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EMC Corp. and VMWare, Inc. v. PersonalWeb Technologies, LLC and Level 3 Communications, LLC: Final Written Decision

Takeaway: Basing one’s patentability arguments on a claim construction at odds with the construction set forth in the Decision on Institution runs the risk that the Board will adopt its previous construction and simply discredit any inconsistent arguments.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that all the challenged claims of the ‘791 patent are unpatentable.

The ‘791 patent generally discloses and claims “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.”

The Board first discussed claim construction. The terms are construed under the broadest reasonable interpretation in light of the patent specification and are given their ordinary and customary meaning as understood by one of ordinary skill in the art in the context of the disclosure.  The parties did not contest the constructions set forth in the Board’s Decision on Institution, with the exception of one term.

Patent Owner disagreed with the Board’s construction of a particular means-plus-function limitation, “identity means for determining, for any of a plurality of data items present in the system, a substantially unique identifier, the identifier being determined using and depending on 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” in claim 1. Patent Owner agreed that the term should be construed as a means-plus-function limitation, but argued that the corresponding structure in the specification should be narrower than provided in the Board’s construction.  In this regard, Patent Owner argued that the specification required a narrow construction based on the disclosure that the identity calculating mechanism “must” have certain properties and be employed on a system wide basis.

The Board disagreed with Patent Owner, noting that it had considered those portions of the specification cited by Patent Owner, but found that the absolute language was nonetheless described in the context of preferred embodiments. The Board held that Patent Owner failed to establish that the proposed narrower corresponding structure was necessary to perform the recited function and refused to incorporate limitations from the specification into the claims.  The Board confirmed its previous construction that the term should be defined as “a data processor programmed to perform a hash function, e.g., MD5 or SHA.”

The Board then discussed the ground of unpatentability of anticipation based on the Woodhill reference on a claim by claim and limitation by limitation basis. The Board found that the Woodhill reference disclosed the limitations of claims 1-4, 29-33, and 41, as properly construed.

In general, the Board found that Patent Owner’s arguments were either based on overly narrow claim constructions that did not comport with those set forth in the Decision on Institution or were based on the above-referenced alternative construction proposed by Patent Owner and rejected by the Board. For example, Patent Owner’s arguments were largely predicated on the position that the claims required “the ability to look at all the files in a system in order to determine whether a file is present in the system.”  Petitioner pointed out that this position was presented by Patent Owner in the related district court litigation and was not persuasive to the court.  The Board was similarly not persuaded, holding that the arguments were “based on an overly narrow claim construction.”

In addition, Patent Owner tried to argue “teaching away” in the context of anticipation, which the Board noted was only applicable in an obviousness analysis. Patent Owner also argued that Petitioner was improperly relying upon more than one embodiment of Woodhill to establish anticipation.  Noting that a reference must disclose “all elements of the claimed invention arranged as in the claim” to anticipate the claim, the Board nonetheless agreed with Petitioner that Woodhill disclosed the claimed invention in one embodiment.

In its analysis, the Board credited Petitioner’s expert testimony as being consistent with the description of Woodhill and the broader scope of the claim language as construed by the Board. Patent Owner argued that Petitioner’s expert admitted during cross-examination that Woodhill could not perform a recited function.  However, Petitioner replied, and the Board agreed, that the alleged admission was in response to hypotheticals posed to the expert that were not necessarily related to the embodiments disclosed in Woodhill.

The Board then discussed the ground of obviousness of claims 1-4 and 29. The obviousness ground was based on an alternative interpretation of the “identity means” term discussed above.  Petitioner argued that if the term were construed narrowly to require the use of “an MD5 hash function,” the modification to Woodhill would have been obvious, and Patent Owner disagreed.

As discussed above, the Board found these claims unpatentable as being anticipated by Woodhill. Nevertheless, the Board agreed with Petitioner that even if construed more narrowly, Woodhill would have rendered obvious claims 1-4 and 29.

The Board next addressed Patent Owner’s evidence of secondary considerations as establishing non-obviousness. Patent Owner argued that the existence of three licenses outside the context of settling patent infringement suits outweighed the evidence of obviousness based on Woodhill.  The Board disagreed, holding that Patent Owner failed to establish the required nexus between the agreements and the subject matter of claims 1-4 and 29.  Further, even if the required nexus were established, the Board indicated that the success would be outweighed by the strong evidence of obviousness in the case.

The Board finally denied or dismissed the parties’ Motions to Exclude Evidence. In denying Patent Owner’s motions, the Board held that (1) Petitioner’s expert had properly relied upon additional prior art references in his rebuttal declaration to corroborate the state of the art; (2) a prior art document, Langer, was properly authenticated; (3) Langer was not inadmissible hearsay; (4) statements such as “capable,” “can,” and “may” in Petitioner’s expert declaration were admissible because the Board could properly weigh the testimony; (5) Petitioner’s expert testimony relating to enablement of Woodhill was direct rebuttal to Patent Owner’s arguments; and (6) Petitioner’s expert testimony based on the claims of Woodhill were admissible because the disclosure of Woodhill provided written description support for its claims.  In dismissing Petitioner’s Motions to Exclude, the Board noted that excluding Patent Owner’s license agreements and related declarations was not necessary because the claims were found to be unpatentable anyway.

EMC Corp. and VMWare, Inc. v. PersonalWeb Technologies, LLC and Level 3 Communications, LLC, IPR2013-00082
Paper 83: Final Written Decision
Dated: May 15, 2014
Patent 5,978,791
Before: Kevin F. Turner, Joni Y. Chang, and Michael R. Zecher
Written by: Zecher
Related Proceedings: PersonalWeb Technologies LLC v. EMC Corporation and VMware, Inc., No. 6:11-cv-00660-LED (E.D. Tex.); IPR2013-00083; IPR2013-00084; IPR2013-00085; IPR2013-00086; and IPR2013-00087

© 2021 Faegre Drinker Biddle & Reath LLP. All Rights Reserved.National Law Review, Volume IV, Number 142
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About this Author

The Intellectual Property Litigation Practice at Drinker Biddle & Reath LLP recognizes that a successful IP enforcement strategy can make an important contribution to a company's bottom line. Our attorneys help a wide variety of clients protect what is theirs and police the marketplace against infringements and unfair competitive practices.

Our attorneys have litigated infringement suits across a broad range of industries and technologies, including pharmaceuticals, medical devices, dental methods, computer software, automobile designs,...

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