PERSONAL WEB TECHNOLOGIES, LLC (ASSIGNEE) et al. | LEVEL 3 COMMUNICATIONS, LLC

Patent Trials and Appeals Board

Jul 1, 2020

2020000459 (P.T.A.B. Jul. 1, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/013,764 06/10/2016 6928442 JAR-5980-11 1680
23117 7590 07/01/2020
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
PEIKARI, BEHZAD
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/01/2020 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte PERSONAL WEB TECHNOLOGIES, LLC, and
LEVEL 3 COMMUNICATIONS, LLC
Patent Owner and Appellant
________________

Appeal 2020-000459
Reexamination Control 90/013,764
Patent 6,928,442 B2
Technology Center 3900
________________

Before KEVIN F. TURNER, BRADLEY W. BAUMEISTER, and
IRVIN E. BRANCH, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(b) and 306, Patent Owner1 appeals from
the final rejection of claim 7 of US 6,928,442 B2, issued to Farber et al.
Aug. 9, 2005, (“the ’442 patent”). 2019 Appeal Br. 30. We have
jurisdiction under 35 U.S.C. § 6(b). Oral argument was conducted
January 30, 2020. A transcript of the argument is of record.
We REVERSE.

1 Patent Owner identifies PersonalWeb Technologies, LLC and Level 3
Communications, LLC as the real party in interest. Appeal Brief filed
July 22, 2019 (“2019 Appeal Br.”) 1.
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STATEMENT OF THE CASE
Overview of the Procedural History
This is Patent Owner’s second appeal to the Board of the Examiner’s
rejection of claim 7 of the ’442 patent. In our prior Decision (Ex parte
Personal Web Technologies, LLC, and Level 3 Communications, LLC,
2018-003936 (mailed Sept. 25, 2018) (“the ’3936 Decision”), we reversed
the Examiner’s two obviousness rejections of claim 7 under 35 U.S.C.
§ 103(a). We then exercised our discretionary authority under 37 C.F.R.
§ 40.50(b), issuing two new grounds of rejection, both also under 35 U.S.C.
§ 103(a) and also over the same respective prior-art references. See
’3936 Decision. The differences in the reasoning between the Examiner’s
original grounds of rejection and the Board’s new grounds of rejection are
addressed in more detail, below.
In response to the Board issuing the new grounds of rejection and in
accordance with 37 C.F.R. § 4.50(b)(1), Patent Owner filed a Request to
Reopen Prosecution on November 26, 2018, which request was
accompanied by new evidence. After considering Patent Owner’s new
evidence and arguments, the Examiner maintained the obviousness
rejections of claim 7. Final Act. 4 (mailed Mar. 20, 2019) (“2019 Final
Act.”). Patent Owner now appeals these new grounds of rejection. See
2019 Appeal Br.
The present appeal also is the latest appeal of various related
proceedings. See 2019 Appeal Br. 2–26 (listing approximately 167 related
court proceedings, eight related reexaminations before the USPTO, and
29 inter parte reviews). Particularly relevant, and discussed below, is the
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2019 decision of the Court of Appeals for the Federal Circuit regarding
Patent Owner’s appeal of the final written decision of the Board in an inter
partes review IPR2013-00596 of US 7,802,310 B2. PersonalWeb
Technologies, LLC v. Apple, Inc., 917 F.3d 1376 (Fed. Cir. 2019)
(“PersonalWeb II”).
The Claimed Invention
Patent Owner describes the present invention as follows:
Data files are distributed across a plurality of computers.
The computers may form a network such as a content delivery
network (CDN) or a peer-to-peer network. The network may
operate as a TCP/IP network such as the Internet. Data files may
represent [] digital messages, images, videos or audio signals.
For content—data items or files in the system—a name is
obtained (or determined), where the name is based, at least in
part, on a given function of the data in a data item or file. The
given function may be a message digest or hash function, and it
may be MD4, MD5, and SHA. A [copy] of a requested file is
only provided to licensed (or authorized) parties. The system
may check one or more computers for unauthorized or
unlicensed content. Content is served based on a measure of
availability of servers.
Abstract.
Claim 7 is the sole claim on appeal:
7. A method, in a system in which a plurality of files are
distributed across a plurality of computers, wherein some of the
computers communicate with each other using a TCP/IP
communication protocol, the method comprising:
obtaining a name for a data file, the contents of said data
file representing a digital image, the name having been
determined using at least a given function of the data in the data
file, wherein the data used by the given function to determine
the name comprises the contents of the data file; and
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in response to a request for the data file, the request
including at least the name of the data file, providing a copy of
the file from a given one of the plurality of computers, wherein
a copy of the requested file is not provided to unlicensed parties
or to unauthorized parties.
References
The Examiner relies upon the following prior art:
Name Reference Date
Woodhill2 US 5,649,196 July 15, 1997
Kahn US 6,135,646 Oct. 24, 2000
Stefik US 7,359,881 B2 Apr. 15, 2008
The Prior and Current Rejections
Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Woodhill and Kahn. 2019 Final Act. 4 (maintaining the obviousness
rejection as set forth by the Board in the ’3936 Decision). The rationale of
the presently appealed rejection, as newly set forth in the ’3936 Decision,
differs slightly from the rationale of the obviousness rejection, as set forth in
the prior final rejection from which the ’3936 Appeal was taken. See Final
Action mailed Mar. 8, 2017 (“2017 Final Action”).
In particular, the Examiner originally found in the 2017 Final Action,
that Woodhill discloses most of claim 7’s limitations. 2017 Final Act. 4
(generally adopting Third Part Requester’s rationales, as set forth in the
Request for Ex Parte Re-examination, 18–26 (filed June 10, 2016) (“Reexam
Request”)). In the 2017 Final Action, the Examiner took the position that

2 Woodhill issued from application number 08/555,376, filed November 9,
1995 (“the Woodhill ’376 Application”). The Woodhill ’376 Application is
a continuation of parent application number 08/085,598 filed July 1, 1993,
now abandoned (“the Woodhill ’598 Application”).
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Woodhill’s disclosure of the granularization restore procedure, as described
in relation to Woodhill’s Figure 5I, teaches claim 7’s limitation, “in response
to a request for the data file, the request including at least the name of the
data file, providing a copy of the file from a given one of the plurality of
computers.” See, e.g., Examiner’s Answer 3 (mailed Sept. 21, 2017)
(incorporating by reference the proposed rejection of pages 21–26 of the
Reexam Request; see also Reexam Request 23 (“The identifiers are sent as
part of the request to restore a binary object. . . . This technique is illustrated
in the flow chart depicted in FIG. 5i.”); Woodhill, col. 17, l. 18–col. 18, l. 9;
Fig. 5I (describing the process for restoring previous versions of binary
objects).
To underscore, the position of Requester and the original position of
the Examiner was not that Woodhill’s granularization restore procedure
merely renders obvious the act of retrieving a requested data file using a
content-based identifier, such as an identifier that is generated using a hash
function of the file contents. Rather, the Examiner’s and Requester’s
position was that Woodhill’s granularization restore procedure actually
teaches the act of retrieving a request data file using a content-based
identifier, as claimed.
The Examiner further found that Woodhill does not teach the
following elements: (1) the computers communicate using a TCP/IP
protocol, (2) the data files could represent, in particular, digital images; or
(3) the files are not provided to unlicensed or unauthorized parties.
2017 Final Act. 4–5. The Examiner found that Kahn teaches these
limitations. Id. (citing, respectively, Khan, col. 10, ll. 44–46; col. 1, ll. 17–
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19; and col. 2, ll. 17–21). The Examiner determined that motivation existed
to combine the references’ teachings in a manner that renders claim 7
obvious. Id. at 5.
In the 2017 Final Action, the Examiner additionally rejected claim 7
under 35 U.S.C. § 103(a) as unpatentable over Woodhill and Stefik. The
Examiner relied upon Woodhill in the same manner as in the rejection over
the combination of Woodhill and Khan. 2017 Final Act. 5–6. The
Examiner relied on Stefik for the same teachings that were relied upon in
Khan. 2017 Final Act. 6–7 (citing Stefik, col. 26, ll. 50–54; col. 6, ll. 31–33;
and col. 7, ll. 6–27).
On appeal of the 2017 Final Action, the Board disagreed with the
Examiner, finding that “Woodhill’s granularization restore procedure does
not return to the local computer, the particular data entity that was initially
requested.” ’3936 Decision 10 (citing Woodhill col. 17, l. 18–col. 18, l. 9).
The Board then found claim 7 obvious for a different reason, though. The
Board determined that other portions of Woodhill—the disclosure associated
with the self-audit routine and Woodhill’s claim 1—at least rendered
obvious claim 7’s disputed limitation of retrieving a data file using the
content-based identifier. Id. at 12–15; see also Woodhill, col. 18, ll. 10–38
(explaining how binary object identifiers 74 are calculated and compared as
part of the auditing and reporting routine); id. claim 1, col. 22, ll. 3–4
(reciting, “said calculated binary object identifier being saved as the name of
the associated binary object”).
In the ’3936 Decision, the Board acknowledged, “Woodhill does not
expressly state what data is used to access or retrieve binary objects for
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performing the self-audit routine.” ’3936 Decision at 13. The Board further
reasoned that, nonetheless, it still would have been at least obvious to use the
binary object identifiers 74 for retrieving the binary objects when
performing the self-audit routine:
Given that Woodhill’s self-audit routine retrieves a binary
object to perform the audit,[] it at least would have been
obvious—if not inherent—that some sort of binary object name
would be used to retrieve the binary object. Further, given that
Woodhill expressly discloses that the binary object identifier can
serve as the binary object’s name, it would have been obvious to
one of ordinary skill to have used Woodhill’s binary object
identifier in the self-audit routine to retrieve the binary object
being audited.
’3936 Decision 12.
The Board also provided a motivation for why it would have been at
least obvious to use the binary object identifiers 74 in this manner:
Given that Woodhill does not expressly state what data is used to
access or retrieve binary objects for performing the self-audit
routine, one of ordinary skill would have been motivated to look
for possible ways to access or retrieve these objects. Woodhill
expressly states the binary object identifier is used as a name of
the binary object (e.g., claim 1), which renders the identifier [] a
reasonably foreseeable piece of data for performing this task.
The fact that Woodhill further discloses that additional data
fields alternatively may be used to request binary objects does
not negate the fact that the binary object identifier is one of the
data fields one of ordinary skill would [have] consider[ed] using.
’3936 Decision 13 (citation omitted).
It is this rationale of the Board that the Examiner now relies on for
maintaining the rejection in the most recent Final Action. 2019 Final Act. 4
(“The rejection[] and corresponding explanations provided in the
September 25, 2018 decision of the PTAB [in relation to the rejection over
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Woodhill and Kahn] are maintained and incorporated herein by reference.”);
see also id. at 5 (maintaining the obviousness rejection over Woodhill and
Stefik for the same reasons). Accordingly, we analyze Patent Owner’s
arguments regarding the rejections of claim 7 (see 2019 Appeal Br.) based
on the Board’s and the Examiner’s current rationale.
Standard of Review
The Board conducts a limited de novo review of the appealed
rejections for error based upon the issues identified by Patent Owner, and in
light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

ANALYSIS
I.
Patent Owner notes that
[c]laim 7 requires, inter alia, “obtaining a name for a data file, the
contents of said data file representing a digital image . . . ; and in
response to a request for the data fi1e, the request including at least the
name of the data file, providing a copy of the file . . . .”
2019 Appeal Br. 53–54. Patent Owner argues, “[t]his subject matter is not
found in the newly proposed combinations.” Id. at 54.
More specifically, Patent Owner argues that the Court of Appeals for
the Federal Circuit recently held that Woodhill only discloses the binary
object identifier being used for one purpose—“to perform a one-to-one
comparison with the Binary Object Identifier associated with the backed-up
version of the binary object, which occurs after the appropriate binary object
has been located.” 2019 Appeal Br. 54 (citing PersonalWeb II, 917 F.3d
at 1382.
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Patent Owner additionally argues that our reviewing court further held
that “Woodhill’s only disclosed method of locating a current or previous
file is by searching for the file using standard file block information,
including the file name and location . . . . Woodhill does not disclose
searching for a file based on a content-based identifier.” Id. at 56 (citing
PersonalWeb II, 917 F.3d at 1382). Patent Owner summarizes that the
PTAB’s and the Examiner’s current interpretation of Woodhill is
contradicted by our reviewing court’s findings in PersonalWeb II.
2019 Appeal Br. at 57.
Patent Owner’s arguments on this point are unpersuasive. We
recognize that our reviewing court held that Woodhill does not disclose
searching for a file based on a content-based identifier. But this fact does
not demonstrate error in the current rejection because in the ’3936 Decision,
the Board did not find that Woodhill discloses using the binary object
identifier to locate the binary object. The Board, instead, determined that in
light of what Woodhill does teach, it would have been obvious to have used
Woodhill’s binary object identifier for this purpose:
Given that Woodhill’s self-audit routine retrieves a binary
object to perform the audit,[] it at least would have been
obvious—if not inherent—that some sort of binary object name
would be used to retrieve the binary object. Further, given that
Woodhill expressly discloses that the binary object identifier can
serve as the binary object’s name, it would have been obvious to
one of ordinary skill to have used Woodhill’s binary object
identifier in the self-audit routine to retrieve the binary object
being audited.
’3936 Decision 12.
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II.
Patent Owner additionally acknowledges that “[t]he new grounds of
rejection are based on Woodhill’s self-audit procedure, described at
column 18, lines 10 through 38, and [further based on] claim 1 of
Woodhill[,] which refers to a binary object identifier as a ‘name’ for a binary
object.” 2019 Appeal Br. 64 (emphasis omitted). Patent Owner also
presents various arguments in relation to this rationale.
Most persuasive, Patent Owner argues that the only place Woodhill
ever refers to a binary object identifier as a “name” is in the claims, but that
this language was introduced into Woodhill’s claims as new matter. Id. at
64–65. According to Patent Owner, Woodhill added the language about the
binary object identifier constituting a “name” by way of a claim amendment
that was filed on January 5, 1996—“after the April 1, 1995 effective filing
date of the ’442 patent.” 2019 Appeal Br. 65; see also Woodhill’s
08/555,376 continuation application, SECOND PRELIMINARY
AMENDMENT, claim 21 (issued as claim 1).
Patent Owner contends, therefore, “Woodhill’s description of a binary
object identifier as a ‘name’ in the claims of Woodhill is not prior art to
either the [present] ’442 patent or the [parent] ’280 patent.” 2019 Appeal
Br. 65. Patent Owner argues that the Board erred by simply assuming that
the “name” term in claim 1 of Woodhill, as issued, was supported by the
July 1993 filing of Woodhill’s parent application, and that the Board erred
by not addressing or considering the issue of priority when it made the new
ground of rejection. Appeal Br. at 67.
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Patent Owner’s arguments are persuasive. The Board’s new grounds
of rejection are based, in part, on the emphasized language of Woodhill’s
claim 1:
1. A system for distributed management of the storage space
and data on a networked computer system wherein the networked
computer system includes at least two storage devices for storing
data files, said distributed storage management system
comprising:
means for selectively copying data files stored on one of
the storage devices to another of the storage devices;
means for dividing each data file into one or more binary
objects of a predetermined size;
means for calculating a current value for a binary object
identifier for each binary object within a file, said calculation of
said binary object identifier being based upon the actual data
contents of the associated binary object, said calculated binary
object identifier being saved as the name of the associated binary
object;
means for comparing said current name of a particular
binary object to one or more previous names of said binary
object;
means for storing said current name of said binary object;
and
means for controlling said means for selectively copying
binary objects in response to said means for comparing.
Woodhill, claim 1 (filed as claim 21 in the ’376 Application).
Prior to the second preliminary amendment, the as-filed claims of the
’376 Application did not recite that the calculated binary object identifier
was saved as a name:
1. A system for distributed management of the storage space
and data on a networked computer system wherein the
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networked computer system includes at least two storage devices
for storing data files comprised of one or more binary objects,
said distributed storage management system comprising:
means for selectively copying the binary objects stored on
one of the storage devices to another of the storage devices;
means for calculating a current value for a binary object
identifier for selected binary objects stored on the storage
devices wherein said calculation of said binary object identifier
is based upon the actual data contents of the associated binary
object;
means for storing said current value of said binary object
identifier as a previous value of said binary object identifier;
means for comparing said current value of said binary
object identifier associated with a particular binary object to one
or more previous values of said binary object
identifier associated with that particular binary object; and
means for commanding said means for selectively copying
binary objects in response to said means for comparing.
Woodhill ’376 Application, claim 1 (as originally filed).
We, therefore, review Woodhill’s ’376 Application, as originally
filed, to determine whether the Specification either employs the term “name”
or otherwise teaches binary object identifiers as being used as a name of the
binary objects. Our review indicates that the ’376 Application’s originally
filed Specification includes no such disclosure or teaching. At most,
Woodhill’s originally filed ’376 Application merely teaches using the binary
object identifiers for comparing current versions of binary objects with
stored versions of binary objects:
means for calculating a current value for a binary object
identifier for selected binary objects stored on the storage
devices wherein said calculation of said binary object identifier
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is based upon the actual data contents of the associated binary
object;
means for storing said current value of said binary object
identifier as a previous value of said binary object identifier;
means for comparing said current value of said binary
object identifier associated with a particular binary object to one
or more previous values of said binary object
identifier associated with that particular binary object.
Woodhill ’376 Application, originally filed claim 1; see also Woodhill
’376 Application 35:20–36:17 (setting forth section 5. Auditing and
Reporting).
To be sure, an identifier arguably can be characterized as also
constituting a “name.” For example, the identifier “Prisoner 24601”
arguably can be characterized as constituting the name of Jean Valjean. See
Victor Hugo, Les Miserables (1862). But Patent Owner’s claim 7 does not
merely recite that the content-based identifier constitutes a name. Rather,
claim 7 more specifically requires that a requested data file be retrieved
using the content-based identifier. See Woodhill, claim 7 (“in response to a
request for the data file, the request including at least the name of the data
file, providing a copy of the file from a given one of the plurality of
computers”). It is this manner of using the binary object identifier that
Woodhill’s originally filed application fails to disclose.
Upon further consideration, then, we understand Woodhill provides
limited support to the term “name”—Woodhill uses “name” only to refer to
an identifier that is used for comparing binary objects. Beyond this limited
meaning, the term “name” receives no priority prior to the April 1, 1995
effective filing date of Patent Owner’s claim 7. As such, Woodhills’ use of
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the term “name” neither constitutes prior art, nor can be relied upon for
teaching that it was known to use a content-based identifier specifically for
retrieving a requested file. Without being able to rely on Woodhill’s
disclosure of the term “name” for this specific teaching, we agree with
Patent Owner that the Examiner has not established that claim 7 is obvious
over Woodhill in combination with the teachings of only Kahn or of only
Stefik. We, therefore, withdraw the new grounds of rejection that we issued
in the ’3936 Decision.
We choose not to exercise our discretionary authority under 37 C.F.R.
§ 41.50(b) to inquire further whether claim 7 might be rendered obvious
over the combination of Woodhill, Kahn or Stefanik, and some additional
teachings or noticed facts. We, instead, limit our inquiry to the question that
originally was presented to us—whether the Examiner has established that
claim 7 is unpatentable for the reasons originally set forth by Requester and
adopted by the Examiner at the time of the ’3936 Decision. See Frye, 94
USPQ2d at 1075 (explaining that the Board conducts a limited de novo
review of the appealed rejections for error based upon the issues identified
by Patent Owner, and in light of the arguments and evidence produced
thereon).
On the record before us, we conclude that the Examiner has not
established a prima facie case of obviousness.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
7 103(a) Woodhill, Khan 7
7 103(a) Woodhill, Stefik 7
Overall
Outcome
7

REVERSED

Patent Owner:

NIXON & VANDERHYE, PC
901 North Glebe Road, 11th Floor
Arlington, VA 22203

Third Party Requester:

HAYNES AND BOONE, LLP
IP Section, Attn: David L. McCombs
2323 Victory Avenue, Suite 700
Dallas, TX 75219

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