PTAB

IPR2014-00979

Google Inc v. PersonalWeb Technologies LLC

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Enforcement and Policing of Licensed Content Using Content-Based Identifiers
  • Brief Description: The ’442 patent describes data storage systems that identify data files using names ("True Names") generated from the file's own content, rather than its location or pathname. This system uses these content-dependent identifiers to manage files across a distributed network, reduce redundant copies, and implement an access control method to prevent unauthorized access.

3. Grounds for Unpatentability

Ground 1: Obviousness over Woodhill and Francisco - Claims 1, 2, 4, 23, 27, and 30 are obvious over [Woodhill](https://ai-lab.exparte.com/case/ptab/IPR2014-00979/doc/1004) in view of [Francisco](https://ai-lab.exparte.com/case/ptab/IPR2014-00979/doc/1005).

  • 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 teaches the core method of a distributed file system where files are identified by content-based names. Woodhill discloses generating unique "Binary Object Identifiers" using functions (including a hash) on the contents of a data object for purposes of distributed backup and restoration. This system involves distributing files across a network of computers and responding to requests for those files based on their content-based identifiers. Petitioner asserted that Francisco supplies the limitation of providing a file "only to licensed parties." Francisco discloses a system for maintaining data integrity by authenticating both software programs and their users, using content-based identifiers to verify a program's authenticity and then checking against a list of authorized users before allowing access.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Woodhill’s distributed storage system, which already suggested including access control data, with Francisco’s well-known user authentication techniques. The combination would have been a predictable way to implement a complete and secure file management system by adding a known security layer to a known storage architecture.
    • Expectation of Success: Petitioner contended that combining these known elements—a distributed storage method and a user authentication method—was straightforward and would have been met with a high expectation of success.

Ground 2: Obviousness over Woodhill and Kahn - Claim 7 is obvious over Woodhill in view of [Kahn](https://ai-lab.exparte.com/case/ptab/IPR2014-00979/doc/1006).

  • Prior Art Relied Upon: Woodhill (Patent 5,649,196) and Kahn (Patent 6,135,646).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that claim 7 is similar to claim 1 but adds limitations that the data file represents a "digital image" and that computers communicate using a "TCP/IP communication protocol." Woodhill was argued to provide the foundational distributed storage system using content-based identifiers. Kahn was cited to explicitly teach a digital rights management system for storing and controlling the delivery of digital objects, specifically including images, to authorized users. Kahn’s system also expressly discloses that communications between components occur via direct connections such as TCP/IP.
    • Motivation to Combine: A POSITA would be motivated to combine the digital rights management techniques of Kahn with Woodhill's distributed storage system. This would allow the known benefits of distributed storage to be applied to the common file type of digital images while simultaneously inhibiting unauthorized copying, achieving a predictable result by utilizing two existing capabilities.
    • Expectation of Success: Integrating a specific, common file type (digital images) and a standard network protocol (TCP/IP) into Woodhill's more general storage system was presented as a routine design choice with a clear expectation of success.

Ground 3: Obviousness over Woodhill, Francisco, and Langer - Claim 28 is obvious over Woodhill in view of Francisco and [Langer](https://ai-lab.exparte.com/case/ptab/IPR2014-00979/doc/1007).

  • 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 builds on the combination of Woodhill and Francisco for claim 23 (obtaining a list of content-based file names to determine if unauthorized copies exist). It addresses dependent claim 28, which further requires the function used to generate the name to be selected from MD4, MD5, or SHA. Petitioner argued that while Woodhill teaches using a generic "hash function" and recognizes the importance of minimizing identifier collisions, it does not specify a particular algorithm. The Langer reference, a public newsgroup post, was cited as remedying this by explicitly suggesting the use of a "cryptographic hash function such as MD5" to generate unique identifiers from file contents to solve the exact problem of identifying identical files across different systems.
    • Motivation to Combine: A POSITA implementing the system of Woodhill and Francisco would need to select a specific, robust hash function to ensure the uniqueness of the file identifiers, as Woodhill itself advised. The POSITA would have been motivated to look to known, publicly discussed solutions like MD5, as taught by Langer, to implement this feature in a predictable and effective manner.

4. Key Claim Construction Positions

  • "data file": Petitioner proposed that the Board adopt the construction from its decision to institute the related Rackspace IPR (IPR2014-00066), which construed 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 also proposed adopting the Board’s prior decision in the Rackspace IPR that the preamble phrase “wherein some of the computers communicate with each other using a TCP/IP communication protocol” is entitled to patentable weight.

5. Relief Requested

  • Petitioner requests institution of an inter partes review, joinder with the proceeding in IPR2014-00066, and cancellation of claims 1, 2, 4, 7, 23, 27, 28, and 30 of the ’442 patent as unpatentable.