Paper 28
`
`
`
`
`
`
`Trials@uspto.gov
` Entered:October 29, 2020
`
`
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DROPBOX, INC.,
`Petitioner,
`
`v.
`
`WHITSERVE LLC,
`Patent Owner.
`____________
`
`IPR2019-01019
`Patent 8,812,437 B2
`____________
`
`
`Before KALYAN K. DESHPANDE, MICHELLE N. WORMMEESTER,
`and SCOTT RAEVSKY, Administrative Patent Judges.
`
`RAEVSKY, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
` Entered:October 29, 2020
`
`
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DROPBOX, INC.,
`Petitioner,
`
`v.
`
`WHITSERVE LLC,
`Patent Owner.
`____________
`
`IPR2019-01019
`Patent 8,812,437 B2
`____________
`
`
`Before KALYAN K. DESHPANDE, MICHELLE N. WORMMEESTER,
`and SCOTT RAEVSKY, Administrative Patent Judges.
`
`RAEVSKY, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2019-01019
`Patent 8,812,437 B2
`
`
`INTRODUCTION
`I.
`Dropbox, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting an inter partes review of claims 1–20 (the “challenged claims”)
`of U.S. Patent No. 8,812,437 B2 (Ex. 1101, “the ’437 patent”).
`WhitServe LLC (“Patent Owner”) filed a Preliminary Response. Paper 8
`(“Prelim. Resp.”). In view of those submissions, we instituted an inter
`partes review of claims 1–20. Paper 13 (“Decision”). Subsequent filings
`include a Patent Owner Response (Paper 18, “PO Resp.”), a Petitioner Reply
`(Paper 20, “Pet. Reply” or “Reply”), and a Patent Owner Sur-Reply
`(Paper 23, “Sur-Reply”). An oral hearing was held on July 30, 2020, and a
`copy of the transcript was entered into the record. Paper 27.
`We have jurisdiction over this proceeding under 35 U.S.C. § 6(b).
`After considering the evidence and arguments of the parties, we determine
`that Petitioner has proven by a preponderance of the evidence that claims 1,
`3–10, and 12–20 of the ’437 patent are unpatentable. See 35 U.S.C. § 316(e)
`(2018). We also determine that Petitioner has not proven by a
`preponderance of the evidence that claims 2 and 11 are unpatentable. We
`issue this Final Written Decision pursuant to 35 U.S.C. § 318(a).
`BACKGROUND
`II.
`
`A. Related Proceedings
`Petitioner and Patent Owner identify a related litigation involving the
`’437 patent: WhitServe LLC v. Dropbox, Inc., No. 1:18-cv-00665 (D. Del.),
`filed May 1, 2018. Pet. 4; Paper 6, 2; Ex. 2102, 1. Petitioner also
`concurrently filed another inter partes review petition challenging claims of
`the ’437 patent in IPR2019-01018, for which we denied institution. Pet. 4;
`
`2
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`Patent 8,812,437 B2
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`Dropbox, Inc. v. Whitserve LLC, IPR2019-01018, Paper 13 (PTAB Nov. 1,
`2019).
`B. The ’437 patent (Ex. 1101)
`The ’437 patent concerns a system for onsite backup of internet-based
`data. Ex. 1101, Abstr. Figure 1 of the ’437 patent is reproduced below.
`
`
`Figure 1 illustrates an Internet-based data processing system providing
`backup on clients’ sites. Id. at 2:34–35. In the system, client computer 20
`and data processing system 15 are connected by Internet communications
`link 10. Id. at 2:35–37. Client computer 20 executes software, residing on
`data processing system 15, for storing data on the data processing system.
`Id. at 2:37–40. This software is for displaying, updating, and deleting
`data 12 stored on central data processing system 15. Id. at 2:40–43. Data
`processing system 15 transmits a copy 14 of stored data to client
`computer 20, which issues commands 18 for transmitting (restoring) data 16
`back to data processing system 15. Id. at 2:43–46.
`
`3
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`
`The ’437 patent also discloses format conversion and encryption
`features with respect to Figure 4. Id. at 3:4–5. Figure 4 is reproduced
`below:
`
`
`Figure 4 illustrates format conversion and encryption features. Id. These
`features allow a client to back up data on-site that is securely stored in a
`plurality of formats the client may require. Id. at 3:6–8. Client computer 20
`transmits request 32 to data backup system 15’. Id. at 3:8–9. Data backup
`system 15’ accesses data stored on data backup system 34, reformats the
`data, encrypts the data, and transmits the data to client computer 20. Id. at
`3:9–12. Client computer 20 receives, decrypts, and stores 38 the data
`onsite 36. Id. at 3:12–13.
`C. Challenged Claims
`The Petition challenges claims 1–20. Pet. 3. Claim 1 is illustrative of
`the challenged claims and is reproduced below.1
`
`
`1 The numbering of the claim limitations in brackets are those that are
`provided in the Petition. See Pet. 17–39.
`
`4
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`
`[p] A system for onsite backup for third party internet-
`1.
`based data processing systems, comprising:
`[a] a central computer managed by a third party and
`accessible by at least one client computer at a client site via the
`Internet for outsourced data processing;
`[b] at least one database containing a plurality of data
`records accessible by said central computer, the data records
`including internet-based data modifiable over the Internet from
`the at least one client computer;
`[c] a plurality of client identifiers, wherein each of the
`plurality of data records is associated with at least one of said
`client identifiers;
`[d] data processing software executing on said central
`computer and managed by the third party for outsourcing data
`processing to the Internet from the at least one client computer,
`said data processing software displaying, updating and deleting
`the internet-based data in the plurality of data records according
`to instructions received over the Internet from the at least one
`client computer;
`[e] software executing on said central computer to
`receive, via the Internet from the at least one client computer, a
`request for a backup copy of at least one of the plurality of data
`records including the internet-based data in the at least one of
`the plurality of data records that has been updated or deleted by
`said data processing software; and
`[f] software executing on said central computer to
`transmit the backup copy of the at least one of the plurality of
`data records including the internet-based data in the at least one
`of the plurality of data records that has been updated or deleted
`by said data processing software to the client site for storage of
`the internet-based data from the at least one of the plurality of
`data records in an onsite location accessible via the at least one
`client computer.
`Ex. 1101, 3:20–52.
`
`5
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`D. Prior Art and Asserted Grounds
`Petitioner relies on the following references:
`Reference
`Amstein U.S. Pat. No. 5,793,966
`Mantha U.S. Pat. No. 6,163,779
`
`Chang U.S. Pat. No. 6,219,700 B1
`Elgamal U.S. Pat. No. 5,657,390
`
`Glenn
`
`Access Management of Web-based
`Services: An Incremental Approach
`to Cross-organizational
`Authentication and Authorization,
`D-Lib Magazine
`
`Exhibit
`Date
`Filed Dec. 1, 1995 Ex. 1113
`Filed Sept. 29,
`Ex. 1114
`1997
`Filed July 28, 1998 Ex. 1115
`Published Aug. 12,
`Ex. 1116
`1997
`Published Sept.
`1998
`
`Ex. 1117
`
`35 U.S.C. §
`1032
`
`References/Basis
`Amstein3
`
`103
`
`103
`
`Amstein, Mantha, Glenn
`
`Amstein, Chang4
`
`Petitioner asserts that claims 1–20 would have been unpatentable on
`the following grounds, supported by two declarations by Dr. Todd Mowry
`(Exs. 1102, 1121):
`Claims Challenged
`1–5, 8, 10, 11, 13, 15,
`16, 18–20
`1–5, 8, 10, 11, 13, 15,
`16, 18–20
`6, 7, 12, 14
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the ’437
`patent claims priority to an application filed before the effective date of the
`relevant amendment, we apply the pre-AIA version of § 103.
`3 Although Petitioner’s summary of grounds (Pet. 6–7) does not include
`obviousness over Amstein alone, Petitioner presented arguments that claims
`1–5, 8, 10, 11, 13, 15, 16, and 18–20 would have been obvious over Amstein
`alone. See Pet. 17–57. We, therefore, treat these arguments as a separate
`ground.
`4 For similar reasons as note 3, supra, we treat Petitioner’s arguments
`regarding obviousness over Amstein and Chang as a separate ground. See
`
`6
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`IPR2019-01019
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`
`Claims Challenged
`6, 7, 12, 14
`9, 17
`9, 17
`
`See Pet. 6–7.
`
`35 U.S.C. §
`103
`103
`103
`
`References/Basis
`Amstein, Mantha, Glenn, Chang
`Amstein, Elgamal5
`Amstein, Mantha, Glenn,
`Elgamal
`
`III. ANALYSIS
`A. Principles of Law Relating to Obviousness
`A claim is unpatentable under 35 U.S.C. § 103 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. 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) when in evidence, objective evidence
`of nonobviousness, i.e., secondary considerations. See Graham v. John
`Deere Co., 383 U.S. 1, 17–18 (1966). We analyze the asserted obviousness
`grounds with the principles identified above in mind.
`B. Level of Ordinary Skill in the Art
`We review the grounds of unpatentability in view of the
`understanding of a person of ordinary skill in the art at the time of the
`
`
`Pet. 57–63.
`5 For similar reasons as note 3, supra, we treat Petitioner’s arguments
`regarding obviousness over Amstein and Elgamal as a separate ground. See
`Pet. 63–67.
`
`7
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`invention. Graham, 383 U.S. at 17. Petitioner asserts that a person of
`ordinary skill “would have [had] a Bachelor’s Degree in electrical
`engineering, computer science, or a related scientific field, and
`approximately two years of work experience in the computer science field
`including, for example, networked systems, distributed systems, database
`management, operating systems, encryption, web development, and/or
`online services, though additional education can substitute for less work
`experience and vice versa.” Pet. 5–6 (citing Ex. 1102 ¶ 41).
`Patent Owner disagrees with Petitioner’s level of skill because “it
`focuses on wrong aspects of the ’437 Patent and it is not directed towards
`Internet-based systems for data manipulation.” PO Resp. 7 (citing Ex. 2013
`¶ 28). Patent Owner contends, “while experience with fields such as
`operating systems may be helpful to inform [a skilled person’s]
`understanding of computers, it also leads to an improper understanding of
`the invention, and experience with solely operating systems would leave one
`unprepared to tackle issues with Internet-based technology.” Id. Patent
`Owner contends a person of ordinary skill “would have been someone with
`at least ‘a Bachelor’s degree in electrical engineering, computer science, or a
`related scientific field, and approximately two years of work experience in
`real-world Internet-based technology.’” Id. (citing Ex. 2013 ¶ 28).
`Petitioner does not address Patent Owner’s proposal in the Reply. See
`generally Pet. Reply.
`Our reviewing court instructs us that “[i]n determining this skill level,
`the court may consider various factors including type of problems
`encountered in the art; prior art solutions to those problems; rapidity with
`which innovations are made; sophistication of the technology; and
`
`8
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`IPR2019-01019
`Patent 8,812,437 B2
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`educational level of active workers in the field.” In re GPAC Inc., 57 F.3d
`1573, 1579 (Fed. Cir. 1995). The level of ordinary skill in the art is also
`reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001).
`Both parties agree that one of ordinary skill in the art “would have a
`Bachelor’s Degree in electrical engineering, computer science, or a related
`scientific field, and approximately two years of work experience,” but the
`parties disagree as to the nature of that work experience. Pet. 5–6; PO
`Resp. 7. Patent Owner singles out “fields such as operating systems” as
`unsuitable but does not explain why the remainder of Petitioner’s fields,
`including “networked systems, distributed systems, database management,
`. . . encryption, web development, and/or online services,” are not pertinent
`to the ’437 patent. See PO Resp. 7; Pet. 5–6. Yet the ’437 patent mentions
`at least networks (e.g., “LANs” and “the Internet,” Ex. 1101, 1:43–44, claim
`1), a database (id. at claim 1, Figure 4), encryption (id. at 3:5–12, claim 9),
`and web interfaces (id. at 1:15, claim 8).
`We disagree with Patent Owner except as to “operating systems,”
`which we find is not sufficiently pertinent to the subject matter of the ’437
`patent, the background technical field, or the asserted prior art. Based on
`our review of the entire record, we adopt Petitioner’s definition, except that
`we omit “operating systems”:
`[one of ordinary skill in the art] would have a Bachelor’s
`Degree in electrical engineering, computer science, or a related
`scientific field, and approximately two years of work
`experience in the computer science field including, for example,
`networked systems, distributed systems, database management,
`. . . encryption, web development, and/or online services,
`
`9
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`though additional education can substitute for less work
`experience and vice versa.
`See Pet. 5–6 (citing Ex. 1102 ¶ 41).6
`C. Claim Construction
`In an inter partes review filed on or after November 13, 2018, we
`apply the same claim construction standard used by Article III federal courts
`in civil actions under 35 U.S.C. § 282(b), which follow Phillips v. AWH
`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Changes
`to the Claim Construction Standard for Interpreting Claims in Trial
`Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340
`(Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13,
`2018) (now codified at 37 C.F.R. § 42.100(b) (2019)). Because Petitioner
`filed the instant Petition on May 2, 2019, we apply that standard here.
`Accordingly, we construe each challenged claim of the ’437 patent to
`generally have “the ordinary and customary meaning of such claim as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019).
`Petitioner proposes constructions for the claim terms “backup copy”
`and “internet-based data.” Pet. 15–17. Petitioner contends all other claim
`terms should be given “the meaning that the term would have to [one of
`ordinary skill in the art] at the time of the invention.” Id. at 15. Patent
`Owner argues that constructions for the terms “backup copy” and “internet-
`
`
`6 Regardless, our conclusions as to claim construction and obviousness
`would be the same under Patent Owner’s proposed level of skill.
`
`10
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`IPR2019-01019
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`based data” are unnecessary and proposes its own constructions of
`“database” and “data record.”7 PO Resp. 8–14. We address each in turn.
`1. “backup copy”
`Petitioner contends that “backup copy” means “a copy of stored data.”
`Pet. 15 (citing Ex. 1102 ¶ 44; Ex. 1101, 2:4–6). Petitioner contends the
`Specification describes “backup 14” as “a copy of stored data . . . [that] [t]he
`data processing system 15 transmits . . . to the client computer 20” and as
`“data (stored on the data backup system 34) . . . [that] data backup system
`15’ accesses . . ., reformats . . ., encrypts . . ., and transmits . . . to the client
`computer 20.” Pet. 16 (citing Ex. 1101, 2:43–44, 3:9–14). Relying on the
`testimony of Dr. Mowry, Petitioner contends that one of ordinary skill in the
`art would have understood that “a backup copy is simply a copy, whether
`reformatted or not, that corresponds to data stored elsewhere.” Id. (citing
`Ex. 1102 ¶ 45). Petitioner notes that the construction “a copy of stored data”
`was adopted by the Board for “data backup” in the -249 IPR Final Written
`Decision.8 Id. (citing Ex. 1111, 10–13; Ex. 1102 ¶¶ 44–46). We discuss
`that decision in more detail below.
`Patent Owner contends no construction is necessary but proposes: “by
`its plain and ordinary meaning, [backup copy means] a copy of that data is
`transmitted to the client computer, and if a user subsequently wants to use
`that data on the internet-based data processing system, the data can be
`
`
`7 Patent Owner provides an explicit construction for “database” but in the
`same section also construes “data record.” PO Resp. 13.
`8 Google, Inc. v. Whitserve LLC, IPR2013-00249, Paper 32 (PTAB Sept. 9,
`2014) (addressing U.S. Patent No. 6,981,007, which the ’437 patent relies on
`for priority).
`
`11
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`transmitted back to the internet-based data processing system.” PO Resp.
`11–12. Patent Owner relies on the ’437 patent’s description of Figure 1,
`which states “[t]he data processing system 15 transmits 14 a copy of stored
`data to the client computer 20” and that “[t]he client computer 20 issues
`commands 18 for transmitting (restoring) data 16 back to the data processing
`system 15.” Id. (citing Ex. 1101, 2:53–56).
`Petitioner’s construction is more persuasive. Patent Owner makes a
`similar error as in the -249 IPR: ignoring Figure 4, “which shows an
`alternative embodiment” where the “‘data backup system’ . . . ‘accesses
`data[], reformats the data, encrypts the data, and transmits the data’ to the
`client computer. No mention is made of any ability of the data to be restored
`to the central computer.” Ex. 1111, 12 (citing Ex. 1001, 3:15–16). The
`Board in the -249 IPR further found, “[t]he fact that the data is reformatted
`and encrypted leaves open the possibility that the data backup may not be in
`a format capable of being subsequently stored on the central computer.” Id.
`Patent Owner here also relies only on the Figure 1 embodiment to argue that
`a backup copy would encompass “data [that] can be transmitted back to the
`internet-based data processing system,” “if a user subsequently wants to use
`that data on the internet-based data processing system.” See PO Resp. 11.
`Construing “backup copy” in the manner Patent Owner proposes
`would read into the claims functionality from the Figure 1 embodiment to
`the exclusion of the Figure 4 embodiment. As the Board noted in the -249
`IPR, our reviewing court has explained that “[i]t is improper to read
`limitations from a preferred embodiment described in the specification—
`even if it is the only embodiment—into the claims absent a clear indication
`in the intrinsic record that the patentee intended the claims to be so limited.”
`
`12
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`IPR2013-00249, Paper 32 at 13 (quoting Liebel-Flarsheim Co. v. Medrad,
`Inc., 358 F.3d 898, 913 (Fed. Cir. 2004)).
`Although the Board in the -249 IPR applied the broadest reasonable
`interpretation standard, we determine the Board’s analysis there comports
`with the Phillips standard applicable here. In relying on the principle of law
`articulated above in Liebel-Flarsheim (decided prior to Phillips), the -249
`IPR decision relied on a general statement of law applicable to a Phillips
`analysis. See, e.g., Openwave Sys., Inc. v. Apple, Inc., 808 F.3d 509, 514
`(Fed. Cir. 2015) (applying Phillips and quoting the same passage above from
`Liebel-Flarsheim). The -249 IPR decision also interpreted the claims in
`light of the Specification. See Ex. 1111, 12–13. We likewise follow
`Phillips’s mandate to interpret disputed terms “in the context of the entire
`patent, including the specification.” Phillips, 415 F.3d at 1313. As stated
`above, we find the -249 IPR decision’s Specification analysis compelling.9
`We also credit Dr. Mowry’s declaration testimony that one of
`ordinary skill in the art would have understood that “a backup copy is simply
`a copy, even if in a different format, that corresponds to data stored
`elsewhere.” Ex. 1102 ¶ 45; see also Phillips, 415 F.3d at 1318 (“[E]xpert
`testimony can be useful . . . to establish that a particular term in the patent or
`the prior art has a particular meaning in the pertinent field.”).
`We determine the plain and ordinary meaning of backup copy
`encompasses, as Petitioner asserts, “a copy of stored data.”10
`
`9 Based on our review, we find the Specifications of the ’007 priority patent
`and the ’437 patent are substantially identical. Compare Ex.1101, with Ex.
`2118 (including a copy of the original specification of the application that
`matured into the ’007 patent), and US Pat. No. 6,981,007 (public record).
`10 Neither party’s briefing relies on the prosecution history to construe any
`
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`2. “internet-based data”
`Petitioner contends “internet-based data” means “data that is capable
`of being modified via the Internet.” Pet. 16 (citing Ex. 1102 ¶ 47). Patent
`Owner disagrees with Petitioner’s construction but concludes no
`construction is necessary. PO Resp. 8–11. We agree. See Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017) (“[W]e need only construe terms that are in controversy, and only
`to the extent necessary to resolve the controversy.”) (internal quotation and
`citation omitted).
`3. “database” and “data records”
`“database”
`a)
`Claim 1 recites in part, “at least one database containing a plurality of
`data records accessible by said central computer.” Ex. 1101, 3:25–26.
`Patent Owner proposes construing the term “database” as “data records
`organized with tables.” PO. Resp. 12–14. Patent Owner relies on the claim
`language, Specification, and extrinsic dictionary evidence. Id.
`Pointing to the claim language “at least one database,” Patent Owner
`contends “[i]t is well known that database tables are often linked, or related
`to one another.” Id. at 12 (citing Ex. 2103 ¶ 58). Patent Owner contends,
`“[r]elational databases allow for increases in computational ability, including
`
`
`claim terms. See generally Pet.; PO Resp.; see also Tr. 21:18–22:17, 39:1–
`10. We have reviewed the prosecution history excerpts of the ’437 patent
`submitted by Petitioner (Exs. 1106–1109) and the prosecution history of the
`’007 patent (to which the ’437 patent claims priority) submitted by Patent
`Owner (Ex. 2118). Apart from the -249 IPR decision discussed above for
`“backup copy,” we have not identified any other prosecution history
`statements that would assist our claim constructions.
`
`14
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`scalability, and increases in manipulability, two concepts at the core of the
`’437 [p]atent.” Id. at 12–13 (citing Ex. 1101, 1:16, 1:26, 1:54–55, 2:57,
`3:1). Patent Owner also notes the claims state the “database” contains “a
`plurality of data records,” contending that “[i]n database parlance, the term
`‘records’ is commonly used to refer to ‘rows’” and that recitation of the term
`“records” is evidence of the “patentee’s intent to claim a database as ‘data
`records organized with tables.’” Id. at 13 (citing Ex. 2013 ¶ 59).
`Patent Owner next refers to the Specification’s mention of “Internet
`based order entry and payment billing systems,” contending one of ordinary
`skill in the art “would have known such systems were typically implemented
`using databases for tracking inventory and billing records (customers,
`addresses, shipping information, etc.).” Id. (citing Ex. 1101, 1:27; Ex. 2103
`¶ 60). Patent Owner also argues one of ordinary skill in the art would have
`viewed the Specification’s reference to “generating reports” and
`“reformat[ing] the data” as referring to “reports generated out of a database
`. . ., as it is the data that needs to be organized and manipulated.” Id. (citing
`Ex. 2103 ¶ 61). Patent Owner also relies on the ’437 patent’s mention of
`“client identification number” in the Abstract, contending that one of
`ordinary skill in the art “would have understood that a client identification
`number was typically used as a key in a relational database.” Id. at 13
`(citing Ex. 1101, Abstr.; Ex. 2013 ¶ 58).
`Lastly, Patent Owner cites the following dictionary entry as
`supporting its construction of database:
`database[:] Loosely, any aggregation of data; a file consisting of
`a number of records (or tables), each of which is constructed of
`fields (columns) of a particular type, together with a collection
`
`15
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`of operations that facilitate searching, sorting, recombination,
`and similar activities.
`Id. at 14 (citing Ex. 2015, 8).
`In Reply, Petitioner contends that “database” should be given its
`ordinary and customary meaning and argues that Patent Owner’s
`construction is inconsistent with that meaning. Reply 2–3. Petitioner
`contends Patent Owner’s construction is inconsistent with the intrinsic and
`extrinsic record. Id. 3. Petitioner contends that from the intrinsic record, “a
`[person of ordinary skill in the art] would have understood ‘database’ to
`include any structured collection of data including hierarchical structures.”
`Id. at 4 (citing Ex. 1121 ¶ 7); see also id. at 9 (discussed below). Petitioner
`also contends “the word ‘table’ appears nowhere in the ’437
`[S]pecification.” Id. at 4–5 (citing Ex. 1101; Ex. 1121 ¶¶ 8–10). Petitioner
`points to the teachings of Amstein as evidence that “the computational goals
`purportedly described in the ’437 patent were achievable using systems
`other than a relational database.” Id. at 5–6 (citing Pet. 10–11; PO Resp.
`12–13; Ex. 1121 ¶ 11).
`Petitioner also contends the Abstract’s mention of “client
`identification numbers” does not support Patent Owner’s construction
`because such numbers “were not unique to relational databases and were
`used in other data storage systems,” including Amstein’s. Id. at 6 (citing
`Pet. 26–27). Petitioner further contends Patent Owner’s reliance on the term
`“records” in the claims as referring to “rows” rests on a “faulty premise,”
`namely that “‘data records’ only has the meaning that [Patent Owner]
`proposes if the claimed ‘database’ is understood to mean a relational
`database.” Id. at 7. Petitioner argues that the Specification instead uses the
`term “data records” consistent with its broader meaning, “all hosted data,” as
`
`16
`
`
`
`IPR2019-01019
`Patent 8,812,437 B2
`
`all hosted data would need to be retrieved “[i]n order to meaningfully
`retrieve a backup of the outsourced website.” Id. Petitioner contends this
`interpretation is supported by Figures 1 and 4 of the ’437 patent, “which also
`generally describe information backed up from the server to the client as
`‘data’ or ‘stored data,’ without any limitation as to how the data is organized
`or what types of data are backed up.” Id. at 7–8. And Petitioner contends
`that even if the Specification’s “order entry and payment billing systems
`would have only been implemented using relational databases, the ’437
`patent is not limited to these examples.” Id. at 8.
`Petitioner further contends Patent Owner’s construction is inconsistent
`with the extrinsic record. Petitioner contends Patent Owner’s own
`dictionary definition supports a broader construction because it provides
`multiple definitions, including “[l]oosely, any aggregation of data.” Id. at 9
`(citing Ex. 2105, 8–9). Petitioner also cites other dictionary evidence
`interpreting database as “any aggregation of data or any structured collection
`of data.” Id. (citing Ex. 1121 ¶ 18 (citing Ex. 1123, 73 (defining “database”
`as a “structured collection of data”; Ex. 1124, 468 (defining “database” as “a
`structured set of data held in a computer”)). Petitioner also relies on a
`portion of a reference submitted by Patent Owner, which states “[a] database
`system is essentially nothing more than a computerized record-keeping
`system.” Id. at 10–11 (citing Ex. 1133, 9). Finally, Petitioner concludes that
`Patent Owner “ignore[s] other types of databases that do not fit into [its]
`narrow construction” and thus fails to provide a proper construction for
`“database.” Id. at 12 (citing Ex. 1121 ¶ 22).
`In its Sur-Reply, Patent Owner contends that “database” cannot be
`construed to include hierarchical file systems because they do not include a
`
`17
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`IPR2019-01019
`Patent 8,812,437 B2
`
`client identification number. Sur-Reply 3–4 (citing Ex. 2103 ¶ 58). Patent
`Owner also contends that the definition “[l]oosely, any aggregation of
`data”—which it submitted—is “so untethered from the ’437 patent that it
`could include an old-fashioned rolodex or hand markings in a journal.” Id.
`Patent Owner further contends that although a dictionary Petitioner relies on
`refers to “hierarchical” as one type of database, “[h]ierarchical databases are
`not hierarchical file structures, as confirmed by a patent cited by Dropbox,
`which never refers to a hierarchical database as a file system and instead
`notes that they include ‘objects’ which each have a single ‘parent.’” Id. at
`4–5 (citing Ex. 1123, 3; Ex. 1125, 1:35–42). Patent Owner asserts that none
`of the references Dr. Mowry cites “make the same comparison between a
`‘hierarchical file system’ and a ‘hierarchical database.’” Id. at 5 (citing
`Ex. 1121 ¶ 21). Patent Owner also argues that the same dictionary refers to
`database files “contain[ing] records and are different from normal files.” Id.
`(citing Ex. 2119, 116). Patent Owner disagrees with Petitioner’s contention
`that hierarchical file systems are “scalable or even usable in internet-based
`systems.” Id. (citing Ex. 1129, 219). Finally, Patent Owner contends the
`’437 patent does not disclose a hierarchical file system embodiment. Id.
`at 6.11
`
`11 At the hearing, Patent Owner also referred to the prosecution history for
`the first time as supporting its construction of “database”:
`MR. KEELER: . . . [T]here is no discussion of the term
`database on its own in the ’437 patent prosecution history.
`However, there is discussion in the prosecution history that talk
`about the data records and how they are transmitted and taken
`as a whole. A person having ordinary skill in the art would
`know that a proper construction of database in this context
`would be data records organized with tables.
`
`18
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`IPR2019-01019
`Patent 8,812,437 B2
`
`
`Turning to our analysis, we first analyze Patent Owner’s argument
`that the claim language “at least one database” supports Patent Owner’s
`interpretation of database. PO Resp. 12–13. Patent Owner relies on the
`testimony of Dr. Jawadi to support its contention that “at least one database”
`implies a relational database. See id. at 12 (citing Ex. 2103 ¶ 58). We find
`more persuasive, however, Petitioner’s contention that “there is nothing
`inherent in the term ‘at least one database’ to suggest to [one of ordinary
`skill in the art] that database tables are required or that the database tables
`must be linked.” See Reply 4 (citing Ex. 1121 ¶ 7). Patent Owner also does
`not persuade us that the claim language “a plurality of data records”
`necessarily refers to “rows” or that the presence of “data records” implies
`tables.12 See PO Resp. 13 (citing Ex. 2103 ¶ 59). We agree instead with
`Petitioner that “‘data records’ only has the meaning that [Patent Owner]
`proposes if the claimed ‘database’ is understood to mean a relational
`database.” Reply 7.
`Patent Owner’s arguments based on the Specification are also
`unpersuasive. Patent Owner does not contend that the Specification sets
`forth an explicit definition or disavows the full scope of the term “database”;
`nor does the Specification do so. See PO Resp. 12–14. Rather, Patent
`Owner contends the claims and Specification implicitly define “database.”
`Tr. 38:11–13 (“JUDGE RAEVSKY: So counsel, is it your position then that
`the specification implicitly defines database . . . .? MR. KEELER: Yes,
`
`
`Tr. 39:5–10. This conclusory assertion does not assist our interpretation of
`the claims, and in any event, was raised for the first time at the hearing, and
`thus, we do not consider it. See Consolidated Trial Practice Guide 85–86.
`12 We dis
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