petition for inter partes review

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

ii

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

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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:

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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-

cv-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




10. PersonalWeb Techs. LLC v. NEC Corp. of America, Inc., No. 6-11-

cv-00655 (E.D. Tex., filed Dec. 8, 2011)(terminated).

5

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).


(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. Int’l Bus. Mach. Corp., No. 6-12-cv-

00661 (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. 6-12-

cv-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).

6

21. PersonalWeb Techs. LLC v. Amazon Web Svcs. LLC et al, No. 6-11-

cv-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

Post-grant proceeding

6,415,280 IPR2013-00083 (pending)

IPR2014-00059 (pending)

6,928,442 IPR2014-00066 (pending)

90/010,260 (ex parte reexam,

certificate issued)

7,802,310 IPR2013-00596 (pending)

IPR2014-00062 (pending)

7,945,539 IPR2013-00085 (pending)

7,945,544 IPR2013-00084 (pending)

7,949,662 IPR2013-00086 (pending)

8,001,096 IPR2013-00087 (pending)

8,099,420 IPR2014-00058 (pending)

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).

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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: [email protected] and [email protected]

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-

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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

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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:

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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 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).)

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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

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

identifiers may reside anywhere, e.g., locally, remotely, offline. (Ex. 1001, 34:11-

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.)

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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, 23:61–62.) 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:

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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.

…

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


“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


(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


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


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

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.)

32

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 Woodhill’s 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 Woodhill’s Distributed Storage Manager program is to

determine, using Binary Object Identifier 74, whether the binary object identified

thereby has already been backed up in Woodhill’s system. (See Ex. 1003, 8:66-

9:28; 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

33

“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 Woodhill’s 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,

Woodhill’s 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 Woodhill’s system

fails to examine identifiers of a plurality of data items. Dr. Mercer has considered

34

the patent owner’s 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.)

Woodhill’s Distributed Storage Manager program determines, using Binary

Object Identifier 74, whether the binary object identified thereby has already been

backed up in Woodhill’s system. (See Ex. 1003, 8:66-9:28). Operation of the

35

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



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, Woodhill’s 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

36

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 Woodhill’s system. (Ex. 1003, 4:62-5:11.)

Woodhill’s Distributed Storage Manager program determines, using Binary Object

37

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 Woodhill’s 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

38

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

39

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 Petitioner’s suggested revision of the PTAB’s 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,

40

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))

41

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

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

45

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 Woodhill’s 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

46

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

47

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.

48

(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

49

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, Woodhill’s 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

50

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 Woodhill’s system

51

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



52




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, Woodhill’s 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.)

53

[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]), Woodhill’s 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

54

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






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;

55

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 Woodhill’s Binary Object Identifier 74

(recall Mercer Decl., Ex. 1007, ¶51-52.), whether the binary object identified

thereby has already been backed up in Woodhill’s system. (See Ex. 1003, 8:66-

9:28). 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



binary object is in the set of data items present in the system. (Mercer Decl., Ex.

56

1007, ¶115.) Like the ‘791 patent, which compares its “substantially unique

identifier” or True Name against contents of using its True File registry,

Woodhill’s 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

57

backed up in Woodhill’s 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 Woodhill’s 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 Woodhill’s 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

58

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. Mercer’s

aforementioned confirmations as documented in Mercer Decl. (Ex. 1007).

59

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)

60

Petitioner’s Exhibit List (April 28, 2014)

PETITIONER’S EXHIBIT LIST April 28, 2014

Exhibit Description

Ex. 1001 U.S. Patent No. 5,978,791

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/

Michael L. Kiklis Reg. No. 38,939