UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.
`
`Petitioner
`
`V
`
`PERSONALWEB TECHNOLOGIES, LLC
`
`and LEVEL 3 COMMUNICATIONS, LLC
`Patent Owners
`
`
`
`CASE IPR: Unassigned
`
`
`PETITION FOR INTER PARTES REVIEW OF
`
`US. PATENT NO. 7,802,310
`
`UNDER 35 U.S.C. §§ 311—319 and 37 C.F.R. §§ 42.1-.80, 42.100-.123
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`US. Patent and Trademark Office
`
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`

`

`TABLE OF CONTENTS
`
`II.
`
`III.
`
`IV.
`
`1NTRODUCTION .......................................................................................... 1
`
`OVERVIEW OF THE CHALLENGE ........................................................... 1
`
`GROUNDS FOR STANDING (37 C.F.R. § 42.104(a)) AND
`PROCEDURAL STATEMENTS ................................................................... 2
`
`MANDATORY NOTICES (37 CPR. § 42.8(a)(1)) ..................................... 2
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED AND THE
`REASONS THEREFOR (37 C.F.R. § 42.22(a)) ............................................ 4
`
`VI.
`
`OVERVIEW OF THE ’3 10 PATENT ........................................................... 5
`
`VII.
`
`CLAIM CONSTRUCTION ............................................................................ 7
`
`VIII.
`
`PERSON OF ORDINARY SKILL IN THE ART AND STATE OF THE
`
`ART ............................................................................................................... 10
`
`IX.
`
`IDENTIFICATION OF CHALLENGE (37 C.F.R. § 42.104(b)) ................ 10
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`Ground 1: Claims 24, 32, 70, 81, 82, and 86 Are Anticipated
`by Browne ........................................................................................... 13
`
`Ground 2: Claims 24, 32, 70, 81, 82, and 86 Would Have
`Been Obvious to a POSA Over Browne ............................................ 24
`
`Ground 3: Claims 24, 32, 70, 81, 82, and 86 Would Have
`Been Obvious to a POSA Over Browne in view of Stefik ................ 25
`
`Ground 4: Claims 24, 32, 70, 81, 82, and 86 Are Anticipated
`by Woodhill ........................................................................................ 28
`
`Ground 5: Claims 24, 32, 70, 81, 82, and 86 Would Have
`Been Obvious to a POSA Over Woodhill .......................................... 40
`
`Ground 6: Claims 24, 32, 70, 81, 82, and 86 Would Have
`Been Obvious to a POSA Over Woodhill in view of Stefik .............. 41
`
`Ground 7: Claims 24, 32, 70, 81, 82, and 86 Are Anticipated
`by Langer ............................................................................................ 43
`
`H.
`
`Ground 8: Claims 24, 32, 70, 81, 82, and 86 Would Have
`
`Been Obvious to a POSA Over Langer in view of Stefik .................. 51
`
`I.
`
`Ground 9: Claims 24, 32, 70, 81, 82, and 86 Are Anticipated
`by the Farber Publication.................................................................... 53
`
`ii
`
`

`

`X.
`
`THE PROPOSED GROUNDS ARE NOT CUMULATIVE OF ONE
`
`ANOTHER ................................................................................................... 58
`
`XI. OBJECTIVE INDICIA OF NONOBVIOUSNESS ..................................... 59
`
`XII. CONCLUSION ............................................................................................. 60
`
`CERTIFICATION OF SERVICE (37 CPR. §§ 42.6(e), 42.105(a)) ....................... i
`
`iii
`
`

`

`TABLE OF AUTHORITIES
`
`Cases
`
`Allac, Inc. v. Int ’1 Trade Comm ’n,
`
`342 F.3d 1361 (Fed. Cir. 2003) ............................................................................. 7
`
`Bicon, Inc. v. Straumann Ca,
`
`441 F.3d 945 (Fed. Cir. 2006) ............................................................................. 56
`
`In re Trans Texas Holdings Corp,
`498 F.3d 1290 (Fed. Cir. 2007) ............................................................................. 8
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ............................................................................. 7
`
`Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC,
`683 F.3d 1356 (Fed. Cir. 2012) ........................................................................... 60
`
`Statutes
`
`35 U.S.C. § 102(a) ................................................................................................... 15
`
`35 U.S.C. § 102(b) ................................................................................ 14, 26, 29, 54
`
`35 U.S.C. § 102(e) ............................................................................................. 26, 29
`
`35 U.S.C. § 103 ....................................................................................................... 55
`
`35 U.S.C. § 120 ....................................................................................................... 55
`
`Rules
`
`MPEP 201.07 .......................................................................................................... 55
`
`iv
`
`

`

`I.
`
`INTRODUCTION
`
`Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)—(2), APPLE INC. (“Apple”)
`
`seeks Inter Partes Review (“IPR”) and cancellation of claims 24, 32, 70, 81, 82
`
`and 86 of US. Patent No. 7,802,310 to Farber er al. ( “’310 patent”, APE 1001),
`
`which is believed to be owned by PersonalWeb Technologies, LLC and Level 3
`
`Communications, LLC (“Patent Owners”).
`
`II.
`
`OVERVIEW OF THE CHALLENGE
`
`The challenged claims of the ’310 patent relate generally to the use of
`
`content—based identifiers, determined by applying a mathematical function to the
`
`contents of a data item, to selectively allow devices in a network to access the data
`
`item. But the concept of using a mathematical function to create an identifier for a
`
`data item based on its contents item predates the ’310 patent by decades. Indeed,
`
`many prior art references specifically disclose and use content-based identifiers to
`
`selectively allow access to data items exactly as described and claimed in the ’3 10
`
`patent.
`
`For the reasons discussed below, the challenged claims of the ’310 patent
`
`should never have issued because the prior art cited herein anticipates or rendered
`
`them obvious. Accordingly, because Apple is reasonably likely to prevail
`
`in
`
`showing unpatentability, the Petition should be granted and trial instituted.
`
`

`

`111. GROUNDS FOR STA; DING (37 C.F.R. § 42.104(a)) AND
`PROCEDURAL STATEMENTS
`
`Apple certifies pursuant to Rule 42.104(a) that the ’310 patent is available
`
`for IPR, and that Apple is not barred or estopped from requesting IPR of any claim
`
`of the ’310 patent on the grounds identified herein. This Petition is filed in
`
`accordance with 37 CFR § 42.106(a). A Power of Attorney and Exhibit List
`
`pursuant to § 42.10(b) and § 42.63(e), respectively, are filed herewith. The
`
`required fee has paid through online credit card payment. The Office is authorized
`
`to charge fee deficiencies and credit overpayments tO Deposit Acct. NO. 19-0036
`
`(Customer ID NO. 63,975).
`
`IV. MANDATORY NOTICES (37 CPR. § 42.8(a)(1))
`
`A.
`
`Real Party-In-Interest (37 C.F.R. § 42.8(b)(1))
`
`The real party-in-interest is APPLE INC.
`
`B.
`
`Notice of Related Matters (37 CPR. § 42.3(b)(2))
`
`1.
`
`Judicial Matters
`
`The ’310 patent
`
`is part Of an extensive patent
`
`family consisting of
`
`continuation and divisional applications, as illustrated in APL 1002. Several
`
`members Of this patent family,
`
`including the ’310 patent, are currently being
`
`asserted in the litigation styled Personal Web Tech. LLC and Level 3 C0mmc’ns.,
`
`LLC v. Apple Inc. (NO. 6:12—cv-00660-LED) (ED. Tex.) (“Lawsuit”), served on
`
`September 19, 2012. (APL 1003.) There are a number of other litigations pending
`
`[\J
`
`

`

`in the Eastern District of Texas and the Northern District of California involving
`
`the ’310 patent and other members of the patent family.1
`
`2.
`
`Administrative Matters
`
`Apple has not sought IPR or other administrative review of the ’3 10 patent
`
`or other members of its patent family outside of the present Petition. Apple is,
`
`however, aware of ongoing IPRs filed by other parties for related US. Patents Nos.
`
`5,978,791, 6,415,280, 7,945,539, 7,945,544, 7,949,662, and 8,001,096.
`
`2 For
`
`administrative efficiency, Apple requests that the present IPR be assigned to the
`
`same Board panel as is handling these related patent IPRs.
`
`Apple is also aware of several continuing applications related to this family
`
`that remain pending. (See APL 1002.) Because they share a common disclosure
`
`with the ’310 patent,
`
`these applications could be used as a basis to present
`
`patentably indistinct claims that may issue prior to the determination of the Board
`
`
`
`1 The Texas litigations are Civil Action Nos. 6:1 l-cv-655; 6:11-cv-658;
`
`6:11-cv-663; and 6:11-cv-683. The following actions were originally filed in the
`
`Eastern District of Texas but were recently transferred to California: Civil Action
`
`Nos. 6:11—cv-656; 6:11—cv-657; 6:11-cv—660; and 6:11—cv-662.
`
`2 The related patents IPRs are: IPR2013-00082; IPR2013—00083; IPR2013—
`
`00084; IPR2013-00085; IPR2013-00086; IPR2013—00087; and IPR2013—00319.
`
`

`

`in this IPR. The issuance of such indistinct claims is inconsistent with Rule 37
`
`CPR. 42.73(d)(ii) and would be an “end-around” of the reasonable number of
`
`substitute claims permitted in an IPR proceeding. Apple respectfully requests that
`
`the Board suspend from further prosecution any applications in this related family.
`
`C.
`
`Designation of Counsel (37 C.F.R. § 42.8(b)(3))
`
`
`Lead Counsel
`Back-Up Counsel
`
`
`David K.S. Cornwell (Reg. No. 31,944) Mark W. Rygiel (Reg. No. 45,871)
`STERNE, KESSLER, GOLDSTEIN
`STERNE, KESSLER, GOLDSTEIN
`& FOX P.L.L.C.
`& FOX P.L.L.C.
`
`1 100 New York Avenue, NW
`1100 New York Avenue, NW
`Washington, DC 20005
`Washington, DC 20005
`202.772.8510 (telephone)
`202.772.8580 (telephone)
`202.371.2540 (facsimile)
`202.371.2540 (facsimile)
`
`davidc-PTABQstgfcom mflgiel-PTABQQSkgfcom
`
`
`
`D.
`
`Notice of Service Information (37 C.F.R. § 42.8(b)(4))
`
`Please direct all correspondence to lead counsel at the above address. Apple
`
`consents
`
`to
`
`email
`
`service
`
`at:
`
`davidc—PTAng;skgf.com and mrygiel—
`
`PTAB@skgf.com.
`
`V.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED AND THE
`
`REASONS THEREFOR (37 C.F.R. § 42.22(a))
`
`Apple requests IPR and cancellation of claims 24, 32, 70, 81, 82, and 86.
`
`Apple’s full statement of the reasons for the relief requested is set forth in Section
`
`IX below.
`
`

`

`VI. OVERVIEW OF THE ’310 PATEh ;
`
`A.
`
`Content-Based Identifiers
`
`The ”310 patent is directed to data storage systems that use content-based
`
`identifiers3 for data items that are determined by applying mathematical functions
`
`to the contents of the data items. (’310 patent, APL 1001, Abstract and 37:44—
`
`46242.) The ’310 patent systems use these content—based identifiers to perform
`
`basic file management functions such as eliminating unnecessary duplicate copies
`
`of computer files or other data items—an admittedly old problem. (’310 patent,
`
`APL 1001, 3:4—15.)
`
`According to the patent, prior art systems identified data items based on their
`
`location or address within the data processing system. (’310 patent, APL 1001,
`
`1:56-60.) The ’310 patent asserts that this prior art practice of identifying a data
`
`item by its context or pathname resulted in certain shortcomings. (’310 patent,
`
`3 Many different terms in the ’310 patent specification and challenged claims
`
`are used to refer to the same basic concept of a content—based identifier. For the
`
`purposes of this Petition, the term “content-based identifier” is used to generally
`
`refer to an identifier for a data item that is generated by processing all of the data
`
`in the data item, and only the data in the data item, through an algorithm that
`
`makes the identifier substantially unique. (See also Section VII below.)
`
`

`

`APL 1001, 2:41-47.)
`
`The ”310 patent purports to address these shortcomings by using content-
`
`based identifiers. Disclosed embodiments use either of the well-known MDS or
`
`SHA message digest functions4 to calculate a content-based identifier from the
`
`contents of the data item. (’310 patent, APL 1001, 12:20-13:67.) The system first
`
`computes the 16—byte (i.e., 128-bit) message digest of the data item and then
`
`appends the size of the data item to produce a 160-bit content—based identifier.
`
`(’3 10 patent, APL 1001, F ig. 10A and 13:30-42.) The content—based identifier of a
`
`file can be used to identify a file by contents, to confirm that a file matches its
`
`original contents, or to compare two files. (’310 patent, APL 1001, 14:50-53.)
`
`In the some embodiments, content—based identifiers are used to “augment”
`
`standard file management functions of an existing operating system. (’310 patent,
`
`APL 1001, 6:25-32.) For example, a local directory extension table is indexed by a
`
`pathname or contextual name of a file and also includes content-based identifiers
`
`for most files. (’310 patent, APL 1001, 8:27-34.) A true file registry lists content—
`
`based identifiers, and stores location, dependency, and migration information about
`
`
`
`4 A message digest function can be used to transform a piece of data into a
`
`much shorter form. (See, e.g., D. Banisar et al., The Third CSPR Cryptography and
`
`Privacy Conference at 509 (p. 14 of PDF) (1993), APL 1004.)
`
`

`

`them. (’3 10 patent, APL 1001, 8:35—42.) This information can be used to determine
`
`a list of the locations, such as file servers, Where the corresponding file is stored.
`
`(’3 10 patent, APL 1001, 34:4-12.)
`
`B.
`
`Selective Access to Data
`
`The ’310 patent also discloses the use of content-based identifiers to
`
`selectively access a remotely stored file by sending a request true file message to a
`
`remote processor and waiting for a response. (’3 10 patent, APL 1001, 15:35-48.) If
`
`a negative response is received or no response is received after a timeout period,
`
`this mechanism fails. If a positive response is received, the true name is entered
`
`and returned in the true file registry. (’3 10 patent, APL 1001, 15:35-48.) Next, the
`
`client device broadcasts to the selected sources a request to locate the file with the
`
`given true name using the locate true file remote mechanism. (’310 patent, APL
`
`1001, 15:60—67.) When found, the file can then be accessed.
`
`VII. CLAIM CONSTRUCTION
`
`Under 37 C.F.R. § 42.100(b), the challenged claims must be given their
`
`broadest reasonable interpretations in light of the patent specification. This
`
`standard requires that claim terms be given their ordinary and customary meaning,
`
`unless such meaning is inconsistent With the specification. Phillips v. AWH Corp,
`
`415 F.3d 1303, 1312—1313 (Fed. Cir. 2005) (en bane); Alloc, Inc. v. Int’l Trade
`
`Comm ’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003).
`
`

`

`A.
`
`“Digital Identifier”
`
`The distréct court in the above—referenced Lawsuit recently issued a claim
`
`construction order construing several terms found in one or more of the claims of
`
`the patents in suit, including the ’310 patent. (APL 1005.) Although that court’s
`
`claim construction order is not binding on the Board (see In re Trans Texas
`
`Holdings Corp, 498 F.3d 1290, 1297 (Fed. Cir. 2007)), Apple submits that the
`
`constructions of the disputed “identifier” terms adopted in the Lawsuit are the
`
`broadest reasonable constructions of those terms. In particular, Apple submits that
`
`the term “digital identifier” which appears in challenged claim 86 but not in the
`
`’310 patent specification, was properly construed as synonymous with the only
`
`“identifier” terms used in the specification— “substantially unique identifier,”
`
`“true name,” and “data identifier”—to mean “an identity for a data item generated
`
`by processing all of the data in the data item, and only the data in the data item,
`
`through an algorithm that makes the identifier substantially unique.”5 (APL 1006.)
`
`B.
`
`“Content—fiependent Name” and “Content-Based Identifier”
`
`The term “content-dependent name” appears in challenged claims 24 and 32,
`
`5 Although the Patent Owners argued for even broader constructions of some
`
`of the disputed “identifier” terms in the Lawsuit, Apple submits that such
`
`constructions were unreasonably broad.
`
`

`

`and the term “content-based identifier” appears in challenged claims 70 and 81.
`
`Like “digital identifier,” these terms do not appear anywhere in the specification of
`
`the ’310 patent. Unlike “digital identifier,” these terms were not construed by the
`
`court in the above-referenced Lawsuit. Apple submits, however, that they should
`
`also be construed to be synonymous with the only “identifier” terms disclosed in
`
`the specification. Accordingly, Apple submits that
`
`the broadest
`
`reasonable
`
`interpretation of “content-dependent name” and “content-based identifier” is “an
`
`identity for a data item generated by processing all of the data in the data item, and
`
`only the data in the data item, through an algorithm that makes the identifier
`
`substantially unique.”
`
`C.
`
`“Selectively Permitting” and “Selectively Allow”
`
`The term “selectively permitting” appears in challenged claim 70, and the
`
`term “selectively allow” appears in challenged claims 81 and 86. However, they do
`
`not appear anywhere in the specification of the ’3 10 patent and were not construed
`
`by the court in the above—referenced Lawsuit. Apple submits that the broadest
`
`reasonable interpretation of each term is “permitting based on whether a condition
`
`is met.” In the context of the claims, these terms are merely intended to specify
`
`when a claimed action is permitted to occur, based on a condition explicitly recited
`
`in the claims themselves.
`
`

`

`VIII. PERSON 0F ORDINARY SKILL IN THE ART AND STATE OF THE
`
`ART
`
`A person of ordinary skill in the art (“POSA”) is presumed to be aware of all
`
`pertinent art, thinks along conventional wisdom in the art, and is a person of
`
`ordinary creativity. With respect to the ’310 patent, a POSA would have had
`
`knowledge of prior data processing and computer network systems, as of 1995,
`
`that (i) used mathematical functions to create an identifier for a data item based on
`
`the content of the data item itself and (ii) provided access control for a data item
`
`based on its contents. A POSA as of 1995 would typically have (i) an MS. degree
`
`in computer science (or a related field) with at least 2—3 years of experience
`
`working with data processing, or (ii) a BS. in computer science (or a related field)
`
`with significant practical experience (4 or more years) working with data
`
`processing.
`
`Prior data processing systems existed that used identifiers based on the
`
`content of a data item itself in order to identify, locate, and selectively permit
`
`access to the data item. In fact, these techniques were old and widely used. As
`
`evidenced by the references described herein, as of April 11, 1995 (the earliest
`
`possible priority date of the ’3 10 patent) the subject matter recited in claims 24, 32,
`
`70, 81, 82, and 86 was well known to a POSA.
`
`IX.
`
`IDENTIFICATION OF CHALLENGE (37 C.F.R. § 42.]04(b))
`
`IPR of the challenged claims of the ’3 10 patent is requested on the grounds
`
`10
`
`

`

`for unpatentability listed in the table below. Per 37 C.F.R. § 42.6(d), copies of the
`
`references
`
`are
`
`filed herewith.
`
`In support of the proposed grounds
`
`for
`
`unpatentability, this Petition is accompanied by a declaration of technical expert
`
`Dr. Benjamin F. Goldberg (APL 1007), which explains what the prior art would
`
`have conveyed to a POSA.
`
`
`- Ground 35 U.S.C.
`
`Index of Reference(s)
`
`’310 Patent Claims
`
`
`
`
`
`
`
`1
`§102(a)
`Browne
`24, 32, 70, 81, 82, and 86
`
`2
`§103
`Browne
`I 24, 32, 70, 81, 82, and 86
`
`
`3
`§103
`Browne + Stefik
`24, 32, 70, 81, 82, and 86
`
`
`
`4
`§102(e)
`Woodhill
`24, 32, 70, 81, 82, and 86
`5
`§103
`Woodhill
`_ _ 24,32, 70, 81, 82, and 86
`
`
`6
`
`7
`
`8
`
`9
`
`§103
`
`§102(b)
`
`§103
`
`I §102(b)
`
`Woodhill + Stefik
`
`24, 32, 70, 81, 82, and 86
`
`Langer
`
`24, 32, 70, 81, 82, and 86
`
`Langer + Stefik
`
`Farber
`
`24, 32, 70, 81, 82, and 86
`
`24, 32, 70, 81, 82, and 86
`
`Claims 24, 70, 81, and 86 are independent claims that recite substantially
`
`similar limitations. Claim charts are only provided in the following subsections for
`
`representative claim 70 because of the symmetry of these claims, as illustrated in
`
`the following table which highlights some of the most relevant similar elements of
`
`claims 24, 70, 81, and 86:
`
`ll
`
`

`

`
`
`Comparison of Independent Claims 24, 70, 81, and 36
`
`24. A computer-implemented method implemented at least in part by hardware
`comprising one or more processors, the method comprising: (a) using a processor,
`receiving at a first computer from a second computer, a request regarding a
`particular data item, said request including at least a content-dependent name for
`the particular data item, the content-dependent name being based, at least in
`part, on at least a function of the data in the particular data item, wherein the
`data used by the function to determine the content—dependent name comprises
`at least some of the contents of the particular data item, wherein the function
`that was used comprises a message digest function or a hash function, and
`wherein two identical data items will have the same content-dependent name;
`and (b) in response to said request: (i) causing the content-dependent name of the
`particular data item to be compared to a plurality of values; (ii) hardware in
`combination with software determiieing whether or not access to the particular
`data item is unauthorized based on whether the content-dependent name of
`the particular data item correspéénds te at least one of said plurality of values,
`and (iii) based on said determining in step (ii), not allowing the particular data
`item to be provided to or accessed by the second computer if it is determined that
`access to the particular data item is not authorized.
`-
`
`
`—| 70. A computer-implemented method operable in a system which includes a
`
`network of computers, the system implemented at least in part by hardware
`including at least one processor, the method comprising the steps of: in response to
`a request at a first computer, from another computer, said request comprising at
`least a content-based identifier for a particular data item, the content-based
`identifier for the particular data item being based at least in part on a given
`function of at least some data which comprise the contents of the particular
`data item, wherein the given function comprises a message digest or a hash
`function, and wherein two identical data items will have the same content-
`based identifier: (A) hardware in combination with software, determining
`whether the content-based identifier for the particular data item corresponds
`to an entry in a database comprising a plurality of content-based identifiers;
`and (B) based at least in part on said determining in step (A), selectively
`permitting the particular data item to be accessed at or by one or more
`computers in the network of computers, said one or more computers being distinct
`from said first computer.
`
`
`12
`
`

`

`
`
`Comparison of Independent Claims 24, 70, 81, and 86
`
`
`
`81. A device operable in a network of computers, the device comprising hardware
`including at least one processor and memory, to: (a) receive, at said device, from
`another device in the network, a content-based identifier for a particular
`sequence of hits, the content-based identifier being based at least in part on a
`function of at least some of the particular sequence of bits, wherein the
`function comprises a message digest function or a hash functifin, and wherein
`two identical sequences of bits will have the same content-based identifier; and
`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 to or accessed by other devices depending on whether or not said
`content—dependent identifier corresponds to one of the plurality of values.
`
`
`
`86. A device operable in a network of computers, the device comprising hardware,
`including at least one processor and memory, to: (a) receive at said device, from
`another device in the network, a digital identifier for a particular sequence of
`bits, the digital identifier being based, at least in part, on a given function of at
`least some of the bits in the particular sequence of bits, wherein the given
`function comprises a message digest function or a hash function, and wherein
`two identical sequences of bits will have the same digital identifier; and (b)
`selectively aElow the particular sequence of bits to be provided to or accessed
`by other devices in the system, based at least in part on whether or not the digital
`identifier for the particular sequence of bits corresponds to a value in a
`plurality of values, each of the plurality of values being based, at least in part, on
`Lthe given function of at least some of the bits in a corresponding sequence of bits.
`
`A.
`
`Ground E: Claims 24, 32, 70, 81, 82, and 36 Are Anticipated by
`Browne
`
`An article by S. Browne er al., titled “Location-Independent Naming for
`
`Virtual Distributed Software Repositories,” was published in University of
`
`Tennessee Technical Report CS-95—278 in February of 1995 (“Browne”). (APL
`
`1009.) As discussed under Proposed Ground 9 infra, the ’3 10 patent is not entitled
`
`to its claimed priority date of April 11, 1995. Specifically, the ’310 patent fails to
`
`13
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`

`

`provide a written description of the differences, if any, between the species
`
`“message digest” and “hash function” as alternatively required by each of the
`
`challenged claims.
`
`Additionally, the ’310 patent fails to provide a written description of a
`
`content-based identifier (or content-dependent name or digital identifier)6 that is
`
`based “at least in part” on a given function of “at least some” of the data, contents,
`
`or bits of a data item or sequence of bits.7 Any description of the content-based
`
`identifier in the ’310 patent describes the content-based identifier as depending on
`
`“all of the data in the data items and only the data in the data items.” (see, e. g.,
`
`’310 patent, APL 1001, 1:44-48; 3:54-55; and 31:42—44.) Support for a content-
`
`6 The references in the ’3 10 specification to a “True Name” or “substantially
`
`unique identifier” are just different names for the “identity of the data item” (’310
`
`patent, APL 1001, 3:54-55) as represented by a content-based identifier, content-
`
`dependent name, or digital identifier recited in the claims.
`
`7 In the above—referenced Lawsuit, Patent Owners contend that the term
`
`“digital
`
`identifier” should be construed more broadly than a “True Name” to
`
`encompass identifiers based “at least in part” on a given function of “at least some”
`
`of the data. As noted in section VII above, Apple submits that such constructions
`
`are unreasonably broad.
`
`14
`
`

`

`based identifier based on anything less than all of the data and only the data in the
`
`data items does not appear in the priority document. Because the ’310 patent is
`
`not entitled to its priority date, and because Browne was published more than one
`
`year before the filing date of the ’310 patent, Browne qualifies as prior art under 35
`
`U.S.C. § 102(b).
`
`To the extent the ’310 patent is deemed to have priority to April 11, 1995,
`
`Browne qualifies as prior art under 35 U.S.C. § 102(a) as a “printed publication”
`
`because it was published prior to the earliest possible priority date of the ’310
`
`patent.8 Apple submits herewith the factual declaration of Mr. Keith Moore, a
`
`computer networking expert,
`
`to remove any doubt that Browne is a “printed
`
`publication,” within the meaning of 35 U.S.C. § 102(a). (APL 1010.)
`
`8 Apple has also attached as exhibits two earlier versions of this publication.
`
`(APL 1011 and APL 1017.) As Dr. Goldberg confirms in his Declaration, the
`
`references are substantially the same as the February 1995 Browne publication
`
`with respect to the relevant disclosures. (Goldberg, APL 1007, ‘[ 28.) The February
`
`1995 Browne publication was chosen for analysis here because it includes
`
`illustrations that facilitate explanation of the invalidity of the challenged claims. 1f
`
`the Patent Owners allege an earlier priority date of the challenged claims, Apple
`
`reserves the right to rely on the earlier publications to establish invalidity.
`
`15
`
`

`

`Browne discloses a system that uses Location Independent File Names
`
`(LIFNs) to identify files on a network. A LIFN consists of a publisher identifier
`
`and a “signature” for the file, which is determined by computing the message
`
`digest signature of the contents of the file. (Browne, APL 1009, p. 6.) In the
`
`disclosed prototype system, LIFN signatures were computed as “the ascii form of
`
`the MDS signature of the file” —z'.e., exactly as disclosed in the specification of the
`
`’310 patent. (Browne, APL 1009, p. 6.; compare ’310 patent, APL 1001, 12:42-
`
`46.) Just as in the ’3 10 patent, an MDS signature is determined based on all of and
`
`only the contents of the file.
`
`Additionally, Browne discloses the use of LIFNs to determine whether data
`
`files are present at various locations within a network, and to identify and access
`
`files at various locations within the network. (Browne, APL 1009, p. 4.) For
`
`example, Browne discloses the use of a LIFN to request a file location from a
`
`LIFN server, which provides the requesting user with a URL that can be used to
`
`obtain the file from the file server. (Browne, APL 1009, p. 5.)
`
`As shown in the claim chart and explained below, a POSA reading Browne
`
`would have understood that Browne discloses the use of MDS to determine a
`
`content-based identifier for a data item (e.g., a file), and selectively permitting
`
`access to the data item (e.g., to an authorized user) based on a comparison between
`
`the content-based identifier and another value. (Goldberg, APL 1007,
`
`11 39.)
`
`16
`
`

`

`Accordingly, Browne discloses each and every element of claims 24, 32, 70, 81,
`
`82, and 86, arranged as claimed, so as to enable a POSA to make and use the
`
`claimed concepts without undue experimentation in light of general knowledge
`
`available in the art. (Goldberg, APL 1007,
`
`|| 64.)
`
`Claims 24, 70, 81, and 86 are independent claims that recite limitations that
`
`are substantially similar to one another. Dependent claim 32 depends from claim
`
`24 and additionally requires that the data used by the function to determine the
`
`content-dependent name comprises all of the contents of the particular data item.
`
`Dependent claim 82 depends from claim 81 and additionally requires only that the
`
`data item be, for example, a “file.” While claim charts are only provided below for
`
`representative claim 70, it can be seen that Browne discloses each of the elements
`
`of claims 24, 32, 70, 81, 82, and 86. (Goldberg, APL 1007, 11 40.)
`
`
`
`
`’310 Pat. Claim 70 Disclosure of Browne I
`
`|_
`70. A computer-implemented method
`“The LlFN—to-location mapping service
`operable in a system which includes a
`is provided by a network of LIFN
`network of computers, the system
`servers, collectively called the LIFN
`implemented at least in part by
`database. These servers process queries
`hardware including at least one
`for locations of LIFNS.” (Browne, APL
`processor, the method comprising the
`1009, pp. 4-5.)
`steps of:
`
`
`
`
`Browne uses an LIFN to uniquely identify a file. (Browne, APL 1009, p. 4.)
`
`The LIFN is formed by concatenating a registered naming authority identifier with
`
`a unique string—referred to as a file “signature”—that is determined by computing
`
`the MD5 signature of the contents of the file. (Browne, APL 1009, pp. 4, 6.)
`
`17
`
`

`

`
`
`Disclosure of Browne
`’310 Pat. Claim 70
`
`“Fixed contents also make it possible to compute a file
`digest that may be cryptographically signed by the
`author of the resource, allowing verification of the
`integrity of a retrieved file.
`Because both types of
`name are needed, we have implemented both. The type
`of name that refers to fixed byte contents is called a
`Location Independent File Name, or LIFN. Once a
`LIFN has been assigned to a particular sequence of
`bytes, that binding may not be changed.” (Browne,
`APL 1009, p. 3.)
`
`“The LIFN and URN name spaces are subdivided
`among several publishers, also called naming
`authorities, who are responsible for ensuring the
`uniqueness of names assigned within their portions of
`the name spaces. A name is formed by concatenating
`the registered naming authority identifier with a
`unique string assigned by the naming authority.”
`(Browne, APL 1009, p. 4.)
`
`“This fingerprint is a 128—bit quantity resulting from
`applying the MDS function to the contents of the file.
`The function is designed to make it computationally
`infeasible to find a different sequence of bytes that
`produces the same fingerprint [10]. To enable
`authentication, the entire description may be
`cryptographically signed, as discussed in Section 5.
`Portions of the catalog record may be exported to
`resource discovery servers, such as a Harvest