Trials@uspto.gov
`571-272-7822
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`
` Paper 21
`Entered: May 17, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EMC CORPORATION AND VMWARE, INC.
`Petitioner
`
`v.
`
`PERSONALWEB TECHNOLOGIES LLC
`Patent Owner
`____________
`
`Case IPR2013-00082 (JYC)
`U.S. Patent No. 5,978,791
`____________
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`RACK-1005
`Page 1 of 35
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`571-272-7822
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`
` Paper 21
`Entered: May 17, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EMC CORPORATION AND VMWARE, INC.
`Petitioner
`
`v.
`
`PERSONALWEB TECHNOLOGIES LLC
`Patent Owner
`____________
`
`Case IPR2013-00082 (JYC)
`U.S. Patent No. 5,978,791
`____________
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`RACK-1005
`Page 1 of 35
`
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`Case IPR2013-00082
`U.S. Patent No. 5,978,791
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`I. INTRODUCTION
`EMC Corporation and VMware, Inc. (“EMC”) filed a petition (“Pet.”)
`requesting inter partes review of claims 1-4, 29-33, and 41 of U.S. Patent
`5,978,791 (“the ’791 patent”). Paper No. 8. Patent owner, PersonalWeb
`Technologies LLC (“PersonalWeb”), filed a preliminary response (“Prelim.
`Resp.”). Paper No. 15. We have jurisdiction under 35 U.S.C. § 314.
`The standard for instituting an inter partes review is set forth in 35
`U.S.C. § 314(a), which provides:
`THRESHOLD --The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311
`and any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`Taking into account PersonalWeb’s preliminary response, we
`conclude that the information presented in the petition demonstrates that
`there is a reasonable likelihood that EMC will prevail in challenging claims
`1-4, 29-33, and 41 as unpatentable under 35 U.S.C. §§ 102 and 103.
`Pursuant to 35 U.S.C. § 314, we hereby authorize an inter partes review to
`be instituted as to claims 1-4, 29-33, and 41 of the ’791 patent.
`
`A. Related Matters
`
`EMC indicates that the ’791 patent was asserted against it in
`PersonalWeb Technologies LLC v. EMC Corporation and VMware, Inc.,
`Case No. 6:11-cv-00660-LED, pending in the U.S. District Court for the
`Eastern District of Texas. Pet. 1. EMC also filed five other petitions
`
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`seeking inter partes review of the following patents: U.S. Patent No.
`6,415,280 (IPR2013-00083), U.S. Patent No. 7,945,544 (IPR2013-00084),
`U.S. Patent No. 7,945,539 (IPR2013-00085), U.S. Patent No. 7,949,662
`(IPR2013-00086), and U.S. Patent No. 8,001,096 (IPR2013-00087). Id.
`B. The Invention of the ’791 Patent (Ex. 1001)
`
`The invention of the ’791 patent relates to a data processing system
`that identifies data items using substantially unique identifiers, otherwise
`referred to as True Names, which depend on all the data in the data item and
`only on the data in the data item. Ex. 1001, Spec. 1:14-18, 3:29-32, and 6:6-
`10. According to the ’791 patent, the identity of a data item depends only on
`the data and is independent of the data item’s name, origin, location,
`address, or other information not directly derivable from the data associated
`therewith. Ex. 1001, Spec. 3:33-35. The invention of the ’791 patent also
`examines the identities of a plurality of data items in order to determine
`whether a particular data item is present in the data processing system. Ex.
`1001, Spec. 3:36-39.
`
`
`C. Illustrative Claims
`
`
`
`Independent claims 1, 30, and 33 are illustrative:
`
`In a data processing system, an apparatus
`
`1.
`comprising:
`identity means for determining, for any of a plurality of
`
`data items present in the system, a substantially unique
`identifier, the identifier being determined using and depending
`on all the data in the data item and only the data in the data
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`item, whereby two identical data items in the system will have
`the same identifier; and
`existence means for determining whether a particular
`
`data item is present in the system, by examining the identifiers
`of the plurality of data items.
`
`Ex. 1001, claims—Spec. 39:14-23 (emphasis added).
`30. A method of identifying a data item present in a
`data processing system for subsequent access to the data item,
`the method comprising:
`
`determining a substantial unique identifier for the data
`item, the identifier depending on and being determined using all
`of the data in the data item and only the data in the data item,
`whereby two identical data items in the system will have the
`same identifier; and
`accessing a data item in the system using the identifier of
`the data item.
`
`Ex. 1001, claims—Spec. 42:58-67 (emphasis added).
`33. A method of duplicating a given data item present
`at a source location to a destination location in a data
`processing system, the method comprising:
`
`determining a substantially unique identifier for the given
`data item, the identifier depending on and being determined
`using all of the data in the data item and only the data in the
`data item, whereby two identical data items in the system will
`have the same identifier;
`determining, using the data identifier, whether the data
`item is present at the destination location; and
`
`based on the determining whether the data item is
`present, providing the destination location with the data item
`only if the data item is not present at the destination.
`
`Ex. 1001, claims—Spec. 43:11-23 (emphasis added).
`
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`D. Prior Art Relied Upon
`EMC relies upon the following prior art references:
`Woodhill
`US 5,649,196
`July 15, 1997
`
`Ex. 1005
`
`Shirley Browne et al., “Location-Independent Naming of Virtual
`Distributed Software Repositories,” University of Tennessee Technical
`Report CS-95-278 (Feb. 1995)(Ex. 1002)(hereinafter “Browne”).
`
`Albert Langer, “Re: dl/describe (File Descriptions),” post to the
`“alt.sources” newsgroup on Aug. 7, 1991 (Ex. 1003)(hereinafter
`“Langer”).
`
`Frederick W. Kantor, “FWKCS™ Contents_Signature System Version
`1.22,” Zipfile FWKCS122.ZIP (Aug. 10, 1993)(Ex. 1004)(hereinafter
`“Kantor”).
`
`E. Alleged Grounds of Unpatentability
`EMC seeks to have claims 1-4, 29-33, and 41 of the ’791 patent
`cancelled based on the following alleged grounds of unpatentability:
`1.
`Claim 1-4, 29-33, and 41 as anticipated under 35 U.S.C.
`§ 102(a) by Browne. Pet. 26-35.
`2.
`Claims 1-4, 29-33, and 41 as unpatentable under 35 U.S.C.
`§ 103(a) over Browne. Id. at 35.
`3.
`Claims 1-4, 29-33, and 41 as unpatentable under 35 U.S.C.
`§ 103(a) over the combination of Browne and Langer. Id. at 35-36.
`4.
`Claims 1-4 and 29 as unpatentable under 35 U.S.C. § 103(a)
`over the combination of Browne and Woodhill. Id. at 36-37.
`5.
`Claims 1-4, 29-33, and 41 as anticipated under U.S.C. § 102(b)
`by Langer. Id. at 37-43.
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`Claims 1-4 and 29 as unpatentable under 35 U.S.C. § 103(a)
`6.
`over the combination of Langer and Woodhill. Id. at 43.
`7.
`Claims 1-3, 29, and 33 as anticipated under U.S.C. § 102(b) by
`Kantor. Id. at 43-49.
`8.
`Claims 4, 30-32, and 41 as unpatentable under 35 U.S.C.
`§ 103(a) over Kantor. Id. at 49-50.
`9.
`Claims 1-4 and 29 as unpatentable under 35 U.S.C. § 103(a)
`over the combination of Kantor and Langer. Id. at 50-51.
`10. Claims 1-4, 29-33, and 41 as anticipated under U.S.C. § 102(e)
`by Woodhill. Id. at 51-59.
`11. Claims 1-4 and 29 as unpatentable under 35 U.S.C. § 103(a)
`over Woodhill. Id. at 59.
`12. Claims 1-4 and 29 as unpatentable under 35 U.S.C. § 103(a)
`over the combination of Woodhill and Kantor. Id. at 59-60.
`
`II. FINDINGS OF FACT
`The following findings of facts are supported by a preponderance of
`
`the evidence.
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`Woodhill
`Woodhill generally relates to a system and method for distributed
`
`storage management on a networked computer system that includes a remote
`backup file server in communication with one or more local area networks.
`Ex. 1005, Spec. 1:11-17. Figure 1 of Woodhill illustrates the networked
`computer system. Ex. 1005, Spec. 2:56-58. Figure 1 of Woodhill is
`reproduced below.
`
`Figure 1 of Woodhill illustrates the networked computer system 10.
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`A remote backup file server 12 communicates with a wide area network 14
`via data path 13, the wide area network 14 communications with a plurality
`of local area networks 16 via data paths 15, and each local area network 16
`communications with multiple user workstations 18 and local computers 20
`via data paths 17. Ex. 1005, Spec. 3:12-30. The storage space on each disk
`drive 19 on each local computer 20 is allocated according the hierarchy
`illustrated in Figure 2. Ex. 1005, Spec. 3:31-44.
`
`Figure 2 of Woodhill illustrates a Distributed Storage Manager
`program that allocates storage space on each of the storage devices in the
`networked computer system. Ex. 1005, Spec. 2:59-62. Figure 2 of
`Woodhill is reproduced below.
`
`Figure 2 of Woodhill illustrates the
`Distributed Storage Manager program 24.
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`The Distributed Storage Manager program 24 builds and maintains the File
`Database 25 on the one or more disk drives 19 on each local computer 20 in
`the networked computer system 10. Ex. 1005, Spec. 3:45-49. The
`Distributed Storage Manager program 24 views a file as a collection of data
`streams. Ex. 1005, Spec. 4:13-15. Woodhill defines a data stream as a
`distinct collection of data within a file that may change independently from
`other distinct collections of data within the file. Ex. 1005, Spec. 4:15-18.
`Depending on the size of the data stream, the Distributed Storage Manager
`program 24 divides each data stream into one or more binary objects. Ex.
`1005, Spec. 4:21-30.
`
`Figure 3 of Woodhill illustrates the File Database used by the
`Distributed Storage Manager program. Ex. 1005, Spec. 2:63-64. Figure 3 of
`Woodhill is reproduced below.
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`Figure 3 of Woodhill illustrates the File Database 25.
`The File Database 25 includes three levels of records organized according to
`a predefined hierarchy: (1) the File Identification Record 34; (2) the Backup
`Instance Record 42; and (3) the Binary Object Identification Record 58. Ex.
`1005, Spec. 3:54-4:47. The Binary Object Identification Record 58
`includes, amongst other things, a Binary Object Identifier 74 that comprises
`a Binary Object Size 64, Binary Object CRC32 66, Binary Object LRC 68
`and Binary Object Hash 70. Ex. 1005, Spec. 4:45-47, 7:64-8:1. The Binary
`Object Identifier 74 is a unique identifier for each binary object that is
`backed up. Ex. 1005, Spec. 4:45-47.
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`Because the Binary Object Identifier 74 uniquely identifies a
`
`particular binary object, Woodhill recognizes the importance of minimizing
`the possibility of assigning two different binary objects the same Binary
`Object Identifier 74. Ex. 1005, Spec. 8:33-36. While Woodhill discloses
`calculating the Binary Object Identifier 74 in various ways, e.g., using a
`Binary Object size calculation, a Cyclical Redundancy Check calculation, a
`Longitudinal Redundancy Check calculation, and a Binary Hash algorithm
`(Ex.1005, Spec. 8:1-31), the key notion is that the Binary Object Identifier
`74 is calculated from the content of the data instead of from an external or
`arbitrary source. Ex. 1005, Spec. 8:38-42. In other words, Woodhill
`recognizes that the critical feature in creating a Binary Object Identifier 74 is
`that the identifier should be based on the contents of the binary object such
`that the Binary Object Identifier 74 can change when the contents of the
`binary object change. Ex. 1005, Spec. 8:58-62. Therefore, duplicate binary
`objects, even if resident on different types of computers in a network, may
`be recognized by their identical Binary Object Identifiers 74. Ex. 1005,
`Spec. 8:62-65.
`
`Woodhill discloses that the Distributed Storage Manager program 24
`performs two backup operations concurrently. Ex. 1005, Spec. 9:30-31.
`First, the Distributed Storage Manager program 24 stores a compressed copy
`of each binary object it needs to restore the disk drives 19 on each local
`computer 20 somewhere on the local area network 16 other than on the local
`computer 20 where the binary object originally resided. Ex. 1005, Spec.
`9:31-36. Second, the Distributed Storage Manager program 24 transmits
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`new or changed binary objects to the remote backup file server 12. Ex.
`1005, Spec. 9:36-38.
`
`Woodhill discloses that the Distributed Storage Manager program 24
`performs auditing and reporting functions on a periodic basis in order to
`ensure that the binary objects, which already have been backed up, may be
`restored. Ex. 1005, Spec. 18:11-13. According to Woodhill, the Distributed
`Storage Manager program 24 initiates a restore of a randomly selected
`binary object identified by a Binary Object Identification Record 58 stored
`in the File Database 25. Ex. 1005, Spec. 18:16-19.
`
`III. CLAIM CONSTRUCTION
`During an inter partes review, the Board construes claims by applying
`the broadest reasonable interpretation in light of the specification. 37 C.F.R.
`§ 42.100(b); see also Office Patent Trial Practice Guide, 77 Fed. Reg.
`48756, 48766 (Aug. 14, 2012). Absent a special definition for a claim term
`being set forth in the specification, the definition that governs is the ordinary
`and customary meaning of the claim term as would be understood by one
`with ordinary skill in the art. Phillips v. AWH Corp., 415 F.3d 1303, 1312
`(Fed. Cir. 2005) (en banc). In some cases, the ordinary and customary
`meaning of a claim term as would be understood by one with ordinary skill
`in the art may be apparent even to lay judges, and claim construction in such
`cases involves little more than the application of the widely accepted
`meaning of commonly understood words. Id. at 1314.
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`A. Claim Terms
`EMC identifies five claim terms and its claim construction for each
`
`claim term. Pet. 4-6. Those claim terms are listed as follows: (1)
`“substantially unique identifier;” (2) “using the identifier;” (3) “data” and
`“data item;” (4) “location;” and (5) “True Name, data identity, and data
`identifier.” We will address each claim term identified by EMC in turn.
`1. “Substantially unique identifier”
`EMC construes the claim term “substantially unique identifier” as “an
`identity for a data item generated by processing all of the data in the data
`item, and only the data in the data item, through an algorithm.” Pet. 4
`(emphasis in original). PersonalWeb agrees with EMC’s claim construction
`with respect to the claim term “substantially unique identifier.” Prelim.
`Resp. 4-5 (citing to Ex. 1001, Spec. 1:16-18 and 3:6-11).
`While the Specification of the ’791 patent does not set forth an
`explicit or special definition for the claim term “substantially unique
`identifier,” we note that every challenged independent claim, i.e., claims 1,
`30, and 33, includes the following claim language:
`a substantially unique identifier, the identifier being determined
`using and depending on all the data in the data item and only
`the data in the data item
`
`In light of the Specification of the ’791 patent and the claim language
`of independent claims 1, 30, and 33, we construe the claim term
`“substantially unique identifier” as “an identity for a data item generated
`
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`being determined using and depending on all of the data in the data item, and
`only the data in the data item.”
`2. “Using the identifier”
`EMC construes the claim term “using the identifier” as “employing
`
`the unique identifier of the data item, with or without other information, to
`carry out the recited function.” Pet. 4. PersonalWeb agrees with EMC’s
`claim construction with respect to the claim term “using the identifier.”
`Prelim. Resp. 6. Because the agreed upon claim construction is consistent
`with the Specification of the ’791 patent, we will adopt it as our own.
`3. “Data” and “data item”
`EMC construes that the claim terms “data” and “data item” as:
`[a] sequence of bits. Thus a data item may be the contents of a
`file, a portion of a file, a page in memory, an object in an
`object-oriented program, a digital message, a digital scanned
`image, a part of a video or audio signal, or any other entity
`which can be represented by a sequence of bits.
`
`
`
`Pet. 5 (citing to Ex. 1001, Spec. 1:54-60). EMC also indicates that the claim
`terms “data” and “data item” include the following:
`data items (the data items being files, directories, records in the
`database, objects in objected-oriented programming, locations
`in memory or on a physical device or the like).
`
`Pet. 5 (citing to Ex. 1001, Spec. 1:65-2:2). PersonalWeb only agrees with
`EMC that the claim terms “data” and “data item” may be construed as a
`“sequence of bits.” Prelim. Resp. 4 (citing to Ex. 1001, Spec. 1:54-55).
`
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`Based on our review of the Specification of the ’791 patent, we
`
`broadly, but reasonably construe the claim term “data item” as a “sequence
`of bits,” which includes one of the following: (1) the contents of a file; (2) a
`portion of a file; (3) a page in memory; (4) an object in an object-oriented
`program; (5) a digital message; (6) a digital scanned image; (7) a part of a
`video or audio signal; (8) a directory; (9) a record in a database; (10) a
`location in memory or on a physical device; and (11) any other entity which
`can be represented by a sequence of bits.
`Further, we note that every challenged independent claim, i.e., claims
`1, 30, and 33, includes the claim language “all of the data in the data item
`and only the data in the data item.” Emphasis added. As such, independent
`claims 1, 30, and 33 treat the claims terms “data” and “data item” as separate
`and distinct elements. “In the absence of evidence to the contrary, we must
`presume that the use of different terms in the claims connotes different
`meanings.” CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG,
`224 F.3d 1308, 1317 (Fed. Cir. 2000). Therefore, we construe the claim
`term “data” as a subset of a “data item.”
`4. “Location”
`EMC construes the claim term “location” with respect to a data
`
`processing system as “any of a particular processor in the system, a memory
`of a particular processor, a storage device, a removable storage medium
`(such as a floppy disk or compact disk), or any other physical location in the
`system.” Pet. 5 (citing to Ex. 1001, Spec. 5:65-6:4). PersonalWeb agrees
`with EMC’s claim construction with respect to the claim term “location.”
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`Prelim. Resp. 4 (citing to Ex. 1001, Spec. 5:65-6:3). Because the agreed
`upon claim constructions is consistent with the Specification of the ’791
`patent, we will adopt it as our own.
`5. “True Name, data identity, and data identifier”
`EMC construes the claim terms “True Name, data identity, and data
`identifier” as a “substantially unique data identifier for a particular element.”
`Pet. 5-6 (citing to Ex. 1001, Spec. 6:7-10; see also Spec. 14:1-39).
`PersonalWeb challenges EMC’s claim construction with respect to the claim
`term “True Name.” Prelim. Resp. 5. While PersonalWeb agrees with EMC
`that the claim term “True Name” amounts to a “substantially unique
`identifier,” PersonalWeb contends that the claim term “True Name” is
`narrower than a “data identifier” because it is further defined in the
`Specification of the ’791 patent—specifically the “True Name” is calculated
`in accordance with the description at column 12, line 54 through column 13,
`line 9. Id. Upon reviewing the portion of the Specification of the ’765
`patent cited by PersonalWeb, we do not find an explicit or special definition
`for the claim term “True Name.” However, we note that the portion of the
`Specification of the ’765 patent cited by EMC does provide an explicit or
`special definition for the claim term “True Name.” Pet. 5-6 (citing to Spec.
`6:7-10). Therefore, we agree with EMC that the claim term “True Name”
`should be construed as a “substantially unique data identifier for a particular
`item.”
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`B. Means-Plus-Function Limitations
`When construing a means-plus-function limitation under 35 U.S.C.
`§ 112, ¶ 6,1 we first must identify the claimed function, and then we look to
`the specification to identify the corresponding structure that actually
`performs the claimed function. Med. Instrumentation & Diagnostics Corp.
`v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers,
`Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). The
`corresponding structure of a means-plus-function limitation, however, must
`be more than simply a general-purpose computer or microprocessor to avoid
`pure functional claiming. Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game
`Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). That is, the specification must
`disclose “enough of an algorithm to provide the necessary structure under
`§ 112, ¶ 6” or a disclosure that can be expressed in any understandable
`terms, e.g., a mathematical formula, in prose, or as a flowchart. Finisar
`Corp. v. The DirectTV Group, 523 F.3d 1323, 1340 (Fed. Cir. 2008).
`EMC identifies several claim limitations as means-plus-function
`limitations invoking 35 U.S.C. § 112, ¶ 6, and their corresponding structure
`for performing the claimed function. Pet. 6-8. At the outset, we agree that
`each limitation identified by EMC is a means-plus-function limitation
`because: (1) each limitation uses the term “means for”; (2) the term “means
`
`1 Section 4(c) of the AIA re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C.
`§ 112(f). Because the ’791 patent has a filing date before September 16,
`2012 (effective date), we will refer to the pre-AIA version of 35 U.S.C.
`§ 112.
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`for” is modified by functional language; and (3) the term “means for” is not
`modified by sufficient structure recited in the claim to perform the claimed
`function. We will address the claimed function and corresponding structure
`for each means-plus-function limitation identified by EMC in turn.
`1. Identifying means for determining, for any of a plurality of
`data items present in the system, a substantially unique
`identifier, the identifier being determined using and
`depending on all of the data in the data item and only the
`data in the data item, whereby two identical data items in
`the system will have the same identifier (Claim 1)
`
`Both parties agree that the claimed function for this means-plus-
`function limitation is:
`determining, for any of a plurality of data items present in the
`system, a substantially unique identifier, the identifier being
`determined using and depending on all of the data in the data
`item and only the data in the data item, whereby two identical
`data items in the system will have the same identifier.
`
`Pet. 6; Prelim. Resp. 7. EMC contends that the corresponding structure for
`this means-plus-function limitation is the processor illustrated in Figure 1(b)
`programmed to execute the “Calculate True Name” mechanism depicted in
`Figures 10(a) and 10(b), where the message digest (“MD”) function is one of
`the MD4, MD5, and secure hash algorithm (“SHA”) functions. Pet. 6 (citing
`to Ex. 1001, Spec. 4:64-6:19, 12:54-14:39, 14:51-53, 31:32-50, and 32:54-
`64; Ex.1019). In response, PersonalWeb contends that the corresponding
`structure identified by EMC is incorrect because the portions of the
`specification cited by EMC do not indicate the structure necessary for
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`performing the claimed function. Prelim. Resp. 10. PersonalWeb argues
`that the specification clearly identifies the corresponding structure as at least
`one processor programmed in accordance with the Calculate True Name
`mechanism. Id. (citing to Ex. 1001, Spec. 7:62-63, 12:54-13:19, and 14:1-
`39).
`
`Figures 1(a) and 1(b) illustrate the data processing system that
`implements the invention of the ’791 patent. Ex. 1001, Spec. 4:44-46.
`Figure 1(b) is reproduced below.
`
`Figure 1(b) illustrates a typical data processor.
`
`The Specification of the ’791 patent discloses that each processor 102
`includes a central processing unit 108, memory 110, and one or more local
`storage devices 112 connected via an internal bus 114. Ex. 1001, Spec.
`4:64-67. The memory 110 in each processor 102 stores data structures that
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`are either local to the processor itself or shared amongst multiple processors
`in the data processing system. Ex. 1001, Spec. 7:61-8:18. According to the
`Specification of the ’791 patent, “the [aforementioned] data structures,
`stored in memory 110 of one or more processors 102 are used to implement
`the mechanisms described herein.” Ex. 1001, Spec. 7:61-63 (emphasis
`added). Further, the Specification of the ’791 patent discloses:
`
`In the presently preferred embodiments, either MD5 or SHA is
`employed as the basis for the computation of True Names.
`Whichever of these two message digest functions is employed,
`the same function must be employed on a system-wide basis.
`
`Ex. 1001, Spec. 13:15-19 (emphasis added).
`We identify the corresponding structure for performing the recited
`function—namely
`determining, for any of a plurality of data items present in the
`system, a substantially unique identifier, the identifier being
`determined using and depending on all of the data in the data
`item and only the data in the data item, whereby two identical
`data items in the system will have the same identifier
`
`—to be a data processor programmed to perform a hash function, e.g., MD5
`or SHA.
`2. Existence means for determining whether a particular item
`is present in the system, by examining the identifiers of the
`plurality of data items (Claim 1)
`
`Both parties agree that the claimed function for this means-plus-
`function limitation is “determining whether a particular data item is present
`in the system, by examining the identifiers of the plurality of data items.”
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`Pet. 7; Prelim. Resp. 7. EMC contends that the corresponding structure for
`this means-plus-function limitation is the processor illustrated in Figure 1(b),
`which stores the True File Registry and is programmed to execute the
`“Locate Remote File” mechanism illustrated in Figures 16(a) and 16(b). Pet.
`7 (citing to Ex. 1001, Spec. 4:64-6:19, 9:36-10:10, 16:38-17:9, 17:41-43,
`25:10-13, and 35:51-55). In response, PersonalWeb contends that the
`corresponding structure identified by EMC is incorrect because the portions
`of the specification cited by EMC do not indicate the structure that is
`necessary for performing the claimed function. Prelim. Resp. 11.
`PersonalWeb also argues that certain citations provided by EMC are
`misplaced because they do not describe the claimed function. Id.
`As discussed above, the Specification of the ’791 patent uses the data
`structures stored in the memory of a data processor to implement the
`claimed functions. Ex. 1001, Figure 1(b), Spec. 7:61-63. The Specification
`of the ’791 patent further discloses:
`A mechanism for assimilating a data item (scratch file or
`segment) into a file system, given the scratch file
`[identification] ID of the data item, is [] described with
`reference to FIG. 11. The purpose of this mechanism is to add
`a given data item to the True File registry 126. If the data item
`already exists in the True File registry 126, this will be
`discovered and used during this process, and the duplicate will
`be eliminated. . . . Next, look for an entry for the True Name in
`the True File registry 126 (Step S232) and determine whether a
`True Name entry, record 140, exists in the True File registry.
`
`Ex. 1001, Spec. 14:41-56 (emphasis added). The Specification of the ’791
`patent also discloses:
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`The mechanism to link a path to a True Name is [] described
`with reference to FIG. 14. First, if desired, confirm that the
`True Name exists locally by searching for it in the True Name
`registry or local directory extensions table 135 (Step S260).
`
`Ex. 1001, Spec. 15:52-56 (emphasis added).
`
`We identify the corresponding structure for performing the recited
`function—namely “determining whether a particular data item is present in
`the system, by examining the identifiers of the plurality of data items”—to
`be a data processor programmed according to step S232 illustrated in Figure
`11 or step S260 illustrated in Figure 14.
`3. Local existence means for determining whether an instance
`of a particular data item is present at a particular location
`in the system, based on the identifier of the data item
`(Claims 2 and 3)
`
`Both EMC and PersonalWeb agree that the claimed function for this
`means-plus-function limitation is “determining whether an instance of a
`particular data item is present at a particular location in the system, based on
`the identifier of the data item.” Pet. 7-8; Prelim. Resp. 8. EMC contends
`that the corresponding structure for this means-plus-function limitation is the
`processor illustrated in Figure 1(b), which stores the True File Registry and
`is programmed to execute the “Locate True File” mechanism illustrated in
`Figure 28. Pet. 7-8 (citing to Ex. 1001, Spec. 4:64-6:19, 9:36-10:10, 16:48-
`51, 23:52-24:28, 32:42-45, 35:51-55, and 36:65-66; Ex. 1019). In response,
`PersonalWeb contends that the corresponding structure identified by EMC is
`incorrect because the portions of the specification cited by EMC do not
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`indicate the structure necessary for performing the claimed function. Prelim.
`Resp. 11.
`
`As discussed above, the Specification of the ’791 patent uses the data
`structures stored in the memory of a data processor to implement the
`claimed functions. Ex. 1001, Figure 1(b), Spec. 7:61-63. In addition, Figure
`14 of the ’791 patent illustrates Step S260, which confirms that the True
`Name exists locally by searching for it in the True Name registry or local
`directory extensions table. Ex. 1001, Spec. 15:54-56.
`
`We identify the corresponding structure for performing the recited
`function—namely “determining whether an instance of a particular data item
`is present at a particular location in the system, based on the identifier of the
`data item”—to be a data processor programmed according to step S260
`illustrated in Figure 14.
`
`4. Data associating means for making and maintaining, for a
`data item in the system, an association between the data
`item and the identifier of the data item (Claim 4)
`
`Both EMC and PersonalWeb agree that the claimed function for this
`means-plus-function limitation is “making and maintaining, for a data time
`in the system, an association between the data item and the identifier of the
`data item.” Pet. 8; Prelim. Resp. 8. EMC contends that the corresponding
`structure for this means-plus-function limitation is the processor illustrated
`in Figure 1(b), which stores the True File Registry and is programmed to
`execute the “Assimilate Data Item” mechanism illustrated in Figure 11. Pet.
`8 (citing to Ex. 1001, Spec. 4:64-6:19, 9:36-10:10, 14:40-15:4, 15:41-44,
`
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`16:29-31, 18:34-36 and 43-45, 19:30-37, 24:34-35 and 51-52, 28:30-33,
`30:55-57, 32:54-33:9, and 33:33-39; Ex. 1019). In response, PersonalWeb
`contends that the corresponding structure identified by EMC is incorrect
`be
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