PTAB

IPR2014-00980

Google Inc v. PersonalWeb Technologies LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Data Processing System Using Substantially Unique Identifiers to Identify Data Items, Whereby Identical Data Items Have the Same Identifiers
  • Brief Description: The ’791 patent describes a data processing system that generates a "substantially unique identifier" for each data item based entirely on the content of that item. This content-based identifier, termed a "True Name," allows data to be managed and accessed independent of its location or filename, enabling functions like identifying duplicate files across a system.

3. Grounds for Unpatentability

Ground 1: Claims 1-4, 29-33, 35, and 41 are anticipated by Woodhill under 35 U.S.C. §102(e)

  • Prior Art Relied Upon: Woodhill (Patent 5,649,196)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Woodhill, which describes a distributed storage management system, discloses every limitation of the challenged claims. Woodhill’s system generates a unique "Binary Object Identifier" (BOI) for each data object (a "binary object") to manage backups. Petitioner contended this BOI is the direct equivalent of the ’791 patent’s "substantially unique identifier." Specifically, Woodhill teaches calculating the BOI using values derived from "all of, and only, the contents of the binary object," such as a CRC value and a hash value. This directly maps to the core limitation of independent claims 1, 30, 33, and 35, which require the identifier to depend on all and only the data in the data item. Furthermore, Woodhill’s use of these BOIs to compare a current object against a database of previously backed-up objects to see if it has changed was argued to be an explicit disclosure of the "existence means" recited in claim 1. Dependent claims related to specific data types (claim 29) or methods of making and maintaining associations (claim 31) were also argued to be fully disclosed within Woodhill's backup and file database management procedures.
    • Key Aspects: The core of this ground rested on the assertion that Woodhill's system for identifying duplicate binary objects to optimize network backups is functionally identical to the ’791 patent’s system for identifying data items via content-based identifiers.

Ground 2: Claims 1-4, 29-33, 35, and 41 are obvious over Woodhill under 35 U.S.C. §103

  • Prior Art Relied Upon: Woodhill (Patent 5,649,196)
  • Core Argument for this Ground:
    • Prior Art Mapping: As an alternative to its anticipation argument, Petitioner argued that if any element was found not to be explicitly disclosed in Woodhill, it would have been obvious to a person of ordinary skill in the art (POSITA). This ground relied on the same disclosures in Woodhill but asserted that a POSITA would have understood the inherent properties and applications of Woodhill’s system. For example, Petitioner argued a POSITA would naturally understand that determining whether a binary object needs to be backed up by comparing its BOI to a database of existing BOIs is necessarily a determination of whether that object is already "present in the system." Similarly, a POSITA would have understood that Woodhill’s "File Database," which stores associations between binary objects and their BOIs, inherently teaches the "making and maintaining" of such associations as claimed.
    • Motivation to Combine (for §103 grounds): This ground did not involve combining references. Instead, the motivation was presented as the rationale of a POSITA to apply the explicit teachings of Woodhill to arrive at the claimed invention. The motivation was to solve the known problem of managing data in a distributed system, for which Woodhill provided a clear and effective solution using content-based identifiers.
    • Expectation of Success: Petitioner contended a POSITA would have had a high expectation of success because Woodhill describes a functioning, coherent system for distributed storage management. Applying Woodhill’s disclosed techniques for content-based identification to general file management functions would have been a straightforward implementation of its described principles.
  • Additional Grounds: Petitioner noted that a ground asserting claims 1-4 and 29 are obvious over Woodhill in view of Langer was included in a related Rackspace petition. However, because that ground was not authorized for review by the Board in the related proceeding (IPR2014-00057), Petitioner did not advance it as a ground for review in this petition.

4. Key Claim Construction Positions

  • Petitioner adopted the claim constructions previously issued by the PTAB in a decided inter partes review of the ’791 patent (IPR2013-00082). These constructions were central to Petitioner's arguments.
  • "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 construction's emphasis on "all and only" the data was critical to the mapping against Woodhill.
  • "identity means for determining..." (Claim 1): Construed as a means-plus-function term under 35 U.S.C. §112, ¶ 6.
    • Function: determining a substantially unique identifier based on all and only the data in a data item.
    • Corresponding Structure: "a data processor programmed to perform a hash function, e.g., MD5 or SHA."
  • "existence means for determining..." (Claim 1): Construed as a means-plus-function term.
    • Function: determining whether a particular data item is present in the system by examining identifiers.
    • Corresponding Structure: "a data processor programmed according to [specific steps illustrated in the patent]." Petitioner argued Woodhill's comparison of BOIs against its File Database was the same structure.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review, joinder with the proceeding in IPR2014-00057, and cancellation of claims 1-4, 29-33, 35, and 41 of the ’791 patent as unpatentable.