PTAB

IPR2014-00978

Google Inc v. PersonalWeb Technologies LLC

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Controlling Access to Data in a Data Processing System
  • Brief Description: The ’310 patent describes a data processing system that uses content-based identifiers, termed "True Names," to identify and manage data items in a network. These identifiers are generated by applying a function (e.g., a message digest) to a data item's content, creating a unique name that is independent of the data's location or context, which can then be used for purposes such as access control and license verification.

3. Grounds for Unpatentability

Ground 1: Obviousness over Woodhill and Francisco - Claims 1-2, 5-8, 10-11, 14, 16-19, 24, 29, 32, 70, and 81-82 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 a distributed storage management system that uses content-dependent "Binary Object Identifiers" (BOIs) to uniquely identify and manage file backups. These BOIs are generated using a hash function calculated from all of the contents of a data object. This teaching meets the claim limitations of generating a content-based name for a data item and comparing it against a database of identifiers. However, Woodhill only passively tracks data and does not actively authorize access based on the BOI. Francisco was argued to cure this deficiency by teaching a system that uses content-based "electronic identification indicia" to determine whether a user is authorized to use a specific program, comparing the program's identifier against an authorized user library and granting or denying access accordingly.
    • Motivation to Combine: Petitioner asserted that Woodhill explicitly mentioned that data streams in its system could represent access control lists (ACLs), signaling the desirability of access control. A person of ordinary skill in the art (POSITA), seeing this suggestion, would combine Woodhill's content-based identification system with a known authorization mechanism like that taught in Francisco. The combination would use Woodhill’s BOIs as the input for Francisco's authorization check to create a complete system for content-based access control.
    • Expectation of Success: A POSITA would have had a high expectation of success because combining the references involved applying Francisco's conventional authorization method to Woodhill's file identification system in a predictable manner to achieve the known benefit of secured access.

Ground 2: Obviousness over Woodhill, Francisco, and Langer - Claim 12 is obvious over Woodhill and Francisco in further view of Langer.

  • Prior Art Relied Upon: Woodhill (Patent 5,649,196), Francisco (Patent 4,845,715), and Langer (a 1991 Usenet article).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground built upon the combination of Woodhill and Francisco to address the additional limitations of dependent claim 12, which requires the message digest or hash function to be selected from MD4, MD5, or SHA. While Woodhill and Francisco taught the use of hash functions generally, Langer was cited for its specific disclosure of computing a unique identifier for a data item using the MD5 algorithm.
    • Motivation to Combine: Petitioner argued that a POSITA implementing the access control system of Woodhill and Francisco would need to select a specific, robust hash algorithm. Langer provided an express teaching that MD5 was a well-known and suitable choice for creating unique file identifiers. This made it a natural and obvious choice for the POSITA to implement in the combined system.
    • Expectation of Success: Integrating a standard, well-documented hash function like MD5 (as taught by Langer) into the combined system of Woodhill and Francisco would have been a routine design choice with predictable results.

  • Additional Grounds: Petitioner noted that it was not advancing invalidity grounds based on combinations of Kinetech (WO 96/32685), Brunk (Patent 7,289,643), and Francisco. These grounds were asserted in a related IPR but were not instituted by the Board, and Petitioner included them only for consistency while seeking joinder.

4. Key Claim Construction Positions

  • Petitioner requested that the Board adopt the claim constructions from its institution decision in the related IPR proceeding (IPR2014-00062), which this petition sought to join. Key adopted constructions included:
    • "content-based name": Construed as "an identifier for a data item 'being based at least in part on a given function of at least some of the bits in the particular sequence of bits of the particular data item.'"
    • "substantially unique identifier": Construed as "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." This term was relevant to arguments regarding priority.

5. Key Technical Contentions (Beyond Claim Construction)

  • A central contention underlying the petition was that the challenged claims were not entitled to their asserted priority date.
    • Petitioner argued that the claim limitation requiring the identifier to be based on "at least some of the content" lacked written description support in the priority applications, which allegedly only disclosed identifiers based on "all of the data."
    • This "at least some of" language was added in a 2010 amendment, nearly 15 years after the earliest alleged priority date. This lack of priority support was the basis for asserting that certain references (like the 1996 Kinetech publication) qualified as prior art, although the grounds relying on this argument were not advanced in this specific petition.

6. Relief Requested

  • Petitioner requested that the Board institute an inter partes review, join the proceeding with IPR2014-00062, and cancel claims 1-2, 5-8, 10-12, 14, 16-19, 24, 29, 32, 70, 81-82, and 86 of the ’310 patent as unpatentable.