Paper No. 1
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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,
` v.
`SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner.
`
`Patent No. 9,219,780
`Issued: December 22, 2015
`Filed: February 16, 2015
`
`Inventor: Sheng Tai Tsao
`
`METHOD AND SYSTEM FOR WIRELESS DEVICE ACCESS TO
`EXTERNAL STORAGE
`________________________
`Inter Partes Review No. IPR2020-01269
`________________________
`PETITION
`REGARDING U.S. PATENT NO. 9,219,780
`________________________
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`Title:
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`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`MICROSOFT CORPORATION and HP INC.
`Petitioners,
` v.
`SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner.
`
`Patent No. 9,219,780
`Issued: December 22, 2015
`Filed: February 16, 2015
`
`Inventor: Sheng Tai Tsao
`
`METHOD AND SYSTEM FOR WIRELESS DEVICE ACCESS TO
`EXTERNAL STORAGE
`________________________
`Inter Partes Review No. IPR2020-01269
`________________________
`PETITION
`REGARDING U.S. PATENT NO. 9,219,780
`________________________
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`Title:
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`Petition for Inter Partes Review of U.S. Patent No. 9,219,780
`TABLE OF CONTENTS
`I.
`INTRODUCTION ........................................................................................... 1
`II.
`INTER PARTES REVIEW COMPLIANCE .................................................. 2
`A.
`Certification (§42.104(a)) ...................................................................... 2
`B. Mandatory Notices (§42.8(b)) ............................................................... 2
`C.
`No Basis Exists for Discretionary Denial Under Section 314 (a) ......... 3
`III.
`IDENTIFICATION OF CHALLENGED CLAIMS ....................................... 3
`IV. RELEVANT INFORMATION CONCERNING THE CONTESTED
`PATENT .......................................................................................................... 4
`A.
`Effective Filing Date ............................................................................. 4
`B.
`Level of Ordinary Skill ......................................................................... 4
`C.
`Overview of 780 Patent ......................................................................... 5
`D.
`Claim Construction ............................................................................... 6
`1.
`“cache storage . . . ” .................................................................... 7
`2.
`“utilizing download information . . .” ....................................... 10
`3.
`“folder structure” ....................................................................... 12
`V. OVERVIEW OF THE PRIOR ART (EX1005) ............................................ 13
`A. McCown (EX1005) ............................................................................. 13
`Dutta (EX1006) ................................................................................... 14
`B.
`Coates (EX1007) ................................................................................. 14
`C.
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`Petition for Inter Partes Review of U.S. Patent No. 9,219,780
`VI. REASONS FOR REQUESTED RELIEF ..................................................... 15
`A.
`The Challenged Claims Are Unpatentable Over McCown in View of
`Dutta .................................................................................................... 16
`1.
`Claim 1 ...................................................................................... 16
`2.
`Claim 2 ...................................................................................... 55
`3.
`Claim 3 ...................................................................................... 57
`4.
`Claim 7 ...................................................................................... 60
`5.
`Claim 8 ...................................................................................... 61
`6.
`Claim 16 .................................................................................... 62
`7.
`Claim 17 .................................................................................... 67
`8.
`Claim 18 .................................................................................... 68
`9.
`Claim 19 .................................................................................... 68
`10. Claim 20 .................................................................................... 68
`The Challenged Claims Are Unpatentable Over McCown in View of
`Dutta, in Further View of Coates ........................................................ 68
`1.
`Claim 4 ...................................................................................... 68
`Claim 5 ...................................................................................... 73
`2.
`Claim 6 ...................................................................................... 74
`3.
`Claim 16 .................................................................................... 75
`4.
`ii
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`B.
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`Petition for Inter Partes Review of U.S. Patent No. 9,219,780
`5.
`Claims 17-20 ............................................................................. 77
`VII. CONCLUSION .............................................................................................. 77
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`Petition for Inter Partes Review of U.S. Patent No. 9,219,780
`I.
`INTRODUCTION
`U.S. Patent No. 9,219,780 (“the 780 Patent”) claims a system and method
`for a wireless device to interact with a remote storage server for remote storage of
`files. McCown, a PCT application published before the priority date of the 780
`Patent, describes such a system and method. In particular, McCown discloses a
`user site, which can be an enhanced cellular telephone that can manipulate a
`remote site and a storage site in order to cause a file to be downloaded from the
`remote site and thereby stored in the storage site.
`While the 780 Patent mentions a “cache” only once, its claims have several
`limitations directed to “cache storage.” While a Skilled Artisan would understand
`McCown’s Internet-based system to employ a cache storage, to remove any doubt
`and to simplify the issues, this petition is based on the obvious combination of
`McCown and Dutta, a prior art published patent application directed to the capture
`and subsequent remote storage of web content using a web cache.
`Finally, several dependent claims are drawn to certain low-level
`functionality for manipulating files stored remotely, such as moving, copying or
`deleting. A prior art patent to Coates discloses exactly that functionality in great
`detail. As demonstrated below and in the exhibits filed herewith, the combination
`of these prior art references renders claims 1-8 and 16-20 of the 780 Patent
`unpatentable for obviousness.
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`Petition for Inter Partes Review of U.S. Patent No. 9,219,780
`II.
`INTER PARTES REVIEW COMPLIANCE
`A. Certification (§42.104(a))
`Petitioners certify that the 780 Patent is available for inter partes review and
`Petitioners are not barred or estopped from requesting inter partes review of the
`780 Patent on the grounds identified in this Petition.
`B. Mandatory Notices (§42.8(b))
`The real parties-in-interest of this petition are Microsoft Corporation
`(“Microsoft”), located at One Microsoft Way, Redmond, WA 98052, and HP
`Inc. (“HP”), located at 1501 Page Mill Road, Palo Alto, CA 94304.
`Lead counsel and backup lead counsel are as follows:
`Backup Lead Counsel
`Lead Counsel
`Joseph A. Micallef
`Scott M. Border
`Reg. No. 39,772
`Reg. No. 77,744
`jmicallef@sidley.com
`sborder@sidley.com
`(202) 736-8492
`(202) 736-8818
`
`Service on Petitioners may be made by email (iprnotices@sidley.com), mail
`or hand delivery to: Sidley Austin LLP, 1501 K Street, N.W., Washington, D.C.
`20005. The fax number for lead and backup counsel is (202) 736-8711.
`The 780 Patent is or has been the subject to, or relates to, the following
`proceedings:
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` SynKloud Technologies, LLC v. BLU Products, Inc., 1-19-cv-00553
`(D. Del.)
` SynKloud Technologies, LLC v. Dropbox Inc., 6-19-cv-00526 (W.D.
`Tex.)
` SynKloud Technologies, LLC v. Adobe Inc., 6-19-cv-00527 (W.D.
`Tex.)
` Microsoft Corp. v. Synkloud Technologies, LLC, 1-20-cv-00007 (D.
`Del.)
` Adobe Inc. f/k/a Adobe Systems Inc. v. Synkloud Technologies, LLC,
`IPR2020-01301 (P.T.A.B.)
`C. No Basis Exists for Discretionary Denial Under Section 314 (a)
`Petitioners note that each factor regularly considered under § 314(a) weigh
`against denying institution of this proceeding. General Plastics factors (1)-(5), for
`example, favor Petitioners, as these are the only IPRs filed by Petitioners, and the
`only other IPR filed against the 780 Patent (i.e., IPR2020-01301) was filed on July
`15, 2020 (shortly before the filing of this IPR), asserts different prior art, and
`challenges fewer claims; (6) Petitioners’ focused grounds preserve the Board’s
`“finite resources” such that (7) the Board can satisfy the requirements of 35 U.S.C.
`§ 316(a)(11). See General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential: §II.B.4.i).
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`III.
`IDENTIFICATION OF CHALLENGED CLAIMS
`Claims 1-8 and 16-20 of the 780 Patent are unpatentable over the prior art as
`follows: i. Claims 1-3, 7, 8, and 16-20 are Obvious under §103 Based on
`McCown in View of Dutta;
`ii. Claims 4-6 and 16-20 are Obvious under §103 Based on McCown in
`View of Dutta, and in Further View of Coates;
`IV. RELEVANT INFORMATION CONCERNING THE CONTESTED
`PATENT
`Effective Filing Date
`A.
`The 780 Patent claims a priority date of December 4, 2003. EX1001, Face.
`Petitioners assume that date in its analysis.
`B.
`Level of Ordinary Skill
`A person of ordinary skill in the art in the field of the 780 Patent in the 2003
`time frame (“a Skilled Artisan”) would have been someone with a bachelor’s
`degree in electrical, computer engineering, computer science, or related field with
`two years of experience in a relevant technical field, such as remote storage
`systems, with related experience in wireless technologies and wireless devices. As
`evidenced by the prior art cited below, such a person would have been
`knowledgeable about memory structures in both mobile and computer
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`technologies, techniques for remotely accessing and manipulating databases and
`computer files, and communications over computer networks such as the Internet.
`EX1003,¶47.
`C. Overview of 780 Patent
`The 780 Patent is entitled “System and Method for Wireless Device Access
`to External Storage,” EX1001, Face, and describes a device interacting with a
`remote storage server for remote storage of data. Id., Abstract. The primary
`focuses of the 780 Patent are the transfer of data objects from a remote site to an
`allocated storage space on a remote server under control of a wireless device, and
`the retrieval of data objects from the storage space to the wireless device. Id.,
`5:15-46.
`In the system described in the 780 Patent, a user can employ a web browser
`on a user device to setup folder/directory structures in the file system of his or her
`assigned storage space. Id., 4:45-50. The user can also use the web browser to
`perform data management operations to delete, copy, move and rename data
`objects in the file system. Id., 4:50-53. Upon receiving the data management
`request from the user device, the storage server’s software modules perform the
`requested operation on the assigned file system of the assigned external storage
`volume of the server. Id., 4:65-5:2. The 780 patent describes the steps required to
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`complete the process to download data from a remote web server into allocated
`storage volume and depicts the steps in Figure 3 (below).
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`Id., Fig. 3. D. Claim Construction
`Claims in an inter partes review proceeding are construed according to their
`ordinary and customary meaning in light of the specification and file history of the
`patent in which those claims appear.
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`1.
`“cache storage . . . ”
`The ordinary meaning in the context of the 780 Patent of “cache storage” is
`storage that is more readily accessible by the user or user application than the
`original storage location. EX1003,¶60.
`The 780 Patent uses the word “cache,” or conjugations thereof, only once in
`the specification, in its description of Figure 3. EX1001, 5:28-32.
` Thus, the 780 Patent discloses that the user accesses a web page via a web
`browser “to obtain information for the downloading.” EX1001, 5:22-24. The 780
`Patent gives an example of said “downloading information” as the “IP address of
`the remote web site and the data name for the downloading.” EX1001, 5:25-27.
`The downloading information “becomes available in the cached web-pages on the
`wireless device after the web-browser (8) accessing the web site (15).” EX1001,
`5:28-32; EX1003,¶61.
`Figure 3 shows the data path (a) through which the wireless device accesses
`the download website through the use of a web browser to obtain the download
`information as seen below:
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`Id., Fig. 3 (annotated); EX1003,¶62.
`The 780 Patent further explains that the download information is then sent
`by other software modules in the system to the storage server to indicate what
`information should be downloaded and stored. Id., 5:33-42; EX1003,¶63.
`A Skilled Artisan would understand this description indicates that the
`disclosed wireless device accesses the remote server site via a web browser to
`obtain information for the data to be downloaded. The wireless device then stores
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`this download information into a cache in the form of a web page, and later
`retrieves it from the cache and sends it to the storage server, in order to indicate
`what information should be downloaded or stored. A Skilled Artisan would
`understand from this disclosure, particularly its use of the word “cache,” that the
`download information is stored on the wireless device in some convenient memory
`location of that device, so that it can be more readily accessed, without having to
`make another request to the remote server site for the information, when the user
`makes a selection of what information should be downloaded and stored. EX1010;
`EX1003,¶64.
`That reading is consistent with the understanding of the word cache in this
`technological field. For example, when used as a noun in this technical field the
`word “cache” is generally understood to mean “[a] special memory subsystem in
`which frequently used data values are duplicated for quick access.” EX1030, 72.
`The word “cache” is also used as a verb to mean storing data close to the user or
`user application so that it can be more readily and speedily accessed than the
`original storage location. EX1008, 114; EX1003,¶65.
`The claims of the 780 Patent do not use the word “cache” as a noun and do
`not recite any specific type of cache memory or process of caching. Instead, the
`claims recite “cache storage,” “cached in [the/a] cache storage,” and “cached in
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`the wireless device” (i.e., they use the word “cache” as an adjective modifying the
`noun “storage” or as a verb modifying “in [the/a] cache storage.” I understand
`that such a claim term should be interpreted consistent with its grammatical usage,
`i.e., to mean a type of “storage” modified by the adjective “cache,” or the process
`of storing data in such a storage. EX1003,¶66.
`Accordingly, a Skilled Artisan would conclude that the meaning of “cache
`storage” is storage that is more readily accessible by the user or user application
`than the original storage location. EX1003,¶67.
`2.
` “utilizing download information . . .”
`The ordinary meaning in the context of the 780 Patent of “utilizing
`download information for the file[, including name of the file and internet protocol
`(“IP”) address of the remote server,] cached in [the/a] cache storage [[in/of] the
`[first] wireless device]” is broad enough to cover using information [, including the
`name of the file to be downloaded and IP address of the remote server,] stored in
`the cache storage [of the [first] wireless device] to download a file from a remote
`server. EX1003,¶68
`
`In context, this claim language relates to a storage operation that causes a
`file from a remote server to be stored into an assigned storage space. See EX1001,
`6:34-42; EX1003,¶69.
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`Dr. Houh notes that, viewed in isolation, however, this phrase is ambiguous
`as to what information is “cached in [the/a] cache storage,” i.e., the “download
`information” or the “file”? EX1003,¶70.
`
`The “cache storage” is claimed as part of the wireless device. Id., 6:10-12.
`Dr. Houh also notes that the specification of the 780 Patent explains that the file
`being downloaded is never sent to the wireless device, but is instead transferred
`directly from the remote site to the assigned storage location. Id., 5:37-42.
`Moreover, in the disclosed system, it is the download information that gets stored
`in the cache of the wireless device. EX1001, 5:28-32; EX1003,¶71.
`
`Claim 9 discloses that the process occurs “through utilizing download
`information for the file…cached in a cache storage of the first wireless device.”
`EX1001, 7:31-34 (emphasis added). Claim 9 also discloses “program instructions
`for allocating exclusively…a first one of the storage spaces to a user of a first
`wireless device.” EX1001, 7:12-14. In claim 9, the 780 Patent discloses “program
`instructions for establishing a communication link for the first wireless device
`remotely access to the first one of the storage spaces.” EX1001, 7:15-17 (emphasis
`added). Thus, “a cache storage of the first wireless device” must be a cache storage
`in the first wireless device that is correlated with the first storage space.
`EX1003,¶72.
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`Accordingly, when read in the context of the 780 Patent specification, the
`ordinary meaning of “utilizing download information for the file[, including name
`of the file and internet protocol (“IP”) address of the remote server,] cached in
`[the/a] cache storage [[in/of] the [first] wireless device] ” is broad enough to
`cover using information [, including the name of the file to be downloaded and IP
`address of the remote server,] stored in the cache storage [of the [first] wireless
`device] to download a file from a remote server. EX1003,¶73.
`3.
` “folder structure”
`The ordinary meaning of “folder structure” is an arrangement of folders and
`subfolders for holding files. EX1003,¶74.
`The 780 Patent explains that “the user on the web-browser (8) is facilitated
`to perform creating structured layered file directories or folders.” Id., 3:22-23;
`EX1003,¶75.
`A “folder” is “a means of organizing programs and documents on a disk and
`can hold both files and additional folders.” EX1030, 202-203; EX1003,¶76.
`“Structure” is defined as “the arrangement or organization of parts in a system.”
`EX1023; EX1003,¶77. In this instance, the term “folder” modifies the term
`“structure.” Thus, when combined, a “folder structure” is a structure of folders.
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`That correlates to the description in the 780 Patent at EX1001, 3:22-23.
`EX1003,¶78.
` Accordingly, when read in the context of the 780 Patent specification and
`the understood meanings, the ordinary meaning of a “folder structure” is an
`arrangement of folders and subfolders for holding files. EX1003,¶79.
`V. OVERVIEW OF THE PRIOR ART (EX1005)
`A. McCown (EX1005)
`International Publication No. WO 01/67233 to McCown was published on
`September 13, 2001, from a PCT Application filed on March 3, 2000. EX1005,
`Face. McCown is prior art to the 780 Patent under at least §§102(a), (b) and (e).
`McCown describes a system in which “[s]elected files are downloaded
`across a network from a remote site into a client’s storage space account
`established within a storage site.” EX1005, Face. McCown explains that as part of
`the remote storage process, a client, operating from a user site (e.g., a wireless
`device) on a network, selects files for downloading through use of an input device.
`EX1005, 11:4-11. The user site software generates a data request from the user’s
`selections which is “sent across the Internet” to the storage site’s software
`application. EX1005, 11:20-22. The data request is received by the storage site’s
`software application which generates a download request based on user selections.
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`EX1005, 12:24-25. The download request is provided to the storage site’s web
`server which sends it to the remote site’s server. EX1005, 12:25-27. The remote
`site’s server receives the download request and responds by downloading the files
`to the storage site and storing them into the client’s storage space account.
`EX1005, 12:27-13:2.
`B. Dutta (EX1006)
`U.S. Publication No. 2002/0078102 to Dutta (“Dutta”) was filed on
`December 18, 2000 and was published on June 20, 2002. EX1006, Face. Dutta is
`prior art to the 780 Patent under at least §§102(a), (b) and (e).
`Dutta primarily describes the capture and subsequent storage of web content.
`
`EX1006, Abstract. The client receives a file, generally in a Web page, in response
`to a request by the user to browse the web page. EX1006, ¶[0010]. The captured
`data of the displayed web page and user parameters are sent to the server from the
`client. EX1006, ¶[0010]. The server receives the data and automatically stores the
`captured data received from the client at the server. EX1006, ¶¶[0010]-[0011].
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`The client maintains local storage for use by the browser application and
`other applications. EX1006, ¶[0029]. The browser may store bookmarked files,
`browser cache, and various other types of files. EX1006, ¶[0029].
`C.
`Coates (EX1007)
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`US Patent No. 7,266,555 to Coates was filed on December 8, 2000 and
`published on September 4, 2007. EX1007, Face. Coates is prior art to the 780
`Patent under at least §102(e).
`Coates is directed “toward the field of remote storage, and more particularly
`toward accessing remote storage through the use of a local device.” EX1007,
`Face, 1:21-24. Coates discloses a storage port that interfaces a client computer,
`such as a web or application server, to a network storage system. EX1007, 3:7-8.
`Users only gain access to their media objects within the network storage system,
`using a highly secured “shared secret” authentication technology. EX1007, 4:65-
`67. The network storage system stores files at one or more storage centers, remote
`from the client site. EX1007, 3:8-10. To gain access to content stored at the
`remote storage center, the client computer mounts the storage port as a storage
`device for the client computer. EX1007, 3:10-13. The client computer issues local
`file system requests to conduct network storage system operations. EX1007, 3:13-
`14. In response, the storage port translates local file system requests to network
`storage system requests. EX1007, 3:14-16.
`VI. REASONS FOR REQUESTED RELIEF
`Petitioners demonstrate below that the challenged claims are obvious in
`view of McCown in view of Dutta for claims 1-3, 7, 8, and 16-20, and McCown
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`and Dutta in view of Coates for claims 4-6 and 16-20. In order to improve the
`clarity of the analysis, the obviousness grounds set out below incorporate and build
`upon the basic comparison of the challenged claims to McCown.
`A.
`The Challenged Claims Are Unpatentable Over McCown in
`View of Dutta
`1.
`Claim 1
`a.
`Preamble
`The preamble of claim 1 recites “[a] wireless device access to a remote
`storage space, the wireless device comprising:”
`The 780 Patent identifies several examples of a “wireless device” including a
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`“PDA” and a “cell phone,” EX1001, 2:40-43, each of which are disclosed in
`McCown. EX1003,¶109.
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`For example, McCown discloses a user site (“wireless device”) through
`which a user may access a remote site (“access to a remote storage space”). E.g.,
`EX1005, 7:26. In particular, McCown explains that the “user site” may be “a
`personal computer, workstation, laptop computer, server, palmtop device,
`enhanced cellular telephone, or any other machine capable of digital network
`communications,” EX1005, 7:27-29 (emphasis added), each of which “can be
`connected to the Internet.” EX1005, 2:13-16; EX1003,110.
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`McCown also discloses a preferred embodiment in which “a pair of software
`application packages are provided to make the storage space account appear as a
`mounted drive to the user site and client.” EX1005, 9:14-16. A storage site
`software application is hosted in the storage site and a user site software
`application is hosted in each user site. EX1005, 9:16-17; 9:23-26 (“The storage
`site software application and the user site software application may be provided to
`the storage site and the user site respectively as computer programs recorded on
`information storage media.”) EX1005, 9:23-26; EX1003,¶111.
`McCown satisfies this claim element. EX1003,¶112.
`b.
`Cache Storage
`Claim 1 further recites “the wireless device comprising: at least one cache
`storage”
`The ordinary meaning of “cache storage” is storage for data that is more
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`readily accessible by the user or user application than the original storage location.
`See §IV.D.1; EX1003,¶114.
`
`McCown discloses the use of “[a] browser” such as “Internet Explorer
`available from Microsoft Corporation, Redmond, WA and Netscape
`Communicator available from Netscape Communications Corporation, Mountain
`View, CA. EX1005, 8:5-10. A Skilled Artisan would understand each of these
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`browsers to have included “at least one cache storage.” EX1024, 7:8-10; EX1025,
`3:3-8; EX1003,¶115.
`
`To the extent one might argue that McCown does not sufficiently disclose
`“at least one cache storage,” it would have been obvious to modify McCown to
`include one. EX1003,¶116.
`
`For example, McCown explains that “the functionality of the user site
`software application may be implemented as part of a browser,” EX1005, 9:22-23,
`and depicts such an integration of the browser and the application in Figure 1:
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`EX1005, Fig. 1 (annotated); EX1003,¶117.
`A Skilled Artisan would understand that the use of a browser cache in
`wireless devices was well-known in the art by 2003 and would have been
`motivated to use one in the browser of McCown in order to provide for the faster
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`retrieval of information from the Internet. EX1010, ¶[0002]; EX1011, 1:66-2:1;
`EX1003,118.
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`McCown therefore discloses or renders obvious the “at least one cache
`storage” limitation of the 780 Patent. EX1003,¶119.
`
`To the extent one might argue otherwise, it would have been obvious to
`combine the browser cache storage technique of Dutta with the system of
`McCown. EX1003,¶120.
`
`Dutta, for example, discloses a browser cache in local storage (“at least one
`cache storage”) for use by the browser application and other applications. EX1006,
`¶[0029], as depicted in Figure 3:
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`Petition for Inter Partes Review of U.S. Patent No. 9,219,780
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`EX1006, Fig. 3 (annotated). A Skilled Artisan would understand that local storage
`to be a memory because it is a device that stores information in the computer
`system of Dutta. The portion of that local storage used for the “browser cache”
`would be understood to store information from the Internet so that it is more
`readily accessible by the user or user application than the original web server
`because it is called a “browser cache.” EX1030, 72; EX1008, 114 (emphasis
`added); EX1003,¶121.
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`Petition for Inter Partes Review of U.S. Patent No. 9,219,780
`In the combined McCown and Dutta system, Dutta’s “browser cache” would
`be implemented within either the browser or user site’s software application so as
`to be readily accessible by the user site. This combination would have been
`obvious for several reasons. EX1003,¶122.
`McCown, Dutta and the 780 Patent are analogous art because each is
`
`generally in the field of remote server management and remote data storage. See
`EX1005, Abstract; EX1006, ¶[0002]; EX1001, Abstract; EX1003,¶123.
`
`McCown, Dutta and the 780 Patent are also analogous art because McCown
`and Dutta are each reasonably pertinent to the problem address by the 780 Patent,
`i.e., the problem of a lack of storage capacity on user wireless devices. EX1001,
`2:40-49; EX1005, 1:9-13; EX1006, ¶[0007]; EX1003,¶124.
`
`The combination would have been obvious because it would have been only
`the arrangement of old elements (the remote storage system of McCown and the
`browser cache technique of Dutta) with each performing the same function it had
`been known to perform (remote storage of data objects on a storage space; cache
`memory for faster access to frequently used data objects, such as files to be stored)
`and yielding no more than one would expect from such an arrangement (a
`combined, remote storage method with cache memory on a wireless device for
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`Petition for Inter Partes Review of U.S. Patent No. 9,219,780
`quick access to data). The combination could therefore have been readily made
`without undue experimentation. EX1003,¶125.
`
`The use of a browser cache was well-known in the prior art. EX1010,
`¶[0002]; EX1011, 1:66-2:1. A Skilled Artisan could therefore have readily made
`this combination without undue effort or experimentation. EX1012, 14:30-33;
`EX1003,¶126.
`Moreover, a Skilled Artisan would have been motivated to make such a
`combination in order to provide the user with a faster and more convenient storage
`for the user site application program data. For example, a Skilled Artisan would
`understand that the browser cache in Dutta is particularly adept at holding data that
`is needed for quick access. See EX1010, ¶¶[0002]-[0003]; EX1006, ¶[0029]. A
`Skilled Artisan would understand that applying the cache storage technique of
`Dutta would allow the user site application to access the user site’s data more
`quickly so that it can be transmitted, e.g., to the storage site more quickly without
`having to make another request to the web server. EX1013, 2:13-15;
`EX1003,¶127.
`McCown or McCown in view of Dutta therefore satisfies the “at least one
`cache storage” limitation of the 780 Patent. EX1003,¶128.
`Non-transitory Computer Readable Medium
`c.
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`Claim 1 also recites “one non-transitory computer-readable medium
`comprising program instructions which, being executed by the wireless device,
`cause the wireless device remotely access to the storage space. . .”
`
`McCown discloses a “storage site software application and a user site
`software application that may be provided to the storage site and the user site
`respectively as computer programs recorded on information storage media.”
`EX1005, 9:23-26 (emphasis added). McCown gives examples of “information
`storage media” as “magnetic disk, magnetic tape, optical disk, non-volatile
`memory, or other similar information storage media.” EX1005, 9:26-30;
`EX1003,¶130.
`
`A Skilled Artisan would understand “computer programs recorded on
`information storage media” at the user site and storage site to encompass “one non-
`transitory computer-readable medium” at the user site and storage site,
`respectively. EX1030, 450; EX1009, 8:5-6; EX1003,¶131.
`
`Thus, McCown satisfies “[a] wireless device…comprising…one non-
`transitory computer-readable medium” elements of the claim. EX1003,¶132.
`Program Instructions
`(i)
`McCown discloses a preferred embodiment in which “a pair of software
`application packages are provided to make the storage space account appear as a
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`mounted drive to the user site and client.” EX1005, 9:14-16. A storage site
`software application is hosted in the storage site and a user site software
`application is hosted in each user site. EX1005, 9:16-17. McCown discloses the
`use of “information storage media recording computer programs” employed at the
`user
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