Dropbox, Inc. v. WhitServe LLC

1. Case Identification

• Case #: IPR2019-01018
• Patent #: 8,812,437
• Filed: May 2, 2019
• Petitioner(s): Dropbox, Inc.
• Patent Owner(s): WhitServe LLC
• Challenged Claims: 1-20

2. Patent Overview

• Title: System for Onsite Backup of Internet-Based Data
• Brief Description: The ’437 patent describes a system for providing an onsite backup of internet-based data. The system features a central computer that allows a remote client computer to display, update, and delete data stored on the central computer, and also to receive a transmitted backup copy of that data for storage at the client site.

3. Grounds for Unpatentability

Ground 1: Obviousness over Amstein - 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 was not considered during prosecution, teaches every limitation of the independent claims. Amstein discloses a client/server system for authoring online services where a client machine can remotely cause a server to perform operations, including creating, modifying, and deleting documents and meta-information. The client can also download and keep local copies of these documents, which Petitioner equated to the ’437 patent’s “onsite backup.” Petitioner asserted that Amstein’s “server machine” is the claimed “central computer,” its client/server communication over a network is “via the Internet,” and its teaching of system administrators having exclusive server access separate from client "service authors" discloses management by a “third party.”
  • Motivation to Combine (for §103 grounds): Petitioner argued that even if Amstein did not explicitly disclose that the server is managed by a "third party," it would have been obvious. A person of ordinary skill in the art (POSITA) would understand that outsourcing data processing to third-party systems was a known, predictable solution. Given security concerns raised by Amstein for multi-user access, a POSITA would be motivated to use a separate third party to manage the server.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success in implementing a third-party-managed server in Amstein’s system as it was one of a finite number of predictable solutions for server administration.

Ground 2: Maintenance and Upgrades - 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 the central computer be performed by the third party, not the clients. While Amstein teaches a third-party system administrator, it does not explicitly detail their duties. Chang, which also describes a client/server network, explicitly teaches a system administrator who performs maintenance and upgrades on server software.
  • Motivation to Combine (for §103 grounds): A POSITA would combine these references to improve Amstein's system. It would have been a simple substitution of a known element (Chang’s specific administrator duties) for a general one (Amstein’s administrator access) to yield the predictable result of keeping the server up-to-date for hosting client services. This combines prior art elements according to known methods to yield predictable results.
  • Expectation of Success (for §103 grounds): A POSITA would have expected success in applying Chang’s teachings, as both references describe similar network architectures, and performing server maintenance is a routine, well-known task for system administrators.

Ground 3: Secure Transmission - 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 of data to be sent “securely” using “one or more encryption features.” Amstein suggests security through HTTP protocols and mentions encrypting client-to-server POST messages. However, for robust, secure server-to-client transmission, Petitioner relied on Elgamal. Elgamal explicitly teaches encrypting information transferred over a network from a server to a client using protocols like SSL.
  • Motivation to Combine (for §103 grounds): A POSITA would be motivated to incorporate Elgamal’s encryption to improve the security of Amstein's system. Since Amstein already acknowledges the importance of security, adding Elgamal’s well-known two-way encryption method would be an obvious way to provide increased security, a predictable improvement.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success, as adding established encryption protocols to client-server communications was a common and predictable technique for improving data security.

4. Key Claim Construction Positions

• "Backup Copy": Petitioner proposed this term means "a copy of stored data." This construction is based on the plain meaning within the specification and was allegedly adopted by the PTAB in a Final Written Decision for a parent patent.
• "Internet-Based Data": Petitioner proposed this term means "data that is capable of being modified via the Internet." This construction was also allegedly adopted by the Board in the IPR of the parent patent and is consistent with the specification's focus on outsourced data processing on a central server.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that institution is proper and not redundant with a concurrently filed petition (IPR2019-01019) because the other petition relies on a different combination of references and different teachings to address the claim limitations.
• Petitioner also argued against discretionary denial under §325(d), asserting that the primary prior art references (Amstein, Chang, Elgamal) were never considered during the original prosecution. Furthermore, Petitioner contended the Examiner's reasons for allowance were based on a fundamental misunderstanding of the outcome of a prior inter partes review (IPR) involving the parent patent, erroneously citing a Patent Owner's preliminary filing as a final Board decision.

6. Relief Requested

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