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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. IPR2020-01032
`________________________
`PETITIONERS’ REPLY BRIEF
`________________________
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`Title:
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`Petitioners’ Reply in IPR2020-01032
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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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`Patent Owner’s Expert Testimony Is Not Credible .............................. 1
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`Patent Owner’s Claim Constructions Are Legally Erroneous .............. 2
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`1.
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`Download a file from a remote server … Error! Bookmark not
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`defined.
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`2.
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`A storage space of a predefined capacity … ............................... 4
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`C.
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`The Challenged Claims Are Unpatentable ............................................ 4
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`1. McCown/Dutta Satisfy “download[ing] a file from a remote
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`server …” .................................................................................... 4
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`2.
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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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`3. McCown and Dutta Satisfy “a storage space of a predefined
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`capacity …” ............................... Error! Bookmark not defined.
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`4.
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`A Skilled Artisan Could Combined McCown and Dutta With a
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`Reasonable Expectation of Success ........ Error! Bookmark not
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`defined.
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`5.
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`Patent Owner Has Failed to Prove Any Relevant Objective
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`Indicia of Non-Obviousness ..................................................... 22
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`i
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`Petitioners’ Reply in IPR2020-01032
`Petitioners’ Reply in IPR2020-01032
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`III. CONCLUSION .............................................................................................. 25
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`CONCLUSION .............................................................................................. 25
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`III.
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`ii
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`ii
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`Petitioners’ Reply in IPR2020-01032
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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 site, to
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`include a browser cache for storing that webpage. Patent Owner responds with a
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`scattershot of repetitive arguments uniformly ignoring the actual analysis included
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`in the petition. But Patent Owner’s strawman arguments and mischaracterizations
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`of the 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, Ericsson Inc. v. Intellectual Ventures
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`I LLC, 890 F.3d 1336, 1346 (Fed. Cir. 2018), and should be rejected.
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`Petitioners’ Reply in IPR2020-01032
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`Moreover, the expert applies a legally erroneous understanding of the law.
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`He testifies, for example, that he understands the term “obvious” to refer “to
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`subject matter that would have occurred to a POSITA to which the ’254 Patent
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`is directed without inventive or creative thought.” EX2001,¶23.1 That, is not
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`the standard for obviousness. E.g., KSR Int'l Co. v. Teleflex, Inc., 127 S.Ct. 1727,
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`1740 (2007).
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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).
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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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`1 In this brief, emphasis has been added unless otherwise indicated.
`2
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`Petitioners’ Reply in IPR2020-01032
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`Patent Owner argues the claim phrase “downloading a file from a remote
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`server 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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`should be construed to “require[] information needed to download a file from a
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`remote server to be (i) stored in a cache storage of a wireless device and (ii)
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`utilized to download the file across a network into an assigned storage space for
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`the user of the wireless device.” POR, 9.
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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. For example,
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`the Board’s construction requires that it is “the download information that is stored
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`in cache storage, not the file itself,” Inst. Dec., 10-11, which is exactly what is
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`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., 10-11, which is exactly
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`what is required by part (ii) of Patent Owner’s proposal.
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`The main difference is that Patent Owner changes the claim phrase
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`“download information” to “information needed to download a file from a remote
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`server.” Those two phrases are not the same, as nothing in the words “download
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`information” limits the claim to information “needed” to perform a download (as
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`Petitioners’ Reply in IPR2020-01032
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`opposed to information simply “utiliz[ed]” to perform such a download), and
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`“information needed to download a file” could include all kinds of information
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`never hinted at in the patent, e.g., checksum information, decryption codes,
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`account numbers. Patent Owner does not attempt to justify switching in its
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`“needed to download” language or explain why its interpretation should be used
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`instead of the Board’s.2
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`C.
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`The Challenged Claims Are Unpatentable
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`1. McCown/Dutta Satisfy the “downloading a file from a
`remote server …” Language of Claim 9
`Patent Owner argues the combination of McCown and Dutta does not satisfy
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`the claim language requiring “downloading a file from a remote server …,” POR,
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`14, but its confused reasoning ignores the disclosure of those references and the
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`analysis of the petition.
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`a.
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`In McCown/Dutta, the Download Information is
`Retrieved from the Cache
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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., 36-46. 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 IPR2020-01032
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`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, 15, citing
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`EX2003,¶34; see also POR, 20, 22-23, 40-41 47-49.
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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 based on a
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`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., 43-44. Thus, in the combination analyzed in the petition, the URLs
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`are obtained from the cache, not from the web page display.
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`a.
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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 it was known that
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`browser caches, such as that of Dutta, were used to store web pages for faster
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`retrieval. Pet., 42-43, citing EX1010, ¶[0002]; EX1011, 1:66-2:1; EX1006,
`5
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`¶[0029]. Thus, a Skilled Artisan would have understood that the purpose of
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`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. Pet., 39-45.
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`b.
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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 also argues that the petition’s showing that it would have been
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`obvious to store the “download information”in a browser cache “is inconsistent
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`with the disclosure of McCown” because the URLs of McCown are supposedly
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`“used only once by the user” so there would be no need to cache them. POR, 15-
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`16; see also POR, 26-27, 40-44.
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`Just because McCown may disclose the user accessing the URL’s only once
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`does not mean that it would have been non-obvious to access them more than once,
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`nor must McCown provide a reason for doing so. Any need or problem in the field
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`and addressed by the patent can provide such a reason. KSR, 127 S.Ct. at 1742.
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`Indeed, an obviousness analysis “need not seek out precise teachings directed to
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`the specific subject matter of the challenged claim, for a court can take account of
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`the inferences and creative steps that a person of ordinary skill in the art would
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`employ.” Id., at 1741. Even common sense can provide such a reason. Arendi
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`S.A.R.L. v. Apple Inc., et al., 832 F.3d 1355, 1361 (Fed. Cir. 2016).
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`There is nothing in McCown that would preclude a user from accessing the
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`web page of URLs more than once, and the prior art cited in the Petition discloses
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`that browser caches are used precisely because a user might access the same web
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`page again. EX1010,¶¶[0002]-[0003]; EX1011, 1:66-2:9; EX1030, 72; EX1008,
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`114. Further, such multiple accesses could happen in a system such as McCown’s.
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`People change their minds, or forget what they meant to do. A user, after
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`downloading one or more files using McCown’s system, may later choose to
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`download another, or later remember that she meant to download others. A Skilled
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`Artisan would have understood that some users would seek to access that web page
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`of URLs more than once, and therefore be motivated to cache it and thereby
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`improve the efficiency of the system. EX1003,¶184. That is the very purpose of a
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`cache. EX1010, ¶[0002].3
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`3 Indeed, Patent Owner’s interpretation of McCown would render McCown absurd,
`as Patent Owner essentially argues that, in the system of McCown, each time a
`user obtains a list of URLs from the remote site, all of the URLs are selected and
`sent to the storage site. But McCown discloses that “the client 120 selects one file
`112 at a time,” EX1005, 11:12-13, which would be needless functionality if every
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`c.
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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 36 pages of the petition but
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`not identifying any specific aspect of those pages as lacking. POR, 16-17.
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`Those assertions are incorrect. In the 36 pages cited by Patent Owner the
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`petition relied on specifically cited disclosures in the McCown and Dutta –
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`including McCown’s disclosure that the webpage of URLs is provided to the user
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`site and Dutta’s disclosure of a browser cache for storing web pages, Pet, 36-40, as
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`well as the detailed analysis of Dr. Houh and portions of eleven other pieces of
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`evidence. See Pet., 19-45. That was far more than attorney argument or
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`conclusory statement, and more than sufficient to carry petitioner’s burden.4
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`d.
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`Patent Owner Ignores The Petition’s Analysis Regarding
`the Cache
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`
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`URL on the list was always going to be sent to the storage site no matter what the
`user selected.
`4 Patent Owner also argues that the petition “failed to provide experimental data or
`other objective evidence” of obviousness. POR, 48-49. Incorrect. The numerous
`citations to the prior art and expert opinion of Dr. Houh is more than sufficient
`objective evidence to demonstrate the obviousness of the claims under Federal
`Circuit precedent.
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`8
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`Petitioners’ Reply in IPR2020-01032
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`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, 18-19, 30, and that Dutta does not satisfy that claim requirement
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`either 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, 19-20.
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`As demonstrated, McCown discloses the “download information” (a
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`webpage of URLs) received by the user site, Pet., 36-39, citing EX1005, 10:18-27,
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`and states that “the functionality of the user site software application may be
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`implemented as part of a browser,” EX1005, 9:22-23; Pet, 38. Dutta discloses a
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`browser cache, Pet., 39, citing EX1006, ¶[0029], which a Skilled Artisan would
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`understand to be a storage device for caching web pages, Pet., 37-39, citing
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`EX1010, ¶[0002]; EX1011, 1:66-2:1; EX1003,¶¶182-183.
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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. Thus, the petition did, in fact, “provide the explicit disclosure that is
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`missing from McCown” with particularity.
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`Patent Owner next 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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`Petitioners’ Reply in IPR2020-01032
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`subsequent retrieving of download information for out-of-band operation.” POR,
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`21-22. 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.5
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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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`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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`e.
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`A Skilled Artisan Would Have Combined McCown and
`Dutta
`Patent Owner argues that a Skilled Artisan would be “discouraged” from
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`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, 23.
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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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`
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`5 The 254 Patent refers to an optional “out-band approach,” EX1001, 2:52-55,
`without ever explaining what that phrase means.
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`the combination. KSR, 127 S.Ct. at 1745. Nor does the expert explain what
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`specific changes would need to be made—such ipse dixit expert testimony is
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`entitled to no weight. See Securus Techs. Inc. v. Glob. Tel*Link Corp., 701 F.
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`App’x 971, 974–976 (Fed. Cir. 2017); 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, EX1003,¶¶ 127, 235; EX1005, 8:5-10; EX1024,
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`7:8-10; EX1025, 3:3-8, so McCown’s hard disk emulation already works with a
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`browser cache in the system. Similarly, for the claimed drag-and-drop/copy-and-
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`past functionality, the petition relied on Coates for its file and folder manipulation
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`techniques, Pet., 62-74. But Coates also includes a cache and uses it with that
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`functionality, EX1007, 3:22-38, 10:60-66, so Coates’s folder manipulation
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`functionality also already works with a cache in the system. It is nonsense to
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`suggest that simply storing a web page of URLs in a cache would by itself break
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`the functionality disclosed in these references, and neither Patent Owner nor its
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`expert attempt to explain how it could.
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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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`Petitioners’ Reply in IPR2020-01032
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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. All of these techniques were well
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`within the level of ordinary skill, so a Skilled Artisan would not have been
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`discouraged from using them at all. Patent Owner’s unexplained, ipse dixit expert
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`testimony, simply fails to show otherwise.
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`f.
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`It Would Have Been Obvious to Employ a Cache for
`Subsequent Retrieval
`Patent Owner next argues 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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`wireless device.” POR, 23-25, 26-27, 27-28, 29-30.
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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 select all
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`URLs on the web page, thereby causing the web page of all URLs to be sent to the
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`storage 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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`12
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`Petitioners’ Reply in IPR2020-01032
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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, a Skilled Artisan would
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`have been motivated to cache the web page of URLs at the user site of McCown in
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`case the user selected fewer than all available files for download and sought to
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`access that web page at a later time to subsequently select additional files for
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`download. Pet., 40-46 Neither Patent Owner nor its expert have an answer to that
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`fact.
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`g.
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`Patent Owner’s Arguments Are Precluded By the Printed
`Matter Doctrine
`Patent Owner may assert its claims are patentable because the specific
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`information – i.e., the recited “download information” – is claimed to be stored in
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`the cache, but that argument depends on the content of the information its claims
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`require be stored in the cache, and such claim limitations are entitled to no
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`patentable weight, pursuant to the Printed Matter Doctrine. “[P]rinted matter
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`encompasses any information claimed for its communicative content.” C.R.
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`Bard Inc. v. Angiodynamics, Inc., Nos. 2019-1756, 2019-1934, 2020 WL 6573331,
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`at *6 (Fed. Cir. Nov. 10, 2020).
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`2. McCown/Dutta Satisfy the “receiving the information …”
`Language of claim 10
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`13
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`Petitioners’ Reply in IPR2020-01032
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`Patent Owner next contends that the McCown/Dutta does not satisfy the
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`“receiving” language of claim 10 because McCown “makes no mention” of a
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`cache and because the URLs of McCown are supposedly transmitted from “the
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`currently displayed web page,” rather than from a cache. POR, 30. There is
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`nothing in McCown that supports the assertion the URLs are transmitted from “the
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`currently displayed web page,” and neither Patent Owner nor its cited expert
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`testimony identify any portion of McCown that might support that assertion. See
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`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 and as demonstrated in the petition and above, the URLs of the combination
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`are stored in and transmitted from the browser cache, not the display. See Pet., 40-
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`46; EX1003,¶¶364-376; see §II.C.1.a, above. Indeed, the petition specifically
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`argued that one reason to employ the cache of Dutta in the system of McCown
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`would be that transmitting the URLs from a cache would occur “more quickly,”
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`Pet., 43, which would mean that the server would receive them “more quickly.”
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`Id.
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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 version of the
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`petition’s analysis. POR, 30-33. For example, Patent Owner asserts that
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`petitioner’s view of the claims require that the “wireless device later retrieves the
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`Petitioners’ Reply in IPR2020-01032
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`download information from the cache and sends the retrieved download
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`information to the storage server.” POR, 32 (bold and underlining in original).
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`Patent Owner never explains what it means by “in a subsequent request to the
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`page,” but presumably that language refers to a user of the combined
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`McCown/Dutta accessing the cached web page of URLs a second time in order to
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`select additional files. If so, the petition did include that concept. See Pet. 41-45.6
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`Patent Owner then attempts to twist the disclosure of McCown. In
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`particular, stating “McCown describes that the wireless device retrieves the
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`download information from the currently displayed page (not later, and not
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`from cache) and sends the retrieved download information to the storage server.”
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`POR, 32 (bold and underlining in original). That is not what McCown discloses.
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`Neither Patent Owner nor its cited testimony (EX2001, ¶115) identify any portion
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`of McCown that could support the assertion that McCown “retrieves the download
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`information from the currently displayed page.”
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`6 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, so McCown’s web page would have been cached during the user’s first attempt
`to select files for download as well.
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`Failure of proof aside, it is the combination of McCown and Dutta described
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`in the petition that is at issue here, and in that combination the URLs are stored in,
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`and transmitted from, the cache. Pet., 43-44. As the petition explained, in the
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`cited combination of McCown and Dutta, after the user selects files for download
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`(i.e., not “immediately after receipt of the web page”), the appropriate URLs are
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`retrieved from the cached web page of URLs and sent to the storage site as a data
`
`request. Pet., 39-44. 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” as Patent Owner contends. Pet., 43-44, see also id., 39-
`
`44; see also §II.C.1.a above.
`
`Patent Owner then purports to have his expert use this fanciful
`
`mischaracterization of the petition’s analysis to show how the claims are
`
`supposedly not satisfied by the prior art. POR, 31-33. Such arguments do not
`
`address the patentability analysis in the petition, so they cannot save the claims
`
`from a finding of obviousness.
`
`Patent Owner next asserts that “Dutta does not cure this deficiency in
`
`McCown.” POR, 33. As the petition demonstrated, it was known that browser
`
`caches, such as that of Dutta, were used to store web pages for faster retrieval.
`
`Pet., 42-44, citing EX1010, ¶[0002]; EX1011, 1:66-2:1; EX1006, ¶[0029]. Thus, a
`
`Skilled Artisan would have understood that the purpose of Dutta’s browser cache
`
`
`
`16
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`
`
`Petitioners’ Reply in IPR2020-01032
`
`was to cache web pages, such as the web page of URLs disclosed in McCown.
`
`The petition was not required to show that Dutta itself stated as much or provided a
`
`reason to use the cache in the system of McCown for that purpose, as ample
`
`evidence of those facts from other sources was identified in the petition. Pet., 40-
`
`45.
`
`3. McCown/Dutta Satisfy the “sending information …”
`Language of Claim 13
`Patent Owner next argues that McCown/Dutta does not satisfy certain
`
`requirements of claim 13. POR, 34-37. First, Patent Owner argues that the
`
`creation of user accounts and provisioning of storage space as disclosed in
`
`McCown does not necessarily require partitioning. POR, 35-37. But the only
`
`evidence it cites is the ipse dixit testimony of its expert, who merely states without
`
`citation or explanation that he has created user accounts on Windows XP
`
`computers “without my creating any partitions for any of the users and without
`
`Windows XP’s creating any partitions for any the users.” EX2003,¶221.
`
`However, that is irrelevant because Dr. Houh explained that the disclosure of the
`
`storage space provisioned into accounts assigned to respective users would be
`
`understood by a Skilled Artisan to include the partitioning of storage volumes and
`
`allocation of said partitioned memory to specific users. EX1003,¶404 (citing
`
`
`
`17
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`
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`Petitioners’ Reply in IPR2020-01032
`
`EX1031,¶[0010]. But Patent Owner’s expert never addressed this evidence nor
`
`cited any evidence to support his assertion.7
`
`Second, Patent Owner asserts that the petition “conflates the ’254 web
`
`console running on the console host and the McCown browser running on the
`
`client,” asserting that the claimed web console must be run by an administrator and
`
`McCown does not disclose an administrator. POR, 36-37. Patent Owner
`
`misunderstands claim 13, which does not mention an administrator and does not
`
`recite any particular location for the claimed “web console.” Rather, the claim
`
`merely requires “the server to send information of said plurality of storage devices
`
`to a web console.” EX1001, 7:43-45. As demonstrated in the petition, a Skilled
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`Artisan would understand McCown’s browser to be a web browser and McCown
`
`discloses the server sending the recited information to that browser, Pet., 50-53,
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`and that such functionality would have been obvious, id., 53-57.
`
`4. McCown/Dutta Satisfies Every Claim Limitation
`Patent Owner next discusses certain precedent supposedly directed to the
`
`situation where “a claim limitation is wholly absent from the teachings of the prior
`
`
`
`7 Moreover, in addition to arguing that partitioning was inherently disclosed in
`McCown, the petition showed that it would have been obvious to modify McCown
`to include the requirements of claim 13, both in view of McCown alone and in
`view of Dutta. Pet., 53-73. Patent Owner does not address those arguments.
`18
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`
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`Petitioners’ Reply in IPR2020-01032
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`art.” POR, 35-37. Those arguments and precedent are inapposite. As
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`demonstrated in the petition and above in §II.C.1.d, McCown discloses all
`
`elements of the independent claims except actually storing his webpage of URLs in
`
`a cache. E.g., Pet., 19-46. Dutta discloses a browser cache, a device known to be
`
`specifically designed for the storage of webpages. Pet., 39-40, 42-46. Dutta thus
`
`merely provided the place to store the webpage of URLs that was missing from
`
`McCown. Thus, combining the two references satisfies all elements of the claims,
`
`e.g., Pet., 16-46, and there were ample reasons to make that combination, Pet., 41-
`
`46.
`
`Regardless, 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 claim limitation is
`
`satisfied by the prior art. See POR, 37-38. But the petition did not rely on
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`“common sense” for that purpose. See Pet., 40-46. Instead, it relied on
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`specifically identified documentary evidence and the analysis of Dr. Houh. See,
`
`e.g., id. That is more than sufficient to find that it would have been obvious to
`
`store a web page of URLs in a browser cache, a prior art structure designed for the
`
`storage of web pages.
`
`5.
`
`A Skilled Artisan Would Have Been Motivated to Combine
`McCown and Dutta
`
`
`
`19
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`
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`Petitioners’ Reply in IPR2020-01032
`
`Patent Owner argues the Petition’s analysis “is rooted in forbidden hindsight
`
`analysis.” POR, 39. It asserts that “Petitioners failed to provide any evidence
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`whatsoever” that combining McCown and Dutta would satisfy the claims, POR,
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`39-40, and that the petition supposedly makes only “conclusory arguments”
`
`regarding obviousness, POR, 40.
`
`The Petition’s detailed analysis is supported by numerous citations to
`
`evidence in the prior art, e.g., Pet., 39-46 and 53-57, 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 Institution, EX2003, ¶21, and does not
`
`specifically contest most of the reasons to combine analyzed in the petition, Pet.,
`
`39-46. Its bald, unexplained assertions, at odds with the detailed analysis in the
`
`petition and in Dr. Houh’s testimony, should be ignored as mere attorney
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`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, 40-
`
`
`
`20
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`
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`Petitioners’ Reply in IPR2020-01032
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`41. These arguments are, however, just a repeat of those demonstrated to be
`
`erroneous above. See §§ II.C.1.a, II.C.1.b.8
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`Patent Owner also argues that there would have been no motivation to store
`
`McCown’s URLs in a cache because “there is no
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