i UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Unified Patents Inc., Petitioner v. PersonalWeb Technologies & Level 3 Communications Patent Owner IPR2014- _____ Patent 5,978,791 ____________ PETITION FOR INTER PARTES REVIEW Mail Stop PATENT BOARD, PTAB Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450
Pursuant to the provisions of 35 U.S.C. §§ 311-319, Unified Patents, Inc., (“Unified” or “Petitioner”) hereby petitions the Patent Trial and Appeal Board to institute inter partes review of claims 1-4, 29-33, 35 and 41 of US Patent No. 5,978,791 to Faber et al. (“the ‘791 Patent,” Ex. 1001).
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Mail Stop PATENT BOARD, PTAB Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450
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TABLE OF CONTENTS
I. MANDATORY NOTICES ............................................................................. 1
A. Real Party-in-Interest ......................................................................... 1
B. Petitioner Notice of Related Matters (37 C.F.R. § 42.8(b)(2)) ........ 3
C. Identification of Lead and Back-Up Counsel ................................... 6
D. Service Information ............................................................................. 7
II. Payment of Fees ............................................................................................. 7
III. Grounds for Standing (37 C.F.R. § 42.104(a)) ............................................ 7
IV. Overview of Challenges ................................................................................. 7
A. Statement of Precise Relief Requested (37 C.F.R. § 42.22(a)) and Identification of Challenges (37 C.F.R. § 42.104(b)) ................ 7
B. Summary of Central Argument that Challenged Claims are Unpatentable ........................................................................................ 9
C. Threshold Showing of Reasonable Likelihood That Petitioner 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 ‘791 Patent ........................................................................ 15
A. Overview of the Patent ...................................................................... 15
B. Prosecution History ........................................................................... 18
C. Claim Construction (37 C.F.R. § 42.104(b)(3)) .............................. 21
1. Terms Already Construed by the PTAB .............................. 21
2. Additional Terms Requiring Construction .......................... 28
3. Claim Construction Standard ................................................ 29
iii
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)) ................................................................................................. 29
A. Ground #1: Claims 1-4, 29-33, 35 and 41 are Anticipated by Woodhill .............................................................................................. 29
B. Ground #2: Claims 1-4, 29-33, 35 and 41 are Obvious over Woodhill .............................................................................................. 56
VII. Conclusion .................................................................................................... 59
1
Introduction
Pursuant to the provisions of 35 U.S.C. §§ 311-319, Unified Patents, Inc.,
(“Unified” or “Petitioner”) hereby petitions the Patent Trial and Appeal Board to
institute inter partes review of claims 1-4, 29-33, 35 and 41 of US Patent No.
5,978,791 to Faber et al. (“the ‘791 Patent,” Ex. 1001). Petitioner files a motion for
joinder concurrently herewith to join this proceeding with Rackspace US, Inc. and
Rackspace Hosting, Inc., v. PersonalWeb Technologies, LLC and Level 3
Communications, LLC, Case IPR2014-00057 (the “Rackspace IPR”), instituted on
April 15, 2014. See Institution Order, IPR2014-00057, Ex. 1004. This petition is
substantively identical to the one in the Rackspace IPR, except that the ground for
unpatentability which was not authorized by the Board has been removed and is
not relied upon by Unified. Personal-Web 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 ‘791 Patent.
I. MANDATORY NOTICES
A. Real Party-in-Interest
Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Unified Patents is
the real party-in-interest, and further certifies that no other party exercised control
2
or could exercise control over Unified Patents’ participation in this proceeding, the
filing of this petition, or the conduct of any ensuing trial.
Unified Patents was founded by intellectual property professionals over
concerns with the increasing risk of non-practicing entities (NPEs) asserting poor
quality patents against strategic technologies and industries. The founders thus
created a first-of-its-kind company whose sole purpose is to deter NPE litigation
by protecting technology sectors, like cloud storage, the technology at issue in the
‘791 patent. Companies in a technology sector subscribe to Unified’s technology
specific deterrence, and in turn, Unified performs many NPE-deterrent activities,
such as analyzing the technology sector, monitoring patent activity (including
patent ownership and sales, NPE demand letters and litigation, and industry
companies), conducting prior art research and invalidity analysis, providing a
range of NPE advisory services to its subscribers, sometimes acquiring patents, and
sometimes challenging patents at the United States Patent and Trademark Office
(USPTO). Since its founding, Unified is 100% owned by its employees;
subscribers have absolutely no ownership interest.
Unified has sole and absolute discretion over its decision to contest patents
through the USPTO’s post-grant proceedings. Should Unified decide to challenge a
patent in a post-grant proceeding, it controls every aspect of such a challenge,
including controlling which patent and claims to challenge, which prior art to apply
3
and the grounds raised in the challenge, and when to bring any challenge.
Subscribers receive no prior notice of Unified’s patent challenges. After filing a
post-grant proceeding, Unified retains sole and absolute discretion and control over
all strategy decisions (including any decision to continue or terminate Unified’s
participation). Unified is also solely responsible for paying for the preparation,
filing, and prosecution of any post-grant proceeding, including any expenses
associated with the proceeding.
In the instant proceeding, Unified exercised its sole discretion and control in
deciding to file this petition against the ‘791 patent, including paying for all fees
and expenses. Unified shall exercise sole and absolute control and discretion of
the continued prosecution of this proceeding (including any decision to terminate
Unified’s participation) and shall bear all subsequent costs related to this
proceeding. Unified is therefore the sole real-party-in-interest in this proceeding.
B. Petitioner Notice of Related Matters (37 C.F.R. § 42.8(b)(2))
The ‘791 Patent is the first issued of an extensive family of continuation and
divisional applications and is the subject of three IPRs: IPR2014-00057(pending),
IPR2013-00319(denied institution), and IPR2013-00082(pending). The ‘791 Patent
is also the subject of a pending ex parte reexamination: 90/012,931. The ‘791
Patent has been asserted in many litigations:
4
1. PersonalWeb Techs. LLC v. Google, Inc. et al, No. 3-13-cv-04113
(N.D. Ca., filed Sep. 5, 2013).
2. PersonalWeb Techs. LLC et al v. Facebook Inc., No. 5-13-cv-01356
(N.D. Ca., filed Mar. 26, 2013)(terminated).
3. PersonalWeb Techs. LLC et al v. EMC Corp. et al., No. 5-13-cv-
01358 (N.D. Ca., filed Mar. 26, 2013)(terminated).
4. PersonalWeb Techs. LLC et al v. Facebook, Inc., No. 6-12-cv-00662
(E.D. Tex., filed Sep. 17, 2012)(terminated).
5. PersonalWeb Tech. LLC et al v. Nexsen Technologies, Inc., No. 6-12-
The undersigned authorizes the Office to charge the required fees as well as
any additional fees that might be due to Deposit Account No. 15-0030.
III. Grounds for Standing (37 C.F.R. § 42.104(a))
Petitioner certifies pursuant to 37 C.F.R. § 42.104(a) that the ‘791 Patent is
available for inter partes review and that Petitioner is not barred or estopped from
requesting inter partes review challenging the patent claims on the grounds
identified herein.
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))
Petitioner requests Inter Partes Review and cancellation of claims 1-4, 29-
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33, 35 and 41 of the ‘791 patent as anticipated by, and/or obvious over, prior art as
detailed in specific challenges that follow. For each challenge, (i) the
specific statutory grounds of unpatentability and relied upon prior art patents or
printed publications and (ii) the applicable claim(s) are identified in the following
table.
Challenge Grounds and Reference(s) Challenged claim(s)1 § 102(e), US Patent 5,649,196
(Woodhill) 1-4, 29-33, 35 and 41
2 § 103(a), Woodhill 1-4, 29-33, 35 and 41 Challenged claims are to be construed as indicated in Section IV.C, below. For
each challenge, the unpatentability of the applicable claims is established with ref-
erence to particular claim elements and with reference to specific disclosure found
in the relied upon prior art. Supporting evidence is referenced by exhibit number
and with particular reference to specific portions of the evidence that support the
challenges. In particular, a Declaration from the Rackspace IPR petition of Dr.
Melvin Ray Mercer, Professor Emeritus of Electrical and Computer Engineering at
Texas A&M University (Mercer Decl., Ex. 1007) is included to establish a record
for factual positions and matters of opinion testimony relied upon herein. Although
Dr. Mercer discusses the ground of unpatentability not authorized by the Board
(Ground 3, ¶¶ 116-121), Unified does not rely upon that part of his declaration.
The exhibits referred to in Dr. Mercer’s declaration are like numbered in
9
Petitioner’s Exhibit list, which is appended hereto. Specifically, the
correspondence between the exhibits referred to in Dr. Mercer’s declaration and
Petitioner’s exhibits are as follows:
Exhibits Referenced in Dr. Mercer’s Declaration
Petitioner’s Corresponding Exhibit
RACK-1001 Ex. 1001
RACK-1002 Ex. 1002
RACK-1003 Ex. 1003
RACK-1004 Not relied upon
RACK-1005 Ex. 1005
RACK-1006 Ex. 1006
B. Summary of Central Argument that Challenged Claims are Unpatentable
The ‘791 claims focus on the concept of using a “substantially unique
identifier” – based on “all” and “only” the data in a data item – to perform basic
file management functions. Challenged independent claims 1, 30 and 33 of the
patent, for example, require simply (i) determining the identifier, and (ii) using the
identifier to determine if the data item is present in the system and/or access or
provide the data item. For example, claim 1 (styled as a claim under 35 U.S.C. §
112(f)) requires only identity and existence means:
10
ID Claim 1
[1a] In a data processing system, an apparatus comprising: [1b] identity means for determining, for any of a plurality of data items present in
the system, a substantially unique identifier, the identifier being determined using and depending on all of the data in the data item and only the data in the data item, whereby two identical data items in the system will have the same identifier; and
[1c] existence means for determining whether a particular data item is present in the system, by examining the identifiers of the plurality of data items.
Likewise, claim 30 (styled as a method claim) requires only the recited identifier
determining and data accessing steps:
ID Claim 30
[30a] A method of identifying a data item present in a data processing system for subsequent access to the data item, the method comprising:
[30b] determining a substantially unique identifier for the data item, the identifier depending on and being determined using all of the data in the data item and only the data in the data item, whereby two identical data items in the system will have the same identifier; and
[30c] accessing a data item in the system using the identifier of the data item. Claim 33 (again styled as a method claim) requires only the recited identifier
determining, a presence determining step and a data provision step:
ID Claim 33
[33a] A method for duplicating a given data item present ata source location to a destination location in a data processing system, the method comprising:
[33b] determining a substantially unique identifier for the given data item, the identifier depending on and being determined using all of the data in the data item and only the data in the data item, whereby two identical data items in the system will have the same identifier;
[33c] determining, using the data identifier, whether the data item is present at the destination location; and
11
ID Claim 33
[33d] based on the determining whether the data item is present, providing the destination location with the data item only if the data item is not present at the destination
Finally, claim 35 (again styled as a method claim) requires the recited identifier
determining (both for a set of data items and a particular data item), together with
steps to make and maintain a set of determined identifiers and to determine
presence of a particular identifier:
ID Claim 35
[35a] A method for determining whether a particular data item is present in a data processing system, the method comprising:
[35b] (A) for each data item of a plurality of data items present in the system, (i) determining a substantially unique identifier for the data item, the identifier depending on and being determined using all of the data in the data item and only the data in the data item, whereby two identical data items in the system will have the same identifier; and (ii) making and maintaining a set of identifiers of the plurality of data items; and
[35c] (B) for the particular data item, (i) determining a particular substantially unique identifier for the data item, the identifier depending on and being determined using all of the data in the data item and only the data in the data item, whereby two identical data items in the system will have the same identifier; and (ii) determining whether the particular identifier is in the set of data items.
Reference identifiers [IDs] presented in the above claim charts (and in charts
appearing in the exhibits) are used for consistency and clarity. Additional charts for
dependent claims appear in the Mercer Decl. (Ex. 1007).
The applicant indicated in their patent application that they were entitled to
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these broad claims because “[i]n all of the prior data processing systems, the names
or identifiers provided to identify data items … are always defined relative to a
specific context,” and “there is no direct relationship between the data names and
the data item.” (‘791 patent, Ex. 1001, 1: 65-2: 3, 2:12-13 (emphasis added))
Applicant further argued to the USPTO that the ‘791 approach was inventive
because it used data identifiers based on “all” and “only” the data in a data item.
(See Ex. 1002, pp. 186-187, Amendment, dated March 12, 1997, at 10–11).
These representations were simply wrong. Prior data processing systems did
use identifiers that were based on the data in a data item itself, and not simply its
context or pathname. In fact, as demonstrated herein and confirmed with respect to
exemplary prior art patents and printed publication documents in the Mercer Decl.
(Ex. 1007), these techniques were old and widely used. Notably, the prior art relied
upon herein discloses and uses data identifiers exactly like those described and
claimed in the ‘791 patent. This prior art discloses data item identifiers that are
location- and context-independent, that are determined using all of, and only, the
contents of the data item, and that are computed using the same hash and message
digest algorithms mentioned in the ‘791 patent. For the convenience of the Board,
pertinence of the Woodhill reference is now summarized.
Woodhill: US Patent 5,649,196 to Woodhill et al., entitled “System and
Method for Distributed Storage Management on Networked Computer Systems
13
Using Binary Object Identifiers” (“Woodhill,” Ex. 1003) describes use of context
and location-independent identifiers for purposes that are analogous to those
disclosed in the ‘791 patent. Indeed, the PTAB has already instituted trial as to a
subset of the challenged claims of the ‘791 patent (IPR2013-00082) based on
Woodhill.
Woodhill discloses a distributed storage system that used “Binary Object
Identifiers” to identify and access files, and to manage file back-ups, amongst other
functions. (Mercer Decl., Ex. 1007, ¶¶47-48.) As Woodhill explains, a “Binary
Object Identifier 74 [of Fig. 3] … is a unique identifier for each binary object to be
backed up.” (Ex. 1003, 4:45-47.) Woodhill’s Binary Object Identifiers include
three fields–a CRC value, a LRC value, and a hash value–each calculated from all
of, and only, the contents of the binary object. (Ex. 1003, 8:1- 33.) As
Woodhill emphasized, “[t]he critical feature to be recognized in creating a Binary
Object Identifier 74 is that the identifier should be based on the contents of the
binary object so that the Binary Object Identifier 74 changes when the contents of
the binary object changes.” (Ex. 1003, 8:58-62.) Woodhill used these identifiers to
identify binary objects that had changed since the most recent backup, so that
“only those binary objects associated with the file that have changed must be
backed up.” (Ex. 1003, 9:7-14.) “[D]uplicate binary objects, even if resident on
14
different types of computers in a heterogeneous network, can be recognized from
their identical Binary Object Identifiers 74.” (Ex. 1003, 8:62-65.)
Woodhill provides an example of the use of content-based identifiers to
perform basic file management functions. In short, other than perhaps coining a
new phrase–i.e., True Name–for an old concept, there is nothing in the challenged
claims of the ‘791 patent that is new and nonobvious. Accordingly, challenged
claims 1-4, 29-33, 35 and 41 are unpatentable, trial should be instituted by the
PTAB and each of the challenged claims should be cancelled.
C. Threshold Showing of Reasonable Likelihood That Petitioner Would Prevail With Respect To At Least One Challenged Claim (35 U.S.C. § 314(a)) Has Been Met; Institution of Inter Partes Review on Multiple Grounds is Proper (37 C.F.R. § 42.108)
Information presented in this Petition, including unpatentability grounds
detailed in Sections V.A-B, 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, that section, supported by the Mercer Decl. (Ex. 1007)
demonstrates multiple grounds on which the challenged claims are anticipated by,
or obvious in view of, the relied upon prior art.
Petitioner is aware that the PTAB has already instituted trial (IPR2013-
00082, instituted May 17, 2013) with respect to a subset of the claims challenged
herein and grounds of unpatentability detailed herein. Nonetheless, Petitioner
respectfully requests that the PTAB institute trial for all challenged claims and
15
based all grounds of unpatentability asserted herein and, in particular, for newly
challenged claim 35 and based on certain obviousness challenges that are not being
considered in the already instituted trial, but are asserted herein based on Woodhill.
V. The Challenged ‘791 Patent
A. Overview of the Patent
The ‘791 patent is directed to data storage systems that use “substantially
unique identifiers” to identify data items. The “substantially unique identifiers” are
based on all the data in a data item and only the data in the data item, and identical
data items have the same substantially unique identifier. (Ex. 1001, Title, Abstract,
1:13-18.)
According to the ‘791 patent, prior art systems identified data items based on
their location or address within the data processing system. (Ex. 1001, 1:23-28.)
For example, files were often identified by their context or “pathname,” i.e.,
information specifying a path through the computer directories to the particular file
(e.g., C:\MyDocuments\classes\EE350\lecture1.ppt). (See Ex. 1001, 1:35-42.) The
‘791 patent contends that all prior art systems operated in this manner, stating that
“[i]n all of the prior data processing systems[,] the names or identifiers provided to
identify data items … are always defined relative to a specific context,” and “there
is no direct relationship between the data names and the data item.” (Ex. 1001,
1:65–2:3, 2:12-13 (emphasis added).)
16
According to the ‘791 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. (Ex. 1001, 2:12-16.)
Moreover, because there is no correlation between the contents of a data item and
its pathname, there is no a priori way to confirm that the data item is in fact the one
named by the pathname. (Ex. 1001, 2:18- 21.) Furthermore, context or pathname
identification may more easily result in the creation of unwanted duplicate data
items, e.g., multiple copies of a file on a file server. (Ex. 1001, 2:47-58.)
The ‘791 patent purports to address these shortcomings. (Ex. 1001, 3:6-20.)
It suggests that “it is therefore desirable to have a mechanism … to determine a
common and substantially unique identifier for a data item, using only the data in
the data item and not relying on any sort of context.” (Ex. 1001, 3:6-11.)
Moreover, “[i]t is further desirable to have a mechanism for reducing multiple
copies of data items … and to have a mechanism which enables the identification
of identical data items so as to reduce multiple copies.” (Ex. 1001, 3:12-15.)
To do so, the ‘791 patent provides substantially unique identifiers that
“depend[] on all of the data in the data item and only on the data in the data item.”
(Ex. 1001, 1:13-18; see also 3:29-32.) The ‘791 patent uses the terms “True Name”
and “data identifier” to refer to the substantially unique identifier for a particular
17
data item (Ex. 1001, 6:6-10) and explains that a True Name is computed using a
message digest function (see Ex. 1001, 12:55-13:14). Preferred embodiments use
either of the MD5 or SHA message digest functions to calculate a substantially
unique identifier from the contents of the data item. (Ex. 1001, 12:55-13:17.)
The ‘791 patent calls these context- or location-independent, content-based
identifiers “True Names”–a phrase apparently coined by the inventors. With these
identifiers, the patent asserts, “data items can be accessed by reference to their
identities (True Names) independent of their present location.” (Ex. 1001, 34:9-11,
34:30-32.) The actual data item corresponding to these location-independent
19.) “[T]he identity of a data item is independent of its name, origin, location,
address, or other information not derivable directly from the data, and depends
only on the data itself.” (Ex. 1001, 3:33-35.)
In the preferred embodiments, the substantially unique identifiers are used to
“augment” standard file management functions of an existing operating system.
(See Ex. 1001, 6:11-19.) For example, a local directory extensions (LDE) table1 is
indexed by a pathname or contextual name of a file and also includes True Names
for most files. (See Ex. 1001, 8:19-26.) A True File registry (TFR) lists True
1 The patent describes an LDE table as a data structure which provides information about files and directories in the system and includes information in addition to that provided by the native file system. (See Ex. 1001, 8:19-26.)
18
Names, and stores “location, dependency, and migration information about True
Files.” (See Ex. 1001, 8:27-28, 33-35.) 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 Ex. 1001, 8: 30-32, 23:61–62.) This look-up provides, for each True
Name, a list of the locations, such as file servers, where the corresponding file is
stored. (See Ex. 1001, 34:17–19; see also 16:11–13.)
When a data item is to be “assimilated” into the data processing system, its
substantially unique identifier (True Name) is calculated and compared to the True
File Registry to see if the True Name already exists in the Registry. (See Ex. 1001,
14:41-56.) If the True Name already exists, this means that the data item already
exists in the system and the to-be-assimilated data item (i.e., the scratch file) need
not be stored. (See Ex. 1001, 14:56-60.) Conversely, if the True Name does not
exist in the Registry, then a new entry is created in the Registry which is then set to
the just-calculated True Name value, and the data items can be stored. (See Ex.
1001, 14:61-67.)
Dr. Mercer confirms the foregoing overview of the challenged ‘791 patent.
(See Mercer Decl., Ex. 1007, ¶¶26-34.)
B. Prosecution History
The ‘791 patent is based on application 08/425,150 that was originally filed
on April 11, 1995. Initial claim 1 of the application read as follows:
19
(‘5160 Application at 77; Ex. 1002 at 88.) All claims were rejected as
anticipated by Gramlich et al. (U.S. Pat. No. 5,202,982) and as being unpatentable
over Gramlich in view of Konrad et al. (U.S. Pat. No. 5,404,508). (Office Action
of September 12, 1996, at 3-7; Ex. 1002 at 168-172.)
In response, applicants re-emphasized (through argument and some
amendments) that their substantially unique identifiers depend on “all” and “only”
the data in the data items, stating that:
This invention relates to data processing systems and,
more particularly, to data processing systems wherein
data items are identified by substantially unique
identifiers which depend on all of the data in the data
items and only on the data in the data items.
…
20
Thus, in particular, the identifier does not depend on
anything not in the data item. Specifically, the identifier
does not depend on other data, not on other identifiers
and not on other data items.
Further, the identifier depends on all, not just some, of
the data in the data item.
(Amendment of March 12, 1997 at 10-11; Ex. 1002 at 186-187, emphasis in
original.) The claims were again rejected as anticipated by, or unpatentable in
view of, Gramlich and other prior art. (Office Action of May 30, 1997 at 3-8; Ex.
1002 at 203-208.)
Applicants amended the claims a second time, again arguing that their
invention required substantially unique identifiers based on “all” and “only” the
data in the data items:
21
(Amendment of August 29, 1997 at 8, Ex. 1002 at 218, emphasis in
original.) Claim 1 was eventually issued after a file wrapper continuation
application and other procedural issues were addressed.
C. Claim Construction (37 C.F.R. § 42.104(b)(3))
This petition presents claim analysis in a manner that is consistent with the
broadest reasonable interpretation in light of the specification. See 37 C.F.R. §
42.100(b). Claim terms are given their ordinary and accustomed meaning as would
be understood by one of ordinary skill in the art, unless the inventor, as a
lexicographer, has set forth a special meaning for a term. Multiform Desiccants,
Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); York Prods., Inc. v.
Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1572 (Fed. Cir. 1996).
1. Terms Already Construed by the PTAB
In an instituted inter partes review of the ‘791 patent (IPR2013-00082), the
PTAB has already construed claim terms as indicated in the table that follows:
Claim Term PTAB Construction Appears in Challenged Claims
“substantially unique identifier”
“an identity for a data item generated being determined using and depending on all of the data in the data item, and only the data in the data item”
1 (“a substantially unique identifier,” “the identifier,” “the same identifier,” and “the identifiers”); 2 (“the identifier”); 3 (“the identifiers”); 4 (“the identifier”); 30 (“a substantially unique identifier,”
22
Claim Term PTAB Construction Appears in Challenged Claims
“the identifier,” “the same identifier,” and “the identifier”); 31 (“the identifier”); 32 (“the identifier” and “its identifier”); 33 (“a substantially unique identifier,” “the identifier,” and “the same identifier”); and 35 (“a substantially unique identifier,” “the identifier,” “the same identifier,” “a set of identifiers,” “a particular substantially unique identifier,” and “the particular identifier”)
“True Name” “substantially unique data identifier for a particular item”2
33 (“the data identi fier”) and 41 (“a given data identifier” and “the given data identifier”)
“data item” and “data”
“data item” is “‘sequence of bits,’ which includes one of the following: (1) the contents of a file; (2) a portion of a file; (3) a page in memory; (4) an object in an object-oriented program;
1 (“data item(s)” and “the data in the data item”); 2 (“data item”); 3 (“data item(s)”); 4 (“data
2 Note, while that the terms “True Name” and “data identity” do not actually appear in the challenged claims, the PTAB saw fit to document the correspondence with terms actually used in the claims. That correspondence likewise applies to the presently challenged claims.
23
Claim Term PTAB Construction Appears in Challenged Claims
(5) a digital message; (6) a digital scanned image; (7) a part of a video or audio signal; (8) a directory; (9) a record in a database; (10) a location in memory or on a physical device; and (11) any other entity which can be represented by a sequence of bits.” “data” is “a subset of a ‘data item.’”
item”); 29 (“data item”); 30 (“data item(s)” and “the data in the data item”); 31 (“data item(s)”); 32 (“data item”); 33 (“data item(s)” and “the data in the data item”); 35 (“data item(s)”); and 41 (“data item”)
“identity means for determining, for any of a plurality of data items present in the system, a substantially unique identifier, the identifier being determined using and depending on all of the data in the data item and only the data in the data item, whereby two identical data items in the system will have the same identifier”
Construed as follows under 35 U.S.C. § 112, ¶ 6: Function: determining, for any of a plurality of data items present in the system, a substantially unique identifier, the identifier being determined using and depending on all of the data in the data item and only the data in the data item, whereby two identical data items in the system will have the same identifier. Corresponding Structure: data processor programmed to perform a hash function, e.g., MD5 or SHA.
1
“existence means for determining
Construed as follows under 35 U.S.C. § 112, ¶ 6: Function: determining whether a
1
24
Claim Term PTAB Construction Appears in Challenged Claims
whether a particular data item is present in the system, by examining the identifiers of the plurality of data items”
particular data item is present in the system, by examining the identifiers of the plurality of data items. Corresponding Structure: a data processor programmed according to step S232 illustrated in Figure 11 or step S260 illustrated in Figure 14.
“local existence means for determining whether an instance of a particular data item is present at a particular location in the system, based on the identifier of the data item”
Construed as follows under 35 U.S.C. § 112, ¶ 6: Function: determining whether an instance of a particular data item is present at a particular location in the system, based on the identifier of the data item. Corresponding Structure: a data processor programmed according to step S260 illustrated in Figure 14.
2 and 3
“data associating means for making and maintaining, for a data item in the system, an association between the data item and the identifier of the data item”
Construed as follows under 35 U.S.C. § 112, ¶ 6: Function: making and maintaining, for a data time in the system, an association between the data item and the identifier of the data item. Corresponding Structure: a data processor programmed according to the steps S230, S232, and S237-S239 illustrated in Figure 11.
4
“access means for accessing a particular data
Construed as follows under 35 U.S.C. § 112, ¶ 6: Function: accessing a particular data
4
25
Claim Term PTAB Construction Appears in Challenged Claims
item using the identifier of the data item”
item using the identifier of the data item. Corresponding Structure: a processor programmed according to steps S292 and S294 illustrated in Figure 17(a).
(see Decision, Institution of Inter Partes Review, IPR2013-00082; Ex. 1006).
With one exception (“data associating means”) explained below, Petitioner would
likewise construe the above-identified terms of the challenged claims and requests
that the PTAB adopt such construction upon institution of Inter Partes Review
based on the present Petition.
Referring specifically to construction of the “data associating means for
making and maintaining …” limitation appearing in challenged claim 4, Petitioner
suggests that the PTAB’s identification of corresponding structure tends to
emphasize aspects of decision logic (see ‘791 Patent, Ex. 1001, Fig. 11, steps
S237-S239) that properly correspond to the maintaining function, but omits other
aspects of that same decision flow (See Id., Fig. 11, step S236) that more properly
correspond to the recited making function performed when a True Name does not
already exist in the ‘791 Patent’s True File Registry. Accordingly, Petitioner
requests that, for purposes of inter partes review instituted based on the present
Petition, the PTAB reconsider and revise its construction of “data associating
26
means,” in accordance with the forgoing suggestion and the corresponding
structure identified below.
In furtherance of the foregoing request, and to the extent necessary relative
to the above-identified terms already construed by the PTAB, Petitioner itself
identifies in accordance with § 42.104(b)(3) specific portions of the ‘791 patent
specification that describe structure, material or acts corresponding to the above-
identified functions. These identifications of corresponding structure are
confirmed in the Mercer Decl. (See Ex. 1007, ¶¶42-43.)
Claim Term Construed Under § 112, ¶ 6
Corresponding Structure
“identity means for determining, for any of a plurality of data items present in the system, a substantially unique identifier, the identifier being determined using and depending on all of the data in the data item and only the data in the data item, whereby two identical data items in the system will have the same identifier”
A data processor 102 (see FIGs. 1(a), 1(b)) programmed to perform a message digest (or hash) function, e.g., an MD4, MD5 or SHA function, over all of the data in a data item, and only the data in the data item, to provide a substantially unique identifier for the data item. (See ‘791 patent, Ex. 1001, at 4:64–6:19, FIGS. 1(a), 1(b), 12:54–14:39, 32:54 64; see also Mercer Decl., Ex. 1007, ¶¶42-43.)
“existence means for determining whether a particular data item is present in the system, by examining the identifiers of the plurality of data items”
A data processor 102 (see FIGs. 1(a), 1(b)) programmed to check for existence of a particular substantially unique identifier entry in a registry thereof (see step S232, Fig. 11) or programmed to check for local existence of a particular substantially unique identifier entry in the registry thereof or in a local directory extensions table 135 (see step S260, Fig. 14). See ‘791 patent, Ex. 1001, at 4:64–6:19, 9:36–10:10, 14:51–60, step S232, Fig. 11, 15:54–62,
27
Claim Term Construed Under § 112, ¶ 6
Corresponding Structure
step S260, Fig. 14; see also Mercer Decl., Ex. 1007, ¶¶42-43.)
“local existence means for determining whether an instance of a particular data item is present at a particular location in the system, based on the identifier of the data item”
A data processor 102 (see FIGs. 1(a), 1(b)) programmed to check for local existence of a particular substantially unique identifier entry in a registry thereof or in a local directory extensions table (see step S260, Fig. 14). See ‘791 patent, Ex. 1001, at 4:64–6:19, 8:58–10:10, 15:54–62, step S260, Fig. 14; see also Mercer Decl., Ex. 1007, ¶¶42-43.)
“data associating means for making and maintaining, for a data item in the system, an association between the data item and the identifier of the data item”
A data processor 102 (see FIGs. 1(a), 1(b)) programmed to calculate the substantially unique identifier for a data item (see step S230, Fig. 11) and, if a corresponding substantially unique identifier entry does not yet exist in a registry thereof (see step S232, Fig. 11), then create such an entry (see step S236, Fig. 11) to associate the substantially unique identifier with the data item. If a corresponding substantially unique identifier entry already exists in the registry, check the entry for an existing association to a data item has been made (see step S237, Fig. 11) and, if not, store the association in the registry entry (see step S239, Fig. 11). See ‘791 patent, Ex. 1001, at 4:64–6:19, 9:36–10:10, 14:40–15:4, steps S230, S232 and S236-S239, Fig. 11; see also Mercer Decl., Ex. 1007, ¶¶42-43.)
“access means for accessing a particular data item using the identifier of the data item”
A data processor 102 (see FIGs. 1(a), 1(b)) programmed to obtain, using a substantially unique identifier lookup in a registry thereof (see steps S292 and S294, Fig. 17(a)), an accessible copy of the data item. See ‘791 patent, Ex. 1001, at 4:64-6:19, 9:36-10:10, 17:10-45, steps S292 and S294, Fig. 17(a); see also Mercer Decl., Ex. 1007, ¶¶42-43.)
28
2. Additional Terms Requiring Construction
Claim portion [32b] recites a method step of “assimilating a new data item
into the system, by determining the identifier of the new data item and associating
the new data item with its identifier.” In the ‘791 patent, a mechanism for
assimilating a new data item into a file system, by determining the identifier of the
new data item and associating the new data item with its identifier is described
relative to FIG. 11. (See Ex. 1001, 14:40-15:4; see also Mercer Decl., Ex. 1007,
¶44.) That identifier is the “substantially unique identifier” construed by the PTAB
(see supra Section IV.C.1; see also Mercer Decl., Ex. 1007, ¶44). Dr. Mercer
confirms that “assimilation” is not a term that has particular ordinary meaning in
the art, but rather is defined inferentially in ‘791 patent in the context of the
mechanism identified by the PTAB relative to the making and maintaining
function of data associating means. (Mercer Decl., Ex. 1007, ¶44.) Specifically,
and with reference to Fig. 11, the ‘791 patent describes “[a] mechanism for
assimilating data item … into a file system.” (See Ex. 1001, 14:40-15:4.)
According to the ‘791 patent, “[t]he purpose of this mechanism is to add a given
data item to the True File registry 126. If the data item already exists in the True
File registry 126, this will be discovered and used during this process, and the
duplicate will be eliminated.” (Ex. 1001, 14:43-47.)
29
Dr. Mercer concludes that a person of ordinary skill would understand that
“assimilating a data item into the system, by determining the identifier of the new
data item and associating the new data item with its identifier” (construed in
accordance with the broadest reasonable construction standard) means:
(1) determining a substantially unique identifier for a new data item, (2) creating or
updating a registry entry to associate the substantially unique identifier with the
data item, and (3) if the new data item is a duplicate of an existing data item,
eliminating the duplicate. (Mercer Decl., Ex. 1007, ¶44.)
3. Claim Construction Standard
For avoidance of doubt, the foregoing proposed claim construction is
presented by Petitioner in accordance with the broadest reasonable interpretation
standard applied for purposes of inter partes review.
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))
A. Ground #1: Claims 1-4, 29-33, 35 and 41 are Anticipated by Woodhill
Claims 1-4, 29-33, 35 and 41 are anticipated by Woodhill under 35 U.S.C. §
102(e). Woodhill discloses a distributed storage system that uses “Binary Object
Identifiers” to identify and access files, and to manage file back-ups, amongst other
functions. (See Mercer Decl., Ex. 1007, ¶48.) As Woodhill explains, a “Binary
Object Identifier 74 [of Fig. 3] … is a unique identifier for each binary object to be
backed up.” (Ex. 1003, 4:45-47.) Woodhill’s Binary Object Identifiers include
30
three fields–a CRC value, a LRC value, and a hash value–each calculated from all
of, and only, the contents of the binary object. (Ex. 1003, 8:1- 33.) Woodhill used
these identifiers to identify binary objects that had changed since the most recent
backup, so that “only those binary objects associated with the file that have
changed must be backed up.” (Ex. 1003, 9:7-14.) “[D]uplicate binary objects, even
if resident on different types of computers in a heterogeneous network, can be
recognized from their identical Binary Object Identifiers 74.” (Ex. 1003, 8:62-65.)
Claim 1
[1a] In a data processing system, an apparatus comprising:
Woodhill discloses this feature. (Mercer Decl., Ex. 1007, ¶49)
[1b] identity means for determining, for any of a plurality of data items present in
the system, a substantially unique identifier, the identifier being determined
using and depending on all of the data in the data item and only the data in
the data item, whereby two identical data items in the system will have the
same identifier
Woodhill discloses this feature in the form of Distributed Storage Manager
software program that executes on each local computer of its system. (See Ex.
1003, 4:62-5:11; see also Mercer Decl., Ex. 1007, ¶¶50-53.) The Distributed
Storage Manager program executes on each local computer to perform operations
and functions that are illustrated in Woodhill’s flow charts and described in
31
Woodhill’s specification. (See Id.) One such function of the Distributed Storage
Manager program executing on a local computer is the function of creating a
Binary Object Identification Record for each binary object processed by the
program. (See Ex. 1003, 7:60-62). The operation of this function is illustrated in
FIG. 5A and, more specifically, described with reference to step 138 thereof. (See
Ex. 1003, FIG. 5A, 7:60-8:65).
In accordance with step 138, the Distributed Storage Manager (as part of its
creation of the Binary Object Identifier 74 of a Binary Object Identifier Record)
computes a hash against the contents of the binary object to be identified. (Ex.
1003, 7:60-8:42). Specifically, relative to Binary Object Hash field 70 of Binary
Object Identifier 74:
(Ex. 1003, 8:16-32.) Binary Object Identifier 74 is used to uniquely identify a
In at least this manner, Woodhill discloses the corresponding structure (or its
equivalent) for “data associating means …,” claim portion [4b].
[4c] access means for accessing a particular data item using the identifier of the
data item
Claim portion [4c], “access means …” is also disclosed in Woodhill.
(Mercer Decl., Ex. 1007, ¶¶79-82.) As construed by the PTAB, the “access means
…” limitation encompasses a processor programmed according to steps S292 and
S294 illustrated in Figure 17(a) of the ‘791 patent. The steps that the PTAB
includes in its identification of corresponding structure for the “access means …”
are a subset of those that “make[] it possible to actually read the data in a True
File,” that is, by “tak[ing] a TrueName and return[ing] when there is a local,
accessible copy of the True File in the True File registry.” (See Ex. 1001, 17:13-
16.)
Like the ‘791 patent, Woodhill resolves its substantially unique identifier
construct (e.g., a Binary Object Identifier or content identifier) to identify and
make available a local copy of a data item (e.g., a binary object and constituent
granule thereof to be restored). Specifically, Woodhill discloses a restore
mechanism by which “Distributed Storage Manager program 24 transmits an
‘update request’ to the remote backup file server 12 which includes the Binary
Object Identification Record 58 for the previous version of each binary object” to
42
be restored. (See Ex. 1003, 17:18-46.) Woodhill employs that Binary Object
Identifier to identify and reconstitute the previous version of each binary object for
transmission to the local computer. (See Ex. 1003, 17:46-64.)
Woodhill employs an advanced technique whereby it determines, using
granule-level content identifiers3 calculated in the same manner as the Binary
Object Identifiers (see Ex. 1003, 15:24-38), whether individual constituent
granules of the to-be-restored previous version of a binary object match
corresponding granules at the local computer and can thus be omitted from the
transmission. (See Ex. 1003, 17:50-64.) However, any constituent granules of the
to-be-restored previous version of the binary object that do not match are
transmitted to the local computer and, once received, are written to the current
version of the binary object to effectuate the restore. (See Ex. 1003, 17:60-18:9.)
Dr. Mercer accordingly confirms that a person of ordinary skill in the art
would understand Woodhill’s restore mechanism to make available for local access
(on local computer 20) a restored previous version a binary object identified from
amongst backup versions (at remote backup file server 12) by employing the
substantially unique identifier (e.g., the Binary Object Identifier) therefor. (Mercer
3 In Woodhill, granularization is a technique used to decompose large files or streams thereof (e.g., those larger than 1MByte) into constituent granules, which are each themselves binary objects identified using respective granulelevel binary object identifiers. (See Ex. 1003, 14:52-18:9.)
43
Decl., Ex. 1007, ¶82.) Accordingly, Woodhill discloses the “access means”
structure or its equivalent.
Claim 29
[29] An apparatus as in any of claims 1-28, wherein a data item is at least one of a
file, a database record, a message, a data segment, a data block, a directory,
and an instance an object class
Woodhill discloses that its binary objects may correspond to files (see Ex.
1003, 4:1-2), constituent data streams thereof (see Ex. 1003, 4:13-15, 4:21-23),
and, for large streams, multiple constituent portions of the data streams (see Ex.
1003, 4:13-15, 4:26-30). Woodhill also discloses that “databases” are an “important
class of ‘large’ files” to which its techniques are applied. (See Ex. 1003, 14:53-54.)
Accordingly, Woodhill discloses that binary objects may include at least “a file, a
database record, a data segment [or] a data block.”
Claim 30
[30a] A method of identifying a data item present in a data processing system for
subsequent access to the data item
Woodhill discloses methods of identifying a data item present in a data
processing system for subsequent access to the data item. (Mercer Decl., Ex. 1007,
¶¶84-91.)
44
[30b] determining a substantially unique identifier for the data item, the identifier
depending on and being determined using all of the data in the data item and
only the data in the data item, whereby two identical data items in the system
will have the same identifier
Section IV.C.1, the PTAB’s construction of the “substantially unique
identifier” limitation is detailed. Claim portion [30b] textually restates the “all and
only” requirement found in the PTAB construction and textual requires what Dr.
Mercer confirms to be essentially a corollary of that requirement, namely that “two
identical data items in the system will have the same identifier.” (See Mercer
Decl., Ex. 1007, ¶85.)
Distributed Storage Manager (as part of its creation of the Binary Object
Identifier 74 of a Binary Object Identifier Record) computes a hash against the
contents of the binary object to be identified. (Ex. 1003, 7:60-8:42). Specifically,
relative to Binary Object Hash field 70 of Binary Object Identifier 74:
(Ex. 1003, 8:16-32.) Binary Object Identifier 74 is used to uniquely identify a
Ex. 1002 USPTO File Wrapper for U.S. Patent No. 5,978,791, including the prosecution history of U.S. Application No.: 08/425,160, filed April 11, 1995 and file wrapper continuation thereof, 08/960,079.
Ex. 1003 Woodhill et al., U.S. Patent No. 5,649,196
Ex. 1004 Institution Order, IPR2014-00057, paper 9, April 15, 2014
Ex. 1005 Decision, Institution of Inter Partes Review, IPR2013-00082
Ex. 1006 Response filed Aug. 22, 2001 in prosecution of U.S. Application No.: 09/283,160, a divisional of 08/960,079
Ex. 1007 Declaration of Dr. Melvin Ray Mercer from IPR2014-00057 in support of Petition for Inter Partes Review of U.S. Patent No. 5,978,791
CERTIFICATE OF SERVICE
The undersigned certifies service pursuant to 37 C.F.R. §§ 42.6(e) and
42.105(b) on the Patent Owner by UPS Next Day Air of a copy of this Petition for
Inter Partes Review and supporting materials at the correspondence address of
record for the ‘791 patent:
NIXON & VANDERHYE, PC 901 North Glebe Road, 11th Floor
Arlington, VA 22203 Dated: April 28, 2014 By: /Michael L. Kiklis/