Google LLC v. Kove Io Inc

1. Case Identification

• Case #: IPR2024-01021
• Patent #: 7,233,978
• Filed: June 28, 2024
• Petitioner(s): Google LLC
• Patent Owner(s): Kove IO, Inc.
• Challenged Claims: 2-7, 10-17, 23-26, and 30

2. Patent Overview

• Title: Distributed Network Storage System
• Brief Description: The ’978 patent describes a system for storing and retrieving information across a network using a plurality of location servers. The system uses a network-distributed-tracking protocol (NDTP) where clients can query servers with an identifier to receive location information for a corresponding data entity.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kahn - Claims 1, 3, 5, 6, 10, and 12-16 are obvious over Kahn.

• Prior Art Relied Upon: Kahn (WO Application # 1997/043717).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kahn, which describes a system for managing digital objects stored in network repositories, discloses every limitation of the challenged claims. Kahn’s system uses "handle servers" (a plurality of location servers) that store mappings between "handles" (identifiers) and "pointers" (location strings) to locate digital objects. A client in Kahn obtains a handle, generates a hash code to determine the correct handle server, and sends a request to that server, which returns the corresponding pointer. Petitioner contended this system meets the limitations of independent claim 1, including first and second location servers with differing sets of location information and programming logic to return a location message.
  • Motivation to Combine (for §103 grounds): As a single-reference ground, Petitioner argued that to the extent any feature was not explicitly disclosed, it would have been obvious to a person of ordinary skill in the art (POSITA) to implement it. For instance, if Kahn was found not to explicitly return the handle with the pointer, a POSITA would find it obvious to do so to allow the client to verify that the returned pointers correspond to the correct request, ensuring transaction integrity.
  • Expectation of Success (for §103 grounds): A POSITA would have had an expectation of success in making any minor modifications, as they would involve applying known technologies (e.g., transmitting an identifier with its associated data) to yield a predictable result.

Ground 2: Obviousness over Kahn and Krasner - Claims 2 and 11 are obvious over Kahn in view of Krasner.

• Prior Art Relied Upon: Kahn (WO Application # 1997/043717) and Krasner (Patent 6,104,338).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that while Kahn taught the base system of location servers, it did not explicitly disclose storing a "plurality of geographic locations" representing an entity's position at different times, as required by claims 2 and 11. Krasner allegedly supplied this missing element by teaching a client-server system for tracking the location of a mobile GPS receiver over time, where location servers store time-stamped location information.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Kahn and Krasner to add the beneficial capability of tracking a physical object's location over time to Kahn's robust digital object location system. This would have been a predictable combination of known systems to achieve a known goal.
  • Expectation of Success (for §103 grounds): Success was expected because it involved applying Krasner’s known method of storing geographic location data to Kahn's known system for storing data, a straightforward application of known technologies to yield a predictable result.

Ground 3: Obviousness over Kahn and Vingralek - Claims 3-4, 7, 10, 12-17, 23, and 30 are obvious over Kahn in view of Vingralek.

• Prior Art Relied Upon: Kahn (WO Application # 1997/043717) and Vingralek (a 1993 publication titled "Distributed file organization with scalable cost/performance").

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted this combination to address, among other things, the "redirect message" limitation in claims 3 and 10. While Kahn taught that a server returns a "not responsible" message if it does not have the requested handle, Vingralek taught a more detailed deferred update mechanism. In Vingralek’s hash-based distributed file system, if a client request reaches the wrong server due to a stale address table, that server forwards the request to the correct server and sends a message to the client with information to update its table. This, Petitioner argued, is the claimed "redirect message comprising information for finding a location server known to have location information." This combination was also used to argue the obviousness of scaling server capacity based on performance criteria (claims 17, 23, 30), which Vingralek taught through load management techniques like redistributing data "buckets" when a server reaches its "panic load capacity."
  • Motivation to Combine (for §103 grounds): A POSITA would combine Vingralek’s deferred update and scaling methods with Kahn’s system to improve scalability and reduce communication overhead. Implementing Vingralek’s efficient redirect mechanism would prevent the client from having to re-download the entire directory, a clear benefit consistent with Kahn's goal of scaling.
  • Expectation of Success (for §103 grounds): Both references relate to hash-based distributed file systems, making the combination straightforward. A POSITA would have reasonably expected success in modifying Kahn’s system to incorporate Vingralek’s improved update and scaling methods.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Kahn, Vingralek, and Krasner for claim 11, and combining Kahn, Vingralek, and Sato (Japanese Application # H09-231180) for claims 24-26 to teach scaling based on a "transaction rate limit."

4. Key Claim Construction Positions

• Petitioner argued that no special claim constructions were necessary. However, Petitioner noted that even under the constructions for terms like "identifier," "location server," and "plurality of location servers" adopted in a prior AWS IPR proceeding and related district court case, the challenged claims are rendered obvious by the asserted prior art. Petitioner’s arguments were framed to demonstrate unpatentability even if the Board were to apply these prior constructions.

5. Arguments Regarding Discretionary Denial

• Petitioner argued extensively that discretionary denial would be inappropriate.
  • Under §325(d): The petition asserted it presented new prior art combinations and arguments materially different from those considered during prosecution or in prior ex parte reexaminations and a denied IPR filed by a different party (AWS), in which Petitioner had no involvement.
  • Under Fintiv: Petitioner argued the factors weigh strongly against denial. The co-pending district court case is in a very early stage, with discovery stayed. Citing statistics for the Northern District of Illinois, Petitioner contended that a trial would not occur until well after a Final Written Decision in the IPR. Petitioner asserted it filed the IPR diligently after the Patent Owner served its infringement contentions.

6. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 2-7, 10-17, 23-26, and 30 as unpatentable.