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Google Inc. v. PersonalWeb Technologies, LLC

Docket IPR2014-00978, Patent Trial and Appeal Board (June 18, 2014)
Joni Chang, Kevin Turner, Michael Zecher, presiding
Case TypeInter Partes Review
Patent
7802310
Petitioner Google Inc.
Patent Owner PersonalWeb Technologies, LLC
Petitioner Youtube
...
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Rackspace US, Inc. v. PersonalWeb Technologies, LLC

Docket IPR2014-00062, Patent Trial and Appeal Board (Oct. 11, 2013)
Joni Chang, Kevin Turner, Michael Zecher, presiding
Case TypeInter Partes Review
Patent
7802310
Petitioner Rackspace US, Inc.
Patent Owner PersonalWeb Technologies, LLC
Petitioner Rackspace Hosting
...
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Apple Inc. v. PersonalWeb Technologies, LLC

Docket IPR2013-00596, Patent Trial and Appeal Board (Sept. 18, 2013)
Joni Chang, Kevin Turner, Michael Zecher, presiding
Case TypeInter Partes Review
Patent
7802310
Petitioner Apple Inc.
Patent Owner PersonalWeb Technologies, LLC
Patent Owner Level 3 Communications
...
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46 Court Mandate: CAFC Decision and Mandate June 12, 2019

Document IPR2013-00596, No. 46 Court Mandate - CAFC Decision and Mandate June 12, 2019 (P.T.A.B. Oct. 7, 2019)
Personal- Web filed a preliminary patent owner response, and, in March 2014, the Board instituted review on the ground that the petition raised a reasonable likelihood that the challenged claims were unpatentable under 35 U.S.C. § 103(a) for obviousness over Woodhill in view of Stefik.
The Board continued to point to Apple’s petition, which cited Apple’s expert, and stated: “in order to deter- mine which data needs to be restored by the update re- quest, the remote backupfile server of Woodhill must be able to reference its local files using the informationit re- ceives - namely the Binary Object Identification Record.” Id. (emphasis added) (brackets and internal quotation marks omitted).
PERSONAL WEB TECHNOLOGIES, LLC v. APPLE, INC. conclusion that the “referencing necessarily must be accom- plished” using “the remote backup fileserver,” which “maintains somesortoffile system or other mapping (..e., a database) that allows the Binary Object Identification Record to serve as a lookupfor the requisite file data that is to be restored.” Jd.
Apple further contended that “a skilled artisan would have combined the backup and restore system in Woodhill with the repository in Stefik to add an authoriza- tion layer to prevent unauthorized users from accessing a different user’s back upfiles.” J.A.
Before the pas- sage relied on by Apple and the Board(lines 40 to 46), col- umn 17 states that Woodhill’s system “obtains from the user the identities of the current and previous versions of the file (comprised of binary objects) which needsto be re- stored.” J.A.
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47 Other Not for motions: CAFC Petition for Rehearing June 5, 2019

Document IPR2013-00596, No. 47 Other Not for motions - CAFC Petition for Rehearing June 5, 2019 (P.T.A.B. Oct. 7, 2019)
Before PROST, Chief Judge, NEWMAN, LOURIE, DYK, Moors, O’MALLEY, REYNA, WALLACH, TARANTO, CHEN, HUGHES, and STOLL, Circuit Judges.
Appellee Apple, Inc. filed a petition for rehearing en banc.
A response to the petition was invited by the court and filed by Appellant Personal Web Technologies, LLC.
The petition wasfirst referred as a petition for rehearing to the panel that heard the appeal, and thereafter the peti- tion for rehearing en banc was referred to the circuit judges whoare in regularactive service.
Uponconsideration thereof, It Is ORDERED THAT: The petition for panel rehearingis denied.
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44 Order: Decision on Remand

Document IPR2013-00596, No. 44 Order - Decision on Remand (P.T.A.B. Feb. 7, 2018)
Apple points to pages 41 through 43 of its Petition, citing Dr. Goldberg’s testimony, as demonstrating that a skilled artisan would have combined the backup and restore system in Woodhill with the repository in Stefik to add an authorization layer to prevent unauthorized users from accessing a different user’s back up files.
Apple indicates that preventing unauthorized users from accessing a different user’s back up files is a precise and specific reason why a skilled artisan would have modified Woodhill in view of Stefik to arrive at the claimed subject matter.
Apple also indicates that Dr. Goldberg’s testimony provides support that Stefik’s authorization layer would have been added with a reasonable expectation of success because modifying Woodhill to perform Stefik’s selective access function would have been a mere design choice, with such options as using content-dependent identifiers.
Further, we agree with Apple that preventing unauthorized users from accessing a different user’s back up files is a precise and specific reason why a skilled artisan would have modified Woodhill in view of Stefik to arrive at the claimed subject matter.
Upon reviewing the record developed during trial anew, as well as the briefings by the parties, and in light of the Federal Circuit’s guidance, we maintain that Apple has demonstrated by a preponderance of the evidence that claims 24, 32, 81, 82, and 86 of the ’310 Patent are unpatentable under § 103(a) over the combination of Woodhill and Stefik.
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39 Order: Order Conduct of the Proceeding 37 CFR 425a

Document IPR2013-00596, No. 39 Order - Order Conduct of the Proceeding 37 CFR 425a (P.T.A.B. Jun. 22, 2017)
Respective counsel for Petitioner and Patent Owner, and Judges Turner, Chang, and Zecher were in attendance.
The purpose of the call was to discuss briefing in response to the remand by the U.S. Court of Appeals for the Federal Circuit of this case for further proceedings.
Our reviewing court found that “[t]he Board did not sufficiently explain and support the conclusions that (1) Woodhill and Stefik disclose all of the elements recited in the challenged claims of the '310 patent and (2) a relevant skilled artisan would have been motivated to combine Woodhill and Stefik in the way the '310 patent claims and reasonably expected success.” Id. at 993.
Each brief is limited to fifteen (15) pages and is due on July 12, 2017; on the conference call, the parties agreed to set a common time on that day for near simultaneous submission.
Patent 7,802,310 B2 Accordingly, it is ORDERED that both parties shall file briefs, limited to fifteen (15) pages by July 12, 2017, as outlined above; FURTHER ORDERED that neither party may submit new evidence of any kind, and neither party’s brief may contain or cite to new evidence outside of the record of this proceeding; and FURTHER ORDERED that Patent Owner will file a copy of the court reporter’s transcript of the conference call, separately as an exhibit, once it is available.
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43 Other: PATENT OWNERS BRIEF ON REMAND

Document IPR2013-00596, No. 43 Other - PATENT OWNERS BRIEF ON REMAND (P.T.A.B. Jul. 12, 2017)
For at least the reasons explained herein and in PO’s Response dated June 16, 2014 and Preliminary Response dated December 26, 2013, it is respectfully submitted that Apple did not make out a proper case of obviousness at least because Apple: (1) failed to meet its burden of establishing that the prior art discloses all elements of the challenged claims, and (2) failed to meet its burden of establishing that a skilled artisan would have been motivated to combine Woodhill and Stefik in the way the ‘310 patent claims and reasonably expect success.
However, the institution decision does not contend that Woodhill discloses the feature at issue here -- comparing a binary object identifier to a plurality of values for determining whether access is unauthorized -- and instead relies on Stefik for this claimed subject matter.
The Petition, on page 31, cites Woodhill at col. 17:50-55 and states that at the “granule level ... the Distributed Storage Manager program compares the ‘contents identifier’ of a granule against corresponding contents identifiers in order to determine whether to restore a granule.” (Pet.
The cited portion of Woodhill actually reads as follows: “the Distributed Storage Manager program 24, for each binary object, compares the ‘contents identifier’ of the next ‘granule’ in the work area of remote backup file server 12 against the corresponding ‘contents identifier’ of the next ‘granule’.
Apple argued on appeal that “it would have been obvious to combine the backup and restore system disclosed in Woodhill with the repository of Stefik to add an authorization layer to prevent unauthorized users from accessing a different user’s back up files.” See also Ex. 1007, ¶ 84.
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