PTAB

IPR2013-00249

Google Inc v. WhitServe LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Onsite Backup for Internet-Based Data Processing
  • Brief Description: The ’007 patent describes a client-server system for backing up internet-based data. The system comprises a central computer maintaining a database and a client computer connected via the Internet; upon receiving a data backup request, the central computer transmits a copy of the stored data to the client computer for local, onsite storage.

3. Grounds for Unpatentability

Ground 1: Obviousness over WF Site and Seybold in view of Guck - Claims 1-9 and 11-15 are obvious over the Wells Fargo website, Seybold, and Guck.

  • Prior Art Relied Upon: WF Site (archived captures of the wellsfargo.com website from 1998), Seybold (a 1998 book titled Customers.com describing the WF Site), and Guck (Patent 5,848,415).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of the WF Site and Seybold disclosed all key elements of the challenged claims. This prior art taught an online banking system where a customer used a client computer to connect to a central bank server over the Internet to "download" account information into personal finance software. Petitioner contended this process constituted receiving a "data backup request" and transmitting a "data backup" for "onsite" storage. Seybold was used to show the system used client identification numbers (e.g., Social Security numbers) to associate data records with specific clients.
    • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would naturally combine the WF Site with Seybold because Seybold explicitly described the functionality and business strategy of the WF Site. Guck was added to supply teachings that were common knowledge but not explicit in the WF Site materials: using a dedicated database server for data storage and retrieval, and employing known techniques for reformatting and encrypting data before transmission. A POSITA would combine Guck’s teachings to implement the WF Site system using conventional database technology and to add desirable, well-known features like data conversion, yielding only predictable results.
    • Expectation of Success: The combination was asserted to be predictable because it involved applying known database and data formatting techniques to an existing online data access system.

Ground 2: Anticipation by Schrader - Claim 11 is anticipated by Schrader.

  • Prior Art Relied Upon: Schrader (Patent 5,903,881).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner noted that the Federal Circuit had previously held claim 10 of the ’007 patent, from which claim 11 depends, to be anticipated by Schrader. Claim 11 adds the limitation that "client data is encrypted prior to being sent to said client computer to be saved thereon." Petitioner argued that Schrader explicitly taught this limitation by disclosing that a "response file" containing the customer's transaction data is "encrypted ... and sent back to the personal online finance application." Therefore, because Schrader taught all limitations of claim 10 plus the additional limitation of claim 11, it anticipated claim 11.

Ground 3: Obviousness over Schrader in view of Guck - Claims 1-9 and 12-15 are obvious over Schrader in view of Guck.

  • Prior Art Relied Upon: Schrader (Patent 5,903,881) and Guck (Patent 5,848,415).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Schrader taught a comprehensive online financial system where a client computer connects to a financial institution's server to download transaction data for local storage. Schrader disclosed the core components of the claimed invention, including central and client computers, internet-based communication, data requests, and the transmission of corresponding data for onsite backup.
    • Motivation to Combine: Petitioner argued that Guck was used to supplement Schrader's teachings with respect to two conventional techniques: (i) using a dedicated database server for storing data, and (ii) reformatting and encrypting data before transmission. A POSITA would combine the online financial system of Schrader with the database and data conversion capabilities taught by Guck. This combination was argued to be obvious because integrating robust database functionality and data formatting options into a financial data system was a well-known method for enhancing performance, security, and usability, leading to predictable results.

4. Key Claim Construction Positions

  • Petitioner argued for applying the broadest reasonable interpretation standard, asserting the patent owner did not act as a lexicographer. Key proposed constructions based on ordinary meaning included:
    • "data backup": a copy of stored data.
    • "internet-based data": data that is accessible, stored, modified, or processed via the Internet.
    • "storing said data backup in a location accessible to said client computer": storing a copy of data at a location that is accessible by the client computer.

5. Relief Requested

  • Petitioner requests institution of an inter partes review for claims 1-9 and 11-15 of the ’007 patent and cancellation of those claims as unpatentable.