IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Petition for Inter Partes Review
`
`Attorney Docket No.: 47015.131
`
`Customer No.: 116298
`
`Real Parties
`in Interest: Rackspace US, Inc. and
`
`Rackspace Hosting, Inc.
`
`§§§§§§§§§§§§
`
`In re patent of: Farber et al.
`
`U.S. Patent No. 6,415,280
`
`Issued: November 2, 1999
`
`Title:
`
`IDENTIFYING AND
`REQUESTING DATA
`IN NETWORK USING
`IDENTIFIERS WHICH
`ARE BASED ON
`CONTENTS OF DATA
`
`DECLARATION OF MELVIN RAY MERCER
`
`I, Melvin Ray Mercer, do hereby declare as follows:
`
`1.
`
`I am making this Declaration at the request of Petitioner, Rackspace
`
`US, Inc., in connection with a Petition for Inter Partes Review of U.S. Patent
`
`No. 6,415,280 to Farber and Lachman, entitled “IDENTIFYING AND
`
`REQUESTING DATA IN NETWORK USING IDENTIFIERS WHICH ARE
`
`BASED ON CONTENTS OF DATA” (“the ‘280 Patent”).
`
`2.
`
`I am being compensated at my normal consulting rate for my work.
`
`My compensation is not dependent on and in no way affects the substance of my
`
`statements in this Declaration.
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`RACK-1007
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`
`
`Petition for Inter Partes Review
`
`Attorney Docket No.: 47015.131
`
`Customer No.: 116298
`
`Real Parties
`in Interest: Rackspace US, Inc. and
`
`Rackspace Hosting, Inc.
`
`§§§§§§§§§§§§
`
`In re patent of: Farber et al.
`
`U.S. Patent No. 6,415,280
`
`Issued: November 2, 1999
`
`Title:
`
`IDENTIFYING AND
`REQUESTING DATA
`IN NETWORK USING
`IDENTIFIERS WHICH
`ARE BASED ON
`CONTENTS OF DATA
`
`DECLARATION OF MELVIN RAY MERCER
`
`I, Melvin Ray Mercer, do hereby declare as follows:
`
`1.
`
`I am making this Declaration at the request of Petitioner, Rackspace
`
`US, Inc., in connection with a Petition for Inter Partes Review of U.S. Patent
`
`No. 6,415,280 to Farber and Lachman, entitled “IDENTIFYING AND
`
`REQUESTING DATA IN NETWORK USING IDENTIFIERS WHICH ARE
`
`BASED ON CONTENTS OF DATA” (“the ‘280 Patent”).
`
`2.
`
`I am being compensated at my normal consulting rate for my work.
`
`My compensation is not dependent on and in no way affects the substance of my
`
`statements in this Declaration.
`
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`3.
`
`I have no financial interest in Petitioner. I have been informed that
`
`PersonalWeb Technologies, LLC (“PersonalWeb”) and Level 3 Communications,
`
`LLC (“Level 3”) each purport to own 50% of the ‘280 Patent. I have no financial
`
`interest in PersonalWeb or Level 3, and I have had no contact with either company.
`
`I similarly have no financial interest in the ‘280 Patent, and have had no contact
`
`with the named inventors of the ‘280 Patent: David A. Farber and Ronald D.
`
`Lachman.
`
`4.
`
`In the preparation of this Declaration, I have studied:
`
`a.
`
`the ‘280 Patent, RACK-1001;
`
`b.
`
`the prosecution history of the ‘280 Patent, RACK-1002;
`
`c.
`
`U.S. Patent No. 5,649,196, (“Woodhill”), RACK-1003;
`
`d.
`
`Albert Langer, “Re: dl/describe (File descriptions),” post to the
`
`“alt.sources” newsgroup on August 7, 1991 (“Langer”),
`
`RACK-1004;
`
`e.
`
`Decision, Institution of Inter Partes IPR2013-00082, RACK-1005.
`
`f.
`
`Decision, Institution of Inter Partes IPR2013-00083, RACK-1006.
`
`5.
`
`In forming the opinions expressed below, I have considered:
`
`a.
`
`The documents listed above;
`
`b.
`
`The relevant legal standards, including the standard for
`
`obviousness provided in KSR International Co. v. Teleflex, Inc.,
`
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`550 U.S. 398 (2007) and any additional authoritative documents as
`
`cited in the body of this declaration; and
`
`c.
`
`My knowledge and experience based upon my work in this area as
`
`described below.
`
`My Qualifications and Professional Experience
`
`6.
`
`My qualifications are set forth in my curriculum vitae, a copy of
`
`which is attached as Appendix A to this Report. A short synopsis of that material
`
`follows.
`
`7.
`
`I have more than 45 years of dual industrial and academic experience
`
`in Electrical Engineering and Computer Engineering. I received a B.S. in
`
`Electrical Engineering from Texas Tech University in 1968. From 1968 to 1973, I
`
`was a Research/Development Engineer at General Telephone and Electronics
`
`Sylvania in Mountain View, California, and I received an M.S. in Electrical
`
`Engineering from Stanford University in 1971. During this period, I programmed
`
`minicomputer systems (predecessors to personal computers, smartphones, and
`
`modern servers) in machine language, assembly language and various higher-level
`
`languages. I wrote simple Operating Systems, and most of the applications
`
`involved real-time processing as a significant aspect of the systems design.
`
`8.
`
`From 1973 to 1977, I was a Member of Technical Staff at Hewlett-
`
`Packard's Santa Clara Division and subsequently at Hewlett-Packard Laboratories
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`in Palo Alto, California. During this time, I continued to develop application
`
`programs - mostly in the area of real-time data acquisition and control of systems.
`
`In addition to designing the software associated with these systems, I also designed
`
`interface hardware to interact with the software of the computers and accomplish
`
`various tasks. Some of the applications I developed involved a significant number
`
`of data files associated with (to my knowledge) the first full scale study of the
`
`impact of environmental factors on the degradation of liquid crystal materials –
`
`such as those used in electronic clocks and watches.
`
`9.
`
`From 1977 to 1980, I was a Lecturer in the Division of Mathematics,
`
`Statistics, and Computer Science at the University of Texas at San Antonio. As the
`
`director of a laboratory for teaching students to program and build hardware
`
`interfaces with computers, I purchased, built, and operated some of the earliest
`
`personal computers. I received a Ph.D. in Electrical Engineering from the
`
`University of Texas at Austin in 1980.
`
`10.
`
`From 1980 to 1983, I was a Member of Technical Staff at Bell
`
`Laboratories in Murray Hill, New Jersey. My work involved the programming of
`
`computers and the hardware design of components for communication systems.
`
`Among other things, I was part of a three-person team that designed, tested, and
`
`directed the manufacture of an integrated circuit that was a key component in a
`
`digital telephone modem. This work involved significant amounts of data – mostly
`
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`produced on a Cray machine with issues of version control, data access, etc. I also
`
`was involved with telephone switching system engineers, who at that time were
`
`developing the 5ESS Telephone Switch. Such telephone systems have very
`
`sophisticated data handling constraints with, for example the classes of service and
`
`charges to customers for those services.
`
`11.
`
`In 1983, I was appointed Assistant Professor of Electrical and
`
`Computer Engineering at the University of Texas at Austin. In 1987, I was
`
`promoted to Associate Professor and Professor in 1991. During this period I
`
`taught Computer Engineering courses at the undergraduate and graduate level, and
`
`I directed the research of graduate students. I consulted with (and my research was
`
`funded by) numerous industrial organizations (including AT&T).
`
`12.
`
`In 1995, I was appointed Professor of Electrical and Computer
`
`Engineering, Leader of the Computer Engineering Group, and Holder of the
`
`Computer Engineering Chair at Texas A&M University in College Station, Texas.
`
`My teaching, my research, my technical publications, and my supervision of
`
`graduate students during this period included the areas of the design and
`
`implementation of digital hardware and software systems, and my administrative
`
`duties - including the growth and enhancement of the Computer Engineering
`
`Group - directly involved Internet-based communication and control issues. As
`
`with my work at The University of Texas at Austin during this period, I taught
`
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`courses at the undergraduate and graduate level, I directed the research of graduate
`
`students, and I consulted and did research with numerous organizations on topics
`
`related to the issues in this case. For example I oversaw the collection of data in an
`
`experiment to compare the relative efficiency of testing methods for integrated
`
`circuits. Multiple companies were involved, and significant data protection was
`
`required to properly manage information proprietary to the various manufacturers.
`
`13.
`
`In September 2005, I retired from my teaching position, and the
`
`Regents of the Texas A&M University System appointed me as Professor Emeritus
`
`of Electrical and Computer Engineering at Texas A&M University.
`
`14.
`
`Since 1984, I have been an independent consultant and provided
`
`private consultation and advice in Electrical and Computer Engineering to
`
`numerous entities including IBM Corp., Rockwell International, Motorola
`
`Semiconductor, AT&T, Inc. and SigmaTel. Part of my consulting work at
`
`Rockwell International was directly related to the design of telephone modems.
`
`15.
`
`In 1994, my wife and I formed a company called Conference
`
`Management Services. It organizes technical conferences around the world, and it
`
`was one of the earliest companies to utilize online databases as the basis for all
`
`organizing activities (including paper submission, review, and scheduling,
`
`conference registration, event scheduling and planning, support for exhibits, and
`
`hotel registration). I, with the help of undergraduate and graduate students in
`
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`Computer Engineering, designed and implemented the early versions of this
`
`system. Numerous entities (technical contributors, submission reviewers,
`
`administrative personnel, hotels, conference centers, etc.), provided and acquired
`
`information specific to their part of the conference activities. This information was
`
`carefully controlled and compartmentalized as required by our system. The
`
`interval of time when I was involved in these activities included the priority date
`
`for the patents at issue in this case. Today, Conference Management Services
`
`continues to provide such database / electronic file system enabled activities.
`
`16.
`
`I first served as an expert witness at the request of the Office of the
`
`State Attorney General of Texas in 1984. The case was about long distance
`
`telephone service. Since that time, I have been hired by numerous law firms to
`
`provide them and their clients with expert consultation and expert testimony - often
`
`in the areas of patent infringement litigation related to Electrical and Computer
`
`Engineering.
`
`17.
`
`I was actively involved in numerous professional organizations
`
`including the Institute of Electrical and Electronics Engineers ("IEEE"), and I was
`
`recognized as an IEEE Fellow in 1994. I was the Program Chairman for the 1989
`
`International Test Conference, which is an IEEE-sponsored annual conference with
`
`(at that time) more than one thousand attendees and over one hundred presented
`
`papers. I won the Best Paper Award at the 1982 International Test Conference.
`
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`18.
`
`I also won a Best Paper Award at the 1991 Design Automation
`
`Conference, an annual conference with (at that time) more than ten thousand
`
`attendees and five hundred submitted papers, many of which related to the design
`
`of integrated circuit based systems. The subject of that award-winning paper
`
`involved trade-offs between power consumption and processing speed in integrated
`
`circuits.
`
`19.
`
`I also won a Best Paper Award at the 1999 VLSI Test Symposium. I
`
`am the inventor of two United States patents that relate to the design of integrated
`
`circuits. I was selected as a National Science Foundation Presidential Young
`
`Investigator in 1986. That award included $500,000 in research funding and the
`
`document commemorating that award was signed by the President of the United
`
`States.
`
`20. Based upon these and other technical activities, I am familiar with the
`
`knowledge and capabilities of one of ordinary skill in the areas of distributed
`
`information systems and associated access controls. Specifically, my work with
`
`students (undergraduates as well as Masters and Ph.D. candidates) with colleagues
`
`in academia, with engineers practicing in industry, with customers of Conference
`
`Management Services, and with lawyers and technical experts in the Computer
`
`Engineering area allowed me to become personally familiar with the level of skill
`
`of individuals and the general state of this art. Specifically, my experience (1) in
`
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`the industry, (2) with undergraduate and post-graduate students, (3) with
`
`colleagues from academia, and (4) with engineers practicing in the industry
`
`allowed me to become personally familiar with the level of skill of individuals and
`
`the general state of the art. Unless otherwise stated, my testimony below refers to
`
`the knowledge of one of ordinary skill in the computer network and software fields
`
`during the time period around the priority date of the ‘280 Patent.
`
`My Understanding of the Relevant Legal Standards
`
`21.
`
`I have been asked to provide my opinions regarding whether the
`
`claims of the ‘280 Patent are anticipated or would have been obvious to a person
`
`having ordinary skill in the art at the time of the alleged invention, in light of the
`
`prior art.
`
`A. Anticipation
`
`22.
`
`It is my understanding that, to anticipate a claim under 35 U.S.C.
`
`§ 102, a reference must teach every element of the claim.
`
`B.
`
`Obviousness
`
`23.
`
`Further, it is my understanding that a claimed invention is
`
`unpatentable under 35 U.S.C. § 103 if the differences between the invention and
`
`the prior art are such that the subject matter as a whole would have been obvious at
`
`the time the invention was made to a person having ordinary skill in the art to
`
`which the subject matter pertains. I also understand that the obviousness analysis
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`takes into account factual inquiries including the level of ordinary skill in the art,
`
`the scope and content of the prior art, and the differences between the prior art and
`
`the claimed subject matter.
`
`24.
`
`It is my understanding that the Supreme Court has recognized several
`
`rationales for combining references or modifying a reference to show obviousness
`
`of claimed subject matter. Some of these rationales include the following:
`
`combining prior art elements according to known methods to yield predictable
`
`results; simple substitution of one known element for another to obtain predictable
`
`results; use of a known technique to improve a similar device (method, or product)
`
`in the same way; applying a known technique to a known device (method, or
`
`product) ready for improvement to yield predictable results; choosing from a finite
`
`number of identified, predictable solutions, with a reasonable expectation of
`
`success; and some teaching, suggestion, or motivation in the prior art that would
`
`have led one of ordinary skill to modify the prior art reference or to combine prior
`
`art reference teachings to arrive at the claimed invention.
`
`C. Means-Plus-Function
`
`25.
`
`It is my understanding that some claims can be interpreted as “means
`
`plus function” claims under 35 U.S.C. § 112, paragraph 6. I understand that
`
`determining the broadest reasonable interpretation of “means plus function”
`
`claims requires first, defining the particular function of the limitation and second,
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`identifying the corresponding structure for that function in the specification. I also
`
`understand that structure disclosed in the specification is corresponding structure
`
`only if the specification or prosecution history clearly links or associates that
`
`structure to the function recited in the claim.
`
`Subject Matter of the ‘280 Patent
`
`26.
`
`I have reviewed and understand the specification, claims, and
`
`drawings (RACK-1001) and the file history (RACK-1002) of U.S. Patent
`
`No. 6,415,280 (“the ‘280 Patent”).
`
`27.
`
`The ‘280 Patent is directed to “a system in which a set of data items
`
`are distributed across a network of servers.” (RACK-1001, Abstract.) Identifiers
`
`for the data items “being determined using a given function of the data comprising
`
`the particular data item,” “where the identity of the data item depends on all of the
`
`data in the data item.” (RACK-1001, Abstract, 3:30-31.) The ‘280 Patent further
`
`describes how the identifiers can be used in typical system functions to store and
`
`retrieve files. (RACK-1001, Title, Abstract, 3:28-4:35.)
`
`28. According to the ‘280 Patent, prior art systems identified data items
`
`based on their location or address within the data processing system.
`
`(RACK-1001, 1:23-28.) For example, files were often identified by their context
`
`or “pathname,” i.e., information specifying a path through the computer directories
`
`to the particular file (e.g., C:\MyDocuments\LawSchool\2L\PatentsOutline.doc).
`
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`(See RACK-1001, 1:35-42.) The ‘280 Patent contends that all prior art systems
`
`operated in this manner, stating that “[i]n all of the prior data processing systems[,]
`
`the names or identifiers provided to identify data items … are always defined
`
`relative to a specific context,” and “there is no direct relationship between the data
`
`names and the data item.” (RACK-1001, 1:64–2:2, 2:11-12 (emphasis added).)
`
`29. According to the ‘280 Patent, this prior art practice of identifying a
`
`data item by its context or pathname had certain shortcomings. For example, with
`
`pathname identification, the same data name may refer to different data items, or
`
`conversely, two different data names may refer to the same data item.
`
`(RACK-1001, 2:13-15.) Moreover, because there is no correlation between the
`
`contents of a data item and its pathname, there is no a priori way to confirm that
`
`the data item is in fact the one named by the pathname. (RACK-1001, 2:16- 19.)
`
`Furthermore, context or pathname identification may more easily result in the
`
`creation of unwanted duplicate data items, e.g., multiple copies of a file on a file
`
`server. (RACK-1001, 2:46-57.)
`
`30.
`
`The ‘280 Patent purports to address these shortcomings.
`
`(RACK-1001, 3:5-20.) It suggests that “it is therefore desirable to have a
`
`mechanism … to determine a common and substantially unique identifier for a
`
`data item, using only the data in the data item and not relying on any sort of
`
`context.” (RACK-1001, 3:5-10.) Moreover, “[i]t is further desirable to have a
`
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`mechanism for reducing multiple copies of data items … and to have a mechanism
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`which enables the identification of identical data items so as to reduce multiple
`
`copies.” (RACK-1001, 3:11-14.)
`
`31.
`
`To do so, the ‘280 Patent provides substantially unique identifiers that
`
`“depend[] on all of the data in the data item and only on the data in the data item.”
`
`(RACK-1001, 1:13-17; see also 3:29-34.) The ‘280 Patent uses the terms “True
`
`Name” and “data identifier” to refer to the substantially unique identifier for a
`
`particular data item (RACK-1001, 6:6-9) and explains that a True Name is
`
`computed using a message digest function (see RACK-1001, 12:61-13:3).
`
`Preferred embodiments use either of the MD5 or SHA message digest functions to
`
`calculate a substantially unique identifier from the contents of the data item.
`
`(RACK-1001, 12:61-13:3.)
`
`32.
`
`The ‘280 Patent calls these context- or location-independent, content-
`
`based identifiers “True Names”–a phrase “coined by the inventors.” (See
`
`RACK-1002, p. 209; Office Action Response (Aug. 24, 2001) at 22.) With these
`
`identifiers, the patent asserts, “data items can be accessed by reference to their
`
`identities (True Names) independent of their present location.” (RACK-1001,
`
`34:9-11; 34: 21-23.) The actual data item corresponding to these location-
`
`independent identifiers may reside anywhere, e.g., locally, remotely, offline.
`
`(RACK-1001, 34:23-25.) “[T]he identity of a data item is independent of its name,
`
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`origin, location, address, or other information not derivable directly from the data,
`
`and depends only on the data itself.” (RACK-1001, 3:32-34.)
`
`33.
`
`In the preferred embodiments, the substantially unique identifiers are
`
`used to “augment” standard file management functions of an existing operating
`
`system. (See RACK-1001, 6:2-19.) For example, a local directory extensions
`
`(LDE) table1 is indexed by a pathname or contextual name of a file and also
`
`includes True Names for most files. (See RACK-1001, 8:24-29.) A True File
`
`registry (TFR) lists True Names, and stores “location, dependency, and migration
`
`information about True Files.” (See RACK-1001, 8:32-39.) True Files are
`
`identified in the True File registry by their True Names, and can be looked up in
`
`the registry by their True Names. (See RACK-1001, 8: 35-37.) This look-up
`
`provides, for each True Name, a list of the locations, such as file servers, where the
`
`corresponding file is stored. (See RACK-1001, 9:35–62; see also 16:23–62.)
`
`34. When a data item is to be “assimilated” into the data processing
`
`system, its substantially unique identifier (True Name) is calculated and compared
`
`to the True File Registry to see if the True Name already exists in the Registry.
`
`(See RACK-1001, 14:36-41.) If the True Name already exists, this means that the
`
`1 The patent describes an LDE table as a data structure that provides information
`
`about files and directories in the system and includes information in addition to
`
`that provided by the native file system. (See RACK-1001, 8:24-31.)
`
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`data item already exists in the system and the to-be-assimilated data item (i.e., the
`
`scratch file) need not be stored. (See RACK-1001, 14:41-44.) Conversely, if the
`
`True Name does not exist in the Registry, then a new entry is created in the
`
`Registry which is then set to the just-calculated True Name value, and the data
`
`items can be stored. (See RACK-1001, 14:44-52.)
`
`35.
`
`The ‘280 Patent describes methods that operate on a network of
`
`processors 102 interconnected by a bus 106 such as illustrates in FIG. 1(a),
`
`reproduced below.
`
`As shown below in reproduced Fig. 1(b), each processor or computer 102
`
`includes a CPU 108 and a local storage device 112 along with memory 110.
`
`(RACK-1001, 4:65-5:1). The ‘280 Patent describes that each computer 102 may
`
`be in “a client/server, client/client, or a server/server relationship.” (RACK-1001,
`
`5:4-10). “In a peer-to-peer relationship, sometime a particular processor 102 acts
`
`as a client processor, whereas at other times the same processor acts as a server
`
`processor.” (RACK-1001, 5:13-16). Depending on a particular function of the
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`system, a client processor may make requests of other components to serve data to
`
`that processor, while at other times the same processor may serve data it has stored
`
`on its local storage device.
`
`36.
`
`I have been informed that the ‘280 Patent claims priority to
`
`U.S. Patent Application No. 08/425,160, filed on April 11, 1995. I understand this
`
`means the ‘280 Patent is considered to have been filed on April 11, 1995 for the
`
`purposes of determining whether a reference will qualify as prior art.
`
`Prosecution File History Overview
`
`37.
`
`I understand that during the prosecution of the ’280 Patent, when
`
`considering the present claims, the original patent Examiner did not rely upon a
`
`reference where the content of a data file is used to determine an identifier for the
`
`data file.
`
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`38.
`
`I understand that during the prosecution of the ‘280 Patent, the
`
`applicants for the ‘280 Patent stated with respect to the disclosure of a network of
`
`servers within the ‘280 Patent, that:
`
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`18
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`18
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`
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`RACK-1002, p. 205-206; Office Action Response (Aug, 24, 2001) at 22.)
`
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`39.
`
`I understand that in response to the prior art rejections, the applicant
`
`amended the claims “to recite that the identifier is ‘determined using a given
`
`function of the data, wherein said data used by the given function to determine the
`
`data identifier comprises the contents of the particular data file.’ . . . Therefore, as
`
`presently claimed, in this invention the identifier determined for a file using a
`
`given function, i.e. its True Name, is based on the data in the file. Once
`
`determined, in operation, the True Name of a file may well be combined with other
`
`information such as the actual (contextual) name of the file.” (RACK-1002, p. 211
`
`(emphasis in original)).
`
`40.
`
`I further understand that the original Examiner in the ‘280 Patent was
`
`not made aware of Woodhill, Langer, or any other reference that discloses
`
`performing a function over the contents of a data file to determine an identifier for
`
`that data file.
`
`41.
`
`In light of the information in the Woodhill and Langer references, it is
`
`my opinion that the methods claimed in the ‘280 Patent were known to persons
`
`skilled in that art at the time the application for the ‘280 Patent was filed. As will
`
`be described in extensive detail below, at the time the application for the ‘280
`
`Patent was filed, there was nothing new about using a function of the contents of a
`
`data file to determine a unique identifier for the data file and then subsequently
`
`utilizing the unique identifier to store and/or retrieve the identified data file.
`
`20
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`RACK-1007
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`
`
`Claims of the ‘280 Patent
`
`42.
`
`I understand that claims 10, 15, 16, 18, 25, 31, 32, 33, 36 and 38 of
`
`the ‘280 Patent are being challenged in the above-referenced inter partes review.
`
`43.
`
`It is my understanding that in order to properly evaluate the ‘280
`
`Patent, the terms of the claims must be construed. It is my understanding that the
`
`claims are to be given their broadest reasonable interpretation in light of the
`
`specification. It is my further understanding that claim terms are given their
`
`ordinary and accustomed meaning as would be understood by one of ordinary skill
`
`in the art, unless the inventor, as a lexicographer, has set forth a special meaning
`
`for a term. In order to construe the claims, I have reviewed the entirety of the ‘280
`
`Patent, as well as its prosecution history.
`
`“a network of servers”
`
`44.
`
`The claim term “a network of servers” appears in independent
`
`claims 10, 18, 25 and 31. As explained further below, the specification does not
`
`disclose a network of dedicated servers, but instead discloses a network of
`
`processors that can change roles from acting as a client to acting as a server
`
`depending on the situations and functions of the processing system. During
`
`prosecution, in response to an objection indicating that the drawings did not show
`
`the claimed “network of servers”, the Applicants explained to the examiner:
`
`21
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`Page 21 of 73
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`
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`“Applicants respectfully submit that the drawings, as filed, do comply with
`
`37 CFR 1.83(a) and do show all of the claimed features. For example,
`
`Figure 1 of the application, reproduced below, shows a number of client
`
`and server processors, as claimed.” (RACK-1002, pg. 207 (emphasis
`
`added).)
`
`22
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`Page 22 of 73
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`
`
`45.
`
`The Applicants further explained to the Examiner that “the application
`
`makes clear that some of the network of processors shown in the embodiment of
`
`Figure 1 may act as servers, others as clients.” (RACK-1002, pg. 207 (emphasis
`
`added).)
`
`46.
`
`The specification of the ‘280 Patent includes additional description of
`
`a multiprocessor system:
`
`“In a data processing system 100, wherein more than one processor 102 is used,
`
`that is, in a multiprocessor system, the processors may be in one of various
`
`relationships. For example, two processors 102 may be in a client/server,
`
`client/client, or a server/server relationship. These inter-processor relationships
`
`may be dynamic, changing depending on particular situations and functions. Thus,
`
`a particular processor 102 may change its relationship to other processors as
`
`needed, essentially setting up a peer-to-peer relationship with other processors. In a
`
`peer-to-peer relationship, sometimes a particular processor 102 acts as a client
`
`processor, whereas at other times the same processor acts as a server
`
`processor. In other words, there is no hierarchy imposed on or required of
`
`processors 102.” (RACK-1001, 5:4-17 (emphasis added).)
`
`47.
`
`The specification does not disclose a network of dedicated servers.
`
`The specification and file history provide a description of processors networked
`
`together with the processors changing between client and server functions as
`
`23
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`Page 23 of 73
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`
`
`needed to accomplish the processing demands of the data processing system.
`
`Thus, it is my opinion that a person of ordinary skill in the art would understand
`
`the broadest reasonable interpretation of “a network of servers” in view of the
`
`specification and file history to be: “a network of processors acting as servers, at
`
`least part of the time.”
`
`“a network comprising a plurality of processors, some of the processors
`being servers and some of the processors being clients”
`
`48.
`
`The above claim term appears in the preamble of claims 36 and 38. In
`
`an earlier filed proceeding, with respect to the ‘280 Patent, IPR2013-00083, the
`
`PTAB previously determined that it should be entitled to patentable weight.
`
`(RACK-1006, pp. 9-10.) Consistent with and for the reasons explained above with
`
`respect to the claim term “network of servers,” the above term should be
`
`understood to have a similar meaning such that a single processor can have the
`
`ability to perform either a client role or a server role depending on the needs of the
`
`processing system. More specifically, it is my opinion that a person of ordinary
`
`skill in the art would understand the broadest reasonable interpretation of “a
`
`network comprising a plurality of processors, some of the processors being servers
`
`and some of the processors being clients” in view of the specification and file
`
`history to be a “a network comprising a plurality of processors, some of the
`
`24
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`Page 24 of 73
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`
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`processors acting as servers and some of the processors acting as clients, at least
`
`part of the time.”
`
`49.
`
`It is my understanding that a panel of the Patent Trial and Appeal
`
`Board (PTAB) has already construed certain claim terms in the ‘280 Patent. Based
`
`on my review of the PTAB’s constructions (RACK-1013, pp. 10-11.), I believe my
`
`opinion is consistent with the views and constructions of the PTAB. Specifically,
`
`the PTAB’s constructions includes:
`
`Appears in
`Challenged Claims
`10, 18, 25, 31, 36, 38
`
`Claim Term
`“data file”
`
`PTAB Construction
`“data file” is “a named data item,
`such as a simple file that includes a
`single, fixed sequence of data bytes
`or a compound file that includes
`multiple, fixed sequences of data
`bytes.”
`
`(RACK-1006, pp. 10-11.)
`
`50.
`
`It is my understanding that the PTAB has also adopted certain
`
`constructions in proceedings on U.S. Patent No. 5,978,791, the parent patent to the
`
`‘280 Patent. Specifically, the PTAB adopted the following constructions of the
`
`terms “data identifier” and “location” in IPR-2013-00082:
`
`Claim Term
`“data identifier”
`
`PTAB Construction
`“substantially unique identifier for a
`particular item”
`
`Appears in
`Challenged Claims
`10, 18, 25
`
`25
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`Page 25 of 73
`
`
`
`Claim Term
`“location”
`
`PTAB Construction
`“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”
`
`Appears in
`Challenged Claims
`18
`
`(RACK-1005, pp. 15-16.)
`
`Although I have considered and assumed the constructions adopted by the PTAB
`
`in forming my conclusions herein, those conclusions are also consistent with mere
`
`ordinary meaning for such terms in view of the specification of the ‘280 Patent.
`
`51.
`
`Except to the extent qualified in the paragraphs below, I have assumed
`
`and used the above constructions of the PTAB in forming my conclusions herein.
`
`Level of Skill in the Art
`
`52.
`
`In my opinion, the level of ordinary skill in the art needed to have the
`
`capability of understanding the scientific and engineering principles applicable to
`
`the ‘280 Patent is a bachelor’s degree in Electrical Engineering , Computer
`
`Engineering or Computer Science; or equivalent industry experience as one
`
`designing data storage systems and programming software applications. A
`
`strength in one of these areas can compensate for a weakness in another.
`
`Technical Basis Underlying the Grounds of Rejections Set Forth in the
`Petition for Inter Partes Review
`
`26
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`Page 26 of 73
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`
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`53.
`
`In the paragraphs that follow, I detail my opinions regarding various
`
`grounds of invalidity based on application of specific prior art references to
`
`specific challenged claims of the ‘280 Patent. In each case, I first summarize the
`
`applied reference(s) and then apply the teachings and/or suggestions thereof to
`
`specific claims of the ‘280 Patent, interpreted in accord with the foregoing
`
`constructions of specific claim terms. In the absence of an express construction of
`
`terminology or language, I have concluded that the inventor has not set forth
`
`special
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