UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`UNIFIED PATENTS INC.,
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`Petitioner,
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`v.
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`SYNKLOUD TECHNOLOGIES, LLC,
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`Patent Owner.
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`____________
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`
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`Case IPR2019-01655
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`U.S. Patent No. 9,098,526
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`____________
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`SECOND DECLARATION OF ZAYDOON (“JAY”) JAWADI
`IN SUPPORT OF PATENT OWNER’S RESPONSE
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`IPR 2019-01655
`Exhibit 2007
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`Unified Patents v.
`SynKloud Technologies, LLC
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`TABLE OF CONTENTS
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`I. BACKGROUND AND QUALIFICATIONS ..................................................... 1
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`A. Supplement to First Declaration ......................................................................................... 6
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`II. MATERIALS REVIEWED ................................................................................ 7
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`A. Supplemental Materials Reviewed ..................................................................................... 7
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`III. LEGAL UNDERSTANDING ............................................................................. 8
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`IV. CLAIM CONSTRUCTION ................................................................................ 8
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`V. OPINIONS ........................................................................................................... 9
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`A.
`
`Institution Decision ............................................................................................................. 9
`
`B. Ground 1: Claims 1-3, 5-11, and 13-20 Are Not Obvious in View of Prust (Ex-1006) and
`Major (Ex-1007) ......................................................................................................................... 9
`
`a. Claims 1 and 11: Copy-and-Paste (or Typing) with Web Browser Cache Does Not
`Disclose Utilizing Download Information Stored in Cache ................................................... 9
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`i. Purpose of the ’526 Cache .......................................................................................... 13
`
`ii.
`
`No Reason to Add Cache to Prust........................................................................... 14
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`iii. The ’526 Patent Does Not Teach Copy-and-Paste ................................................. 19
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`iv. Major Does Not Teach Copy-and-Paste ................................................................. 19
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`v.
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`Prust Does Not Teach Copy-and-Paste ................................................................... 19
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`vi. Major and Prust, Alone and/or in Combination, Do Not Teach Copy-and-Paste ... 21
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`vii. The Steps of Using Copy-and-Paste from Web Browser Cache in Wireless Device
`Are Not Conventional and Not Obvious ........................................................................... 22
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`viii.
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`The User (Not the Code) Performs the Copy-and-Paste ..................................... 25
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`ix. URLs of Data Objects Are Not Displayed by the Browser and Cannot be Copied
`Directly Using Copy-and-Paste ........................................................................................ 29
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`x.
`
`The Web Page Containing the URL Must Be Cacheable ....................................... 33
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`xi. Not All Web Pages Are Cacheable or Cached........................................................ 33
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`xii. A User Cannot Tell if a Web Page Displayed by the Web Browser Is from Cache
`or Stored in Cache ............................................................................................................. 36
`
`Prust Does Not Disclose Where the URL for the Purported Out-of-Band
`xiii.
`Download Is Obtained from.............................................................................................. 38
`
`xiv. Prust Does Not Disclose Cache Storage ................................................................. 39
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`xv. Prust Does Not Disclose Out-Of-Band Download through Browser or through
`Operating System .............................................................................................................. 39
`
`
`
`i
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`

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`xvi. Typing Is Impractical .............................................................................................. 42
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`Petitioner’s Theory Regarding Utilizing Download Information Stored in Cache
`xvii.
`is Far Fetched .................................................................................................................... 43
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`xviii.
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`Purpose of Major’s Cache Does Not Match the ’526 Cache .............................. 45
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`xix. Ground 1 – Utilizing Download Information Stored in Cache: Claims 1-3, 5-11,
`and 13-20 Are Not Obvious in View of Prust (Ex 1006) and Major (Ex 1007) ............... 46
`
`b.
`
`Claims 1 and 11: Prust and Major Do Not Disclose Predefined Capacity ................. 47
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`i. Predefined Capacity in the ’526 Patent ...................................................................... 47
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`ii.
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`iii.
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`iv.
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`v.
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`Prust’s RAID Does Not Disclose ’526 Predefined Capacity .................................. 50
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`Prust’s Billing Address Does Not Disclose ’526 Predefined Capacity .................. 56
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`Prust Does Not Disclose Capacity .......................................................................... 57
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`Prust Does Not Disclose Predefined Capacity ........................................................ 58
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`vi. Major Does Not Disclose Predefined Capacity ...................................................... 61
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`vii. The Combination of Prust and Major Does Not Disclose Predefined Capacity ..... 61
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`Ground 1 – Defined Capacity: Claims 1-3, 5-11, and 13-20 Are Not Obvious in
`viii.
`View of Prust (Ex 1006) and Major (Ex 1007)................................................................. 61
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`c. Claims 1 and 11: Prust’s Email Does Not Disclose Coupling ....................................... 62
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`d.
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`Claims 1 and 11: Prust’s Email Does Not Disclose Retrieving ................................. 64
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`e. Claims 1 and 11: Prust’s Email Does Not Disclose Storing and Retrieving.................. 66
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`f. Dependent Claims 3 and 20 ........................................................................................... 67
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`g.
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`A POSITA Would Not Have Been Motivated to Combine Prust with Major ........... 70
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`i. No Reason to Add Major’s Cache to Prust................................................................. 72
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`ii. Major’s Teachings Discourage Wireless Device Access to External Storage ........ 72
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`iii. Major Stores Data Objects in Cache, Negating the Need for External Storage ..... 75
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`iv.
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`v.
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`Prust Discourages Using Only One Mode to Access Remote Storage ................... 75
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`Prust Does Not Disclose Out-Of-Band Download through Browser ..................... 76
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`C. Ground 2: Claims 1-20 Are Not Obvious in View of Chaganti (Ex-1008) and Major
`(Ex-1007) .................................................................................................................................. 77
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`a. Claims 1 and 11: Chaganti’s Drag-and-Drop (or Copy-and-Paste) with Major’s Web
`Browser Cache Does Not Disclose Utilizing Download Information Stored in Cache ....... 77
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`i. Chaganti’s User Does Not Send a Hyperlink to the Server ........................................ 77
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`ii.
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`Chaganti’s Digital Item Is Not a Hyperlink (Download Information) ................... 84
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`iii. Chaganti’s Dragging and Dropping Does Not Disclose Sending Hyperlinks ........ 85
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`iv. Chaganti’s Server Does Not Utilize Download Information .................................. 90
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`v.
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`Chaganti’s FIG. 6 Does Not Disclose Download Information ............................... 93
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`
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`ii
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`Petitioner’s Citations Do Not Show Sending a Hyperlink to the Server and Do Not
`vi.
`Show the Server Utilizing a Hyperlink ............................................................................. 97
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`vii. The Steps of Using Copy-and-Paste from Web Browser Cache in Wireless Device
`Are Not Conventional and Not Obvious ........................................................................... 98
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`viii.
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`The User (Not the Code) Performs the Drag-and-Drop (or Copy-and-Paste) .... 98
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`ix. URLs of Data Objects Are Not Displayed by the Browser and Cannot be Copied
`Directly Using Drag-and-Drop (or Copy-and-Paste) ........................................................ 99
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`x.
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`The Web Page Containing the URL Must Be Cacheable ....................................... 99
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`xi. Not All Web Pages Are Cacheable or Cached........................................................ 99
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`xii. A User Cannot Tell if a Web Page Displayed by the Web Browser Is from Cache
`or Stored in Cache ........................................................................................................... 100
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`Chaganti Does Not Teach Drag-and-Drop (or Copy-and Paste) for Out-of-Band
`xiii.
`Downloads ...................................................................................................................... 100
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`xiv. Chaganti Does Not Disclose Where the URL for the Purported Out-of-Band
`Download Is Obtained from............................................................................................ 104
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`xv. Chaganti Does Not Teach Cache for Out-of-Band Downloads ............................ 104
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`xvi. Ground 2 – Utilizing Download Information Stored in Cache: Claims 1-20 Are Not
`Obvious in View of Chaganti (Ex 1008) and Major (Ex 1007) ...................................... 106
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`Claims 1 and 11: Chaganti and Major Do Not Disclose Predefined Capacity by
`b.
`Server .................................................................................................................................. 106
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`i. Chaganti Does Not Disclose ’526 Predefined Capacity ........................................... 107
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`Ground 2: Defined Capacity: Claims 1-20 Are Not Obvious in View of Chaganti
`ii.
`(Ex 1008) and Major (Ex 1007) ...................................................................................... 113
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`c. Dependent Claims 3 and 20 ......................................................................................... 113
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`d.
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`Dependent Claims 4 and 12 ...................................................................................... 114
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`e. Dependent Claims 6, 7, 10, 13, 14, and 15 .................................................................. 115
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`f. A POSITA Would Not Have Been Motivated to Combine Chaganti with Major ....... 118
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`i. Major’s Teachings Discourage Wireless Device Access to External Storage ......... 121
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`ii.
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`Combining Two Different Cache Implementations Is Difficult ........................... 122
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`VI. CONCLUSION ................................................................................................123
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`iii
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`I, Zaydoon (“Jay”) Jawadi, declare as follows:
`
`I.
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`BACKGROUND AND QUALIFICATIONS
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`1. My name is Zaydoon (“Jay”) Jawadi.
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`2.
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`I am an independent expert and consultant. I have been retained as an
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`expert witness on behalf of SynKloud Technologies, LLC (“SynKloud”) for the
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`above-captioned Inter Partes Review (IPR) regarding U.S. Patent No. 9,098,526
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`(“’526 Patent”).
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`3.
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`As shown in my curriculum vitae (attached as Exhibit 2002), I have a
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`Bachelor of Science in Electrical Engineering from Mosul University, a Master of
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`Science in Computer Science from Columbia University with a Citation for
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`Outstanding Achievement – Dean’s Honor Student, and over 40 years of
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`experience in software and product design and development, engineering,
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`consulting, and management in the fields of data storage, Internet, software, data
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`networking, computing systems, and telecommunication.
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`4.
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`I have worked with and possess expertise in numerous technologies,
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`including data storage
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`technologies and
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`interfaces, Internet and website
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`technologies, databases, data networking
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`technologies and protocols, and
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`telephony.
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`5.
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`From 1978 to 1980, I worked as a telecommunication/electrical
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`engineer for Emirtel (formerly Cable and Wireless, now Etisalat). During my
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`1
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`employment at Emirtel, among other things, I worked on telephony and
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`telecommunication products and services, and I developed software in assembly
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`and high-level languages for archiving, storing, and retrieving data to and from
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`data storage devices, such as disk drives and tape drives.
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`6.
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`From 1981 to 1983, I worked as a software engineer for Amdahl
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`Corporation (now Fujitsu), a California-based major supplier of computers,
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`systems, and data storage subsystems.
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`7.
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`From 1984 to 1994, I worked as a software, data storage, and systems
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`consultant to various data storage and computer companies in California, the
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`United States, Asia, and Europe. I provided technical consulting services in data
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`storage, data storage systems, data storage devices, software design and
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`development, system software, device driver software, data storage device
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`firmware, data storage software, data storage chips, data storage tools, data storage
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`test systems and test software, data storage and I/O protocol development systems,
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`data storage and I/O protocol analyzers, data storage and I/O monitoring systems,
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`and data storage manufacturing systems and software.
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`8.
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`From 1992 to 1996, I was President and founder of Zadian
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`Technologies, Inc., a California-based leading supplier of networked data storage
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`test systems, with over 50,000 units installed worldwide in mission-critical
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`customer operations with premier high-technology customers, such as Conner
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`2
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`Peripherals (now Seagate), DEC (now HP), EMC (now Dell EMC), Exabyte,
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`Fujitsu, HP, IBM, Intel, Iomega, Quantum (now Seagate), Seagate, Sony,
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`StorageTek, Tandberg, Tandem (now HP), Toshiba, Unisys, and WD. The
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`company’s products
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`included
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`test systems, manufacturing systems, and
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`development systems for data storage devices (disk drives, tape drives, removable
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`drives, flash drives, optical drives, CD-ROM drives, Jukeboxes, and RAID) and
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`data storage interfaces (SCSI, ATA / IDE / ATAPI, Fibre Channel, SSA, and
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`PCMCIA / PC Card).
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`9.
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`In 1996, Zadian Technologies was acquired by UK-based Xyratex
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`International LTD (NASDAQ: XRTX, which was later acquired by Seagate,
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`NASDAQ: STX, in 2014). Following Zadian’s acquisition by Xyratex, I became
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`an employee of Xyratex until 1998. At Xyratex, I was a general manager of a data
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`storage interface business unit and, subsequently, a general manager of a data
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`networking analysis tools business unit, which designed and built Gigabit Ethernet
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`network protocol analysis and monitoring products, which were sold, under OEM
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`agreement, by the largest supplier of network protocol analysis and monitoring
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`products.
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`10. From 1999 to 2001, I was CEO, Chairman, and cofounder of Can Do,
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`Inc., a California-based Internet eCommerce and community company. The
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`CanDo.com website offered over 10,000 products for sale as well as extensive
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`3
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`

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`consumer features, such as news, chat, messages, and product information for
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`people with disabilities. The company also provided technologies for display
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`magnification and sound/audio adaptation through the Internet to make websites
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`more accessible to persons with vision and hearing impairments. The company
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`was funded by leading venture capital firms.
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`11. From 2001 to 2007, I was President and cofounder of CoAssure, Inc.,
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`a California-based provider of Web-based technology services and solutions for
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`automated telephony speech recognition and touchtone applications, serving
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`multiple Fortune-500 companies.
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`12.
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`In 2009, I cofounded and have since been President of Rate Speeches,
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`Inc., a California-based Internet company providing online services, resources, and
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`technologies for creating, rating, evaluating, and enhancing public speaking,
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`presentation, and communication skills. Rate Speeches also operates the
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`ratespeeches.com website and the Speech Evaluator online software.
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`13. Since moving to Silicon Valley in Northern California in 1981, I have
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`worked on numerous technology products that have generated billions of dollars in
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`sales.
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`14.
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`I hold a California community college lifelong computer science
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`instructor credential. I have taught various data storage and computer technologies
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`
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`4
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`

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`to thousands of professional engineers and academic students in the United States,
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`Europe, and Asia.
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`15.
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`In my work as an expert and consultant, I have examined, analyzed,
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`and inspected numerous data storage systems, computer systems, software
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`products, cell phone applications, tens of millions of lines of source code, and the
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`frontend and backend software of more than 100 websites, including massive,
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`highly-trafficked consumer and business websites.
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`16. Through my education, industry and expert experience, and industry
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`and expert knowledge, I have gained a detailed understanding of the technologies
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`at issue in this case.
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`17. My additional industry experience is in my curriculum vitae.
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`18. My expert litigation support cases, including cases in which I have
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`testified during the last four years as an expert, can be found in my curriculum
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`vitae, which is Exhibit 2002.
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`19. As such, I am qualified to provide opinions regarding the state of the
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`art at the time the ’526 Patent was filed (which I understand to be no later than
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`December 4, 2003) and how a person of ordinary skill in the art (“POSITA”) at
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`that time would have interpreted and understood the ’526 Patent.
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`20.
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`I am being compensated for my work and any travel expenses in
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`connection with
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`this proceeding at my standard consulting rates.
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` My
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`5
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`compensation is in no way dependent on or contingent on the outcome of my
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`analysis or opinions rendered in this proceeding and is in no way dependent on or
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`contingent on the results of these or any other proceedings relating to the above-
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`captioned patent.
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`21. Although I am not rendering an opinion about the level of skill of a
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`POSITA proffered by Petitioner, based on my professional experience, I have an
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`understanding of the capabilities of a person of ordinary skill in the relevant field
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`(as such a POSITA is defined by Petitioner). Over the course of my career, I have
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`supervised and directed many such persons. Additionally, I myself, at the time the
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`’526 Patent was filed, qualified as at least a POSITA.
`
`A.
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`Supplement to First Declaration
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`22.
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`I previously submitted a declaration dated December 18, 2019
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`(Exhibit 2001) (“First Jawadi Declaration”) in support of the Patent Owner’s
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`Preliminary Response of this proceeding.
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`23.
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`In this declaration, I provide supplemental opinions and additional
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`supporting material. Any absence of supplemental opinions in this declaration
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`should not be construed as my conceding any previously explicitly or implicitly
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`expressed opinions.
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`6
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`

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`II. MATERIALS REVIEWED
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`24.
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`In preparing this declaration, I reviewed the ’526 Patent, including its
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`claims in view of its specification, the prosecution history of the ’526 Patent,
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`various prior art and technical references from the time of the invention, and, the
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`IPR2019-01655 Petition and its exhibits (1001-1021).
`
`25.
`
`I also reviewed the following references attached as exhibits:
`
`Exhibit
`Exhibit
`2003
`Exhibit
`2004
`Exhibit
`2005
`
`
`
`Description
`Microsoft Computer Dictionary, 5th Edition, Microsoft Press,
`2002
`Hypertext Transfer Protocol -- HTTP/1.1, rfc2616, June 1999
`
`Management Systems: analyses and applications, August W.
`Smith, Dryden Press, 1982
`
`A.
`
`Supplemental Materials Reviewed
`
`26.
`
`I also reviewed the following additional references attached as
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`exhibits:
`
`Exhibit
`Exhibit
`2008
`
`Exhibit
`2009
`Exhibit
`2010
`
`
`
`
`
`Description
`How two strangers set up Dropbox and made billions; Will
`Smale; BBC News; July 16, 2018; last viewed April 29, 2020;
`https://www.bbc.com/news/business-44766487
`Web Caching; Duane Wessels; O'Reilly Media; 2001
`
`Microsoft Computer Dictionary, 5th Edition, Microsoft Press,
`2002
`
`7
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`

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`III. LEGAL UNDERSTANDING
`
`27.
`
`I have worked with counsel in the preparation of this Declaration.
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`Nevertheless, the opinions, statements, and conclusions offered in this Declaration
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`are purely my own, and were neither suggested not indicated in any way by
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`counsel or anyone other than myself. I confirmed with counsel my understanding
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`that the term “obvious” as used in the Petition addressed herein, and as a general
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`matter under United States law, refers to subject matter that would have occurred
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`to a Person of Ordinary Skill in the Art (POSITA) to which the ’526 Patent is
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`directed without inventive or creative thought. That which is obvious, it is my
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`understanding, flows naturally from the art and the education one of skill
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`practicing in that art would have had in the relevant time frame, which for the ’526
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`Patent is 2003.
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`IV. CLAIM CONSTRUCTION
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`28.
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`I reviewed the comments in the Petition and Petitioner’s expert
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`Declaration, Ex-1004, pertaining to “construction of the claims” of the ’526 Patent.
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`My understanding is simply that, in the absence of a specific controversy, one
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`arrives at the appropriate “construction” or definition of what is embraced by the
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`claims of the ’526 Patent and what is excluded by those claims by a reading of the
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`’526 Patent and arriving at what, based on that reading, the inventor of the claimed
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`subject matter intended to protect as his invention.
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`
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`8
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`

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`V. OPINIONS
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`29. Petitioner presents two grounds under which claims of the ’526 Patent
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`are purportedly invalid. Petition, 1. In my opinion, as described below, Petitioner
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`has not established a reasonable basis to conclude that the ’526 Patent claims are
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`obvious.
`
`A.
`
`Institution Decision
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`30.
`
`I respectfully disagree with the PTAB’s institution decision. In my
`
`opinion, Petitioner has not demonstrated that the challenged claims of the ’526
`
`Patent are unpatentable.
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`B. Ground 1: Claims 1-3, 5-11, and 13-20 Are Not Obvious in View
`of Prust (Ex-1006) and Major (Ex-1007)
`
`31. Petitioner contends that Claims 1-3, 5-11, and 13-20 are obvious in
`
`view of Prust (Ex-1006) taken in view of Major (Ex-1007). Petition, 1. I disagree
`
`for the reasons outlined below.
`
`a. Claims 1 and 11: Copy-and-Paste (or Typing) with Web
`Browser Cache Does Not Disclose Utilizing Download
`Information Stored in Cache
`
`
`
`32. Petitioner (e.g., at pp. 10, 11, 35) argues that web browser cache along
`
`with ‘copy-and-paste’ may be used to implement “utilizing download information
`
`for the file stored in [the] cache” (’526, Claim 1, element [1d.1b]) (“utilizing
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`download information for the file stored in a cache storage of the wireless device”
`
`
`
`9
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`

`

`in ’526, Claim 1). I disagree with these contentions for the reasons outlined in the
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`following sections.
`
`33. For this declaration, I will assume Petitioner’s definition of the term
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`“out-of-band” (“out-band” in the ’526 specification) download. In summary, in
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`out-of-band download, a wireless device directs a storage server to download an
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`object (e.g., an image) to the storage server from a remote server that is separate
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`from the storage server and separate from the wireless device. To accomplish the
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`process, the wireless device sends the storage server a URL or address (termed
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`“download information” or “downloading information” in the ’526 Patent)
`
`pointing to the object, and the storage server uses that URL or address to download
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`the object from the remote server to the storage server out-of-band (i.e., using a
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`connection between the storage server and the remote server, bypassing the
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`wireless device).
`
`34.
`
`In describing out-of-band downloading, Petitioner states that “[t]he
`
`’526 Patent discloses an “additional” technique for downloading a data object into
`
`the storage space from a remote location “out-band.” Ex-1001 Fig. 3, 2:50–53,
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`5:1–10. A POSA would prefer the term-of-art “out-of-band,” signifying wireless
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`device 1 being outside the download path (i.e. path c). Ex-1004 ¶30.” Petition, p.
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`3. Petitioner then describes the steps involved in the out-of-band download: “In
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`step 1, using a web browser of wireless device 1, a user browses a page on web
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`
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`10
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`

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`server 15.” Petition, p. 4, emphasis in original. “In step 2, the wireless device
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`sends the download information to storage server 3 via path b.” Petition, p. 5,
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`emphasis in original. Path b is between the wireless device and the storage server.
`
`“Step 3 use URL to download file to storage server” Petition, p. 4, emphasis in
`
`original. “In step 4, the server uses the download information to download the
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`object via path c. ... In step 5, the storage server stores the object in the user’s
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`assigned storage space.” Petition, p. 5, emphasis in original. Path c is between the
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`storage server and the remote server.
`
`35. Claim 1 and Claim 11 of the ’526 Patent address “download
`
`information.”
`
` Petitioner defines download information as URL.
`
` “This
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`“information” would typically be a Uniform Resource Locator (“URL”) of a
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`hyperlink on the page. Ex-1004 ¶31; Ex-1020 461, 479; §V.B.1.” Petition, p. 4.
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`“The download information for the object is stored in “the cached web-pages on
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`the wireless device.” Ex-1001 5:13–17.” Petition, p. 4. For this declaration, I will
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`assume Petitioner’s definition of download information.
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`36. Claim 1 and Claim 11 of the ’526 Patent recite “cache storage.”
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`Petitioner defines cache storage as web browser cache. “For context, the ’526
`
`Patent refers to “cache” just once: “cached web-pages.” Ex-1001 5:15. A POSA
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`understood that to refer to the web-cache of a conventional web-browser. Ex-1004
`
`
`
`11
`
`

`

`¶79.” Petition, p. 20. For this declaration, I will assume Petitioner’s definition of
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`cache storage.
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`37. Also, in this Declaration, I will use the terms “download information”
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`and “downloading information” interchangeably, will use the terms “browser
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`cache” and “web browser cache” interchangeably, and will use the terms
`
`“browser” and “web browser” interchangeably.
`
`38. Petitioner assumes that element [1d.1] does not require that the
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`wireless device obtain the download information from cache storage as part of the
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`[1d.1] operation. My responses address both obtaining the download information
`
`from cache storage and not obtaining the download information from cache
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`storage.
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`39. Even though Major and Prust do not disclose copy-and-paste,
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`Petitioner relies on copy-and-paste, contending that web-caching and copy-and-
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`paste were conventional. For example, Petitioner contends that “Web-caching and
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`copy-and-paste were well-known, conventional functions of web browsers.”
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`Petition, p. 10. Petitioner also contends that “User operations, such as copy-and-
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`paste, were well-known for remote storage, including out-of-band downloads.”
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`Petition, p. 12. Petitioner also contends that “for [1d.1b], while Prust taught
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`“utilizing” the URL (i.e. download information) in response to the user email as
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`claimed, Prust did not expressly describe that the URL was “stored in said cache
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`storage.” Ex-1004 ¶110. Nor did Prust explain how or where the user learned of
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`the desired file or its URL. Ex-1004 ¶110. But a POSA would have understood that
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`finding URLs and storing them in web-cache was an obvious use case of Prust’s
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`system that would have occurred as part of conventional web browsing. Ex-1004
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`¶110.” Petition, p. 32. By element [1d.1b], Petitioner refers to “through utilizing
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`download information for the file stored in said cache storage” in ’526 Claim 1.
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`For the reasons outlined in the following sections, I disagree with these contentions
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`by Petitioner.
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`
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`i. Purpose of the ’526 Cache
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`40. The ’526 discloses cache storage in the wireless device and uses that
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`cache for only one purpose: storing the download information. Below are all
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`recitations of cache in the ’526 Patent, which show that cache is used only for the
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`purpose of storing the download information.
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`“utilizing download information for the file stored in said cache
`storage” ’526, Claim 1, emphasis added
`
`“transmitting the downloading information cached in the wireless
`device to the storage server” Id., Claim 4, emphasis added
`
`“utilizing download information for the file stored in a cache
`storage” Id., Claim 11, emphasis added
`
`“transmitting the downloading information cached in the wireless
`device” Id., Claim 12, emphasis added
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`
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`“obtain the downloading information for the data, which becomes
`available in the cached web-pages on the wireless device” Id., 5:14-
`16, emphasis added
`
`
`ii. No Reason to Add Cache to Prust
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`
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`41. Prust does not disclose cache; instead, Petitioner relies on Major for
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`the cache limitation. Pet. 33. However, a POSITA would need a reason or
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`motivation to add cache to Prust, whether from Major or otherwise. If there was a
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`reason or motivation in Prust to include cache, Prust’s inventor would have
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`included cache in Prust. However, Prust does not include or disclose any cache.
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`42. As I describe below, there is no reason or motivation to add cache
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`to Prust, whether from Major or otherwise. In fact, as I explain later, there is
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`reason and motivation to NOT add cache to Prust, whether from Major or
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`otherwise.
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`43. Prust mentions URL (universal resource locator) only once at 6:67-
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`7:4, which Petitioner cites.
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`“In an alternative embodiment, the user does not attach a data file but
`includes within the electronic mail message a universal resource
`locator (URL) that indicates where storage server 210 can retrieve the
`data file to be stored.” Prust (Ex-1006) at 6:67-7:4, emphasis added
`
`44. Prust does not disclose where the user obtains such URL, where the
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`URL is stored, or where the URL originated from. Petitioner does not offer any
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`evidentiary support from Prust to show where the user obtains such URL, where
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`the URL is stored, or where the URL originated from. Instead, Petitioner simply
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`assumes that the URL is in cache based on Petitioner’s expert opinions without any
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`evidentiary support from Prust or otherwise. Pet. 13.
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`45. Petitioner also relies on the theory of cutting-and-pasting of or typing
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`in the URL. Pet. 10, 11, 12, 29, 33-38. This Petitioner theory is based only on the
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`knowledge of the POSITA offered by Petitioner’s expert without any evidentiary
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`support from Prust. Indeed, Prust does not mention cutting-and-pasting or typing,
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`does not mention cutting-and-pasting or typing URLs, and does not mention
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`cutting-and-pasting or typing URLs from cached webpages.
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`46. Even assuming that the sequence required to cut-and-paste (or type)
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`from a cached webpage is within the knowledge of the POSITA at the time of ’526
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`invention, Prust (alone or in combination of Major) does not disclose, suggest, or
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`hint at any reason for Prust to include a cache, let alone cache for storing the URL
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`(download information). Petitioner provides no rationale for why a POSITA
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`would add cache, whether from Major or otherwise, to Prust. In my opinion, there
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`is no rationale for a POSITA to add cache (from Major or otherwise) to Prust. To
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`the contrary, there is a reason for a POSITA to NOT add cache, whether from
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`Major or otherwise, to Prust. I elaborate below.
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`47. Prust describes that the user sends an email to the server and that the
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`email contains a file to be stored at the server or contains a URL pointing to a
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`location of a file to be stored at the server. Prust further describes that, upon
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`receipt of the email from the user, the server stores the file that is received in the
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`email from the user or that is fetched by the server using the URL.
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`“More specifically, in order to store data files within the remote
`virtual storage area, the user sends an electronic mail message that
`includes the data file as well as user information and target data file
`information. The storage server parses the electronic mail message
`and stores the data file within the storage area according to the target
`data file information. In addition, the user can request one or more
`data files from the storage area and electronically mail the data files to
`the user. In this manner, authorized users can easily store date files
`to or retrieve data files from his or her remote storage area from
`anywhere in the world via a global computer network such as the
`Internet or a private wide-area network.” Prust (Ex-1006) at 1:37-49,
`emphasis ad