PTAB

IPR2019-01018

Dropbox Inc v. WhitServe LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System for Onsite Backup of Internet-Based Data
  • Brief Description: The ’437 patent describes a client-server system for processing internet-based data. It purports to solve a prior art deficiency by enabling a central data processing system not only to manage the data but also to transmit a backup copy of that data to a client computer for onsite storage.

3. Grounds for Unpatentability

Ground 1: Claims 1-5, 8, 10, 11, 13, 15, 16, and 18-20 are obvious over Amstein.

  • Prior Art Relied Upon: Amstein (Patent 5,793,966).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Amstein, which discloses a client-server system for authoring and maintaining online services, teaches all key limitations of the independent claims. Amstein’s system allows a client to connect to a server to remotely display, update, and delete documents and associated meta-information. Petitioner argued Amstein's hierarchical file system on the server acts as the claimed "database containing a plurality of data records," and its use of validated user names for access constitutes the "plurality of client identifiers." Furthermore, Amstein’s client can issue a "GET_DOCUMENT" command to retrieve a document from the server and keep "local copies" on the client machine, which Petitioner asserted meets the "transmitting a backup copy" limitation.
    • Motivation to Combine (for obvious modifications): For the limitation that the server be "managed by a third party," Petitioner contended this was an obvious modification of Amstein. Because Amstein describes a system accessible by multiple authors, a POSITA would be motivated by security concerns to separate administrative control from user access. Petitioner argued that having a third-party administrator was one of a finite number of predictable solutions for managing such a server, a practice admitted as known in the ’437 patent’s own specification. This modification was presented not as an inventive step, but as a simple design choice from a limited number of known options.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in segregating server management to a third party to predictably improve security and administration in Amstein’s multi-user environment.

Ground 2: Claims 6, 7, 12, and 14 are obvious over Amstein in view of Chang.

  • Prior Art Relied Upon: Amstein (Patent 5,793,966) and Chang (Patent 6,219,700).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed dependent claims requiring that "maintenance and upgrades to said central computer are performed by the third party and not by clients." Petitioner asserted that Amstein teaches a central computer managed by a third-party system administrator with exclusive server access. To explicitly add the functions of maintenance and upgrades, Petitioner relied on Chang, which describes a system administrator's typical duties as including "upgrading... the software" and performing "maintenance... [of] application software residing on... the servers." The combination establishes that the third-party administrator in Amstein would perform these specific tasks, not the end-users.
    • Motivation to Combine: A POSITA would combine Amstein’s third-party administrator with the explicit functions taught in Chang as a matter of simple substitution and applying a known technique to improve a similar device. It would have been obvious to assign the known, routine tasks of server maintenance and upgrading (from Chang) to the administrator role already present in Amstein’s system to achieve the predictable result of a well-maintained server.
    • Expectation of Success: As both references describe similar network environments with clients, servers, and administrators, a POSITA would have a high expectation of success in applying the standard administrative tasks from Chang to the Amstein system to ensure its proper function.

Ground 3: Claims 9 and 17 are obvious over Amstein in view of Elgamal.

  • Prior Art Relied Upon: Amstein (Patent 5,793,966) and Elgamal (Patent 5,657,390).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed dependent claims requiring the backup copy to be "securely sent... using one or more encryption features." Petitioner argued that while Amstein’s system provides for the transmission of backup copies and acknowledges security needs, Elgamal provides the specific teaching of encryption. Elgamal discloses an HTTP server that uses a "server side SSL library" to encrypt information before transmitting the "encrypted message" to a client. This combination teaches sending an encrypted backup copy, as the data encrypted by Elgamal's server would include the backup data being sent to the client.
    • Motivation to Combine: A POSITA would be motivated to combine the teachings to address the known problem of insecure data transmission. Since Amstein already suggests security is a concern, a POSITA would naturally look to well-known solutions like the SSL encryption taught by Elgamal and apply it to Amstein's system. Implementing the SSL protocol would involve nothing more than combining prior art elements (a client/server protocol and an encryption layer) according to known methods to yield a predictable result.
    • Expectation of Success: Success was expected because applying known encryption protocols to standard client-server data transmissions was a routine, predictable, and common practice in the art used to enhance system security.

4. Key Claim Construction Positions

  • "Backup Copy": Petitioner proposed this term be construed as "a copy of stored data." This construction is central to its argument that Amstein’s teaching of downloading a "local copy" of a document from a server satisfies the "backup copy" limitation.
  • "Internet-Based Data": Petitioner proposed this term means "data that is capable of being modified via the Internet." This construction supports the argument that the remotely modifiable documents in Amstein's system meet this claim limitation.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of the ’437 patent as unpatentable.