throbber
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
`
`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.
`
`§§§§§§§§§§§§
`
`PETITION FOR INTER PARTES REVIEW
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Pursuant to the provisions of 35 U.S.C. §§ 311-319, Rackspace US, Inc. and
`
`Rackspace Hosting, Inc. (“Petitioners”) hereby petitions the Patent Trial and
`
`Appeal Board to institute inter partes review of claims 10, 15, 16, 18, 25, 31, 32,
`
`33, 36 and 38 of US Patent No. 6,415,280 to Faber et al. (“the ‘280 Patent,”
`
`RACK-1001.) PersonalWeb Technologies, LLC and Level 3 Communications,
`
`LLC have stated, in filings in the United States District Court for the Eastern
`
`District of the Texas that they each own an undivided fifty percent (50%) interest
`
`in the ‘280 Patent.
`
`
`
`i
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`

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`
`
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`Petition for Inter Partes Review of U.S. Patent No. 5,978,791
`
`TABLE OF CONTENTS
`
`I. 
`
`Mandatory Notices by Petitioner (37 C.F.R. § 42.8(a)(1)) ............................ 1 
`
`A.  Real Parties-in-Interest (37 C.F.R. § 42.8(b)(1)) ........................................ 1 
`
`B.  Petitioner Notice of Related Matters (37 C.F.R. § 42.8(b)(2)) ................... 1 
`
`C.  Identification of Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3)) and
`Service Information (37 C.F.R. § 42.8(b)(4)) ............................................. 3 
`
`II. 
`
`III. 
`
`Grounds for Standing (37 C.F.R. § 42.104(a)) ............................................... 4 
`
`Statement of Precise Relief Requested (37 C.F.R. § 42.22(a)) ....................... 4 
`
`IV.  Overview of Challenges .................................................................................. 4 
`
`A.  Identification of Challenges (37 C.F.R. § 42.104(b)) .................................. 4 
`
`B.  Summary of Central Argument that Challenged Claims are Unpatentable..6 
`
`C.  Threshold Showing of Reasonable Likelihood That Petitioner Would
`Prevail With Respect To At Least One Challenged Claim (35 U.S.C.
`§ 314(a)) Has Been Met; Institution of Inter Partes Review on Multiple
`Grounds is Proper (37 C.F.R. § 42.108) ....................................................... 7 
`
`V. 
`
`The Challenged ‘280 Patent ............................................................................ 8 
`
`A.  Overview of the Patent ……………………………………………………..8 
`
`B.  Prosecution History……………................................................................13 
`
`C.  Claim Construction (37 C.F.R. § 42.104(b)(3)) ......................................... 14 
`
`1.  Terms Already Construed by the PTAB ............................................... 14 
`
`2.  Additional Terms Requiring Construction ............................................ 16 
`
`3.  Claim Construction Standard ................................................................ 19 
`
`ii
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`

`
`Petition for Inter Partes Review of U.S. Patent No. 5,978,791
`
`
`
`VI.  Unpatentability under Specific Grounds (37 C.F.R. 42.104(b)(4) and
`Evidence Relied Upon in Support of Challenge (37 C.F.R. 42.104(b)(5)) ............. 19 
`
`A.  Challenge #1: Claims 10, 15, 16, 18, 25, 36 and 38 are anticipated under
`35 U.S.C. § 102(e) based on Woodhill ....................................................... 19 
`
`B.  Challenge #2: Claims 10, 15, 16, 18, 25, 31, 32, 33, 36, 38 are obvious
`under 35 U.S.C. § 103 based on Woodhill in view of Langer ................... 39 
`
`VII.  Conclusion ..................................................................................................... 51 
`
`iii
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`

`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
`
`
`
`
`I. Mandatory Notices by Petitioner (37 C.F.R. § 42.8(a)(1))
`A. Real Parties-in-Interest (37 C.F.R. § 42.8(b)(1))
`The real parties in interest are Rackspace US, Inc. and Rackspace Hosting,
`
`Inc.
`
`B. Petitioner Notice of Related Matters (37 C.F.R.
`§ 42.8(b)(2))
`
`The ‘280 Patent is asserted in related judicial matter PersonalWeb Tech.
`
`LLC et al v. Rackspace US, Inc. et al., No. 6-12-cv-00659 (E.D. Tex., filed
`
`Sep. 17, 2012.)
`
`As of the filing date of this petition, to the best of petitioners’ knowledge
`
`additional 3rd party judicial matters asserting claims of patent infringement under
`
`the ‘280 patent are: PersonalWeb Techs. LLC et al v. EMC Corp. et al.,
`
`No. 5-13-cv-01358 (N.D. Ca., filed Mar. 26, 2013); PersonalWeb Techs. LLC
`
`et al v. Facebook Inc., No. 5-13-cv-01356 (N.D. Ca., filed Mar. 26, 2013);
`
`PersonalWeb Techs. LLC et al v. NetApp, Inc., No. 5-13-cv-01359 (N.D. Ca., filed
`
`Mar. 26, 2013); PersonalWeb Techs. LLC v. Google, Inc. et al, No. 5-13-cv-01317
`
`(N.D. Ca., filed Mar. 25, 2013); PersonalWeb Techs. LLC et al v. Int’l Bus. Mach.
`
`Corp., No. 6-12-cv-00661 (E.D. Tex., filed Sep. 17, 2012); PersonalWeb Techs.
`
`LLC et al v. NetApp, Inc., No. 6-12-cv-00657 (E.D. Tex., filed Sep. 17, 2012);
`
`PersonalWeb Techs. LLC et al v. Facebook, Inc., No. 6-12-cv-00662 (E.D. Tex.,
`
`filed Sep. 17, 2012); PersonalWeb Techs. LLC et al v. Apple Inc.,
`
`1
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`

`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
`No. 6-12-cv-00660 (E.D. Tex., filed Sep. 17, 2012); PersonalWeb Techs. LLC et
`
`al v. Microsoft Corp., No. 6-12-cv-00663 (E.D. Tex., filed Sep. 17, 2012);
`
`PersonalWeb Techs. LLC et al v. Yahoo! Inc., No. 6-12-cv-00658 (E.D. Tex., filed
`
`Sep. 17, 2012); PersonalWeb Techs. LLC v. Autonomy, Inc., No. 6-11-cv-00683
`
`(E.D. Tex., filed Dec. 19, 2011); PersonalWeb Techs. LLC v. Google, Inc. et al,
`
`No. 6-11-cv-00656 (E.D. Tex., filed Dec. 8, 2011); PersonalWeb Techs. LLC v.
`
`NEC Corp. of America, Inc., No. 6-11-cv-00655 (E.D. Tex., filed Dec. 8, 2011);
`
`PersonalWeb Techs. LLC v. NetApp, Inc., No. 6-11-cv-00657 (E.D. Tex., filed
`
`Dec. 8, 2011); PersonalWeb Techs. LLC v. Caringo, Inc., No. 6-11-cv-00659
`
`(E.D. Tex., filed Dec. 8, 2011); PersonalWeb Techs. LLC v. Amazon Web Svcs.
`
`LLC et al, No. 6-11-cv-00658 (E.D. Tex., filed Dec. 8, 2011); PersonalWeb
`
`Techs. LLC v. EMC Corp. et al, No. 6-11-cv-00660 (E.D. Tex., filed Dec. 8,
`
`2011); and Akamai Techs, Inc. v. Digital Island, Inc., No. 1-00-cv-11851
`
`(D. Mass., filed Sep. 13, 2000.)
`
`In addition, the following instituted trials and/or 3rd party petitions for inter
`
`partes review are related:
`
` IPR2013-00082 (instituted for related patent 5,978,791, May 17, 2013)
`
` IPR2013-00083 (instituted for present patent 6,415,280, May 17, 2013)
`
` IPR2013-00084 (instituted for related patent 7,945,544, May 17, 2013)
`
` IPR2013-00085 (instituted for related patent 7,945,539, May 17, 2013)
`
`2
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`

`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
` IPR2013-00086 (instituted for related patent 7,949,662, May 17, 2013)
`
` IPR2013-00087 (instituted for related patent 8,001,096, May 17, 2013)
`
` IPR2013-00319 (petition for related patent 5,978,791, May 30, 2013)
`
` IPR2013-00596 (petition for related patent 7,802,310, Sept. 18, 2013)
`
`Finally, Petitioners are also seeking inter partes review of related U.S. Patents
`
`5,978,791, 6,928,442, 7,802,310 and 8,099,420, and requests that if possible, they
`
`be assigned to the same panel for administrative efficiency.
`
`C. Identification of Lead and Back-Up Counsel (37 C.F.R.
`§ 42.8(b)(3)) and Service Information (37 C.F.R. § 42.8(b)(4))
`
`Lead Counsel
`J. Andrew Lowes
`HAYNES AND BOONE, LLP
`2323 Victory Ave., Suite 700
`Dallas, TX 75219
`
`Back-up Counsel
`David W. O’Brien
`HAYNES AND BOONE, LLP
`2323 Victory Ave., Suite 700
`Dallas, TX 75219
`
`John Russell Emerson
`HAYNES AND BOONE, LLP
`2323 Victory Ave., Suite 700
`Dallas, TX 75219
`
`
`
`
`Phone: (972) 680-7557
`Fax: (214) 200-0853
`andrew.lowes.ipr@haynesboone.com
`USPTO Reg. No. 40,706
`
`
`Phone: (512) 867-8457
`Fax: (214) 200-0853
`david.obrien.ipr@haynesboone.com
`USPTO Reg. No. 40,107
`
`Phone: (972) 739-6923
`Fax: (214) 200-0853
`russell.emerson.ipr@haynesboone.com
`USPTO Reg. No. 44,098
`
`3
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`

`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
`II. Grounds for Standing (37 C.F.R. § 42.104(a))
`
`Petitioners certify pursuant to 37 C.F.R. § 42.104(a) that the ‘280 Patent is
`
`available for inter partes review and that Petitioners are not barred or estopped
`
`from requesting inter partes review challenging the patent claims on the grounds
`
`identified herein.
`
`III. Statement of Precise Relief Requested (37 C.F.R. § 42.22(a))
`
`Petitioners ask that the Board review the accompanying prior art and
`
`analysis, institute a trial for inter partes review of claims 10, 15, 16, 18, 25, 31,
`
`32, 33, 36 and 38 of the ‘280 Patent, and cancel those claims as unpatentable.
`
`IV. Overview of Challenges
`
`A. Identification of Challenges (37 C.F.R. § 42.104(b))
`The primary reference is U.S. Patent No. 5,649,196 to Woodhill, et al.
`
`(hereinafter “Woodhill”) issued on July 15, 1997 as a continuation of 08/085,596
`
`filed July 1, 1993 (RACK-1003.) Thus, Woodhill is prior art under 35 U.S.C.
`
`§ 102(e). The secondary reference is Albert Langer, “Re: dl/describe (File
`
`descriptions),” post to the “alt.sources” newsgroup on August 7, 1991 (“Langer”),
`
`RACK-1004 (hereinafter “Langer”). (RACK-1004.) As explained by Dr. Reddy,
`
`Langer was available as a printed publication more than one year before the
`
`priority date of the ‘280 Patent. (Reddy Decl., RACK-1008.) Therefore, Langer
`
`is prior art to the ‘280 Patent under 35 U.S.C. § 102(b).
`
`4
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`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
`For each challenge, (i) the specific statutory grounds of unpatentability and
`
`relied upon prior art patents or printed publications and (ii) the applicable claim(s)
`
`are identified in the following table.
`
`Challenge
`1
`
`Challenged claim(s)
`Grounds and Reference(s)
`§ 102(e), US Patent 5,649,196 (Woodhill) 10, 15, 16, 18, 25, 36,
`and 38
`
`2
`
`§ 103(a), Woodhill in view of Langer pub-
`lication
`
`10, 15, 16, 18, 25, 31,
`32, 33, 36 and 38
`
`
`
`Challenged claims are to be construed as indicated in Section V below. For
`
`each challenge, the unpatentability of the applicable claims is established with
`
`reference to particular claim elements and with reference to specific disclosure
`
`found in the relied upon prior art. Supporting evidence is referenced by exhibit
`
`number and with particular reference to specific portions of the evidence that
`
`support the challenges. In particular, a Declaration of Dr. Melvin Ray Mercer,
`
`Professor Emeritus of Electrical and Computer Engineering at Texas A&M
`
`University (Mercer Decl., RACK-1007) is included to establish a record for
`
`factual positions and matters of opinion testimony relied upon herein. In addition,
`
`a Declaration of Dr. Narasimha Reddy, Professor of Electrical and Computer
`
`Engineering at Texas A&M University is included to establish facts related to the
`
`Langer printed publication (Reddy Decl., RACK-1008). Petitioner’s Exhibit List
`
`is appended hereto.
`
`5
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`
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`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
`B. Summary of Central Argument that Challenged Claims
`are Unpatentable
`
`The ‘280 Patent relates generally to methods of distributing files across a
`
`data processing network and retrieving copies of the files using unique identifiers
`
`based, at least in part, on a function of the contents of a data file. The ‘280 Patent
`
`contends that “all of the prior data processing systems” used names or identifiers
`
`that were “always defined relative to a specific context,” such as the file or
`
`directory containing the file. (RACK-1001, Spec. 1:64-2:10.) As explained
`
`below, this characterization of the prior art is in accurate. Both the Woodhill and
`
`Langer references disclose data processing systems that utilize data identifiers that
`
`are based, at least in part, on a function of the contents of the file. Both Woodhill
`
`and Langer use the content based identifiers to obtain copies of the data files
`
`stored on other servers on the network. Langer also discloses use of an MD5 hash
`
`function to determine a data identifier for the contents of the file. Thus, either
`
`Woodhill alone or Woodhill in view of Langer demonstrate that the subject matter
`
`of the challenged claims was already in the prior art before the priority date of the
`
`‘280 Patent.
`
`6
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`
`
`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
`C. Threshold Showing of Reasonable Likelihood That
`Petitioner Would Prevail With Respect To At Least One
`Challenged Claim (35 U.S.C. § 314(a)) Has Been Met;
`Institution of Inter Partes Review on Multiple Grounds is
`Proper (37 C.F.R. § 42.108)
`
`Information presented in this Petition, including unpatentability grounds
`
`detailed in Section VI establishes a reasonable likelihood that Petitioner will
`
`prevail with respect to at least one of the challenged claims. See 35 U.S.C.
`
`§ 314(a). Indeed, that section, supported by the Mercer Decl. (RACK-1007)
`
`demonstrates multiple grounds on which the challenged claims are anticipated by,
`
`or obvious in view of, the relied upon prior art patent and printed publication.
`
`Petitioner is aware that this honorable Patent Trial and Appeal Board
`
`(PTAB) has already instituted trial (IPR2013-00082, instituted May 17, 2013)
`
`with respect to only claims 36 and 38 of the ‘280 Patent, a subset of the claims
`
`challenged herein. Petitioner respectfully requests that this honorable PTAB
`
`institute trial for all challenged claims based on all grounds of unpatentability
`
`asserted herein and, in particular, for newly challenged claims 10, 15, 16, 18, 25,
`
`31, 32, and 33 based on the following anticipation and obviousness challenges that
`
`are not being considered in the already instituted trial.
`
`7
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`

`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
`V. The Challenged ‘280 Patent
`
`A. Overview of the Patent
`The ‘280 Patent is directed to data storage systems that use “data unique
`
`identifiers” to identify data files. Each “data identifier” is based on the contents of
`
`the data in a data file, such that identical data items have the same substantially
`
`unique identifier. (RACK-1001, Title, Abstract, 1:13-18.)
`
`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\classes\EE350\lecture1.ppt). (See
`
`RACK-1001, 1:35-42 and Mercer Decl., RACK-1007, ¶ 28.) 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,
`
`1:65–2:3, 2:12-13.)
`
`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
`
`8
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`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
`conversely, two different data names may refer to the same data item.
`
`(RACK-1001, 2:12-16.) 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, 2:18- 21.)
`
`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, 2:47-58.)
`
`The ‘280 Patent purports to address these shortcomings. (RACK-1001,
`
`3:6-20.) 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,
`
`3:6-11.) Moreover, “[i]t is further desirable to have a mechanism for reducing
`
`multiple copies of data items … and to have a mechanism which enables the
`
`identification of identical data items so as to reduce multiple copies.”
`
`(RACK-1001, 3:12-15.)
`
`To do so, the ‘280 Patent provides substantially unique identifiers that
`
`“depend[] on all of the data in the data item ….” (RACK-1001, 1:13-18; see also
`
`3:29-32.) 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,
`
`6:6-10) and explains that a True Name is computed using a message digest
`
`9
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`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
`function (See RACK-1001, 12:55-13:14.) 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, 12:55-13:17.)
`
`The ‘280 patent calls these context- or location-independent, content-based
`
`identifiers “True Names”–a phrase apparently coined by the inventors. 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, 34:30-32.) The actual data item corresponding to these location-
`
`independent identifiers may reside anywhere, e.g., locally, remotely, offline.
`
`(RACK-1001, 34:11-19.) “[T]he identity of a data item is independent of its
`
`name, origin, location, address, or other information not derivable directly from
`
`the data, and depends only on the data itself.” (RACK-1001, 3:33-35.)
`
`In the preferred embodiments, the substantially unique identifiers are used
`
`to “augment” standard file management functions of an existing operating system.
`
`(See RACK-1001, 6:11-19.) For example, a local directory extensions (LDE)
`
`table1 is indexed by a pathname or contextual name of a file and also includes
`
`1 The patent describes an LDE table as a data structure which 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,
`
`8:19-26.)
`
`10
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`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
`True Names for most files. (See RACK-1001, 8:19-26.) A True File registry
`
`(TFR) lists True Names, and stores “location, dependency, and migration
`
`information about True Files.” (See RACK-1001, 8:27-28, 33-35.) 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: 30-32, 23:61–62.) 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, 34:21–31.)
`
`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, 14:24-45.) If the True Name already exists, this means that the 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, 14:41-45.) 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, 14:46-52.)
`
`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
`
`described as a data processing system 100. (RACK-1001, 4:59-64.)
`
`11
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`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
`
`
`As shown below in reproduced Fig. 1(b), in addition to the storage devices
`
`104, each processor or computer 102 includes a CPU 108 and a local storage
`
`device 112 along with memory 110. (RACK-1001, Spec. 4:59-68.) The ‘280
`
`Patent describes that each computer 102 may be in “a client/server, client/client,
`
`or a server/server relationship.” (RACK-1001, Spec. 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, 5:13-18.) Depending on a particular function of the 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. (RACK-1001, 5:8-17, Mercer Decl. RACK-1007, ¶ 35.)
`
`12
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`
`
`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
`
`
`Dr. Mercer confirms the foregoing overview of the challenged ‘791 patent.
`
`(See Mercer Decl., RACK-1007, ¶¶ 26-35.)
`
`B. Prosecution History
`The ‘280 patent is based on application 09/283,160 filed April 4, 1999 as a
`
`division of 08/425,150 that was originally filed on April 11, 1995. During
`
`prosecution of the ‘280 Patent, the original examiner rejected the claims as not
`
`being supported by the disclosure and being obvious over the cited prior art. In
`
`response, the applicants for the ‘280 Patent stated with respect to the disclosure of
`
`a network of servers within the ‘280 Patent, that Figs 1(a) and (b), reproduced
`
`above “show a number of client and server processors, as claimed.”
`
`(RACK-1002, OA Response, Aug. 24, 2001, p. 205.) 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
`
`13
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`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
`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, OA Response, Aug. 24, 2001, p. 211 (emphasis
`
`in original).)
`
`C. Claim Construction (37 C.F.R. § 42.104(b)(3))
`
`This petition presents claim analysis in a manner that is consistent with the
`
`broadest reasonable interpretation in light of the specification. See 37 C.F.R.
`
`§ 42.100(b). 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. Multiform Desiccants,
`
`Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); York Prods., Inc. v.
`
`Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1572 (Fed. Cir. 1996).
`
`1.
`
`Terms Already Construed by the PTAB
`
`“data file”
`
`In an instituted inter partes review of the ‘280 patent (IPR2013-00083), the
`
`PTAB has already construed the claim term “data file,” appearing in claims 10,
`
`14
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`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
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`18, 25, 31, 36 and 38, as “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.” (see Decision to Institute Inter Partes Review,
`
`IPR-2013-00083, RACK-1006, pp. 10-11.)
`
` “data identifier”
`
`In an instituted inter partes review of U.S. Patent No. 5,978,791, the parent
`
`patent to the ‘280 Patent, the PTAB has already construed “data identifier,”
`
`appearing in claims 10, 18 and 25, as a “substantially unique identifier for a
`
`particular element.” (see Decision to Institute Inter Partes Review, IPR-2013-
`
`00082, RACK-1005, p. 16.)
`
`“location”
`
`In an instituted inter partes review of U.S. Patent No. 5,978,791, the parent
`
`patent to the ‘280 Patent, the PTAB has already construed “location,” appearing in
`
`claim 18, 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.” (see Decision to
`
`Institute Inter Partes Review, IPR-2013-00082, RACK-1005, 15-16.)
`
`Except to the extent qualified in the paragraphs below, the present petition
`
`uses the above constructions of the PTAB in demonstrating unpatentability of the
`
`claims.
`
`15
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`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
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`2.
`
`Additional Terms Requiring Construction
`
`“a network of servers”
`
`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 :
`
`“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, Response to OA, p. 205 (emphasis added).)
`
`
`
`16
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`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
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`
`
`The Applicants included FIGS. 1(a) and (b), reproduced above, and 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, p. 206.)
`
`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
`
`17
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`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
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`processor. In other words, there is no hierarchy imposed on or
`required of processors 102.”
`
`(RACK-1001, 5:4-17 (emphasis added).)
`
`The specification does not disclose a network of dedicated servers. As
`
`Dr. Mercer explains, the specification and file history provide a description of
`
`processors networked together with the processors changing between client and
`
`server functions as needed to accomplish the processing demands of the data
`
`processing system. (Mercer Decl., RACK-1007, ¶¶ 44-47.) Thus, 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.” (Mercer Decl.,
`
`RACK-1007, ¶ 47.)
`
`“a network comprising a plurality of processors, some of the processors being
`servers and some of the processors being clients”
`
`The above claim term appears in the preamble of claims 36 and 38. In an
`
`earlier filed proceeding, IPR2013-00083, the PTAB previously determined that
`
`the preamble of claims 36 and 38 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 with a single processor having the ability to
`
`satisfy both a client role and a server role depending on the needs of the
`
`18
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`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
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`processing system. More specifically, 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 processors acting as
`
`servers and some of the processors acting as clients, at least part of the time.”
`
`(Mercer Decl., RACK-1007, ¶ 48)
`
`3.
`
`Claim Construction Standard
`
`For avoidance of doubt, the foregoing proposed claim construction is
`
`presented by Petitioner in accordance with the broadest reasonable interpretation
`
`standard applied for purposes of inter partes review. Petitioner reserves the right
`
`to advocate a different claim interpretation in district court or any other forum in
`
`accordance with the claim construction standards applied in such forum.
`
`VI. Unpatentability under Specific Grounds (37 C.F.R. 42.104(b)(4) and
`Evidence Relied Upon in Support of Challenge (37 C.F.R. 42.104(b)(5))
`A. Challenge #1: Claims 10, 15, 16, 18, 25, 36 and 38 are
`anticipated under 35 U.S.C. § 102(e) based on Woodhill
`
`Claims 10, 15, 16, 18, 25, 36 and 38 are anticipated by Woodhill under
`
`35 U.S.C. § 102(e). Woodhill discloses a distributed storage system that uses
`
`“Binary Object Identifiers” to identify and access files, and to manage file back-
`
`ups, amongst other functions. (RACK-1003; see also Mercer Decl., RACK-1007,
`
`19
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`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
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`¶ 57.) As Woodhill explains, a “Binary Object Identifier 74 [of Fig. 3] … is a
`
`unique identifier for each binary object to be backed up.” (RACK-1003, 4:45-47.)
`
`Woodhill’s Binary Object Identifiers include three fields–a CRC value, a LRC
`
`value, and a hash value–each calculated from the contents of the binary object.
`
`(RACK-1003, 8:1- 33.) As Woodhill emphasized, “[t]he critical feature to be
`
`recognized in creating a Binary Object Identifier 74 is that the identifier should be
`
`based on the contents of the binary object so that the Binary Object Identifier 74
`
`changes when the contents of the binary object changes.” (RACK-1003, 8:58-62.)
`
`Woodhill used these identifiers to identify binary objects that have changed since
`
`the most recent backup, so that “only those binary objects associated with the file
`
`that have changed must be backed up.” (RACK-1003, 9:7-14.) “[D]uplicate
`
`binary objects, even if resident on different types of computers in a heterogeneous
`
`network, can be recognized from their identical Binary Object Identifiers 74.”
`
`(RACK-1003, 8:62-65.)
`
`Woodhill discloses that the method of distributed management of storage
`
`space and data using content based identifiers is implemented on a networked
`
`computer system having a plurality of local computers, work stations, local area
`
`networks, a wide area network and at least one remote backup file server. (Mercer
`
`Decl., RACK-1007, ¶ 58.) “[T]he Distributed Storage Manager program 24 stores
`
`a compressed copy of every binary object it would need to restore every disk drive
`
`20
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`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
`19 on every local computer 20 somewhere on the local area network 16 other than
`
`on the local computer 20 on which it normally resides. At the same time, the
`
`Distributed Storage Manager program 24 transmits every new or changed binary
`
`object to the remote backup file server 12.” (RACK-1003, 9:30-38.)
`
`The local computers can act as clients when making requests for files and
`
`can act as servers when responding to requests for providing files saved on their
`
`l

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