Apple Inc.v.PersonalWeb Technologies, LLC and Level 3 Communications LLC

Patent Trial and Appeal Board

Mar 25, 2015

11980687 (P.T.A.B. Mar. 25, 2015)

Trials@uspto.gov Paper 33
571-272-7822 Entered: March 25, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE, INC.,
Petitioner,

v.
PERSONALWEB TECHNOLOGIES, LLC, and
LEVEL 3 COMMUNICATIONS, LLC,
Patent Owners.
____________

Case IPR2013-00596
Patent 7,802,310 B2
____________

Before KEVIN F. TURNER, JONI Y. CHANG, and
MICHAEL R. ZECHER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

FINAL WRITTEN DECISION
Inter Partes Review
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
Apple, Inc. (“Apple”) filed a Petition (Paper 1, “Pet.”) requesting inter
partes review of claims 24, 32, 70, 81, 82, and 86 of U.S. Patent
No. 7,802,310 B2 (“the ’310 Patent,” Ex. 1001). Patent Owners,
PersonalWeb Technologies LLC and Level 3 Communications, LLC
(collectively “PersonalWeb”), filed a Preliminary Response (Paper 8). On
March 26, 2014, we instituted an inter partes review of claims 24, 32, 70,
81, 82, and 86 on a single ground of unpatentability alleged in the Petition.
Paper 9, “Dec.”
After institution of trial, PersonalWeb filed a Patent Owner Response
(“PO Resp.,” Paper 15) and Apple filed a Reply thereto (“Reply,” Paper 22).
An oral argument was held on November 17, 2014. The transcript of the
oral hearing has been entered into the record. Paper 31.
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
Apple has shown by a preponderance of the evidence that all claims
for which trial is instituted, claims 24, 32, 70, 81, 82, and 86 of the ’310
Patent, are unpatentable.

A. Related Matters
Apple indicates that the ’310 Patent was asserted against it in
PersonalWeb Tech. LLC v. Apple Inc., Case No. 6:12-cv-00660-LED,
pending in the U.S. District Court for the Eastern District of Texas. Pet. 2.
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Other petitions seeking inter partes review of PersonalWeb’s patents
were filed previously, with those patents and the ’310 Patent sharing a
common disclosure. Id. at 3–4. Another Petition, filed in Case IPR2014-
00062, was pending regarding the ’310 Patent, but that proceeding, as well
as the proceedings involving patents with common disclosures, were
terminated based on a settlement reached between the parties. IPR2014-
00062, Paper 33.

B. The ’310 Patent (Ex. 1001)
The ’310 Patent relates to a data processing system that identifies data
items using substantially unique identifiers, otherwise referred to as True
Names, which depend on all the data in the data item and only on the data in
the data item. Ex. 1001, 1:44–48, 3:52–55, 6:20–24. According to the ’310
Patent, the identity of a data item depends only on the data and is
independent of the data item’s name, origin, location, address, or other
information not derivable directly from the data associated therewith. Id. at
3:55–58. The invention of the ’310 Patent also provides that the system can
publish data items, allowing other, possibly anonymous, systems in a
network to gain access to the data items. Id. at 4:32–34.
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C. Illustrative Claim
The ’310 Patent includes claims 1–87, of which a trial was instituted
on claims 24, 32, 70, 81, 82, and 86. Of those the challenged claims, claims
24, 70, 81, and 86 are independent claims. Independent claim 70 is
reproduced below:
70. A computer-implemented method operable in a
system which includes a network of computers, the system
implemented at least in part by hardware including at least one
processor, the method comprising the steps of:
in response to a request at a first computer, from another
computer, said request comprising at least a content-based
identifier for a particular data item, the content-based identifier
for the particular data item being based at least in part on a
given function of at least some data which comprise the
contents of the particular data item, wherein the given function
comprises a message digest or a hash function, and wherein two
identical data items will have the same content-based identifier:
(A) hardware in combination with software, determining
whether the content-based identifier for the particular data item
corresponds to an entry in a database comprising a plurality of
content-based identifiers; and
(B) based at least in part on said determining in step (A),
selectively permitting the particular data item to be accessed at
or by one or more computers in the network of computers, said
one or more computers being distinct from said first computer.
Ex. 1001, 44:1–23.
D. Prior Art Relied Upon
The following prior art references were relied upon in the instituted
ground of unpatentability:

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Woodhill US 5,649,196 July 15, 1997 (Ex. 1014)
Stefik US 7,359,881 B2 Apr. 15, 2008 (Ex. 1013)

E. Ground of Unpatentability Instituted for Trial
The following table summarizes the challenge to patentability that
was instituted for inter partes review:
References Basis Claims challenged
Woodhill and Stefik § 103 24, 32, 70, 81, 82, and 86

II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable construction in light of the specification of the
patent in which they appear. 37 C.F.R. § 42.100(b). Absent any special
definitions, claim terms are given their ordinary and customary meaning, as
would be understood by one of ordinary skill in the art in the context of the
entire disclosure. In re Translogic Tech, Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007).

1. The Standard to be Applied in Claim Construction
PersonalWeb asserts that the proper claim construction standard to be
applied in this proceeding should not be the broadest reasonable construction
consistent with the Specification, given the imminent expiration of the ’310
Patent on April 11, 2015. PO Resp. 10. PersonalWeb argues that the proper
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standard to be applied is that laid out by the United States Court of Appeals
for the Federal Circuit in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
2005) (en banc). PO Resp. 10. PersonalWeb also argues that it has no
ability to amend the patent and that no appeal will take place until after the
patent expires. Id. We do not agree. PersonalWeb had the ability to file a
Motion to Amend and have it be considered in this proceeding. Such
consideration of any motion to amend could have been expedited in view of
the expiration of the ’310 Patent, but no such motion was filed or
contemplated. See Paper 13, 2.
PersonalWeb also argues that:
[T]he USPTO has no authority to change the claim construction
standard required by Phillips for IPR proceedings because an
IPR is not an examination proceeding and the applicable claim
construction standard is a substantive issue (not a mere
procedural issue). Cooper Techs. Co. v. Dudas, 536 F.3d
1330,1335 (Fed. Cir. 2008).
PO Resp. 10. The Federal Circuit has determined, however, that the claim
construction standard to be applied to claims of an unexpired patent in an
inter partes review is the broadest, reasonable claim construction standard.
See In re Cuozzo Speed Techs., LLC, No. 2014-1301, 2015 WL 448667, at
*5–8 (Fed. Cir. Feb. 4, 2015). Therefore, although we acknowledge the
imminent expiration of the ’310 Patent, we continue to construe the
challenged claims according to the broadest reasonable claim construction
standard.

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2. “data item” and “data” (Claims 24, 32, 70, 81, 82, and 86)
In the Decision to Institute, we construed the claim term “data item”
as a “sequence of bits,” which includes one of the following: (1) the
contents of a file; (2) a portion of a file; (3) a page in memory; (4) an object
in an object-oriented program; (5) a digital message; (6) a digital scanned
image; (7) a part of a video or audio signal; (8) a directory; (9) a record in a
database; (10) a location in memory or on a physical device or the like; and
(11) any other entity which can be represented by a sequence of bits. We
also construed the claim term “data” as a subset of a “data item.” Dec. 6–8.
PersonalWeb does not dispute this construction. PO Resp. 2–3. Having
considered whether the construction set forth in the Decision to Institute
should be changed in light of evidence introduced during trial; we are not
persuaded any modification is necessary.

3. “digital identifier”(Claim 86)
“content-dependent name” (Claims 24 and 32)
“content-based identifier” (Claims 70 and 81)
Claim 86 recites that the “digital identifier for a particular sequence of
bits, the digital identifier being based, at least in part, on a given function of
at least some of the bits in the particular sequence of bits,” with claims 24,
70 and 81 reciting very similar recitations for “content-dependent name,”
and “content-based identifier.” Claim 32 provides that “the data used by the
function to determine the content-dependent name of the particular data item
comprises of all of the contents of the particular data item,” according to that
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embodiment.
In the Decision to Institute, we determined that the claims themselves
provide a definition of the claim terms “digital identifier,” “content-
dependent name,” and “content-based identifier”—namely, an identifier for
a data item “being based at least in part on a given function of at least some
of the bits in the particular sequence of bits of the particular data item.”
Dec. 8–10.
With respect to “digital identifier” and “content-based identifier,”
PersonalWeb notes that the above construction conflicts with the district
court’s construction of the same terms, but does not dispute this
construction. PO Resp. 3–4.
With respect to “content-dependent name,” PersonalWeb does dispute
this construction, arguing that for claim 32, the limitation should be
understood to be based “at least in part on a given function of all of the bits”
(id. at 4), and that construing a “name” as an “identifier” would be “wrong,
unreasonable and illogical.” Id. PersonalWeb continues that one of ordinary
skill in the art would have recognized the significant differences between a
“name” and an “identifier,” with the former allowing for reference, access,
search and address of that data item. Id. at 4–5. Apple counters that nothing
in the Specification of the ’310 Patent provides for such a distinction
between name and identifier, and that PersonalWeb’s declarant, Dr. Robert
Dewar, acknowledged the same. Reply 1–3 (citing Ex. 1035, 32). We agree
with Apple.
Although claim 32 does recite that the data used comprises “all of the
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contents of the particular data item,” we are not persuaded that the
construction of the claim term “content-dependent name” should vary with
the scope of the claims. Once properly defined, the scope of this term in
claim 32 would be different, but that would not require a different
construction of the base term.
In addition, the Specification of the ’310 Patent provides that “data
items . . . are identified by substantially unique identifiers (True Names)”
(Ex. 1001, 31:38–42), and we are persuaded that one of ordinary skill in the
art, in view of the Specification of the ’310 Patent, would not have
determined that identifiers and names are directed to different aspects of the
invention in that context. Although both PersonalWeb and Dr. Dewar opine
about the distinctions between names and identifiers (PO Resp. 4–5; Ex.
2020 ¶ 23), these distinctions are not present in the Specification. As such,
we are persuaded that it is reasonable to construe “content-dependent name”
as an identifier for a data item being based, at least in part, on a given
function of at least some of the bits in the particular sequence of bits of the
particular data item.

4. “selectively permit” (Claim 70)
“selectively allow” (Claims 81 and 86)
Claim 70 recites “selectively permitting the particular data item to be
accessed,” and claims 81 and 86 recite “selectively allow said particular
sequence of bits to be provided to or accessed by other devices.” In the
Decision to Institute, we determined that, in the context of claims 70, 81, and
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86, the claim terms “selectively permitting” should be construed as
“permitting based on whether the recited condition is met,” and “selectively
allow” should be construed as “allowing based on whether the recited
condition is met.” Dec. 10–11. PersonalWeb continues to argue that
Apple’s proposed constructions, in the Petition, are wrong (PO Resp. 6–8),
but given that the particular constructions were not adopted (Dec. 10–11),
these arguments are moot.

5. “to be accessed” “accessed by” (Claims 24 and 70)
PersonalWeb also argues that claims 24 and 70 require a “request”
that includes a content-dependent name or identifier for a corresponding data
item. PO Resp. 8. PersonalWeb continues that this is important “because
both parties agree that in the alleged Woodhill/Stefik combination granules
corresponding to contents identifiers in the alleged request (“update
request”) are NEVER provided to the requesting computer in response to the
request.” Id. at 9–10. Although PersonalWeb raises this argument in the
claim construction section of its Patent Owner’s Response, we are not
persuaded that this is an issue of claim construction. We agree that claim 70
requires “selectively permitting the particular data item to be accessed,” and
claim 24 requires that “the particular data item corresponding to the content-
dependent name is in the request is provided to or accessed by,” but we find
this to be an issue of whether the combination of Woodhill and Stefik meets
the elements of the claims, not an issue of claim construction.

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B. Principles of Law
To prevail in its challenges to the patentability of the claims, Apple
must prove unpatentability by a preponderance of the evidence. 35 U.S.C.
§ 316(e); 37 C.F.R. § 42.1(d). A claim is unpatentable under 35 U.S.C.
§ 103(a) if the differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill
in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 406 (2007). To establish obviousness of a claimed
invention, all the claim limitations must be taught or suggested by the prior
art. See CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir.
2003); In re Royka, 490 F.2d 981, 985 (CCPA 1974).
A patent claim composed of several elements, however, is not proved
obvious merely by demonstrating that each of its elements was known,
independently, in the prior art. KSR, 550 U.S. at 418. In that regard, for an
obviousness analysis it is important to identify a reason that would have
prompted one of skill in the art to combine prior art elements in the way the
claimed invention does. Id. A precise teaching directed to the specific
subject matter of a challenged claim, however, is not necessary to establish
obviousness. Id. Rather, obviousness must be gauged in view of common
sense and the creativity of an ordinarily skilled artisan. Id. Moreover,
obviousness can be established when the prior art, itself, would have
suggested the claimed subject matter to a person of ordinary skill in the art.
In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976).
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We analyze the instituted ground of unpatentability in accordance
with the above-stated principles.

C. Priority of the Subject Claims
Apple asserted that claims 24, 32, 70, 81, 82, and 86 of the ’310
Patent are not entitled to the benefit of the filing date of the earliest priority
application under 35 U.S.C. § 120. Pet. 55–57. Specifically, Apple asserted
that the earliest priority application does not provide sufficient written
description support for the claim feature: “a hash function.” Id. at 55. In the
Decision to Institute, we found that that the original disclosure of the earliest
priority application of the ’310 Patent—namely, the application filed on
April 11, 1995—provides sufficient written description support for the
claimed feature “a hash function.” Dec. 11–13. We are not persuaded that
any modification is necessary in light of any evidence or argument
introduced during trial. Thus, we determine that Priority Web has
established that it is entitled to the benefit of the April 11, 1995 filing date.

D. Claims 24, 32, 70, 81, 82, and 86
– Alleged Obviousness over Woodhill and Stefik
Apple asserts that claims 24, 32, 70, 81, 82, and 86 of the ’310 Patent
are unpatentable under 35 U.S.C. § 103(a) over the combination of Woodhill
and Stefik. Pet. 28–43. Apple provides a rationale for modifying Woodhill
in light of Stefik to arrive at the features of claims 24, 32, 70, 81, 82, and 86.
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Id. at 41–42. In support of its asserted ground of unpatentability, Apple
proffers the testimony of Dr. Benjamin F. Goldberg. Ex. 1007 ¶¶ 61–88.
Woodhill discloses a system for distributed storage management on a
computer network system. Ex. 1014, 1:11–17. Figure 1 of Woodhill,
reproduced below:

Figure 1 depicts a computer network system that includes a distributed
storage management system. As illustrated in Figure 1 of Woodhill, each
local area network 16 includes multiple user workstations 18 and local
computers 20. Id. at 3:24–44. Woodhill’s system includes a Distributed
Storage Manager (“DSM”) program for building and maintaining the File
Database. Id. at 3:44–49.
The DSM program views a file as a collection of data streams, and
divides each data stream into one or more binary objects. Id. at 4:13–23,
7:40–43; Fig. 5A, item 132. More specifically, the data streams represent
regular data, extended attribute data, access control list data, etc. Id. at
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7:44–47. For each binary object being backed up, a Binary Object
Identification Record is created in a File Database and includes a Binary
Object Identifier to identify a particular binary object uniquely. Id. at 7:60–
8:1, 8:33–34.
Binary Object Identifiers are calculated based on the contents of the
data so that the Binary Object Identifier changes when the contents of the
binary object changes. Id. at 8:57–62, 8:40–42. Notably, the Binary Object
Identifier includes a Binary Object Hash field which is calculated against the
contents of the binary object that is taken one word (16 bits) at a time using
a hash algorithm. Id. at 8:22–32. Duplicate binary objects can be
recognized from their identical Binary Object Identifiers, even if the objects
reside on different types of computers in a heterogeneous network. Id. at
8:62–65.
We agree with Apple that the Binary Object Identifiers of Woodhill
are equivalent to the “digital identifier,” “content-dependent name,” and
“content-based identifier” recited in claims 24, 70, 81, and 86. Pet. 31.
They are based on a cryptographic hash, with the chance of two objects
being assigned the same Binary Object Identifier being very small.
Ex. 1014, 8:33–36. Based on this, two identical items will have the same
Binary Object Identifier. Ex. 1007 ¶ 67.
Stefik discloses a system for preventing the unauthorized access to
digital works. Ex. 1013, 1:17–20. Stefik discloses receiving a request for
access to a particular digital work from a requester, including a unique
identifier for the digital work, and only providing access if it is determined
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that the request is authorized. Id. at 9:47–49, 31:13–20, 41:60–65. As
discussed by Apple, the process of matching the identifier for the work
would involve comparing it with a plurality of values, and providing for
selective access. Pet. 42.
Apple further contends that a person of ordinary skill in the art
reading Woodhill and Stefik would have understood that the combination of
Woodhill and Stefik would have allowed for the selective access features of
Stefik to be used with Woodhill’s content-dependent identifiers feature.
Pet. 42. We agree in this regard and are persuaded that the combination of
Woodhill and Stefik renders claims 24, 32, 70, 81, 82, and 86 of the ’310
Patent unpatentable under 35 U.S.C. § 103.
Turning to PersonalWeb’s arguments against this ground,
PersonalWeb argues that the modification to Woodhill based on Stefik
would not have been obvious because one of ordinary skill in the art would
have wanted to minimize—not maximize—the number of comparison
procedures required for access. PO Resp. 12–18. PersonalWeb continues
that, based on typical large database files being restored in Woodhill, the
combination would have a large number comparisons that would need to be
made. Id. at 15–16. In other words, PersonalWeb asserts that the number of
binary object identifiers and content identifiers would be in the thousand to
million range, and the combination of Woodhill and Stefik would require an
access determination for each. Id. Based on this, PersonalWeb argues that
one of ordinary skill in the art would have sought to minimize the number of
comparisons, and would have viewed an increase in multiple orders of
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magnitude to be “wasteful, unnecessary, inefficient and costly.” Id. at 17.
PersonalWeb also adds that Stefik already has a system for controlling
distribution of files, and that if its usage rights would have been employed in
Woodhill, if at all, they would not utilize Woodhill’s unique identifiers. Id.
at 18.
Apple responds that none of the challenged claims require a
determination of whether access to an entire file is authorized, and that the
claims are satisfied by a determination of whether access to a data item or a
sequence of bits is authorized. Reply 8. In addition, Apple counters that “a
person of ordinary skill in the art would have known to minimize the number
of comparisons required by selecting more convenient (e.g., larger)
maximum sizes for granules and/or binary objects,” and that “Woodhill is
not limited to ‘large database files.’” Id. at 9–10. We agree with Apple.
A person of ordinary skill in the art is not an automaton, and can
apply common sense in arriving at efficient solutions. KSR, 550 U.S. at 421.
As Apple suggests, an ordinarily skilled artisan would have selected larger
sizes for the granules and/or binary objects for larger sized files (Reply 10),
and we are persuaded that PersonalWeb’s view of such ordinarily skilled
artisans would require their rote adoption of the methods of Woodhill and
Stefik without contemplation. Additionally, as discussed above, the claims
specify access to particular data items, but do not require any minimization
of access comparisons. Thus, we do not find PersonalWeb’s argument to be
persuasive.
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Next, PersonalWeb argues that, because the system in Woodhill
already has the most recent version of a file, there would have been no
reason to have modified Woodhill to implement methods for checking
whether access is authorized for a previous version of the same file. PO
Resp. 19–22. In essence, PersonalWeb argues that, if the computer already
has been permitted access to the current version of the file, common sense
dictates that the computer also is authorized to access the previous versions
of that same file. Id. PersonalWeb further argues that the rationale put forth
by Apple, namely “to prevent unauthorized users from accessing a different
user’s back up files,” makes no sense because Woodhill is concerned with
current and previous versions of the same file. Id. at 20. We do not agree.
As Apple argues, the Woodhill system includes multiple local
computers connected to the same remote backup file server, which store files
and binary objects from multiple users. Reply 11; Ex. 1014, 3:25–27. It
would have been obvious for one of ordinary skill in the art to have
addressed whether each user or each local computer was authorized to
access a particular binary object. Determining access based on binary object
identifiers would have been consistent with one of the purposes of Stefik.
See Ex. 1013, 9:47–49, 31:13–20, 41:60–65. Given the local area network
disclosed in Woodhill, we are persuaded that one of ordinary skill in the art
would have addressed access to multiple files, and not just multiple versions
of a single file, in considering the combination of Woodhill and Stefik.
PersonalWeb also argues that Woodhill already has a system for
access control, one that acts prior to the binary object identifiers being
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created, such that it would not have been obvious to have used those
identifiers for access, and that the “access control list data” of Woodhill,
unrelated to the identifiers, would have been used instead. PO Resp. 21–22.
We do not agree. An obviousness evaluation is not limited necessarily to the
mere substitution of one element for another; although such a substitution
may be simpler, in situations such as this, the obviousness analysis requires
viewing factors such as the totality of the teachings, market forces, and
background knowledge of a person of ordinary skill in the art. KSR, 550
U.S. at 417–18. The fact that Woodhill uses one access control method, and
Stefik uses another, does not mean that one of ordinary skill in the art would
not have combined the aspects of each, instead of the wholesale swapping of
one for another. As discussed above, we are persuaded that one of ordinary
skill in the art would have employed the selective access features of Stefik to
be used with Woodhill’s content-dependent identifiers feature to provide
access control.
PersonalWeb argues that the teachings of Stefik would have led one
of ordinary skill in the art away from the path taken by the inventors of the
challenged claims. PO Resp. 22–24. PersonalWeb continues that Stefik
discloses the use of unique identifiers, but does not use them for determining
access and does not use them as part of Stefik’s “usage rights.” Id. We do
not agree.
At most, Stefik provides for alternative means for determining access
and does not “teach away” from the use of unique identifiers for access.
“[T]he prior art’s mere disclosure of more than one alternative does not
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constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed . . . .” In re Fulton,391 F.3d 1195, 1201 (Fed. Cir. 2004). The fact
that Stefik does not teach specifically that unique identifiers are used for
determining access is not sufficient to constitute a teaching away, as
PersonalWeb has alleged.
Similarly, PersonalWeb argues that certain aspects of Stefik’s system
are disclosed to be “fundamental” or “key” requirements, and one would not
have modified Woodhill based on Stefik without utilizing such features. PO
Resp. 26. According to PersonalWeb, Stefik determines that the connections
between the usage rights and the works are fundamental, and combining the
teachings of Woodhill and Stefik would render Stefik’s distribution control
system inoperable for its intended purpose if the usage rights were not part
of the corresponding file. Id. at 26–28. We do not agree.
PersonalWeb’s argument in this regard mischaracterizes Stefik’s
disclosure regarding usage rights. Stefik provides that “the usage rights are
treated as part of the digital work” and that “[t]he attachment of usage rights
into a digital work may occur in a variety of ways” (Ex. 1013, 11:15–30
(emphases added)), not necessarily suggesting the bodily incorporation of
those usage rights. Additionally, Stefik provides that “[a] key feature of the
present invention is that the usage rights are permanently ‘attached’ to the
digital work” (id. at 6:44–45 (emphasis added)), with the use of quotation
marks suggesting that the rights need not become a part of the work
necessarily. The connection between the usage rights and the work is key,
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indeed, but Stefik does not disclose that this must be accomplished in only
one way. PersonalWeb makes much of Apple’s affiant, Dr. Goldberg,
acknowledging that “because the binary object identifier 74 is calculated
from the contents of the binary object, it cannot be part of the binary object”
(PO Resp. 27; Ex. 2015, 123–124 (emphasis in original)), but we do find
this to be persuasive. Given that the binary object identifier is calculated
from the contents of the binary object, it is connected to, and directly
attributable to, the contents. We are not persuaded that such connections
would run counter to the express concerns in Stefik that the identifier be “a
part of” the digital work. As such, we are not persuaded that combining the
teachings of Woodhill and Stefik would render Stefik’s distribution control
system inoperable for its intended use.
PersonalWeb also argues that the identifiers in Woodhill and Stefik
are not being used for their intended purposes in the combination, and that
they would not perform the same functions. PO Resp. 24–25. We are not
persuaded, however, because we agree with Apple that the challenged
claims have not been limited “‘to control the distribution of files or
determine whether access to data is authorized.’” Reply 13 (citing PO Resp.
25). The challenged claims require, for example, “selectively permitting the
particular data item to be accessed,” but do not limit the use of the claimed
identifiers as PersonalWeb has alleged. As such, we are not persuaded that
the identifiers in Woodhill and Stefik are being used contrary to their
intended purposes in the proffered combination.
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Additionally, PersonalWeb argues that granules in Woodhill, in
response to an update request, are never provided to the requesting
computer, such that Woodhill’s granules cannot meet the limitations of the
claims. PO Resp. 30–32. PersonalWeb suggests that the Institution
Decision only relies on the binary objects and content-based identifiers in
Woodhill, instead of the granules. Id. at 30. Even if true, this does not
appear to be an argument against the instant ground in this proceeding and
would appear to moot (i.e., addressing only one aspect of Woodhill).
PersonalWeb also argues that the identifier in the Woodhill/Stefik
combination is not a “name” and is not used for accessing. PO Resp. 32–36.
PersonalWeb reiterates its arguments distinguishing a “name,” from an
“identifier,” as discussed in the claim construction section above, we agree
that the terms may be distinctive, but, in this case, the Specification of the
’310 Patent does not make that distinction. Even so, PersonalWeb argues
that “Woodhill does not use a hash as a file name, or as a substitute for a
name, in a computer network.” Id. at 33. In addition, PersonalWeb argues
that Woodhill’s binary object identifiers are not used to access, search for, or
address binary objects. Id. at 34. PersonalWeb also points out that
Woodhill discloses the use of names, but that this disclosure was added to
Woodhill later and, thus, is not prior art to the instant claims. Id. at 35–36.
We do not find these arguments to be persuasive.
As Apple points out, “the ‘update request’ described in Woodhill
‘includes the Binary Object Identification Record 58’ for the requested
binary object.” Reply 5; Ex. 1014, 17:40–46. Thus, the update request
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utilizes the binary object identifier, which is part of the binary object
identification record. The challenged claims do not require that the
identifier be used synonymously with the filename, only that a determination
be made as to whether the content-based identifier for the particular data
item corresponds to an entry in a database, and access be provided, if
appropriate, based, at least in part, on that determination. We are not
persuaded that the challenged claims require more than is disclosed in
Woodhill and Stefik.
PersonalWeb argues that Woodhill fails to make a determination as to
whether access to a given data item is not authorized, as recited in claims 24,
70, and 81. PO Resp. 36–41. As discussed above, however, Stefik discloses
receiving a request for access to a particular digital work from a requester,
including a unique identifier for the digital work, and only providing access
if it is determined that the request is authorized. Ex. 1013, 9:47–49, 31:13–
20, 41:60–65. One cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references.
In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Given that
Stefik makes the determinations recited in claims 24, 70, and 81, we are not
persuaded by PersonalWeb’s arguments.

E. Secondary Considerations of Nonobviousness
In addition to the specific arguments directed to the alleged
deficiencies of the prior art combination, PersonalWeb also argues that
objective indicia of nonobviousness weigh against finding the claims
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obvious. PO Resp. 41–42. PersonalWeb argues that others have licensed
the instant patent, where such licenses were not taken for settling any patent
litigation, and this represents evidence of nonobviousness. Id.; Exs. 2016–
2018. Additionally, PersonalWeb argues that copying by others and long-
felt need were identified in the prosecution history (Ex. 1016, 379), and are
further evidence of non-obviousness. PO Resp. 42. Although we appreciate
the success PersonalWeb cites in its Patent Owner Response, we are not
persuaded that, when analyzed together with the previously discussed prior
art evidence, this success outweighs the strong evidence of obviousness
presented by Apple.
“It is well settled ‘that objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support.’” In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983) (quoting
In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). The objective evidence is not
commensurate (coextensive) in scope with the claimed subject matter if the
claims are broader in scope than the scope of the objective evidence, e.g., if
the product included elements or features not recited in the claims which
may be responsible for the commercial success or praise. See Joy Techs.,
Inc. v. Manbeck, 751 F.Supp. 225, 229–30 (D.D.C. 1990)(and cases cited
therein) aff’d 959 F.2d 226 (Fed. Cir. 1992). This is related to the nexus
requirement – where the objective evidence of non-obviousness is not
commensurate in scope with the claimed invention, it is more difficult (but
not impossible) to show that objective evidence is due to the merits of the
claimed invention as opposed to unclaimed features.
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[E]vidence of commercial success alone is not sufficient to
demonstrate nonobviousness of a claimed invention. Rather, the
proponent must offer proof “that the sales were a direct result of
the unique characteristics of the claimed invention—as opposed
to other economic and commercial factors unrelated to the
quality of the patented subject matter.”
In re DBC, 545 F.3d 1373, 1384 (Fed. Cir. 2008) (citations omitted).
PersonalWeb relies on three license agreements as evidence to support
its argument that the challenged claims are not obvious; however, the relied
upon agreements grant licenses to a wide variety of U.S. and foreign “True
Name patents.” Ex. 2019, ¶¶ 3–9. PersonalWeb has not provided sufficient
or credible evidence that the subject matter of the challenged claims
motivated the decision to license. Additionally, as noted by Apple, each of
the three licenses involved related parties with interlocking ownership and/or
business interests, and not three truly separate licensees. Reply 14–15. In
addition, although PersonalWeb has pointed to evidence of copying and
long-felt, but unmet need in the prosecution history, no attempt has been
made to establish a nexus between that evidence and the specific claim
limitations present in the challenged claims. As such, we are not persuaded
that PersonalWeb has shown that its secondary indicia of nonobviousness
are coextensive with the scope of the claims, or that the presented evidence
is sufficient to overcome the obviousness conclusion discussed above.
We are persuaded that Apple has shown by a preponderance of the
evidence that 24, 32, 70, 81, 82, and 86 of the ’310 Patent are unpatentable
under 35 U.S.C. § 103(a) over the combination of Woodhill and Stefik.
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III. CONCLUSION
We conclude that Apple has shown by a preponderance of the
evidence that claims 24, 32, 70, 81, 82, and 86 are unpatentable under
35 U.S.C. § 103(a) as obvious over the combination Woodhill and Stefik.

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 24, 32, 70, 81, 82, and 86 of the ’310 Patent
are held unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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For PETITIONER:
David K.S. Cornwell
Mark W. Rygiel
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
davidc-PTAB@skgf.com
mrygiel-PTAB@skgf.com

For PATENT OWNER:
Joseph A. Rhoa
Updeep S. Gill
NIXON & VANDERHYE P.C.
jar@nixonvan.com
usg@nixonvan.com