IPR2020-01269
`U.S. Patent No. 9,219,780
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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.
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`
` SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner
`
`
`
`Case IPR2020-01269
`U.S. Patent 9,219,780
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`
`
`__________________
`
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`SynKloud Technologies, LLC’s Patent Owner Response
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`

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`IPR2020-01269
`U.S. Patent No. 9,219,780
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`TABLE OF CONTENTS
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`I. INTRODUCTION .......................................................................................................................1
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`II. TECHNOLOGY BACKGROUND ...........................................................................................2
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`A.
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`B.
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`Prior Art Storage Systems ....................................................................................................2
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`The ’780 Patent: Mr. Sheng Tai Tsao Invents An Approach For Downloading
`Data From A Web Site To A Remote Storage Server Using Download
`Information Stored In The Cache Of A Wireless Device. ...................................................4
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`III. SUMMARY OF THE INSTITUTED GROUNDS FOR REVIEW .........................................7
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`IV. CLAIM CONSTRUCTION. ....................................................................................................8
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`a.
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`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 (independent claims 1 and 16). ..........................................................................9
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`V.
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`A.
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`B.
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`THE PETITIONERS FAILED TO DEMONSTRATE THEY ARE
`REASONABLY LIKELY TO PREVAIL ON ANY OF THEIR PROPOSED
`OBVIOUSNESS GROUNDS. ...........................................................................................13
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`The Petitioners Failed To Set Forth A Proper Obviousness Analysis ...............................16
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`Independent Claims 1 And 16 As Well As The Claims Dependent Therefrom
`Would Not Have Been Obvious Over McCown In Combination With The
`Secondary References (Proposed Grounds 1 and 2). .........................................................18
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`1.
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`2.
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`3.
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`The Combination Of McCown and Dutta (Ground 1) Would Not Have
`Taught “downloading a file from a remote server across the Internet into
`the storage space through utilizing download information for the file …
`cached in the cache storage,” of the wireless device As Recited in
`Independent Claim 1 and As Similarly Recited in Independent Claim 16. ...........21
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`The Combination of McCown and Dutta (Ground 1) Would Not Have
`Taught “transmitting the downloading information [obtained for a file
`from a remote server] cached in the wireless device to the storage server,”
`As Recited in Dependent Claim 3 And As Similarly Recited In Dependent
`Claim 17. ................................................................................................................32
`
`The Petitioners Failed To Show That A POSITA Would Have Been
`Motivated To Modify McCown With Dutta To Achieve A Device
`“downloading a file from a remote server across the Internet into the
`storage space through utilizing download information for the file …
`cached in the cache storage,” of the wireless device As Recited In
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`ii
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`IPR2020-01269
`U.S. Patent No. 9,219,780
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`Independent Claim 1 And Similarly In Independent Claim 16 And
`Reasonably Expect Success. ..................................................................................38
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`B.
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`Objective Indicia Of Non-Obviousness Support The Patentability Of The Claims
`Of The ’780 Patent. ............................................................................................................46
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`VI.
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`CONCLUSION ..................................................................................................................77
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`IPR2020-01269
`U.S. Patent No. 9,219,780
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`TABLE OF AUTHORITES
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`PAGE NO.
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`CASES
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`Arista Networks, Inc., v. Cisco Systems, Inc.,
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`2016 WL 1083023 *5 (PTAB 2015)
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`CCS Fitness Inc. v. Brunswick Corp.,
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`288 F.3d 1366, 62 USPQ2d at 1662
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`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
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`809 F.3d 1375 (Fed. Cir. 2015)
`
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`Harmonic Inc. v. Avid Tech., Inc.,
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`815 F.3d 1356 (Fed. Cir. 2016)
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`In re Magnum Oil Tools Int’l, Ltd.,
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`829 F.3d 1364 (Fed. Cir. 2016)
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`Kolbe & Kolbe Millwork Co., Inc. v. Sierra Pacific Industries,
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`2019 WL 5070454 *20 (PTAB 2019)
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`K/S Himpp v. Hear-Wear Techs., LLC,
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`751 F.3d 1362 (Fed. Cir. 2014)
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`Mylan Pharmaceuticals Inc. v. Boehringer Ingelheim International GMBH,
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`2017 WL 1052517*1 (PTAB 2017)
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`Nautilus Hyosung Inc. v. Diebold Nixdorf, Inc.,
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`2017 WL 3447870 *8 (PTAB 2017)
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`SAS Institute v. Iancu,
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`138 S.Ct 1348 (2018)
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`Teleflex, Inc. v. Ficosa N Am. Corp.,
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`299 F.3d 1313, 63 USPQ2d 1374 (Fed. Cir. 2002)
`12, 16, 29
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`20, 36, 37
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`41
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`8
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`14
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`15, 16, 22
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`16, 37
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`4, 20
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`15, 22
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`16
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`14
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`14, 17, 38
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`IPR2020-01269
`U.S. Patent No. 9,219,780
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`8
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`14
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`15
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`14
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`1
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`Texas Digital Systems, Inc. v. Telegenix, Inc.,
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`308 F.3d 1193 (Fed. Cir. 2002)
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`Zodiac Pool Systems, Inc. v. Aqua Products, Inc.,
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`2018 WL 6604633 *1 (PTAB 2018)
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`STATUTES
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`35 U.S.C. §312(a)(3)
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`35 U.S.C. §314(a)
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`37 C.F.R. §42.107
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`IPR2020-01269
`U.S. Patent No. 9,219,780
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`PATENT OWNER’S EXHIBIT LIST
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`Exhibit Number Description
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`2001
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`2002
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`2003
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`2004
`2005
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`2006
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`2007
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`2008
`2009
`2010
`2011
`2012
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`2013
`2014
`2015
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`2016
`2017
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`2018
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`2019
`
`Declaration of Zaydoon Jawadi
`
`Curriculum Vitae of Zaydoon Jawadi
`
`Hypertext Transfer Protocol -- HTTP/1.1, rfc2616, June
`1999.
`Microsoft Computer Dictionary - 5th Edition – 2002
`Dictionary Definitions of Predefine, Merriam-Webster
`Dictionary, Oxford Dictionary, Cambridge Dictionary.
`Patrick-Turner's Industrial Automation Dictionary; Clarence
`T. Jones, S. Percy Jones; 1996
`Macmillan Dictionary of Information Technology; Dennis
`Longley, Michael Shain; 1988
`Claim Chart of wireless devices with Microsoft OneDrive
`Claim Chart of wireless devices with Adobe cloud services
`Claim Chart of wireless devices with Dropbox cloud services
`Claim Chart of wireless devices with Microsoft OneDrive
`Claim Chart of wireless devices with Microsoft OneDrive for
`the ‘780 Patent
`Newton’s Telecom Dictionary, 15th ed
`Second Declaration of Jaydoon Jawadi
`Claim Chart of the HP Laptop computers with Microsoft
`OneDrive
`Claim Chart of wireless devices with Microsoft OneDrive
`Microsoft Securities and Exchange Commission Form 10K
`filing for the fiscal year ending June 30, 2019
`https://blog.goptg.com/microsoft-office-365-statistics, last
`viewed September 15, 2020
`https://www.microsoft.com/en-us/microsoft-
`365/onedrive/compare-onedrive-
`plans?activetab=tab:primaryr2, last viewed September 15,
`2020.
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`2020
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`2021
`2022
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`2023
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`2024
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`2025
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`2026
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`2027
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`2028
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`2029
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`2030
`2031
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`U.S. Patent No. 9,219,780
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`https://techcommunity.microsoft.com/t5/microsoft-onedrive-
`blog/top-4-tips-to-protect-your-remote-workforce-with-data-
`compliance/ba-p/1452108?WT.mc_id=eml_CXM_EN-
`US_Comm_M365_Engagement_NewsletterEdition02_Email
`_01_V01_622_FY21Aug_ENUS, last viewed September 15,
`2020.
`Claim Chart of BLU wireless device with Google Drive
`“The Verizon Plan FAQs,” Verizon website
`(https://www.verizonwireless.com/support/the-verizon-plan-
`faqs/), last viewed September 15, 2020
`“Report: State of the Web,” HTTP Archive website
`(https://httparchive.org/reports/state-of-the-web), last viewed
`September 15, 2020.
`Microsoft OneDrive Pricing (https://products.office.com/en-
`US/onedrive-for-business/compare-onedrive-for-business-
`plans), last viewed September 15, 2020.
`“Cloud Data Storage Service Use Among Consumers in the
`United States, as of 2017,” Statista
`(https://www.statista.com/statistics/714140/us-usage-cloud-
`storage-services/), last viewed September 15, 2020.
`“Annual Estimates of the Resident Population: April 1, 2010
`to July 1, 2018,” U.S. Census Bureau, American Fact Finder.
`“United States Population,” Worldometer website
`(https://www.worldometers.info/world-population/us-
`population/), last viewed September 15, 2020.
`Ballard, John, “What is Dropbox’s Competitive Advantage?”
`The Motley Fool, August 21, 2018
`https://www.fool.com/investing/2018/08/21/what-is-
`dropboxs-competitive-advantage.aspx), last viewed
`September 15, 2020.
`Claim chart of smart phone with cloud storage (filed under
`seal)
`License to the ’780 Patent (filed under seal)
`https://www.microsoft.com/en-us/surface/devices/surface-
`pro/tech-specs, last viewed September 19, 2020.
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`2032
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`2033
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`2034
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`2035
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`2036
`2037
`2038
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`2039
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`U.S. Patent No. 9,219,780
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`https://support.microsoft.com/en-us/office/using-office-for-
`the-web-in-onedrive-dc62cfd4-120f-4dc8-b3a6-
`7aec6c26b55d#:~:text=In%20your%20web%20browser%2C
`%20go,Office%20for%20the%20web%20program, last
`viewed September 19, 2020
`https://www.dummies.com/computers/operating-
`systems/windows-10/how-to-access-onedrive-from-
`anywhere/, last viewed September 19, 2020
`https://www.microsoft.com/en-us/microsoft-
`365/onedrive/compare-onedrive-
`plans?ef_id=CjwKCAjwkoz7BRBPEiwAeKw3qwWV_91zlJ
`tXmTwNvg1VRHD4lR_L8VuIUbASJYJAIKfOODGFtWQz
`whoCuaMQAvD_BwE:G:s&OCID=AID2100137_SEM_Cjw
`KCAjwkoz7BRBPEiwAeKw3qwWV_91zlJtXmTwNvg1VR
`HD4lR_L8VuIUbASJYJAIKfOODGFtWQzwhoCuaMQAvD
`_BwE:G:s&lnkd=Google_O365SMB_App&gclid=CjwKCAj
`wkoz7BRBPEiwAeKw3qwWV_91zlJtXmTwNvg1VRHD4l
`R_L8VuIUbASJYJAIKfOODGFtWQzwhoCuaMQAvD_Bw
`E&activetab=tab:primaryr2, last viewed September 19, 2020
`https://www.steeves.net/news/top-9-reasons-for-onedrive-in-
`your-business/, last viewed September 19, 2020.
`Modified Protective Order
`Redline Version of Modified Protective Order
`"Number of internet users in the United States from 2015 to
`2025 (in millions),” Statista
`(https://www.statista.com/statistics/325645/usa-number-of-
`internet-users/), last viewed September 20, 2020.
`License to the ’780 Patent (filed under seal)
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`IPR2020-01269
`U.S. Patent No. 9,219,780
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`I. INTRODUCTION
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` The Board should not cancel any claims of U.S. Patent No. 9,219,780 (“the
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`’780 patent”) because Petitioners did not demonstrate by a preponderance of the
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`evidence that any claim would have been obvious for three separate and
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`independent reasons.
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`First, each of Petitioners proposed grounds of rejection is missing one or
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`more limitations of the claims of the ’780 patent. Infra, §§ V.A.2 and V.B.2-8. For
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`example, none of the combinations of prior art references asserted by Petitioners
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`would have taught “downloading a file from a remote server across the Internet
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`into the storage space through utilizing download information for the file,
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`including name of the file and internet protocol (“IP”) address of the remote server,
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`cached in the cache storage,” as recited in independent claim 1 and as similarly
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`recited in independent claim 16 of the ’780 patent. Petitioners sole primary
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`reference (McCown) does not even mention cache. And although the secondary
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`reference Dutta does mention cache, it does not make any mention of how any of
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`the data in cache would be used, let alone that download information in the cache
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`of a wireless device would be used remotely from the wireless device—not locally
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`at the wireless device—to download a file from a remote server (e.g., a web site) to
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`a remote storage space.
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`1
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`IPR2020-01269
`U.S. Patent No. 9,219,780
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`Second, the Petitioners did not present any objective evidence as to why one
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`of ordinary skill in the art would have been motivated to modify International
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`Publication No. WO 01/67233 to McCown, the sole primary reference, with the
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`teachings of the secondary references (U.S. Publication No. 2002/0078102 to Dutta
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`(“Dutta”) and U.S. Patent No. 7,266,555 to Coates (“Coates”)), and reasonably
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`expect success in achieving the invention recited by the challenged claims of the
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`‘780 patent. That is, the Petitioners did not show that a “skilled artisan would have
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`been motivated to combine the teachings of the prior art references to achieve the
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`claimed invention, and that the skilled artisan would have had a reasonable
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`expectation of success in doing so.” OSRAM Sylvania, Inc. v. Am Induction
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`Techs., Inc., 701 F.3d 698, 706 (Fed. Cir. 2012).
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`Third, objective indicia of non-obviousness, including the commercial
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`success of the devices that infringe the claims of the ’780 Patent and two licenses
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`showing industry respect for the claimed invention support the patentability of the
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`claims. Infra, § V.B.
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`II. TECHNOLOGY BACKGROUND
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`A.
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`Prior Art Storage Systems
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`As discussed in the background section of the ’780 patent, prior art storages
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`systems are “categorized as internal storage or external storage.” EX1001, 1:33-34.
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`IPR2020-01269
`U.S. Patent No. 9,219,780
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`“The internal storages of a computing system include those storage media such as
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`hard disk drives, memory sticks, memory, and others that are internally connected
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`within the computing system through [a] system bus or a few inches of cable.” Id.
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`at 1:35-38. That is, internal storage media “are internal components of the
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`computing system in a same enclosure.” Id. at 1:39-40.
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`In contrast, “[t]he external storages of a computing system are those storage
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`media that are not the internal components of the computing system in a same
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`enclosure.” Id. at 1:42-44. Instead, external storage is “connected through [a]
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`longer cable, such as through Ethernet cable for IP based storage, Fiber channel
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`cable for fiber channel storage, or wireless communication media, and others.” Id.
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`at 1:45-47. “[E]xternal storage could be magnetic hard disk drives, solid state disk,
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`optical storage drives, memory card and others, and could be in any form.” Id. at
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`1:47-51.
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`The inventor of the ’780 patent, however, recognized that storage on users’
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`“wireless devices such as in their cell phone or personal data assistant devices
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`(“PDA”) … [was] usually limited to 256 MB for the PDA and much less for the
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`cell phone.” Id. at 2:39-42. Accordingly, the invention recognized a need to
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`provide wireless devices with “multiple gigabytes (GB) of storage” from a remote
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`storage server to support multimedia applications. Id. at 43-47. Moreover, because
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`multimedia data require large amounts of memory, there was a need to store data
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`3
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`

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`from various sources (e.g., a web server) to the remote storage server. Id. at 2:61-
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`IPR2020-01269
`U.S. Patent No. 9,219,780
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`67.
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`B.
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`
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`The ’780 Patent: Mr. Sheng Tai Tsao Invents An Approach For
`Downloading Data From A Web Site To A Remote Storage Server Using
`Download Information Stored In The Cache Of A Wireless Device.
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`The ’780 patent addresses the deficiencies of the prior art with an approach
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`that downloads data from a web site to a remote storage server using download
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`information in a cache of a wireless device, as shown by FIG. 3, which is
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`reproduced below.
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`IPR2020-01269
`U.S. Patent No. 9,219,780
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`One embodiment of the invention includes a wireless device (1) having a
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`web browser (8) and other software (9); a website (15); and external storage (10)
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`having file systems (11) on a server (3). Id. at 3:60-4:2. When a user of the
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`wireless device (1) desires to download data from a web server (15) to an assigned
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`file system of the assigned external storage (10) on a server (3), the following steps
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`are performed:
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`5
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`IPR2020-01269
`U.S. Patent No. 9,219,780
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`“1) Provide the user from a web-browser (8) of the wireless device (1)
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`access to a remote web server site (15) to obtain information for the downloading
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`via the path (a) of the FIG. 3”;
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`“2) The other software modules (9) of the wireless device (1) obtain the
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`downloading information, which becomes available in the cached web-pages on
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`the wireless device (1) after the web-browser (8) access[es] the web site (15)”;
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`“3) The other software modules (9) of the wireless device (1) send the
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`obtained downloading information to [the] other service modules (7) of the storage
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`server (3) via the path (b)”;
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`“4) Upon receiving the downloading information from the wireless device
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`(1), the other service module (7) of the storage server (3) sends a web download
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`request to the web-site (15) via the path (c) based on download information
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`obtained and then receives the downloading data from the web server of the web-
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`site (15)”; and
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`“5) Upon receiving downloading data, the other service modules (7) of the
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`storage server (3) write[s] the data for the wireless device (1) into the assigned file
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`system (11) on the server (3).”
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`Id. at 5:23-47.
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`In this manner, the present invention downloads data using the download
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`information in the cache of the user’s wireless device (1) from the web site (15) to
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`IPR2020-01269
`U.S. Patent No. 9,219,780
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`the user’s assigned file system (11) on the server. The downloaded data can later
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`be accessed by the user device. Id. at 5:48-53.
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`Thus, the invention of the ’780 patent includes a novel and non-obvious way
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`to utilize download information in a cache of a wireless device to enable easy and
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`efficient downloading of data (e.g., a web page, a file) from a web server to a
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`remote storage space. For example, if a user of the wireless device of the claimed
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`invention of the ’780 patent was to access a picture from a web site (e.g., New
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`York Times) either to view it or to download it to remote storage, the New York
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`Times web site would not need to do anything differently; it would simply transmit
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`a file containing the picture to the requester without needing to know whether the
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`picture would be stored in remote storage or viewed on the device. In other words,
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`the web sites need not be adapted or changed in any way to operate with the
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`wireless device of the present invention.
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`III. SUMMARY OF THE INSTITUTED GROUNDS FOR REVIEW
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`Below is a summary of the proposed grounds instituted by the Board:
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`i.
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`Claims 1-3, 7, 8, and 16-20 are alleged to have been obvious under
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`§103 over International Publication No. WO 01/67233 to McCown (“McCown”) in
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`view of U.S. Publication No. 2002/0078102 to Dutta (“Dutta”); and
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`7
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`ii. Claims 4-6 and 16-20 are alleged to have been obvious under §103
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`over McCown in View of Dutta, and further in view of U.S. Patent No. 7,266,555
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`IPR2020-01269
`U.S. Patent No. 9,219,780
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`to Coates (“Coates”).
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`
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`IV. CLAIM CONSTRUCTION.
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`Claim construction is generally an issue of law. Claims in an inter partes
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`review are construed pursuant to the principle set forth by the court in Phillips v.
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`AWH Corp, 415 F.3d 1303, 1312-15 (Fed. Cir. 2005) (en banc). Under Phillips, the
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`specification is the single best source for claim interpretation. 415 F.3d at 1312.
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`“The terms used in the claims bear a heavy presumption that they mean what they
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`say and have the ordinary meaning that would be attributed to those words by
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`persons skilled in the relevant art.” Texas Digital System, Inc. v. Telegenix, Inc.,
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`308 F.3d 1193, 1202 (Fed. Cir. 2002) (emphasis added) (internal quotation marks
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`omitted) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.
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`Cir. 2002); K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1362-63 (Fed. Cir. 1999);
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`Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989 (Fed. Cir.
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`1999); Specialty Composites v. Cabot Corp., 845 F.2d 981, 986 (Fed. Cir. 1988)).
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`If a term is “used differently by the inventor,” he may provide a special definition
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`if he does so with “reasonable clarity, deliberateness, and precision.” In re
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`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
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`IPR2020-01269
`U.S. Patent No. 9,219,780
`
`
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`a.
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`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 (independent claims 1 and 16).
`
`The claim limitation “downloading a file from a remote server across the
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`Internet into the storage space through utilizing download information for the file,
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`including name of the file and internet protocol (“IP”) address of the remote server,
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`cached in the cache storage” is recited in independent claim 1, and similarly recited
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`in independent claim 16. This claim limitation requires information needed to
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`download a file from a remote server to be (i) stored in a cache storage of a
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`wireless device and (ii) utilized to download the file across a network into an
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`assigned storage space for the user of the wireless device.
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`This claim construction is consistent with the claim language itself. Claim 1
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`explicitly recites that the “download information for the file … [is] cached in the
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`cache storage” of the wireless device. EX1001, 6:35-40. Claim 1 also recites
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`“downloading a file from a remote server.” Id. at 6:35-36. Therefore, the claimed
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`“download information” is for the file at the remote server and this “download
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`information” is stored in the cache storage of the wireless device. Claim 16 recites
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`similar limitations, id. at 8:29-34, and therefore, also supports Patent Owner’s
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`proposed construction.
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`Patent Owner’s proposed construction is also consistent with the
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`Specification. The Specification explains that the claimed “download information
`
`for the file” is stored in the cache of the wireless device: “the downloading
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`information for the data, which becomes available in the cached web-pages on the
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`wireless device.” Id. at 5:28-32. This download information in the wireless
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`device’s cache is, in fact, utilized to download the file:
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`3) The other software modules (9) of the wireless device (1) send the
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`obtained downloading information to other service modules (7) of the
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`storage server (3) via path (b) of FIG. 3.
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`
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`4) Upon receiving the downloading information from the wireless
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`device (1), the other service module (7) of the storage server (3) sends
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`a web download request to the web-site (15) via path (c) of FIG. 3
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`based on download information obtained. and receives the
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`downloading data streams from the web server of the web-site (15).
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`EX1001, 5:33-43.
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`Both the claim language itself and the Specification support Patent Owner’s
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`proposed construction.
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`Petitioners’ construction of “cache” as “storage that is more readily
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`accessible by the user or user application than the original storage location”
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`(Petition, 7) is flawed. As explained by Mr. Jawadi, “[a] POSITA would have
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`known that cache storage is not merely any storage location ‘that is more readily
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`accessible by the user or user application than the original storage location’”
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`because it “omits three basic cache principles.” EX2014, ¶ 28.
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`“First, cache storage is used to save information that may be needed multiple
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`times (subsequent to initial access) in a more readily accessible location, eliminating
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`the need to retrieve the data again from the original source of the information.” Id.
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`at ¶ 29 (emphasis in original). “Second, cache storage includes a cache search
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`mechanism invoked when information is needed. The cache search mechanism is
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`used to determine if the requested information is in cache (cache hit) or not in cache
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`(cache miss).” Id. at ¶ 30 (emphasis in original). “Third, cache storage includes a
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`replacement algorithm, mechanism, or policy for replacing information in cache,
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`such as least recently used (LRU) algorithm.” Id. at ¶ 31 (emphasis in original).
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`Indeed, Petitioner’s own references describe these three principles. For
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`example, “Petitioner’s EX-1008 (Newton’s Telecom Dictionary) … confirms that
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`cache storage is used to save information that may be needed multiple times
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`(subsequent to initial access), that cache storage includes a mechanism to determine
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`cache hit/miss, and that cache storage includes a replacement algorithm” (EX2014,
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`¶ 33):
`
`A cache works like this. When the CPU needs data from memory, the
`system checks to see if the information is already in the cache. If it is,
`it grabs that information; this is called a cache hit. If it isn’t, it’s
`called a cache miss and the computer has to fetch the information by
`access the main memory or hard disk, which is slower. Data retrieved
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`
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`during a cache miss is often written into the cache in anticipation of
`further need for it.
`...
`Generally, when the cache is exhausted, it is flushed and the data is
`written back to main memory, to be replaced with the next cache
`according to a replacement algorithm.
`...
`The cache also will hold information that you recently accessed, in
`anticipation of your wanting to back up, or access it again.
`...
`Caching A process by which information is stored in memory or
`server in anticipation of next request for information.
`
`EX-1008, Newton’s Telecom Dictionary (emphasis added). “Petitioner’s EX-1030
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`(Microsoft Press Computer Dictionary) also confirms that cache storage is used to
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`save information that may be needed multiple times (subsequent to initial access)
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`and that cache storage includes a mechanism to determine cache hit/miss” (EX2014,
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`¶ 34):
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`A special memory subsystem in which frequently used data values
`are duplicated for quick access. A memory cache stores the contents
`of frequently accessed RAM locations and the addresses where
`these data items are stored. When the processor references an address
`in memory, the cache checks to see whether it holds that address.
`If it does hold the address, the data is returned to the processor; if it
`does not, a regular memory access occurs.
`
`EX-1030, Microsoft Press Computer Dictionary (emphasis added).
`
`Thus, Petitioner’s construction, which deems as cache any location that is
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`“more readily accessible … than the original storage location” neglects to consider
`
`that a POSITA would have known of these three basic cache principles (i.e., that
`
`cache stores information that may be needed multiple times / subsequent to initial
`
`
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`access, that cache storage includes a mechanism to determine cache hit/miss, and
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`that cache storage includes a replacement algorithm). “[U]nder such overly broad
`
`and flawed construction, any storage location (e.g., disk drive, random access
`
`memory, etc.) that stores the information and that is faster than the original source
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`would constitute cache, even if the information is only transitorily and temporarily
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`stored in that location and not saved for future hits, even if the location is never
`
`intended or designed to operate as cache, even if the location does not operate as
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`cache (missing the three basic cache principles mentioned above), and even if the
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`location entirely contradicts the three basic cache principles described earlier.”
`
`EX2014, ¶ 35. Indeed, “[u]nder Petitioner’s construction, other than the original
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`location where a web page is stored at the web server, any storage location where
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`the web page is stored would constitute cache, because any such alleged storage
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`location other than the original location is ‘more readily accessible by the user or
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`user applications than the original storage location.’” Id. at ¶ 36.
`
`
`
`V. THE PETITIONERS FAILED TO DEMONSTRATE THEY ARE
`REASONABLY LIKELY TO PREVAIL ON ANY OF THEIR
`PROPOSED OBVIOUSNESS GROUNDS.
`
`As set forth by the Supreme Court, the question of obviousness is resolved
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`on the basis of underlying factual determinations including (1) the scope and
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`content of the prior art, (2) any differences between the claimed subject matter and
`
`
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`the prior art, (3) the level of skill in the art. Graham v. John Deere Co., 383 U.S.
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`1, 17-18, 148 USPQ 459, 467 (1966); see also KSR Int’l Co. v. Teleflex Inc., 550
`
`U.S. 398, 399 (2007) (“While the sequence of these questions might be reordered
`
`in any particular case, the [Graham] factors define the controlling inquiry.”) A
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`petitioner seeking to invalidate a patent as obvious must demonstrate that a “skilled
`
`artisan would have been motivated to combine the teachings of the prior art
`
`references to achieve the claimed invention, and that the skilled artisan would have
`
`had a reasonable expectation of success in doing so.” OSRAM Sylvania, Inc. v. Am.
`
`Induction Techs., Inc., 701 F.3d 698, 706 (Fed. Cir. 2012). The Petition’s evidence
`
`must also address every limitation of every challenged claim.
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`Indeed, it is Petitioners’ burden to demonstrate, based on the parties' papers,
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`“that there is a reasonable likelihood that the petitioner would prevail with respect
`
`to at least one of the claims challenged in the petition.” SAS Institute v. Iancu, 138
`
`S. Ct. 1348, 1353 (2018) citing 35 U.S.C. § 314(a). Importantly, the burden rests
`
`on Petitioners—there is no burden on Patent Owner to prove to the contrary.
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`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
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`2015) (Petitioner bears the burden of proving unpatentability of the challenged
`
`claims, and the burden of persuasion never shifts to Patent Owner.); Zodiac Pool
`
`Systems, Inc. v. Aqua Products, Inc., 2018 WL 6604633 *1 (PTAB 2018). In a
`
`contest to invalidate a patent based on obviousness over prior art, the burden is that
`
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`of Petitioner to point to the passages in each reference relied upon to show all
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`limitations recited in the claims, or, in the alternative, demonstrate conclusively
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`that each of those limitations would be understood by the skilled artisan to be a
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`natural supplement to the express teaching of the references. See, Mylan
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`Pharmaceuticals Inc. v. Boehringer Ingelheim International GMBH, 2017 WL
`
`1052517*1 (PTAB 2017):
`
`
`
`It is Petitioner's burden to set forth the basis for its challenge in the
`
`Petition. See 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.”).
`
`In Harmonic, the Federal Circuit held that “it was
`
`Harmonic's burden to explain to the Board how Haskell combined
`
`with Rossmere rendered the challenged claims unpatentable.
`
`
`
`While references relied upon are understood in light of the level of skill in
`
`the art, if that level of skill in the art is relied upon to show the presence of precise
`
`limitations recited in the challenged claims, specific explanation and evidence must
`
`be provided to support that contention – mere conclusory statements will not
`
`suffice to meet Petitioner’s burden. Importantly, where the Petitioner seeks to rely
`
`on the knowledge of skill in the art, how and why one of skill in the art would
`
`modify the references relied upon to demonstrate obviousness must be set forth
`
`
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`15
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`with specificity. Nautilus Hyosung Inc. v. Diebold Nixdorf, Inc., , 2017 WL
`
`3447870 *8 (PTAB 2017):
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`In an [inter partes review], the petitioner has the burden from the
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`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)….
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`Furthermore, Petitioner cannot satisfy its burden of proving
`
`obviousness by employing “mere conclusory statements.” In re
`
`Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir.
`
`2016)…Petitioner cannot satisfy its burden of proving obviousness by
`
`employing “mere conclusory statements.” Id.
`
`
`
`Petitioners cannot prevail on any claim on any of the instituted obviousness
`
`grounds because they (i) failed to demonstrate that one of ordinary skill in the art
`
`would have been motivated to combine the