Trials@uspto.gov
`571-272-7822
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`Paper 9
`Entered: April 7, 2021
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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.,
`Petitioner,
`v.
`SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner.
`
`IPR2020-01269
`Patent 9,219,780 B2
`
`
`Before SALLY C. MEDLEY, LYNNE E. PETTIGREW, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`SAWERT, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
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`571-272-7822
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`Paper 9
`Entered: April 7, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICROSOFT CORPORATION and HP INC.,
`Petitioner,
`v.
`SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner.
`
`IPR2020-01269
`Patent 9,219,780 B2
`
`
`Before SALLY C. MEDLEY, LYNNE E. PETTIGREW, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`SAWERT, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
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`IPR2020-01269
`Patent 9,219,780 B1
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`
`I. INTRODUCTION
`Microsoft Corporation and HP Inc. (collectively, “Petitioner”) filed a
`Petition for inter partes review of claims 1–8 and 16–20 of U.S. Patent
`No. 9,219,780 B1 (Ex. 1001, “the ’780 patent”). Paper 1 (“Pet.”). Patent
`Owner, Synkloud Technologies, LLC filed a Preliminary Response. Paper 8
`(“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 ’780 patent. Accordingly, we institute an inter
`partes review of claims 1–8 and 16–20 of the ’780 patent on the grounds
`asserted in the Petition.
`
`II. BACKGROUND
`A. Related Matters
`The parties identify several district court proceedings involving, or
`relating to, the ’780 patent. Pet. 2–3; Paper 6 (Patent Owner’s Mandatory
`Notices). The parties identify IPR2020-01270 (also filed by Petitioner on
`the same day as this Petition) and IPR2020-01301 (filed by Adobe Inc.) as
`matters involving the ’780 patent. Pet. 2–3; Paper 6. Patent Owner
`identifies several other matters pending before the Board involving patents
`related to the ’780 patent. Paper 6.
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`B. Overview of the ’780 patent
`The ’780 patent, titled “Method and System for Wireless Device
`Access to External Storage,” relates to “a wireless device accessing and
`using external storage space provided by a server.” Ex. 1001, 1:24–25. The
`’780 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 2:40–48, 5:3–57.
`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 4:12–37. Partitioning may be
`done through a web-console on a console host by an administrator. Id. at
`4:16–20. 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 4:21–30. 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 4:32–37.
`The ’780 patent also describes a “wireless out-band download”
`approach for downloading data from a remote location to an assigned
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`storage volume. Id. at 2:18–20, 2:61–64, 5:15–46, 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 2:18–20, 2:61–64, 5:15–46. 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 5:22–27.
`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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`web-pages on wireless device 1. Id. at 5:28–32. Third, 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 5:33–36.
`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 5:37–42. 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 5:43–46.
`The ’780 patent additionally describes retrieving data from an
`assigned storage volume. Id. at 5:47–57. 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 5:49–53. In another
`embodiment, the wireless device may retrieve data from the file system of
`the assigned storage volume on the server. Id. at 5:54–57.
`C. The Challenged Claims
`Petitioner challenges claims 1–8 and 16–20 of the ’780 patent. Pet. 4.
`Claim 1 is reproduced below, which includes changes made per a Certificate
`of Correction.
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`1. A wireless device access to a remote storage space, the
`wireless device comprising:
`at least one cache storage, and 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, the
`program instructions include:
`program instructions for establishing a wireless link for
`remotely access to the storage space, the storage
`space allocated exclusively by a storage server to a
`user of the wireless device;
`program instructions for presenting the storage space to
`the user on the wireless device through
`communication with the storage server, and
`program instructions for coupling with the storage server
`across the wireless link to carry out a requested
`operation for remotely access to the storage space
`in response to the user from the wireless device
`performing the operation,
`wherein the program instructions for carrying out
`operation for the access to the storage space
`comprises program instructions for storing data
`therein or retrieving data therefrom,
`the program instructions for storing data including
`program instructions for downloading a file
`from a remote server across the Internet into
`the storage space through utilizing download
`information for the file, including name of
`the file and internet protocol (“IP”) address
`of the remote server, cached in the cache
`storage in response to the user from the
`wireless device performing the operation for
`the downloading.
`
`Ex. 1001, 6:11–42, p.10.
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`D. Asserted Evidence
`Petitioner submits the following evidence:
`Exhibit No.
`Evidence
`1003
`Declaration of Henry Houh
`WO 01/67233 A2 (published Sept. 13, 2001) (“McCown”) 1005
`U.S. Pat. Appl. Pub. No. US 2002/0078102 A1 (published
`1006
`June 20, 2002) (“Dutta”)
`U.S. Pat. No. 7,266,555 B1 (Sept. 4, 2007) (“Coates”)
`1007
`
`Pet. 4.
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`Claims Challenged
`35 U.S.C. §
`References
`1–3, 7, 8, 16–20
`103(a)1 McCown, Dutta
`4–6, 16–20
`103(a) McCown, Dutta, Coates
`
`Pet. 4.
`
`III. ANALYSIS UNDER 35 U.S.C. § 314(a)
`On the same day, Petitioner filed two petitions challenging different
`claims of the ’780 patent. In the Petition before us, Petitioner challenges
`claims 1–8 and 16–20, of which claims 1 and 16 are independent. Pet. 4. In
`IPR2020-01270, Petitioner challenges claims 9–15, of which claim 9 is
`independent. IPR2020-01270, Paper 1. In accordance with the
`Consolidated Trial Practice Guide,2 Petitioner filed a separate paper,
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125
`Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’780
`patent has an effective filing date before the effective date of the applicable
`AIA amendments, we refer to the pre-AIA version of 35 U.S.C. § 103.
`
`
`2 Patent Trial and Appeal Board Consolidated Trial Practice Guide
`(Nov. 2019), https://www.uspto.gov/TrialPracticeGuideConsolidated, 59–61
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`identifying a ranking of its petitions and explaining the differences between
`the petitions. Paper 4 (“Explanation”).
`Petitioner contends that “[t]wo petitions were required because the
`analysis of all 20 claims of the 780 Patent could not reasonably fit within the
`word limit for a single petition.” Id. at 1. Petitioner further contends that it
`has challenged all twenty claims of the ’780 patent because it did not know,
`at the time of filing, which claims would be asserted against it in district
`court. Id. at 2. Petitioner contends that “[t]he Board has found that a
`Petitioner may file multiple petitions against a single patent when, for
`example, the asserted claims in the litigation are uncertain and where
`petitions rely on the same prior art.” Id. at 1 (citing Microsoft Corporation
`v. IPA Techs. Inc., IPR2019-00810, Paper 12, 11–16 (Oct. 16, 2019)).
`Petitioner further contends that it decided to file two petitions given: the
`length of the claims; Petitioner’s assessment that it could not reasonably fit
`its analysis in one petition; and distinctions between the scope of claim 9 and
`the scope of claims 1 and 16. Id. at 2.
`Patent Owner did not file a response to Petitioner’s Explanation or
`make any arguments in its Preliminary Response regarding the propriety of
`Petitioner having filed two petitions challenging the ’780 patent. Thus,
`Patent Owner has not assisted to narrow the scope of the issues in dispute.
`See Consolidated Trial Practice Guide, 61 (explaining that the patent owner
`should explain whether the differences identified by the petitioner are
`directed to an issue that is not material or not in dispute and clearly proffer
`any necessary stipulations in support).
`
`(explaining that the Board may exercise discretion under 35 U.S.C. § 314(a)
`to deny a petition(s) if it determines that more than one petition challenging
`claims of the same patent is not warranted).
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`Petitioner’s showing for two petitions is reasonable. In particular, it is
`reasonable to conclude that the length of the claims, and the difference in
`scope of claims 1 and 16 and the scope of claim 9, warranted the filing of
`two petitions. For instance, Petitioner’s showing for independent claims 1
`and 16 occupies over forty-five pages of the Petition, which is reasonable in
`view of the length of those claims. Pet. 16–55, 62–67, 75–77. Petitioner’s
`showing for independent claim 9, which is different in scope from that of
`independent claims 1 and 16,3 also occupies over forty-five pages of the
`other petition, which is also reasonable in view of the length of claim 9.
`IPR2020-01270, Paper 1, 16–54, 62–70. In addition, some of the dependent
`claims in both cases are lengthy or complex, necessitating several pages of
`explanation. See, e.g., Pet. 55–62, 67–75, 77; IPR2020-01270, Paper 1, 54–
`62, 70–74. For these reasons, and based on the facts before us, we decline to
`exercise our discretion to deny the petition under 35 U.S.C. § 314(a).
`
`IV. DISCUSSION
`Petitioner contends that claims 1–8 and 16–20 of the ’780 patent are
`unpatentable under 35 U.S.C. § 103 as obvious over various combinations of
`prior-art references McCown, Dutta, and Coates. A patent 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 person having
`ordinary skill in the art to which said subject matter pertains. KSR Int’l Co.
`
`
`3 For example, claim 9 recites “a pool of a plurality of storage spaces,”
`a limitation not recited in claim 1. Moreover, claim 9 is directed to a
`“server,” whereas claims 1 and 16 are directed to a “wireless device” and a
`“system,” respectively.
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`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.4 Graham v.
`John Deere Co., 383 U.S. 1, 17–18 (1966).
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden of persuasion never
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
`inter partes review).
`We organize our patentability analysis into four sections. First, we
`address the level of ordinary skill in the art. Second, we address claim
`construction. Third, we provide an overview of the asserted references.
`And fourth, taking account of the information presented, we consider
`whether the Petition satisfies the threshold requirement for instituting an
`inter partes review under 35 U.S.C. § 314(a).
`
`
`4 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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`A. Level of Ordinary Skill in the Art
`We consider the asserted grounds of unpatentability in view of the
`understanding of a person of ordinary skill in the art. In assessing the level
`of ordinary skill in the art, various factors may be considered, including the
`“type of problems encountered in the art; prior art solutions to those
`problems; rapidity with which innovations are made; sophistication of the
`technology; and educational level of active workers in the field.” In re
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom
`Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir.
`1986)). “[O]ne or more factors may predominate.” Id.
`Citing the Declaration of Dr. Houh, Petitioner contends that an
`ordinarily skilled artisan at the time of the invention “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.” Pet. 4 (citing Ex. 1003 ¶ 47).
`Patent Owner does not propose an alternative assessment of the level of
`ordinary skill in the art. See generally Prelim. Resp.; see also 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 ’780 patent and the asserted prior art. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`B. 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
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`claim terms their ordinary and customary meaning as would be understood
`by an ordinarily skilled artisan at the time of the invention and in the context
`of the entire patent disclosure. See id.; see also Phillips v. AWH Corp.,
`415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc).
`Petitioner proposes constructions for “cache storage” and “utilizing
`download information,” both recited in independent claims 1 and 16. Pet. 7–
`12. Patent Owner proposes a construction for the longer claim phrase
`containing those two terms: “downloading a file from a remote server
`across the Internet into the storage space through utilizing download
`information for the file, including name of the file and internet protocol
`(‘IP’) address of the remote server, cached in the cache storage.” Prelim.
`Resp. 10–12. Petitioner also proposes a construction for “folder structure,”
`recited in dependent claim 4. Pet. 12–13. Based on the parties’ arguments,
`we determine that “cache storage” and “utilizing download information”
`require construction for 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))).
`1. “cache storage”
`Petitioner contends that “cache storage” should be construed as
`“storage that is more readily accessible by the user or user application than
`the original storage location.” Pet. 7 (citing Ex. 1003 ¶ 60). Petitioner
`contends that its proposed construction reflects the ordinary meaning of the
`term in the context of the ’780 patent, which “discloses that the user
`accesses a web page via a web browser ‘to obtain information for the
`downloading.’” Id. (citing Ex. 1001, 5:22–24). Petitioner further contends
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`that the information becomes available in the cached web pages on the
`wireless device after the web browser accesses the web site. Id. (citing
`Ex. 1001, 5:28–32; Ex. 1003 ¶ 61). According to Petitioner, an ordinarily
`skilled artisan would understand from the ’780 patent
`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.
`Id. at 9 (citing Ex. 1010; Ex. 1003 ¶ 64).
`Patent Owner does not propose a construction of “cache storage” but
`argues the longer phrase “downloading a file from a remote server across the
`Internet into the storage space through utilizing download information for
`the file, including name of the file and internet protocol (‘IP’) address of the
`remote server, cached in the cache storage” requires the download
`information to be “stored in a cache storage of a wireless device.” Prelim.
`Resp. 11. Patent Owner, however, does not further argue what “cache
`storage” means, nor does Patent Owner specifically disagree with
`Petitioner’s proposed construction. See generally id.
`At this juncture, based on the present record, we find Petitioner’s
`proposed construction sufficiently persuasive. Accordingly, for this
`Decision, we adopt Petitioner’s proposed construction of the term “cache
`storage” as “storage that is more readily accessible by the user or user
`application than the original storage location.”
`2. “utilizing download information”
`Petitioner contends that “utilizing download information for the file
`. . . cached in the cache storage . . . from the wireless device” means “using
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`information . . . stored in the cache storage of the first wireless device to
`download a file from a remote server.” Pet. 10 (citing Ex. 1003 ¶ 68).
`According to Petitioner, “the file being downloaded is . . . transferred
`directly from the remote site to the assigned storage location.” Id. at 11
`(citing Ex. 1001, 5:37–42). Petitioner further contends that “it is the
`download information that gets stored in the cache of the wireless device.”
`Id. (citing Ex. 1001, 5:28–32; Ex. 1003 ¶ 71).
`Patent Owner does not specifically contest Petitioner’s proposed
`construction of “utilizing download information,” but argues the longer
`phrase “downloading a file from a remote server across the Internet into the
`storage space utilizing download information for the file, including name of
`the file and internet protocol (‘IP’) address of the remote server, cached in
`the cache storage” requires information needed to download a file from a
`remote server (i.e., the “download information”) to be “(i) stored in a cache
`storage of a wireless device and (ii) utilized to download the file across a
`network into an assigned storage space for the user of the wireless device.”
`Prelim. Resp. 10–11.
`At this juncture, based on the present record, we find Petitioner’s
`proposed construction sufficiently persuasive and Patent Owner’s
`construction consistent with Petitioner’s construction. Accordingly, for this
`Decision, we adopt Petitioner’s proposed construction of the term “utilizing
`download information” as “using information stored in the cache storage of
`the first wireless device to download a file from a remote server.”
`C. The Asserted Prior Art
`Before turning to Petitioner’s asserted grounds of unpatentability, we
`provide a brief summary of the asserted references.
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`1. McCown
`McCown describes a method for downloading files across a network,
`from a remote site into a client’s storage space account within a storage site.
`Ex. 1005, 3:26–28, 8:12–13. The method may include the use of a user site,
`a remote site that has a web server, and a storage site. See, e.g., id. at 3:26–
`4:7, 7:17–25.
`The user site may be a machine capable of digital network
`communications with input and output devices for sending and receiving
`information, and a browser for Internet connectivity. Id. at 7:27–8:1, 8:5–6.
`Examples of a user site include a personal computer, laptop, palmtop, or a
`cell phone. Id. at 7:27–29.
`The remote site may be a web site on the Internet with one or more
`files available for downloading. Id. at 6:17–18. The remote site may
`include a storage medium for storing files as well as file lists used to identify
`each file, for example, by URL. Id. at 6:23, 7:8–14. The remote site may
`also include a web server for interfacing the remote storage medium to the
`Internet, and the web server may be capable of sending and receiving
`information over the Internet, the information sent including webpages, file
`lists, and files. Id. at 7:17–25.
`The storage site may include a storage medium with storage space
`accounts implemented thereon for clients to access on the Internet. Id. at
`8:11–13, 8:17–18. To access its storage space account, a client must provide
`a user identification and password, which may be authenticated by an
`account manager. Id. at 8:27–9:6. The storage space account may appear as
`a mounted drive to the user site and client. Id. at 9:14–16. The storage site
`may also include a web server for sending and receiving information over
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`the Internet and may communicate with the remote site’s web server. Id. at
`9:9–13.
`In one embodiment, the user site may generate a request for a web
`page containing a file list and send the request to the remote site. Id. at
`10:19–23. Having received the request, the remote site may send the
`requested web page to the user site. Id. at 10:24–25. The user site may then
`display the file list to the client through an output device. Id. at 10:25–29.
`Using an input device, the client may select files from the file list for
`downloading. Id. at 11:4–7. The user site’s software application may accept
`and use the URL of a selected file to generate a data request and send it over
`the Internet to the storage site’s software application. Id. at 11:17–22. The
`data request may be used to generate a download request, which is sent to
`the storage site’s web server. Id. at 12:23–26. The web server may then
`send the download request to the remote site, which may download the files
`identified by the URLs to the storage site. Id. at 12:26–29. The storage site
`may receive the downloaded files and store them into the client’s storage
`space account. Id. at 12:29–13:2.
`2. Dutta
`Dutta describes a method and system for customizing the storage of
`captured Web content. Ex. 1006 ¶ 10. A client may receive a Web page
`displayed by a browser application in response to a user’s request to browse
`the Web page. Id. The user may use a control within a toolbar of the
`browser application to capture content being displayed, and the captured
`data and user parameters may be pushed over a wired or wireless network to
`a server for customized processing. Id. ¶¶ 10, 21, 35, 37.
`The server may receive the pushed information from the client and
`automatically stores captured data. Id. ¶ 11. In addition, the server may
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`automatically modify a user Web page or file that was previously stored in
`the server’s storage, for example, by inserting a hyperlink to the captured
`data. Id. ¶¶ 11, 53. Such a modification may be accomplished by executing
`a server-side script (e.g., a user-specified script contained in the information
`the server received from the client). Id. ¶¶ 11, 44, 52.
`Dutta also describes that the client may maintain a local storage for
`use by the browser and other applications. Id. ¶ 29. The browser may store
`a bookmark file, a browser cache, and other types of files such as user-saved
`Web pages. Id. A user of the client may also register to create a personal
`account for gaining authorization and access to the server and its services.
`Id. ¶ 38. After the user has been registered, the user may be allocated a
`certain amount of online storage space within the server’s storage for storing
`various types of data. Id.
`
`3. Coates
`Coates describes a storage port that interfaces a client computer (e.g.,
`a web or application server) to a network storage system remote from the
`client site. Ex. 1007, 3:7–10. To gain access to content (e.g., files) stored at
`the network storage system, the client computer may mount the storage port
`as a storage device on the client network. Id. at 3:10–13, 22:22–23.
`According to Coates, “[u]sers only gain access to their media objects, within
`the network storage system, using a highly secured ‘shared secret’
`authentication certificate technology.” Id. at 4:65–67. The client computer
`may make local file system requests to perform operations on the network
`storage system. Id. at 3:13–14. The storage port translates these local file
`system requests into network storage system requests and processes the
`requests, with access to the remote storage center. Id. at 3:15–16, 18–21.
`
`
`
`17
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`IPR2020-01269
`Patent 9,219,780 B1
`
`
`The storage port may include a data cache that stores files of the
`network storage system and a directory cache that stores directory
`information for the network storage system. Id. at 3:22–26. In response to a
`download request, the data cache may store objects to allow the distributed
`object storage manager (DOSM) to streamline data directly to the recipient.
`Id. at 10:61–63.
`In addition, a virtual file system (VFS) may perform directory
`operations. Id. at 13:46–47. The VFS may maintain, for each object file, a
`customer file directory including customer assigned filenames and unique
`network storage system file identifiers. Id. at 13:52–54. The VFS may
`consist of distributed directory managers (DDMs) and distributed
`directories. Id. at 13:58–60. Each client may be mapped to a distributed
`directory. Id. at 13:62–63. The DDMs may support common directory
`operations including “open file,” “move file,” “delete file,” “open folder,”
`“move folder,” and “create folder.” Id. at 13:64–66, see also id. at 15:13–
`21, 15:43–47, 15:52–55, 15:64–65, 16:7–9, 16:27–39. An extended markup
`language (XML) request to the VFS may be generated to perform a directory
`operation in the VFS. Id. at 25:63–26:3.
`D. Alleged Grounds of Unpatentability
`We now consider whether the Petition satisfies the threshold
`requirement for instituting an inter partes review under 35 U.S.C. § 314(a)
`by addressing each of Petitioner’s asserted grounds of unpatentability,
`below.
`
`1. Asserted Obviousness over McCown in view of Dutta
`Petitioner contends that claims 1–3, 7, 8, and 16–20 of the ’780 patent
`are unpatentable under 35 U.S.C. § 103(a) as obvious over McCown in view
`of Dutta. Pet. 16–68. Patent Owner opposes. Prelim. Resp. 12–38. In
`18
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`
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`IPR2020-01269
`Patent 9,219,780 B1
`
`support of its Preliminary Response directed to these grounds, Patent Owner
`relies on the Declaration of Mr. Jawadi. See, e.g., id. at 18–19 (citing
`Ex. 2001).
`
`a. Claim 1
`The preamble of claim 1 recites “[a] wireless device access to a
`remote storage space.” Ex. 1001, 6:11. Petitioner contends that McCown
`discloses a user site (“wireless device”) through which a user may access a
`remote site (“access to a remote storage space”). Pet. 16 (citing Ex. 1005,
`7:26). Petitioner contends that McCown’s “user site” is “‘a personal
`computer, workstation, laptop computer, server, palmtop device, enhanced
`cellular telephone, or any other machine capable of digital network
`communications,’ each of which ‘can be connected to the Internet.’” Id.
`(quoting Ex. 1005, 7:27–29 (emphasis omitted), 2:13–16). Petitioner further
`contends that McCown’s storage site and user site host software applications
`that “make the storage space account appear as a mounted drive to the user
`site and client.” Id. at 17 (citing Ex. 1005, 9:14–17, 9:23–26; Ex. 1003
`¶ 111–112).
`Claim 1 also recites that the wireless device comprises “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.” Ex. 1001, 6:13–17. Petitioner
`contends that McCown teaches this limitation. Pet. 22–26. As to the “non-
`transitory computer-readable medium,” Petitioner contends that McCown
`discloses a storage site software application and a user site software
`application provided to a storage site and a user site, respectively, as
`computer programs recorded on information storage media. Id. at 23 (citing
`Ex. 1005, 9:23–30; Ex. 1003 ¶ 130). Petitioner contends that an ordinarily
`19
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`IPR2020-01269
`Patent 9,219,780 B1
`
`skilled artisan would have understood “computer programs recorded on
`information storage media” to encompass “non-transitory computer-readable
`medium,” as claimed. Id. (citing Ex. 1030, 450; Ex. 1009, 8:5–6; Ex. 1003
`¶ 131). As to “program instructions . . . executed by the wireless device,”
`Petitioner contends that the user site (“wireless device”) executes
`“information storage media recording computer programs” (“program
`instructions”). Id. at 23–24 (citing Ex. 1005, 9:14–30). Petitioner contends
`that an ordinarily skilled artisan would have understood McCown’s
`computer programs implement its remote-access techniques. Id. at 24
`(citing Ex. 1005, 5:1–6; Ex. 1030, 450; Ex. 1003 ¶ 133). Finally, as to
`“caus[ing] the wireless device remotely access to the storage space,”
`Petitioner contends that McCown’s user site software application (“program
`instructions”) communicates with the operating system of the user site to
`emulate a hard drive (“which, when executed by the wireles
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