Unified Patents Inc.v.PersonalWeb Technologies, LLC

Patent Trials and Appeals Board

Jul 24, 2014

08960079 - (D) (P.T.A.B. Jul. 24, 2014)

Trials@uspto.gov Paper 13
571-272-7822 Entered: July 24, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

UNIFIED PATENTS, INC.,
Petitioner,

v.

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

Case IPR2014-00702
Patent 5,978,791
____________

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

ZECHER, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
Unified Patents, Inc. (“Unified”) filed a Petition (Paper 1, “Pet.”)
requesting an inter partes review of claims 1–4, 29–33, 35, and 41 of
U.S. Patent No. 5,978,791 (“the ’791 patent,” Ex. 1001). Paper 1.
PersonalWeb Technologies, LLC and Level 3 Communications, LLC
(collectively “PersonalWeb”) timely filed a Patent Owner Preliminary
Response (“Prelim. Resp.”). Paper 8. We have jurisdiction under 35 U.S.C.
§ 314.
The standard for instituting an inter partes review is set forth in
35 U.S.C. § 314(a), which provides:
THRESHOLD.–The Director may not authorize an inter partes
review to be instituted unless the Director determines that the
information presented in the petition filed under section 311
and any response filed under section 313 shows that there is a
reasonable likelihood that the petitioner would prevail with
respect to at least 1 of the claims challenged in the petition.
Based on the particular circumstances of this case, we exercise our
discretion under 35 U.S.C. § 325(d) and deny the Petition.
A. Related Matters
Unified identifies three other Petitions for inter partes review filed by
third parties that involve the ’791 patent: (1) EMC Corp. and VMware, Inc.
v. PersonalWeb Techs., LLC, IPR2013-00082 (we held claims 1–4, 29–33,
and 41 unpatentable as being anticipated by, or obvious over, Woodhill, and
our decision in that regard now is on appeal before the United States Court
of Appeals for the Federal Circuit); (2) NetApp, Inc. v. PersonalWeb Techs.
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LLC, IPR2013-00319 (we denied the Petition as to claims 1–3, 29, and 35);
and (3) Rackspace US, Inc. v. PersonalWeb Techs. LLC, IPR2014-00057
(we instituted an inter partes review as to claims 1–4, 29–33, 35, and 41 as
being anticipated by, or obvious over, Woodhill). Pet. 3. In addition,
Unified indicates that the ’791 patent is the subject of a pending ex parte
reexamination titled U.S. Patent Application No. 90/012,931. Id. Unified
also identifies numerous matters where PersonalWeb asserted claims of the
’791 patent against third parties, as well as ten other Petitions for inter
partes review filed by third parties that are related to other patents owned by
PersonalWeb. Id. at 4–6.
Unified filed its Petition along with a Motion for Joinder requesting
that we join this proceeding with IPR2014-00057. Paper 3. In a decision
entered concurrently, Unified’s Motion for Joinder is denied.
B. The Invention of the ’791 Patent
The invention of the ’791 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, 1:14–18; 3:29–32, 6:6-10.
According to the ’791 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 directly derivable from the data associated therewith.
Id. at 3:33–35. The invention of the ’791 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 3:36–39.
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C. Illustrative Claims
Claims 1, 30, 33, and 35 are independent claims. Claims 2–4 and 29
depend directly or indirectly from independent claim 1. Claims 31, 32, and
41 depend directly or indirectly from independent claim 30. Independent
claims 1, 30, 33, and 35 are illustrative of the invention of the ’791 patent
and are reproduced below:
1. In a data processing system, an apparatus
comprising:
identity means for determining, for any of a plurality of
data items present in the system, a substantially unique
identifier, the identifier being determined using and depending
on all the data in the data item and only the data in the data
item, whereby two identical data items in the system will have
the same identifier; and
existence means for determining whether a particular
data item is present in the system, by examining the identifiers
of the plurality of data items.

Ex. 1001, 39:14–23.
30. A method of identifying a data item present in a
data processing system for subsequent access to the data item,
the method comprising:
determining a substantial unique identifier for the data
item, the identifier depending on and being determined using all
of the data in the data item and only the data in the data item,
whereby two identical data items in the system will have the
same identifier; and
accessing a data item in the system using the identifier of
the data item.

Id. at 42:58–67.
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33. A method of duplicating a given data item present
at a source location to a destination location in a data
processing system, the method comprising:
determining a substantially unique identifier for the given
data item, the identifier depending on and being determined
using all of the data in the data item and only the data in the
data item, whereby two identical data items in the system will
have the same identifier;
determining, using the data identifier, whether the data
item is present at the destination location; and
based on the determining whether the data item is
present, providing the destination location with the data item
only if the data item is not present at the destination.

Id. at 43:11–23.
35. A method for determining whether a particular
data item is present in a data processing system, the method
comprising:
(A) for each data item of a plurality of data items present
in the system,
(i) determining a substantially unique identifier
for the data item, the identifier depending on and
being determined using all the data in the data item
and only the data in the data item, whereby two
identical data items in the system will have the
same identifier; and
(ii) making and maintaining a set of identifiers of
the plurality of data items; and
(B) for the particular data item,
(i) determining a particular substantially unique
identifier for the data item, the identifier depending
on and being determined using all of the data in the
data item and only the data in the data item,
whereby two identical data items in the system will
have the same identifier; and
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(ii) determining whether the particular identifier is
in the set of data items.

Id. at 43:42–63.
D. Prior Art Relied Upon
Unified relies upon the following prior art reference:
Woodhill US 5,649,196 July 15, 1997 Ex. 1003
(effectively filed July 1, 1993)

E. Alleged Grounds of Unpatentability
Unified challenges claims 1–4, 29–33, 35, and 41 of the ’791 patent
based on the alleged grounds of unpatentability set forth in the table below.
Pet. 7–8, 29-58.
Reference Basis Challenged Claims
Woodhill § 102(e) 1–4, 29–33, 35, and 41
Woodhill § 103(a) 1–4, 29–33, 35, and 41

II. ANALYSIS
PersonalWeb contends that multiple, overlapping petitions, each of
which presents grounds of unpatentability based on Woodhill for many of
the same claims, should not be instituted for the ’791 patent. Prelim.
Resp. 1. In particular, PersonalWeb notes that it appealed our decision in
IPR2013-00082 to the Federal Circuit, in which we concluded that, based on
a preponderance of the evidence, claims 1–4, 29–33, and 41 of the
’791 patent were unpatentable as anticipated by, or obvious over, Woodhill.
Id. at 1–2. PersonalWeb then contends that, if the Federal Circuit affirms
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our decision in IPR2013-00082, it would have been a waste of time, effort,
and resources to re-litigate the same issues in this proceeding. Id. at 2.
PersonalWeb further contends that, even if the Federal Circuit reverses our
decision in IPR2013-00082, it still would have been a waste of time, effort,
and resources to re-litigate the same issues in this proceeding because all the
challenged claims are under review in IPR2014-00057. Id. We agree with
PersonalWeb.
We have discretion under 35 U.S.C. § 325(d) to reject a petition when
the same or substantially the same prior art or arguments were presented
previously in another proceeding before the Office. The relevant portions of
that statute are reproduced below:
In determining whether to institute or order a proceeding under
this chapter, chapter 30, or chapter 31, the Director may take
into account whether, and reject the petition or request because,
the same or substantially the same prior art or arguments
previously were presented to the Office.
35 U.S.C. § 325(d).
Although we recognize that, as a result of our decision, Unified will
not have an opportunity to submit arguments or evidence with respect to
claims 1–4, 29–33, 35, and 41 of the ’791 patent, there are sufficient reasons
to exercise our discretion to deny the Petition in this proceeding. Notably, in
IPR2013-00082, we held that claims 1–4, 29–33, and 41 of the ’791 patent
are unpatentable as anticipated by, or obvious over, Woodhill, the same
reference being asserted in this proceeding. Compare IPR2013-00082,
Paper 83, 16–56, 66 with Pet. 7–8, 29–58. With the exception of claim 35,
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the pending outcome of IPR2013-00082 before the Federal Circuit may
render moot the need to reach a final written decision regarding the
patentability of claims 1–4, 29–33, and 41 of the ’791 patent in this
proceeding.
In IPR2014-00057, claims 1–4, 29–33, 35, and 41 of the ’791 patent
were challenged by Rackspace US, Inc. and Rackspace Hosting, Inc.
(collectively “Rackspace”) as anticipated by, or obvious over, Woodhill.
IPR2014-00057, Paper 1, 28–59. Upon reviewing the information presented
in that Petition, as well as the arguments presented by PersonalWeb in its
corresponding Preliminary Response, we concluded that Rackspace had
shown a reasonable likelihood it would prevail in challenging claims 1–4,
29–33, 35, and 41 as anticipated by, or obvious over, Woodhill. IPR2014-
00057, Paper 9, 25–26. The Petition in this proceeding challenges each
claim that already is subject to an inter partes review in IPR2014-00057.
Compare Pet. 7–8, 29–58 with IPR2014-00057, Paper 9, 26. Therefore,
regardless of the outcome of IPR2013-00082 before the Federal Circuit,
each of the challenged claims is under review in IPR2014-00057 and, if that
trial were to proceed to a final written decision, a determination will be
made as to whether claims 1–4, 29–33, 35, and 41 are unpatentable as
anticipated by, or obvious over, Woodhill.
Taking into consideration the efficient administration of the Office
under 35 U.S.C. § 316(b), as well as the reasons set forth in the decision
denying Unified’s Motion to Joinder entered concurrently, we exercise our
discretion under 35 U.S.C. § 325(d) and deny the Petition in this proceeding
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because the same or substantially the same prior art and arguments were
presented previously in IPR2013-00082 and IPR2014-00057.

III. ORDER
Accordingly, it is ORDERED that the Petition is DENIED.

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For PETITIONER:

Michael L. Kiklis
Scott McKeown
Oblon Spivak
cpdocketkiklis@oblon.com
cpdocketmckeown@oblon.com

For PATENT OWNERS:

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