Trial@uspto.gov
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` Paper 9
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` Entered: April 15, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RACKSPACE US, INC. and RACKSPACE HOSTING, INC.,
`Petitioners,
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS,
`Patent Owners.
`____________
`
`Case IPR2014-00062
`Patent 7,802,310 B2
`____________
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
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`
`
`
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`
`
`
`
`
`
`
`
` Paper 9
`
`
`
` Entered: April 15, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RACKSPACE US, INC. and RACKSPACE HOSTING, INC.,
`Petitioners,
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS,
`Patent Owners.
`____________
`
`Case IPR2014-00062
`Patent 7,802,310 B2
`____________
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Case IPR2014-00062
`Patent 7,802,310 B2
`
`I.
`
`INTRODUCTION
`
`Rackspace US, Inc. and Rackspace Hosting, Inc. (collectively,
`“Rackspace”) filed a Petition (Paper 1, “Pet.”) requesting inter partes review
`of claims 1, 2, 5-8, 10-12, 14, 16-19, 24, 29, 32, 70, 81, 82, and 86 of U.S.
`Patent No. 7,802,310 B2 (“the ’310 Patent”). Patent owners, PersonalWeb
`Technologies, LLC and Level 3 Communications, LLC (collectively,
`“PersonalWeb”), filed a Preliminary Response (Paper 8, “Prelim. Resp.”).
`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 Rackspace will prevail in challenging
`claims 1, 2, 5-8, 10-12, 14, 16-19, 24, 29, 32, 70, 81, 82, and 86 as
`unpatentable under 35 U.S.C. § 103. Pursuant to 35 U.S.C. § 314, we
`hereby authorize an inter partes review to be instituted as to claims 1, 2, 5-8,
`10-12, 14, 16-19, 24, 29, 32, 70, 81, 82, and 86 of the ’310 Patent.
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`Case IPR2014-00062
`Patent 7,802,310 B2
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`A.
`
`Related Matters
`
`Rackspace indicates that the ’310 Patent was asserted against it in
`
`PersonalWeb Technologies LLC v. Rackspace US, Inc., Case No. 6:12-cv-
`00659, pending in the United States District Court for the Eastern District of
`Texas. Pet. 1.
`Other petitions seeking inter partes review of PersonalWeb’s patents
`have been filed, with those patents and the ’310 Patent sharing a common
`disclosure. Id. at 1-3.
`PersonalWeb also notes that another petition, namely IPR2013-00596,
`was also pending regarding the ’310 Patent. Prelim. Resp. 1. We instituted
`a trial based on that petition on March 26, 2014. PersonalWeb argues that it
`would be duplicative and highly prejudiced if two inter partes reviews
`regarding the same patent were to proceed. Id. at 1-2. While PersonalWeb
`views the differing claims under consideration in each petition, as well as
`similar art, as placing a burden upon it, we are persuaded that both petitions
`should be considered on their own merits. The panel will be amenable to
`requests for consolidation under 35 U.S.C. § 315(d), post-institution.
`
`
`B. The Invention of the ’310 Patent (Ex. 1001)
`
`The ’310 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, 1:44-48; 3:52-55; 6:20-24. According to the ’310
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`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 derivable directly from the data associated therewith. Id. at
`3:55-58. The invention of the ’310 Patent also provides that the system can
`publish data items, allowing other, possibly anonymous, systems in a
`network to gain access to the data items. Id. at 4:32-34.
`
`
`C.
`
`Challenged Claims
`
`Independent claims 1, 24, 70, 81, and 86, as well as dependent claims
`
`2, 5-8, 10-12, 14, 16-19, 29, 32 and 82, are challenged by Rackspace in this
`inter partes review. Claims 1 and 70 are deemed representative and are
`reproduced below:
`
`1. A computer-implemented method in a system which
`includes a network of computers, the method implemented at
`least in part by hardware comprising at least one processor, the
`method comprising the steps:
`(a) at a first computer, obtaining a content-based name
`for a particular data item from a second computer distinct from
`the first computer, the content-based name being based at least
`in part on a function of at least some of the data which comprise
`the contents of the particular data item, wherein the function
`comprises a message digest function or a hash function, and
`wherein two identical data items will have the same content-
`based name; and
`(b) by hardware in combination with software, a
`processor at said first computer ascertaining whether or not the
`content-based name for the particular data item corresponds to
`an entry in a database comprising a plurality of identifiers; and
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`(c) based at least in part on said ascertaining in (b),
`determining whether or not access to the particular data item is
`authorized.
`
`70. A computer-implemented method operable in a
`system which includes a network of computers, the system
`implemented at least in part by hardware including at least one
`processor, the method comprising the steps of:
`in response to a request at a first computer, from another
`computer, said request comprising at least a content-based
`identifier for a particular data item, the content-based identifier
`for the particular data item being based at least in part on a
`given function of at least some data which comprise the
`contents of the particular data item, wherein the given function
`comprises a message digest or a hash function, and wherein two
`identical data items will have the same content-based identifier:
`(A) hardware in combination with software, determining
`whether the content-based identifier for the particular data item
`corresponds to an entry in a database comprising a plurality of
`content-based identifiers; and
`(B) based at least in part on said determining in step (A),
`selectively permitting the particular data item to be accessed at
`or by one or more computers in the network of computers, said
`one or more computers being distinct from said first computer.
`
`
`D. Prior Art Relied Upon
`
`
`
`WO 96/32685
`
`Rackspace relies upon the following prior art references:
`Woodhill
`US 5,649,196
`Jul. 15, 1997
`(Ex. 1003)
`Francisco
`US 4,845,715
`Jul. 4, 1989
`(Ex. 1004)
`Brunk
`
`US 7,289,643
`Oct. 30, 2007
`(Ex. 1006)
`
`Kinetech
`
`Oct. 17, 1996
`5
`
`(Ex. 1005)
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`Albert Langer, “Re: dl/describe (File descriptions),” post to the
`“alt.sources.d” and “comp.archives.admin” Newsgroups on Aug. 7, 1991
`(Ex. 1007)(hereinafter “Langer”).
`
`
`E. Alleged Grounds of Unpatentability
`Rackspace asserts the following grounds of unpatentability:
`
`Basis
`
`References
`
`Claim(s)
`
`§ 103
`
`§ 103
`
`Kinetech and Brunk
`Kinetech, Brunk, and
`Francisco
`§ 103 Woodhill and Francisco
`§ 103 Woodhill, Francisco, and
`Langer
`
`1, 2, 5-8, 10, 12, 14, and 16-19
`
`16-19, 24, 29, 70, 81, 82, and 86
`1, 2, 5-8, 10, 11, 14, 16-19, 24, 29,
`32, 70, 81, 82, and 86
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`II. ANALYSIS
`
`A. Claim Construction
`
`As a first step in our analysis for determining whether to institute a
`trial, we determine the meaning of the claims. In an inter partes review,
`claim terms in an unexpired patent are given their broadest reasonable
`construction in light of the specification of the patent in which they appear.
`37 C.F.R. § 42.100(b). Under the broadest reasonable construction standard,
`claims are to be given their broadest reasonable interpretation consistent
`with the specification, and the claim language should be read in light of the
`specification as it would be interpreted by one of ordinary skill in the art.
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`In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
`This means that the words of the claim will be given their plain meaning
`unless the plain meaning is inconsistent with the specification. In re Zletz,
`893 F.2d 319, 321 (Fed. Cir. 1989). In this regard, an inventor is entitled to
`be his or her own lexicographer of patent claim terms by providing a
`definition of the term in the specification with reasonable clarity,
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994).
`
`
`1. “data item” and “data” (Claims 1, 2, 6-8, 10, 11, 14, 16-19, 24, 29, 32,
`70, and 82)
`In EMC Corporation v. PersonalWeb Technologies LLC, IPR2013-
`
`00082, we construed the claim terms “data item” and “data” that appeared in
`the claims of U.S. Patent No. 5,978,791 (“the ’791 patent”), which issued
`from an application for which the ’310 Patent claims the benefit under 35
`U.S.C. § 120. See EMC Corp. v. PersonalWeb Tech., LLC, IPR2013-00082,
`slip op. at 14-15 (PTAB May 17, 2013) (Paper 21); Ex. 1008, 14-15.
`Rackspace has not construed these claim limitations, but PersonalWeb
`clarifies that the specification of the ’310 Patent sets forth a definition for the
`claim term “data item” with “reasonable clarity, deliberateness, and
`precision.” Prelim. Resp. 3-4.
`Indeed, we observe that the specification of the ’310 patent provides:
`In general, the terms “data” and “data item” as used herein refer
`to sequences 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
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`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.
`Ex. 1001, 2:16-21 (emphasis added). That disclosure also appears in the
`’791 patent (IPR2013-00082, Ex. 1001, 1:54-60). Based on our review of
`the specifications of the ’310 Patent and the ’791 patent, we note that the
`claim terms “data item” and “data” are used similarly in both patent
`disclosures. We also discern no reason to deviate from our claim
`constructions for the claim terms “data item” and “data” in IPR2013-00082.
`See NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir.
`2005) (When construing claim terms in patents that derive from the same
`parent application and share common terms, “we must interpret the claims
`consistently across all asserted patents.”).
`Therefore, consistent with our claim constructions set forth in
`IPR2013-00082, we 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 or the like; and (11) any other
`entity which can be represented by a sequence of bits. We also construe the
`claim term “data” as a subset of a “data item.”
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`2. “content-based name” (Claim 1 and 18)
`“digital identifier”(Claim 86)
`“content-dependent name” (Claims 24 and 32)
`“content-based identifier” (Claims 70 and 81)
`Claim 86 recites that the “digital identifier for a particular sequence of
`
`bits, the digital identifier being based, at least in part, on a given function of
`at least some of the bits in the particular sequence of bits,” with claims 1, 24,
`70, and 81reciting very similar recitations for “content-based name,”
`“content-dependent name,” and “content-based identifier.” Claim 32
`provides that “the data used by the function to determine the content-
`dependent name of the particular data item comprises of all of the contents
`of the particular data item,” according to that embodiment, with claim 11
`providing a similar recitation. PersonalWeb has not proposed a claim
`construction for the claimed name or identifier limitations, but takes issue
`with some of the meanings espoused by Rackspace. Prelim. Resp. 7-9.
`
`Rackspace urges the Board to construe the claim terms “content-based
`name,” “digital identifier,” “content-dependent name,” and “content-based
`identifier” as “a substantially unique identifier for a particular data item
`generated and being determined using and depending on some or all of the
`data of the data item.” Pet. 19 (emphasis added). In support of its proposed
`construction, Rackspace proffers a declaration of Dr. Melvin Ray Mercer.
`Ex. 1009 ¶¶ 38-46. According to Rackspace, the claim term “content-
`dependent digital identifier” is neither defined nor recited in the
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`specification of the ’310 Patent outside the claims or in any prior-filed
`application for which the ’310 Patent claims the benefit under § 120. Id.
`Rackspace’s proposed construction for the claim terms “content-based
`name,” “digital identifier,” “content-dependent name,” and “content-based
`identifier” would import improperly a limitation from the specification into
`the claim. See, e.g., Superguide Corp. v. DirecTV Enterprises, Inc., 358
`F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language
`may be aided by the explanations contained in the written description, it is
`important not to import into a claim limitations that are not a part of the
`claim.”).
`A substantially unique identifier is based on “all of the data in the
`data item, and only the data in the data item. ”1 There would be no occasion
`in which a substantially unique identifier would be determined using and
`depending on some of the data of the data item. Put simply, the claim terms
`“content-based name,” “digital identifier,” “content-dependent name,” and
`“content-based identifier” essentially would be defined as “a substantially
`unique identifier,” requiring that the identifier be based on “all of the data in
`the data item, and only the data in the data item.” Such a construction would
`be more restrictive than the claim language “each said content-dependent
`digital identifier being based at least in part on a given function of at least
`
`
`1 In IPR2013-00082, we previously construed the term “substantially unique
`identifier” as “an identity for a data item generated being determined using
`and depending on all of the data in the data item, and only the data in the
`data item.” IPR2013-00082, Paper 21, 13-14; Ex. 1008, 13-14.
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`some of the bits in the particular sequence of bits of the particular data item,”
`recited in the subject claims. Therefore, we decline to adopt Rackspace’s
`proposed construction.
`Rather, the claims themselves provide a definition of the claim terms
`“content-based name,” “digital identifier,” “content-dependent name,” and
`“content-based identifier” —namely, an identifier for a data item “being
`based at least in part on a given function of at least some of the bits in the
`particular sequence of bits of the particular data item.” We discern no
`reason to deviate from that express definition.
`
`
`3. “a plurality of identifiers” (Claims 1, 5, 6)
`“a plurality of values” (Claims 24, 69, 81, and 86)
`Claim 1 recites “a database comprising a plurality of identifiers.”
`
`Claim 24 recites “causing the content-dependent name of the particular data
`item to be compared to a plurality of values,” (emphasis added) with claims
`81 and 86 providing a comparison between the plurality of values and a
`content-based identifier and a digital identifier, respectively. PersonalWeb
`has not proposed a claim construction for the claim terms “a plurality of
`identifiers” or “a plurality of values.” Prelim. Resp. 7-9.
`
`Rackspace urges the Board to construe the claim term a “plurality of
`identifiers” as “substantially unique identifier values, e.g., content-based
`names, content-dependent identifiers, content-based identifiers or digital
`identifiers, generated for at least one data item of a plurality of the data
`items.” Pet. 19-20, 23-24 (citing to Ex. 1009 ¶ 43; Ex. 1001, 37:57-59,
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`38:14-18). Rackspace makes a similar plea with respect to “a plurality of
`values.” Pet. 20, 24. However, Rackspace’s proposed construction would
`import improperly a limitation—“all of the data in the data item, and only
`the data in the data item”—from the specification into the claim. See Deere
`& Co. v. Bush Hog, LLC, 703 F.3d 1349, 1354 (Fed. Cir. 2012) (“While
`claim terms are understood in light of the specification, a claim construction
`must not import limitations from the specification into the claims.”). Such a
`construction would be more restrictive than the claim language “the content-
`based name being based at least in part on a function of at least some of the
`data which comprise the contents of the particular data item,” recited in
`claim 1. Similarly, claim 24 provides “the content-dependent name being
`based, at least in part, on at least a function of the data in the particular data
`item.” Therefore, we decline to adopt Rackspace’s proposed construction.
`In that regard, we observe that claims 1, 24, 69, 81, and 86,
`themselves, provide definitions of the claim terms “a plurality of identifiers”
`and “a plurality of values” —namely, each of the identifiers is an identity for
`a data item “being based, at least in part, on at least some of the data in a
`corresponding data item.” And the values are used for comparisons with
`content-dependent names, content-based identifiers, and digital identifiers.
`We discern no reason to deviate from those express definitions.
`
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`4.
`
` “selectively permitting” (Claim 70)
`“selectively allow” (Claims 81 and 86)
`Claim 70 recites “selectively permitting the particular data item to be
`
`accessed” (emphasis added) and claims 81 and 86 recite “selectively allow
`said particular sequence of bits to be provided to or accessed by other
`devices.” (emphasis added). Rackspace alleges that the terms do not appear
`in the specification of the ’310 Patent outside the claims, and the broadest
`reasonable definition is “permitting or not permitting [the recited act]
`depending on [the recited selection condition],” with a similar definition of
`“selectively allowing.” Pet. 20, 24-25.
`
`However, PersonalWeb disagrees with Rackspace’s proposed claim
`construction, because it would remove the “selectively” aspect and
`improperly introduce “or” into the construction. Prelim. Resp. 5-7. We
`agree with PersonalWeb. In the context of claims 70, 81, and 86, we
`construe the claim terms “selectively permitting” as “permitting based on
`whether the recited condition is met,” and “selectively allow” as “allowing
`based on whether the recited condition is met.”
`
`B. Principles of Law
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter 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 said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
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`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
`The level of ordinary skill in the art is reflected by the prior art of
`record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
`In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich,
`579 F.2d 86, 91 (CCPA 1978).
`
`
`C. Obviousness over Woodhill and Francisco
`Rackspace asserts that claims 1, 2, 5-8, 10, 11, 14, 16-19, 24, 29, 32,
`
`70, 81, 82, and 86 of the ’310 Patent are unpatentable under 35 U.S.C. § 103
`over the combination of Woodhill and Francisco. Pet. 36-57. Rackspace
`provides a rationale for modifying Woodhill in light of Francisco to arrive at
`the features of claims 1, 24, 70, 81, and 86 (id. at 42-43, 48, 52, 56), based in
`part, on the testimony of Dr. Mercer. Ex. 1009 ¶¶ 135-191.
`
`PersonalWeb opposes, and argues that Woodhill does not disclose or
`suggest the “causing the content-dependent name of the particular data item
`to be compared to a plurality of values” or the conditional allowance of
`providing or accessing the particular data item, as recited in the subject
`claims. Prelim. Resp. 13-21. PersonalWeb also advances several arguments
`under the premise that there is insufficient reason to combine the teachings
`of Woodhill and Francisco. Id. at 21-25. We are not persuaded by
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`PersonalWeb’ss argumentts. Rather,, we determmine that RRackspace’’s
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`Woodhill disclosess a system for distribbuted storagge manageement on aa
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`anations annd supportting evidennce are perrsuasive.
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`compputer netwwork systemm. Ex. 10003, 1:11-177. Figure 11 of Woodhhill,
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`reprooduced bellow, depictts a compuuter networrk system tthat includdes a
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`distrributed storrage managgement sysstem.
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`As illusttrated in Fiigure 1 of WWoodhill,
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`each locall area netwwork 16
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`incluudes multipple user woorkstationss 18 and loocal compuuters 20. Idd. at 3:24-
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`44. Woodhill’s system inncludes a DDistributedd Storage MManager (DDSM)
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`proggram for buuilding andd maintainiing the Filee Databasee. Id. at 3:444-49.
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`The DSM program views a file as a collection of data streams, and
`divides each data stream into one or more binary objects. Id. at 4:13-23;
`7:40-43; Fig. 5A, item 132. More specifically, the data streams represent
`regular data, extended attribute data, access control list data, etc. Id. at 7:44-
`47. For each binary object being backed up, a Binary Object Identification
`Record is created in a File Database and includes a Binary Object Identifier
`to identify a particular binary object uniquely. Id. at 7:60-8:1; 8:33-34.
`Binary Object Identifiers are calculated based on the contents of the
`data so that the Binary Object Identifier changes when the contents of the
`binary object changes. Id. at 8:57-62; 8:40-42. Notably, the Binary Object
`Identifier includes a Binary Object Hash field, which is calculated against
`the contents of the binary object that is taken one word (16 bits) at a time
`using a hash algorithm. Id. at 8:22-32. Duplicate binary objects can be
`recognized from their identical Binary Object Identifiers, even if the objects
`reside on different types of computers in a heterogeneous network. Id. at
`8:62-65.
`We agree with Rackspace that the Binary Object Identifiers of
`Woodhill are equivalent to the “content-based name,” “digital identifier,”
`“content-dependent name,” and “content-based identifier” recited in claims
`1, 24, 32, 70, 81, and 86. Pet. 38, 44-45, 48, 50, 53, 57. They are based on a
`cryptographic hash, with the chance of two different binary objects being
`assigned the same Binary Object Identifier being very small. Ex. 1003,
`8:33-36. Based on this, two identical data items will have the same Binary
`Object Identifier. Ex. 1009 ¶ 129.
`
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`Patent 7,802,310 B2
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`Francisco discloses a data processing system that generates electronic
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`identification indicia for authorized software programs. Ex. 1004, 2:12-16.
`The system also maintains the electronic identification indicia in an
`authorized user profile library in correlative relation with electronic
`identifications of all authorized users. Id. at 2:51-64. The system selectively
`permits authorized users to access the selected software program, and
`prevents unauthorized access. Id. at 3:29-36. As explained in Francisco,
`one of the advantages of Francisco’s authorization check mechanism is to
`improve system security by preventing unauthorized access to proprietary
`software programs. Id. at 1:26-35, 54-59. As discussed by Rackspace, the
`process of matching the indicia would involve comparing them with a
`plurality of values, and providing for selective access. Pet. 42.
`Rackspace further contends that a person of ordinary skill in the art
`reading Woodhill and Francisco would have understood that the
`combination of Woodhill and Francisco would have allowed for the
`selective access features of Francisco to be used with Woodhill’s content-
`dependent identifiers feature. Pet. 42-43. We agree and we are persuaded
`that the combination likely would render claims 1, 2, 5-8, 10, 11, 14, 16-19,
`24, 29, 32, 70, 81, 82, and 86 of the ’310 Patent unpatentable under 35
`U.S.C. § 103.
`Turning to PersonalWeb’s arguments against this ground, in its
`preliminary response, PersonalWeb argues that Woodhill never makes a
`determination as to whether access to a given data item is not authorized,
`(Prelim. Resp. 14), that Woodhill never compares a binary object identifier
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`to a plurality of values, (id. at 15-19), and that Woodhill’s processes never
`provide an alleged data item to a second computer, (id. at 19-20). However,
`all of these arguments address Woodhill alone and do not address the
`combination of Woodhill and Francisco. In each case, as discussed above,
`we agree with Rackspace that the aspects disputed by PersonalWeb are
`disclosed in Francisco. Nonobviousness cannot be established by attacking
`references individually where, as here, the ground of unpatentability is based
`upon the teachings of a combination of references. In re Keller, 642 F.2d
`413, 426 (CCPA 1981). Rather, the test for obviousness is whether the
`combination of references, taken as a whole, would have suggested the
`patentees’ invention to a person having ordinary skill in the art. In re Merck
`& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
`PersonalWeb also argues that Woodhill does not use binary object
`identifiers or contents identifiers as names, and alleges their use as names
`was not added to the Woodhill disclosure until after the effective filing date
`of the ’310 Patent. Id. at 20-21, n. 1. However, that does not address the
`obviousness of using the binary object identifiers as names in view of
`Woodhill, nor has PersonalWeb submitted credible or sufficient evidence
`that the contemplation of binary object identifiers as names actually
`occurred after the effective filing date. We do not find PersonalWeb’s
`arguments to be persuasive.
`PersonalWeb maintains that “it would not have been obvious to have
`modified Woodhill’s granularization procedure based on Francisco to have
`used Woodhill’s binary object identifiers 74 to determine whether alleged
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`access to each binary object was authorized/unauthorized.” Id. at 21.
`According to PersonalWeb, “Woodhill’s granularization process upon which
`petitioner relies relates only to ‘large’ database files that each have many
`binary objects and many granules” (Ex. 1003, 14:52-67; 15:11-17; 17:18-22,
`31-35), whereas “Francisco discloses checking to see if a user is authorized
`to access an entire ‘program.’” Prelim. Resp. 21-22.
`We are not persuaded by PersonalWeb’s arguments. “It is well-
`established that a determination of obviousness based on teachings from
`multiple references does not require an actual, physical substitution of
`elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012); see also In
`re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (“[T]he criterion [is]
`not whether the references could be physically combined but whether the
`claimed inventions are rendered obvious by the teachings of the prior art as a
`whole.”).
`PersonalWeb fails to recognize that Woodhill’s granularization
`procedure merely applies to large database files, and is not applicable to all
`data files. Ex. 1003, 14:53–15:8. Further, Woodhill specifically states that a
`single binary object represents the data stream if the size of the data stream
`is equal to or less than previously defined convenient maximum binary object
`size (e.g., one megabyte). Id. at 4:23-26. Only when the data stream is
`larger than the maximum binary object size, then the DSM program divides
`the data stream into multiple binary objects. Id. at 4:26-30. PersonalWeb
`incorrectly assumes that Francisco’s programs are larger than the maximum
`binary object size. In fact, Francisco does not indicate the size of the
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`program, but merely states that the program may be considered broadly “as
`arbitrarily ordered series of actions or instructions, in binary form, capable
`of being interpreted and executed by an information processing system for
`the purpose of manipulating information.” Ex. 1005, 2:16-22. Moreover,
`one with ordinary skill in the art would have recognized that Woodhill’s
`previously defined convenient maximum binary object size is adjustable to
`accommodate larger data streams if necessary. See KSR, 550 U.S. at 420-21
`(A person with ordinary skill in the art is “a person of ordinary creativity,
`not an automaton,” and “in many cases . . . will be able to fit the teachings of
`multiple patents together like pieces of a puzzle.”).
`PersonalWeb further alleges that Woodhill teaches away from
`Rackspace’s proposed combination, because the modification “would have
`resulted in dramatic increase in both human intervention and costs which
`Woodhill teaches would have been undesirable.” Prelim. Resp. 24. In
`particular, PersonalWeb argues that “Francisco’s system requires that each
`of many users has an authorized user profile and electronic identification,
`and that all of this must be stored in the system” and that would have been
`inefficient and very costly. Id.
`PersonalWeb’s arguments are unpersuasive. “A reference may be
`said to teach away when a person of ordinary skill, upon reading the
`reference, would be discouraged from following the path set out in the
`reference, or would be led in a direction divergent from the path that was
`taken by the [inventor].” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). A
`reference does not teach away, however, if it merely expresses a general
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`preference for an alternative invention, but does not “criticize, discredit, or
`otherwise discourage” investigation into the invention claimed. In re
`Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
`At the outset, Francisco’s authorization check mechanism is an
`automated computer method. Ex. 1004, 1:9-15 (“This invention relates to
`data processing system security . . . automatic authentication of both a
`selected program and permitted user thereof when system resources are to be
`utilized.”) (emphasis added). PersonalWeb does not explain adequately why
`incorporating an automated authorization check mechanism would increase
`human intervention significantly. Nor do we discern any evidence on this
`record supporting PersonalWeb’s allegation that such implementation would
`increase human intervention dramatically.
`Although implementing Francisco’s authorization check mechanism
`may increase cost, such disadvantages are not dispositive of non-
`obviousness, especially in view of the explicit teachings of Francisco as to
`the advantages of an authorization check mechanism to improve system
`security by preventing unauthorized access to proprietary software program
`materials. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed.
`Cir. 2006) (“[G]iven course of action often has simultaneous advantages and
`disadvantages, and this does not necessarily obviate motivation to
`combine.”).
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