UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`Unified Patents Inc.,
`Petitioner
`v.
`
`PersonalWeb Technologies & Level 3 Communications
`Patent Owner
`
`
`
`IPR2014- _____
`
`Patent 5,978,791
`
`____________
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`i
`
`
`Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`

`

`TABLE OF CONTENTS
`
`MANDATORY NOTICES ............................................................................. 1 
`
`I. 
`
`A.  Real Party-in-Interest ......................................................................... 1 
`
`B. 
`
`C. 
`
`D. 
`
`Petitioner Notice of Related Matters (37 C.F.R. § 42.8(b)(2)) ........ 3 
`
`Identification of Lead and Back-Up Counsel ................................... 6 
`
`Service Information ............................................................................. 7 
`
`II. 
`
`Payment of Fees ............................................................................................. 7 
`
`III.  Grounds for Standing (37 C.F.R. § 42.104(a)) ............................................ 7 
`
`IV.  Overview of Challenges ................................................................................. 7 
`
`A. 
`
`B. 
`
`C. 
`
`Statement of Precise Relief Requested (37 C.F.R. § 42.22(a))
`and Identification of Challenges (37 C.F.R. § 42.104(b)) ................ 7 
`
`Summary of Central Argument that Challenged Claims are
`Unpatentable ........................................................................................ 9 
`
`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) .............................................................. 14 
`
`V. 
`
`The Challenged ‘791 Patent ........................................................................ 15 
`
`A.  Overview of the Patent ...................................................................... 15 
`
`B. 
`
`Prosecution History ........................................................................... 18 
`
`C.  Claim Construction (37 C.F.R. § 42.104(b)(3)) .............................. 21 
`
`1. 
`
`2. 
`
`3. 
`
`Terms Already Construed by the PTAB .............................. 21 
`
`Additional Terms Requiring Construction .......................... 28 
`
`Claim Construction Standard ................................................ 29 
`
`ii
`
`

`

`VI.  Unpatentability under Specific Grounds (37 C.F.R. 42.104(b)(4)
`and Evidence Relied Upon in Support of Challenge (37 C.F.R.
`42.104(b)(5)) ................................................................................................. 29 
`
`A.  Ground #1: Claims 1-4, 29-33, 35 and 41 are Anticipated by
`Woodhill .............................................................................................. 29 
`
`B.  Ground #2: Claims 1-4, 29-33, 35 and 41 are Obvious over
`Woodhill .............................................................................................. 56 
`
`VII.  Conclusion .................................................................................................... 59 
`
`   
`
`iii
`
`

`

`Introduction
`
`Pursuant to the provisions of 35 U.S.C. §§ 311-319, Unified Patents, Inc.,
`
`(“Unified” or “Petitioner”) hereby petitions the Patent Trial and Appeal Board to
`
`institute inter partes review of claims 1-4, 29-33, 35 and 41 of US Patent No.
`
`5,978,791 to Faber et al. (“the ‘791 Patent,” Ex. 1001). Petitioner files a motion for
`
`joinder concurrently herewith to join this proceeding with Rackspace US, Inc. and
`
`Rackspace Hosting, Inc., v. PersonalWeb Technologies, LLC and Level 3
`
`Communications, LLC, Case IPR2014-00057 (the “Rackspace IPR”), instituted on
`
`April 15, 2014. See Institution Order, IPR2014-00057, Ex. 1004. This petition is
`
`substantively identical to the one in the Rackspace IPR, except that the ground for
`
`unpatentability which was not authorized by the Board has been removed and is
`
`not relied upon by Unified. Personal-Web Technologies, LLC and Level 3
`
`Communications, LLC have stated, in filings in the United States District Court for
`
`the Eastern District of the Texas that they each own an undivided fifty percent
`
`(50%) interest in the ‘791 Patent.
`
`I. MANDATORY NOTICES
`
`A.
`
`Real Party-in-Interest
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Unified Patents is
`
`the real party-in-interest, and further certifies that no other party exercised control
`
`
`
`1
`
`

`

`or could exercise control over Unified Patents’ participation in this proceeding, the
`
`filing of this petition, or the conduct of any ensuing trial.
`
`Unified Patents was founded by intellectual property professionals over
`
`concerns with the increasing risk of non-practicing entities (NPEs) asserting poor
`
`quality patents against strategic technologies and industries. The founders thus
`
`created a first-of-its-kind company whose sole purpose is to deter NPE litigation
`
`by protecting technology sectors, like cloud storage, the technology at issue in the
`
`‘791 patent. Companies in a technology sector subscribe to Unified’s technology
`
`specific deterrence, and in turn, Unified performs many NPE-deterrent activities,
`
`such as analyzing the technology sector, monitoring patent activity (including
`
`patent ownership and sales, NPE demand letters and litigation, and industry
`
`companies), conducting prior art research and invalidity analysis, providing a
`
`range of NPE advisory services to its subscribers, sometimes acquiring patents, and
`
`sometimes challenging patents at the United States Patent and Trademark Office
`
`(USPTO). Since its founding, Unified is 100% owned by its employees;
`
`subscribers have absolutely no ownership interest.
`
`Unified has sole and absolute discretion over its decision to contest patents
`
`through the USPTO’s post-grant proceedings. Should Unified decide to challenge a
`
`patent in a post-grant proceeding, it controls every aspect of such a challenge,
`
`including controlling which patent and claims to challenge, which prior art to apply
`
`
`
`2
`
`

`

`and the grounds raised in the challenge, and when to bring any challenge.
`
`Subscribers receive no prior notice of Unified’s patent challenges. After filing a
`
`post-grant proceeding, Unified retains sole and absolute discretion and control over
`
`all strategy decisions (including any decision to continue or terminate Unified’s
`
`participation). Unified is also solely responsible for paying for the preparation,
`
`filing, and prosecution of any post-grant proceeding, including any expenses
`
`associated with the proceeding.
`
`In the instant proceeding, Unified exercised its sole discretion and control in
`
`deciding to file this petition against the ‘791 patent, including paying for all fees
`
`and expenses. Unified shall exercise sole and absolute control and discretion of
`
`the continued prosecution of this proceeding (including any decision to terminate
`
`Unified’s participation) and shall bear all subsequent costs related to this
`
`proceeding. Unified is therefore the sole real-party-in-interest in this proceeding.
`
`B.
`
`Petitioner Notice of Related Matters (37 C.F.R. § 42.8(b)(2))
`
`The ‘791 Patent is the first issued of an extensive family of continuation and
`
`divisional applications and is the subject of three IPRs: IPR2014-00057(pending),
`
`IPR2013-00319(denied institution), and IPR2013-00082(pending). The ‘791 Patent
`
`is also the subject of a pending ex parte reexamination: 90/012,931. The ‘791
`
`Patent has been asserted in many litigations:
`
`
`
`3
`
`

`

`1. PersonalWeb Techs. LLC v. Google, Inc. et al, No. 3-13-cv-04113
`
`(N.D. Ca., filed Sep. 5, 2013).
`
`2. PersonalWeb Techs. LLC et al v. Facebook Inc., No. 5-13-cv-01356
`
`(N.D. Ca., filed Mar. 26, 2013)(terminated).
`
`3. PersonalWeb Techs. LLC et al v. EMC Corp. et al., No. 5-13-cv-
`
`01358 (N.D. Ca., filed Mar. 26, 2013)(terminated).
`
`4. PersonalWeb Techs. LLC et al v. Facebook, Inc., No. 6-12-cv-00662
`
`(E.D. Tex., filed Sep. 17, 2012)(terminated).
`
`5. PersonalWeb Tech. LLC et al v. Nexsen Technologies, Inc., No. 6-12-
`
`cv-00657 (E.D. Tex., filed Sep. 17, 2012)(terminated).
`
`6. PersonalWeb Techs. LLC v. Caringo, Inc., No. 6-11-cv-00659 (E.D.
`
`Tex., filed Dec. 8, 2011)(terminated);
`
`7. PersonalWeb Techs. LLC et al v. NetApp, Inc., No. 6-12-cv-00657
`
`(E.D. Tex., filed Dec. 8, 2011)(terminated).
`
`8. PersonalWeb Techs. LLC v. EMC Corp. et al, No. 6-11-cv-00660
`
`(E.D. Tex., filed Dec. 8, 2011)(terminated).
`
`9. PersonalWeb Techs. LLC v. Google, Inc. et al, No. 6-11-cv-00656
`
`(E.D. Tex., filed Dec. 8, 2011)(terminated).
`
`10. PersonalWeb Techs. LLC v. NEC Corp. of America, Inc., No. 6-11-
`
`cv-00655 (E.D. Tex., filed Dec. 8, 2011)(terminated).
`
`
`
`4
`
`

`

`11. Akamai Techs, Inc. v. Digital Island, Inc., No. 1-00-cv-11851 (D.
`
`Mass., filed Sep. 13, 2000)(terminated).
`
`12. PersonalWeb Techs. LLC et al v. Apple Inc., No. 4-14-cv-01683 (N.D.
`
`Ca, filed April 11, 2014).
`
`13. PersonalWeb Techs. LLC et al v. NetApp, Inc., No. 5-13-cv-01359
`
`(N.D. Ca., filed Mar. 26, 2013).
`
`14. PersonalWeb Techs. LLC v. Google, Inc. et al, No. 5-13-cv-01317
`
`(N.D. Ca., filed Mar. 25, 2013).
`
`15. PersonalWeb Techs. LLC et al v. Yahoo! Inc., No. 6-12-cv-00658
`
`(E.D. Tex., filed Sep. 17, 2012).
`
`16. PersonalWeb Techs. LLC et al v. Apple Inc., No. 6-12-cv-00660 (E.D.
`
`Tex., filed Sep. 17, 2012).
`
`17. PersonalWeb Techs. LLC et al v. Int’l Bus. Mach. Corp., No. 6-12-cv-
`
`00661 (E.D. Tex., filed Sep. 17, 2012).
`
`18. PersonalWeb Techs. LLC et al v. Microsoft Corp., No. 6-12-cv-0663
`
`(E.D. Tex., filed Sep. 17, 2012).
`
`19. PersonalWeb Tech. LLC et al v. Rackspace US, Inc. et al., No. 6-12-
`
`cv-00659 (E.D. Tex., filed Sep. 17, 2012).
`
`20. PersonalWeb Techs. LLC v. Autonomy, Inc., No. 6-11- cv-00683
`
`(E.D. Tex., filed Dec. 19, 2011).
`
`
`
`5
`
`

`

`21. PersonalWeb Techs. LLC v. Amazon Web Svcs. LLC et al, No. 6-11-
`
`cv-00658 (E.D. Tex., filed Dec. 8, 2011).
`
`In addition, the following post-grant proceedings are for related patents:
`
`Related patents to
`the ‘791 Patent
`6,415,280
`
`6,928,442
`
`7,802,310
`
`7,945,539
`7,945,544
`7,949,662
`8,001,096
`8,099,420
`
`Post-grant proceeding
`
`IPR2013-00083 (pending)
`IPR2014-00059 (pending)
`IPR2014-00066 (pending)
`90/010,260 (ex parte reexam,
`certificate issued)
`IPR2013-00596 (pending)
`IPR2014-00062 (pending)
`IPR2013-00085 (pending)
`IPR2013-00084 (pending)
`IPR2013-00086 (pending)
`IPR2013-00087 (pending)
`IPR2014-00058 (pending)
`
`
`
`C.
`
`Identification of Lead and Back-Up Counsel
`
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner provides the following
`
`designation of counsel: Lead counsel is Michael L. Kiklis (Reg. No. 38,939) and
`
`back-up counsel is Scott A. McKeown (Reg. No. 42,866).
`
`
`
`
`
`6
`
`

`

`D.
`
`Service Information
`
`Pursuant to 37 C.F.R. § 42.8(b)(4), papers concerning this matter should be
`
`served on the following.
`
`
`Address: Michael L. Kiklis or Scott McKeown
`Oblon Spivak
`1940 Duke Street
`Alexandria, VA 22314
`cpdocketkiklis@oblon.com and
`cpdocketmckeown@oblon.com
`Telephone: (703) 413-2707/(703)413-3000 (main)
`Fax:
`(703) 413-2220
`
`Email:
`
`
`II.
`
`Payment of Fees
`
`The undersigned authorizes the Office to charge the required fees as well as
`
`any additional fees that might be due to Deposit Account No. 15-0030.
`
`
`
`III. Grounds for Standing (37 C.F.R. § 42.104(a))
`
`Petitioner certifies pursuant to 37 C.F.R. § 42.104(a) that the ‘791 Patent is
`
`available for inter partes review and that Petitioner is not barred or estopped from
`
`requesting inter partes review challenging the patent claims on the grounds
`
`identified herein.
`
`IV. 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 1-4, 29-
`
`
`
`7
`
`

`

`33, 35 and 41 of the ‘791 patent as anticipated by, and/or obvious over, prior art as
`
`detailed in specific challenges that follow. For each challenge, (i) the
`
`specific statutory grounds of unpatentability and relied upon prior art patents or
`
`printed publications and (ii) the applicable claim(s) are identified in the following
`
`table.
`
`Challenge Grounds and Reference(s)
`1
`§ 102(e), US Patent 5,649,196
`(Woodhill)
`§ 103(a), Woodhill
`
`2
`
`Challenged claim(s)
`1-4, 29-33, 35 and 41
`
`1-4, 29-33, 35 and 41
`
`
`
`Challenged claims are to be construed as indicated in Section IV.C, below. For
`
`each challenge, the unpatentability of the applicable claims is established with ref-
`
`erence to particular claim elements and with reference to specific disclosure found
`
`in the relied upon prior art. Supporting evidence is referenced by exhibit number
`
`and with particular reference to specific portions of the evidence that support the
`
`challenges. In particular, a Declaration from the Rackspace IPR petition of Dr.
`
`Melvin Ray Mercer, Professor Emeritus of Electrical and Computer Engineering at
`
`Texas A&M University (Mercer Decl., Ex. 1007) is included to establish a record
`
`for factual positions and matters of opinion testimony relied upon herein. Although
`
`Dr. Mercer discusses the ground of unpatentability not authorized by the Board
`
`(Ground 3, ¶¶ 116-121), Unified does not rely upon that part of his declaration.
`
`The exhibits referred to in Dr. Mercer’s declaration are like numbered in
`
`
`
`8
`
`

`

`Petitioner’s Exhibit list, which is appended hereto. Specifically, the
`
`correspondence between the exhibits referred to in Dr. Mercer’s declaration and
`
`Petitioner’s exhibits are as follows:
`
`Exhibits Referenced in
`Dr. Mercer’s Declaration
`RACK-1001
`
`Petitioner’s
`Corresponding Exhibit
`Ex. 1001
`
`RACK-1002
`
`RACK-1003
`
`RACK-1004
`
`RACK-1005
`
`RACK-1006
`
`Ex. 1002
`
`Ex. 1003
`
`Not relied upon
`
`Ex. 1005
`
`Ex. 1006
`
`
`
`B.
`
`Summary of Central Argument that Challenged Claims are
`Unpatentable
`
`The ‘791 claims focus on the concept of using a “substantially unique
`
`identifier” – based on “all” and “only” the data in a data item – to perform basic
`
`file management functions. Challenged independent claims 1, 30 and 33 of the
`
`patent, for example, require simply (i) determining the identifier, and (ii) using the
`
`identifier to determine if the data item is present in the system and/or access or
`
`provide the data item. For example, claim 1 (styled as a claim under 35 U.S.C. §
`
`112(f)) requires only identity and existence means:
`
`
`
`9
`
`

`

`ID
`
`Claim 1
`
`[1a]
`[1b]
`
`In a data processing system, an apparatus comprising:
`identity means for determining, for any of a plurality of data items present in
`the system, a substantially unique identifier, the identifier being determined
`using and depending on all of the data in the data item and only the data in
`the data item, whereby two identical data items in the system will have the
`same identifier; and
`[1c] existence means for determining whether a particular data item is present in
`the system, by examining the identifiers of the plurality of data items.
`
`
`Likewise, claim 30 (styled as a method claim) requires only the recited identifier
`
`determining and data accessing steps:
`
`ID
`
`Claim 30
`
`[30a] A method of identifying a data item present in a data processing system for
`subsequent access to the data item, the method comprising:
`[30b] determining a substantially unique identifier for the data item, the identifier
`depending on and being determined using all of the data in the data item
`and only the data in the data item, whereby two identical data items in the
`system will have the same identifier; and
`[30c] accessing a data item in the system using the identifier of the data item.
`
`Claim 33 (again styled as a method claim) requires only the recited identifier
`
`determining, a presence determining step and a data provision step:
`
`ID
`
`Claim 33
`
`[33a] A method for duplicating a given data item present ata source location to a
`destination location in a data processing system, the method comprising:
`[33b] determining a substantially unique identifier for the given data item, the
`identifier depending on and being determined using all of the data in the
`data item and only the data in the data item, whereby two identical data
`items in the system will have the same identifier;
`[33c] determining, using the data identifier, whether the data item is present at the
`destination location; and
`
`
`
`10
`
`

`

`ID
`
`Claim 33
`
`[33d] based on the determining whether the data item is present, providing the
`destination location with the data item only if the data item is not present at
`the destination
`
`
`Finally, claim 35 (again styled as a method claim) requires the recited identifier
`
`determining (both for a set of data items and a particular data item), together with
`
`steps to make and maintain a set of determined identifiers and to determine
`
`presence of a particular identifier:
`
`ID
`
`Claim 35
`
`[35a] A method for determining whether a particular data item is present in a data
`processing system, the method comprising:
`[35b] (A) for each data item of a plurality of data items present in the system,
`(i) determining a substantially unique identifier for the data item, the
`identifier depending on and being determined using all of the data in the
`data item and only the data in the data item, whereby two identical data
`items in the system will have the same identifier; and
`(ii) making and maintaining a set of identifiers of
`the plurality of data items; and
`[35c] (B) for the particular data item, (i) determining a particular substantially
`unique identifier for the data item, the identifier depending on and being
`determined using all of the data in the data item and only the data in the
`data item, whereby two identical data items in the system will have the
`same identifier; and
`(ii) determining whether the particular identifier is in the set of data items.
`
`
`Reference identifiers [IDs] presented in the above claim charts (and in charts
`
`appearing in the exhibits) are used for consistency and clarity. Additional charts for
`
`dependent claims appear in the Mercer Decl. (Ex. 1007).
`
`The applicant indicated in their patent application that they were entitled to
`
`
`
`11
`
`

`

`these broad claims because “[i]n all of the prior data processing systems, the names
`
`or identifiers provided to identify data items … are always defined relative to a
`
`specific context,” and “there is no direct relationship between the data names and
`
`the data item.” (‘791 patent, Ex. 1001, 1: 65-2: 3, 2:12-13 (emphasis added))
`
`Applicant further argued to the USPTO that the ‘791 approach was inventive
`
`because it used data identifiers based on “all” and “only” the data in a data item.
`
`(See Ex. 1002, pp. 186-187, Amendment, dated March 12, 1997, at 10–11).
`
`These representations were simply wrong. Prior data processing systems did
`
`use identifiers that were based on the data in a data item itself, and not simply its
`
`context or pathname. In fact, as demonstrated herein and confirmed with respect to
`
`exemplary prior art patents and printed publication documents in the Mercer Decl.
`
`(Ex. 1007), these techniques were old and widely used. Notably, the prior art relied
`
`upon herein discloses and uses data identifiers exactly like those described and
`
`claimed in the ‘791 patent. This prior art discloses data item identifiers that are
`
`location- and context-independent, that are determined using all of, and only, the
`
`contents of the data item, and that are computed using the same hash and message
`
`digest algorithms mentioned in the ‘791 patent. For the convenience of the Board,
`
`pertinence of the Woodhill reference is now summarized.
`
`Woodhill: US Patent 5,649,196 to Woodhill et al., entitled “System and
`
`Method for Distributed Storage Management on Networked Computer Systems
`
`
`
`12
`
`

`

`Using Binary Object Identifiers” (“Woodhill,” Ex. 1003) describes use of context
`
`and location-independent identifiers for purposes that are analogous to those
`
`disclosed in the ‘791 patent. Indeed, the PTAB has already instituted trial as to a
`
`subset of the challenged claims of the ‘791 patent (IPR2013-00082) based on
`
`Woodhill.
`
`Woodhill discloses a distributed storage system that used “Binary Object
`
`Identifiers” to identify and access files, and to manage file back-ups, amongst other
`
`functions. (Mercer Decl., Ex. 1007, ¶¶47-48.) As Woodhill explains, a “Binary
`
`Object Identifier 74 [of Fig. 3] … is a unique identifier for each binary object to be
`
`backed up.” (Ex. 1003, 4:45-47.) Woodhill’s Binary Object Identifiers include
`
`three fields–a CRC value, a LRC value, and a hash value–each calculated from all
`
`of, and only, the contents of the binary object. (Ex. 1003, 8:1- 33.) As
`
`Woodhill emphasized, “[t]he critical feature to be recognized in creating a Binary
`
`Object Identifier 74 is that the identifier should be based on the contents of the
`
`binary object so that the Binary Object Identifier 74 changes when the contents of
`
`the binary object changes.” (Ex. 1003, 8:58-62.) Woodhill used these identifiers to
`
`identify binary objects that had changed since the most recent backup, so that
`
`“only those binary objects associated with the file that have changed must be
`
`backed up.” (Ex. 1003, 9:7-14.) “[D]uplicate binary objects, even if resident on
`
`
`
`13
`
`

`

`different types of computers in a heterogeneous network, can be recognized from
`
`their identical Binary Object Identifiers 74.” (Ex. 1003, 8:62-65.)
`
`Woodhill provides an example of the use of content-based identifiers to
`
`perform basic file management functions. In short, other than perhaps coining a
`
`new phrase–i.e., True Name–for an old concept, there is nothing in the challenged
`
`claims of the ‘791 patent that is new and nonobvious. Accordingly, challenged
`
`claims 1-4, 29-33, 35 and 41 are unpatentable, trial should be instituted by the
`
`PTAB and each of the challenged claims should be cancelled.
`
`C. Threshold Showing of Reasonable Likelihood That Petitioner
`Would Prevail With Respect To At Least One Challenged Claim
`(35 U.S.C. § 314(a)) Has Been Met; Institution of Inter Partes
`Review on Multiple Grounds is Proper (37 C.F.R. § 42.108)
`
`Information presented in this Petition, including unpatentability grounds
`
`detailed in Sections V.A-B, 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, that section, supported by the Mercer Decl. (Ex. 1007)
`
`demonstrates multiple grounds on which the challenged claims are anticipated by,
`
`or obvious in view of, the relied upon prior art.
`
`Petitioner is aware that the PTAB has already instituted trial (IPR2013-
`
`00082, instituted May 17, 2013) with respect to a subset of the claims challenged
`
`herein and grounds of unpatentability detailed herein. Nonetheless, Petitioner
`
`respectfully requests that the PTAB institute trial for all challenged claims and
`
`
`
`14
`
`

`

`based all grounds of unpatentability asserted herein and, in particular, for newly
`
`challenged claim 35 and based on certain obviousness challenges that are not being
`
`considered in the already instituted trial, but are asserted herein based on Woodhill.
`
`V.
`
`The Challenged ‘791 Patent
`
`A. Overview of the Patent
`
`The ‘791 patent is directed to data storage systems that use “substantially
`
`unique identifiers” to identify data items. The “substantially unique identifiers” are
`
`based on all the data in a data item and only the data in the data item, and identical
`
`data items have the same substantially unique identifier. (Ex. 1001, Title, Abstract,
`
`1:13-18.)
`
`According to the ‘791 patent, prior art systems identified data items based on
`
`their location or address within the data processing system. (Ex. 1001, 1:23-28.)
`
`For example, files were often identified by their context or “pathname,” i.e.,
`
`information specifying a path through the computer directories to the particular file
`
`(e.g., C:\MyDocuments\classes\EE350\lecture1.ppt). (See Ex. 1001, 1:35-42.) The
`
`‘791 patent contends that all prior art systems operated in this manner, stating that
`
`“[i]n all of the prior data processing systems[,] the names or identifiers provided to
`
`identify data items … are always defined relative to a specific context,” and “there
`
`is no direct relationship between the data names and the data item.” (Ex. 1001,
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`1:65–2:3, 2:12-13 (emphasis added).)
`
`
`
`15
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`

`

`According to the ‘791 patent, this prior art practice of identifying a data item
`
`by its context or pathname had certain shortcomings. For example, with pathname
`
`identification, the same data name may refer to different data items, or conversely,
`
`two different data names may refer to the same data item. (Ex. 1001, 2:12-16.)
`
`Moreover, because there is no correlation between the contents of a data item and
`
`its pathname, there is no a priori way to confirm that the data item is in fact the one
`
`named by the pathname. (Ex. 1001, 2:18- 21.) Furthermore, context or pathname
`
`identification may more easily result in the creation of unwanted duplicate data
`
`items, e.g., multiple copies of a file on a file server. (Ex. 1001, 2:47-58.)
`
`The ‘791 patent purports to address these shortcomings. (Ex. 1001, 3:6-20.)
`
`It suggests that “it is therefore desirable to have a mechanism … to determine a
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`common and substantially unique identifier for a data item, using only the data in
`
`the data item and not relying on any sort of context.” (Ex. 1001, 3:6-11.)
`
`Moreover, “[i]t is further desirable to have a mechanism for reducing multiple
`
`copies of data items … and to have a mechanism which enables the identification
`
`of identical data items so as to reduce multiple copies.” (Ex. 1001, 3:12-15.)
`
`To do so, the ‘791 patent provides substantially unique identifiers that
`
`“depend[] on all of the data in the data item and only on the data in the data item.”
`
`(Ex. 1001, 1:13-18; see also 3:29-32.) The ‘791 patent uses the terms “True Name”
`
`and “data identifier” to refer to the substantially unique identifier for a particular
`
`
`
`16
`
`

`

`data item (Ex. 1001, 6:6-10) and explains that a True Name is computed using a
`
`message digest function (see Ex. 1001, 12:55-13:14). Preferred embodiments use
`
`either of the MD5 or SHA message digest functions to calculate a substantially
`
`unique identifier from the contents of the data item. (Ex. 1001, 12:55-13:17.)
`
`The ‘791 patent calls these context- or location-independent, content-based
`
`identifiers “True Names”–a phrase apparently coined by the inventors. With these
`
`identifiers, the patent asserts, “data items can be accessed by reference to their
`
`identities (True Names) independent of their present location.” (Ex. 1001, 34:9-11,
`
`34:30-32.) The actual data item corresponding to these location-independent
`
`identifiers may reside anywhere, e.g., locally, remotely, offline. (Ex. 1001, 34:11-
`
`19.) “[T]he identity of a data item is independent of its name, origin, location,
`
`address, or other information not derivable directly from the data, and depends
`
`only on the data itself.” (Ex. 1001, 3:33-35.)
`
`In the preferred embodiments, the substantially unique identifiers are used to
`
`“augment” standard file management functions of an existing operating system.
`
`(See Ex. 1001, 6:11-19.) For example, a local directory extensions (LDE) table1
`
` is
`
`indexed by a pathname or contextual name of a file and also includes True Names
`
`for most files. (See Ex. 1001, 8:19-26.) A True File registry (TFR) lists True
`                                                            
`1   The patent describes an LDE table as a data structure which provides information
`about files and directories in the system and includes information in addition
`to that provided by the native file system. (See Ex. 1001, 8:19-26.) 
`
`
`
`17
`
`

`

`Names, and stores “location, dependency, and migration information about True
`
`Files.” (See Ex. 1001, 8:27-28, 33-35.) True Files are identified in the True File
`
`registry by their True Names, and can be looked up in the registry by their True
`
`Names. (See Ex. 1001, 8: 30-32, 23:61–62.) This look-up provides, for each True
`
`Name, a list of the locations, such as file servers, where the corresponding file is
`
`stored. (See Ex. 1001, 34:17–19; see also 16:11–13.)
`
`When a data item is to be “assimilated” into the data processing system, its
`
`substantially unique identifier (True Name) is calculated and compared to the True
`
`File Registry to see if the True Name already exists in the Registry. (See Ex. 1001,
`
`14:41-56.) If the True Name already exists, this means that the data item already
`
`exists in the system and the to-be-assimilated data item (i.e., the scratch file) need
`
`not be stored. (See Ex. 1001, 14:56-60.) Conversely, if the True Name does not
`
`exist in the Registry, then a new entry is created in the Registry which is then set to
`
`the just-calculated True Name value, and the data items can be stored. (See Ex.
`
`1001, 14:61-67.)
`
`Dr. Mercer confirms the foregoing overview of the challenged ‘791 patent.
`
`(See Mercer Decl., Ex. 1007, ¶¶26-34.)
`
`B.
`
`Prosecution History
`
`The ‘791 patent is based on application 08/425,150 that was originally filed
`
`on April 11, 1995. Initial claim 1 of the application read as follows:
`
`
`
`18
`
`

`

`
`
`(‘5160 Application at 77; Ex. 1002 at 88.) All claims were rejected as
`
`anticipated by Gramlich et al. (U.S. Pat. No. 5,202,982) and as being unpatentable
`
`over Gramlich in view of Konrad et al. (U.S. Pat. No. 5,404,508). (Office Action
`
`of September 12, 1996, at 3-7; Ex. 1002 at 168-172.)
`
`In response, applicants re-emphasized (through argument and some
`
`amendments) that their substantially unique identifiers depend on “all” and “only”
`
`the data in the data items, stating that:
`
`This invention relates to data processing systems and,
`
`more particularly, to data processing systems wherein
`
`data items are identified by substantially unique
`
`identifiers which depend on all of the data in the data
`
`items and only on the data in the data items.
`
`…
`
`
`
`19
`
`

`

`Thus, in particular, the identifier does not depend on
`
`anything not in the data item. Specifically, the identifier
`
`does not depend on other data, not on other identifiers
`
`and not on other data items.
`
`Further, the identifier depends on all, not just some, of
`
`the data in the data item.
`
`(Amendment of March 12, 1997 at 10-11; Ex. 1002 at 186-187, emphasis in
`
`original.) The claims were again rejected as anticipated by, or unpatentable in
`
`view of, Gramlich and other prior art. (Office Action of May 30, 1997 at 3-8; Ex.
`
`1002 at 203-208.)
`
`Applicants amended the claims a second time, again arguing that their
`
`invention required substantially unique identifiers based on “all” and “only” the
`
`data in the data items:
`
`
`
`20
`
`
`
`

`

`(Amendment of August 29, 1997 at 8, Ex. 1002 at 218, emphasis in
`
`original.) Claim 1 was eventually issued after a file wrapper continuation
`
`application and other procedural issues were addressed.
`
`C. Claim Construction (37 C.F.R. § 42.104(b)(3))
`
`This petition presents claim analysis in a manner that is consistent with the
`
`broadest reasonable interpretation in light of the specification. See 37 C.F.R. §
`
`42.100(b). Claim terms are given their ordinary and accustomed meaning as would
`
`be understood by one of ordinary skill in the art, unless the inventor, as a
`
`lexicographer, has set forth a special meaning for a term. Multiform Desiccants,
`
`Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); York Prods., Inc. v.
`
`Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1572 (Fed. Cir. 1996).
`
`Terms Already Construed by the PTAB
`1.
`In an instituted inter partes review of the ‘791 patent (IPR2013-00082), the
`
`PTAB has already construed claim terms as indicated in the table that follows:
`
`Claim Term
`
`PTAB Construction
`
`“substantially
`unique
`identifier”
`
`“an identity for a data item generated
`being determined using and depending
`on all of the data in the data item, and
`only the data in the data item”
`
`Appears in
`Challenged Claims
`1 (“a substantially
`unique identifier,”
`“the identifier,” “the
`same identifier,” and
`“the identifiers”);
`2 (“the identifier”);
`3 (“the identifiers”);
`4 (“the identifier”);
`30 (“a substantially
`unique identifier,”
`
`
`
`21
`
`

`

`Claim Term
`
`PTAB Construction
`
`“True Name”
`
`“substantially uniq