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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`Microsoft Corporation and HP Inc.,
`
`Petitioners,
`
`v.
`
`SYNKLOUD TECHNOLOGIES, LLC,
`
`Patent Owner.
`
`
`
`
`
`IPR2020-01032
`U.S. Patent No. 10,015,254
`
`
`PATENT OWNER SUR-REPLY
`
`

`

`Contents
`
`I.
`
`Introduction. ................................................................................................................... 1
`
`II. PO’s Claim Constructions Are Consistent With the Plain and Ordinary Meaning Of
`The Claims As Understood By A POSITA In Light Of The Specification. ....................... 3
`
`A. download a file from a remote server across a network into the assigned storage
`space through utilizing download information for the file stored in said cache storage
`(independent claims 1 and 11). ......................................................................................... 3
`
`III. None Of The Claims Would Have Been Obvious Over The Combination Of
`McCown and Dutta Under The Proper Claim Construction. ............................................... 5
`
`A. The Combination of McCown/Dutta Would Not Have Taught Downloading A File
`“utilizing information for the file cached in a cache storage in the wireless device.” ..... 5
`
`B. The Combination of McCown/Dutta 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. ................................................................ 7
`
`C. The Combination of McCown/Dutta Would Not Have Taught “send[ing]
`information of said plurality of storage devices to a web console for partition each of
`said storage devices for creating the storage spaces,” As Recited in Dependent Claim
`13. 9
`
`D. Petitioners Failed To Show That A POSITA Would Have Been Motivated To
`Modify McCown/Dutta To Include the Absent Claim Limitations. .............................. 12
`
`E. SynKloud’s Patentability Arguments Are Unrelated To The Printed Matter
`Doctrine. .......................................................................................................................... 16
`
`F. A POSITA Would Not and Could Not Have Combined McCown and Dutta and
`Reasonably Expect Success. ........................................................................................... 17
`
`IV. Objective Indicia of Non-obviousness Support The Patentability Of The Claims Of
`The ’254 Patent. ................................................................................................................. 20
`
`
`
`
`
`
`
`i
`
`

`

`I.
`
`Introduction.
`
`Petitioners’ Reply, like their Petition, relies on their overly-broad claim
`
`construction of the claim term “cache” and their unsupported position that “[in] the [prior
`
`art] combination … the URLs [corresponding to files selected from a web page] are
`
`obtained from cache, not from the web page display.” Reply, 6. But their primary prior
`
`art reference, McCown, makes no mention of a cache. And even if a cache were added to
`
`McCown, there is no documentary evidence in the record that a URL of a file selected
`
`from a displayed web page would be retrieved from the cache. Rather, data such as a
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`URL selected from a web page displayed on a user’s device would be retrieved from a
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`web page display. Infra, § III.A.
`
`Petitioners’ construction of the claim term “cache” as any “storage for data
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`received from the Internet that is more readily accessible by the user or user application
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`than the original Internet storage location” (Petition, 7) is overly broad. Under
`
`Petitioners’ construction, any memory (e.g., disk drives, flash drive) at or near a user’s
`
`device that stores Internet data would qualify as a “cache” because any such memory is
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`“more readily accessible by the user or user applications than the original storage Internet
`
`location” (i.e., the web site server). There is no intrinsic or extrinsic evidence in the
`
`record indicating that memory such as a disk drive, flash drive, etc, would be considered
`
`by a person or ordinary skill in the art (POSITA) to be a cache.
`
`Under the proper claim construction as set forth by Patent Owner (PO), none of the
`
`
`
`1
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`

`

`claims of the ‘254 patent would have been obvious. Indeed, many of the claim limitations
`
`are wholly absent from the prior art.
`
`Under these circumstances, documentary evidence is required to establish that the
`
`absent limitations would have been obvious. K/S HIMPP v. Hear-Wear Technologies,
`
`LLC, 751 F.3d 1362, 1366 (Fed. Cir. 2014) (“an assessment of basic knowledge and
`
`common sense as a replacement for documentary evidence for factual findings lacks
`
`substantial evidence support.”). But Petitioners make no attempt in their Reply to provide
`
`the documentary evidence required to establish obviousness. Nor do they attempt to
`
`argue that K/S HIMPP is not the law.
`
`Instead, Petitioners blithely rely on “common sense” to add the missing limitations
`
`to their prior art combination (Reply, 7, 19) and restate their sole reliance on their expert
`
`declaration to advance the theory that the limitations that are absent from the prior art
`
`would have been obvious. See Reply, 7-25. For this very reason, Petitioners’ argument
`
`violates the mandate of K/S HIMPP. It is improper to rely on common sense and after-
`
`the-fact expert declarations, rather than contemporaneous documentary evidence, to
`
`support an obviousness theory that relies on modifications of the prior art to supply
`
`missing limitations. K/S HIMPP, 751 F.3d at 1366. Indeed, Petitioners’ expert failed to
`
`respond to the testimony of SynKloud’s expert Mr. Jawadi explaining why a POSITA
`
`would not have been motivated to modify the prior art to include the missing claim
`
`limitations.
`
`
`
`2
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`

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`II.
`
`PO’s Claim Constructions Are Consistent With the Plain and Ordinary
`Meaning Of The Claims As Understood By A POSITA In Light Of The
`Specification.
`
`A.
`
`download a file from a remote server across a network into the assigned
`storage space through utilizing download information for the file stored
`in said cache storage (independent claims 1 and 11).
`
`As explained by PO, the proper construction of this claim limitation requires
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`“information needed to download a file from a remote server to be (i) stored in a cache
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`storage of a wireless device and (ii) utilized to download the file across a network into an
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`assigned storage space for the user of the wireless device.” PO Response, 9.
`
`Petitioners’ quibbling with SynKloud’s use of the term “needed” in its proposed
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`claim construction (Reply, 3) is meant to detract from the important point that the
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`claimed “download information” is required to download a file from a remote server into
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`the assigned storage space. Indeed, the “download information” is required or needed
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`because it identifies the file that is to be downloaded from the remote server to the
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`assigned storage space. The Specification explicitly states that the download information
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`in the wireless device’s cache is, in fact, needed and used to download the file:
`
`the other service module (7) of the storage server (3) sends a web download
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`request to the web-site (15) … based on download information obtained. and
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`receives the downloading data streams from the web server of the web-site
`
`(15).
`
`EX1001, 5:16-27.
`
`Both the claim language itself and the Specification support PO’s proposed
`
`construction. In contrast, Petitioners’ construction of “cache” as “storage for data
`
`
`
`3
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`

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`received from the Internet that is more readily accessible by the user or user application
`
`than the original Internet storage location” (Petition, 7) is inconsistent with Petitioners’
`
`own exhibits. For example, Petitioners’ EX-1008 (Newton’s Telecom Dictionary)
`
`explains that cache storage is used to save information that may be needed multiple
`
`times, that cache storage includes a mechanism to determine cache hit/miss, and that
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`cache storage includes a replacement algorithm:
`
`the system checks to see if the information is already in the cache. If it is, it
`grabs that information; this is called a cache hit. If it isn’t, it’s called a
`cache miss and the computer has to fetch the information by access the main
`memory or hard disk, which is slower. Data retrieved during a cache miss is
`often written into the cache in anticipation of further need for it.
`...
`Generally, when the cache is exhausted, it is flushed and the data is written
`back to main memory, to be replaced with the next cache according to a
`replacement algorithm.
`
`EX-1008, 114 (emphasis added). Petitioners’ EX-1030 (Microsoft Press Computer
`
`Dictionary) confirms that cache storage is used to save information that may be needed
`
`multiple times and that cache storage includes a mechanism to determine cache hit/miss:
`
`A special memory subsystem in which frequently used data values are
`duplicated for quick access. A memory cache stores the contents of
`frequently accessed RAM locations and the addresses where these data
`items are stored. When the processor references an address in memory, the
`cache checks to see whether it holds that address.
`
`EX-1030, 72 (emphasis added).
`
`Thus, Petitioner’s construction neglects to consider that a POSITA would have
`
`known that memory would need to have these three basic cache principles (i.e., that
`
`
`
`4
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`

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`cache stores information that may be needed multiple times / subsequent to initial access,
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`that cache storage includes a mechanism to determine cache hit/miss, and that cache
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`storage includes a replacement algorithm) to qualify as a cache. Under Petitioners’ overly
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`broad construction, any memory (e.g., disk drive, flash drive) at or near a user’s device
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`that stores a web page would be a cache because any such memory is “more readily
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`accessible by the user or user applications than the original Internet storage location”
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`(i.e., the web site server). And there is no intrinsic or extrinsic evidence in the record
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`indicating that memory such as a disk drive, flash drive, etc, would have been considered
`
`by a POSITA to be a cache.1
`
`
`
`III. None Of The Claims Would Have Been Obvious Over The Combination Of
`McCown and Dutta Under The Proper Claim Construction.
`
`A. The Combination of McCown/Dutta Would Not Have Taught
`Downloading A File “utilizing information for the file cached in a cache
`storage in the wireless device.”
`
`Petitioners fail to show that the combination of McCown/Dutta would have taught
`
`the claim limitation quoted above or that a POSITA would have been motivated to
`
`
`1 Petitioners’ argument that SynKloud did not explain how its interpretation differs from
`
`the Board’s and why SynKloud’s interpretation should be used instead of the Board’s
`
`(Reply, 2) is demonstrably false. The construction of “cache” proposed by Petitioners’
`
`and relied upon by the Board is overly broad. And SynKloud provided a detailed
`
`explanation with support from the Specification and claim language as to why its claim
`
`interpretation is correct. PO Response, 5-11.
`
`
`
`5
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`

`

`include this limitation in the combination.
`
`i.
`
`The Claim Limitation of “utilizing information for the file cached in
`the cache storage” Is Wholly Absent From McCown/Dutta
`
`The section of Petitioners’ brief commencing with the heading “In McCown/Dutta
`
`the Download Information Is Retrieved from the Cache” (Reply, 4-5), in fact, fails to
`
`identify where McCown or Dutta discloses using information from a cache in a wireless
`
`device to download a file. The heading is a canard. It does not reflect the content of
`
`Petitioners’ argument in the body of the section. Indeed, Petitioners fail to identify the
`
`portions of either McCown or Dutta that disclose this claim limitation. See Ibid. It is
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`little wonder why. ”McCown does not even mention the term cache.” EX2003, ¶ 115.
`
`Petitioners did not point to the teachings of Dutta that provide the disclosure that is
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`missing from McCown. See Petition, 41-46; Reply, 5-7. Indeed, as explained by Mr.
`
`Jawadi, Dutta does not explain “how the data in the browser cache may be used, let alone
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`that the cache contents are used ‘to download a file from a second server across a
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`network into the remote storage space through utilizing information for the file cached in
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`the cache storage in the wireless device,’ as recited in Claim 1.” EX2003, ¶ 86.
`
`Thus, Petitioners’ arguments miss the mark entirely and are not commensurate
`
`with the scope of the claims of the ’254 patent. All the claims require much more than a
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`mere cache; they require “utilizing information for the file cached in the cache storage.”
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`EX1001, 6:20-24. None of the portions of McCown and Dutta cited by Petitioners would
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`have taught the claim limitation of utilizing information in the cache of a wireless device
`
`
`
`6
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`

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`to download a file to an assigned storage space. The mere mention of a cache in Dutta
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`would not have taught that information from the cache is utilized to download a file from
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`a remote server to a storage server. Indeed, Petitioners asserted that “source code …
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`would be necessary to determine what gets stored in cache and what does not.” IPR2020-
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`00316, Paper No. 32 (December 14, 2020), 23 (emphasis added). And Petitioners did not
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`present any source code for the web browsers on which they rely for this claim limitation.
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`Reply, 5-6.
`
`B. The Combination of McCown/Dutta 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.
`
`As explained in detail in the PO Response (30-33), the claim limitation quoted
`
`above is wholly absent from the combination of McCown and Dutta. And Petitioners
`
`failed to provide any documentary evidence showing that the absent limitation would
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`have been obvious. Ibid.
`
`In response, Petitioners assert that “the URLs of the combination [of McCown and
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`Dutta] are stored in and transmitted from the browser cache, not the display” (Reply, 16
`
`(emphasis omitted)). But Petitioners failed—as they did in their Petition—to identify the
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`locations in McCown/Dutta that would have taught this claim limitation. Indeed,
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`McCown does not even mention a cache. And Dutta does not make any mention of how
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`any of the data in its cache would be used, let alone that download information in the
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`
`
`7
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`

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`cache of a wireless device would be used remotely from the wireless device to download
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`a file from a second server (e.g., a web site) to a remote storage space. E2003, § V.A.a.
`
`Moreover, even if McCown were modified to include a cache, the URLs for files
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`selected from the displayed web page would be utilized from the web page display, not
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`from the cache. McCown repeatedly discloses that the files to be saved to the storage site
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`are selected by the user from a web page displayed on the user’s device:
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`Referring to FIG. 3, selection may be accomplished using an input device
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`132, such as a mouse, to graphically choose one or more files. from the
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`displayed web page, as shown in block 300 (EX1005, 11:4-9);
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`
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`The client 120 then presses a right button on the mouse causing a pop-up
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`window to appear on the display adjacent to the cursor. From the pop-up
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`window, the client 120 selects a command titled "Save to Soft-Drive" with a
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`left button on the mouse, as shown in block 304. User site software
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`application 152 is operational to accept the URL of the selected file 112
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`from the browser 136 through the operating system. Id. at 11:12-18
`
`(emphasis added).
`
`As explained by Mr. Jawadi, the URL received by the browser “though the operating
`
`system” is retrieved from the displayed web page, not the web browser’s cache:
`
`McCown teaches obtaining the URL(s) (download information) from the
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`wireless device web page display, which is significantly different from and
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`opposite to obtaining the download information from the wireless device
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`cache storage, as recited in the limitations of the independent claims of the
`
`’254 Patent.
`
`
`
`8
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`

`

`EX2003, ¶ 34. Petitioners’ expert did not even attempt to explain why Mr. Jawadi
`
`is mistaken; he did not file a supplemental declaration with Petitioners’ Reply. And
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`Petitioners and their expert failed—in both the Petition and Reply—to provide any
`
`documentary evidence indicating that an operating system retrieves a URL for a file
`
`selected from a web page from a browser’s cache.
`
`C. The Combination of McCown/Dutta Would Not Have Taught “send[ing]
`information of said plurality of storage devices to a web console for
`partition each of said storage devices for creating the storage spaces,” As
`Recited in Dependent Claim 13.
`
`Petitioners assert in their Reply, as they did in their Petition, that McCown’s web
`
`browser on the user’s wireless device is the claimed “web console” and that it performs the
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`partitioning recited in claim 13. (Reply, 12, Petition, 50-53). But the claimed “web
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`browser” of claim 13 is a different component than a user’s wireless device and the claimed
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`“partition[ing of] each of said storage devices for creating the storage spaces” is done on
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`the claimed “web console,” not on a user’s wireless device as alleged by Petitioners.
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`EX1001, 7:41-46.
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`Independent claim 9 (from which claim 13 depends) repeatedly recites a “wireless
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`device,” the data that the wireless device receives and the functions that it performs.
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`EX1001, 7:5-24 (“wireless device remotely accessing a first one of the storage spaces …
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`the server sending information of the first one of the storage spaces to the first wireless
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`device.”). Claim 13 recites that “information of said plurality of storage devices [is sent]
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`to a web console” and that the web console “partition[s] each of said storage devices for
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`
`
`9
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`

`

`creating the storage spaces.” Id. at 7:41-46. Thus, the user’s “wireless device” and the
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`“web console” are different components, that perform different functions, and receive and
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`send different data. Bd. of Regents of the Univ. of Tex. Sys. v. BENQ Am. Corp., 533 F.3d
`
`1362, 1371 (Fed. Cir. 2008) (“Different claim terms are presumed to have different
`
`meanings.” (citation omitted)).
`
`The Specification confirms that the claimed “partition[ing]” is done at a web console
`
`by administrative staff, not at a “wireless device” by a user of the storage system: “With
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`the web console support software (5) of the server (3), the task of partitioning the storage
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`system (10) can be done through a web-console (13) on a console host (12) by an
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`administrative staff.” EX1001, 4:1-9 (emphasis added). As shown by FIG. 2 of the ‘254
`
`patent reproduced below, the web console is shown as a different component having a
`
`different reference number (13) than the browser (8) on a user’s wireless device (1):
`
`
`
`10
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`

`

`
`
`
`
`Petitioners’ arguments that “[t]he 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” (Reply, 17) and that “Patent Owner’s expert never addressed this evidence” (id. at
`
`18) are demonstrably false. PO’s expert Mr. Jawadi explained that a POSITA would not
`
`“have assumed that provisioning storage space to user accounts to include partitioning as
`
`
`
`11
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`

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`purported by Petitioner. For example, in Windows XP (released in 2001), user accounts
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`are created and provisioned storage space without any partitioning. In fact, logged in as an
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`administrator, [Mr. Jawadi has] personally created multiple user accounts on Windows XP
`
`computers, without [] creating any partitions for any of the users and without Windows
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`XP’s creating any partitions for any the users.” EX2003, ¶¶ 221, 222. That is, “creating
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`user accounts and provisioning storage space for these user accounts did not involve any
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`partitioning.” Id. at ¶ 222. Indeed, “McCown itself does not disclose partitioning for any
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`purpose. In fact, McCown does not mention the terms partition, partitioning, or volume(s)
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`at all.” Id. at ¶¶ 223-224. Neither Dutta nor Coates cure this deficiency because neither
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`mention “[t]he terms partition, partitioning, and volume(s).” EX2005, ¶¶ 225-227.
`
`This claim limitation is wholly absent from the prior art.
`
`D. Petitioners Failed To Show That A POSITA Would Have Been Motivated
`To Modify McCown/Dutta To Include the Absent Claim Limitations.
`
`When claim limitations are wholly absent from the prior art, contemporaneous
`
`documentary evidence is required to support an obviousness theory that relies on
`
`modification of the prior art to supply the missing limitations. K/S HIMPP, 751 F.3d at
`
`1366. Petitioners and their expert did not provide the required documentary evidence. See
`
`Reply, 5-11.
`
`To detract from their failure to meet the Federal Circuit’s requirements for
`
`obviousness, Petitioners instead allege in a section titled “Reasons for Combining Do Not
`
`need to Be Found in Dutta” that PO “ignores the analysis in the petition.” Reply, 5. But
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`
`
`12
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`

`

`PO did not argue that the reasons for combining need to be found in Dutta itself and it
`
`certainly did not ignore any of Petitioners’ analysis. See PO Response, 15-47.
`
`Petitioners’ just made this up. Indeed, PO and Mr. Jawadi, explained in detail why each
`
`and every motivation argument set forth by Petitioners would not have, in fact,
`
`motivated a POSITA to modify the teachings of McCown and Dutta to store download
`
`information identifying a file at a remote server in a cache of a user’s wireless device. PO
`
`Response, 38-44; EX2003, §§ V.A.a.xi, V.A.a.xiii, V.A.a.xvii.
`
`Petitioners’ expert failed to respond to Mr. Jawadi’s extensive testimony as to why
`
`a POSITA would not have been motivated to modify the McCown/Dutta combination to
`
`achieve the claimed invention. Instead, Petitioners respond with mere attorney argument
`
`(Reply, 5-13), which should be given no weight. In re Geisler, 116 F.3d 1465, 1471 (Fed.
`
`Cir. 1997).
`
`For example, Petitioners’ attorneys alleged that if McCown were modified to
`
`include a cache at a user’s device, the URL for a file selected from a displayed web page
`
`on the user’s device would be retrieved from a cache. Reply, 5-6. They are wrong. As
`
`explained by Mr. Jawadi, a URL selected from a displayed web page by an operation
`
`such as a mouse click, drag-and drop, or copy and paste operation is retrieved from the
`
`web page display, not from cache:
`
` McCown teaches obtaining the URL(s) (download information) from the
`
`wireless device web page display, which is significantly different from and
`
`opposite to obtaining the download information from the wireless device
`
`
`
`13
`
`

`

`cache storage, as recited in the limitations of the independent claims of the
`
`’254 Patent.
`
`EX2003, ¶ 34, see also id. at ¶¶ 44, 97, 142, 173, 174. Mr. Jawadi’s testimony is
`
`consistent with the McCown itself, which describes retrieving a URL for a file selected
`
`by pressing a right button on a mouse. McCown, EX1005, 11:12-23. Because the file is
`
`selected with a mouse click on a web page display, the corresponding URL is retrieved
`
`from the web page display. EX2003, ¶ 143 (“The list of URLs is generated by the
`
`application using a web page, not a cache of the wireless device.”); id, at ¶¶ 34, 44, 97
`
`and 142.
`
`Petitioners’ expert had the opportunity to respond to Mr. Jawadi’s testimony but
`
`did not do so. Petitioners’ attorneys had the opportunity to file documentary evidence to
`
`rebut Mr. Jawadi’s testimony but did not do so. See Reply, 5-6. It is little wonder why.
`
`Data selected from a web page displayed on a computing device is retrieved from the
`
`web page display, not from cache. EX2003, ¶¶ 142, 173, 174. Unable to provide the
`
`required documentary evidence required by the Federal Circuit to establish obviousness,
`
`Petitioners’ attorneys instead responded to Mr. Jawadi’s testimony with their own
`
`argument and attempt to shift the burden to prove non-obviousness on PO by stating that
`
`“[n]either Patent Owner nor its expert cite to any supporting evidence for this assertion”
`
`that the URLS for files selected from a web page are retrieved from the web page display.
`
`
`
`14
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`

`

`Reply, 5.2
`
`That is doubly wrong. First, Patent Owner’s expert did, in fact, explain in detail
`
`that the URLs for files selected from a web page (as taught by McCown) are not retrieved
`
`from cache and are instead retrieved from a web page display. EX2003, ¶¶ 34, 44, 97,
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`142, and 143. Second, it is Petitioners’ burden to provide documentary evidence that
`
`URLs for the selected files would have been retrieved from cache. Pfizer, Inc. v. Apotex,
`
`Inc., 480 F.3d 1348, 1360 (Fed. Cir. 2007) (“the burden of persuasion always remains
`
`with the challenger to patent validity”).
`
`Petitioners did not nearly meet their burden to establish by a preponderance of the
`
`evidence that the combination of McCown and Dutta would have taught utilizing
`
`information (e.g., a URL) from the cache of a wireless device to download a file to
`
`remote storage, as claimed by the ‘254 patent.
`
`
`
`
`2 Petitioners—unable to rebut the substance of Mr. Jawadi’s testimony—engage in ad
`hominem attacks on Mr. Jawadi’s credibility. Reply, 1-3. Contrary to Petitioners’
`unsupported allegations, Mr. Jawadi is fully qualified as a credible expert in this field. He
`earned “a Master of Science in Computer Science from Columbia University [one of the
`top universities in the world] with a Citation for Outstanding Achievement – Dean’s
`Honor Student, and [has] over 40 years of experience in software and product design and
`development, engineering, consulting, and management in the fields of data storage,
`Internet, software, data networking, computing systems, and telecommunication.
`EX2003, ¶ 3.
`
`
`
`15
`
`

`

`E. SynKloud’s Patentability Arguments Are Unrelated To The Printed
`Matter Doctrine.
`
`Petitioners also argue with reliance on C R Bard Inc. v. AngioDynamics, Inc., 979
`
`F.3d 1372 (Fed. Cir. 2020) for the proposition that “[p]rinted matter encompasses any
`
`information claimed for its communicative content.” Reply, 13 (citations omitted). But C
`
`R Bard, Inc. is inapposite. There, the Federal Circuit held that each claims recited printed
`
`matter because each "requires one or more markers 'identifying' or 'confirming' that the
`
`implanted access port is 'suitable'..." C R Bard Inc. v. AngioDynamics, Inc., 979 F.3d
`
`1372, 1382 (Fed. Cir. 2020). Here, the claims of the ’254 patent are directed to program
`
`instructions that causes a wireless device to utilize information locally stored in its cache
`
`to address and download a file remotely stored on a remote server to an assigned storage
`
`space:
`
`coupling with the first server to carry out a requested operation for
`
`accessing the remote storage space in response to a user … performing the
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`operation,
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`wherein … the storing data comprising to download a file … through
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`utilizing information for the file cached in the cache storage in the wireless
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`device.
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`EX1001, 6:12-24. Clearly, the claimed utilization of information in the cache of the
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`wireless device is not printed matter and even if it were, it would still be given patentable
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`weight because it is utilized to perform a function on the wireless device. See In re
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`16
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`Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994) (citing In re Gulack, 703 F.2d 1381, 1386
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`(Fed. Cir. 1983)).
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`
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`F. A POSITA Would Not and Could Not Have Combined McCown and Dutta
`and Reasonably Expect Success.
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`As explained above and in the PO Response, Petitioners relied on mere attorney
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`argument and conclusory expert testimony to support their position that the claim
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`limitation of downloading a file from remote server “utilizing information for the file
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`stored in the cache storage in the wireless device,” would have been obvious.
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`In response, Petitioners argue that they “relied on specifically cited disclosures in
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`the McCown and Dutta [sic],” and the “analysis of [their expert] Dr. Houh and portions
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`of eleven other pieces of evidence.” Reply, 8, 19. But none of the cited disclosures in
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`McCown or Dutta disclose, suggests or teach “utilizing information for the file cached in
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`the cache storage in the wireless device.” McCown does not even mention a cache. And
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`Dutta does not make any mention of how any of the data in its cache would be used.
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`E2003, § V.A.a. Dr. Houh does not cite to any documentary evidence indicating that this
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`claim limitation, which is wholly absent from the prior art, would have been obvious.
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`And Petitioners did not even attempt to explain how their “eleven other pieces of
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`evidence”—which they failed to identify— even relate to this claim limitation, let alone
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`how they would show that the limitation would have been obvious. See Reply, 8-9, 19-
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`20.
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`17
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`Petitioners’ argument that “Patent Owner does not contest the level of ordinary
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`skill set forth by the Petitioner” (Reply, 20) misses the mark because nothing in
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`Petitioners’ POSITA definition indicates that such a person would have found it obvious
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`to modify the McCown/Dutta combination to include the missing claim limitations.
`
`
`
`i.
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`Petitioners’ Expert Fails To Respond To Mr. Jawadi’s Explanation
`Of Why A POSITA Would Not Have Been Motivated To Modify The
`McCowen/Dutta Combination To Utilize Download Information
`Stored Locally In The Cache of A Wireless Device To Download A
`File Stored Remotely On A Remote Server.
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`SynKloud and Mr. Jawadi, explained in detail why each and every motivation
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`argument set forth by Petitioners would not have, in fact, motivated a POSITA to modify
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`the teachings of McCown and Dutta to store download information identifying a file at a
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`remote server in a cache of a user’s wireless device. PO Response, 38-44; EX2003,
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`§§V.A.a.xi, V.A.a.xiii, and V.A.a.xvii. Petitioners’ expert again failed to respond to Mr.
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`Jawadi’s extensive testimony.
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`Petitioners assert—without any support—that “storing the URLs in a cache would
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`make them more readily accessible at the user site.” Reply, 21. But Petitioners’
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`arguments are inconsistent with the disclosure of McCown itself. As explained in detail
`
`above and by Mr. Jawadi, the URL corresponding to file selected on a web page in
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`McCown is retrieved from the web page display, not from cache. Supra, § III.A That is,
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`the “list of URLs [in McCown] is generated by an application using (displaying) the web
`
`
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`18
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`

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`page, not from the cache of the wireless device.” EX2003, ¶ 150. Moreover, McCown’s
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`URLs “are used only once by the user,” thereby negating the need to store the URLs in
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`cache. EX2003, ¶ 154. “McCown describes that the user selects the desired URL or
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`URLs and sends the selected URL or URLs to the storage site from the web page that is
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`already displayed.” EX2003, ¶ 140. McCown states that “[e]ach data request contains the
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`URL's of the selected files 112”. EX1005, 11:21-23. Because the data request that is sent
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`by the user of the wireless device to the storage site contains all the URLs selected by the
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`user, there is “no reason for the user to need the URLs again.” EX2003. ¶ 154.
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`Petitioners next rely on “common sense” to support their position that the URLs
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`would have been utilized from cache if one were added to McCown’s device. Reply, 6-7.
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`But when a claim limitation is wholly absent from the teachings of the prior art,
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`documentary evidence is required to establish obviousness. K/S HIMPP, 751 F.3d at
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`1366; see also NuVasive, 842 F.3d at 1383 (“common sense” is not reasoned analysis); In
`
`re Zurko, 258 F.3d 1379, 1385-1386 (Fed. Cir. 2001). Petitioners fail to provide the
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`required documentary evidence and provide mere attorney argument. See Reply, 6-7.
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`Arista Networks, Inc. v. Cisco Systems, Inc., 2016 WL 1083023*5 (PTAB 2015)
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`(conclusory assertions, without evidence, are inadequate to support a Petition for IPR.).
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`Petitioners next allege that PO “does not specifically contest most of the reasons to
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`combine analyzed in the petition,” Reply, 20. Petitioners’ allegations are demonstrably