`
`Title:
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION and HP INC.
`Petitioners,
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`v.
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`SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner.
`
`Patent No. 10,015,254
`Issued: July 3, 2018
`Filed: December 21, 2015
`
`Inventor: Sheng Tai Tsao
`
` SYSTEM AND METHOD FOR WIRELESS DEVICE ACCESS TO
`EXTERNAL STORAGE
`________________________
`Inter Partes Review No. IPR2020-01031 and IPR2020-01032
`________________________
`DECLARATION OF HENRY HOUH
`REGARDING U.S. PATENT NO. 10,015,254
`________________________
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`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, Cover
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`Declaration of Henry Houh Regarding U.S. Patent No. 10,015,254
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`I, Henry Houh, do hereby declare and state, that all statements made herein of my
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`own knowledge are true and that all statements made on information and belief are
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`believed to be true; and further that these statements were made with the
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`knowledge that willful false statements and the like so made are punishable by fine
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`or imprisonment, under Section 1001 of Title 18 of the United States Code.
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`Executed on: June 4, 2020
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`___________________________
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`Henry Houh
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`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. i
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`Declaration of Henry Houh Regarding U.S. Patent No. 10,015,254
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION ........................................................................................... 1
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`A.
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`B.
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`C.
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`D.
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`Engagement ........................................................................................... 1
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`Background and Qualifications ............................................................. 1
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`Compensation and Prior Testimony ...................................................... 4
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`Information Considered ......................................................................... 4
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`II.
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`LEGAL STANDARDS FOR PATENTABILITY .......................................... 5
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`A. Anticipation ........................................................................................... 7
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`B.
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`Obviousness ........................................................................................... 8
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`III. THE 254 PATENT ........................................................................................ 14
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`A.
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`B.
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`Effective Filing Date ........................................................................... 14
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`Level of Ordinary Skill ....................................................................... 15
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`C. Overview of 254 Patent ....................................................................... 15
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`D.
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`E.
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`F.
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`Prosecution History of 254 Patent ....................................................... 20
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`Challenged Claims of the 254 Patent .................................................. 21
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`Claim Construction ............................................................................. 28
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`1.
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`2.
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`3.
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`“cache storage . . .” ................................................................... 28
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`“utilizing information . . . ” ....................................................... 32
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`“folder or directory structure” ................................................... 34
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`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. ii
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`Declaration of Henry Houh Regarding U.S. Patent No. 10,015,254
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`4.
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`5.
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`6.
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`“configure the wireless device . . .” .......................................... 35
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`“updating . . . the storage spaces . . .” ....................................... 37
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`“web console” ........................................................................... 40
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`IV. OVERVIEW OF THE PRIOR ART ............................................................. 41
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`A. McCown (EX1005) ............................................................................. 41
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`B.
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`C.
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`Dutta (EX1006) ................................................................................... 47
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`Coates (EX1007) ................................................................................. 49
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`V.
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`COMPARISON OF THE 254 PATENT TO THE PRIOR ART .................. 53
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`A.
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`The Challenged Claims Are Unpatentable Over McCown in View of
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`Dutta, or McCown in view of Dutta, in Further View of Coates ........ 53
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`1.
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`Claim 1 is Unpatentable ............................................................ 53
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`a.
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`b.
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`c.
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`Preamble ........................................................................................................ 53
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`Cache Storage ................................................................................................ 54
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`Computer-Readable Storage Device ............................................................. 61
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`(i)
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`Program Instructions .................................................................................. 62
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`(ii) Configure the Wireless Device .................................................................. 64
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`d.
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`The Claimed Program Instructions ................................................................ 65
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`(i)
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`Establishing a Communication Link .......................................................... 67
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`(ii) Displaying the Remote Storage Space ....................................................... 69
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`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. iii
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`Declaration of Henry Houh Regarding U.S. Patent No. 10,015,254
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`(iii) Coupling with the First Server ................................................................... 72
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`(iv) The Wherein Clause ................................................................................... 74
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`2.
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`Claim 2 is Unpatentable ............................................................ 81
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`Obtaining the Information ............................................................................. 84
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`Transmitting the Information ......................................................................... 85
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`Cause the Server to Download the File ......................................................... 89
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`3.
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`4.
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`5.
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`6.
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`Claim 3 is Unpatentable ............................................................ 90
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`Claim 4 is Unpatentable .......................................................... 102
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`Claim 5 is Unpatentable .......................................................... 103
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`Claim 6 is Unpatentable .......................................................... 104
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`File/Directory Operations ............................................................................ 104
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`Via a Wireless Link ..................................................................................... 106
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`The Obvious Combination ........................................................................... 107
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`7.
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`8.
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`9.
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`Claim 7 is Unpatentable .......................................................... 110
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`Claim 8 is Unpatentable .......................................................... 118
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`Claim 9 is Unpatentable .......................................................... 120
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`Preamble ...................................................................................................... 120
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`Plurality of Storage Spaces and Devices ..................................................... 121
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`Computer-Readable Storage Device ........................................................... 122
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`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. iv
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`a.
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`b.
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`c.
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`a.
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`b.
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`c.
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`a.
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`b.
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`c.
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`Declaration of Henry Houh Regarding U.S. Patent No. 10,015,254
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`(i)
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`Program Instructions ................................................................................ 123
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`(ii) Configure the Server ................................................................................ 125
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`d.
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`The Claimed Program Instructions .............................................................. 126
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`(i)
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`Establishing Communication Link ........................................................... 129
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`(ii)
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`Sending Information to Wireless Device ................................................. 130
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`(iii) Updating the Storage Space ..................................................................... 131
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`(iv) The Wherein Clause ................................................................................. 146
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`10. Claim 10 is Unpatentable ........................................................ 159
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`Receiving the Information ........................................................................... 161
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`Sending a Request ........................................................................................ 162
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`11. Claim 11 is Unpatentable ........................................................ 163
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`12. Claim 12 is Unpatentable ........................................................ 164
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`13. Claim 13 is Unpatentable ........................................................ 165
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`14. Claim 14 is Unpatentable ........................................................ 174
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`Creating a Folder or Folder/Directory Structure ......................................... 175
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`Create, Move, Copy or Rename Data Object .............................................. 178
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`File Includes Digital Picture, Music or Video File ..................................... 180
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`The Obvious Combination ........................................................................... 181
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`15. Claim 15 is Unpatentable ........................................................ 184
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`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. v
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`b.
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`a.
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`b.
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`c.
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`d.
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`Declaration of Henry Houh Regarding U.S. Patent No. 10,015,254
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`16. Claim 16 is Unpatentable ........................................................ 187
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`a.
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`b.
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`c.
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`d.
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`e.
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`Preamble ...................................................................................................... 187
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`Establishing a Communication Link ........................................................... 188
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`Displaying the Remote Storage Space ........................................................ 189
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`Coupling with the First Server ..................................................................... 191
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`The Wherein Clause .................................................................................... 193
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`(i)
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`Storing/Retrieving Data ........................................................................... 194
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`17. Claim 17 is Unpatentable ........................................................ 200
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`Obtaining the Information ........................................................................... 201
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`Transmitting the Information ....................................................................... 202
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`Causing the Server to Download the File .................................................... 206
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`18. Claim 18 is Unpatentable ........................................................ 207
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`19. Claim 19 is Unpatentable ........................................................ 208
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`20. Claim 20 is Unpatentable ........................................................ 215
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`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. vi
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`a.
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`b.
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`c.
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`Declaration of Henry Houh Regarding U.S. Patent No. 10,015,254
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`I.
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`INTRODUCTION
`A.
`Engagement
`1.
`I, Henry Houh, make this declaration. All statements herein made of
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`my own knowledge are true, and all statements herein made based on information
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`and belief are believed to be true. I am over 21 and otherwise competent to make
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`this declaration. Although I am being compensated for my time in preparing this
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`declaration, the opinions herein are my own.
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`2.
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`I have been retained by counsel for Microsoft Corporation and HP
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`Inc. as an expert witness in the above-captioned proceeding. I have been asked to
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`provide my opinion about the state of the art of the technology described in U.S.
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`Patent No. 10,015,254 (“the 254 Patent”) and on the patentability of claims 1-20 of
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`the 254 Patent. The following is my written testimony on these topics.
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`B.
`3.
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`Background and Qualifications
`I received a Ph.D. in Electrical Engineering and Computer Science
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`from the Massachusetts Institute of Technology in 1998. I also received a Master
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`of Science degree in Electrical Engineering and Computer Science in 1991, a
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`Bachelor of Science Degree in Electrical Engineering and Computer Science in
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`1990, and a Bachelor of Science Degree in Physics in 1989.
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`4.
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`As further indicated in my C.V., I have worked in the electrical
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`engineering and computer science fields, including web site and web server
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`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. 1
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`Declaration of Henry Houh Regarding U.S. Patent No. 10,015,254
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`development, on several occasions. As part of my doctoral research at MIT from
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`1991-1998, I worked as a research assistant in the Telemedia Network Systems
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`(TNS) group at the Laboratory for Computer Science. The TNS group built a high
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`speed gigabit network and applications which ran over the network, such as remote
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`video capture, processing and display on computer terminals. In addition to
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`helping design the core network components, designing and building the high
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`speed links, and designing and writing the device drivers for the interface cards, I
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`also set up the group’s web server, which at the time was one of the first several
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`hundred web servers in existence.
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`5.
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`I authored or co-authored twelve papers and conference presentations
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`on our group’s research. I also co-edited the final report of the gigabit networking
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`research effort with the Professor (David Tennenhouse) and Senior Research
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`Scientist of the group (David Clark), who is generally considered to be one of the
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`fathers of the Internet Protocol.
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`6.
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`I started building web servers in 1993, having set up the web server
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`for the MIT Telemedia, Networks, and Systems Group, to which I belonged. It
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`was one of the first several hundred web servers in existence, and went on to
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`provide what was likely one of the first live Internet video initiated from a web
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`site. In 1994, I founded a company called Agora Technology Group which set up
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`advertising-supported web sites service for college recruiting called HIRES
`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. 2
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`Declaration of Henry Houh Regarding U.S. Patent No. 10,015,254
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`(Hypermedia Internet Recruitment and Employment Services). Agora also
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`provided web consulting services to companies; Agora set up web sites for Bay
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`Networks (later purchased by Nortel) and Data Communications Magazine, among
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`others.
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`7.
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`From 1997 to 1999, I was a Senior Scientist and Engineer at NBX
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`Corporation, a start-up that made business telephone systems that streamed
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`packetized audio over data networks instead of using traditional phone lines. NBX
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`was later acquired by 3Com Corporation, and the phone system is still available
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`and being used at tens of thousands of businesses or more. As part of my work at
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`NBX, I designed the core audio reconstruction algorithms for the telephones, as
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`well as the packet transmission algorithms. I also designed and validated the core
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`packet transport protocol used by the phone system. The protocol is used millions
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`of times daily currently. Two of the company founders and I received US Patent
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`No. 6,697,963 titled “Telecommunication method for ensuring on-time delivery of
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`packets containing time sensitive data,” for some of the work I did there.
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`8.
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`Starting in 2001, I was architect for the next generation of web testing
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`product by Empirix known as e-Test Suite. e-Test Suite is now owned by Oracle
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`Corporation. e-Test provided functional and load testing for web sites. e-Test
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`emulated a user’s interaction with a web site and provided web developers with a
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`method of creating various scripts and providing both functional testing (e.g., did
`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. 3
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`Declaration of Henry Houh Regarding U.S. Patent No. 10,015,254
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`the web site provide the correct response) and load testing (e.g., could the web site
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`handle 5000 users on its web site simultaneously). Among Empirix’s customers
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`was H&R Block, who used e-Test Suite to test the tax filing functionality of their
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`web site as whether the web site could handle a large expected load prior to the
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`filing deadline.
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`9.
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`I have also continued to develop web sites for various business
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`projects, as well as setting up web sites on a volunteer basis for various groups that
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`I am associated with.
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`10.
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`I am the author of several publications devoted to a wide variety of
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`technologies in the fields of electrical engineering and computer science. These
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`publications are listed on my C.V. (EX1004).
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`C. Compensation and Prior Testimony
`I am being compensated at a rate of $620 per hour for my study and
`11.
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`testimony in this matter. I am also being reimbursed for reasonable and customary
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`expenses associated with my work and testimony in this investigation. My
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`compensation is not contingent on the outcome of this matter or the specifics of my
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`testimony.
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`D.
`Information Considered
`12. My opinions are based on my years of education, research and
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`experience, as well as my investigation and study of relevant materials. In forming
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`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. 4
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`Declaration of Henry Houh Regarding U.S. Patent No. 10,015,254
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`my opinions, I have considered the materials I identify in this report and those
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`listed in the Exhibit List at the end of this report.
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`13.
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`I may rely upon these materials and/or additional materials to respond
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`to arguments raised by the Patent Owner. I may also consider additional
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`documents and information in forming any necessary opinions, including
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`documents that may not yet have been provided to me.
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`14. My analysis of the materials produced in this investigation is ongoing
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`and I will continue to review any new material as it is provided. This report
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`represents only those opinions I have formed to date. I reserve the right to revise,
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`supplement, and/or amend my opinions stated herein based on new information
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`and on my continuing analysis of the materials already provided.
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`II. LEGAL STANDARDS FOR PATENTABILITY
`In expressing my opinions and considering the subject matter of the
`15.
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`claims of the 254 Patent, I am relying upon certain basic legal principles that have
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`been explained to me.
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`16. First, I understand that for an invention claimed in a patent to be
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`found patentable, it must be, among other things, new and not obvious from what
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`was known before the invention was made.
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`17.
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`I understand the information that is used to evaluate whether an
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`invention is new and not obvious is generally referred to as “prior art” and
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`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. 5
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`Declaration of Henry Houh Regarding U.S. Patent No. 10,015,254
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`generally includes patents and printed publications (e.g., books, journal
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`publications, articles on websites, product manuals, etc.).
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`18.
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`I understand that in this proceeding Microsoft has the burden of
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`proving that the claims of the 254 Patent are anticipated by or obvious from the
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`prior art by a preponderance of the evidence. I understand that “a preponderance
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`of the evidence” is evidence sufficient to show that a fact is more likely true than it
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`is not.
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`19. As I discuss further in the claim construction section below, I
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`understand that the 254 Patent claims must be interpreted in accordance with the
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`Phillips standard of claim construction, my understanding of which is set forth in
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`greater detail below. The claims after being construed are then to be compared to
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`the information in the prior art.
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`20.
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`I understand that in this proceeding, the prior art that may be
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`evaluated as a basis for unpatentability are limited to patents and printed
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`publications. My analysis below compares the claims to patents and printed
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`publications that are prior art to the claims.
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`21.
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`I understand that there are two ways in which prior art may render a
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`patent claim unpatentable. First, the prior art can be shown to “anticipate” the
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`claim. Second, the prior art can be shown to have made the claim “obvious” to a
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`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. 6
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`Declaration of Henry Houh Regarding U.S. Patent No. 10,015,254
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`person of ordinary skill in the art. My understanding of the two legal standards is
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`set forth below.
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`A. Anticipation
`I understand that the following standards govern the determination of
`22.
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`whether a patent claim is “anticipated” by the prior art.
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`23.
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`I have applied these standards in my evaluation of whether the claims
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`of the patent would have been anticipated by the prior art.
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`24.
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`I understand that the “prior art” includes patents and printed
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`publications that existed before the earliest filing date (the “effective filing date”)
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`of the claim in the patent. I also understand that a patent will be prior art if it was
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`filed before the invention date of the claimed invention, while a printed publication
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`will be prior art if it was publicly available before that date or more than one year
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`before the effective filing date.
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`25.
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`I understand that, for a patent claim to be “anticipated” by the prior
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`art, each and every requirement of the claim must be found, expressly or
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`inherently, in a single prior art reference as recited in the claim. I understand that
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`claim limitations that are not expressly described in a prior art reference may still
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`be there if they are “inherent” to the thing or process being described in the prior
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`art. For example, an indication in a prior art reference that a particular process
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`complies with a published standard would indicate that the process must inherently
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`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. 7
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`Declaration of Henry Houh Regarding U.S. Patent No. 10,015,254
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`perform certain steps or use certain data structures that are necessary to comply
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`with the published standard.
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`26.
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`I understand that if a reference incorporates other documents by
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`reference, the incorporating reference and the incorporated reference(s) should be
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`treated as a single prior art reference for purposes of analyzing anticipation.
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`27.
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`I understand that it is acceptable to consider evidence other than the
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`information in a particular prior art document to determine if a feature is
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`necessarily present in or inherently described by that reference.
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`B. Obviousness
`I understand that a claimed invention is not patentable if it would have
`28.
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`been obvious to a person of ordinary skill in the field of the invention at the time
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`the invention was made.
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`29.
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`I understand that the obviousness standard is defined in the patent
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`statute (35 U.S.C. § 103(a)) as follows:
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`A patent may not be obtained though the invention is not identically
`disclosed or described as set forth in section 102 of this title, if the
`differences between the subject matter sought to be patented and the
`prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary
`skill in the art to which said subject matter pertains. Patentability shall
`not be negatived by the manner in which the invention was made.
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`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. 8
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`Declaration of Henry Houh Regarding U.S. Patent No. 10,015,254
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`30.
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`I understand that the following standards govern the determination of
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`whether a claim in a patent is obvious. I have applied these standards in my
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`evaluation of whether the asserted claims of the patent at issue here would have
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`been considered obvious as of the relevant priority date. I have been asked to
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`assume that the priority date for the claims at issue here is December 4, 2003.
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`31.
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`I understand that to find a claim in a patent obvious, one must
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`consider certain factual questions regarding the claimed invention and the prior art.
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`Specifically, I understand that the obviousness question requires consideration of
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`four factors (although not necessarily in the following order):
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`•
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`•
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`•
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`The scope and content of the prior art;
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`The differences between the prior art and the claims at issue;
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`The knowledge of a person of ordinary skill in the pertinent art;
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`and
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`• Whatever objective factors indicating obviousness or non-
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`obviousness may be present in any particular case.
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`32.
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`In addition, I understand that the obviousness inquiry should not be
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`done based on hindsight, but must be done using the perspective of a person of
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`ordinary skill in the relevant art as of the priority date of the patent claim.
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`33.
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`I understand the objective factors indicating obviousness or non-
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`obviousness may include: commercial success of products covered by the patent
`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. 9
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`Declaration of Henry Houh Regarding U.S. Patent No. 10,015,254
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`claims; a long-felt need for the invention; failed attempts by others to make the
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`invention; copying of the invention by others in the field; unexpected results
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`achieved by the invention; praise of the invention by those in the field; the taking
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`of licenses under the patent by others; expressions of surprise by experts and those
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`skilled in the art at the making of the invention; and the patentee proceeded
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`contrary to the accepted wisdom of the prior art. I also understand that any of this
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`evidence must be specifically connected to the invention rather than being
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`associated with the prior art or with marketing or other efforts to promote an
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`invention. I am not presently aware of any evidence of “objective factors”
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`suggesting the claimed methods are not obvious, and reserve my right to address
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`any such evidence if it is identified in the future.
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`34.
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`I understand the combination of familiar elements according to known
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`methods is likely to be obvious when it does no more than yield predictable results.
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`I also understand that an example of a solution in one field of endeavor may make
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`that solution obvious in another related field. I also understand that market
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`demands or design considerations may prompt variations of a prior art system or
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`process, either in the same field or a different one, and that these variations will
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`ordinarily be considered obvious variations of what has been described in the prior
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`art.
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`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. 10
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`Declaration of Henry Houh Regarding U.S. Patent No. 10,015,254
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`35.
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`I also understand that if a person of ordinary skill can implement a
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`predictable variation, that variation would have been considered obvious. I
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`understand that for similar reasons, if a technique has been used to improve one
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`device, and a person of ordinary skill in the art would recognize that it would
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`improve similar devices in the same way, using that technique to improve the other
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`device would have been obvious unless its actual application yields unexpected
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`results or challenges in implementation.
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`36.
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`I understand that the obviousness analysis need not seek out precise
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`teachings directed to the specific subject matter of the challenged claim, but
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`instead can take account of the “ordinary innovation” and experimentation that
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`does no more than yield predictable results, which are inferences and creative steps
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`that a person of ordinary skill in the art would employ.
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`37.
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`I understand that sometimes it will be necessary to look to interrelated
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`teachings of multiple patents; the effects of demands known to the design
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`community or present in the marketplace; and the background knowledge
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`possessed by a person having ordinary skill in the art. I understand that all these
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`issues may be considered to determine whether there was an apparent reason to
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`combine the known elements in the fashion claimed by the patent at issue.
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`38.
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`I understand that the obviousness analysis cannot be confined by a
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`formalistic conception of the words “teaching, suggestion, and motivation.” I
`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. 11
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`Declaration of Henry Houh Regarding U.S. Patent No. 10,015,254
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`understand that in 2007, the Supreme Court issued its decision in KSR Int'l Co. v.
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`Teleflex, Inc., 550 U.S. 398 (2007), where the Court rejected the previous
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`requirement of a “teaching, suggestion, or motivation to combine” known elements
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`of prior art for purposes of an obviousness analysis as a precondition for finding
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`obviousness. It is my understanding that KSR confirms that any motivation that
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`would have been known to a person of skill in the art, including common sense, or
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`derived from the nature of the problem to be solved, is sufficient to explain why
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`references would have been combined.
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`39.
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`I understand that a person of ordinary skill attempting to solve a
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`problem will not be led only to those elements of prior art designed to solve the
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`same problem. I understand that under the KSR standard, steps suggested by
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`common sense are important and should be considered. Common sense teaches
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`that familiar items may have obvious uses beyond the particular application being
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`described in a reference, that if something can be done once it is obvious to do it
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`multiple times, and in many cases a person of ordinary skill will be able to fit the
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`teachings of multiple patents together like pieces of a puzzle. As such, the prior art
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`considered can be directed to any need or problem known in the field of endeavor
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`as of the effective filing date and can provide a reason for combining the elements
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`of the prior art in the manner claimed. In other words, the prior art does not need
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`to be directed towards solving the same problem that is addressed in the patent.
`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. 12
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`Declaration of Henry Houh Regarding U.S. Patent No. 10,015,254
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`Further, the individual prior art references themselves need not all be directed
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`towards solving the same problem.
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`40.
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`I understand that an invention that might be considered an obvious
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`variation or modification of the prior art may be considered non-obvious if one or
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`more prior art references discourages or lead away from the line of inquiry
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`disclosed in the reference(s). A reference does not “teach away” from an invention
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`simply because the reference suggests that another embodiment of the invention is
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`better or preferred. My understanding of the doctrine of teaching away requires a
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`clear indication that the combination should not be attempted (e.g., because it
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`would not work or explicit statements saying the combination should not be made).
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`41.
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`I understand that a person of ordinary skill is also a person of ordinary
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`creativity.
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`42.
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`I further understand that in many fields, it may be that there is little
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`discussion of obvious techniques or combination, and it often may be the case that
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`market demand, rather than scientific literature or knowledge, will drive design
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`trends. When there is such a design need or market pressure to solve a problem
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`and there are a finite number of identified, predictable solutions, a person of
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`ordinary skill has good reason to pursue the known options within their technical
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`grasp. If this leads to the anticipated success, it is likely the product not of
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`innovation but of ordinary skill and common sense. In that instance the fact that a
`Petitioners Microsoft Corporation and HP Inc. – Ex. 1003, p. 13
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`Declaration of Henry Houh Regarding U.S. Patent No. 10,015,254
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`combination was obvious to try might show that it was obvious. The fact that a
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`particular combination of prior art elements was “obvious to try” may indicate that
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`the combination was obvious even if no one attempted the combination. If the
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`combination was obvious to try (regardless of whether it was actually tried) or
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`leads to anticipated success, then it is likely the result of ordinary skill and
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`common sense rather than innovation.
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`III. THE 254 PATENT
`A.
`Effective Filing Date
`43.
`I understand that the 254 Patent issued from U.S. Application No.
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`14/977,509, which was filed on December 21, 2015. EX1001, Face. The 509
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`applica