UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE INC. and YOUTUBE, LLC,
`Petitioners,
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS, LLC,
`Patent Owners.
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 6,415,280
`
`Case IPR: To be Assigned
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,415,280
`UNDER 35 U.S.C. §§ 311–319 AND 37 C.F.R. §§ 42.1–.80 & 42.100–.123
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`Introduction ...................................................................................................1
`
`II. Mandatory Notices by Petitioners (37 C.F.R. § 42.8(a)(1))............................3
`
`A.
`
`B.
`
`C.
`
`Real Parties-in-Interest (37 C.F.R. § 42.8(b)(1)) ..................................3
`
`Petitioners’ Notice of Related Matters (37 C.F.R. §
`42.8(b)(2)) ...........................................................................................3
`
`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)) ...........................................................................................6
`
`III. Grounds for Standing (37 C.F.R. § 42.104(a)) ...............................................7
`
`IV.
`
`V.
`
`Statement of Precise Relief Requested (37 C.F.R. § 42.22(a)) .......................7
`
`Overview of Challenges.................................................................................7
`
`A.
`
`B.
`
`C.
`
`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
`Petitioners 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
`
`VI.
`
`The Challenged ʼ280 Patent ......................................................................... 11
`
`A.
`
`B.
`
`C.
`
`Overview of the Patent.......................................................................11
`
`Prosecution History............................................................................16
`
`Claim Construction (37 C.F.R. § 42.104(b)(3))..................................17
`
`1.
`
`Terms Already Construed by the PTAB...................................18
`
`- i -
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`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
`2.
`
`Claim Construction Standard ...................................................19
`
`VII. Unpatentability under Specific Grounds (37 C.F.R.
`42.104(b)(4)) and Evidence Relied Upon in Support of
`Challenge (37 C.F.R. 42.104(b)(5)) .............................................................19
`
`A.
`
`B.
`
`Challenge #1: Claims 10, 15, 16, 18, 25, 36 and 38 are
`anticipated under 35 U.S.C. § 102(e) based on Woodhill ...................19
`
`Challenge #2: Claims 10, 15, 16, 18, 25, 31, 32, 33, 36,
`38 are obvious under 35 U.S.C. § 103 based on
`Woodhill in view of Langer ...............................................................39
`
`VIII. Conclusion...................................................................................................50
`
`- ii -
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
`I.
`
`Introduction
`
`Pursuant to the provisions of 35 U.S.C. §§ 311–319, Google Inc. and
`
`YouTube, LLC (“Petitioners”) hereby petition the Patent Trial and Appeal
`
`Board to institute inter partes review of claims 10, 15, 16, 18, 25, 31, 32, 33,
`
`36 and 38 of US Patent No. 6,415,280 to Farber et al. (“the ʼ280 Patent,”
`
`GOOG-1001) based on identical grounds as those asserted by petitioners
`
`Rackspace US, Inc. and Rackspace Hosting, Inc. (collectively, “Rackspace”)
`
`against the same claims of the ’280 patent in IPR2014-00059, which was
`
`instituted on April 15, 2014. PersonalWeb Technologies, LLC and Level 3
`
`Communications, LLC have stated, in filings in the United States District
`
`Court for the Eastern District of the Texas, that they each own an undivided
`
`fifty percent (50%) interest in the ’280 Patent.
`
`For the exact same reasons previously considered by the Board, and on
`
`the exact same schedule, Petitioners respectfully seek to join the Rackspace
`
`IPR against the ʼ280 patent. This Petition is filed concurrently with a Motion
`
`for Joinder with that proceeding, IPR2014-00059, in which Petitioners also
`
`respectfully request
`
`that, given the unique circumstances here,
`
`the Board
`
`exercise its discretion under 37 C.F.R. § 42.5(b) and waive the requirement in
`
`§ 42.122(b) that requests to join a proceeding be made no later than one month
`
`after institution.
`
`- 1 -
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
`In this petition, Petitioners assert identical grounds as those set forth in
`
`the Rackspace petition in IPR 2014-00059, and only advance the specific
`
`grounds on which the Board agreed to institute the IPR. Thus, this petition
`
`does not add or alter any arguments that have already been considered by the
`
`Board, does not seek to expand the grounds of invalidity that the Board has
`
`already found to support institution of IPR proceedings, and does not advocate
`
`a claim construction different from those adopted by the Board.
`
`In this
`
`petition, Petitioners also seek to follow the same schedule that the Board has
`
`instituted for IPR2014-00059.
`
`For the Board’s convenience, and because the substance of this petition is
`
`based upon the Rackspace petition, Petitioners note that, except as noted in the
`
`table below, this petition is copied verbatim from the Rackspace petition for
`
`IPR2014-00059 (albeit, necessarily updating the exhibit-reference prefix to
`
`“GOOG” from Rackspace’s prefix “RACK,” although the exhibits themselves are
`
`identical):
`
`This petition differs from the Rackspace petition in the following ways:
`
`Changed Subparts from IPR2014-
`00059
`
`I. Introduction
`
`II.A. Real Parties-in-Interest
`
`Changes
`New section; subsequent sections
`renumbered accordingly.
`Updated to reflect Real Parties in
`Interest Google Inc. and YouTube,
`LLC
`
`- 2 -
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`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
`Changed Subparts from IPR2014-
`00059
`II.B. Petitioners’ Notice of Related
`Matters
`
`II.C. Identification of Lead and Back-Up
`Counsel (37 C.F.R. § 42.8(b)(3)) and
`Service Information
`
`III. Grounds for Standing
`
`VI.C. Claim Construction
`
`(Passim)
`
`Passim
`
`Changes
`Updated to reflect Rackspace IPR
`petitions, proceedings against
`Google Inc. and YouTube, LLC, and
`other related proceedings.
`Updated to reflect Petitioners’
`counsel
`
`Updated to reflect grounds for
`standing of Google Inc. and
`YouTube, LLC
`
`Updated to adopt the constructions
`by the Board in its Decision to
`Institute IPR2014-00059.
`
`Updated to reflect that the Board
`issued a Final Written Decision of
`invalidity of certain claims of this
`patent on May 15, 2014
`
`II. Mandatory Notices by Petitioners (37 C.F.R. § 42.8(a)(1))
`
`A.
`
`Real Parties-in-Interest (37 C.F.R. § 42.8(b)(1))
`
`The real parties in interest are Google Inc. and YouTube, LLC.
`
`B.
`
`Petitioners’ Notice of Related Matters (37 C.F.R. § 42.8(b)(2))
`
`The ʼ280 patent is asserted in related judicial matters PersonalWeb
`
`Techs. LLC v. Google Inc. et al, No. 5-13-cv-01317 (N.D. Cal., filed Mar. 25,
`
`2013) and PersonalWeb Techs. LLC v. Google Inc. et al, No. 6-11-cv-00656
`
`(E.D. Tex., filed Dec. 8, 2011).
`
`- 3 -
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
`As of the filing date of
`
`this petition,
`
`to the best of Petitioners’
`
`knowledge, additional 3rd party judicial matters asserting claims of patent
`
`infringement under the ’280 patent and related patents are: PersonalWeb
`
`Techs. LLC et al v. EMC Corp. et al., No. 5-13 cv-01358 (N.D. Cal., filed Mar.
`
`26, 2013); PersonalWeb Techs. LLC et al v. Facebook Inc., No. 5-13-cv-01356
`
`(N.D. Cal., filed Mar. 26, 2013); PersonalWeb Techs. LLC et al v. NetApp,
`
`Inc., No. 5-13-cv-01359 (N.D. Cal., filed Mar. 26, 2013); PersonalWeb Techs.
`
`LLC et al v. Int’l Bus. Mach. Corp., No. 6-12-cv-00661 (E.D. Tex., filed Sep.
`
`17, 2012); PersonalWeb Techs. LLC et al v. NetApp, Inc., No. 6-12-cv-00657
`
`(E.D. Tex., filed Sep. 17, 2012); PersonalWeb Techs. LLC et al v. Facebook,
`
`Inc., No. 6-12-cv-00662 (E.D. Tex., filed Sep. 17, 2012); PersonalWeb Tech.
`
`LLC et al. v. Rackspace US, Inc. et al., No. 6-12-cv-00659 (E.D. Tex., filed
`
`Sep. 17, 2012); PersonalWeb Techs. LLC et al v. Apple Inc., No. 6-12-
`
`cv- 00660 (E.D. Tex., filed Sep. 17, 2012); PersonalWeb Techs. LLC et al v.
`
`Microsoft Corp., No. 6-12-cv-00663 (E.D. Tex.,
`
`filed Sep. 17, 2012);
`
`PersonalWeb Techs. LLC et al v. Yahoo! Inc., No. 6-12-cv-00658 (E.D. Tex.,
`
`filed Sep. 17, 2012); PersonalWeb Techs. LLC v. Autonomy, Inc. et al., No. 6-
`
`11-cv-00683 (E.D. Tex., filed Dec. 19, 2011); PersonalWeb Techs. LLC v.
`
`NEC Corp. of America, Inc., No. 6-11-cv-00655 (E.D. Tex., filed Dec. 8,
`
`2011); PersonalWeb Techs. LLC v. NetApp, Inc., No. 6-11-cv-00657 (E.D.
`
`- 4 -
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
`Tex., filed Dec. 8, 2011); PersonalWeb Techs. LLC v. Caringo, Inc., No. 6-11-
`
`cv-00659 (E.D. Tex., filed Dec. 8, 2011); PersonalWeb Techs. LLC v. Amazon
`
`Web Svcs. LLC et al, No. 6-11-cv-00658 (E.D. Tex., filed Dec. 8, 2011);
`
`PersonalWeb Techs. LLC v. EMC Corp. et al, No. 6-11-cv-00660 (E.D. Tex.,
`
`filed Dec. 8, 2011); and Akamai Techs, Inc. v. Digital Island, Inc., No. 1-00-
`
`cv-11851 (D. Mass., filed Sep. 13, 2000).
`
`In addition, the following instituted trials and/or 3rd party petitions for
`
`inter partes review are related:
`
` IPR2013-00082 (decided1 for related patent 5,978,791, May 15, 2014)
` IPR2013-00083 (decided for 6,415,280, May 15, 2014)
` IPR2013-00084 (decided for related patent 7,945,544, May 15, 2014)
` IPR2013-00085 (decided for related patent 7,945,539, May 15, 2014)
` IPR2013-00086 (decided for related patent 7,949,662, May 15, 2014)
` IPR2013-00087 (decided for related patent 8,001,096, May 15, 2014)
` IPR2013-00319 (petition for related patent 5,978,791, May 30, 2013)
` IPR2013-00596 (instituted for related patent 7,802,310, Mar. 26, 2014)
` IPR2014-00057 (instituted for related patent 5,979,791, Apr. 15, 2014)
` IPR2014-00058 (instituted for related patent 8,099,420, Apr. 15, 2014)
`
`1 Petitioners note that the decisions in IPR2013-00082–87 were Final Written
`
`Decisions issued under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73, and that Patent
`
`Owners are precluded from taking any action inconsistent with those adverse
`
`judgments. 37 C.F.R. § 42.73(d)(3).
`
`- 5 -
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
` IPR2014-00059 (instituted for 6,415,280, Apr. 15, 2014)
` IPR2014-00062 (instituted for related patent 7,802,310, Apr. 15, 2014)
` IPR2014-00066 (instituted for related patent 6,928,442, Apr. 15, 2014)
` IPR2014-00702 (petition for related patent 5,978,791, Apr. 28, 2014)
`Finally, Petitioners themselves are concurrently seeking to join the inter
`
`partes reviews of related U.S. Patents 5,978,791 (IPR2014-00057), 7,802,310
`
`(IPR2014-00062), and 6,928,442 (IPR2014-00066) petitioned by Rackspace,
`
`and request that, if possible, these petitions be assigned to the same panel for
`
`administrative efficiency.
`
`C.
`
`Identification of Lead and Back-Up Counsel (37 C.F.R. §
`42.8(b)(3)) and Service Information (37 C.F.R. § 42.8(b)(4))
`
`Lead Counsel
`Jennifer Sklenar
`ARNOLD & PORTER LLP
`777 South Figueroa Street, 44th Floor
`Los Angeles, CA 90017
`
`Phone: (213) 243-4027
`Fax: (213) 243-4199
`Jennifer.Sklenar@aporter.com
`USPTO Reg. No. 40,205
`
`Back-up Counsel
`Alissa Faris
`ARNOLD & PORTER LLP
`1801 Page Mill Road, Suite 110
`Palo Alto, CA 94304
`
`Phone: (650) 798-2926
`Fax: (650) 798-2999
`Alissa.Faris@aporter.com
`USPTO Reg. No. 60,791
`
`Emily Hostage
`ARNOLD & PORTER LLP
`Three Embarcadero Center, 10th Floor
`San Francisco, CA 94111
`
`Phone: (415) 471-3353
`Fax: (415) 471-3400
`Emily.Hostage@aporter.com
`USPTO Reg. No. 69,717
`
`- 6 -
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
`III. Grounds for Standing (37 C.F.R. § 42.104(a))
`
`Petitioners certify pursuant to 37 C.F.R. § 42.104(a) that the ʼ280 Patent
`
`is available for inter partes review and that Petitioners are not barred or
`
`estopped from requesting inter partes review challenging the patent claims on
`
`the grounds identified herein due to Petitioners’ motion for joinder of the
`
`instant petition with the pending inter partes review proceeding.
`
`IV. Statement of Precise Relief Requested (37 C.F.R. § 42.22(a))
`
`Petitioners ask that the Board review the accompanying prior art and
`
`analysis, institute a trial for inter partes review of claims 10, 15, 16, 18, 25, 31,
`
`32, 33, 36 and 38 of the ʼ280 Patent, and cancel those claims as unpatentable.
`
`V. Overview of Challenges
`
`A.
`
`Identification of Challenges (37 C.F.R. § 42.104(b))
`
`The primary reference is U.S. Patent No. 5,649,196 to Woodhill, et al.
`
`(hereinafter “Woodhill”)
`
`issued on July 15, 1997 as a continuation of
`
`08/085,596 filed July 1, 1993 (GOOG-1003.) Thus, Woodhill is prior art under
`
`35 U.S.C. § 102(e). The secondary reference is Albert Langer, “Re: dl/describe
`
`(File descriptions),” post to the “alt.sources” newsgroup on August 7, 1991
`
`(“Langer”), GOOG-1004 (hereinafter “Langer”). (GOOG-1004.) As explained
`
`by Dr. Reddy, Langer was available as a printed publication more than one
`
`year before the priority date of the ʼ280 Patent. (Reddy Decl., GOOG-1008.)
`
`Therefore, Langer is prior art to the ʼ280 Patent under 35 U.S.C. § 102(b).
`
`- 7 -
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
`For each challenge, (i) the specific statutory grounds of unpatentability
`
`and relied upon prior art patents or printed publications and (ii) the applicable
`
`claim(s) are identified in the following table.
`
`Challenge
`
`Grounds and Reference(s)
`
`Challenged claim(s)
`
`1
`
`2
`
`§ 102(e), US Patent 5,649,196
`(Woodhill)
`
`10, 15, 16, 18, 25, 36,
`and 38
`
`§ 103(a), Woodhill in view of Langer
`publication
`
`10, 15, 16, 18, 25, 31,
`32, 33, 36 and 38
`
`Challenged claims are to be construed as indicated in Section VI.C
`
`below. For each challenge, the unpatentability of the applicable claims is
`
`established with reference to particular claim elements and with reference to
`
`specific disclosure found in the relied upon prior art. Supporting evidence is
`
`referenced by exhibit number and with particular reference to specific portions
`
`of the evidence that support the challenges. In particular, a Declaration of Dr.
`
`Melvin Ray Mercer, Professor Emeritus of Electrical and Computer
`
`Engineering at Texas A&M University (Mercer Decl., GOOG-1007)
`
`is
`
`included to establish a record for factual positions and matters of opinion
`
`testimony relied upon herein. In addition, a Declaration of Dr. Narasimha
`
`Reddy, Professor of Electrical and Computer Engineering at Texas A&M
`
`University is included to establish facts related to the Langer printed
`
`- 8 -
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
`publication (Reddy Decl., GOOG-1008). Petitioner’s Exhibit List is appended
`
`hereto.
`
`B.
`
`Summary of Central Argument that Challenged Claims are
`Unpatentable
`
`The ʼ280 Patent relates generally to methods of distributing files across a
`
`data processing network and retrieving copies of the files using unique
`
`identifiers based, at least in part, on a function of the contents of a data file.
`
`The ʼ280 Patent contends that “all of the prior data processing systems” used
`
`names or identifiers that were “always defined relative to a specific context,”
`
`such as the file or directory containing the file. (GOOG-1001, Spec. 1:64-
`
`2:10.) As explained below, this characterization of the prior art is inaccurate.
`
`Both the Woodhill and Langer references disclose data processing systems that
`
`utilize data identifiers that are based, at least in part, on a function of the
`
`contents of the file. Both Woodhill and Langer use the content based identifiers
`
`to obtain copies of the data files stored on other servers on the network. Langer
`
`also discloses use of an MD5 hash function to determine a data identifier for
`
`the contents of the file. Thus, either Woodhill alone or Woodhill in view of
`
`Langer demonstrate that
`
`the subject matter of the challenged claims was
`
`already in the prior art before the priority date of the ʼ280 Patent.
`
`- 9 -
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
`C.
`
`Threshold Showing of Reasonable Likelihood That Petitioners
`Would Prevail With Respect To At Least One Challenged
`Claim (35 U.S.C. § 314(a)) Has Been Met; Institution of Inter
`Partes Review on Multiple Grounds is Proper (37 C.F.R.
`§ 42.108)
`
`Information presented in this Petition, including unpatentability grounds
`
`detailed in Section VI establishes a reasonable likelihood that Petitioners 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. (GOOG-1007)
`
`demonstrates multiple grounds on which the challenged claims are anticipated
`
`by, or obvious in view of,
`
`the relied upon prior art patent and printed
`
`publication.
`
`Petitioners are aware that this honorable Patent Trial and Appeal Board
`
`(PTAB) has already decided that a subset of the claims challenged herein,
`
`claims 36 and 38, are invalid (IPR2013-00083, decided May 15, 2014) based
`
`on Woodhill. Petitioners respectfully request
`
`that
`
`this honorable PTAB
`
`institute trial for all challenged claims based on all grounds of unpatentability
`
`asserted herein and, in particular, for newly challenged claims 10, 15, 16, 18,
`
`25, 31, 32, and 33 based on the following anticipation and obviousness
`
`challenges that are not being considered in the already instituted trial.
`
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`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
`VI. The Challenged ʼ280 Patent
`
`A. Overview of the Patent
`
`The ʼ280 Patent is directed to data storage systems that use “data unique
`
`identifiers” to identify data files. Each “data identifier” is based on the contents
`
`of the data in a data file, such that
`
`identical data items have the same
`
`substantially unique identifier. (GOOG-1001, Title, Abstract, 1:13-18.)
`
`According to the ʼ280 Patent, prior art systems identified data items
`
`based on their location or address within the data processing system. (GOOG-
`
`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 GOOG-1001, 1:35-42 and Mercer Decl., GOOG-1007,
`
`¶ 28.) The ʼ280 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.” (GOOG-1001, 1:65–2:3, 2:12-13.)
`
`According to the ʼ280 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,
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`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
`or conversely, two different data names may refer to the same data item.
`
`(GOOG-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. (GOOG-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. (GOOG-1001, 2:47-58.)
`
`The ʼ280 Patent purports to address these shortcomings. (GOOG-1001,
`
`3:6-20.) It suggests that “it is therefore desirable to have a mechanism . . . to
`
`determine a common and substantially unique identifier for a data item, using
`
`only the data in the data item and not relying on any sort of context.” (GOOG-
`
`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.” (GOOG-1001, 3:12-15.)
`
`To do so, the ʼ280 Patent provides substantially unique identifiers that
`
`“depend[] on all of the data in the data item ....” (GOOG-1001, 1:13-18; see
`
`also 3:29-32.) The ʼ280 Patent uses the terms “True Name” and “data
`
`identifier” to refer to the substantially unique identifier for a particular data
`
`item (GOOG-1001, 6:6-10) and explains that a True Name is computed using a
`
`- 12 -
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`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
`message
`
`digest
`
`function
`
`(See GOOG-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.
`
`(GOOG-1001, 12:55-13:17.)
`
`The ʼ280 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.”
`
`(GOOG-1001,
`
`34:9-11,
`
`34:30-32.) The
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`actual
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`data
`
`item
`
`corresponding to these location-independent identifiers may reside anywhere,
`
`e.g., locally, remotely, offline. (GOOG-1001, 34:11-19.) “[T]he identity of a
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`data item is independent of its name, origin,
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`location, address, or other
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`information not derivable directly from the data, and depends only on the data
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`itself.” (GOOG-1001, 3:33-35.)
`
`In the preferred embodiments, the substantially unique identifiers are
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`used to “augment” standard file management functions of an existing operating
`
`system. (See GOOG-1001, 6:11-19.) For example, a local directory extensions
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`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
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`(LDE) table2 is indexed by a pathname or contextual name of a file and also
`
`includes True Names for most files. (See GOOG-1001, 8:19-26.) A True File
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`registry (TFR) lists True Names, and stores “location, dependency, and
`
`migration information about True Files.” (See GOOG-1001, 8:27-28, 33-35.)
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`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 GOOG-1001, 8: 30-32,
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`23:61–62.) This look-up provides, for each True Name, a list of the locations,
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`such as file servers, where the corresponding file is stored. (See GOOG-1001,
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`34:21–31.)
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`When a data item is to be “assimilated” into the data processing system,
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`its substantially unique identifier (True Name) is calculated and compared to
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`the True File Registry to see if the True Name already exists in the Registry.
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`(See GOOG-1001, 14:24-45.) If the True Name already exists, this means that
`
`the data item already exists in the system and the to-be-assimilated data item
`
`(i.e.,
`
`the scratch file) need not be stored. (See GOOG-1001, 14:41-45.)
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`Conversely, if the True Name does not exist in the Registry, then a new entry
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`2 The patent describes an LDE table as a data structure which provides information
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`about files and directories in the system and includes information in addition to
`
`that provided by the native file system. (See GOOG-1001, 8:19-26.)
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`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
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`is created in the Registry which is then set to the just-calculated True Name
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`value, and the data items can be stored. (See GOOG-1001, 14:46-52.)
`
`The ʼ280 Patent describes methods that operate on a network of
`
`processors 102 interconnected by a bus 106 such as illustrates in FIG. 1(a),
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`reproduced below described as a data processing system 100. (GOOG-1001,
`
`4:59-64.)
`
`As shown below in reproduced Fig. 1(b), in addition to the storage
`
`devices 104, each processor or computer 102 includes a CPU 108 and a local
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`storage device 112 along with memory 110. (GOOG-1001, Spec. 4:59-68.) The
`
`ʼ280 Patent describes that each computer 102 may be in “a client/server,
`
`client/client, or a server/server relationship.” (GOOG-1001, Spec. 5:4-10.) “In
`
`a peer-to-peer relationship, sometime a particular processor 102 acts as a client
`
`processor, whereas at other
`
`times the same processor acts as a server
`
`processor.” (GOOG-1001, 5:13-18.) Depending on a particular function of the
`
`system, a client processor may make requests of other components to serve
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`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
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`data to that processor, while at other times the same processor may serve data
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`it has stored on its local storage device. (GOOG-1001, 5:8-17, Mercer Decl.
`
`GOOG-1007, ¶ 35.)
`
`Dr. Mercer confirms the foregoing overview of the challenged ‘791
`
`patent. (See Mercer Decl., GOOG-1007, ¶¶ 26-35.)
`
`B.
`
`Prosecution History
`
`The ʼ280 patent is based on application 09/283,160 filed April 4, 1999 as
`
`a division of 08/425,150 that was originally filed on April 11, 1995. During
`
`prosecution of the ʼ280 Patent, the original examiner rejected the claims as not
`
`being supported by the disclosure and being obvious over the cited prior art. In
`
`response, the applicants for the ʼ280 Patent stated with respect to the disclosure
`
`of a network of servers within the ʼ280 Patent, that Figs 1(a) and (b),
`
`reproduced above “show a number of client and server processors, as claimed.”
`
`(GOOG-1002, OA Response, Aug. 24, 2001, p. 205.) In response to the prior
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`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
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`art rejections, the applicant amended the claims “to recite that the identifier is
`
`‘determined using a given function of the data, wherein said data used by the
`
`given function to determine the data identifier comprises the contents of the
`
`particular data file’. . . Therefore, as presently claimed, in this invention the
`
`identifier determined for a file using a given function, i.e. its True Name, is
`
`based on the data in the file. Once determined, in operation, the True Name of
`
`a file may well be combined with other information such as the actual
`
`(contextual) name of the file.” (GOOG-1002, OA Response, Aug. 24, 2001, p.
`
`211 (emphasis in original).)
`
`C.
`
`Claim Construction (37 C.F.R. § 42.104(b)(3))
`
`This petition presents claim analysis in a manner that is consistent with
`
`the broadest reasonable interpretation in light of the specification. See 37
`
`C.F.R. § 42.100(b). Claim terms are given their ordinary and accustomed
`
`meaning as would be understood by one of ordinary skill in the art, unless the
`
`inventor, as a lexicographer, has set forth a special meaning for a term.
`
`Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir.
`
`1998); York Prods., Inc. v. Central Tractor Farm & Family Ctr., 99 F.3d 1568,
`
`1572 (Fed. Cir. 1996).
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`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
`
`1.
`
`Terms Already Construed by the PTAB
`
`“data file”
`
`The PTAB has already adopted its prior construction for the claim term
`
`“data file,” appearing in claims 10, 18, 25, 31, 36 and 38, as “a named data
`
`item, such as a simple file that includes a single, fixed sequence of data bytes
`
`or a compound file that includes multiple, fixed sequences of data bytes.”
`
`“data identifier”
`
`The PTAB has already adopted its prior construction for “data
`
`identifier,” appearing in claims 10, 18 and 25, as a “substantially unique
`
`identifier for a particular element.”
`
`“location”
`
`The PTAB has already adopted its prior construction for “location,”
`
`appearing in claim 18, as “any of a particular processor in the system, a
`
`memory of a particular processor, a storage device, a removable storage
`
`medium (such as a floppy disk or compact disk), or any other physical location
`
`in the system.”
`
`“a network of servers”
`
`The PTAB has already construed the claim term “a network of servers,”
`
`appearing in independent claims 10, 18, 25 and 31, as “a network of processors
`
`acting as servers, at least part of the time.” (See Mercer Decl., GOOG-1007, ¶
`
`47.)
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`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
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`“a network comprising a plurality of processors, some of the processors
`being servers and some of the processors being clients”
`
`The PTAB has already determined that the preamble of claims 36 and 38
`
`should be entitled to patentable weight, construed this claim term appearing in
`
`the preamble of claims 36 and 38 as “a network comprising a plurality of
`
`processors, some of the processors acting as servers and some of the processors
`
`acting as clients, at least part of the time.” (See Mercer Decl., GOOG-1007, ¶
`
`48)
`
`2.
`
`Claim Construction Standard
`
`For avoidance of doubt, the foregoing proposed claim construction is
`
`presented by Petitioners
`
`in accordance with the broadest
`
`reasonable
`
`interpretation standard applied for purposes of inter partes review. Petitioners
`
`reserve the right to advocate a different claim interpretation in district court or
`
`any other forum in accordance with the claim construction standards applied in
`
`such forum.
`
`VII. Unpatentability under Specific Grounds (37 C.F.R. 42.104(b)(4)) and
`Evidence Relied Upon in Support of Challenge (37 C.F.R.
`42.104(b)(5))
`
`A.
`
`Challenge #1: Claims 10, 15, 16, 18, 25, 36 and 38 are
`anticipated under 35 U.S.C. § 102(e) based on Woodhill
`
`Claims 10, 15, 16, 18, 25, 36 and 38 are anticipated by Woodhill under
`
`35 U.S.C. § 102(e). Woodhill discloses a distributed storage system that uses
`
`“Binary Object Identifiers” to identify and access files, and to manage file
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`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
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`backups, amongst other functions. (GOOG-1003; see also Mercer Decl.,
`
`GOOG-1007, ¶ 57.) As Woodhill explains, a “Binary Object Identifier 74 [of
`
`Fig. 3] . . . is a unique identifier for each binary object to be backed up.”
`
`(GOOG-1003, 4:45-47.) Woodhill’s Binary Object Identifiers include three
`
`fields–a CRC value, a LRC value, and a hash value–each calculated from the
`
`contents of
`
`the binary object.
`
`(GOOG-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.” (GOOG-1003, 8:58-62.) Woodhill used these
`
`identifiers to identify binary objects that have changed since the most recent
`
`backup, so that “only those binary objects associated with the file that have
`
`changed must be backed up.” (GOOG-1003, 9:7-14.) “[D]uplicate binary
`
`objects, even if resident on different types of computers in a heterogeneous
`
`network, can be recognized from their identical Binary Object Identifiers 74.”
`
`(GOOG-1003, 8:62-65.)
`
`Woodhill discloses that the method of distributed management of storage
`
`space and data using content based identifiers is implemented on a networked
`
`computer system having a plurality of local computers, work stations, local
`
`area networks, a wide area network and at least one remote backup file server.
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`Petition for Inter Partes Review of U.S. Patent No. 6,415,280
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`(Mercer Decl., GOOG-1007, ¶ 58.) “[T]he Distributed Storage Manager
`
`program 24 stores a compressed copy of every binary object it would need to
`
`restore every disk drive 19 on every local computer 20 somewhere on the local
`
`area network 16 other than on the local computer 20 on which it normally
`
`resides. At
`
`the same time,
`
`the Distributed Storage Manager program 24
`
`transmits every new or changed binary object to the remote backup file server
`
`12.” (GOOG-1003, 9:30-38.)
`
`The local computers can act as clients when making requests for files
`
`and can act as servers when responding to requests for providing files saved on
`
`their local storage devices. (Mercer Decl., GOOG-1007, ¶ 59.) Woodhill
`
`recognizes that “[s]ince most restores of files on a local area network 16
`
`consist of requests to restore the most recent backup version of a file, the local
`
`copies of binary objects serve to handle very fast restores for most restore
`
`requests that occur on the local area network 16. If the local backup copy of a
`
`file does not exist or a prior version of a file is required, it must be restored
`
`from