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`Paper _____
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` Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`UNIFIED PATENTS INC.,
`Petitioner
`
`v.
`
`SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner
`________________
`
`Case No. IPR 2019-01655
`
`Patent No. 9,098,526
`________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. §42.107
`
`
`
`
`
`

`

`TABLE OF CONTENTS
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`TABLE OF CONTENTS
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`TABLE OF AUTHORITIES
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`LIST OF EXHIBITS
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`PETITIONER HAS NOT MET ITS BURDEN
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`I.
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`II.
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`A. The Focus Must Be On the Claim Terms Themselves
`B. The Systems of the Prior Art Do Not Disclose the Subject
` Matter of the ‘526 Patent
`
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`
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`PROPERLY CONSTRUED, THE CLAIMS REQUIRE BOTH
`STORING AND RETRIEVAL OF A DATA OBJECT
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`
`
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`A. Petitioner’s Requested Construction Is Improper
`B. The Proposed Construction is Contrary to the Specification
`C. The Proposed Construction Violates a Central Tenet of
`Claim Construction
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`III. PRUST, AS MODIFIED BY MAJOR, DOES NOT TEACH
`
`CRITICAL FEATURES OF THE CHALLENGED CLAIMS
`
`
`A. Prust in View of Major Does Not Describe and Enable the
`Claimed “Utilizing Download Information for the File
`Stored in (the) Cache
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`
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`B. Prust in View of Major Does Not Disclose “Predefined
`Capacity”
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`
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`C. Prust in View of Major Does Not Describe and Enable
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`“Coupling” to Promote Storage and Retrieval
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`D. There is No Motivation to Combine Prust with Major
`E. Dependent Claims 3 and 20 Recite Features Not Disclosed
`In Prust Combined with Major
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` ii
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`ii
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`iv
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`v
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`1
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`2
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`2
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`7
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`7
`9
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`13
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`15
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`20
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`27
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`29
`31
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`35
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`

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`37
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`38
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`40
`43
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`46
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`IV. CHAGANTI TAKEN IN VIEW OF MAJOR FAILS TO RENDER
`
`OBVIOUS ALL CLAIMS FOR MANY OF THE SAME REASONS
`
`PRUST IN VIEW OF MAJOR FAIL
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`A. Chaganti in View of Major Do Not Describe and Enable
`The Claimed “Utilizing Download Information for the File
`Stored in (the) Cache”
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`
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`B. Chaganti in Light of Major Does Not Describe and Enable
`A Storage Space of Predefined Capacity Exclusively Assigned
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`C. There is No Motivation to Combine Chaganti and Major
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`V.
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`CONCLUSION
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` iii
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`TABLE OF AUTHORITES
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`PAGE NO.
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`CASES
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`Arctic Cat Inc. v. Bombardier Recreational Products, Inc.,
`
`876 F.3d 1350 (Fed. Cir. 2017)
`
`
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`Aventis Pharma S.A. v. Hospira, Inc.,
`675 F.3d 1324 (Fed. Cir. 2012)
`
`
`Bicon Inc. v. Straumann Co.,
`
`441 F.3d 945 (Fed. Cir. 2006)
`
`Biofrontera Incorporated v. Dusa Pharmaceuticals, Inc.,
`
`2019 WL 965230 *10 (PTAB)
`
`
`
`Blackbird Tech LLC v. ELB Elecs., Inc.,
`895 F.3d 1374 (Fed. Cir. 2018)
`
`
`Ekchian v. Home Depot, Inc.,
`
`104 F.3d 1299 (Fed. Cir. 1997)
`
`Elekta Instrument S.A. v. O.U.R. Sci. Int’l, Inc.,
`
`214 F.3d 1302 (Fed. Cir. 2000)
`
`Ex parte Richardson,
`
`2004 WL 7730 *2 (PTAB 2009)
`
`Ex pare Wong,
`
`2014 WL 1618567 *5
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`Gen. Am. Transp. Corp. v. Cryo-Trans, Inc.,
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`93 F.3d 766 (Fed. Cir. 1996)
`
`In re Geerdes,
`
`491 F.2d 1260 (CCPA 1974)
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`iv
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`43
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`12
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`14
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`18
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`12
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`12
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`14
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`16
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`23
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`14
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`16
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`

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`In re ICON Health & Fitness, Inc.,
`496 F.3d 1374 (Fed. Cir. 2007)
`
`
`In re IPR Licensing, Inc.,
`
`942 F.3d 1363 (Fed. Cir. 2019)
`
`In re Morsa,
`
`803 F.3d 1374 (NEED REST OF CITE)
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`Merck & Co., Inc. v. Teva Pharmaceuticals USA, Inc.,
`
`395 F.3d 1364 (Fed. Cir. 2005)
`
`
`PAR Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc.,
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`773 F.3d 1186 (Fed. Cir. 2014)
`
`
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`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)
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`Power Integrations, Inc. v. Semiconductor Components Industries, LLC,
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`926 F.3d 1306 (Fed. Cir. 2019)
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`PPC Broadband, Inc. v. Corning Optical Communicatins RF, LLC,
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`815 F.3d 747 (Fed. Cir. 2014)
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`
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`
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`Regents of the University of Minnesota v. LSI Corporation,
`
`926 F.3d 1327 (Fed. Cir. 2019)
`
`
`
`SAS Institute v. Iancu,
`
`138 S.Ct. 1348
`
`SciMed Life Sys., Inv. V. Adv. Cardiovascular Sys., Inc.,
`
`242 F.3d 1337 (Fed. Cir. 2001)
`
`
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`Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011)
`
`
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`Techtronic Industries Co. Ltd. v. International Trade Commission,
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`2019 WL 6753355 *4-6 (Fed. Cir. Dec. 12, 2019)
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`35
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`32
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`5
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`14
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`19
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`11
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`7
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`2
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`7
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`1
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`12
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`18
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`11,13
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`12
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`12
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`14
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`12
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`14
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`1
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`1
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`1
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`1
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`Thorner v. Sony Computer Entm’t Am. LLC,
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`669 F.3d 1362 (Fed. Cir. 2012)
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`Trs. Of Columbia Univ. v. Symantec Corp.,
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`811 F.3d 1359 (Fed. Cir. 2016)
`
`Twilio Inc. v. TeleSign Corp.,
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`2016 WL 5027521 *1 (PTAB)
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`United States v. Adams,
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`383 U.S. 39 (1966)
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`Vtech Communications, Inc. v. Spherix, Inc.,
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`2015 WL 981678 *4 (PTAB)
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`Zodiac Pool Systems, Inc. v. Aqua Products, Inc.,
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`2018 WL 6604633 *1 (PTAB 2018)
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`
`
`STATUTES
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`35 U.S.C. §314(a)
`
`37 C.F.R. §42.107
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`37 C.F.R. §42.167(a)
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` vi
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`

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`
`
`
`
`LIST OF EXHIBITS
`
`Description
`
`Exhibit
`Ex. 2001 Declaration of Jawadi
`Ex. 2002 CV of Jawadi
`Ex. 2003 Microsoft Computer Dictionary, 2002 Edition
`Ex. 2004 Hypertext Transfer Protocol – HTTP/1.1, rfc2616, June 999
`Ex. 2005 Management Systems: analyses and applications, August W. Smith,
`Dryden Press, 1982
`Ex. 2006 Definitions
`
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` vii
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`

`

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`
`
`The undersigned acting on behalf of the Patent Owner, Synkloud
`
`Technologies, LLC (hereinafter “PO”) and pursuant to 37 C.F.R. §42.107,
`
`respectfully requests that the Petition of Unified Patents Inc., (hereinafter
`
`“Petitioner”) seeking Inter Partes Review (hereinafter “IPR”) of U.S. Patent No.
`
`9,098,526 (hereinafter “the ‘526 Patent”) be denied because Petitioner has failed to
`
`show that there is a reasonable likelihood that the Petitioner would prevail with
`
`respect to at least one of the claims.
`
`I. PETITIONER HAS NOT MET ITS BURDEN
`
`It is Petitioner’s burden to demonstrate, based on the parties' papers, “that there
`
`is a reasonable likelihood that the petitioner would prevail with respect to at least one
`
`of the claims challenged in the petition.” SAS Institute v. Iancu, 138 S. Ct. 1348,
`
`1353 (2018) citing 35 U.S.C. § 314(a). Importantly, the burden rests on Petitioner –
`
`there is no burden on Patent Owner to prove to the contrary. Zodiac Pool Systems,
`
`Inc. v. Aqua Products, Inc., 2018 WL 6604633 *1 (PTAB 2018). By regulation, PO’s
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`showing is confined herein to a demonstration of the fashion in which Petitioner has
`
`failed to meet the burden imposed. 37 C.F.R. §42.167 (a). Thus, PO does not
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`advance evidence demonstrating the patentability of the claims of the ‘526 Patent –
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`this Preliminary Response is confined simply to a review of the reasons why there is
`
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`1
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`

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`no reasonable likelihood of Petitioner prevailing on the charges of obviousness it has
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`brought.
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`A. The Focus Must Be On the Claim Terms Themselves
`
`PO notes that much of the Petition, and the Declaration relied on therein – Ex.
`
`1004 – address issues that do not arise out of a consideration of the specific
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`limitations of the claims. In any IPR, the focus is necessarily on the recitations of
`
`those claims. Thus, the purpose of construing the claims of a patent is to better
`
`understand how the claim terms themselves are to be understood, not the other way
`
`around. PPC Broadband, Inc. v. Corning Optical Communications RF, LLC, 815 F.3d
`
`747, 755 (Fed. Cir. 2014). The ‘526 Patent addresses a problem that wireless device
`
`users were encountering in 2003 – how to quickly and efficiently access and store
`
`information secured from the internet without impacting the very limited storage
`
`capacity of that wireless device. That problem persists today. In particular – the ‘526
`
`Patent answers the very real need of how to quickly and efficiently search the internet
`
`from a wireless device, safely download data material identified without
`
`compromising the storage capacity of the wireless device, and then access that
`
`downloaded material. See the ‘526 Patent, Col. 2, ll. 29– 37.
`
`
`
`
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`B. The Systems of the Prior Art Do Not Disclose the Subject Matter of the
`‘526 Patent
`
`
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`
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`The answer to the problem presented, as is discussed at length in the ‘526
`
`Patent and illustrated most simply in Figures 2 and3, is to provide an external storage
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`
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` 2
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`

`

`
`
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`for the information that can be accessed by the wireless device. Importantly, the ‘526
`
`Patent discloses and claims a system which provides for direct communication
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`between the wireless device and a storage server through the internet (so-called in-
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`band) downloading and “out-band” downloading, where the wireless devices directs
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`data be downloaded to a storage server along a path from the internet to the server
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`outside of the wireless device. Compare Figures 2 and 3.Thus, the search for data, its
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`identification and download for storage does not require direct communication
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`through the wireless device to download and store the data of interest (for example,
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`multimedia data) all through one smooth operation that links the wireless device
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`(e.g., a handheld phone) a remote storage server and the internet. Features and
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`characteristics of the storage server and the handheld device, the method of use of
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`that device in conjunction with the storage server and system of the ‘526 Patent, and
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`the tools to be used in conjunction therewith are critically recited in the claims of the
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`‘526 Patent.
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`Before we come to the specific terms that distinguish the invention of the ‘526
`
`Patent, however, we must, because Petitioner insists we do, properly construe the
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`terms of the claims of the ‘526 Patent. Petitioner insists that it makes no difference,
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`whether the claims are construed to call for storing a data object on the server,
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`retrieving a data object from the server (or storage space) or both, the challenged
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`claims of the ‘526 Patent are obvious. Petition, pp. 7– 8: “Even if the Board were to
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` 3
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`disagree with the construction, the Board should still find all Challenged Claims
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`unpatentable…”. If that were truly so, it would be unnecessary and inappropriate to
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`construe the claims in such a fashion – there is no need to consider infringement in
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`this proceeding. Nor is there a need to somehow measure the claims against some
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`deployed embodiment – Petitioner relies only on three prior art references which are
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`patent publications contemporaneous with the filing of the ‘526 Patent in 2003.
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`PO respectfully submits that the construction is offered here, as a means to
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`characterize the claims in co-pending litigation. No claim construction effort is
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`appropriate here, because Petitioner tells us that no matter how the claim is
`
`construed, the claims are obvious. Such a pretext for claim construction is improper.
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`Nonetheless, because that litigation IS co-pending, and because the ‘526 Patent has
`
`been licensed in a royalty-based environment, PO respectfully submits that a
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`Preliminary Response in this matter properly includes a claim construction arrived at
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`pursuant to precedent, which requires consideration of the inventor’s intent, as
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`framed by the specification.
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`Thereafter, PO turns in this Preliminary Response to the asserted grounds of
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`obviousness. Petitioner argues that Claims 1–3, 5–11 and 13–20 of the ‘526 Patent
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`would have been obvious to one of skill in the art to which it is directed prior to
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`December 4, 2003, given U.S. Patent No. 6,735,623, (hereinafter “Prust”) read in
`
`view of WO 02/052785, (hereinafter “Major”). Petitioner further argues that wholly
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` 4
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`independent of that first argument, the same individual of skill in the art would have
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`found all claims of the ‘526 Patent to be obvious, prior to December 4, 2003, given
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`U.S. Patent No. 8,117,644, (hereinafter “Chaganti”), again read in view of Major.
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`Accordingly, this Preliminary Response establishes the proper construction of
`
`the claims, and then turns to the combination of Prust taken in view of Major.
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`Thereafter, the asserted unpatentability of all Claims of the ‘526 Patent as obvious
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`over Chaganti in view of Major is discussed. The discussion demonstrates that
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`neither Prust taken in view of Major nor Chaganti taken in view of Major describes
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`and enables the subject matter of the ‘526 Patent. In the absence of both description
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`and enablement of the challenged claims by the prior art, the claims cannot be
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`unpatentable. This is as true of the asserted grounds of obviousness as it is of
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`anticipation, In re Morsa, 803 F. 3d 1374, 1377 (Fed. Cir. 2015) (“Enablement of
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`prior art requires that the reference teach a skilled artisan—at the time of filing—to
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`make or carry out what it discloses in relation to the claimed invention without undue
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`experimentation.”).
`
`Throughout this response, PO relies on the Declaration of Jawadi, Exhibit
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`2001 hereto. While the level and understanding of those of skill in the art as
`
`described by Petitioner’s Expert Long, Ex. 1004, ¶¶ 46–64 is not specifically at issue,
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`the conclusions drawn by the two experts are diametrically opposed – in part because
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`Long relies on practices, such as “Copy-and-Paste” that are not reflected in, and do
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` 5
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`

`

`not properly characterize, the prior art relied upon. Jawadi relies on Exhibits 2002 –
`
`2006, including his own curricula vitae, as Exhibit 2002, and short prior art
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`compendia and dictionaries, Ex. 2003–2006, relied upon to show what those of skill
`
`in the art would have understood as of December 2003.
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` 6
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`II.
`
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`PROPERLY CONSTRUED, THE CLAIMS REQUIRE BOTH
`STORING AND RETRIEVAL OF A DATA OBJECT
`
`
`
`
`A. Petitioner’s Requested Construction Is Improper
`
`The Petition, as filed, in this matter begins with a request to engage in a claim
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`construction of all claims. Petition, p. 7. Petitioner asserts that such a construction
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`may be beneficial “as it may simplify the issues in dispute if Patent Owner argues
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`patentability based on an alternative claim limitation.” Id. With respect, the nature
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`of the basis for the request is not clear. Petitioner’s burden is to come forward with a
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`basis for supporting its challenge based on ALL limitations of the claim. Petitioner
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`does not tell us what “alternative claim limitations” it is referring to. None are
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`apparent. Indeed, Petitioner tells us that the claim construction does not matter - all
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`claims are obvious whether Petitioner’s construction is adopted or not.
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`With respect, this is not the forum for unnecessary exercises in claim
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`construction. If the outcome of the construction does not matter, then no claim
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`construction should be engaged in. Power Integrations, Inc. v. Semiconductor
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`Components Industries, LLC, 926 F.3d 1306, 1318 (Fed. Cir. 2019). Indeed a
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`specific goal and intention of the IPR provisions is to “limit unnecessary and
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`counterproductive litigation costs.” Regents of the University of Minnesota v. LSI
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`Corporation, 926 F.3d 1327, 1335 (Fed. Cir. 2019). Respectfully, PO submits that
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`where Petitioner seeks a claim construction exercise that it insists cannot matter in
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` 7
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`the determination of the patentability of the claims challenged, and can forward no
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`concrete basis for asking the Board and the parties to engage in such a claim
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`construction exercise – no claim construction is warranted. Respectfully, PO submits
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`the “outcome neutral” claim construction Petitioner asks this Board to engage in has
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`nothing to do with the positions adopted by Petitioner in this matter – it has to do
`
`with the co-pending litigation. Petitioner is taking an extra opportunity to advance a
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`position that cannot matter in the IPR, but might well impact the parties in a co-
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`pending litigation - an exercise not contemplated as a proper one in this IPR.
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`Even so, it might be possible to accommodate the request and adopt the
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`“outcome neutral” claim construction advanced by Petitioner. The construction
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`advanced, however, is contrary to statute and regulation, and flies in the face of
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`precedent that calls for claim construction to be based on the clear intent of the
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`inventor where set forth in the specification. Petitioner, and Petitioner’s expert Long,
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`neither consider nor explain that specification, nor attempt to correlate the proposed
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`construction with the explanation of precisely what the inventor regarded as his
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`invention – which is set forth clearly in the ‘526 Patent specification. Making matters
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`worse, Petitioner violates a basic rule of claim construction in arriving at its proposed
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`construction. For these reasons, PO rejects the proposed construction, below, before
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`proceeding to the asserted grounds of invalidity.
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` 8
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`B. The Proposed Construction is Contrary to the Specification
`
`Petitioner’s proposed claim construction revolves around a single phrase
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`present in both independent claims of the ‘526 Patent. No other basis for construction
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`is offered. Both independent Claim 1 and independent Claim 11 of the ‘526 Patent
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`recite, inter alia, a critical step of remotely accessing the storage space featured in the
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`claims. Those claims recite this step comprises:
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`storing a data object (in the storage space) or retrieving a data
`object therefrom
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`
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`Petitioner construes this claim limitation, which defines the critical interaction
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`between the user of the wireless device such as a handheld phone, the individual who
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`benefits from the invention, to mean that the claim is satisfied by A) storing a data
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`object in a remote serve or B) retrieving a data object from the remote server.
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`Petition at pp. 6–8. To characterize the invention of the ‘526 Patent as one which
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`might allow one to store data in a remote server – but NOT retrieve it for use ignores
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`the entire point of the invention as set forth at Col. 5, ll., 33–37 which provides that a
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`user can:
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` Retrieve and play multimedia file data file such as video or music
`stored in the assigned storage volume (11) located on the server.
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` 9
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`In a related embodiment also embraced by the claims of the ‘526 Patent set
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`forth at Col. 5, ll. 40-41, the invention is intended to permit the user to:
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`Retrieve data file from the file system of the assigned storage volume
`(11) on the server (3).
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`If one accepts the construction urged by Petitioner, the result is an invention
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`that does not provide for a cardinal feature of the invention –accessing and enjoying
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`the downloaded data stored on a remote server. Petitioner’s “either this or that”
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`approach to construction also permits a construction that characterizes the invention
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`as not embracing the ability “to download a data from a remote web server (15) into
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`the file system on the assigned storage volume (11) in the external storage system
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`(10) on the server (3).” ‘526 Patent, Col. 5, ll. 3–6. Thus, Petitioner argues, one of
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`skill in the art would have read and understood the disclosure of the ‘526 Patent to
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`construe the claims thereof to be limited to either downloading information to a
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`server or retrieving data from a server, but not both.
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`It’s easy to see the inventor wrote the disclosure as embracing and calling for
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`both downloading (storing) and accessing (retrieving) information of interest. Were it
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`not so, the expressed aim of the invention – to provide for increased storage of data
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`on a remote server instead of the wireless device itself, and provide for the smooth
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`retrieval of that data – would be otherwise. This is the description of the invention set
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`forth in the specification of the ‘526 Patent at Col. 5, ll. 1–41. Unquestionably, it was
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`the “intention of the inventor …to claim a system that would do both storing AND
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`retrieving.” Ex. 2001, ¶145.
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`How is it possible for two experts in the art to come away with such different
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`understanding of what the claims of the ‘526 Patent call for? The answer lies in the
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`tiny word “or”. Petitioner, and the Expert Declaration Petitioner relies on, Exhibit
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`1004, do not actually construe the specific language of Claim 1 or Claim 11 of the
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`‘526 Patent. Rather, Petitioner construes or defines the word “or.” Petitioner’s
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`argument seeks to rely solely on the word “OR” to arrive at the conclusion that the
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`claims of the ‘526 Patent are met by providing for one of the two options – storing,
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`accessing – but not both. See the Petition, p. 7:
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`The plain and ordinary meaning of “comprising A or B” is that A and B
`are alternatives. Ex – 1004, ¶41.
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`With respect, it was not truly necessary to turn to an expert to get a dictionary
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`definition of the word OR considered in isolation. Such consideration, however, is
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`not how claims are to be construed. The Federal Circuit had recent opportunity to
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`address the importance of considering the specification and the clear intention of the
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`inventor. Techtronic Industries Co. Ltd. v. International Trade Commission 2019 WL
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`6753355 *4 - 6 (Fed. Cir. Dec. 12, 2019):
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`We agree with the Appellants that Chamberlain disavowed coverage of wall
`consoles without a passive infrared detector. Claim terms are normally
`given their ordinary and customary meaning, as understood by persons of
`ordinary skill in the art in view of the specification and prosecution history.
`Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). But
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`where the inventor has clearly set forth a different definition of a claim
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`term, or has manifested that the invention does or does not include a
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`particular aspect, that intention “is regarded as dispositive.” Id. at 1316
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`(citing SciMed Life Sys., Inc. v. Adv. Cardiovascular Sys., Inc., 242 F.3d
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`1337, 1343–44 (Fed. Cir. 2001)). In the latter circumstance, the inventor has
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`“disavowed” claim scope. A disavowal must be clear, but it need not be
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`explicit. See Trs. Of Columbia Univ. v. Symantec Corp., 811 F.3d 1359,
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`1363 (Fed. Cir. 2016). Disavowal “may be inferred from clear limiting
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`descriptions of the invention in the specification or prosecution history.”
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`Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012);
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`see also Blackbird Tech LLC v. ELB Elecs., Inc., 895 F.3d 1374, 1377–78
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`(Fed. Cir. 2018) (collecting cases and finding no disavowal where the
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`specification did not teach that the feature in question was “important,
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`essential, or critical to the invention”). An inventor may also disavow claim
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`scope “by distinguishing the claimed invention over the prior art.” Ekchian
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`v. Home Depot, Inc., 104 F.3d 1299, 1304 (Fed. Cir. 1997). Ultimately, as
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`this court held in Phillips, the purpose of claim construction is to
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`“capture the scope of the actual invention,” and whether “the embodiments .
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`. . define the outer limits of the claim term,” or are “merely . . . exemplary in
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`nature,” is a question that must be determined “in the context of the
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`particular patent.” 415 F.3d at 1323–24…. We disagree with the
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`Commission. While “mere criticism” of a particular embodiment will not
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`always rise to the level of disavowal, depending on the rest of the intrinsic
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`record, see Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362,
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`1366–68 (Fed. Cir. 2012), we must construe claims “in the light of the
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`specifications and . . . with a view to ascertaining the invention.” United
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`States v. Adams, 383 U.S. 39, 49 (1966) (collecting cases). Where, as here,
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`the specification plainly represents the scope of the invention to the
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`exclusion of some embodiments, it is unnecessary that it also concede that
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`those embodiments are “infeasible” or even “impossible” by reference to its
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`teachings. See Trs. of Columbia Univ., 811 F.3d at 1363–64 (rejecting
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`a requirement of “express[]” disavowal (citing Phillips, 415 F.3d at
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`1320–21)). Indeed, it is difficult to imagine a situation in which the
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`Commission’s standard for disavowal would be satisfied. Here, the entire
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`specification focuses on enabling placement of the passive infrared
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`detector in the wall console, which is both responsive to the prior art
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`deficiency the ’319 patent identifies and repeatedly set forth as the
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`objective of the invention. Thus, the ’319 patent disavows locating the
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`detector elsewhere, even without an express concession to that effect.
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`(emphasis supplied).
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`As was the case in Techtronics, the entire specification of the ‘526 Patent
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`focuses on single task, providing a smooth system which enhances storage
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`capacity of a user of a wireless device by providing for streamlined ability to
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`download, store AND retrieve data objects to and from that storage space.
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`Nowhere does the ‘526 Patent suggest or consider the invention may be satisfied
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`by simply storing information but not retrieving it, or only retrieving but not
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`storing information. PO submits the specification of the ‘526 Patent makes it clear
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`– the patent claims are directed to a system which provides for both downloading
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`and retrieving. PO notes, in this respect, that neither the Petition nor the
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`Declaration that is Ex. 1004 so much as considers the intent of the inventor as
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`expressed in the specification. See the Petition, pp. 6 – 7 and Ex. 1004, ¶¶ 41–42.
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`C. The Proposed Construction Violates a Central Tenet of Claim
`Construction
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`Claims 1 and 11 of the ‘526 Patent both specifically recite as a claim
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`limitation “the storing of a/the data object including to download a file from a
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`remote server across/on a network into the assigned storage space.” Thus, all
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`claims of the ‘526 Patent specifically require storing. Accordingly, including the
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`storing OR retrieving feature as construed by Petitioner would be superfluous.
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`Specifically, if storing is required as shown above, interpreting the disputed phrase
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`to provide for OR retrieving would render it superfluous and unnecessary. Ex.
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`2001, ¶146. A claim construction that renders a phrase of a claim superfluous is
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`improper and suspect. Twilio Inc. v. TeleSign Corp., 2016 WL 5027521 *1 (PTAB)
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`observing Federal Circuit precedent that follows this simple but clear rule:
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` See Merck & Co., Inc. v. Teva Pharmaceuticals USA, Inc., 395 F.3d 1364,
`1372 (Fed. Cir.2005 (rejecting a proposed claim construction that would
`render claim terms superfluous); Elekta Instrument S.A. v. O.U.R. Sci. Int'l,
`Inc., 214 F.3d 1302, 1307 (Fed.Cir.2000) (construing claim to avoid
`rendering the 30 degree claim limitation superfluous); Gen. Am. Transp.
`Corp. v. Cryo–Trans, Inc., 93 F.3d 766, 770 (Fed.Cir.1996) (rejecting the
`district court's claim construction because it rendered superfluous the claim
`requirement for openings adjacent to the end walls).
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`Petitioner nowhere considers the impact of its proposed construction that the
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`claims of the ‘526 Patent call for only storing or retrieving as to the remaining
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`recitations of the claim. Yet, claims are considered as a whole – either the claim is
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`construed and, on construction, it is obvious, or the claim as construed is not
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`obvious. Vtech Communications, Inc. v. Spherix, Inc. 2015 WL 981678 *4
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`(PTAB) rejecting a proposed construction that rendered a phrase in an independent
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`claim superfluous on the grounds that “it is well-settled that “claims are interpreted
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`with an eye toward giving effect to all terms in the claim.” See, Bicon Inc. v.
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`Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006).
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`Petitioner’s own argument asserts that claim construction is unnecessary –
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`that the claims are obvious no matter what construction is adopted. Petitioner
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`offers absolutely no possible dispute that might be short-circuited by an early and
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`unnecessary claim construction. Petitioner’s claim construction nowhere refers to
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`the specification or file history, or somehow demonstrates that its construction is
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`consistent with the inventor’s avowed intent – an intent that is clear from the
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`specification. The proposed construction is not only contrary to the clear intent of
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`the inventor as set forth in the specification of the ‘526 Patent, it is contrary to a
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`very specific rule or tenet of claim construction which precludes a claim
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`construction which renders a phrase in a claim so construed superfluous.
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`Petitioner's argument should be rejected – the clear intent of the inventor, as
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`expressed in the specification, is that the claim phrase “Comprises storing a data
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`object (in the storage space) or retrieving a data object therefrom” should be
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`construed to require both ‘storing a data object and retrieving a data object’ in/from
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`the storage space.
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`III. PRUST, AS MODIFIED BY MAJOR, DOES NOT TEACH CRITICAL
`FEATURES OF THE CHALLENGED CLAIMS
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`It is well settled that to establish that one or more claims are obvious,
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`Petitioner must demonstrate that the claims, considered as a whole, are wholly taught
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`by the references relied upon – each recitation of the claim must be taught by the
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`combination of references. Petitioner relies on U.S. Patent No. 6,735,623 (hereinafter
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`“Prust”), Ex. 1006, taken in view of WO 02/052785, (hereinafter “Major”), Ex. 1007
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`as teaching all the features of challenged Claims 1 – 3, 5 – 11 and 13 – 20 as obvious.
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`As is made more evident below, this combination of references does not teach all the
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`recited features of the challenged claims, and so cannot establish the challenged
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`claims are obvious – no limitation can be overlooked. One must consider all claim
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`limitations together to determine whether a claimed invention is obvious. Ex parte
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`Richardson, 2004 WL 7730 *2 (PTAB 2009) citing In re Geerdes,491 F2d. 1260,
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`1262 – 1263 (CCPA 1974) for the proposition “[E]very limitation in the claim must
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`be given effect rather than considering one in isolation from the others.” (Emphasis
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`in original). Petitioner’s showing fails this test.
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`Neither Prust, nor Major, nor their combination teaches the requirement of
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`every challenged claim that downloading a data file into the assigned storage space
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`be achieved “through utilizing download information for the file stored in (the)
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`cache.” The use of “copy-and-paste” operations using the web-cache relied upon by
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`Petitioner beginning at page 10 of the Petition is not in fact taught by the combination
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`of references relied upon, and would not be recognized by a person of ordinary skill
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`in the art (POSITA). In fact – the use of “copy-and-paste”, although relied upon
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`exclusively by Petitioner to satisfy this element of the claim is not recited or taught
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`by the ‘526 Patent, not shown or enabled by Prust, and not taught by Major.
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`PO notes, in this respect, that it is Petitioner that urges that a proper
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`understanding of the term “download information” is that such a data object is a
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`URL. Petition, p. 4, Ex. 1004, ¶31, Ex. 2001, ¶31. PO does not necessarily agree with
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`that definition, nor is it bound by Petitioner’s argument. Since, adopting Petitioners
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`characterization demonstrates nonetheless the claims are not obvious over the art, PO
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`discusses it herein.
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`A second limitation that must be taught by the combination of Prust and Major
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`to render all challenged claims of the ‘526 Patent obvious is the express requirement
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`of all challenged claims that the storage space provided be “of a predefined capacity
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`assigned exclusively to a user of the wireless device by a storage server.” Neither
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`Prust nor Major teaches that storage capacity in a server be of a defined size set by
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`the server before storage is allocated to the users. Again, this requirement is an
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`essential and recited characteristic of the claims. Whether the combination of Prust
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`and Major, given the knowle