UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`MICROSOFT CORPORATION and HP INC.,
`
`Petitioners,
`
`v.
`
`SYNKLOUD TECHNOLOGIES, LLC,
`
`Patent Owner.
`
`____________
`
`
`
`Cases IPR2020-01031 and IPR2020-01032
`
`U.S. Patent No. 10,015,254
`
`____________
`
`
`
`SECOND DECLARATION OF ZAYDOON (“JAY”) JAWADI
`IN SUPPORT OF PATENT OWNER’S RESPONSE
`
`IPR2020-01031 and IPR2020-01032
`Exhibit 2003
`
`
`
`
`i
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`
`I. BACKGROUND AND QUALIFICATIONS ..................................................... 1
`
`II. MATERIALS REVIEWED ................................................................................ 6
`
`III. LEGAL UNDERSTANDING ............................................................................. 7
`
`IV. CLAIM CONSTRUCTION ................................................................................ 7
`
`V. OPINIONS ........................................................................................................... 7
`
`A.
`
`Independent Claims 1, 9, and 16 Are Not Obvious in View of McCown and Dutta ......... 8
`
`a. Claims 1, 9, and 16: Utilizing Information for the File Cached in Cache Storage in the
`Wireless Device ...................................................................................................................... 9
`
`i. Responses to PTAB Decision Regarding Utilizing Information for the File Cached in
`Cache Storage in the Wireless Device .............................................................................. 10
`
`Summary of Why McCown in View of Dutta Does Not Disclose Utilizing
`ii.
`Download Information for the File Cached in Cache Storage in the Wireless Device .... 23
`
`Petitioners’ Interpretation of Utilizing Download Information for the File Cached
`iii.
`in Cache Storage in the Wireless Device in the ’254 Patent ............................................. 27
`
`Steps of Utilizing Download Information for the File Cached in Cache Storage in
`iv.
`the Wireless Device in the ’254 Patent ............................................................................. 29
`
`v. McCown Does Not Disclose, Suggest, or Imply Storing Download Information in
`Cache Storage or Retrieving Download Information from Cache Storage ...................... 30
`
`vi. Dutta Does Not Disclose How Any Data in Its Cache Is Used .............................. 30
`
`vii. Dutta Does Not Disclose, Suggest, or Imply Storing Download Information in
`Cache Storage or Retrieving Download Information from Cache Storage ...................... 33
`
`The Combination of McCown and Dutta Does Not Disclose, Suggest, or Imply
`viii.
`Storing Download Information in Cache Storage or Retrieving Download Information
`from Cache Storage ........................................................................................................... 34
`
`Petitioners Rely Solely on Expert’s Opinion That It Would Have Been Obvious to
`ix.
`Store the Download Information in Cache and to Retrieve the Download Information
`from Cache ........................................................................................................................ 34
`
`Petitioners’ Readily Accessible Theory for the Motivation for Storing the
`x.
`Download Information in Cache ....................................................................................... 36
`
`xi. McCown Contradicts Petitioners’ Theory for the Motivation for Storing the
`Download Information in Cache ....................................................................................... 36
`
`xii. Petitioners’ Description of McCown’s Steps Contradicts Petitioners’ Theory for the
`Motivation for Storing the Download Information in Cache ............................................ 39
`
`xiii. McCown Stores the Files in the Storage Site, Further Negating the Need to Store
`the Download Information in Cache ................................................................................. 43
`
`
`
`ii
`
`

`

`’254 Patent vs. McCown’s Steps of Utilizing Download Information for the File
`xiv.
`Cached in Cache Storage in the Wireless Device ............................................................. 45
`
`xv. Difference between Retrieving from Cache and Retrieving from Displayed Web
`Page 48
`
`xvi. Download Information for the File (Singular) ........................................................ 50
`
`xvii. Dutta Does Not Cure McCown’s Deficiencies in Storing Download Information
`in Cache and Retrieving Download Information from Cache .......................................... 51
`
`Petitioners’ Second Purported Reason (Re-Opening the Webpage) to Store
`xviii.
`Download Information in Cache ....................................................................................... 52
`
`xix. Storing McCown’s URLs in Cache Is Unnecessary, Wasteful, Counterintuitive, and
`Not Obvious ...................................................................................................................... 55
`
`xx. Coates Does Not Cure McCown’s and Dutta’s Deficiencies in Storing Download
`Information in Cache and Retrieving Download Information from Cache ...................... 56
`
`xxi. Utilizing Download Information Stored in Cache: Independent Claims 1, 9, and 16
`Are Not Obvious in View of McCown and Dutta ............................................................ 56
`
`Dependent Claims 2, 3, 10, and 17: Download Information Cached in the Wireless
`b.
`Device ................................................................................................................................... 57
`
`B. Dependent Claims 2-8, 10-15, 17-20 Are Not Obvious in View of McCown and Dutta
`and Are Not Obvious in View of McCown, Dutta, and Coates ................................................ 58
`
`C. Dependent Claim 13 Is Not Obvious in View of McCown, Is Not Obvious in View of
`McCown and Dutta, and Is Not Obvious in View of McCown, Dutta, and Coates ................. 58
`
`VI. CONCLUSION .................................................................................................. 65
`
`
`
`
`
`iii
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`I, Zaydoon (“Jay”) Jawadi, declare as follows:
`
`I.
`
`BACKGROUND AND QUALIFICATIONS
`
`1. My name is Zaydoon (“Jay”) Jawadi.
`
`2.
`
`I am an independent expert and consultant. I have been retained as an
`
`expert witness on behalf of SynKloud Technologies, LLC (“SynKloud”) for the
`
`above-captioned Inter Partes Review (IPR) regarding U.S. Patent No. 10,015,254
`
`(“’254 Patent”).
`
`3.
`
`As shown in my curriculum vitae (attached as Exhibit 2002), I have a
`
`Bachelor of Science in Electrical Engineering from Mosul University, a Master of
`
`Science in Computer Science from Columbia University with a Citation for
`
`Outstanding Achievement – Dean’s Honor Student, and over 40 years of
`
`experience in software and product design and development, engineering,
`
`consulting, and management in the fields of data storage, Internet, software, data
`
`networking, computing systems, and telecommunication.
`
`4.
`
`I have worked with and possess expertise in numerous technologies,
`
`including data storage
`
`technologies and
`
`interfaces, Internet and website
`
`technologies, databases, data networking
`
`technologies and protocols, and
`
`telephony.
`
`5.
`
`From 1978 to 1980, I worked as a telecommunication/electrical
`
`engineer for Emirtel (formerly Cable and Wireless, now Etisalat). During my
`
`
`
`1
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`

`

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

`

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

`

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

`

`to thousands of professional engineers and academic students in the United States,
`
`Europe, and Asia.
`
`15.
`
`In my work as an expert and consultant, I have examined, analyzed,
`
`and inspected numerous data storage systems, computer systems, software
`
`products, cell phone applications, tens of millions of lines of source code, and the
`
`frontend and backend software of more than 100 websites, including massive,
`
`highly-trafficked consumer and business websites.
`
`16. Through my education, industry and expert experience, and industry
`
`and expert knowledge, I have gained a detailed understanding of the technologies
`
`at issue in this case.
`
`17. My additional industry experience is in my curriculum vitae.
`
`18. My expert litigation support cases, including cases in which I have
`
`testified during the last four years as an expert, can be found in my curriculum
`
`vitae, which is Exhibit 2002.
`
`19. As such, I am qualified to provide opinions regarding the state of the
`
`art at the time the ’254 Patent was filed (which I understand to be no later than
`
`December 21, 2015, but claiming a priority date of December 4, 2003) and how a
`
`person of ordinary skill in the art (“POSITA”) at that time would have interpreted
`
`and understood the ’254 Patent.
`
`
`
`5
`
`

`

`20.
`
`I am being compensated for my work and any travel expenses in
`
`connection with
`
`this proceeding at my standard consulting rates.
`
` My
`
`compensation is in no way dependent on or contingent on the outcome of my
`
`analysis or opinions rendered in this proceeding and is in no way dependent on or
`
`contingent on the results of these or any other proceedings relating to the above-
`
`captioned patent.
`
`21. Although I am not rendering an opinion about the level of skill of a
`
`POSITA proffered by Petitioners, based on my professional experience, I have an
`
`understanding of the capabilities of a POSITA (as such a POSITA is defined by
`
`Petitioners). Over the course of my career, I have supervised and directed many
`
`such persons. Additionally, I myself, at the time the ’254 Patent was filed and at
`
`its priority date, qualified as at least a POSITA.
`
`II. MATERIALS REVIEWED
`
`22.
`
`In preparing this declaration, I reviewed the ’254 Patent, including its
`
`claims in view of its specification, the prosecution history of the ’254 Patent,
`
`various prior art and technical references from the time of the invention, and the
`
`IPR2020-01031 Petition (“1031 Petition”) and IPR2020-01032 Petition (“1032
`
`Petition”) and their exhibits (Ex. 1001 – Ex. 1036).
`
`
`
`6
`
`

`

`III. LEGAL UNDERSTANDING
`
`23.
`
`I have worked with counsel in the preparation of this Declaration.
`
`Nevertheless, the opinions, statements, and conclusions offered in this Declaration
`
`are purely my own and were neither suggested nor indicated in any way by counsel
`
`or anyone other than myself. I confirmed with counsel my understanding that an
`
`obviousness determination requires an analysis of the scope and content of the
`
`prior art, the differences between the prior art and the claims, the level of ordinary
`
`skill in the pertinent art at the time of the invention of the challenged patent, and an
`
`evaluation of any relevant secondary considerations.
`
`IV. CLAIM CONSTRUCTION
`
`24.
`
`I reviewed the comments in the two Petitions and Petitioners’ expert’s
`
`declaration (Ex. 1003) pertaining to claim “construction of the claims” of the ’254
`
`Patent. My understanding is simply that the claims should be construed in
`
`accordance with their plain and ordinary meaning in the context of the
`
`specification of the ’254 patent and its file history.
`
`V. OPINIONS
`
`25.
`
`In the 1031 IPR and the 1032 IPR, Petitioners present two grounds
`
`under which claims of the ’254 Patent are purportedly invalid; in particular,
`
`Petitioners contend that Claims 1-5, 8-13, 15-18 are obvious over McCown (Ex.
`
`1005) in view of Dutta (Ex. 1006) and contend that Claims 6-7, 9-15, and 19-20
`
`
`
`7
`
`

`

`are unpatentable over McCown (Ex. 1005) in view of Dutta (Ex. 1005) and Coates
`
`(Ex. 1007). 1031 Petition, 4; 1032 Petition, 4.
`
`26.
`
`In the 1031 IPR, Petitioners present two grounds under which claims
`
`of the ’254 Patent are purportedly invalid; in particular, Petitioners contend that
`
`Claims 1-5, 8, 16-18 are obvious over McCown (Ex. 1005) in view of Dutta (Ex.
`
`1006) and contend that Claims 6-7 and 19-20 are unpatentable over McCown (Ex.
`
`1005) in view of Dutta (Ex. 1005) and Coates (Ex. 1007). 1031 Petition, 4.
`
`27.
`
`In the 1032 IPR, Petitioners present two grounds under which claims
`
`of the ’254 Patent are purportedly invalid; in particular, Petitioners contend that
`
`Claims 9-13 and 15 are obvious over McCown (Ex. 1005) in view of Dutta (Ex.
`
`1006) and contend that Claims 9-15 are unpatentable over McCown (Ex. 1005) in
`
`view of Dutta (Ex. 1005) and Coates (Ex. 1007). 1032 Petition, 4.
`
`28.
`
`In my opinion, as described below (§§ V.A-V.B), Petitioners have not
`
`established a reasonable basis to conclude that the claims of the ’254 Patent are
`
`obvious.
`
`A.
`
`Independent Claims 1, 9, and 16 Are Not Obvious in View of
`McCown and Dutta
`
`29. Petitioners contend that independent Claims 1, 9, and 16 are obvious
`
`over McCown (Ex. 1005) in view of Dutta (Ex. 1006). 1031 Petition, 4; 1032
`
`Petition, 4. I disagree for the reasons outlined below (§ V.A.a).
`
`
`
`8
`
`

`

`a. Claims 1, 9, and 16: Utilizing Information for the File Cached
`in Cache Storage in the Wireless Device
`
`30.
`
`Independent Claims 1, 9, and 16 of the ’254 Patent recite utilizing
`
`information for the file cached in [a/the] cache storage in the [first] wireless
`
`device.
`
`“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, . . . utilizing information for the file cached
`in the cache storage in the wireless device.” ’254, Claim 1
`
`“9. A server for delivering storage service, comprising: . . . utilizing
`information for the file cached in a cache storage in the first wireless
`device.” Id., Claim 9
`
`“16. A method for a wireless device accessing a remote storage space,
`the method comprising actions performed by the wireless device,
`including: . . . utilizing information for the file cached in a cache
`storage in the wireless device.” Id., Claim 16
`
`31. For clarity’s sake, in this declaration, I will refer to “information” in
`
`the context of utilizing information for the file cached in cache storage in the
`
`wireless device as “download information.”
`
`32. For simplicity’s and clarity’s sake, in this declaration, I may refer to
`
`“utilizing information for the file cached in [a/the] cache storage in the [first]
`
`wireless device” as “utilizing download information for the file cached in cache
`
`storage in the wireless device.”
`
`
`
`9
`
`

`

`i. Responses to PTAB Decision Regarding Utilizing
`Information for the File Cached in Cache Storage in the
`Wireless Device
`
`33.
`
`I respectfully disagree with the conclusions in the PTAB’s Decision
`
`regarding the limitation of utilizing information for the file cached in cache storage
`
`in the wireless device.
`
`McCown’s Web Page Display vs. ’254 Cache Storage
`
`34.
`
`I respectfully point out that the Decision appears to overlook the fact
`
`that McCown teaches obtaining the URL(s) (download information) from the
`
`wireless device web page display, which is significantly different from and
`
`opposite to obtaining the download information from the wireless device cache
`
`storage, as recited in the limitations of the independent claims of the ’254 Patent.
`
`35.
`
`I elaborate further on this point in later sections (§§ V.A.a.xi-
`
`V.A.a.xii, V.A.a.xiv-V.A.a.xv, V.A.a.xvii) of this declaration.
`
`Dutta’s Conventional Browser Cache vs. ’254 Non-Conventional Cache
`
`Storage Usage
`
`36.
`
`I respectfully point out that the Decision appears to overlook the
`
`difference between the conventional browser cache in the combination of McCown
`
`and Dutta versus the non-conventional use of wireless device cache storage in the
`
`’254 Patent.
`
`
`
`10
`
`

`

`37. Dutta discloses a generic browser cache. Dutta does not disclose or
`
`imply download information, does not disclose or imply any purpose for the Dutta
`
`browser cache, and does not disclose or imply storing download information in the
`
`Dutta browser cache.
`
`38. McCown does not disclose or imply cache and does not disclose or
`
`imply storing download information in cache.
`
`39. A POSITA would not have been motivated to combine McCown with
`
`Dutta and would not have been motivated to store McCown’s download
`
`information in cache (wether Dutta’s cache or other cache) at the wireless device,
`
`because McCown retrieves all the download information at once and sends it to the
`
`storage server.
`
`40.
`
`In other words, Dutta discloses a generic, conventional browser cache,
`
`and the combination of McCown and Dutta would also produce a generic,
`
`conventional browser cache. In contrast, the ’254 Patent recites non-conventional
`
`usage of cache storage at the wireless device, namely storing and subsequent
`
`retrieving of download information for out-of-band operation. The combination of
`
`McCown and Dutta does not disclose this non-conventional cache application. In
`
`addition, in my opinion, a POSITA would not have found obvious the ’254 non-
`
`conventional use of the wireless device cache for storing and subsequent retrieving
`
`of download information for out-of-band operation.
`
`
`
`11
`
`

`

`41.
`
`I elaborate further on this point in later sections (§§ V.A.a.vi-
`
`V.A.a.ix) of this declaration.
`
`’254 Improvement Beyond Predictable Use of Prior Art Elements
`
`42.
`
`In my opinion, beyond merely adding conventional cache to a
`
`wireless device (as the purported combination of McCown and Dutta does), the
`
`’254 recites an improvement that is more than predictable use of prior art elements
`
`(download information, wireless device cache storage) according to their
`
`established functions. Instead, the ’254 Patent teaches storing and subsequent
`
`retrieving of download information for out-of-band operation, which, in my
`
`opinion, is a non-conventional improvement that is more than predictable use of
`
`prior art elements.
`
`43.
`
`I elaborate further on this point in later sections (§ V.A.a.xiv-
`
`V.A.a.xv) of this declaration.
`
`Results of McCown and Dutta Are Different from ’254 Patent
`
`Limitations
`
`44. Even assuming, arguendo, that a POSITA would have been motivated
`
`to combine Dutta’s cache with McCown, the purpose of such purported cache
`
`combination would still be to obtain / retrieve the download information again. In
`
`such combination, during a purported subsequent retrieval of the web page
`
`containing the URLs (download information), according to McCown’s teachings,
`
`
`
`12
`
`

`

`McCown would again obtain the download information during the subsequent
`
`retrieval from the web page display, not from cache. Thus, the combination of
`
`established functions from McCown and Dutta would not generate the same result
`
`as the ’254 Patent recites.
`
`45.
`
`I elaborate further on this point in later sections (§ V.A.a.xiv-
`
`V.A.a.xv) of this declaration.
`
`Challenges of Combining McCown and Dutta
`
`46. Even assuming, arguendo, that a POSITA would have been motivated
`
`to combine Dutta’s cache with McCown, in my opinion, in 2003, a POSITA would
`
`have understood that combining McCown and Dutta would have required major
`
`architectural changes in McCown and Dutta.
`
`47. For example, McCown requires software on the client wireless device
`
`to emulate a hard disk drive that is actually located on a storage server (e.g.,
`
`McCown at 9:14-18, 15:27-16:4) and requires the software to communicate with
`
`the web browser to support the operations of drag-and-drop and copy-and-paste.
`
`However, in the purported combined system of McCown and Dutta, all these
`
`functions would need to be modified and adapted. Such undertaking would have
`
`discouraged a POSITA from combining McCown and Dutta.
`
`Response to PTAB ’1031 Decision, 17 and ’1032 Decision, 20 – First
`
`Part
`
`
`
`13
`
`

`

`48. The PTAB Decision states that “[p]atent 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.” ’1031
`
`Decision, 17; ’1032 Decision, 20.
`
`49.
`
`I respectfully disagree that McCown, alone and/or in combination
`
`with Dutta, teaches utilizing information for the file cached in cache storage in the
`
`wireless device.
`
`50.
`
`In my opinion, 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” is immaterial to
`
`and does not render obvious the limitation of utilizing information for the file
`
`cached in cache storage in the wireless device. The reasons are summarized below
`
`in the following paragraphs and elaborated in later sections (§§ V.A.a.ii-V.A.a.xxi)
`
`of this declaration.
`
`
`
`14
`
`

`

`51. The difference between the ’254 and Petitioner’s references (McCown
`
`alone and/or in combination with Dutta) is not whether Petitioner’s references
`
`disclose cache storage. Likewise, the difference between the ’254 and Petitioner’s
`
`references (McCown alone and/or in combination with Dutta) is not whether a
`
`POSITA would have known about browser cache in wireless devices and would
`
`have been motivated to use a browser cache in the browser of McCown in order to
`
`provide for the faster retrieval of information. Rather, a key difference between
`
`the ’254 Patent and Petitioner’s references is whether the download information is
`
`stored in the wireless device cache (for subsequent retrieval) and subsequently
`
`obtained / retrieved from the wireless device cache.
`
`52.
`
`Independent Claims 1, 9, and 16 of the ’254 Patent require storing the
`
`download information in the wireless device cache (for subsequent retrieval) and
`
`require subsequently obtaining / retrieving the download information from the
`
`wireless device cache.
`
`53. Petitioner’s references do not disclose storing
`
`the download
`
`information in the wireless device cache (for subsequent retrieval) and do not
`
`disclose subsequently obtaining / retrieving the download information from the
`
`wireless device cache.
`
`54. Furthermore, in my opinion, a POSITA would not have found obvious
`
`the storing of the download information in the wireless device cache (for
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`subsequent retrieval) and would not have found obvious the subsequent obtaining /
`
`retrieving the download information from the wireless device cache.
`
`55. As I explain in later sections (§§ V.A.a.v, V.A.a.ix-V.A.a.xix),
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`McCown does not teach, imply, or suggest storing the download information in the
`
`wireless device cache (for subsequent retrieval) and does not teach, imply, or
`
`suggest subsequently obtaining / retrieving the download information from the
`
`wireless device cache.
`
`56.
`
`Importantly, as I explain in later sections (§§V.A.a.x-V.A.a.xv,
`
`V.A.a.xviii), McCown retrieves the download information all at once and sends it
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`to the storage server to use for downloading, which negates the need for any
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`purported subsequent retrieval of the download information at the wireless device.
`
`In other words, there is no need or reason to store the download information in the
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`wireless device (whether in cache or elsewhere), since there is no subsequent need
`
`or reason to retrieve the download information from cache (or elsewhere).
`
`57. Additionally, for at least this reason, in my opinion, a POSITA would
`
`not have been motivated to store McCown’s download information in cache
`
`storage in the wireless device, since there is no subsequent need or reason to
`
`retrieve the download information.
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`58. Moreover, for at least this reason, in my opinion, a POSITA would
`
`not have been motivated to combine McCown and Dutta, since there is no need or
`
`reason to store the download information in cache.
`
`59. As I explain in later sections (§§ V.A.a.vi-V.A.a.vii, V.A.a.xvii),
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`Dutta does not mention, teach, imply, or suggest any download information. In
`
`other words, Dutta does not mention, teach, imply, or suggest storing the download
`
`information in the wireless device cache (for subsequent retrieval or otherwise) and
`
`does not teach, imply, or suggest subsequently obtaining / retrieving the download
`
`information from the wireless device cache.
`
`60. Therefore, the combination of McCown and Dutta does not disclose,
`
`imply, or suggest storing the download information in the wireless device cache
`
`(for subsequent retrieval) and does not teach, imply, or suggest subsequently
`
`obtaining / retrieving the download information from the wireless device cache.
`
`Response to PTAB ’1031 PTAB Decision, 17 and ’1032 Decision, 20 –
`
`Second Part
`
`61. The PTAB Decision also states that “[m]oreover, 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
`
`
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`17
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`[as storing] information so that it is more readily accessible by the user or user
`
`application than the original web server.” ’1031 Decision, 17; ’1032 Decision, 20.
`
`62.
`
`I respectfully disagree that McCown alone and/or in combination
`
`teaches utilizing information for the file cached in cache storage in the wireless
`
`device.
`
`63.
`
`In my opinion, Petitioner’s contention that ““browser cache” would be
`
`understood to as storing [to store] information so that it is more readily accessible
`
`by the user or user application than the original web server” is immaterial to
`
`utilizing information for the file cached in cache storage in the wireless device.
`
`The reasons are summarized below in the following paragraphs and elaborated in
`
`later sections (§§ V.A.a.ii-V.A.a.xxi) of this declaration,
`
`64. A key difference between the ’254 and Petitioner’s references
`
`(McCown alone and/or in combination with Dutta) is not whether Petitioner’s
`
`references disclose storing the download information so that it is more readily
`
`accessible by the user or user application than the original web server. Instead, a
`
`key difference between the ’254 Patent and Petitioner’s references is whether the
`
`download information is stored in the wireless device cache (for subsequent use)
`
`and subsequently obtained / retrieved from the wireless device cache.
`
`
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`65. Storing the download information so that it is more readily accessible
`
`is not beneficial or necessary in McCown, because McCown uses the download
`
`information only once.
`
`66. Storing the download information so that it is more readily accessible
`
`is not beneficial or necessary in Dutta, because Dutta does not deal with download
`
`information.
`
`67. Therefore, storing the download information so that it is more readily
`
`accessible is not beneficial or necessary in McCown in combination with Dutta,
`
`because McCown uses the download information only once and Dutta does not
`
`deal with download information.
`
`68. Furthermore, McCown (alone or in combination with Dutta) does not
`
`teach, imply, or suggest subsequent retrieval of the download information, which
`
`would benefit from the purported readily accessible storage. To the contrary, since
`
`McCown teaches retrieving the download information all at once then sending it
`
`from the display to the storage server, there is no need to store the download
`
`information so that it is more readily accessible. In fact, it would be unnecessary
`
`and wasteful to do so.
`
`Response to PTAB ’1031 Decision, 23-24 and ’1032 Decision, 22
`
`69. The PTAB Decision also states that “we are sufficiently persuaded
`
`that at the time of the invention, storing McCown’s URLs into cache would have
`
`
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`been obvious to a person of skill in the art. ... Patent Owner and Mr. Jawadi focus
`
`on what McCown alone teaches and do not take into account the teachings of
`
`Dutta’s “browser cache” (“cache storage”), and Petitioner’s reasons why a person
`
`having ordinary skill in the art would have cached McCown’s URLs in cache
`
`storage.” ’1031 Decision, 22-23; ’1032 Decision, 22.
`
`70.
`
`I respectfully disagree that McCown alone and/or in combination
`
`teaches utilizing information for the file cached in cache storage in the wirele