EMC CORPORATION v PERSONALWEB TECHNOLOGIES, LLC and LEVEL 3 COMMUNICATIONS, LLC

Patent Trial and Appeal Board

May 15, 2014

11980677 (P.T.A.B. May. 15, 2014)

Trials@uspto.gov Paper 69
571-272-7822 Entered: May 15, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

EMC CORPORATION,
Petitioner,

v.

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

Case IPR2013-00087
Patent 8,001,096 B2
____________

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

TURNER, Administrative Patent Judge.

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

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I. INTRODUCTION
EMC Corporation (“EMC”) filed a petition on December 17, 2012,
requesting an inter partes review of claims 1, 2, 81, and 83 of U.S. Patent
No. 8,001,096 B2 (“the ’096 Patent”). Paper 3 (“Pet.”). PersonalWeb
Technologies, LLC and Level 3 Communications, LLC (collectively,
“PersonalWeb”) filed a patent owner preliminary response. Paper 11
(“Prelim. Resp.”). Taking into account the patent owner preliminary
response, the Board determined that the information presented in the petition
demonstrated that there was a reasonable likelihood that EMC would prevail
with respect to claims 1, 2, 81, and 83. Pursuant to 35 U.S.C. § 314, the
Board instituted this trial on May 17, 2013, as to claims 1, 2, 81, and 83 of
the ’096 Patent. Paper 16 (“Dec.”).
After institution, PersonalWeb filed a patent owner response (Paper
37 (“PO Resp.”)), and EMC filed a reply to the patent owner response
(Paper 44 (“Reply”)). Oral hearing was held on December 16, 2013.
1

We have jurisdiction under 35 U.S.C. § 6(c). This final written
decision is entered pursuant to 35 U.S.C. § 318(a). We hold that claims 1, 2,
81, and 83 of the ’096 Patent are unpatentable under 35 U.S.C. § 103.

1
This proceeding, as well as IPR2013-00082, IPR2013-00083, IPR2013-
00084, IPR2013-00085, and IPR2013-00086, involve the same parties and
similar issues. The oral arguments for all six inter partes reviews were
merged and conducted at the same time. A transcript of the oral hearing is
included in the record as Paper 68, hereinafter “Transcript.”
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A. Related Proceeding
EMC indicates that the ’096 Patent is the subject of litigation titled
PersonalWeb Technologies LLC v. EMC Corporation and VMware, Inc.,
No. 6:11-cv-00660-LED (E.D. Tex.). Pet. 1.

B. The ’096 Patent
The ’096 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, 3:52-58, 6:20-24. According to the ’096
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
3:52-58. The ’096 Patent also examines the identities of a plurality of data
items in order to determine whether a particular data item is present in the
data processing system. Id. at 3:59-62.
The ’096 Patent further discloses accessing data items by referencing
their identities or True Names independent of their present location in the
data processing system. Id. at 33:28-30. The actual data item or True file
corresponding to a given data identifier or True Name is capable of residing
anywhere on the data processing system, i.e., locally, remotely, offline, etc.
Id. at 33:30-32. If a requested data item or True File is local with respect to
the data processing system, a prospective user can access the data in the
True File. Id. at 33:32-34. If a requested data item or True File is not local
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with respect to the data processing system, a prospective user may use the
True File registry to determine the location of copies of the True File
according to its given True Name. Id. at 33:34-38. However, if for some
reason a prospective user cannot locate a copy of the requested data item or
True File, the processor employed by the user may invoke the Request True
File remote mechanism to submit a general request for the data item or True
File to all the processors in the data processing system. Id. at 34:42-48.

C. Challenged Claim
Independent claim 1, along with dependent claims 2, 81, and 83, is
challenged by EMC in this inter partes review and is reproduced below:
1. A computer-implemented method operable in a file
system comprising a plurality of servers, the method
comprising the steps of:
(A) adding a data item to the file system, the data item
consisting of a sequence of non-overlapping parts, each part
consisting of a corresponding sequence of bits, by:
(A1) for each part in said sequence of parts, determining,
using hardware in combination with software, a
corresponding digital part identifier, wherein each said
digital part identifier for each said part is determined based
at least in part on a first function of all of the bits in the
sequence of bits comprising the corresponding part, the
first function comprising a first hash function;
(A2) determining, using a second function, a digital
identifier for the data item, said digital data item identifier
being based, at least in part, on the contents of the data
item, wherein two identical data items in the file system
will have the same digital data item identifier in the file
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system, said second function comprising a second hash
function;
(A3) storing each part in said sequence of parts on multiple
servers of said plurality of servers in the file system;
(A4) storing first mapping data that maps the digital data
item identifier of the data item to the digital part identifiers
of the parts comprising the data item;
(A5) storing second mapping data that maps the digital part
identifier of each part in said sequence of parts to
corresponding location data that identifies which of the
plurality of servers in the file system stores the
corresponding part; and
(B) repeating step (A) for each of a plurality of data items; and
(C) attempting to access a particular data item in the file
system by:
(C1) obtaining a particular digital data item identifier of the
particular data item, said particular digital data item
identifier of said particular data item being included in an
attempt to access said particular data item in said file
system;
(C2) attempting to match, using hardware in combination
with software, said particular digital data item identifier of
said particular data item with a digital data item identifier
in said first mapping data; and
(C3) based at least in part on said attempting to match in
step (C2), when said particular digital data item identifier
obtained in step (C1) corresponds to an identifier in said
first mapping data, using said first mapping data to
determine a digital part identifier of each part comprising
the particular data item;
(C4) using said second mapping data and at least one digital
part identifier determined in step (C3) to determine
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location data that identifies which of the plurality of
servers in the file system stores the corresponding at least
one part of the particular data item;
(C5) attempting to access at least one part of the particular
data item at one or more servers identified in step (C4) as
storing said at least one part.
Ex. 1001, 38:36-39:28 (emphasis added).
D. Prior Art Relied Upon
EMC relies upon the following prior art references:
Frederick W. Kantor, “FWKCS (TM) Contents-Signature System
Version 1.22,” FWKCS122.REF (Aug. 10, 1993) (Ex. 1004,
hereinafter “Kantor”).

Mahadev Satyanarayanan, “Scalable, Secure, and Highly Available
Distributed File Access,” 23 IEEE Computer 9-21 (May 1990)
(Ex. 1005, hereinafter “Satyanarayanan”).

E. Ground of Unpatentability
The Board instituted the instant trial based on the following ground of
unpatentability:
Claims Basis References
1, 2, 81, and 83 § 103(a) Kantor and Satyanarayanan

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II. ANALYSIS
A. Claim Construction
We begin our analysis by determining the meaning of the claims.
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). Under the broadest reasonable
construction standard, 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). An inventor may rebut that presumption by
providing a definition of the term in the specification with reasonable clarity,
deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994). In the absence of such a definition, limitations are not to be read
from the specification into the claims. In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993).
In the Decision on Institution, we construed the claim term “data
item” to mean “sequence of bits,” and observed that in the context of the
specification, the meaning also 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.
Dec. 10. The parties agree with that claim construction. Pet. 6-7; PO Resp.
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1-2. As noted in the Decision on Institution, that claim construction is
consistent with the specification. Dec. 9-10 (citing Ex. 1001, 1:56-57 (“the
terms ‘data’ and ‘data item’ as used herein refer to sequences of bits.”); id. at
1:56-61, 1:66–2:4). We discern no reason to deviate from that claim
construction for the purposes of this decision.

B. Principles of Law
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter 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). The question of obviousness is resolved on the basis of underlying
factual determinations, including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of skill in the art; and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). In that regard, an obviousness analysis “need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see also
Translogic, 504 F.3d at 1259.
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We also recognize that prior art references must be “considered
together with the knowledge of one of ordinary skill in the pertinent art.”
Paulsen, 30 F.3d at 1480. Moreover, “it is proper to take into account not
only specific teachings of the reference but also the inferences which one
skilled in the art would reasonably be expected to draw therefrom.” In re
Preda, 401 F.2d 825, 826 (CCPA 1968). We analyze the instituted ground
of unpatentability in accordance with the above-stated principles.

C. Claims 1, 2, 81, and 83 – Obviounesss over Kantor and Satyanarayanan
EMC asserts that claims 1, 2, 81, and 83 are unpatentable under 35
U.S.C. § 103(a) as obvious over Kantor and Satyanarayanan. Pet. 47-54. As
support, EMC provides detailed explanations as to how each claim element,
arranged as recited in the claim, is disclosed by Kantor, Satyanarayanan
and/or the combination of both. Id. Additionally, EMC also directs our
attention to the declaration of Dr. Clark. Id. (citing Ex. 1009).
PersonalWeb counters that Kantor fails to teach specific elements of
claim 1 for which it is cited, that Kantor teaches away from the combination
with Satyanarayanan, and that the proposed modification of Kantor would
not have been obvious. PO Resp. 3-42. PersonalWeb also argues that
claims 81 and 83 are not obvious over Kantor and Satyanarayanan,
presenting separate arguments and relying on arguments made against the
obviousness of claim 1. Id. at 42-50. PersonalWeb also alleges that Kantor
is not a “printed publication” within the meaning of 35 U.S.C. § 102(b). Id.
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at 51-56. In support of its argument, PersonalWeb proffers Mr. Todd
Thompson’s declaration (Ex. 2014).
Upon review of the parties’ arguments and supporting evidence, we
determine that EMC has demonstrated by a preponderance of the evidence
that claims 1, 2, 81, and 83 are unpatentable under 35 U.S.C. § 103(a) as
being obvious over Kantor and Satyanarayanan. We also determine that
Kantor is a “printed publication” within the meaning of 35 U.S.C. § 102(b).

Kantor
Kantor describes a method of identifying duplicate files. Ex. 1004,
2-4, 48-49. In particular, Kantor applies a hash function (e.g., a cyclic
residue check or cyclic redundancy check (CRC)) to each file within a zip
file to obtain the contents signature for each file. Id. at 6-8, 48-49. Each
contents signature is a string of bits generated from the contents of a file. Id.
For each zip file, Kantor creates zip-file contents signatures by
hashing the contents signatures for the files contained within the zip file
(“a hash of hashes”). Id. at 2, 9. As described by Kantor, this is done by
“adding together all the 32_bit CRC’s for the files in the zip file, modulo
2^32, separately adding together their uncompressed file_lengths modulo
2^32, and then arranging the two resulting hexadecimal numbers as a single
structure.” Id. at 9. Dr. Clark testifies that addition modulo 2^32 is another
well-known simple hashing function that uses addition to calculate a value
for a file based on the file’s contents. Ex. 1009 ¶ 20. Kantor further
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compares the zip-file contents signatures to check for duplicate files.
Ex. 1004, 2 of Preface, 5, 9.
According to Kantor, contents signatures and zip-file contents
signatures are useful to identify files that have the same contents stored on
the electronic bulletin board systems (“BBS”). Ex. 1004, 2 of Preface, 5, 9.
For example, when uploading a zip file, the system determines whether that
zip file already exists in the system using the zip-file contents signature, and
then determines whether the inner files of that zip file already exist in the
system using the contents signatures for the inner files. Id. at 9.
EMC has acknowledged that Kantor fails to disclose the underlying
storage system of the BBS, and, thus, does not disclose that files are
replicated on multiple servers, per claims 1, 2, 81, and 83. Pet. 52-53.
Satyanarayanan discloses a network-based file replication system, where
copies of files are stored at multiple servers (Ex. 1028, 447). EMC also
argues that a person of ordinary skill would have found it obvious to modify
Kantor to meet that limitation in view of Satyanarayanan. Pet. 53. On this
record, we concur with the analysis of Dr. Clark, that it would have been
obvious to combine Kantor and Satyanarayanan to provide more reliable
storage systems for the BBS’s files (Ex. 1009 ¶ 84).

Digital part identifiers for all parts of a data item/ based on all data
PersonalWeb argues that Kantor fails to disclose digital part
identifiers for “each part” of a data item, or a data item identifier “based, at
least in part, on the contents of the data item,” because Kantor’s “zipfile
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contents-signatures” are based on “contents-signatures” of the inner files of
a zipfile, and are not based on all parts or all bits of the data item. PO Resp.
3-18. Because Kantor excludes some parts of the data item, i.e., the zip file,
it is argued that it cannot teach the portions of claim 1 on which it is relied
upon. Id. EMC counters that based on the claim construction for “data
item,” i.e., a “portion of a file,” the inner files of the zip file are a portion of
the file and are equivalent collectively to the “data item” of claim 1. Reply
1-2. We agree with EMC.
PersonalWeb assumes that the entire zip file in Kantor is equivalent to
the “data item” in claim 1 (PO Resp. 3), but we are not persuaded that this is
the sole, proper interpretation of Kantor. Claim 1 recites, in part, that “the
data item consisting of a sequence of non-overlapping parts, each part
consisting of a corresponding sequence of bits,” and “for each part in said
sequence of parts, determining . . . a corresponding digital part identifier . . .
based at least in part on a first function of all of the bits in the sequence of
bits.” (emphasis added). We are persuaded that the inner files of the zip file
in Kantor are equivalent to the claimed “data item” in that those files consist
of a sequence of non-overlapping parts. In addition, each file of the inner
files of the zip file consists of a sequence of bits, and a CRC of one of the
individual files, in Kantor, is based on a function of “all of the bits in the
sequence of bits” of the inner file.
Although PersonalWeb argues that the Petition found “that the ‘data
item’ in Kantor is a ZIP file” (PO Resp. 6, citing Ex. 1009 ¶¶ 86, 100; Ex.
1029 ¶¶ 2, 8-10), the support for that statement, citing to Dr. Clark’s
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declarations, also refers to “a sequence of non-overlapping parts” as the
inner files within the zip file. Ex. 1009 ¶ 86, 100. We are persuaded that
ground proffered in the Petition, and instituted in this proceeding, indicates
that the “data item” of claim1 can be read as being equivalent to the inner
files of the zip file in Kantor. Based on this, one need not use the entire zip
file to meet the limitations of claim 1, if the inner files of the zip file
constitute the data item. As a consequence, the fact that “a ZIP file includes
much more than the individual ‘files’ therein,” as argued by PersonalWeb
(PO Resp. 9), is correct, but inapposite. Kantor’s exclusion of other data or
metadata in the zip file to determine the CRC is also not distinguishing. If
the “data item” of claim 1 is taken as the inner files of the zip file in Kantor,
then the fact that Kantor does not use every bit of the zip file does not
distinguish it from claim 1.
This also comports with the overall purpose of the invention disclosed
in the ’096 Patent. The specification of the ’096 Patent, in the “Summary of
the Invention” section, provides that “the identity of the data item is
independent of its name, origin, location, address, or other information not
derivable directly from the data.” Ex. 1001 3:56-58. Counsel for
PersonalWeb argued at the oral hearing that “the things like File Name, et
cetera, in the patents, the patent says -- makes clear they are not part of the
data item. In the patent.” Transcript 110. This is consistent with the view
that that the inner files of a zip file can constitute a “data item,” as claimed,
in that such a construction would exclude metadata, i.e., the rest of the zip
file, which can include name, location, etc. Limiting the “data item” to the
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inner files would meet the definition found in claim 1, with the inner files
being “a portion of a file,” and consist solely of a “sequence of non-
overlapping parts.” This is distinct from PersonalWeb’s view (PO Resp. 3)
that the data item be taken to be the whole zip file in Kantor.
PersonalWeb responds to this view of Kantor, although it alleges that
“petitioner does not make this argument,” and argues that “the express
language of claim 1, and the Board’s construction of ‘data item,’ preclude
such an argument.” PO Resp. 16. We do not agree. As discussed above, we
find EMC has represented that the inner files of the zip file in Kantor are
equivalent to the claimed “data item” in its Petition. PersonalWeb argues
that “[b]ecause a data item must be a ‘sequence of bits,’ one cannot pick and
choose some bits of the ZIP file (the alleged ‘data item’), while excluding
other intervening bits of the ZIP file, to make up the alleged data item
because the result would not be a “sequence of bits’ as required by the
claim.” Id.
However, that interpretation depends on the meaning of “sequence of
non-overlapping parts” whereby a sequence cannot have any intervening
gaps. We are persuaded that the inner files of the zip file in Kantor, even
with interstitial parts, such as local headers and directories, still form a
sequence of non-overlapping parts. The inner files form a sequence of files
that make up the zip file, with each file being a sequence of bits. The parts
or files make up the sequence, even with metadata included between the
parts. Considering the cited example from Dr. Clark’s deposition (PO Resp.
17; Ex. 2016, 98), of a single file line of 100 people, ordinarily skilled
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artisans would consider that to be a sequence of people, and not need to look
to any space left between the people as creating a non-sequence. One would
not need to examine the intervening air, or mosquitoes, or dust that exists
between the persons, because those elements would not be people. A
sequence of persons need only look at the persons. Similarly, a sequence of
inner files in Kantor can be a sequence, even if they have intervening “non-
files” between them.
As such, we are persuaded that EMC has demonstrated that Kantor
teaches that digital part identifiers are based on all parts of a data item, with
the data item including a sequence of non-overlapping parts, each part
consisting of a corresponding sequence of bits, and the digital part identifiers
are based on all of the sequence of bits.

Kantor’s ‘y’ procedure emphasizes the deficiencies of ‘zcs’
PersonalWeb argues that the “y” procedure in Kantor (Ex. 1004, 55),
wherein the CRC value is based on every byte in the zip file, illustrates that
the “z” procedure, discussed above to compute zip-file contents signatures,
does not apply a hash function to all of the data in the zip file. PO Resp. 18-
21. PersonalWeb also argues that it would be fundamentally improper to
switch between the “z” and “y” procedures to meet the limitations of claim 1
because the procedures are separate and distinct embodiments. Id. at 19-20.
EMC counters that both disclosed procedures illustrate that whether to hash
metadata is a mere design choice, and Kantor’s preference to not hash
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metadata in the “z” procedure was made for the same reasons as made in the
’096 Patent to not hash metadata. Reply 5. We agree with EMC.
As discussed above, we are persuaded that EMC has demonstrated
that the broadest reasonable construction of claim 1, consistent with the
specification, does not demand the hashing of metadata, such that there is no
need to combine different embodiments of Kantor to teach or suggest all of
the elements of claim 1.

Kantor fails to teach or suggest sub-steps (A4)-(A5) of claim 1
PersonalWeb argues claim 1 requires “storing second mapping data
that maps the digital part identifier of each part in said sequence of parts to
corresponding location data.” PO Resp. 21. PersonalWeb argues that
because a CRC is not computed for all parts of the zip file in Kantor, this
element of claim 1 cannot be met. Id. We agree, however, with EMC that
this argument is merely a restatement of PersonalWeb’s earlier argument,
discussed above. We do not conclude that claim 1 requires the hashing of
metadata contained in the zip file of Kantor, such that the sub-steps of claim
1, (A4) and (A5), can be met by Kantor. As such, we are persuaded that
EMC has demonstrated that Kantor teaches or suggests the subject
limitations of claim 1.

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Applying a hash to each of the plurality of parts of the first data item
Claim 1 requires that “each said digital part identifier for each said
part is determined based at least in part on a first function of all of the bits in
the sequence of bits comprising the corresponding part, the first function
comprising a first hash function.” Based on this, PersonalWeb argues that
claim 1 requires applying a first hash to parts of the data item to come up
with the digital part identifiers, and that Kantor fails to disclose this and
teaches away because Kantor applies the CRC hash to the uncompressed
files before they are compressed and packaged into the zip file. PO Resp.
23. In other words, the CRC in Kantor is applied to different bit sequences
(uncompressed files) than the bit sequences (compressed files) that make up
the inner files of the zip file. Id. PersonalWeb also alleges that the bit
sequence of an uncompressed file is much different that the bit sequence of a
compressed version of that same file. Id. at 26. As such, PersonalWeb
argues that Kantor fails to disclose an identifier based on a hash of the
sequence of bits in the part of the data item, as called for in claim 1. Id. at
26.
EMC counters that nothing in the claims requires that the inner files of
the zip file be compressed files. We are persuaded that, based on the present
record, that a zip file can include uncompressed files and that Kantor can
work with zip files regardless of the method or amount of compression. Ex.
1083, 263-265; Ex. 1089 ¶ 19-21; Ex. 1004, 9, 55. If the inner files of the
zip file in Kantor are uncompressed, then the CRC hash values determined
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for the files before they become part of the zip file are the same as when the
files are part of the zip file.
As such, we are persuaded that EMC has demonstrated that Kantor
teaches or suggests the subject limitations of claim 1.

Determining the part identifiers in the file system
PersonalWeb argues that claim 1 requires the step of determining the
part identifiers to be carried out “in a file system.” PO Resp. 29-30.
PersonalWeb argues that Kantor teaches away from claim 1 because the
CRC values are determined outside the BBS. Id. PersonalWeb also alleges
that Dr. Clark’s testimony acknowledges that remote PCs are not part of the
BBS when not logged into the BBS. Id.; Ex. 2016, 67, 101. EMC counters
that ordinarily skilled artisans would appreciate that “a file system” could
constitute the BBS, or it could constitute the BBS in combination with the
computers communicating with the BBS, which is disclosed in Kantor.
Reply 9. We agree with EMC.
The claim limitation “a file system” is not a limitation that has been
construed specifically in this proceeding. Based on the deposition
testimony, a “user’s terminal or PC” would not be considered part of the
BBS before login (Ex. 2016, 101), but that suggests that once it is connected,
it would be considered a part of the BBS. Thus, PersonalWeb’s analysis
ignores the situation where a zip file is created by a user while connected to
the BBS. We are persuaded that users connected to the BBS may form a
new zip file, and thus also generate a zip-file contents signature, so that such
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a new file could be uploaded to the BBS. Dr. Clark also points out that the
“Lookup” operation in Kantor demonstrates that the BBS and the users’
computers can operate together as a file system. Ex. 1089 ¶ 27; Ex. 1004,
96. Therefore, we are not persuaded that Kantor fails to teach or suggest
that the part identifiers are determined in the file system.
As such, we are persuaded that EMC has demonstrated that Kantor
teaches or suggests the subject limitations of claim 1.

Kantor teaches away from adding zip files to multiple servers
Personalweb argues that claim 1 requires the storage of each part of
the data item on multiple servers in the file system, which necessarily creates
duplicate files in the system. PO Resp. 31. PersonalWeb argues that it
would not have been obvious to have modified Kantor to accomplish this,
even in view of Satyanarayanan, because Kantor teaches away by its very
purpose of avoiding duplicate files in the system. Id. at 31-32. EMC
counters that Kantor is concerned with avoiding unwanted duplicates, and
Kantor is unconcerned with the mirroring of files on multiple servers
because that is a function of the BBS. Reply 9-10. We agree with EMC.
Kantor generates and maintains a master list of the contents signatures
called CSLIST.SRT, and the MULTIS feature is used to analyze the
CSLIST, and identify and list the files for which multiple copies exist. Ex.
1004, 189. Thereafter, a word processor is used to add a “d” to the line of
the MULTIS file for the files to be deleted. Id. Thus, if the user does not
place the “d” on the line for the file, that duplicate file will remain on the
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system. Kantor does not require the elimination of all duplicates; it merely
provides a mechanism that would allow for it. In view of the actual
teachings of Satyanarayanan, namely that mirroring techniques can increase
reliability and response times for requests for files (Ex. 1028, 450), we agree
with EMC that it would have been obvious to mirror duplicate files that were
not deleted in Kantor. Additionally, Dr. Dewar also agreed that mirroring
technology was known. Ex. 1083, 114-115. Therefore, we are not
persuaded that Kantor teaches away from mirroring of files on multiple
servers.

Identifying files using contents signatures
Claim 1 recites “attempting to access a particular data item in the file
system by: (C1) obtaining a particular digital data item identifier of the
particular data item.” Ex. 1001, 39:3-6. In its petition, EMC recognizes that
the users typically request files based on the file names. Pet. 51.
Nonetheless, EMC asserts that a person having ordinary skill in the art
would have found it obvious to modify the electronic Bulletin Board
Systems commands, including the download and read commands, to identify
files using contents signatures or zip-file contents signatures, instead of file
names. Id. at 51-52 (citing Ex. 1009 ¶ 83). According to EMC, “this would
facilitate integrity checking by more precisely specifying the file of interest
by its content, and thus improve accuracy.” Id. at 51. Dr. Clark testifies that
such a modification would provide a more efficient and context-free means
for accessing and sharing files. Ex. 1009 ¶ 83.
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PersonalWeb counters that it would not have been obvious to modify
Kantor so that the read and download requests would accept contents
signatures to identify files. PO Resp. 35-42. PersonalWeb alleges that
Kantor fails to teach or suggest the alleged modification, and fails to provide
any suggestion or motivation for the alleged modification. Id. at 35-39
(citing Ex. 2017 ¶¶ 62-63). PersonalWeb further submits that Kantor does
not disclose any problems with the use of conventional file names for the
read and download requests. Id. at 39-40. Additionally, PersonalWeb
argues that Kantor teaches away from replacing conventional file names
with contents signatures for identifying files, because “Kantor intentionally
designed his contents-signatures so that certain different files would have the
same signature.” Id. at 40-42 (citing Ex. 1004, 3, 51; Ex. 2017 ¶¶ 64-66).
We are not persuaded by PersonalWeb’s arguments. As to
PersonalWeb’s arguments that Kantor does not provide a motivation for the
modification (id. at 36), a rationale to combine the prior art teachings does
not have to be found explicitly in the prior art, itself. See In re Kahn, 441
F.3d 977, 987 (Fed. Cir. 2006) (A “motivation to combine the relevant prior
art teachings does not have to be found explicitly in the prior art.”). We also
are not persuaded by PersonalWeb’s argument that there would have not
been a logical reason to modify Kantor in the manner alleged by EMC, other
than impermissible hindsight (PO Resp. 36). As discussed above, EMC
asserts that it would have been obvious to modify the read and download
commands to identify files using contents signatures instead of file names.
Pet. 51-52 (citing Ex. 1009 ¶ 83). EMC takes the position that “this would
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facilitate integrity checking by more precisely specifying the file of interest
by its content, and thus improve accuracy.” Id. Dr. Clark testifies that such
a modification would provide a more efficient and context-free means for
accessing and sharing files. Ex. 1009 ¶ 83. EMC’s position and Dr. Clark’s
testimony are consistent with Kantor’s disclosure that using contents
signatures, instead of file names, to find and delete duplicate files would
increase system efficiency by reducing storage cost and system time for
locating and managing files. Ex. 1004, Preface, 5, 9, 205-206. As such, we
conclude that EMC has articulated a sufficient reason to combine the
teachings of Kantor.
Also, we are not persuaded by PersonalWeb’s argument that the
proposed modification is not enabled and its argument that EMC fails to
explain how the proposed modification could have been carried out to yield
a predictable result. PO Resp. 36-39. EMC specifically explains that
Kantor’s Precheck and Lookup operations provide examples of user
commands that utilize contents signatures. Pet. 46 (citing Ex. 1004, 97, 173;
Ex. 1009 ¶ 83). For instance, Kantor describes the Precheck operation as a
software utility running on the electronic Bulletin Board Systems for
identifying files that already uploaded in the system by using their contents
signatures. Pet. 51-52 (citing Ex. 1004, 173). Dr. Clark explains that
Kantor’s Lookup operation permits users to submit a request containing a
contents signature to determine where the corresponding file is located on
the system. Ex. 1009 ¶ 83 (citing Ex. 1004, 96-97). Dr. Clark further
testifies the system as modified would have utilized one of those contents
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signatures for the inner files in a download request to obtain the particular
inner file that is associated with the contents signature. Id. Upon review of
the parties’ contentions and supporting evidence, we agree with EMC that
Dr. Clark merely relies on the disclosure of Kantor (Ex. 1004, 96-97), and
not LOOKUP.DOC and PRECHECK.DOC files as alleged by PersonalWeb.
For the foregoing reasons, we determine that EMC has explained sufficiently
how the proposed modification could have been carried out to yield a
predictable result.
PersonalWeb’s argument that Kantor does not teach or suggest the
alleged modification is unpersuasive, because an obviousness analysis “need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S.
at 418. PersonalWeb’s argument overlooks “the fundamental proposition
that obvious variants of prior art references are themselves part of the public
domain.” Translogic, 504 F.3d at 1259. Moreover, we observe that the
asserted ground of unpatentability is based on the combination of Kantor’s
teaching of using contents signatures to identify files with Kantor’s teaching
of requesting files. It is well settled that nonobviousness cannot be
established by attacking each prior art teaching individually where, as here,
the ground of unpatentability is based upon a combination of different
teachings in the prior art. See In re Keller, 642 F.2d 413, 426 (CCPA 1981).
Rather, the test for obviousness is whether the combination of prior art
teachings, taken as a whole, would have suggested the patentees’ invention
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to a person having ordinary skill in the art. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
In light of Kantor, a person of ordinary skill in the art would have
recognized how to calculate contents signatures and zip-file contents
signatures and how to use them to identify files. See, e.g., Ex. 1004,
Preface, 5-9. A person with ordinary skill in the art also would have
appreciated the benefit of using contents signature and zip-file contents
signatures that are generated based on the contents of the files, rather than
file names, for identifying files accurately. Id. The mere substitution of
contents signatures and zip-file contents signatures for file names in read and
download requests predictably uses prior art elements according to their
established functions. Such a substitution is an obvious improvement. See
KSR, 550 U.S. at 417 (The simple substitution of one known element for
another is likely to be obvious if it does no more than yield predictable
results.). Moreover, PersonalWeb has not provided sufficient evidence that
such a substitution is beyond the level of a person with ordinary skill in the
art. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007).
PersonalWeb’s teaching away argument is misplaced, as it fails to
recognize that the cited portion of Kantor specifically explains that the
different files that allegedly have the same signature files also have the same
contents. See Ex. 1004, 3 (“[T]he same file contents . . . will have the same
zipfile contents signature.”). In fact, that is one of the reasons why using
contents signatures or zip-file contents signature, instead of file names, to
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identify files is more accurate. Ex. 1004, Preface, 5, 9. Notably, files that
have the same contents would be identified as duplicates, and files that have
different contents would be identified as different files, regardless of whether
they have different file names. Id. As Kantor notes, finding and deleting
duplicate files would improve system efficiency. Id.

Obviousness of Claims 2, 81, and 83
PersonalWeb discusses the subject matter of claim 2 only briefly,
arguing that in addition to Kantor not teaching elements of claim 1, Kantor
also fails to teach elements of claim 2, namely a second hash function
applied to respective digital part identifiers in determining the digital
identifier. PO Resp. 19, 29. We do not find those brief arguments to be
persuasive and conclude that EMC has demonstrated that claim 2 is obvious
over Kantor and Satyanarayanan. Pet. 56. PersonalWeb also separately
argues the subject matters of claims 81 and 83 (PO Resp. 42-46), but we
concur with EMC (Reply 13) that those arguments rely on the same claim
limitations and make the same arguments already discussed above with
respect to claim 1. We do not find such arguments any more persuasive with
respect to claims 81 and 83.

Evidence of non-obviousness
PersonalWeb further submits that its evidence of non-obviousness
rebuts EMC’s evidence of obviousness. PO Resp. 50-51. In support of its
argument, PersonalWeb directs our attention to three licensing agreements,
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as well as the declaration of Mr. Kevin Bermeister. Id. at 12 (citing Exs.
2010-12; Ex. 2009 ¶¶ 3-9). PersonalWeb argues that each license granted to
a third party was not for the purpose of settling a patent infringement suit.
Id.
In its Reply, EMC contends that PersonalWeb has failed to establish a
sufficient nexus between claims 1, 2, 81, and 83 of the ’096 Patent and the
above-identified license agreements. Reply 13-14. EMC argues that each of
the licenses granted rights to more than just claims 1, 2, 81, and 83, and
involved related parties with interlocking ownership and business interests.
Id. We agree with EMC that PersonalWeb has failed to establish the
requisite nexus between the licensing agreements and claims 1, 2, 81, and
83.
A party relying on licensing activities as evidence of non-obviousness
must demonstrate a nexus between those activities and the subject matter of
the claims at issue. In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995).
Further, without a showing of nexus, “the mere existence of . . . licenses is
insufficient to overcome the conclusion of obviousness” when there is a
strong ground of unpatentability based on obviousness. SIBIA
Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1358 (Fed. Cir.
2000); see Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1324
(Fed. Cir. 2004).
The evidence of non-obviousness presented by PersonalWeb falls
short of demonstrating the required nexus. Neither PersonalWeb nor the
declaration of Mr. Bermeister (Ex. 2009) establishes that the licensing
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agreements (Exs. 2010-12) are directed to the claimed subject matter recited
in claims 1, 2, 81, and 83. For instance, PersonalWeb does not present
credible or sufficient evidence that the three licensing agreements arose out
of recognition and acceptance of the claimed subject matter recited in claims
1, 2, 81, and 83. In the absence of an established nexus with the claimed
invention, secondary consideration factors are entitled little weight, and
generally have no bearing on the legal issue of obviousness. See In re
Vamco Machine & Tool, Inc., 752 F.2d 1564, 1577 (Fed. Cir. 1985).
Furthermore, even if we assume that above-identified licenses establish
some degree of industry respect for the claimed subject matter recited in
claims 1, 2, 81, and 83, that success is outweighed by the strong evidence of
obviousness over Kantor and Satyanarayanan discussed above.
Based on the record before us, including the evidence of obviousness
presented by EMC and the evidence of secondary considerations regarding
licensing activities presented by PersonalWeb, we conclude that EMC has
demonstrated by a preponderance of the evidence that claims 1, 2, 81, and
83 would have been obvious over the combination of Kantor and
Satyanarayanan.

Whether Kantor is a “printed publication”
In its petition, EMC takes the position that Kantor is a “printed
publication” under 35 U.S.C. § 102(b). Pet. 5. EMC asserts that Kantor has
been publicly available since August 1993, which is prior to the critical date,
April 11, 1995, one year before the earliest priority date claimed by the ’096
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Patent. Id. To substantiate its position, EMC explains that Kantor is “a
published manual that describes a software program called the Frederick W.
Kantor Contents-Signature System Version 1.22 (‘FWKCS’).” Id. at 47
(citing Ex. 1004, Title Page). EMC maintains that Dr. Frederick Kantor
distributed Kantor—the user manual (version 1.22), the version relied upon
by EMC (see Ex. 1004)—with the FWKCS program as shareware and
posted it online to electronic Bulletin Board Systems including “The
Invention Factory” and “Channel 1” for an extended period of time, where
Kantor could be downloaded by anyone. Pet. 5, n. 3 (citing Ex. 1004, 3,
158-59). According to EMC, Kantor was accessible to others in the relevant
community of the users and system operators of electronic Bulletin Board
Systems. Id. In support of its position, EMC proffers a declaration of Mr.
Michael A. Sussell (Ex. 1050) and declarations of Mr. Jason S. Sadofsky
(Ex. 1078; Ex. 1088).
In its patent owner response, PersonalWeb counters that Kantor is not
a “printed publication.” PO Resp. 51-56. In particular, PersonalWeb alleges
that EMC has not established that the specific version of Kantor existed
prior to the critical date. Id. at 52. PersonalWeb contends that there is no
evidence that Kantor was disseminated publicly, catalogued, or indexed in a
meaningful way. Id. at 52-53. It is PersonalWeb’s view that EMC fails to
establish that one with ordinary skill in the art, exercising reasonable
diligence, would have located Kantor prior to the critical date. Id. at 51.
We have reviewed the parties’ arguments and supporting evidence.
Based on the evidence before us, we are not persuaded by PersonalWeb’s
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arguments. Rather, we determine that EMC has demonstrated by a
preponderance of the evidence that Kantor is a “printed publication” within
the meaning of 35 U.S.C. § 102(b).
The determination of whether a given reference qualifies as a prior art
“printed publication” involves a case-by-case inquiry into the facts and
circumstances surrounding the reference’s disclosure to members of the
public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key
inquiry is whether the reference was made “sufficiently accessible to the
public interested in the art” before the critical date. In re Cronyn, 890 F.2d
1158, 1160 (Fed. Cir. 1989); In re Wyer, 655 F.2d 221, 226 (CCPA 1981).
“A given reference is ‘publicly accessible’ upon a satisfactory showing that
such document has been disseminated or otherwise made available to the
extent that persons interested and ordinarily skilled in the subject matter or
art exercising reasonable diligence, can locate it.” Bruckelmyer v. Ground
Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006).
Indexing is not “a necessary condition for a reference to be publicly
accessible,” but it is only one among many factors that may bear on public
accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). In that
regard, “while often relevant to public accessibility, evidence of indexing is
not an absolute prerequisite to establishing online references . . . as printed
publications within the prior art.” Voter Verified, Inc. v. Premier Election
Solutions, Inc., 698 F.3d 1374, 1380 (Fed. Cir. 2012).
Contrary to PersonalWeb’s assertion that Kantor did not exist prior to
the critical date and there is no evidence that Kantor was disseminated
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publicly, Kantor itself shows a copyright date of “1988-1993” and a posted
date of “1993 August 10.” Ex. 1004, Title Page, the first page after the Title
Page (“All of the programs and documents, comprising the entire contents of
this Authenticity Verification Zip file FWKCS122.ZIP, together with this
Zipfile itself, are, in accordance with their respective dates of creation or
revision, (C) Copyright Frederick W. Kantor 1988-1993.”). Kantor also
states:
The FWKCS(TM) Contents_Signature System has become a
robust platform for supporting contents_signature functions.
FWKCS provides many functions and options for application in
a public, commercial, school, institutional, or governmental
environment. Extensive technical support is of special value in
helping such users to benefit more fully from these many
features.
Registered FWKCS hobby BBS users are able to receive a
modest amount of assistance, and are invited to participate in
the FWKCS conference on The Invention Factory BBS, echoed
via Execnet.
Commercial, school, institutional, and governmental users, with
their special support needs, are invited to discuss terms for
obtaining such assistance.
. . . .
To get a new version of FWKCS, download FWKCSnnn.ZIP
from The Invention Factory BBS, where nnn is the new version
number without a decimal point. These special downloads are
available at no fee, from a 43_line hunt_up group of USR Dual
Standard modems, at 2400-16800 bits/sec (including V32.bis).
Ex. 1004, 158-159. It is clear from Kantor that, during the 1988-1993
timeframe, Dr. Kantor had posted many versions of his software and user
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manual—including Kantor (version 1.22),, the version relied upon by EMC
(Ex. 1004)—on electronic Bulletin Board Systems.
Mr. Sussell, the co-owner and system operator of the Invention
Factory Bulletin Board System, testifies that the Invention Factory Bulletin
Board System is a computer system that allows users to share files,
messages, and articles, as well as search, upload, and download files.
Ex. 1050 ¶¶ 3-4. According to Mr. Sussell, he and his wife launched the
Invention Factory Bulletin Board System in 1983, and it had over 3,000
subscribers by mid-1993. Id. ¶ 6. Mr. Sussell testifies that, by 1993, the
system provided all users keyword search functionality and access to various
descriptive and meaningful directories. Id. ¶¶ 8-10.
More importantly, Mr. Sussell testifies that the Invention Factory
Bulletin Board System “extensively utilized and hosted current versions of
FWKCS software on its [Bulletin Board System],” and “made publicly
accessible and available the complete FWKSC ZIP file that contained both
the software as well as related documentation such as user manuals” prior to
the critical date. Id. ¶ 15; see id. ¶¶ 16-27. Specifically, Mr. Sussell testifies
that users would have found Kantor by performing keyword searches on the
Invention Factory Bulletin Board System. Id. ¶ 21. Mr. Sussell also
indicates that the Invention Factory Bulletin Board System advertised Dr.
Kantor’s software to its users by including information about Dr. Kantor’s
software on the “Welcome” screen, and made the FWKCS Zip file available
in four different directories. Id. ¶¶ 18-20. Mr. Sussell further testifies that
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computer disks that contain the FWKCS Zip file were distributed at various
Bulletin Board System conferences. Id. ¶ 18.
Mr. Sadofsky, a technology archivist and software historian, testifies
that he personally verified the authenticity of Kantor—the user manual
(version 1.22), the version relied upon by EMC (Ex. 1004)—by comparing it
with a “1993 archived” version, and determined that Kantor is identical to
the “1993 archived” version. Ex. 1078 ¶¶ 14-17. Mr. Sadofsky testifies that
the source file of the “1993 archived” version has a timestamp of August 10,
1993, at 1:22 AM. Id. ¶ 16; Ex. 1088 ¶¶ 10-11; Ex. 2014 ¶ 5. According to
Mr. Sadofsky, Kantor was publicly accessible prior to the critical date. Id.
PersonalWeb also asserts that Kantor was buried and hidden in the zip
file in a manner such that “it would not have been located and accessed by
persons interested and ordinarily skilled in the art exercising reasonable
diligence even if they had access to the ZIP file.” PO Resp. at 53-54 (citing
Ex. 2014). However, PersonalWeb’s supporting evidence, Mr. Thompson’s
declaration (Ex. 2014), does not substantiate PersonalWeb’s assertion.
Upon review of Mr. Thompson’s declaration, we observe that Mr.
Thompson downloaded the FWKCS Zip file—the zip file that contains the
software and Kantor, the user manual—without any difficultly. Ex. 2014
¶ 5. Significantly, Mr. Thompson did not follow the instructions provided
with the zip file, nor did he use the appropriate computer environment (DOS
3.0 or an IBM OS/2 2.0) that was used normally in 1993-1994 timeframe,
but instead he used non-compatible software (DOS 8.0 and 32-bit Windows
XP operating system that was released in 2001). Ex. 2014 ¶¶ 6-11; Ex. 1088
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¶¶ 5, 14. Once he followed the instructions and unzipped the FWKCS Zip
file, Mr. Thompson located Kantor without difficulty. Ex. 2014 ¶¶ 20-22.
Mr. Sadofsky confirms that the README.TXT file provides simple
instructions and, if a user follows the instructions and uses the operating
system that was used normally in 1993-1994 timeframe, the user could
locate Kantor without difficulty. Ex. 1088 ¶¶ 13-17. In fact, Mr. Sadofsky
demonstrated, in his declaration, several relatively easy ways for a user to
access Kantor—with or without installing the software, and with or without
help screens. Ex. 1088 ¶¶ 8-16 (II. README.TXT); ¶¶ 17-20
(III. GETLOOK.BAT); ¶¶ 21-22 (IV. FWKCS122 Start Screen and In-
Program Help). Based on the evidence before us, we determine that Kantor
was available to the extent that persons interested and ordinarily skilled in
the art, exercising reasonable diligence, could locate it.
PersonalWeb’s argument that EMC’s witnesses personally did not
post or review Kantor prior to the critical date also is unavailing. PO Resp.
52-54 (citing Ex. 2015, 52-55; Ex. 2013, 29-30; Ex. 2016, 98). It is well
settled that it is not necessary for the witnesses to have reviewed the
reference personally prior to the critical date in order to establish
publication. See In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986) (concluding
“that competent evidence of the general library practice may be relied upon
to establish an approximate time when a thesis became accessible”); Wyer,
655 F.2d at 226 (Notwithstanding that there is no evidence concerning actual
viewing or dissemination of any copy of the Australian application, the court
held that “the contents of the application were sufficiently accessible to the
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public and to persons skilled in the pertinent art to qualify as a ‘printed
publication.’”); In re Bayer, 568 F.2d 1357, 1361 (CCPA 1978) (A reference
constitutes a “printed publication” under 35 U.S.C. § 102(b) as long as a
presumption is raised that the portion of the public concerned with the art
would know of the invention.).
The evidence on this record clearly support that Kantor was posted on
a publicly accessible site—the Invention Factory Bulletin Board System—
well known to those interested in the art, and could be downloaded and
retrieved from that site, and, therefore, Kantor, an electronic publication, is
considered a “printed publication” within the meaning of 35 U.S.C.
§ 102(b). See Wyer, 655 F.2d at 226 (An electronic publication, including
an on-line database or Internet publication, is considered to be a “printed
publication” “upon a satisfactory showing that such document has been
disseminated or otherwise made available to the extent that persons
interested and ordinarily skilled in the subject matter or art, exercising
reasonable diligence, can locate it and recognize and comprehend therefrom
the essentials of the claimed invention without need of further research or
experimentation.”).
For the foregoing reasons, we determine that EMC has demonstrated
by a preponderance of the evidence that Kantor is a “printed publication”
within the meaning of 35 U.S.C. § 102(b). Therefore, EMC may rely upon
Kantor for its asserted ground of unpatentability under 35 U.S.C. § 103(a).

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D. EMC’s Motion to Exclude
EMC seeks to exclude the following exhibits: (1) three license
agreements (Exs. 2010-12); (2) Mr. Bermeister’s declarations (Exs. 2009,
2018) relating to those license agreements; and (3) Mr. Thompson’s
declaration (Ex. 2014). Paper 54 (“Pet. Mot.”). PersonalWeb filed the
license agreements and Mr. Bermeister’s declarations as evidence of non-
obviousness to rebut EMC’s assertion that claims 1, 2, 81, and 83 would
have been obvious over the combination of Kantor and Satyanarayanan. PO
Resp. 50-51. As to Mr. Thompson’s declaration, PersonalWeb proffered
that evidence to support its assertion that Kantor—a user manual that was
disseminated publicly with the software in a zip file—was not made
sufficiently accessible to a person interested and ordinarily skilled in the art.
Id. at 54-55. PersonalWeb opposes EMC’s motion to exclude. Paper 57. In
response, EMC filed a reply to PersonalWeb’s opposition to its motion to
exclude. Paper 62.
With respect to the license agreements and Mr. Bermeister’s
declarations (Exs. 2009-2012, 2018), EMC argues that they are irrelevant
under Federal Rule of Evidence 402
2
, highly prejudicial, confusing, and
misleading under Federal Rule of Evidence 403. Id. at 8-13. As to Mr.
Thompson’s declaration, EMC argues that it should be excluded under
Federal Rule of Evidence 402. Id. at 14-15. Specifically, EMC alleges that:

2
As stated in 37 C.F.R. § 42.62, the Federal Rules of Evidence generally
apply to proceedings, including inter partes reviews.
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(1) Mr. Thompson does not possess the skill of a person of ordinary skill in
the art (id. at 14-15 (citing Ex. 1086, 13-14)); (2) Mr. Thompson did not use
compatible software from the relevant time period (id. at 15 (citing
Ex. 1086, 40-41; Ex. 2014, 4, 6)); and (3) Mr. Thompson did not follow the
instructions provided with the zip file (id. at 15 (citing Ex. 1086, 32-35)).
The current situation does not require us to assess the merits of
EMC’s motion to exclude. As discussed above, even without excluding
PersonalWeb’s supporting evidence, we have determined that Kantor is a
“printed publication” under 35 U.S.C. § 102(b), and EMC has demonstrated,
by a preponderance of the evidence, that claims 1, 2, 81, and 83 are
unpatentable over the combination of Kantor and Satyanarayanan.
Accordingly, EMC’s motion to exclude evidence is dismissed as moot.

E. PersonalWeb’s Motion to Exclude
PersonalWeb seeks to exclude the following items of evidence:
(1) Kantor (Ex. 1004); (2) certain documents (Exs. 1047-1049, 1052-1055,
1074, 1075, 1080-1082) and the declarations of Messrs. Sussell and
Sadofsky (Exs. 1050, 1078, 1088) regarding those documents; (3) the
declarations of Messrs. Sussell and Sadofsky regarding Kantor (Exs. 1050,
1078, 1088) and Mr. Sadofsky’s deposition (Ex. 2013, 30, 66); and
(4) Clark’s rebuttal declaration (Ex. 1089 ¶¶ 26-27, 30). Paper 53 (“PO
Mot.”).
EMC opposes PersonalWeb’s motion to exclude. Paper 60 (“Opp.”).
In response, PersonalWeb filed a reply to EMC’s opposition to its motion to
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exclude. Paper 63 (“PO Reply”). For the reasons stated below,
PersonalWeb’s motion to exclude is denied.

Kantor
PersonalWeb alleges that Kantor should be excluded as
unauthenticated and inadmissible hearsay under Federal Rules of Evidence
901 and 902. PO Mot. 1, 6. In particular, PersonalWeb argues that “[n]o
witness of record has personal knowledge of Kantor existing prior to [the
critical date], and electronic data such as Kantor is inherently untrustworthy
because it can be manipulated from virtually any location at any time.” Id.
at 2-4. According to PersonalWeb, the dates provided by Kantor are
inadmissible hearsay because Kantor is not self-authenticating. Id. at 2, 5-6.
EMC argues that Kantor has been authenticated under Federal Rules
of Evidence 901, and that the document is not hearsay, because it is being
offered for what it describes—not for the truth of its disclosures. Opp. 1-10.
In particular, EMC disagrees with PersonalWeb that Kantor cannot be
authenticated without direct testimony from a witness with personal
knowledge that Kantor existed prior to the critical date. Opp. 1. EMC
asserts that it need “only produce evidence ‘sufficient to support a finding’
that the reference ‘is what the proponent claims it is.’” Id. at 1-2 (citing Fed.
R. Evid. 901(a)). EMC also contends that testimony from Messrs. Sussell
and Sadofsky provides sufficient evidence to authenticate Kantor. Opp. 1-5
(citing Exs. 1050, 1078, 1088).
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In its reply, PersonalWeb argues that Federal Rules of Evidence
identified by EMC are not applicable to Kantor, because Mr. Sussell did not
post or review Kantor prior to critical date. PO Reply 1-5 (citing
Ex. 2015, 32-36, 55, 55, 65). PersonalWeb also alleges that Kantor’s
authenticity is suspicious, as electronic data are inherently untrustworthy and
there is no chain of custody. Id.
We have considered PersonalWeb’s arguments as well as EMC’s
contentions and supporting evidence. We are not persuaded that Kantor
should be excluded.
At the outset, we disagree with PersonalWeb’s position that a witness
cannot authenticate a document, unless the witness is the author of the
document or the witness has reviewed the document prior to the critical date.
Federal Rule of Evidence 901(a) states that the authentication requirement is
satisfied if the proponent presents “evidence sufficient to support a finding
that the item is what the proponent claims it is.” Therefore, neither a
declaration from the author, nor evidence of someone actually viewing the
document prior to critical date, is required to support a finding that the
document is what it claims to be. See also Hall, 781 F.2d at 899 (concluding
“that competent evidence of the general library practice may be relied upon
to establish an approximate time when a thesis became accessible.”); Wyer,
655 F.2d at 226 (Notwithstanding that there is no evidence concerning actual
viewing or dissemination of any copy of the Australian application, the court
held that “the contents of the application were sufficiently accessible to the
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public and to persons skilled in the pertinent art to qualify as a ‘printed
publication.’”).
Further, it is well settled that an uninterrupted chain of custody is not
a prerequisite to admissibility, but rather gaps in the chain go to weight of
the evidence. U.S. v. Wheeler, 800 F.2d 100, 106 (7th Cir. 1986); see also
U.S. v. Aviles, 623 F.2d 1192, 1198 (7th Cir. 1980) (“If the trial judge is
satisfied that in reasonable probability the evidence has not been altered in
any material respect, he may permit its introduction.”) (Citation omitted).
There is a strong public policy for making all information filed in a quasi-
judicial administrative proceeding available to the public, especially in an
inter partes review, which determines the patentability of a claim in an
issued patent. It is within the Board’s discretion to assign the appropriate
weight to be accorded to evidence.
Although Messrs. Sussell and Sadofsky personally did not post or
review the particular version of Kantor—version 1.22, the version relied
upon by EMC (Ex. 1004)—prior to the critical date, they have sufficient
personal knowledge and working experience to provide competent testimony
to establish the publication and authentication of Kantor. See Hall, 781 F.2d
at 899; Wyer, 655 F.2d at 226; Bayer, 568 F.2d at 1361.
Notably, Mr. Sussell, the co-founder and system operator of the
Invention Factory Bulletin Board System, testifies that Dr. Kantor released
the first version of his software on the Invention Factory Bulletin Board
System in the 1980s, and the system continuously utilized and hosted current
versions of the software and user manuals. Ex. 1050 ¶¶ 3, 13, 15. Mr.
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Sussell also testifies that the Invention Factory Bulletin Board System
advertised Dr. Kantor’s software to its users by including information about
Dr. Kantor’s software on the “Welcome” screen, and made FWKCS Zip
file—a zip file that contains both the software and user manual—publicly
accessible and available under four different directories. Id. ¶ 18.
According to Mr. Sussell, the Invention Factory Bulletin Board System had
over 3,000 subscribers, in the 1993 timeframe, and all of the users had the
capability to perform keyword searches to retrieve FWKCS Zip file. Id.
¶¶ 6, 21.
Although we are cognizant that electronic documents downloaded
from websites normally are not self-authenticating, it has been recognized
that “[t]o authenticate printouts from a website, the party proffering the
evidence must produce some statement or affidavit from someone with
knowledge of the website . . . for example a web master or someone else
with personal knowledge would be sufficient.” St. Luke’s Cataract and
Laser Institute v. Sanderson, 2006 WL 1320242, *2 (M.D. Fla. 2006) (citing
In re Homestore.com, Inc. Sec.Litig., 347 F. Supp. 2d 769, 782 (C.D. Cal.
2004)) (quotation marks omitted); Ex. 2024; see also Market-Alerts Pty. Ltd.
v. Bloomberg Finance L.P., 922 F. Supp. 2d 486, 493, n.12 (D. Del. 2013)
(citing Keystone Retaining Wall Sys., Inc. v. Basalite Concrete Prods., LLC,
2011 WL 6436210, at *9 n.9 (D. Minn. 2011)) (documents generated by a
website called the Wayback Machine have been accepted generally as
evidence of prior art in the patent context); U.S. v. Bansal, 663 F.3d 634,
667-68 (3d. Cir. 2011) (concluding that the screenshot images from the
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Internet Archive were authenticated sufficiently under Federal Rule of
Evidence 901(b)(1) by a witness with personal knowledge of its contents,
verifying that the screenshot the party seeks to admit are true and accurate
copies of Internet Archive’s records).
Here, Mr. Sadofsky, who is a technology archivist and software
historian and currently is an archivist for the Internet Archive, testifies that
he launched the website textfiles.com and a subdomain cd.textfiles.com to
collect software, data files, and related materials from Bulletin Board
Systems. Ex. 1078 ¶¶ 9-11. According to Mr. Sadofsky, textfiles.com and
cd.textfiles.com are dedicated to preserving, archiving, and providing free
access to unaltered historical software programs and information that
initially were made available on the Bulletin Board System. Id. Mr.
Sadofsky states that he previously archived the FWKCS Zip file
(FWKCS122.ZIP) that contains Dr. Kantor’s software and user manual to
cd.textfiles.com from his own copy of the Simtel MSDOS Archive, October
1993 Edition, Walnut Creek CD-ROM. Id. ¶ 14 (citing Ex. 1049).
Mr. Sadofsky also testifies that he personally verified the authenticity of
Kantor—version 1.22, the version relied upon by EMC (Ex. 1004)—by
comparing it with the “1993 archived” version and determined that Kantor is
identical to the “1993 archived” version. Ex. 1078 ¶¶ 13-15. Mr. Sadofsky
confirms that the source file of the “1993 archived” version has a timestamp
of August 10, 1993, at 1:22 AM. Id. ¶ 16; Ex. 1088 ¶¶ 10-11; Ex. 2014 ¶ 5.
Mr. Sadofsky concludes that Kantor was publicly accessible prior to the
critical date. Ex. 1078 ¶¶ 13, 16.
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Moreover, we agree with EMC that Kantor also has been
authenticated as an “ancient document” under Federal Rule of Evidence
901(b)(8).
3
Opp. 6-7 Kantor is “at least 20 years old and can be found in . . .
an October 1993 Simtel CD-ROM – a place where an authentic 20-year old
document distributed through a [Bulletin Board System] would likely be.”
Id.; Ex. 1072 ¶¶ 7-8; see also Fed. R. Evid. 901(b)(8) 2012 Adv. Comm.
Note (“The familiar ancient document rule of the common law is extended
to include data stored electronically or by other similar means.”). Moreover,
testimony of Messrs. Sussell and Sadofsky has established sufficiently that
Kantor is in a condition that creates no suspicion about its authenticity.
Exs. 1050, 1078, 1088.
PersonalWeb does not present sufficient or credible evidence to the
contrary. Based on the evidence before us, we determine that Kantor has
been authenticated under Federal Rules of Evidence 901(b)(1), (b)(3), (b)(4),
and (b)(8) to warrant its admissibility.
PersonalWeb’s hearsay argument regarding Kantor also is unavailing.
As EMC notes (Opp. 7), “[p]rior art references are not hearsay because they
are offered for what they describe, and not to prove the truth of the matters
asserted.” See, e.g., Joy Techs., Inc. v. Manbeck, 751 F. Supp. 225, 233 n.2

3
Fed. R. Evid. 901(b)(8). Evidence About Ancient Documents or Data
Compilations. For a document or data compilation, evidence that it:
(A) is in a condition that creates no suspicion about its authenticity;
(B) was in a place where, if authentic, it would likely be; and
(C) is at least 20 years old when offered.
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(D.D.C. 1990), judgment aff’d, 959 F.2d 226 (Fed. Cir. 1992); Fed. R. Evid.
801(c) 1997 Adv. Comm. Note (“If the significance of an offered statement
lies solely in the fact that it was made, no issue is raised as to the truth of
anything asserted, and the statement is not hearsay.”). Therefore, Kantor is
not hearsay under Federal Rule of Evidence 801(c).
We further agree with EMC that the posted date of “1993 August 10”
or the copyright date of “1988-1993” on the Title page of Kantor is not a
basis for excluding Kantor, as testimony from Messrs. Sussell and Sadofsky
sufficiently establishes that Kantor existed as of August 10, 1993, prior to
the critical date. Opp. 9-11. More importantly, the computer-generated
timestamp—August 10, 1993, at 1:22 AM—of the “1993 archived” version
of Kantor ( Ex. 1078 ¶¶ 14-15; Ex. 1088 ¶¶ 10-11; Ex. 2014 ¶ 5) also
independently corroborates Kantor’s existence as of August 10, 1993.
See, e.g., U.S. v. Khorozian, 333 F.3d 498, 506 (Fed. Cir. 2003) (concluding
that an automatically generated time stamp on a fax was not a hearsay
statement because it was not uttered by a person). Accordingly we are not
persuaded that PersonalWeb has presented a sufficient basis to exclude
Kantor as impermissible hearsay.
For the foregoing reasons, we decline to exclude Kantor.

Documents Corroborating Witnesses’ Knowledge and Recollections
PersonalWeb asserts that certain documents submitted by EMC
(Exs. 1047-1049, 1052-1055, 1074, 1075, 1080-1082) and the declarations
of Messrs. Sussell and Sadofsky (Exs. 1050, 1078, 1088) regarding those
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documents should be excluded because the documents have not been
authenticated properly and are inadmissible hearsay. PO Mot. 6-10.
PersonalWeb argues that EMC “has not established that any of these
documents existed prior to the critical date, and no witness has personal
knowledge of their alleged existence prior to April 11, 1995.” Id. at 7.
PersonalWeb further maintains that the documents that are Exhibits 1053,
1054, 1074, and 1075 are irrelevant, prejudicial, and confusing, as they
discuss a version of Kantor different than the version relied upon by EMC
(version 1.22, Ex. 1004). Id. at 8.
EMC responds that its witnesses provided those “documents
concerning Kantor to corroborate their independent knowledge and
recollections.” Opp. 9. EMC asserts that the documents have been
authenticated under Federal Rules of Evidence 901-902 and fall within a
hearsay exception under Federal Rules of Evidence 803-807. Id. at 10-11.
We are persuaded by EMC’s arguments.
As the movant, PersonalWeb has the burden of proof to establish that it
is entitled to the requested relief. 37 C.F.R. § 42.20(c). As discussed
previously, we disagree with PersonalWeb that documents cannot be
authenticated without direct testimony from the author or a witness who
actually reviewed the documents prior to the critical date. See Fed. R. Evid.
901(a). Significantly, PersonalWeb’s motion does not contain any sufficient
explanation why each document should be excluded. For instance,
PersonalWeb does not explain adequately why the declaration of Mr. Sussell
(Ex. 1050 ¶¶ 6, 8, 18, 27) is not sufficient to authenticate Exhibits
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1052-1055, 1074, and 1075, or why the declarations of Mr. Sadofsky
(Ex.1078 ¶¶ 7-17; Ex. 1088 ¶¶ 10-16) are not sufficient to authenticate
Exhibits 1047-49 and 1080-1082. See Fed. R. Evid. 901(b)(1).
4
Nor does
PersonalWeb explain sufficiently why the following documents are not self-
authenticated: (1) Exhibits 1047-1049 and 1052 that include articles
containing LexisNexis® trade inscriptions; (2) Exhibits 1074 and 1075 that
include Usenet newsgroup periodicals containing Usenet trade inscriptions;
and (3) Exhibit 1049 that contains a photograph of the Simtel MSDOS
Archive, October 1993 Edition, Walnut Creek CD-ROM, that has Simtel
trade inscriptions. See Fed. R. Evid. 902(6)-(7).
5

In its motion, PersonalWeb fails to identify, specifically, the textual
portions of the aforementioned exhibits that allegedly are being offered for
the truth of the matter asserted, yet seeks to exclude the entirety of each
exhibit. The burden should not be placed on the Board to sort through the
entirety of each exhibit and determine which portion of the exhibit
PersonalWeb believes to be hearsay. Rather, PersonalWeb should have

4
Fed. R. Evid. 901(b)(1). Testimony of a Witness with Knowledge.
Testimony that an item is what it is claimed to be.
5
Fed. R. Evid. 902. Evidence that Is Self-Authenticating
The following items of evidence are self-authenticating; they require no
extrinsic evidence of authenticity in order to be admitted:
(6) Newspapers and Periodicals. Printed material purporting to be a
newspaper or periodical.
(7) Trade Inscriptions and the Like. An inscription, sign, tag, or label
purporting to have been affixed in the course of business and
indicating origin, ownership, or control.
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identified, in its motion, the specific portions of the evidence and provided
sufficient explanations as to why they constitute hearsay. Furthermore,
PersonalWeb does not explain adequately why the declarations of Messrs.
Sussell and Sadofsky do not provide the proper foundation and
corroboration for the documents.
To the extent PersonalWeb relies upon the same arguments with respect
to Kantor for excluding the documents, we have addressed those arguments
above and determined that they are unavailing. We also agree with EMC
that the documents concerning prior versions of Kantor are relevant, and not
prejudicial or confusing, as alleged by PersonalWeb, because such
circumstantial evidence provides context and corroboration for the
witnesses’ independent knowledge and recollection.
Furthermore, we are not persuaded that the declarations of Messrs.
Sussell and Sadofsky (Exs. 1050, 1078, 1088) should be excluded. As we
discuss below in the next section, Messrs. Sussell and Sadofsky have
sufficient personal knowledge and working experience to provide competent
testimony to establish the publication and authentication of Kantor. The
documents they cite serve to corroborate their independent knowledge and
recollection.
For the foregoing reasons, PersonalWeb has not presented a sufficient
basis to exclude Exhibits 1047-1049, 1052-1055, 1074, 1075, 1080-1082, as
well as the declarations of Messrs. Sussell and Sadofsky (Exs. 1050, 1078,
1088) concerning those Exhibits.

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Declarations of Messrs. Sussell and Sadofsky
PersonalWeb argues that the declarations of Messrs. Sussell and
Sadofsky (Exs. 1050, 1078, 1088) should be excluded as hearsay under
Federal Rule of Evidence 801, and are inadmissible under Federal Rules of
Evidence 802-807 for lack of foundation and personal knowledge, and
Federal Rule of Evidence 702 as improper testimony, because the witnesses
personally did not review Kantor (Ex. 1004) and Simtel (Ex. 1049) prior to
the critical date. PO Mot. 8-10. PersonalWeb also argues that Messrs.
Sussell and Sadofsky “are not qualified experts in the field.” Id. at 10.
PersonalWeb further alleges that Mr. Sadofsky’s deposition (Ex. 2013, 30,
66) should be excluded, as it was responsive to a leading question and non-
responsive to the question. Id.
EMC responds that the testimony of Messrs. Sussell and Sadofsky
should not be excluded because their testimony is based on their own
personal knowledge and recollection, and the documents they cite serve to
corroborate their independent knowledge and recollection. Opp. 11-12.
EMC further explains that the witnesses have described thoroughly the
underlying facts, and, therefore, the testimony should be admitted as relevant
under Federal Rules of Evidence 401-402, supported by personal knowledge
and foundation under Federal Rule of Evidence 602, and proper opinion
testimony under Federal Rules of Evidence 701-703. Id. We find EMC’s
contentions have merit.
PersonalWeb’s arguments rest on the erroneous premise that EMC’s
witnesses must have reviewed Kantor or Simtel personally prior to the
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critical date in order to provide competent testimony regarding Kantor or
Simtel. As discussed previously, it is well settled that it is not necessary for
the witnesses to have reviewed the reference personally prior to the critical
date in order to establish publication. See, e.g., Wyer, 655 F.2d at 226.
Although Messrs. Sussell and Sadofsky are not experts related to the
claimed subject matter of the ’096 Patent, each witness nevertheless has
sufficient personal knowledge and working experience to provide competent
testimony. See Hall, 781 F.2d at 899. Mr. Sussell was the co-owner and
system operator of the Invention Factory Bulletin Board System from 1983
to 1996. Ex. 1050 ¶ 3. Mr. Sussell’s testimony is based on his personal
knowledge of the relevant facts related to the Invention Factory Bulletin
Board System and Kantor. Id. at ¶ 2. Notably, Dr. Kantor specifically
thanked Mr. Sussell in his user manual for hosting Dr. Kantor’s software
FWKCS and for Mr. Sussell’s role in its development. Ex. 1004, 3
(“To Michael Sussell, sysop of The Invention Factory (R), home board for
the support of FWKCS, for bringing the problem of duplicate files to my
attention and for his help in testing . . . .”); id. at 6 (“When Michael Sussell,
sysop of The Invention Factory (R) in New York, brought to my attention
the problem of duplicate files with different names, these concepts provided
valuable insight into how one might proceed.”).
Mr. Sadofsky is a technology archivist and software historian, and
works “for the Internet Archive, a non-profit digital library offering free
universal access to books, movies, and music, as well as 342 billion archived
webpages available through the Wayback Machine service.” Ex. 1078 ¶ 3.
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Mr. Sadofsky also “directed the film, The BBS Documentary, an eight-
episode documentary about the subculture born from the creation of the
[Bulletin Board System].” Id. at ¶ 4. Mr. Sadofsky’s testimony is based on
his personal knowledge of the relevant facts related to Kantor and the “1993
archived” version of Kantor. Id. at ¶ 2; Ex. 1088 ¶ 2. For example, Mr.
Sadofsky personally verified the authenticity of Kantor by comparing it with
the “1993 archived” version, and determined that Kantor—version 1.22, the
version relied upon by EMC (Ex. 1004)—is identical to the “1993 archived”
version. Ex. 1086 ¶¶ 14-15.
Upon review of the evidence on the record, we agree with EMC that
both Messrs. Sussell and Sadofsky have disclosed sufficient underlying facts
to support their testimony. For instance, the computer-generated
timestamp—August 10, 1993, 1:22 AM—associated with the “1993
archived” version of Kantor corroborates their testimony regarding Kantor’s
existence as of August 10, 1993. Ex. 1078 ¶¶ 14-15; Ex.1088 ¶¶ 10-11;
Ex. 2014 ¶ 5.
As to Mr. Sadofsky’s deposition (Ex. 2013, 30, 66), PersonalWeb
does not explain sufficiently why that testimony should be excluded.
PO Mot. 11. Moreover, Mr. Sadofsky’s deposition (Ex. 2013, 30, 66) is
consistent with his direct testimony (Ex. 1078 ¶¶ 14-16), and, therefore, it
would not prejudice PersonalWeb even if such evidence is not excluded.
For the foregoing reasons, PersonalWeb has not presented a sufficient
basis to exclude the declarations of Messrs. Sussell and Sadofsky (Exs.
1050, 1078, 1088) and Mr. Sadofsky’s deposition (Ex. 2013, 30, 66).
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Clark’s Rebuttal Declaration
PersonalWeb asserts that Dr. Clark’s rebuttal declaration (Ex. 1089)
should be excluded, because it is irrelevant, prejudicial, and confusing, as
well as beyond the scope of this proceeding. PO Mot. 10-15. In support of
its assertion, PersonalWeb advances several arguments. Id.
First, PersonalWeb argues that Dr. Clark’s rebuttal declaration cites to
references that do not serve as the basis of a ground of unpatentability
instituted in this proceeding, i.e., Browne and Langer. Id. at 10-11. EMC
counters that Dr. Clark’s statements referencing those references were
offered in response to PersonalWeb’s argument that one with ordinary skill
in the art would not have modified Kantor. Opp. 12 (citing PO Resp. 35-36;
Ex. 2017 ¶¶ 60-62). According to EMC, those statements are relevant to the
instituted grounds of unpatentability and confirm that the use of hash-based
identifiers to identify files was well known in the art at the time of invention.
Id. We agree with EMC that Dr. Clark’s statements are proper rebuttal
evidence submitted in response to PersonalWeb’s arguments. Those
references were cited merely to show the knowledge level of a person with
ordinary skill in the art. See Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed.
Cir. 2013) (When considering whether a claimed invention would have been
obvious, “the knowledge of [an ordinarily skilled] artisan is part of the store
of public knowledge that must be consulted.”). Such evidence does not
change the combination that formed the basis of the grounds of
unpatentability based on obviousness instituted in this proceeding. Id.; see
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also In re Donohue, 766 F.2d 531, 534 (Fed. Cir. 1985). Accordingly, we
are not persuaded that PersonalWeb has presented a sufficient basis to
exclude Dr. Clark’s rebuttal declaration.
Second, PersonalWeb contends that the “could” and “might”
statements in Dr. Clark’s rebuttal declaration should be excluded, because
those statements are irrelevant, prejudicial, confusing, lacking foundation,
and beyond the scope of this proceeding. PO Mot. 11. In response, EMC
contends that the statements in Dr. Clark’s rebuttal declaration were offered
in response to PersonalWeb’s arguments. Opp. 13 (citing e.g., PO Resp. 27;
Ex. 2017 ¶ 49). Having reviewed PersonalWeb’s patent owner response and
Dr. Clark’s rebuttal declaration, we determine that Dr. Clark’s testimony is
reasonable rebuttal evidence in light of PersonalWeb’s arguments.
Furthermore, PersonalWeb’s arguments concerning Dr. Clark’s statements
affect the weight to be given by us to Dr. Clark’s testimony in deciding
whether the instituted grounds of unpatentability render the challenged
claimed unpatentable. When weighing evidence, we are capable of
determining whether the prior art references anticipate or render obvious the
challenged claims without being confused, misled, or prejudiced by Dr.
Clark’s testimony. Thus, we are not persuaded that PersonalWeb has
presented a sufficient basis to exclude any portions of Dr. Clark’s rebuttal
declaration.
Third, PersonalWeb submits that Dr. Clark’s rebuttal declaration of
what Kantor’s software allegedly could do is irrelevant because an inter
partes review is limited to printed publications and patents. Id. at 11-12.
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EMC counters that Dr. Clark’s rebuttal declaration (Ex. 1089 ¶¶ 26)
regarding what Kantor’s software “could” do is relevant and admissible.
Opp. 13. EMC points out that Dr. Clark’s rebuttal declaration merely
explains “what a person of skill in the art, reading the Kantor reference,
would [have understood] the reference to disclose about Kantor’s software.”
Id. (citing Ex. 1089 ¶ 26). We agree with EMC that Dr. Clark is not offering
opinions on how Kantor’s software might operate but, rather, on what it
discloses or suggests. Id. Thus, we conclude it is relevant and we are not
persuaded that PersonalWeb has presented a sufficient basis to exclude this
portion of Dr. Clark’s rebuttal declaration.
Fourth, PersonalWeb also submits that Dr. Clark’s rebuttal declaration
includes new obviousness allegations not presented previously with the
petition. Id. at 12-13. In response, EMC contends that the statements in Dr.
Clark’s rebuttal declaration were offered in response to PersonalWeb’s
arguments. Opp. 14 (citing e.g., PO Resp. 3-18, 27; Ex. 2017 ¶¶ 21-37, 60-
62). Having reviewed PersonalWeb’s patent owner response and
Dr. Clark’s rebuttal declaration, we determine that Dr. Clark’s testimony is
reasonable rebuttal evidence in light of PersonalWeb’s arguments. Thus, we
are not persuaded that PersonalWeb has presented a sufficient basis to
exclude any portions of Dr. Clark’s rebuttal declaration.
Finally, PersonalWeb contends that Dr. Clark’s rebuttal declaration
contradicts his prior deposition. PO Mot. 13-15. We are not persuaded by
PersonalWeb’s arguments. Rather, we agree with EMC that Dr. Clark’s
rebuttal testimony is consistent with his earlier testimony. Opp. 14-15.
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PersonalWeb argues that Dr. Clark has changed his testimony on what
part of Kantor is a “data item” (PO Mot. 13-14), but we agree with EMC that
Dr. Clark has focused on the inner files of the zip file as the relevant portion.
Compare Ex. 1009 ¶¶ 86, 100 with Ex. 1089 ¶¶ 7-10. Additionally,
PersonalWeb argues that Dr. Clark has changed his testimony with respect
to whether a “sequence” can have gaps (PO Mot. 14), where EMC argues
that his testimony is consistent. Opp. 14. We do not discern that Dr. Clark’s
answer to a question related to “a sequence of people” (Ex. 2016, 94-98)
contradicts with Dr. Clark’s rebuttal testimony on “a sequence of bits” of a
data item (Ex. 1089 ¶ 28). Dr. Clark in the prior deposition also testified
that there are examples of sequences with intervening gaps including
Fibonacci sequences, random sequences, odd sequences, and even
sequences. Opp. 15 (citing Ex. 2016, 191-193).
In addition, Dr. Clark’s rebuttal testimony that “zipfiles are not always
compressed,” and the inner files of a zip file may be uncompressed
(Ex. 1089 ¶¶ 9-11), is consistent with his earlier testimony that the inner
files of a zip file are compressed typically (Ex. 2016, 55, 59, 66-67).
Moreover, Dr. Clark’s testimony is reasonable rebuttal evidence in light of
the evidence submitted by PersonalWeb. Dr. Clark merely points out in his
rebuttal declaration that PersonalWeb’s evidence also shows that zip files
are not always compressed. Ex. 1089 ¶ 9 (citing Ex. 2004, 3 (the zip file
format defines seven compression methods which include “Compression
method 0” that does not compress the file); Ex. 1083, 262 (Dr. Dewar agrees
that “the zipfile standard allows for uncompressed files.”)).
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For the foregoing reasons, we decline to exclude Dr. Clark’s rebuttal
declaration (Ex. 1089).

III. CONCLUSION
EMC has met its burden of proof, by a preponderance of the evidence,
in showing that claims 1, 2, 81, and 83 of the ’096 Patent are unpatentable
based on the following ground of unpatentability:
Claims Basis References
1, 2, 81, and 83 § 103(a) Kantor and Satyanarayanan

IV. ORDER
In consideration of the foregoing, it is
ORDERED that claims 1, 2, 81, and 83 of the ’096 Patent are held
unpatentable;
FURTHER ORDERED that EMC’s Motion to Exclude Evidence is
dismissed;
FURTHER ORDERED that PersonalWeb’s Motion to Exclude
Evidence is denied; 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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PETITIONER:

Peter M. Dichiara, Esq.
David L. Cavanaugh, Esq.
WILMER CUTLER PICKERING HALE & DORR LLP
peter.dichiara@wilmerhale.com
david.cavanaugh@wilmerhale.com

PATENT OWNER:

Joseph A. Rhoa, Esq.
Updeep S. Gill, Esq.
NIXON & VANDERHYE P.C.
jar@nixonvan.com
usg@nixonvan.com