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`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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`July 12, 2017
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`PATENT OWNER’S BRIEF FOLLOWING REMAND FROM THE
`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
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`Pursuant to the Board’s June 22, 2017 Order, PersonalWeb Technologies,
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`LLC (“patent owner” or “PO”) submits this brief following the remand from the
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`Federal Circuit, which vacated the Final Written Decision (FWD) dated March 25,
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`2015. For at least the reasons explained herein and in PO’s Response dated June
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`16, 2014 and Preliminary Response dated December 26, 2013, it is respectfully
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`submitted that Apple did not make out a proper case of obviousness at least
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`because Apple: (1) failed to meet its burden of establishing that the prior art
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`discloses all elements of the challenged claims, and (2) failed to meet its burden of
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`establishing that a skilled artisan would have been motivated to combine Woodhill
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`and Stefik in the way the ‘310 patent claims and reasonably expect success.
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`Because PO did not appeal claim 70, the Board need not address claim 70.
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`The claim limitations discussed herein are not present in claim 70. This brief is
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`limited to claims 24, 32, 81, 82 and 86 of the ‘310 patent.
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`I. WOODHILL AND STEFIK FAIL TO DISCLOSE COMPARING AN
`ALLEGED DATA ITEM IDENTIFIER TO A PLURALITY OF VALUES
`TO DETERMINE WHETHER ACCESS IS UNAUTHORIZED.
`Claim 24 is representative, requiring “(i) causing the content-dependent
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`name of the particular data item [that was in the request] to be compared to a
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`plurality of values; (ii) . . . determining whether or not access to the particular
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`data item is unauthorized based on whether the content dependent name of the
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`particular data item corresponds to at least one of said plurality of values.” The
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`claim expressly requires determining whether access to the data item is
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`unauthorized based on the result of a comparison between the content-dependent
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`name for that data item against a plurality of values. Independent claims 81 and 86
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`contain similar language regarding comparing a content-based identifier/name to a
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`“plurality of values.” Woodhill and Stefik fail to disclose this subject matter. The
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`Petition focused on claim 70, which does not include these limitations. The
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`Petition neither addresses these limitations nor provides any guidance as to where
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`they are allegedly found in the prior art.
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`(a) The Petition and institution decision are fatally flawed.
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`The institution decision relies on Woodhill’s binary object identifiers 74 as
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`the claimed content-dependent name. [Paper 9 at 15.] However, the institution
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`decision does not contend that Woodhill discloses the feature at issue here --
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`comparing a binary object identifier to a plurality of values for determining
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`whether access is unauthorized -- and instead relies on Stefik for this claimed
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`subject matter. (Paper 9 at 16.) In particular, the institution decision states “[a]s
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`discussed by Apple, the process [in Stefik] of matching the identifier for the work
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`would involve comparing it with a plurality of values, and providing for selective
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`access. Pet. 42.” Id. The institution decision relies on no source other than Stefik
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`as discussed at page 42 of the Petition for the “comparison against a plurality of
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`values to provide selective access.”
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`Neither Stefik nor page 42 of the Petition can support the institution
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`decision. First, nothing in Stefik describes comparing an identifier against a
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`plurality of values to determine unauthorization or selective access – a point Apple
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`conceded on appeal. Second, nothing at page 42 of the Petition mentions
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`comparing a content-dependent name against a plurality of values. Third, neither
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`Stefik nor page 42 of the Petition discloses any process for determining whether
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`access is unauthorized based on such a comparison to a plurality of values.
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`The Petition argues the ground at issue on pages 41-43. However, nowhere
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`does the Petition allege that Stefik (or Woodhill, or the alleged combination)
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`discloses comparing the binary object identifier (alleged content-dependent name)
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`to a plurality of values, and nowhere does the Petition allege that Stefik (or
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`Woodhill, or the alleged combination) discloses determining that access is
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`unauthorized based on such a comparison to a plurality of values. To the contrary,
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`the Petition on page 41 merely refers to “another value” (not a “plurality of
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`values” as claimed). Moreover, the Petition’s discussion of Woodhill with respect
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`to claim 24, on page 38, also does not allege any prior art disclosure of comparing
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`a binary object identifier to a plurality of values, or any disclosure of determining
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`that access is unauthorized based on such a comparison to a plurality of values.
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`Indeed, the Petition contains no claim chart or analysis of the prior art with respect
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`to claim 24. Thus, even the alleged combination fails to meet claim 24.
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`The Goldberg Declaration accompanying the Petition is similarly flawed.
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`[Ex. 1007.] The Goldberg Declaration refers to the ground at issue on pages 40-
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`41. Again, nowhere does Dr. Goldberg allege that Stefik, Woodhill, or the alleged
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`combination disclose comparing a binary object identifier (the alleged content-
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`dependent name) to a plurality of values, and nowhere does he allege that Stefik
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`(or Woodhill, or the alleged combination) discloses determining unauthorization
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`based on such a comparison to a plurality of values. The Petition and
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`accompanying Goldberg Declaration are silent regarding this claimed subject
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`matter. Dr. Goldberg, on page 40 of his Declaration, merely refers to “another
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`value” (not a “plurality of values” as claimed).
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`The Petition’s failure to allege such a disclosure in the prior art is not
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`surprising, given that the prior art contains no such disclosure. Both Woodhill and
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`Stefik disclose identifiers. However, neither Woodhill nor Stefik use an identifier
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`to determine unauthorization, and neither discloses any comparison to a plurality
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`of values for determining access unauthorization as claimed.
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`Stefik describes unique identifiers 701 for respective digital works. (Ex.
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`1013, col. 9:48-49, and Fig. 7.) However, it is undisputed that (a) Stefik does NOT
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`use these unique identifiers 701 for determining whether access to anything is
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`unauthorized, (b) Stefik does NOT compare these unique identifiers to a plurality
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`of values, much less to determine unauthorization, and (c) Stefik’s unique
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`identifiers 701 are NOT content-based. (Goldberg Dep. 147-151, 153-54 [Ex.
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`2015]; Dewar Decl., ¶ 40 [Ex. 2020]; Dewar Dep. 74 [Ex. 1035].)
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`During an authorization determination, instead of using unique identifiers
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`701, Stefik utilizes so called “usage rights” that are not calculated based on file
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`content and which are unrelated to unique identifiers 701. (Dewar Decl., ¶ 40 [Ex.
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`2020]; Goldberg Dep. 127-29 [Ex. 2015].) It is undisputed that Stefik fails to
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`disclose comparing unique identifier 701 (or any other identifier) or usage rights to
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`a plurality of values for determining that access is unauthorized.
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`Accordingly, the Petition is fatally flawed because it does not establish, or
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`even allege, that the prior art discloses comparing a binary object identifier
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`(alleged content-dependent name) of a binary object (alleged particular data item)
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`to a plurality of values in the context of claim 24, and never establishes or alleges
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`that the prior art discloses determining whether access to a binary object is
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`unauthorized based on such a comparison of a binary object or any other alleged
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`content-dependent name to a plurality of values.
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`Contrary to the institution decision, Stefik fails to disclose this claimed
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`subject matter. Apple does not rely on Stefik in this respect, and does not allege in
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`the Petition that Stefik (or even Woodhill) discloses this claimed subject matter.
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`Accordingly, the Federal Circuit correctly found that the FWD did not establish
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`that the prior art disclosed this claimed subject matter.
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`Obviousness is resolved on the basis of underlying factual determinations,
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`including: (1) the scope and content of the prior art; (2) differences between the
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`claimed subject matter and the prior art; (3) the level of skill in the art; and (4)
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`secondary considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1,
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`17-18 (1966). As explained above, the Petition does not identify the differences
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`between the claimed subject matter and the prior art, does not describe relevant
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`content of the prior art, and does not explain where the above-discussed subject
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`matter is allegedly present in the prior art. Apple’s Petition is fatally flawed.
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`(b) Woodhill also fails to disclose comparing a binary object identifier to a
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`plurality of values to determine whether access is unauthorized.
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`Apple should not now be heard to argue that the deficiencies in the Petition
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`and Stefik can somehow be cured by Woodhill. They cannot.
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`First, as explained above, the Petition never alleged that Woodhill discloses
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`“(i) causing the content-dependent name of the particular data item [that was in
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`the request] to be compared to a plurality of values; (ii) . . . determining whether
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`or not access to the particular data item is unauthorized based on whether the
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`content dependent name of the particular data item corresponds to at least one of
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`said plurality of values” as recited in claim 24. The Petition and accompanying
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`Goldberg Declaration are silent regarding this claimed subject matter.
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`Second, the institution decision did not rely on Woodhill for this claimed
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`subject matter, and instead erroneously relied on Stefik as explained above. (Paper
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`9 at 16.) It is undisputed that Stefik fails to disclose this claimed subject matter,
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`and that Apple no longer relies on Stefik in this respect. It would be improper to
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`significantly alter the basis of the trial at this late stage, especially given that no
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`additional evidence may be submitted. Because the Board relied on Stefik for this
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`claimed subject matter in the institution decision, it cannot now rely on Woodhill
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`or any other art for this subject matter without violating PO’s rights under §
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`544(b)(3) of the Administrative Procedures Act. See SAS Inst., Inc. v.
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`ComplementSoft, LLC, 825 F.3d 1341, 1351-52 (Fed. Cir. 2016) (holding that the
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`Board cannot “change theories midstream” in an FWD without giving the PO
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`notice and an opportunity to be heard on the new theory).
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`Third, Woodhill nevertheless fails to disclose the above-underlined subject
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`matter of claim 24. [Ex. 2020 at ¶ 59.] The institution decision only contends that
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`the claimed data item may be a binary object and that the claimed content-
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`dependent name (or content-based identifier) may be a binary object identifier 74
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`in Woodhill. (Paper 9.) However, Woodhill fails to disclose comparing a binary
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`object identifier to a plurality of values for determining that access is unauthorized.
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`Indeed, the vacated FWD implicitly concedes that “Woodhill fails to make a
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`determination as to whether access to a given data item is not authorized.” (FWD
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`28.) Woodhill’s granularization procedure which Apple cited on appeal never
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`compares a binary object identifier 74 (the alleged content-dependent name) to a
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`plurality of values as claimed. (Woodhill, col. 14:52 to col. 16:15.) And Woodhill
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`never compares any binary object identifier 74 “to a plurality of values” in the
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`granularization procedure (or any other procedure) for “determining whether
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`access to the particular data item is unauthorized based on whether the content-
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`dependent name of the particular data item corresponds to at least one of said
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`plurality of values” as required by claim 24. (Woodhill, col. 14:52 to col. 16:15.)
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`Woodhill simply does not use binary object identifiers for determining
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`unauthorization. Dr. Goldberg admits that any alleged combination does not
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`modify Woodhill’s binary object identifiers in any way. (Goldberg Dep. 131-32
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`[Ex. 2015].) When asked during his deposition where Woodhill in view of Stefik
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`contained a comparison of a binary object identifier to a “plurality of values,” Dr.
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`Goldberg never referred to Stefik and admitted that Woodhill “doesn’t mention it
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`explicitly.” [Ex. 2015 at 75-76.]
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`Nor does the “restore” procedure in Woodhill from col. 17:18 to col. 18:9
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`disclose comparing a binary object identifier to a “plurality of values” for any
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`reason, and certainly not for determining whether access is “unauthorized.” The
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`restore procedure contains no unauthorization determination. (Woodhill, col.
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`17:18 to col. 18:9.) Indeed, the procedure does not even mention or use a binary
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`object identifier. To the contrary, Woodhill’s alleged authorization data is “access
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`control list data” in step 132 that occurs prior to binary object identifiers being
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`calculated at step 138. (Woodhill at Fig. 5A, col. 7:40-67.) Thus, Woodhill’s
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`binary object identifiers cannot possibly be used to determine unauthorization.
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`Finally, no binary object identifier is used when accessing a binary object 74
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`during a restore. (Woodhill at col. 11:65 to col. 12:7; col. 9:18-20; Dewar Decl., ¶
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`55 [Ex. 2020].) Woodhill explains that fields 62 and 72 of Binary Object
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`Identification Record 58 are used to identify and access binary objects (i.e., the
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`field for binary object identifier 74 is NOT used). Id. The offset field 72 provides
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`the precise location of the binary object within a file by counting bit offsets from
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`the start of the file. Unlike the ‘310 patent, Woodhill merely uses a binary object
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`identifier for the conventional purpose of, when backing up a file from a local
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`computer to the backup server, determining whether a file has been backed-up
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`previously – Woodhill describes no other uses for a binary object identifier. Thus,
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`no reason exists to compare a binary object identifier 74 to anything (much less to
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`a plurality of values for determination whether access is unauthorized) in
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`Woodhill’s restore procedure.
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`Aside from the fact that the binary object identifier is not used during the
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`restore procedure, the procedure makes no unauthorization determination.
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`(Woodhill at col. 17:18 to col. 18:9.) Nor is an unauthorization determination
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`inherent in the restore procedure.
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`Accordingly, Woodhill cannot cure the deficiencies in Stefik because
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`Woodhill fails to disclose comparing a binary object identifier to a plurality of
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`values for determining whether access to a binary object is unauthorized.
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`(c) Woodhill’s “contents identifiers” also do not meet the claims.
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`The Petition, on page 31, cites Woodhill at col. 17:50-55 and states that at
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`the “granule level . . . the Distributed Storage Manager program compares the
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`‘contents identifier’ of a granule against corresponding contents identifiers in order
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`to determine whether to restore a granule.” (Pet. 31.) Dr. Goldberg also cites this
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`portion of Woodhill in his deposition for a comparison. (Goldberg Dep. 75-76, 78
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`[Ex. 2015].) The cited portion of Woodhill actually reads as follows:
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`“the Distributed Storage Manager program 24, for each binary object,
`compares the ‘contents identifier’ of the next ‘granule’ in the work area
`of remote backup file server 12 against the corresponding ‘contents
`identifier’ of the next ‘granule’. . .” [emphasis added]
`Thus, this disclosure in Woodhill merely compares a contents identifier against a
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`single contents identifier – not to a “plurality” of contents identifiers. Moreover,
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`Apple admits that this comparison is “to determine whether to restore a granule”
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`(Pet. 31), and thus has nothing to do with determining whether access is
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`“unauthorized” as claimed.1 This one-to-one comparison is thus unrelated to
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`challenged claims, and cannot be the claimed comparison against a plurality of
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`values for determining unathorization. Moreover, this comparison does not
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`1 Likewise, Woodhill’s statement at col. 2:14-17 “comparing the current value of
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`the binary object identifier associated with a particular binary object to one or more
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`previous values of the binary object identifier associated with that particular binary
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`object” relates to a single binary object and is for purposes of copying during
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`backup. This too refers to comparisons against prior values of the same binary
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`object. It further does not relate to any unauthorization determination or access
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`process, and is unrelated to Woodhill’s granularization restore procedure. The
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`Petition does not cite or rely upon this portion of Woodhill.
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`involve a binary object identifier, which is the only alleged content-dependent
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`name or content-based identifier in the institution decision. For these reasons,
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`Woodhill’s one-to-one comparison of contents identifiers cannot cure the
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`deficiencies in the Petition and institution decision discussed above.
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`Furthermore, Apple in this respect improperly mixes alternative theories and
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`elements with respect to the claimed subject matter. Apple alleges that the
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`“content-dependent name” is Woodhill’s binary object identifier 74 and that the
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`“data item” is a binary object, but then improperly switches it to Woodhill’s
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`“contents identifier” (and thus that the “data item” is a granule) for a comparing
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`step. (Pet. 31-33.) This is legally improper. It is well established that in order to
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`meet a claim a reference must not only disclose the elements of the claim, but must
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`also disclose those elements “arranged or combined in the same way as in the
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`claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369-71 (Fed. Cir.
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`2008). One cannot do this by switching back and forth between different elements
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`in a reference to meet a claim. Id. at 1371. Apple’s allegations in this respect also
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`fail as a matter of law.
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`Moreover, both parties agree 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 NOT provided to the requesting computer in response to the
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`update request. (Goldberg Dep. 65-67, 80-82 [Ex. 2015]; Woodhill at col. 17:18-
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`67; and Dewar Decl., ¶¶ 48-50 [Ex. 2020].) Thus, even the alleged combination
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`cannot meet the challenged claims if the claimed data items are considered
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`granules and the identifiers are “contents identifiers.” (Dewar Decl., ¶¶ 48-50
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`[Ex. 2020].) The vacated FWD did not contest this, and instead stressed that the
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`ground in the institution decision relied upon a binary object identifier as the
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`claimed content-dependent name (or content-based identifier) and a binary object
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`as the claimed data item (or sequence of bits). (FWD 22; PO Response 30-32.)
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`Woodhill’s “contents identifiers” for the granules reconstituted at col. 17:48-50 are
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`only used for comparison in box 450 of Fig. 5i after the Fig. 5h reconstitution of
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`those granules, and are never included in any “request” regarding a data item.
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`(Dewar Decl., ¶ 51 [Ex. 2020].) The granules and contents identifiers cannot meet
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`the challenged claims, and Apple does not contend that it would have been obvious
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`to have modified Woodhill to provide contents identifiers in any “request.”
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`For at least the foregoing reasons, Apple has failed to meet its burden of
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`establishing that the prior art discloses all elements of claims 24, 32, 81, 82 and 86.
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`II. APPLE HAS FAILED TO MEET ITS BURDEN OF ESTABLISHING
`THAT A SKILLED ARTISAN WOULD HAVE BEEN MOTIVATED TO
`COMBINE WOODHILL AND STEFIK AS CLAIMED AND
`REASONABLY EXPECT SUCCESS.
`Apple not only failed to prove that the elements of the claims are found in
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`Woodhill and Stefik; Apple also failed to prove that one of skill in the art would
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`have been motivated to combine Woodhill and Stefik to meet claims 24, 32, 81, 82
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`and 86 and reasonably expect success. (E.g., PO Response 18-29, 36-41.) The
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`Petition provides no logical reason for any alleged combination resulting in a
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`comparison of a binary object identifier to a “plurality of values” for
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`“unauthorization”, provides no detailed explanation of any such combination, and
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`provides no technical explanation of how any such combination in this complicated
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`technical field was supposed to work. Moreover, Apple never explained why one
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`would have wanted to compare content-based names against a plurality of values
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`for determining unauthorization – given that neither Stefik nor Woodhill does this.
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`Conclusory allegations are insufficient. The Graham factors have not been met.
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`Apple argued on appeal that “it would have been obvious to combine the
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`backup and restore system disclosed in Woodhill with the repository of Stefik to
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`add an authorization layer to prevent unauthorized users from accessing a different
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`user’s back up files.” See also Ex. 1007, ¶ 84.
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`However, Woodhill column 17 – which Apple cites – is fatal to Apple’s
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`argument. As Woodhill explains, the column 17 procedure is used “when a current
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`version of a file . . . must be restored to a previous version of that file.” (Woodhill
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`at col. 17:18-21) (emphasis added). And the procedure “begins” when “program
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`24 obtains from the user the identities of the current and previous versions of the
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`file . . . which needs to be restored.” (Woodhill at col. 17:30-32.) The
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`granularization restore procedure is thus expressly designed for one user, who
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`necessarily already has access to the current and previous versions of that one file.
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`There is no possibility that an unauthorized user could access a different user’s
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`backup files during the granularization restore procedure. It is undisputed that a
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`user never tries to access a different user’s file in the restore procedure. (Dewar
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`Decl. ¶36-37[Ex. 2020]; PO’s Resp. 19-22.) Apple’s allegation is nonsensical.
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`Moreover, even providing Stefik’s system in Woodhill would not meet the
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`claims because, as explained above, it is undisputed that Stefik’s unique identifier
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`701 is not used for determining unauthorization and Stefik never compares any
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`identifier to a plurality of values for determining unauthorization. Stefik teaches
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`an acceptable system for controlling distribution of files, which utilizes “usage
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`rights” but does NOT utilize unique identifiers 701 or compare to a plurality of
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`values. (Dewar Decl., ¶ 34 [Ex. 2020]; Goldberg Dep. 147-151 [Ex. 2015].)
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`Indeed, Stefik teaches away from the claimed invention because Stefik does
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`NOT use unique identifiers for determining authorization. (Ex. 1013, col. 9:48-49;
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`and Fig. 7; and Dewar Decl., ¶ 40 [Ex. 2020].) Instead, Stefik utilizes “usage
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`rights” for authorization, which are not calculated based on file content and are
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`unrelated to unique identifiers 701. (Dewar Decl., ¶ 40 [Ex. 2020].) Stefik would
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`have led a skilled artisan away from the path taken in the claims because Stefik
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`does NOT utilize unique identifiers 701 for determining whether access to
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`anything is unauthorized and does NOT use them as any part of Stefik’s “usage
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`rights.” (Dewar Decl., ¶ 41 [Ex. 2020].) Instead, Stefik uses unique identifiers
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`701 for other purposes. If a skilled artisan was forced to review Stefik and come
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`up with a system to control distribution/access in Woodhill, she would have
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`followed Stefik’s teachings and utilized Stefik’s usage rights (this would not meet
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`the claims), but not unique content-based identifiers, just like Stefik did. Id.
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`Still further, Woodhill’s binary object identifiers 74 and contents identifiers,
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`and Stefik’s unique identifiers 701, would NOT be used for their intended purpose
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`in any alleged combination. (Dewar Decl., ¶ 42 [Ex. 2020].) They would not
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`perform the same functions that they are known to perform in Woodhill and Stefik.
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`Id. This too is strong evidence of nonobviousness. Id. While both Woodhill and
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`Stefik disclose and utilize alleged unique identifiers for various purposes, neither
`
`uses such identifiers to control distribution of files or determine whether access to
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`data is unauthorized. (Dewar Decl., ¶ 42 [Ex. 2020].)
`
`III. CONCLUSION
`For the foregoing reasons, it is respectfully requested that the Board confirm
`
`patentability of claims 24, 32, 81, 82 and 86 of the ‘310 patent, just as the
`
`Examiner allowed these claims over this prior art during the original prosecution.
`
`
`
`Respectfully submitted,
`
`NIXON & VANDERHYE P.C.
`
`
`By: /Joseph A. Rhoa/
`Joseph A. Rhoa
`Reg. No. 37,515
`Updeep (Mickey) S. Gill
`Reg. No. 37,334
`Counsel for Patent Owner PersonalWeb
`
`15
`
`2020057
`
`
`
`Patent Owner’s Brief Post-Remand (U.S. Pat. No. 7,802,310)
`
`
`
`
`
`IPR 2013-00596
`
`
`CERTIFICATE OF SERVICE
`I hereby certify service of the foregoing Patent Owner’s Brief Following
`
`Remand from the United States Court of Appeals for the Federal Circuit to the
`
`following lead counsel for petitioner on July 12, 2017 via email (pursuant to
`
`agreement between the parties):
`
`David Cornwell
`Sterne, Kessler, Goldstein & Fox PLLC
`1100 New York Ave., NW
`Washington, D.C. 20005
`(davidc-PTAB@skgf.com & PTAB@skgf.com)
`
`
`
`
`By: /Joseph A. Rhoa/
`Joseph A. Rhoa
`Reg. No. 37,515
`
`
`
`16
`
`2020057
`
`
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