Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`PAYPAL, INC.
`UPWORK GLOBAL INC.
`SHOPIFY, INC.
`SHOPIFY (USA), INC.
`STRAVA INC.
`VALASSIS COMMUNICATIONS, INC.
`RETAILMENOT, INC.
`DOLLAR SHAVE CLUB, INC.
`Petitioners
`
`v.
`
`PERSONALWEB TECHNOLOGIES LLC
`LEVEL 3 COMMUNICATIONS, LLC
`Patent Owners
`
`Case IPR2019-01111
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,802,310
`
`
`
`
`
`
`
`
`

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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`TABLE OF CONTENTS
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`
`
`
`I.
`
`Introduction ........................................................................................................ 1
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`II. Mandatory Notices ............................................................................................. 1
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`A. 37 C.F.R. § 42.8(b)(1): Real Party-in-Interest ............................................... 1
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`B. 37 C.F.R. § 42.8(b)(2): Related Matters ........................................................ 2
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`C. Counsel and Service Information .................................................................. 3
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`III. Payment of Fees Under 37 C.F.R. § 42.103 ...................................................... 4
`
`IV. Certification of Grounds for Standing ............................................................... 4
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`V. Overview of Challenge and Relief Requested ................................................... 4
`
`A. 37 C.F.R. § 42.104(b)(1): Claims for Which IPR Is Requested .................... 4
`
`B. 37 C.F.R. § 42.104(b)(2): Grounds for Challenge ......................................... 4
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`C. 37 C.F.R. § 42.104(b)(3): Claim Construction .............................................. 5
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`D. 37 C.F.R. § 42.104(b)(4): How the Claims Are Unpatentable ...................... 5
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`E. 37 C.F.R. § 42.104(b)(5): Evidence Supporting Challenge .......................... 5
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`VI. Overview Of The ’310 patent ............................................................................ 5
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`VII. Level of Ordinary Skill in the Art ....................................................................10
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`VIII. Prosecution And Post-Grant Review History ..................................................10
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`A. Prosecution ...................................................................................................10
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`B. Post-Grant Review .......................................................................................11
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`IX. Institution Should Be Granted .........................................................................12
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`X. Claim Construction ..........................................................................................14
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`A. “Data Item” ..................................................................................................15
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`B.
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`C.
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`“Content-Dependent Name” ........................................................................16
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`“Authorized” And “Unauthorized” ..............................................................17
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`XI. Overview of the Primary Prior Art References ...............................................19
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`A. Overview of Francisco .................................................................................19
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`B. Overview of Grube ......................................................................................20
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`XII. Specific Grounds for Petition...........................................................................21
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`A. Ground 1: Claims 20 and 69 Are Obvious in View of Francisco................21
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`i
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`1.
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`2.
`
`Independent Claim 20 ..............................................................................21
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`Independent Claim 69 ..............................................................................31
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`B. Ground 2: Claims 20 and 69 Are Obvious in View of Francisco and Grube
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`40
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`1.
`
`2.
`
`Independent Claim 20 ..............................................................................40
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`Independent Claim 69 ..............................................................................43
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`XIII. Conclusion .......................................................................................................49
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`
`Amazon.com, Inc. v. Personal Web Technologies, LLC,
`Case No. 5:18-cv-00767, Dkt. 1 (N.D. Cal. Feb. 5, 2018.) .................................. 3
`
`Apple Inc. v. PersonalWeb Technologies, LLC,
`IPR2013-00596, 2015 WL 1777147 (Mar. 25, 2015 P.T.A.B) .......................... 16
`
`Apple v. PersonalWeb Techs.,
`No. IPR2013-00596, 2014 WL 1477691 (P.T.A.B. March 26,
`2014) ................................................................................................................... 15
`
`Gen. Plastic Indus. Co., Ltd. v. Kaisha,
`No. IPR2016-01357, 2017 WL 3917706 (P.T.A.B. Sept. 6, 2017) ................... 13
`
`Martek Biosciences Corp. v. Nutrinova, Inc.,
`579 F.3d 1363 (Fed. Cir. 2009) .......................................................................... 16
`
`Pers. Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ................................................................ 11, 16, 17
`
`PersonalWeb Technologies, LLC v. Apple, Inc.
`No. 2018-1599, 917 F.3d 1376 (Fed. Cir. 2019) .......................................... 12, 14
`
`PersonalWeb Technologies, LLC v. Dollar Shave Club,
`Case No. 5-18-cv-05373 (N.D. Cal.) .................................................................... 2
`
`PersonalWeb Technologies, LLC v. PayPal, Inc.,
`Case No. 5-18-cv-00177 (N.D. Cal.) .................................................................... 2
`
`PersonalWeb Technologies, LLC v. RetailMeNot,. Inc.,
`Case No. 5-18-cv-005966 (N.D. Cal.) .................................................................. 2
`
`PersonalWeb Technologies, LLC v. Shopify, Inc. et al,
`Case No. 5-18-cv-004626 (N.D. Cal.) .................................................................. 2
`
`PersonalWeb Technologies, LLC v. Strava, Inc.,
`Case No. 5-18-cv-004627 (N.D. Cal.) .................................................................. 2
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`PersonalWeb Technologies, LLC v. Upwork Global, Inc.,
`Case No. 5-18-cv-005624 (N.D. Cal.) .................................................................. 2
`
`PersonalWeb Technologies, LLC v. Valassis Communications, Inc.,
`Case No. 5-18-cv-005206 (N.D. Cal.) .................................................................. 2
`
`PersonalWeb Techs., LLC v. Int’l Bus. Machines Corp.,
`No. 6:12-CV-659-JRG, 2016 WL 922880 (E.D. Tex. Mar. 11,
`2016) ....................................................................................................... 15, 17, 18
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .......................................................... 14
`
`Valve Corp. v. Electronic Scripting Prods., Inc.,
`No. IPR2019-00062, Paper 11 (P.T.A.B. Apr. 2, 2019) .................................... 13
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`PayPal, Inc., Upwork Global Inc., Shopify, Inc., Shopify (USA), Inc., Strava,
`
`Inc., Valassis Communications, Inc., RetailMeNot, Inc. and Dollar Shave Club, Inc.
`
`(“Petitioners”) request inter partes review of Claims 20 and 69 (“the Challenged
`
`Claims”) of U.S. Patent No. 7,802,310 (“the ’310 Patent”). (Ex. 1001.)
`
`I. INTRODUCTION
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`The ’310 patent is directed to systems and methods of identifying data items
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`based on a function of the contents of the data item, and, using the content-based
`
`identifier, determining whether access to the data item is authorized. As explained
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`below, however, the methods and systems claimed in the ’310 patent were obvious
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`combinations of the prior art. (Declaration of Dr. Andrew Hospodor, Ex. 1002 ¶¶47-
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`95.) The Challenged Claims should therefore be cancelled.
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`II. MANDATORY NOTICES
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`A. 37 C.F.R. § 42.8(b)(1): Real Party-in-Interest
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`The real parties-in-interest are: PayPal, Inc., a wholly-owned subsidiary of
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`PayPal Holdings, Inc., and PayPal Holdings, Inc.; Upwork Global, Inc., a wholly-
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`owned subsidiary of Upwork Inc., and Upwork Inc.; Shopify, Inc. and Shopify
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`(USA), Inc.; Strava, Inc.; Valassis Communications, Inc. and RetailMeNot, Inc.,
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`which are owned by Harland Clark Holdings Corp., and Harland Clark Holdings
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`Corp.; Dollar Shave Club, Inc., which is owned by Conopco, Inc., which is a wholly-
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`owned subsidiary of Unilever United States, Inc., which is indirectly a wholly-
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`owned subsidiary of Unilever Plc and Unilever N.V., and Conopco, Inc., Unilever
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`1
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`United States, Inc., Unilever Plc, and Unilever N.V.
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`B. 37 C.F.R. § 42.8(b)(2): Related Matters
`
`In 2018, PersonalWeb Technologies, LLC (“PersonalWeb”) asserted the ’310
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`patent against Petitioners in: PersonalWeb Technologies, LLC v. PayPal, Inc., Case
`
`No. 5-18-cv-00177 (N.D. Cal.); PersonalWeb Technologies, LLC v. Upwork Global,
`
`Inc., Case No. 5-18-cv-005624 (N.D. Cal.); PersonalWeb Technologies, LLC v.
`
`Shopify, Inc. et al, Case No. 5-18-cv-004626 (N.D. Cal.); PersonalWeb
`
`Technologies, LLC v. Strava, Inc., Case No. 5-18-cv-004627 (N.D. Cal.);
`
`PersonalWeb Technologies, LLC v. Valassis Communications, Inc., Case No. 5-18-
`
`cv-005206 (N.D. Cal.); PersonalWeb Technologies, LLC v. RetailMeNot,. Inc., Case
`
`No. 5-18-cv-005966 (N.D. Cal.); and PersonalWeb Technologies, LLC v. Dollar
`
`Shave Club, Case No. 5-18-cv-05373 (N.D. Cal.).
`
`Prior to that, going back to 2011, PersonalWeb asserted the ’310 patent in
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`infringement suits against numerous defendants other than the Petitioners. During
`
`those prior lawsuits, as discussed below in §VIII.B, certain defendants, who are not
`
`petitioners here, filed for post-grant review of the ’310 patent. Review was initiated
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`and terminated before the Petitioners were sued.
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`Petitioners, however, were not sued until 2018, when PersonalWeb began a
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`new wave of lawsuits. All told, PersonalWeb filed over 145 complaints, in batches,
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`between January and November 2018. PersonalWeb served the Petitioners with
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`2
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`infringement complaints between August and October 2018, as part of this recent
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`wave. Exhibit 1005 lists the lawsuits involving the ’310 patent that are pending as
`
`of this petition.
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`In February 2018, soon after the recent spate of lawsuits began, Amazon.com,
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`Inc. and Amazon Web Services, Inc. filed for declaratory judgment against
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`PersonalWeb seeking a declaration of non-infringement of the ’310 patent.
`
`Amazon.com, Inc. v. Personal Web Technologies, LLC, Case No. 5:18-cv-00767,
`
`Dkt. 1 (N.D. Cal. Feb. 5, 2018.)
`
`The above cases may affect, or be affected by, decisions in this proceeding.
`
`C. Counsel and Service Information
`
`Lead Counsel
`Brent P. Ray (Reg. No. 54,390)
`brent.ray@kirkland.com
`
`Postal and Hand-Delivery Address:
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`Telephone: (312) 862-2000
`Fax: (312) 862-2200
`
`Backup Counsel
`Kourtney N. Baltzer (Reg. No. 65,294)
`kourtney.baltzer@kirkland.com
`
`Nikhil R. Krishnan (Reg. No. 68,879)
`nikhil.krishnan@kirkland.com
`
`Postal and Hand-Delivery Address:
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`Telephone: (312) 862-2000
`Fax: (312) 862-2200
`
`
`Petitioners concurrently submit a Power of Attorney, 37 C.F.R. § 42.10(b),
`
`and consent to electronic service directed to the following email addresses:
`
`PayPal_PWeb_PTAB@kirkland.com.
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`3
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`III. PAYMENT OF FEES UNDER 37 C.F.R. § 42.103
`
`The undersigned authorizes the PTO to charge the fee set forth in 37 C.F.R. §
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`42.15(a) for this Petition to Deposit Account No. 506092. Review of two (2) claims
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`is requested, and thus no excess claim fees are required. The undersigned further
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`authorizes payment for any additional fees that may be due in connection with this
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`Petition to be charged to the above-referenced Deposit Account.
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`IV. CERTIFICATION OF GROUNDS FOR STANDING
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`Petitioners certify that they have standing to request, and are not barred or
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`estopped from requesting, an IPR of the ’310 patent. Petitioners certify: (1)
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`Petitioners are not the owner of the ’310 patent; (2) Petitioners (or any real party-in-
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`interest) have not filed a civil action challenging the validity of any claim of the ’310
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`patent; (3) Petitioners file this Petition within one year of the date they were served
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`with a complaint asserting infringement of the ’310 patent; (4) the estoppel
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`provisions of 35 U.S.C. § 315(e)(1) do not prohibit this IPR; and (5) this Petition is
`
`filed after the ’310 patent was granted.
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`V. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
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`A. 37 C.F.R. § 42.104(b)(1): Claims for Which IPR Is Requested
`
`Petitioners challenge claims 20 and 69 of the ’310 patent. (Ex. 1001.)
`
`B. 37 C.F.R. § 42.104(b)(2): Grounds for Challenge
`
`The Challenged Claims are unpatentable based on the following:
`
`Francisco. U.S. Patent No. 4,845,715 to Michael H. Francisco, et al. (Ex.
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`1003); issued July 4, 1989; (2) prior art under at least 35 U.S.C. § 102(b).
`
`Grube. U.S. Patent No. 5,483,658 to Grube, et al. (Ex. 1004); filed February
`
`26, 1993; (2) prior art under at least 35 U.S.C. § 102(e).
`
`Petitioners request IPR on the following grounds:
`
`Ground
`
`Claims
`
`Proposed Statutory Rejection
`
`20 and 69
`
`Obvious under § 103 in view of Francisco
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`20 and 69
`
`Obvious under § 103 in view of Francisco and
`Grube
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`1
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`2
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`
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`C. 37 C.F.R. § 42.104(b)(3): Claim Construction
`
`See Section IX.
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`D. 37 C.F.R. § 42.104(b)(4): How the Claims Are Unpatentable
`
`A detailed explanation of how the Challenged Claims are unpatentable is
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`provided below in Section XI.B.
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`E. 37 C.F.R. § 42.104(b)(5): Evidence Supporting Challenge
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`A list of exhibits is provided at the end of the petition. The relevance of this
`
`evidence and the specific portions supporting the challenge is provided below in
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`Section XI.B. Petitioners also submit a declaration of Dr. Andy Hospodor (Ex.
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`1002) in support of this Petition under 37 C.F.R. § 1.68.
`
`VI. OVERVIEW OF THE ’310 PATENT
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`5
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`The ’310 patent issued from U.S. Patent Appl. No. 11/980,687, which was
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`filed October 31, 2007, and ultimately claims priority to U.S. Patent Appl. No.
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`08/425,160 (now abandoned), filed on April 11, 1995.
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`The ’310 patent is titled “Controlling Access To Data In A Data Processing
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`System.” (Ex. 1001 at Title.) It generally relates to a data processing system that
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`identifies data files using names based, at least in part, on the contents of the data in
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`a data file. (Id. at Abstract, 1:44-48; Hospodor Decl. ¶27.) These names are used,
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`for example, in controlling access to files on the system, such that copies of a
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`requested file are only provided to authorized or licensed users. (Ex. 1001 at 11:33-
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`45; Hospodor Decl. ¶27.) The content-based names are also used to determine if an
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`unauthorized copy of a data file is present on a computer. (Ex. 1001 at 31:3-33;
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`Hospodor Decl. ¶32.)
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`The ’310 patent alleges that “[i]n all of the prior data processing systems[,]
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`the names or identifiers provided to identify data items … are always defined relative
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`to a specific context,” and “there is no direct relationship between the data names
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`and the data item.” (Ex. 1001 at 2:26–31, 2:39-40.) For example, the ’310 patent
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`alleges that prior art systems identified data using the data’s “location or address”
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`within the data processing system, such as through a “pathname,” which is “a path
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`through the [file] directories to a particular data item (file or directory.)” (Id. 1:56-
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`2:5.)
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`According to the ’310 patent, this prior art practice of identifying a data item
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`by its context had certain shortcomings. For example, the prior art technique
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`allegedly failed to distinguish between two different data items where they had the
`
`same name, or alternatively failed to recognize where two copies of the same data
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`item with different names were the same data item. (Id. at 2:41-43; Hospodor Decl.
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`¶29.) Likewise, a technique that relies solely on context “cannot, in general, verify
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`that the data delivered” to a requesting user or computer “is the correct data (given
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`only the name)” without further processing. (Ex. 1001 at 2:47-51.)
`
`The ’310 patent purports to address these shortcomings, stating 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
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`on any sort of context.” (Id. at 3:31-35.) To do so, the ’310 patent provides
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`“substantially unique identifiers which depend on all of the data in the data item[].”
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`(Id. at 1:44-48.) The specification generally refers to these unique identifiers as
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`“True Names.” (Id. at 6:20-22.)
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`The ’310 patent states that a True Name is computed using a “message digest
`
`function[],” or what might be better known as a hash function, “which reduces a data
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`block B of arbitrary length to a relatively small, fixed size identifier… such that the
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`True Name of the data block is virtually guaranteed to represent the data block B
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`and only data block B.” (Id. at 12:21-44; Hospodor Decl. ¶30.) The ’420 cites well-
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`known prior art hash functions, MD4, MD5, and SHA, as examples of algorithms
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`that can be used to calculate a True Name. (Ex. 1001 at 12:45-49; Hospodor Decl.
`
`¶30.)
`
`The patent suggests that “data items can be accessed by reference to their
`
`identities (True Names) independent of their present location.” (Ex. 1001 at 32:55-
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`57.) The True Name “is independent of its name, origin, location, address, or other
`
`information not derivable directly from the data, and depends only on the data itself.”
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`(Id. at 3:55-58.)
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`In the preferred embodiments, the True Names “is intended to work with
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`existing operating system by augmenting some of the operating system’s file
`
`management” functions. (Id. at 6:25-28.) For example, the ’310 patent describes a
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`“license table (LT) … identifying files, which may only be used by licensed users,
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`in a manner independent of their name or location” (e.g., using a True Name instead)
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`alongside an identification of “the users licensed to use them.” (Id. at 8:60-62;
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`Hospodor Decl. ¶32.) The ’310 patent further discloses that “license validation” is
`
`performed using the LT. (Ex. 1001 at 31:13-33.) Under this mechanism,
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`“occasional audits” of local systems are performed wherein the “contents of each
`
`user processor” is compared against the license table to “confirm that the user
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`processor does not have a copy of” any files the user is not authorized to have, and
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`if it does have a file it is unauthorized to have, “record the user processor and True
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`Name [of that file] in a license violation table.” (Id.)
`
`Challenged Claim 20 incorporates some of these concepts, including use of a
`
`content-based identifier (e.g., a True Name) and authorization:
`
`20. A computer-implemented method operable in a system
`
`which includes a plurality of computers, the method
`
`comprising:
`
`controlling distribution of content from a first computer to
`
`at least one other computer, in response to a request
`
`obtained by a first device in the system from a second
`
`device in the system, the first device comprising hardware
`
`including at least one processor, the request including at
`
`least a content-dependent name of a particular data item,
`
`the content-dependent name being based at least in part on
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`a function of at least some of the data comprising the
`
`particular data item, wherein the function comprises a
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`message digest function or a hash function, and wherein
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`two identical data items will have the same content-
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`dependent name,
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`based at least in part on said content-dependent name of
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`said particular data item, the first device (A) permitting the
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`content to be provided to or accessed by the at least one
`
`other computer if it is not determined that the content is
`
`unauthorized or unlicensed, otherwise, (B) if it is
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`determined that the content is unauthorized or unlicensed,
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`not permitting the content to be provided to or accessed by
`
`the at least one other computer.
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`(Ex. 1001 at claim 20.)
`
`VII. LEVEL OF ORDINARY SKILL IN THE ART
`
`A person of ordinary skill in the art (“POSITA”) at the time of the alleged
`
`invention with the capability of understanding the scientific and engineering
`
`principles applicable to the ’310 patent would have at least a bachelor’s degree in
`
`Electrical Engineering, Computer Engineering or Computer Science or equivalent
`
`areas of study and one year of experience in the design and implementation of data
`
`storage systems; or an advanced degree, such as a masters or Ph.D. in one or more
`
`of the areas of study listed above. (Hospodor Decl. ¶37.)
`
`VIII. PROSECUTION AND POST-GRANT REVIEW HISTORY
`
`A. Prosecution
`
`Neither Francisco nor Grube was considered by the Examiner during
`
`prosecution. The Examiner issued rejections finding that the pending claims were
`
`obvious in view of U.S. Patent No. 5,537,585 (“Blickenstaff”) in combination with
`
`U.S. Patent No. 5,163,147 (“Orita”) and/or Patent No. 5,202,982 (“Gramlich”).
`
`(Hospodor Decl. ¶33; Ex. 1007 at 3, 15-16.) After the applicants amended the claims,
`
`the Examiner issued a Notice of Allowance noting that the primary reference used
`
`to earlier reject the claims, Blickenstaff, failed to disclose selectively providing
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`10
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`access based on an authorization determination. (Ex. 1009.) The Examiner further
`
`concluded that the prior art considered failed to disclose a request about a data item
`
`using a content-based identifier. (Hospodor Decl. ¶34.)
`
`B. Post-Grant Review
`
`Since issuance, the ’310 patent and its family have been subject to several
`
`post-grant review proceedings filed by third parties, as summarized here. As
`
`discussed below in §IX, the instant petition cannot be considered a follow-on
`
`petition to the prior unrelated proceedings filed by third parties. Specifically, the
`
`instant petition is not redundant of these prior unrelated petitions because of (i) the
`
`different claims challenged, (ii) the different prior art relied upon, (iii) the different
`
`grounds challenged and (iv) the different arguments made.
`
`Claims 24, 32, 70, 81, 82, and 86 of the ’310 patent, none of which are
`
`challenged here, were previously challenged in an IPR requested by third-party
`
`Apple, Inc. IPR No. 2013-00596 (“the Apple IPR”). In March 2015, the Board
`
`issued a final written decision concluding that claims 24, 32, 70, 81, 82, and 86 were
`
`obvious in view of the combination of U.S. Patent No. 5,649,196 (“Woodhill”) and
`
`U.S. Patent No. 7,359,881 (“Stefik”), but the Federal Circuit remanded for further
`
`consideration after concluding that the decision lacked sufficient explanation as to
`
`how the limitations were disclosed in the prior art. Pers. Web Techs., LLC v. Apple,
`
`Inc., 848 F.3d 987, 993-994 (Fed. Cir. 2017). In February 2018, on remand, the
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`11
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`Board again issued a final written decision concluding that the same claims were
`
`obvious based on the same grounds, but the Federal Circuit recently reversed that
`
`decision. PersonalWeb Technologies, LLC v. Apple, Inc. No. 2018-1599, 917 F.3d
`
`1376, 1381-82 (Fed. Cir. 2019). Specifically, the Federal Circuit concluded that
`
`Woodhill failed to disclose the limitation of “causing the content-dependent name
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`of the particular data item to be compared to a plurality of values.”
`
`IX.
`
`INSTITUTION SHOULD BE GRANTED
`
`
`
`The facts here demonstrate that this petition is not an improper second bite at
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`the apple. The Board should therefore institute the instant petition.
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`First, the prior art presented here, Francisco and Grube, was not considered
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`during either the prosecution or post-grant review of the ’310 patent. Moreover, the
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`obvious combination of Francisco and Grube is substantively different from the
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`invalidity theory raised by the Examiner during prosecution. (Hospodor Decl. ¶34.)
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`As discussed above, the Examiner’s primary reference, Blickenstaff, failed to
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`disclose selectively denying access based on authorization, and the prior art
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`considered failed to disclose making a request for a data item using its content-
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`dependent identifier. (Supra §VIII.A.) In contrast, as discussed in the claim-by-
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`claim analysis below, Francisco discloses receiving a request for a software program
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`that includes a content-based identifier, and is specifically directed to determining
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`authorization and selectively providing access based on that determination. Further,
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`as discussed below, it would have been obvious in view of Grube to modify
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`Francisco’s authorization and selective access mechanisms to operate over a
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`network.
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`Second, the instant petition is not properly characterized as a “follow-on”
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`petition of the prior post-grant proceedings. Rather, the Petitioners are properly
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`exercising their right to challenge the claims within the one year period since the
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`claims were first asserted against them. The Apple IPR did not involve any of the
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`Petitioners or the real parties in interest, and the filing, institution, March 2015 final
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`written decision, and February 2018 final written decision in the Apple IPR each
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`occurred before any of the Petitioners were sued. Since the Petitioners were not
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`accused of infringement during the Apple IPR, they had no reason whatsoever to
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`join, much less follow, this prior proceeding. Petitioners neither joined nor made
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`any contributions to the Apple IPR, and exercised no control over any such
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`proceedings. Any concerns of gamesmanship are inapplicable. See Gen. Plastic
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`Indus. Co., Ltd. v. Kaisha, No. IPR2016-01357, 2017 WL 3917706 (P.T.A.B. Sept.
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`6, 2017); Valve Corp. v. Electronic Scripting Prods., Inc., No. IPR2019-00062,
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`Paper 11 (P.T.A.B. Apr. 2, 2019).
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`Finally, the instant petition is non-duplicative of the Apple IPR, and 35 U.S.C.
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`§ 325 is inapplicable because the claims challenged are different and the art relied
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`upon is not identical. First, the prior proceedings challenged claims 24, 32, 70, 81,
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`82, and 86, but did not challenge either of the claims challenged here, claims 20 and
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`69. Second, the instant petition does not present any grounds based upon Woodhill
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`or Stefik, the references in the Apple IPR. Third, both Francisco and Grube are
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`technologically distinct from Woodhill, as they are directed to authorization and
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`authentication of software programs (infra XI), in contrast with Woodhill, which
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`relates to a system for backing up and restoring files over a network (see
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`PersonalWeb Technologies, No. 2018-1599, 917 F.3d at 1379)). Given the
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`significant differences between the instant petition and prior proceedings, the Board
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`is justified in expending its resources to consider the instant petitions, and there is
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`no known reason the Board cannot issue final determinations within one year of
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`institution.
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`X. CLAIM CONSTRUCTION
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`In accordance with current IPR rules, Petitioners construe the Challenged
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`Claims under the Phillips standard. 83 FR 51340; Phillips v. AWH Corp., 415 F.3d
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`1303 (Fed. Cir. 2005) (en banc). This standard would apply, in any event, because
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`the ’310 patent expired in 2015. Several claim terms in the ’310 patent and related
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`patents sharing the same specification have been previously construed under the
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`Phillips standard.
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`Petitioners propose that the following two terms should be construed: (i) “data
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`item” and (ii) “content-dependent name.” These terms were previously construed in
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`district court and/or Federal Circuit proceedings. As set forth in detail below,
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`Petitioners agree with (i) the district court’s construction of “data item,” (ii) the
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`Board’s construction of the terms “content-dependent name” and “digital identifier,”
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`later affirmed by the Federal Circuit. Petitioners do not agree with the district court’s
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`construction of the terms “content-dependent name.” Petitioners further discuss the
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`terms “authorized” and “unauthorized” which were construed previously, but which
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`do not necessarily require construction for purposes of this petition.
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`A. “Data Item”
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`Petitioners propose that the term “data item,” which appears in all Challenged
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`Claims, be construed as a “sequence of bits.” This same construction was applied
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`in PersonalWeb Techs., LLC v. Int'l Bus. Machines Corp., No. 6:12-CV-659-JRG,
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`2016 WL 922880 (E.D. Tex. Mar. 11, 2016). 1 Petitioners agree with this
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`construction because the term is expressly defined in the ’310 patent specification:
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`“[i]n general, the terms ‘data’ and ‘data item’ as used herein refer to sequences of
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`bits.” (Ex. 1001 at 2:16-17; see also id. at 2:17-21 (“Thus a data item may be the
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`1
`The Board, applying the broadest reasonable interpretation standard in the
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`Apple IPR, arrived at the same construction for the term “data item.” Apple v.
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`PersonalWeb Techs., No. IPR2013-00596, 2014 WL 1477691, at *5 (P.T.A.B.
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`March 26, 2014).
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`contents of a file, a portion of a file, a page in memory, an object in an object-oriented
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`program, a digital message, a digital scanned image, a part of a video or audio signal,
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`or any other entity which can be represented by a sequence of bits.”) (emphasis
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`added).) “When a patentee explicitly defines a claim term in the patent specification,
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`the patentee's definition controls.” Martek Biosciences Corp. v. Nutrinova, Inc., 579
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`F.3d 1363, 1380 (Fed. Cir. 2009).
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`B. “Content-Dependent Name”
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`Petitioners propose that the term “content-dependent name,” which appears in
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`all Challenged Claims, be construed as “being based at least in part on a given
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`function of at least some of the bits in the particular sequence of bits of the particular
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`data item.”
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`In the Apple IPR of the ’310 patent, the Board applied this same construction.
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`Apple Inc. v. PersonalWeb Technologies, LLC, IPR2013-00596, 2015 WL 1777147,
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`*4 (Mar. 25, 2015 P.T.A.B). Specifically, the Board construed this terms as “being
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`based at least in part on a given function of at least some of the bits in the particular
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`sequence of bits of the particular data item.” Id. Although the Board applied the
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`broadest reasonable interpretation in construing those terms, the Federal Circuit
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`concluded on appeal that the Board’s construction was correct under both the
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`broadest reasonable interpretation and the Philips standard. Pers. Web Techs., LLC
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`v. Apple, Inc., 848 F.3d 987, 990 (Fed. Cir. 2017). In affirming the Board’s
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`Petition for Inter Partes Review of U.S. Patent No. 7,802,310
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`construction, the Federal Circuit rejected PersonalWeb’s proposal that the district
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`court’s construction be adopted, including the requirement that the identifiers be
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`calculated from “all” of the data in the data item. Id. As the Federal Circuit noted,
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`the claims of the ’310 patent recited that the identifiers were based “at least in part”
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`on “a function of the data in the particular data item,” wherein “the data used by the
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`function … comprises at least some of the contents of the particular data item.” Id.
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`at 991 (emphasi