PTAB

IPR2014-00066

Rackspace US Inc v. PersonalWeb Technologies LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Enforcement and Policing of Licensed Content Using Content-Based Identifiers
  • Brief Description: The ’442 patent discloses a data storage system that uses names based on the content of a data file ("content-based identifiers" or "True Names") to identify and manage files. The system uses these unique identifiers to control access, ensuring that copies of a file are provided only to authorized users, and to detect the presence of unauthorized copies on a computer.

3. Grounds for Unpatentability

Ground 1: Obviousness over Woodhill and Francisco - Claims 1, 2, 4, 23, 27, and 30 are obvious over Woodhill in view of Francisco.

  • Prior Art Relied Upon: Woodhill (Patent 5,649,196) and Francisco (Patent 4,845,715).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Woodhill disclosed the core functionalities of the ’442 patent, including a distributed storage system that uses content-based identifiers ("Binary Object Identifiers") to manage, back up, and retrieve files across a network. Woodhill taught generating a unique name from a file's contents and using that name in a request to retrieve a copy of the file. However, Woodhill only suggested the inclusion of access control data without detailing its implementation. Petitioner asserted that Francisco remedied this deficiency by teaching a method for ensuring system integrity by authenticating both software programs and users. Francisco explicitly disclosed using content-based identifiers to verify a program's authenticity and then checking the requesting user's identity against a list of authorized users before granting access.
    • Motivation to Combine: A POSITA would combine Woodhill's distributed storage and content-identification system with Francisco's well-known user authentication techniques. The motivation was to implement the access control functionality suggested but not fully detailed in Woodhill. Adding Francisco’s method of maintaining a list of authorized users was a straightforward and predictable way to ensure that files in Woodhill’s system were provided only to licensed parties.
    • Expectation of Success: A POSITA would have had a high expectation of success because combining a known user authentication method (Francisco) with a distributed data management system (Woodhill) was an application of known techniques to achieve the predictable result of a more secure system.

Ground 2: Obviousness over Woodhill and Kahn - Claim 7 is obvious over Woodhill in view of Kahn.

  • Prior Art Relied Upon: Woodhill (Patent 5,649,196) and Kahn (Patent 6,135,646).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground specifically targeted claim 7, which adds limitations requiring the data file to be a digital image and for computers in the system to communicate via TCP/IP. Petitioner contended that while Woodhill provided the foundational distributed system using content-based identifiers, Kahn supplied the missing elements. Kahn disclosed a digital rights management system specifically for controlling the delivery of "digital objects," which explicitly included digital image files. Furthermore, Kahn taught that its system components communicate via direct connections such as TCP/IP and restrict access to authorized users.
    • Motivation to Combine: A POSITA would be motivated to apply the specific digital rights management techniques of Kahn to the general distributed storage architecture of Woodhill. This would allow Woodhill's system to effectively manage and secure a common and important file type—digital images—thereby realizing the benefits of distributed storage while preventing unauthorized copying of digital media.
    • Expectation of Success: Applying Kahn's teachings on securing digital images over TCP/IP networks to Woodhill's system would have been a predictable implementation, as it involved using a known technique (digital rights management) to improve a similar system (distributed storage) for a known purpose (handling image files).

Ground 3: Obviousness over Woodhill, Francisco, and Langer - Claim 28 is obvious over Woodhill in view of Francisco and Langer.

  • Prior Art Relied Upon: Woodhill (Patent 5,649,196), Francisco (Patent 4,845,715), and Langer (a 1991 Usenet newsgroup post).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon Ground 1 to address dependent claim 28, which required the content-based function to be selected from specific cryptographic hash functions (MD4, MD5, or SHA). Petitioner asserted that Woodhill and Francisco established the foundation for claim 23, from which claim 28 depends. While Woodhill taught using a hash function to create its identifiers and noted the importance of avoiding collisions, it did not specify a particular algorithm. The Langer reference, a printed publication, directly addressed the problem of uniquely identifying files across different systems by their content. Langer explicitly suggested using a "cryptographic hash function such as MD5" for this exact purpose.
    • Motivation to Combine: A POSITA implementing the hashing function described in Woodhill would have been motivated to use a well-known, robust cryptographic hash function to enhance security and minimize the chance of collisions. Langer's explicit recommendation to use MD5 provided a clear and direct motivation to select one of the specific hash functions recited in claim 28.
    • Expectation of Success: A POSITA would have had a high expectation of success in substituting a specific, widely-known cryptographic hash function like MD5 (taught by Langer) for the generic hash function in Woodhill's system. This represented a simple and predictable design choice to improve the system's reliability.

4. Key Claim Construction Positions

  • "data file": Petitioner proposed that the Board adopt the construction from a related IPR for a parent of the ’442 patent, defining the term as "a named data item, such as a simple file that includes a single, fixed sequence of data bytes or a compound file that includes multiple, fixed sequences of data bytes."
  • Preamble of Claim 7: Petitioner argued that the preamble language "wherein some of the computers communicate with each other using a TCP/IP communication protocol" should not be given patentable weight. Petitioner asserted this phrase does not recite essential structure or steps and is not necessary to give life or meaning to the claim, as the body of the claim makes no reference to the communication protocol.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 2, 4, 7, 23, 27, 28, and 30 of the ’442 patent as unpatentable.