IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`UNIFIED PATENTS INC.
`Petitioner,
`
`v.
`
`SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`U.S. Patent No. 9,098,526
`Issue Date: AUGUST 4, 2015
`Title: SYSTEM AND METHOD FOR WIRELESS DEVICE ACCESS TO
`EXTERNAL STORAGE
`
`_____________________
`
`Inter Partes Review No.: IPR2019-01655
`_____________________
`
`DECLARATION OF DARRELL LONG, Ph.D.
` IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 9,098,526
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Exhibit 1004
`Unified Patents Inc. v. Synkloud Technologies, LLC
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`Introduction ................................................................................................. 1
`
`List of Documents I Considered in Forming My Opinions ........................... 3
`
`III. My Background and Qualifications .............................................................. 5
`
`IV. Relevant Legal Standards ............................................................................. 7
`
`V.
`
`Overview of the ‘526 Patent .......................................................................11
`
`A.
`
`B.
`
`C.
`
`Claimed Priority................................................................................11
`
`Disclosure .........................................................................................11
`
`Prosecution History...........................................................................16
`
`VI. Claim Construction .....................................................................................17
`
`A.
`
`B.
`
`Plain and ordinary meaning ..............................................................17
`
`“comprises storing a data object therein or retrieving a data
`object therefrom” (Claims 1, 11) .......................................................18
`
`VII. State of the Art ............................................................................................19
`
`A.
`
`B.
`
`Level of Ordinary Skill in the Art .....................................................19
`
`General Knowledge of a POSA.........................................................20
`
`1. Web browsing, browsers, protocols and URL addressing
`was well known, including for PDAs ......................................20
`
`2. Web-caching and copy-and-paste were well-known,
`conventional functions of web browsers. ................................25
`
`3.
`
`Remote storage solutions for computing devices,
`including out-of-band downloads, were well-known ...............28
`
`VIII. GROUND 1: CLAIMS 1–3, 5–11, 13–20 ARE OBVIOUS OVER
`PRUST AND MAJOR .................................................................................30
`
`i
`
`

`

`A.
`
`B.
`
`C.
`
`D.
`
`Summary ..........................................................................................30
`
`Prior Art Status .................................................................................31
`
`Overview of Prust .............................................................................31
`
`Overview of Major ...........................................................................33
`
`E. Motivation to Combine the Teachings of Prust with Major ..............34
`
`F.
`
`Detailed Claim Mapping ...................................................................37
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`Claims 1 and 11 ......................................................................37
`
`Claims 2 and 16 ......................................................................58
`
`Claims 3 and 20 ......................................................................58
`
`Claims 5 and 19 ......................................................................59
`
`Claims 6, 10, 14, and 15..........................................................59
`
`Claims 7, 8, 13 and 17 ............................................................61
`
`Claims 9 and 18 ......................................................................63
`
`IX. GROUND 2: CLAIMS 1–20 ARE OBVIOUS OVER CHAGANTI IN
`VIEW OF MAJOR ......................................................................................63
`
`A.
`
`B.
`
`C.
`
`Summary ..........................................................................................63
`
`Prior Art Status of Chaganti .............................................................64
`
`Overview of Chaganti.......................................................................72
`
`D. Motivation to Combine the Teachings of Chaganti with Major ........75
`
`E.
`
`Detailed Claim Mapping ...................................................................78
`
`1.
`
`2.
`
`3.
`
`Claims 1 and 11 ......................................................................78
`
`Claims 2 and 16 ......................................................................94
`
`Claims 3 and 20 ......................................................................94
`
`ii
`
`

`

`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`Claims 4 and 12 ......................................................................95
`
`Claims 5 and 19 ......................................................................96
`
`Claims 6, 10, 14 and 15 ..........................................................96
`
`Claims 7, 8, 13 and 17 ............................................................97
`
`Claims 9 and 18 ......................................................................98
`
`iii
`
`

`

`
`
`I.
`
`Introduction
`
`1.
`
`I am over the age of eighteen (18) and otherwise competent to make
`
`this declaration.
`
`2.
`
`I have been retained by Unified Patents Inc. (Petitioner) as an
`
`independent expert consultant in this proceeding before the United States Patent
`
`and Trademark Office. I am being compensated at my rate of $500 per hour, with
`
`reimbursement for actual expenses. My compensation is not contingent upon the
`
`outcome of this inter partes review. I have no other interest in this proceeding. To
`
`the best of my knowledge, I have no financial interest in Unified Patents Inc.
`
`3.
`
`This declaration is in support of the petition for inter partes review
`
`involving U.S. Patent No. 9,098,526 (“the ’526 Patent”) (Ex-1001), (“the
`
`Petition”). The ’526 Patent is entitled “System and Method for Wireless Device
`
`Access to External Storage” and lists Sheng Tai Tsao, as the inventor.
`
`4.
`
`For the purposes of this inter partes review as I discuss later, I have
`
`been instructed to assume that the effective filing date of the Claims of the ’526
`
`Patent challenged by the Petitioner in this inter partes review is no earlier than
`
`December 4, 2003.
`
`5.
`
`I understand that according to USPTO records, the ’526 Patent is
`
`currently assigned to SynKloud Technologies, LLC. (“SynKloud Technologies
`
`LLC” or “Patent Owner”).
`
`
`
`

`

`
`
`6.
`
`The ’526 Patent is directed to remote storage for wireless device
`
`users. I am familiar with the technology described in the ’526 Patent as of the
`
`earliest possible priority date of December 4, 2003.
`
`7.
`
`In preparing this Declaration, I have reviewed the ’526 Patent (Ex-
`
`1001), the file history of the ’526 Patent (Ex-1002), and each of the documents
`
`cited herein, and I have considered these documents in light of the general
`
`knowledge in the art as of December 4, 2003. In formulating my opinions, I have
`
`relied upon my experience in the relevant art. I have also considered the viewpoint
`
`of a person of ordinary skill in the art (“POSA”) in the field, as of December 4,
`
`2003, who I describe below (§ VII.A).
`
`8.
`
`I have been asked to provide my technical expertise, analysis, insights
`
`and opinions regarding the ’526 Patent and relevant references that form the basis
`
`of the grounds of rejection set forth in the accompanying Petition for inter partes
`
`review of the ’526 Patent. As described in detail below, I offer the following
`
`opinions in this Declaration:
`
`•
`
`A POSA would have found Claims 1–3, 5–11, 13–20 of the ’526
`
`Patent to be obvious over Prust in view of Major. Prust in view of
`
`Major teaches each element of these claims to a POSA and a POSA
`
`would have been motivated to combine the teachings of these
`
`references;
`
`2
`
`

`

`
`
`
`
`•
`
`A POSA would have found Claims 1–20 of the ’526 Patent to be
`
`obvious over Chaganti in view of Major. Chaganti and Major teach
`
`each element of Claims 1–20 to a POSA and a POSA would have
`
`been motivated to combine the teachings of these references.
`
`
`
`II. List of Documents I Considered in Forming My Opinions
`
`9.
`
`In formulating my opinions, I have considered and relied on
`
`statements in the documents identified below. These documents include patents,
`
`patent Applications, learned treatises, periodicals, pamphlets and other
`
`publications. I consider each of the references below as a reliable authority for the
`
`statements on which I rely.
`
`Exhibit # Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`“The ’526 Patent” or “Challenged Patent”: U.S. Patent 9,098,526 to
`Tsao, titled “System and Method for Wireless Device Access to
`External Storage,” and filed Jan. 8, 2014, priority claimed to
`December 4, 2003.
`“The ’526 File History”: Prosecution history of the ’526 Patent
`“The ’690 File History”: Prosecution history of US 8,868,690 (parent
`to the ’526 Patent)
`Intentionally left blank
`“The ’880 File History”: Prosecution history of US 8,606,880
`(grandparent to the ’526 Patent)
`“Prust”: U.S. Patent 6,735,623 to Prust, titled “Method and System
`for Accessing a Remote Storage Area,” filed Feb. 9, 2000, issued May
`11, 2004
`
`3
`
`

`

`Exhibit # Description
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`“Major”: PCT Publication WO 02/052785, PCT/CA01/01857, to
`Major et al., titled “Information Browser System And Method For A
`Wireless Communication Device,” filed Dec. 21, 2001, published July
`4, 2002
`“Chaganti”: US 8,117,644 to Chaganti et al., titled “Method and
`System for Online Document Collaboration,” filed May 5, 2010, as
`continuation of application 09/634,725 filed August 5, 2000, issued
`February 14, 2012
`Intentionally left blank
`“The ’725 Application”: U.S. patent application 09/634,725 to
`Chaganti et al., filed August 5, 2000
`“Chaganti File History”: Prosecution history of US 8,117,644
`(Chaganti)
`“Palm Web Browser Handbook”: PalmTM Web Browser Pro
`Handbook, 2000, Palm, Inc., together with authenticating declaration
`from the Internet Archive
`“BlackBerry 6710 User Guide”: BlackBerry Wireless Handheld,
`900/1900 MHz GSM/GPRS Networks, 900/1800 MHz GSM/GPRS
`Networks, Handheld User Guide (Blackberry 6710, 6720) (July 4
`2002)
`“BlackBerry 6510 User Guide”; BlackBerry 6510 from Nextel®,
`Handheld User Guide, (27 May 2003)
`“BlackBerry 6750 User Guide”: BlackBerry Wireless Handheld,
`800/1900 MHz CDMA Network, Handheld User Guide (Blackberry
`6750) (May 13, 2003)
`U.S. 6,985,927 to XDrive, LLC “Shared Internet Storage Resource,
`User Interface System, and Method, ” filed February 11, 2002, and
`issued January 10, 2006
`U.S. 7,107,045 to Sprint Spectrum L.P., “Method and System for
`Distribution of Media,” field Dec. 3, 2002 and Issued Sep. 12, 2006
`“Whitehead”: E. J. Whitehead, et al., WebDAV A network protocol for
`remote collaborative authoring on the Web, in Proceedings of the
`Sixth European Conference on Computer Supported Cooperative
`Work, (1999), at 291–310
`“WebDAV IETF RFC2518”: IETF RFC2518 HTTP Extensions for
`Distributed Authoring – WEBDAV (Feb. 1999)
`
`4
`
`

`

`Exhibit # Description
`
`1020
`
`1021
`
`“Microsoft Dictionary”: Excerpts of Microsoft Computer Dictionary,
`(4th ed., 1999)
`“Newton’s”: Excerpts of Newton’s Telecom Dictionary, (15th ed.,
`1999)
`
`III. My Background and Qualifications
`
`10.
`
`I have over 35 years of experience in the field of Computer Science
`
`and Engineering. As detailed below, I have worked on many projects and
`
`technologies highly relevant to the subject matter of the ’526 Patent.
`
`11. My academic background provides a technical foundation for my
`
`work in computer systems, as well as my work in computer networks, distributed
`
`systems, data storage, wireless computing devices and computer security.
`
`12.
`
`In 2001, I founded the Storage Systems Research Center at the
`
`University of California at Santa Cruz. I have served as the Director of the Center
`
`since that time. I am also the Kumar Malavalli Endowed Chair Professor in
`
`Storage Systems Research for the University. I have been a Professor of Computer
`
`Science at the University since 1988. In addition, I have been Professeur Invité at
`
`the Conservatoire National des Arts et Métiers, the Université Paris–Dauphine and
`
`Université Paris–Descartes and Sorbonne Université in Paris, France, as well as a
`
`visiting professor at the University of Technology, Sydney, Australia and the
`
`United States Naval Post Graduate School. I am an Associate Member of the
`
`5
`
`

`

`European Organization for Nuclear Research (CERN). Over the course of my
`
`career, I have also had experience with mobile computing environments, including
`
`web-enabled wireless devices. For example, in 1994, I founded the first IEEE
`
`Workshop on Mobile Computing which is now called HotMobile. Since that time
`
`I have continued research in computer systems, including mobile computing,
`
`networking and data storage.
`
`13.
`
`In addition to my academic positions, I have served on several special
`
`and standing committees of the National Research Council and on the Science &
`
`Technology committee for the Livermore and Los Alamos National Laboratories
`
`for more than a decade. I am on the advisory board in Computer and Information
`
`Sciences for Sandia National Laboratory and the Global Security advisory board
`
`for Pacific Northwest National Laboratory. I also am currently the Editor-in-Chief
`
`of the journal ACM Transactions on Storage, a Fellow of the Institute of Electrical
`
`and Electronics Engineers (“IEEE”), and a Fellow of the American Association for
`
`the Advancement of Science (“AAAS”). I was a Visiting Scientist at IBM
`
`Research from 1995 until 2011, and I am a listed inventor on eleven patents.
`
`14.
`
`I hold Ph.D. (1988) and M.S. (1986) degrees in Computer Science
`
`from the University of California at San Diego, and a B.S. degree (1984) in
`
`Computer Science from San Diego State University. I have more than three
`
`6
`
`

`

`decades of experience in the fields of networking, client-server systems, and data
`
`storage and retrieval.
`
`15. My Curriculum Vitae is attached as Appendix A, which contains
`
`further details on my education, experience, publications, and other qualifications
`
`to render an expert option.
`
`IV. Relevant Legal Standards
`
`16.
`
`I am not a lawyer and will not provide any legal opinions. Although I
`
`am not a lawyer, I have been informed and understand that certain legal standards
`
`are to be applied by technical experts in forming opinions regarding the meaning
`
`and validity of patent claims. I have been asked to provide my opinions regarding
`
`whether the claims of the ’526 Patent are anticipated or would have been obvious
`
`to a person having ordinary skill in the art at the time of the alleged invention, in
`
`light of the prior art.
`
`17.
`
`I have been informed and understand that, to anticipate a claim (a
`
`requirement I understand to be governed by a statute, 35 U.S.C. § 102), a reference
`
`must teach every element of the claim either expressly or inherently to a person
`
`having ordinary skill in the relevant art.
`
`18.
`
`Further, I have been informed and understand that a patent claim is
`
`not patentable as obvious (a requirement I understand to be governed by a statute,
`
`7
`
`

`

`35 U.S.C. § 103) if the differences between the patent claim and the prior art are
`
`such that the claimed subject matter as a whole would have been obvious at the
`
`time the claimed invention was made to a person having ordinary skill in the
`
`relevant art. Obviousness, as I have been informed and understand, is based on the
`
`scope and content of the prior art, the differences between the prior art and the
`
`claim, the level of ordinary skill in the art, and, to the extent that they exist, certain
`
`objective indicia of non-obviousness.
`
`19.
`
`I understand that objective indicia can be important evidence
`
`regarding whether a patent is obvious or nonobvious, if it has an appropriate nexus
`
`to the claimed invention, i.e., is a result of the merits of a claimed invention (rather
`
`than the result of design needs or market-pressure advertising or similar activities).
`
`Such indicia include: commercial success of products covered by the patent
`
`claims; a long-felt need for the invention; failed attempts by others to make the
`
`invention; copying of the invention by others in the field; unexpected results
`
`achieved by the invention as compared to the closest prior art; praise of the
`
`invention by the infringer or others in the field; the taking of licenses under the
`
`patent by others; expressions of surprise by experts and those skilled in the art at
`
`the making of the invention; and the patentee proceeded contrary to the accepted
`
`wisdom of the prior art.
`
`8
`
`

`

`
`
`20.
`
`I have been informed that whether there are any relevant differences
`
`between the prior art and the claimed invention is to be analyzed from the view of
`
`a person of ordinary skill in the relevant art at the time of the invention. As such,
`
`my opinions below as to a person of ordinary skill in the art are as of the time of
`
`the invention, even if not expressly stated as such; for example, even if stated in
`
`the present tense.
`
`21.
`
`In analyzing the relevance of the differences between the claimed
`
`invention and the prior art, I have been informed that I must consider the impact, if
`
`any, of such differences on the obviousness or non-obviousness of the invention as
`
`a whole, not merely some portion of it. The person of ordinary skill faced with a
`
`problem is able to apply his or her experience and ability to solve the problem and
`
`also look to any available prior art to help solve the problem.
`
`22.
`
`I have been informed that a precise teaching in the prior art directed to
`
`the subject matter of the claimed invention is not needed. I have been informed
`
`that one may take into account the inferences and creative steps that a person of
`
`ordinary skill in the art would have employed in reviewing the prior art at the time
`
`of the invention. For example, if the claimed invention combined elements known
`
`in the prior art and the combination yielded results that were predictable to a
`
`person of ordinary skill in the art at the time of the invention, then this evidence
`
`would make it more likely that the claim was obvious. On the other hand, if the
`
`9
`
`

`

`
`
`combination of known elements yielded unexpected or unpredictable results, or if
`
`the prior art teaches away from combining the known elements, then this evidence
`
`would make it more likely that the claim that successfully combined those
`
`elements was not obvious.
`
`23.
`
`I have been informed and understand that there are recognized,
`
`exemplary, rationales for combining or modifying references to show obviousness
`
`of claimed subject matter. Some of the rationales include the following:
`
`combining prior art elements according to known methods to yield predictable
`
`results; simple substitution of one known element for another to yield predictable
`
`results; use of a known technique to improve a similar device (method or product)
`
`in the same way; applying a known technique to a known device (method or
`
`product) ready for improvement to yield predictable results; choosing from a finite
`
`number of identified, predictable solutions, with a reasonable expectation of
`
`success; known work in one field of endeavor may prompt variations of it for use
`
`in either the same field or a different one based on design incentives or other
`
`market forces if the variations are predictable to one of ordinary skill in the art; and
`
`some teaching, suggestion, or motivation in the prior art that would have led one of
`
`ordinary skill to modify the prior art reference or to combine prior art teachings to
`
`arrive at the claimed invention.
`
`10
`
`

`

`
`
`V. Overview of the ‘526 Patent
`
`A. Claimed Priority
`
`24. The ’526 Patent claims priority through a series of continuations to
`
`the filing of a grandparent on December 4, 2003. ’526 Patent (Ex-1001) 1:4–18,
`
`(22), (63); ’880 File History (Ex-1005) 190–91. More specifically, the ’526 Patent
`
`was filed on January 14, 2014, as a continuation of U.S. Application 14/079,831,
`
`filed on November 14, 2013, now U.S. Patent 8,868,690 which is a continuation of
`
`U.S. Application No. 10/726,897, filed on December 4, 2003, now U.S. Patent No.
`
`8,606,880. Because all of the prior art cited in the Grounds predate the claim of
`
`priority, for purposes of this analysis, I do not challenge the claim of priority of the
`
`Challenged Claims.
`
`B. Disclosure
`
`25. According to the ’526 Patent, users faced “a problem of lack of
`
`storage capacity configured on their wireless devices such as cell phone or PDA.”
`
`’526 Patent (Ex-1001) 2:29–32. The patent described: “To effectively solve this
`
`problem...the storage of a server can be used as the external storage for the wireless
`
`devices.” Id. at 2:32–37.
`
`26. The specification is short, generally functional, and relies heavily on
`
`conventional knowledge and technology.
`
`27. With reference to Figure 1 (annotated below), a “wireless device 1”
`
`(red) communicates with “server 3” (blue) over “net 2” (orange):
`
`11
`
`

`

`
`
`
`
`’526 Patent (Ex-1001) 2:64–3:6, Fig. 1 (annotated).
`
`28. The user is assigned a “storage volume” “configured in the server 3.”
`
`Id. at 3:14–15. The storage volume “could be in any form such as RAID, which
`
`usually consists of a group of hard disk drives.” Id. at 1:41–44. The amount of
`
`storage was allocated among users. Id. at 2:43–47, 3:31–36, 4:26–31, Fig. 3
`
`(annotated in green below).
`
`29. The wireless device and storage server could exchange data objects
`
`such as a “digital photo picture, a message etc.” Id. at 1:16–21, 5:31–41, 4:56–67.
`
`The user could manage the files and folder structure on the storage volume using
`
`normal data management operations “such as delete, copy, move, rename” etc.
`
`locally from the wireless device. Id. at 4:32–55, 3:9–15.
`
`12
`
`

`

`
`
`30. The ’526 Patent discloses an “additional” technique for downloading
`
`a data object into the storage space from a remote location “out-band,” i.e., the
`
`object does not come from the wireless device. Id. at Fig. 3, 2:50–53, 5:1–10. A
`
`POSA would not recognize the term “out-band,” but would understand the term of
`
`art “out-of-band” to apply to Figure 3 in that the wireless device is not in the band
`
`used for the file transfer, i.e., wireless device 1 is not in path (c). As such, I use the
`
`“out-of-band” term of art for my analysis here to describe file transfers like those
`
`depicted in Figure 3 of the ’526 Patent.
`
`13
`
`

`

`
`
`Step 3
`use URL to download file to
`storage server
`
`Step 4
`store file in user’s
`storage space
`
`Step 1
`browse a page with URL
`for a file, whereby URL
`gets stored in cache of
`wireless device
`
`Step 2
`send URL to
`storage server
`
`
`
`’526 Patent (Ex-1001) Fig. 3 (annotated).
`
`31.
`
` In step 1, using the web browser 8 of wireless device 1, a user
`
`browses a page on web server 15, for example, a server hosted by an Internet
`
`service provider (ISP), via path a. Id. at 1:60–62, 5:8–12, Fig. 3. The web page
`
`includes information useable to download a data object pointed to by the page. Id.
`
`at 5:9–12. The ’526 Patent describes that the download information for the object
`
`is stored in “the cached web-pages on the wireless device.” ’526 Patent (Ex-1001)
`
`14
`
`

`

`
`
`5:13–17. A POSA would have understood the ’526 Patent to be describing
`
`“download information” that would typically be a Uniform Resource Locator
`
`(“URL”) of a hyperlink on the page. For example, the Microsoft Dictionary from
`
`2000 defines the term “URL” and “web page” as:
`
`URL . . . n. Acronym for Uniform Resource Locator. An address for
`a resource on the Internet. URLs are used by Web browsers to locate
`Internet resources. A URL specifies the protocol to be used in
`accessing the resource (such as http: for a World Wide Web page or ftp:
`for an FTP site), the name of the server on which the resource resides
`(such as //www.whitehouse.gov), and, optionally, the path to a
`resource (such as an HTML document or a file on that server)
`
`Microsoft Dictionary (Ex-1020) 461.
`
`Web page n. A document on the World Wide Web. A Web page
`consists of an HTML file, with associated files for graphics and scripts,
`in a particular directory on a particular machine (and thus identifiable
`by a URL). Usually a Web page contains links to other Web pages.
`See also URL.
`
`Microsoft Dictionary (Ex-1020) 479; § VII.B.1.
`
`32.
`
` In step 2, the wireless device sends the download information to
`
`storage server 3 via path b. Id. at 5:18–20. In step 4, the server uses the
`
`“downloading information” to download the object via path c. Id. at 5:21–26. In
`
`step 5, the storage server stored the object in the user’s file system in the user’s
`
`assigned storage volume 11. Id. at 5:27–30, 5:3–6.
`
`33. These steps, however, were known. See, e.g., § IX.C (Chaganti, Fig.
`
`6).
`
`15
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`C.
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`Prosecution History
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`34. The ’526 Patent issued without a substantive rejection. See ‘526 File
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`History (Ex-1002) 155–160, 161–164. On March 3, 2015, the applicant
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`voluntarily amended the pending claims and argued for patentability over art cited
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`in the parent applications. Id. at 115–26. The amendments added, among other
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`things, “cache storage” and “utilizing download information for the file stored in
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`said cache storage.” Id. at 118, 120, 122–23.
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`35. The pro se applicant argued that the claims were patentable over prior
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`art cited during prosecution of the parent applications:
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`During examining parent applications of 10/726,897 and 14/079,831,
`many prior arts have been referenced.... However, all of referenced arts
`have been overcome because all of referenced arts have failed to
`implicitly or explicitly disclose or suggest a limitation of “download a
`file from a remote server on a network into the assigned storage space
`through utilizing download information for the file stored in said cache
`storage.”
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`Id. at 126.
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`36. An interview and several more amendments led to allowance. Id. at
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`100–05 (supplemental amendment), 84–90 (examiner interview and notice of
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`allowance), 76–81 (post-allowance amendment), 60–65 (post-allowance
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`amendment), 48–49 (corrected notice of allowability).
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`37. The record does not reveal the substance of the interview or indicate
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`the allowable features of the claims. Id. at 48–49, 84–90. Nonetheless, in my
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`opinion, the examiner would not have allowed the application if the prior art in
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`Grounds 1 and 2 below had been considered during prosecution.
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`38. Having reviewed the specification and its file history, and having
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`considered the state of the art at the time of the purported invention, in my opinion,
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`nothing in the specification or claims of the ’526 Patent would have been viewed
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`by a POSA as newly identifying or solving any technological problem, presenting
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`any unknown, unexpected or counterintuitive combination, teaching or concept. In
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`contrast, the subject matter of the ’526 Patent was considered conventional and
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`easy by the priority date of the ’526 Patent in 2003.
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`VI. Claim Construction
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`A.
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`39.
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`Plain and ordinary meaning
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`I have been informed and understand that in order to properly evaluate
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`the ’526 Patent, the terms of the claims must first be interpreted. I am informed
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`and understand that the terms in the ’526 Patent should have their plain and
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`ordinary meaning read in view of the specification and prosecution history, as
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`would have been understood by a person of ordinary skill in the art (“POSA,”
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`defined below in § VII.A). That is the meaning I have applied for my analysis. I
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`have been informed by counsel that no court or administrative board has construed
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`any of the claims of the ’526 Patent. If a board or court construes any term of the
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`’526 Patent, I reserve the right to supplement my opinions in view of such
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`construction.
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`B.
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`“comprises storing a data object therein or retrieving a data
`object therefrom” (Claims 1, 11)
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`40. This term appears in the following claim element:
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`[1.d] wherein the operation for the remote access to the assigned storage
`space comprises [1d.1] storing a data object therein or [1d.2]
`retrieving a data object therefrom, [1d.1a] the storing of a data object
`including to download a file from a remote server across a network into
`the assigned storage space [1d.1b] through utilizing download
`information for the file stored in said cache storage [1d.1c] in response
`to the user from the wireless device performing the operation for
`downloading the file from the remote server into the assigned storage
`space.
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`’526 Patent (Ex-1001) claim 1 (reference numbers added)1, claim 11 (substantively
`identical).
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`41. According to the plain language of the term “or” as would be
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`understood by a POSA, in my opinion the term should be construed to mean the
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`operation includes at least one of (i) storing a data object therein or (ii) retrieving a
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`data object therefrom. Because limitations [1d.1a–c] are directed to the storing
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`operation (“the storing of a data object including...”), in my opinion a POSA
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`reading the claim would understand that element [1d] is satisfied by art that meets
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`1 For brevity and consistent with the convention used in the Petition, unless stated
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`otherwise, I have added italics to emphasize certain text in quotations without
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`identifying “emphasis added.”
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`at least one of storing of [1d.1] (including [1d.1a–c]), or the retrieving of [1d.2].
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`The same should apply for claim 11.
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`42.
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`I have been instructed by counsel to assume that the plain and
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`ordinary meaning of the claim will govern and thus that element [1d] will be
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`satisfied if either [1d.1] (including [1d.1a–c]), or [1d.2] is satisfied, but to also
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`analyze all of these claim limitations to provide my opinions if the [1d.1] and
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`[1d.2] limitations are both required. I am informed and understand that Petitioner
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`is requesting construction as it may simplify the number of issues in dispute if
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`Patent Owner argues patentability based on an issue pertinent to only one of the
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`alternative claim limitations. But even if the Board were to disagree with this
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`construction, as set forth below, it is my opinion that all Challenged Claims are
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`unpatentable as obvious, because each Ground below satisfies both alternatives.
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`
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`VII. State of the Art
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`A. Level of Ordinary Skill in the Art
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`43.
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`I am familiar with the knowledge and capabilities of one of ordinary
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`skill in the art. Unless otherwise stated, my testimony below refers to the
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`knowledge of one of ordinary skill in the art as of December 4, 2003 the claimed
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`priority date of the ’526 Patent.
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`44.
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`I have been informed and understand that a Person of Ordinary Skill
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`in the Art (“POSA”) is a hypothetical person who is presumed to be aware of all
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`pertinent prior art, thinks along conventional wisdom in the art, and is a person of
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`ordinary creativity.
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`45.
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`In my opinion, a POSA for the ’526 Patent in the timeframe of its
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`priority date would have a bachelor’s degree in computer science, electrical
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`engineering, or related discipline and two years of experience in the relevant
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`technical field—remote storage solutions for computing devices, with related
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`experience in web-enabled wireless devices, such as portable digital assistants
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`(PDAs)—or the equivalent. Higher levels of education may substitute for less
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`experience, and more experience may substitute for the specific level of education.
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`46.
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`In the 2003 timeframe, I was a person with at least this level of skill.
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`B. General Knowledge of a POSA
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`47. This section informs the level of skill, general knowledge, common
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`sense and creativity possessed by a POSA as of the December 2003 priority claim,
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`and the predictable nature of the combinations in the Grounds below.
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`1. Web browsing, browsers, protocols and URL addressing
`was well known