Apple Inc.v.Far Stone Tech, Inc.

Patent Trial and Appeal Board

May 25, 2016

10241626 (P.T.A.B. May. 25, 2016)

Trials@uspto.gov Paper 30
571-272-7822 Date Entered: May 25, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE INC.,
Petitioner,

v.

FAR STONE TECH., INC.,
Patent Owner.
____________

Case IPR2015-00599
Patent 7,120,835 B2
____________

Before HOWARD B. BLANKENSHIP, MICHAEL R. ZECHER, and
BETH Z. SHAW, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

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

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I. BACKGROUND
Petitioner Apple Inc. filed a request for an inter partes review of
claims 1–7 and 9–13 of U.S. Patent No. 7,120,835 B2 (Ex. 1001, “the ’835
patent”) under 35 U.S.C. §§ 311–319. Paper 2 (“Petition” or “Pet.”). Patent
Owner, Far Stone Tech. Inc. filed a Preliminary Response. Paper 6
(“Prelim. Resp.”). The Board instituted this inter partes review of claims 1–
7 and 9–13 on an asserted ground of unpatentability for obviousness. Paper
8 (“Dec. on Inst.”).
Subsequent to institution, Patent Owner filed a patent owner response.
Paper 14 (“PO Resp.”). Petitioner filed a reply. Paper 16 (“Pet. Reply”).
An oral hearing concerning this case was held on April 18, 2016. The
record contains a transcript of the hearing (Paper 27, “Tr.”).
The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has shown by
a preponderance of the evidence that claims 1–7 and 9–13 of the ’835 patent
are unpatentable.

A. Related Proceedings
According to the parties, the ’835 patent is involved in the lawsuit
Farstone Tech., Inc. v. Apple Inc., No. 8:13-cv-01537-SVW-JEM (C.D.
Cal.). Pet. 3; Paper 5, 3.

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B. The ’835 Patent
The ’835 patent relates to a backup/recovery module that establishes
at least one recovery unit to hold backup data. Ex. 1001, Abstract.
Figure 1 of the ’835 patent is reproduced below.

Figure 1 is a schematic block diagram of computer equipment
according to a preferred embodiment of the invention. Ex. 1001, col. 3,
ll. 55–57. The equipment includes processing system 10 and displaying
system 20. Processing system 10 includes processing unit 12, storage
device 14, input/output device 16, and a hardware resource such as hard disk
18. Id. at col. 4, l. 59 – col. 5, l. 3. Processing system 10 has a
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backup/recovery module that can create at least one recovery point to hold
backup data. Id. at col. 5, ll. 11–16.

C. Illustrative Claim
Of the challenged claims, claims 1 and 9 are independent. Claim 1,
reproduced below, is illustrative.
1. A computer equipment having a prompt access
function, said computer equipment comprising:
a processing system having at least one hardware
resource with a backup/recovery module, said backup/recovery
module creating at least one recovery unit to hold backup data;
and
a displaying system for displaying backed up data of said
processing system, said backed up data of said processing
system corresponding to each of said at least one recovery unit,
said displaying system having a selecting means, said selecting
means selecting a status corresponding to said processing
system at the time of creation of each of said at least one
recovery unit, said displaying system displaying said selected
status;
wherein said at least one recovery unit respectively
reflects a corresponding status of said at least one hardware
resource at the time of creation of each of said at least one
recovery unit, said at least one hardware resource can be
restored to status at the time of creation of each of said at least
one recovery unit.

D. Asserted Prior Art
Gold et al. (“Gold”) US 6,785,786 B1 Aug. 31, 20041
(Ex. 1009)

1 Petitioner has provided a copy of the Patent Cooperation Treaty parent
application (published March 11, 1999) as Exhibit 1012.
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E. Instituted Grounds of Unpatentability
We instituted inter partes review on the following ground of
unpatentability under 35 U.S.C. § 103(a) (Dec. on Inst. 15):

Reference

Claims
Gold 1–7 and 9–13

II. ANALYSIS
A. Claim Interpretation
In an inter partes review, the Board construes claim terms in an
unexpired patent using their broadest reasonable construction in light
of the specification of the patent in which they appear. 37 C.F.R.
§ 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed.
Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S.
Ct. 890 (mem.) (2016). The claim language should be read in light of the
specification, as it would be interpreted by one of ordinary skill in the art. In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The
Office must apply the broadest reasonable meaning to the claim language,
taking into account any definitions presented in the specification. Id. (citing
In re Bass, 314 F.3d 575, 577 (Fed. Cir. 2002)). There is a presumption that
a claim term carries its ordinary and customary meaning. CCS Fitness, Inc.
v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). The “ordinary
and customary meaning” is that which the term would have to a person of
ordinary skill in the art in question. In re Translogic Tech., Inc., 504 F.3d
1249, 1257 (Fed. Cir. 2007).
When the word “means” appears in a claim element in combination
with a function, there is a presumption that it is a means-plus-function
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element to which § 112, sixth paragraph, applies.2 Signtech USA, Ltd. v.
Vutek, Inc., 174 F.3d 1352, 1356 (Fed. Cir. 1999).

1. “Selecting Means” (Claim 1)
Claim 1 of the ’835 patent as reproduced above, recites “selecting
means, said selecting means selecting a status corresponding to said
processing system at the time of creation of each of said at least one
recovery unit.” Petitioner contends that the “selecting means” is a means-
plus-function limitation that is to be interpreted in accordance with
35 U.S.C. § 112, sixth paragraph. Petitioner submits, however, that there is
no corresponding structure in the patent relating to the “selecting means,”
rendering the claim indefinite. Pet. 8–13. For purposes of the Petition,
Petitioner applies the prior art with the assumption that the “selecting
means” is a user interface and input devices. Id. at 14.
Subsequent to filing of the instant Petition, the United States District
Court for the Central District of California (“District Court”) entered a claim
construction order that Patent Owner has filed as Exhibit 2001. Based, in
part, on declaration evidence that is not of record here, the District Court
determined that “selecting” is a common computer function and requires no
additional structure to be disclosed. Ex. 2001, 15. Following the guidance
of In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303,
1316 (Fed. Cir. 2011), the District Court held that the function of simply

2 Section 4(c) of the Leahy-Smith America Invents Act (“AIA”) re-
designated 35 U.S.C. § 112, paragraph six, as 35 U.S.C. § 112(f). Pub. L.
No. 112-29, 125 Stat. 284, 296 (2011). Because the ’835 patent has a filing
date before September 16, 2012 (effective date of § 4(c)), we will refer to
the pre-AIA version of § 112.
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selecting or choosing a recovery unit on a displaying system does not need
to be implemented by a special purpose computer, such that disclosure of an
algorithm is unnecessary. Ex. 2001, 14–15. “Therefore, ‘selecting means’
is not indefinite for lack of corresponding structure.” Id. at 15.
For purposes of Institution, we adopted the District Court’s
construction of “selecting means” as referring to an operation that does not
require description of corresponding structure (such as an algorithm) in the
Specification beyond a general purpose computer. Dec. on Inst. 7. Patent
Owner acknowledges and does not dispute this construction. PO Resp. 16.
We see no need to depart from this construction for purposes of this Final
Written Decision.

2. “Status”
Consistent with the position taken by Patent Owner in the related
District Court lawsuit, we interpret the term “status” as referring to a “state
or condition.” See Ex. 2001, 17 (“Furthermore, the Court does not object to
Farstone’s use of ‘state or condition’ as a substitute for ‘status’ in its
proposed constructions.”). Patent Owner acknowledges and does not dispute
this construction. PO Resp. 16. We see no need to depart from this
construction for purposes of this Final Written Decision.

3. “Backup/Recovery Module” (Claim 1) and “Processing
System” (Claim 9)

Subsequent to our Decision on Institution, the District Court
reconsidered the instant claims in view of the United States Court of
Appeals for the Federal Circuit’s recent decision in Williamson v. Citrix
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Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc). Ex. 2006, 1. In a
Supplemental Claim Construction Order, the District Court determined that
the “backup/recovery module” in claim 1 and the “processing system” in
claim 9 are limitations that must be construed in accordance with 35 U.S.C.
§ 112, sixth paragraph, but found no disclosed structure corresponding to the
claimed functions. Id. at 5‒10. The District Court held, accordingly, that
claims 1‒14 are invalid for indefiniteness under 35 U.S.C. § 112, second
paragraph. Id. at 11. According to Patent Owner, Patent Owner’s appeal of
the District Court’s judgment of invalidity is pending at the Federal Circuit.
Tr. 3:15‒22.
An inter partes review is limited in scope to consideration of
unpatentability under 35 U.S.C. §§ 102 or 103 over prior art patents or
printed publications. 35 U.S.C. § 311(b). The meanings of
“backup/recovery module” and “processing system” as used in the claims
are not in controversy in this proceeding. Only those terms that are in
controversy need to be construed, and only to the extent necessary to resolve
the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
803 (Fed. Cir. 1999). Accordingly, in this proceeding we do not construe
these terms because, regardless of the construction, there is no controversy
between the parties as to whether Petitioner has presented sufficient
evidence to support a finding that Gold properly accounts for each term.

4. “Displaying Backed Up Data” (Claims 1 and 9)
According to Patent Owner, in view of the Specification of the ʼ835
Patent, one of ordinary skill in the art would have understood displaying of
“backed up data” to include displaying the contents of backed up file data
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prior to performing a recovery operation. PO Resp. 26 (citing Ex. 2004
(Declaration of Dr. Matthew D. Green) ¶¶ 19, 35‒37). “In contrast, Gold
only describes the limited ability to view directory trees of files.” Id. at 27
(citing Ex. 2004 ¶¶ 24, 38).
The claims, however, do not recite that the contents of backup files
are displayed. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations
not appearing in the claims cannot be relied upon for patentability). Patent
Owner, relying on its expert (Dr. Green), refers to text in the Specification as
purportedly limiting the scope of the claims.
According to the expert:
The specification describes an embodiment of this display
operation explicitly, noting that: “[t]he users can conveniently
extract directory or files inside the recovery points. The users
can rename or remove any of them, view contents thereof, or
perform recovery operation, simultaneously and immediately.”
(Id. at [5:55‒59]) (emphasis added).

Ex. 2004 ¶ 35 (quoting Ex. 1001, col. 5, ll. 55‒59).
The capability of access to the contents of a recovery point, however,
does not require that the contents of backed up files are displayed without
further action of a user. Additionally, Patent Owner fails to address text in
the Specification that indicates a broader scope. The Specification states
that the “files contained in the recovery points can be easily opened, viewed,
copied, or the like.” Ex. 1001, col. 4, ll. 26–28 (emphasis added). In
particular:
Each recovery point is demonstrated in a form of file
folder to the users to facilitate operations for the users. The
users can conveniently extract directory or files inside the
recovery points. The users can rename or remove any of them,
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view contents thereof, or perform recovery operation,
simultaneously and immediately.

Id. at col. 5, ll. 54–59 (emphases added). Patent Owner’s expert Declaration
(Ex. 2004 ¶ 35) does not address the sentence immediately preceding the
description of what the user might do after a recovery point is demonstrated
in a form of file folder.
Patent Owner’s expert also opines that “allowing the ‘files contained
in the recovery points’ to ‘be easily opened, viewed, copied or the like’ . . .
overcomes a limitation in the prior art noted by the inventors.” Ex. 2004
¶ 36 (quoting Ex. 1001, col. 4, ll. 27‒30). However, that is but one
purported advantage of the invention. The ʼ835 patent discloses that a
principal advantage of the invention is that not all recovery points have to be
loaded into memory and mounted as logical drives before accessing a
recovery point. Ex. 1001, col. 1, ll. 8‒12, 25‒53. Our reviewing court
informs us that “[t]he fact that a patent asserts that an invention achieves
several objectives does not require that each of the claims be construed as
limited to structures that are capable of achieving all of the objectives.”
Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005) (en banc)
(quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 908 (Fed. Cir.
2004)). In Phillips, the Court found that “[a]lthough deflecting projectiles is
one of the advantages of the baffles of the [patent], the patent does not
require that the inward extending structures always be capable of performing
that function.” Id.
We, therefore, are persuaded that the claimed “displaying backed up
data” does not require that the contents of backed up files are displayed. We
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construe the phrase “only to the extent necessary to resolve the controversy.”
Vivid Techs., 200 F.3d at 803.

B. Instituted Ground of Unpatentability
1. Gold
Gold describes a computer backup and recovery apparatus. Ex. 1009,
Abstract.
Figure 3 of Gold is reproduced below.

Figure 3 illustrates the main functional modules of the backup agent.
Ex. 1009, col. 4, ll. 32–35. Dynamic scheduler 310 dynamically initiates a
backup cycle from client 210a. Id. at col. 4, ll. 51–54. Active file manager
module 320 monitors which files are to be opened for backing up. Id. at
col. 5, ll. 27–29. File differencing module (FDM) 330 selects the files to be
backed up by determining which files have been changed or added since the
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last backup. FDM 330 reads the current directory tree of client file system
322 and checks each file’s modified time/date against the entries in
Directory Tree File (DTF) 332 generated from the last backup. Id. at col. 6,
ll. 15–22. FDM 330 sends the list of selected new files to backup apparatus
240 to check for redundant copies already held on the backup server. Id. at
col. 6, ll. 33–57.
Block-differencing module (BDM) 340 determines which blocks in
each file have changed since the last backup. Id. at col. 6, ll. 65–66. Data
transfer module (DTM) 350 performs the actual transfer of the backup data
to backup apparatus 240. Id. at col. 7, l. 66 – col. 8, l. 1. All the differences
in all the changed files since the last backup are stored in backup directory
files (BDFs). All backup data is indexed such that it can be reconstructed
from the various BDFs on backup apparatus 240. Id. at col. 8, ll. 17–21.
Every time a backup is performed, a new DTF is generated and sent to
backup apparatus 240. Id. at col. 8, ll. 36–38.
Restore module 360 performs restore operations using the DTFs to
generate a directory tree of all files that can be restored. Id. at col. 8, ll. 43–
45. A directory tree of all files that can be restored is generated and viewed
in a graphical user interface. When a user selects a specific file from a
specific backup, the DTFs are used to identify which portions of which BDF
contain the file data. This data is then copied from backup apparatus 240
and written to the specified location in client storage. Id. at col. 8, ll. 59–66.

2. Section 103(a) — Gold
Petitioner applies the teachings of Gold to the requirements of
claims 1–7 and 9–13, relying on the Declaration of Andrew Hospodor, Ph.D.
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(Ex. 1002). Pet. 15–26. Upon consideration of Petitioner’s explanations and
supporting evidence, we are persuaded by Petitioner’s contentions. We
adopt Petitioner’s contentions as our own. Patent Owner argues in its Patent
Owner Response that Gold fails to teach certain claim limitations, which we
address in turn.

3. Patent Owner’s Arguments
(a) Displaying Backed Up Data (Claims 1 and 9)
Patent Owner argues that Gold does not teach “displaying backed up
data,” as recited in claims 1 and 9. PO Resp. 25‒29. Patent Owner’s
arguments are based on the premise, however, that “displaying backed up
data” requires that the content of files be displayed. We disagree that the
claim phrase requires that contents of files be displayed. See § II.A.4, supra.
We, therefore, agree with Petitioner that the claimed “displaying
backed up data” does not distinguish over Gold’s description of a directory
tree of all files that can be restored. Pet. 20 (citing Ex. 1009, col. 8, l. 65 –
col. 9, l. 3).

(b) Providing a User with an Outcome of Recovery
Operation Beforehand (Claim 9)

Independent claim 9 includes within its preamble the recitation of a
recovery method for “providing a user with an outcome of recovery
operation beforehand.” Ex. 1001, col. 9, ll. 40–41. Petitioner submits that
Gold does that by “allowing the user to view the files that will be restored.”
Pet. 23.
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Patent Owner responds that the claim 9 language requires more than
display of files that will be restored, although the Response is not entirely
clear in specifying what more claim 9 requires. See PO Resp. 29‒32. At the
oral hearing, however, Patent Owner’s counsel clarified Patent Owner’s
position that the disputed language requires, as argued by Patent Owner with
respect to displaying “backed up data,” displaying the data contained in files.
Tr. 23:9‒24:19.
JUDGE BLANKENSHIP: So you argue this requires
that the data within the files be displayed?

MS. SAYOUR: It provides context for that, that is a
separate element, but yes.

Id. at 24:16‒19.
We have considered the testimony of Dr. Green in support of Patent
Owner’s arguments (e.g., Ex. 2004 ¶¶ 41‒45), but we are persuaded that
“providing a user with an outcome of recovery operation beforehand”
requires no more than allowing the user to view the files that will be
restored, as taught by Gold. Pet. 23 (referring to elements 1[d] and 1[e] in
the clam chart, which, in turn, cite Ex. 1002, 8:65–9:3, 14:6–1, Figs. 2–4)).

(c) Wherein Said Data Contained in Said Processing
System Corresponding to Said At Least One Recovery
Unit Includes Configuration Corresponding to Said At
Least One Hardware Resource (Dependent Claims 3
and 11)

Patent Owner argues that Gold fails to teach “wherein said data
contained in said processing system corresponding to said at least one
recovery unit includes configuration corresponding to said at least one
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hardware resource,” as recited in dependent claims 3 and 11. Patent Owner
acknowledges that Petitioner relies, in part, on text in column 6 of Gold for
the teaching of the argued limitations of claims 3 and 11. PO Resp. 23. In
particular, Gold discloses:
As well as files, the FDM 330 identifies any
modifications to the system information used to rebuild the
system in disaster recovery. This covers areas such as NetWare
NDS partitions, disk partition information, file system types
and details (e.g. compressed), bootstrap partitions (e.g. MBR,
NetWare DOS partition).

Ex. 1009, col. 6, ll. 58– 63 (emphases added). Patent Owner does not argue
that system information such as disk partition information is not “hardware
configuration information,” but contends Gold does not teach or suggest
backing up such information. PO Resp. 23.
According to Patent Owner, Gold’s DTFs and BDFs do not back up
and store “non-file” hardware configuration information. PO Resp. 22
(referring to Ex. 2004 ¶¶ 24, 29). Patent Owner does not explain what it
means by “non-file” information. Patent Owner’s expert testifies that “a
skilled artisan would recognize that [the DTF and BDF] store only file
information, and therefore would not store non-file information such as
hardware configuration.” Ex. 2004 ¶ 29. Patent Owner’s expert
acknowledges that Gold describes that the FDM identifies modifications to
the “system information used to rebuild the system in disaster recovery.” Id.
¶ 30 (quoting Ex. 1009, col. 6, ll. 58‒63). According to Patent Owner’s
expert, however, “[s]uch information might be printed out, or recorded in a
separate location so that the user might, at a later point, manually
reconfigure the system prior to initiating recovery.” Id.
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We disagree with Patent Owner’s reading of Gold, as well as the
supporting testimony of its expert. It is the FDM — the file differencing
module — that identifies any modifications to the system information used
to rebuild the system in disaster recovery. Ex. 1009, col. 6, ll. 58–63. The
system information is not needed for restoration of selected files as
described in column 8, lines 59 through 66 of Gold. But the system
information is needed for the disaster recovery mode, in which backup
apparatus 240 can be used to restore a complete data environment in the
event of complete failure of the client system. Ex. 1009, col. 13, l. 59 –
col. 14, l. 5. The “complete data environment” is more than the operating
system. We, therefore, are not persuaded (see Ex. 2004 ¶ 32) that Gold’s
teaching of having an appropriate operating system installed prior to full
system recovery means that the user must manually install and configure all
“system information” for the operating system on the recovery machine
prior to disaster recovery.
Patent Owner’s expert concludes that Gold does not teach using
hardware configuration in the recovery process. PO Resp. 20 (citing
Ex. 2004 ¶¶ 24, 29‒30). The conclusion is based on the lack of express text
in Gold. See Ex. 2004 ¶¶ 24, 29‒30. But Patent Owner’s expert Declaration
does not address, let alone show error in, our preliminary findings in the
Decision on Institution as to why one of ordinary skill in the art would
appreciate that Gold teaches backing up data that “includes configuration
corresponding to said at least one hardware resource” as claimed. Dec. on
Inst. 13‒14.
According to Gold, “[t]he DTFs on the backup apparatus 240 are used
to determine the state of the system to be recovered.” Ex. 1009, col. 14,
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ll. 6–7. The restored state, to be operational, necessarily includes restoration
of the hardware configuration information. See Prelim. Resp. Patent Owner
explains that:
One of the objects of the claimed invention is to enable a user
to return the hardware resources in a processing system to a
state that is operational, including restoring the hardware
configuration information that makes that so, and in addition
includes backup file data of interest to the user.
Prelim. Resp. 4 (emphasis added).
We, therefore, are persuaded that one skilled in the art would
understand that Gold teaches backing up data that “includes configuration
corresponding to said at least one hardware resource” within the meaning of
claims 3 and 11.

III. CONCLUSION
For the foregoing reasons, we conclude that Petitioner has
demonstrated, by a preponderance of the evidence, that claims 1–7 and 9–13
of the ʼ835 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over
Gold.

IV. ORDER
In consideration of the foregoing, it is
ORDERED that claims 1–7 and 9–13 of the ’835 patent are held
unpatentable; and
FURTHER ORDERED that, because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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For Petitioner:
David L. Fehrman
dfehrman@mofo.com

Carlos Espinoza
cespinoza@mofo.com

Vincent J. Belusko
vbelusko@mofo.com

For Patent Owner:

Tonia Sayour
tsayour@cooperdunham.com

Ivan S. Kavrukov
ikavrukov@cooperdunham.com

Benjamin Y. Han
bhan@cooperdunham.com