throbber
Paper 8
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: July 30, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`FAR STONE TECH., INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00599
`Patent 7,120,835 B2
`____________
`
`Before HOWARD B. BLANKENSHIP, JONI Y. CHANG, and
`BETH Z. SHAW, Administrative Patent Judges.
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`I. BACKGROUND
`Petitioner Apple, Inc. requests an inter partes review of claims 1–7
`
`and 9–13 of U.S. Patent No. 7,120,835 B2 (Ex. 1001, “the ’835 patent”)
`under 35 U.S.C. §§ 311–319. Paper 2 (“Petition” or “Pet.”). Patent Owner
`
`
`
`

`
`
`
`IPR2015-00599
`Patent 7,120,835 B2
`
`
`Far Stone Tech, Inc. filed a Preliminary Response. Paper 6 (“Prelim.
`Resp.”). We have jurisdiction under 35 U.S.C. § 314. Section 314(a)
`provides that an inter partes review may not be instituted unless “the
`information presented in the petition . . . shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.”
`For the reasons that follow, we institute an inter partes review of
`
`claims 1–7 and 9–13 of the ’835 patent.
`
`
`A. Related Proceedings
`According to Petitioner, the ’835 patent is involved in the lawsuit
`Farstone Technology, Inc. v. Apple, Inc., No. 8:13-cv-01537-SVW-JEM
`(C.D. Cal.) Pet. 3.1
`
`B. The ’835 Patent
`The ’835 patent relates to a backup/recovery module that establishes
`at least one recovery unit to hold backup data. Ex. 1001, Abstract.
`
`
`
`
`1 According to Patent Owner, the assignee “legally changed its name in June
`2007 to ‘Farstone Technology, Inc.’” Paper 5, 3 n.1. Patent Owner should
`update the USPTO assignment records to reflect the name change.
`2
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`

`
`IPR2015-00599
`Patent 7,120,835 B2
`
`
`
`Figure 1 of the ’835 patent is reproduced below.
`
`
`
`
`
`Figure 1 is a schematic block diagram of computer equipment
`according to a preferred embodiment of the invention. Ex. 1001, col. 3,
`ll. 55–57. The equipment includes processing system 10 and displaying
`system 20. Processing system 10 includes processing unit 12, storage
`device 14, I/O device 16, and a hardware resource such as hard disk 18. Id.
`at col. 4, l. 59 – col. 5, l. 3. Processing system 10 has a backup/recovery
`module that can create at least one recovery point to hold backup data. Id. at
`col. 5, ll. 11–16.
`
`
`3
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`IPR2015-00599
`Patent 7,120,835 B2
`
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`
`
`C. Illustrative Claim
`Of the challenged claims, claims 1 and 9 are independent. Claim 1,
`reproduced below, is illustrative.
`1. A computer equipment having a prompt access
`function, said computer equipment comprising:
`a processing system having at least one hardware
`resource with a backup/recovery module, said backup/recovery
`module creating at least one recovery unit to hold backup data;
`and
`
`a displaying system for displaying backed up data of said
`processing system, said backed up data of said processing
`system corresponding to each of said at least one recovery unit,
`said displaying system having a selecting means, said selecting
`means selecting a status corresponding to said processing
`system at the time of creation of each of said at least one
`recovery unit, said displaying system displaying said selected
`status;
`wherein said at least one recovery unit respectively
`reflects a corresponding status of said at least one hardware
`resource at the time of creation of each of said at least one
`recovery unit, said at least one hardware resource can be
`restored to status at the time of creation of each of said at least
`one recovery unit.
`
`D. Asserted Prior Art
`
`Dunphy et al. (“Dunphy”)
`(Ex. 1010)
`
`Gold et al. (“Gold”)
`(Ex. 1009)
`
`
`US 6,785,786 B1 Aug. 31, 20042
`
`US 5,638,509
`
`June 10, 1997
`
`
`
`
`2 Although Petitioner submits (Pet. 15), correctly, that Gold is a reference
`under 35 U.S.C. § 102(e), the front page of Gold reflects that the PCT
`application upon which Gold is based was published March 11, 1999, more
`than one year prior to the U.S. filing of the ’835 patent application.
`4
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`

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`IPR2015-00599
`Patent 7,120,835 B2
`
`
`Symantec GhostTM Implementation Guide (“Ghost Manual”), Document
`version 7.5, Symantec Corporation, © 1998–2001 (Ex. 1011)
`
`
`
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability under
`35 U.S.C. § 103(a) against claims 1–7 and 9–13 (Pet. 14):
`
`
`Reference
`Claims
`1–7 and 9–13
`1–7 and 9–13
`1–7 and 9–13
`
`
`
`Gold
`Dunphy
`Ghost Manual
`
`
`II. ANALYSIS
`
`A. Claim Interpretation
`In an inter partes review, the Board construes claim terms in an
`unexpired patent using their broadest reasonable construction in light
`of the specification of the patent in which they appear. 37 C.F.R.
`§ 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766
`(Aug. 14, 2012). The claim language should be read in light of the
`specification, as it would be interpreted by one of ordinary skill in the art. In
`re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The
`Office must apply the broadest reasonable meaning to the claim language,
`taking into account any definitions presented in the specification. Id. (citing
`In re Bass, 314 F.3d 575, 577 (Fed. Cir. 2002)). There is a “heavy
`presumption” that a claim term carries its ordinary and customary meaning.
`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
`The “ordinary and customary meaning” is that which the term would have to
`
`5
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`IPR2015-00599
`Patent 7,120,835 B2
`
`
`a person of ordinary skill in the art in question. In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007).
`When the word “means” appears in a claim element in combination
`with a function, there is a presumption that it is a means-plus-function
`element to which § 112, sixth paragraph, applies.3 Signtech USA, Ltd. v.
`Vutek, Inc., 174 F.3d 1352, 1356 (Fed. Cir. 1999).
`
`
`
`
`
`1. “Selecting Means”
`Claim 1 of the ’835 patent recites, as reproduced above, “selecting
`means, said selecting means selecting a status corresponding to said
`processing system at the time of creation of each of said at least one
`recovery unit.” Petitioner contends that the “selecting means” is a means-
`plus-function limitation that is to be interpreted in accordance with
`35 U.S.C. § 112, sixth paragraph. Petitioner submits, however, that there is
`no corresponding structure in the patent relating to the “selecting means,”
`rendering the claim indefinite. Pet. 8–13. For purposes of the Petition,
`Petitioner applies the prior art with the assumption that the “selecting
`means” is a user interface and input devices. Id. at 14.
`According to Patent Owner, the Specification describes the “selecting
`means” as a user interface and input devices, such as a keyboard and mouse.
`Prelim. Resp. 15 n.3. Patent Owner does not explain how dependent claim 4
`might be consistent with Patent Owner’s construction for the “selecting
`
`
`3 Section 4(c) of the Leahy-Smith America Invents Act (“AIA”) re-
`designated 35 U.S.C. § 112, paragraph six, as 35 U.S.C. § 112(f). Pub. L.
`No. 112-29, 125 Stat. 284, 296 (2011). Because the ’835 patent has a filing
`date before September 16, 2012 (effective date of § 4(c)), we will refer to
`the pre-AIA version of § 112.
`
`6
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`IPR2015-00599
`Patent 7,120,835 B2
`
`
`means” of base claim 1, with the dependent claim adding that the displaying
`system has a “user-operating interface.” Petitioner asserts that the
`Specification describes an unspecified “selecting means” that is separate
`from a “user-operating interface” that can be a keyboard, a mouse, or the
`like. Pet. 12. Patent Owner submits in the alternative, however, that we
`should adopt the District Court’s construction of the “selecting means” in the
`related lawsuit. Prelim. Resp. 16.
`Subsequent to filing of the instant Petition, the District Court entered a
`claim construction order that Patent Owner has filed as Exhibit 2001. Based
`in part on declaration evidence that is not of record here, the Court
`determined that “selecting” is a common computer function and requires no
`additional structure to be disclosed. Ex. 2002, 15. Following the guidance
`of In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303,
`1316 (Fed. Cir. 2011), the District Court held that the function of simply
`selecting or choosing a recovery unit on a displaying system does not need
`to be implemented by a special purpose computer, such that disclosure of an
`algorithm is unnecessary. Ex. 2002, 14–15. “Therefore, ‘selecting means’
`is not indefinite for lack of corresponding structure.” Id. at 15.
`For purposes of this Decision, we adopt the District Court’s
`construction of “selecting means” as referring to a general-purpose computer
`operation that does not require description of corresponding structure (such
`as an algorithm) in the Specification.
`
`
`
`2. “Status”
`In this proceeding, Patent Owner submits that the term “status” as
`used in claim 1 should be construed as it was by the District Court as
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`IPR2015-00599
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`meaning “‘data in the processing system at that time, including file backup
`data and hardware configuration.’” Prelim. Resp. 24–25 (quoting Ex. 2001,
`16). Although the Specification suggests that such a construction may be
`co-extensive in scope with the preferred embodiment (e.g., Ex. 1001, col. 2,
`ll. 42–48), under the required broadest reasonable interpretation of the claim
`terms we do not find that the Specification has re-defined “status” as
`different from its ordinary and customary meaning. Consistent with the
`position taken by Patent Owner in the related District Court lawsuit, we
`interpret the term “status” as, simply, referring to a “state or condition.” See
`Ex. 2001, 17 (“Furthermore, the Court does not object to Farstone’s use of
`‘state or condition’ as a substitute for ‘status’ in its proposed
`constructions.”).
`
`B. Asserted Grounds of Unpatentability
`
`1. Gold
`Gold describes a computer backup and recovery apparatus. Ex. 1009,
`Abstract.
`
`8
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`IPR2015-00599
`Patent 7,120,835 B2
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`Figure 3 of Gold is reproduced below.
`
`
`
`
`
`Figure 3 illustrates the main functional modules of the backup agent.
`Ex. 1009, col. 4, ll. 32–35. Dynamic scheduler 310 dynamically initiates a
`backup cycle from client 210a. Id. at col. 4, ll. 51–54. Active file manager
`module 320 monitors which files are to be opened for backing up. Id. at
`col. 5, ll. 27–29. File differencing module (FDM) 330 selects the files to be
`backed up by determining which files have been changed or added since the
`last backup. FDM 330 reads the current directory tree of client file system
`322 and checks each file’s modified time/date against the entries in
`Directory Tree File (DTF) 332 generated from the last backup. Id. at col. 6,
`ll. 15–22. FDM 330 sends the list of selected new files to backup apparatus
`240 to check for redundant copies already held on the backup server. Id. at
`col. 6, ll. 33–57.
`
`9
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`IPR2015-00599
`Patent 7,120,835 B2
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`Block-differencing module (BDM) 340 determines which blocks in
`each file have changed since the last backup. Id. at col. 6, ll. 65–66. Data
`transfer module (DTM) 350 performs the actual transfer of the backup data
`to backup apparatus 240. Id. at col. 7, l. 66 – col. 8, l. 1. All the differences
`in all the changed files since the last backup are stored in backup directory
`files (BDFs). All backup data is indexed such that it can be reconstructed
`from the various BDFs on backup apparatus 240. Id. at col. 8, ll. 17–21.
`Every time a backup is performed, a new DTF is generated and sent to
`backup apparatus 240. Id. at col. 8, ll. 36–38.
`Restore module 350 performs restore operations using the DTFs to
`generate a directory tree of all files that can be restored. Id. at col. 8, ll. 43–
`45. A directory tree of all files that can be restored is generated and viewed
`in a graphical user interface. When a user selects a specific file from a
`specific backup, the DTFs are used to identify which portions of which BDF
`contain the file data. This data is then copied from backup apparatus 240
`and written to the specified location in client storage. Id. at col. 8, ll. 59–66.
`
`
`
`2. Section 103(a) — Gold
`
`Petitioner applies the teachings of Gold to the requirements of
`claims 1–7 and 9–13, relying on the Declaration of Dr. Andrew Hospodor
`(Ex. 1002). Pet. 15–26.
`Patent Owner submits general allegations in the Preliminary Response
`that we find are not supported by the record. For example, Patent Owner
`alleges that the Petition fails to discuss “the level of ordinary skill in the art,
`the differences between the prior art and the claimed invention, or how the
`skill in the art bridges those differences.” Prelim. Resp. 18. The Petition,
`
`10
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`IPR2015-00599
`Patent 7,120,835 B2
`
`
`however, identifies the particular disclosures in Gold that Petitioner submits
`as showing the particular limitations of the claims. Pet. 19–26 (claim chart).
`Further, the Petition sets forth what Petitioner submits as not being
`identically disclosed in Gold (Pet. 17–19), such as storing an operating
`system on a hard drive, and relies both on its proffered expert and the prior
`art to demonstrate what was known to one of ordinary skill in the art at the
`time of invention. See, e.g., Pet. 17 (“For example, Dunphy [Ex. 1010]
`discusses a ‘hard drive that contains the operating system’ at 7:65–67.”).
`In any event, Patent Owner argues that Gold does not teach or suggest
`a displaying system for displaying backed up data, as set forth in
`independent claims 1 and 9. Prelim. Resp. 33–34. Patent Owner
`acknowledges that Gold describes a display of “a ‘directory tree of all files
`which can be restored.’” Id. at 34 (quoting Ex. 1009, col. 8, l. 65 – col. 9,
`l. 3). “It does not describe displaying the contents of any backed up files as
`part of the recovery process.” Prelim. Resp. 34 (emphasis added).
`The claims, however, do not specify that the contents of backup files
`are displayed. Patent Owner apparently relies on material in the
`Specification as limiting the scope of the claims, as revealed in arguments
`regarding claim 9. Prelim. Resp. 35–36. In particular, Patent Owner (id.)
`points to column 4, lines 6 through 13 of the ’835 patent, which provides:
`“The present invention describes a new computer equipment with a [virtual]
`recovery utility, which can accomplish file access to the contents of the
`recovery point to make sure of the previous status to be restored after
`rebooting the computer system” (emphasis added). The capability of access
`to the contents of a recovery point, however, does not require that the
`contents of backed up files are displayed without further action of a user. To
`
`11
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`IPR2015-00599
`Patent 7,120,835 B2
`
`
`the contrary, the Specification states that the “files contained in the recovery
`points can be easily opened, viewed, copied, or the like.” Ex. 1001, col. 4,
`ll. 26–28 (emphasis added). In particular:
`Each recovery point is demonstrated in a form of file
`folder to the users to facilitate operations for the users. The
`users can conveniently extract directory or files inside the
`recovery points. The users can rename or remove any of them,
`view contents thereof, or perform recovery operation,
`simultaneously and immediately.
`
`Id. at col. 5, ll. 54–59 (emphases added). We, therefore, are persuaded that
`the claimed “displaying backed up data” does not distinguish over Gold’s
`description of a directory tree of all files that can be restored. Ex. 1009,
`col. 8, l. 65 – col. 9, l. 3.
`Patent Owner argues, further, that there is no mention in Gold’s
`detailed disclosure of backing up any hardware configuration information.
`Prelim. Resp. 31 n.7. We note, however, that on this record Patent Owner’s
`argument appears to be commensurate only with dependent claim 3.
`Independent claim 1 recites a “recovery unit to hold backup data.”
`Dependent claim 3 adds that the recovery unit “includes configuration
`corresponding to said at least one hardware resource.” Ex. 1001, col. 9,
`ll. 19–24. We, therefore, will consider Patent Owner’s argument with
`respect to backing up hardware configuration information in view of the
`requirements of claim 3.
`Patent Owner acknowledges that Petitioner relies, in part, on text in
`column 6 of Gold for the teaching of backing up hardware configuration
`information. Prelim. Resp. 31 n.7. In particular, Gold discloses:
`As well as files, the FDM 330 identifies any
`modifications to the system information used to rebuild the
`12
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`IPR2015-00599
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`
`
`system in disaster recovery. This covers areas such as NetWare
`NDS partitions, disk partition information, file system types
`and details (e.g. compressed), bootstrap partitions (e.g. MBR,
`NetWare DOS partition).
`
`Ex. 1009, col. 6, ll. 58– 63 (emphases added). Patent Owner does not argue
`that system information such as disk partition information is not “hardware
`configuration information,” but contends that there is no teaching or
`suggestion of backing up such information in backup apparatus 240. Prelim.
`Resp. 31 n.7.
`On this record, we disagree with Patent Owner’s assessment. The
`system information is not needed for restoration of selected files as
`described in column 8, lines 59 through 66 of Gold. But the system
`information is needed for the disaster recovery mode, in which backup
`apparatus 240 can be used to restore a complete data environment in the
`event of complete failure of the client system. Ex. 1009, col. 13, l. 59 –
`col. 14, l. 5. According to Gold, “[t]he DTFs on the backup apparatus 240
`are used to determine the state of the system to be recovered.” Id. at col. 14,
`ll. 6–7. The restored state, to be operational, includes restoration of the
`hardware configuration information. See Prelim. Resp. 4 (“One of the
`objects of the claimed invention is to enable a user to return the hardware
`resources in a processing system to a state that is operational, including
`restoring the hardware configuration information that makes that so, and in
`addition includes backup file data of interest to the user.”) (emphasis added).
`We, therefore, are persuaded that one skilled in the art would understand that
`
`13
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`IPR2015-00599
`Patent 7,120,835 B2
`
`
`Gold teaches backing up data that “includes configuration corresponding to
`said at least one hardware resource” within the meaning of claim 3.4
`We have reviewed the proposed ground of obviousness over Gold
`against independent claims 1 and 9 and their dependent claims. We are
`persuaded that Petitioner has met the threshold of § 314(a). See Pet. 15– 26.
`On the present record, we find that Petitioner has established a reasonable
`likelihood that it would prevail in its challenge of claims 1–7 and 9–13 for
`obviousness over Gold.
`
`
`
`3. Section 103(a) — Dunphy or Ghost Manual
`In view of the grounds on which we institute inter partes review of
`claims 1–7 and 9–13, we exercise our discretion and decline to institute
`review based on the additional asserted grounds that these claims are
`unpatentable for obviousness over Dunphy or Ghost Manual. See 35 U.S.C.
`314(a); 37 C.F.R. § 42.108(a).
`
`
`
`4 Accordingly, we find unpersuasive Patent Owner’s allegation that inter
`partes review should be denied because “the Petition relies on prior art that
`is substantially the same in pertinent respects as the prior art that was cited
`by the Examiner as a basis for rejection” (Prelim. Resp. 26). See id. at 31–
`32 (“Just like the Shen reference (Ex. 2003) cited by the Examiner during
`prosecution of the [’]835 patent, Gold is limited to backing up information
`about files and has no teaching of backing up the configuration information
`of hardware resources.”).
`
`
`14
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`IPR2015-00599
`Patent 7,120,835 B2
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`
`
`III. CONCLUSION
`The Petition demonstrates a reasonable likelihood of prevailing on the
`grounds of obviousness over Gold as to claims 1–7 and 9–13.
`The Board has not made a final determination on the patentability of
`any challenged claim.
`
`
`
`
`IV. ORDER
`In consideration of the foregoing, it is
`ORDERED that an inter partes review is instituted as to claims 1–7
`and 9–13 of the ’835 patent on the obviousness ground based on Gold;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ’835 patent is instituted with trial commencing on the
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is given of the institution of the trial; and
`FURTHER ORDERED that the trial is limited to the ground identified
`immediately above, and no other ground is authorized for the ’835 patent
`claims.
`
`15
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`

`
`
`
`
`
`16
`
`
`IPR2015-00599
`Patent 7,120,835 B2
`
`For Petitioner:
`David L. Fehrman
`dfehrman@mofo.com
`
`Alex S. Yap
`ayap@mofo.com
`
`
`
`For Patent Owner:
`
`Tonia A. Sayour
`tsayour@cooperdunham.com
`
`Ivan S. Kavrukov
`ikavrukov@cooperdunham.com

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