IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`In re patent of: Farber et al.
`
`U.S. Patent No. 7,802,310
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`Issued: September 21, 2010
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`Title: CONTROLLING ACCESS TO
`DATA IN A DATA
`PROCESSING SYSTEM
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`
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`Petition for Inter Partes Review
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`Attorney Docket No.: 47015.136
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`Customer No.: 116298
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`Real Parties
`in Interest: Rackspace US, Inc. and
`Rackspace Hosting, Inc.
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`§§§§§§§§§§§
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`PETITION FOR INTER PARTES REVIEW
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`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
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`Rackspace Hosting, Inc. (each “Petitioner”) hereby petition the Patent Trial and
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`Appeal Board to institute inter partes review of claims 1, 2, 5-8, 10-12, 14, 16-19,
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`24, 29, 32, 70, 81, 82 and 86 of US Patent No. 7,802,310 to Faber et al. (“the ‘310
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`Patent,” RACK-1001). PersonalWeb Technologies, LLC and Level 3 Communi-
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`cations, LLC have stated, in filings in the United States District Court for the East-
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`ern District of the Texas that they each own an undivided fifty percent (50%) inter-
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`est in the ‘310 Patent.
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`TABLE OF CONTENTS
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`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.  Grounds for Standing (37 C.F.R. § 42.104(a)) ................................................... 4 
`
`III.  Overview of Challenges ...................................................................................... 4 
`
`A.  Statement of Precise Relief Requested (37 C.F.R. § 42.22(a)) and
`Identification of Challenges (37 C.F.R. § 42.104(b)) .................................. 4 
`
`B.  Summary of Central Argument that Challenged Claims are
`Unpatentable ................................................................................................. 5 
`
`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) ..................................................... 10 
`
`IV. The Challenged ‘310 Patent .............................................................................. 11 
`
`A.  Overview of the Patent ............................................................................... 11 
`
`B.  Prosecution History .................................................................................... 15 
`
`C.  Claim Construction (37 C.F.R. § 42.104(b)(3)) ......................................... 18 
`
`1.  Pertinent Terms Already Construed by the PTAB ................................ 18 
`
`2.  Additional Terms Requiring Construction ............................................ 19 
`
`3.  Claim Construction Standard ................................................................ 25 
`
`V.  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)) ............. 25 
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`A.  Ground #1: Claims 1, 2, 5-8, 10, 12, 14 and 16-19 are Obvious over
`Kinetech in view of Brunk .......................................................................... 25 
`
`B.  Ground #2: Claims 16, 17, 18, 19, 24, 29, 70, 81, 82 and 86 are
`Obvious over Kinetech and Francisco further in view of Brunk ............... 31 
`
`C.  Ground #3: Claims 1, 2, 5-8, 10-11, 14, 16-19, 24, 29, 32, 70, 81, 82
`and 86 are Obvious over Woodhill in view of Francisco .......................... 36 
`
`D.  Ground #4: Claim 12 is Obvious over Woodhill and Francisco further
`in view of Langer ....................................................................................... 58 
`
`VI. Conclusion ......................................................................................................... 58 
`
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`
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`
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`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))
`Rackspace US, Inc. and Rackspace Hosting, Inc.
`
`Petitioner Notice of Related Matters (37 C.F.R. § 42.8(b)(2))
`
`B.
`The ‘310 patent is part of an extensive family of related continuation and di-
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`visional applications. The ‘310 patent and other members of the patent family are
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`asserted in related judicial matter PersonalWeb Tech. LLC et al v. Rackspace US,
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`Inc. et al., No. 6-12-cv-00659 (E.D. Tex., filed Sep. 17, 2012).
`
`As of the filing date of this petition, additional 3rd party judicial matters as-
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`serting claims of patent infringement under the ‘310 patent or other members of the
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`patent family 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. Face-
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`book Inc., No. 5-13-cv-01356 (N.D. Ca., filed Mar. 26, 2013); PersonalWeb Techs.
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`LLC et al v. NetApp, Inc., No. 5-13-cv-01359 (N.D. Ca., filed Mar. 26, 2013); Per-
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`sonalWeb Techs. LLC v. Google, Inc. et al, No. 5-13-cv-01317 (N.D. Ca., filed
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`Mar. 25, 2013); PersonalWeb Techs. LLC et al v. Int’l Bus. Mach. Corp., No. 6-12-
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`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
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`Techs. LLC et al v. Facebook, Inc., No. 6-12-cv-00662 (E.D. Tex., filed Sep. 17,
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`2012); PersonalWeb Techs. LLC et al v. Apple Inc., No. 6-12-cv-00660 (E.D. Tex.,
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`1
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`filed Sep. 17, 2012); PersonalWeb Techs. LLC et al v. Microsoft Corp., No. 6-12-
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`cv-00663 (E.D. Tex., filed Sep. 17, 2012); PersonalWeb Techs. LLC et al v. Ya-
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`hoo! Inc., No. 6-12-cv-00658 (E.D. Tex., filed Sep. 17, 2012); PersonalWeb Techs.
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`LLC v. Autonomy, Inc., No. 6-11-cv-00683 (E.D. Tex., filed Dec. 19, 2011); Per-
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`sonalWeb Techs. LLC v. Google, Inc. et al, No. 6-11-cv-00656 (E.D. Tex., filed
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`Dec. 8, 2011); PersonalWeb Techs. LLC v. NEC Corp. of America, Inc., No. 6-11-
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`cv-00655 (E.D. Tex., filed Dec. 8, 2011); PersonalWeb Techs. LLC v. NetApp,
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`Inc., No. 6-11-cv-00657 (E.D. Tex., filed Dec. 8, 2011); PersonalWeb Techs. LLC
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`v. Caringo, Inc., No. 6-11-cv-00659 (E.D. Tex., filed Dec. 8, 2011); PersonalWeb
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`Techs. LLC v. Amazon Web Svcs. LLC et al, No. 6-11-cv-00658 (E.D. Tex., filed
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`Dec. 8, 2011); PersonalWeb Techs. LLC v. EMC Corp. et al, No. 6-11-cv-00660
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`(E.D. Tex., filed Dec. 8, 2011); and Akamai Techs, Inc. v. Digital Island, Inc.,
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`No. 1-00-cv-11851 (D. Mass., filed Sep. 13, 2000).
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`In addition, the following instituted trials and/or 3rd party petitions for inter
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`partes review are related:
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` IPR2013-00082 (instituted for related patent 5,978,791, May 17, 2013)
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` IPR2013-00083 (instituted for related patent 6,415,280, May 17, 2013)
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` IPR2013-00084 (instituted for related patent 7,945,544, May 17, 2013)
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` IPR2013-00085 (instituted for related patent 7,945,539, May 17, 2013)
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` IPR2013-00086 (instituted for related patent 7,949,662, May 17, 2013)
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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` IPR2013-00087 (instituted for related patent 8,001,096, May 17, 2013)
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` IPR2013-00319 (petition filed May 30, 2013)
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` IPR2013-00596 (petition filed September 18, 2013)
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`Finally, Petitioner itself is seeking inter partes review of related U.S. Patents
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`5,978,791, 6,415,280, 6,928,442 and 8,099,420, and requests that they be assigned
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`to the same panel for administrative efficiency.
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`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
`David W. O’Brien
`HAYNES AND BOONE, LLP
`2323 Victory Ave., Suite 700
`Dallas, TX 75219
`
`Back-up Counsel
`J. Andrew Lowes
`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: (512) 867-8457
`Fax: (214) 200-0853
`david.obrien.ipr@haynesboone.com
`USPTO Reg. No. 40,107
`
`
`Phone: (972) 680-7557
`Fax: (214) 200-0853
`andrew.lowes.ipr@haynesboone.com
`USPTO Reg. No. 40,706
`
`Phone: (972) 739-6923
`Fax: (214) 200-0853
`russell.emerson.ipr@haynesboone.com
`USPTO Reg. No. 44,098
`
`Paul V. Storm
`GARDERE WYNNE SEWELL LLP
`1601 Elm Street, Suite 3000
`Dallas, TX 75201
`
`Phone: (214) 999-4701
`Fax: (214) 999-3701
`pvstorm@gardere.com
`USPTO Reg. No. 35,803
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`II. Grounds for Standing (37 C.F.R. § 42.104(a))
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`Petitioner certifies pursuant to 37 C.F.R. § 42.104(a) that the ‘310 Patent is
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`available for inter partes review and that Petitioner is not barred or estopped from
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`requesting inter partes review challenging the patent claims on the grounds identi-
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`fied herein.
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`III. Overview of Challenges
`A.
`Statement of Precise Relief Requested (37 C.F.R. § 42.22(a)) and
`Identification of Challenges (37 C.F.R. § 42.104(b))
`Petitioner requests inter partes review and cancellation of claims 1, 2, 5-8,
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`10-12, 14, 16-19, 24, 29, 32, 70, 81, 82 and 86 of the ‘310 patent as obvious over
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`prior art references as detailed in specific challenges that follow. For each chal-
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`lenge, (i) specific statutory grounds and relied upon patents or printed publications
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`and (ii) the applicable claim(s) are identified in the following table.
`
`Challenge
`1
`
`Grounds and Reference(s)
`§ 103(a), WO 96/32685 (Kinetech) in
`view of 7,289,643 (Brunk)
`
`Challenged claim(s)
`1, 2, 5-8, 10, 12, 14 and 16-
`19
`
`2
`
`3
`
`4
`
`
`
`§ 103(a), Kinetech and 4,845,715
`(Francisco) further in view of Brunk
`
`16-19, 24, 29, 70, 81, 82 and
`86
`
`§ 103(a), 5,649,196 (Woodhill) in
`view of Francisco
`
`1, 2, 5-8, 10-11, 14, 16-19,
`24, 29, 32, 70, 81, 82 and 86
`
`§ 103(a), Woodhill and Francisco,
`further in view of Langer
`
`12
`
`4
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`

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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`Claims are construed as indicated in Section IV.C, below. Unpatentability of
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`claims is established with reference to particular claim elements and with reference
`
`to specific disclosure of the relied upon prior art. Evidence is referenced by exhibit
`
`number. In particular, a Declaration of Dr. Melvin Ray Mercer, Professor Emeri-
`
`tus of Electrical and Computer Engineering at Texas A&M University (Mercer
`
`Decl., RACK-1009) is included to establish a record for factual positions and mat-
`
`ters of opinion testimony relied upon herein. Petitioner’s Exhibit List is appended.
`
`B.
`
`Summary of Central Argument that Challenged Claims are Un-
`patentable
`
`Challenged claims of the ‘310 patent recite use of content-dependent digital
`
`identifiers for data items, wherein a given content-based name or identifier is based
`
`on at least some of the contents of a particular data item. Use of a content-based
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`name/identifier is in connection with a system that determines whether a particular
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`data item is to be made available for access and/or provided in a network. For ref-
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`erence, the challenged independent claims are:
`
`Claim 1
`ID
`[1a] A computer-implemented method in a system which in-
`cludes a network of computers, the method implemented
`at least in part by hardware comprising at least one
`processor, the method comprising the steps:
`[1b] (a) at a first computer, obtaining a content-based name
`for a particular data item from a second computer dis-
`tinct 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
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`message digest function or a hash function, and where-
`in two identical data items will have the same con-
`tent-based name; and
`[1c] (b) by hardware in combination with software, a proces-
`sor 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
`[1d] (c) based at least in part on said ascertaining in (b),
`determining whether or not access to the particular
`data item is authorized.
`Claim 24
`ID
`[24a] A computer-implemented method implemented at least in
`part by hardware comprising one or more processors, the
`method comprising:
`[24b] (a) using a processor, receiving at a first computer
`from a second computer, a request regarding a particu-
`lar data item, said request including at least a con-
`tent-dependent name for the particular data item, the
`content-dependent name being based, at least in part,
`on at least a function of the data in the particular
`data item, wherein the data used by the function to
`determine the content-dependent name comprises at
`least some of the contents of the particular data
`item, wherein the function that was used comprises a
`message digest function or a hash function, and where-
`in two identical data items will have the same con-
`tent-dependent name; and
`[24c] (b) in response to said request:
`(i) causing the content-dependent name of the particu-
`lar data item to be compared to a plurality of val-
`ues;
`(ii) hardware in combination with software determining
`whether or not access to the particular data item is
`unauthorized based on whether the content-dependent
`name of the particular data item corresponds to at
`least one of said plurality of values, and
`(iii) based on said determining in step (ii), not al-
`lowing the particular data item to be provided to or
`accessed by the second computer if it is determined
`that access to the particular data item is not au-
`thorized.
`
`[24d]
`
`6
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`Claim 70
`ID
`[70a] 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 pro-
`cessor, the method comprising the steps of:
`[70b] in response to a request at a first computer, from an-
`other computer, said request comprising at least a con-
`tent-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 par-
`ticular 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:
`[70c] (A) hardware in combination with software, determining
`whether the content-based identifier for the particu-
`lar data item corresponds to an entry in a database
`comprising a plurality of content-based identifiers;
`and
`[70d] (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.
`Claim 81
`ID
`[81a] A device operable in a network of computers, the device
`comprising hardware including at least one processor and
`memory, to:
`[81b] (a) receive, at said device, from another device in the
`network, a content-based identifier for a particular se-
`quence of bits, the content-based identifier being based
`at least in part on a function of at least some of the
`particular sequence of bits, wherein the function com-
`prises a message digest function or a hash function, and
`wherein two identical sequences of bits will have the
`same content-based identifier; and to
`[81c] (b) compare the content-based identifier of the particu-
`lar sequence of bits to a plurality of values; and to
`[81d] (c) selectively allow said particular sequence of bits
`to be provided to or accessed by other devices depending
`
`7
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`on whether or not said content-dependent identifier cor-
`responds to one of the plurality of values.
`Claim 86
`ID
`[86a] A device operable in a network of computers, the device
`comprising hardware, including at least one processor
`and memory, to:
`[86b] (a) receive at said device, from another device in the
`network, a 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, wherein the given
`function comprises a message digest function or a hash
`function, and wherein two identical sequences of bits
`will have the same digital identifier; and
`[86c] (b) selectively allow the particular sequence of bits to
`be provided to or accessed by other devices in the sys-
`tem, based at least in part on whether or not the digi-
`tal identifier for the particular sequence of bits cor-
`responds to a value in a plurality of values, each of
`the plurality of values being based, at least in part,
`on the given function of at least some of the bits in a
`corresponding sequence of bits.
`
`
`Reference identifiers [IDs] in the above claim charts (and in the exhibits) are used
`
`for clarity. Charts for dependent claims appear in the Mercer Decl. (RACK-1009).
`
`Leaving aside (for the moment) other aspects of the claim, recitation of “at
`
`least some of the content of a particular data item” (or the like) has no written de-
`
`scription support in the alleged priority documents. Indeed, the originally-filed
`
`‘5160 application (to which the ‘310 claims priority) and its prosecution history
`
`tells of a different invention, stating repeatedly and unequivocally that, in the in-
`
`vention, data items are identified by substantially unique identifiers, the identifiers
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`8
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`“depending on all of the data in the data items and only the data in the data items.”
`
`(See Mercer Decl., RACK-1009, ¶¶49-53.)
`
`The change from all of the data to less than all of the data, data was intro-
`
`duced by way of a 2010 amendment (see RACK-1002, 344-380, Amendment ac-
`
`companying RCE, pp. 10-28) nearly three years into prosecution of the ‘687 appli-
`
`cation that eventually granted as the ‘310 patent, and over 15 years after the al-
`
`leged priority date. There is no written description support for less than all of the
`
`data in the original ‘5160 priority application (which issued as US 5,978,791) or in
`
`the ‘3160 application (which claims priority of the ‘5160 application and issued as
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`US 6,415,280) or in the ‘723 application (which claims priority of the ‘3160 and
`
`issued as US 6,928,442), or in the ‘972 application (which claims priority of the
`
`‘723 and issued as US 7,949,662), or in the ‘650 application (which claims priority
`
`of the ‘723 and issued as US 8,099,420) or in the ‘232 application (which claims
`
`priority of the ‘650 and issued as US 8,082,262). (See Mercer Decl., RACK-1009,
`
`¶¶49-88.) Accordingly, challenged claims 1, 2, 5-8, 10, 12, 14, 16-19, 24, 29, 70,
`
`81, 82 and 86 are not entitled to any priority benefit and cannot have an effective
`
`filing date earlier than October 31, 2007.
`
`As a result, in a classic Tronzo v. Biomet 1 fact pattern, a published foreign
`
`counterpart application invalidates later claimed obvious variations. Here, the for-
`
`1 Tronzo v. Biomet, 156 F.3d. 1154, 1158-59, (Fed. Cir. 1998).
`
`9
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`
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`eign counterpart of the ‘310 patent is a PCT international application, naming
`
`KINETECH, INC. as Applicant and published 17 Oct. 1996 (over 11 years before
`
`the filing date of the ‘687 application) as WO 96/32685 (hereafter “Kinetech”).
`
`The later-claimed obvious variation, here the less than all of the data variation that
`
`challenged claims 1, 2, 5-8, 10, 12, 14, 16-19, 24, 29, 70, 81, 82 and 86 now pur-
`
`port to cover, is obvious over the all of the data invention actually disclosed in
`
`Kinetech. Details of the written description analysis, as well as specific invalidity
`
`contentions (Grounds #1, #2) based on Kinetech, Brunk and Francisco, are detailed
`
`in Sections V.A-B, below. Trial should be instituted at least on these grounds.
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`Additional grounds (Grounds #3 and #4) apply to the foregoing claims, as
`
`well as to certain dependent claims that recite all of the data and may therefore
`
`find priority support in the ‘5160. These additional grounds apply patent refer-
`
`ences that antedate even the earliest priority date alleged. Specifically, these
`
`claims are obvious over combinations of Woodhill, Francisco and Langer detailed
`
`in Sections V.C-D, below. Trial should be instituted on at least these grounds as
`
`well. Kinetech, Brunk, Francisco, Woodhill and Langer are summarized in the
`
`Mercer Decl. (RACK-1009, ¶¶91-94, 123-125 and 193).
`
`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 Re-
`view on Multiple Grounds is Proper (37 C.F.R. § 42.108)
`
`Information presented in this Petition, including unpatentability grounds de-
`
`10
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`
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`tailed in Sections V.A-D, below, 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, those sections, supported by the Mercer Decl. (RACK-1013)
`
`demonstrate multiple grounds on which the challenged claims are obvious in view
`
`of the relied upon prior art patents and printed publications. Institution on multiple
`
`grounds is proper because patent owner may argue priority or more specialized
`
`meaning for claim terms, and in view of the varied scope of the challenged claims.
`
`IV. The Challenged ‘310 Patent
`
`A. Overview of the Patent
`The ‘310 patent is directed to data storage systems that use “substantially
`
`unique identifiers” to identify data items. The “substantially unique identifiers”
`
`described in the ‘310 patent are based on all the data in a data item and identical
`
`data items have the same substantially unique identifier. (RACK-1001, 3:50-58,
`
`31:38-48.)
`
`According to the ‘310 patent, prior art systems identified data items based on
`
`their location or address within the data processing system. (RACK-1001, 1:53-
`
`58.) For example, files were often identified by their context or “pathname,” i.e.,
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`information specifying a path through the computer directories to the particular file
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`(e.g., C:\MyDocuments\classes\EE350\lecture1.ppt). (See RACK-1001, 1:65-2:5.)
`
`The ‘310 patent contends that all prior art systems operated in this manner, stating
`
`11
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`that “[i]n all of the prior data processing systems[,] the names or identifiers pro-
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`vided to identify data items … are always defined relative to a specific context,”
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`and “there is no direct relationship between the data names and the data item.”
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`(RACK-1001, 2:26-31, 2:39-40 (emphasis added).)
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`According to the ‘310 patent, this prior art practice of identifying a data item
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`by its context or pathname had certain shortcomings. For example, with pathname
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`identification, the same data name may refer to different data items, or conversely,
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`two different data names may refer to the same data item. (RACK-1001, 2:39-43.)
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`Moreover, because there is no correlation between the contents of a data item and
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`its pathname, there is no a priori way to confirm that the data item is in fact the
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`one named by the pathname. (RACK-1001, 2:44-47.) The ‘310 patent purports to
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`address these shortcomings. (RACK-1001, 3:30-44.) It suggests that “it is there-
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`fore desirable to have a mechanism … to determine a common and substantially
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`unique identifier for a data item, using only the data in the data item and not rely-
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`ing on any sort of context.” (RACK-1001, 3:30-35.)
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`To do so, the ‘310 patent provides substantially unique identifiers that “de-
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`pend[] on all of the data in the data item and only on the data in the data item.”
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`(RACK-1001, 1:44-48 (emphasis added); see also 3:50-55.) The ‘310 patent uses
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`the terms “True Name” and “data identifier” to refer to the substantially unique
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`identifier for a particular data item (RACK-1001, 6:20-22) and explains that a True
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`Name is computed using a message digest function (see RACK-1001, 12:21-46).
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`Preferred embodiments use either of the MD5 or SHA message digest functions to
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`calculate a substantially unique identifier from the contents of the data item.
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`(RACK-1001, 12:21-48.)
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`The ‘310 patent calls these context- or location-independent, content-
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`dependent digital identifiers “True Names”–a phrase apparently coined by the in-
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`ventors. Specifically, the ‘310 patent itself indicates that the “True Name of a file
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`can be used to identify a file by contents, to confirm that a file matches its original
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`contents, or to compare two files.” (RACK-1001, 14:50-54). Dr. Mercer confirms
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`that True Name (and its listed variations) are the only content-dependent (or con-
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`tent-based) digital identifiers (or names) described in the ‘310 patent. (Mercer
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`Decl., RACK-1009, ¶32.)
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`In the preferred embodiments, the substantially unique identifiers or True
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`Names are used to “augment” standard file management functions of an existing
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`operating system. (See RACK-1001, 6:25-32.) A True File registry (TFR) lists
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`True Names, and stores “location, dependency, and migration information about
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`True Files.” (See RACK-1001, 8:35-37, 8:41-43.) True Files are identified in the
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`True File registry by their True Names, and can be looked up in the registry by
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`their True Names. (See RACK-1001, 8:38-40, 23:3-4.) For licensable data items
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`(e.g., files), a license table records the identity of each system that is authorized to
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`have a copy of the data item (or file) together with its associated True Name. (See
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`RACK-1001, 11:33-44; 31:17-23.)
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`The ‘310 patent posits a “Track for Licensing Purposes” mechanism that
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`purports to ensure that licensed files are not used by unauthorized parties. (See
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`RACK-1001, 31:3-32.) Individual records of a license table record a relationship
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`between a licensable data item (identified by its True Name) and the user that is
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`licensed to have access to it. (See RACK-1001, 11:19-31.) The ‘310 patent de-
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`scribes a license validation or audit process by which content of a given user pro-
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`cessor may be remotely determined, using the Locate True File mechanism (see
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`RACK-1001, 22:61-23:34), and checked against the license table to confirm that
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`the user processor does not have a copy of a file whose True Name appears in the
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`license table but for which the user processor is not authorized. (See RACK-1001,
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`31:13-32.) If the user processor is found to have a file that it is not authorized to
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`have, the user processor and True Name are recorded in a license violation table.
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`(See RACK-1001, 31:30-32.)
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`Although the ‘310 patent indicates that active enforcement of valid licenses
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`could be provided by refusing to provide access to a file without authorization (see
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`RACK-1001, 31:9-12), Dr. Mercer was unable to find any specific description of a
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`mechanism to do so (Mercer Decl., RACK-1009, ¶35). In any case, Dr. Mercer
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`confirms that the license table is the only disclosed association between a content-
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`dependent (content-based) digital identifier (or name) and authorization infor-
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`mation in the ‘310 patent. (Mercer Decl., RACK-1009, ¶35.)
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`Prosecution History
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`B.
`The ‘310 patent issued on application 11/980,687, filed Oct. 31, 2007. The
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`specification and drawings of ‘687 application are substantially co-extensive with
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`that of the ‘5160 priority application (compare ‘687 app., RACK-1002 at 727-797,
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`805-835 with ‘5160 app., RACK-1015 at 12-87, 107-130). Dr. Mercer confirms
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`the correspondence. (Mercer Decl., RACK-1009, ¶92.) In the ‘310 patent, origi-
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`nally presented claims each require the substantially unique identifier (e.g., the
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`“name for a data [item or file]” in independent claims 1 and 24) to be based on, or
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`determined using, a function of “the data … [that] comprise[] the contents of the
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`data [item or file].” (See RACK-1002 at 798, 802-803 (original claims 1, 24).)
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`During the course of prosecution, claims were amended to introduce the less than
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`all of the contents of a data item concept. (See Amendment and RCE filed Apr. 19,
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`2010, RACK-1002 at 344-380.) Specifically, claims 1 and 24 were amended to
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`allow the substantially unique identifier to encompass a “content-based [or con-
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`tent-dependent] name for a particular data item” based on, or determined using a
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`function of “at least some of the data … [that] comprise[] the contents of the par-
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`ticular data item.” (See RACK-1002 at 353, 359-360.)
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`The Mercer Decl. details specific priority support issues; however, focusing
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`on aspects most pertinent to this Petition, Petitioner notes three (3) key points:
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`First, the original priority application 08/425,160, filed on Apr. 11, 1995 (“the
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`‘5160 app.” (RACK-1015, at 11-130) and likewise its file wrapper continuation
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`(08/960,079, RACK-1015, at 254)) include no actual description of any embodi-
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`ment in which an identifier is computed as a function of less than all of the con-
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`tents of the data item so identified (i.e., no “function of less than all contents” em-
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`bodiment). (See Mercer Decl., RACK-1009, ¶¶49-53.) Specifically, Dr. Mercer
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`confirms that the ‘5160 application reasonably conveys to a person of ordinary
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`skill in the art that the subject matter invented, i.e., the inventor’s possession as of
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`the filing date, Apr. 11, 1995, was limited to embodiments in which substantially
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`unique identifiers depend on all the data in the data item that they identify. (Mer-
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`cer Decl., RACK-1009, ¶53.)
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`Second, in an attempt to obtain allowance, Applicant specifically confirmed
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`during prosecution of the‘5160 app. that their substantially unique identifier de-
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`pends on all, not just some, of the data in the data item, stating on the record that:
`This invention relates to data processing systems and,
`more particularly, to data processing systems wherein
`data items are identified by substantially unique iden-
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
`tifiers which depend on all of the data in the data
`items and only on the data in the data items.
`…
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`Further, the identifier depends on all, not just some,
`of the data in the data item.
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`(Amendment of Mar. 12, 1997 at 10-11; RACK-1015 at 186-187 (box added).)
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`Third, none of the other five (5) successive applications to which the ‘310
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`patent purports to claim priority (i.e., not 09/283,160, filed 1 Apr. 1999 and grant-
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`ed as 6,415,280, not 09/987,723, filed 15 Nov. 2001 and granted as 6,928,442, not
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`10/742,972, filed 23 Dec. 2003 and granted as 7,949,662, not 11/017,650, filed 22
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`Dec. 2004 and granted as 8,099,420, and not 11/724,232, filed 15 Mar. 2007 and
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`granted as 8,082,262) provides written description to support a “function of less
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`than all contents” embodiment. (See Mercer Decl., RACK-1009, ¶¶54-88, review-
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`ing contents of the ‘3160, ‘723, ‘972, ‘650, and ‘232 applications [RACK-1016,
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`RACK-1018, RACK-1019, RACK-1020 and RACK-1024]), including originally
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`presented claims. In each case, Dr. Mercer confirms that the ‘3160, ‘723, ‘972,
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`‘650, and ‘232 applications remained limited to embodiments in which substantial-
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`ly unique identifiers depend on all the data in the data item that they identify. (See
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`Mercer Decl., RACK-1009, ¶¶56, 71, 74, 84, 87.)
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`Petition for