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

TABLE OF CONTENTS I. MANDATORY NOTICES .............................................................................1 A. B. C. D. II. Real Party-in-Interest .........................................................................1 Petitioner Notice of Related Matters (37 C.F.R. 42.8(b)(2)) ........3 Identification of Lead and Back-Up Counsel ...................................6 Service Information.............................................................................7

Payment of Fees .............................................................................................7

III. Grounds for Standing (37 C.F.R. 42.104(a)) ............................................7 IV. Overview of Challenges .................................................................................7 A. B. C. Statement of Precise Relief Requested (37 C.F.R. 42.22(a)) and Identification of Challenges (37 C.F.R. 42.104(b)) ................7 Summary of Central Argument that Challenged Claims are Unpatentable ........................................................................................9 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. B. C. Overview of the Patent ......................................................................15 Prosecution History ...........................................................................18 Claim Construction (37 C.F.R. 42.104(b)(3)) ..............................21 1. 2. 3. Terms Already Construed by the PTAB ..............................21 Additional Terms Requiring Construction ..........................28 Claim Construction Standard................................................29

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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. B. Ground #1: Claims 1-4, 29-33, 35 and 41 are Anticipated by Woodhill ..............................................................................................29 Ground #2: Claims 1-4, 29-33, 35 and 41 are Obvious over Woodhill ..............................................................................................56

VII. Conclusion ....................................................................................................59

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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

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 Unifieds 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 USPTOs 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
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and the grounds raised in the challenge, and when to bring any challenge. Subscribers receive no prior notice of Unifieds 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 Unifieds 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 Unifieds 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:

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-cv01358 (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. 6-12cv-00657 (E.D. Tex., filed Sep. 17, 2012)(terminated). 6. PersonalWeb Techs. LLC v. Caringo, Inc., No. 6-11-cv-00659 (E.D. Tex., filed Dec. 8, 2011)(terminated); 7. PersonalWeb Techs. LLC et al v. NetApp, Inc., No. 6-12-cv-00657 (E.D. Tex., filed Dec. 8, 2011)(terminated). 8. PersonalWeb Techs. LLC v. EMC Corp. et al, No. 6-11-cv-00660 (E.D. Tex., filed Dec. 8, 2011)(terminated). 9. PersonalWeb Techs. LLC v. Google, Inc. et al, No. 6-11-cv-00656 (E.D. Tex., filed Dec. 8, 2011)(terminated). 10. PersonalWeb Techs. LLC v. NEC Corp. of America, Inc., No. 6-11cv-00655 (E.D. Tex., filed Dec. 8, 2011)(terminated).
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11. Akamai Techs, Inc. v. Digital Island, Inc., No. 1-00-cv-11851 (D. Mass., filed Sep. 13, 2000)(terminated). 12. PersonalWeb Techs. LLC et al v. Apple Inc., No. 4-14-cv-01683 (N.D. Ca, filed April 11, 2014). 13. PersonalWeb Techs. LLC et al v. NetApp, Inc., No. 5-13-cv-01359 (N.D. Ca., filed Mar. 26, 2013). 14. PersonalWeb Techs. LLC v. Google, Inc. et al, No. 5-13-cv-01317 (N.D. Ca., filed Mar. 25, 2013). 15. PersonalWeb Techs. LLC et al v. Yahoo! Inc., No. 6-12-cv-00658 (E.D. Tex., filed Sep. 17, 2012). 16. PersonalWeb Techs. LLC et al v. Apple Inc., No. 6-12-cv-00660 (E.D. Tex., filed Sep. 17, 2012). 17. PersonalWeb Techs. LLC et al v. Intl Bus. Mach. Corp., No. 6-12-cv00661 (E.D. Tex., filed Sep. 17, 2012). 18. PersonalWeb Techs. LLC et al v. Microsoft Corp., No. 6-12-cv-0663 (E.D. Tex., filed Sep. 17, 2012). 19. PersonalWeb Tech. LLC et al v. Rackspace US, Inc. et al., No. 6-12cv-00659 (E.D. Tex., filed Sep. 17, 2012). 20. PersonalWeb Techs. LLC v. Autonomy, Inc., No. 6-11- cv-00683 (E.D. Tex., filed Dec. 19, 2011).
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21. PersonalWeb Techs. LLC v. Amazon Web Svcs. LLC et al, No. 6-11cv-00658 (E.D. Tex., filed Dec. 8, 2011). In addition, the following post-grant proceedings are for related patents: Related patents to the 791 Patent 6,415,280 6,928,442 IPR2013-00083 (pending) IPR2014-00059 (pending) IPR2014-00066 (pending) 90/010,260 (ex parte reexam, certificate issued) 7,802,310 7,945,539 7,945,544 7,949,662 8,001,096 8,099,420 IPR2013-00596 (pending) IPR2014-00062 (pending) IPR2013-00085 (pending) IPR2013-00084 (pending) IPR2013-00086 (pending) IPR2013-00087 (pending) IPR2014-00058 (pending) Post-grant proceeding

C.

Identification of Lead and Back-Up Counsel

Pursuant to 37 C.F.R. 42.8(b)(3), Petitioner provides the following designation of counsel: Lead counsel is Michael L. Kiklis (Reg. No. 38,939) and back-up counsel is Scott A. McKeown (Reg. No. 42,866).

D.

Service Information

Pursuant to 37 C.F.R. 42.8(b)(4), papers concerning this matter should be served on the following. Address: Michael L. Kiklis or Scott McKeown Oblon Spivak 1940 Duke Street Alexandria, VA 22314 Email: cpdocketkiklis@oblon.com and cpdocketmckeown@oblon.com Telephone: (703) 413-2707/(703)413-3000 (main) Fax: (703) 413-2220

II.

Payment of Fees 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-

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 1 2 Grounds and Reference(s) 102(e), US Patent 5,649,196 (Woodhill) 103(a), Woodhill Challenged claim(s) 1-4, 29-33, 35 and 41 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 reference 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. Mercers declaration are like numbered in
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Petitioners Exhibit list, which is appended hereto. Specifically, the correspondence between the exhibits referred to in Dr. Mercers declaration and Petitioners exhibits are as follows: Exhibits Referenced in Dr. Mercers Declaration RACK-1001 RACK-1002 RACK-1003 RACK-1004 RACK-1005 RACK-1006 Petitioners Corresponding Exhibit Ex. 1001 Ex. 1002 Ex. 1003 Not relied upon Ex. 1005 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:

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
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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 1011). 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
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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.) Woodhills Binary Object Identifiers include three fieldsa CRC value, a LRC value, and a hash valueeach 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

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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 phrasei.e., True Namefor 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 (IPR201300082, 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
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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, 1:652:3, 2:12-13 (emphasis added).)
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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
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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 Namesa 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 identifiers may reside anywhere, e.g., locally, remotely, offline. (Ex. 1001, 34:1119.) [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.)
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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, 23:6162.) 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, 34:1719; see also 16:1113.) 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:

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(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.
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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:

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(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 substantially unique identifier PTAB Construction 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 Appears in Challenged Claims 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,

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Claim Term

PTAB Construction

Appears in Challenged Claims

True Name

data item and data

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) substantially unique data identifier for 33 (the data identi a particular item2 fier) and 41 (a given data identifier and the given data identifier) data item is sequence of bits, which 1 (data item(s) and the data in the data includes one of the following: (1) the contents of a file; (2) a portion of item); 2 (data item); 3 (data a file; (3) a page in memory; (4) an item(s)); 4 (data object in an object-oriented program;

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.
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Claim Term

PTAB Construction (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.

Appears in Challenged Claims 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) 1

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 existence means for determining

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.

Construed as follows under 35 U.S.C. 112, 6: Function: determining whether a

23

Claim Term whether a particular data item is present in the system, by examining the identifiers of the plurality of data items 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 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 access means for accessing a particular data

PTAB Construction 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. 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.

Appears in Challenged Claims

2 and 3

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.

Construed as follows under 35 U.S.C. 112, 6: Function: accessing a particular data

24

Claim Term item using the identifier of the data item

PTAB Construction item using the identifier of the data item. Corresponding Structure: a processor programmed according to steps S292 and S294 illustrated in Figure 17(a).

Appears in Challenged Claims

(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 PTABs 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 Patents 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
25

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 aboveidentified functions. These identifications of corresponding structure are confirmed in the Mercer Decl. (See Ex. 1007, 42-43.) Claim Term Construed Under 112, 6 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 existence means for determining whether a particular data item is present in the system, by examining the identifiers of the plurality of data items Corresponding Structure 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 4:646:19, FIGS. 1(a), 1(b), 12:5414:39, 32:54 64; see also Mercer Decl., Ex. 1007, 42-43.)

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 4:646:19, 9:36 10:10, 14:5160, step S232, Fig. 11, 15:5462,
26

Claim Term Construed Under 112, 6

Corresponding Structure

step S260, Fig. 14; see also Mercer Decl., Ex. 1007, 42-43.) A data processor 102 (see FIGs. 1(a), 1(b)) local existence means for determining whether an instance programmed to check for local existence of a particular substantially unique identifier entry of a particular data item is present at a particular location in in a registry thereof or in a local directory extensions table (see step S260, Fig. 14). the system, based on the See 791 patent, Ex. 1001, at 4:646:19, 8:58 identifier of the data item 10:10, 15:5462, step S260, Fig. 14; see also Mercer Decl., Ex. 1007, 42-43.) A data processor 102 (see FIGs. 1(a), 1(b)) data associating means for programmed to calculate the substantially making and maintaining, for a unique identifier for a data item (see step S230, data item in the system, an Fig. 11) and, if a corresponding substantially association between the data item and the identifier of the data unique identifier entry does not yet exist in a registry thereof (see step S232, Fig. 11), then item 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 4:646:19, 9:36 10:10, 14:4015:4, steps S230, S232 and S236S239, Fig. 11; see also Mercer Decl., Ex. 1007, 42-43.) access means for accessing a A data processor 102 (see FIGs. 1(a), 1(b)) particular data item using the programmed to obtain, using a substantially identifier of the data item 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, 9:3610:10, 17:10-45, steps S292 and S294, Fig. 17(a); see also Mercer Decl., Ex. 1007, 4243.)
27

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.)
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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.) Woodhills Binary Object Identifiers include
29

three fieldsa CRC value, a LRC value, and a hash valueeach 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 Woodhills flow charts and described in
30

Woodhills 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 particular binary object. (Ex. 1003, 8:16-32.) Furthermore, duplicate binary objects, even if resident on different types of computers, can be recognized based on their identical Binary Object Identifiers 74. (Ex. 1003, 8:62-65.)

31

Dr. Mercer confirms that Binary Object Identifier 74 and, indeed Binary Object Hash field 70, Binary Object LRC field 68 and Binary Object CRC32 field 66, are all determined using and depending on all of the data in the data item and only the data in the data item. (Mercer Decl., Ex. 1007, 53.) Dr. Mercer further confirms that, based on Woodhills description of its binary object identifier fields and computations, two identical data items will have the same identifier. (Mercer Decl., Ex. 1007, 53.) Thus, Woodhill discloses the identity means element. [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 A further function of Woodhills Distributed Storage Manager program is to determine, using Binary Object Identifier 74, whether the binary object identified thereby has already been backed up in Woodhills system. (See Ex. 1003, 8:669:28; see also Mercer Decl., Ex. 1007, 54-57.) Operation of the Distributed Storage Manager software to perform this function is illustrated in FIG. 5A and, more specifically, described with reference to step 140 thereof. (See Ex. 1003, FIG. 5A, 8:66-9:28). Distributed Storage Manager program 24 identifies the particular binary objects that are to be backed up in a current backup cycle. (Ex. 1003, FIG. 5A, 8:66-9:2). Only those binary objects that have been changed must be backed up (Ex. 1003, 9:7-9), and the subset of binary objects that have changed is determined
32

by comparing the Binary Object Identifiers 74 calculated in step 138 against their counterparts in the File Database 25 (Ex. 1003, 9:7-22). Dr. Mercer confirms that a person of ordinary skill in the art would understand that the determination of whether a particular binary object is backed up in Woodhills system is necessarily a determination of whether the particular binary object is already present in the next most recent backup. (Mercer Decl., Ex. 1007, 57.) Like the 791 patent, which compares its substantially unique identifier or True Name against contents of using its True File registry, Woodhills system compares Binary Object Identifiers 74 (computed over contents of the binary object itself) against contents of its File Database 25. (See Ex. 1003, 9:7-22.) As confirmed by Dr. Mercer, in each system, a substantially unique identifier computed over all the contents of a data item and only contents of the data item is compared against contents of a store or registry that contains substantially unique identifiers computed for a plurality of data items in the system, and in each system, the comparison determines whether a particular item is present in the system. (Mercer Decl., Ex. 1007, 57) Thus, Woodhill discloses the existence means element. Petitioner notes that, in an already instituted proceeding (IPR-2013-00082) concerning the 791 patent, patent owner took the position that Woodhills system fails to examine identifiers of a plurality of data items. Dr. Mercer has considered
33

the patent owners apparent viewpoint and has reached a contrary conclusion for reasons detailed in the Mercer Decl. (See Ex. 1007, 58-61.) Claim 2 [2b] An apparatus as in claim 1, further comprising: 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 For reasons analogous to those discussed above relative to the existence means [1c], claim portion [2b], local existence means are also disclosed in Woodhill. As construed by the PTAB, the local existence means limitation encompasses a processor programmed according to step S260 illustrated in Figure 14 of the 791 patent. Notably step S260 is the very same step S260 that the PTAB includes in its identification of corresponding structure for the existence means limitation. (See Section IV.C.1 for the PTAB constructions.) Dr. Mercer confirms, relative to step S260 and Figure 14, that the local nature of the local existence means pertains to a confirmation that the substantially unique identifier (i.e., the True Name) exists locally, for example in the True Name registry. (See Ex. 1001, 15:54-56; Mercer Decl., Ex. 1007, 64.) Woodhills Distributed Storage Manager program determines, using Binary Object Identifier 74, whether the binary object identified thereby has already been backed up in Woodhills system. (See Ex. 1003, 8:66-9:28). Operation of the
34

Distributed Storage Manager software to perform this function is illustrated in FIG. 5A and, more specifically, described with reference to step 140 thereof. (See Ex. 1003, FIG. 5A, 8:66-9:28). As before, Distributed Storage Manager program 24 identifies the particular binary objects that are to be backed up in a current backup cycle. (Ex. 1003, FIG. 5A, 8:66-9:2). Only those binary objects that have been changed must be backed up (Ex. 1003, 9:7-9), and the subset of binary objects that have changed is determined by comparing the Binary Object Identifiers 74 calculated in step 138 against their counterparts in the File Database 25 (Ex. 1003, 9:7-22). Dr. Mercer has confirmed that a person of ordinary skill in the art would understand that the determination of whether a particular binary object is backed up in Woodhills system is necessarily a determination of whether the particular binary object is already present. (Mercer Decl., Ex. 1007, 67.) In Woodhill, a particular location of such a backup is remote backup file server 12. (See Ex. 1003, 3:7-24.) Like the 791 patent, which compares its substantially unique identifier or True Name against contents of using its True File registry, Woodhills system compares Binary Object Identifiers 74 (computed over contents of the binary object itself) against contents of its File Database 25. (See Ex. 1003, 9:7-22.) As confirmed by Dr. Mercer, in each system, a substantially unique identifier is computed over all the contents of a data item and
35

only contents of the data item is compared against contents of a store or registry that contains substantially unique identifiers computed for a plurality of data items in the system, and in each system, the determination whether a particular item is present at a particular location in the system is based on the comparison. (Mercer Decl., Ex. 1007, 67.) Accordingly, Woodhill discloses the local existence means element. Claim 3 [3] An apparatus as in claim 2, wherein each location contains a distinct plurality of data items, and wherein said local existence means determines whether a particular data item is present at a particular location in the system by examining the identifiers of the plurality of data items at said particular location in the system Claim [3] adds the further limitation that, with respect to a particular location, the determination of a particular data item is present is by examining the identifiers of the plurality of data items at said particular location in the system. Woodhill discloses this aspect as well. For example, relative to a particular location that is remote backup file server 12 (see Ex. 1003, 3:7-24, 9:36-38), Woodhill discloses a Distributed Storage Manager program 24 that executes on each local computer of Woodhills system. (Ex. 1003, 4:62-5:11.) Woodhills Distributed Storage Manager program determines, using Binary Object
36

Identifier 74,whether the binary object identified thereby has already been backed up (See Ex. 1003, 8:66-9:28) and is thus, already present, in the backup. Thus, relative to the particular location that is remote backup file server 12, the determination of whether a particular data item is already present (by comparing Binary Object Identifiers 74 against stored counterparts in File Database 25) is an examin[ation of] the identifiers of the plurality of data items at said particular location in the system. As before, Dr. Mercer has confirmed that person of ordinary skill in the art would understand that the determination of whether a particular binary object is backed up in Woodhills system is necessarily a determination of whether the particular binary object is already present. (Mercer Decl., Ex. 1007, 72.) Furthermore, Dr. Mercer has confirmed that, in both the 791 patent and Woodhill, the comparison of substantially unique identifiers necessarily examines the identifiers that identify data items at a particular location in the system. (Mercer Decl., Ex. 1007, 72.) Accordingly, Woodhill discloses the particular location limitations of claim [3]. Claim 4 [4b] An apparatus as in claim 2, further comprising: 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

37

Claim portion [4b], data associating means is also disclosed in Woodhill. (Mercer Decl., Ex. 1007, 73-78.) In it construction, the PTAB identifies a substantial portion of the functional sequence and decision logic illustrated in FIG. 11 of the 791 patent as the programming that, in combination with a processor for execution, constitutes the corresponding structure for the making and maintaining, for a data item in the system, an association between the data item and the identifier of the data item. (See Section IV.C.1 for the PTAB constructions.) Dr. Mercer has reviewed the construction in instituted PTAB proceedings as well the following and corresponding description of the 791 patent:

(Ex. 1001, 14:51-67), and based thereon concludes that a proper identification structure or acts would include step S236 (creating a new entry) in the set of programming that, in combination with a processor for execution, constitutes

38

corresponding structure for portion [4b]. (See Mercer Decl., Ex. 1007, 74-75.) Dr. Mercer likewise concludes, based on his own review of the corresponding description of the 791 patent, that he would not include programming for deletion of a scratch file ID in the corresponding structure at least insofar as a broadest reasonable construction is concerned. (See Mercer Decl., Ex. 1007, 74-75.) Note that Petitioners suggested revision of the PTABs prior construction from already instituted proceedings is detailed in Section IV.C.1, above. Dr. Mercer indicates the proper construction of corresponding structure for claim portion [4b] should encompass the illustrated step S236 by which an entry is created in the True Name registry (if an association does not already exist), and to encompass illustrated steps S237-239 by which an existing entry is updated (if necessary) to include the association. Thus, the programming of corresponding structures described by the 791 patent will be understood to create and maintain an association between a data item and a substantially unique identifier. (Mercer Decl., Ex. 1007, 75.) Woodhill makes and maintains an association between a data item and the identifier for a data item. In Woodhill, data items (or their analogue) are called binary objects, substantially unique identifiers (or their analogue) are called Binary Object Identifiers and a registry that associates a binary object with a substantially unique identifier (or its analogue) is File Database 25. (See Ex. 1003,
39

3:45-4:47.) Woodhill explains that files can comprise multiple binary objects each with an associated Binary Object Identifier Record 58, which in turn includes a Binary Object Identifier 74. (See Ex. 1003, 4:12-47.) Distributed Storage Manager program 24 builds and maintains File Database 25, and File Database 25 stores information (including the above-described associations between binary objects, and Binary Object Identifiers) relating to each file that has been backed up by Distributed Storage Manager program 24 since initialization. (See Ex. 1003, 3:45-52.) Distributed Storage Manager program 24 executes periodically to identify files (new or changed files) that need to be backed up in a current backup cycle (See Ex. 1003, 5:9-20). Dr. Mercer accordingly confirms that a person of ordinary skill would have understood Woodhill to disclose (or at the very least suggest) creation of new entries in File Database 25, including the constituent associations between binary objects and Binary Object Identifiers 74, for newly encountered files and binary objects. (Mercer Decl., Ex. 1007, 77.) Dr. Mercer also confirms that a person of ordinary skill would have understood Woodhill to disclose (or at the very least suggest) maintaining entries in File Database 25, including updating the constituent associations between binary objects and Binary Object Identifiers 74, for changed files and binary objects. (Mercer Decl., Ex. 1007, 77 (citing Ex. 1003, 6:21-9:28))

40

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, 17:1316.) 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
41

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 Woodhills 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

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.)
42

3 In Woodhill, granularization

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.)

43

[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 PTABs 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 particular binary object. (Ex. 1003, 8:16-32.) Furthermore, duplicate binary
44

objects, even if resident on different types of computers, can be recognized based on their identical Binary Object Identifiers 74. (Ex. 1003, 8:62-65.) As confirmed by Dr. Mercer, Binary Object Identifier 74 and, indeed Binary Object Hash field 70 thereof, is determined for the data item, depending on and being determined using all of the data in the data item and only the data in the data item. (Mercer Decl., Ex. 1007, 88.) Also as further confirmed by Dr. Mercer based on Woodhills description of its binary object identifier fields and computations, two identical data items will have the same identifier. (Mercer Decl., Ex. 1007, 88.) Accordingly, Woodhill discloses claim portion [30b]. [30c] accessing a data item in the system using the identifier of the data item Section IV.C.1, summarizes the construction adopted by the PTAB for the phrase using the identifier. As confirmed by Dr. Mercer, Woodhill discloses accessing a data item in the system using the identifier of the data item (i.e., by employing the unique identifier of the data item, with or without other information, to carry out the accessing). (Mercer Decl., Ex. 1007, 89.) Like the 791 patent, Woodhill resolves its substantially unique identifier construct (e.g., a Binary Object Identifier or content identifier) to identify and retrieve 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
45

remote backup file server 12 which includes the Binary Object Identification Record 58 for the previous version of each binary object to be restored. (See Ex. 1003, 17:18-46.) Woodhill employs that to identify and reconstitute the previous version of each binary object for transmission to the local computer. (See Ex. 1003, 17:46-64.) As confirmed by Dr. Mercer, a person of ordinary skill in the art would understand either or both of the reconstitution and the responsive transmission back to the local computer of a particular binary object identified using a Binary Object Identifier to constitute employing the unique identifier of the data item, with or without other information, to access the data item. (Mercer Decl., Ex. 1007, 91.) Accordingly, Woodhill discloses claim portion [30c]. Claim 31 [31b] A method as in claim 30, further comprising: making and maintaining, for a plurality of data items present in the system, an association between each of the data items and the identifier of each of the data items, wherein said accessing a data item accesses a data item via the association Woodhill makes and maintains an association between a data item and the identifier for a data item. (Mercer Decl., Ex. 1007, 92-94.) In Woodhill, data items (or their analogue) are called binary objects, substantially unique identifiers (or their analogue) are called Binary Object Identifiers and a registry
46

that associates a binary object with a substantially unique identifier (or its analogue) is File Database 25. (See Ex. 1003, 3:45-4:47.) Woodhill explains that files can comprise multiple binary objects each with an associated Binary Object Identifier Record 58, which in turn includes a Binary Object Identifier 74. (See Ex. 1003, 4:12-47.) Distributed Storage Manager program 24 builds and maintains File Database 25, and File Database 25 stores information (including the associations between binary objects, and Binary Object Identifiers) relating to each file that has been backed up by Distributed Storage Manager program 24 since initialization. (See Ex. 1003, 3:45-52.) Distributed Storage Manager program 24 executes periodically to identify files (new or changed files) that need to be backed up in a current backup cycle (See Ex. 1003, 5:9-20). Dr. Mercer accordingly confirms that a person of ordinary skill would have understood Woodhill to disclose (or at the very least suggest) creation of new entries in File Database 25, including the constituent associations between binary objects and Binary Object Identifiers 74, for newly encountered files and binary objects. (Mercer Decl., Ex. 1007, 93.) Dr. Mercer accordingly confirms that a person of ordinary skill would have understood Woodhill to disclose (or at the very least suggest) maintaining entries in File Database 25, including updating the constituent associations between binary objects and Binary Object Identifiers 74, for changed files and binary objects.
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(Mercer Decl., Ex. 1007, 93.) Thus, Woodhill discloses the making and maintaining an association recited in claim portion [31b]. Claim 32 [32b] A method as in claim 31, further comprising: 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 section IV.C.2, Petitioner proposed a construction of the claim term 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 as (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. Woodhill discloses determining a substantially unique identifier (e.g., a Binary Object Identifier 74) for a new data item, (e.g., a binary object) and creating or updating an entry in a registry (e.g., a File Database 25) to associate the substantially unique identifier with the data item. (See Ex. 1003, 3:45-4:47; see also Mercer Decl., Ex. 1007, 96.) As detailed relative to claim 31, Woodhill makes and maintains an association between a data item and the identifier for a data item. In addition, Woodhill explains that, by calculating Binary Object
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Identifiers for newly processed binary objects and comparing the calculated Binary Object Identifiers against counterparts in the File Database (for already backed up binary objects), the Distributed Storage Manager program 24 is able to determine which parts of a file (constituent binary objects) have changed and only backup the changed binary objects. (See Ex. 1003, 9:9-28.) In this way, Woodhills system determines which binary objects would be duplicates if sent to the backup and eliminates such duplicates from the backup traffic. (Mercer Decl., Ex. 1007, 96.) Dr. Mercer accordingly confirms that a person of ordinary skill would understand Woodhill to disclose assimilation of 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. (Mercer Decl., Ex. 1007, 96.) Claim 41 [41b] A method as in claim 31, further comprising: for a given data identifier and for a given current location and a remote location in the system: determining whether the data item corresponding to the given data identifier is present at the current location As detailed above relative to claim portion [30c], Woodhill describes a restore mechanism by which a data item in the system is accessed using the identifier of the data item. (See Ex. 1003, 18:18-46.) Woodhill also describes computational systems that constitute locations as claimed (e.g., local computer 20
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as a given current location and remote backup file server 12 as a remote location). (See Ex. 1003, 9:30-38.) In addition to the basic restore-from-backup-type access summarized above with respect to claim portion [30c], Woodhill employs an advanced technique whereby it determines, using granule-level content identifiers 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.) Relative to the specific language of claim portion [41b], Dr. Mercer confirms that this granule-level correspondence check Woodhill discloses the step of determining whether the data item [binary object] corresponding to the given data identifier [Binary Object Identifier] is present at the current location [local computer 20]. (Mercer Decl., Ex. 1007, 98.) [41c] based on said determining, if said data item is not present at the current location, fetching the data item from a remote location in the system to the current location 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 confirms that, because Woodhills system
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implements the restore as responsive to an update request, the transmission of a binary object (or granule) not present at local computer 20 would be understood by a person of ordinary skill in the art to constitute a fetch. (Mercer Decl., Ex. 1007, 99.) Dr. Mercer accordingly confirms relative that, to claim portion [41c], Woodhill discloses the step of based on said determining, if said data item [binary object] is not present at the current location [local computer 20], fetching the data item [binary object] from a remote location [remote backup file server 12] in the system to the current location [local computer 20]. (Mercer Decl., Ex. 1007, 99.) Claim 33 [33a] A method for duplicating a given data item present at a source location to a destination location in a data processing system Woodhill discloses methods of duplicating a given data item present at a source location to a destination location in a data processing system. (Mercer Decl., Ex. 1007, 100-105.) [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 Section IV.C.1, the PTABs construction of the substantially unique identifier limitation is detailed. Claim portion [33b] textually restates the all and
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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, 101.) Specifically, and as detailed with respect to each of the other challenged independent claims, Woodhill discloses that function of the Distributed Storage Manager software program is to create a Binary Object Identification Record for each binary object processed by the program. (See Ex. 1003, 7:60-62; see also Mercer Decl., Ex. 1007, 102.) [33c] determining, using the data identifier, whether the data item is present at the destination location Woodhill explains that, by calculating Binary Object Identifiers for binary objects and comparing the calculated Binary Object Identifiers against counterparts in the File Database (for already backed up binary objects), the Distributed Storage Manager program 24 is able to determine which parts of a file (constituent binary objects) have changed and only backup the changed binary objects. (See Ex. 1003, 9:9-28.) In this way, Woodhills system determines, using a Binary Object Identifier, whether the corresponding binary object is present at remote backup file server 12. (Mercer Decl., Ex. 1007, 105.)

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[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 Based on the determination (in claim portion [33d]), Woodhills system only backs up the changed or new binary objects, i.e., those not already present at remote backup file server 12. (See Ex. 1003, 9:22-27.) Dr. Mercer accordingly confirms that a person of ordinary skill would understand Woodhill to disclose determining, using the data identifier, whether the data item is present at the destination location; and 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. (Mercer Decl., Ex. 1007, 105.) Claim 35 [35a] A method for determining whether a particular data item is present in a data processing system, the method comprising: Woodhill discloses methods of determining whether a given data item present in a backup set maintained by its data processing system. (Mercer Decl., Ex. 1007, 106.) [35b] 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
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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 Section IV.C.1, the PTABs construction of the substantially unique identifier limitation is detailed. Claim portion [35b] 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, 107.) In the interest of brevity, Petitioner notes that the recited (i) determining a substantially unique identifier step is precisely that recited in claim portion [30b] and, for the same reasons detailed above, Woodhill discloses that aspect. Likewise, the portions of Woodhill that disclose the recited (ii) making and maintaining step are detailed above with respect to claim portion [31b]. For completeness, the limitations of claim portion [35b] are more exhaustively mapped to specific disclosure of Woodhill in the Mercer Decl. (Ex. 1007, 107-112.) [35c] 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;
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and (ii) determining whether the particular identifier is in the set of data items. Claim portion [35c] is also disclosed in Woodhill. (See Mercer Decl., Ex. 1007, 113-115.) Specifically, a further function of the Distributed Storage Manager program is to determine, using Woodhills Binary Object Identifier 74 (recall Mercer Decl., Ex. 1007, 51-52.), whether the binary object identified thereby has already been backed up in Woodhills system. (See Ex. 1003, 8:669:28). Operation of the Distributed Storage Manager software to perform this function is illustrated in FIG. 5A and, more specifically, described with reference to step 140 thereof. (See Ex. 1003, FIG. 5A, 8:66-9:28). Distributed Storage Manager program 24 identifies the particular binary objects that are to be backed up in a current backup cycle. (Ex. 1003, FIG. 5A, 8:66-9:2). Only those binary objects that have been changed must be backed up (Ex. 1003, 9:7-9), and the subset of binary objects that have changed is determined by comparing the Binary Object Identifiers 74 calculated in step 138 against their counterparts in the File Database 25 (Ex. 1003, 9:7-22). Dr. Mercer confirms that a person of ordinary skill in the art would understand that the determination of whether a particular binary object is backed up in Woodhills system is necessarily a determination of whether the particular binary object is in the set of data items present in the system. (Mercer Decl., Ex.
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1007, 115.) Like the 791 patent, which compares its substantially unique identifier or True Name against contents of using its True File registry, Woodhills system compares Binary Object Identifiers 74 (computed over contents of the binary object itself) against contents of its File Database 25. (See Ex. 1003, 9:7-22.) Dr. Mercer further confirms that, in each system, a substantially unique identifier computed over all the contents of a data item and only contents of the data item is compared against contents of a store or registry that contains substantially unique identifiers computed for a plurality of data items in the system, and that the comparison determines whether a particular item is present in the system. (Mercer Decl., Ex. 1007, 115.) Thus, Woodhill discloses claim portion [35c]. B. Ground #2: Claims 1-4, 29-33, 35 and 41 are Obvious over Woodhill

In Section V.A (above) detailing specific grounds under 35 U.S.C. 102(e) by which Woodhill anticipates claims 1-4, 29-33, 35 and 41, Petitioner relies on confirmations by Dr. Mercer that a person of ordinary skill in the art would understand respective aspects disclosed in Woodhill to constitute the properly construed feature of a challenged claim of the 791 patent. For example, and without limitation, with respect to challenged claims 1 and 2, Dr. Mercer confirms (in Mercer Decl., Ex. 1007, 57, 67) (1) that a person of ordinary skill in the art would understand that the determination of whether a particular binary object is
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backed up in Woodhills system is necessarily a determination of whether the particular binary object is already present in the next most recent backup and (2) that the substantially unique identifier computed over all the contents of a data item and only contents of the data item is compared against contents of a store or registry that contains substantially unique identifiers computed for a plurality of data items in the system. Likewise with respect to challenged claim 3 and 35, Dr. Mercer confirms (in Mercer Decl., Ex. 1007, 72, 115) that the determination of whether a particular binary object is backed up in Woodhills system is necessarily a determination of whether the particular binary object is already present. With respect to challenged claim 3, Dr. Mercer further confirms (in Mercer Decl., Ex. 1007, 72) that Woodhills comparison of substantially unique identifiers necessarily examines the identifiers that identify data items at a particular location in the system. Dr. Mercer also confirms relative to claims 4 and 31 that a person of ordinary skill would have understood Woodhill to (1) disclose (or at the very least suggest) creation of new entries in File Database 25, including the constituent associations between binary objects and Binary Object Identifiers 74, for newly encountered files and binary objects (Mercer Decl., Ex. 1007, 77, 93) and (2) to disclose (or at the very least suggest) maintaining entries in File Database 25, including updating the constituent associations between binary objects and Binary
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Object Identifiers 74, for changed files and binary objects (Mercer Decl., Ex. 1007, 77, 93). In the event that Patent Owner (or its expert) were to argue that facts confirmed by Dr. Mercer do not unquestionably and necessarily follow from the relied upon disclosure of Woodhill, Petitioner further challenges claims 1-4, 29-33, 35 and 41 on the grounds that Woodhill renders claims 1-4, 29-33, 35 and 41 obvious, based on the specific respectively relied upon disclosure of Woodhill, as detailed in Section V.A (above) as modified or combined with Dr. Mercers aforementioned confirmations as documented in Mercer Decl. (Ex. 1007).

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VII. Conclusion For the reasons set forth above, Petitioner has established a reasonable likelihood of prevailing with respect to at least one claim of the 791 Patent. Therefore, Petitioner asks that the Patent Office order an inter partes review trial and then proceed to cancel claims 1-4, 29-33, 35 and 41. Respectfully submitted, OBLON SPIVAK Dated: April 28, 2014 /Michael L. Kiklis/ Michael L. Kiklis Reg. No. 38,939

Customer Number 22850 Tel. (703) 413-3000 Fax. (703) 413-2220 (OSMMN 02/10)

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Petitioners Exhibit List (April 28, 2014)

PETITIONERS EXHIBIT LIST April 28, 2014 Exhibit Ex. 1001 Ex. 1002 Description U.S. Patent No. 5,978,791 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. Woodhill et al., U.S. Patent No. 5,649,196 Institution Order, IPR2014-00057, paper 9, April 15, 2014 Decision, Institution of Inter Partes Review, IPR2013-00082 Response filed Aug. 22, 2001 in prosecution of U.S. Application No.: 09/283,160, a divisional of 08/960,079 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

Ex. 1003 Ex. 1004 Ex. 1005 Ex. 1006 Ex. 1007

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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/ Michael L. Kiklis Reg. No. 38,939