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

Patent Trial and Appeal Board

May 15, 2014

11980688 (P.T.A.B. May. 15, 2014)

Trials@uspto.gov Paper 64
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 IPR2013-00084
Patent 7,945,544 B2
____________

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

CHANG, 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 16, 2012,
requesting an inter partes review of claim 1 of U.S. Patent No. 7,945,544 B2
(“the ’544 patent”). Paper 3 (“Pet.”). PersonalWeb Technologies, LLC and
Level 3 Communications, LLC (collectively, “PersonalWeb”) filed a patent
owner preliminary response. Paper 9 (“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 claim 1.
Pursuant to 35 U.S.C. § 314, the Board instituted this trial on May 17, 2013,
as to claim 1 of the ’544 patent. Paper 14 (“Dec.”).
After institution, PersonalWeb filed a patent owner response
(Paper 33 (“PO Resp.”)), and EMC filed a reply to the patent owner
response (Paper 40 (“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 claim 1 of
the ’544 patent is unpatentable under 35 U.S.C. §§ 102 and 103.

1
This proceeding, as well as IPR2013-00082, IPR2013-00083, IPR2013-
00085, IPR2013-00086, and IPR2013-00087, 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 63.
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A. Related Proceeding
EMC indicates that the ’544 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 ’544 patent
The ’544 patent relates to a method for identifying a data item
(e.g., a data file or record) in a data processing system, by using an identifier
that depends on all of the data in the data item and only on the data in the
data item. Ex. 1001, 1:45-49; 3:53-56. Thus, the identity of a data item is
said to be independent of its name, origin, location, and address. Id. at
3:56-59. According to the ’544 patent, it is desirable to have a mechanism
for identifying identical data items to reduce duplicate copies of a data item.
Id. at 3:37-40. Figure 10(b) of the ’544 patent, reproduced below, is a flow
chart for determining an identifier of a simple or compound data item.

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As shown in Figure 10(b) of the ’544 patent, for a simple data item
(a data item whose size is less than a particular given size) (S216 and S218),
a data identifier (True Name) is computed using a function (e.g., a message
digest (“MD”) function, such as MD4 or MD5, or a secure hash algorithm
(“SHA”) function). Id. at 12:18-49, 13:31-42; figs. 10(a) & 10(b). As a
result, a data item that has an arbitrary length is reduced to a relatively small,
fixed size identifier (True Name) that represents the data item. Id.
If the data item is a compound data item (a data item whose size is
greater than the particular given size), the system will partition the data item
into segments (S220); assimilate each segment (S222); compute the True
Name of the segment; create an indirect block consisting of the computed
segment True Names (S224); assimilate the indirect block (S226); and
replace the final 32 bits of the resulting True Name by the length modulo 32
of the compound data item (S228). Id. at 13:43-61, fig. 10(b). The result is
the True Name of the compound data item. Id.
Figure 11 of the ’544 patent is reproduced below:

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Figure 11 of the ’544 patent depicts a mechanism for assimilating a
data item into a file system. The purpose of this mechanism is to add a
given data item to the True File registry. Id. at 14:4-11. If the data item
already exists in the registry, the duplicate will be eliminated. Id.
To assimilate a data item, the system will determine the True Name of
the data item corresponding to the file (S230); look for an entry for the True
Name in the True File Registry (S232); and determine whether a True Name
entry exists in the True File Registry (S232). Id. at 14:4-27, fig. 11. If the
entry record includes a corresponding True File ID (Step S237), the system
will delete the file (Step S238). Otherwise the system will store the True
File ID in the entry record (S239). Id. If there is no entry in the True File
Registry for the True Name (S232), the system will create a new entry in the
True File Registry for the True Name (S236). Id.
C. Challenged Claim
According to EMC, claim 1 essentially requires obtaining “values” for
two data items, and then comparing these values to ascertain whether the
two data items correspond to each other (e.g., whether they are the same).
Pet. 16. Claim 1 recites the following:
1. A computer-implemented method, the method
comprising:
(A) for a first data item comprising a first plurality of parts,
(a1) applying a first function to each part of said first
plurality of parts to obtain a corresponding part value for each
part of said first plurality of parts,
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wherein each part of said first plurality of parts comprises
a corresponding sequence of bits, and
wherein the part value for each particular part of said first
plurality of parts is based, at least in part, on the corresponding
bits in the particular part, and
wherein two identical parts will have the same part value
as determined using said first function,
wherein said first function comprises a first hash
function; and
(a2) obtaining a first value for the first data item, said
first value obtained by applying a second function to the part
values of said first plurality of parts of said first data item, said
second function comprising a second hash function;
(B) for a second data item comprising a second plurality of parts,
(b1) applying said first function to each part of said
second plurality of parts to obtain a corresponding part value
for each part of said second plurality of parts,
wherein each part of said second plurality of parts
consists of a corresponding sequence of bits, and
wherein the part value for each particular part of said
second plurality of parts is based, at least in part, on the
corresponding bits in the particular part of the second plurality
of parts; and
(b2) obtaining a second value for the second data item by
applying said second function to the part values of said second
plurality of parts of said second data item; and
(C) ascertaining whether or not said first data item corresponds
to said second data item based, at least in part, on said first
value and said second value.
Ex. 1001, 38:34-39:3 (emphases and indentions added).
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D. Prior Art Relied Upon
EMC relies upon the following prior art references:
Woodhill US 5,649,196
2
July 15, 1997 (Ex. 1005)

Frederick W. Kantor, “FWKCS (TM) Contents-Signature System
Version 1.22,” FWKCS122.REF (Aug. 10, 1993) (“Kantor,”
Ex. 1004)

E. Grounds of Unpatentability
The Board instituted the instant trial based on the following grounds
of unpatentability:
Claim Basis References
1 § 102(e) Woodhill
1 § 102(b) Kantor
1 § 103(a) Kantor and Woodhill
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

2
Woodhill claims the benefit of U.S. Patent Application No. 08/085,596,
which was filed on July 1, 1993.
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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. 9.
The parties agree with that claim construction. Pet. 6; PO Resp. 1. As noted
in the Decision on Institution, that claim construction is consistent with the
specification. Dec. 8-9 (citing Ex. 1001, 2:17-18 (“the terms ‘data’ and
‘data item’ as used herein refer to sequences of bits.”); id. at 2:18-22, 27-32).
We discern no reason to deviate from that claim construction for the
purposes of this decision.
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B. Principles of Law
To establish anticipation, each and every element in a claim, arranged
as recited in the claim, must be found in a single prior art reference. Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008);
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001). 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).
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) objective evidence of nonobviousness.
Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966).
The level of ordinary skill in the art is reflected by the prior art of record.
See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
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In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich,
579 F.2d 86, 91 (CCPA 1978).
We analyze the instituted grounds of unpatentability in accordance
with the above-stated principles.
C. Claim 1 – Anticipated by Woodhill
EMC asserts that claim 1 is unpatentable under 35 U.S.C. § 102(e) as
anticipated by Woodhill. Pet. 50-57. As support, EMC provides detailed
explanations as to how each claim element, arranged as recited in the claim,
is disclosed by Woodhill. Id. EMC also relies on the declaration of
Dr. Douglas W. Clark. Ex. 1009 ¶¶ 43-49.
PersonalWeb counters that Woodhill does not describe all of the
limitations of claim 1. PO Resp. 3-15. Specifically, PersonalWeb contends
that: (1) Woodhill fails to describe applying a second hash function to
shadow files (id. at 5-11 (citing Ex. 2016 ¶¶ 25-35)); and (2) Woodhill does
not describe binary object identifiers for the first data item and the second
data item (id. at 11-15 (citing Ex. 2016 ¶¶ 36-40)). PersonalWeb also
proffers a declaration of Dr. Robert B. K. Dewar. Ex. 2016 ¶¶ 20-41.
Upon review of the parties’ arguments and evidence, we determine
that EMC has demonstrated by a preponderance of the evidence that claim 1
is unpatentable under 35 U.S.C. § 102(e) as being anticipated by Woodhill.
Woodhill
Woodhill discloses a system for distributed storage management on a
computer network system using binary object identifiers. Ex. 1005, 1:11-17.
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The system includes a remote backup file server and a plurality of local area
networks in communication with the remote backup file server. Id.
Figure 1 of Woodhill, reproduced below, depicts a computer network
system that includes a distributed storage management system:

As illustrated in Figure 1 of Woodhill, remote backup file server 12
communicates with wide area network 14, which communicates with a
plurality of local area networks 16. Id. at 3:12-30. Each local area network
16 includes multiple user workstations 18 and local computers 20. Id. at
3:24-44. The storage space on each disk drive 19 on each local computer 20
is allocated according to the hierarchy illustrated in Figure 2. Id. at 3:31-44.
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Woodhill’s system includes a Distributed Storage Manager (DSM)
program for building and maintaining the file database. Id. at 3:44-49.
The DSM program views a file as a collection of data streams, and divides
each data stream into one or more binary objects. Id. at 4:13-23; 7:40-43;
fig. 5A, item 132. Specifically, data streams represent regular data,
extended attribute data, access control list data, etc. Id. at 7:44-47. If the
size of the data stream is larger than the maximum binary object size, then
the DSM program divides the data stream into multiple binary objects;
otherwise, a single binary object represents the data stream. Id. at 4:23-30;
7:47-59; fig. 5A, items 134 and 136. For each binary object being backed
up, a binary object identification record is created in a file database and
includes a Binary Object Identifier to identify a particular binary object
uniquely. Id. at 7:60-8:1; 8:33-34.
Binary object identifiers are calculated based on the contents of the
data instead of from an external and arbitrary source so that the binary object
identifier changes when the contents of the binary object changes. Id. at
8:57-62; 8:40-42. Notably, the binary object identifier includes a binary
object hash field that is calculated against the contents of the binary object
taken one word (16 bits) at a time using a hash algorithm. Id. at 8:22-32.
According to Woodhill, duplicate binary objects can be recognized from
their identical binary object identifiers, even if the objects reside on different
types of computers in a heterogeneous network. Id. at 8:62-65.
For large database files on the network computer system, the DSM
program utilizes a technique of subdividing the large database files into
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granules, and then tracks changes from the previous backup copy of the
“granule” level. Id. at 14:53-65. This technique is used to reduce the
amount of data that must be transmitted to the remote backup file server. Id.
at 15:4-8. Figure 5G of Woodhill illustrates the “granularization” procedure
and is reproduced below:

As depicted in Figure 5G, if this is the first time that the binary object
is being backed up using the “granularization” technique (step 402), the
DSM program creates a shadow file, which contains a contents identifier for
each granule in the binary object (step 404). Id. at 15:9-24. Each contents
identifier includes a 32-bit hash number which is calculated against the
contents of the granule. Id. at 15:24-30; Fig. 5A, step 138.
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Each time that the binary object is backed up, the DSM program
calculates the contents identifier for each granule in the binary object, and
then compares it to the contents identifier of the granule from the last time
the binary object was backed up to determine if the granule has changed. Id.
at 15:32-38. At step 406, the DSM program calculates a change identifier
for each granule of the binary object and stores it in the shadow file for that
binary object. Id. at 15:40-45.
Applying a second hash function to shadow files
Claim 1 requires “obtaining a first value for the first data item, said
first value obtained by applying a second [hash] function to the part values
of said first plurality of parts of said first data item” (i.e., “a hash of
hashes”). In its petition, EMC asserts that Woodhill’s binary object
identifiers for the shadow files meet this limitation. Pet. 53-56 (citing
Ex. 1005, 5:62-63, 7:60-8:31; 9:6-28; 15:16-24; Ex. 1009 ¶¶ 43-49).
PersonalWeb, however, argues that Woodhill’s granularization
process does not disclose applying a second hash function to shadow files.
PO Resp. 5, 7 (citing Ex. 2016 ¶¶ 29-35). In particular, PersonalWeb and its
expert assert that “Binary Object identifiers 74 are not mentioned in
connection with Woodhill’s ‘granularization’ procedure, and are not used
therein.” PO Resp. 8 (citing Ex. 2016 ¶ 31). PersonalWeb also maintains
that EMC’s reliance on Woodhill’s statement that “the default operation is to
back up all files on all disk drives 19 on the local computer 20” (Ex. 1005,
5:62-63) is incorrect because “Woodhill never describes shadow files as
being stored on disk drives 19 of local computers 20.” Id. at 10 (citing
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Ex. 1005, 15:4-9; Ex. 2016 ¶ 34). Additionally, PersonalWeb, citing to its
expert testimony, alleges that a binary object identifier is not created for a
shadow file, because the granularization process, in which the shadow files
are created, is not used for backing up copies of binary objects for storage on
local computers. Id. at 8-9 (citing Ex. 2016 ¶¶ 31-35). PersonalWeb further
contends that a shadow file will not be backed up by the DMS program, as a
shadow file does not meet Woodhill’s definition of a “file” that requires at
least two data streams. Id. at 11 (citing Ex. 1005, 4:14-15; Ex. 2016 ¶ 35).
In its reply, EMC responds that Woodhill discloses “the application of
a hash to the ‘contents identifiers’ in a shadow file.” Reply 1, n.1.
Specifically, EMC alleges that Woodhill discloses calculating a binary
object identifier for each shadow file when the DSM program backs up the
file. Id. at 2. EMC also submits that the shadow file’s binary object
identifier is for the associated underlying file or binary object. Id. at 6-7.
We agree with EMC.
PersonalWeb and its expert testimony narrowly focus on Woodhill’s
granularization procedure. Notably, Woodhill specifically states that each of
the functions performed by the DSM program operates in cooperation with
the other functions to form a unitary computer program. Ex. 1005, 4:62-
5:2; figs. 5a-5l. The disclosure of Woodhill merely divides the DSM
program into several distinct functions for explanation purposes. Id.
We agree with EMC that Woodhill’s “default operation is to back up
all files on all disk drives 19 on the local computer 20” and each shadow file,
like all files stored on disk drives 19, is divided into one or more binary
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objects to be backed up. Pet. 53 (citing Ex. 1005, 5:62-63); 55 (citing
Ex. 1009 ¶¶ 46-48; Ex. 1005, 4:13-34; 5:61-63). As noted by EMC, in the
process of backing up shadow files, Woodhill would obtain a first value by
calculating a binary object identifier (i.e., applying a second hash function)
for each shadow file binary object (i.e., the part values – the first hash).
Pet. 55-56 (citing Ex. 1009 ¶¶ 45-48; Ex. 1005, 7:60-8:31; 15:16-24).
EMC’s expert, Dr. Clark, testifies:
46. Prior to backing up a binary object using the
granularization technique for the first time, the local computer
storing the binary object creates a “shadow file” containing the
granule contents identifiers for each granule of that binary
object. (Id. at col. 15, ll. 16-24; Ex 1005.) Woodhill also
discloses claim portions [1c] and [1e]
3
through his process of
creating shadow files on local computers to store the latest
granule contents identifiers for granularized binary objects,
and then backup these shadow files. In particular, a shadow
file, including each contents identifier for each granule of a
binary object, like any file will be divided into one or more
Binary Objects. In some cases, due to the concise nature of a
shadow file, a shadow file may be backed up using a single
binary object.
47. As I have illustrated, each shadow file binary object, like
all binary objects, has a corresponding Binary Object
Identifier. Further, each Binary Object Identifier includes a hash
of the contents of the Binary Object. Consequently, a Binary
Object Identifier for a shadow file binary object satisfies these
claim elements because it is a hash (second function) of the

3
“Claim portions [1c] and [1e]” refer to steps (a2) and (b2) of claim 1.
Ex. 1009 ¶ 16.
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contents identifiers, or granule hashes (i.e., “part values” of
the plurality of parts [granules]).
Ex. 1009 ¶¶ 46-47 (emphases added).
Upon reviewing the evidence on record, we credit the testimony of
Dr. Clark over that of Dr. Dewar. See Yorkey v. Diab, 601 F.3d 1279, 1284
(Fed. Cir. 2010) (holding that Board has discretion to give more weight to
one item of evidence over another “unless no reasonable trier of fact could
have done so”). We find that Dr. Clark’s explanations are consistent with
Woodhill. See, e.g., Ex. 1005, 4:13-34; 4:62-5:2; 5:61-63; 7:60-8:31;
15:16-24; figs. 5a-5l. On the other hand, Dr. Dewar’s testimony (Ex. 2016
¶ 34) that shadow files are not stored on the local computers contradicts the
disclosure of Woodhill that shadow files are created by the DSM program
and stored on the disk drives of the local computers. See, e.g., Ex. 1005,
15:21-24 (The DSM program “creates a ‘shadow file’ which contains a
‘contents identifier’ for each ‘granule’ in the binary object.”); 5:6-9 (The
DSM program “operates in the same fashion on each local computer 20 on
the network computer system 10.”); 5:7-9; fig. 2, item 24 (The DSM
program resides on each disk drive 19 on each local computer 20.); 3:35-49;
fig. 3 (The DSM program builds and maintains file database 25, which
includes file identification record 34 and binary object identifier 74, on one
of disk drives 19 on each local computer 20.); 14:62-65; 15:4-6 (The DSM
utilizes the granularization procedure to subdivide large databases files into
granules and then tracks changes from the previous backup copy at the
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granule level to reduce the amount of data that are being transmitted from
the local computer to the remote backup file server.).
To substantiate its position that shadow files are not stored on disk
drives 19 on local computers 20, PersonalWeb also relies on Woodhill’s
statement that the granularization “technique of subdividing files into
‘granules’ . . . is not utilized in making backup copies of [database file]
binary objects for storage on local computers.” PO Resp. 10 (citing Ex.
1005, 15:4-9). However, such reliance is misplaced. As EMC notes,
reading Woodhill’s statement in context, the statement merely confirms that,
when backing up large database files using the granularization procedure,
the system sends the backup copies of the database files to a remote server.
Reply 3; see also Ex. 1005, 14:59-61 (“As a result, in most cases, the entire
‘large’ database file would have to be backed up to the remote backup file
server 12.”). PersonalWeb does not point out where the DSM program
would execute the granularization procedure to create the shadow files. Nor
does it explain sufficiently why the DSM program would not be executing
the granularization procedure on the local computer. Given the disclosures
of Woodhill noted above, we agree with EMC that the DSM program
executes the granularization procedure to create shadow files on disk drive
19 of local computer 20, and not on remote backup file server 12. Reply 3.
We also are not persuaded by PersonalWeb’s argument and expert
testimony that Woodhill sets forth a definition of the word “file” that
requires at least two data streams, and that the DMS program would not
backup a shadow file to create a binary object identifier, because a shadow
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file does not meet that alleged definition of the word “file.” See PO Resp.
11; Ex. 2016 ¶¶ 27, 35. PersonalWeb’s argument and expert testimony are
not consistent with the explicit disclosure of Woodhill. In particular, they
ignore the fact that Woodhill specifically uses the word “file” in the term
“shadow file.” They also do not provide sufficient explanation why a
shadow file cannot have more than one data stream or more than one binary
object. In fact, a shadow file is consistent with Woodhill’s description of a
file. See Ex. 1005, 15:21-24 (the DSM program “creates a ‘shadow file’
which contains a ‘contents identifier’ for each ‘granule’ in the binary
object.”); id., 4:18-19 (“[A] file may contain its normal data and may also
contain extended attribute data.”); id., 2:23-24 (“data files comprised of one
or more binary objects”) (Emphases added.). As EMC notes, the actual text
in Woodhill that PersonalWeb relies on is not a definition of the word “file,”
and does not require a file to have at least two data streams. Reply 4 (citing
Ex. 1005, 4:14-15). Indeed, Woodhill does not preclude a file from having
only one data stream, or only one binary object. Ex. 1005, 2:23-24 (“storing
data files comprised of one or more binary objects”); 4:21-23 (The DMS
program “divides each data stream into one or more binary objects.”)
(Emphasis added.).
For the reasons stated above, EMC has demonstrated by a
preponderance of the evidence that Woodhill describes applying a second
hash function to shadow files (i.e., “a hash of hashes”).
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Shadow file identifiers are for the first and second data items
Claim 1 requires “ascertaining whether or not said first data item
corresponds to said second data item based, at least in part, on said first
value and said second value.” In its petition, EMC takes the position that
Woodhill meets this limitation because “by comparing binary objects of
successive versions of shadow files, Woodhill by extension compares the
binary objects underlying those shadow files.” Pet. 56 (citing Ex. 1005,
9:5-28; Ex. 1009 ¶ 49). EMC further maintains that the comparison is
“based, at least in part, on said first value” (the binary object identifier
corresponding to a previous version of a shadow file) and “said second
value” (the binary object identifier corresponding to the current version of
the shadow file). Id. at 56-57 (citing Ex. 1005, 9:5-28; Ex. 1009 ¶ 49).
PersonalWeb counters that Woodhill’s shadow file binary object
identifiers are not “for the first data item” or “for the second data item.”
PO Resp. 11-15 (citing Ex. 2016 ¶¶ 36-40). According to PersonalWeb,
“it would be highly unlikely, if not impossible, for a single ‘shadow file’ to
be separated from a data stream to form a single standalone ‘binary object,’”
and that “the more likely scenario under this assumption would be that a
‘binary object’ would be made up of many shadow files.” Id. at 11-12.
In its reply, EMC responds that “PersonalWeb’s assumptions about
Woodhill are directly contradictory to Woodhill’s explicit disclosure.”
Reply 6 (citing Ex. 1005, 4:13-23; Ex. 1088 ¶¶ 14-15). We agree with
EMC. Woodhill expressly discloses dividing files into one or more data
streams, or one or more binary objects. Ex. 1005, 2:20-24 (“The present
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invention is further directed to a method for the management of storage
space . . . storing data files comprised of one or more binary objects.”);
4:22-23 (The DSM program “further divides each data stream into one or
more binary objects.”); 4:25-26 (A single binary object may represent a data
stream.). Nothing in Woodhill suggests that a plurality of shadow files must
be combined into a single binary object.
We also agree with EMC that a binary object identifier for a shadow
file is “a hash of hashes” for the underlying database binary object. Reply
6-7. As Dr. Clark shows in his illustration (step 1), reproduced below, a
binary object for a large database file (a first or second data item) is divided
into a plurality of granules (a first or second plurality of parts) (Ex. 1088
¶¶ 17-18; Ex. 1005, 14:53-15:16):

As shown in step 2 of Dr. Clark’s illustration (Ex. 1088 ¶ 17),
Woodhill’s DSM program calculates a contents identifier for each granule of
the database binary object, using a hash function (first hash function), and
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stores each contents identifier in a shadow file (part value). Ex. 1088 ¶ 20
(citing Ex. 1005, 15:21-28). A binary object identifier (a first or second
value) is calculated using a hash function (second hash function) based on
the contents of the shadow file (“a hash of hashes”). Id. at ¶ 21 (citing
Ex. 1005, 8:58-60; 15:21-28); see also Ex. 1005, 7:60-8:65. Therefore, the
shadow file binary object identifier (step 3) is for the underlying database
binary object (step 1). Id. We credit Dr. Clark’s testimony as it is consistent
with the explicit disclosure of Woodhill.
For the reasons stated above, EMC provides sufficient explanations
and evidence to show that Woodhill describes obtaining a first value for the
first data item and a second value for the second data item, as well as
“ascertaining whether or not said first data item corresponds to said second
data item based, at least in part, on said first value and said second value,” as
required by claim 1.
Conclusion
For the foregoing reasons, we hold that EMC has demonstrated by a
preponderance of the evidence that claim 1 is anticipated by Woodhill.
D. Claim 1 – Anticipated by Kantor
EMC asserts that claim 1 is unpatentable under 35 U.S.C. § 102(b) as
anticipated by Kantor. Pet. 28-36. In support of the asserted ground of
unpatentability, EMC provides detailed explanations as to how each claim
element, arranged as recited in the claim, is disclosed by Kantor. Id. EMC
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also directs our attention to the declaration of Dr. Clark. Id. (citing Ex. 1009
¶¶ 3-4, 17-25).
In its patent owner response, PersonalWeb counters that Kantor does
not describe “applying a first function comprising a hash to each of a
plurality of parts of the first data item,” as recited in claim 1. PO Resp.
15-25. PersonalWeb also alleges that Kantor is not a “printed publication”
within the meaning of 35 U.S.C. § 102(b). Id. at 27-34. In support of its
argument, PersonalWeb proffers Dr. Dewar’s declaration (Ex. 2016
¶¶ 43-55) and 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 claim 1 is unpatentable under 35 U.S.C. § 102(b) as being anticipated by
Kantor. 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 zipfile, modulo
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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
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 identifying files that have the same contents stored
on the electronic bulletin board systems. 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
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.
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. 28. 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
’544 patent. Id. at 3. 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 28 (citing Ex. 1004, Title Page). EMC maintains that Dr. Frederick W.
Kantor distributed Kantor—the user manual (version 1.22), the version
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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. 3, n.1 (citing
Ex. 1004, 3, 158-159). According to EMC, Kantor was accessible to others
in the relevant community of the users and system operators of electronic
Bulletin Board Systems. Id. As support, EMC proffers a declaration of Mr.
Michael A. Sussell (Ex. 1049) and declarations of Mr. Jason S. Sadofsky
(Exs. 1077, 1087).
In its patent owner response, PersonalWeb counters that Kantor is not
a “printed publication.” PO Resp. 27-34. In particular, PersonalWeb alleges
that EMC has not established that the specific version of Kantor existed
prior to the critical date. Id. at 29. PersonalWeb contends that there is no
evidence that Kantor was disseminated publicly, catalogued, or indexed in a
meaningful way. Id. at 32. 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 30.
We have reviewed parties’ arguments and supporting evidence.
Based on the evidence before us, we are not persuaded by PersonalWeb’s
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
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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) (citation
omitted).
Indexing is not “a necessary condition for a reference to be publicly
accessible,” but 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
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
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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
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
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Board System is a computer system that allows users to share files,
messages, and articles, as well as search, upload, and download files.
Ex. 1049 ¶¶ 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 FWKCS ZIP file that contained both
the software as well as related documentation such as user manuals” prior to
the critical date. Id. ¶ 15; see also 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
the software on the “Welcome” screen, and made the FWKCS Zip file
available in four different directories. Id. ¶¶ 18-20. Mr. Sussell further
testifies that 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
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with a “1993 archived” version, and determined that Kantor is identical to
the “1993 archived” version. Ex. 1077 ¶¶ 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; see also Ex. 1087 ¶¶ 10-11;
Ex. 2014 ¶ 5. According to Mr. Sadofsky, Kantor was publicly accessible
prior to the critical date. Ex. 1077 ¶¶ 13, 16-17.
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. 33-34 (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 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. Ex. 2014 ¶¶ 6-11; Ex. 1087 ¶¶ 5, 14. Instead, he
used non-compatible software (DOS 8.0 and 32-bit Windows XP operating
system that was released in 2001). Id. 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
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system that was used normally in 1993-1994 timeframe, the user could
locate Kantor without difficulty. Ex. 1087 ¶¶ 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. 1087 ¶¶ 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.
29-31 (citing Ex. 2008, 52-55; Ex. 2013, 29-30; Ex. 2015, 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
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
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presumption is raised that the portion of the public concerned with the art
would know of the invention.).
The evidence on this record sufficiently supports 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 grounds of unpatentability under 35 U.S.C. §§ 102(b)
and 103(a).
Applying a hash function to each part of the zip file
Claim 1 requires “for a first data item comprising a first plurality of
parts, . . . applying a first function to each part of said first plurality of parts
to obtain a corresponding part value for each part of said first plurality of
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parts . . . wherein said first function comprises a first hash function.”
Claim 1 also requires “obtaining a first value for the first data item, said first
value obtained by applying a second function to the part values of said first
plurality of parts of said first data item, said second function comprising a
second hash function.”
In its petition, EMC takes the position that Kantor describes the
aforementioned limitations. EMC explains that Kantor discloses a “data
item” (a zip file) comprising a “first plurality of parts” (the data files within
the zip file). Pet. 34 (citing Ex. 1004, 2-3, 48-49; Ex. 1009 ¶ 19). Indeed,
Kantor applies a CRC hash function (a first hash function) to the inner files
of the zip file (the first plurality of parts) to obtain a contents signature for
each inner file (part value). Id. (citing Ex. 1004, 48-49; Ex. 1009 ¶ 19). As
to the “second hash” limitation, Dr. Clark testifies that Kantor discloses
creating zip-file contents signatures for each zip file on the system by
hashing the contents signatures for the individual files in the zip file (“a hash
of hashes”). Ex. 1009 ¶ 20 (citing Ex. 1004, 9).
In its patent owner response, PersonalWeb counters that Kantor
“teaches away” from applying a hash function to each of a plurality of parts
of the first data item. PO Resp. 16. PersonalWeb also alleges that Kantor
does not apply the CRC hash function to the parts of a zip file because the
function is applied to uncompressed files before they are compressed and
packaged into the zip file. Id. (citing Ex. 2016 ¶¶ 43-55). According to
PersonalWeb, the CRC hash function is applied to different bits
(uncompressed files) than the bits (compressed files) that make up the inner
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files in the zip file (the alleged data item), and therefore, the CRC hash
function is not applied to the compressed inner files that are parts of the zip
file in determining the zip-file contents signature of the zip file. Id. at 16-23.
At the outset, we note that, although a “teaching away” argument
could be relevant to an obviousness analysis, “whether a reference teaches
away from an invention is inapplicable to an anticipation analysis.”
ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1344 (Fed.
Cir. 2012) (citing Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d
1354, 1361 (Fed. Cir. 1998)) (quotation marks omitted).
In any event, we are not persuaded by PersonalWeb’s arguments and
expert testimony, as they rest on the erroneous premise that Kantor’s data
files contained within a zip file must be compressed files. Rather, we agree
with EMC that “nothing in Kantor limits the ‘inner files’ of a zip file to
compressed files” and Kantor’s program works with zip files of all forms.
Reply 7-8 (citing Ex. 1088 ¶¶ 26-28; Ex. 1084, 262-63; Ex. 1004, 2, 9). As
Dr. Clark notes, PersonalWeb’s evidence shows that zip files are not always
compressed, as the standard zip-file format defines seven compression
methods, including “Compression method 0,” which does not compress the
inner files when packaging them into a zip file. Ex. 1088 ¶ 26 (citing
Ex. 2007, 3; Ex. 1084, 262).
Dr. Dewar’s reliance on Kantor’s statements regarding file
compression ratio to support his testimony—“Kantor confirms that the inner
files in the ZIP files described in Kantor are compressed”—is misplaced.
Ex. 2016 ¶ 46 (citing Ex. 1004, 2 of Preface, 9, 55). The mere fact that
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Kantor refers to a compression ratio does not support PersonalWeb’s
position that the inner files of a zip file must be compressed, because in the
situation where “Compression method 0” is used, which does not compress
the inner file, the file compression ratio is one. Contrary to Dr. Dewar’s
testimony, those portions of Kantor cited by Dr. Dewar do not require the
inner files of a zip file to be compressed. Instead, the cited portions of
Kantor merely state that the zip-file contents signature depends on the
contents of the files, and provide examples of items that the zip-file contents
signature do not depend upon. Ex. 1004, 2 of Preface (“FWKCS has the
special ability to make a ‘zipfile contents signature’, (‘zcs’) which is
independent of . . . the names and dates of files in the zipfile, zipped path
information, and file compression ratio.”); id. at 9 (“This has the desirable
property that the resulting zcs does not depend on the names of the files, . . .
nor on the method nor amount of compression . . .”); id. at 55 (“This zcs
does not depend on the names, dates, compression ratios, order of
appearance, zipped paths, nor comments, of files appearing in the zipfile, nor
on the zipfile’s name, date, nor zipfile comment.”) (Emphases added).
We also agree with EMC that, even if Kantor only used compressed
inner files, Kantor still would describe the disputed claim limitations, as the
first function would comprise a CRC hash function and a compression
function. Reply 8 (citing Ex. 1088 ¶ 28). Indeed, because claim 1 recites
the open-ended phrase “comprising” when describing what the first function
includes (“wherein said first function comprises a first hash function”), the
first function is not limited to just a hash function. PersonalWeb does not
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explain adequately why the “first function” cannot comprise more than a
hash function. Moreover, compressing a file merely changes the format of
the file, but it does not change the contents of the file. In other words, both
compressed and uncompressed versions of an inner file have the same
contents (a corresponding sequence of bits). As discussed above, Kantor’s
contents signatures are generated based on the contents of the files using the
CRC hash function (Ex. 1004, 6-8), and Kantor’s zip-file contents signatures
depend on the contents of the files and do not depend on the format of the
files (Ex. 1004, 2 of Preface, 9, 55). Claim 1 does not place any limitation
on the format of the plurality of parts (“wherein each part of said first
plurality of parts comprises a corresponding sequence of bits”). Therefore,
PersonalWeb’s argument that the CRC hash function applies to
uncompressed files before they are compressed and packaged into the zip
file is unavailing.
We are not persuaded by PersonalWeb’s argument that a zip file may
include information in addition to the inner files of the zip file (e.g., headers)
and, therefore, Kantor’s CRC hash function does not apply to “each part of
said first plurality of parts.” That argument is not commensurate within the
scope of claim 1. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (It is
well established that limitations not appearing in the claims cannot be relied
upon for patentability.). Claim 1 recites “for a first data item comprising a
first plurality of parts” (emphasis added). As discussed in the claim
construction analysis above, the claim term “data item” includes a portion of
a file. EMC relies on Kantor’s disclosure of a zip file to describe “a first
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data item” and the data files within the zip file to describe “a first plurality of
parts.” Therefore, we agree with EMC (Reply 10, n.3) that “nothing in
claim 1 prohibits the inclusion of [the] addition information in the ‘data
item,’ (comprising a first plurality of parts).”
Additionally, we are not persuaded by PersonalWeb’s argument that
Kantor merely “reads” the CRC values from the zip file and the
uncompressed file lengths (sizes) from the zip file, and does not apply a
second hash function in determining the zip-file contents signatures. PO
Resp. 21. According to Kantor, contents signatures are generated from the
contents of the inner files of a zip file by applying a CRC hash function to
the inner files. Ex. 1004, 48-49 (“Make a ‘File contents signature’ for (each)
File in zipfile(s). . . . The output includes the contents_signature for the file
inside the zipfile (using the 32_bit CRC and the uncompressed length of that
file). . .”); id. at 1-2 of Preface, 6, 9, 48-49, 55. PersonalWeb also narrowly
focuses on Kantor’s reading steps and ignores Kantor’s other steps for
determining a zip-file contents signature—“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.” Ex. 1004, 9.
Dr. Clark testifies that addition modulo 2^32 is a well-known simple hashing
function that uses addition to calculate a value for a file based on the
contents of the file. Ex. 1009 ¶ 20 (citing Ex. 1011). Dr. Clark’s testimony
is consistent with Kantor’s disclosure that the resulting zip-file contents
signature “does not depend on the names of the files, the dates of the files,
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the order in which they appear in the zip file, nor on the method nor amount
of compression, nor does it depend on comments.” Ex. 1004, 9.
Given the express disclosure of Kantor, we determine that EMC has
demonstrated sufficiently that Kantor’s CRC hash function (a first hash
function) applies to “each part of said first plurality of parts” of the first data
item, as recited in claim 1.
E. Claim 1 – Obvious over Kantor and Woodhill
EMC asserts that claim 1 is unpatentable under 35 U.S.C. § 103(a) as
obvious over Kantor in view of Woodhill. Pet. 36. In particular, EMC
submits that “in the event PersonalWeb contends that Kantor does not satisfy
the claim limitation of a ‘plurality of parts’ of a data item, a person of
ordinary skill would have found it obvious to modify Kantor to meet that
limitation.” Id. EMC maintains that dividing a file into parts (e.g., dividing
a file into a plurality of binary objects or granules) was a well-known
technique to handle large files, as evidence by Woodhill, to reduce the
amount of data that must be transmitted. Id. (citing Ex. 1005, 4:14-30;
14:52-15:8; Ex. 1009 ¶ 26).
In its patent owner response, PersonalWeb counters that the
obviousness ground of unpatentability does not cure the deficiencies of
Kantor. PO Resp. 25. PersonalWeb essentially relies upon the same
arguments presented above with respect to the anticipation ground of
unpatentability based on Kantor. Id. at 25-26. As discussed above, we have
addressed those arguments and determined that they are unavailing.
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PersonalWeb also alleges that one with ordinary skill in the art would
not have modified Kantor to include small data items, because “there is no
need for this in Kantor as Kantor is concerned with avoiding duplicate files
and not with creating duplicates by backing up files.” Id. at 26. However,
PersonalWeb’s argument improperly focuses on Woodhill’s entire back-up
procedure. EMC’s proposed modification does not require incorporating
Woodhill’s entire back-up procedure into Kantor’s method of identifying
duplicate files. In fact, EMC merely relies upon Woodhill’s technique of
dividing a file into a plurality of parts. Pet. 36. “It is well-established that a
determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements.” In re Mouttet,
686 F.3d 1322, 1332 (Fed. Cir. 2012); see also In re Etter, 756 F.2d 852,
859 (Fed. Cir. 1985) (en banc) (“[T]he criterion [is] not whether the
references could be physically combined but whether the claimed inventions
are rendered obvious by the prior art as a whole.”). “To justify combining
reference teachings in support of a [ground of unpatentability] it is not
necessary that a device shown in one reference can be physically inserted
into the device of the other.” In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Moreover, incorporating Woodhill’s technique of dividing a file into a
plurality of parts (Ex. 1005, 4:14-30; 14:52-15:8; Ex. 1009 ¶ 26) into
Kantor’s method of identifying duplicate files would not have been beyond
the level of an ordinarily skilled artisan. KSR, 550 U.S. at 417 (“[I]f a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
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same way, using the technique is obvious unless its actual application is
beyond his or her skill.”).
PersonalWeb further submits that its evidence of non-obviousness
outweighs EMC’s evidence of obviousness. PO Resp. 26-27. In support of
its argument, PersonalWeb directs our attention to three licensing
agreements, as well as the declaration of Mr. Kevin Bermeister. Id. at 27
(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 claim 1 of the ’544 patent and the above-identified
license agreements. Reply 12-13. EMC argues that each of the licenses
granted rights to more than just claim 1, 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 claim 1.
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. GPAC, 57 F.3d at 1580. 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); Iron Grip Barbell Co. v. USA Sports,
Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004).
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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
agreements (Exs. 2010, 2011, 2012) are directed to the claimed subject
matter recited in claim 1. 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
claim 1. 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 claim 1, that success is
outweighed by the strong evidence of obviousness over Kantor and
Woodhill discussed above.
Based on the record before us, including the evidence of non-
obviousness presented by PersonalWeb and the evidence of obviousness
presented by EMC, we conclude that EMC has demonstrated by a
preponderance of the evidence that claim 1 would have been obvious over
the combination of Kantor and Woodhill.
F. 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,
2017) relating to those license agreements; and (3) Mr. Thompson’s
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declaration (Ex. 2014). Paper 50 (“Pet. Mot.”). PersonalWeb filed the
license agreements and Mr. Bermeister’s declarations as evidence of non-
obviousness to rebut EMC’s assertion that claim 1 would have been obvious
over the combination of Kantor and Woodhill. PO Resp. 12-13. 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 32-34.
With respect to the license agreements and Mr. Bermeister’s
declarations (Exs. 2010-2012; Exs. 2009, 2017), EMC argues that they are
irrelevant under Federal Rule of Evidence 402
4
, highly prejudicial,
confusing, and misleading under Federal Rule of Evidence 403. Pet. Mot.
1-13. As to Mr. Thompson’s declaration, EMC argues that it should be
excluded under Federal Rule of Evidence 402. Id. at 14-15. In particular,
EMC alleges that: (1) Mr. Thompson does not possess the skill of a person
within ordinary skill in the art (id. at 14, citing Ex. 1082, 13-14);
(2) Mr. Thompson did not use compatible software from the relevant time
period (id. at 14, citing Ex. 1082, 40-41; Ex. 2014, 4, 6); and
(3) Mr. Thompson did not follow the instructions provided with the zip file
(id. at 14, citing Ex. 1082, 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

4
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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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 claim 1 is unpatentable over the
combination of Kantor and Woodhill.
Accordingly, EMC’s motion to exclude evidence is dismissed as moot.
G. PersonalWeb’s Motion to Exclude
PersonalWeb seeks to exclude the following items of evidence:
(1) Kantor (Ex. 1004); (2) certain documents that corroborating witnesses’
knowledge and recollections (Exs. 1046-1048, 1051-1054, 1073, 1074,
1079-1081) and the portions of witnesses’ testimony regarding these
documents; (3) the declarations of Messrs. Sussell and Sadofsky (Exs. 1049,
1077, 1087) and Mr. Sadofsky’s deposition (Ex. 2013, 30, 66); and
(4) Dr. Clark’s rebuttal declaration (Ex. 1088 ¶¶ 26-27, 30). Paper 48 (“PO
Mot.”).
EMC opposes PersonalWeb’s motion to exclude. Paper 55 (“Opp.”).
In response, PersonalWeb filed a reply to EMC’s opposition to its motion to
exclude. Paper 58 (“PO Reply”). For the reasons stated below,
PersonalWeb’s motion to exclude is denied.
1. 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
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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. 1-8.
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. 1-6
(citing Exs. 1049, 1077, 1087).
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. 2008, 52-55, 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
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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 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 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
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issued patent. It is within the Board’s discretion to assign the appropriate
weight to be accorded to evidence.
Although Messrs. Sussell and Sadofsky, prior to the critical date,
personally did not post or review the particular version of Kantor relied upon
by EMC (Ex. 1004), they nevertheless 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. 1049 ¶¶ 3, 13, 15. Mr. 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, Kantor—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 generally are
not self-authenticating, it has been recognized that “[t]o authenticate
printouts from a website, the party proffering the evidence must produce
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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) (quoting In re
Homestore.com, Inc. Sec. Litig., 347 F. Supp. 2d 769, 782 (C.D. Cal. 2004))
(internal 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, *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
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. 1077 ¶¶ 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 Systems. Id.
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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. 1048).
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. 1077 ¶¶ 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; see also Ex. 1087 ¶¶ 10-11; Ex.
2014 ¶ 5. Mr. Sadofsky concludes that Kantor was publicly accessible prior
to the critical date. Ex. 1077 ¶¶ 13, 16. Therefore, we agree with EMC that
Kantor has been authenticated sufficiently to warrant its admissibility under
Federal Rules of Evidence 901(b)(1), (b)(3), and (b)(4).
In addition, we agree with EMC that Kantor also has been
authenticated as an “ancient document” under Federal Rule of Evidence
901(b)(8).
5
Opp. 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.”

5
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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Id.; Ex. 1077 ¶¶ 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. 1049, 1077, 1087.
PersonalWeb does not present sufficient or credible evidence to the
contrary. Based on the evidence before us, we determine that Kantor has
been authenticated sufficiently 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. 8), a “prior art document submitted as a ‘printed
publication’ under 35 U.S.C. § 102(a) is offered simply as evidence of what
it described, not for proving the truth of the matters addressed in the
document.” See, e.g., Joy Techs., Inc. v. Manbeck, 751 F. Supp. 225, 233
n.2 (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
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the critical date. Opp. 8. More importantly, the computer-generated
timestamp—August 10, 1993, at 1:22 AM—of the “1993 archived” version
of Kantor (Ex. 1077 ¶¶ 14-15; Ex. 1087 ¶¶ 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.
2. Documents Corroborating Witnesses’ Knowledge and Recollections
PersonalWeb asserts that certain documents submitted by EMC
(Exs. 1046-1048, 1051-1054, 1073, 1074, 1079-1081) and the declarations
of Messrs. Sussell and Sadofsky (Exs. 1049, 1077, 1087) regarding these
documents should be excluded because the documents have not been
authenticated properly and are inadmissible hearsay. PO Mot. 6-9.
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 1052,
1053, 1073, and 1074 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 8-9.
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EMC responds that its witnesses provided those documents to
corroborate their independent knowledge and recollections. Opp. 10. 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 10-12. 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 sufficient
explanations why each document should be excluded. For instance,
PersonalWeb does not explain adequately why the declaration of Mr. Sussell
(Ex. 1049 ¶¶ 6, 8, 18, 27) is not sufficient to authenticate Exhibits
1051-1054, 1073, and 1074, or why the declarations of Mr. Sadofsky
(Ex. 1077 ¶¶ 7-17; Ex. 1087 ¶¶ 10-16) are not sufficient to authenticate
Exhibits 1046-48 and 1079-1081. See Fed. R. Evid. 901(b)(1).
6
Nor does
PersonalWeb explain sufficiently why the following documents are not self-
authenticated: (1) Exhibits 1046-1048 and 1051 – articles that have
LexisNexis® trade inscriptions; (2) Exhibits 1073 and 1074 – Usenet
newsgroup periodicals that have Usenet trade inscriptions; and (3) Exhibit

6
Fed. R. Evid. 901(b)(1). Testimony of a Witness with Knowledge.
Testimony that an item is what it is claimed to be.
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1048 – 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).
7

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
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 exhibits.
To the extent PersonalWeb relies upon the same arguments with respect
to Kantor for excluding the aforementioned exhibits, we have addressed
those arguments above and determined that they are unavailing. We also

7
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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agree with EMC that the exhibits 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. 1049, 1077, 1087) should be excluded. As we
discuss above and below in the next section, they 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 1046-1048, 1051-1054, 1073, 1074, and 1079-
1081, as well as the declarations of Messrs. Sussell and Sadofsky (Exs.
1049, 1077, 1087) concerning those exhibits.
3. Declarations of Messrs. Sussell and Sadofsky
PersonalWeb argues that the declarations of Messrs. Sussell and
Sadofsky (Exs. 1049, 1077, 1087) should be excluded as hearsay under
Federal Rule of Evidence 801 and 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. 1048) prior to
the critical date. PO Mot. 9. PersonalWeb also argues that Messrs. Sussell
and Sadofsky “are not qualified experts in the field.” Id. at 11.
PersonalWeb further alleges that Mr. Sadofsky’s deposition (Ex. 2013, 30,
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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. 13. 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
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 ’544 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. 1049 ¶ 3. Mr. Sussell’s testimony is based on his personal
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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,
currently, 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. 1077 ¶ 3. 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. 1087 ¶ 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. 1077 ¶¶ 14-15.
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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. 1077 ¶¶ 14-15; Ex.1087 ¶¶ 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. 1077 ¶¶ 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.
1049, 1077, 1087) and Mr. Sadofsky’s deposition (Ex. 2013, 30, 66).
4. Clark’s Rebuttal Declaration
PersonalWeb alleges that Dr. Clark’s rebuttal declaration (Ex. 1088
¶¶ 26-27, 30) should be excluded, because it is irrelevant, prejudicial,
confusing, and beyond the scope of this proceeding. PO Mot. 11-14. In
particular, PersonalWeb argues that 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. PersonalWeb also contends that
Dr. Clark’s rebuttal declaration (Ex. 1088 ¶¶ 26-27) contradicts his prior
deposition (Ex. 2015, 55, 59, 66-67) and constitutes new evidence that
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should have been presented earlier. Id. at 12-14.
EMC counters that Dr. Clark’s rebuttal declaration (Ex. 1088
¶¶ 26-27, 30) regarding what Kantor’s software “could” do is relevant and
admissible. Opp. 13-14. According to EMC, Dr. Clark’s rebuttal
declaration (Ex. 1088 ¶ 30) was submitted in response to PersonalWeb’s
argument that “Kantor’s software reads part identifiers (CRC values) from a
zip file instead of generating them” (PO Resp. 20-22; Ex. 2016 ¶¶ 49-50).
Id. 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, including the
software’s disclosed capabilities to generate CRC values when it cannot look
them up.” Id. at 14 (citing Ex. 1088 ¶ 30).
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 submitted
in its patent owner response. Notably, Dr. Clark’s rebuttal declaration
responds appropriately to the issue raised by PersonalWeb (PO Resp. 20-22;
Ex. 2016 ¶¶ 49-50)—whether Kantor, a software user manual, describes
generating a hash of hashes, as required by claim 1, when Kantor describes
how the software calculates a zip-file contents signature. PersonalWeb has
not demonstrated sufficiently that Dr. Clark’s rebuttal testimony is irrelevant
or exceeds the proper scope of reply evidence.
We also are not persuaded by PersonalWeb’s argument that
Dr. Clark’s rebuttal declaration (Ex. 1088 ¶¶ 26-27) contradicts his earlier
Case IPR2013-00084
Patent 7,945,544 B2
57
testimony (Ex. 2015, 55, 59, 66-67). Rather, we agree with EMC
(Opp. 14-15) that Dr. Clark’s rebuttal testimony that “zip files are not
always compressed” (Ex. 1088 ¶¶ 26-27) is consistent with his earlier
testimony that the inner files of a zip file are compressed typically (Ex. 2015,
55, 59, 66-67). Moreover, Dr. Clark’s testimony (Ex. 1088 ¶¶ 26-27) is
reasonable rebuttal evidence in light of the evidence submitted by
PersonalWeb in support of its patent owner response. Dr. Clark merely
points out in his rebuttal declaration that PersonalWeb’s evidence also
shows that zip files are not always compressed. Ex. 1088 ¶ 26 (citing
Ex. 2007, 3 (The zip file format defines seven compression methods,
including “Compression method 0,” which does not compress the file.);
Ex. 1084, 262 (Dr. Dewar agrees that “the zip file standard allows for
uncompressed files.”)).
For the foregoing reasons, we decline to exclude Dr. Clark’s rebuttal
declaration (Ex. 1088).
III. CONCLUSION
EMC has met its burden of proof by a preponderance of the evidence
in showing that claim 1 the ’544 patent is unpatentable based on the
following grounds of unpatentability:
Claim Basis References
1 § 102(e) Woodhill
1 § 102(b) Kantor
1 § 103(a) Kantor and Woodhill
Case IPR2013-00084
Patent 7,945,544 B2
58

IV. ORDER
In consideration of the foregoing, it is
ORDERED that claim 1 of the ’544 patent is 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.

Case IPR2013-00084
Patent 7,945,544 B2
59

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