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
`
`____________
`
`
`
`SECOND DECLARATION OF ZAYDOON (“JAY”) JAWADI
`IN SUPPORT OF PATENT OWNER’S RESPONSE
`
`
`
`
`IPR2020-00316
`Exhibit 2014
`Microsoft Corporation and HP Inc. v. SynKloud Technologies, LLC
`
`
`
`

`

`TABLE OF CONTENTS
`
`
`I. BACKGROUND AND QUALIFICATIONS ..................................................... 1
`
`A. Supplement to First Declaration ......................................................................................... 6
`
`II. MATERIALS REVIEWED ................................................................................ 7
`
`III. LEGAL UNDERSTANDING ............................................................................. 9
`
`IV. CLAIM CONSTRUCTION ..............................................................................10
`
`V. OPINIONS .........................................................................................................10
`
`A.
`
`Institution Decision ........................................................................................................... 11
`
`B.
`
`Independent Claims 1 and 11 Are Not Obvious in View of McCown and Dutta ............ 11
`
`a. Claims 1 and 11: Utilizing Download Information for the File Stored in Cache Storage
`of the Wireless Device .......................................................................................................... 11
`
`i. Purpose of the ’526 Cache .......................................................................................... 12
`
`ii. McCown Does Not Disclose, Suggest, or Imply Storing Download Information in
`Cache Storage ................................................................................................................... 13
`
`iii. Dutta Does Not Disclose a Purpose for Cache ....................................................... 14
`
`iv. Dutta Does Not Disclose, Suggest, or Imply Utilizing Stored Download
`Information in Cache Storage ........................................................................................... 16
`
`The Combination of McCown and Dutta Does Not Disclose, Suggest, or Imply
`v.
`Storing Download Information in Cache Storage ............................................................. 16
`
`Petitioners Rely Solely on Expert’s Opinion That It Would Have Been Obvious to
`vi.
`Store the Download Information in Cache ....................................................................... 17
`
`vii. Petitioners’ Theory for the Motivation for Storing the Download Information in
`Cache17
`
`viii. McCown Contradicts Petitioners’ Theory for the Motivation for Storing the
`Download Information in Cache ....................................................................................... 19
`
`ix. McCown Stores the Files in the Storage Site, Further Negating the Need to Store
`the Download Information in Cache ................................................................................. 22
`
`x.
`
`xi.
`
`Dutta Does Not Disclose a Reason to Store Download Information in Cache ....... 24
`
`Petitioners’ Second Reason to Store Download Information in Cache .................. 24
`
`xii. A POSITA Would Not Be Motivated to Store Download Information in Cache in
`the Wireless Device .......................................................................................................... 26
`
`Utilizing Download Information Stored in Cache: Independent Claims 1 and 11
`xiii.
`Are Not Obvious in View of McCown and Dutta ............................................................ 29
`
`
`
`i
`
`

`

`Claims 1 and 11: Predefined Capacity Assigned Exclusively to a User of the Wireless
`b.
`Device by a Storage Server ................................................................................................... 30
`
`i. Predefined Capacity in the ’526 Patent ...................................................................... 30
`
`ii. McCown’s Provisioning and Authentication Do Not Disclose Predefined Capacity
`Assigned Exclusively to a User of the Wireless Device by a Storage Server .................. 30
`
`iii. McCown with Memory Partitioning Does Not Disclose Predefined Capacity
`Assigned Exclusively to a User of the Wireless Device by a Storage Server .................. 34
`
`iv. Dutta Does Not Disclose Predefined Capacity Assigned Exclusively to a User of
`the Wireless Device by a Storage Server .......................................................................... 39
`
`Predefined Capacity Assigned Exclusively to a User of the Wireless Device by a
`v.
`Storage Server: Independent Claims 1 and 11 Are Not Obvious in View of McCown and
`Dutta 41
`
`C. Dependent Claims 2-10 and 12-20 Are Not Obvious in View of McCown and Dutta and
`Are Not Obvious in View of McCown, Dutta, and Coates ...................................................... 42
`
`VI. CONCLUSION ..................................................................................................48
`
`
`
`
`
`ii
`
`

`

`I, Zaydoon (“Jay”) Jawadi, declare as follows:
`
`I.
`
`BACKGROUND AND QUALIFICATIONS
`
`1. My name is Zaydoon (“Jay”) Jawadi.
`
`2.
`
`I am an independent expert and consultant. I have been retained as an
`
`expert witness on behalf of SynKloud Technologies, LLC (“SynKloud”) for the
`
`above-captioned Inter Partes Review (IPR) regarding U.S. Patent No. 9,098,526
`
`(“’526 Patent”).
`
`3.
`
`As shown in my curriculum vitae (attached as Exhibit 2015), I have a
`
`Bachelor of Science in Electrical Engineering from Mosul University, a Master of
`
`Science in Computer Science from Columbia University with a Citation for
`
`Outstanding Achievement – Dean’s Honor Student, and over 40 years of
`
`experience in software and product design and development, engineering,
`
`consulting, and management in the fields of data storage, Internet, software, data
`
`networking, computing systems, and telecommunication.
`
`4.
`
`I have worked with and possess expertise in numerous technologies,
`
`including data storage
`
`technologies and
`
`interfaces, Internet and website
`
`technologies, databases, data networking
`
`technologies and protocols, and
`
`telephony.
`
`5.
`
`From 1978 to 1980, I worked as a telecommunication/electrical
`
`engineer for Emirtel (formerly Cable and Wireless, now Etisalat). During my
`
`
`
`1
`
`

`

`employment at Emirtel, among other things, I worked on telephony and
`
`telecommunication products and services, and I developed software in assembly
`
`and high-level languages for archiving, storing, and retrieving data to and from
`
`data storage devices, such as disk drives and tape drives.
`
`6.
`
`From 1981 to 1983, I worked as a software engineer for Amdahl
`
`Corporation (now Fujitsu), a California-based major supplier of computers,
`
`systems, and data storage subsystems.
`
`7.
`
`From 1984 to 1994, I worked as a software, data storage, and systems
`
`consultant to various data storage and computer companies in California, the
`
`United States, Asia, and Europe. I provided technical consulting services in data
`
`storage, data storage systems, data storage devices, software design and
`
`development, system software, device driver software, data storage device
`
`firmware, data storage software, data storage chips, data storage tools, data storage
`
`test systems and test software, data storage and I/O protocol development systems,
`
`data storage and I/O protocol analyzers, data storage and I/O monitoring systems,
`
`and data storage manufacturing systems and software.
`
`8.
`
`From 1992 to 1996, I was President and founder of Zadian
`
`Technologies, Inc., a California-based leading supplier of networked data storage
`
`test systems, with over 50,000 units installed worldwide in mission-critical
`
`customer operations with premier high-technology customers, such as Conner
`
`
`
`2
`
`

`

`Peripherals (now Seagate), DEC (now HP), EMC (now Dell EMC), Exabyte,
`
`Fujitsu, HP, IBM, Intel, Iomega, Quantum (now Seagate), Seagate, Sony,
`
`StorageTek, Tandberg, Tandem (now HP), Toshiba, Unisys, and WD. The
`
`company’s products
`
`included
`
`test systems, manufacturing systems, and
`
`development systems for data storage devices (disk drives, tape drives, removable
`
`drives, flash drives, optical drives, CD-ROM drives, Jukeboxes, and RAID) and
`
`data storage interfaces (SCSI, ATA / IDE / ATAPI, Fibre Channel, SSA, and
`
`PCMCIA / PC Card).
`
`9.
`
`In 1996, Zadian Technologies was acquired by UK-based Xyratex
`
`International LTD (NASDAQ: XRTX, which was later acquired by Seagate,
`
`NASDAQ: STX, in 2014). Following Zadian’s acquisition by Xyratex, I became
`
`an employee of Xyratex until 1998. At Xyratex, I was a general manager of a data
`
`storage interface business unit and, subsequently, a general manager of a data
`
`networking analysis tools business unit, which designed and built Gigabit Ethernet
`
`network protocol analysis and monitoring products, which were sold, under OEM
`
`agreement, by the largest supplier of network protocol analysis and monitoring
`
`products.
`
`10. From 1999 to 2001, I was CEO, Chairman, and cofounder of Can Do,
`
`Inc., a California-based Internet eCommerce and community company. The
`
`CanDo.com website offered over 10,000 products for sale as well as extensive
`
`
`
`3
`
`

`

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

`

`to thousands of professional engineers and academic students in the United States,
`
`Europe, and Asia.
`
`15.
`
`In my work as an expert and consultant, I have examined, analyzed,
`
`and inspected numerous data storage systems, computer systems, software
`
`products, cell phone applications, tens of millions of lines of source code, and the
`
`frontend and backend software of more than 100 websites, including massive,
`
`highly-trafficked consumer and business websites.
`
`16. Through my education, industry and expert experience, and industry
`
`and expert knowledge, I have gained a detailed understanding of the technologies
`
`at issue in this case.
`
`17. My additional industry experience is in my curriculum vitae.
`
`18. My expert litigation support cases, including cases in which I have
`
`testified during the last four years as an expert, can be found in my curriculum
`
`vitae, which is Exhibit 2015.
`
`19. As such, I am qualified to provide opinions regarding the state of the
`
`art at the time the ’526 Patent was filed (which I understand to be no later than
`
`December 4, 2003) and how a person of ordinary skill in the art (“POSITA”) at
`
`that time would have interpreted and understood the ’526 Patent.
`
`20.
`
`I am being compensated for my work and any travel expenses in
`
`connection with
`
`this proceeding at my standard consulting rates.
`
` My
`
`
`
`5
`
`

`

`compensation is in no way dependent on or contingent on the outcome of my
`
`analysis or opinions rendered in this proceeding and is in no way dependent on or
`
`contingent on the results of these or any other proceedings relating to the above-
`
`captioned patent.
`
`21. Although I am not rendering an opinion about the level of skill of a
`
`POSITA proffered by Petitioners, based on my professional experience, I have an
`
`understanding of the capabilities of a POSITA (as such a POSITA is defined by
`
`Petitioners). Over the course of my career, I have supervised and directed many
`
`such persons. Additionally, I myself, at the time the ’526 Patent was filed,
`
`qualified as at least a POSITA.
`
`A.
`
`Supplement to First Declaration
`
`22.
`
`I previously submitted a declaration dated April 9, 2020 (“First
`
`Jawadi Declaration”) in support of the Patent Owner’s Preliminary Response of
`
`this proceeding. I incorporate First Jawadi Declaration herein by reference.
`
`23.
`
`In this declaration, I provide supplemental opinions and additional
`
`supporting material. Any absence of supplemental opinions in this declaration
`
`should not be construed as my conceding any previously explicitly or implicitly
`
`expressed opinions.
`
`
`
`6
`
`

`

`II. MATERIALS REVIEWED
`
`24.
`
`In preparing this declaration, I reviewed the ’526 Patent, including its
`
`claims in view of its specification, the prosecution history of the ’526 Patent,
`
`various prior art and technical references from the time of the invention, and the
`
`IPR2020-00316 Petition and its exhibits (1001-1032).
`
`25.
`
`I also reviewed the following references attached as exhibits:
`
`Exhibit Description
`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
`
`
`
`7
`
`

`

`Exhibit Description
`Ex. 2013 Cambridge Dictionary, Cambridge University Press 2020,
`https://dictionary.cambridge.org/us/dictionary/english/predefined, last
`viewed January 24, 2020
`
`
`Ex. 2015 Claim Chart of the HP Laptop computers with Microsoft OneDrive for
`the ’526 Patent
`Ex. 2016 Claim Chart of wireless devices with Microsoft OneDrive for the ’526
`Patent
`Ex. 2017 Microsoft Securities and Exchange Commission Form 10K filing for
`the fiscal year ending June 30, 2019
`Ex. 2018 https://blog.goptg.com/microsoft-office-365-statistics, last viewed
`September 15, 2020
`Ex. 2019 https://www.microsoft.com/en-us/microsoft-365/onedrive/compare-
`onedrive-plans?activetab=tab:primaryr2, last viewed September 15,
`2020
`Ex. 2020 https://techcommunity.microsoft.com/t5/microsoft-onedrive-blog/top-
`4-tips-to-protect-your-remote-workforce-with-data-compliance/ba-
`p/1452108?WT.mc_id=eml_CXM_EN-
`US_Comm_M365_Engagement_NewsletterEdition02_Email_01_V01_
`622_FY21Aug_ENUS, last viewed September 15, 2020
`Ex. 2021 Claim Chart of wireless devices with Google Drive for the ’526 Patent
`Ex. 2022 “The Verizon Plan FAQs,” Verizon website
`(https://www.verizonwireless.com/support/the-verizon-plan-faqs/), last
`viewed September 15, 2020
`Ex. 2023 “Report: State of the Web,” HTTP Archive website
`(https://httparchive.org/reports/state-of-the-web), last viewed
`September 15, 2020
`Ex. 2024 Microsoft OneDrive Pricing (https://products.office.com/en-
`US/onedrive-for-business/compare-onedrive-for-business-plans), last
`viewed September 15, 2020
`Ex. 2025 “Cloud Data Storage Service Use Among Consumers in the United
`States, as of 2017,” Statista
`(https://www.statista.com/statistics/714140/us-usage-cloud-storage-
`services/), last viewed September 15, 2020
`Ex. 2026 “Annual Estimates of the Resident Population: April 1, 2010 to July 1,
`2018,” U.S. Census Bureau, American Fact Finder.
`
`
`
`8
`
`

`

`Exhibit Description
`Ex. 2027 “United States Population,” Worldometer website
`(https://www.worldometers.info/world-population/us-population/), last
`viewed September 15, 2020
`Ex. 2028 Ballard, John, “What is Dropbox’s Competitive Advantage?” The
`Motley Fool, August 21, 2018
`https://www.fool.com/investing/2018/08/21/what-is-dropboxs-
`competitive-advantage.aspx), last viewed September 15, 2020
`Ex. 2031 https://www.microsoft.com/en-us/surface/devices/surface-pro/tech-
`specs, last viewed September 19, 2020.
`Ex. 2032 https://support.microsoft.com/en-us/office/using-office-for-the-web-in-
`onedrive-dc62cfd4-120f-4dc8-b3a6-
`7aec6c26b55d#:~:text=In%20your%20web%20browser%2C%20go,Of
`fice%20for%20the%20web%20program, last viewed September 19,
`2020
`Ex. 2033 https://www.dummies.com/computers/operating-systems/windows-
`10/how-to-access-onedrive-from-anywhere/, last viewed September 19,
`2020
`Ex. 2034 https://www.microsoft.com/en-us/microsoft-365/onedrive/compare-
`onedrive-
`plans?ef_id=CjwKCAjwkoz7BRBPEiwAeKw3qwWV_91zlJtXmTwN
`vg1VRHD4lR_L8VuIUbASJYJAIKfOODGFtWQzwhoCuaMQAvD_
`BwE:G:s&OCID=AID2100137_SEM_CjwKCAjwkoz7BRBPEiwAeK
`w3qwWV_91zlJtXmTwNvg1VRHD4lR_L8VuIUbASJYJAIKfOODG
`FtWQzwhoCuaMQAvD_BwE:G:s&lnkd=Google_O365SMB_App&gc
`lid=CjwKCAjwkoz7BRBPEiwAeKw3qwWV_91zlJtXmTwNvg1VRH
`D4lR_L8VuIUbASJYJAIKfOODGFtWQzwhoCuaMQAvD_BwE&act
`ivetab=tab:primaryr2, last viewed September 19, 2020
`Ex. 2035 https://www.steeves.net/news/top-9-reasons-for-onedrive-in-your-
`business/, last viewed September 19, 2020.
`
`
`III. LEGAL UNDERSTANDING
`
`26.
`
`I have worked with counsel in the preparation of this Declaration.
`
`Nevertheless, the opinions, statements, and conclusions offered in this Declaration
`
`are purely my own and were neither suggested nor indicated in any way by counsel
`
`
`
`9
`
`

`

`or anyone other than myself. I confirmed with counsel my understanding that the
`
`term “obvious,” as used in the Petition addressed herein and as a general matter
`
`under United States law, refers to subject matter that would have occurred to a
`
`POSITA to which the ’526 Patent is directed without inventive or creative thought.
`
`That which is obvious, it is my understanding, flows naturally from the art and the
`
`education one of skill practicing in that art would have had in the relevant time
`
`frame, which for the ’526 Patent is 2003.
`
`IV. CLAIM CONSTRUCTION
`
`27.
`
`I reviewed the comments in the Petition and Petitioners’ expert’s
`
`declaration (EX1003) pertaining to claim “construction of the claims” of the ’526
`
`Patent. My understanding is simply that, in the absence of a specific controversy,
`
`one arrives at the appropriate “construction” or definition of what is embraced by
`
`the claims of the ’526 Patent and what is excluded by those claims by a reading of
`
`the ’526 Patent and arriving at what, based on that reading, the inventor of the
`
`claimed subject matter intended to protect as her or his invention.
`
`V. OPINIONS
`
`28. Petitioners present two grounds under which claims of the ’526 Patent
`
`are purportedly invalid; in particular, Petitioners contend that Claims 1-5, 9, 11, 12,
`
`16, and 18-20 are obvious over McCown (EX1005) in view of Dutta (EX1006) and
`
`contend that Claims 6-8, 10, 13-15, and 17 are unpatentable over McCown
`
`
`
`10
`
`

`

`(EX1005) in view of Dutta (EX1005) and Coates (EX1007). Petition, 1-2. In my
`
`opinion, as described below, Petitioners have not established a reasonable basis to
`
`conclude that the claims of the ’526 Patent are obvious.
`
`A.
`
`Institution Decision
`
`29.
`
`I respectfully disagree with the PTAB’s institution decision. In my
`
`opinion, Petitioners have not demonstrated that the challenged claims of the ’526
`
`Patent are unpatentable. I elaborate below.
`
`B.
`
`Independent Claims 1 and 11 Are Not Obvious in View of
`McCown and Dutta
`
`30. Petitioners contend that independent Claims 1 and 11 are obvious over
`
`McCown (EX1005) in view of Dutta (EX1006). Petition, 1-2. I disagree for the
`
`reasons outlined below.
`
`a. Claims 1 and 11: Utilizing Download Information for the File
`Stored in Cache Storage of the Wireless Device
`
`31.
`
`Independent Claims 1 and 11 of the ’526 Patent both recite utilizing
`
`download information for the file stored in cache storage in the wireless device.
`
`“1. A wireless device comprising: at least one cache storage, ...
`utilizing download information for the file stored in said cache storage
`...” ’526, Claim 1
`
`“11. ... utilizing download information for the file stored in a cache
`storage of the wireless device ...” ’526, Claim 11
`
`32. Petitioners construe the phrase “utilizing download information for
`
`the file stored in said cache storage” to mean “using information stored in the
`
`
`
`11
`
`

`

`cache storage of the wireless device to download a file from a remote server.”
`
`Petition, 14.
`
`33. For this declaration, I am not rendering an opinion about the
`
`construction of the phrase “utilizing download information for the file stored in
`
`said cache storage,” and my analysis is not restricted to the Petitioners’ definition
`
`of that phrase but still applies to Petitioners’ definition of that phrase.
`
`i. Purpose of the ’526 Cache
`
`34. The ’526 discloses cache storage in the wireless device and describes
`
`using that cache for only one purpose: storing the download information. Below
`
`are all recitations of cache in the ’526 Patent, which show that cache is used for the
`
`purpose of storing the download information.
`
`“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
`
`“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
`
`
`
`
`12
`
`

`

`35.
`
`In addition, the ’526 discloses that the download information stored in
`
`cache is used to download the file pointed to by the download information from the
`
`remote server into the storage server. See ’526 Claim 1, 4, 11, 12, and 5:14-24.
`
`36. Traditional use of cache in a [co-located or local] processor was to
`
`allow the local processor to buffer information (data or instructions) used by
`
`applications in dedicated cache memory in the wireless device. Such cache
`
`allowed the local processor (and thus the wireless device) relatively faster access to
`
`that information from that local cache for use by the local applications. See
`
`Exhibit 2003, Exhibit 2004, and Exhibit 2005. In contrast, the ’526 Patent
`
`discloses sending download information from a cache on the wireless device to a
`
`storage server that is remote. Such use of download information in cache is non-
`
`obvious and novel.
`
`ii. McCown Does Not Disclose, Suggest, or Imply Storing
`and Utilizing Download Information in Cache Storage
`
`37. McCown does not disclose, suggest, or imply storing and utilizing
`
`download information in cache storage. Indeed, McCown does not even mention
`
`the term cache.
`
`38. According to Petitioners, “McCown does not explicitly disclose that
`
`the URLs identifying files available for download from the remote site (‘download
`
`information’) are ‘stored in said cache storage[.]’” Petition at 51.
`
`
`
`13
`
`

`

`iii. Dutta Does Not Disclose How the Information in Cache
`Is Used
`
`39. The ’526 Patent disclosed a specific and novel way of using
`
`information stored in the cache on the wireless device. In contrast, Dutta does not
`
`disclose how the information in cache is used, let alone the specific way of using
`
`information stored in the cache on the wireless device disclosed in the ’526 Patent.
`
`40. Dutta mentions cache five times: at FIG. 2, at FIG. 3, at ¶ [0029], at
`
`¶ [0036], and at ¶ [0043]. However, as I elaborate below, Dutta does not disclose
`
`the purpose of the cache in any of these five instances.
`
`41. Dutta’s FIG. 2 merely cites “BROWSER CACHE 216” but does not
`
`disclose the purpose of the cache.
`
`42. Dutta’s FIG. 3 merely cites “BROWSER CACHE 316” but does not
`
`disclose the purpose of the cache.
`
`43. Dutta at ¶ [0029] refers to FIG. 2 and states that the browser may store
`
`a browser cache but provides no purpose, function, or utility for the browser cache.
`
`Dutta at ¶ [0029] is reproduced below.
`
`“[0029] Client 202 maintains local storage 212 for use by browser
`application 204 and other applications. Browser 204 may store
`bookmark file 214, browser cache 216, and various types of files,
`including user-saved Web pages 218.” EX1006, Dutta ¶ [0029],
`emphasis added
`
`
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`44. Dutta at ¶ [0036] refers to FIG. 3 and states that the browser may store
`
`a browser cache but provides no purpose, function, or utility for the browser cache.
`
`Dutta at ¶ [0036] is reproduced below.
`
`“[0036] With reference now to FIG. 3, a block diagram depicts a Web
`server for customized storage of captured Web files in accordance
`with a preferred embodiment of the present invention. In a manner
`similar to FIG. 2, FIG. 3 shows various components within the
`Internet that a user may access to retrieve information. Client 302 runs
`browser application 304, which displays web page 306 retrieved from
`Web address 308. Browser 304 may also maintain bookmarks 310 for
`selection by a user using application options and controls within
`browser 304. Client 302 maintains local storage 312; browser 304
`may store bookmark file 314, browser cache 316, and various types
`of files, including user-saved Web pages 318. Client 302 accesses
`various resources and services throughout the Internet 320. In this
`example, a user may browse content from an online newspaper
`supported by server 322 and stored within server storage 324.”
`EX1006, Dutta ¶ [0036], emphasis added
`
`45. Dutta at ¶ [0043] refers to “cookie cache,” which is different from a
`
`browser cache and is unrelated to the ’526 Patent. Dutta at ¶ [0043] is reproduced
`
`below.
`
`“[0043] Server-side storage configuration preferences 426 depict
`various fields that a user may use to specify the parameters may be
`needed by a server that operates the server-side functionality of the
`present invention. Entry field 428 allows a user specify the location of
`the server to which captured data should be pushed for storage and
`processing. Entry fields 430 and 432 allow a user to specify a user
`identity and password for a user account at the server specified within
`entry field 428. The browser will forward this information to the
`server in order to obtain authorization for the user to perform various
`processes at the server. It should be understood that various
`mechanism may be used to authenticate a user, such as using a cookie
`mechanism placed in the client's cookie cache by the server,
`
`
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`depending upon the level of security desired by the operator of the
`server.” EX1006, Dutta ¶ [0043], emphasis added
`
`In other words, Dutta discloses that a browser in a client machine may
`
`46.
`
`store a browser cache, but Dutta does not integrate the cache in the Dutta
`
`invention; Dutta does not disclose how the data in its browser cache may be used
`
`for any purpose, function, or utility in the Dutta system.
`
`iv. Dutta Does Not Disclose, Suggest, or Imply Utilizing
`Stored Download Information in Cache Storage
`
`47. Dutta does not disclose, suggest, or imply storing and utilizing
`
`download information in cache storage, let alone utilizing download information in
`
`cache to store or retrieve a file from a remote storage space, as claimed in the ’526
`
`patent. Indeed, Dutta does not disclose download information at all.
`
`v. The Combination of McCown and Dutta Does Not
`Disclose, Suggest, or Imply Storing and Utilizing
`Download Information in Cache Storage
`
`48. As described earlier, McCown does not disclose, suggest, or imply
`
`storing download information in cache storage. Indeed, McCown does not
`
`mention cache at all.
`
`49. As described earlier, Dutta does not disclose, suggest, or imply storing
`
`and utilizing download information in cache storage. Indeed, Dutta does not
`
`disclose download information at all.
`
`
`
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`50. Therefore, the combination of McCown and Dutta does not disclose,
`
`suggest, or imply storing download information in cache storage.
`
`51. Additionally, McCown doesn’t mention cache, and Dutta mentions
`
`cache, but doesn’t disclose how to utilize information in cache, so combining
`
`McCown and Dutta doesn’t teach utilizing download information stored in cache
`
`for the purpose of downloading data into the storage server.
`
`vi. Petitioners Rely Solely on Expert’s Opinion That It
`Would Have Been Obvious to Store the Download
`Information in Cache
`
`52. As cited in the Decision at p.24, Petitioners state that “McCown does
`
`not explicitly disclose that the URLs identifying files available for download from
`
`the remote site (‘download information’) are ‘stored in said cache storage,’ but it
`
`would have been obvious to include that functionality in the system of McCown in
`
`view of Dutta.” Petition at 51 and 30-33.
`
`53. For the reasons I describe below, I disagree that it would have been
`
`obvious in the system of McCown in view of Dutta to include the functionality of
`
`storing download information in cache.
`
`vii. Petitioners’ Theory for the Motivation for Storing the
`Download Information in Cache
`
`54. To show that it would have been obvious in the system of McCown in
`
`view of Dutta to include the functionality of storing download information in
`
`cache, Petitioners and Petitioners’ expert rely on a theory that storing the download
`
`
`
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`information in cache would make the download information more readily
`
`accessible for the user to quickly retrieve and use to generate the data requests.
`
`Petition at 52, Ex. 1003 ¶ 202.
`
`55. As cited in the Decision at p.24, Petitioners state that “[a] Skilled
`
`Artisan would have been motivated to store those URLs in storage that is more
`
`readily accessible by the user or user application, or ‘cache storage,’ of the
`
`combined system of McCown and Dutta . . . so that those URLs could be quickly
`
`retrieved and used to generate the data request of McCown.” Petition at 52 (citing
`
`Ex. 1003 ¶ 202; Ex. 1005, 11:12-23; Ex. 1011, 1:66-2:1).
`
`56.
`
`In other words, Petitioners’ theory is that the motivation for storing
`
`the URLs (download information) in cache is to make these URLs “more readily
`
`accessible by the user or user application . . . so that those URLs could be quickly
`
`retrieved and used to generate the data request of McCown.” Id.
`
`57. Similarly, Petitioners’ expert’s theory is also that the motivation for
`
`storing the URLs (download information) in cache is to make these URLs “more
`
`readily accessible by the user or user application . . . so that those URLs could be
`
`quickly retrieved and used to generate the data request of McCown.” Ex. 1003,
`
`¶ 202.
`
`58. Here, at best, use of the information in the cache is allegedly obvious
`
`only for a local application, i.e., for a user on the wireless device to generate data
`
`
`
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`requests locally. Nowhere does Petitioner’s expert explain how it is obvious to use
`
`information in the cache of a local wireless device by a remote storage server.
`
`Such use of information in cache by a remote server is non-ob