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<
`
`>l<
`
`*
`
`>k
`
`>l<
`
`>2<
`
`>l<
`
`*
`
`>i<
`
`December 26, 2013
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`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<
`
`>l<
`
`*
`
`>k
`
`>l<
`
`>2<
`
`>l<
`
`*
`
`>i<
`
`December 26, 2013
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`2020057
`
`
`
`Patent Owner’s Preliminary Response (US. Pat. No. 7,802,310)
`
`IPR 2013-00596
`
`TABLE OF CONTENTS
`
`Page
`
`II.
`
`III.
`
`IV.
`
`BACKGROUND ............................................................................................. I
`
`ALLEGED GROUNDS .................................................................................. I
`
`CLAIM CONSTRUCTIONS .......................................................................... 3
`
`THE EXAMINER CONSIDERED AND ALLOWED THE
`
`CHALLENGED CLAIMS OVER ALL ART RELIED UPON BY
`
`PETITIONER DURING ORIGINAL PROSECUTION OF THE ‘3 10
`
`PATENT .......................................................................................................... 7
`
`BROWNE AND LANGER ARE NOT “PRINTED
`
`PUBLICATIONS” ........................................................................................ IO
`
`VI.
`
`LAW REGARDING ANTICIPATION ........................................................ 14
`
`VII.
`
`GROUNDS 1—3 BASED ON BROWNE SHOULD NOT BE
`
`INSTITUTED ............................................................................................... 14
`
`VIII.
`
`GROUNDS 4~6 BASED ON WOODHILL SHOULD NOT BE
`
`INSTITUTED ............................................................................................... 26
`
`IX.
`
`GROUNDS 7—8 BASED ON LANGER SHOULD NOT BE
`
`INSTITUTED ............................................................................................... 3 8
`
`GROUND 9 BASED ON FARBER PUBLICATION WO 96/32685
`
`SHOULD NOT BE INSTITUTED ............................................................... 46
`
`XI.
`
`CONCLUSION ............................................................................................. 47
`
`PATENT OWNER’S EXHIBIT LIST
`
`CERTIFICATE OF SERVICE
`
`2020057
`
`
`
`I. BACKGROUND
`
`Pursuant to 37 C.F.R. § 42.107, PersonalWeb Technologies, LLC (“patent
`
`owner” or 6‘PO”) submits this Preliminary Response to the petition seeking inter
`
`partes review in this matter.
`
`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 Preliminary Response (i.e., the “critical
`
`date” is no later than April 11, 1995 for purposes of this submission).
`
`Petitioner alleges that the challenged claims are not entitled to the claimed
`
`April 11, 1995 priority date because of the term “hash” recited in the claims. (Pet.
`
`53—54.) PO disagrees with petitioner in this respect, and responds to petitioner’s
`
`priority date argument in connection with Ground 9. PO’s points regarding the
`
`April 11, 1995 effective filing date of the challenged claims apply to all Grounds
`
`alleged by petitioner.
`
`PO notes that another petition for IPR is also pending regarding the ‘310
`
`patent. (See IPR 2014—00062.)
`
`II. ALLEGED GROUNDS
`
`Petitioner has challenged claims 24, 32, 70, 81, 82 and 86 of the ‘3 10 patent
`
`based on only, and limited to, the following alleged Grounds:
`
`1
`
`2020057
`
`
`
`Patent Owner’s Preliminary Response (U.S. Pat. No. 7,802,310)
`
`IPR 2013-00596
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`Claims 24, 32, 70, 81, 82, and 86 are allegedly anticipated under
`
`35 U.S.C. §102(a) by Browne (Ex. 1009).
`
`Claims 24, 32, 70, 81, 82, and 86 are allegedly unpatentable as
`
`obvious under 35 U.S.C. §103 over Browne (Ex. 1009).
`
`Claims 24, 32, 70, 81, 82, and 86 are allegedly unpatentable as
`
`obvious under 35 U.S.C. §103 over Browne (Ex. 1009) in View of
`
`Stefik (EX. 1013).
`
`Claims 24, 32, 70, 81, 82, and 86 are allegedly anticipated under
`
`35 U.S.C. §§ 102(b) and 102(e) by Woodhill (Ex. 1014).
`
`Claims 24, 32, 70, 81, 82, and 86 are allegedly unpatentable as
`
`obvious under 35 U.S.C. §103 over Woodhill (Ex. 1014).
`
`Claims 24, 32, 70, 81, 82, and 86 are allegedly unpatentable as
`
`obvious under 35 U.S.C. §103 over Woodhill (EX. 1014) in view
`
`of Stefik (EX. 1013).
`
`Claims 24, 32, 70, 81, 82, and 86 are allegedly anticipated under
`
`35 U.S.C. § 102(b) by Langer (EX. 1015).
`
`Claims 24, 32, 70, 81, 82, and 86 are allegedly unpatentable as
`
`obvious under 35 U.S.C. §103 over Langer (Ex. 1015) in view of
`
`Stefik (EX. 1013).
`
`9.
`
`Claims 24, 32, 70, 81, 82, and 86 are allegedly anticipated under
`
`35 U.S.C. § 102(b) by Farber publication WO 96/32685 (Ex. 1033)
`
`2020057
`
`
`
`Patent Owner’s Preliminary Response (US. Pat. No. 7,802,310)
`
`IPR 2013—00596
`
`[note:
`
`the Farber publication is alleged by petitioner to be a
`
`publication of the priority application of the ‘310 patent].
`
`III. CLAIM CONSTRUCTIONS
`
`Currently, the claims of the unexpired ‘3 10 patent are to be given their
`
`6“broadest reasonable construction in light of the specification.” 37 CPR. §
`
`42.100(b). Patent Owner has applied that standard in this paper.
`
`Under the broadest reasonable construction standard, 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
`
`v. 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. In re Paulsen,
`
`30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`The specification of the ‘310 patent provides a definition for 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 of bits. (‘310 patent, col. 2:16—17.) As the
`
`(claims 24, 32, 70)
`
`Board explained in its June 5, 2013 Decision in IPR
`
`
` a file; (3) a page in memory; (4) an object in an object~
`
`
`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
`
`3
`
`2020057
`
`
`
`Patent Owner’s Preliminary Response (US. Pat, No. 7,802,310)
`
`IPR 2013—00596
`
`
`
`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 famiiy 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)
`
`
`The “data item” construction set forth above is correct and should be
`
`adopted.
`
`Additionally, petitioner proposes overly broad constructions for “selectively
`
`permitting” in claim 70 and to “selectively allow” in claims 81 and 86.
`
`“Selectively permitting. .
`
`. ” (Claim 70)
`
`PO disagrees with petitioner’s proposed construction for “selectively
`
`permitting”, because petitioner’s construction ignores the plain language of claim
`
`2020057
`
`
`
`Patent Owner’s Preliminary Response (US. Pat. No. 7,802,310)
`
`IPR 2013-00596
`
`70. Petitioner contends that “selectively permitting” in claim 70 of the ‘310 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:
`
`“(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 (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 least on 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
`
`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
`
`5
`
`2020057
`
`
`
`Patent Owner’s Preliminary Response (US. Pat. No. 7,802,310)
`
`IPR 2013-00596
`
`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.
`
`“Selectively allow .
`
`.
`
`. ”(claims 81 and 86)
`
`PO also disagrees with petitioner’s proposed construction for “selectively
`
`allow”, because petitioner’s construction ignores the plain language of the claims.
`
`Petitioner contends that to “selectively allow” in claims 81 and 86 of the ‘3 10
`
`patent 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 depending on whether or not said content-dependent
`
`identifier corresponds to one of the plurality of values.” (emphasis
`
`added)
`
`Petitionerls 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
`
`6
`
`2020057
`
`
`
`Patent Owner’s Preliminary Response (U.S. Pat. No. 7,802,310)
`
`IPR 2013-00596
`
`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 of bits to be
`
`provided/accessed when one of conditions (i) and (ii) occurs, and not allow the
`
`sequence of bits to be provided/accessed when the other of conditions (i) and (ii)
`
`occurs, Petitioner’s construction of to “selectively allow” in claim 86 is similarly
`
`flawed. To “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.
`
`PO expressly reserves its right to provide its constructions for the other
`
`terms identified by petitioner (“digital identifier”, “content—based identifier”, and
`
`“content—dependent name”) in its response under Rule 42.120 should this
`
`proceeding be instituted as to any applicable claim.
`
`IV. THE EXAMINER CONSIDERED AND ALLOWED THE
`
`CHALLENGED CLAIMS OVER ALL ART RELIED UPON BY
`
`PETITIONER DURING ORIGINAL PROSECUTION OF THE ‘310
`
`PATENT
`
`All art relied upon by petitioner was considered by the Examiner during
`
`original prosecution of the ‘3 10 patent, in its exact or cumulative form. Thus, the
`
`Examiner already properly allowed the challenged claims over all art upon which
`
`petitioner relies. As part of its consideration of whether to institute, the Board may
`
`take into account that the art relied upon by petitioner was already considered by
`
`2020057
`
`
`
`Patent Owner’s Preliminary Response (U.S. Pat. No. 7,802,310)
`
`IPR 2013-00596
`
`the Examiner. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48765
`
`(Aug. 14, 2012).
`
`Browne (Ex. 1009) was already considered by the Examiner during original
`
`prosecution of the ‘3 10 patent, and the Examiner properly allowed the challenged
`
`claims over Browne. (Ex. 1001 at 3; and Ex. 1016 at pgs. 0093, 0139 and 0660.)
`
`Woodhill (U.S. Patent No. 5,649,196, Ex. 1014) was already considered by
`
`the Examiner during original prosecution of the ‘3 10 patent, and the Examiner
`
`properly allowed the challenged claims over Woodhill. (Ex. 1001 at 2; and Ex.
`
`1016 at pgs. 0089, 0135, and 0656.) Woodhill’s WO counterpart (WO 95/01599)
`
`was also considered by the Examiner during original prosecution of the ‘3 10
`
`patent. (Ex. 1001 at 3; and Ex. 1016 at pg. 0107.)
`
`Langer (Ex. 1015) was already considered by the Examiner during original
`
`prosecution of the ‘310 patent, and the Examiner properly allowed the challenged
`
`claims over Langer. (Ex. 1001 at 3; and Ex. 1016 at pgs. 0091, 0137, and 0658.)
`
`US. Patent No. 5,978,791 to Farber (cumulative of the Farber WO
`
`publication at Ex. 1033), and numerous other Farber publications equivalent to Ex.
`
`1033, were already considered by the Examiner during original prosecution of the
`
`‘3 10 patent, and the Examiner properly allowed the challenged claims over the
`
`Farber publications. (Ex. 1001 at 2; and Ex. 1016 at pgs. 0089 and 0135.) It can
`
`be seen by comparing the two exhibits that US. Patent No. 5,978,791 (Ex. 2010) is
`
`equivalent to the W0 Farber publication (Ex. 1033), with respect to both content
`
`2020057
`
`
`
`Patent Owner’s Preliminary Response (US. Pat. No. 7,802,310)
`
`IPR 2013-00596
`
`and both being published well before the alleged October 31, 2007 filing date of
`
`the ‘3 10 application.
`
`US Patent No. 5,638,443 to Stefik et a1. (Ex. 2011) was already considered
`
`by the Examiner during original prosecution of the ‘310 patent, and the Examiner
`
`properly allowed the challenged claims over Stefik et al. (Ex. 1001 at 2; Ex. 1016
`
`at pgs. 0088 and 0134; and Ex. 2011.) US. Patent No. 5,638,443 to Stefik et al.
`
`(Ex. 2011) is cumulative of (equivalent to) the Stefik et a1. reference (Ex. 1013)
`
`cited by petitioner. It can be seen by comparing the two exhibits that US. Patent
`
`No. 5,638,443 to Stefik et a1. (Ex. 2011) is equivalent to U.S. Patent No. 7,359,881
`
`to Stefik et a1. (Ex. 1013), with respect to both content and the alleged 102(e) date.
`
`The drawings and specifications ofExs. 1013 and 2011 are virtually identical, as
`
`both have the same drawings (other than certain lead line shapes) and the same
`
`specification (other than differences in the summary, abstract and claim sections).
`
`Everything upon which petitioner relies in. Stefik ‘881 is present in Stefik ‘443 and
`
`was thus considered by the Examiner during the original prosecution of the ‘3 10
`
`patent.
`
`Petitioner does not introduce any new art. Instead, petitioner has essentially
`
`copied art that the Examiner already considered. As explained above, all art upon
`
`which petitioner relies was considered by the Examiner during original prosecution
`
`of the ‘3 10 patent, and the Examiner properly allowed the challenged claims over
`
`this art.
`
`Institution should be denied given that the Examiner is already presumed
`
`2020057
`
`
`
`Patent Owner’s Preliminary Response (US. Pat. No. 7,802,310)
`
`IPR 2013—00596
`
`to have considered all art relied upon by petitioner, especially given the flaws in
`
`that art which are discussed herein.
`
`V. BROWNE AND LANGER ARE NOT “PRINTED PUBLICATIONS”
`
`There is no evidence establishing that Browne and Langer are prior art
`
`“printed publications.” Petitioner has not met its burden of establishing that these
`
`are prior art “printed publications.” 37 C.F.R. §42.1(d).
`
`Because Browne and Langer have not been established as prior art “printed
`
`publications”, institution should be denied for all asserted Grounds (i.e., Grounds
`
`1—3 and 7—8) that rely wholly or in part on any of Browne and Langer. Synopsys,
`
`Inc. v. Mentor Graphics Corp, IPR2012—00042 (Paper No. 16), at *35-36 (PTAB
`
`Feb. 22, 2013) (denying institution based on a document where petitioner did not
`
`establish that it was a “printed publication”). See also SR] Int ’1, Inc. v. Internet
`
`Sec. Sysa, Inc, 511 F.3d 1186, 1195—98 (Fed. Cir. 2008) (finding that a paper
`
`posted on an open FTP site was not a “printed publication”, e. g., due to
`
`insufficient evidence of public accessibility via a customary search and insufficient
`
`evidence of cataloguing or indexing in a meaningful way); and ReSQNercom, Inc.
`
`v. Lansa, Inc, 594 F.3d 860, 865-66 (Fed. Cir. 2010) (finding that a user manual
`
`was not a “printed publication”).
`
`An inter partes review may only be requested on the basis of prior art
`
`consisting of patents or printed publications. 35 U.S.C. § 311(b). Thus, the statute
`
`itself precludes institution based on a document which has not been established as
`
`10
`
`2020057
`
`
`
`Patent Owner’s Preliminary Response (US. Pat. No. 7,802,310)
`
`IPR 2013—00596
`
`a patent or printed publication. Browne and Langer certainly are not patents. And
`
`because neither has been established as a prior art “printed publication”, the
`
`petition should be denied as to Grounds 1-3 and 7—8.
`
`“Public accessibility” is a touchstone of determining whether a reference
`
`constitutes a “printed publication.” SR1 Int’l, 511 F.3d at 1194. “A given
`
`reference is ‘publicly accessible’ upon a satisfactory showing that such document
`
`has been disseminated or otherwise made available to the extent that persons
`
`interested and ordinarily skilled in the subject matter or art exercising reasonable
`
`diligence, can locate it.” Id. Factors considered in the “printed publication”
`
`inquiry include whether the document was catalogued or indexed in a meaningful
`
`way, and whether a customary search prior to the critical date would have turned
`
`up the document. Id. at 1195—98. In SR1 Int 7, for example, the Federal Circuit
`
`explained that a paper posted on an open FTP site was not a “printed publication”
`
`because it was not catalogued or indexed in a meaningful way and there was no
`
`evidence that a customary search would have uncovered it prior to the critical date.
`
`Id.
`
`As in Synopsys, SRI Int ’1 and ResQNet, petitioner has presented no
`
`testimony, declaration, or other evidence that any of Browne or Langer was
`
`catalogued or indexed in a meaningful way prior to the critical date, or that any of
`
`these would have turned up in a customary search prior to the critical date, or that
`
`persons interested and ordinarily skilled in the art exercising reasonable diligence
`
`11
`
`2020057
`
`
`
`Patent Owner’s Preliminary Response (US. Pat. No. 7,802,310)
`
`IPR 2013-00596
`
`would have located any of these documents prior to the critical date. There is no
`
`evidence of any search engines, server accessibility, or search techniques for
`
`searching by subject matter that were even in existence prior to April 11, 1995 or
`
`which could have used to access any of these documents. There is no declaration
`
`from any alleged author of any of these documents stating when these documents
`
`were created, or to whom they were ever sent.
`
`Additionally, the documents themselves support patent owner’s point that
`
`they are not prior art “printed publications.”
`
`The Browne document has no date on it indicating when it was allegedly
`
`created. Moreover, petitioner’s argument that Browne was “published” in
`
`February 1995 is contrary to the Browne document itself, because the final page of
`
`Browne cites to reference [7] dated “Mar. 1995.” (Ex, 1009 at 7.) It is unclear
`
`how Browne could have been allegedly “published” in February 1995 as alleged
`
`by petitioner, when the document itself has no date on it and references a document
`
`from “Mar. 1995” -— Browne was undoubtedly created well after the publication
`
`date alleged by petitioner. Indeed, a third party (Bea Systems, Inc.) cited the exact
`
`same Browne document as having an “Aug. 1995” date, which is well after the
`
`critical date, during prosecution of US. Patent No. 7,318,237.
`
`(EX. 2002.) The
`
`third party’s identification of an “Aug. 1995” date for the very same Browne
`
`document is yet another indication that petitioner’s allegation that Browne
`
`published in February of 1995 is incorrect and without basis.
`
`(EX. 2002.) The
`
`12
`
`2020057
`
`
`
`Patent Owner’s Preliminary Response (US. Pat. No. 7,802,310)
`
`IPR 2013-00596
`
`should be no institution regarding Browne, especially given that: (a) those in the
`
`art believed that Browne was dated “Aug. 1995” which is after the ‘310 patent’s
`
`effective filing date, (b) Browne has no creation or publication date on it, and (c)
`
`Browne references a date after its alleged publication date —— all of which call into
`
`serious question petitioner’s allegations regarding Browne.
`
`Langer is also flawed for the reasons explained above. Langer was allegedly
`
`printed off the Internet in 2003 based on the “7/29/2003” date in the lower—right
`
`corner of the document. However, there is no evidence of Langer having been in
`
`existence or being publicly accessible prior to the April 11, 1995 effective filing
`
`date of the patent. There is no evidence of anyone seeing or receiving Langer prior
`
`to its apparent printing on July 29, 2003 from “groups. google.com .
`
`. .” as
`
`suggested on the bottom of each page in Langer. The July 29, 2003 date is well
`
`after the critical date. Whether a document could have been accessed and printed
`
`some seven years after the critical date is of no moment. The fact that Langer is
`
`inexplicably missing the Usenet “path” header (required by the standard) raises
`
`further suspicions about the document. Moreover, even if Langer was provided to
`
`“altsourcesd” or “comparchives” (there is no evidence that it was), this does not
`
`mean it qualifies as a “printed publication” for the reasons described by the
`
`Federal Circuit. In SR] Int ’1, the court explained that a document posted on an
`
`open site was not a “printed publication” because it was not catalogued or indexed
`
`13
`
`2020057
`
`
`
`Patent Owner’s Preliminary Response (US. Pat. No. 7,802,310)
`
`IPR 2013-00596
`
`in a meaningful way and there was no evidence that a customary search would
`
`have uncovered it prior to the critical date. SR1 Int ’1, 511 F.3d at 1195—98.
`
`Accordingly, the petition should be denied as to Grounds 1—3 and 7-8
`
`because Browne and Langer have not been established as “printed publications.”
`
`VI. LAW REGARDING ANTICIPATION
`
`“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. v. Union Oil C0. of California, 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).
`
`VII. GROUNDS 1—3 BASED ON BROWNE SHOULD NOT BE
`
`INSTITUTED
`
`There are certain fundamental differences between the ‘3 10 patent and
`
`Browne which will be explained more fully below in addressing the challenged
`
`claims. As a first example, the ‘3 10 patent describes a True Name system that
`
`controls access to and delivery of data items using True Names that are based on
`
`bits of corresponding data items. The system of the ‘3 10 patent determines
`
`whether access to a given data item is authorized/unauthorized based at least on
`
`14
`
`2020057
`
`
`
`Patent Owner’s Preliminary Response (US. Pat. No. 7,802,310)
`
`IPR 2013—00596
`
`whether the True Name for that data item corresponds to one or more values in a
`
`comparison. Once authorized, access is granted to the data item. However, if
`
`unauthorized, the system of the ‘3 10 patent denies access to the data item. Browne
`
`fails to disclose anything akin to this.
`
`As another example, the ‘3 10 patent describes the use of True Names for
`
`corresponding data items so that two identical data items will have the same True
`
`Name. In contrast, Browne uses a Location Independent File Name (LIFN) for a
`
`file which is based on both data of the file and additional external information
`
`including a naming authority identifier (publisher ID). Because of the additional
`
`information (publisher ID) making up the LIFN in Browne, two identical files in
`
`Browne from different publishers will not have the same LIFN —— directly contrary
`
`to the challenged claims. Browne is thus problematic for the reasons explained in
`
`the background ofthe patent. (E.g., ‘310 patent at col. 2:26—3 l; and col. 2:41—43.)
`
`Even if, for the sake of argument, Browne was considered to be a “printed
`
`publication” (which it is not, for the reasons explained above), the Grounds based
`
`on Browne still fail because they are flawed from a technical perspective and do
`not meet the claims. The Examiner was correct in allowing the challenged claims
`
`over Browne and Stefik during original prosecution of the ‘310 patent.
`
`15
`
`2020057
`
`
`
`Patent Owner’s Preliminary Response (US Pat. No. 7,802,310)
`
`IPR 2013-00596
`
`Claim 24
`
`Petitioner does not provide a detailed analysis of claim 24, does not provide
`
`a claim chart for claim 24, and ignores significant portions of the claim. Claim 24
`
`states as follows, inter alia:
`
`“(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 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 ofvalues; (ii) hardware in combination
`
`with software determining whether or not access to the particular data item
`
`is unauthorized based on whether the content~dependent name of the
`
`particular data item corresponds to at least one ofsaid plurality of values,
`
`and (iii) based on said determining step (it), 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.” (emphasis added.)
`
`For example, see the specification of the ‘3 10 patent at: Abstract; element 136 in
`
`Fig. l(b); Fig. 9; col. 8:60—62; col. 11:33-44; and col. 31:3-32. Browne fails to
`
`disclose or suggest at least the above-italicized subject matter of claim 24.
`
`Petitioner never alleges what elements in Browne allegedly meet the
`
`following elements of claim 24:
`
`(i) first computer, (ii) second computer, (iii)
`
`plurality of values, and (iv) clauses (b)(i)—(iii). Petitioner’s attempt to brush claim
`
`16
`
`2020057
`
`
`
`Patent Owner’s Preliminary Response (U.S. Pat. No. 7,802,310)
`
`IPR 2013—00596
`
`24 under the rug is not surprising, since claim 24 cannot be read in any reasonable
`
`manner on Browne. Despite the lack of any detailed analysis regarding claim 24
`
`zmdmeBmwneGmmmhnmmnmmakpqmmjfl)mmmmsmamhwsdmnmnw
`
`dflwBKmmeGmmmsmgMMgdmm24mfidbws
`
`First, Browne fails to disclose or suggest “(iiz) .
`
`.
`
`. not allowing the
`
`particular data item to be provided to or accessed by the second computer ifit is
`
`determined that access to the particular data item is not authorized” as required by
`
`claim 24. Petitioner’s attempt to ignore this italicized claim language is
`
`pmfimflmbfldfing Bmmmenamrmamsmufihwnnmmhmtmnaummtoaghmn
`
`data item is “not authorized.” To the contrary, Browne never makes any
`
`determinations regarding authorization, much less using a LIFN (the alleged
`
`content-dependent name). At least because Browne never determines that access
`
`to a data item is “not authorized”, Browne also fails to disclose or suggest “not
`
`allowing” a data item to be provided to or accessed by a given computer based on
`
`smmaddamhmmm.GWmmmuBmmmemwmumsaLWNcmmmmmnm
`
`determine that access to a given data item is “not authorized”, Browne certainly
`
`does not base any such determination on “said determining step (ii)” as required by
`
`claim 24. And there would have been no logical reason to have modified Browne
`
`KJhavernetckun124intheserefixxfis Pefifionens(findousnessaflegauonsin
`
`Ground 2 cannot cure these flaws in Browne. (Pet. 24-25.) Grounds 1—2 are
`
`fundamentally flawed for at least this first set of reasons.
`
`17
`
`2020057
`
`
`
`Patent Owner’s Preliminary Response (US. Pat. No. 7,802,310)
`
`IPR 2013-00596
`
`To the extent that petitioner were to contend that the above-italicized subject
`
`matter of claim 24 would be met by a file access system that merely accesses files
`
`Via their names (petitioner appears to argue this on page 23 of the petition
`
`regarding claim 24), such an argument would be in direct conflict with the file
`
`hfituofdm‘310pamnt7lefleh$finyofdm‘310pamntnmkesdemwha
`
`determining, based at least on a name, whether access to a data item is authorized
`
`is NOT met by a file access system that simply accesses files Via names. While the
`
`Examiner alleged that the applied Blickenstaff reference disclosed accessing a file
`
`Via its file name (see Bickenstaff, Ex. 2012 at: Fig. 8, including 803, and
`
`description thereof; col. 2:44—53, col. 3:16—19; and col. 5:38—50), the Examiner
`
`expressly found that Bickenstaff did NOT disclose determining, based at least on a
`
`name, whether access to a data item is authorized. (E.g., Ex. 1016 at pgs. 0263—
`
`0264.) Thus, the file history makes clear that a file access system that accesses
`
`data items is not the same as a system that determines whether such access is
`
`“mfihofizedfimnotamhofized? Thmzfla)mnphafizesflwtdmrnmeinabflfiyofa
`
`file system to locate a given file cannot be a determination that access to that file is
`
`‘mnwmmmwf(bmmywpwmmflswmmmpmMmJMHme%MWm
`
`locate a file does not mean that a determination has been made that access to that
`
`file is “authorized”, and an inability to locate a file does not mean that a
`
`determination has been made that access to that file is “not authorized.”
`
`18
`
`2020057
`
`
`
`Patent Owner’s Preliminary Response (US. Pat. No. 7,802,310)
`
`IPR 2013—00596
`
`Second, Browne fails to disclose or suggest “(a) .
`
`.
`
`. 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 .
`
`.
`
`. (b) in response to said request:
`
`(1) causing the
`
`content-dependent name of the particular data item to be compared to a plurality
`
`ofvalues; (it) .
`
`.
`
`. determining whether or not access to the particular data item is
`
`unauthorized based on whether the content—dependent name ofthe particular data
`
`item corresponds to at least one ofsaid plurality of values” of claim 24.
`
`Petitioner alleges that Browne’s LIFN is the content-dependent name of
`
`claim 24. However, Browne never compares a LIFN “to a plurality of values” for
`
`“determining whether or not access to the particular data item is unauthorized
`
`based on whether the content—dependent name of the particular data item
`
`corresponds to at least one of sai
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
