Netapp, Inc.v.PersonalWeb Technologies, LLC

Patent Trial and Appeal Board

Jul 25, 2013

08960079 (P.T.A.B. Jul. 25, 2013)

Trial@uspto.gov Paper 19
571-272-7822 Entered: July 25, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

NetApp, Inc.
Petitioner,

v.

PERSONALWEB TECHNOLOGIES, LLC
Patent Owner.
____________

Case IPR2013-00319 (JYC)
Patent 5,978,791
____________

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

CHANG, Administrative Patent Judge

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

Case IPR2013-00319
Patent 5,978,791
2
INTRODUCTION
NetApp, Inc. (“NetApp”) filed a petition requesting an inter partes review of
claims 1-3, 29, and 35 of U.S. Patent 5,978,791 (“the ’791 patent”) (Paper 2,
“Pet.”), and a motion for joinder with IPR2013-00082 (Paper 5, “Mot.”).
1
In
response, PersonalWeb Technologies LLC (“PersonalWeb”) filed a patent owner
preliminary response. (Paper 17, “Prel. Resp.”)
We have jurisdiction under 35 U.S.C. § 314. For the reasons set forth
below, the Board, acting on behalf of the Director, denies the petition filed by
NetApp.
A. Related Proceedings
NetApp indicates that its petition is a second petition for inter partes review
of the ’791 patent, and the first petition was filed by EMC Corporation and VM
Ware, Inc. (collectively “EMC”) on December 15, 2012 (IPR2013-00082).
(Pet. 1.)
Five other related inter partes reviews are currently pending before the
Board—namely IPR2013-00083, IPR2013-00084, IPR2013-00085,
IPR2013-00086, and IPR2013-00087.
NetApp also identifies nineteen related district court litigations. (Pet. 1-3.)
For instance, the ’791patent is the subject of litigation styled PersonalWeb
Technologies LLC v. EMC Corporation and VMware, Inc., No 6:11-cv-00660-
LED (E.D. Tex.). (IPR2013-00082, Pet. 1.)

1
The motion for joinder has been decided in a separate decision. (Paper 18.)
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B. The ’791 Patent
The invention of the ’791 patent relates to a data processing system that
identifies data items using substantially unique identifiers, otherwise referred to as
True Names, which depend on all the data in the data item and only on the data in
the data item. Ex. 1001, Spec. 1:14-18, 3:29-32, and 6:6-10. According to the
’791 patent, the identity of a data item depends only on the data and is independent
of the data item’s name, origin, location, address, or other information not directly
derivable from the data associated therewith. Ex. 1001, Spec. 3:33-35. The
invention of the ’791 patent also examines the identities of a plurality of data items
in order to determine whether a particular data item is present in the data
processing system. Ex. 1001, Spec. 3:36-39.
C. Illustrative Claim
Independent claim 35 is illustrative:
35. A method for determining whether a particular data item is
present in a data processing system, the method comprising:
(A) for each data item of a plurality of data items present in the
system,
(i) determining a substantially unique identifier for the data item, the
identifier depending on and being determined using all of the data in
the data item and only the data in the data item, whereby two identical
data items in the system will have the same identifier; and
(ii) making and maintaining a set of identifiers of the plurality of data
items; and
(B) for the particular data item,
(i) determining a particular substantially unique identifier for the data
item, the identifier depending on and being determined using all of the
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data in the data item and only the data in the data item, whereby two
identical data items in the system will have the same identifier; and
(ii) determining whether the particular identifier is in the set of data
items.
D. Prior Art Relied Upon
NetApp relies upon the following prior art reference:
Woodhill et al. US 5,649,196 July 15, 1997 Ex. 1002
E. Alleged Grounds of Unpatentability
NetApp seeks to have claims 1-3, 29, and 35 of the ’791 patent cancelled
based on the following alleged grounds of unpatentability:
1. Claims 1-3, 29, and 35 as anticipated under U.S.C. § 102(e) by Woodhill.
2. Claims 1-3, 29, and 35 as unpatentable under 35 U.S.C. § 103(a) over
Woodhill.
DISCUSSION
NetApp argues that the one-year bar under 35 U.S.C. § 315(b) does not
apply to its petition because the petition was filed with a request for joinder under
35 U.S.C. § 315(c). (Pet. 4.) In response, PersonalWeb contends that NetApp’s
petition and request for joinder should be denied because, according to
PersonalWeb, “an IPR petition filed more than one year after the petitioner was
served with a complaint alleging infringement of the patent is barred” and “not
properly filed as required by § 315(c).” (Prel. Resp. 3-7;) PersonalWeb points out
that NetApp was served with a complaint alleging infringement of the ’791 patent
on December 16, 2011, which is more than one year before NetApp filed its
petition. (Prel. Resp. 3 citing to Ex. 1014, ¶ 3 and Ex. 2001.)
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As an initial matter, we decline to adopt PersonalWeb’s statutory
interpretation, as it would render the last sentence of 35 U.S.C. § 315(b)
meaningless. Indeed, PersonalWeb’s statutory construction erroneously
incorporates the one-year bar set forth in the first sentence of 35 U.S.C. § 315(b)
into the statutory language of 35 U.S.C. § 315(c)—“any person who properly files
a petition under section 311” (emphasis added). Under PersonalWeb’s
interpretation, no party served with a complaint more than one year beforehand,
even one who files an identical petition as the first petition, accompanied by a
request for joinder, could ever join with an instituted review. Such an
interpretation ignores the last sentence of 35 U.S.C. § 315(b) and the legislative
history. See 157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen.
Kyl) (“The Office anticipates that joinder will be allowed as of right—if an inter
partes review is instituted on the basis of a petition, for example, a party that files
an identical petition will be joined to that proceeding. . .”).
In any event, we decide not to institute an inter partes review based on
NetApp’s petition, which introduces a new challenged claim, independent
claim 35, and additional unpatentability issues beyond those in IPR2013-00082.
Accompanying its petition, NetApp filed a motion requesting joinder of the instant
proceeding with IPR2013-00082. (Mot. 2.) Upon consideration of NetApp’s
motion for joinder and PersonalWeb’s opposition, the Board, in a separate
decision, denies NetApp’s motion for joinder. (Paper 18.) Notably, as we
discussed in that decision, NetApp has not demonstrated that its need for a cost-
effective alternative to district court litigation outweighs the impact of joinder,
including the burden and prejudice to the other parties in light of the new
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challenged claim and additional substantive issues. (Id. at 5-9.) NetApp also fails
to establish that joinder would promote efficient resolution of the unpatentability
issues without substantially affecting the schedule for IPR2013-00082 and the five
related inter partes reviews. (Id. at 7-9.)
Based on the record before us, exercising our discretion under 35 U.S.C.
§ 314 and 37 C.F.R. § 42.108(b), we decline to institute an inter partes review in
the instant proceeding.
ORDER
In consideration of the foregoing, it is hereby:
ORDERED that NetApp’s petition is denied as to all challenged claims and
no trial based on NetApp’s petition is instituted.

PETITIONER:
David McCombs, Esq.
Thomas W. Kelton, Esq.
Haynes and Boone, LLP
David.mccombs@haynesboone.com
Thomas.kelton@haynesboone.com

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