Trials@uspto.gov
`571-272-7822
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`Paper 12
`Date: January 25, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ADOBE INC.,
`Petitioner,
`v.
`SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner.
`
`IPR2020-01235
`Patent 10,015,254 B1
`
`
`Before SALLY C. MEDLEY, LYNNE E. PETTIGREW, and
`SCOTT RAEVSKY, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 12
`Date: January 25, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ADOBE INC.,
`Petitioner,
`v.
`SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner.
`
`IPR2020-01235
`Patent 10,015,254 B1
`
`
`Before SALLY C. MEDLEY, LYNNE E. PETTIGREW, and
`SCOTT RAEVSKY, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2020-01235
`Patent 10,015,254 B1
`
`I. INTRODUCTION
`Petitioner, Adobe Inc., filed a Petition for inter partes review of
`claims 9–15 of U.S. Patent No. 10,015,254 B1 (Ex. 1001, “the ’254 patent”).
`Paper 1 (“Pet.”). Patent Owner, Synkloud Technologies, LLC filed a
`Preliminary Response. Paper 11 (“Prelim. Resp.”).
`Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to
`institute an inter partes review if “the information presented in the
`petition . . . and any response . . . shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a). After considering the
`Petition, the Preliminary Response, and the evidence of record, we
`determine the information presented shows a reasonable likelihood that
`Petitioner would prevail in establishing the unpatentability of at least one of
`the challenged claims of the ’254 patent. Accordingly, we institute an inter
`partes review of claims 9–15 of the ’254 patent on the grounds asserted in
`the Petition.
`
`II. BACKGROUND
`A. Related Matters
`The parties identify several district court proceedings involving the
`’254 patent. Pet. xi; Paper 7 (Patent Owner’s Mandatory Notices).
`The parties identify IPR2020-01031 and IPR2020-01032, based on
`petitions filed jointly by Microsoft Corporation and HP Inc., as matters
`involving the ’254 patent. Pet. xi; Paper 7. The Board recently instituted
`inter partes reviews in those two proceedings. Microsoft Corp. v. Synkloud
`Techs., IPR2020-01031, Paper 14 (PTAB Dec. 4, 2020); Microsoft Corp. v.
`Synkloud Techs., IPR2020-01032, Paper 16 (PTAB Dec. 4, 2020).
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`Patent 10,015,254 B1
`The parties also identify several other matters pending before the
`Board involving patents related to the ’254 patent. Pet. xi–xii; Paper 7.
`B. Overview of the ’254 Patent
`The ’254 patent describes how a wireless device may use external
`storage provided by a storage server. Ex. 1001, 1:21–23. The ’254 patent
`aims to address the lack of storage capacity faced by users on their wireless
`devices by allowing a wireless device to use an external server for storing
`and retrieving data. Id. at 2:29–37, 5:4–32.
`In one embodiment, the storage server’s external storage may be
`partitioned by dividing it into multiple small volumes of storage space that
`may be exclusively assigned to users. Id. at 4:1–32. Partitioning may be
`done through a web-console on a console host by an administrator. Id. at
`4:5–9. Based on storage information received from the storage server’s
`support software, the administrator may use the web-console to partition
`each storage device and send storage partition information to the support
`software. Id. at 4:10–19. The support software may perform the actual
`partition by dividing the storage device into multiple small volumes, each of
`which may be exclusively assigned to and used by a user of a specific
`wireless device. Id. at 4:23–32.
`The ’254 patent also describes a “wireless out-band download”
`approach for downloading data from a remote location to an assigned
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`Patent 10,015,254 B1
`storage volume. Id. at 2:9–11, 2:52–56, 5:4–32, Fig. 3. Figure 3 is
`illustrative and is reproduced below.
`
`
`Figure 3 shows a “wireless out-band download” approach, which includes a
`sequence of steps for downloading data from remote web site server 15 into
`assigned storage volume 11 of external storage system 10 on server 3. See
`id. at 2:9–11, 2:52–56, 5:4–32. First, the user of wireless device 1 may
`access remote web server site 15 via web-browser 8 to obtain information
`about the data for downloading (e.g., data name) via path (a). Id. at 5:10–15.
`Second, other software modules 9 of wireless device 1 may obtain the
`download information for the data, which becomes available in cached
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`Patent 10,015,254 B1
`web-pages on wireless device 1. Id. at 5:16–19. Third, the other software
`modules 9 of wireless device 1 may send obtained download information to
`other service modules 7 of storage server 3 via path (b). Id. at 5:20–22.
`Fourth, other service modules 7 may send a web download request to remote
`web site server 15 via path (c) based on the obtained download information
`and receive the downloaded data streams from remote web site server 15.
`Id. at 5:23–28. Lastly, other service modules 7 may write (i.e., store) the
`data streams to assigned storage volume 11 in server 3 for wireless device 1.
`Id. at 5:29–32.
`The ’254 patent additionally describes retrieving data from an
`assigned storage volume. Id. at 5:33–43. In one embodiment, the user may
`use the wireless device’s web-browser (with embedded video or music
`functionality) to retrieve and play multimedia data files already stored in the
`assigned storage volume on the server. Id. at 5:35–39. In another
`embodiment, the wireless device may retrieve data from the file system of
`the assigned storage volume on the server. Id. at 5:40–43.
`C. Illustrative Claim
`Petitioner challenges claims 9–15 of the ’254 patent. Claim 9, the
`sole independent claim challenged in this proceeding, is reproduced below:
`9. A server for delivering storage service, comprising:
`a plurality of storage spaces residing among a plurality of
`storage devices; and
`a computer-readable storage device comprising program
`instructions that, when executed by the server, configure
`the server to control delivering the storage service;
`wherein the program instructions comprise:
`program instructions for the server establishing a
`communication link for a first wireless device remotely
`accessing a first one of the storage spaces;
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`Patent 10,015,254 B1
`program instructions for the server sending information of the
`first one of the storage spaces to the first wireless device
`for causing display of the information on the first
`wireless device; and
`program instructions for the server updating the first one of the
`storage spaces according to a requested operation
`received from the first wireless device upon a user
`thereof, through the displayed information of the first one
`of the storage spaces performing the operation for
`remotely accessing the first one of the storage spaces,
`wherein said operation for remotely accessing the first one of
`the storage spaces comprises from the first wireless
`device storing data therein or retrieving data therefrom,
`wherein the storing data further comprises program
`instructions for the server downloading a file from a
`remote server across a network into the first one of the
`storage spaces through utilizing information for the file
`cached in a cache storage in the wireless device.
`Ex. 1001, 6:63–7:23.
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`Patent 10,015,254 B1
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 9–15 are unpatentable based on the
`following grounds (Pet. 1):
`Claim(s) Challenged
`9–12, 14, 15
`9–12, 14, 15
`9–12, 14, 15
`13
`13
`9–12, 14, 15
`9–12, 14, 15
`9–12, 14, 15
`13
`13
`
`Reference(s)
`
`Prust2
`Prust, Major3
`Prust, Kraft4
`Prust, Major, Reuter5
`Prust, Kraft, Reuter
`Nomoto6
`Nomoto, Major
`Nomoto, Kraft
`Nomoto, Major, Reuter
`Nomoto, Kraft, Reuter
`
`35 U.S.C. §
`103(a)1
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`
`
`
`III. DISCUSSION
`A. Principles of Law
`A claim is unpatentable under § 103(a) if the differences between the
`claimed subject matter and the prior art are such that the subject matter, as a
`whole, would have been obvious at the time the invention was made to a
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’254
`patent has an effective filing date before the effective date of the applicable
`AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and
`103.
`2 U.S. Patent No. 6,735,623 B1, filed Feb. 9, 2000, issued May 11, 2004
`(Ex. 1004, “Prust”).
`3 WO 02/052785 A2, published July 4, 2002 (Ex. 1006, “Major”).
`4 U.S. Patent No. 6,309,305 B1, issued Oct. 30, 2001 (Ex. 1007, “Kraft”).
`5 U.S. Patent Application Publ’n No. 2001/0028363 A1, published Oct. 11,
`2001 (Ex. 1005, “Nomoto”).
`6 U.S. Patent Application Publ’n No. 2002/0019908 A1, published Feb. 14,
`2002 (Ex. 1008, “Reuter”).
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`Patent 10,015,254 B1
`person having ordinary skill in the art to which said subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of ordinary
`skill in the art; and (4) when in evidence, objective indicia of
`non-obviousness.7 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`B. Level of Ordinary Skill in the Art
`Citing the Declaration of Dr. Jon Weissman, Petitioner contends that a
`person of ordinary skill in the art at the time of the invention “would have
`had an undergraduate degree (or equivalent) in electrical engineering,
`computer science, or a comparable subject and two years of professional
`work experience in a technical field with exposure to remote storage systems
`and wireless technologies and wireless devices, such as portable digital
`assistants (PDAs) and similar devices.” Pet. 5 (citing Ex. 1003 ¶ 50). Patent
`Owner does not propose an alternative assessment of the level of ordinary
`skill in the art. See generally Prelim. Resp.; Ex. 2001 ¶ 21 (Declaration of
`Mr. Zaydoon Jawadi).
`To the extent necessary, and for purposes of this Decision, we adopt
`Petitioner’s assessment of the level of ordinary skill in the art as it is
`consistent with the ’254 patent and the asserted prior art. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`
`
`7 With respect to the fourth Graham factor, the parties at this time do not
`present arguments or evidence regarding objective indicia of non-
`obviousness. Therefore, the obviousness analysis at this stage of the
`proceeding is based on the first three Graham factors.
`
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`C. Claim Construction
`In this inter partes review, we apply the same claim construction
`standard that would be used in a civil action under 35 U.S.C. § 282(b).
`37 C.F.R. § 42.100(b) (2019). In applying this standard, we generally give
`claim terms their ordinary and customary meaning as would be understood
`by a person of ordinary skill in the art at the time of the invention and in the
`context of the entire patent disclosure. See id.; Phillips v. AWH Corp.,
`415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc).
`Petitioner proposes constructions for two claim terms—“cached in a
`cache storage in the first wireless device” and “web console.” Pet. 6–8.
`Patent Owner states that “[a]lthough Patent Owner does not agree with
`Petitioner’s proposed claim constructions, the Board need not address claim
`construction at this stage because under Petitioner’s own claim construction,
`Petitioner failed to show that it is reasonably likely to prevail against any
`claim on any ground.” Prelim. Resp. 10. Nevertheless, Patent Owner argues
`that Petitioner’s proposed construction of the “cache” limitation is “flawed.”
`Id. at 11. Based on the parties’ arguments, we determine that “cached in a
`cache storage in the first wireless device” requires construction for purposes
`of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in
`controversy need to be construed, and only to the extent necessary to resolve
`the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999))).
`Petitioner contends that “cached in a cache storage in the first wireless
`device” means “stored in a location on the wireless device that is more
`readily accessible than the original source of the information.” Pet. 6.
`Petitioner cites Dr. Weissman’s testimony and three technical dictionaries
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`for support. Id. (citing Ex. 1003 ¶ 83; Ex. 1025, 126 (“In the context of
`computer systems and networks, information is cached by placing it closer
`to the user or user application in order to make it more readily and speedily
`accessible, and transparently so.”); Ex. 1026, 72 (defining “cache” as “[a]
`special memory subsystem in which frequently used data values are
`duplicated for quick access”); Ex. 1027, 60–61 (describing “cache” as “[a]
`small region of fast MEMORY . . . to hold copies of the most frequently or
`recently used data so that they may be access[ed] more quickly”)
`(Petitioner’s emphases modified)).
`Petitioner further contends that the ’254 patent describes a web-
`browser cache on a wireless device that comes within the scope of
`Petitioner’s proposed construction. Id. at 7. Specifically, in the disclosed
`“wireless out-band download process,” the user accesses a webpage to
`obtain download information for the data to be downloaded. Ex. 1001,
`5:11–12. The download information can include the IP address of a remote
`website and the data name for downloading. Id. at 5:14–15. The download
`information then becomes available in the cached web-pages on the wireless
`device. Id. at 5:17–18. Although the claim term “cache storage” includes a
`web-browser cache on a wireless device, Petitioner argues, neither the claim
`language nor the written description of the ’254 patent limits the recited
`“cache storage” to a web-browser cache. Pet. 7.
`Patent Owner, relying on the testimony of Mr. Jawadi, argues that
`Petitioner’s proposed construction “omits three basic cache principles.”
`Prelim. Resp. 11 (quoting Ex. 2001 ¶ 30). First, Mr. Jawadi asserts that
`“cache storage is used to save information that may be needed multiple
`times (subsequent to initial access) in a more readily accessible location,
`eliminating the need to retrieve the data again from the original source of
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`information,” and “is intended not for the initial access to the information,
`but for subsequent access or accesses to that information.” Ex. 2001 ¶ 31
`(emphasis omitted); see Prelim. Resp. 11. Second, Mr. Jawadi asserts that
`“cache storage includes a cache search mechanism . . . to determine if the
`requested information is in cache (cache hit) or not in cache (cache miss).”
`Ex. 2001 ¶ 32 (emphasis omitted); see Prelim. Resp. 11. Third, Mr. Jawadi
`asserts that “cache storage includes a replacement algorithm, mechanism, or
`policy for replacing information in cache, such as least recently used (LRU)
`algorithm.” Ex. 2001 ¶ 33 (emphasis omitted); see Prelim. Resp. 11–12.
`Patent Owner contends that the technical dictionaries cited by
`Petitioner describe these principles. Prelim. Resp. 12. Patent Owner asserts
`that all three dictionaries “confirm[] that cache storage is used to save
`information that may be needed multiple times (subsequent to initial
`access)” and “that cache storage includes a mechanism to determine cache
`hit/miss.” Id. at 12–13 (quoting Ex. 2001 ¶ 35–37); see Ex. 1025, 126;
`Ex. 1026, 72; Ex. 1027, 60–61. Patent Owner also asserts that one of the
`dictionaries “confirms . . . that cache storage includes a replacement
`algorithm.” Prelim. Resp. 12 (quoting Ex. 2001 ¶ 35); see Ex. 1025, 126.
`Notably, Patent Owner does not propose an alternative to Petitioner’s
`construction of “cached in a cache storage in the first wireless device,”
`arguing only that Petitioner’s construction is improper because it neglects to
`consider these three principles. Prelim. Resp. 11–15. Patent Owner does
`not explicitly argue that the three principles somehow should be
`incorporated into the claim construction, nor does Patent Owner cite any
`language from the claims or written description of the ’254 patent supporting
`a construction that would include them. At this juncture, and based on the
`present record, the arguments and evidence do not persuade us that the
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`concepts raised by Patent Owner should be imported into the construction of
`“cached in a cache storage in the first wireless device,” as used in the
`’254 patent. For purposes of this Decision, we adopt Petitioner’s proposed
`construction of that phrase as “stored in a location on the wireless device
`that is more readily accessible than the original source of the information.”
`The parties may wish to address the construction of this limitation further at
`trial.
`
`D. Asserted Obviousness Grounds Based on Prust
`Petitioner contends that claims 9–12, 14, and 15 of the ’254 patent are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Prust alone, Prust
`combined with Major, and Prust combined with Kraft. Pet. 14–36.
`Petitioner contends that claim 13 of the ’254 patent is unpatentable under
`35 U.S.C. § 103(a) as obvious over the combined teachings of Prust, Major,
`and Reuter, and over the combined teachings of Prust, Kraft, and Reuter. Id.
`at 36–38. Petitioner relies on the Declaration of Dr. Weissman in support of
`its showing. Id. at 14–38 (citing Ex. 1003). In support of its Preliminary
`Response directed to these grounds, Patent Owner relies on the Declaration
`of Mr. Jawadi. Prelim. Resp. 20–40 (citing Ex. 2001).
`
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`
`1. Prust
`Prust describes a storage system that provides users access over a
`network to a remote storage area. Ex. 1004, 1:6–8, 4:31–49. Figure 2 of
`Prust is illustrative and reproduced below.
`
`
`Figure 2 of Prust shows client computers 205 communicatively coupled over
`global computer network 215 to remote storage network 220 via storage
`servers 2101 . . . N. Id. at 4:34–37, Fig. 2. Client computer 205 may be a
`pocket-sized mobile computer (e.g., hand-held PC or personal digital
`assistant (PDA)) using a wireless connection. Id. at 3:17–20, 3:55–62,
`Fig. 1. Storage network 220 defines a pool of virtual storage areas 2251 . . . N,
`each of which may be allocated exclusively to a particular user. Id. at 4:39–
`52, 7:33–48, Fig. 8. The user is able to access its assigned virtual storage
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`area via the client computer’s operating system (id. at 5:21–6:19, Figs. 3–5),
`web browser (id. at 5:8–17, 6:33–47, Fig. 6), or email application (id. at
`6:48–7:13, Fig. 7). Prust describes that a user may access the virtual storage
`area via email by emailing files directly into a specified directory within a
`virtual storage area from a remote network location or including in an email
`to the storage server a URL that indicates where the storage server can
`retrieve the data file to be stored. Id. at 6:62–7:4.
`2. Major
`Major describes a system and method for browsing content on the
`World Wide Web (WWW) using a wireless device. Ex. 1006, 1:6–7, 15:16–
`22, 34:5–7.8 In a disclosed embodiment, the memory of the wireless device
`includes a page cache for storing rendered page objects. Id. at 6:1–4, 16:1–
`5, 24:9–11, Fig. 5. When the user asks to see a URL, the browser first asks
`the page cache if the page object corresponding to the URL is available. Id.
`at 10:7–9. If it is, the page object can be loaded from the page cache and
`displayed by the browser very quickly (e.g., upon start-up or following a
`subsequent user request). Id. at 10:9–10, 11:12–14, 18:8–15.
`3. Kraft
`Kraft describes copy and paste operations for handsets. Ex. 1007,
`code (57). Kraft discloses a phone with a user interface having a copy and
`paste function for copying data between applications. Id. at 2:5–7. In one
`embodiment, the phone includes RAM that acts as a clipboard for the copy
`and paste function. Id. at 4:15–17. A user can select information from one
`application, press a soft key to copy the information to the clipboard, and
`then press a soft key to paste the information from the clipboard to another
`
`
`8 Citations are to original page numbers.
`
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`application. Id. at 4:56–59, 5:2–6. Types of text that may be copied include
`Internet addresses. Id. at 8:42–45.
`4. Claim 9
`Claim 9 recites “[a] server for delivering storage service.” Ex. 1001,
`6:63. Petitioner contends that Prust describes a computing system in which
`a storage server provides seamless access to remote storage areas and that
`each of servers 2101 . . . N is a server for delivering storage service as claimed.
`Pet. 14–15 (citing Ex. 1004, 1:61–63, Fig. 2). Claim 9 further recites “a
`plurality of storage spaces residing among a plurality of storage devices.”
`Ex. 1001, 6:64–65. Petitioner contends that each storage server in Prust is
`connected to “remote storage network 220,” which comprises one or more
`interconnected storage devices, such as a Redundant Array of Independent
`Disks (RAID), for storing data files. Pet. 15–16 (citing Ex. 1004, 4:34–41,
`Fig. 2). Petitioner also contends that remote storage network 220 in Prust
`defines a pool of virtual storage areas 225 that can be assigned individually
`to different users. Id. at 15 (citing Ex. 1004, 4:39–41).
`Claim 9 recites “a computer-readable storage device comprising
`program instructions that, when executed by the server, configure the server
`to control delivering the storage service.” Ex. 1001, 6:66–7:1. Petitioner
`contends that Prust teaches this limitation. Pet. 16. For example, Petitioner
`contends that each of Prust’s storage servers is a computer with a hard drive
`for storing software applications that are copied to RAM for execution by a
`processor. Id. (citing Ex. 1004, 3:63–66, 4:50–52). Further, Petitioner
`contends, Prust teaches that communication software applications executing
`on the storage servers can access virtual storage areas. Id. (citing Ex. 1004,
`4:53–57).
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`Claim 9 further recites “program instructions for the server
`establishing a communication link for a first wireless device remotely
`accessing a first one of the storage spaces.” Ex. 1001, 7:3–5. For this
`limitation, Petitioner contends that Prust teaches its computers can “be
`connected to a network using either a wired or wireless connection,” and the
`client computer can be a PDA (i.e., a “first wireless device”). Pet. 17 (citing
`Ex. 1004, 3:17–20, 3:55–62). Petitioner also contends that Prust teaches
`server-side software (e.g. web browser, FTP utility, or conventional email)
`that enables the client to access virtual storage areas and requires
`establishing a communication link between the client computer and the
`storage server. Id. (citing Ex. 1004, 1:34–36, 4:53–57, 5:8–16, 6:20–25,
`6:33–47, 6:47–7:14; Ex. 1003 ¶¶ 153–154). Further, Petitioner contends, a
`person of ordinary skill in the art would have known that the server
`establishes a communication link when it accepts a connection request from
`the client device according to communication protocols disclosed in Prust.
`Id. at 17–18 (citing Ex. 1004, 5:8–16, 5:50–56, 5:62–65; Ex. 1003 ¶¶ 55–60,
`154).
`Next, claim 9 recites “program instructions for the server sending
`information of the first one of the storage spaces to the first wireless device
`for causing display of the information on the first wireless device.”
`Ex. 1001, 7:6–9. Petitioner contends that Prust teaches this limitation.
`Pet. 18–20. For instance, Petitioner asserts that Prust teaches an
`embodiment in which the user interacts with the user interface presented by
`the client computer’s operating system to manage the virtual storage area as
`if it were a local storage volume. Id. at 18–19 (citing Ex. 1004, 2:1–3, 5:25–
`28, 5:57–62, Fig. 4). In another embodiment, Petitioner asserts, Prust
`teaches a user accessing the virtual storage area via a web browser executing
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`on the client computer, which lists the user’s directories within the virtual
`storage area. Id. at 19–20 (citing Ex. 1004, 6:33–36, Fig. 6). In either case,
`Petitioner contends that software on the server provides information about
`the virtual storage area to be displayed. Id. (citing Ex. 1004, 6:37–39;
`Ex. 1003 ¶¶ 158–159).
`Claim 9 further recites “program instructions for the server updating
`the first one of the storage spaces according to a requested operation
`received from the first wireless device upon a user thereof, through the
`displayed information of the first one of the storage spaces performing the
`operation for remotely accessing the first one of the storage spaces.”
`Ex. 1001, 7:10–15. Petitioner contends that Prust teaches this limitation
`because a person of ordinary skill in the art would have known that file-
`management operations requested by the user via web browser, for example,
`are carried out by the storage server. Pet. 20 (citing Ex. 1004, 6:43–47;
`Ex. 1003 ¶¶ 164, 166–169). In addition, Petitioner contends, the user can
`instruct the storage server via email to download a file identified by its URL
`to the virtual storage area. Id. at 20–21 (citing Ex. 1004, 6:48–58, 6:67–7:8).
`In this embodiment, the user “selectively authorizes” the download through
`the interactive display when the user accesses the storage server. Id. at 21
`(citing Ex. 1004, 7:8–11; Ex. 1003 ¶ 165).
`Claim 9 further recites “wherein said operation for remotely accessing
`the first one of the storage spaces comprises from the first wireless device
`storing data therein or retrieving data therefrom.” Ex. 1001, 7:16–18.
`Petitioner contends that Prust teaches “storing data” to the remote storage
`area via a web browser, email, or FTP utility, for example, and providing the
`URL for a desired file to initiate remote downloading. Pet. 22 (citing
`Ex. 1004, 6:43–7:4; Ex. 1003 ¶ 173). Petitioner further contends that Prust
`
`17
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`IPR2020-01235
`Patent 10,015,254 B1
`teaches “retrieving data” from the virtual storage via web browser, FTP
`utility, or email request. Id. (citing Ex. 1004, 6:21–25, 6:43–47; Ex. 1003
`¶ 174).
`At this stage, Patent Owner does not contest Petitioner’s showing with
`respect to the limitations addressed above. See generally Prelim. Resp. On
`the present record, we determine that Petitioner has shown sufficiently for
`purposes of institution that Prust teaches or suggests these limitations.
`The final limitation of claim 9 recites “wherein the storing data further
`comprises program instructions for the server downloading a file from a
`remote server across a network into the first one of the storage spaces
`through utilizing information for the file cached in a cache storage in the
`first wireless device.” Ex. 1001, 7:18–23. Petitioner contends that this
`limitation covers the wireless “out-band download” functionality described
`in the ’254 patent whereby the user directs the storage server to download
`data from a remote web server. Pet. 22 (citing Ex. 1001, 2:52–56, Fig. 3).
`Petitioner contends that Prust teaches the same functionality in its disclosed
`embodiment using email communication from the user’s device to the
`storage server to indicate a file to be downloaded. Id. at 22–23 (citing
`Ex. 1003 ¶ 176 (citing Ex. 1004, 6:67–7:14)).
`Petitioner presents three alternative arguments for how the prior art
`teaches or suggests the part of the limitation requiring that the information
`for downloading the file be “cached in a cache storage in the first wireless
`device.” Pet. 23–28. First, in its asserted ground of obviousness based on
`Prust alone, Petitioner argues that in Prust’s email embodiment, the user can
`send an email to the storage server including a URL (corresponding to the
`claimed download “information”) for the file to be downloaded and stored in
`the user’s virtual storage area. Id. at 23 (citing Ex. 1001, 6:48–64, 6:67–7:4,
`
`18
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`
`IPR2020-01235
`Patent 10,015,254 B1
`Fig. 7). Petitioner contends that a person of ordinary skill in the art would
`have understood that, using a URL, Prust’s system could download files
`from any webserver on the Internet. Id. (citing Ex. 1003 ¶ 177).
`Although Prust does not state explicitly where a user would obtain the
`URL to include in the email, Petitioner contends that a person of ordinary
`skill in the art would have known the most likely source of a URL would be
`a webpage displayed from a remote webserver and that web browsers at the
`time of the invention cached displayed webpages, including embedded
`URLs, in local memory on the user’s device, such as Prust’s PDA. Id. at 24
`(citing Ex. 1004, 3:21–25, Fig. 1; Ex. 1003 ¶ 179). Further, Petitioner
`contends that a person of ordinary skill in the art would have understood that
`the user had two options for entering the URL into the email to the storage
`server—manually re-typing the URL stored in the cache into the email, or
`copying the URL from the webpage displayed and cached on the user’s
`device and pasting it into the email. Id. at 24–25 (citing Ex. 1003 ¶¶ 180–
`181).
`Second, in its asserted ground based on the combined teachings of
`Prust and Major, Petitioner relies on Major as confirming that prior art web
`browsers on wireless devices, such as Prust’s PDA, cached webpages in
`cache storage on the wireless device. Id. at 26. Specifically, Petitioner
`points to Major’s disclosure of a wireless device with a page cache located
`in memory. Id. (citing Ex. 1005, 1:6–7, 3:20–25, 11:12–16, 15:24–16:5,
`34:5–7). When a user of Major’s wireless device asks to see a URL, the
`browser first asks the page cache if the page object corresponding to the
`URL is available, and if it is, the page object can be loaded from the page
`cache and displayed by the browser very quickly. Id. (citing Ex. 1005, 10:7–
`9, 11:12–14). Thus, Petitioner contends, a URL for a webpage viewed by
`
`19
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`IPR2020-01235
`Patent 10,015,254 B1
`the user would be stored in the page cache and available to the user. Id. at
`26–27; Ex. 1003 ¶ 185.
`Petitioner also contends a person of ordinary skill in the art would
`have been motivated to combine the teachings of Major with Prust “to
`capture the speed, efficiency, and reliability gains from Major’s web-caching
`browser.” Pet. 32 (citing Ex. 1003 ¶ 215). Petitioner contends a person of
`ordinary skill in the art implementing Prust’s PDA would have looked to
`Major, which discloses a web browser to be implemented in virtually any
`wireless communication device, including PDAs. Id. (citing Ex. 1006, 34:5–
`7; Ex. 1003 ¶ 218). Petitioner explains that a person of ordinary skill in the
`art “would have been motivated to employ the teachings of Major [in]
`Prust’s PDA because it would provide the same functionality as a
`conventional desktop browser.” Id. at 33 (citing Ex. 1003 ¶ 219). Petitioner
`additionally explains that a person of ordinary skill in the art “would have
`been motivated by Prust’s goal of providing ‘seamless access to remote data
`storage areas via a global computer network’ including through a
`‘conventional web browser’” to use Major’s caching technique because it
`“allows the PDA browser to display webpages ‘very quickly’ and because
`‘local operations or page displays from the page cache . . . tend to take
`substantially less time than network information requests.’” Id. (citing
`Ex. 1004, code (57), 6:33–35; Ex. 1006, 11:15, 22:4–6; Ex. 1003 ¶ 221).
`Petitioner further explains that by caching webpages in a page cache, Major
`allows a user to view those pages even if connection to the website is lost.
`Id. (citing Ex. 1003 ¶ 222).
`In its third argument regarding the “cache” limitation, Petitioner relies
`on the combined teachings of Prust and Kraft. Id. at 27–28. According to
`Petitioner, Kraft confirms that
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