`
`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.
`
`U.S. Patent No. 9,219,780
`Inventor: Sheng Tai Tsao
`
`METHOD AND SYSTEM FOR WIRELESS DEVICE ACCESS TO
`EXTERNAL STORAGE
`________________________
`Case IPR2020-01269
`________________________
`PETITIONERS’ REPLY BRIEF
`________________________
`
`Title:
`
`
`
`
`
`
`
`
`
`
`
`
`Petitioners’ Reply in IPR2020-01269
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`
`ARGUMENT ................................................................................................... 1
`
`I.
`
`II.
`
`A.
`
`Synkloud’s Claim Construction Is Legally Erroneous ......................... 1
`
`1.
`
`2.
`
`Utilizing download information .................................................. 1
`
`Cached ......................................................................................... 3
`
`B.
`
`The Challenged Claims Are Unpatentable ............................................ 4
`
`1. McCown/Dutta Satisfy the “download a file from a remote
`
`server …” Claim Language ........................................................ 5
`
`2. McCown/Dutta Satisfy the “Transmitting” Claim Language ... 14
`
`3.
`
`A Skilled Artisan Would Have Been Motivated to Combine
`
`McCown and Dutta ................................................................... 16
`
`C.
`
`Synkloud Has Failed to Prove Any Relevant Objective Indicia of
`
`Non-Obviousness ................................................................................ 19
`
`1.
`
`2.
`
`Commercial Success ................................................................. 19
`
`Licensing ................................................................................... 21
`
`III. CONCLUSION .............................................................................................. 22
`
`
`
`
`
`
`
`i
`
`
`
`Petitioners’ Reply in IPR2020-01269
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Amgen Inc. v. Hoechst Marion Roussel, Inc.,
`314 F.3d 1313 (Fed. Cir. 2003), aff’d and remanded in part, 457
`F.3d 1293 (Fed. Cir. 2006) ................................................................................. 18
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016), cert. denied, 1375 S. Ct. 1329
`(2017) .................................................................................................................... 8
`Caterpillar Inc. v. Wirtgen Am., Inc.,
`IPR2017-02186, Paper 10 (PTAB May 1, 2019) ............................................... 16
`Ericsson Inc. v. Intellectual Ventures I LLC,
`890 F.3d 1336 (Fed. Cir. 2018) .......................................................................... 12
`Fox Factory, Inc. v. SRAM,
`LLC, 944 F.3d 1366 (Fed. Cir. 2019), cert. denied, 141 S. Ct. 373
`(2020) .................................................................................................................. 19
`KSR Int’l Co. v. Teleflex Inc.,
`127 S. Ct. 1727 (2007) .......................................................................................... 8
`Merck & Cie v. Gnosis S.P.A.,
`808 F.3d 829 (Fed. Cir. 2015), cert. denied, 137 S. Ct. 297 (2016)................... 22
`Microsoft Corp. v. Synkloud Techs., LLC,
`IPR2020-00316, Paper 43 (PTAB June 14, 2021) ....................................... 1, 2, 7
`Ormco Corp. v. Align Tech., Inc.,
`463 F.3d 1299 (Fed. Cir. 2006) .......................................................................... 19
`In re Rouffet,
`149 F.3d 1350 (Fed. Cir. 1998) .......................................................................... 22
`Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530 (Fed. Cir. 1983) .......................................................................... 22
`
`
`
`ii
`
`
`
`Petitioners’ Reply in IPR2020-01269
`
`Tokai Corp. v. Easton Enters., Inc.,
`632 F.3d 1358 (Fed. Cir. 2011) .................................................................... 19, 21
`Transocean Offshore Deepwater v. Maersk Drilling, Inc.,
`699 F.3d 1340 (Fed. Cir. 2012) .......................................................................... 19
`Regulations
`37 C.F.R. §42.65(a) .................................................................................................. 12
`37 C.F.R. § 42.73(d)(3)(i) .......................................................................................... 1
`
`
`
`
`iii
`
`
`
`Petitioners’ Reply in IPR2020-01269
`
`I.
`
`INTRODUCTION
`The Petition demonstrated it would have been obvious to combine a prior art
`
`browser cache, a device known to be used for storing web pages, with the system
`
`of McCown in order to store a webpage of URLs. Synkloud’s response asserts a
`
`scattershot of unsupported and mostly unexplained arguments that ignore the
`
`actual analysis of the Petition and the disclosures of the prior art. Those arguments
`
`should be rejected.
`
`Moreover, the Board has recently rejected many of the arguments Synkloud
`
`asserts here in a final written decision concerning a related patent sharing the same
`
`specification and nearly identical claim language as at issue here. See Microsoft
`
`Corp. v. Synkloud Techs., LLC, IPR2020-00316, Paper 43 (June 14, 2021) (“the
`
`316 FWD”). Synkloud should therefore be estopped from making these arguments
`
`here, as doing so would be “taking action inconsistent with the adverse judgment”
`
`in the 316 FWD, in contravention of 37 C.F.R. § 42.73(d)(3).
`
`II. ARGUMENT
`Synkloud’s Claim Construction Is Legally Erroneous
`A.
`
`Utilizing download information
`1.
`Synkloud argues for a construction of the phrase “download a file from a
`
`remote server …,” POR, 8-13, which is nearly identical to the Board’s
`
`interpretation of the “utilizing information …” portion of that same claim language,
`
`
`
`1
`
`
`
`Petitioners’ Reply in IPR2020-01269
`
`Inst. Dec., 13-14. The main difference is that Synkloud changes the phrase
`
`“download information” to “information needed to download a file from a remote
`
`server.” POR, 9.1
`
`Those two phrases are not the same thing, as nothing in the words
`
`“download information” limits the claim to information “needed” to perform a
`
`download (as opposed to information simply “utiliz[ed]” to perform such a
`
`download, which is what the claim says), and “information needed to download a
`
`file” could include all kinds of information never hinted at in the patent, e.g.,
`
`checksum information, decryption codes, account numbers. Synkloud does not
`
`justify switching in its “needed to download” language or explain why its
`
`interpretation should be used instead of the Board’s. It instead argues its
`
`construction is “consistent” with the specification because the specification
`
`discloses that such information is “utilized to download the file.” POR, 9-10. But
`
`consistency with the specification is no basis to construe claim language in a
`
`manner much narrower than its ordinary meaning.2
`
`
`
`1 In this brief, all emphasis had been added unless otherwise indicated.
`
`2 The Board has already finally rejected this same construction in the 316 FWD.
`IPR2020-00316, Paper 43 at 9-10.
`
`
`
`2
`
`
`
`Petitioners’ Reply in IPR2020-01269
`
`In any event, the Petition demonstrated that McCown/Dutta stored a web
`
`page of URLs used to download a file from a remote server. Pet., 33-50. Such
`
`URLs would be “information needed to download a file from a remote server”
`
`because a URL is the Internet address of the file to be downloaded. Pet., 36-37;
`
`EX1030, 487.
`
`Cached
`2.
`Synkloud also argues against an interpretation of the noun “cache,” POR,
`
`10-13, even though the Petition proposed an interpretation of “cache storage,” Pet.,
`
`7-10, which is the actual phrase used in the claims, e.g., EX1001, 6:12. Synkloud
`
`contends that three “basic cache principles” should be read into the claims from
`
`extrinsic evidence. POR, 10-13. Synkloud makes no attempt to justify importing
`
`these limitations based on the intrinsic record, and it mischaracterizes the extrinsic
`
`evidence it cites.
`
`For example, both Synkloud and its expert cite dictionaries that describe
`
`how a cache “works,” not what a “cache” is, let alone what the claim phrase “cache
`
`storage” means. EX2014,¶¶28-34 (quoting EX1008, which states “A cache works
`
`like this …” and EX1030 explaining what a cache does). Moreover, the claim
`
`language here is “cache storage,” so it recites only the storage portion of a cache,
`
`not the cache itself.
`
`
`
`3
`
`
`
`Petitioners’ Reply in IPR2020-01269
`
`In any event, the Petition demonstrated that McCown inherently discloses a
`
`cache (and therefore “cache storage”) and Dutta expressly discloses one. Pet., 17-
`
`20. Thus, to the extent the three “basic cache principles” could be interpreted as
`
`necessary characteristics of “cache storage,” then the caches of McCown and Dutta
`
`include those characteristics too. To the extent those characteristics are not
`
`necessarily part of every cache, they are not properly included in a construction of
`
`that term, since they do not define what a cache is and are not required by the
`
`intrinsic evidence.3
`
`B.
`
`The Challenged Claims Are Unpatentable
`
`Synkloud first argues, in text cut and pasted from its Preliminary Response,
`
`that review of the petition “should be denied” because the petition did not set forth
`
`a proper obviousness analysis. Compare POR, 16-18 with PPOR, 15-17. The
`
`Board has already rejected these arguments by instituting this proceeding, so the
`
`argument should be ignored as irrelevant. Synkloud does not, in any event, point
`
`to any particular aspect of the petition’s analysis that is insufficient, so the
`
`argument should again be rejected. The argument is also erroneous, as the Petition
`
`
`
`3 Synkloud also disagrees with the Board conclusion that a browser cache would be
`“understood to store information so that it is more readily accessible,” POR, 29,
`but Synkloud’s expert confirms that is exactly what a cache is for, EX2014,¶29.
`
`
`
`4
`
`
`
`Petitioners’ Reply in IPR2020-01269
`
`set forth, among other things, the level of ordinary skill (Pet., 4), the scope and
`
`content of the prior art (Pet., 13-15), the differences between the prior art and the
`
`claims (e.g., Pet., 18, 49), and why the claims would have been obvious to a
`
`Skilled Artisan (e.g., Pet., 49-54). Moreover, as confirmed below, there are no
`
`relevant secondary considerations of nonobviousness.
`
`1. McCown/Dutta Satisfy the “download a file from a remote
`server …” Claim Language
`Synkloud also argues that the combination of McCown and Dutta does not
`
`satisfy the “download[ing] a file from a remote server …” claim language, POR,
`
`15-18, but its reasoning ignores the disclosure of those references and the
`
`Petition’s analysis. As explained in detail in the Petition and below, McCown
`
`discloses all elements of the claims except actually storing the “download
`
`information” (a web page of URLs) in a cache storage. Dutta discloses a browser
`
`cache, a device known to be used for the storage of web pages. In the combination
`
`analyzed in the Petition, Dutta’s browser cache is added to the system of McCown
`
`and used to store the download information. The combination thus satisfies every
`
`element of the challenged claims. Synkloud’s more specific assertions are
`
`addressed below.
`
`
`
`5
`
`
`
`Petitioners’ Reply in IPR2020-01269
`
`a. McCown/Dutta Is Not Limited to a User Downloading
`All Available Files at Once, or Accessing the Webpage
`Only Once
`Synkloud objects to the petition’s showing that it would have been obvious
`
`to store the “download information” – i.e., the web page of URLs – in a browser
`
`cache because McCown supposedly “retrieves all the download information at
`
`once and sends it to the storage server,” so the download information would not be
`
`needed again. POR, 25 (citation omitted). Synkloud repeats this argument at
`
`POR, 28, 40.4 It similarly contends that McCown or Dutta do not disclose the user
`
`re-opening the web page of URLs or a reason why a user would. POR, 32, 43-45.
`
`In that same vein, Synkloud argues that McCown discloses the user accessing the
`
`
`
`4 Synkloud cites its expert’s assertion at EX2014,¶¶39-47 as support for this
`argument, POR, 19-20, but that testimony cites no portion of McCown that
`discloses sending all of the “download information” to the storage site and the
`expert never explains why he thinks it does. Nor could he, as McCown never
`discloses that all the download information (URLs) are sent to the storage server at
`once. It discloses that the user can select URLs one at a time and that the selected
`URLs are sent, EX1005, 11:12-20, which clearly means the user can select one or
`more for sending.
`
`
`
`6
`
`
`
`Petitioners’ Reply in IPR2020-01269
`
`URLs only once, so there would be no need to cache them. POR, 19, 31, 39-45.
`
`These arguments are utterly erroneous and ignore the record.5
`
`For example, the assertion that McCown “retrieves the download
`
`information all at once and sends it to the storage server to use for downloading,”
`
`is misleading. McCown discloses retrieving the download information (a web
`
`page of URLs) into the user site and then, after the user selects at least one of the
`
`URLs listed on the page, sending the selected URLs to the storage server to initiate
`
`download of the files pointed to by those URLs. EX1005, 11:17-20. While a user
`
`could certainly select all URLs on the web page, thereby causing all URLs to be
`
`sent to the storage server, there is nothing in McCown which discloses that
`
`example or requires it. Indeed, McCown discloses that the user selects only one
`
`URL at a time, EX1005, 11:12-14, indicating that the user can select as few as one
`
`file for download, which would result in only one URL being sent to the storage
`
`server.
`
`As to whether McCown or Dutta disclose that the user might reopen the
`
`webpage of URLs, that argument is irrelevant. The Petition noted that a user might
`
`reopen that web page to make a subsequent selection as a motivation to store the
`
`
`
`5 Moreover, the Board has already finally rejected these arguments in the 316
`FWD. IPR2020-00316, Paper 43 at 35-38.
`
`
`
`7
`
`
`
`Petitioners’ Reply in IPR2020-01269
`
`webpage in a cache. Pet., 50. Such a motivation need not come from the actual
`
`prior art references forming the combination, as any need or problem in the field
`
`and addressed by the patent can provide such a reason. KSR Int’l Co. v. Teleflex
`
`Inc., 127 S. Ct. 1727, 1742 (2007). Indeed, an obviousness analysis “need not seek
`
`out precise teachings directed to the specific subject matter of the challenged
`
`claim, for a court can take account of the inferences and creative steps that a
`
`person of ordinary skill in the art would employ.” Id. at 1741. Even common
`
`sense can provide such a reason. Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355,
`
`1361 (Fed. Cir. 2016), cert. denied, 1375 S. Ct. 1329 (2017). And, the Petition
`
`cited ample other prior art evidence of that motivation that Synkloud does not
`
`dispute. Pet., 18-22, 49-54.
`
`Here, there is nothing in McCown that would preclude a user from accessing
`
`the web page of URLs more than once, and the prior art cited in the Petition
`
`discloses that browser caches are used precisely because a user might access the
`
`same web page more than once. EX1010,¶¶[0002]-[0003]; EX1011, 1:66-2:9;
`
`EX1030, 72; EX1008, 114. Indeed, even Synkloud’s expert testifies that “cache
`
`storage is used to save information that may be needed multiple times (subsequent
`
`to initial access).” EX2014,¶29 (underlining in original).
`
`Further, it is simply common sense that such multiple accesses could happen
`
`in a system such as McCown’s. People change their minds, or forget what they
`
`
`
`8
`
`
`
`Petitioners’ Reply in IPR2020-01269
`
`meant to do. A user, after downloading one or more files using McCown’s system,
`
`may later choose to download another, or later remember that she meant to
`
`download others. That McCown does not explicitly disclose a user doing so is
`
`beside the point. A Skilled Artisan would have understood that some users would
`
`seek to access that web page of URLs more than once, or might, and therefore be
`
`motivated to cache it and thereby improve the efficiency of the system.
`
`EX1003,¶¶217-218. That is the very purpose of a cache. EX1010, ¶[0002].
`
`b.
`
`The McCown/Dutta Combination Stores Download
`Information in the Cache
`Synkloud contends that “McCown does not even mention a cache,” so it
`
`could not have suggested storing download information in it, POR, 21, and that
`
`“Dutta does not compensate for the deficiencies of McCown” because it
`
`supposedly does not “provide the explicit disclosure that is missing from
`
`McCown,” POR, 21-22. It repeats this argument at POR, 21-23, 27-30. The
`
`argument ignores the combination analyzed in the Petition.
`
`McCown discloses “download information” (a webpage of URLs) received
`
`by the user site and then presented to the user, Pet., 58 (citing EX1005, 10:18-27),
`
`which would necessarily mean the “download information” is stored at the user
`
`site in some manner. McCown further states that “the functionality of the user site
`
`software application 152 may be implemented as part of the browser,” EX1005,
`
`9:22-23; Pet., 61. Dutta discloses a browser cache, Pet., 14, 19 (citing EX1006,
`9
`
`
`
`
`
`Petitioners’ Reply in IPR2020-01269
`
`¶[0029]), which a Skilled Artisan would understand to be a storage device for
`
`caching (i.e., storing) web pages. Pet., 18-19, 40-42; EX1010, ¶[0002]; EX1011,
`
`1:66-2:1; EX1003,¶118. Thus, McCown discloses storing “download information”
`
`– a webpage of URLs – at the user site/browser, and Dutta discloses a browser
`
`cache for storing web pages. Combining the two satisfies the claim phrase
`
`“download information for the file … cached in the cache storage” of claim 1 and
`
`the analogous language in the other independent claims.
`
`c.
`
`In McCown/Dutta, the Download Information is
`Retrieved from the Cache, Not From a Webpage
`Synkloud next asserts that McCown supposedly teaches obtaining URLs
`
`(i.e., the claimed “download information”) “from the wireless device web page
`
`display,” but not from cache storage. POR, 24 (citing EX2014,¶47). It repeats
`
`this argument at POR, 31, 32-33, 40, 43.
`
`Neither Synkloud nor its expert cite any supporting evidence for this
`
`assertion; nor is there any supporting analysis. McCown does not disclose
`
`obtaining the URLs to be sent to the storage site from the web page display.
`
`The argument is, in any event, based on a misunderstanding of the Petition,
`
`which demonstrated that it would have been obvious to store McCown’s webpage
`
`of URLs (i.e., the claimed “download information”) in cache storage of McCown
`
`(e.g., as supplied by Dutta) and later retrieve one or more of those URLs from the
`
`cache for transmission to the storage server. Pet., 47-54. Thus, in the
`10
`
`
`
`
`
`Petitioners’ Reply in IPR2020-01269
`
`combination analyzed in the Petition, the URLs are obtained from the cache, not
`
`from the display. Whether or not McCown alone obtains the URLs from the
`
`display (it doesn’t), is irrelevant.
`
`d.
`
`The Claims Require Only Conventional Caching, Which
`McCown/Dutta Includes
`Synkloud asserts that there is a difference between the “conventional
`
`browser cache” in McCown/Dutta and the “non-conventional use of wireless
`
`device cache storage in the ’780 Patent,” which it describes as “namely storing and
`
`subsequent retrieving of download information for out-of-band operation.” POR,
`
`25-26. But the claims require only that the download information be “cached in
`
`the cache storage” e.g., EX1001, 6:37-40, and say nothing about any “non-
`
`conventional” use of cache storage.6
`
`Further, McCown’s system can transfer data through ISDN, EX1005, 10:10-
`
`14, which provides out-of-band signaling, EX1041, 13:29-33, so the combination
`
`cited in the Petition would satisfy even the unclaimed “out-of-band” limitation
`
`argued by Synkloud.
`
`
`
`6 The 780 Patent refers to an optional “out-band approach,” EX1001, 2:64, without
`ever explaining what that phrase means. The claims don’t recite the phrase “out-
`band” either, so that concept cannot distinguish the prior art.
`
`
`
`11
`
`
`
`Petitioners’ Reply in IPR2020-01269
`
`e. McCown/Dutta Requires No Major Architectural
`Changes
`Synkloud next argues that a Skilled Artisan would be “discouraged” from
`
`making the combination of McCown and Dutta because its expert says the
`
`combination would require “major architectural changes to both McCown and
`
`Dutta” that would require McCown’s hard disk emulation and drag-and-drop/copy-
`
`and-paste functionality “to be modified and adapted.” POR, 26-27.
`
`But the expert never explains why merely adding a browser cache to
`
`McCown and storing a web page in it would require that functionality to be
`
`changed in such a substantial way as to discourage a Skilled Artisan from making
`
`the combination. Nor does the expert explain what specific changes would need to
`
`be made—such ipse dixit expert testimony is entitled to no weight. Ericsson Inc. v.
`
`Intellectual Ventures I LLC, 890 F.3d 1336, 1346 (Fed. Cir. 2018); 37 C.F.R. §
`
`42.65(a).
`
`Moreover, the expert’s testimony is not credible. McCown discloses hard
`
`disk emulation, EX1005, 10:4-6, 16:2-4, 16:23-17:3, and web browsers that
`
`included a cache, EX1003,¶115; EX1005, 8:5-10; EX1024, 7:8-10; EX1025, 3:3-8,
`
`so McCown’s hard disk emulation already works with a browser cache in the
`
`system. Similarly, for the claimed drag-and-drop/copy-and-paste functionality, the
`
`Petition relied on Coates for its file and folder manipulation techniques, Pet., 68-
`
`77. Coates also includes a cache and uses it with that functionality, EX1007, 3:22-
`12
`
`
`
`
`
`Petitioners’ Reply in IPR2020-01269
`
`38, 10:60-66, so Coates’s folder manipulation functionality also already works
`
`with a cache in the system. It is nonsense to suggest that simply storing a web
`
`page of URLs in a browser cache would by itself break the functionality disclosed
`
`in these references, and neither Synkloud nor its expert attempt to explain why it
`
`might.
`
`Indeed, browser caches were well-known, conventional technology, well
`
`within the level of ordinary skill in the art. EX1003,¶118; EX1010, ¶[0002];
`
`EX1011, 1:66-2:1; EX1012, 14:30-33. And Dr. Houh testifies that combining the
`
`browser cache of Dutta with the system of McCown “could … have been readily
`
`made without undue experimentation,” EX1003,¶125, a fact neither Synkloud nor
`
`its expert disputes.
`
`f.
`
`The Petition Identified The Cited Combination With
`Particularity
`Synkloud next asserts that the Petition failed to rely on “the discrete
`
`disclosure of a prior art reference” and instead relies on “mere attorney argument
`
`and conclusory statements from their expert,” but it fails to cite any particular
`
`portion of the petition. POR, 20-22. Those assertions are incorrect. The Petition
`
`relied on specifically cited disclosures in McCown and Dutta, as well as the
`
`detailed analysis of Dr. Houh and numerous other pieces of evidence. Pet., 16-55.
`
`That was far more than attorney argument or a conclusory statement, and more
`
`than sufficient to carry petitioner’s burden.
`13
`
`
`
`
`
`Petitioners’ Reply in IPR2020-01269
`
`2. McCown/Dutta Satisfy the “Transmitting” Claim Language
`a.
`Synkloud’s Repeated Arguments Are Just as Erroneous
`The Second Time They Are Made
`Synkloud next contends that McCown/Dutta does not satisfy the
`
`“transmitting” language of claims 3 and 17, POR, 32-36, but for the most part
`
`Synkloud merely rehashes the erroneous arguments addressed above. It argues, for
`
`example, that McCown does not disclose storing “download information” in a
`
`cache, POR, 32, that in McCown the URLs are retrieved from the display of the
`
`webpage, POR, 33, that Dutta does not disclose a reason for storing McCown’s
`
`page of URL’s in the cache and that the page is “not needed past the initial
`
`display,” POR, 35.
`
`But those arguments have been shown to be erroneous above. See §II.B.1
`
`above. As demonstrated there and in the Petition, in the combination of McCown
`
`and Dutta the “download information” is stored in the browser cache for multiple
`
`reasons, including because a user might choose to select additional files for
`
`download after an initial selection. Pet., 18-22, 49-54.
`
`b.
`Synkloud Mischaracterizes The Analysis of the Petition
`Synkloud also attempts to show that Petitioner’s reading of the claims and of
`
`McCown do not coincide, but it presents an inaccurate version of the Petition’s
`
`analysis. POR, 33-35. For example, it mischaracterizes the Petition’s analysis of
`
`McCown as “[t]he wireless device (immediately after receipt of the web page,
`
`
`
`14
`
`
`
`Petitioners’ Reply in IPR2020-01269
`
`not later) retrieves the download information from the currently displayed
`
`page …”. POR, 35 (bold and underlining in original). That is not what McCown
`
`discloses and not what was argued in the Petition.
`
`As demonstrated in the Petition, in the cited combination of McCown and
`
`Dutta, after the user selects files for download (i.e., not “immediately after receipt
`
`of the web page”), the appropriate URLs are retrieved from the cached web page
`
`of URLs and sent to the storage site as a data request. Pet., 47-54. Thus, in the
`
`combination of McCown and Dutta, the URLs are retrieved from the cache, not
`
`“from the currently displayed page.”
`
`c.
`Synkloud’s Precedent is Inapposite
`Synkloud next discusses precedent supposedly directed to the situation
`
`where “a claim limitation is wholly absent from the teachings of the prior art.”
`
`POR, 36-38; see also id., 20-22. But that is not the case here, see, e.g., §II.B.1.b
`
`above, so those arguments and precedent are inapposite. As demonstrated in the
`
`Petition and above, McCown discloses all elements of the independent claims
`
`except actually storing his webpage of URLs in a cache. E.g., Pet., 16-54. Dutta
`
`discloses a browser cache, a device known to be specifically designed for the
`
`storage of webpages. E.g., EX1010, [0002]. Dutta thus merely provided the place
`
`to store the webpage of URLs that was not expressly disclosed in McCown. As the
`
`Petition demonstrated, combining the two references satisfies all elements of the
`
`
`
`15
`
`
`
`Petitioners’ Reply in IPR2020-01269
`
`claims, e.g., Pet., 15-54, and there were ample reasons to make that combination,
`
`Pet., 49-52.7
`
`3.
`
`A Skilled Artisan Would Have Been Motivated to Combine
`McCown and Dutta
`a.
`The Petition Included a Detailed Obviousness Analysis
`Grounded in the Prior Art
`Synkloud argues the petition’s analysis “is rooted in forbidden hindsight
`
`analysis that is based on its incorrect assumption regarding the level of ordinary
`
`skill in the art.” POR, 38. It asserts that “Petitioners failed to provide any
`
`evidence whatsoever” that combining McCown and Dutta would satisfy the claims,
`
`POR, 38-39, and that the Petition supposedly makes only “conclusory arguments”
`
`regarding obviousness, POR, 39.
`
`All of that is incorrect. The Petition’s analysis is supported by numerous
`
`citations to evidence in the prior art, e.g., Pet., 15-54, which is the very opposite of
`
`improper hindsight. Caterpillar Inc. v. Wirtgen Am., Inc., IPR2017-02186, Paper
`
`10 at 26 (PTAB May 1, 2019). Moreover, Synkloud does not contest the level of
`
`ordinary skill set forth in the Petition and adopted at Institution and does not
`
`
`
`7 Synkloud’s precedent is also inapplicable as standing for the proposition that
`“common sense” cannot be used as a replacement for documentary or other
`evidence to prove a claim limitation is satisfied by the prior art. POR, 37. The
`petition did not rely on “common sense” for that purpose.
`
`
`
`16
`
`
`
`Petitioners’ Reply in IPR2020-01269
`
`specifically contest most of the reasons to combine analyzed in the petition. Pet.,
`
`49-52.
`
`b.
`Synkloud Rehashes It Erroneous Arguments
`Synkloud next argues, once again, that the fact that storing McCown’s web
`
`page of URLs in a Dutta cache would make it more readily accessible is
`
`supposedly “inconsistent with the disclosure of McCown” because McCown only
`
`discloses the user accessing the web page once and shows the user selecting files
`
`for downloading by clicking “from a web page, not from a cache of a wireless
`
`device. This URL information is then manually forwarded by the user.” POR, 39-
`
`40. It also contends that “there is no reason for the user to go back to the page
`
`containing the URLs.” POR, 40. Synkloud also asserts that there would be no
`
`reason for the user to reopen the webpage of URLs after she had sent her initial
`
`selection of files for download to the storage site, and therefore no motivation to
`
`combine McCown and Dutta. POR, 41-43.
`
`As demonstrated above, see §II.B.1, these arguments are incorrect and
`
`mischaracterize both the combination of McCown/Dutta and reasons for making
`
`that combination analyzed in the petition.8
`
`
`
`8 Moreover, the argument that because the user in McCown selects URLs using a
`mouse, those URLs are sent to the storage site “manually” and that those URLs
`would not be readily accessible is mistaken. POR, 40. The Petition argued that
`17
`
`
`
`
`
`Petitioners’ Reply in IPR2020-01269
`
`c.
`
`The Petition Provided Objective Evidence of Motivation
`to Combine and Reasonable Expectation of Success
`Synkloud also asserts that the Petition failed to provide objective evidence of
`
`motivation to combine and reasonable expectation of success. POR, 45-46. That
`
`is incorrect, as such objective evidence was cited in the Petition, including EX1010
`
`through EX1013. Pet., 49-52. Moreover, web caches were known, EX1010; and
`
`McCown, Dutta and the other prior art references supporting the combination are
`
`all issued U.S. patents, and therefore presumptively self-enabling. Amgen Inc. v.
`
`Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003), aff’d and
`
`remanded in part, 457 F.3d 1293 (Fed. Cir. 2006). Further, Dr. Houh explained
`
`that “[a] Skilled Artisan could therefore have readily made this combination
`
`without undue effort or experimentation.” EX1003,¶126.
`
`Moreover, Synkloud does not contest (and therefore concedes) the additional
`
`reasons set forth in the Petition showing that caching McCown’s web page of
`
`URLs would have been obvious, because to do so would “provide the user with a
`
`faster method of remote storage,” Pet., 50, and was only the arrangement of old
`
`
`
`storing the URLs in a cache would make them more readily accessible to the user
`application at the user site, not that doing so would permit the human user to select
`them more easily from the screen. Pet., 21-22, 49.
`
`
`
`18
`
`
`
`Petitioners’ Reply in IPR2020-01269
`
`elements with each performing the same function it had been known to perform
`
`and yielding no more than one would expect from such an arrangement, Pet., 52.
`
`C.
`
`Synkloud Has Failed to Prove Any Relevant Objective Indicia
`of Non-Obviousness
`Synkloud asserts that commercial success and licensing represent secondary
`
`considerations of non-obviousness in this case, POR, 46-77, but the evidence it
`
`cites fails to show the required nexus and is far outweighed by the analysis of the
`
`Petition.
`
`Commercial Success
`1.
`Synkloud bears the burden “to show both commercial success and that a
`
`nexus exists between that success and the merits of the claimed invention.”
`
`Transocean Offshore Deepwater v. Maersk Drilling, Inc., 699 F.3d 1340, 1350
`
`(Fed. Cir. 2012) (citation omitted). Moreover, “[i]f commercial success is due to
`
`an element in the prior art, no nexus exists.” Tokai Corp. v. Easton Enters., Inc.,
`
`632 F.3d 1358, 1369 (Fed. Cir. 2011) (quoting Ormco Corp. v. Align Tech., Inc.,
`
`463 F.3d 1299, 1312 (Fed. Cir. 2006)).
`
`Synkloud argues entitlement to a presumption of nexus because it says HP
`
`Laptops with Microsoft OneDrive preinstalled practice the claimed inventions.
`
`POR, 46, 71-72. But Synkloud is not entitled to a presumption of nexus because it
`
`has not shown that the cited devices are “coextensive” with any claim of the 780
`
`Patent. Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019),
`
`
`
`19
`
`
`
`Petitioners’ Reply in IPR2020-01269
`
`cert. denied, 141 S. Ct. 373 (2020). Nor could it, as HP Laptops include multiple
`
`important component