ftlzebz'ts in the
`
`particular sequence ofbits 0ftlze particular data item.” (Paper 9, pgs. 8—10.)
`
`PO has assumed this construction for these two terms in this proceeding
`
`regarding claims 70, 81 and 86, without prejudice to argue for another construction
`
`for these terms in other proceeding(s). PO notes that the Board’s construction of
`
`2020057
`
`
`
`Patent Owner’s Response (U.S. Pat. No. 7,802,310)
`
`IPR 2013-00596
`
`“digital identifier” conflicts with the district court’s construction of that same term
`
`in related litigations. (Ex. 2013, pg. 47; and Ex. 2014.)
`
`C.
`
`‘bontent—dependent nameflclaims 24432).
`
`The Board also construed “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.” (Paper 9, pgs. 8-10.)
`
`This construction is wrong for several reasons. First, the Board’s
`
`construction conflicts with the express language of claim 32. Claim 32 expressly
`
`requires that the content-dependent name of the data item is based on “all of the
`
`contents of the particular data item” (emphasis added). Thus, at least with respect
`
`to claim 32, the construction of “content—dependent name” should be “a namefor
`
`a data item being based at least in part on a given function ofgll 0ftlze bits in the
`
`particular sequence of bits 0ftlie particular data item.” (emphasis added.)
`
`Claim 11 also states “all.”
`
`
`Second, the Board’s construction for “content—dependent name” in claims
`
`24 and 32 improperly ignores the word “name” in the claim language. It cannot
`
`reasonably be said that all identifiers are names. For example, while afingerprint
`
`is an identifierfor a person, it is ngt a ‘name ”for that person. Contrary to the
`
`Board’s suggestion, something is not a “name” simply because it is an “identifier.”
`
`Any attempt to replace “name” with “identifier” in a construction of “content—
`
`dependent name” would be wrong, unreasonable and illogical. Even Woodhill
`
`2020057
`
`
`
`Patent Owner’s Response (US. Pat. No. 7,802,310)
`
`IPR 2013—00596
`
`contrasts the difference between a file “name” and a binary object “identifier” (see
`
`e. g, file name 40 and file name 80 in Figs. 3—4 of Woodhill, compared to binary
`
`object identifier 74 in Fig. 3 of Woodhill), evidencing that they are not the same
`
`thing in this art. One of ordinary skill in the art at the time of the invention would
`
`have understood that there is a significant difference between a “name” and a mere
`
`“identifier.” “Name” should not be removed from the construction, and should
`
`not be replaced with “identifier.” One of ordinary skill in the art at the time of the
`
`invention would have recognized that a “name” for a data item is used not only to
`
`identify that data item, but is also used to refer to that data item, to access that data
`
`item, search for that data item, and address that data item, both in this art in general
`
`and according to the instant specification. (E.g., ‘3 10 patent, col. 15:34—3 7; col.
`
`16:32-62; col. 18:12—35; col. 22:61-67; col. 23:51-64; col. 32:55-67; and Dewar
`
`Decl., 1] 23 [Ex 2020].)
`
`Accordingly, in the Board’s construction of “content—dependent name” for
`
`claim 24, “an identifier” should be replaced with “a name.” And at least with
`
`respect to claim, 32, the construction of “content—dependent name” should be “a
`
`
`namefor a data item being based at least in part on a given function ofgfl 0ftbe
`
`bits in the particular sequence of bits 0ftbe particular data item.” (emphasis
`
`added.) This is relevant at least because the alleged identifier in the
`
`Woodhill/Stefik combination is not a “name.”
`
`2020057
`
`
`
`Patent Owner’s Response (U.S. Pat. No. 7,802,310)
`
`IPR 2013—00596
`
`D. ‘fielectivemmittlig. . .” (cl_aim 70 .
`
`Petitioner also proposes overly broad constructions for “selectively
`
`permitting” in claim 70 and to “selectively allow” in claims 81 and 86.
`
`PO disagrees with petitioner’s proposed construction for “selectively
`
`permitting”, at least because petitioner’s construction again ignores the plain
`
`language of claim 70. Petitioner contends that “selectively permitting” in claim 70
`
`of the ‘3 10 patent should be construed as “permitting based on whether a condition
`
`is met” (emphasis added). Petitioner’s construction incorrectly ties the
`
`“selectively permitting” to be whether any condition is met, and ignores the
`
`context of “selectively.” However, claim 70 reads as follows:
`
`I
`
`“(A) .
`
`.
`
`. 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 (B) based at least in part
`
`on said determining inJig; (A2, selectively permitting the particular
`
`data item to be accessed at or by one or more computers in the .
`
`network. . .” (emphasis added)
`
`Petitioner’s construction improperly attempts to read the above—underlined
`
`language of claim 70 out of the claim. Petitioner would have the Board construe
`
`claim 70 so that the “permitting” is performed based on whether any condition is
`
`met. Contrary to petitioner’s construction, the plain language of claim 70 requires
`
`that the “selectively permitting .
`
`. .” is performed based at leaston whether a very
`
`particular condition is met - namely, whether in step (A) it was determined that the
`
`content-based identifier for the data item (i) did correspond to an entry in a
`
`6
`
`2020057
`
`
`
`Patent Owner’s Response (US. Pat. No. 7,802,310)
`
`IPR 2013—00596
`
`database comprising a plurality of content~based identifiers, or (ii) did not
`
`correspond to an entry in the database. In other words, the plain language of the
`
`claim requires permitting the data item to be accessed when one of conditions (i)
`
`and (ii) is determined in step (A), and not permitting the data item to be accessed
`
`when the other of conditions (i) and (ii) is determined in step (A). “Selectively
`
`permitting .
`
`. .” in claim 70 is not based on some unspecified “condition.”
`
`Petitioner’s construction is incorrect because it conflicts with the plain language of
`
`the claim.
`
`E. “selectively allow. . .”(claims 8] and 862.
`
`PO also disagrees with petitioner’s proposed construction for “selectively
`
`allow”, at least because petitioner’s construction again ignores the plain language
`
`of the claims. Petitioner contends that to “selectively allow” in claims 81 and 86
`
`should be construed as “permitting based on whether a condition is met”
`
`(emphasis added). Contrary to petitioner’s construction, to “allow” in claims 81
`
`and 86 is not based on whether any condition is met. And petitioner ignores the
`
`context of “selectively” in the claims. For example, claim 81 reads as follows:
`
`to .
`
`.
`
`. (b) compare the content—based identifier of the particular
`
`sequence of bits to a plurality of values; and to (c) selectively allow
`
`said particular sequence of bits to be provided or accessed by other
`
`devices degending on whether or not said content-degendent
`
`identifier corresponds to one of the Qluralig or values.” (emphasis
`
`added)
`
`2020057
`
`
`
`Patent Owner’s Response (US. Pat. No. 7,802,310)
`
`lPR 2013—00596
`
`Petitioner’s construction improperly attempts to read the above—underlined
`
`language of claim 81 out of the claim. Petitioner would have the Board construe
`
`claim 81 so that to “allow” is performed based on whether any condition is met.
`
`Contrary to petitioner’s construction, the plain language of claim 81 requires the
`
`device to selectively allow the sequence of bits to be provided or accessed by other
`
`devices depending on whether in step (b) the content-based identifier of the
`
`particular sequence of bits (i) did correspond to one of the plurality of values, or
`
`(ii) did not correspond to one of the plurality of values. In other words, the plain
`
`language of claim 81 requires the device to allow the sequence ofbits to be
`
`provided/accessed when one ofconditions (z) and (it) occurs, and not allow the
`
`sequence ofbits to be provided/accessed when the other ofconditions (I) and (it)
`
`occurs. Petitioner’s construction of to “selectively allow” in claim 86 is similarly
`
`flawed. “Selectively allow .
`
`. .” in claims 81 and 86 is not based on some
`
`unspecified “condition.” Petitioner’s construction is again incorrect because it
`
`conflicts with the plain language of these claims.
`
`
`F. Challenged Claims Require that the Data Item Corresgonafi/zg to the
`
`
`Name/Identifier in the “Request ” is Accessed.
`
`Claims 24 and 70 require a “request” that includes a content—dependent
`
`name (claim 24) or identifier (claim 70) for a corresponding data item. These
`
`claims then require that the data item corresponding to the name (claim 24) or
`
`2020057
`
`
`
`Patent Owner’s Response (US. Pat. No. 7,802,310)
`
`lPR 2013-00596
`
`identifier (claim 70) is accessed by other computer(s) based on the claimed
`
`comparison. For example, claim 70 states:
`
`“in response to a request at a first computer, from another computer,
`
`said reguest comprising at least a content—based identifier for a
`
`particular data item .
`
`.
`
`. (A) .
`
`.
`
`. 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
`
`
`(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 .
`
`. .” (emphasis added)
`
`Thus, independent claim 70 requires that the particular data item corresponding to
`
`the content—based identifier in the request is accessed, or permitted to be accessed,
`
`by other computer(s) in the network based on the comparison in step (A).
`
`Similarly, independent claim 24 requires that the particular data item
`
`corresponding to the content—dependent name in the request is provided to or
`
`accessed by the second computer when it is determined that access to that data
`
`item is authorized based on the comparison. And independent claims 81 and 86
`
`also require that the particular sequence of bits corresponding to the identifier
`
`received from the another device is provided to or accessed by other devices
`
`depending on the comparison.
`
`This is important because both parties agree that in the alleged
`
`Woodhill/Stefik combination granules corresponding to contents identifiers in the
`
`alleged request (“update request”) are NEVER provided to the requesting
`
`2020057
`
`
`
`Patent Owner’s Response (US. Pat. No. 7,802,310)
`
`IPR 2013-00596
`
`conunuerinresponsetotherequest (Ckfldbergl)ep.65-67,80:82 U3x.2015];and
`
`l)eumrl)ecl,1fll26,48—Sl[Ex.2020})’Thus,eventheaflegedconfifinafionthfls
`
`to meet the challenged claims in this respect.
`
`G.WmBRC$mmmdmAbquMmHemfl$fhwgfimg
`
`37 C.F.R. § 42.lOO(b) states that a claim in an “unexpired patent” shall be
`
`given its broadest reasonable construction (“BRC” or “BRl”) in light of the
`
`spajficafion.Iioweventhe‘3101xfientexpnesonnApnl11,2015.iAcconhngbg
`
`POlmsnoabflfiytoamenddm‘310pMemflnflnspnxmemngandnoappaflvflfl
`
`takerflaceiunilafierthe‘3101xuentexphes.Indeed,thelJSPTKvafllhave
`
`jurisdiction over this proceeding after the ‘3 10 patent expires. No certificate under
`
`35 U.S.C. § 318(b) can issue before the ‘3 l0 patent expires. At least any document
`
`(e.g., final written decision, decision on rehearing, certificate, etc.) authored or
`
`generated by the USPTO after the ‘3 10 patent expires cannot use BRC, and instead
`
`should use and must rely upon the same claim construction standard as the district
`
`counlakiouthifVfiUQMVu14W71Cbna,415li3d1303(Fed.Cn12005)(m1banc)
`
`Moreover, the 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
`
`(notarnerermoceduralmsue) Chaperlbchs Cb.v.lhukm,536l?3dl330,1335
`
`(Fed. Cir. 2008). Thus, the BRC standard should not be used in this proceeding for
`
`construing claims.
`
`10
`
`2020057
`
`
`
`Patent Owner’s Response (U.S. Pat. No. 7,802,310)
`
`IPR 2013—00596
`
`While PO’s claim constructions set forth above are submitted to be correct
`
`under either the BRC standard or the Phillips standard, the Board should use the
`
`Phillips standard to construe claims in this proceeding.
`
`III. LAW
`
`“A claim is anticipated only if each and every element as set forth in the
`
`claim is found, either expressly or inherently described, in a single prior art
`
`reference.” Verdegaal Bros. 12. Union Oil Co. ofCalz'fOrnia, 814 F.2d 628, 631
`
`(Fed. Cir. 1987). A feature is “inherent” in a reference only if that feature is
`“necessarily present” in the reference, “not merely probably or possibly present.”
`
`Trintec Indus, Inc, v. Top—USA. Corp, 295 F.3d 1292, 1295 (Fed. Cir. 2002).
`
`Furthermore, in order to anticipate, a prior art reference must not only disclose all
`
`elements of the claim, but must also disclose those elements “arranged as in the
`
`claim.” Net MoneyIN, Inc. v. VeriSign, Inc, 545 F.3d 1359, 1369 (Fed. Cir. 2008).
`
`Moreover, a patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`
`differences between the claimed subject matter and the prior art are such that the
`
`subject matter would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art to which the subject matter pertains. KSR
`
`Ini’l Co. v. Teleflex Inc, 550 US. 398, 406 (2007). The question of obviousness is
`
`resolved on the basis of underlying factual determinations, including (1) the scope
`
`and content of the prior art; (2) differences between the claimed subject matter and
`
`the prior art; (3) the level of skill in the art; and (4) secondary considerations such
`
`11
`
`2020057
`
`
`
`Patent Owner’s Response (US. Pat. No. 7,802,310)
`
`IPR 2013—00596
`
`as commercial success, long felt need, copying by others, etc. Graham v. John
`
`Deere Co. ofKansas City, 383 US. 1, 17—18 (1966). A court can take account of
`
`the inferences and creative steps that a person of ordinary skill in the art would
`
`employ. KSR, 550 US. at 418. “A prior art reference may be considered to teach
`
`away [from the clamed invention] when ‘a person of ordinary skill, upon reading
`
`the reference, .
`
`.
`
`. would be led in a direction divergent from the path that was
`
`taken by the applicant’.” Monarch Knitting Mach. V. Sulzer Marat, 139 F.3d 877,
`
`885 (Fed. Cir. 1998) (citation omitted). The “general rule” is that references that
`
`teach away “cannot serve to create a prima facie case of obviousness.” McGinZey
`
`12. Franklin Sports, Inc, 262 F.3d 1339, 1354 (Fed. Cir. 2001).
`
`IV. THE MODIFICATION TO WOODHILL BASED ON STEFIK
`ALLEGED BY PETITIONER’S EXPERT 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 TO CHECK WHETHER
`ACCESS WAS AUTHORIZED
`
`Woodhill relates to a backup system. (Woodhill, col. 9:1 to col. 10:12, and
`
`col. 14:52 to col. 16:15.) Woodhill’s granularization restore procedure for large
`
`database files, described from column 17:18 to col. 18:9 and in Figs. 5H—51, is the
`
`ONLY portion of Woodhill that petitioner alleges would have been obvious to
`
`modify in order to meet the challenged claims. (Goldberg Dep. 54—55, 57—67, 71,
`
`74 [Ex. 2015].) In Woodhill as allegedly modified by Stefik, petitioner contends
`
`that the “request” of claims 24 and 70 is the “update request” described in
`
`Woodhill at column 17:42—46. (Goldberg Dep. 54—55, 84 [Ex. 2015].) Petitioner
`
`12
`
`’
`
`2020057
`
`
`
`Patent Owner’s Response (US. Pat. No. 7,802,310)
`
`IPR 2013—00596
`
`contends that the claimed “data items” are either binary objects or granules.
`
`(Goldberg Dep. 57-59, 85 [Ex 2015].) Petitioner’s expert refers to these as “two
`
`reads” on the challenged claims, one read being where the data items are binary
`objects and the other read being where the data items are granules. (Goldberg Dep.
`
`71, 85 [Ex 2015].) When the “data items” are binary objects, petitioner contends
`
`that the “content—dependent name” of claim 24, “content-based identifier” of
`
`claims 70 and 81, and “digital identifier” of claim 86 in the claimed “request” are
`
`binary object identifiers 74 allegedly in the “update request”, in Woodhill as
`
`allegedly modified by Stefik. (Goldberg Dep. 64—67, 71, 84—85 [Ex 2015].) But
`
`when the “data items” are granules, petitioner contends that the, “content-
`
`dependent name” of claim 24, “content—based identifier” of claims 70 and 81, and
`
`“digital identifier” of claim 86 in the claimed “request” are “contents identifiers”
`
`calculated in step 444 which are in the “update request.” (Goldberg Dep. 6467,
`
`71, 84—85 [Ex 2015].)
`
`I
`
`Petitioner’s expert alleges that it would have been obvious to have modified
`
`Woodhill’s column 17 granularization restore procedure for large database files to
`
`have compared binary object identifiers 74 or “contents identifiers” allegedly in
`
`Woodhill’s “update request” with a plurality of values in order to check whether
`
`access by the requesting local computer is authorized. (Goldberg Dep. 31-34, 54—
`
`55, 71, 74—75 [Ex. 2015].) This is the ONLY modification to Woodhill which
`
`petitioner’s expert alleges to meet the challenged claims. 1d. Petitioner does not
`
`13
`
`2020057
`
`
`
`Patent Owner’s Response (US. Pat. No. 7,802,310)
`
`IPR 2013—00596
`
`rely on any other procedure in Woodhill as allegedly modified by Stefik to meet
`
`the challenged claims. Id.
`
`Woodhill’s granularization restore procedure which petitioner seeks to
`
`modify is used for processing large database files each of which includes many
`
`binary objects and many granules.
`
`(‘3 10 patent at col. 14:52—65, col. 17:18—35;
`
`Goldberg Dep. 106—108 [EX. 2015]; and Dewar Decl., 1] 30 [Ex. 2020].) As
`
`petitioner’s expert testified:
`
`Q. Would you agree that Woodhill’s granularization procedure is
`
`used for large database files?
`
`A. Yes.
`
`(Goldberg Dep. 106 [EX. 2015].)
`
`Q. Large data, a large database file would include a plurality of
`
`granules, right?
`
`MR. CORNWELL: Objection. Form.
`
`THE WITNESS:
`
`I would expect so. Yes.
`
`Q. Probably a whole lot of granules, right?
`
`MR. CORNWELL: Objection. Form.
`
`THE WITNESS: That’s correct.
`
`Q. And a whole lot of binary objects?
`
`MR. CORNWELL: Objection. Form.
`
`THE WITNESS: Yes.
`
`(Goldberg Dep. 108 [EX. 2015].) Thus, the parties agree that Woodhill’s
`
`granularization restore procedure which petitioner seeks to modify under Section
`
`103 is for processing large database files, and that each such file includes “a whole
`
`14
`
`2020057
`
`
`
`Patent Owner’s Response (US. Pat. No. 7,802,310)
`
`IPR 2013-00596
`
`lot of granules” and “a whole lot of binary objects.” Id. See also Dewar Decl., 11
`
`30 [Ex. 2020]. The parties also agree that a binary object is made up of many
`
`granules. (Goldberg Dep. 119 [Ex. 2015]; and Dewar Decl, fit 30 [Ex. 2020].)
`
`Simply stated, these are very large files having many binary object and many
`
`granules. Id.
`
`In 1995, one of ordinary skill in the art would have expected a “large
`
`database file” of the type handled by Woodhill’s granularization procedure to be at
`
`least 1 to 2 gigabytes in size. (Dewar Decl., 11 31 [Ex. 2020].) Woodhill explains
`
`that a binary object is 1 megabyte in size, and that a granule can be 1 kilobyte.
`
`(Woodhill, col. 7:54—55, col. 14:58—67.) Given such sizes, a single 1 gigabyte large
`
`database file to be processed by Woodhill’s granularization restore procedure
`
`would include at least 1,024 binary objects and 1,048,576 granules. (Dewar Decl.,
`
`$1 31 [Ex. 2020].) Thus, 1,024 binary object identifiers and 1,048,576 contents
`
`identifiers would correspond to the binary objects and granules of the file,
`
`respectively. Id.
`
`The alleged modification would not have been obvious to one of ordinary
`
`skill in the art at the time of the invention because one of ordinary skill would have
`
`sought to minimize the numbers of comparisons needed (not maximize them).
`
`(Dewar Decl., {l 32 [Ex 2020].) Under petitioner’s first read where the data items
`
`are binary objects and binary object identifiers 74 are compared to determine
`
`whether access is authorized, the allegedly modified granularization restore system
`
`15
`
`2020057
`
`
`
`Patent Owner’s Response (US. Pat. No. 7,802,310)
`
`IPR 20113—00596
`
`of Woodhill would require that each of the 1,024 binary object identifiers be
`
`compared with a plurality of binary object identifiers for a total of 1,024 different
`
`comparison processes in order to determine whether access to the single large
`
`database file being restored is authorized. (Goldberg Dep. 38-39 [EX. 2015]; and
`Dewar Decl., H 32 [Ex 2020].) And under petitioner’s second read where the data
`
`items are granules and “contents identifiers” are compared to determine whether
`
`access is authorized, the allegedly modified granularizaticn restore system of
`
`Woodhill would require that each of the 1,048,576 “contents identifiers” be
`
`compared with a plurality of contents identifiers for a total of 1,048,576 different
`
`comparison processes in order to determine whether access to the single large
`
`database file being restored is authorized. Id. Accordingly, the number of
`
`different comparison processes needed to be performed by the allegedly modified
`
`restore system would therefore be at least 1,024 (with each of these involving
`
`many different comparisons), just to check if access to the single large database
`
`file was authorized. Id. This would be non—sensical and illogical, as one of
`
`ordinary skill in the art would never have modified a system so that it required at
`
`least 1,024 comparisons to determine if access to a file was authorized. (Dewar
`
`Decl., 1] 32 [Ex 2020].) As testified by petitioner’s expert:
`
`Q.
`
`If you could make a determination regarding whether access to a
`
`given file was authorized, using one comparison on the one hand, or a
`
`thousand comparisons on the other hand, which would you pick?
`
`MR. CORNWELL: Objection. Form.
`
`16
`
`2020057
`
`
`
`Patent Owner’s Response (US. Pat. No. 7,802,3 lO)
`
`lPR 2013—00596
`
`THE WITNESS: If that was the only criterion for evaluating the
`
`efficacy of the system, then certainly one check is better than a thousand.
`
`(Goldberg Dep. 53 [Ex 2015].)
`
`One of ordinary skill in the art at the time of the invention would have
`
`sought to minimize the number of comparisons needed to determine whether access
`
`to a given file (large database file in Woodhill’s granularization restore procedure)
`
`was authorized. (Goldberg Dep. 53 [EX. 20l5]; and Dewar Decl., 1] 32 [EX.
`
`2020].) This is a matter of common sense. (Dewar Decl., 1] 32‘[EX. 2020].) One
`
`would never have modified Woodhill’s granularization restore procedure in the
`
`manner alleged by petitioner’s expert (i,e., comparing binary object identifiers or
`
`contents identifiers) at least because (a) it would have been known that each large
`
`database file would likely include thousands of binary objects and granules, (b) this
`
`would have exponentially maximized the number of comparisons needed to
`
`determine whether access to the large database file was authorized — this would
`
`have been highly undesirable as wasteful, unnecessary, inefficient and costly, and
`
`(c) the binary object identifiers and contents identifiers in Woodhill do not even
`
`identify the large database file being processed in Woodhill’s restore procedure in
`
`any respect and could not logically be used to check whether access thereto was
`
`authorized. (Dewar Decl., fi] 32 [EX. 2020].) The alleged modification would not
`
`have been made and would not have been obvious, as it would have been none
`
`sensical and illogical. Id. Moreover, petitioner does not contend that it would
`
`have been obvious to have modified Woodhill to have checked Whether access to
`
`17
`
`2020057
`
`
`
`Patent Owner’s Response (US. Pat. No. 7,802,310)
`
`IPR 2013—00596
`
`each individual granule or binary object was authorized on a granule—by—granule
`
`basis or on an object—by—object basis, and there would have been no logical reason
`
`to have done this because this nothing in the cited art discloses or suggests this and
`
`this too would also have resulted in thousands of wasteful, unnecessary and
`
`inefficient comparisons as explained above. Id. at 1] 33.
`
`Stefik teaches a perfectly good system for controlling distribution of files,
`
`that utilizes “usage rights” and intentionally does NOT utilize unique identifiers
`
`701. (Dewar Decl., 1] 34 [EX. 2020].) Petitioner’s expert testified that Stefik’s
`
`unique identifiers 701 are equivalent to Woodhill’s binary object identifiers 74,
`
`and admitted that Stefik does NOT use these unique identifiers 701 in determining
`
`whether access to anythi
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
