IPR2020-01270
`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
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`
`
`Case IPR2020-01270
`U.S. Patent 9,219,780
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`__________________
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`SynKloud Technologies, LLC’s Patent Owner Preliminary Response Pursuant
`To 37 C.F.R. § 42.107(a)
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`

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`IPR2020-01270
`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 ...........................................................................................4
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`A.
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`B.
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`Prior Art Storage Systems ....................................................................................................4
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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. ...................................................................................5
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`III. PETITIONERS’ PROPOSED GROUNDS FOR REVIEW .....................................................8
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`IV. CLAIM CONSTRUCTION. ....................................................................................................9
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`A.
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`Download[ing] a file from a remote server into the first one of the storage spaces
`through utilizing download information for the file, including name of the file
`and internet protocol (“IP”) address of the remote server, cached in a cache
`storage of the first wireless device (independent claim 9). ..........................................10
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`V.
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`THE PETITIONERS FAILED TO DEMONSTRATE THEY ARE REASONABLY
`LIKELY TO PREVAIL ON ANY OF THEIR PROPOSED OBVIOUSNESS
`GROUNDS. .......................................................................................................................12
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`A.
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`B.
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`1.
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`2.
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`3.
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`The Petitioners Failed To Set Forth A Proper Obviousness Analysis .........................15
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`Independent Claim 9 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). .....................................................................17
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`The Combination Of McCown and Dutta (Ground 1) Would Not Have
`Taught “download[ing] a file from a remote server into the first one of the
`storage spaces through utilizing download information for the file …
`cached in a cache storage of the first wireless device,”As Recited in
`Independent Claim 9. .............................................................................................20
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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 first wireless device to the server” As
`Recited in Dependent Claim 10. ............................................................................23
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`The Petitioners Failed To Show That A POSITA Would Have Been
`Motivated To Modify McCown With Dutta To Achieve A Device
`“download[ing] a file from a remote server into the first one of the storage
`spaces through utilizing download information for the file … cached in a
`cache storage of the first wireless device,” As Recited In Independent
`Claim 9 And Reasonably Expect Success. ............................................................29
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`ii
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`

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`VI.
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`CONCLUSION ..................................................................................................................37
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`IPR2020-01270
`U.S. Patent No. 9,219,780
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`IPR2020-01270
`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)
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`19, 27, 28
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`32
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`9
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`13
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`14, 15, 21
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`15, 28
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`4, 19
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`13, 21
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`14
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`2, 12, 16, 29
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`IPR2020-01270
`U.S. Patent No. 9,219,780
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`9
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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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`v
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`IPR2020-01270
`U.S. Patent No. 9,219,780
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`
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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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`
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`Declaration of Zaydoon Jawadi
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`Curriculum Vitae of Zaydoon Jawadi
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`vi
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`IPR2020-01270
`U.S. Patent No. 9,219,780
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`I. INTRODUCTION
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` The Board should deny the present request for inter partes review of
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`U.S. Patent No. 9,219,780 (“the ’780 patent”) because there is not a reasonable
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`likelihood that the Petitioners would prevail at trial with respect to at least one
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`claim of the ’780 patent for three separate and 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.
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`For example, none of the combinations of prior art references asserted by
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`Petitioners would have taught “download[ing] a file from a remote server into
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`the first one of the storage spaces through utilizing download information for
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`the file, including name of the file and internet protocol (“IP) address of the
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`remote server, cached in a cache storage of the first wireless device,” as recited
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`in independent claim 16. Petitioners sole primary reference (McCown) does
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`not even mention cache. And although the secondary reference Dutta does
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`mention cache, it does not make any mention of how any of the data in cache
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`would be used, let alone that download information in the cache of a wireless
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`device would be used remotely from the wireless device—not locally at the
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`wireless device—to download a file from a remote server (e.g., a web site) to a
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`remote storage space.
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`1
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`IPR2020-01270
`U.S. Patent No. 9,219,780
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`Second, the Petitioners did not present any objective evidence as to why
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`one of ordinary skill in the art would have been motivated to modify
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`International Publication No. WO 01/67233 to McCown, the sole primary
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`reference, with the teachings of the secondary references (U.S. Publication No.
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`2002/0078102 to Dutta (“Dutta”) and U.S. Patent No. 7,266,555 to Coates
`
`(“Coates”)), and reasonably expect success in achieving the invention recited
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`by the challenged claims of the ’780 patent. That is, the Petitioners did not
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`show that a “skilled artisan would have been motivated to combine the
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`teachings of the prior art references to achieve the claimed invention, and that
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`the skilled artisan would have had a reasonable expectation of success in doing
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`so.” OSRAM Sylvania, Inc. v. Am Induction Techs., Inc., 701 F.3d 698, 706
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`(Fed. Cir. 2012).
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`Third, the Petitioners neglected to follow the legal framework for an
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`obviousness analysis set forth long ago by the Supreme Court. Graham v.
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`John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966); see also KSR
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`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.”) That framework requires consideration of the
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`following factors: (1) the scope and content of the prior art, (2) any differences
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`between the claimed subject matter and the prior art, and (3) the level of skill in
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`2
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`

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`the art. The Board has previously warned that failure to identify differences
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`between the cited art and the claims is a basis for denying a petition:
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`IPR2020-01270
`U.S. Patent No. 9,219,780
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`A petitioner who does not state the differences between
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`a challenged claim and the prior art, and relies instead on the
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`Patent Owner and the Board to determine those differences based
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`on the rest of the submission in the petition risks having the
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`corresponding ground of obviousness not included for trial for
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`failing to adequately state a claim for relief.
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`Liberty Mutual v. Progressive Casualty, CBM-2012-00003, paper 7 at pp. 2-3.
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`The Petitioners ignored the Board’s warning by failing to identify the
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`differences between the challenged claims and the prior art. That is, the
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`Petitioners failed to identify the claim limitations that they believed are missing
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`from the primary reference (i.e., McCown) and are instead taught by the
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`secondary references (e.g., Dutta and Coates). Petition, pp. 16-74. Rather,
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`Petitioners provided a description of each reference followed by a conclusory
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`statement that the references taught certain claim limitations, leaving the
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`Board to figure out whether the primary or secondary reference best teaches
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`the claim limitation. Ibid. Under this circumstance, it would be “inappropriate
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`for the Board to take the side of the Petitioner to salvage an inadequately
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`expressed ground …” Liberty Mutual v. Progressive Casualty, CBM-2012-
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`00003, paper 7 at pp. 2-3; paper 8 at pp. 14-15. For this additional reason,
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`3
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`IPR2020-01270
`U.S. Patent No. 9,219,780
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`inter partes review based on obviousness should be denied. See infra, § V.A.
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`For these reasons and those explained more fully below, the Petitioners
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`failed to show that it is reasonably likely to prevail on any proposed ground.
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`Accordingly, the Board should deny the Petition.
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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
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`storages systems are “categorized as internal storage or external storage.”
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`EX1001, 1:33-34. “The internal storages of a computing system include those
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`storage media such as hard disk drives, memory sticks, memory, and others
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`that are internally connected within the computing system through [a] system
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`bus or a few inches of cable.” Id. at 1:35-38. That is, internal storage media
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`“are internal components of the computing system in a same enclosure.” Id. at
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`1:39-40.
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`In contrast, “[t]he external storages of a computing system are those
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`storage media that are not the internal components of the computing system in
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`a same enclosure.” Id. at 1:42-44. Instead, external storage is “connected
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`through [a] longer cable, such as through Ethernet cable for IP based storage,
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`Fiber channel cable for fiber channel storage, or wireless communication
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`media, and others.” Id. at 1:45-47. “[E]xternal storage could be magnetic hard
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`disk drives, solid state disk, optical storage drives, memory card and others,
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`and could be in any form.” Id. at 1:47-51.
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`The inventor of the ’780 patent, however, recognized that storage on
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`users’ “wireless devices such as in their cell phone or personal data assistant
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`devices (“PDA”) … [was] usually limited to 256 MB for the PDA and much
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`less for the cell phone.” Id. at 2:39-42. Accordingly, the invention recognized a
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`need to provide wireless devices with “multiple gigabytes (GB) of storage”
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`from a remote storage server to support multimedia applications. Id. at 43-47.
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`Moreover, because multimedia data require large amounts of memory, there
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`was a need to store data from various sources (e.g., a web server) to the remote
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`storage server. Id. at 2:61-67.
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`
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`B.
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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
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`approach that downloads data from a web site to a remote storage server using
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`download information in a cache of a wireless device, as shown by FIG. 3,
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`which is reproduced below.
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`5
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`IPR2020-01270
`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
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`(10) 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
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`assigned file system of the assigned external storage (10) on a server (3), the
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`following steps are performed:
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`IPR2020-01270
`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
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`downloading 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
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`on the wireless device (1) after the web-browser (8) access[es] the web site
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`(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
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`storage server (3) via the path (b)”;
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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 a web
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`download request to the web-site (15) via the path (c) based on download
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`information obtained and then receives the downloading data from the web
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`server of the web-site (15)”; and
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`“5) Upon receiving downloading data, the other service modules (7) of
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`the storage server (3) write[s] the data for the wireless device (1) into the
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`assigned file system (11) on the server (3).”
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`Id. at 5:23-47.
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`7
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`IPR2020-01270
`U.S. Patent No. 9,219,780
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`In this manner, the present invention downloads data using the
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`download information in the cache of the user’s wireless device (1) from the
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`web site (15) to the user’s assigned file system (11) on the server. The
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`downloaded data can later 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
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`way to utilize download information in a cache of a wireless device to enable
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`easy and efficient downloading of data (e.g., a web page, a file) from a web
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`server to a remote storage space. For example, if a user of the wireless device
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`of the claimed invention of the ’780 patent were to access a picture from a web
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`site (e.g., New York Times) either to view it or to download it to remote
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`storage, the New York Times web site would not need to do anything
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`differently; it would simply transmit a file containing the picture to the
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`requester without needing to know whether the picture would be stored in
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`remote storage or viewed on the device. In other words, the web sites need not
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`be adapted or changed in any way to operate with the wireless device of the
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`present invention.
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`III. PETITIONERS’ PROPOSED GROUNDS FOR REVIEW
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`For the Board’s convenience, below is a summary (as understood by
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`Patent Owner) of the claim rejections proposed by the Petitioners:
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`8
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`IPR2020-01270
`U.S. Patent No. 9,219,780
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`i.
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`Claims 9, 10, 12, 13, and 15 are alleged to have been obvious
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`under §103 over International Publication No. WO 01/67233 to McCown
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`(“McCown”) in view of U.S. Publication No. 2002/0078102 to Dutta
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`(“Dutta”); and
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`ii. Claims 9-15 are alleged to have been obvious under §103 over
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`McCown in View of Dutta, and further in view of U.S. Patent No. 7,266,555
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`to Coates (“Coates”).
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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
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`v. AWH Corp, 415 F.3d 1303, 1312-15 (Fed. Cir. 2005) (en banc). Under
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`Phillips, the specification is the single best source for claim interpretation. 415
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`F.3d at 1312. “The terms used in the claims bear a heavy presumption that
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`they mean what they say and have the ordinary meaning that would be
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`attributed to those words by persons skilled in the relevant art.” Texas Digital
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`System, Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed. Cir. 2002)
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`(emphasis added) (internal quotation marks omitted) (citing CCS Fitness, Inc.
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`v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002); K-2 Corp. v.
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`Salomon S.A., 191 F.3d 1356, 1362-63 (Fed. Cir. 1999); Johnson Worldwide
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`9
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`IPR2020-01270
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`Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989 (Fed. Cir. 1999); Specialty
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`Composites v. Cabot Corp., 845 F.2d 981, 986 (Fed. Cir. 1988)).
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`In addition, a claim preamble may be construed as limiting “if it recites
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`essential structure or steps, or if it is ‘necessary to give life, meaning, and
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`vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289
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`F.3d 801, 808 (Fed. Cir. 2002), quoting Pitney Bowes, Inc. v. Hewlett-Packard
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`Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Additionally, the “appropriate
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`context” to read a claim term includes both the specification and the claim
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`language itself. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir.
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`2010). If a term is “used differently by the inventor,” he may provide a special
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`definition if he does so with “reasonable clarity, deliberateness, and precision.”
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`In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
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`
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`a.
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`download[ing] a file from a remote server into the first one of
`the storage spaces through utilizing download information for
`the file, including name of the file and internet protocol (“IP”)
`address of the remote server, cached in a cache storage of the
`first wireless device (independent claim 9).
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`The claim limitation “download[ing] a file from a remote server into the
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`first one of the storage spaces through utilizing download information for the
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`file, including name of the file and internet protocol (“IP”) address of the
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`remote server, cached in a cache storage of the first wireless device” is recited
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`10
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`IPR2020-01270
`U.S. Patent No. 9,219,780
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`in independent claim 9. 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.
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`Claim 9 explicitly recites that the “download information for the file … [is]
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`cached in the cache storage of the first wireless device.” EX1001, 7:29-34.
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`Claim 9 also recites “download[ing] a file from a remote server.” Id. at 7:28-
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`30. Therefore, the claimed “download information” is for the file at the remote
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`server and this “download information” is stored in the cache storage of the
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`wireless device.
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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
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`information for the file” is stored in the cache of the wireless device: “the
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`downloading information for the data, which becomes available in the cached
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`web-pages on the wireless device.” Id. at 5:28-32. This download information
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`in the wireless 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
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`the obtained downloading information to other service modules
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`(7) of the storage server (3) via path (b) of FIG. 3.
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`11
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`IPR2020-01270
`U.S. Patent No. 9,219,780
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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)
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`sends a web download request to the web-site (15) via path (c) of
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`FIG. 3 based on download information obtained. and receives the
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`downloading data streams from the web server of the web-site
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`(15).
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`EX1001, 5:33-43.
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`Both the claim language itself and the Specification support Patent
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`Owner’s proposed construction.
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`
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`V. THE PETITIONERS FAILED TO DEMONSTRATE THEY ARE
`REASONABLY LIKELY TO PREVAIL ON ANY OF THEIR
`PROPOSED OBVIOUSNESS GROUNDS.
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`As set forth by the Supreme Court, the question of obviousness is
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`resolved on the basis of underlying factual determinations including (1) the
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`scope and content of the prior art, (2) any differences between the claimed
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`subject matter and the prior art, (3) the level of skill in the art. Graham v. John
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`Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966); see also KSR Int’l
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`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 petitioner seeking to invalidate a patent as
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`obvious must demonstrate that a “skilled artisan would have been motivated to
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`combine the teachings of the prior art references to achieve the claimed
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`12
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`IPR2020-01270
`U.S. Patent No. 9,219,780
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`invention, and that the skilled artisan would have had a reasonable expectation
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`of success in doing so.” OSRAM Sylvania, Inc. v. Am. Induction Techs., Inc.,
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`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'
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`papers, “that there is a reasonable likelihood that the petitioner would prevail
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`with respect to at least one of the claims challenged in the petition.” SAS
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`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. Dynamic Drinkware, LLC v. Nat’l Graphics,
`
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 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 of Petitioner to point to
`
`the passages in each reference relied upon to show all limitations recited in the
`
`claims, or, in the alternative, demonstrate conclusively that each of those
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`limitations would be understood by the skilled artisan to be a natural
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`supplement to the express teaching of the references. See, Mylan
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`
`
`13
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`Pharmaceuticals Inc. v. Boehringer Ingelheim International GMBH, 2017 WL
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`1052517*1 (PTAB 2017):
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`
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`IPR2020-01270
`U.S. Patent No. 9,219,780
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`It is Petitioner's burden to set forth the basis for its challenge in the
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`Petition. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356,
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`1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3), requiring inter
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`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
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`Harmonic's burden to explain to the Board how Haskell combined
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`with Rossmere rendered the challenged claims unpatentable.
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`
`
`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
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`precise limitations recited in the challenged claims, specific explanation and
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`evidence must be provided to support that contention – mere conclusory
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`statements will not suffice to meet Petitioner’s burden. Importantly, where the
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`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
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`obviousness must be set forth with specificity. Nautilus Hyosung Inc. v.
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`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
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`
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`14
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`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356,
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`1363 (Fed. Cir. 2016)….
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`Furthermore, Petitioner cannot satisfy its burden of proving
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`obviousness by employing “mere conclusory statements.” In re
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`Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir.
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`2016)…Petitioner cannot satisfy its burden of proving obviousness
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`by employing “mere conclusory statements.” Id.
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`
`
`The Board should decline to institute an inter partes review on the
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`combination of prior art for the proposed obviousness grounds because (i) the
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`Petitioners failed to set forth a proper obviousness analysis because it did not
`
`identify the claim limitations that it believed are missing from the primary
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`reference (i.e., McCown) and are instead taught by the secondary references
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`(e.g., Dutta, Coates), (ii) the Petition failed to demonstrate that one of ordinary
`
`skill in the art would have been motivated to combine the teachings of the
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`numerous prior art references in the combination to achieve the claimed
`
`invention with a reasonable expectation of success, (iii) the Petition failed to
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`demonstrate that any of the different combinations would have taught every
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`element of any of the challenged claims.
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`A. The Petitioners Failed To Set Forth A Proper Obviousness Analysis
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`The Petitioners neglected to follow the legal framework for an
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`obviousness analysis set forth long ago by the Supreme Court. Graham v. John
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`
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`15
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`Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966); see also KSR Int’l
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`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.”). The Board has previously warned that failure
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`to identify differences between the cited art and the claims is a basis for
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`denying a petition:
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`A petitioner who does not state the differences between
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`a challenged claim and the prior art, and relies instead on the
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`Patent Owner and the Board to determine those differences based
`
`on the rest of the submission in the petition risks having the
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`corresponding ground of obviousness not included for trial for
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`failing to adequately state a claim for relief.
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`Liberty Mutual v. Progressive Casualty, CBM-2012-00003, paper 7 at pp. 2-3.
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`The Petitioners ignored the Board’s warning by failing to identify the
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`differences between the challenged claim and the prior art. That is, the
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`Petitioners failed to identify the claim limitations that it believed are missing
`
`from the primary reference (i.e., McCown) and that it believed are instead
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`taught by the secondary references (e.g., Dutta, Coates). See e.g., Petition, pp.
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`16-74. Rather, the Petitioners listed a claim limitation and provided a partial
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`description of one or more of the references, leaving the Board to figure out
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`which reference the Petitioners are principally relying upon to teach the claim
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`
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`16
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`limitation and why the Petitioners relied upon a particular secondary
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`reference. Ibid.
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`This technique obscures the arguments, forcing the Patent Owner to
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`“conjure up arguments against its own patent.” Liberty Mutual v. Progressive
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`Casualty, CBM12-00003, paper 8 at pp. 14-15. The Board has previously
`
`warned petitioners against this practice:
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`We address only the basis, rationale, and reasoning put forth by
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`the petitioner and resolve all vagueness and ambiguity in
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`Petitioner’s arguments against the Petitioner. … It would be
`
`unfair to expect the Patent owner to conjure up arguments against
`
`its own patent, and just as inappropriate for the Board to take the
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`side of the Petitioner to salvage an inadequately expressed ground
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`…”
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`Id. On this basis alone, inter partes review based on obviousness should be
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`denied.
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`
`
`B.
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`Independent Claim 9 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).
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`The combination of McCown and Dutta would not have taught or
`
`suggested the claim limitations of “download[ing] a file from a remote server
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`into the first one of the storage spaces through utilizing download information
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`for the file … cached in a cache storage of the first wireless device,” as recited
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`
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`17
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`in independent claim 9. EX1001, 7:29-33. Indeed, the combination would not
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`even have taught that this “download information for the file … [is] cached in
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`a cache storage of the first wireless device.”
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`Moreover, the combination would not have taught “transmitting the
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`downloading information cached in the first wireless device to the server,” as
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`recited in dependent claim 10. EX1001, 7:41-42. In addition, the combination
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`would not have taught transmitted download information cached in the
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`wireless device “causing the server in accordance with the downloading
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`information to download the file into the first one of the storage spaces,” as
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`recited in dependent claim 10. Id. at 7:43-45.
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`Moreover, Petitioners’ argument that a person of ordinary skill in the art
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`(POSITA) would have been motivated to store download information in a
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`cache of a wireless device and to use it to download a file from a second server
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`across a network into a remote storage space is inconsistent with the disclosure
`
`of McCown itself. As explained by Mr. Jawadi, the universal resource locators
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`(URLs) in McCown “are used only once by the user (negating the need to
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`store the URLs in cache),” and thus, there would not have been any
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`motivation to store the URLs “at the wireless device (whether in cache or
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`otherwise).” EX2001 at ¶ 39. As further explained by Mr. Jawadi, “the files
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`pointed to by the URLs [in McCown] will be stored in the storage site,
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`
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`18
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`negating the need to store the download information in cache at the wireless
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`devices.” Id. at ¶ 41. Accordingly, “[s]toring McCown’s URLs in cache is
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`unnecessary, wasteful, counterintuitive, and not obvious.” Id. at ¶ 47.
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`Where petitioners elect to rely, not on the discrete disclosure of a prior
`
`art reference, but rather on the nebulous knowledge of “those of skill in the
`
`art,” as Petitioners have done here, they are required to demonstrate the basis
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`and adequacy of that knowledge with specificity – a conclusory statement or
`
`generalization will not be sufficient to meet the burden imposed. Kolbe &
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`Kolbe Millwork Co., Inc. v. Sierra Pacific Industries, 2019 WL 5070454 *20
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`(PTAB 2019):
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`In an obviousness analysis, the Board can properly “decline[ ] to
`accept a conclusory assertion from a third party about general
`knowledge in the art without evidence on the record, particularly
`where it is an important structural limitation that is not evidently
`and indisputably within the common knowledge of those skilled in
`the art.” K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362,
`1365 (Fed. Cir. 2014).
`
`Here, Petitioners have done exactly that which the Board has found to be
`
`insufficient to meet their burden: they have presented mere attorney argument
`
`and conclusory statements from their expert to support their position that the
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`limitations that are wholly absent from the prior art would have been obvious.
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`See e.g., Petition, pp. 16-74.
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`
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`19
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`For these reasons as explained in detail below, Petitioners did not
`
`demonstrate that