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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION and HP INC.,
`Petitioners,
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`v.
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`SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner.
`
`Patent No. 10,015,254
`Issued: July 3, 2018
`Filed: December 21, 2015
`
`Inventor: Sheng Tai Tsao
`
`SYSTEM AND METHOD FOR WIRELESS DEVICE ACCESS TO
`EXTERNAL STORAGE
`________________________
`Inter Partes Review No. IPR2020-01031
`________________________
`PETITIONERS’ REPLY BRIEF
`________________________
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`Title:
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`Petitioners’ Reply in IPR2020-01031
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
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`ARGUMENT ................................................................................................... 1
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`I.
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`II.
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`A.
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`B.
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`C.
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`Patent Owner’s Expert Testimony Is Not Credible .............................. 1
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`Patent Owner’s Claim Construction Is Legally Erroneous ................... 3
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`The Challenged Claims Are Unpatentable ............................................ 4
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`1. McCown/Dutta Satisfy the “download a file from a second
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`server …” Claim Language ........................................................ 4
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`2. McCown/Dutta Satisfy the “transmitting the information …”
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`Claim Language ........................................................................ 15
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`3.
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`A Skilled Artisan Would Have Been Motivated to Combine
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`McCown and Dutta ................................................................... 19
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`4.
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`Patent Owner Has Failed to Prove Any Relevant Objective
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`Indicia of Non-Obviousness ..................................................... 21
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`III. CONCLUSION .............................................................................................. 25
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`i
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`Petitioners’ Reply in IPR2020-01031
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`I.
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`INTRODUCTION
`Microsoft’s petition demonstrated it would have been obvious to modify
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`McCown, which discloses the storage of a webpage of URLs in a browser, to
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`include a browser cache for storing that web page. Patent Owner responds with a
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`scattershot of repetitive arguments ignoring the actual analysis included in the
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`petition. But Patent Owner’s strawman arguments and mischaracterizations of the
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`petition cannot save its claims.
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`Patent Owner also seeks to prove secondary considerations of non-
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`obviousness, but has no evidence of the required nexus, or that the commercial
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`products it cites actually practice any claim of the 254 Patent. These arguments
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`should be rejected as well.
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`II. ARGUMENT
`A.
`Patent Owner’s Expert Testimony Is Not Credible
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`Patent Owner cites to the declaration of its expert Mr. Jawadi, but the cited
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`testimony is in almost every case unexplained and unsupported by citation to
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`evidence. See, e.g., EX2003,¶¶34, 36, 42, 44, 50-51, 56, 63-64, 80-81, 164, 169,
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`173; EX2001, ¶¶88-89, 97, 107, 111-117, 119. Such ipse dixit expert testimony
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`cannot support the fact finding of the Board, and should be rejected. Ericsson Inc.
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`v. Intellectual Ventures I LLC, 890 F.3d 1336, 1346 (Fed. Cir. 2018); 37 C.F.R.
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`§42.65(a).
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`1
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`Petitioners’ Reply in IPR2020-01031
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`Moreover, the expert applies a legally erroneous understanding of both the
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`law of obviousness and of claim construction. He testifies, for example, that he
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`understands the term “obvious” to refer “to subject matter that would have
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`occurred to a POSITA to which the ’254 Patent is directed without inventive
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`or creative thought.” EX2001,¶23.1 That is not the standard for obviousness.
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`E.g., KSR Int'l Co. v. Teleflex, Inc., 127 S.Ct. 1727, 1740 (2007) (“[W]hen a patent
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`‘simply arranges old elements with each performing the same function it had been
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`known to perform’ and yields no more than one would expect from such an
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`arrangement, the combination is obvious.”).
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`Similarly, the expert testifies that his understanding of claim construction is
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`that “one arrives at the appropriate ‘construction’ or definition of what is embraced
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`by the claims of the ’254 Patent and what is excluded by those claims by a reading
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`of the ’254 Patent and arriving at what, based on that reading, the inventor of the
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`claimed subject matter intended to protect as her or his invention.”
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`EX2001,¶24. That, too, is not the law. Markman v Westview Instruments, Inc., 52
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`F.3d 967, 986 (Fed. Cir. 1995) (“Thus the focus in construing disputed terms in
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`claim language is not the subjective intent of the parties to the patent contract when
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`they used a particular term.”)
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`1 In this brief, emphasis has been added unless otherwise indicated.
`2
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`Petitioners’ Reply in IPR2020-01031
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`Expert testimony based on an erroneous understanding of the law is entitled
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`to no weight. InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1348
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`(Fed. Cir. 2014).
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`B.
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`Patent Owner’s Claim Construction Is Legally Erroneous
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`Patent Owner argues the claim phrase “download a file from a second server
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`across a network into the remote storage space through utilizing information for
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`the file cached in the cache storage in the wireless device” should be construed to
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`“require[] information needed to download a file from a remote server to be (i)
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`stored in a cache storage of a wireless device and (ii) utilized to download the file
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`across a network into an assigned storage space for the user of the wireless
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`device.” POR, 10.
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`Patent Owner never explains why the interpretation of the “utilizing
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`information …” portion of this claim language adopted in the Institution Decision
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`is inappropriate. Indeed its proposal is similar to the one adopted in that Decision.
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`For example, the Board’s construction requires that it is “the download information
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`that is stored in cache storage, not the file itself,” Inst. Dec., 11, which is exactly
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`what is required by part (i) of Patent Owner’s proposal. Similarly, the Board’s
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`construction requires “using information stored in the cache storage of the wireless
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`device to download a file from a remote server,” Inst. Dec., 11, which is exactly
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`what is required by part (ii) of Patent Owner’s proposal.
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`Petitioners’ Reply in IPR2020-01031
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`The main difference between the Board’s interpretation and Patent Owner’s
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`is that Patent Owner changes the claim phrase “download information” to
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`“information needed to download a file from a remote server.” Those two phrases
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`are not the same thing, as nothing in the words “download information” limits the
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`claim to information “needed” to perform a download (as opposed to information
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`simply “utiliz[ed]” to perform such a download), and “information needed to
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`download a file” could include all kinds of information never hinted at in the
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`patent, e.g., checksum information, decryption codes, account numbers. Patent
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`Owner does not attempt to justify switching in its “needed to download” language
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`or explain why its interpretation should be used instead of the Board’s. Its
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`interpretation should be rejected.2
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`C.
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`The Challenged Claims Are Unpatentable
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`1. McCown/Dutta Satisfy the “download a file from a second
`server …” Claim Language
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`
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`2 Nevertheless, the Petition demonstrated that McCown/Dutta stored a web page of
`URLs used to download a file from a remote server. Pet., 39-45. Such URLs
`would be “information needed to download a file from a remote server” in a
`McCown-based system because a URL is the Internet address of the file to be
`downloaded. Pet., 39-40; EX1030, 487.
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`4
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`Petitioners’ Reply in IPR2020-01031
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`Patent Owner argues the combination of McCown and Dutta does not satisfy
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`the claim language requiring “download a file from a second server across a
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`network into the remote storage space through utilizing information for the file
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`stored in the cache storage in the wireless device,” POR, 15, but its confused
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`reasoning ignores the disclosure of those references and the analysis of the petition.
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`a.
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`In McCown/Dutta, the Download Information is
`Retrieved from the Cache
`Patent Owner asserts that the institution decision overlooked that McCown
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`teaches obtaining URLs (i.e., the claimed “information for the file”) “from the
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`wireless device web page display,” but not from cache storage. POR, 16, citing
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`EX2003, ¶34. It repeats this argument at POR, 21, 23-24, and 44-47.
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`Neither Patent Owner nor its expert cite to any supporting evidence for this
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`assertion nor is there any supporting analysis. The argument is, in any event, based
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`on a misunderstanding of the petition, which demonstrated that it would have been
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`obvious to store McCown’s webpage of URLs (i.e., the claimed “download
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`information”) in cache storage of McCown (e.g., as supplied by Dutta) and later
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`retrieve one or more of those URLs from the cache for transmission to the storage
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`server. Pet., 41 (“A Skilled Artisan would have been motivated to store those
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`URLs in storage that is more readily accessible by the user or user application, or
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`“cache storage,” of the combined system of McCown and Dutta, so that those
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`URLs could be quickly retrieved and used to generate the data request of
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`Petitioners’ Reply in IPR2020-01031
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`McCown.”). Thus, in the combination analyzed in the petition, the URLs are
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`obtained from the cache, not from the display of the web page.
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`b.
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`Reasons for Combining Do Not Need to Be Found in
`Dutta
`Patent Owner also asserts that Dutta discloses only a generic browser cache,
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`but “does not disclose or imply any purpose for the Dutta browser cache, and does
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`not disclose or imply storing download information in the Dutta browser cache.”
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`POR, 15.
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`This argument also ignores the analysis in the petition. As the petition
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`demonstrated, it was known that browser caches, such as that of Dutta, were used
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`to store web pages for faster retrieval. See Pet., 42-43, citing EX1010, ¶[0002]
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`(“Caching is a process that web browsers typically use that provides for faster
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`retrieval of web page content”); EX1011, 1:66-2:1 (“it is common practice for
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`contemporary Web browsers to cache pages accessed by the user”); see also
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`EX1006, ¶[0029]. Thus, a Skilled Artisan would have understood that the purpose
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`of Dutta’s browser cache was to cache web pages, such as the web page of URLs
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`disclosed in McCown. The petition was not required to show that Dutta itself
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`stated as much or provided a reason to use the cache in the system of McCown for
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`that purpose, as ample evidence of those facts from other sources was identified in
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`the petition. See Pet., 19-24, 40-44.
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`Petitioners’ Reply in IPR2020-01031
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`c.
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`It Would Have Been Obvious To Store The Download
`Information In The Cache In Case The User Desired to
`Make Another Selection
`Patent Owner next argues that the petition’s showing that it would have been
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`obvious to store the “download information” – i.e., the web page of URLs – in a
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`browser cache “is inconsistent with the disclosure of McCown” because the URLs
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`of McCown are supposedly “used only once by the user” so there would be no
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`need to cache them. POR, 16-17. Patent Owner repeats this argument at POR, 40-
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`41, 42-43, and 44.
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`Patent Owner’s conclusion does not flow from its premise. Just because
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`McCown may disclose the user accessing the URL’s only once does not mean that
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`it would have been non-obvious to access them more than once. Nor is it required
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`that McCown itself provide a reason why a user might access the list of URLs a
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`second time. Any need or problem in the field and addressed by the patent can
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`provide such a reason. KSR, 127 S.Ct. at 1742. Indeed, an obviousness analysis
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`“need not seek out precise teachings directed to the specific subject matter of the
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`challenged claim, for a court can take account of the inferences and creative steps
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`that a person of ordinary skill in the art would employ.” Id., at 1741. Even
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`common sense can provide such a reason. Arendi S.A.R.L. v. Apple Inc., et al., 832
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`F.3d 1355, 1361 (Fed. Cir. 2016).
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`Petitioners’ Reply in IPR2020-01031
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`Here, there is nothing in McCown that would preclude a user from accessing
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`the web page of URLs more than once, and the prior art cited in the Petition
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`discloses that browser caches are used precisely because a user might access the
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`same web page more than once. EX1010,¶¶[0002]-[0003]; EX1011, 1:66-2:9;
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`EX1030, 72; EX1008, 114. Further, it is simply common sense that such multiple
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`accesses could happen in a system such as McCown’s. People change their minds,
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`or forget what they meant to do. A user, after downloading one or more files using
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`McCown’s system, may later choose to download another, or later remember that
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`she meant to download others. That McCown does not explicitly disclose a user
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`doing so is beside the point. A Skilled Artisan would have understood that some
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`users would seek to access that web page of URLs more than once, and therefore
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`be motivated to cache it and thereby improve the efficiency of the system.
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`EX1003,¶184. That is the very purpose of a cache. EX1010, ¶[0002].
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`d.
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`The Petition Identified The Cited Combination With
`Particularity
`Patent Owner next asserts that the petition failed to rely on “the discrete
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`disclosure of a prior art reference” and instead relies on “mere attorney argument
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`and conclusory statements from their expert,” citing 28 pages of the petition but
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`not identifying any specific aspect of those pages as lacking. POR, 17-18.
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`Those assertions are incorrect. In the 28 pages cited by Patent Owner the
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`petition relied on specifically cited disclosures in the McCown and Dutta, as well
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`Petitioners’ Reply in IPR2020-01031
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`as the detailed analysis of Dr. Houh and portions of eleven other pieces of
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`evidence. See Pet., 16-44. That was far more than attorney argument or a
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`conclusory statement, and more than sufficient to carry petitioner’s burden.
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`e.
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`Patent Owner Ignores The Petition’s Analysis Regarding
`the Cache
`Patent Owner asserts that “McCown does not even mention a cache,” so it
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`could not satisfy the claim requirement of “storing download information in cache
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`storage,” POR, 19, 31, that Dutta does not satisfy that claim requirement either
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`because “the petition “did not point to the teachings of Dutta that provide the
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`explicit disclosure that is missing from McCown” POR, 19-21. But Patent Owner
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`again ignores the analysis in the petition.
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`As demonstrated there, McCown discloses the “download information” (a
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`webpage of URLs) received by the user site, Pet., 39-40, citing EX1005, 10:18-27,
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`which would necessarily mean it is stored at the user site in some manner.
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`McCown further states that “the functionality of the user site software application
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`may be implemented as part of a browser,” EX1005, 9:22-23; Pet., 19. Dutta
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`discloses a browser cache, Pet., 20, citing EX1006, ¶[0029], which a Skilled
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`Artisan would understand to be a storage device for caching (i.e., storing) web
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`pages, Pet., 41-43, citing EX1010, ¶[0002]; EX1011, 1:66-2:1; EX1003, ¶¶182-
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`183.
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`Petitioners’ Reply in IPR2020-01031
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`Thus, McCown discloses storing “download information” – a webpage of
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`URLs – at the user site/browser, and Dutta discloses a browser cache for storing
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`web pages. Combining the two satisfies the claim phrase “storing download
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`information in cache storage.” Thus, the petition did, in fact, “provide the explicit
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`disclosure that is missing from McCown” with particularity.
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`Patent Owner also asserts that there is some unidentified difference between
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`the “conventional browser cache” in McCown and Dutta and the “non-
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`conventional use of wireless device cache storage in the ’254 Patent,” asserting
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`without explanation that the 254 patent’s cache is different due to its “storing and
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`subsequent retrieving of download information for out-of-band operation.” POR,
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`22-23. But the challenged claims are not limited to “out-of-band operation” and
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`neither Patent Owner nor its expert ever explain what that phrase means. That
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`argument does not, therefore, distinguish the challenged claims from the prior art.3
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`Further, McCown’s system can transfer data through ISDN, EX1005, 10:10-
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`14, which provides out-of-band signaling, EX1041, 13:29-33, so the combination
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`
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`3 The 254 Patent refers to an optional “out-band approach,” EX1001, 2:52-55,
`without ever explaining what that phrase means. The claims don’t recite the
`phrase “out-band” either, so that concept cannot distinguish the claims from the
`prior art either.
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`10
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`Petitioners’ Reply in IPR2020-01031
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`cited in the petition would satisfy even the unclaimed “out-of-band” limitation
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`argued by Patent Owner.
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`f.
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`A Skilled Artisan Would Have Combined McCown and
`Dutta
`Patent Owner next argues that a Skilled Artisan would be “discouraged”
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`from making the combination of McCown and Dutta because its expert says the
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`combination would require “major architectural changes in McCown and Dutta”
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`that would require McCown’s hard disk emulation and drag-and-drop/copy-and-
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`past functionality “to be modified and adapted.” POR, 24.
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`But the expert never explains why merely adding a browser cache to
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`McCown and storing a web page in it would require that functionality to be
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`changed in such a substantial way as to discourage a Skilled Artisan from making
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`the combination. Nor does the expert explain what specific changes would need to
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`be made—such ipse dixit expert testimony is entitled to no weight. See Ericsson,
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`890 F.3d 1346; 37 C.F.R. §42.65(a).
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`Moreover, the expert’s opinion lacks credibility. For example, McCown
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`discloses hard disk emulation, EX1005, 10:4-6, 16:2-4, 16:23-17:3, and web
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`browsers that included a cache, see EX1003, ¶¶ 127, 235; EX1005, 8:5-10;
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`EX1024, 7:8-10; EX1025, 3:3-8, so McCown’s hard disk emulation already works
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`with a browser cache in the system. Similarly, for the claimed drag-and-
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`drop/copy-and-past functionality, the petition relied on Coates for its file and
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`Petitioners’ Reply in IPR2020-01031
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`folder manipulation techniques, Pet., 62-74. But Coates also includes a cache and
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`uses it with that functionality, EX1007, 3:22-38, 10:60-66, so Coates’s folder
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`manipulation functionality also already works with a cache in the system. It is
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`nonsense to suggest that simply storing a web page of URLs in a cache would by
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`itself break the functionality disclosed in these references, and neither Patent
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`Owner nor its expert attempt to explain why it might.
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`Indeed, it is undisputed that browser caches were well-known, conventional
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`technology, well within the level of ordinary skill in the art. EX1003, ¶¶47, 138;
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`EX1010, ¶[0002]; EX1011, 1:66-2:1; EX1012, 14:30-33. And Dr. Houh testifies
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`that combining the browser cache of Dutta with the system of McCown “could …
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`have been readily made without undue experimentation,” EX1003, ¶¶137-138, a
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`fact neither Patent Owner nor its expert disputes.
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`All of these techniques were well within the level of ordinary skill, so a
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`Skilled Artisan would not have been discouraged from using them at all. Patent
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`Owner’s unexplained, ipse dixit expert testimony, simply fails to show otherwise.
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`g.
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`It Would Have Been Obvious to Employ a Cache for
`Subsequent Retrieval
`Patent Owner next asserts that “McCown retrieves the download information
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`all at once and sends it to the storage server to use for downloading, which negates
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`the need for any purported subsequent retrieval of the download information at the
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`Petitioners’ Reply in IPR2020-01031
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`wireless device.” POR, 24-26. Patent Owner repeats this argument in slightly
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`different language at POR, 27-28, 28-29, and POR, 29-31.
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`The assertion that “McCown retrieves the download information all at once
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`and sends it to the storage server to use for downloading,” is misleading.
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`McCown discloses retrieving the download information (a web page of URLs) into
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`the user site and then, after the user selects at least some of the URLs listed on the
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`page, sending the selected URLs to the storage server to initiate download of the
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`files pointed to by those URLs. EX1005, 11:17-20. While a user could certainly
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`select all URLs on the web page, thereby causing all URLs to be sent to the storage
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`server, there is nothing in McCown which discloses that example. Indeed,
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`McCown discloses that the user selects only one URL at a time, EX1005, 11:12-
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`14, clearly indicating that the user can select as few as one file for download,
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`which would result in only one URL being sent to the storage server.
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`Thus, as demonstrated in the petition and above, see Pet., 41-42, §II.C.1.c
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`above, a Skilled Artisan would have been motivated to cache the web page of
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`URLs at the user site of McCown in case the user selected fewer than all available
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`files for download and sought to access that web page at a later time to
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`subsequently select additional files for download. Neither Patent Owner nor its
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`expert have an answer to that fact.
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`h.
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`Patent Owner’s Arguments Are Precluded By the Printed
`Matter Doctrine
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`Petitioners’ Reply in IPR2020-01031
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`Patent Owner does not contest that the combination of McCown and Dutta
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`includes a browser cache, or that such a cache would store information, such as
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`web pages. Rather, Patent Owner argues that its claims are patentable because of
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`the specific information – i.e., the recited “download information” – is claimed to
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`be stored in the cache. POR, 18-21. Patent Owner’s argument thus depends on the
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`content of the information its claims require be stored in the cache.
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`Such claim limitations are entitled to no patentable weight, pursuant to the
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`Printed Matter Doctrine. “[P]rinted matter encompasses any information claimed
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`for its communicative content.” C.R. Bard Inc. v. Angiodynamics, Inc., Nos.
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`2019-1756, 2019-1934, 2020 WL 6573331, at *6 (Fed. Cir. Nov. 10, 2020).
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`Moreover, “[c]laim limitations directed to printed matter are not entitled to
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`patentable weight unless the printed matter is functionally related to the substrate
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`on which the printed matter is applied.” Praxair Distrib., Inc. v. Mallinckrodt
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`Hosp. Prods. IP Ltd., 890 F.3d 1024, 1031 (Fed. Cir. 2018) (citations omitted).
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`Here, the claimed “download information” bears no such functional
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`relationship to the cache in which it is stored. The 254 Patent never describes the
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`cache as having any particular relationship to the “download information” at all.
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`The patent states that the download information “becomes available in the cached
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`web-pages,” EX1001, 5:15, so the “download information” is stored in the cache
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`Petitioners’ Reply in IPR2020-01031
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`just as any web page is stored therein. The claim element requiring “download
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`information” be stored in the cache is therefore entitled to no patentable weight.
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`2. McCown/Dutta Satisfy the “transmitting the information
`…” Claim Language
`Patent Owner next contends that McCown/Dutta does not satisfy the
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`“transmitting” language of claims 2 and 17. POR, 32-37. Specifically, Patent
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`Owner asserts that “McCown could not have possibly taught transmitting
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`information that is ‘cached in the wireless device’ because as explained above,
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`McCown makes no mention whatsoever of a cache.” POR, 31. That is incorrect,
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`and merely a restatement of its earlier, erroneous argument. See §II.C.1.e, above.
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`As demonstrated in that section and in the petition, in the combination of McCown
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`and Dutta the “download information” – a webpage of URLs – is stored in the
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`browser cache. Pet., 40-44. As the petition further demonstrated, after the user
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`selects files for download, URLs associated with the selected files, and which are
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`stored in the cache, are included in a “data request” transmitted to the storage site.
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`Pet., 45, EX1003,¶¶197-205.
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`Patent Owner next asserts that the “transmitting” language is not satisfied
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`because “[t]he URLs in McCown are transmitted from the currently displayed web
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`page.” POR, 31-32. There is nothing in McCown that supports the assertion the
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`URLs “are transmitted from the currently displayed web page,” and neither Patent
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`Petitioners’ Reply in IPR2020-01031
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`Owner nor its cited expert testimony identify any portion of McCown that might
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`support that assertion. See id., citing EX2001, ¶¶110-117.
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`Moreover, in this trial, it is the combination of McCown and Dutta that is at
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`issue—not just McCown alone—and as demonstrated in the petition and above, the
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`URLs of the combination are stored in and transmitted from the browser cache, not
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`the display. See Pet., 40-45; EX1003,¶¶197-205; see §II.C.1.a, above. Indeed, the
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`petition specifically argued that one reason to employ the cache of Dutta in the
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`system of McCown would be that transmitting the URLs from a cache would occur
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`“more quickly.” Pet., 23-24.
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`Patent Owner next purports to show that petitioner’s reading of the claims
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`and of McCown do not coincide, but it presents an inaccurate and ultimately
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`twisted version of the petition’s analysis. POR, 32-33. For example, Patent Owner
`
`asserts that petitioner’s view of the claims require that the “wireless device later
`
`(in a subsequent request to the page) retrieves the download information from
`
`the cache and sends the retrieved download information to the storage server.”
`
`POR, 32 (bold and underlining in original). Patent Owner never explains what it
`
`means by “in a subsequent request to the page,” but presumably that language
`
`refers to a user of the combined McCown/Dutta accessing the cached web page of
`
`
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`16
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`Petitioners’ Reply in IPR2020-01031
`
`URLs a second time in order to select additional files. If that is what Patent Owner
`
`means, the petition did include that concept. See Pet. 41-42.4
`
`But Patent Owner then attempts to spin the petition’s analysis of McCown
`
`into something completely inaccurate. In particular, it characterizes that analysis
`
`as “[t]he wireless device (immediately after receipt of the web page) retrieves
`
`the download information from the currently displayed page …”. POR, 32
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`(bold and underlining in original). That is not what McCown discloses and not
`
`what the petition argued.
`
`As the petition explained, in the cited combination of McCown and Dutta,
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`after the user selects files for download (i.e., not “immediately after receipt of the
`
`web page”), the appropriate URLs are retrieved from the cached web page of
`
`URLs and sent to the storage site as a data request. Pet., 14, 40-44. As explained
`
`in the petition and above, in the combination of McCown and Dutta, the URLs are
`
`retrieved from the cache, not “from the currently displayed page.” Pet., 41, see
`
`also id., 19-24, 40-45; see also §II.C.1.a above.
`
`
`
`4 The analysis of the petition was not limited to that scenario, however. Rather, the
`petition demonstrated that it would have been obvious to cache web pages such as
`McCown’s web page of URLs as a matter of course and for other reasons. Pet.,
`40-45.
`
`17
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`Petitioners’ Reply in IPR2020-01031
`
`Patent Owner then purports to have its expert use this fanciful
`
`mischaracterization of the petition’s analysis to show how the claims are
`
`supposedly not satisfied by the prior art. POR, 32-34. Such arguments are just a
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`strawman. They do not address the patentability analysis in the petition, so they
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`cannot save the claims from a finding of obviousness.
`
`Patent Owner then repeats, yet again, its assertion that Dutta does not
`
`disclose a reason for storing McCown’s page of URL’s in the cache and that the
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`page is “not needed past the initial display.” POR, 34. But those erroneous
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`arguments have been dealt with above. See §§Error! Reference source not
`
`found., II.C.1.c.
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`Patent Owner next discusses certain precedent supposedly directed to the
`
`situation where “a claim limitation is wholly absent from the teachings of the prior
`
`art.” POR, 35-37. But that is not the case here, so those arguments and precedent
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`are inapposite. As demonstrated in the petition and above in §II.C.1.e, McCown
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`discloses all elements of the independent claims except actually storing his
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`webpage of URLs in a cache. E.g., Pet., 16-44. Dutta discloses a browser cache, a
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`device known to be specifically designed for the storage of webpages. Pet., 20-21,
`
`42-43. Dutta thus merely provided the place to store the webpage of URLs that
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`was missing from McCown. As the petition demonstrated, combining the two
`
`
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`18
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`Petitioners’ Reply in IPR2020-01031
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`references satisfies all elements of the claims, e.g., Pet., 16-44, and there were
`
`ample reasons to make that combination, Pet., 20-24, 40-44.
`
`But even if that were not the case, Patent Owner’s precedent would not be
`
`applicable here. Those cases are cited for the proposition that “common sense”
`
`cannot be used as a replacement for documentary or other evidence to prove a
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`claim limitation is satisfied by the prior art. See POR, 35-36. But the petition did
`
`not rely on “common sense” for that purpose. See Pet., 20-24, 40-44. Instead, it
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`relied on specifically identified documentary evidence and the analysis of Dr.
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`Houh. See, e.g., id. That is more than sufficient to find that it would have been
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`obvious to store a web page of URLs in a browser cache, a prior art structure
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`designed for the storage of web pages.
`
`3.
`
`A Skilled Artisan Would Have Been Motivated to Combine
`McCown and Dutta
`Patent Owner argues the Petition’s analysis “is rooted in forbidden hindsight
`
`analysis that is based on its incorrect assumption regarding the level of ordinary
`
`skill in the art.” POR, 37. It asserts that “Petitioners failed to provide any
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`evidence whatsoever” that combining McCown and Dutta would satisfy the claims,
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`POR, 37-38, and that the petition supposedly makes only “conclusory arguments”
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`regarding obviousness, POR, 38.
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`All of that is incorrect. The Petition’s detailed analysis is supported by
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`numerous citations to evidence in the prior art, Pet., 19-24, 30, 40-44, 47-52, 56-
`19
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`
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`Petitioners’ Reply in IPR2020-01031
`
`57, 65-69, which is the very opposite of improper hindsight. Caterpillar Inc. v.
`
`Wirtgen Am., Inc., IPR2017-02186, Paper 10 at 26. Moreover, Patent Owner does
`
`not contest the level of ordinary skill set forth in the Petition and adopted at
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`Institution, EX2003, ¶21, and does not specifically contest most of the reasons to
`
`combine analyzed in the petition, see Pet., 40-44. Its bald, unexplained assertions,
`
`wholly at odds with the pages of detailed analysis in the petition and in Dr. Houh’s
`
`testimony, should be ignored as mere attorney argument.
`
`Patent Owner next argues that the petition’s demonstration that storing
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`McCown’s web page of URLs in the cache would make it more readily accessible
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`is supposedly “inconsistent with the disclosure of McCown” because McCown
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`only discloses the user accessing the web page once and shows the user selecting
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`files for downloading by clicking “from a web page, not from a cache of a wireless
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`device. This URL information is then manually forwarded by the user.” POR, 39.
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`These arguments are, however, just a repeat of those demonstrated to be erroneous
`
`above. See §§ II.C.1.a, II.C.1.c.5
`
`
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`5 Moreover, the argument that because the user in McCown selects URLs using a
`mouse, those URLs are sent to the storage site “manually” and that those URLs
`would not be readily accessible is also mistaken. POR, 23-24. The Petition argued
`that storing the URLs in a cache would make them more readily accessible to the
`20
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`Petitioners’ Reply in IPR2020-01031
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`Patent Owner also argues that “[a] POSITA would not have been motivated
`
`to modify McCown to include a cache and to store download information in the
`
`cache because McCown stores the files at the storage site,” and that somehow this
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`means the petition’s analysis is inconsistent with McCown. POR, 41-42. It
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`repeats this argument at POR, 44.
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`Not so. Patent Owner’s argument ignores that some users would seek to
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`download additional files beyond the initial s
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