Trials@uspto.gov
`571-272-7822
`
` Paper 16
`
` Entered: December 4, 2020
`
`
`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.
`____________
`
`IPR2020-01031
`Patent 10,015,254 B1
`____________
`
`
`
`Before SALLY C. MEDLEY, LYNNE E. PETTIGREW, and SCOTT
`RAEVSKY, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
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`

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`IPR2020-01031
`Patent 10,015,254 B1
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`I. INTRODUCTION
`Microsoft Corporation and HP Inc. (collectively “Petitioner”) filed a
`Petition for inter partes review of claims 1–8 and 16–20 of U.S. Patent No.
`10,015,254 B1 (Ex. 1001, “the ’254 patent”). Paper 1 (“Pet.”). Synkloud
`Technologies, LLC (“Patent Owner”) filed a Preliminary Response. Paper
`13 (“Prelim. Resp.”). Institution of an inter partes review is authorized by
`statute when “the information presented in the petition . . . and any
`response . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the
`Preliminary Response, and the evidence of record, we determine that
`Petitioner has established a reasonable likelihood of prevailing with respect
`to the unpatentability of at least one claim of the ’254 patent. Accordingly,
`for the reasons that follow, we institute an inter partes review of claims 1–8
`and 16–20 of the ’254 patent.
`
`A. Related Matters
`The parties indicate that the ’254 patent is or has been the subject of,
`or relates to, several court proceedings. Pet. 3–4; Papers 6, 10. Petitioner
`also indicates that the ’254 patent is the subject of IPR2020-01032. Paper 4.
`Patent Owner indicates that the ’254 patent is the subject of a petition filed
`by Adobe Inc. in IPR2020-01235. Paper 10.
`
`B. The ’254 Patent
`The Specification of the ’254 patent describes how a wireless device
`may use external storage provided by a storage server. Ex. 1001, 1:21–23.
`The ’254 patent aims to address the lack of storage capacity faced by users
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`on their wireless devices by allowing a wireless device to use an external
`server for storing and retrieving data. Id. at 2:29–37, 5:4–32.
`In one embodiment, the storage server’s external storage may be
`partitioned by dividing it into multiple small volumes of storage space that
`may be exclusively assigned to users. Id. at 4:1–32. Partitioning may be
`done through a web-console on a console host by an administrator. Id. at
`4:5–8. Based on storage information received from the storage server’s
`support software, the administrator may use the web-console to partition
`each storage device and send storage partition information to the support
`software. Id. at 4:10–19. The support software may perform the actual
`partition by dividing the storage device into multiple small volumes, each of
`which may be exclusively assigned to and used by a user of a specific
`wireless device. Id. at 4:23–32.
`The ’254 patent also describes a “wireless out-band download”
`approach for downloading data from a remote location to an assigned
`storage volume. Id. at 2:9–11, 2:52–56, 5:4–32, Fig. 3.
`Figure 3 is illustrative and is reproduced below.
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`Figure 3 shows a “wireless out-band download” approach, which
`includes a sequence of steps for downloading data from a remote web site
`server 15 into an assigned storage volume 11 of external storage system 10
`on server 3. See id. at 2:9–11, 2:52–56, 5:4–32. First, the user of wireless
`device 1 may access remote web server site 15 via web-browser 8 to obtain
`information about the data for downloading (e.g., data name) via path (a).
`Id. at 5:10–15. Second, other software modules 9 of wireless device 1 may
`obtain the download information for the data, which becomes available in
`cached web-pages on wireless device 1. Id. at 5:16–19. Third, the other
`software modules 9 of wireless device 1 may send obtained download
`information to other service modules 7 of storage server 3 via path (b). Id. at
`5:20–22. Fourth, other service modules 7 may send a web download request
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`to remote web site server 15 via path (c) based on the obtained download
`information and receive the downloaded data streams from remote web site
`server 15. Id. at 5:23–28. Lastly, other service modules 7 may write (i.e.,
`store) the data streams to assigned storage volume 11 in server 3 for wireless
`device 1. Id. at 5:29–32.
`The ’254 patent additionally describes retrieving data from an
`assigned storage volume. Id. at 5:33–43. In one embodiment, the user may
`use the wireless device’s web-browser (with embedded video or music
`functionality) to retrieve and play multimedia data files already stored in the
`assigned storage volume on the server. Id. at 5:35–39. In another
`embodiment, the wireless device may retrieve data from the file system of
`the assigned storage volume on the server. Id. at 5:40–43.
`
`C. Illustrative Claim
`Petitioner challenges claims 1–8 and 16–20 of the ’254 patent.
`Claims 1 and 16 are independent claims, and claims 2–8 and 17–20 depend
`therefrom, respectively. Claim 1 is reproduced below.
`1. A wireless device accessing a remote storage space, the
`wireless device comprising:
`at least one cache storage for caching data received from the
`Internet, and
`one computer-readable storage device comprising program
`instructions which, when executed by the wireless device,
`configure the wireless device accessing the remote storage
`space, wherein the program instructions comprise:
`program instructions for the wireless device establishing a
`communication link for accessing the remote storage
`space served by a first server;
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`program instructions for the wireless device displaying the
`remote storage space upon receiving information of the
`remote storage space from the first server; and
`program instructions for the wireless device coupling with the
`first server to carry out a requested operation for accessing
`the remote storage space in response to a user, through the
`remote storage space displayed on the wireless device,
`performing the operation,
`wherein the operation being carried out for accessing the
`remote storage space comprises from the wireless device
`storing data therein or retrieving data therefrom, the
`storing data comprising to download a file from a second
`server across a network into the remote storage space
`through utilizing information for the file cached in the
`cache storage in the wireless device.
`Ex. 1001, 5:64–6:24.
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–8 and 16–20 are unpatentable based on
`the following grounds (Pet. 4):
`
`Claim(s) Challenged
`1–5, 8, 16–18
`6, 7, 19, 20
`
`35 U.S.C §
`103(a)1
`103(a)
`
`Reference(s)/Basis
`McCown,2 Dutta3
`McCown, Dutta, Coates4
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’254
`patent has an effective filing date before the effective date of the applicable
`AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and
`103.
`2 WO 01/67233 A2, published Sept. 13, 2001 (Ex. 1005, “McCown”).
`3 U.S. Pat. Appl. Pub. No. US 2002/0078102 A1, published June 20, 2002
`(Ex. 1006, “Dutta”).
`4 U.S. Pat. No. 7,266,555 B1, issued Sept. 4, 2007 (Ex. 1007, “Coates”).
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`II. DISCUSSION
`
`A. Multiple Petitions (35 U.S.C. § 314(a))
`On the same day, Petitioner filed two petitions challenging different
`
`claims of the ’254 patent. In the Petition before us, Petitioner challenges
`independent claims 1 and 16, along with dependent claims 2–8 and 17–20.
`In IPR2020-01032, Petitioner challenges independent claim 9 and dependent
`claims 10–15. IPR2020-01032, Paper 1. In accordance with the
`Consolidated Trial Practice Guide,5 Petitioner filed a separate paper,
`identifying a ranking of its petitions and explaining the differences between
`the petitions. Paper 4 (“Explanation”).
`Petitioner argues that “[t]wo petitions were required because the
`analysis of all 20 claims of the 254 Patent could not reasonably fit within the
`word limit for a single petition.” Id. at 1. Petitioner further explains that it
`has challenged all 20 claims of the ’254 patent because it did not know, at
`the time of filing, which claims would be asserted against it in district court.
`Id. at 2. Petitioner argues that “[t]he Board has found that a Petitioner may
`file multiple petitions against a single patent when, for example, the asserted
`claims in the litigation are uncertain and where petitions rely on the same
`prior art.” Id. at 1 (citing Microsoft Corporation v. IPA Techs. Inc.,
`IPR2019-00810, Paper 12, 11–16 (Oct. 16, 2019)).
`Petitioner further asserts that it decided to file two petitions given: the
`length of the claims; Petitioner’s assessment that it could not reasonably fit
`
`
`5 Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov.
`2019), https://www.uspto.gov/TrialPracticeGuideConsolidated, 59–61
`(explaining that the Board may exercise discretion under 35 U.S.C. § 314(a)
`to deny a petition(s) if it determines that more than one petition challenging
`claims of the same patent is not warranted).
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`its analysis in one petition; and distinctions between the scope of claim 9 and
`the scope of claims 1 and 16. Id. at 2.
`Patent Owner did not file a response to Petitioner’s Explanation or
`make any arguments in its Preliminary Response regarding the propriety of
`Petitioner having filed two petitions challenging the ’254 patent. Thus,
`Patent Owner has not assisted to narrow the scope of the issues in dispute.
`See Consolidated Trial Practice Guide, 61 (explaining that the patent owner
`should explain whether the differences identified by the petitioner are
`directed to an issue that is not material or not in dispute and clearly proffer
`any necessary stipulations in support).
`Petitioner’s showing for two petitions is reasonable. In particular, it is
`reasonable to conclude that the length of the claims, and the distinct scope of
`claim 9 and the scope of claims 1 and 16, warranted the filing of two
`petitions. For instance, Petitioner’s showing for claims 1 and 16 occupies
`approximately thirty-four pages of the Petition. Pet. 16–44, 57–61.
`Petitioner’s showing for claim 9, which is quite different from claims 1 and
`16,6 occupies approximately thirty pages of the second petition. IPR2020-
`01032, Paper 1, 19–46. Some of the dependent claims are lengthy or
`complex, necessitating several pages of explanation. See, e.g., Pet. 44–57,
`61–74; IPR2020-01032, Paper 1, 46–60, 69–74. Based on the facts before
`us, we decline to exercise our discretion to deny the petition under 35 U.S.C.
`§ 314(a).
`
`
`6 Claim 9 is directed to a “server,” while claims 1 and 16 are directed to a
`“wireless device” and “method for a wireless device,” respectively.
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`A. Claim Construction
`In this inter partes review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2019). The claim
`construction standard includes construing claims in accordance with the
`ordinary and customary meaning of such claims as understood by one of
`ordinary skill in the art and the prosecution history pertaining to the patent.
`See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en
`banc).
`
`“cache storage”
`Claim 1 recites “cache storage for caching data received from the
`Internet.” Independent claim 16 recites “cache storage.” Petitioner contends
`that the meaning of “cache storage [for caching data received from the
`Internet]” should be construed to mean “storage [for data received from the
`Internet] that is more readily accessible by the user or user application than
`the original [Internet] storage location.” Pet. 7–9 (citing Ex. 1003 ¶¶ 61–
`68). Petitioner explains that its proposed construction reflects the ordinary
`meaning of the term in the context of the ’254 patent, which “discloses that
`the user accesses a web page via a web browser ‘to obtain information for
`the downloading’ . . . [which] can be an ‘IP address of the remote web site
`and the data name for the downloading.’” Id. at 7 (citing Ex. 1001, 5:10–
`17). Petitioner further explains that the information becomes available in the
`cached web-pages on the wireless device after the web-browser accesses the
`web site. Id. (citing Ex. 1001, 5:17–19, Fig. 3; Ex. 1003 ¶¶ 62–64).
`According to Petitioner,
`the download information is stored on the wireless device in
`some convenient memory location of that device so that it can
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`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.
`Id. at 8 (citing Ex. 1010; Ex. 1003 ¶ 65).
`Although Patent Owner states that it “does not agree with Petitioner’s
`proposed claim constructions,” Patent Owner does not propose a competing
`construction for “cache storage” at this time. Prelim. Resp. 10. At this
`juncture of the proceeding and based on the current record, we find
`Petitioner’s contentions on this term sufficiently persuasive. Accordingly,
`we adopt Petitioner’s proposed construction for “cache storage [for caching
`data received from the Internet]” to mean “storage [for data received from
`the Internet] that is more readily accessible by the user or user application
`than the original [Internet] storage location.”
`“utilizing information”
`Claim 1 recites “utilizing information for the file cached in the cache
`
`storage in the wireless device.” Independent claim 16 recites a similar
`phrase. Petitioner contends the phrase means “using information stored in
`the cache storage of the wireless device to download a file from a remote
`server.” Pet. 9 (citing Ex. 1003 ¶ 69). According to Petitioner, “[t]he ‘cache
`storage’ is claimed as part of the wireless device, . . . and the file being
`downloaded is transferred directly from the remote site to the assigned
`storage location.” Id. at 10 (citing Ex. 1001, 5:23–28). Petitioner further
`contends that “it is the download information that gets stored in the cache of
`the wireless device.” Id. (citing Ex. 1001, 5:16–19; Ex. 1003 ¶ 72).
`
`Although Patent Owner states that it “does not agree with Petitioner’s
`proposed claim constructions,” Patent Owner does not propose a competing
`construction for “utilizing information for the file cached in the cache
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`storage in the wireless device” at this time. Prelim. Resp. 10. At this
`juncture of the proceeding and based on the current record, we adopt
`Petitioner’s construction of “utilizing information for the file cached in the
`cache storage in the wireless device” to mean “using information stored in
`the cache storage of the wireless device to download a file from a remote
`server” to clarify that it is the download information that is stored in cache
`storage, not the file itself.
`For purposes of this Decision, we need not expressly construe any
`other claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed
`that are in controversy, and only to the extent necessary to resolve the
`controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.
`in the context of an inter partes review).
`
`B. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter 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. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). 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 ordinary skill in the art;7 and (4) when in evidence, objective
`
`
`7 Relying on the testimony of Dr. Henry Houh, Petitioner offers an
`assessment as to the level of ordinary skill in the art and the general
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`indicia of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`C. Asserted Obviousness of Claims 1–5, 8, and 16–18 over
`McCown and Dutta
`Petitioner contends claims 1–5, 8, and 16–18 are unpatentable under
`35 U.S.C. § 103(a) as obvious over McCown and Dutta. Pet. 16–62. In
`support of its showing, Petitioner relies upon the declaration of Dr. Henry
`Houh. Id. (citing Ex. 1003). In support of its Preliminary Response, Patent
`Owner relies upon the declaration of Mr. Zaydoon Jawadi (Ex. 2001).
`
`1. McCown
`McCown describes a method for downloading files across a network
`from a remote site into a client’s storage space account within a storage site.
`Ex. 1005, 3:26–28, 8:12–13. The method may include the use of a user site,
`a remote site that has a web server, and a storage site. See, e.g., id. at 3:26–
`4:7, 7:17–25.
`The user site may be a machine capable of digital network
`communications with input and output devices for sending and receiving
`
`
`knowledge of a person of ordinary skill at the time of the ’254 patent.
`Pet. 4–5 (citing Ex. 1003 ¶ 47). For example, Dr. Houh states that a person
`having ordinary skill in the art “would have been someone with a bachelor’s
`degree in electrical, computer engineering, computer science, or related field
`with two years of experience in a relevant technical field, such as remote
`storage systems with related experience in wireless technologies and
`wireless devices.” Ex. 1003 ¶ 47. Patent Owner does not propose an
`alternative assessment. See generally Prelim. Resp.; Ex. 2001 ¶ 21. To the
`extent necessary, and for purposes of this Decision, we accept the
`assessment offered by Petitioner as it is consistent with the ’254 patent and
`the asserted prior art.
`
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`information, and a browser for Internet connectivity. Id. at 7:27–8:1, 8:5–6.
`Examples of a user site include a personal computer, laptop, palmtop, or a
`cell phone. Id. at 7:27–29.
`The remote site may be a web site on the Internet with one or more
`files available for downloading. Id. at 6:17–18. The remote site may
`include a storage medium for storing files as well as file lists used to identify
`each file, for example, by URL. Id. at 6:23, 7:8–14. The remote site may
`also include a web server for interfacing the remote storage medium to the
`Internet, and the web server may be capable of sending and receiving
`information over the Internet, the information sent including webpages, file
`lists, and files. Id. at 7:17–25.
`The storage site may include a storage medium with storage space
`accounts implemented thereon for clients to access on the Internet. Id. at
`8:11–13, 8:17–18. To access its storage space account, a client must
`provide a user identification and password, which may be authenticated by
`an account manager. Id. at 8:27–9:6. The storage space account may appear
`as a mounted drive to the user site and client. Id. at 9:14–16. The storage
`site may also include a web server for sending and receiving information
`over the Internet and may communicate with the remote site’s web server.
`Id. at 9:9–13.
`In one embodiment, the user site may generate a request for a web
`page containing a file list and send the request to the remote site. Id. at
`10:19–23. Having received the request, the remote site may send the
`requested web page to the user site. Id. at 10:24–25. The user site may then
`display the file list to the client through an output device. Id. at 10:25–29.
`Using an input device, the client may select files from the file list for
`downloading. Id. at 11:4–7. The user site’s software application may accept
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`and use the URL of a selected file to generate a data request and send it over
`the Internet to the storage site’s software application. Id. at 11:17–22. The
`data request may be used to generate a download request, which is sent to
`the storage site’s web server. Id. at 12:23–26. The web server may then
`send the download request to the remote site, which may download the files
`identified by the URLs to the storage site. Id. at 12:26–29. The storage site
`may receive the downloaded files and store them into the client’s storage
`space account. Id. at 12:29–13:2.
`
`2. Dutta
`Dutta describes a method and system for customizing the storage of
`captured Web content. Ex. 1006 ¶ 10.
`A client may receive a Web page displayed by a browser application
`in response to a user’s request to browse the Web page. Id. The user may
`use a control within a toolbar of the browser application to capture content
`being displayed, and the captured data and user parameters may be pushed
`over a wired or wireless network to a server for customized processing. Id.
`¶¶ 10, 21, 35, 37.
`The server may receive the pushed information from the client and
`automatically stores captured data. Id. ¶ 11. In addition, the server may
`automatically modify a user Web page or file that was previously stored in
`the server’s storage, for example, by inserting a hyperlink to the captured
`data. Id. ¶¶ 11, 53. Such a modification may be accomplished by executing
`a server-side script (e.g., a user-specified script contained in the information
`the server received from the client). Id. ¶¶ 11, 44, 52.
`Dutta also describes that the client may maintain a local storage for
`use by the browser and other applications. Id. ¶ 29. The browser may store
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`a bookmark file, a browser cache, and other types of files such as user-saved
`Web pages. Id. A user of the client may also register to create a personal
`account for gaining authorization and access to the server and its services.
`Id. ¶ 38. After the user has been registered, the user may be allocated a
`certain amount of online storage space within the server’s storage for storing
`various types of data. Id.
`
`3. Discussion
`Claim 1 recites “[a] wireless device accessing a remote storage
`space.” Ex. 1001, 5:64–65. Petitioner contends McCown teaches a wireless
`device with its disclosure of a user site through which a user may access a
`remote site, wherein the user site may be a palmtop device or an enhanced
`cellular phone. Pet. 16–17 (citing Ex. 1005, 7:26–29), see also id. at 17
`(citing Ex. 1003 ¶¶ 122–124; Ex. 1005 at 2:13–16, 9:14–17, 9:23–26).
`Patent Owner does not contest Petitioner’s showing as to the above
`limitation. See generally Prelim. Resp.
`Claim 1 further recites “the wireless device comprising . . . at least
`one cache storage for caching data received from the Internet.” Ex. 1001,
`5:64–67. Petitioner contends that McCown, alone or in view of Dutta,
`satisfies “at least one cache storage for caching data received from the
`Internet.” Pet. 18–24. In particular, Petitioner argues that McCown
`discloses the use of a browser, such as Microsoft Internet Explorer or
`Netscape Communicator, and that each of these browsers “would have been
`understood to have included ‘at least one cache storage for caching data
`received from the Internet.’” Id. at 18 (citing Ex. 1003 ¶ 127; Ex. 1005, 8:5–
`10; Ex. 1024, 7:8–10 (“Both Netscape Navigator and Microsoft Internet
`Explorer have cache memories”); Ex. 1025, 3:3–8). McCown describes that
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`user site 130 can be a cellular telephone or palmtop device and that user site
`130 includes a browser 136. Ex. 1005, 7:26–29, 8:5–10, 9:22–23, Fig. 1.
`Petitioner alternatively argues that
`[t]o the extent one might argue that McCown does not
`sufficiently disclose ‘at least one cache storage for caching
`data received from the Internet,’ . . . . a Skilled Artisan would
`understand that the use of a browser cache in wireless devices
`was well-known in the art by 2003 and would have been
`motivated to use one in the browser of McCown in order to
`provide for the faster retrieval of information.
`Pet. 19–20 (citing Ex. 1003 ¶¶ 128–130; Ex. 1005, 9:22–23, Fig. 1; Ex. 1010
`¶ 2; Ex. 1011, 1:66–2:1). For example, Exhibit 1010 explains that
`“[c]aching is a process that web browsers typically use that provides for
`faster retrieval of web page content.” Ex. 1010 ¶ 2. The reference goes on
`to explain how a visited web page is cached locally, and that later when the
`same web page is accessed, content for the web page is retrieved from
`memory rather than from over the network, improving download time and
`reducing bandwidth usage. Id. Additionally, the reference explains that
`browser caching for wireless devices was known. Id. ¶¶ 4–5, 14.
`Petitioner alternatively relies on Dutta for teaching a browser cache in
`local storage, i.e., “at least one cache storage for caching data received from
`the Internet.” Pet. 20–21 (citing Ex. 1006 ¶ 29, Fig. 3; Ex. 1003 ¶¶ 132–
`133; Ex. 1008, 114; Ex. 1030, 72). Petitioner articulates the following
`rationale for combining McCown and Dutta:
`[t]he combination would have been obvious because it would
`have been only the arrangement of old elements (the remote
`storage system of McCown and the browser cache technique of
`Dutta) with each performing the same function it had been
`known to perform (remote storage of data objects on a storage
`space; cache memory for faster access to frequently used data
`objects, such as files to be stored) and yielding no more than
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`one would expect from such an arrangement (a combined,
`remote storage method with cache memory on a wireless device
`for quick access to data).
`Id. at 22–23 (citing Ex. 1003 ¶ 137).8 Petitioner further asserts that “a
`Skilled Artisan would have been motivated to make such a combination in
`order to provide the user with a faster and more convenient storage for the
`user site application program data.” Id. at 23–24 (citing Ex. 1003 ¶ 139; Ex.
`1006 ¶ 29; Ex. 1010 ¶¶ 2–3; Ex. 1013, 2:13–15).
`Patent Owner argues that neither McCown nor Dutta discloses
`“storing download information in cache storage or retrieving download
`information from cache storage.” Prelim. Resp. 19–21. Patent Owner,
`however, does not address Petitioner’s contention that “a Skilled Artisan
`would understand that the use of a browser cache in wireless devices was
`well-known in the art by 2003 and would have been motivated to use one in
`the browser of McCown in order to provide for the faster retrieval of
`information.” Pet. 19–20 (citing Ex. 1003 ¶¶ 128–130; Ex. 1005, 9:22–23,
`Fig. 1; Ex. 1010 ¶ 2; Ex. 1011, 1:66–2:1). Moreover, we disagree that Dutta
`does not teach storing download information in cache storage. Dutta
`explicitly describes a “browser cache.” Ex. 1006 ¶ 29. Patent Owner does
`not address Petitioner’s assertion that “browser cache” would be understood
`as storing information so that it is more readily accessible by the user or user
`application than the original web server. Pet. 21 (citing Ex. 1030, 72;
`Ex. 1008, 114; Ex. 1003 ¶ 133). Patent Owner acknowledges that Dutta
`
`8 See also id. at 23 (explaining that “[t]he use of a browser cache was
`well-known in the prior art” and that “[a] Skilled Artisan could therefore
`have readily made this combination without undue effort or
`experimentation”); Ex. 1003 ¶ 138; Ex. 1010 ¶ 2; Ex. 1011, 1:66–2:1; Ex.
`1012, 14:30–33.
`
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`Patent 10,015,254 B1
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`describes a “browser cache,” but argues that “Dutta does not integrate the
`cache in the Dutta invention; it does not disclose how the data in its browser
`cache may be used for any purpose, function, or utility in the Dutta system.”
`Prelim. Resp. 21 (quoting Ex. 2001 ¶ 71). Such an argument, however, is
`not responsive to Petitioner’s assertion, supported by record evidence,
`regarding how a person having ordinary skill in the art would have
`understood “browser cache.” Thus, at this juncture of the proceeding, Patent
`Owner’s argument that neither McCown nor Dutta teaches “the wireless
`device comprising . . . at least one cache storage for caching data received
`from the Internet” does not undermine Petitioner’s persuasive showing.
`
`Claim 1 further recites a wireless device comprising “one computer-
`readable storage device comprising program instructions which, when
`executed by the wireless device, configure the wireless device accessing the
`remote storage space.” Ex. 1001, 6:1–4. Petitioner contends that McCown
`describes a “storage site software application and a user site software
`application that may be provided to the storage site and the user site
`respectively as computer programs recorded on information storage
`media.” Pet. 25 (citing Ex. 1005, 9:23–26). Petitioner further explains that
`McCown gives examples of information storage media as “magnetic disk,
`magnetic tape, optical disk, non-volatile memory, or other similar
`information storage media.” Id. (citing Ex. 1005, 3:26–30; Ex. 1003 ¶ 142).
`Petitioner contends that a “Skilled Artisan would understand ‘computer
`programs recorded on information storage media’ at the user site and storage
`site to encompass ‘one computer-readable storage device’ at the user site
`and storage site, respectively.” Id. (citing Ex. 1030, 450; Ex. 1009, 8:5–6;
`Ex. 1003 ¶¶ 143–144).
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`Petitioner also accounts for the “program instructions” of the above
`phrase and contends that McCown describes program instructions, or “it
`would have been obvious to implement” McCown’s remote storage
`operations by including program instructions. Id. at 25–27 (citing Ex. 1005,
`3:26–27, 5:1–6, 9:14–30; Ex. 1026, 1:40–46; Ex. 1030, 450; Ex. 1003
`¶¶ 145–146). For the “configure the wireless device accessing the remote
`storage space” limitation, Petitioner contends that McCown describes that
`the storage site software application and the user site software application
`are capable of communicating via the Internet with a remote storage server,
`which is part of the storage site. Id. at 28 (citing Ex. 1005, 10:1–2).
`Petitioner further contends that the storage site software application
`communicates with the account manager to send and receive files from the
`client’s storage space account. Id. (citing Ex. 1005, 10:2–4). According to
`Petitioner, McCown describes that the user site software application
`(“program instructions”) communicates with the operating system of the
`user device to emulate a hard drive (“which, when executed by the wireless
`device, configure the wireless device accessing the storage space”). Id.
`(citing Ex. 1005, 10:4–6). Petitioner asserts that McCown’s user site
`software application accepts URLs of the selected downloads and uses the
`URLs to generate a data request that is sent across the Internet to the storage
`site. Id. (citing Ex. 1005, 11:17–21; Ex. 1003 ¶ 148). Patent Owner does
`not contest Petitioner’s showing as to the above limitation. See generally
`Prelim. Resp.
`Claim 1 further recites the wireless device comprising “program
`instructions for the wireless device