Google Inc v. PersonalWeb Technologies LLC

1. Case Identification

• Case #: IPR2014-00977
• Patent #: 6,415,280
• Filed: June 18, 2014
• Petitioner(s): Google Inc. and YouTube, LLC
• Patent Owner(s): Personalweb Technologies, LLC and Level 3 Communications, LLC
• Challenged Claims: 10, 15, 16, 18, 25, 31-33, 36, and 38

2. Patent Overview

• Title: Identifying and Requesting Data in Network Using Identifiers Based on Contents of Data
• Brief Description: The ’280 patent discloses methods for distributing and retrieving files across a data processing network using content-based, location-independent unique identifiers, termed "True Names." This system is presented as an improvement over prior art systems that allegedly relied solely on context-based identifiers like pathnames.

3. Grounds for Unpatentability

Ground 1: Claims 10, 15, 16, 18, 25, 36, and 38 are anticipated under 35 U.S.C. § 102(e) by Woodhill.

• Prior Art Relied Upon: Woodhill (Patent 5,649,196).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Woodhill’s disclosure of a distributed storage management system reads on every limitation of the challenged claims. Woodhill teaches using a "Binary Object Identifier" to uniquely identify data objects, where this identifier is calculated based on the contents of the object (using CRC, LRC, and hash values). This directly corresponds to the ’280 patent’s core concept of determining a data identifier using a function of the data file's contents. Petitioner further asserted that Woodhill’s system operates on a network of computers that function as both clients and servers, where a client can use the content-based identifier to request and retrieve a data file from a server, thus meeting the method limitations of independent claim 10. For dependent claims, Petitioner pointed to Woodhill's "File Prioritization" process, which considers network resource availability and transmission limitations, as disclosing the limitations of resolving requests based on server availability or bandwidth measurements (claims 15-16).

Ground 2: Claims 10, 15, 16, 18, 25, 31-33, 36, and 38 are obvious under 35 U.S.C. § 103 over Woodhill in view of Langer.

• Prior Art Relied Upon: Woodhill (Patent 5,649,196) and Langer (an August 1991 post to the "alt.sources" newsgroup).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that Woodhill teaches all claim elements except for the specific use of an MD5 hash function, which is explicitly taught by Langer. While Woodhill discloses using a content-based hash to ensure a low probability of identifier collision, it does not name a specific algorithm. Langer, addressing the identical problem of uniquely identifying files across different systems, expressly suggests using a cryptographic hash function such as MD5 on the entire contents of a file. Petitioner argued that combining Langer's specific MD5 hash suggestion with Woodhill's distributed storage system renders the claims requiring an MD5 hash (claim 31) and its dependents obvious.
  • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine the teachings because both references address the same problem of managing data in distributed systems via content-based identifiers. A POSITA implementing Woodhill’s system, which seeks a robust content-based identifier, would have naturally looked to known cryptographic hash functions like MD5, as suggested by Langer, to improve the system’s reliability and minimize collisions. The combination was presented as a simple substitution of a known element (MD5 hash) into a known system to achieve a predictable and improved result.
  • Expectation of Success: A POSITA would have had a high expectation of success in this combination. Applying a well-understood hash function like MD5, specifically designed for creating unique digital fingerprints, to Woodhill’s content-based identification method would have been a straightforward implementation with predictable outcomes.

4. Key Claim Construction Positions

Petitioner stated its analysis was consistent with the broadest reasonable interpretation standard and adopted several constructions already established by the Patent Trial and Appeal Board in a related, previously instituted IPR (IPR2014-00059) involving the same patent.

• "data file": Construed 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."
• "data identifier": Construed as a "substantially unique identifier for a particular element."
• "a network of servers": Construed as "a network of processors acting as servers, at least part of the time."
• Preamble of claims 36 and 38 ("a network comprising a plurality of processors..."): Determined to have patentable weight and construed as "a network comprising a plurality of processors, some of the processors acting as servers and some of the processors acting as clients, at least part of the time."

5. Relief Requested

• Petitioner requested the institution of an inter partes review, joinder with the concurrently pending IPR2014-00059, and the cancellation of claims 10, 15, 16, 18, 25, 31-33, 36, and 38 of Patent 6,415,280 as unpatentable.