BEFORE THE PATENT TRIAL AND APPEAL BOARD IN THE UNITED
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`STATES PATENT AND TRADEMARK OFFICE
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`Trial N0.:
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`IPR 2014—00059
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`In re:
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`US. Patent No. 6,415,280
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`Patent Owners:
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`PersonalWeb Technologies, LLC & Level 3 Communications
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`Petitioner:
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`Rackspace US, Inc. and RaCkSpace Hosting, Inc.
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`Inventors:
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`David A. Farber and Ronald D. Lachman
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`For:
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`IDENTIFYING AND REQUESTING DATA IN NETWORK USING
`IDENTIFIERS WHICH ARE BASED ON CONTENTS OF DATA
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`January 21,2014
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`2020057
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`
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`STATES PATENT AND TRADEMARK OFFICE
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`Trial N0.:
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`IPR 2014—00059
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`In re:
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`US. Patent No. 6,415,280
`
`Patent Owners:
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`PersonalWeb Technologies, LLC & Level 3 Communications
`
`Petitioner:
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`Rackspace US, Inc. and RaCkSpace Hosting, Inc.
`
`Inventors:
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`David A. Farber and Ronald D. Lachman
`
`For:
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`IDENTIFYING AND REQUESTING DATA IN NETWORK USING
`IDENTIFIERS WHICH ARE BASED ON CONTENTS OF DATA
`
`January 21,2014
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`2020057
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`Patent Owner’s Preliminary Response (US. Pat. No. 6,415,280)
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`IPR 2014-00059
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`TABLE OF CONTENTS
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`Page
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`I.
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`BACKGROUND AND OTHER IPR REGARDING ‘280 PATENT ............ 1
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`11.
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`ALLEGED GROUNDS .................................................................................. 1
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`III.
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`CLAIM CONSTRUCTION ............................................................................ 2
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`IV.
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`GROUND 1 BASED ON WOODHILL SHOULD NOT BE
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`INSTITUTED ................................................................................................. 3
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`V.
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`GROUND 2 BASED ON WOODHILL/LANGER SHOULD NOT
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`BE INSTITUTED ......................................................................................... 15
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`V1.
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`LANGER IS NOT A “PRINTED PUBLICATION” ~ GROUND 2
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`SHOULD NOT BE INSTITUTED ............................................................... 18
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`VII. CONCLUSION ............................................................................................. 21
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`1"ATENT OWNER’S EXHIBIT LIST
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`CERTIFICATE OF SERVICE
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`I. BACKGROUND AND OTHER IPR REGARDING ‘280 PATENT
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`Pursuant to 37 C.F.R. § 42.107, Patent Owner PersonalWeb (PO) submits
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`this Preliminary Response to the petition seeking inter partes review in this matter.
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`US. Patent No. 6,415,280 (“the ‘280 patent”) has an effective filing date of April
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`1 1, 1995 given its continuity.
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`(EX. 1001 .) While PO reserves the right to establish
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`an earlier date of invention, PO assumes an effective filing date of April 11, 1995
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`for purposes of this Preliminary Response (i.e., the “critical date” is no later than
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`April 11, 1995 for purposes of this submission).
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`The ‘280 patent is already involved in another IPR involving Woodhill,
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`namely IPR 2013—00083. The instant petition filed by Rackspace (IPR 2014-
`00059) challeiiges claims l0, l5, l6, ‘18, 25, 3‘1, 32, 33, 36, and 38 ofthe ‘280
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`patent. In contrast with the instant petition, the petitioner in lPR 2013—00083
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`challenges only claims 36 and 38 of the ‘280 patent based on Woodhill. At a
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`minimum, institution here should be denied for at least claims 36 and 38 because
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`these two claims are already being challenged in IPR 2013—00083 based on
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`Woodhill. PO would be prejudiced, with respect to undue expenses and costs, if it
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`were forced to proceed through yet another lPR challenging the same claims 36
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`and 38 based on the same Woodhill reference, with different witnesses.
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`II. ALLEGED GROUNDS
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`Petitioner has challenged claims of the ‘280 patent based on only, and
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`limited to, the following alleged Grounds:
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`1
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`1.
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`Claims 10, 15, 16, 18, 25, 36, and 38 are allegedly anticipated
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`under 35 U.S.C. §102(e) by Woodhill (EX. 1003).
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`2.
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`Claims 10, 15, 16, 18, 25, 31, 32, 33, 36 and 38 are allegedly
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`obvious under 35 U.S.C. §103 over Woodhill (Ex. 1003) in view
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`of Langer (EX. 1004).
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`III. CLAIM CONSTRUCTION
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`PO reserves its right to provide constructions for the terms identified by
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`petitioner in its response under Rule 42.120 should this proceeding be instituted as
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`to any applicable claim. However, PO notes the following at this stage.
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`‘tiata Zzle ”
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`The PTAB previously construed “data file” as “a named data item, such as a
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`simple file that includes a single, fixed sequence of data bytes or a compound file
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`that includes multiple, fixed sequences of data bytes.” (See Decision regarding
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`institution dated May 17, 2013 in IPR 2013—00083 [Ex 1006].)
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`The district court in related litigations also construed “data file” as a “named
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`data item”, and indicated based on the specification that a mere segment of a multi-
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`segrnent file is not by itselfa data file. (Ex. 2002, pgs. 10-12.)
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`Any interpretation effectively eliminating “named” would be improper.
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`Moreover, any allegation that a mere segment of a multi—segment file is somehow
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`by itself a “data file” would be improper. There is no support for petitioner’s
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`argument that a mere segment of a multi-segment file is a “data file.” To the
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`contrary, the specification and common sense dictate that a mere segment of a
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`multiwsegment file is not by itself a “data file.” (‘280 patent, col. 5:48-52; and EX.
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`2002, pgs. 10—12.)
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`Petitioner’s alleged Grounds are fundamentally flawed, as will be explained
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`below, at least because they:
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`(a) ignore the “named” requirement for a “data file”,
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`and (b) improperly suggest that a mere segment of a multi-segment file can
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`somehow by itselfbe a “data file.”
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`IV. GROUND 1 BASED ON WOODHILL SHOULD NOT BE INSTITUTED
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`In Ground 1, petitioner alleges that claims 10, 15, 16, 18, 25, 36, and 38 of
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`the ‘280 patent are allegedly anticipated under 35 U.S.C. §102(e) by Woodhill (EX.
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`1003). Ground 1 should not be instituted for at least the following reasons.
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`Claim 10
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`Claim 10 states as follows, inter alia:
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`“distributing a set of data files across a network of servers; determining a
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`data identifier/for a particular datafile, the data identifier being determined
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`using a given function of the data, wherein said data used by the given
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`function to determine the data identifier comprises the contents of the
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`particular data file; and in response to a requestfor the particular data file,
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`the request including at least the data identifier of the particular data file,
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`providing the particular data file from a given one of the servers of the
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`network of servers, said providing being based on the data identifier of the
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`particular data file.” (emphasis added)
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`Woodhill fails to disclose or suggest at least the above—italicized subject matter of
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`claim 10 for numerous reasons.
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`First, in Woodhill’s granularization embodiment upon which petitioner
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`relies (Pet. 26—27), a binary object identifier 74 is not an identifier for a particular
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`“data file.” A binary object is not a “data file” in Woodhill’s granularization
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`embodiment.
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`Petitioner relies largely on Woodhill’s granularization embodiment. (Pet.
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`26~27; Woodhill, col. 14:52 to col. 18:9.) However, Woodhill’s granularization
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`embodiment relates only to large database files each of which contains many
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`binary objects and many granules (Woodhill, col. 14:52—67; col. 15:11—17; col.
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`17:18-22; col. 17:31—35). The many granules and many binary objects of such a
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`large database file are not individually named in Woodhill’s granularization
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`embodiment (or any other embodiment). A binary object identifier 74, which
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`allegedly identifies only one binary object out of the many binary objects in a large
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`database rile? cannot be an identi-ierf0r the entire large dafahasefi/e Moreoven
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`Woodhill’s granularization embodiment does not even mention a binary object
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`identifier 74.
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`Woodhill does not use binary object identifiers 74 or contents identifiers as
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`identifiers for datafiles. Woodhill uses “names” for files (see file name 40 in Fig.
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`3 of Woodhill, and file name 80 in Fig. 4 of Woodhill), but not for binary objects
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`or granules.1 However, file names 40 and 80 in W'oodhill are not determined using
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`a function of the data of the file, and thus are unrelated to claim 10.
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`Furthermore, when Woodhill backs up a “file” it separates the “file” into
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`multiple data streams. (Woodhill, col. 7:41-47.) Each of the multiple data streams
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`is processed individually, and can include regular data, extended attribute data, and
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`access control list data to which a hash function is allegedly applied. Id. Thus,
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`each “file” in Woodhill that is backed up would lead to multiple binary objects and
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`multiple binary object identifiers 74 being formed. No binary object identifier 74
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`in Woodhill can identify the file.
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`Contrary to petitioner’s unsupported allegation, a binary object identifier 74
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`cannot be an identifier for a large database file, which is the only type of file
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`handled by Woodhill’s granularization embodiment. Ground 1, regarding claim
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`10, is fundamentally flawed for at least this first set of reasons.
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`Second, there is no “request” for a “particular data file” in Woodhill’s
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`granularization embodiments. A binary object is not a “data file.” Woodhill’s
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`‘As PO explained in IPR 2013—00082 and [PR 2013—00083, the “name”
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`language in Woodhill’s issued claims is not “prior art” to the challenged claims.
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`The subject matter added to Woodhill on January 5, 1996 (including the “name”
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`language in Woodhill’s claims) was added. after the April 11, l995 effective filing
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`date of the ‘280 patent, was not in Woodhill’s originally-filed specification, and is
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`not “prior art” to the ‘280 patent (see prosecution history of Woodhill at Ex. 2007).
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`granularization embodiment relates to large database files each of which contains
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`many binary objects and many granules (Woodhill, col. 14:52—67; col. 15:1 1—17;
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`col. 17:18—22; col. 17:31—35). Each ofthe many granules and binary objects of
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`such a large database file is not individually “named” in Woodhill’s
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`granularization embodiment (or any other embodiment), and there would have
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`been no logical reason to have “named” them. Petitioner cites to the “update
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`request” described by Woodhill at col. 17:42. However, that “update request”
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`does not request a large database file (the only type of file handled by Woodhill’s
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`granularization embodiment), or any other “data file.” An alleged request for
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`granules or part(s) of a binary object is not the same as a request for a large
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`database file. Accordingly, there is not even a “request” for a “data file” in
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`Woodhill’s granularization embodiment. Woodhill’s granularization restore at
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`column 17 sends particular granules (not. an entire database file) to the local
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`computer. (Woodhill, col. 17:50—64.) Indeed, a purpose of Woodhill’s
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`granularization embodiment is to avoid transmitting entire large database files,
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`which teaches directly away from petitioner’s allegations regarding claim 10. And
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`petitioner does not contend that it would have been obvious to have modified
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`Furthermore, while Woodhill mentions Binary Object Identification Record
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`58 at col. 17:44, Woodhill elsewhere indicates that portions (62 and 72) of the
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`Record 58 other than the binary object identifier 74 are used to identify a given
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`binary object in a message. (Woodhill, col. 11:65 to col. 12:5.) Woodhill, in this
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`respect, strongly suggests that binary object identifiers 74 are not used in any
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`“request” for a binary object. (Woodhill, col. 11:65 to col. 12:5.) Woodhill
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`indicates that binary object identifiers 74 are certainly not used for accessing
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`binary objects. Id.
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`Ground 1, regarding claim 10, is fundamentally flawed for at least this
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`second set of reasons.
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`Third, petitioner improperly relies on Woodhill’s transmission of a mere
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`granule from the remote backup server 12 to a local computer 20 regarding claim
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`10’s requirement of “in response to a requestfor the particular data file .
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`.
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`.
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`providing the particular data file firom a given one office servers .
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`. .” (Pet. 27.)
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`Woodhill’s granularization embodiment cannot meet the above—italicized subject
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`matter of claim 10. A mere granule is not a “data file” -- it i. or-
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`-
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`.
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`_ --
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`portion of the very large database file. In Woodhill’s granularization embodiment,
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`the backup file server 12 only sends select “granules” of a large database file to the
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`local computer. (Woodhill, col. 17:60—65.) Binary object identifiers 74 do not
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`identify granules, and certainly are not names for granules. And a granule is not a
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`named “data file.” Woodhill’s granularization restore at column 17 sends
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`particular granules (not an entire large database file, and not even a binary object)
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`to the local computer. (Woodhill, col. 17:50—64.) Indeed, as mentioned above, a
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`purpose of Woodhill’s granularization embodiment is to avoid transmitting large
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`database files, which teaches directly away from petitioner’s allegations regarding
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`claim 10. Thus, Woodhill’s granularization embodiment upon which petitioner
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`relies fails to disclose or suggest “in response to a requestfor the particular data
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`file .
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`.
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`. providing the particular datafilefiflom a given one ofthe servers .
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`.
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`.
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`” as
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`required by claim 10.
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`Furthermore, it is fundamentally improper for petitioner to switch back—and—
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`forth between granules and binary objects regardinng the alleged “data file” — thisis
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`yet another fundamental error in the petition. Petitioner should not be heard to
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`argue that a “granule” is the alleged “data file” for one part of the claim, but that a
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`“binary object” is the alleged “data file” for another part of the claim. (Pet. 27 vs.
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`Pet. 23~24.) Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369-71 (Fed.
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`Cir. 2008).
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`And, again, petitioner does not contend that it. would have been obvious to
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`have modified Woodhill to have met claim 10 in the above respects. Ground 1,
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`regarding claim 10, is fundamentally flawed for at least this third set of reasons.
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`Fourth, claim 10 requires “providing the particular data file from a given
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`one of the servers of the network of servers, said providing being based on the
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`data identifier ofthweparticular data file ” (emphasis added) Petitionerc
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`ends
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`that the transmission of a mere “granule” meets the claim’s requirement of
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`“providing the particular data file .
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`. .” However, as explained above, a mere
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`granule is not a “data file.” Moreover, transmission of a “granule” in Woodhill’s
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`granularization embodiment is NOT “based on the data identifier” which is alleged
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`by petitioner to be a binary object identifier 74. (Woodhill, col. 17:60-64.)
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`Transmission of the granule in Woodhill is based on Whether particular “contents
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`identifiers” match — not on any binary object identifier 74. (Woodhill, col. 17:51-
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`64.) Moreover, because Woodhill indicates that a binary object identifier 74 is not
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`used in any “request” for a binary object (Woodhill, col. 11:65 to col. 12:5),
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`“providing” a granule or binary object would never be “based on” a binary object
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`identifier 74 in any alleged request. And, as mentioned above, Woodhill’s
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`granularization embodiment does not even mention a binary object identifier 74.
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`Moreover, petitioner does not contend that it would have been obvious to have
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`modified Woodhill to have met claim 10 in these respects. Ground 1, regarding
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`claim 10, is fundamentally flawed for at least this fourth set of reasons.
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`Filth, petitioner also mentions Woodhillis “self-audit” embodiment
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`described at col. 18:10—38.
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`(Pet. 28-30.) However, Woodhill’s self—audit
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`embodiment also fails to disclose or suggest the subject matter of claim 10.
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`(Woodhill, col. 18:10—38.) As explained in IPR 2013—00082 and IPR 2013—00083,
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`there is no “request” in Woodhill’s self—audit procedure that includes a binary
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`object identifier .74. Woodhil explains in the description of the self—auditing
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`procedure that the Record 58 is “stored in File Database 25.” (Woodhill, col.
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`18:16—19.) While Woodhill states that the Record 58 is “stored in File Database
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`25”, it is never describes it as part of a “request” for the binary object or anything
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`else. (Woodhill, col. 18:16—19.) Moreover, Woodhiil elsewhere indicates that, in a
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`message, portions ofthe Record 58 other than the binary object identifier 74 are
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`used to identifi/ a binary object. (Woodhill, col. 1 1:65 to col. 12:5.) Accordingly,
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`in Woodhill’s self—auditing procedure there is no description of a “request” for a
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`binary object that includes a binary obj ect identifier 74. To the contrary, Woodhill
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`strongly suggests that any such “request” would NOT include a binary object
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`identifier 74. (Eg, Woodhill, col. 11:65 to col. 12:5.)
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`Additionally, there is no request for a “data file” in Woodhill’s self—audit
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`procedure. Woodhill restores a randomly selected binary object —— not a “data file.”
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`(Woodhill, col. 18:25.) A binary object is not a “data file” for the reasons
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`explained above. And neither a binary object identifier 74 nor a Record 58 is a
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`“name” for a data file. And petitioner does not contend that it would have been
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`obvious to have modified Woodhill’s self—audit embodiment in any of the above-
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`respects.
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`Furthermore, it would be legal error to switch back and forth between
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`Woodhill’s granularization embodiment, and Woodhill’s “self—audit” embodiment.
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`(Pet. 26—27 vs. Pet. 28-30.) These are different embodiments that functional
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`separately on different bases. It is well established that in order to meet a claim a
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`reference must not only disclose the elements of the claim, but must also disclose
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`those elements “arranged or combined in the same way as in the claim.” Net
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`Money/7V, Inc. v. VeriSign, Inc, 545 F.3d 1359, 1369—71 (Fed. Cir. 2008).
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`10
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`And, again, petitioner does not contend that it would have been obvious to
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`have modified Woodhill’s self~audit procedure to have met claim 10 in the above
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`respects. Ground 1, regarding claim 10, is fundamentally flawed for at least this
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`fifth set of reasons.
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`Ground 1 should not be instituted for claim 10, and should be denied, for at
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`least the foregoing reasons.
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`Claims 15—16(arzd claims 32—332
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`Claim 15 requires “resolving the request for the particular data file based on
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`a measure of availability ofat least one offlie servers”, and claim 16 then recites
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`further requirement(s) of the measure of availability. The specification of the 280
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`patent explains that bandwidth, cost and reliability of source computers may be
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`measured to select from which source computer to obtain a file.
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`(E. g, ‘280 patent,
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`col. 10:64 to col. 11:5; and col. 16:58—62.)
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`Woodhill'fails to disclose or suggest this claimed subject matter. There is no
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`disclosure in either Woodhill’s granularization embodiment, or Woodhill’s self-
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`audit embodiment, (the only two alleged “requests” identified by petitioner) of
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`resolving any alleged “request for the particular file .
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`.
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`. based on a measure of
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`availability of at least one of the servers.” Petitione- alleges that the “request” in
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`Woodhill is made £2 the remote backup server l2. However, Woodhill fails to
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`disclose or suggest measuring bandwidth, cost or reliability regarding the remote
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`backup server 12 in resolving any such “request.”
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`Petitioner misquotes and improperly relies on Woodhill’s “file
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`prioritization” procedure. (Pet. 30; and Woodhill, col. 10:45.) Petitioner’s
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`incorrect quote from Woodhill (Pet. 30) is on the left below, while the actual
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`language of Woodhill is on the right below.
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`Petitioner’s incorrect quote from
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`Correct quote from Woodhill’s “file
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`Woodhill’s “file prioritization”
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`prioritization”
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`WWWWWWWWWWWWWWWWWWWWWWWWWWWWWWWWW
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`M
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`“the resources of any available local
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`networks 15 to be utilized according to
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`computer 20 on any of the local area
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`availability” (allegedly at Woodhill, col. networks 16 to be utilized according to
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`10259—1122) (Pet. 30).
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`its availability.” (Woodhill, col. 10:60—
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`62) (emphasis added)
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`Contrary to petitioner’s misleading quotation above, Woodhill’s “file
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`prioritization” relates to availability of local computers 20. (Woodhill, col. 10:60—
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`62.) In contrast, the alleged “requests” relied on by petitioner are allegedly sent to
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`the remote backup server 12 (not to a local computer 20). One cannot resolve a
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`“request” to the remote backup server 12 based on availability of local computers
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`20. There is no teaching in Woodhill’s granularization restore procedure or self—
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`audit procedure that bandwidth, cost and/or reliability of remote backup sewer 12
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`are measured to select a source from which to obtain any alleged file. And
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`petitioner does not contend that it would have been obvious to have modified
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`Woodhill to have met claim 15 or claim 16 in these respects. Petitioner makes no
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`obviousness allegations regarding claims 15-16 (or claims 32—33).
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`Institution of Ground 1, regarding claims 15—16, should be denied for at least
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`the foregoing reasons.
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`Claims 32-33 define over the cited art in a manner similar to that discussed
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`above regarding claims 15-16.
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`Claim 18
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`See all reasons explained above in connection with claim 10, except for the
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`“fourth” reasons. The reasons above for non—institution following “first”,
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`“second”, “third”, and “fifth” in connection with claim 10 are incorporated herein
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`by reference.
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`Additionally, claim 18 requires, inter alia:
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`“ .
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`.
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`. for a particular data file having a particular name specifying a
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`location in the network at which the data file may be located,
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`determining another name for the particular data file, the other name
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`including a data identifier determined using a given function of the
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`data, where said data used by the given function comprises the contents
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`of the particular data file .
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`. .”
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`Thus, claim 18 requires a particular name for a data file, and then “another name”
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`for that same data file. The claim requires two names for a given data file, one of
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`which being determined using a given function of the data. Woodhill fails to
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`disclose or suggest this claimed subject matter.
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`Woodhill discloses file name 40 in Fig. 3 and, file name 80 in Fig. 4.
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`(Woodhill, Figs. 3—4; col. 3:61; col. 4:56—57.) However, neither of these file names
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`40, 80 in Woodhill are “determined using a given function of the data, where said
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`data used by the given function comprises the contents of the particular data file.”
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`There is no other file name in Woodhill.
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`ln Woodhill’s granularization embodiment upon which petitioner relies, a
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`binary object identifier 74 cannot be a “name” for a “data file.” It cannot
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`reasonably be said that all “identifiers” are “names.” For example, while a
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`fingerprint is an identifier for a person, it is not a “name” for that person. Thus,
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`contrary to petitioner’s allegation, something is not a “name” simply because it is
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`an “identifier.” Petitioner’s attempt to replace “name” with “identifier” is clearly
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`wrong and would be both unreasonable and illogical —— as many “identifiers” are
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`not “names” (ag, fingerprint). Woodhill’s binary object identifiers 74 and
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`contents identifiers are not file names.
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`Petitioner relies largely on Woodhill’s granularization embodiment. (Pet.
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`25; Ex. lOlO, pgs. 32-34; Woodhill, col. 14:52 to col. 18:9.) However, Woodhill‘s
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`granularization embodiment relates only to large database files each of which
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`contains many binary objects and many granules (Woodhill, col. 14:52-67; col.
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`15:11—17; col. 17:18—22; col. 17:31-35). The many granules and binary objects of
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`such a large database file are not individually “named” in Woodhill’s
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`granularization embodiment (or any other embodiment), nd there would have
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`been no logical reason to have “named” them. Woodhill’s granularization
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`embodiment does not even mention a binary object identifier 74. Woodhill has file
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`names 40 and 80 for files as shown in Figs. 3—4; but not for mere binary objects or
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`granules. A binary object identifier 74 cannot be a “name” for a large database
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`file.
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`Institution of Ground 1, regarding claim 18, should be denied for at least the
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`foregoing reasons,
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`Claims 36 and 38
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`Ground 1 (and Ground 2) for claims 36 and 38 should not be instituted for at
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`least the reasons discussed above in Section I.
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`V. GROUND 2 BASED ON WOODHILL/LANGER SHOULD NOT BE
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`INSTITUTED
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`In Ground 2, petitioner alleges that Claims 10, 15, 16, 18, 25, 31, 32, 33, 36
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`and 38 are allegedly obvious under 35 U.S.C. §lO3 over Woodhill in view of
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`Langer. Ground 2 should not be instituted for at least the following reasons.
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`.CLQILIIIJQ
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`See all reasons explained above in section IV regarding claim 10, which
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`reasons are incorporated herein by reference.
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`Petitioner suggests in Ground 2 that a binary object is not a “data file.”
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`Petitioner, in Ground 2, attempts to cure this flaw in Woodhill by alleging that it
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`would have been obvious to have modified Woodhill to have performed the hash
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`function “over the entire contents of the file.” (Pet. 42-43.)
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`However, petitioner (i) does NOT explain any reason why one of ordinary
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`skill in the art would have allegedly modified Woodhill in this respect, (ii) does
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`NOT provide any explanation of how or why such a modified identifier would or
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`could even be used in Woodhill, and (iii) does NOT provide any explanation of
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`how to modify Woodhill in this respect. Id. Petitioner’s obviousness allegations
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`are fundamentally flawed in these respects.
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`Woodhill’s system is based on processing binary objects and granules, and
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`identifiers for such binary objects and granules. The alleged modification to
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`Woodhill would not result in identifiers for binary objects or granules, and thus
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`would appear to serve no purpose in Woodhill’s system. This is presumably why
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`petitioner could not come up with any logical reason why one would have
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`allegedly modified Woodhill in this respect, or with any explanation of how such a
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`modified identifier would even be used in Woodhill’s system.
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`Moreover, Woodhill teaches away from the alleged modification in several
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`respects. Woodhill teaches that a file is broken down so that binary objects and
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`granules are processed (instead. of files) in order to reduce the amount of data that
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`has to be processed. (Woodhill, col. 9:23—27; and col. 14:53 to col. 15:15.)
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`Indeed, Woodhill explains that a system for backing up “all of the data associated
`
`with a file” is undesirable. (Woodhill, col. 9:23—27.) Given that Woodhill
`
`expressly teaches away from backing up entire files, one of ordinary skill in the art
`
`would NOT have modified Woodhill to have performed the hash function “over
`
`the entire contents of the file” as alleged by petitioner. Woodhill teaches directly
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`away from the alleged modification.
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`Still further, this alleged modification cannot cure the flaws in Woodhill
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`discussed above in the “second”, “third”, “fourth” and “fifth” reasons regarding
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`claim 10 in section IV above. Thus, even the alleged modification (which would
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`not have been made as explained above) fails to meet the claim.
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`Claims 15—16 and 32—33
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`See all reasons explained above in section IV regarding claims 15—16 and
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`32—33, which reasons are incorporated herein by reference. Petitioner alleges no
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`modification to Woodhill capable of curing these fundamental "flaws. Petitioner
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`makes no obviousness allegations regarding claims 15, 16, 32 or 33.
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`Claim 18
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`See all reasons explained above in section IV regarding claim 18 (including
`
`those specific to claim 10), and also the reasons explained above under Ground 2
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`regarding claim 10. All of these reasons are incorporated herein by reference.
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`Claim 3 I
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`See all reasons explained above in section IV regarding claim 10, and all
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`reasons explained above in section V regarding claim 10, which reasons are all
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`incorporated herein by reference.
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`Furthermore, petitioner in Grannd 2 wlleges that it would have been obvious
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`to have used an MDS ofLanger for the hash field 70 in Woodhill. (Pet. 46.)
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`However, even such a modification of Woodhill (which PO submits would not
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`have been obvious) to use an MDS cannot cure the fundamental flaws in Woodhill
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`discussed above. Claim 31 still would not be met.
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`Claims 36 and 38
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`Grounds 1 and 2 for claims 36 and 38 should not be instituted for at least the
`
`reasons discussed above in Section I .
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`VII. LANGER IS NOT A “PRINTED PUBLICATION” —~ GROUND 2
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`SHOULD NOT BE INSTITUTED
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`There is no evidence establishing that Langer is a prior alt “printed
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`publication.” Petitioner has not met its burden of establishing this. 37 C.F.R.
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`§42.l(d). Ground 2 should be denied for this reason as well (in addition to the
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`reasons discussed above). Synopsys, Inc. v. Mentor Graphics Corp, IPR2012—
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`00042 (Paper No. 16), at *35—36 (PTAB Feb. 22, 2013) (denying institution based
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`on a document where petitioner did not establish that it was a “printed
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`publication”). See also SR1 Int’l, Inc. v. Internet Sec. Sys, Inc, 511 F.3d 1186,
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`1195-98 (Fed. Cir. 2008) (finding that a paper posted on an open FTP site was not
`
`a “printed publication”, e.g., clue to insufficient evidence of public accessibility via
`
`a customary search and insufficient evidence of cataloguing or indexing in a
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`meaningful way); and ResQNet.com, Inc. v. Lansa, Inc, 594 F.3d 860, 865-66
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`(F ed. Cir. 2010) (finding that a user manual was not a “printed publication”).
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`The statute precludes institution based on a document which has not been
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`established as a patent or printed publication. 35 U.S.C. § 31 1(b). Langer
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`certainly is not a patent. And because it has not been established as a prior art
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`“printed publication”, the petition should be denied as to Ground 2.
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`“Public accessibility” is a touchstone of determining whether a reference
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`constitutes a “printed publication.” SR] [m ’1', 5 ll F.3d at 1194. “A given
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`reference is ‘publicly accessible’ upon a satisfactory showing that such document
`
`has been disseminated or otherwise made available to the extent that persons
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`interested and ordinarily skilled in the subject matter or art exercising reasonable
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`diligence, can locate it.” 1d. Factors considered in the “printed publication”
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`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 SR] 1171"], for example, the Federal Circuit
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`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.
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`Id.
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`As in Synopsys, SR] [m ’1 and ReSQNet, petitioner has presented no
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`testimony, declaration, or other evidence that Langer was catalogued or indexed in
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`a meaningful way prior to the critical date, or that it would have turned up in a
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`customary search prior to the critical date, or that persons interested and ordinarily
`
`skilled in the art exercising reasonable diligence would have located it prior to the
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`critical date. There is no evidence of any search engines, server accessibility, or
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`search techniques for searching by subject matter that were even in existence prior
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`to April 1 1, 1995 or which could have been used to access Langer prior to the
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`critical date. There is no declaration from any alleged author of Langer stating
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`when Langer was created, or to whom it was ever sent.
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`Langer was allegedly printed off the Internet in 2003 based on the
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`“7/29/2003” date in the lower—right corner of a Langer document in the IPR filed
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`by EMC. However, there is no evidence of Langer having been in existence or
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`being publicly accessible prior to the April 1 l, 1995
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