IPR2020-01031
`U.S. Patent No. 10,015,254
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`MICROSOFT CORPORATION and HP INC.,
`Petitioner
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`v.
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` SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner
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`
`
`Case IPR2020-01031
`U.S. Patent 10,015,254
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`
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`__________________
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`Synkloud Technologies, LLC.’s Patent Owner Response
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`IPR2020-01031
`U.S. Patent No. 10,015,254
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`TABLE OF CONTENTS
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`I. INTRODUCTION .......................................................................................................................1
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`II. TECHNOLOGY BACKGROUND ...........................................................................................3
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`A.
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`B.
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`Prior Art Storage Systems ..............................................................................................3
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`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
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`III. SUMMARY OF THE INSTITUTED GROUNDS FOR REVIEW .........................................8
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`IV. CLAIM CONSTRUCTION. ....................................................................................................8
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`a.
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`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 (independent claims 1 and 16). ..............10
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`THE PETITIONERS FAILED TO DEMONSTRATE BY A
`PREPONDERANCE OF THE EVIDENCE THAT ANY OF THE
`CHALLENGED CLAIMS WOULD HAVE BEEN OBVIOUS ON ANY
`INSTITUTED GROUND. ...........................................................................................11
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`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). ...................................................15
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`V.
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`A.
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`1.
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`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
`Claim 1, and As Similarly Recited In Independent Claim 16. ...............................18
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`i. McCown’s Web Page Display vs. ’254 Cache Storage .........................................21
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`ii.
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`iii.
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`iv.
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`v.
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`Dutta’s Conventional Browser Cache vs. ’254 Non-Conventional
`Cache Storage Usage .......................................................................................21
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`The Claimed Invention Of The ‘254 Patent Is An Improvement
`Beyond The Predictable Use Of Prior Art Elements. ......................................23
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`The Results Generated By The Combination Of McCown and Dutta
`Differ From Those Of the Claimed Invention Of The ‘254 Patent..................23
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`A PHOSITA Would Have Been Discouraged By The Challenges Of
`Combining McCown and Dutta. ......................................................................24
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`IPR2020-01031
`U.S. Patent No. 10,015,254
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`vi.
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`vii.
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`Response To The First Part Of The PTAB’s Institution Decision at
`Page 17. ............................................................................................................24
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`Response To The Second Part Of The PTAB’s Institution Decision at
`Page 17. ............................................................................................................27
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`viii. Response To The PTAB’s Institution Decision at Pages 23-24. .....................28
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`ix.
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`Response To The PTAB’s Institution Decision at Page 24. ............................29
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`2.
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`3.
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`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. ............................................................31
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`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. ........................37
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`B.
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`Objective Indicia Of Non-Obviousness Support The Patentability Of The
`Claims Of The ’254 Patent. .........................................................................................47
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`VI.
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`CONCLUSION ............................................................................................................79
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`IPR2020-01031
`U.S. Patent No. 10,015,254
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`TABLE OF AUTHORITES
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`PAGE NO.
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`CASES
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`Arista Networks, Inc., v. Cisco Systems, Inc.,
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`2016 WL 1083023 *5 (PTAB 2015)
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`CCS Fitness Inc. v. Brunswick Corp.,
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`288 F.3d 1366, 62 USPQ2d at 1662
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`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
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`809 F.3d 1375 (Fed. Cir. 2015)
`
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`Harmonic Inc. v. Avid Tech., Inc.,
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`815 F.3d 1356 (Fed. Cir. 2016)
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`In re Magnum Oil Tools Int’l, Ltd.,
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`829 F.3d 1364 (Fed. Cir. 2016)
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`Kolbe & Kolbe Millwork Co., Inc. v. Sierra Pacific Industries,
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`2019 WL 5070454 *20 (PTAB 2019)
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`K/S Himpp v. Hear-Wear Techs., LLC,
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`751 F.3d 1362 (Fed. Cir. 2014)
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`Mylan Pharmaceuticals Inc. v. Boehringer Ingelheim International GMBH,
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`2017 WL 1052517*1 (PTAB 2017)
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`Nautilus Hyosung Inc. v. Diebold Nixdorf, Inc.,
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`2017 WL 3447870 *8 (PTAB 2017)
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`SAS Institute v. Iancu,
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`138 S.Ct 1348 (2018)
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`Teleflex, Inc. v. Ficosa N Am. Corp.,
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`299 F.3d 1313, 63 USPQ2d 1374 (Fed. Cir. 2002)
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`41
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`9
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`12
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`13, 14, 20
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`14, 37
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`4, 17
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`17, 35, 36
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`13, 20
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`14
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`12
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`12, 37
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`IPR2020-01031
`U.S. Patent No. 10,015,254
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`8
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`12
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`13
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`12
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`81
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`Texas Digital Systems, Inc. v. Telegenix, Inc.,
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`308 F.3d 1193 (Fed. Cir. 2002)
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`Zodiac Pool Systems, Inc. v. Aqua Products, Inc.,
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`2018 WL 6604633 *1 (PTAB 2018)
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`
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`STATUTES
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`35 U.S.C. §312(a)(3)
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`35 U.S.C. §314(a)
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`37 C.F.R. §42.107
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`IPR2020-01031
`U.S. Patent No. 10,015,254
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`PATENT OWNER’S EXHIBIT LIST
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`Exhibit
`Number
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`Description
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`2001
`
`2002
`
`2003
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`2004
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`2005
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`2006
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`2007
`
`2008
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`2009-
`2014
`2015
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`2016
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`2017
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`2018
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`2019
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`2020
`
`Declaration of Zaydoon Jawadi
`
`Curriculum Vitae of Zaydoon Jawadi
`
`Second Declaration of Zaydoon Jawadi
`
`Claim Chart of wireless devices with Microsoft OneDrive for the
`‘254 Patent
`
`Claim Chart of wireless devices with Microsoft OneDrive for the
`‘254 Patent
`Claim Chart of wireless devices with Adobe cloud services for the
`‘254 Patent
`Claim Chart of wireless devices with Dropbox cloud services for the
`‘254 Patent
`Claim Chart of wireless devices with Microsoft OneDrive for the
`‘254 Patent
`Reserved
`
`Claim Chart of the HP Laptop computers with Microsoft
`OneDrive for the ’254 Patent
`Claim Chart of wireless devices with Microsoft OneDrive for the
`’254 Patent
`Microsoft Securities and Exchange Commission Form 10K filing
`for the fiscal year ending June 30, 2019
`https://blog.goptg.com/microsoft-office-365-statistics, last viewed
`September 15, 2020
`https://www.microsoft.com/en-us/microsoft-
`365/onedrive/compare-onedrive-plans?activetab=tab:primaryr2,
`last viewed September 15, 2020.
`https://techcommunity.microsoft.com/t5/microsoft-onedrive-
`blog/top-4-tips-to-protect-your-remote-workforce-with-data-
`compliance/ba-p/1452108?WT.mc_id=eml_CXM_EN-
`US_Comm_M365_Engagement_NewsletterEdition02_Email_01_
`V01_622_FY21Aug_ENUS, last viewed September 15, 2020.
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`vi
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`2021
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`2022
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`2023
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`2024
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`2025
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`2026
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`2027
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`2028
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`2029
`2030
`2031
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`2032
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`2033
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`IPR2020-01031
`U.S. Patent No. 10,015,254
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`Claim Chart of BLU wireless device with Google Drive for the
`’254 Patent
`“The Verizon Plan FAQs,” Verizon website
`(https://www.verizonwireless.com/support/the-verizon-plan-
`faqs/), last viewed September 15, 2020
`“Report: State of the Web,” HTTP Archive website
`(https://httparchive.org/reports/state-of-the-web), last viewed
`September 15, 2020.
`Microsoft OneDrive Pricing (https://products.office.com/en-
`US/onedrive-for-business/compare-onedrive-for-business-plans),
`last viewed September 15, 2020.
`“Cloud Data Storage Service Use Among Consumers in the
`United States, as of 2017,” Statista
`(https://www.statista.com/statistics/714140/us-usage-cloud-
`storage-services/), last viewed September 15, 2020.
`“Annual Estimates of the Resident Population: April 1, 2010 to
`July 1, 2018,” U.S. Census Bureau, American Fact Finder.
`“United States Population,” Worldometer website
`(https://www.worldometers.info/world-population/us-
`population/), last viewed September 15, 2020.
`Ballard, John, “What is Dropbox’s Competitive Advantage?” The
`Motley Fool, August 21, 2018
`https://www.fool.com/investing/2018/08/21/what-is-dropboxs-
`competitive-advantage.aspx), last viewed September 15, 2020.
`Claim chart of smart phone with cloud storage (filed under seal)
`License to the ’254 Patent (filed under seal)
`https://www.microsoft.com/en-us/surface/devices/surface-
`pro/tech-specs, last viewed September 19, 2020.
`https://support.microsoft.com/en-us/office/using-office-for-the-
`web-in-onedrive-dc62cfd4-120f-4dc8-b3a6-
`7aec6c26b55d#:~:text=In%20your%20web%20browser%2C%20g
`o,Office%20for%20the%20web%20program, last viewed
`September 19, 2020
`https://www.dummies.com/computers/operating-
`systems/windows-10/how-to-access-onedrive-from-anywhere/,
`last viewed September 19, 2020
`
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`U.S. Patent No. 10,015,254
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`2034
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`2035
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`2036
`2037
`2038
`
`https://www.microsoft.com/en-us/microsoft-
`365/onedrive/compare-onedrive-
`plans?ef_id=CjwKCAjwkoz7BRBPEiwAeKw3qwWV_91zlJtXmT
`wNvg1VRHD4lR_L8VuIUbASJYJAIKfOODGFtWQzwhoCua
`MQAvD_BwE:G:s&OCID=AID2100137_SEM_CjwKCAjwkoz7
`BRBPEiwAeKw3qwWV_91zlJtXmTwNvg1VRHD4lR_L8VuIUb
`ASJYJAIKfOODGFtWQzwhoCuaMQAvD_BwE:G:s&lnkd=Go
`ogle_O365SMB_App&gclid=CjwKCAjwkoz7BRBPEiwAeKw3q
`wWV_91zlJtXmTwNvg1VRHD4lR_L8VuIUbASJYJAIKfOODG
`FtWQzwhoCuaMQAvD_BwE&activetab=tab:primaryr2, last
`viewed September 19, 2020
`https://www.steeves.net/news/top-9-reasons-for-onedrive-in-
`your-business/, last viewed September 19, 2020.
`Modified Protective Order
`Redline Version of Modified Protective Order
`"Number of internet users in the United States from 2015 to 2025
`(in millions),” Statista
`(https://www.statista.com/statistics/325645/usa-number-of-
`internet-users/), last viewed September 20, 2020.
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`IPR2020-01031
`U.S. Patent No. 10,015,254
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`I. INTRODUCTION
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` The Board should not cancel any claim of U.S. Patent No. 10,015,254
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`(“the ’254 patent”) because Petitioners have not shown by a preponderance of
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`the evidence that any claim is unpatentable for three separate and independent
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`reasons.
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`First, each of Petitioners proposed grounds of rejection is missing one or
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`more limitations of the claims of the ’254 patent. Infra, § V.A. For example,
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`none of the combinations of prior art references asserted by Petitioners would
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`have taught “download[ing] a file from a second server across a network into
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`the remote storage space through utilizing information for the file cached in a
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`cache storage in the wireless device,” as recited in independent claim 1 and
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`independent claim 16 of the ‘254 patent. Petitioners sole primary reference
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`(McCown) does not even mention cache. And although the secondary
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`reference Dutta does mention cache, it does not make any mention of how any
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`of the data in cache would be used, let alone that download information in the
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`cache of a wireless device would be used remotely from the wireless device—
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`not locally at the wireless device—to download a file from a second server (e.g., a
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`web site) to a remote storage space.
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`Second, there is no objective evidence that a person of ordinary skill in
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`the art would have been motivated to modify International Publication No.
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`1
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`IPR2020-01031
`U.S. Patent No. 10,015,254
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`WO 01/67233 to McCown, the sole primary reference, with the teachings of
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`the secondary references (U.S. Publication No. 2002/0078102 to Dutta
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`(“Dutta”) and U.S. Patent No. 7,266,555 to Coates (“Coates”)), and
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`reasonably expect success in achieving the invention recited by the challenged
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`claims of the ‘254 patent. As explained by Mr. Jawadi, “McCown teaches
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`obtaining the URL(s) (download information) from the wireless device web
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`page display, which is significantly different from and opposite to obtaining the
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`download information from the wireless device cache storage, as recited in the
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`limitations of the independent claims of the ’254 Patent.” EX2003, ¶ 34.
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`“[B]eyond merely adding conventional cache to a wireless device (as the
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`purported combination of McCown and Dutta does), the ’254 recites an
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`improvement that is more than predictable use of prior art elements.” Id. at ¶
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`42.
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`The claimed invention of the ’254 Patent is a novel and non-obvious way
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`to utilize download information in a cache of a wireless device to enable easy
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`and efficient downloading of data (e.g., a web page, a file) from a web server to
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`a remote storage space. The Petitioners did not show that a “skilled artisan
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`would have been motivated to combine the teachings of the prior art references
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`to achieve the claimed invention, and that the skilled artisan would have had a
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`IPR2020-01031
`U.S. Patent No. 10,015,254
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`reasonable expectation of success in doing so.” OSRAM Sylvania, Inc. v. Am
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`Induction Techs., Inc., 701 F.3d 698, 706 (Fed. Cir. 2012).
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` Third, objective indicia of non-obviousness, including the commercial
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`success of the devices that infringe the claims of the ’254 Patent and a license
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`showing industry respect for the claimed invention support the patentability of the
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`claims of the ’254 Patent. Infra, § V.B.
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`For these reasons and those explained more fully below, the Petitioners
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`failed to show by a preponderance of the evidence that any claim of the ‘254
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`patent is unpatentable.
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`II. TECHNOLOGY BACKGROUND
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`A. Prior Art Storage Systems
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`As discussed in the background section of the ’254 patent, prior art
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`storages systems are “categorized as internal storage or external storage.”
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`EX1001, 1:27-28. “The internal storages of a computing system include those
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`storage media such as hard disk drives, memory sticks, memory, and others
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`that are internally connected within the computing system through [a] system
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`bus or a few inches of cable.” Id. at 1:29-33. That is, internal storage media
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`“are internal components of the computing system in a same enclosure.” Id. at
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`1:33-34.
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`U.S. Patent No. 10,015,254
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`In contrast, “[t]he external storages of a computing system are those
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`storage media that are not the internal components of the computing system in
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`a same enclosure.” Id. at 1:35-37. Instead, external storage is “connected
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`through [a] longer cable, such as through Ethernet cable for IP based storage,
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`Fiber channel cable for fiber channel storage, or wireless communication
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`media, and others.” Id. at 1:38-41. “[E]xternal storage could be magnetic hard
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`disk drives, solid state disk, optical storage drives, memory card and others,
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`and could be in any form.” Id. at 1:42-45.
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`The inventor of the ’254 patent, however, recognized that storage on
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`users’ “wireless devices such as in their cell phone or personal data assistant
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`devices (“PDA”) … [was] usually limited to 256 MB for the PDA and much
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`less for the cell phone.” Id. at 2:29-33. Accordingly, the inventory recognized a
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`need to provide wireless devices with “multiple gigabytes (GB) of storage”
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`from a remote storage server to support multimedia applications. Id. at 34-37.
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`Moreover, because multimedia data require large amounts of memory, there
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`was a need to store data from various sources (e.g., a web server) to the remote
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`storage server. Id. at 2:53-58.
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`IPR2020-01031
`U.S. Patent No. 10,015,254
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`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.
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`The ’254 patent addresses the deficiencies of the prior art with an
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`approach that downloads data from a web site to a remote storage server using
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`download information in a cache of a wireless device, as shown by FIG. 3,
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`which is reproduced below.
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`One embodiment of the invention includes a wireless device (1) having a
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`web browser (8) and other software (9); a website (15); and external storage
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`5
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`IPR2020-01031
`U.S. Patent No. 10,015,254
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`(10) having file systems (11) on a server (3). Id. at 3:48-58. When a user of the
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`wireless device (1) desires to download data from a web server (15) to an
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`assigned file system of the assigned external storage (10) on a server (3), the
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`following steps are performed:
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`“1) Provide the user from a web-browser (8) of the wireless device (1)
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`access to a remote web server site (15) to obtain information for the
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`downloading via the path (a) of the FIG. 3”;
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`“2) The other software modules (9) of the wireless device (1) obtain the
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`downloading information, which becomes available in the cached web-pages
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`on the wireless device (1) after the web-browser (8) access[es] the web site
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`(15)”;
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`“3) The other software modules (9) of the wireless device (1) send the
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`obtained downloading information to [the] other service modules (7) of the
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`storage server (3) via the path (b)”;
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`“4) Upon receiving the downloading information from the wireless
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`device (1), the other service module (7) of the storage server (3) sends a web
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`download request to the web-site (15) via the path (c) based on download
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`information obtained and then receives the downloading data from the web
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`server of the web-site (15)”; and
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`“5) Upon receiving downloading data, the other service modules (7) of
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`the storage server (3) write[s] the data for the wireless device (1) into the
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`IPR2020-01031
`U.S. Patent No. 10,015,254
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`assigned file system (11) on the server (3).”
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`Id. at 5:10-32.
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`In this manner, the present invention downloads data using the
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`download information in the cache of the user’s wireless device (1) from the
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`web site (15) to the user’s assigned file system (11) on the server. The
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`downloaded data can later be accessed by the user device. Id. at 5:33-44.
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`Thus, the invention of the ‘254 patent includes a novel and non-obvious
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`way to utilize download information in a cache of a wireless device to enable
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`easy and efficient downloading of data (e.g., a web page, a file) from a web
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`server to a remote storage space. For example, if a user of the wireless device
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`of the claimed invention of the ‘254 patent were to access a picture from a web
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`site (e.g., New York Times) either to view it or to download it to remote
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`storage, the New York Times web site would not need to do anything
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`differently; it would simply transmit a file containing the picture to the
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`requester without needing to know whether the picture would be stored in
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`remote storage or viewed on the device. In other words, the web sites need not
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`be adapted or changed in any way to operate with the wireless device of the
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`present invention.
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`IPR2020-01031
`U.S. Patent No. 10,015,254
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`III. SUMMARY OF THE INSTITUTED GROUNDS FOR REVIEW
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`Below is a summary of the proposed claim rejections instituted by the
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`Board:
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`i.
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`Claims 1-5, 8, and 16-18 are alleged to have been obvious under
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`§103 over International Publication No. WO 01/67233 to McCown
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`(“McCown”) in view of U.S. Publication No. 2002/0078102 to Dutta
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`(“Dutta”); and
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`ii. Claims 6, 7, 19, and 20 are alleged to have been obvious under
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`§103 over McCown in View of Dutta, and further in view of U.S. Patent No.
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`7,266,555 to Coates (“Coates”).
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`IV. CLAIM CONSTRUCTION.
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`Claim construction is generally an issue of law. Claims in an inter partes
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`review are construed pursuant to the principle set forth by the court in Phillips
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`v. AWH Corp, 415 F.3d 1303, 1312-15 (Fed. Cir. 2005) (en banc). Under
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`Phillips, the specification is the single best source for claim interpretation. 415
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`F.3d at 1312. “The terms used in the claims bear a heavy presumption that they
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`mean what they say and have the ordinary meaning that would be attributed to
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`those words by persons skilled in the relevant art.” Texas Digital System, Inc. v.
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`8
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`IPR2020-01031
`U.S. Patent No. 10,015,254
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`Telegenix, Inc., 308 F.3d 1193, 1202 (Fed. Cir. 2002) (emphasis added) (internal
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`quotation marks omitted) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
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`1359, 1366 (Fed. Cir. 2002); K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1362-63
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`(Fed. Cir. 1999); Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985,
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`989 (Fed. Cir. 1999); Specialty Composites v. Cabot Corp., 845 F.2d 981, 986 (Fed.
`
`Cir. 1988)).
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`In addition, a claim preamble may be construed as limiting “if it recites
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`essential structure or steps, or if it is ‘necessary to give life, meaning, and
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`vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d
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`801, 808 (Fed. Cir. 2002), quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182
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`F.3d 1298, 1305 (Fed. Cir. 1999).Additionally, the “appropriate context” to
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`read a claim term includes both the specification and the claim language itself.
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`In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). If a term is “used
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`differently by the inventor,” he may provide a special definition if he does so
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`with “reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
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`1475, 1480 (Fed. Cir. 1994).
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`9
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`IPR2020-01031
`U.S. Patent No. 10,015,254
`
`a.
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`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
`(independent claims 1 and 16).
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`The claim limitation “download a file from a second server across a network
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`into the remote storage space through utilizing information for the file cached in
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`the cache storage in the wireless device” is recited in independent claim 1, and
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`similarly recited in independent claim 9. This claim limitation requires
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`information needed to download a file from a remote server to be (i) stored in a
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`cache storage of a wireless device and (ii) utilized to download the file across a
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`network into a remote storage space for the user of the wireless device.
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`This claim construction is consistent with the claim language itself. Claim 1
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`explicitly recites that the “wireless device compris[es]: at least one cache storage.”
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`EX1001, 6:65:66. Claim 1 also recites that “information for the file [is] cached in
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`the cache storage in the wireless device.” Id. at 7:22-24. Claim 1 also recites “to
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`download a file from a second server.” Id. at 7:20-21. Therefore, the claimed
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`“information” is for the file at the remote server and this “information” is cached in
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`the cache storage, which is in the “wireless device.” Claim 16 recites similar
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`limitations, id. at 8:20-27, and therefore, also supports Patent Owner’s proposed
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`construction.
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`Patent Owner’s proposed construction is also consistent with the
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`Specification. The Specification explains that the claimed “information for the
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`
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`10
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`IPR2020-01031
`U.S. Patent No. 10,015,254
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`file” is cached in the cache of the wireless device: “the downloading information
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`[for the file], which becomes available in the cached web-pages on the wireless
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`device.” Id. at 5:17-18. This download information in the wireless device’s cache
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`is, in fact, utilized to download the file:
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`3) The other software modules (9) of the wireless device (1) send the
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`obtained downloading information to other service modules (7) of the
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`storage server (3) via path (b) of FIG. 3.
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`
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`4) Upon receiving the downloading information from the wireless
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`device (1), the other service module (7) of the storage server (3) sends
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`a web download request to the web-site (15) via path (c) of FIG. 3
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`based on download information obtained. and receives the
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`downloading data from the web server of the web-site (15).
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`EX1001, 5:20-28.
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`Both the claim language itself and the Specification support Patent Owner’s
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`proposed construction.
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`
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`V. THE PETITIONERS FAILED TO DEMONSTRATE BY A
`PREPONDERANCE OF THE EVIDENCE THAT ANY OF THE
`CHALLENGED CLAIMS WOULD HAVE BEEN OBVIOUS ON
`ANY INSTITUTED GROUND.
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`As set forth by the Supreme Court, the question of obviousness is
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`resolved on the basis of underlying factual determinations including (1) the
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`scope and content of the prior art, (2) any differences between the claimed
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`11
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`IPR2020-01031
`U.S. Patent No. 10,015,254
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`subject matter and the prior art, (3) the level of skill in the art. Graham v. John
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`Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966); see also KSR Int’l Co. v.
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`Teleflex Inc., 550 U.S. 398, 399 (2007) (“While the sequence of these questions
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`might be reordered in any particular case, the [Graham] factors define the
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`controlling inquiry.”) A petitioner seeking to invalidate a patent as obvious
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`must demonstrate that a “skilled artisan would have been motivated to
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`combine the teachings of the prior art references to achieve the claimed
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`invention, and that the skilled artisan would have had a reasonable expectation
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`of success in doing so.” OSRAM Sylvania, Inc. v. Am. Induction Techs., Inc., 701
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`F.3d 698, 706 (Fed. Cir. 2012). The Petition’s evidence must also address every
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`limitation of every challenged claim.
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`Indeed, it is Petitioners’ burden to demonstrate, based on the parties'
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`papers, “that there is a reasonable likelihood that the petitioner would prevail
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`with respect to at least one of the claims challenged in the petition.” SAS
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`Institute v. Iancu, 138 S. Ct. 1348, 1353 (2018) citing 35 U.S.C. § 314(a).
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`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.,
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`800 F.3d 1375, 1378 (Fed. Cir. 2015)(Petitioner bears the burden of proving
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`unpatentability of the challenged claims, and the burden of persuasion never
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`shifts to Patent Owner.); Zodiac Pool Systems, Inc. v. Aqua Products, Inc., 2018
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`
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`12
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`IPR2020-01031
`U.S. Patent No. 10,015,254
`
`WL 6604633 *1 (PTAB 2018). In a contest to invalidate a patent based on
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`obviousness over prior art, the burden is that of Petitioner to point to the
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`passages in each reference relied upon to show all limitations recited in the
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`claims, or, in the alternative, demonstrate conclusively that each of those
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`limitations would be understood by the skilled artisan to be a natural
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`supplement to the express teaching of the references. See, Mylan Pharmaceuticals
`
`Inc. v. Boehringer Ingelheim International GMBH, 2017 WL 1052517*1 (PTAB
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`2017):
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`
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`It is Petitioner's burden to set forth the basis for its challenge in the
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`Petition. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363
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`(Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3), requiring inter
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`partes review petitions to identify “with particularity ... the
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`evidence that supports the grounds for the challenge to each
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`claim.”). In Harmonic, the Federal Circuit held that “it was
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`Harmonic's burden to explain to the Board how Haskell combined
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`with Rossmere rendered the challenged claims unpatentable.
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`
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`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
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`precise limitations recited in the challenged claims, specific explanation and
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`evidence must be provided to support that contention – mere conclusory
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`statements will not suffice to meet Petitioner’s burden. Importantly, where the
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`
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`13
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`IPR2020-01031
`U.S. Patent No. 10,015,254
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`Petitioner seeks to rely on the knowledge of skill in the art, how and why one
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`of skill in the art would modify the references relied upon to demonstrate
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`obviousness must be set forth with specificity. Nautilus Hyosung Inc. v. Diebold
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`Nixdorf, Inc., , 2017 WL 3447870 *8 (PTAB 2017):
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`In an [inter partes review], the petitioner has the burden from the
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`onset to show with particularity why the patent it challenges is
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`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356,
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`1363 (Fed. Cir. 2016)….
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`Furthermore, Petitioner cannot satisfy its burden of proving
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`obviousness by employing “mere conclusory statements.” In re
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`Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir.
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`2016)…Petitioner cannot satisfy its burden of proving obviousness
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`by employing “mere conclusory statements.” Id.
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`
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`Petitioners cannot prevail on any claim on any of the instituted
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`obviousness grounds because (i) the Petition failed to demonstrate that one of
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`ordinary skill in the art would have been motivated to combine the teachings
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`of the numerous prior art references in the combination to achieve the claimed
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`invention with a reasonable expectation of success, (ii) the Petition failed to
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`demonstrate that any of the different combinations teaches every element of
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`any of the challenged claims, and; (iii) there are objective indicia of non-
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`
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`14
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`IPR2020-01031
`U.S. Patent No. 10,015,254
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`obviousness including commercial success and a license showing industry
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`respect for the claimed invention.
`
`A.
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`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).
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`The combination of McCown and Dutta would not have taught or
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`suggested the claim limitations of “download[ing] a file from a second server
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`across a network into the remote storage space through utilizing information
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`for the file cached in a cache storage in the wireless device,” as recited in
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`independent claims 1 and 16. EX1001, 6:18-24, 8:21-26. Indeed, the
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`combination would not even have taught that this “[download] information for
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`the file [is] cached in a cache storage in the wireless device.” Moreover, the
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`combination would not have taught “transmitting the information [obtained
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`for a file from a second server] for the file cached in the wireless device to the
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`first server,” as recited in dependent claim 2 and as similarly recited in
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`dependent claim 17. EX1001, 6:29-30, 8:31-32. In addition, the combination
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`would not have taught that this transmitted download information cached in
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`the wireless device “cause[s] the first server, in accordance with the
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`information for the file, to download the file from the second server into the
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`remote storage space,” as recited in dependent claim 2, and as similarly recited
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`in dependent claim 17. Id. at 6:30-34, 8:33-37.
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`
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`15
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`IPR2020-01031
`U.S. Patent No. 10,015,254
`
`In the Institution Decision, the Board stated that “Patent Owner … does
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`not address Petitioner’s contention that ‘a Skilled Artisan would understand
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`that the use of a browser cache in wireless devices was well-known in the art
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`by 2003 and would have been motivated to use one in the browser of McCown
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`in order to provide for the faster retrieval of information.’” Paper No. 16,
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`quoting Pet. 19–20. But as explained by Mr. Jawadi, “the Decision appears to
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`overlook the fact that McCown teaches obtaining the URL(s) (download
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`information) from the wireless device web page display, which is significantly
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`different from and opposite to obtaining the download information from the
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`wireless device cache storage, as recited in the limitations of the independent
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`claims of the ’254 Patent.” EX2003, ¶ 34. Moreover, “Dutta discloses a
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`generic browser cache. Dutta does not disclose or imply download
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`information, does not disclose or imply any purpose for the Dutta browser
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`