Trials@uspto.gov
`571-272-7822
`
` Paper 16
`
` Entered December 4, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION and HP INC.,
`Petitioner,
`
`v.
`
`SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`IPR2020-01032
`Patent 10,015,254 B1
`____________
`
`
`
`Before SALLY C. MEDLEY, LYNNE E. PETTIGREW, and SCOTT
`RAEVSKY, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
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`IPR2020-01032
`Patent 10,015,254 B1
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`
`I. INTRODUCTION
`Microsoft Corporation and HP Inc. (collectively “Petitioner”) filed a
`Petition for inter partes review of claims 9–15 of U.S. Patent No.
`10,015,254 B1 (Ex. 1001, “the ’254 patent”). Paper 1 (“Pet.”). Synkloud
`Technologies, LLC (“Patent Owner”) filed a Preliminary Response. Paper
`13 (“Prelim. Resp.”). Institution of an inter partes review is authorized by
`statute when “the information presented in the petition . . . and any
`response . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the
`Preliminary Response, and the evidence of record, we determine that
`Petitioner has established a reasonable likelihood of prevailing with respect
`to the unpatentability of at least one claim of the ’254 patent. Accordingly,
`for the reasons that follow, we institute an inter partes review of claims 9–
`15 of the ’254 patent.
`
`A. Related Matters
`The parties indicate that the ’254 patent is or has been the subject of,
`or relates to, several court proceedings. Pet. 3–4; Papers 6, 10. Petitioner
`also indicates that the ’254 patent is the subject of IPR2020-01031. Paper 4.
`Patent Owner indicates that the ’254 patent is the subject of a petition filed
`by Adobe Inc. in IPR2020-01235. Paper 10.
`
`B. The ’254 Patent
`The Specification of the ’254 patent describes how a wireless device
`may use external storage provided by a storage server. Ex. 1001, 1:21–23.
`The ’254 patent aims to address the lack of storage capacity faced by users
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`on their wireless devices by allowing a wireless device to use an external
`server for storing and retrieving data. Id. at 2:29–37, 5:4–32.
`In one embodiment, the storage server’s external storage may be
`partitioned by dividing it into multiple small volumes of storage space that
`may be exclusively assigned to users. Id. at 4:1–32. Partitioning may be
`done through a web-console on a console host by an administrator. Id. at
`4:5–8. Based on storage information received from the storage server’s
`support software, the administrator may use the web-console to partition
`each storage device and send storage partition information to the support
`software. Id. at 4:10–19. The support software may perform the actual
`partition by dividing the storage device into multiple small volumes, each of
`which may be exclusively assigned to and used by a user of a specific
`wireless device. Id. at 4:23–32.
`The ’254 patent also describes a “wireless out-band download”
`approach for downloading data from a remote location to an assigned
`storage volume. Id. at 2:9–11, 2:52–56, 5:4–32, Fig. 3.
`Figure 3 is illustrative and is reproduced below.
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`Figure 3 shows a “wireless out-band download” approach, which
`includes a sequence of steps for downloading data from a remote web site
`server 15 into an assigned storage volume 11 of external storage system 10
`on server 3. See id. at 2:9–11, 2:52–56, 5:4–32. First, the user of wireless
`device 1 may access remote web server site 15 via web-browser 8 to obtain
`information about the data for downloading (e.g., data name) via path (a).
`Id. at 5:10–15. Second, other software modules 9 of wireless device 1 may
`obtain the download information for the data, which becomes available in
`cached web-pages on wireless device 1. Id. at 5:16–19. Third, the other
`software modules 9 of wireless device 1 may send obtained download
`information to other service modules 7 of storage server 3 via path (b). Id. at
`5:20–22. Fourth, other service modules 7 may send a web download request
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`to remote web site server 15 via path (c) based on the obtained download
`information and receive the downloaded data streams from remote web site
`server 15. Id. at 5:23–28. Lastly, other service modules 7 may write (i.e.,
`store) the data streams to assigned storage volume 11 in server 3 for wireless
`device 1. Id. at 5:29–32.
`The ’254 patent additionally describes retrieving data from an
`assigned storage volume. Id. at 5:33–43. In one embodiment, the user may
`use the wireless device’s web-browser (with embedded video or music
`functionality) to retrieve and play multimedia data files already stored in the
`assigned storage volume on the server. Id. at 5:35–39. In another
`embodiment, the wireless device may retrieve data from the file system of
`the assigned storage volume on the server. Id. at 5:40–43.
`
`C. Illustrative Claim
`Petitioner challenges claims 9–15 of the ’254 patent. Claim 9, the
`sole independent claim challenged in this proceeding, is reproduced below.
`9. A server for delivering storage service, comprising:
`a plurality of storage spaces residing among a plurality of
`storage devices; and
`a computer-readable storage device comprising program
`instructions that, when executed by the server, configure
`the server to control delivering the storage service;
`wherein the program instructions comprise:
`program
`instructions
`for
`the
`server establishing a
`communication link for a first wireless device remotely
`accessing a first one of the storage spaces;
`program instructions for the server sending information of the
`first one of the storage spaces to the first wireless device
`for causing display of the information on the first wireless
`device; and
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`program instructions for the server updating the first one of
`the storage spaces according to a requested operation
`received from the first wireless device upon a user thereof,
`through the displayed information of the first one of the
`storage spaces performing the operation for remotely
`accessing the first one of the storage spaces,
`wherein said operation for remotely accessing the first one of
`the storage spaces comprises from the first wireless device
`storing data therein or retrieving data therefrom, wherein
`the storing data further comprises program instructions for
`the server 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 wireless device.
`Ex. 1001, 6:63–7:23.
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 9–15 are unpatentable based on the
`following grounds (Pet. 4):
`
`Claim(s) Challenged
`9–13, 15
`9–15
`
`35 U.S.C §
`103(a)1
`103(a)
`
`Reference(s)/Basis
`McCown,2 Dutta3
`McCown, Dutta, Coates4
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’254
`patent has an effective filing date before the effective date of the applicable
`AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and
`103.
`2 WO 01/67233 A2, published Sept. 13, 2001 (Ex. 1005, “McCown”).
`3 U.S. Pat. Appl. Pub. No. US 2002/0078102 A1, published June 20, 2002
`(Ex. 1006, “Dutta”).
`4 U.S. Pat. No. 7,266,555 B1, issued Sept. 4, 2007 (Ex. 1007, “Coates”).
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`II. DISCUSSION
`
`A. Multiple Petitions (35 U.S.C. § 314(a))
`On the same day, Petitioner filed two petitions challenging different
`
`claims of the ’254 patent. In the Petition before us, Petitioner challenges
`independent claim 9, along with dependent claims 10–15. In IPR2020-
`01031, Petitioner challenges independent claims 1 and 16 and dependent
`claims 2–8 and 17–20. IPR2020-01031, Paper 1. In accordance with the
`Consolidated Trial Practice Guide,5 Petitioner filed a separate paper,
`identifying a ranking of its petitions and explaining the differences between
`the petitions. Paper 4 (“Explanation”).
`Petitioner argues that “[t]wo petitions were required because the
`analysis of all 20 claims of the 254 Patent could not reasonably fit within the
`word limit for a single petition.” Id. at 1. Petitioner further explains that it
`has challenged all 20 claims of the ’254 patent because it did not know, at
`the time of filing, which claims would be asserted against it in district court.
`Id. at 2. Petitioner argues that “[t]he Board has found that a Petitioner may
`file multiple petitions against a single patent when, for example, the asserted
`claims in the litigation are uncertain and where petitions rely on the same
`prior art.” Id. at 1 (citing Microsoft Corporation v. IPA Techs. Inc.,
`IPR2019-00810, Paper 12, 11–16 (Oct. 16, 2019)).
`Petitioner further asserts that it decided to file two petitions given: the
`length of the claims; Petitioner’s assessment that it could not reasonably fit
`
`
`5 Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov.
`2019), https://www.uspto.gov/TrialPracticeGuideConsolidated, 59–61
`(explaining that the Board may exercise discretion under 35 U.S.C. § 314(a)
`to deny a petition(s) if it determines that more than one petition challenging
`claims of the same patent is not warranted).
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`its analysis in one petition; and distinctions between the scope of claim 9 and
`the scope of claims 1 and 16. Id. at 2.
`Patent Owner did not file a response to Petitioner’s Explanation or
`make any arguments in its Preliminary Response regarding the propriety of
`Petitioner having filed two petitions challenging the ’254 patent. Thus,
`Patent Owner has not assisted to narrow the scope of the issues in dispute.
`See Consolidated Trial Practice Guide, 61 (explaining that the patent owner
`should explain whether the differences identified by the petitioner are
`directed to an issue that is not material or not in dispute and clearly proffer
`any necessary stipulations in support).
`Petitioner’s showing for two petitions is reasonable. In particular, it is
`reasonable to conclude that the length of the claims, and the distinct scope of
`claim 9 and the scope of claims 1 and 16, warranted the filing of two
`petitions. For instance, Petitioner’s showing for claim 9 occupies
`approximately thirty pages of the Petition. Pet. 19–46. Petitioner’s showing
`for claims 1 and 16, which are quite different from claim 9,6 occupies
`approximately thirty-four pages of the other petition. IPR2020-01031, Paper
`1, 16–44, 57–61. Some of the dependent claims in both cases are lengthy or
`complex, necessitating several pages of explanation. See, e.g., Pet. 46–60,
`69–74; IPR2020-01031, Paper 1, 44–57, 61–74. Based on the facts before
`us, we decline to exercise our discretion to deny the petition under 35 U.S.C.
`§ 314(a).
`
`
`6 Claim 9 is directed to a “server,” while claims 1 and 16 are directed to a
`“wireless device” and “method for a wireless device,” respectively.
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`A. Claim Construction
`In this inter partes review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2019). The claim
`construction standard includes construing claims in accordance with the
`ordinary and customary meaning of such claims as understood by one of
`ordinary skill in the art and the prosecution history pertaining to the patent.
`See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en
`banc).
`
`“cache storage”
`Claim 9 recites “cache storage.” Petitioner contends that the meaning
`of “cache storage” should be construed to mean “storage that is more readily
`accessible by the user or user application than the original storage location.”
`Pet. 7–9 (citing Ex. 1003 ¶¶ 61–68). Petitioner explains that its proposed
`construction reflects the ordinary meaning of the term in the context of the
`’254 patent, which “discloses that the user accesses a web page via a web
`browser ‘to obtain information for the downloading’ . . . [which] can be an
`‘IP address of the remote web site and the data name for the downloading.’”
`Id. at 7 (citing Ex. 1001, 5:10–17). Petitioner further explains that the
`information becomes available in the cached web-pages on the wireless
`device after the web-browser accesses the web site. Id. (citing Ex. 1001,
`5:17–19, Fig. 3; Ex. 1003 ¶¶ 62–64). According to Petitioner,
`the download information is stored on the wireless device in
`some convenient memory location of that device, so that it can
`be more readily accessed, without having to make another
`request to the remote server site for the information, when the
`user makes a selection of what information should be
`downloaded and stored.
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`Id. at 8 (citing Ex. 1010; Ex. 1003 ¶ 65).
`Although Patent Owner states that it “does not agree with Petitioner’s
`proposed claim constructions,” Patent Owner does not propose a competing
`construction for “cache storage” at this time. Prelim. Resp. 10. At this
`juncture of the proceeding and based on the current record, we find
`Petitioner’s contentions on this term sufficiently persuasive. Accordingly,
`we adopt Petitioner’s proposed construction for “cache storage” to mean
`“storage that is more readily accessible by the user or user application than
`the original storage location.”
`“utilizing information”
`Claim 9 recites “utilizing information for the file cached in a cache
`
`storage in the first wireless device.” Petitioner contends the phrase means
`“using information stored in the cache storage of the [first] wireless device
`to download a file from a remote server.” Pet. 9 (citing Ex. 1003 ¶ 69).
`According to Petitioner, “[t]he ‘cache storage’ is claimed as part of the
`wireless device, . . . the file being downloaded is . . . transferred directly
`from the remote site to the assigned storage location.” Id. at 10 (citing Ex.
`1001, 5:23–28). Petitioner further contends that “it is the download
`information that gets stored in the cache of the wireless device.” Id. (citing
`Ex. 1001, 5:16–19; Ex. 1003 ¶ 72).
`
`Although Patent Owner states that it “does not agree with Petitioner’s
`proposed claim constructions,” Patent Owner does not propose a
`construction for “cache storage” at this time. Prelim. Resp. 10. At this
`juncture of the proceeding and based on the current record, we adopt
`Petitioner’s construction of “utilizing information for the file cached in a
`cache storage in the first wireless device” to mean “using information stored
`in the cache storage of the [first] wireless device to download a file from a
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`remote server” to clarify that it is the download information that is stored in
`cache storage, not the file itself.
`For purposes of this Decision, we need not expressly construe any
`other claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed
`that are in controversy, and only to the extent necessary to resolve the
`controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.
`in the context of an inter partes review).
`
`B. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art;7 and (4) when in evidence, objective
`
`7 Relying on the testimony of Dr. Henry Houh, Petitioner offers an
`assessment as to the level of ordinary skill in the art and the general
`knowledge of a person of ordinary skill at the time of the ’254 patent.
`Pet. 4–5 (citing Ex. 1003 ¶ 47). For example, Dr. Houh states that a person
`having ordinary skill in the art “would have been someone with a bachelor’s
`degree in electrical, computer engineering, computer science, or related field
`with two years of experience in a relevant technical field, such as remote
`storage systems with related experience in wireless technologies and
`wireless devices.” Ex. 1003 ¶ 47. Patent Owner does not propose an
`alternative assessment. See generally Prelim. Resp.; Ex. 2001 ¶ 21. To the
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`indicia of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`C. Asserted Obviousness of Claims 9–13 and 15 over McCown and Dutta
`Petitioner contends claims 9–13 and 15 are unpatentable under
`35 U.S.C. § 103(a) as obvious over McCown and Dutta. Pet. 19–60. In
`support of its showing, Petitioner relies upon the declaration of Dr. Henry
`Houh. Id. (citing Ex. 1003). In support of its Preliminary Response, Patent
`Owner relies upon the declaration of Mr. Zaydoon Jawadi (Ex. 2001).
`
`1. McCown
`McCown describes a method for downloading files across a network
`from a remote site into a client’s storage space account within a storage site.
`Ex. 1005, 3:26–28, 8:12–13. The method may include the use of a user site,
`a remote site that has a web server, and a storage site. See, e.g., id. at 3:26–
`4:7, 7:17–25.
`The user site may be a machine capable of digital network
`communications with input and output devices for sending and receiving
`information, and a browser for Internet connectivity. Id. at 7:27–8:1, 8:5–6.
`Examples of a user site include a personal computer, laptop, palmtop, or a
`cell phone. Id. at 7:27–29.
`The remote site may be a web site on the Internet with one or more
`files available for downloading. Id. at 6:17–18. The remote site may
`include a storage medium for storing files as well as file lists used to identify
`
`
`extent necessary, and for purposes of this Decision, we accept the
`assessment offered by Petitioner as it is consistent with the ’254 patent and
`the asserted prior art.
`
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`each file, for example, by URL. Id. at 6:23, 7:8–14. The remote site may
`also include a web server for interfacing the remote storage medium to the
`Internet, and the web server may be capable of sending and receiving
`information over the Internet, the information sent including webpages, file
`lists, and files. Id. at 7:17–25.
`The storage site may include a storage medium with storage space
`accounts implemented thereon for clients to access on the Internet. Id. at
`8:11–13, 8:17–18. To access its storage space account, a client must
`provide a user identification and password, which may be authenticated by
`an account manager. Id. at 8:27–9:6. The storage space account may appear
`as a mounted drive to the user site and client. Id. at 9:14–16. The storage
`site may also include a web server for sending and receiving information
`over the Internet and may communicate with the remote site’s web server.
`Id. at 9:9–13.
`In one embodiment, the user site may generate a request for a web
`page containing a file list and send the request to the remote site. Id. at
`10:19–23. Having received the request, the remote site may send the
`requested web page to the user site. Id. at 10:24–25. The user site may then
`display the file list to the client through an output device. Id. at 10:25–29.
`Using an input device, the client may select files from the file list for
`downloading. Id. at 11:4–7. The user site’s software application may accept
`and use the URL of a selected file to generate a data request and send it over
`the Internet to the storage site’s software application. Id. at 11:17–22. The
`data request may be used to generate a download request, which is sent to
`the storage site’s web server. Id. at 12:23–26. The web server may then
`send the download request to the remote site, which may download the files
`identified by the URLs to the storage site. Id. at 12:26–29. The storage site
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`may receive the downloaded files and store them into the client’s storage
`space account. Id. at 12:29–13:2.
`
`2. Dutta
`Dutta describes a method and system for customizing the storage of
`captured Web content. Ex. 1006 ¶ 10.
`A client may receive a Web page displayed by a browser application
`in response to a user’s request to browse the Web page. Id. The user may
`use a control within a toolbar of the browser application to capture content
`being displayed, and the captured data and user parameters may be pushed
`over a wired or wireless network to a server for customized processing. Id.
`¶¶ 10, 21, 35, 37.
`The server may receive the pushed information from the client and
`automatically stores captured data. Id. ¶ 11. In addition, the server may
`automatically modify a user Web page or file that was previously stored in
`the server’s storage, for example, by inserting a hyperlink to the captured
`data. Id. ¶¶ 11, 53. Such a modification may be accomplished by executing
`a server-side script (e.g., a user-specified script contained in the information
`the server received from the client). Id. ¶¶ 11, 44, 52.
`Dutta also describes that the client may maintain a local storage for
`use by the browser and other applications. Id. ¶ 29. The browser may store
`a bookmark file, a browser cache, and other types of files such as user-saved
`Web pages. Id. A user of the client may also register to create a personal
`account for gaining authorization and access to the server and its services.
`Id. ¶ 38. After the user has been registered, the user may be allocated a
`certain amount of online storage space within the server’s storage for storing
`various types of data. Id.
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`3. Discussion
`Claim 9 recites “[a] server for delivering storage service.” Ex. 1001,
`6:63. Petitioner contends McCown discloses network-based storage spaces
`having client accounts and methods for downloading files from remote sites
`into client account spaces. Pet. 20 (citing Ex. 1005, 1:3–5). Petitioner
`further contends that a web server operates in the storage space to provide
`web pages, directories, and other information to aid the client (“a server for
`delivering storage space”). Id. (citing Ex. 1005, 9:9–11). Petitioner further
`explains that the storage site’s web server is capable of communicating with,
`and downloading files to and from, other internet sites. Id. (citing Ex. 1005,
`9:11–13; Ex. 1003 ¶ 284). Patent Owner does not contest Petitioner’s
`showing as to this limitation. See generally Prelim. Resp.
`Claim 9 further recites “a plurality of storage spaces residing among a
`plurality of storage devices.” Ex. 1001, 6:64–65. Petitioner contends that
`McCown describes storage space accounts (“plurality of storage spaces”)
`implemented (“residing among”) on a storage medium. Pet. 20 (citing
`Ex. 1005, 8:17–18). Petitioner further argues that McCown describes that
`the storage medium comprises magnetic hard drives (“plurality of storage
`devices”). Id. at 20–21 (citing Ex. 1005, 8:17–21; Ex. 1003 ¶ 287). Patent
`Owner does not contest Petitioner’s showing as to this limitation. See
`generally Prelim. Resp.
`Claim 9 recites “a computer-readable storage device comprising
`program instructions that, when executed by the server, configure the server
`to control delivering the storage service.” Ex. 1001, 6:66–7:1. Petitioner
`accounts for this limitation. Pet. 21–25. For example, Petitioner contends
`that McCown discloses storage site software application 150 and user site
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`software application 152 provided to storage site 140 and user site 130
`respectively as computer programs recorded on information storage media.
`Id. at 21–22 (citing Ex. 1005, 9:23–26, 9:28–30; Ex. 1009, 8:4–6; Ex. 1030,
`450; Ex. 1003 ¶ 290). Patent Owner does not contest Petitioner’s showing
`as to this limitation. See generally Prelim. Resp.
`Claim 9 further recites “program instructions for the server
`establishing a communication link for a first wireless device remotely
`accessing a first one of the storage spaces.” Ex. 1001, 7:3–5. Petitioner
`accounts for this limitation. Pet. 26–28. For example, Petitioner contends
`that McCown describes that the storage site software application and the
`user site software application are capable of communicating via the Internet.
`Id. at 27 (citing Ex. 1005, 8:11–16, 10:1–2; Ex. 1003 ¶ 306). Patent Owner
`does not contest Petitioner’s showing as to this limitation. See generally
`Prelim. Resp.
`Claim 9 recites “program instructions for the server sending
`information of the first one of the storage spaces to the first wireless device
`for causing display of the information on the first wireless device.” Ex.
`1001, 7:6–9. Petitioner contends that McCown describes that storage
`software 150 sends information to user site software application 152, which
`uses the information to emulate a mounted disk containing file 112 stored in
`storage space account 142. Pet. 28–29 (citing Ex. 1005, 9:14–18, 15:27–
`16:4). Petitioner further contends that McCown describes that the client
`may choose to open the emulated hard drive of the storage space and display
`the contents. Id. at 29 (citing Ex. 1005, 16:23–27; Ex. 1003 ¶ 310).
`Claim 9 further recites “program instructions for the server updating
`the first one of the storage spaces according to a requested operation
`received from the first wireless device upon a user thereof, through the
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`displayed information of the first one of the storage spaces performing the
`operation for remotely accessing the first one of the storage spaces.” Ex.
`1001, 7:10–15. Petitioner accounts for this limitation. Pet. 29–33. For
`example, Petitioner contends that McCown describes a process in which the
`user (using the wireless device) downloads a file from a remote server into
`the storage space that meets the limitation. Id. at 30 (citing Ex. 1005,
`Abstract, 11:4, 12:29–13:2; Ex. 1003 ¶ 315); see also id. at 30–33 (citing
`multiple passages from Ex. 1005 and Ex. 1003).
`Claim 9 further recites
`wherein said operation for remotely accessing the first one of
`the storage spaces comprises from the first wireless device
`storing data therein or retrieving data therefrom, wherein the
`storing data further comprises program instructions for the
`server 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.
`
`
`Ex. 1001, 7:16–23. Petitioner contends that McCown describes the
`transfer of data from remote site 110 to storage site 140 (“storing
`data”) and the transfer of data from storage site 140 to user site 130
`(“retrieving data”) controlled from the user site (“from the first
`wireless device”). Pet. 34 (citing Ex. 1005, 11:4–23, 12:29–13:2,
`16:15–17:21, Fig. 3 (item 328), Fig. 7 (item 714); Ex. 1003 ¶¶ 348–
`350).
`Petitioner further contends that McCown teaches “the storing
`data further comprises program instructions for the server
`downloading a file from a remote server across a network into the first
`one of the storage spaces.” In particular, Petitioner contends that
`McCown discloses that “[t]he remote site receives the download
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`request [from the storage site’s web server] and responds by
`transmitting the files (‘downloading a file from a remote server’)
`identified by the URLs to the storage site (‘across a network’),” which
`“receives the downloaded files and then stores them into the client’s
`storage space account” (“into the first one of the storage spaces”).
`Id. at 34–36 (citing Ex. 1005, 7:17–18, 7:22–25, 12:25–13:2, Figs. 1,
`3; Ex. 1003 ¶¶ 352–354).
`With respect to “storing data . . . through utilizing information for the
`file cached in a cache storage in the first wireless device,” Petitioner argues
`that McCown in view of Dutta satisfies this claim limitation. Id. at 36–46.
`In particular, Petitioner asserts that McCown teaches downloading files from
`a remote site into assigned storage space “through utilizing information for
`the file” because McCown discloses URLs (information) that “indicate what
`files are available for download” and that serve as “a mechanism (e.g., an
`address) used to locate and download those files.” Id. at 36 (citing Ex. 1005,
`7:8–16; Ex. 1030, 487; Ex. 1003 ¶ 357), see also id. at 37 (citing Ex. 1005,
`3:29–4:4, 10:18–27, 11:4–11, 11:20–21, Fig. 3; Ex. 1003 ¶¶ 358–359).
`According to Petitioner, “McCown does not explicitly disclose that
`the URLs identifying files available for download from the remote site
`(‘information’) are ‘cached in a cache storage in the wireless device,’ but it
`would have been obvious to include that functionality in the system of
`McCown in view of Dutta.” Id. at 37–38.
`Petitioner contends that McCown, alone or in view of Dutta, satisfies
`“cache storage.” Id. at 38–43. In particular, Petitioner argues that McCown
`describes that user site 130 can be a cellular telephone or palmtop device and
`that user site 130 includes browser 136. Id. at 38 (citing Ex. 1005, 9:22–23,
`Fig. 1). Petitioner argues that a person having ordinary skill in the art would
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`have understood that the use of a browser cache in wireless devices was
`well-known in the art by 2003 and would have been motivated to use one in
`the browser of McCown in order to provide for the faster retrieval of
`information. Id. at 38–39 (citing Ex. 1010 ¶ 2; Ex. 1011, 1:66–2:1; Ex. 1003
`¶ 361). Exhibit 1010 explains that “caching is a process that web browsers
`typically use that provides for faster retrieval of web page content.”
`Ex. 1010 ¶ 2. The reference goes on to explain how a visited web page is
`cached locally, and that later when the same web page is accessed, content
`for the web page is retrieved from memory rather than from over the
`network, improving download time and reducing bandwidth usage. Id.
`Additionally, the reference explains that browser caching for wireless
`devices was known. Id. ¶¶ 4–5, 14.
`Petitioner alternatively relies on Dutta for teaching “cache storage.”
`Pet. 39–41 (citing Ex. 1006 ¶ 29, Fig. 3; Ex. 1003 ¶¶ 364–365; Ex. 1008,
`114; Ex. 1030, 72). Petitioner articulates the following rationale for
`combining McCown and Dutta:
`[t]he combination would have been obvious because it would
`have been only the arrangement of old elements (the remote
`storage system of McCown and the browser cache technique of
`Dutta) with each performing the same function it had been
`known to perform (remote storage of data objects on a storage
`space; cache memory for faster access to frequently used data
`objects, such as files to be stored) and yielding no more than
`one would expect from such an arrangement (a combined,
`remote storage method with cache memory on a wireless device
`for quick access to data).
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`Id. at 41–42 (citing Ex. 1003 ¶ 368).8 Petitioner further asserts that “a
`Skilled Artisa