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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
`____________
`
`MICROSOFT CORPORATION and HP INC.,
`Petitioners,
`v.
`SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2020-00316
`U.S. Patent No. 9,098,526
`____________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. §42.107
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`TABLE OF CONTENTS
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`TABLE OF CONTENTS
`TABLE OF AUTHORITIES
`LIST OF EXHIBITS
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`I.
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`PETITIONERS HAVE NOT MET THEIR BURDEN
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`CLAIM CONSTRUCTION
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`II.
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`A. Cache
`B. Utilizing Download Information
`C. Predefined Capacity
`D. Folder Structure
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`III. THE CITED PRIOR ART DOES NOT DISCLOSE A CACHE
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`OF A WIRELESS DEVICE
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`ii
`iii
`vi
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`1
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`5
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`5
`6
`9
`10
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`11
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`11
`16
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`21
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`A. McCown Does Not Disclose a Cache for a Wireless Device
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`B. Dutta Does Not Disclose a Cache for a Wireless Device
`C. Those of Skill in the Art Would Not Combine McCown and Dutta
`and Their Own Knowledge to Provide a Cache for a Wireless Device 19
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`IV. THE CITED PRIOR ART DOES NOT DISCLOSE UTILIZING
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`DOWNLOAD INFORMATION FOR THE FILE STORED IN
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`THE CACHE
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`A. There is No Basis to Modify McCown to Utilize URLs
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`Stored in Cache
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`B. The McCown System Never Would Retrieve a URL
`C. The Download Information is Unlikely to be Storable in Cache
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`D. Dutta Does Not Cure McCowan’s Deficiencies
`E. Using Download Information from Cache in the System of
`McCown Would Not Provide Faster or More Facile Access to Files 29
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`22
`24
`26
`28
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`A STORAGE SPACE OF PREDEFINED CAPACITY IS NOT
`DISCLOSED
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`V.
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`VI. CLAIMS 3 AND 20 ARE INDEPENDENTLY UNOBVIOUS
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`33
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`38
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`ii
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`VII. CONCLUSION
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`VII. CONCLUSION
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`40
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`40
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`iii
`iii
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`TABLE OF AUTHORITES
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`PAGE NO.
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`CASES
`
`Arista Networks, Inc., v. Cisco Systems, Inc.,
`
`2016 WL 1083023 *5 (PTAB 2015)
`
`Bell Atlantic Network Services, Inc. v. Covad Communications Group, Inc.,
`
`262 F.3d 1258 (Fed. Cir. 2001)
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`CCS Fitness,
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`288 F.3d 1366, 62 USPQ2d at 1662
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`Cisco Systems, Inc. v. Constellation Technologies, LLC,
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`2015 WL 5565063 *5 (PTAB 2015)
`
`
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`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`809 F.3d 1375 (Fed. Cir. 2015)
`
`
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`Harmonic Inc. v. Avid Tech., Inc.,
`
`815 F.3d 1356 (Fed. Cir. 2016)
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`2,15,36
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`In re Magnum Oil Tools Int’l, Ltd.,
`
`829 F.3d 1364 (Fed. Cir. 2016)
`
`In re Ripper,
`
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`36 C.C.P.A. 743, 171 F.2d 297, 80 USPQ 96 (1948)
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`InfoBionic, Inc. v. Braemer Manufacturing, LLC,
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`2016 WL 8028933 *5 (PTAB 2016)
`
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`Kolbe & Kolbe Millwork Co., Inc. v. Sierra Pacific Industries,
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`2019 WL 5070454 *20 (PTAB 2019)
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`K/S Himpp v. Hear-Wear Techs., LLC,
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`751 F.3d 1362 (Fed. Cir. 2014)
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`15
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`34
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`33
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`9
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`18
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`39
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`3
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`34
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`38
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`13
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`12
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`iv
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`Liebel-Flarsheim Co. v. Medrad, Inc.,
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`358 F.3d 898 (Fed. Cir. 2004)
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`Microsoft Corp., v. Uniloc,
`2020 WL 1310578 *2 (PTAB 2020)
`
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`Mylan Pharmaceuticals Inc. v. Boehringer Ingelheim International GMBH,
`
`2017 WL 1052517*1 (PTAB 2017)
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`Nautilus Hyosung Inc. v. Diebold Nixdorf, Inc.,
`2017 WL 3447870 *8 (PTAB 2017)
`
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`Optical Disc Corp. v. Del Mar Avionics,
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`208 F.3d 1324, 54 USPQ2d 1289 (Fed. Cir. 2000)
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`Packers Plus Energy Services Inc. v. Baker Hughes Oilfield Operations LLC,
`800 F.3d 1375 (Fed. Cir. 2015)
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`Quantum Corp. v. Rodime, PLC,
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`65 F.3D 1577, 36 USPQ 2D 1162 (Fed. Cir. 1995)
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`30,31
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`Samsung Electronics Co., Ltd. v. Elm 3DS Innovations, LLC,
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`2017 WL 2713468 *4 (PTAB 2017)
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`SAS Institute v. Iancu,
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`138 S.Ct 1348 (2018)
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`Teleflex, Inc. v. Ficosa N Am. Corp.,
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`299 F.3d 1313, 63 USPQ2d 1374 (Fed. Cir. 2002)
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`Texas Digital Systems, Inc. v. Telegenix, Inc.,
`308 F.3d 1193 (Fed. Cir. 2002)
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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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`33
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`5
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`2,16
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`2
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`33
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`19
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`33
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`39
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`1
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`33
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`33
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`1
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`4
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`STATUTES
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`STATUTES
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`35 U.S.C. §312(a)(3)
`35 U.S.C. §312(a)(3)
`
`35 U.S.C. §314(a)
`35 U.S.C. §314(a)
`
`37 C.F.R. §42.107
`37 CPR. §42.107
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`37 C.F.R. §42.167(a)
`37 CPR. §42.167(a)
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`vi
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`LIST OF EXHIBITS
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`Exhibit Description
`Ex. 2001 Declaration of Zaydoon Jawadi
`Ex. 2002 Curriculum Vitae of Zaydoon Jaawadi
`Ex. 2003 Microsoft Computer Dictionary, 5th Edition, Microsoft Press, 2002
`Ex. 2004
`Information about Internet Explorer versions, Microsoft, Last updated
`November 15, 2019, last viewed January 23, 2020,
`https://support.microsoft.com/en-us/help/969393/information-about-
`internet-explorer-versions
`Ex. 2005 Netscape Communicator, Netscape, Internet Archive, captured July 8,
`1997, last viewed January 23, 2020,
`https://web.archive.org/web/19970708054721/http://www36.netscape.c
`om/flash1/comprod/products/communicator/index.html
`Ex. 2006 Software Download, Netscape, Internet Archive, captured July 8, 1997,
`last viewed January 23, 2020,
`https://web.archive.org/web/19970708045909/http://www36.netscape.c
`om/download/index.html
`Ex. 2007 Web Caching, Duane Wessels, O'Reilly Media, Inc., 2001
`Ex. 2008 Hypertext Transfer Protocol -- HTTP/1.1, rfc2616, June 1999
`Ex. 2009 Webvertising: The Ultimate Internet Advertising Guide, Springer
`Science & Business Media, Jun 28, 2000
`Ex. 2010 Content Delivery Networks: An Introduction, HCL Technologies Ltd.,
`May 2002,
`https://userpages.umbc.edu/~dgorin1/451/caching/contentdel.pdf
`Ex. 2011 Merriam-Webster Dictionary, Merriam-Webster, 2020,
`https://www.merriam-webster.com/dictionary/predefined, last viewed
`January 24, 2020
`Ex. 2012 Concise Oxford English Dictionary: Luxury Edition, Angus Stevenson,
`Maurice Waite, OUP Oxford, August 18, 2011
`Ex. 2013 Cambridge Dictionary, Cambridge University Press 2020,
`https://dictionary.cambridge.org/us/dictionary/english/predefined, last
`viewed January 24, 2020
`
`
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`
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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 Microsoft Corporation and HP Inc.,
`
`(hereinafter “Petitioners”) seeking Inter Partes Review (hereinafter “IPR”) of U.S.
`
`Patent No. 9,098,526 (hereinafter “the ‘526 Patent”) be denied because Petitioners
`
`have failed to show that there is a reasonable likelihood that the Petitioners would
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`prevail with respect to at least one of the claims. Specifically, as discussed below,
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`at least three separate limitations recited in each hand every claim of the ‘526
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`Patent are not disclosed or suggested to one of skill in the art given the publications
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`relied upon in the Petition.
`
`I. PETITIONER HAS NOT MET ITS BURDEN
`
`It is Petitioner’s burden to demonstrate, based on the parties' papers, “that
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`there is a reasonable likelihood that the petitioner would prevail with respect to at
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`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). In
`
`a contest to invalidate a patent based on obviousness over prior art, the burden is
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`that of Petitioner to point to the passages in each reference relied upon to show all
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`limitations recited in the claims, or, in the alternative, demonstrate conclusively
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`1
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`that each of those limitations would be understood by the skilled artisan to be a
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`natural supplement to the express teaching of the references. See, Mylan
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`Pharmaceuticals Inc. v. Boehringer Ingelheim International GMBH, 2017 WL
`
`1052517*1 (PTAB 2017):
`
`
`
`It is Petitioner's burden to set forth the basis for its challenge in the
`Petition. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363
`(Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3), requiring inter
`partes review petitions to identify “with particularity ... the evidence
`that supports the grounds for the challenge to each claim.”).
`In Harmonic, the Federal Circuit held that “it was
`Harmonic's burden to explain to the Board how Haskell combined
`with Rossmere rendered the challenged claims unpatentable.
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`While references relied upon are understood in light of the level of skill in
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`
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`the art, if that level of skill in the art is relied upon to show the presence of precise
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`limitations recited in the challenged claims, specific explanation and evidence must
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`be provided to support that contention – mere conclusory statements will not
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`suffice to meet Petitioner’s burden. Importantly, where the Petitioner seeks to rely
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`on the knowledge of skill in the art, how and why one of skill in the art would
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`modify the references relied upon to demonstrate obviousness must be set forth
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`with specificity. Nautilus Hyosung Inc. v. Diebold Nixdorf, Inc., , 2017 WL
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`3447870 *8 (PTAB 2017):
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`In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363
`(Fed. Cir. 2016)….
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`2
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`Furthermore, Petitioner cannot satisfy its burden of proving
`obviousness by employing “mere conclusory statements.” In re
`Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir.
`2016)…Petitioner cannot satisfy its burden of proving obviousness by
`employing “mere conclusory statements.” Id.
`
`PO respectfully submits that Petitioners’ argument, and the principal
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`
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`evidence relied upon, Ex. 1005 and Ex. 1006, together with the Declaration
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`of Hugh, Ex. 1003, relies wholesale on the asserted “knowledge of those of
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`skill in the art” addressed by the ‘526 Patent for central limitations in the
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`challenged claims. As those limitations are not supplied by the references
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`relied on, and would not have been known to those of skill in the art, much
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`less obvious to employ, Petitioner’s arguments cannot succeed. As
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`discussed below, central limitations, including both “cache” or “cache
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`storage” of a “wireless device,” as well as “utilizing download information”
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`as recited in the challenged claims is nowhere set forth in any of the
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`references relied upon by Petitioners, McCown, Ex. 1005 or Dutta, Ex.
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`1006. To the same effect, Petitioners’ argument that another central
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`limitation shared by all the claims of the ‘526 Patent is shown in art relied
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`upon, McCown, Dutta and Coates– “a storage space of predefined capacity”
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`fails – this limitation is nowhere set forth in the references relied upon.
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`Additionally, Claims 3 and 20 recite specific limitations nowhere suggested
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`by the prior art cited.
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`3
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`Thus, the Petition addressed herein relies on references which are simply
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`silent as to central features of the claims, each of which is discussed below. For
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`each of these “missing elements” Petitioners rely on the knowledge of those of
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`skill in the art as related in the Declaration of Hugh, Ex. 1003. Yet, that
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`
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`Declaration relies on “background information” that not only did not exist in 2003,
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`the filing date of the ‘526 Patent – it does not exist today. PO relies herein on the
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`Declaration of Zaydoon Jawadi, Ex. 2001 hereto, and the references discussed
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`therein.
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`By regulation, PO’s showing is confined herein to a demonstration of the
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`fashion in which Petitioners have failed to meet the burden imposed. 37 C.F.R.
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`§42.167 (a). Thus, PO does not advance evidence demonstrating the patentability
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`of the claims of the ‘526 Patent – this Preliminary Response is confined simply to a
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`review of the reasons why there is no reasonable likelihood of Petitioners
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`prevailing on the charges of obviousness they have brought.
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`4
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`II. CLAIM CONSTRUCTION
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`In the absence of a specific disclaimer or a clear definition in the intrinsic
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`evidence associated with a United States Patent, terms of a challenged patent in an
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`IPR are construed so as to provide their “ordinary and customary meaning.”
`
`Microsoft Corp., v. Uniloc, 2020 WL 1310578 *2 (PTAB 2020):
`
`construing the [claims] in accordance with the ordinary and
`customary meaning of such claims as understood by one of ordinary
`skill in the art and the prosecution history pertaining to the patent.
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`Petitioners construe three (3) terms – (1) cache or cache storage, (2) utilizing
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`download information and (3) folder structure. Pet. pp. 13–15. With respect,
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`Petitioners do not go far enough with respect to two of these terms, deliberately
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`generalizing them in order to accommodate the teachings of McCown and Dutta
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`within the claims, when properly understood, features of the claims challenged are
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`nowhere taught.
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`A. Cache for a Wireless Device
`
`With respect to cache, or cache storage, PO respectfully submits that the
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`operative term is, as recited in the ‘526 Patent claims, “a wireless device
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`comprising at least one cache storage.” Importantly, a cache (the term cache as
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`5
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`used herein is intended to refer to both cache and cache storage unless specifically
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`indicated to the contrary) for a wireless device can be completely different, and
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`require and provide different effect, from a cache designed for a computer or other
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`wired device. The central importance to the characterization of the features recited
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`in a wireless device, as opposed to a distinct embodiment in a wired computer, was
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`emphasized in the prosecution of the application issuing the ‘526 Patent – U.S.
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`Patent Application Serial No. 14/150,106. See Ex. 1002, p. 120:
`
`The technology for system and method for wireless device access to
`external storage space disclosed in the instant application represents
`an technology improvement, if not only solving lack of storage space
`of a wireless device but also enhances and enriches the operation and
`usage of the wireless device. (Emphasis supplied).
`
`As discussed below, neither McCown nor Dutta describes or enables the use
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`of cache or cache storage in a wireless device. Petitioner, relying not on discrete
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`prior art, but rather the generalized knowledge of those of skill in the art, relies on
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`software that was available, in 2003, for computers and similar wired devices.
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`There was, however, no cache for a wireless device disclosed or provided for in the
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`disclosure of McCown or Dutta, or their combination as understood by those of
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`skill in the art..
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`B. Utilizing Download Information
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`Petitioners argue that the plain and ordinary meaning of the term “utilizing
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`download information” is ambiguous, then supply a construction that does not
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`6
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`remove that ambiguity. What information, Petitioners question, is stored in the
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`cache of the wireless device? Pet., p. 14. Respectfully, Petitioners’ construction
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`does not resolve the ambiguity it created, concluding that whatever information it
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`is, it is “information stored in the cache storage of the wireless device” that can be
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`utilized to download a file from a remote server. Id.
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`With respect, this does not resolve the ambiguity Petitioners suggest exists –
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`the construction offered still does not resolve the ambiguity, we still do not know
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`what information it is that is to be utilized. However, Petitioners’ Expert, Hugh,
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`and the Petition itself, make it clear that the information in question is a Universal
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`Record Locator, or URL. This information identifies a given web page, video or
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`audio file that is of interest. See the Declaration of Hugh, Ex. 1003, ¶200:
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`McCown then discloses that a client may select files for download
`from among the listed URLs. Id., 11:4-11. That selection causes the
`user site 130 to generate a data request by using the URLs. Id., 11:20-
`21 (“The user site software application 152 uses the URL's to
`generate a data request, as shown in block 305.”) (Emphasis
`added.); see also id., 3:28-4:4, Fig. 3. As demonstrated below, the
`selected files are thereafter downloaded to the client’s assigned
`storage space on the storage site 140. McCown therefore discloses
`downloading files from a remote site into assigned storage space
`“through utilizing download information for the file.”
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`Indeed, the only sort of information to be ‘utilized’ as download information
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`identified throughout the Hugh Declaration, Ex. 1003, is a URL.
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`
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`The Petition reaffirms this understanding. Thus, once Petitioners
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`actually present an argument with respect to the elements of the challenged
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`7
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`
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`claims, they confine their arguments to treating “download information as a
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`URL. Petition, p. 50:
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`
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`The URLs are “download information” because they indicate what
`files are available for download and also because they are a
`mechanism (e.g., an address) used to locate and download those files.
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`Clearly, neither Petitioners nor their expert identify any other kind of information
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`as “download information”.
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`The entire point of a claim construction exercise is to bring clarity to the
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`meaning to be assigned to terms in contested claims – this is as true for contests as
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`to validity as it is to arguments over infringement. Accordingly, PO will adopt, for
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`the purposes of the Preliminary Response, the meaning and definition advanced by
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`Petitioners - adopting their characterization of “download information” as a
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`Universal Record Locator or URL which points to a web page of specific interest.
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`PO’s expert Declaration has also adopted this posture without binding PO. See Ex.
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`2001, ¶59.
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` Thus, the phrase “utilizing download information for the file” as contested
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`in this proceeding should mean precisely that which Petitioners urge it should be
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`understood to mean. “Utilizing download information for the file” should be
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`understood to mean “utilizing a URL which points to the file.”
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`8
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`C. Predefined Capacity
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`Each of the challenged claims recite a “storage space of predefined
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`capacity.” The storage space recited is not indicated or required to be partitioned or
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`not partitioned. Yet, without reliance on a particular reference, Petitioners assert
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`the term refers to partitioned space, relying on the Declaration of Hugh. Ex. 1003,
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`¶¶ 50–53. In general, inserting extraneous limitations from the specification’s
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`enabling disclosure into the claims is contrary to principles of claim construction –
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`absent reliance on that term in prosecution. Cisco Systems, Inc. v. Constellation
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`Technologies, LLC, 2015 WL 5565063 *5 (PTAB 2015). PO respectfully submits
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`such reliance to limit the claims here is improper.
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`While the storage space of the ‘526 Patent may be partitioned, it need not be.
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`See, Ex. 2001, ¶¶ 140–142. Accordingly, PO respectfully submits the extraneous
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`characterization of “partitioned” should not be imported into the claims or their
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`construction. Rather, PO submits that a “predefined capacity assigned exclusively
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`to a user of the wireless device by a storage server” means that the storage server’s
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`storage capacity to be provided is set in advance by the server for users before
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`allocating storage to the users. Ex. 2001, ¶142.
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`9
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`D. Folder Structure
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`PO does not disagree with Petitioner’s construction of the term “folder
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`structure.”
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`10
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`III. THE CITED PRIOR ART DOES NOT DISCLOSE A CACHE OF A
`WIRELESS DEVICE
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`Both challenged independent Claims 1 and 11 recite, as a central feature, the
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`presence or use of “cache storage of a wireless device” to achieve the specific
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`improvement recited in the ‘526 Patent to “effectively solve the problem” of “lack
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`of storage capacity” of wireless devices, ‘526 Patent, Ex. 1001, 2:29–32. As noted
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`above, it is critical to understand that the claims require, and address, not cache
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`storage in general, which was well established for computers by 2003, but for
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`wireless devices. As discussed in detail below, and in Ex. 2001, ¶¶28 – 45, this
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`feature is not shown in the prior art.
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`Indeed, use of cache as known in the prior art was to provide fast access to
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`certain information for applications running on the local (wired) devices. The
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`claimed patent utilizes information in the cache to download content from a remote
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`server. None of the prior art references disclose such a use of cache. Combining
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`prior art disclosing cache with prior art disclosing server/client applications falls
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`short and does not disclose the claimed inventions.
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`A. McCown Does not Disclose a Cache for a Wireless Device
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`While Petitioners assert that their principal reference, Ex. 1005, McCown,
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`discloses the use of ‘a cache for a wireless device,’ the very first time argument
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`Petitioners advance recognizes that there is no clear or discrete statement or
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`11
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`description of a cache or cache storage in a wireless device in McCown. Petitioner
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`rely, instead, on generalized allegations that one of skill in the art would recognize
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`that McCown provides for a cache for a wireless device. Petition, p. 28:
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`While the 526 Patent mentions a “cache” only once, its claims have
`several limitations directed to “cache storage.” While a Skilled
`Artisan would understand McCown’s Internet-based system to
`employ a cache storage, to remove any doubt and to simplify the
`issues before the Board, this petition is based on the obvious
`combination of McCown and Dutta, a prior art published patent
`application directed to the capture and subsequent remote storage of
`web content using a web cache.
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`In point of fact, McCown nowhere describes, discloses or refers to a cache for a
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`wireless device. The text and content of McCown simply does not refer to such
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`storage for a wireless device, nor does it need to – operation of the system of
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`McCown does not contemplate use of a cache in a wireless device. Ex. 2001, ¶29.
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`As noted at the outset, where the Petitioners elect to rely, not on the discrete
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`disclosure of a prior art reference, but rather on the nebulous knowledge of “those
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`of skill in the art” the Petitioners must demonstrate the basis and adequacy of that
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`knowledge with specificity – a conclusory statement or generalization will not be
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`sufficient to meet the burden imposed. Kolbe & Kolbe Millwork Co., Inc. v. Sierra
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`Pacific Industries, 2019 WL 5070454 *20 (PTAB 2019):
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`In an obviousness analysis, the Board can properly “decline[ ] to
`accept a conclusory assertion from a third party about general
`knowledge in the art without evidence on the record, particularly
`where it is an important structural limitation that is not evidently and
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`12
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`indisputably within the common knowledge of those skilled in the
`art.” K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365
`(Fed. Cir. 2014).
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`PO respectfully submits that in this case, this Board should reject Petitioner’s
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`assertion that those of skill in the art would have known to modify McCown to
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`include a cache for a wireless device.
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`Petitioners rely on the Declaration of Hugh, Ex. 1003 ¶121 for the
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`proposition that notwithstanding the silence of McCown on the provision of a
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`cache for a wireless device, those of skill in the art would have found it obvious to
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`provide one. Hugh in turn relies on software identified at Ex. 1005, 8:5–8 of
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`McCown as demonstrating the knowledge of those of skill in the art would lead
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`them to provide a cache for a wireless device for the system of McCown.
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`Specifically, Hugh cites to the discussion of browsers from Internet Explorer from
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`Microsoft and Netscape Communicator from Netscape Communications
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`Corporation. Neither Internet Explorer from Microsoft nor Netscape
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`Communicator from Netscape Communications had provision for a cache for
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`wireless devices as of 2003. Ex. 2001, ¶¶ 31 – 34.
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`Jawadi explores the software package for Internet Explorer available as of
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`2003 at Ex. 2001 ¶¶ 31 – 32. He demonstrates with particularity that while Internet
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`Explorer was available for computers running windows, Macintosh and Unix
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`operating systems by 2003, Internet Explorer was not available for wireless
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`13
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`devices by that time. Ex. 2001, ¶31. Indeed, from its original release to the present,
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`Internet Explorer has never offered a version for wireless devices. Ex. 2001, ¶33.
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`The irony of a Petition by Microsoft Corporation that relies on a Microsoft
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`software package that did not exist for wireless devices in 2003 (or today for that
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`matter) is not lost on PO. Where a Petitioner relies on its own alleged prior art to
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`establish that it would be “obvious” to modify the teaching of a reference, where
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`that prior art teaching simply did not exist as of the filing date of the challenged
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`patent – the burden imposed on that Petitioner has not been met. The Petition
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`should be denied.
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`Like Internet Explorer, Netscape Communicator, also relied upon by
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`Petitioner to show that it would be obvious to modify McCown to include a cache
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`in a wireless device was a package of software components that, before 2003, (and
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`up to today) simply was not available for wireless devices. Ex. 2001, ¶33.
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`Specifically, by 2003 “Netscape Communicator” (including the Netscape
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`Navigator browser) was only available for computers running Windows,
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`Macintosh and UNIX operating systems, but Netscape Communicator (including
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`the Netscape Navigator browser) was not available for wireless devices. Ex. 2001,
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`¶34.
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`Respectfully, Petitioners have wholly failed to demonstrate, with specificity,
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`that one of skill in the art, based on McCown’s disclosure, would consider it
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`14
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`obvious to modify McCown to include provisions for a cache for a wireless device.
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`Petitioner’s reliance on computer-based systems like Netscape
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`Navigator/Communicator and Microsoft’s Internet Explorer that simply did not
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`(and do not now) provide for a cache for wireless devices is simply inadequate. By
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`the same token, Petitioners’ generic argument at page 29 of the Petition that “to the
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`extent one might argue that McCown does not sufficiently disclose “at least one
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`cache storage,” it would have been obvious to modify McCown to include one,”
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`citing Ex. 1003, ¶122, must fail. It is precisely this type of conclusory assertion,
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`without evidence, that has been held to be inadequate to support a Petition for IPR.
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`Arista Networks, Inc. v. Cisco Systems, Inc., 2016 WL 1083023*5 (PTAB 2015).
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`Respectfully, PO submits it must fail here as well.
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`Moreover, McCown offers no basis or indication of the value of provision of
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`a cache for a wireless device. “McCown does not disclose, mention or imply a
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`cache (or cache storage) in a wireless device or otherwise.” Ex. 2001, ¶37. The
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`principal reference relied upon by Petitioner, McCown, Ex. 1005, fails to disclose
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`the very first element of the very first challenged claim – a wireless device with a
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`cache. While, as discussed below, one of skill in the art in 2003 would have
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`recognized there was no motivation or need to modify McCown to include a cache
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`for a wireless device, the failure of Petitioners to meet the burden imposed as to a
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`15
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`central element of the only two independent claims challenged is sufficient to
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`warrant a determination that the requested review should be denied.
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`B. Dutta Does Not Disclose a Cache for a Wireless Device
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`Petitioners rely on Ex. 1006, Dutta to modify the understanding one of skill
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`in the art would bring to a reading of McCown and include a cache for a wireless
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`device. Respectfully, as was the case with McCown, the reference in Dutta to a
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`cache or similar is a reference limited to wired computers, not wireless devices. As
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`a consequence, Petitioners’ assertion at 33:
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`For example, a Skilled Artisan would understand that the browser
`cache in Dutta is particularly adept at holding data that is needed for
`quick access. See Ex. 1010, ¶¶[0002]-[0003]; Ex. 1006,¶[0029]
`is wide of the mark. Nowhere does Dutta refer to a cache for a wireless
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`device. While Dutta mentions PDAs, and mentions cache or cache storage,
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`Dutta never mentions cache or cache storage in the context of a PDA or
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`wireless device. Ex. 2001, ¶40.
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`Dutta mentions browser cache in the context of Figures 2 and 3. At [0028]-
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`[0029], Dutta expressly refers to a browser running on a client machine – that is, a
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`computer, not a wireless device. Ex. 2001, ¶41. At that mention, there is no
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`purpose, function or utility recited for the browser cache. Again, where a Petition
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`relies on a secondary reference to provide explicit disclosure missing from a
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`primary reference, the portion of the secondary reference teaching must be pointed
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`to with particularity. Mylan Pharmaceuticals Inc. v. Boehringer Ingelheim
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`16
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`International GMBH, 2017 WL 1052517 *1 (PTAB 2017) citing to Harmonic Inc.
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`v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016):
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`In Harmonic, the Federal Circuit held that “it was
`Harmonic's burden to explain to the Board how Haskell combined
`with Rossmere rendered the challenged claims unpatentable. With
`respect to claim 11 of the '291 patent, Harmonic did not do so.”
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`Here, while Petitioners cite generally to Dutta as providing the necessary
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`disclosure to provide one of skill in the art with the understanding and motivation
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`to modify the principal reference, McCown, to feature a cache for a wireless
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`device, no explanation of precisely how one of skill in the art would read Dutta so
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`as to modify McCown in that fashion is provided.
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`Dutta also refers to browser cache at [0036] which refers to Fig. 3 of the
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`secondary reference, which shows that the “client” and “local storage” are the
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`same as the reference at [0029] – that is, cache for a wired computer, and not a
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`wireless device. As with the previous discussion of Fig. 2, this portion of Dutta
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`provides no purpose, function or utility for the browser cache, making it unclear
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`why anyone of skill in the art would desire to adapt the browser cache of Dutta
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`disclosed for a wired device into a cache for a wireless device. This fundamental
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`recitation is required by all the claims of the ‘526 Patent, which all depend from
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`Claim 1 or Claim 11, both of which specifically recites a cache for a wireless
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`device. Ex. 2001, ¶42.
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`17
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`Thus, reliance on Dutta to somehow lead one of skill in the art to modify
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`McCown to provide for a cache in a wireless device is fruitless. The two
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`references, taken together, may not somehow provide teaching for an element
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`which neither one features, when considered separately. Where the art relied upon
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`for a specific claim limitation fails, separately and taken together, to disclose a key
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`feature expressly recited in the claims, the Petition for review has failed to meet the
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`burden imposed. Packers Plus Energy Services Inc. v. Baker Hughes Oilfield
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`Operations, LLC 2017 WL 5158733 *5 (PTAB 2017):
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`Petitioner bears the burden of proving unpatentability of the
`challenged claims, and the burden of persuasion never shifts to Patent
`Owner. Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d
`1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must establish the
`facts supporting its challenge by a preponderance of the evidence.
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`
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`The claims are clear – nowhere does the Petition argue to the contrary. Each
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`and every claim calls for the provision of a wireless device with a cache. While
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`those of skill in the art were aware of various browsers provided with a cache, the
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`only cache identified in McCown, Dutta, and their combination is confined
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`expressly to computers – that is – “devices connected to a system directly through
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`bus or a few inches of cable.” ‘526 Patent, Ex. 1001, Col. 1, ll. 31–33.
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`18
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`C. Those of Skill in the Art Would Not Combine McCown and Dutta
`and Their Own
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