BEFORE THE PATENT TRIAL AND APPEAL BOARD IN THE UNITED
`
`STATES PATENT AND TRADEMARK OFFICE
`
`Trial No.:
`
`IPR 2014-00062
`
`In re:
`
`U.S. Patent No. 7,802,310
`
`Patent Owners:
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`Persona1Web Technologies, LLC & Level 3 Communications
`
`Petitioner:
`
`Rackspace US, Inc. & Rackspace Hosting, Inc.
`
`Inventors:
`
`David A. F arber and Ronald D. Lachman
`
`For: CONTROLLING ACCESS TO DATA IN A DATA PROCESSING SYSTEM
`
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`
`July 15, 2014
`
`PATENT OWNER’S RESPONSE PURSUANT TO 37 C.F.R. § 42.120
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`2020057
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`

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`Patent Owner’s Response (US. Pat. No. 7,802,310)
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`IPR 2014-00062
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`TABLE OF CONTENTS
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`Page
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`I.
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`INSTITUTED GROUNDS ........................................................................... .. 1
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`II.
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`CLAIM CONSTRUCTIONS ........................................................................ .. 2
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`A.
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`“plurality of Values” & “plurality of identifiers” ................................ .. 2
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`B.
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`Authorization is based on a determination of “whether or not”
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`the content—based name corresponds to an entry in a database
`comprising a plurality of identifiers (claims 1 and 70) ...................... .. 3
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`C.
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`“data item” .......................................................................................... .. 5
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`D.
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`E.
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`F.
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`G.
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`H.
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`“digital identifier” (claim 86); “content—based identifier”
`(claims 70, 81) .................................................................................... .. 6
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`“content—dependent name” (claims 24, 29 32) and “content-
`based name” (claims 1, 1.], I8) ........................................................... .. 7
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`“selectively permitting .
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`.
`
`.” (claim 70) ............................................. .. 9
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`“selectively allow .
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`. .” (claims 81 and 86) ....................................... .. ll
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`Certain Challenged Claims Require that the Data Item
`Corresponding to the Name/Identifier in the “Request” is
`Accessed ........................................................................................... .. 12
`
`I.
`
`The BRC Standard is Not Applicable to this Proceeding ................. .. 13
`
`III.
`
`LAW ............................................................................................................ .. 14
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`IV. WOODHILL AND FRANCISCO BOTH FAIL TO DISCLOSE
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`COMPARING AN ALLEGED DATA ITEM IDENTIFIER TO A
`
`PLURALITY OF VALUES TO DETERMINE IF ACCESS IS
`
`AUTHORIZED ........................................................................................... .. 16
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`Patent Owner’s Response (US. Pat. No. 7,802,310)
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`IPR 2014—0O062
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`V.
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`ONE SKILLED IN THE ART WOULD NOT HAVE MODIFIED
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`WOODHILL TO ADD FRANCISCO’S SYSTEM BECAUSE
`
`WOODHILL ALREADY HAS ACCESS CONTROL THAT IS
`
`UNRELATED TO BINARY OBJECT IDENTIFIERS ............................. .. 22
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`VI.
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`THE ALLEGED MODIFICATION TO WOODHILL BASED ON
`
`FRANCISCO WOULD NOT HAVE BEEN OBVIOUS BECAUSE
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`ONE OF ORDINARY SKILL IN THE ART WOULD HAVE TRIED
`
`TO MINIMIZE O\IOT MAXIMIZE) THE NUMBER OF
`COMPARISON PROCEDURES REQUIRED TO CHECK
`WHETHER ACCESS WAS AUTHORIZED ............................................ .. 24
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`VII.
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`ONE WOULD NOT HAVE MODIFIED WOODHILL TO CHECK
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`WHETHER ACCESS TO A FILE BY A COMPUTER WAS
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`AUTHORIZED WHEN THE COMPUTER ALREADY HAD THE
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`CURRENT VERSION OF THAT FILE .................................................... .. 28
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`VIII.
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`FRANCISCO AND WOODHILL BOTH TEACH AWAY FROM
`
`THE CLAIMED INVENTION BY NOT USING CONTENT—BASED
`
`IDENTIFIERS TO DETERMINE WHETHER ACCESS IS
`
`AUTHORIZED ........................................................................................... .. 3 I
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`IX.
`
`KSR DEMONSTRATES NONOBVIOUSNESS BECAUSE PRIOR
`
`ART ELEMENTS ARE NOT USED FOR THEIR INTENDED
`
`PURPOSE AND DO NOT SERVE THEIR INTENDED FUNCTION
`
`IN THE ALLEGED COMBINATION ....................................................... .. 34
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`GRANULES CORRESPONDING TO “CONTENTS IDENTIFIERS” IN
`
`THE ALLEGED REQUEST IN WOODHHILL ARE NEVER PROVIDED
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`TO THE REQUESTING COMPUTER IN RESPONSE TO THE
`
`,
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`. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . ..
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`XI.
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`BINARY OBJECTS CORRESPONDING TO RECORDS 58
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`ALLEGEDI [Y IN THE “REQUEST” ARE NOT PROVIDED TO THE
`
`REQUESTING COMPUTER IN RESPONSE TO THE REQUEST ................ .. 39
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`XII.
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`THE ALLEGED IDENTIFIER IN THE WOODHILL/FRANCISCO
`
`COMBINATION IS NOT A “NAME” AND IS NOT USED FOR
`
`ACCESSING ................................................................................................ .. 42
`
`XIII.
`
`MD4, I\/[D5 AND SHA OF CLAIM I2 WOULD NOT HAVE BEEN
`OBVIOUS ................................................................................................... .. 46
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`Patent Owner’s Response (US. Pat. No. 7,802,310)
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`[PR 2014-00062
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`XIV. FURTHER DEFICIENCIES IN WOODI--IILL INCLUDING
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`PETITIONER’S IMPROPER MIXING OF ALTERNATIVE
`
`ALLEGATIONS ......................................................................................... .. 47
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`XV. LANGER IS NOT A “PRINTED PUBLICATION” ................................. .. 54
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`XVI. SECONDARY CONSIDERATIONS ........................................................ .. 58
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`XVII. CONCLUSION ........................................................................................... .. 59
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`PATENT OWNER’S EXHIBIT LIST
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`CERTIFICATE OF SERVICE
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`PersonalWeb Technologies, LLC (“patent owner” or “PO”) submits this
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`response to the petition. Petitioner has the burden of proving unpatentability by a
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`preponderance of the evidence. 35 U.S.C. § 316(e). Petitioner has not met its
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`burden for the reasons explained below. See also Dewar Decl. at 1111 1878 [Ex.
`
`2012].
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`U.S. Patent No. 7,802,310 (“the ‘3 10 patent”) has an effective filing date of
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`April 11, 1995 given its continuity. (Ex. 1001.) While patent owner (PO) reserves
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`the right to establish an earlier date of invention, an effective filing date of April
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`1 1, 1995 is assumed for purposes ofthis Response (i.e., the “critical date” is no
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`later than April 1 1, 1995 for purposes of this submission). Petitioner does NOT
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`allege a later effective filing date in connection with the instituted ground. Thus,
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`the April 11, 1995 effective filing date is applicable in this proceeding.
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`PO notes that another IPR is also pending regarding the ‘3 10 patent. (See
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`IPR 2013-00596)
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`I. INSTITUTED GROUNDS
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`The Board, on April 15, 2014, instituted a trial in this proceeding regarding
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`the ‘3 10 patent for only the following:
`
`1.
`
`Whether claims 1, 2, 5-8, 10, 11, 14, 16-19, 24, 29, 32, 70, 81, 82
`
`and 86 are unpatentable as obvious under 35 U.S.C. §103(a) over
`
`Woodhill (Ex. 1003 -— U.S. Patent No. 5,649,196) and Francisco
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`(Ex. 1004).
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`1
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`Patent Owner’s Response (U.S. Pat. No. 7,802,310)
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`IPR 2014-00062
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`2.
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`Whether claim 12 is unpatentable under §l03(a) over Woodhill
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`(Ex. 1003), Francisco (Ex. 1004), and Langer (Ex. 1007).
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`The Board ordered that no other grounds of alleged unpatentability were
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`authorized regarding the ‘3 10 patent. (Paper 9.) Thus, petitioner is not permitted
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`to argue unpatentability in this proceeding regarding any other ground(s), or
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`arguments pertaining to any other ground, even if such other ground(s) may have
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`been in the petition.
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`II. CLAIM CONSTRUCTIONS
`
`Claim terms are presumed to be given their ordinary and customary meaning
`
`as would be understood by one of ordinary skill in the art at the time of the
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`invention. Phillips v. AWH Corp, 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
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`However, one may rebut that presumption by providing a definition of the term in
`
`the specification with reasonable clarity, deliberateness, and precision.
`
`A.
`
`
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`0 "values ”& “'9luralil 0 identi zers. ”
`
`The Board construed these terms at pages 11-12 of Paper 9. For example,
`
`claim 24 recites “causing the content—dependent name of the particular data iter: to
`
`be compared to a plurality of Values.” Claim 81 also requires “compare the
`
`content-based identifier of the particular sequence of bits to a plurality of Values.”
`
`The Board appears to have correctly recognized that a “plurality” means multiple
`
`or more than one. “Plurality” cannot mean just one, or cover just one. Thus, the
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`lPR 2014-00062
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`claimed comparison must be to more than one value. (Dewar Decl., fii 22 [EX.
`
`2012])
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`This is important because, contrary to the Board’s institution decision,
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`Francisco fails to disclose comparing a program identifier to a plurality of Values.
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`Petitioner’s expert admits this fundamental flaw in Francisco. Francisco’s
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`authentication check merely compares a program identifier (electronic
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`identification indicia) to a single Value in comparator 36 for determining whether
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`the program has changed — not to a plurality of Values. And, in Francisco’s
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`subsequent authorization check, the program identifier is not compared to
`
`anything. Accordingly, Francisco compares the program identifier with a single
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`Value for making sure that the file is authentic (ie, that it has not changed), and if
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`the file is found to be authentic then Francisco later compares user information in
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`another comparator 40 to determine if access by a particular user is authorized.
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`Thus, Francisco’s program identifier: (i) is only compared to a single Value for
`
`determining whether the program has changed, and (ii) is not compared to anything
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`for determining whether access is authorized. (Dewar Decl., {Hi 23, 31-38 [Ex.
`
`2012].) Accordingly, it will be appreciated that even providing Francisco’s system
`
`in Woodhill fails to meet the claimed subject matter.
`
`B. Authorization is based on a determination of “whether or not ” the
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`content-based name corresponds to an entry in a database comprising a
`
`gluralig of identifiers (claims 1 and 70).
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`While claims 24 and 81 expressly require comparing the content—dependent
`
`name (or identifier in claim 81) of the particular data item to a plurality of Values,
`
`the express language of claims 1 and 70 also requires that the content—based name
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`(or identifier in claim 70) be compared or otherwise analyzed with respect to a
`
`plurality of Values. Claim 1 ofthe ‘3 l0 patent recites:
`
`“ascertaining whether or not the content—based name for the particular
`
`data item corresponds to an entry in a database comprising a pluralig
`
`of identifiers; and (c) based at least in part on said ascertaining in (19),
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`determining whether or not access to the particular data item is
`
`authorized. ”
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`Thus, claim 1 requires the ability to compare or otherwise analyze the content-
`
`based name for the particular data item with the plurality of identifiers in the
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`database so as to be able to ascertain “whether or not” the name corresponds to an
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`entry in the database. It would be impossible to be able to ascertain that the name
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`does “not” correspond to an entry in the database without being able to "compare or
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`otherwise analyze the name with respect to the multiple identifiers in the database.
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`For example, assume th-"t a database contained 100 c-“nter_,—based identiuers 5: cred
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`therein. One could not determine that a given name did “not” correspond with any
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`of the loo content—based identifiers in the database unless the system was capable
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`of comparing or analyzing that content—based name with those identifiers in some
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`fashion. (Dewar Decl., 1] 24 [Ex. 2012].) Moreover, the “not” aspect of “whether
`
`or not” must be determined because this is necessary for the system to be able to
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`selectively determine whether or not access is authorized as required by claim 1.
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`Id. Moreover, the “not” outcome is necessarily determined in one of claims 2 and
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`16. Id. Thus, claim 1 requires comparing or analyzing the content-based name for
`
`the particular data item with respect to a plurality of identifiers in the database in
`
`order to determine whether access to that particular item is authorized. Id. Claim
`
`70 has a similar requirement, where “whether” necessarily involves determining a
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`“not” result in order to perform the “selectively permitting” of access recited in the
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`claim.
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`Again, this is important because Francisco (and Woodhill as allegedly
`
`modified by Francisco) fails to disclose comparing or analyzing a program
`
`identifier with respect to a plurality of content-based identifiers. See the
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`discussions above and below in this respect.
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`C. “data item "’.
`
`The specification of the ‘3 10 patent provides a definition for at least the
`
`following term in the chart below with reasonable clarity, deliberateness, and
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`precision (i.e., the inventors were their own lexicographer):
`
`Term
`
`Correct Construction
`
`.nWwn
`
`. 1
`
`“data item”
`
`Sequence of bits. (‘310 patent, col. 2:16-17.) As the
`
`(This term appears
`expressly in claims 1-
`2,8, 10-11,14, 16-19,
`24, 29, 32 and 70.
`This term is also
`
`contained in the below-
`
`constructions of
`
`Board explained in its June 5, 2013 Decision in IPR
`
`2013-00082, the “sequence of bits” may include any of
`
`A
`3 the following which represent examples in a non-
`
`exhaustive list:
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`(1) the contents of a file; (2) a portion of
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`“digital identifier”,
`“content-based
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`1 identifier” and
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`“content-dependent
`name” and is thus also
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`E relevant thereto.
`
`—& —
`
`a file; (3) a page in memory; (4) an object in an object~
`
`oriented program; (5) a digital message; (6) a digital
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`scanned image; (7) a part ofa Video or audio signal; (8) a
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`directory; (9) a record in a database; (10) a location in
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`memory or on a physical device; (11) any other entity
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`which can be represented by a sequence of bits.
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`(See
`
`, June 5, 2013 Dec. in IPR 2013—00082 at 2-3 [Ex. 2008];
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`and May 17, 2013 Dec. in IPR 2013-00082 at 14-15 [Ex.
`120091)
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`During prosecution of family member U.S. Patent
`
`No. 7,949,662, applicant and the USPTO Examiner made
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`clear that the “data item” may be “any sequence of bits”
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`and that “the data item may represent any type/kind of
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`data.” See, in Ex. 2004, the § 112 rejection in the Office
`1/!
`J.'!',
`
`2007, the response thereto, and
`
`Action dated Sept.
`
`then the Examiner’s withdrawal of the § 112 rejection on
`
`page 21 of the Office Action dated July 3, 2.008. (Ex.
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`2004)
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`' “c0ntent~based identi zer”
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`The Board construed these two terms as “an identifierfor a data item being
`
`based at least in part on a given function ofat least some oftl/ze bits in the
`
`particular sequence of bits of the particular data item.” (Paper 9, pgs. 9-11.)
`
`PO has assumed this construction for these two terms in this proceeding
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`regarding claims 70, 81 and 86, without prejudice to argue for another construction
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`for these terms in other proceeding(s). PO notes that the Board’s construction of
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`6
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`“digital identifier” conflicts with the district court’s construction of that same term
`
`in related litigations. (Ex. 2011, pg. 47; and Ex. 2014.)
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`E.
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`“COI’lZ€I’lf-d€Q€Vld€I’lf
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`name” (claims 24, 29, 32) and “conterzt-basea’
`
`name”(claz'ms I. I], 18).
`
`The Board also construed “content—dependent name” and “content—based
`
`name” as “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.” (Paper 9, pgs. 9—1l.)
`
`This construction is incorrect for several reasons. First, the Board’s
`
`construction conflicts with the express language of certain claims. Claim 32
`
`expressly requires that the content—dependent name of the data item is based on
`
`“_a_l_Z of the contents of the particular data item” (emphasis added). Similarly, claim
`
`1 l recites “all.” Thus, at least with respect to claims 11 and 32, the construction of
`
`“content—dependent name” and “content-based name” should be “a name for a
`
`data item being based at least in part on a given function ofglj ofthe bits in the
`
`particular sequence of bits of the particular data item.” (emphasis added.) (Dewar
`
`Decl., 1] 26 [Ex. 2012].) And claim 29 states that the data used by the function to
`
`determine the content-dependent name comprises only “the contents” of the data
`
`item. Thus, the Board’s construction conflicts with the express language of at least
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`claims 1 l, 29 and 32.
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`Second, the Board’s construction for “content-dependent name” and
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`“content—-based name” improperly ignores the word “name” in the claim language.
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`It cannot reasonably be said that all identifiers are names. For example, while a
`
`fingerprint is an iderztzfierfbr a person, it is pg; cz ‘mime ”for that person.
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`Contrary to the Board’s suggestion, something is not a “name” simply because it is
`
`an “identifier.” Any attempt to simply replace “name” with “identifier” in a
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`construction would be wrong, unreasonable, illogical and contrary to the claim
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`language itself. Even Woodhill contrasts the difference between a file “name” and
`
`a binary object “identifier” (see e. g., file name 40 and file name 80 in Figs. 3-4 of
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`Woodhill, compared to binary object identifier 74 in Fig. 3 of Woodhill),
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`evidencing that they are not necessarily the same thing in this art. One of ordinary
`
`skill in the art at the time of the invention would have understood that there can be
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`a significant difference between a “name” and a mere “identifier.” (Dewar Decl.,
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`1M 26 [Ex. 2012].) “Name” should not be removed from these constructions, and
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`should not be simply replaced with “identifier.” One of ordinary skill in the art at
`
`the time of the invention would have recognized that a “name” for a data item is
`
`surely used to identify that particular data item so that the name can be used to
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`differentiate the data item from other data items, but one would have recognized
`
`thata “name” is also used to refer to that data item, to access that data item, search
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`for that data item, and address that data item, both in this art in general and
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`according to the instant specification. (E.g., ‘3lO patent, col. 15:34-37; col. 16:32-
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`62; col. 18:12-35; col. 22:61-67; col. 23:51-64; col. 32:55-67) (Dewar Decl., 11 26
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`[Ex. 2012]).
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`Accordingly, in the Board’s construction of “content—dependent name” and
`
`“content—based name” for the independent claims, “an identifier” should be
`
`replaced with “a name.” And at least with respect to claims 11 and 32, the
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`construction should be “a name for a data item being based at least in part on a
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`given function 0f_c_z_Z[ ofthe bits in the particular sequence of bits of the particular
`
`data item.” (emphasis added.)
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`This is relevant at least because the alleged identifier in the
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`Woodhill/Francisco combination is not a “name.”
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`F. “selective!
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`1 ermittin .
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`. .” claim 70 .
`
`Petitioner proposes overly broad constructions for “selectively permitting”
`
`in claim 70 and to “selectively allow” in claims 81 and 86. The Board should also
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`note that petitioner’s constructions of “selectively permitting” in claim 70 and to
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`“selectively allow” in claims 81 and 86 in this IPR conflict with Apple’s proposed
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`constructions of these same terms in the other petition regarding the ‘3 10 patent
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`(IPR 2013-00596).
`
`Regarding claim 70, petitioner’s construction for “selectively permitting” is
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`incorrect at least because petitioner’s construction ignores the plain language of
`
`claim 70. Petitioner contends that “selectively permitting” in claim 70 of the ‘3 10
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`patent should be construed as “permitting Q not permitting [the recited act]
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`depending on [the recited selection condition]” (emphasis added). Petitioner’s
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`construction incorrectly ignores the word “selectively”, and improperly attempts to
`
`introduce “or” into the construction in an attempt to read “selectively” out of the
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`claim. Stated another way, petitioner’s construction would appear to be met
`
`simply by “permitting” the recited act — this would improperly read “selectively”
`
`out of the claim. Claim 70 reads as follows:
`
`“(A) ,
`
`,
`
`. 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 mid determiz/2z'n"* in s!_ep__(§g, selectivelypermitting the particular
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`data item to be accessed at or by one or more computers in the
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`network .
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`. .” (emphasis added)
`
`The plain language of claim 70 requires at least that the “selectively permitting .
`
`.
`
`.” is performed based at least on whether a particular condition is met —- namely,
`
`whether in step (A) it was determined that the content—based identifier for the data
`
`item (i) did correspond to an entry in a database comprising a plurality of content-
`
`based identifiers, or (ii) did not correspond to an entry in the database. In other
`
`words, the plain language of the claim requires permitting the data item to be
`
`accessed when one of conditions (i) and (ii) is determined in step (A), and not
`
`permitting the data item to be accessed when the other of conditions (i) and (ii) is
`
`determined in step (A). (Dewar Decl., {I 27 [Ex. 2012].) This is the correct
`
`construction. Petitioner’s construction is incorrect because it conflicts with the
`
`plain language of the claim.
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`10
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`G. “selecrivelv allow. . .’’(claims 81 and 862.
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`Petitioner’s proposed construction for these terms is incorrect at least
`
`because petitioner’s construction ignores the plain language of claims 81 and 86.
`
`Petitioner’s construction again ignores the word “selectively” in the claims (see
`
`discussion above), and improperly attempts to introduce “or” into the construction
`
`in an attempt to read “selectively” out of the claims. Claim 81 reads as follows:
`
`to .
`
`.
`
`. (b) compare the content—based identifier of the particular
`
`sequence of bits to a plurality of values; and to (c) Selectively allow
`
`said particular sequence of bits to be provided or accessed by other
`
`devices ole’/re:/1.45;/2 on wlzetlzer or not said c0m‘erzt—cle"e:/zdent
`
`identifier corresggoncls to one of the Qluralzfl 0;‘ values.” (emphasis
`
`added)
`
`Petitioner’s construction improperly attempts to read the above~underlined
`
`language of claim 81 out of the claim. The plain language of claim 81 requires the
`
`device to at least selectively allow the sequence of bits to be provided or accessed
`
`by other devices depending on whether in step (b) the content—based identifier of
`
`the particular sequence of bits (i) did correspond to one of the plurality of values,
`
`or (ii) did not correspond to one of the plurality of Values. In other words, the plain
`
`language of claim 8] requires the device to allow the sequence of bits to be
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`provided/accessed when one of conditions (i) and (ii) occurs, and not allow the
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`sequence of bits to be provided/a.ccessed when the other of conditions (i) and (ii)
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`occurs. (Dewar Decl., fil 28 [EX. 2012].) This is the correct construction.
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`Petitioner’s construction of to “selectively allow” in claim 86 is similarly flawed.
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`Petitioner’s construction is again incorrect because it conflicts with the plain
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`language of these claims.
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`H. Certain Challenged Claims Reguire that the Data Item Corresponding to
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`the Name/Identifier in the ‘fieguest ”’ is Accessed.
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`Claims 24 and 70 require a “request” that includes a content—dependent
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`name (claim 24) or identifier (claim 70) for a corresponding data item. These
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`claims then require that the data item corresponding to the name (claim 24) or
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`identifier (claim 70) is accessed by other computer(s) based on the claimed
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`comparison. (Dewar Decl., fil 29 [Ex. 2012].) For example, claim 70 sta.es:
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`“in response to a reguest at a first computer, from another computer,
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`said reguest comprising at least a content—based lCl€I’lllf_Z€I”
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`for a
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`particular data item .
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`.
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`. (A) .
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`.
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`. determining whether the content-
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`based identifier for the particular data item corresponds to an entry in
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`a database comprising a plurality of content—based identifiers; and
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` (B) based at least in art on said determinin , selectivelv
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`permitting the particular data item to be accessed at or_l_3y one or
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`more computers in the network .
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`. .” (emphasis added)
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`Thus, independent claim 70 requires that the particular data item corresponding to
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`the content—based identifier in the request is accessed in response to the request, or
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`permitted to be accessed, by other computer(s) in the network based on the
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`comparison in step (A). (Dewar Decl., 1] 29 [Ex. 2012].) Similarly, independent
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`claim 24 requires that the particular data item corresponding to the content-
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`dependent name in the request is provided to or accessed by the second computer
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`when it is determined that access to that data item is authorized based on the
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`comparison. Similarly, claim 18 requires that the name is received at the first
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`computer and that access is then permitted (based upon certain conditions) from at
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`least another computer. And independent claims 81 and 86 also require that the
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`particular sequence of bits corresponding to the identifier received from the
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`another device is provided to or accessed by other devices depending on the
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`comparison. (Dewar Decl., {l 29 [Ex 2012].)
`This is important because in the alleged Woodhill/Francisco combination (a)
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`granules corresponding to contents identifiers in the alleged, request “update
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`request”) are NOT provided to the requesting computer in response to the request,
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`and (b) binary objects corresponding to the binary object identification records 58
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`allegedly in the request (“update request”) are NOT provided to the requesting
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`computer in response to the update request. (Dewar Decl., filfil 29, 54-61 [Ex
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`2012].) Thus, even the alleged combination fails to meet the challenged claims in
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`this respect.
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`I. The BRC Standard is Not/lgglicahie to this Proceeding.
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`37 C.F.R. § 42.l0O(b) states that a claim in an “unexpired patent” shall be
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`given its broadest reasonable construction (“BRC” or “BRl”) in light of the
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`specification. However, the ‘3lO patent expires on April 11, 2015. Accordingly,
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`PO has no ability to amend the ‘3 l0 patent in this proceeding and no appeal will
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`take place until after the ‘3 10 patent expires. Indeed, the USPTO will have
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`jurisdiction over this proceeding after the ‘3 l0 patent expires. No certificate under
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`35 U.S.C. § 3l8(b) can issue before the ‘3l0 patent expires. At least any document
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`(e.g., final written decision, decision on rehearing, certificate, etc.) authored or
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`generated by the USPTO after the ‘3 l 0 patent expires cannot use BRC, and instead
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`should use and must rely upon the same claim construction standard as the district
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`court laid out in Phillips 1/. AWH Corp, 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
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`Moreover, the USPTO has no authority to change the claim construction standard
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`required by P//zillips for IPR proceedings because an IPR is not an examination
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`proceeding and the applicable claim construction standard is a substantive issue
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`(not a mere procedural issue). Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1335
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`(Fed. Cir. 2008). Thus, the BRC standard should not be used in this proceeding for
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`construing claims.
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`While PO’s claim constructions set forth herein are submitted to be correct
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`under either the BRC standard or the Phillips standard, the Board should use the
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`Phillips standard to construe claims in this proceeding.
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`It is noted that further claim construction issues may be reflected in the
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`arguments below.
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`III. LAW
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`“A claim is anticipated only if each and every element as set forth in the
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`claim is found, either expressly or inherently described, in a single prior art
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`reference.” Verdegaal Bros. v. Union Oil Co. ofCczZzform'a, 814 F.2d 628, 631
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`(Fed. Cir. 1987). A feature is “inherent” in a reference only if that feature is
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`“necessarily present” in the reference, “not merely probably or possibly present.”
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`Trintec Indus, Inc. v. T0p—U.S.A. Corp, 295 F.3d 1292, 1295 (Fed. Cir. 2002).
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`Furthermore, in order to anticipate, a prior art reference must not only disclose all
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`elements of the claim, but must also disclose those elements “arranged as in the
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`claim.” Net M0rzeyIN, Inc. V. VeriSz'gn, Inc, 545 F.3d 1359, 1369 (Fed. Cir. 2008).
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`Moreover, a patent claim is unpatentable under 35 U.S.C. § l03(a) if the
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`differences between the claimed subject matter and the prior art are such that the
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`subj ect matter would have been obvious at the time the invention was made to a
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`person having ordinary skill in the art to which the subject matter pertains. KSR
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`Int”! Co. v. Teleflex Inc, 550 U.S. 398, 406 (2007). The question of obviousness is
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`resolved on the basis of underlying factual determinations, including (1) the scope
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`and content of the prior art; (2) differences between the cl aimed subj ect matter and
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`the prior art; (3) the level of skill in the art; and (4) secondary considerations such
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`as commercial success, long felt need, copying by others, etc. Graham v. John
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`Deere C0. 0fKarzsas City, 383 U.S. 1, 17-18 (1966). A court can take account of
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`the inferences and creative steps that a person of ordinary skill in the art would
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`employ. KSR, 550 U.S. at 418. “A prior art reference may be considered to teach
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`away [from the clamed invention] when ‘a person of ordinary skill, upon reading
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`the reference, .
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`.
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`. would be led in a direction divergent from the path that was
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`taken by the applicant’.” Monarch Knitting Mach. V. Sulzer Marat, 139 F.3d 877,
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`885 (Fed. Cir. 1998) (citation omitted). The “general rule” is that references that
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`teach away “cannot serve to create a prima facie case of obviousness.” McGinley
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`v. Franklin Sports, Inc, 262 F.3d 1339, 1354 (Fed. Cir. 2001).
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`IV. WOODHILL AND FRANCISCO BOTH FAIL TO DISCLOSE
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`COMPARING AN ALLEGED DATA ITEM IDENTIFIER TO A
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`PLURALITY OF VALUES TO DETERMINE IF ACCESS IS
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`AUTHORIZED.
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`Claim 24, for example, requires “(i) causing the content—dependent name of
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`the particular data item [that was in the request] to be compared to a Qluralig‘ of
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`values; (ii) .
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`.
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`. determining whether or not access to the particular data item is
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`unauthorized based on whether the content dependent name of the particular data
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`item corresponds to at least one ofsaid plurality of values.” Thus, claim 24
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`expressly requires that determining whether access to the data item is authorized or
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`not is based on the result of a comparison between the content—dependent name for
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`that data item and a plurality of values. Both Woodhill and Francisco fail to
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`disclose this subject matter. (Dewar Decl., {W 31-38 [Ex. 2012].) Thus, even the
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`alleged combination (which patent owner does not agree with in any event) fails to
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`meet the claimed subject matter. Id.
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`The decision on institution indicates that Woodhill does not disclose this
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`subject matter, and that Francisco is relied upon in this respect. (Paper 9 atl7—l 8.)
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`However, contrary to the statements in the decision on institution, Francisco also
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`fails to disclose this claimed subject matter.
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`Francisco first performs an “authentication” check at comparator 36 to
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`determine whether the requested program has changed relative to the base version.
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`(Dewar Dec1., 1] 32 [Ex. 2012].) Then, “subsequent” to the authentication check,
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`Francisco determines at comparator 40 whether the requesting user is authorized to
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`access the program. (Francisco at Fig. 2; col. 1:40-42; col. 2:65 to col. 3:35; and
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`(Dewar Dec1., t] 32 [Ex. 2012].) The program identifier is compared with only a
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`single value in comparator 36 during the “authentication” check, and is not
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`compared with anything in comparator 40 during the “authorization” check.
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`Ia’.
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`Francisco’s authentication check at comparator 36 merely compares a
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`program identifier (electronic identification indicia) 34 from generator 32 with a
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`single program identifier 12. (Francisco at Fig. 2; col. 1:40-42;