IPR2020-01032
`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 IPR2020-01032
`U.S. Patent 10,015,254
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`__________________
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`Synkloud Technologies, LLC.’s Patent Owner Preliminary Response Pursuant
`To 37 C.F.R. § 42.107(a)
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`IPR2020-01032
`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 ...........................................................................................4
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`A.
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`B.
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`Prior Art Storage Systems ..............................................................................................4
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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. PETITIONERS’ PROPOSED GROUNDS FOR REVIEW .....................................................8
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`IV. CLAIM CONSTRUCTION. ....................................................................................................9
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`V.
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`A.
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`B.
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`1.
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`2.
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`3.
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`THE PETITIONERS FAILED TO DEMONSTRATE THEY ARE
`REASONABLY LIKELY TO PREVAIL ON ANY OF THEIR PROPOSED
`OBVIOUSNESS GROUNDS. .....................................................................................11
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`The Petitioners Failed To Set Forth A Proper Obviousness Analysis .........................14
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`Independent Claim 9 As Well As The Claims Dependent Therefrom Would
`Not Have Been Obvious Over McCown In Combination With The Secondary
`References (Proposed Grounds 1 and 2). .....................................................................16
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`The Combination Of McCown and Dutta (Ground 1) Would Not Have
`Taught “downloading a file from a remote server across a network into the
`first one of the storage spaces through utilizing information for the file
`cached in a cache storage in the first wireless device,” As Recited in
`Independent Claim 9. .............................................................................................18
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`The Combination of McCown and Dutta (Grounds 1 and 2) Would Not
`Have Taught “receiving the information for the file from the first wireless
`device, and sending a request of downloading the file to the remote server
`according to the information for the file received,” As Recited in
`Dependent Claim 10. .............................................................................................21
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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 Claim 9 Of The ‘254 Patent
`With A Reasonable Expectation Of Success. ........................................................27
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`VI.
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`CONCLUSION ............................................................................................................36
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`ii
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`IPR2020-01032
`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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`31
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`9
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`12
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`12, 13, 20
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`13, 27
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`18, 25, 26
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`12, 19
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`13
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`11
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`2, 11, 14, 27
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`iii
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`IPR2020-01032
`U.S. Patent No. 10,015,254
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`9
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`12
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`12
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`11
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`1
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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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`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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`IPR2020-01032
`U.S. Patent No. 10,015,254
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`
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`PATENT OWNER’S EXHIBIT LIST
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`Exhibit Number Description
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`2001
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`2002
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`
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`Declaration of Zaydoon Jawadi
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`Curriculum Vitae of Zaydoon Jawadi
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`v
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`IPR2020-01032
`U.S. Patent No. 10,015,254
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`I. INTRODUCTION
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` The Board should deny the present request for inter partes review of U.S.
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`Patent No. 10,015,254 (“the ’254 patent”) because there is not a reasonable
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`likelihood that the Petitioners would prevail at trial with respect to at least one
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`claim of the ’254 patent for three separate and independent reasons.
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`First, each of Petitioners proposed grounds of rejection is missing one or more
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`limitations of the claims of the ’254 patent. Infra, §§ V.A.2 and V.B.2-8.
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`For example, none of the combinations of prior art references asserted by
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`Petitioners would have taught “downloading a file from a remote server across
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`a network into the first one of the storage spaces through utilizing information
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`for the file cached in a cache storage in the first wireless device,” as recited in
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`independent claim 9 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 remote server
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`(e.g., a web site) to a storage space.
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`Second, the Petitioners did not present any objective evidence as to why
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`one of ordinary skill in the art would have been motivated to modify McCown,
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`1
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`IPR2020-01032
`U.S. Patent No. 10,015,254
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`the sole primary reference, with the teachings of the secondary references
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`(Dutta and Coates), and reasonably expect success in achieving the invention
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`recited by the challenged claims of the ‘254 patent. That is, the Petitioners did
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`not show that a “skilled artisan would have been motivated to combine the
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`teachings of the prior art references to achieve the claimed invention, and that
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`the skilled artisan would have had a reasonable expectation of success in doing
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`so.” OSRAM Sylvania, Inc. v. Am Induction Techs., Inc., 701 F.3d 698, 706 (Fed.
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`Cir. 2012).
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`Third, the Petitioners neglected to follow the legal framework for an
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`obviousness analysis set forth long ago by the Supreme Court. 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.”) That framework requires consideration of the following
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`factors: (1) the scope and content of the prior art, (2) any differences between
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`the claimed subject matter and the prior art, and (3) the level of skill in the art.
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`The Board has previously warned that failure to identify differences between
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`the cited art and the claims is a basis for denying a petition:
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`A petitioner who does not state the differences between
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`a challenged claim and the prior art, and relies instead on the
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`Patent Owner and the Board to determine those differences based
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`2
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`IPR2020-01032
`U.S. Patent No. 10,015,254
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`on the rest of the submission in the petition risks having the
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`corresponding ground of obviousness not included for trial for
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`failing to adequately state a claim for relief.
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`Liberty Mutual v. Progressive Casualty, CBM-2012-00003, paper 7 at 2 – 3.
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`The Petitioners ignored the Board’s warning by failing to identify the
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`differences between the challenged claims and the prior art. That is, the
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`Petitioners failed to identify the claim limitations that it believed are missing
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`from the primary reference (i.e., McCown) and are instead taught by the
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`secondary references (e.g., Dutta and Coates). Petition, pp. 19-46. Rather,
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`Petitioners provided a description of each reference followed by a conclusory
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`statement that the references taught certain claim limitations, leaving the
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`Board to figure out whether the primary or secondary reference best teaches
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`the claim limitation. Ibid. Under this circumstance, it would be “inappropriate
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`for the Board to take the side of the Petitioner to salvage an inadequately
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`expressed ground …” Liberty Mutual v. Progressive Casualty, CBM-2012-00003,
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`paper 7 at 2 – 3; paper 8 at 14-15.For this additional reason, inter partes review
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`based on obviousness should be denied. See infra, § V.A.
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`For these reasons and those explained more fully below, the Petitioners
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`failed to show that it is reasonably likely to prevail on any proposed ground.
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`Accordingly, the Board should deny the Petition.
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`3
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`IPR2020-01032
`U.S. Patent No. 10,015,254
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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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`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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`U.S. Patent No. 10,015,254
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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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`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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`5
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`IPR2020-01032
`U.S. Patent No. 10,015,254
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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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`(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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`IPR2020-01032
`U.S. Patent No. 10,015,254
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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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`assigned file system (11) on the server (3).”
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`Id. at 5:10-32.
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`IPR2020-01032
`U.S. Patent No. 10,015,254
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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 storage system (10).
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`The 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 at an
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`external server to enable easy and efficient downloading of data (e.g., a web
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`page, a file) from a web server to a remote storage space. For example, if a user
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`of the wireless device of the claimed invention of the ‘254 patent were to access
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`a picture from a web site (e.g., New York Times) either to view it or to
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`download it to remote storage, the New York Times web site would not need
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`to do anything differently; it would simply transmit a file containing the
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`picture to the requester without needing to know whether the picture would be
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`stored in remote storage or viewed on the device. In other words, the web sites
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`need not be adapted or changed in any way to operate with the wireless device
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`of the present invention.
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`III. PETITIONERS’ PROPOSED GROUNDS FOR REVIEW
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`For the Board’s convenience, below is a summary (as understood by
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`Patent Owner) of the claim rejections proposed by the Petitioner:
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`8
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`IPR2020-01032
`U.S. Patent No. 10,015,254
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`i.
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`Claims 9-13 and 15 are alleged to have been obvious under §103
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`over International Publication No. WO 01/67233 to McCown (“McCown”) in
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`view of U.S. Publication No. 2002/0078102 to Dutta (“Dutta); and
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`ii. Claims 9-15 are alleged to have been obvious under §103 over
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`McCown in View of Dutta, and further in view of U.S. Patent No. 7,266,555
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`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
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`they mean what they say and have the ordinary meaning that would be
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`attributed to those words by persons skilled in the relevant art.” Texas
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`Digital System, Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed. Cir. 2002)
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`(emphasis added) (internal quotation marks omitted) (citing CCS Fitness, Inc. v.
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`Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002); K-2 Corp. v. Salomon
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`S.A., 191 F.3d 1356, 1362-63 (Fed. Cir. 1999); Johnson Worldwide Assocs., Inc. v.
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`9
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`IPR2020-01032
`U.S. Patent No. 10,015,254
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`Zebco Corp., 175 F.3d 985, 989 (Fed. Cir. 1999); Specialty Composites v. Cabot
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`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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`Although Patent Owner does not agree with Petitioners’ proposed claim
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`constructions, the Board need not address claim construction at this stage
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`because under Petitioners’ own claim construction, Petitioners failed to show
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`that they are reasonably likely to prevail against any claim on any ground.
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`None of the challenged claims would have been obvious under Petitioners’
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`own claim construction.
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`10
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`IPR2020-01032
`U.S. Patent No. 10,015,254
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`V. THE PETITIONERS FAILED TO DEMONSTRATE THEY ARE
`REASONABLY LIKELY TO PREVAIL ON ANY OF THEIR
`PROPOSED OBVIOUSNESS GROUNDS.
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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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`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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`IPR2020-01032
`U.S. Patent No. 10,015,254
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`Importantly, the burden rests on Petitioners—there is no burden on Patent
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`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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`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
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`Inc. v. Boehringer Ingelheim International GMBH, 2017 WL 1052517*1 (PTAB
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`2017):
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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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`IPR2020-01032
`U.S. Patent No. 10,015,254
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`While references relied upon are understood in light of the level of skill
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`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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`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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`The Board should decline to institute an inter partes review on the
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`combination of prior art for the proposed obviousness grounds because (i) the
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`Petitioners failed to set forth a proper obviousness analysis because it did not
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`identify the claim limitations that it believed are missing from the primary
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`reference (i.e., McCown) and are instead taught by the secondary references
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`(e.g., Dutta, Coates), (ii) the Petition failed to demonstrate that one of ordinary
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`skill in the art would have been motivated to combine the teachings of the
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`numerous prior art references in the combination to achieve the claimed
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`invention with a reasonable expectation of success, (iii) the Petition failed to
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`demonstrate that any of the different combinations would have taught every
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`element of any of the challenged claims.
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`A. The Petitioners Failed To Set Forth A Proper Obviousness Analysis
`
`The Petitioners neglected to follow the legal framework for an
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`obviousness analysis set forth long ago by the Supreme Court. 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.”). The Board has previously warned that failure to identify
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`differences between the cited art and the claims is a basis for denying a
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`petition:
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`A petitioner who does not state the differences between
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`a challenged claim and the prior art, and relies instead on the
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`Patent Owner and the Board to determine those differences based
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`on the rest of the submission in the petition risks having the
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`corresponding ground of obviousness not included for trial for
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`failing to adequately state a claim for relief.
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`Liberty Mutual v. Progressive Casualty, CBM-2012-00003, paper 7 at 2 – 3. The
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`Petitioners ignored the Board’s warning by failing to identify the differences
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`between the challenged claim and the prior art. That is, the Petitioners failed
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`to identify the claim limitations that it believed are missing from the primary
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`reference (i.e., McCown) and that it believed are instead taught by the
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`secondary references (e.g., Dutta, Coates). See e.g., Petition, pp. 16-46. Rather,
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`the Petitioners listed a claim limitation and provided a partial description of
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`one or more of the references, leaving the Board to figure out which reference
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`the Petitioners are principally relying upon to teach the claim limitation and
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`why the Petitioners relied upon a particular secondary reference. Ibid.
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`This technique obscures the arguments, forcing the Patent Owner to
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`“conjure up arguments against its own patent.” Liberty Mutual v. Progressive
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`Casualty, CBM12-00003, paper 8 at 14 - 15. The Board has previously warned
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`petitioners against this practice:
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`We address only the basis, rationale, and reasoning put forth by
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`the petitioner and resolve all vagueness and ambiguity in
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`Petitioner’s arguments against the Petitioner. … It would be
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`unfair to expect the Patent owner to conjure up arguments against
`
`its own patent, and just as inappropriate for the Board to take the
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`side of the Petitioner to salvage an inadequately expressed ground
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`…”
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`Id. On this basis alone, inter partes review based on obviousness should be
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`denied.
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`
`
`B.
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`Independent Claim 9 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 “downloading a file from a remote server
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`across a network into the first one of the storage spaces through utilizing
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`information for the file cached in a cache storage in the first wireless device,”
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`as recited in independent claim 9. EX1001, 7:20-23. Indeed, the combination
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`would not even have taught that this “[download] information for the file [is]
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`cached in a cache storage in the first wireless device.” Moreover, the
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`combination would not have taught “receiving the information for the file
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`[cached in a cache storage in the first wireless device] from the first wireless
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`device,” as recited in dependent claim 10. EX1001, 7:24-28. In addition, the
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`combination would not have taught “sending a request of downloading the file
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`to the remote server according to the information for the file [cached in a cache
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`storage of the first wireless device],” as recited in dependent claim 10. Id. at
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`7:28-30.
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`Moreover, Petitioners’ argument that a person of ordinary skill in the art
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`(POSITA) would have been motivated to store download information for a file
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`in a cache of a wireless device and to use it to download a file from a remote
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`server across a network into a remote storage space is inconsistent with the
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`disclosure of McCown itself. As explained by Mr. Jawadi, the universal
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`resource locators (URLs) in McCown “are used only once by the user
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`(negating the need to store the URLs in cache),” and thus, there would not
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`have been any motivation to store the URLs “at the wireless device (whether
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`in cache or otherwise).” Id. at ¶ 42. As further explained by Mr. Jawadi, “the
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`files pointed to by the URLs [in McCown] will be stored in the storage site,
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`negating the need to store the download information in cache at the wireless
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`devices.” Id. at ¶ 44. Accordingly, “[s]toring McCown’s URLs in cache is
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`unnecessary, wasteful, counterintuitive, and not obvious.” Id. at ¶ 48.
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`Where petitioners elect to rely, not on the discrete disclosure of a prior
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`art reference, but rather on the nebulous knowledge of “those of skill in the
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`art,” as Petitioners have done here, they are required to demonstrate the basis
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`and adequacy of that knowledge with specificity – a conclusory statement or
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`generalization will not be sufficient to meet the burden imposed. Kolbe & Kolbe
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`Millwork Co., Inc. v. Sierra Pacific Industries, 2019 WL 5070454 *20 (PTAB
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`2019):
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`In an obviousness analysis, the Board can properly “decline[ ] to
`accept a conclusory assertion from a third party about general
`knowledge in the art without evidence on the record, particularly
`where it is an important structural limitation that is not evidently
`and indisputably within the common knowledge of those skilled in
`the art.” K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365
`(Fed. Cir. 2014).
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`Here, Petitioners have done exactly that which the Board has found to be
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`insufficient to meet their burden: they have presented mere attorney argument
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`and conclusory statements from their expert to support their position that the
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`limitations that are wholly absent from the prior art would have been obvious.
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`See e.g., Petition, 19-45.
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`For these reasons as explained in detail below, Petitioners did not
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`demonstrate that the combination of McCown and Dutta would have taught
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`all the limitations of independent claim 9 or the claims dependent therefrom,
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`or that a POSITA would have been motivated to modify McCown to include
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`the missing limitations. Petitioners are not reasonably likely to prevail against
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`any claim. Institution should be denied.
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`1.
`
`The Combination Of McCown and Dutta (Ground 1) Would Not
`Have Taught “downloading a file from a remote server across a
`network into the first one of the storage spaces through utilizing
`information for the file cached in a cache storage in the first
`wireless device,” As Recited in Independent Claim 9.
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`Petitioners allege that the claim limitation quoted above would have
`
`been taught by the combination of McCown and Dutta based on its position
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`that the claim term “cache” indicates that “the download information is stored
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`on the wireless device in some convenient memory location of that device so
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`that it can be more readily accessed, without having to make another request to
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`the remote server site for the information, when the user makes a selection of
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`what information should be downloaded and stored.” Petition, 8.
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`But under Petitioners’ own construction, the claim limitation quoted
`
`above would not have been taught by the combination of McCown and Dutta.
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`McCown does not even mention a cache and therefore, could not have
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`possibly taught or suggested storing download information in cache storage or
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`retrieving download information from cache storage. EX2001, ¶ 36. Indeed
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`Petitioners admitted that “McCown does not explicitly disclose that the URLs
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`identifying files available for download from the remote site (‘information’) are
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`‘cached in a cache storage in the first wireless device.’” Petition, 37.
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`Moreover, Dutta does not compensate for the deficiencies of McCown.
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`Petitioners cite to Dutta generally as providing a POSITA with the
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`understanding to modify the McCown to include a cache storing download
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`information identifying files at a remote site. Petition, pp. 38-40. But where a
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`Petition relies on a secondary reference to provide explicit disclosure missing
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`from a primary reference, the portion of the secondary reference teaching must
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`be pointed to with particularity. Mylan Pharmaceuticals Inc. v. Boehringer
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`Ingelheim International GMBH, 2017 WL 1052517 *1 (PTAB 2017) citing to
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`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016):
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`In Harmonic, the Federal Circuit held that “it was
`Harmonic's burden to explain to the Board how Haskell combined
`with Rossmere rendered the challenged claims unpatentable. With
`respect to claim 11 of the '291 patent, Harmonic did not do so.”
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`Petitioners here also did not point to the teachings of Dutta that provide the
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`explicit disclosure that is missing from McCown. See Pet