PTAB

IPR2019-01019

Dropbox Inc v. WhitServe LLC

Log In

1. Case Identification

2. Patent Overview

  • Title: Onsite Backup for Internet-Based Data Processing Systems
  • Brief Description: The ’437 patent describes a client-server system where a central data processing system stores and processes internet-based data. The system allows a client computer to remotely display, update, and delete the data, and crucially, transmits a backup copy of the stored data from the central system to the client computer for local ("onsite") storage.

3. Grounds for Unpatentability

Ground 1: Obviousness over Amstein, Mantha, and Glenn - Claims 1-5, 8, 10, 11, 13, 15, 16, and 18-20 are obvious over Amstein in view of Mantha and Glenn.

  • Prior Art Relied Upon: Amstein (Patent 5,793,966), Mantha (Patent 6,163,779), and Glenn (DLib Magazine, Sep. 1998).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Amstein taught the core of the claimed invention: a client-server system for authoring online services where a client remotely causes a server to perform operations, including creating, modifying, updating, and deleting documents and meta-information. Amstein also disclosed that clients could retrieve documents from the server. To the extent Amstein did not explicitly teach storing a permanent local "backup copy" on the client's hard drive, Mantha supplied this teaching by disclosing a method for saving a web page to a local hard drive for offline access. Finally, Glenn was cited to teach the "third party" management limitation, disclosing that a web server could be operated by a remote or "third-party" service provider, distinct from the client user.
    • Motivation to Combine: A POSITA would combine Amstein and Mantha to provide a user with the predictable benefit of offline access to their remotely authored content, which is a simple application of a known technique (local saving) to a similar system. A POSITA would incorporate Glenn's teaching of a third-party server because it represented a choice from a finite number of predictable business arrangements (e.g., self-hosted vs. third-party hosted) and would improve security and scalability when facilitating multiple remote authors, as described in Amstein.
    • Expectation of Success: Success was expected because combining the references involved applying known techniques (local save, third-party hosting) to a standard client-server architecture to achieve the predictable results of local data availability and third-party management.

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

  • Prior Art Relied Upon: Amstein (Patent 5,793,966), Mantha (Patent 6,163,779), Glenn (DLib Magazine, Sep. 1998), and Chang (Patent 6,219,700).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination in Ground 1 to address claims requiring that "maintenance and upgrades" to the central computer be performed by the third party, not by clients. While the primary combination established a third-party managed server, Chang was added to explicitly teach that the duties of such a third party (termed a "system administrator" in Chang) include performing software maintenance and upgrades on the servers they manage.
    • Motivation to Combine: A POSITA would have been motivated to incorporate Chang's teachings into the Amstein/Mantha/Glenn system as a simple substitution of a general third-party administrator with one performing specific, well-known, and necessary tasks. It would have been obvious that a third-party managed server would require maintenance, and Chang provided a known method for performing it, leading to the predictable result of a properly functioning and up-to-date server.
    • Expectation of Success: A POSITA would expect success because delegating server maintenance and upgrades to a specialized third-party administrator was a common and well-understood practice in network management, ensuring server reliability without burdening end-users.

Ground 3: Obviousness over Amstein, Mantha, Glenn, and Elgamal - Claims 9 and 17 are obvious over Amstein in view of Mantha, Glenn, and Elgamal.

  • Prior Art Relied Upon: Amstein (Patent 5,793,966), Mantha (Patent 6,163,779), Glenn (DLib Magazine, Sep. 1998), and Elgamal (Patent 5,657,390).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination in Ground 1 to address claims requiring that the backup copy be "securely sent" using "one or more encryption features." While Amstein suggested security was important in client-server communications, Elgamal was added to explicitly teach a method for securing such communications. Elgamal disclosed using encryption (such as via an SSL library) to secure data transmitted between a client and a server.
    • Motivation to Combine: A POSITA, recognizing the known security concerns in internet communications that Amstein itself contemplated, would have been motivated to implement the known security techniques of Elgamal. Adding encryption to the Amstein/Mantha/Glenn system was an obvious way to improve it by protecting data in transit, a common problem with a well-known, predictable solution.
    • Expectation of Success: There was a high expectation of success, as implementing encryption protocols like SSL in client-server systems was a standard and predictable method for enhancing security without negatively affecting the system's primary functions of data management and transfer.

4. Key Claim Construction Positions

  • "Backup Copy": Petitioner proposed this term means "a copy of stored data." This construction is based on the patent's specification and its plain meaning, arguing that it does not require the copy to be for archival or disaster recovery purposes, but simply a copy.
  • "Internet-Based Data": Petitioner proposed this term means "data that is capable of being modified via the Internet." This construction, allegedly adopted in a related IPR, supports the application of prior art related to remote authoring and management of web content to the claim limitations.

5. Relief Requested

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