Trials@uspto.gov
`571.272.7822
`
`Paper No. 30
`Filed: March 1, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LIMELIGHT NETWORKS, INC.,
`Petitioner,
`
`v.
`
`AKAMAI TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01894
`Patent 7,472,178 B2
`____________
`
`
`
`Before GREGG I. ANDERSON, JENNIFER MEYER CHAGNON, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`ANDERSON, 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
`Limelight Networks, Inc. (“Petitioner”) filed a Petition (“Pet.,”
`Paper 1) pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review
`of claims 1, 2, and 9 (“the challenged claims”) of U.S. Patent
`No. 7,472,178 B2 (“the ’178 patent,” Ex. 1001), which was filed on April 1,
`2002.1 The Petition is supported by the Declaration of Michael J. Freedman,
`Ph.D. (“Freedman Declaration,” Ex. 1003). Akamai Technologies, Inc.
`(“Patent Owner”) filed a Preliminary Response (“Prelim. Resp.,” Paper 7).
`We instituted an inter partes review of the challenged claims (Paper 8,
`“Institution Decision” or “Inst. Dec.”).2
`Patent Owner filed a Response (“PO Resp.,” Paper 13) and Petitioner
`filed a Reply (“Pet. Reply,” Paper 19). Patent Owner’s Response is
`supported by the Declaration of Eric W. Burger, Ph.D. (“Burger
`Declaration,” Ex. 2001). Dr. Freedman was deposed by Patent Owner.
`(“Freedman Deposition,” Ex. 2002). Dr. Burger was deposed by Petitioner
`(“Burger Deposition,” Ex. 1020). An oral hearing was held on December 5,
`
`
`1 The ’178 patent claims priority to U.S. Provisional Patent Application
`No. 60/280,917, which was filed on April 2, 2001. Ex. 1001, [65], 1:6–7.
`2 The Institution Decision considered issues raised in Patent Owner’s
`Preliminary Response that are not raised in its Response and, therefore, are
`waived. See Scheduling Order (Paper 9), 6. Specifically, we found
`Chaudhri (Ex. 1004) is prior art without reliance on the filing date of the
`Chaudhri Provisional Application (Ex. 1005). Inst. Dec. 17–18. We also
`found that, although Speedera (Ex. 1006) was cited to the Examiner during
`prosecution of the application for the ’178 patent in an information
`disclosure statement (“IDS,” see Ex. 1002, 12, 105, 126), Speedera was not
`substantively discussed during prosecution, and we declined to exercise our
`discretion under 35 U.S.C. § 325(d) to deny inter partes review. Inst. Dec.
`18–19.
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`2017 and a transcript thereof has been entered into the record (“Tr.,”
`Paper 29).
`Patent Owner filed a Motion to Exclude (“Motion,” “Mot.,”
`Paper 20), Petitioner filed an Opposition (“Opp.,” Paper 24), and Patent
`Owner filed a Reply to Opposition (Paper 25). Patent Owner’s Motion to
`Exclude is dismissed as moot.
`The Board has jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision issues pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For
`the reasons that follow, we determine that Petitioner has not shown by a
`preponderance of the evidence that claims 1, 2, and 9 are unpatentable.
`A. Related Proceedings
`The parties advise us that the ’178 patent is involved in co-pending
`litigation captioned Limelight Networks, Inc. v. XO Communications, LLC,
`No. 3:15-cv-00720-JAG (E.D. Va. Nov. 30, 2015). Pet. 1, Paper 4, 3.
`B. Technology and the ’178 Patent (Ex. 1001)
`The ’178 patent relates to networked storage of Internet content,
`including “graphics, images, streaming media files, software, and other
`digital objects.” Ex. 1001, 1:21–23.
`1. Technology
`“Content providers often have a need to store persistently the digital
`content they make available over the Internet.” Ex. 1001, 1:25–26. One
`business solution to use a third-party, “a so-called storage service provider
`(SSP),” which provides a managed storage service. Id. at 1:26–31. SSPs
`typically “operate single-location as opposed to replicated solutions.” Id. at
`1:31–32. In addition, SSPs may not provide hosting or content delivery, and
`may offer a lower level of service. Id. at 1:33–36. Instead of using an SSP,
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`the content provider may manage its own internal network, incurring
`significant capital and overhead expenses. Id. at 1:37–47.
`2. The ’178 Patent
`The ’178 patent describes another means “for content storage on
`behalf of participating content providers [that] begins by having a given
`content provider identify content for storage.” Ex. 1001, Abstract. The
`content provider identifies content for storage, which may be “an image file,
`a streaming media file, a graphic file, a software download, or any other
`digital file identifiable by a locator such as a Uniform Resource Locator
`(URL).” Id. at 2:24–28.
`“The first step in using the distributed storage system of the present
`invention is to have a participating content provider upload content to a
`storage site.” Ex. 1001, 6:61–63. The upload is accomplished via a client
`program executing any industry standard file transfer protocol (“FTP”). Id.
`at 6:64–67. The content provider does not identify a particular storage site,
`but instead enters into an agreement with a service provider. Id. at 7:11–17.
`The content provider is given FTP access to the service via the customer’s
`“unique domain name of the form: customername.upload.cdnsp.com, where
`cdnsp is the name of the service provider.” Id. at 7:17–21. The
`“customername.upload portion of the domain is used to cue a Domain Name
`Service (DNS)-based request routing mechanism to identify the optimal
`storage site from a set of mirrored sites.” Id. at 7:21–24. Content is
`available for download when upload “completes and is not delayed until the
`replication completes.” Id. at 7:50–53.
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`Figure 3 of the ’178 patent is reproduced below.
`
`
`
`Figure 3 “illustrates the content storage system in detail, showing how the
`upload, replication and download services provide a full end-to-end storage
`environment.” Ex. 1001, 9:6–8. Figure 3 shows “two geographically-
`dispersed storage sites 300 and 302.” Id. at 9:9–10. “Each storage site
`includes a set of storage servers 304, a set of FTP (upload) servers 306,
`and . . . a set of HTTP (download) servers 308.” Id. at 9:10–12. A
`“participating content provider machine 308” establishes an FTP or other
`file transfer connection “to one of the storage sites 300, 302, preferably
`under the control of a global traffic manager product [(‘GTM’)], system or
`managed service.” Id. at 9:12–17, 9:45–47. The “GTM resolves a storage
`URL domain . . . to the optimal storage site based on, for example, real-time
`Internet traffic and server load mapping.” Id. at 9:49–53.
`“Once content is uploaded and stored on the storage servers 304, the
`replication mechanism provides two-way replication such [that] the content
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`becomes available from both sites even though it was only uploaded to one
`of them.” Id. at 9:19–23. “[E]nd users (e.g., client machines running HTTP
`compatible browser software with appropriate media players for streaming
`content) request that content, which is then delivered on an as-needed basis
`from either the CDN edge servers or the HTTP download servers 308 via the
`content delivery network (CDN).” Id. at 9:25–31.
`C. Illustrative Claim
`Of the challenged claims, method claim 1 is the only independent
`claim. Challenged claims 2 and 9 each depend from claim 1. Claim 1 is
`reproduced below:
`1. A method of content storage and delivery, operative in a
`content delivery network (CDN) deployed, operated and
`managed by a service provider on behalf of participating
`content providers, where the participating content providers
`are distinct from the service provider, comprising:
`(a) deploying a content delivery network that comprises (i) a
`plurality of CDN content servers that are organized into
`sets, (ii) one or more CDN storage sites that are distinct
`from the plurality of content servers; and (iii) one or
`more CDN-managed domain name servers each of
`which is authoritative to resolve predetermined CDN
`specific hostnames, where each such hostname has a first
`portion uniquely associated with a given participating
`content provider and a second portion associated with the
`service provider;
`(b) for a first participating content provider:
`(i) establishing a first content storage directory at a
`storage site;
`(ii) providing the first participating content provider with
`a first CDN-specific hostname for use in association
`with the first content storage directory, the first
`CDN-specific hostname having a first portion
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`uniquely associated with the first participating
`content provider, and the second portion;
`(iii) receiving, via upload, and storing, in the first content
`storage directory at the storage site, first content,
`where the first content is one of: a web object, a
`media file, or a software download that the first
`participating content provider desires to be stored and
`delivered over the CDN;
`(c) for a second participating content provider distinct from
`the first content provider:
`(i) establishing a second content storage directory at a
`storage site;
`(ii) providing the second participating content provider
`with a second CDN-specific hostname for use in
`association with the second content storage directory,
`the second CDN-specific hostname having a first
`portion uniquely associated with
`the second
`participating content provider, and
`the second
`portion;
`(iii) receiving, via upload, and storing, in the second
`content storage directory at the storage site, second
`content, where the second content is one of: web
`object, a media file, or a software download that the
`second participating content provider desires to be
`stored and delivered over the CDN;
`(d) upon receipt by a CDN-managed domain name server of
`a DNS query associated with the first CDN-specific
`hostname:
`identifying one or more CDN content servers;
`(i)
`(ii) receiving a request for the first content at one of the
`identified content servers;
`(iii) if the first content is available to be served, serving
`the first content; and
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`(iv) if the first content is not available to be served,
`obtaining a copy of the first content from the first
`content storage directory as needed to respond to the
`request for the first content;
`(e) upon receipt by a CDN-managed domain name server of
`a DNS query associated with the second CDN-specific
`hostname:
`(i) identifying one or more CDN content servers;
`(ii) receiving a request for the second content at one of
`the identified CDN content servers;
`(iii) if the second content is available to be served, serving
`the second content; and
`(iv) if the second content is not available to be served,
`obtaining a copy of the second content from the
`second content storage directory as needed to respond
`to the request for the second content;
`where the second portion is common to each of the first and
`second CDN-specific hostnames, and where the first
`CDN-specific hostname also has associated therewith a
`value that identifies the first content storage directory from
`which the copy of the first content can be obtained, and
`where the second CDN-specific hostname also has
`associated therewith a value that identifies the second
`content storage directory from which the copy of the
`second content can be obtained;
`wherein the one or more CDN storage sites include first and
`second CDN storage sites that are each located in different
`Internet-accessible locations and operate asynchronously
`and autonomously from one another.
`Ex. 1001, 23:63–25:11.
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1, 2, and 9 of the ’178 patent as
`unpatentable on the following grounds. Pet. 3, 15–83.
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`
`References
`Speedera3 and Apache4
`Chaudhri5 and Apache
`
`
`Claims Challenged
`Basis
`§ 103(a) 1, 2, and 9
`§ 103(a) 1, 2, and 9
`
`II. ANALYSIS
`
`A. Claim Construction
`In inter partes review, claim terms are given their broadest reasonable
`interpretation in light of the specification in which they appear. See
`37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2142 (2016). We presume that claim terms have their ordinary and
`customary meaning. See TriVascular, Inc. v. Samuels, 812 F.3d 1056,
`1061–62 (Fed. Cir. 2016) (“Under a broadest reasonable interpretation,
`words of the claim must be given their plain meaning, unless such meaning
`is inconsistent with the specification and prosecution history.”); In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
`definition for a claim term must be set forth 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 special definition or
`other consideration, “limitations are not to be read into the claims from the
`
`
`3 U.S. Patent No. 6,405,252 B1, to Ajit Kumar Gupta et al., issued
`June 11, 2002 (“Speedera,” Ex. 1006). The Petition refers to Exhibit 1006
`as “Speedera,” referencing the Assignee listed on the face of the patent. For
`consistency with the Institution Decision, we refer to this exhibit also as
`“Speedera.” We note, for clarification, that Patent Owner refers to this
`exhibit as “Gupta,” referencing the first named inventor.
`4 Manuel Alberto Ricart, Apache Server Survival Guide (New Riders,
`Nov. 12, 1996) (“Apache,” Ex. 1007).
`5 US 2002/0116444 A1, to Imran Chaudhri et al., published August 22, 2002
`(“Chaudhri,” Ex. 1004).
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`specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`“[O]nly those terms need be construed that are in controversy, and only to
`the extent necessary to resolve the controversy.” See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
`Cir. 1999)).
`Petitioner did not propose constructions for any claim terms. Pet. 15.
`In the Institution Decision we construed “CDN storage sites” from claim 1
`and the preamble term “deployed, operated and managed.” See Inst. Dec. 8–
`11. Patent Owner does not propose any constructions, but does argue
`patentability of the challenged claims over the references because certain
`limitations allegedly are not taught. See PO Resp. 17–24, 39–47 (limitation
`1a-ii,6 “CDN storage sites”); id. at 25–30, 47–51 (limitation 1b-iii and 1c-iii,
`“receiving, via upload, and storing . . . at the storage site” (“upload”
`limitation)), id. at 30–34, 51–53 (limitation 1-i, “CDN storage sites” that
`“operate asynchronously”). Each of Patent Owner’s patentability arguments
`is based, in part, on Patent Owner’s implicit construction of the term at
`issue.7
`
`
`6 We adopt Petitioner’s numbering format for identifying the claim
`limitations, which substantially matches like numbering in the claims as
`printed. In some instances, Petitioner breaks out limitations into parts or
`adds additional numbering for limitations not specifically numbered in the
`printed patent. See, e.g., Pet. 18–31 (referring to limitation 1a-iii with two
`sub-labels, 1a-iii-a and 1a-iii-b); id. at 43–47 (adding labels for limitations
`1f, 1g, 1h, and 1i).
`7 For example, Patent Owner also argues that the limitations 1d-i and 1e-i,
`“identifying one or more CDN content servers,” are not taught by any of the
`references. Pet. 35–39, 53–56. Patent Owner’s argument is based on the
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`Each of the parties’ arguments at the oral hearing began with and
`emphasized the meaning of the “upload” limitation (“receiving, via upload,
`and storing . . . at the storage site”). See, e.g., Tr. 3:17–19 (Petitioner); id. at
`13:3–6, 14:10–11 (Patent Owner). As discussed below, we find that
`Petitioner has not shown that any of the references teach the “upload”
`limitation.8 Thus, the construction of the “upload” limitation is dispositive
`of the dispute and no other term requires construction.
`1. “receiving, via upload, and storing . . . at the storage site”
`Petitioner did not offer any express construction for the “upload”
`limitation in the Petition, and the Institution Decision did not construe this
`limitation. Patent Owner did not argue the “upload” limitation or any other
`claim limitation in its Preliminary Response, arguing only procedural issues.
`See Inst. Dec. 20. Patent Owner presents arguments regarding the “upload”
`limitation for the first time in its Response. See PO Resp. 24–30 (arguing
`Speedera does not disclose the “upload” limitation), id. at 47–51 (arguing
`Chaudhri does not disclose the “upload” limitation). At the oral hearing,
`Petitioner was “troubled” by the timing of Patent Owner’s raising the
`“upload” limitation, but agreed that Patent Owner is entitled to change its
`
`
`construction of “CDN content server” and/or how a person of ordinary skill
`would understand “content server.” See, e.g., PO Resp. 35 (arguing
`Speedera’s “DNS server identifies a ‘POP SERVER,’ not a ‘content
`server’”).
`8 Petitioner does not rely on Apache to show the “upload” limitation. See
`Pet. 35–37 (Speedera), 72–74 (Chaudhri) (relying only on Speedera and
`Chaudhri to teach the “upload” limitation).
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`position between the Preliminary Response and Response.9 See Tr. 30:13–
`31:1.
`Patent Owner’s Response argues that “upload,” as used in the
`Specification of the ’178 patent, refers to “the initial operation of a content
`provider sending the content it desires to be stored and delivered over the
`CDN to one of the CDN’s storage sites.” PO Resp. 25. In support of its
`proposed construction, Patent Owner points to the Specification as
`explaining that “the content provider ‘uploads’ the content it ‘desires to be
`stored and delivered over the CDN’ onto the CDN storage sites.” Id. (citing
`Ex. 1001, 2:22–30, 6:61–7:2). Patent Owner also cites to the Specification’s
`description of Figure 2 that “the first step in using the distributed storage
`system of the present invention is to have a participating content provider
`upload content to a storage site.” Id. at 26 (quoting Ex. 1001, 6:61–7:2).
`Patent Owner concludes the claimed “upload” is “at the content provider’s
`instigation and is not triggered by a request for content from an end user or
`content server.” Id. at 26–27 (citing Ex. 1001, 3:53–57).10
`Patent Owner also quotes the claim language of the “upload”
`limitations, which recite, in part, that “‘upload[ed]’ content is what the
`
`
`9 Petitioner must make its case in the Petition. “[T]he burden of persuasion
`is on the petitioner to prove ‘unpatentability by a preponderance of the
`evidence’” and “that burden never shifts to the patentee.” See, e.g., Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`2015) (quoting 35 U.S.C. § 316(e)). Patent Owner can do as little or as
`much as it wants to defend patentability in the Preliminary Response. In this
`instance, Patent Owner chose to focus on other issues in the Preliminary
`Response.
`10 Patent Owner also cites to our description of the ’178 patent from the
`Institution Decision. PO Resp. 26–27 (citing Inst. Dec. 2, 3).
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`‘content provider desires to be stored and delivered over the CDN.’” PO
`Resp. 27 (quoting Ex. 1001, claim limitations 1b-iii and 1c-iii). Relying in
`part on the Burger Declaration as supported by the description of the ’178
`patent, Patent Owner contends that only after “the content provider has
`uploaded the content” to the CDN storage site can the CDN content servers
`request that content. Id. (citing Ex. 1001, 1:64–67, 23:36–41; Ex. 2001
`¶ 63).
`Patent Owner argues that the ’178 patent and the claims distinguish
`between “upload” and “download.” PO Resp. 27–28. For example, the
`Specification uses the word “‘upload’ more than 120 times and ‘download’
`more than 60 times.” Id. at 27 (citing Ex. 1001, 2:22–30, 6:61–7:2
`(describing upload); id. at 2:35–43, 7:50–52 (describing download); id. at
`13:10–34, 13:59–14:7 (describing both upload and download)). Patent
`Owner concludes “‘upload” is the initial operation to get desired content
`onto the storage site. In contrast, ‘download’ is a later operation that
`happens when a content server has a cache miss and needs to obtain
`(download) content from an origin source.” PO Resp. 27–28 (citing
`Ex. 2001 ¶¶ 64–65).
`Petitioner acknowledged at oral hearing that were we to adopt Patent
`Owner’s proposed construction of the “upload” limitation (i.e., if upload
`includes an initiation requirement), then “there[ i]s a question with regard to
`the references” teaching the limitation. See Tr. 32:15–33:4. Petitioner,
`however, argues in its Reply that the plain meaning of “upload” does not
`require the content provider to initiate a content transfer. Pet. Reply 13–16.
`Petitioner characterizes Patent Owner’s position that the content provider
`initiate an upload as being based on a “special definition” in the ’178 patent.
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`Id. at 13. Petitioner argues that inter partes review was instituted without
`express construction of the “upload” limitation and that Patent Owner’s
`proposal narrows the meaning of the term, which has a plain and ordinary
`meaning and is “generic and broad.” Id.
`Petitioner contends Patent Owner’s proposal is improper because it
`would “exclude occasions wherein a content transfer is initiated by the
`‘CDN storage site.’” Pet. Reply 13. In support of this argument, Petitioner
`cites to the Specification as describing other alternatives to uploading
`initiated by the content provider include “hav[ing] a given one of the storage
`site(s) dynamically pull the content from the content provider origin site if
`the content were not otherwise already available to the distributed storage
`system.” Id. at 14 (quoting Ex. 1001, 7:6–10) (emphasis added). According
`to Petitioner, the claim language “require[s] that the ‘CDN storage site’
`receive content via upload” and does not require any specific entity (e.g., the
`content provider versus the CDN storage site) to be “the initiator of content
`transfer.” Id. at 15. Petitioner cites to dictionary definitions for “upload”
`and “download” in support of its position that the plain meaning of “upload”
`includes “transferring files from a one computer system to another – e.g.,
`transferring from a content provider to a CDN storage site – regardless of
`which entity initiates the file transfer.” Id. at 15–16 (citing
`MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY (11TH Ed. 2007), 376,
`1375 (Ex. 1018); IEEE 100 THE AUTHORITATIVE DICTIONARY OF IEEE
`STANDARDS TERMS (7th Ed., 2000), 337, 1240 (Ex. 1019)). Petitioner
`concludes that the plain meaning of “upload” should apply. Id. at 16.
`We start our analysis with the claim language of the “upload”
`limitation, which recites “receiving, via upload, and storing, in the first [or
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`second] content storage directory at the storage site, first [or second] content
`. . . that the first [or second] participating content provider desires to be
`stored and delivered over the CDN.” Ex. 1001, claim limitations 1b-iii
`(“first”) and 1c-iii (“second”)11 (emphasis added). Consistent with the
`preceding claim language, the claimed “storage directory” receives an
`“upload” of whatever “content” the “content provider” “desires to be stored
`and delivered.” The language states that “upload” is the first step or, as
`Patent Owner argues, “upload” is “the initial operation” of the content
`provider.
`Other limitations of claim 1 support Patent Owner’s proposed
`construction. Cf. ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed.
`Cir. 2003) (in an infringement context, “[w]hile certain terms may be at the
`center of the claim construction debate, the context of the surrounding words
`of the claim must also be considered in determining the ordinary and
`customary meaning of those terms.”). For example, limitation 1d recites, in
`pertinent part, “upon receipt by a CDN-managed domain name server of a
`DNS query associated with the first CDN-specific hostname,” “if the first
`content is available” over the CDN, it is served. Ex. 1001, 24:42–44,
`24:48–49 (limitations 1d, 1d-iii). Alternatively, limitation 1d-iv recites that
`“if the first content is not available to be served . . . a copy of the first
`content [is obtained] from the first content storage directory as needed to
`respond to the request for the first content.” Id. at 24:50–53. In either event,
`the content (i.e., that which the “content provider desires to be stored and
`delivered”) is obtained from the “content storage directory,” where it has
`
`
`11 Hereafter, we do not differentiate between “first” and “second” and refer
`only to limitation 1b-iii.
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`been previously stored after being “receiv[ed] via upload,” as per limitation
`1b-iii. In other words, the “content storage directory” receives the content
`via “upload” from the content provider before it can be “served.”
`That the “upload” to a content storage directory is the first step of the
`claimed method is also supported by the Specification. We agree with and
`adopt Patent Owner’s arguments based on the Specification that “the first
`step in using the distributed storage system of the present invention is to
`have a participating content provider upload content to a storage site.” PO
`Resp. 26 (quoting Ex. 1001, 6:61–7:2). We also agree that the Specification
`distinguishes between “upload” and “download,” i.e., serving the content.
`See id. at 27–28.
`Though we need not resort to extrinsic evidence to construe the
`“upload” limitation, the Burger Declaration is consistent with our
`determination. The Burger Declaration relies on the disclosures of the
`Specification and concludes that only after the content provider has
`uploaded the content to the CDN storage site can the CDN content servers
`request that content. Ex. 2001 ¶ 63 (citing Ex. 1001, 1:65–67, 23:36–41).
`Petitioner’s expert, Dr. Freedman, does not construe the “upload” limitation
`and did not provide a declaration responsive to Dr. Burger’s testimony.
`Accordingly, Dr. Burger’s testimony is unrebutted.
`Petitioner’s arguments are not persuasive, and the evidence relied
`upon is consistent with our construction. Consistent with our determination,
`Petitioner quotes that part of the Specification upon which Patent Owner
`relies, i.e., “the first step in using the distributed storage system of the
`present invention is to have a participating content provider upload content
`to a storage site.” Pet. Reply 14 (quoting Ex. 1001, 6:61–63).
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`Petitioner’s primary argument relies on an alternative arrangement
`described in the Specification where a storage site “dynamically pull[s] the
`content from the content provider origin site.” Ex. 1001, 7:6–10. To rely on
`this alternative embodiment, Petitioner asserts that the “first step”
`description is “merely representative.” Pet. Reply 14 (quoting Ex. 1001,
`7:2–3). “A claim need not cover all embodiments,” however. Intamin Ltd.
`v. Magnetar Techs., Corp., 483 F.3d 1328, 1336–37 (Fed. Cir. 2007).
`Petitioner’s argument based on the claim language is that the claims “do not
`limit the meaning of ‘upload’; they merely require that the ‘CDN storage
`site’ receive content via upload.” Pet. Reply 15. In contrast, the “first step”
`or “initial operation” construction we adopt is supported expressly by the
`claim language. Further, because the “alternative” on which Petitioner relies
`does not use the term “upload,” there is no indication in the Specification
`that “upload” includes that alternative. Rather, we conclude that the
`“dynamically pull” embodiment is an alternative to the “upload”
`embodiment, further supporting Patent Owner’s construction.
`Petitioner’s argument and evidence regarding a proposed construction
`for “upload” were not presented until it filed its Reply.12 Based, in part, on
`
`
`12 Petitioner’s only discussion regarding claim construction in the Petition
`stated: “Petitioner does not seek specific construction of any of the terms in
`the Challenged Claims, and believes no specific constructions are required
`under the BRI standard.” Pet. 15. Further, no portion of the “upload”
`limitation was construed in the Institution Decision. “The Patent and
`Trademark Office, including the Board, must provide the patent owner with
`timely notice of ‘the matters of fact and law asserted,’ and an opportunity to
`submit facts and argument.” Novartis AG v. Torrent Pharms., 853 F.3d
`1316, 1324 (Fed. Cir. 2017) (citing 5 U.S.C. §§ 554(b)–(c), 557(c); Dell Inc.
`v. Acceleron, LLC, 818 F.3d 1293, 1301 (Fed. Cir. 2016)). However,
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`the dictionary evidence, Petitioner argues the plain meaning of “upload” is
`to “transfer some collection of data” from some storage location or memory
`to computer memory or some other computer. See Pet. Reply 15 (definitions
`from Ex. 1019, A and B).
`We need not rely on extrinsic evidence, including Petitioner’s
`dictionary evidence, in order to construe the “upload” limitation. Based
`upon our review of the Specification, we agree with Patent Owner and
`determine that the “upload” limitation requires “the initial operation of a
`content provider sending the content it desires to be stored and delivered
`over the CDN to one of the CDN’s storage sites.” See Microsoft Corp. v.
`Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (holding that claims
`“‘should always be read in light of the specification and teachings in the
`underlying patent,’” and “[e]ven under the broadest reasonable
`interpretation, the Board’s construction ‘cannot be divorced from the
`specification and the record evidence.’” (citations omitted)).
`B. Obviousness Analysis
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the subject matter sought to be patented 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. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`
`
`because we ultimately agree with and adopt Patent Owner’s proposed
`construction, we need not decide whether Petitioner’s arguments and
`evidence submitted in the Reply are timely.
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`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 ordinary skill in the art; and (4) objective evidence of
`nonobviousness.13 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`1. Level of Ordinary Skill
`Petitioner contends a person of ordinary skill in the art, at the time of
`the earliest filing date claimed in the application for the ’178 patent, “would
`have at least a Bachelor’s degree in Computer Science, Computer
`Engineering, or the equivalent, and several years’ experience in the field of
`distributed systems, name services, or Internet content delivery.” Pet. 14
`(quoting Ex. 1003 ¶ 28).14
`Without commenting on Petitioner’s proposal, Patent Owner proposes
`a similar level of ordinary skill to that proposed by Petitioner. PO Resp. 2
`(citing Ex. 2001 ¶ 16). Patent Owner adds “Electrical Engineering” to the
`Bachelor’s Degrees of the ed