`U.S. Patent No. 10,015,254
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`MICROSOFT CORPORATION and HP INC.,
`Petitioner
`
`
`v.
`
`
` SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner
`
`
`
`Case IPR2020-01031
`U.S. Patent 10,015,254
`
`
`
`
`
`
`
`
`__________________
`
`
`Synkloud Technologies, LLC.’s Patent Owner Preliminary Response Pursuant
`To 37 C.F.R. § 42.107(a)
`
`
`
`
`
`
`
`IPR2020-01031
`U.S. Patent No. 10,015,254
`
`TABLE OF CONTENTS
`
`I. INTRODUCTION .......................................................................................................................1
`
`II. TECHNOLOGY BACKGROUND ...........................................................................................4
`
`A.
`
`B.
`
`Prior Art Storage Systems ..............................................................................................4
`
`The ’254 Patent: Mr. Sheng Tai Tsao Invents An Approach For Downloading
`Data From A Web Site To A Remote Storage Server Using Download
`Information Stored In The Cache Of A Wireless Device. .............................................5
`
`III. PETITIONERS’ PROPOSED GROUNDS FOR REVIEW .....................................................8
`
`IV. CLAIM CONSTRUCTION. ....................................................................................................9
`
`V.
`
`A.
`
`B.
`
`1.
`
`2.
`
`3.
`
`THE PETITIONERS FAILED TO DEMONSTRATE THEY ARE
`REASONABLY LIKELY TO PREVAIL ON ANY OF THEIR PROPOSED
`OBVIOUSNESS GROUNDS. .....................................................................................11
`
`The Petitioners Failed To Set Forth A Proper Obviousness Analysis .........................14
`
`Independent Claims 1 And 16 As Well As The Claims Dependent Therefrom
`Would Not Have Been Obvious Over McCown In Combination With The
`Secondary References (Proposed Grounds 1 and 2). ...................................................16
`
`The Combination Of McCown and Dutta (Ground 1) Would Not Have
`Taught “download[ing] a file from a second server across a network into
`the remote storage space through utilizing information for the file cached
`in a cache storage in the wireless device,” As Recited in Independent
`Claims 1 and 16. ....................................................................................................19
`
`The Combination of McCown and Dutta (Ground 1) Would Not Have
`Taught “transmitting the information for the file cached in the wireless
`device to the first server to cause the first server, in accordance with the
`information for the file, to download the file from the second server into
`the remote storage space,” As Recited in Dependent Claim 2 And As
`Similarly Recited In Dependent Claim 17. ............................................................22
`
`The Petitioners Failed To Show That A POSITA Would Have Been
`Motivated To Modify McCown With Dutta To Achieve The Particular
`Device And Method Recited In Independent Claims 1 and 16 Of The ‘254
`Patent Respectively With A Reasonable Expectation Of Success. ........................28
`
`VI.
`
`CONCLUSION ............................................................................................................36
`
`
`
`ii
`
`
`
`IPR2020-01031
`U.S. Patent No. 10,015,254
`
`TABLE OF AUTHORITES
`
`
`
`
`
`
`
`
`
`
`
`PAGE NO.
`
`CASES
`
`Arista Networks, Inc., v. Cisco Systems, Inc.,
`
`2016 WL 1083023 *5 (PTAB 2015)
`
`CCS Fitness Inc. v. Brunswick Corp.,
`
`288 F.3d 1366, 62 USPQ2d at 1662
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`
`809 F.3d 1375 (Fed. Cir. 2015)
`
`
`Harmonic Inc. v. Avid Tech., Inc.,
`
`815 F.3d 1356 (Fed. Cir. 2016)
`
`In re Magnum Oil Tools Int’l, Ltd.,
`
`829 F.3d 1364 (Fed. Cir. 2016)
`
`Kolbe & Kolbe Millwork Co., Inc. v. Sierra Pacific Industries,
`
`2019 WL 5070454 *20 (PTAB 2019)
`
`
`
`
`K/S Himpp v. Hear-Wear Techs., LLC,
`
`751 F.3d 1362 (Fed. Cir. 2014)
`
`Mylan Pharmaceuticals Inc. v. Boehringer Ingelheim International GMBH,
`
`2017 WL 1052517*1 (PTAB 2017)
`
`
`
`
`
`
`Nautilus Hyosung Inc. v. Diebold Nixdorf, Inc.,
`
`2017 WL 3447870 *8 (PTAB 2017)
`
`SAS Institute v. Iancu,
`
`138 S.Ct 1348 (2018)
`
`Teleflex, Inc. v. Ficosa N Am. Corp.,
`
`299 F.3d 1313, 63 USPQ2d 1374 (Fed. Cir. 2002)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`31
`
`10
`
`12
`
`12, 13, 20
`
`
`
`
`
`13, 27
`
`18
`
`
`
`18, 25, 26, 27
`
`12, 20
`
`13
`
`11
`
`
`
`
`
`2, 11, 14, 27
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`iii
`
`
`
`IPR2020-01031
`U.S. Patent No. 10,015,254
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`9
`
`12
`
`12
`
`12
`
`1
`
`
`
`
`
`Texas Digital Systems, Inc. v. Telegenix, Inc.,
`
`308 F.3d 1193 (Fed. Cir. 2002)
`
`Zodiac Pool Systems, Inc. v. Aqua Products, Inc.,
`
`2018 WL 6604633 *1 (PTAB 2018)
`
`
`
`
`
`STATUTES
`
`35 U.S.C. §312(a)(3)
`
`35 U.S.C. §314(a)
`
`37 C.F.R. §42.107
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`iv
`
`
`
`IPR2020-01031
`U.S. Patent No. 10,015,254
`
`
`
`PATENT OWNER’S EXHIBIT LIST
`
`Exhibit Number Description
`
`2001
`
`2002
`
`
`
`Declaration of Zaydoon Jawadi
`
`Curriculum Vitae of Zaydoon Jawadi
`
`
`
`
`
`v
`
`
`
`IPR2020-01031
`U.S. Patent No. 10,015,254
`
`I. INTRODUCTION
`
` The Board should deny the present request for inter partes review of U.S.
`
`Patent No. 10,015,254 (“the ’254 patent”) because there is not a reasonable
`
`likelihood that the Petitioners would prevail at trial with respect to at least one
`
`claim of the ’254 patent for three separate and independent reasons.
`
`First, each of Petitioners proposed grounds of rejection is missing one or more
`
`limitations of the claims of the ’254 patent. Infra, §§ V.A.2 and V.B.2-8.
`
`For example, none of the combinations of prior art references asserted by
`
`Petitioners would have taught “download[ing] a file from a second server
`
`across a network into the remote storage space through utilizing information
`
`for the file cached in a cache storage in the wireless device,” as recited in
`
`independent claim 1 and independent claim 16 of the ‘254 patent. Petitioners
`
`sole primary reference (McCown) does not even mention cache. And although
`
`the secondary reference Dutta does mention cache, it does not make any
`
`mention of how any of the data in cache would be used, let alone that
`
`download information in the cache of a wireless device would be used
`
`remotely from the wireless device—not locally at the wireless device—to
`
`download a file from a second server (e.g., a web site) to a remote storage
`
`space.
`
`
`
`1
`
`
`
`IPR2020-01031
`U.S. Patent No. 10,015,254
`
`Second, the Petitioners did not present any objective evidence as to why
`
`one of ordinary skill in the art would have been motivated to modify
`
`International Publication No. WO 01/67233 to McCown, the sole primary
`
`reference, with the teachings of the secondary references (U.S. Publication No.
`
`2002/0078102 to Dutta (“Dutta”) and U.S. Patent No. 7,266,555 to Coates
`
`(“Coates”)), and reasonably expect success in achieving the invention recited
`
`by the challenged claims of the ‘254 patent. That is, the Petitioners did not
`
`show that a “skilled artisan would have been motivated to combine the
`
`teachings of the prior art references to achieve the claimed invention, and that
`
`the skilled artisan would have had a reasonable expectation of success in doing
`
`so.” OSRAM Sylvania, Inc. v. Am Induction Techs., Inc., 701 F.3d 698, 706 (Fed.
`
`Cir. 2012).
`
`Third, the Petitioners neglected to follow the legal framework for an
`
`obviousness analysis set forth long ago by the Supreme Court. Graham v. John
`
`Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966); see also KSR Int’l Co. v.
`
`Teleflex Inc., 550 U.S. 398, 399 (2007) (“While the sequence of these questions
`
`might be reordered in any particular case, the [Graham] factors define the
`
`controlling inquiry.”) That framework requires consideration of the following
`
`factors: (1) the scope and content of the prior art, (2) any differences between
`
`the claimed subject matter and the prior art, and (3) the level of skill in the art.
`
`
`
`2
`
`
`
`The Board has previously warned that failure to identify differences between
`
`the cited art and the claims is a basis for denying a petition:
`
`IPR2020-01031
`U.S. Patent No. 10,015,254
`
`A petitioner who does not state the differences between
`
`a challenged claim and the prior art, and relies instead on the
`
`Patent Owner and the Board to determine those differences based
`
`on the rest of the submission in the petition risks having the
`
`corresponding ground of obviousness not included for trial for
`
`failing to adequately state a claim for relief.
`
`Liberty Mutual v. Progressive Casualty, CBM-2012-00003, paper 7 at 2 – 3.
`
`The Petitioners ignored the Board’s warning by failing to identify the
`
`differences between the challenged claims and the prior art. That is, the
`
`Petitioners failed to identify the claim limitations that it believed are missing
`
`from the primary reference (i.e., McCown) and are instead taught by the
`
`secondary references (e.g., Dutta and Coates). Petition, pp. 16-73. Rather,
`
`Petitioners provided a description of each reference followed by a conclusory
`
`statement that the references taught certain claim limitations, leaving the
`
`Board to figure out whether the primary or secondary reference best teaches
`
`the claim limitation. Ibid. Under this circumstance, it would be “inappropriate
`
`for the Board to take the side of the Petitioner to salvage an inadequately
`
`expressed ground …” Liberty Mutual v. Progressive Casualty, CBM-2012-00003,
`
`paper 7 at 2 – 3; paper 8 at 14-15.For this additional reason, inter partes review
`
`
`
`3
`
`
`
`IPR2020-01031
`U.S. Patent No. 10,015,254
`
`based on obviousness should be denied. See infra, § V.A.
`
`For these reasons and those explained more fully below, the Petitioners
`
`failed to show that it is reasonably likely to prevail on any proposed ground.
`
`Accordingly, the Board should deny the Petition.
`
`II. TECHNOLOGY BACKGROUND
`
`A. Prior Art Storage Systems
`
`As discussed in the background section of the ’254 patent, prior art
`
`storages systems are “categorized as internal storage or external storage.”
`
`EX1001, 1:27-28. “The internal storages of a computing system include those
`
`storage media such as hard disk drives, memory sticks, memory, and others
`
`that are internally connected within the computing system through [a] system
`
`bus or a few inches of cable.” Id. at 1:29-33. That is, internal storage media
`
`“are internal components of the computing system in a same enclosure.” Id. at
`
`1:33-34.
`
`In contrast, “[t]he external storages of a computing system are those
`
`storage media that are not the internal components of the computing system in
`
`a same enclosure.” Id. at 1:35-37. Instead, external storage is “connected
`
`through [a] longer cable, such as through Ethernet cable for IP based storage,
`
`Fiber channel cable for fiber channel storage, or wireless communication
`
`media, and others.” Id. at 1:38-41. “[E]xternal storage could be magnetic hard
`
`
`
`4
`
`
`
`IPR2020-01031
`U.S. Patent No. 10,015,254
`
`disk drives, solid state disk, optical storage drives, memory card and others,
`
`and could be in any form.” Id. at 1:42-45.
`
`The inventor of the ’254 patent, however, recognized that storage on
`
`users’ “wireless devices such as in their cell phone or personal data assistant
`
`devices (“PDA”) … [was] usually limited to 256 MB for the PDA and much
`
`less for the cell phone.” Id. at 2:29-33. Accordingly, the inventory recognized a
`
`need to provide wireless devices with “multiple gigabytes (GB) of storage”
`
`from a remote storage server to support multimedia applications. Id. at 34-37.
`
`Moreover, because multimedia data require large amounts of memory, there
`
`was a need to store data from various sources (e.g., a web server) to the remote
`
`storage server. Id. at 2:53-58.
`
`
`
`B. The ’254 Patent: Mr. Sheng Tai Tsao Invents An Approach For
`Downloading Data From A Web Site To A Remote Storage Server
`Using Download Information Stored In The Cache Of A Wireless
`Device.
`
`The ’254 patent addresses the deficiencies of the prior art with an
`
`approach that downloads data from a web site to a remote storage server using
`
`download information in a cache of a wireless device, as shown by FIG. 3,
`
`which is reproduced below.
`
`
`
`5
`
`
`
`IPR2020-01031
`U.S. Patent No. 10,015,254
`
`
`
`One embodiment of the invention includes a wireless device (1) having a
`
`web browser (8) and other software (9); a website (15); and external storage
`
`(10) having file systems (11) on a server (3). Id. at 3:48-58. When a user of the
`
`wireless device (1) desires to download data from a web server (15) to an
`
`assigned file system of the assigned external storage (10) on a server (3), the
`
`following steps are performed:
`
`
`
`6
`
`
`
`IPR2020-01031
`U.S. Patent No. 10,015,254
`
`“1) Provide the user from a web-browser (8) of the wireless device (1)
`
`access to a remote web server site (15) to obtain information for the
`
`downloading via the path (a) of the FIG. 3”;
`
`“2) The other software modules (9) of the wireless device (1) obtain the
`
`downloading information, which becomes available in the cached web-pages
`
`on the wireless device (1) after the web-browser (8) access[es] the web site
`
`(15)”;
`
`“3) The other software modules (9) of the wireless device (1) send the
`
`obtained downloading information to [the] other service modules (7) of the
`
`storage server (3) via the path (b)”;
`
`“4) Upon receiving the downloading information from the wireless
`
`device (1), the other service module (7) of the storage server (3) sends a web
`
`download request to the web-site (15) via the path (c) based on download
`
`information obtained and then receives the downloading data from the web
`
`server of the web-site (15)”; and
`
`“5) Upon receiving downloading data, the other service modules (7) of
`
`the storage server (3) write[s] the data for the wireless device (1) into the
`
`assigned file system (11) on the server (3).”
`
`Id. at 5:10-32.
`
`
`
`7
`
`
`
`IPR2020-01031
`U.S. Patent No. 10,015,254
`
`In this manner, the present invention downloads data using the
`
`download information in the cache of the user’s wireless device (1) from the
`
`web site (15) to the user’s assigned file system (11) on the server. The
`
`downloaded data can later be accessed by the user device. Id. at 5:33-44.
`
`Thus, the invention of the ‘254 patent includes a novel and non-obvious
`
`way to utilize download information in a cache of a wireless device to enable
`
`easy and efficient downloading of data (e.g., a web page, a file) from a web
`
`server to a remote storage space. For example, if a user of the wireless device
`
`of the claimed invention of the ‘254 patent were to access a picture from a web
`
`site (e.g., New York Times) either to view it or to download it to remote
`
`storage, the New York Times web site would not need to do anything
`
`differently; it would simply transmit a file containing the picture to the
`
`requester without needing to know whether the picture would be stored in
`
`remote storage or viewed on the device. In other words, the web sites need not
`
`be adapted or changed in any way to operate with the wireless device of the
`
`present invention.
`
`
`
`
`
`III. PETITIONERS’ PROPOSED GROUNDS FOR REVIEW
`
`For the Board’s convenience, below is a summary (as understood by
`
`Patent Owner) of the claim rejections proposed by the Petitioner:
`
`
`
`8
`
`
`
`IPR2020-01031
`U.S. Patent No. 10,015,254
`
`i.
`
`Claims 1-5, 8, and 16-18 are alleged to have been obvious under
`
`§103 over International Publication No. WO 01/67233 to McCown
`
`(“McCown”) in view of U.S. Publication No. 2002/0078102 to Dutta
`
`(“Dutta”); and
`
`ii. Claims 6, 7, 19, and 20 are alleged to have been obvious under
`
`§103 over McCown in View of Dutta, and further in view of U.S. Patent No.
`
`7,266,555 to Coates (“Coates”).
`
`
`
`IV. CLAIM CONSTRUCTION.
`
`Claim construction is generally an issue of law. Claims in an inter partes
`
`review are construed pursuant to the principle set forth by the court in Phillips
`
`v. AWH Corp, 415 F.3d 1303, 1312-15 (Fed. Cir. 2005) (en banc). Under
`
`Phillips, the specification is the single best source for claim interpretation. 415
`
`F.3d at 1312. “The terms used in the claims bear a heavy presumption that
`
`they mean what they say and have the ordinary meaning that would be
`
`attributed to those words by persons skilled in the relevant art.” Texas
`
`Digital System, Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed. Cir. 2002)
`
`(emphasis added) (internal quotation marks omitted) (citing CCS Fitness, Inc. v.
`
`Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002); K-2 Corp. v. Salomon
`
`S.A., 191 F.3d 1356, 1362-63 (Fed. Cir. 1999); Johnson Worldwide Assocs., Inc. v.
`
`
`
`9
`
`
`
`IPR2020-01031
`U.S. Patent No. 10,015,254
`
`Zebco Corp., 175 F.3d 985, 989 (Fed. Cir. 1999); Specialty Composites v. Cabot
`
`Corp., 845 F.2d 981, 986 (Fed. Cir. 1988)).
`
`In addition, a claim preamble may be construed as limiting “if it recites
`
`essential structure or steps, or if it is ‘necessary to give life, meaning, and
`
`vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d
`
`801, 808 (Fed. Cir. 2002), quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182
`
`F.3d 1298, 1305 (Fed. Cir. 1999).Additionally, the “appropriate context” to
`
`read a claim term includes both the specification and the claim language itself.
`
`In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). If a term is “used
`
`differently by the inventor,” he may provide a special definition if he does so
`
`with “reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
`
`1475, 1480 (Fed. Cir. 1994).
`
`Although Patent Owner does not agree with Petitioners’ proposed claim
`
`constructions, the Board need not address claim construction at this stage
`
`because under Petitioners’ own claim construction, Petitioners failed to show
`
`that they are reasonably likely to prevail against any claim on any ground.
`
`None of the challenged claims would have been obvious under Petitioners’
`
`own claim construction.
`
`
`
`10
`
`
`
`IPR2020-01031
`U.S. Patent No. 10,015,254
`
`V. THE PETITIONERS FAILED TO DEMONSTRATE THEY ARE
`REASONABLY LIKELY TO PREVAIL ON ANY OF THEIR
`PROPOSED OBVIOUSNESS GROUNDS.
`
`As set forth by the Supreme Court, the question of obviousness is
`
`resolved on the basis of underlying factual determinations including (1) the
`
`scope and content of the prior art, (2) any differences between the claimed
`
`subject matter and the prior art, (3) the level of skill in the art. Graham v. John
`
`Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966); see also KSR Int’l Co. v.
`
`Teleflex Inc., 550 U.S. 398, 399 (2007) (“While the sequence of these questions
`
`might be reordered in any particular case, the [Graham] factors define the
`
`controlling inquiry.”) A petitioner seeking to invalidate a patent as obvious
`
`must demonstrate that a “skilled artisan would have been motivated to
`
`combine the teachings of the prior art references to achieve the claimed
`
`invention, and that the skilled artisan would have had a reasonable expectation
`
`of success in doing so.” OSRAM Sylvania, Inc. v. Am. Induction Techs., Inc., 701
`
`F.3d 698, 706 (Fed. Cir. 2012). The Petition’s evidence must also address every
`
`limitation of every challenged claim.
`
`Indeed, it is Petitioners’ burden to demonstrate, based on the parties'
`
`papers, “that there is a reasonable likelihood that the petitioner would prevail
`
`with respect to at 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).
`
`
`
`11
`
`
`
`IPR2020-01031
`U.S. Patent No. 10,015,254
`
`Importantly, the burden rests on Petitioners—there is no burden on Patent
`
`Owner to prove to the contrary. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`
`800 F.3d 1375, 1378 (Fed. Cir. 2015)(Petitioner bears the burden of proving
`
`unpatentability of the challenged claims, and the burden of persuasion never
`
`shifts to Patent Owner.); 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 that of Petitioner to point to the
`
`passages in each reference relied upon to show all limitations recited in the
`
`claims, or, in the alternative, demonstrate conclusively that each of those
`
`limitations would be understood by the skilled artisan to be a natural
`
`supplement to the express teaching of the references. See, Mylan 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.
`
`
`
`
`
`12
`
`
`
`IPR2020-01031
`U.S. Patent No. 10,015,254
`
`While references relied upon are understood in light of the level of skill
`
`in the art, if that level of skill in the art is relied upon to show the presence of
`
`precise limitations recited in the challenged claims, specific explanation and
`
`evidence must be provided to support that contention – mere conclusory
`
`statements will not suffice to meet Petitioner’s burden. Importantly, where the
`
`Petitioner seeks to rely on the knowledge of skill in the art, how and why one
`
`of skill in the art would modify the references relied upon to demonstrate
`
`obviousness must be set forth with specificity. Nautilus Hyosung Inc. v. Diebold
`
`Nixdorf, Inc., , 2017 WL 3447870 *8 (PTAB 2017):
`
`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)….
`
`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.
`
`
`
`The Board should decline to institute an inter partes review on the
`
`combination of prior art for the proposed obviousness grounds because (i) the
`
`Petitioners failed to set forth a proper obviousness analysis because it did not
`
`
`
`13
`
`
`
`IPR2020-01031
`U.S. Patent No. 10,015,254
`
`identify the claim limitations that it believed are missing from the primary
`
`reference (i.e., McCown) and are instead taught by the secondary references
`
`(e.g., Dutta, Coates), (ii) the Petition failed to demonstrate that one of ordinary
`
`skill in the art would have been motivated to combine the teachings of the
`
`numerous prior art references in the combination to achieve the claimed
`
`invention with a reasonable expectation of success, (iii) the Petition failed to
`
`demonstrate that any of the different combinations would have taught every
`
`element of any of the challenged claims.
`
`A. The Petitioners Failed To Set Forth A Proper Obviousness Analysis
`
`The Petitioners neglected to follow the legal framework for an
`
`obviousness analysis set forth long ago by the Supreme Court. Graham v. John
`
`Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966); see also KSR Int’l Co. v.
`
`Teleflex Inc., 550 U.S. 398, 399 (2007) (“While the sequence of these questions
`
`might be reordered in any particular case, the [Graham] factors define the
`
`controlling inquiry.”). The Board has previously warned that failure to identify
`
`differences between the cited art and the claims is a basis for denying a
`
`petition:
`
`A petitioner who does not state the differences between
`
`a challenged claim and the prior art, and relies instead on the
`
`Patent Owner and the Board to determine those differences based
`
`on the rest of the submission in the petition risks having the
`
`
`
`14
`
`
`
`IPR2020-01031
`U.S. Patent No. 10,015,254
`
`corresponding ground of obviousness not included for trial for
`
`failing to adequately state a claim for relief.
`
`Liberty Mutual v. Progressive Casualty, CBM-2012-00003, paper 7 at 2 – 3. The
`
`Petitioners ignored the Board’s warning by failing to identify the differences
`
`between the challenged claim and the prior art. That is, the Petitioners failed
`
`to identify the claim limitations that it believed are missing from the primary
`
`reference (i.e., McCown) and that it believed are instead taught by the
`
`secondary references (e.g., Dutta, Coates). See e.g., Petition, pp. 14-44. Rather,
`
`the Petitioners listed a claim limitation and provided a partial description of
`
`one or more of the references, leaving the Board to figure out which reference
`
`the Petitioners are principally relying upon to teach the claim limitation and
`
`why the Petitioners relied upon a particular secondary reference. Ibid.
`
`This technique obscures the arguments, forcing the Patent Owner to
`
`“conjure up arguments against its own patent.” Liberty Mutual v. Progressive
`
`Casualty, CBM12-00003, paper 8 at 14 - 15. The Board has previously warned
`
`petitioners against this practice:
`
`We address only the basis, rationale, and reasoning put forth by
`
`the petitioner and resolve all vagueness and ambiguity in
`
`Petitioner’s arguments against the Petitioner. … It would be
`
`unfair to expect the Patent owner to conjure up arguments against
`
`its own patent, and just as inappropriate for the Board to take the
`
`
`
`15
`
`
`
`IPR2020-01031
`U.S. Patent No. 10,015,254
`
`side of the Petitioner to salvage an inadequately expressed ground
`
`…”
`
`Id. On this basis alone, inter partes review based on obviousness should be
`
`denied.
`
`
`
`B.
`
`Independent Claims 1 And 16 As Well As The Claims Dependent
`Therefrom Would Not Have Been Obvious Over McCown In
`Combination With The Secondary References (Proposed Grounds 1
`and 2).
`
`The combination of McCown and Dutta would not have taught or
`
`suggested the claim limitations of “download[ing] a file from a second server
`
`across a network into the remote storage space through utilizing information
`
`for the file cached in a cache storage in the wireless device,” as recited in
`
`independent claims 1 and 16. EX1001, 6:18-24, 8:21-26. Indeed, the
`
`combination would not even have taught that this “[download] information for
`
`the file [is] cached in a cache storage in the wireless device.” Moreover, the
`
`combination would not have taught “transmitting the information [obtained
`
`for a file from a second server] for the file cached in the wireless device to the
`
`first server,” as recited in dependent claim 2 and as similarly recited in
`
`dependent claim 17. EX1001, 6:29-30, 8:31-32. In addition, the combination
`
`would not have taught that this transmitted download information cached in
`
`the wireless device “cause[s] the first server, in accordance with the
`
`
`
`16
`
`
`
`IPR2020-01031
`U.S. Patent No. 10,015,254
`
`information for the file, to download the file from the second server into the
`
`remote storage space,” as recited in dependent claim 2, and as similarly recited
`
`in dependent claim 17. Id. at 6:30-34, 8:33-37.
`
`Moreover, Petitioners’ argument that a person of ordinary skill in the art
`
`(POSITA) would have been motivated to store download information in a
`
`cache of a wireless device and to use it to download a file from a second server
`
`across a network into a remote storage space is inconsistent with the disclosure
`
`of McCown itself. As explained by Mr. Jawadi, the universal resource locators
`
`(URLs) in McCown “are used only once by the user (negating the need to
`
`store the URLs in cache),” and thus, there would not have been any
`
`motivation to store the URLs “at the wireless device (whether in cache or
`
`otherwise).” Id. at ¶ 42. As further explained by Mr. Jawadi, “the files pointed
`
`to by the URLs [in McCown] will be stored in the storage site, negating the
`
`need to store the download information in cache at the wireless devices.” Id. at
`
`¶ 44. Accordingly, “[s]toring McCown’s URLs in cache is unnecessary,
`
`wasteful, counterintuitive, and not obvious.” Id. at ¶ 48.
`
`Where petitioners elect to rely, not on the discrete disclosure of a prior
`
`art reference, but rather on the nebulous knowledge of “those of skill in the
`
`art,” as Petitioners have done here, they are required to demonstrate the basis
`
`and adequacy of that knowledge with specificity – a conclusory statement or
`
`
`
`17
`
`
`
`generalization will not be sufficient to meet the burden imposed. Kolbe & Kolbe
`
`Millwork Co., Inc. v. Sierra Pacific Industries, 2019 WL 5070454 *20 (PTAB
`
`IPR2020-01031
`U.S. Patent No. 10,015,254
`
`2019):
`
`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 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).
`
`Here, Petitioners have done exactly that which the Board has found to be
`
`insufficient to meet their burden: they have presented mere attorney argument
`
`and conclusory statements from their expert to support their position that the
`
`limitations that are wholly absent from the prior art would have been obvious.
`
`See e.g., Petition, 16-44.
`
`For these reasons as explained in detail below, Petitioners did not
`
`demonstrate that the combination of McCown and Dutta would have taught
`
`all the limitations of independent claims 1 and 16 or the claims dependent
`
`therefrom, or that a POSITA would have been motivated to modify McCown
`
`to include the missing limitations. Petitioners are not reasonably likely to
`
`prevail against any claim. Institution should be denied.
`
`
`
`
`
`
`
`18
`
`
`
`IPR2020-01031
`U.S. Patent No. 10,015,254
`
`1.
`
`The Combination Of McCown and Dutta (Ground 1) Would Not
`Have Taught “download[ing] a file from a second server across a
`network into the remote storage space through utilizing
`information for the file cached in a cache storage in the wireless
`device,” As Recited in Independent Claims 1 and 16.
`
`Petitioners allege that the claim limitation quoted above would have
`
`been taught by the combination of McCown and Dutta based on its position
`
`that the claim term “cache” indicates that “the download information is stored
`
`on the wireless device in some convenient memory location of that device so
`
`that it can be more readily accessed, without having to make another request to
`
`the remote server site for the information, when the user makes a selection of
`
`what information should be downloaded and stored.” Petition, 8.
`
`But under Petitioners’ own construction, the claim limitation quoted
`
`above would not have been taught by the combination of McCown and Dutta.
`
`McCown does not even mention a cache and therefore, could not have
`
`possibly taught or suggested storing download information in cache storage or
`
`retrieving download information from cache storage. EX2001, ¶ 36. Indeed
`
`Petitioners admitted that “McCown does not explicitly disclose that the URLs
`
`identifying files available for download from the remote site (‘information’) are
`
`‘cached in [[the/a]/a] cache storage in the [first] wireless device[.]’” Petition,
`
`40, 60.
`
`
`
`19
`
`
`
`IPR2020-01031
`U.S. Patent No. 10,015,254
`
`Moreover, Dutta does not compensate for the deficiencies of McCown.
`
`Petitioners cite to Dutta generally as providing a POSITA with the
`
`understanding to modify the McCown to include a cache storing download
`
`information identifying files at a remote site. Petition, pp. 20-22. But where a
`
`Petition relies on a secondary reference to provide explicit disclosure missing
`
`from a primary reference, the portion of the secondary reference teaching must
`
`be pointed to with particularity. Mylan Pharmaceuticals Inc. v. Boehringer
`
`Ingelheim International GMBH, 2017 WL 1052517 *1 (PTAB 2017) citing to
`
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016):
`
`In