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. 7,802,310
`
`Case IPR: To be Assigned
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,802,310
`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. 7,802,310
`
`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)) ..........................................................................................4
`
`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. 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.......................................................................................8
`
`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)..............................................................14
`
`V.
`
`The Challenged ʼ310 Patent ........................................................................ 14
`
`A.
`
`B.
`
`C.
`
`Overview of the Patent......................................................................14
`
`Prosecution History...........................................................................18
`
`Claim Construction (37 C.F.R. § 42.104(b)(3)).................................21
`
`1.
`
`Pertinent Terms Already Construed by the PTAB...................21
`
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`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
`
`2.
`
`Claim Construction Standard ..................................................22
`
`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)) ..............................................................................................23
`
`A.
`
`B.
`
`C.
`
`D.
`
`Ground #1: Claims 1, 2, 5-8, 10, 12, 14 and 16-19 are
`Obvious over Kinetech in view of Brunk — Not Advanced
`By Petitioners ...................................................................................23
`
`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—Not Advanced By Petitioners ..............................................29
`
`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..........................................................................................33
`
`Ground #4: Claim 12 is Obvious over Woodhill and
`Francisco further in view of Langer .................................................54
`
`VII. Conclusion..................................................................................................54
`
`- ii -
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
`
`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 1, 2, 5–8, 10–12, 14, 16-19, 24, 29, 32, 70,
`
`81, 82 and 86 of US Patent No. 7,802,310 to Farber et al. (“the ’310 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 ’310 patent in IPR2014-00062, 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 ’310 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 ʼ310 patent. This Petition is filed concurrently with a Motion for
`
`Joinder with that proceeding,
`
`IPR2014-00062,
`
`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 -
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
`
`In this petition, Petitioners assert identical grounds as those set forth in the
`
`Rackspace petition in IPR 2014-00062, 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 IPR2014-00062.
`
`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
`
`IPR2014-00062 (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 IPR2014-00062
`I.
`Introduction
`
`II.A Real Parties-in-Interest (37 C.F.R. §
`42.8(b)(1))
`
`Changes
`New section; subsequent sections
`renumbered accordingly.
`Updated to reflect Real Parties in
`Interest Google Inc. and YouTube,
`LLC
`
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
`
`II.C. Identification of Lead and Back-Up
`Counsel
`III. Grounds for Standing
`
`Changes
`Changed Subparts from IPR2014-00062
`II.B. Petitioners’ Notice of Related Matters 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 IPR2014-00062.
`Updated to note that Petitioners do
`not raise this ground of invalidity,
`which was not authorized by the
`Board.
`
`V.C Claim Construction
`(Passim)
`
`Overview of Challenges
`IV.
`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)) in
`the following sections:
`VI.A
`Ground #1: Claims 1, 2, 5-8,
`10, 12, 14 and 16-19 are Obvious
`over Kinetech in view of Brunk —
`Not Advanced By Petitioners
`VI.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—Not Advanced By
`Petitioners
`
`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.
`
`- 3 -
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
`
`Petitioners’ Notice of Related Matters (37 C.F.R. § 42.8(b)(2))
`B.
`The ʼ310 patent is part of an extensive family of related continuation and di-
`
`visional applications. The ʼ310 patent and other members of the patent family are
`
`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).
`
`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 ’310 patent and/or 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,
`
`- 4 -
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
`
`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. 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 related patent 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)
`
`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. 7,802,310
`
` 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 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)
`
` IPR2014-00059 (instituted for related patent 6,415,280, Apr. 15, 2014)
`
` IPR2014-00062 (instituted for 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), 6,415,280
`
`(IPR2014-00059), 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
`
`- 6 -
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
`
`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
`
`III. Grounds for Standing (37 C.F.R. § 42.104(a))
`Petitioners certify pursuant to 37 C.F.R. § 42.104(a) that the ’310 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. 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))
`
`Petitioners request inter partes review and cancellation of claims 1, 2, 5–8,
`
`10–12, 14, 16–19, 24, 29, 32, 70, 81, 82 and 86 of the ʼ310 patent as obvious over
`
`prior art references as detailed in specific challenges that follow. For each
`
`challenge, (i) specific statutory grounds and relied upon patents or printed
`
`publications and (ii) the applicable claim(s) are identified in the following table.
`
`- 7 -
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
`
`Challenge Grounds2 and Reference(s)
`§ 103(a), 5,649,196 (Woodhill) in
`3
`view of Francisco
`
`4
`
`§ 103(a), Woodhill and Francisco,
`further in view of Langer
`
`Challenged claim(s)
`1, 2, 5-8, 10-11, 14, 16-19,
`24, 29, 32, 70, 81, 82 and 86
`12
`
`Claims are construed as indicated in Section V.C, below. Unpatentability of 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., GOOG-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
`Unpatentable
`Challenged claims of the ʼ310 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
`
`name/identifier is in connection with a system that determines whether a particular
`
`2 Petitioners do not raise the Ground that claims 1, 2, 5-8, 10, 12, 14 and 16-19
`are obvious over Kinetech in view of Brunk, or the Ground that claims 16-19,
`24, 29, 70, 81, 82 and 86 are obvious over Kinetech and Francisco further in
`view of Brunk, as the Board did not authorize review on such grounds in
`IPR2014-00062.
`
`- 8 -
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
`
`data item is to be made available for access and/or provided in a network. For ref-
`
`erence, the challenged independent claims are:
`
`[1b]
`
`Claim 1
`ID
`[1a] A computer-implemented method in a system which includes a network
`of computers, the method implemented at least in part by hardware
`comprising at least one processor, the method comprising the steps:
`(a) at a first computer, obtaining a content-based name for a particular
`data item from a second computer distinct from the first computer, the
`content-based name being based at least in part on a function of at least
`some of the data which comprise the contents of the particular data item,
`wherein the function comprises a message digest function or a hash
`function, and wherein two identical data items will have the same con-
`tent-based name; and
`(b) by hardware in combination with software, a processor at said first
`computer ascertaining whether or not the content-based name for the
`particular data item corresponds to an entry in a database comprising a
`plurality of identifiers; and
`(c) based at least in part on said ascertaining in (b), determining whether
`or not access to the particular data item is authorized.
`
`[1c]
`
`[1d]
`
`[24b]
`
`Claim 24
`ID
`[24a] A computer-implemented method implemented at least in part by
`hardware comprising one or more processors, the method comprising:
`(a) using a processor, receiving at a first computer from a second
`computer, a request regarding a particular data item, said request
`including at least a content-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
`wherein two identical data items will have the same content-dependent
`name; and
`
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
`
`ID
`[24c]
`
`[24d]
`
`Claim 24
`
`(b) in response to said request:
`(i) causing the content-dependent name of the particular data item to be
`compared to a plurality of values;
`(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 allowing 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 authorized.
`
`[70b]
`
`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 processor, the method comprising the
`steps of:
`in response to a request at a first computer, from another computer, said
`request comprising at least a content-based identifier for a particular data
`item, the content-based identifier for the particular data item being based
`at least in part on a given function of at least some data which comprise
`the contents of the particular data item, wherein the given function
`comprises a message digest or a hash function, and wherein two identical
`data items will have the same content-based identifier:
`(A) hardware in combination with software, determining whether the
`content-based identifier for the particular data item corresponds to an
`entry in a database comprising a plurality of content-based identifiers;
`and
`(B) based at least in part on said determining in step (A), selectively
`permitting the particular data item to be accessed at or by one or more
`computers in the network of computers, said one or more computers
`being distinct from said first computer.
`
`[70c]
`
`[70d]
`
`- 10 -
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
`
`[81b]
`
`Claim 81
`ID
`[81a] A device operable in a network of computers, the device comprising
`hardware including at least one processor and memory, to:
`(a) receive, at said device, from another device in the network, a content-
`based identifier for a particular sequence 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 comprises a message
`digest function or a hash function, and wherein two identical sequences
`of bits will have the same content-based identifier; and to
`(b) compare the content-based identifier of the particular sequence of bits
`to a plurality of values; and to
`(c) selectively allow said particular sequence of bits to be provided to or
`accessed by other devices depending on whether or not said content-
`dependent identifier corresponds to one of the plurality of values.
`
`[81c]
`
`[81d]
`
`[86b]
`
`Claim 86
`ID
`[86a] A device operable in a network of computers, the device comprising
`hardware, including at least one processor and memory, to:
`(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
`(b) selectively allow the particular sequence of bits to be provided to or
`accessed by other devices in the system, based at least in part on whether
`or not the digital identifier for the particular sequence of bits corresponds
`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.
`
`[86c]
`
`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. (GOOG-1009).
`
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
`
`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
`
`ʼ5160 application (to which the ʼ310 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
`
`“depending on all of the data in the data items and only the data in the data items.”
`
`(See Mercer Decl., GOOG-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 GOOG-1002, 344-380, Amendment ac-
`
`companying RCE, pp. 10-28) nearly three years into prosecution of the ʼ687 appli-
`
`cation that eventually granted as the ʼ310 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 ʼ5160 priority application (which issued as US 5,978,791) or in
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`the ʼ3160 application (which claims priority of the ʼ5160 application and issued as
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`US 6,415,280) or in the ʼ723 application (which claims priority of the ʼ3160 and
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`issued as US 6,928,442), or in the ʼ972 application (which claims priority of the
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`ʼ723 and issued as US 7,949,662), or in the ʼ650 application (which claims priority
`
`of the ʼ723 and issued as US 8,099,420) or in the ʼ232 application (which claims
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`priority of the ʼ650 and issued as US 8,082,262). (See Mercer Decl., GOOG-1009,
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`¶¶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
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`filing date earlier than October 31, 2007.
`
`As a result, in a classic Tronzo v. Biomet3 fact pattern, a published foreign
`
`counterpart application invalidates later claimed obvious variations. Here, the for-
`
`eign counterpart of the ʼ310 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 ʼ687 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.
`
`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 ʼ5160. These additional grounds apply patent references
`
`that antedate even the earliest priority date alleged. Specifically, these claims are
`
`obvious over combinations of Woodhill, Francisco and Langer detailed in Sections
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`3 Tronzo v. Biomet, 156 F.3d. 1154, 1158-59, (Fed. Cir. 1998).
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
`
`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. (GOOG-1009, ¶¶91-94, 123-125 and 193).
`
`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 Re-
`view on Multiple Grounds is Proper (37 C.F.R. § 42.108)
`
`Information presented in this Petition, including unpatentability grounds de-
`
`tailed in Sections VI.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. (GOOG-
`
`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.
`
`V.
`
`The Challenged ʼ310 Patent
`A.
`Overview of the Patent
`The ʼ310 patent is directed to data storage systems that use “substantially
`
`unique identifiers” to identify data items. The “substantially unique identifiers”
`
`described in the ʼ310 patent are based on all the data in a data item and identical
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
`
`data items have the same substantially unique identifier. (GOOG-1001, 3:50-58,
`
`31:38-48.)
`
`According to the ʼ310 patent, prior art systems identified data items based on
`
`their location or address within the data processing system. (GOOG-1001, 1:53-
`
`58.) 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, 1:65-2:5.)
`
`The ʼ310 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 pro-
`
`vided 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, 2:26-31, 2:39-40 (emphasis added).)
`
`According to the ʼ310 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. (GOOG-1001, 2:39-43.)
`
`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, 2:44-47.) The ʼ310 patent purports to
`
`address these shortcomings. (GOOG-1001, 3:30-44.) It suggests that “it is there-
`
`- 15 -
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`

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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
`
`fore 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 rely-
`
`ing on any sort of context.” (GOOG-1001, 3:30-35.)
`
`To do so, the ʼ310 patent provides substantially unique identifiers that “de-
`
`pend[] on all of the data in the data item and only on the data in the data item.”
`
`(GOOG-1001, 1:44-48 (emphasis added); see also 3:50-55.) The ʼ310 patent uses
`
`the terms “True Name” and “data identifier” to refer to the substantially unique
`
`identifier for a particular data item (GOOG-1001, 6:20-22) and explains that a True
`
`Name is computed using a message digest function (see GOOG-1001, 12:21-46).
`
`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, 12:21-48.)
`
`The ʼ310 patent calls these context- or location-independent, content-
`
`dependent digital identifiers “True Names”–a phrase apparently coined by the in-
`
`ventors. Specifically, the ʼ310 patent itself indicates that the “True Name of a file
`
`can be used to identify a file by contents, to confirm that a file matches its original
`
`contents, or to compare two files.” (GOOG-1001, 14:50-54). Dr. Mercer confirms
`
`that True Name (and its listed variations) are the only content-dependent (or con-
`
`tent-based) digital identifiers (or names) described in the ʼ310 patent. (Mercer
`
`Decl., GOOG-1009, ¶32.)
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
`
`In the preferred embodiments, the substantially unique identifiers or True
`
`Names are used to “augment” standard file management functions of an existing
`
`operating system. (See GOOG-1001, 6:25-32.) A True File registry (TFR) lists
`
`True Names, and stores “location, dependency, and migration information about
`
`True Files.” (See GOOG-1001, 8:35-37, 8:41-43.) 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, 8:38-40, 23:3-4.) For licensable data items
`
`(e.g., files), a license table records the identity of each system that is authorized to
`
`have a copy of the data item (or file) together with its associated True Name. (See
`
`GOOG-1001, 11:33-44; 31:17-23.)
`
`The ʼ310 patent posits a “Track for Licensing Purposes” mechanism that
`
`purports to ensure that licensed files are not used by unauthorized parties. (See
`
`GOOG-1001, 31:3-32.) Individual records of a license table record a relationship
`
`between a licensable data item (identified by its True Name) and the user that is
`
`licensed to have access to it. (See GOOG-1001, 11:19-31.) The ʼ310 patent de-
`
`scribes a license validation or audit process by which content of a given user pro-
`
`cessor may be remotely determined, using the Locate True File mechanism (see
`
`GOOG-1001, 22:61-23:34), and checked against the license table to confirm that
`
`the user processor does not have a copy of a file whose True Name appears in the
`
`license table but for which the user processor is not authorized. (See GOOG-1001,
`
`- 17 -
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
`
`31:13-32.) If the user processor is found to have a file that it is not authorized to
`
`have, the user processor and True Name are recorded in a license violation table.
`
`(See GOOG-1001, 31:30-32.)
`
`Although the ʼ310 patent indicates that active enforcement of valid licenses
`
`could be provided by refusing to provide access to a file without authorization (see
`
`GOOG-1001, 31:9-12), Dr. Mercer was unable to find any specific description of a
`
`mechanism to do so (Mercer Decl., GOOG-1009, ¶35). In any case, Dr. Mercer
`
`confirms that the license table is the only disclosed association between a content-
`
`dependent (content-based) digital identifier (or name) and authorization infor-
`
`mation in the ʼ310 patent. (Mercer Decl., GOOG-1009, ¶35.)
`
`Prosecution History
`B.
`The ʼ310 patent issued on application 11/980,687, filed Oct. 31,