BEFORE THE PATENT TRIAL AND APPEAL BOARD IN THE UNITED
`STATES PATENT AND TRADEMARK OFFICE
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`Trial Ne.:
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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:
`
`PersonalWeb Technologies, LLC & Level 3 Communications
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`Petitioner:
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`Rackspace US, Inc. & Rackspace Hosting, Inc.
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`Inventors:
`
`David A. Farber and Ronald D. Lachman
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`For: CONTROLLING ACCESS TO DATA IN A DATA PROCESSING SYSTEM
`
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`July 16, 2014
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`PATENT OWNER’S RESPONSE PURSUANT TO 37 C7,E<.R.
`
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`
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`42.120
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`2020057
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`STATES PATENT AND TRADEMARK OFFICE
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`Trial Ne.:
`
`IPR 2014-00059
`
`In re:
`
`US. Patent No. 6,415,280
`
`Patent Owners:
`
`PersonalWeb Technologies, LLC & Level 3 Communications
`
`Petitioner:
`
`Rackspace US, Inc. & Rackspace Hosting, Inc.
`
`Inventors:
`
`David A. Farber and Ronald D. Lachman
`
`For: CONTROLLING ACCESS TO DATA IN A DATA PROCESSING SYSTEM
`
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`July 16, 2014
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`PATENT OWNER’S RESPONSE PURSUANT TO 37 C7,E<.R.
`
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`42.120
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`2020057
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`Patent Owner’s Response (US, Pat. No. 6,415,280)
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`lPR 2014-00059
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`TABLE OF CONTENTS
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`Eggs;
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`INSTITUTED GROUNDS ............................................................................. l
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`II.
`
`CLAIM CONSTRUCTIONS .......................................................................... 2
`
`A.
`
`B.
`
`C.
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`D.
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`E.
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`“file” and “data file” (claims 10, 15, 18, 25, 36, 38) ............................ 2
`
`Preambles of claims 36 and 36 are limiting ......................................... 8
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`“data identifier” (claims 10, 18, 25) ..................................................... 9
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`“name” for a data file (claim 18) .......................................................... 9
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`“a particular data file having a particular name specifying a
`location” (claim 18) ............................................................................ 10
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`F.
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`The BRC Standard is Not Applicable to this Proceeding................... ll
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`LAW ................................................... 1’7
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`WOODHILL FAILS TO DISCLOSE OR SUGGEST A DATA FILE
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`HAVING TWO DIFFERENT NAMES AS REQUIRED BY CLAIM 18
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`l3
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`GRANULES CORRESPONDING TO “CONTENTS IDENTIFIERS” IN
`THE ALLEGED REQUEST IN WOODHHILL ARE NEVER PROVIDED
`TO THE REQUESTING COMPUTER IN RESPONSE TO THE
`
`REQUEST (CLAIMS 10, 18, 25, 36 AND 38) ................................................. 18
`
`III.
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`IV.
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`VI.
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`BINARY OBJECTS CORRESPONDING TO RECORDS 58
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`ALLEGEDLY IN THE “REQUEST” ARE NOT PROVIDED TO THE
`REQUESTING COMPUTER IN RESPONSE TO THE REQUEST
`(CLAIMS 10, 18, 25, 36 AND 38) ................................................................... 20
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`VII.
`
`THERE IS NO REQUEST CONTAINING A BINARY OBJECT
`IDENTIFIER 74 IN WOODHILL’S SELF-AUDIT PROCEDURE
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`(CLAIMS 10, 18, 25, 36 AND 38) ................................................................... 23
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`VIII.
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`BINARY OBJECTS AND GRANULES ARE NOT “DATA FILES” AS
`
`REQUIRED BY THE CHALLENGED CLAIMS ............................................. 25
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`IX. WOODHILL’S BINARY OBJECT IDENTIFIERS 74 AND “CONTENTS
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`IDENTIFIERS” ARE NOT FILE NAMES ....................................................... 30
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`X.
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`MDS OF CLAIM 31 WOULD NOT HAVE BEEN OBVIOUS ................. 34
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`XI.
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`LANGER IS NOT A “PRINTED PUBLICATION” ................................... 35
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`XII. SECONDARY CONSIDERATIONS .......................................................... 3 8
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`X111. CONCLUSION ............................................................................................. 49
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`PATENT OWNER’S EXHIBIT LIST
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`CERTIFICATE OF SERVICE
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`PersonalWeb Technologies, LLC (“patent owner” or “PO”) submits this
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`response to the petition. Petitioner has the burden of proving unpatentability by a
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`preponderance of the evidence. 35 U.S.C. § 316(e). Petitioner has not met its
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`burden for the reasons explained below. See also Dewar Decl. at {M 21-67 (EX.
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`2012).
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`US. Patent No. 6,415,280 (“the ‘280 patent”), including its reexamination
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`certificate, has an effective filing date of April 1 1, 1995 given its continuity. (Ex.
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`1001.) While patent owner (PO) reserves the right to establish an earlier date of
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`invention, an effective filing date of April 1 1, 1995 is assumed for purposes of this
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`Response (i.e., the “critical date” is no later than April 11, 1995 for purposes of
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`this submission). Petitioner does NOT allege a later effective filing date in
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`connection with the instituted grounds. Thus, the April 11, 1995 effective filing
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`date is applicable in this proceeding.
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`1. INSTITUTED GROUNDS
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`The Board, on April 15, 2014, instituted a trial in this proceeding regarding
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`the ‘280 patent for only the following:
`
`1.
`
`Whether claims 10, 15, 16, 18, 25, 36 and 38 are anticipated under
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`35 U.S.C. §102(e) by Woodhill (Ex. 1003).
`
`2.
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`Whether claims 10, 15, 16, 18,25, 31-33, 36 and 38 are obvious
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`under 35 U.S.C. §103(a) over Woodhill (EX. 1003) and Langer
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`(Ex. 1004).
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`II. CLAIM CONSTRUCTIONS
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`Claim terms are presumed to be given their ordinary and customary meaning
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`as would be understood by one of ordinary skill in the art at the time of the
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`invention. Phillips v. AWH Corp, 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
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`However, one may rebut that presumption by providing a definition of the term in
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`the specification with reasonable clarity, deliberateness, and precision.
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`A.
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`‘Zzle ”and “data Zzle”(claims 10, 152 18, 251 36, 382.
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`The ordinary meaning of “file” in this art at the time of the invention was
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`the following definition given in the 1994 Microsoft Computer Dictionary:
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`“file A complete, named collection of information, such as a
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`program, a set of data used by a program, or a user—created document.
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`A file is the basic unit of storage that enables a computer to distinguish
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`one set of information from another. A file might or might not be
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`stored in human—readable form, but it is still the ‘glue ’that binds a
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`conglomeration of instructions, numbers, words or images into a
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`coherent unit that a user can retrievez change, delete, save, or send to
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`an output device.” (emphasis added)
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`(Microsoft Press Computer Dictionary, Second Edition (1994) — BX. 201 1.) This is
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`consistent with a “named” data item referred to at col. 5:48-49 of the ‘280 patent.
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`(Dewar Decl. at $1 21 [EX. 2012].) A “named” data item as described in the ‘280
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`patent means that the data item is a coherent unit that is individually manipulatable
`
`by a user so that a user can selectively retrieve, change, delete, save, or send it to
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`an output device. Id. In other words, one of skill in the art would have understood
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`that a “named” data item is one that is necessarily a complete coherent unit that a
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`user can selectively retrieve, change, delete, save, or send to an output device. Id.
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`Thus, the ordinary meaning of “file” as described in the 1994 Microsoft Computer
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`Dictionary is both proper and consistent with the description of “file” in the ‘280
`
`patent. (Dewar Decl. at 11 21 [Ex. 2012].)
`
`lmportantly, a mere segment of a basic file is NOT a “file.” (Dewar Decl. at
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`11 22 [Ex. 2012].) Both the specification of the ‘280 patent and the 1994 Microsoft
`
`Computer Dictionary are clear in this respect. Id. The specification of the ‘280
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`patent expressly differentiates between a “file” and a mere “segment” of a file,
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`making clear that they are different and that a mere “segment” is not a “file.” Id.
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`Fig. 2 ofthe ‘280 patent is set forth below:
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`FIG. 2
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`““3
`
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`117
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`
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`
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`
`lemmml
`
`As illustrated in Fig. 2 above, the ‘280 patent differentiates between a “file” 120
`
`and a mere “segment” 122 ofa basic file. (‘280 patent, Fig. 2; col 5:25—35.) The
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`specification of the ‘280 patent explains, as illustrated in Fig. 2, that a “file” is at a
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`different position in the hierarchy than a mere “segment” of a file. (‘280 patent,
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`col. 5:25—31.) The ‘280 patent also explains that while a “file” can be named by a
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`user, a mere “segment” of a file cannot be so named. (‘280 patent, col. 5:44-45;
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`col. 8:28.) Regardless of how “file” is construed, the specification (which includes
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`the drawings) of the ‘280 patent makes clear that a mere “segment” cannot be a
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`“file,” (Dewar Decl. at 1] 22 [Ex 2012].) Indeed, petitioner’s expert admits that
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`the ‘280 patent “clearly” differentiates between “files” and mere “segments.”
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`Q. So here does the ‘280 patent differentiate between files and
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`segments? And again, I’m referring to Column 5, Lines 28 to 31, and
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`Figure 2 ofthe ‘280 patent.
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`A. Well, clearly, Figure 2 is probably the easiest way to see this.
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`The next—to—the—bottom level in the hierarchy has the label File 120, or
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`a collection of Files 120. The lowest level has a collection of Segments
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`122.
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`Q. So the ‘280 patent uses Reference No. 120 to refer to files
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`and Reference No. 122 to refer to segments?
`
`A.
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`I believe that‘s true.
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`(Mercer Dep. 96 [Ex. 2015].) This further demonstrates that one of ordinary skill
`
`in tire art, upon reviewing the specification of the ‘280 patent, would have
`
`understood that files are different from segments - i.e., a mere segment of a file
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`cannot qualify as a “file.” (Dewar Decl. at 1] 22 [Ex 2012].) Petitioner’s expert
`also testified that Woodhill’s binary objects are “equivalent” to the “segments” in
`
`the ‘280 patent, which makes clear that Woodhill’s binary objects (and granules)
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`are not“f11es.” (Mercer Dep. 102 [Ex. 2015].)
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`Moreover, according to the 1994 Microsoft Computer Dictionary, a mere
`
`segment of a file cannot be a “file” at least because:
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`(a) a mere segment of a file is
`
`not a “complete” collection of information, (b) a mere segment of a file is not a
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`coherent unit that a user can retrieve, change, delete, save or send to an output
`
`device, (0) a segment typically has no file header, and (d) a mere segment of a file
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`is not named. (Microsoft Press Computer Dictionary, Second Edition (1994) - EX.
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`2011) (Dewar Decl. at 1] 23-24 [EX. 2012]).
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`Contrary to the statement on page 9 of the institution decision (Paper 9), this
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`construction would NOT “preclude a data file from including smaller data files” in
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`all cases. (Dewar Decl. at 1T 25 [EL 2012].) For example, a package such as a ZIP
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`file may include a plurality of inner files — these would ALL be “files” under PO’s
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`construction because each of these files would satisfy the limitations of a “file”
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`discussed above. Id. In that example, each inner file would be individually named
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`and each would satisfy the definition of a “file” from the 1994 Microsoft
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`Computer Dictionary discussed above. Id. Both before formation of the ZIP file
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`and after unpacking the ZIP file, each of the inner files thereof would have a file
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`header and each would be individually manipulatable by users, with each being a
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`coherent unit that a user can retrieve, change, delete, save or send to an output
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`device. Id.
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`In contrast, that is not the case with the binary objects and granules in
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`Woodhill. (Dewar Decl. at {I 25 [EX. 2012].) Binary objects and granules in
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`Woodhill do not have headers, are not individually manipulatable as files by users,
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`are not inner files of a package file (e.g., ZIP file), and do not satisfy the definition
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`of a “file” in the 1994 Microsoft Computer Dictionary. Id. A binary object or
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`granule in Woodhill: (a) is determined solely based on size (number of bits) and is
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`NOT based on the extent of any coherent unit that is named or individually
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`manipulatable; (b) has no header because it is based solely on size (Mercer Dep.
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`105 [Ex. 2015].), (c) is NOT a coherent unit that a user can retrieve, change, delete,
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`save or send to an output device, ((1) is NOT a “complete” collection of
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`information, and (e) is not named. (Dewar Decl. at 1] 25 [Ex 2012].) The binary
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`objects and granules in Woodhill, for example, are mere portions of a basic file, do
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`not have headers, cannot be named, and are not complete coherent units that a user
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`can selectively change, delete, save or send to an output device. Id. Petitioner’s
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`expert admits, for instance, that a user cannot access a granule in Woodhill and
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`then delete only that granule.
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`(Mercer Dep. 110 [Ex. 2015].)
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`One of ordinary skill in the art at the time of the invention would have
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`understood that a “file” has a file header. (Dewar Decl. at 1] 26 [Ex. 2012].) The
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`1994 Microsoft Computer Dictionary explains the ordinary meaning that “afile
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`header identifies a daiafile by name, size, and time and date 0f creation or
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`revision; it mightvalso identify the program with which the file was created.”
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`(Microsoft Press Computer Dictionary, Second Edition (1994) —— Ex. 2011.)
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`Accordingly, a “file” at the time of the invention, and in the ‘280 patent, must also
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`be construed as including a file header. (Dewar Decl. at 1] 26 [Ex. 2012].) This is
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`important because binary objects and granules in Woodhill do not have file
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`headers, and thus cannot be “files” or “data files” for this additional reason.
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`(Mercer Dep. 105 [Ex 2015].)
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`It would unreasonable to allege that an arbitrary portion of a file constitutes
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`its own “file.” In a similar manner, any allegation that a mere binary object or
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`granule in Woodhill constitutes its own “file” is unreasonable, contrary to the
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`ordinary meaning of “file” at the time of the invention, and contrary to the
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`specification of the ‘280 patent which differentiates between files and segments.
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`The proper construction for a “data file” is the same as the construction for a
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`“file” discussed above, except that a “data file” includes data.
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`B. Preambles 0: claims 36 and 36 are limiting.
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`The preambles of claims 36 and 38 are limiting and entitled to patentable
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`weight. The bodies of these claims refer back to their respective preambles, with
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`the preamble of each claim being needed for completeness of the claim. For
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`example, the main body of claim 36 refers to “the data file” and “the network”
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`from the preamble. As another example, the main body of claim 38 refers to “the
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`data file” from the preamble. The preambles thus breathe life into the bodies of
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`the claims and are limiting.
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`Moreover, the preambles of claims 36 and 38 require “delivering a data file
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`in a network. . .” Any construction of these preambles that does not include this
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`limitation is incorrect. Thus, any construction of the preambles of claims 36 and
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`38 must require delivering a data file in the network.
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`C. “data identifzer’ficlaims 101 18, 252.
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`The PTAB construed “data identifier” as a “substantially unique data
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`identifier for a particular element.” PO assumes this construction for this term for
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`purposes of this proceeding, without prejudice to argue for other construction(s) in
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`other proceeding(s).
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`D.
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`“name ” for a data file (claim 18).
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`A “name” for a data file in this art is more than simply an identifier. (Dewar
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`Decl. at 11 31 [Ex 2012].) It cannot reasonably be said that all identifiers are file
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`names.
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`Ia’. For example, while a person’s fingerprint is an identifier for a person,
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`it is not a “name” for that person. Something is not a “name” for a file simply
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`because it identifies a file. 1d. Any attempt to simply replace “name” with
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`“identifier” in a construction would be incorrect and contrary to the claim
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`language itself. Even Woodhill contrasts the difference between a -1le “name” and
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`a binary object “identifier” (see e.g., file name 40 and file name 80 in Figs. 3—4 of
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`Woodhill, compared to binary object identifier 74 in Fig. 3 of Woodhill),
`evidencing that they are not necessarily the same thing in this art.
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`One of ordinary skill in the art at the time of the invention would have
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`understood that there can be a significant difference between a file “name” and a
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`mere “identifier.” (Dewar Decl. at $1 31 [EX. 2012].) “Name” should not be
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`simply replaced with “identifier.” One of ordinary skill in the art would have
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`recognized that a “name” for a data file is used to both:
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`(a) identify a particular
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`file so that the name can be used to differentiate the file from other files, and (b)
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`refer to that file, access that file, search for that file, and address that file so that a
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`user can use the name to selectively retrieve, change, delete, save, or send the file
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`to an output device. (E.g., ‘280 patent, col. 16:13—16; col. 17:15—50; col. 19:1-27;
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`col. 23:61-67; col. 24:56—67; col. 34:35—49; EX. 2011; and Dewar Decl. at {I 31 [Ex.
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`2012].).)
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`This is relevant because identifiers relied upon in the cited art, such as
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`Woodhill’s binary object identifiers 74 and “contents identifiers,” are not “names”
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`for data files.
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`E.
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`“a articular data 116 havin a articular names 601'
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`in alocatz‘on”
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`(claim 18).
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`This means that the particular data file has a name that particularly
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`identifies the particular data file, (Dewar Decl= at ii 32 [Ext 2012],) And the
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`“name” has the same construction as “name” above in Section D, except that the
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`particular name also specifies a location (in addition to the other requirements of a
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`“name” above). For example, see the “pathname” described in the specification of
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`the ‘280 patent which contains both the name of a file and a location of that file.
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`(E.g., ‘280 patent, col. 5:38—44; col. 8:27—28; col. 9:6m7; col. 18:42—43.) See also
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`Mercer Dep. 88—89, 103—104 [EX. 2015]; and Dewar Decl. at $1 32 [EX. 2012].)
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`This is important because Woodhill’s “file location 38” field relied upon in
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`the institution decision as an alleged name (Paper 9 at 28) is not a particular name
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`for a data file because it does not particularly identify any data file.
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`F. The BRC Standard is Not Appli_cable to this Proceeding
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`37 C.F.R. § 42.100(b) states that a claim in an “unexpired patent” shall be
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`given its broadest reasonable construction (“‘BRC” or “‘BRI”) in light of the
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`specification. However, the ‘280 patent expires on April 11, 2015. Accordingly,
`PO has no abilityto amend the ‘280 patent in this proceeding and no appeal will
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`take place until after the ‘280 patent expires. Indeed, the USPTO will have
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`jurisdiction over this proceeding after the ‘280 patent expires. No certificate under
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`35 U.S.C. § 318(b) can issue before the ‘280 patent expires. At least any document
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`(e. g., final written decision, decision on rehearing, certificate, etc.) authored or
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`generated by the USPTO after the ‘280 patent expires cannot use the BRC, and
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`instead should use and must rely upon the same claim construction standard as the
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`district court laid out in Phillips v. AWH Corp, 415 F.3d 1303 (Fed. Cir. 2005) (en
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`banc). Moreover, the USPTO has no authority to change the claim construction
`
`standard required by Phillips for IPR proceedings because an IPR is not an
`
`examination proceeding and the applicable claim construction standard is a
`
`substantive issue (not a mere procedural issue). Cooper Techs. Co. v. Dudas, 536
`
`F.3d 1330, 1335 (Fed. Cir. 2008). Thus, the BRC standard should not be used in
`
`this proceeding for construing claims.
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`While PO’s claim constructions set forth herein are submitted to be correct
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`under either the BRC standard or the Phillips standard, the Board should use the
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`Phillips standard to construe claims in this proceeding.
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`It is noted that further claim construction issues may be reflected in the
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`arguments below.
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`‘ III. LAW
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`“A claim is anticipated only if each and every element as set forth in the
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`claim is found, either expressly or inherently described, in a single prior art
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`reference.” Verdegaal Bros. 12. Union Oil C0. of California, 814 F.2d 628, 631
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`(Fed. Cir. 1987). A feature is “inherent” in a reference only if that feature is
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`“necessarily present” in the reference, “not merely probably or possibly present.”
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`Trinz‘ec Indus, Inc. v. Top-U.S.A. Corp, 295 F.3d 1292, 1295 (Fed. Cir. 2002).
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`Furthermore, in order to anticipate, a prior art reference must not only disclose all
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`elements of the claim, but must also disclose those elements “arranged as in the
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`claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).
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`Moreover, a patent claim is unpatentable under 35 U.S.C. § 103(a) if the
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`differences between the claimed subject matter and the prior art are such that the
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`subject matter would have been obvious at the time the invention was made to a
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`person having ordinary skill in the art to which the subject matter pertains. KSR
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`Int’l Co. v. Teleflex Inc., 550 US. 398, 406 (2007). The question of obviousness is
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`resolved on the basis of underlying factual determinations, including (1) the scope
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`and content of the prior art; (2) differences between the claimed subject matter and
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`the prior art; (3) the level of skill in the art; and (4) secondary considerations such
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`as commercial success, long felt need, copying by others, etc. Graham v. John
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`Deere Co. ofKansas City, 383 US. 1, 17-18 (1966). A court can take account of
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`the inferences and creative steps that a person of ordinary skill in the art would
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`employ. KSR, 550 U.S. at 418. “A prior art reference may be considered to teach
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`away [from the clamed invention] when ‘a person of ordinary skill, upon reading
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`the reference, .
`
`.
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`. would be led in a direction divergent from the path that was
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`taken by the applicant’.” Monarch Knitting Mach. V. Sulzer Morat, 139 F.3d 877,
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`885 (Fed. Cir. 1998) (citation omitted). The “general rule” is that references that
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`teach away “cannot serve to create a prima facie case of obviousness.” McGinley
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`v. Franklin Sports, Inc, 262 F.3d 1339, 1354 (Fed. Cir. 2001).
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`IV. WOODHILL FAILS TO DISCLOSE OR SUGGEST A DATA FILE
`
`HAVING TWO DIFFERENT NAMES AS REQUIRED BY CLAIM 18
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`Claim 18 of the ‘280 patent requires:
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`“a particular data file having a particular name specifying a location
`
`in the network at which the data file may be located .
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`.
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`. another name
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`for the particular data file, the other name including a data identifier
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`determined using a givenfunction ofthe data, where said data used by
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`the given function comprises the contents ofthe particular data file .
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`.
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`. ” (emphasis added)
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`Thus, claim 18 requires two different names for a particular data file. Both parties
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`agree in this respect. For example, petitioner’s expert testified as follows:
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`Q. So Claim 18 requires two different names for the same data file,
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`correct?
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`A. Well, there's a name and another name, and those are two
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`different names. They’re characterized as two different names in the
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`claim.
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`Q. And they're for the same data file, right?
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`A. They are for the same data file.
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`(Mercer Dep. 88—89 [EX. 2015].)
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`Thus, claim 18 requires two different names for a particular data file. Both
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`recited names must satisfy all requirements of a “name” for a data file as set forth
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`above in the claim constructions section, including particularly identifying that
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`data file. (Dewar Decl. at {l 34—35 [EX. 2012].) In addition to the basic
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`requirements of a “name”, the first “name” recited in claim 18 must also specify a
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`location for the particular data file, and the second “name” recited in claim 18 must
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`be determined using a function of the data of the particular data file. Id.
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`Referring to the specification of the ‘280 patent, for example, the first
`
`, “name” recited in claim 18 may be a “pathname” as described in the specification.
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`(Eg, ‘280 patent, col. 5:38-44; col. 8:27—28; col. 9:6—7; col. 18:42—43.) See also
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`Mercer Dep. 103~104 [EX. 2015]; and Dewar Decl. at {I 35 [EX. 2012]. A
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`“pathname” contains both the name of a file and a location of that file. Id. For
`
`instance, the ‘280 specification explains that a “pathname” may contain both a
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`“processor name” where the file is located and a “final file name” that was
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`provided by user for particularly identifying the file. Id. And the second “name”
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`recited in claim 18 may be a True Name as described in the specification, which is
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`determined using a function (e.g., MDS) of the data of the data file. Thus, the
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`specification of the ‘280 patent fully supports two different names for a given file
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`as recited in claim 18. (Dewar Decl. at {I 35 [Ex. 2012].)
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`The institution decision, and petitioner, allege that the “data file” is a
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`particular binary object and that the first recited name in claim l8 corresponds to
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`Woodhill’s “file location 38” as shown in Fig. 3 of Woodhill. (Paper 9 at 28-29.)
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`This is clear error. Woodhill’s “file location 38” is not a “name” for a data file.
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`(Dewar Decl. at 1] 36 [Ex. 2012].) Woodhill’s “file location 38” does not
`
`particularly identify any binary object or any granule. Id. Indeed, petitioner’s
`
`expert admitted that Woodhill’s “file location 38” field does not identify any
`
`particular binary object or granule:
`
`Q. Does file location field 38 identify one particular binary
`
`object in Woodhill?
`
`A. It's possible, but it's not likely. First, file location may be
`
`inadequate to make that determination. Chances are very good that it
`
`is. And second, there's a many—to—one relationship in terms of binary
`
`objects and file identity records. So there certainly could be many of
`
`them. There could be --
`
`(Discussion off the record.)
`
`Q. (BY MR. RHOA) Does file location field 38 identify one
`
`particular granule in Woodhill?
`
`A.
`
`In a rare instance, it could.
`
`I don't think it would be used
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`exclusively for that purpose, by any stretch of the imagination. And the
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`situation would be when there was exactly one granule associated with
`
`the entirety of this file and -— no, that's not going to -— not even -— that's
`
`never even going to happen, no. How about a "no" for an answer?
`
`Q. So the answer to the question would be no?
`
`A. Would be no. Negative.
`
`(Mercer Dep. 158—159 [EX. 2015].) Woodhill’s “file location 38” field is NOT a
`
`“name” for a binary object or a granule, because it does not particularly identify
`
`any particular binary object or granule in any respect. (Dewar Decl. at ‘11 36 [EX.
`
`2012].) The allegation that “file location 38” field is a “name” for a data file is
`
`analogous to saying that “backup server 12” in Woodhill is a “name” for a file. Id.
`
`This is illogical and unreasonable. Id. There is simply no “name” for a binary
`
`object or granule in Woodhill that, in addition to particularly identifying a binary
`
`object or granule which a “name” must do, also specifies a location for the binary
`
`object or granule. Id. Indeed, nothing in Record 34 of Woodhill identifies a
`
`particular binary object or granule. Id. Claim 18 cannot be anticipated by
`
`Woodhill for at least these reasons, and petitioner does not contend that it would
`
`have been obvious to have modified Woodhill to have met claim 18 in these
`
`respects.
`
`Additionally, PO points out that neither binary objects nor granules are even
`
`“files” as explained in other sections herein. And PO points out that binary object
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`identifiers 74 and “contents identifiers” in Woodhill are not file “names” as
`
`expkfinedintnhersecfionslmnenr
`
`VVoodhflldmckmesfflenannz40inlhg.3andlflernnneSOinlfig.4.
`
`(VVoodhiH,Figs.3—4;col.3:6l;col.4:56—57) llovvever,nehher<1ftheseifileruunes
`
`40, 80 in Woodhill are “determined using a given function of the data, where said
`
`data used by the given function comprises the contents of the particular data file,”
`
`and neither of these particularly identifies a binary object or granule. (Dewar Decl.
`
`2n1l38[Ex.2012})'Thmeisno<fiherfik3nwnehiVVoodhfll
`
`Still further, PO notes that petitioner relies upon Woodhill’s granularization
`
`embodiment. (Pet. 25; EX. 1010, pgs. 32—34; Woodhill, col. 14:52 to col. 18:9.)
`
`However, Woodhill’s granularization embodiment relates to large database files
`
`each of which contains many binary objects and many granules. (Woodhill, col,
`
`l4¢52-67;col.15zll—l7gcol.17:18~22;coli17:31-35;guulhdercerIDep.134-135
`
`[Ex. 2015].) The many granules and binary objects of such a large database file are
`
`not individually “named” in Woodhill’s granularization embodiment (or any other
`
`emmmmwmxmfldmmnmddhmmbfimnobgadmwmmOmwefiwmaPflmm.
`
`Whoflfiflkgmmubfiufionembmfimmfidmwndevmnnmnmnabmmyomea
`
`identifier 74. Woodhill has file names 40 and 80 for files as shown in Figs. 3-4;
`
`Mnnmfinnwmbmwyomamnngmmfiw.AbmmVOMaanMfia74wmwflm
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`a “name” for a large database file.
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`17
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`V. GRANULES CORRESPONDING TO “CONTENTS IDENTIFIERS” IN
`THE ALLEGED RES QUEST IN WOODHHILL ARE NEVER PROVIDED
`TO THE REQUESTING COMPUTER IN RESPONSE TO THE RES QUEST
`(CLAIMS 10, 18, 25, 36 AND 38]
`
`Claims 10, 18, 25, 36 and 38 each require a “request” for a data file, which
`
`request includes the name (or identifier, or hash) of that particular data file. These
`
`claims further require that, in response to the request, the requested file is provided
`
`to the requesting computer or client. For example, claim 25 requires “in response
`
`to a client requestfor the particular data file, the request including at least the
`
`data identifier of the particular data file, providing the [requesting] client with the
`
`particular data file from a given one ofthe servers .
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`. .” This subject matter cannot
`
`possibly be met if it is alleged that “files” are granules and “names” are “contents
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`identifiers” with respect to Woodhill’s granularization restore procedure
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`(regardless of whether it is modified). (Dewar Decl. at 1] 39-42 [Ex 2012].)
`
`Petitioner relies upon Woodhill’s granularization restore procedure.
`
`(EX.
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`1007 at 36-38 and 47.) However, both parties agree that in Woodhill’s
`
`granularization restore procedure granules corresponding to “contents identifiers”
`
`in the alleged request (“update request”) are NEVER provided from the remote
`
`backup server 12 to the requesting computer in response to the “update request.”
`
`(Woodhill at col. 17:18—67; Mercer Dep. l36~l37 [EX. 2015]; and Dewar Decl. at fi]
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`39-40 [Ex 2012].) Thus, Woodhill (regardless of whether it is modified based on
`
`Langer) cannot meet these claims if the claimed data files are alleged to be are
`
`granules and the names are alleged to be “contents identifiers.” 1d. Moreover, no
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`name of the large database file at issue is included in the “update request,” so that
`
`the claimed data file cannot be considered to be the large database file. (Dewar
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`Decl. at fi] 40 [Ex. 2012].)
`
`In Woodhill, and in any alleged modification thereof, granules
`
`corresponding to “contents identifiers” in the alleged request (“update request”) are
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`NEVER provided to the requesting computer in response to the update request.
`
`(Woodhill at Fig. 51 and col. 17:18—67; and Dewar Decl. at 1] 41 [Ex. 2012].) In
`
`the relied upon restore procedure, no granule having an identifier in the “update
`
`request” is ever provided to the requesting local computer 20. (Mercer Dep. 136—
`
`137 [EX. 2015]; and Dewar Decl. at 1] 41 [EL 2012].) The “contents identifiers” in
`
`the alleged “request” were calculated in step 444 and thus are NOT for granules
`
`that are being requested — the requesting local computer 20 already has the
`
`granules corresponding to the “contents identifiers” calculated in step 444 and
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`therefore they are never provided to the local computer even in the allegedly
`
`modified system. (Mercer Dep. 136-137 [EX. 2015]; and Dewar Decl. at 1] 41 [EX.
`
`2012].) Thus, in addition to all other reasons set forth herein, the cited art fails to
`
`meet these claims regardless of whether it is modified as alleged in the petition.
`
`Turning to the “contents identifiers” for the reconstituted granules in
`
`Woodhill, the “contents identifiers” for the granules reconstituted at col. 17:48-50
`
`are only used for comparison in box 450 ofFig. 5i after the Fig. 5h reconstitution
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`of those granules, and are never included in any “request” regarding a data item.
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`Patent Owner’s Response (US.
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