UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`MICROSOFT CORPORATION and HP INC.,
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`Petitioners,
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`v.
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`SYNKLOUD TECHNOLOGIES, LLC,
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`Patent Owner.
`
`____________
`
`
`
`Cases IPR2020-01269 and IPR2020-01270
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`U.S. Patent No. 9,219,780
`
`____________
`
`
`
`SECOND DECLARATION OF ZAYDOON (“JAY”) JAWADI
`IN SUPPORT OF PATENT OWNER’S RESPONSE
`
`IPR2020-01269 and IPR2020-01270
`Exhibit 2014
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`
`
`i
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`TABLE OF CONTENTS
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`I. BACKGROUND AND QUALIFICATIONS ..................................................... 1
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`II. MATERIALS REVIEWED ................................................................................ 6
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`III. LEGAL UNDERSTANDING ............................................................................. 7
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`IV. CLAIM CONSTRUCTION ................................................................................ 7
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`A.
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`Petitioner’s Construction of “Cache Storage” Is Flawed .............................. 7
`
`V. OPINIONS ......................................................................................................... 12
`
`Independent Claims 1, 9, and 16 Are Not Obvious in View of McCown
`A.
`and Dutta ............................................................................................................... 13
`
`Independent Claims 1, 6, and 9: Utilizing Download Information for the
`a.
`File Cached in the Cache Storage of the Wireless Device ............................... 13
`
`i. Responses to the Board’s Decision Regarding Utilizing Download
`Information for the File Cached in Cache Storage in the Wireless Device .. 15
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`1. McCown’s Web Page Display vs. ’780 Cache Storage ........................ 15
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`2. Dutta’s Conventional Browser Cache vs. the ’780 Non-Conventional
`Cache Storage Usage ................................................................................... 16
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`3. Response to PTAB Decision, 27-28 ..................................................... 18
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`4. Response to PTAB Decision, 28 ........................................................... 22
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`5. Response to PTAB Decision, 29 ........................................................... 24
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`6. Response to PTAB Decision, 30 ........................................................... 26
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`Summary of Why McCown in View of Dutta Does Not Disclose
`ii.
`Utilizing Download Information for the File Cached in the Cache Storage in
`the Wireless Device ....................................................................................... 27
`
`iii. Petitioners’ Interpretation of Utilizing Download Information for the
`File Cached in the Cache Storage of the Wireless Device in the ’780 Patent
`
`32
`
`iv. Steps of Utilizing Download Information for the File Cached in the
`Cache Storage of the Wireless Device in the ’780 Patent ............................. 34
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`ii
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`v. McCown Does Not Disclose, Suggest, or Imply Storing Download
`Information in Cache or Retrieving Download Information from Cache ..... 35
`
`vi. Dutta Does Not Disclose How Any Data in Its Cache Is Used ............ 35
`
`vii. Dutta Does Not Disclose, Suggest, or Imply Storing Download
`Information in Cache or Retrieving Download Information from Cache ..... 38
`
`viii. The Combination of McCown and Dutta Does Not Disclose, Suggest,
`or Imply Storing Download Information in Cache or Retrieving Download
`Information from Cache ................................................................................ 38
`
`ix. Petitioners Rely Solely on Expert’s Opinion That It Would Have Been
`Obvious to Store the Download Information in Cache and to Retrieve the
`Download Information from Cache ............................................................... 39
`
`Petitioners’ Readily Accessible Theory for the Motivation for Storing
`x.
`the Download Information in Cache ............................................................. 40
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`xi. McCown Contradicts Petitioners’ Theory for the Motivation for
`Storing the Download Information in Cache ................................................. 41
`
`xii. Petitioners’ Description of McCown’s Steps Contradicts Petitioners’
`Theory for the Motivation for Storing the Download Information in Cache 44
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`xiii. McCown Stores the Files in the Storage Site, Further Negating the
`Need to Store the Download Information in Cache ...................................... 47
`
`’780 Patent vs. McCown’s Steps of Utilizing Download Information
`xiv.
`for the File Cached in the Cache Storage of the Wireless Device ................ 49
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`xv. Difference between Retrieving from Cache and Retrieving from
`Displayed Web Page ...................................................................................... 53
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`xvi. Download Information for the File (Singular) ................................... 54
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`xvii. Dutta Does Not Cure McCown’s Deficiencies in Storing Download
`Information in Cache and Retrieving Download Information from Cache .. 55
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`xviii. Petitioners’ Second Purported Reason (Re-Opening the Webpage) to
`Store Download Information in Cache .......................................................... 56
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`Storing McCown’s URLs in Cache Is Unnecessary, Wasteful,
`xix.
`Counterintuitive, and Not Obvious ................................................................ 60
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`xx. Coates Does Not Cure McCown’s and Dutta’s Deficiencies in Storing
`Download Information in Cache and Retrieving Download Information from
`Cache ............................................................................................................. 60
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`iii
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`xxi. Utilizing Download Information Cached in the Cache Storage of the
`Wireless Device: Independent Claims 1, 9, and 16 Are Not Obvious in View
`of McCown and Dutta ................................................................................... 61
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`b. Dependent Claims 3, 10, and 17: Cached Downloading Information ..... 61
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`c. Dependent Claims 2-8, 10-15, and 17-20 Are Not Obvious in View of
`McCown and Dutta and Are Not Obvious in View of McCown, Dutta, and
`Coates ................................................................................................................ 62
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`VI. CONCLUSION .................................................................................................. 63
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`iv
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`I, Zaydoon (“Jay”) Jawadi, declare as follows:
`
`I.
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`BACKGROUND AND QUALIFICATIONS
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`1. My name is Zaydoon (“Jay”) Jawadi.
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`2.
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`I am an independent expert and consultant. I have been retained as an
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`expert witness on behalf of SynKloud Technologies, LLC (“SynKloud”) for the
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`above-captioned Inter Partes Reviews (IPRs) regarding U.S. Patent No. 9,219,780
`
`(“’780 Patent”).
`
`3.
`
`As shown in my curriculum vitae (attached as Exhibit 2002), I have a
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`Bachelor of Science in Electrical Engineering from Mosul University, a Master of
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`Science in Computer Science from Columbia University with a Citation for
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`Outstanding Achievement – Dean’s Honor Student, and over 40 years of
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`experience in software and product design and development, engineering,
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`consulting, and management in the fields of data storage, Internet, software, data
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`networking, computing systems, and telecommunication.
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`4.
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`I have worked with and possess expertise in numerous technologies,
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`including data storage
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`technologies and
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`interfaces, Internet and website
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`technologies, databases, data networking
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`technologies and protocols, and
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`telephony.
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`5.
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`From 1978 to 1980, I worked as a telecommunication/electrical
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`engineer for Emirtel (formerly Cable and Wireless, now Etisalat). During my
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`1
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`employment at Emirtel, among other things, I worked on telephony and
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`telecommunication products and services, and I developed software in assembly
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`and high-level languages for archiving, storing, and retrieving data to and from
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`data storage devices, such as disk drives and tape drives.
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`6.
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`From 1981 to 1983, I worked as a software engineer for Amdahl
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`Corporation (now Fujitsu), a California-based major supplier of computers,
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`systems, and data storage subsystems.
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`7.
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`From 1984 to 1994, I worked as a software, data storage, and systems
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`consultant to various data storage and computer companies in California, the
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`United States, Asia, and Europe. I provided technical consulting services in data
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`storage, data storage systems, data storage devices, software design and
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`development, system software, device driver software, data storage device
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`firmware, data storage software, data storage chips, data storage tools, data storage
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`test systems and test software, data storage and I/O protocol development systems,
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`data storage and I/O protocol analyzers, data storage and I/O monitoring systems,
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`and data storage manufacturing systems and software.
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`8.
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`From 1992 to 1996, I was President and founder of Zadian
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`Technologies, Inc., a California-based leading supplier of networked data storage
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`test systems, with over 50,000 units installed worldwide in mission-critical
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`customer operations with premier high-technology customers, such as Conner
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`
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`2
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`

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`Peripherals (now Seagate), DEC (now HP), EMC (now Dell EMC), Exabyte,
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`Fujitsu, HP, IBM, Intel, Iomega, Quantum (now Seagate), Seagate, Sony,
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`StorageTek, Tandberg, Tandem (now HP), Toshiba, Unisys, and WD. The
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`company’s products
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`included
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`test systems, manufacturing systems, and
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`development systems for data storage devices (disk drives, tape drives, removable
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`drives, flash drives, optical drives, CD-ROM drives, Jukeboxes, and RAID) and
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`data storage interfaces (SCSI, ATA / IDE / ATAPI, Fibre Channel, SSA, and
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`PCMCIA / PC Card).
`
`9.
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`In 1996, Zadian Technologies was acquired by UK-based Xyratex
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`International LTD (NASDAQ: XRTX, which was later acquired by Seagate,
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`NASDAQ: STX, in 2014). Following Zadian’s acquisition by Xyratex, I became
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`an employee of Xyratex until 1998. At Xyratex, I was a general manager of a data
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`storage interface business unit and, subsequently, a general manager of a data
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`networking analysis tools business unit, which designed and built Gigabit Ethernet
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`network protocol analysis and monitoring products, which were sold, under OEM
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`agreement, by the largest supplier of network protocol analysis and monitoring
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`products.
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`10. From 1999 to 2001, I was CEO, Chairman, and cofounder of Can Do,
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`Inc., a California-based Internet eCommerce and community company. The
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`CanDo.com website offered over 10,000 products for sale as well as extensive
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`3
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`consumer features, such as news, chat, messages, and product information for
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`people with disabilities. The company also provided technologies for display
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`magnification and sound/audio adaptation through the Internet to make websites
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`more accessible to persons with vision and hearing impairments. The company
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`was funded by leading venture capital firms.
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`11. From 2001 to 2007, I was President and cofounder of CoAssure, Inc.,
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`a California-based provider of Web-based technology services and solutions for
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`automated telephony speech recognition and touchtone applications, serving
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`multiple Fortune-500 companies.
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`12.
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`In 2009, I cofounded and have since been President of Rate Speeches,
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`Inc., a California-based Internet company providing online services, resources, and
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`technologies for creating, rating, evaluating, and enhancing public speaking,
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`presentation, and communication skills. Rate Speeches also operates the
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`ratespeeches.com website and the Speech Evaluator online software.
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`13. Since moving to Silicon Valley in Northern California in 1981, I have
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`worked on numerous technology products that have generated billions of dollars in
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`sales.
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`14.
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`I hold a California community college lifelong computer science
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`instructor credential. I have taught various data storage and computer technologies
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`4
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`to thousands of professional engineers and academic students in the United States,
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`Europe, and Asia.
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`15.
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`In my work as an expert and consultant, I have examined, analyzed,
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`and inspected numerous data storage systems, computer systems, software
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`products, cell phone applications, tens of millions of lines of source code, and the
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`frontend and backend software of more than 100 websites, including massive,
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`highly-trafficked consumer and business websites.
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`16. Through my education, industry and expert experience, and industry
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`and expert knowledge, I have gained a detailed understanding of the technologies
`
`at issue in this case.
`
`17. My additional industry experience is in my curriculum vitae.
`
`18. My expert litigation support cases, including cases in which I have
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`testified during the last four years as an expert, can be found in my curriculum
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`vitae, which is Exhibit 2002.
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`19. As such, I am qualified to provide opinions regarding the state of the
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`art at the time the ’780 Patent was filed (which I understand to be no later than
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`February 16, 2015, but claiming a priority date of December 4, 2003) and how a
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`person of ordinary skill in the art (“POSITA”) at that time would have interpreted
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`and understood the ’780 Patent.
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`20.
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`I am being compensated for my work and any travel expenses in
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`connection with
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`this proceeding at my standard consulting rates.
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` My
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`compensation is in no way dependent on or contingent on the outcome of my
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`analysis or opinions rendered in this proceeding and is in no way dependent on or
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`contingent on the results of these or any other proceedings relating to the above-
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`captioned patent.
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`21. Although I am not rendering an opinion about the level of skill of a
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`POSITA proffered by Petitioners, based on my professional experience, I have an
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`understanding of the capabilities of a POSITA (as such a POSITA is defined by
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`Petitioners). Over the course of my career, I have supervised and directed many
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`such persons. Additionally, I myself, at the time the ’780 Patent was filed and at
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`its priority date, qualified as at least a POSITA.
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`II. MATERIALS REVIEWED
`
`22.
`
`In preparing this declaration, I reviewed the ’780 Patent, including its
`
`claims in view of its specification, the prosecution history of the ’780 Patent,
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`various prior art and technical references from the time of the invention, the
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`IPR2020-01269 Petition (“’1269 Petition”) and its exhibits (Ex. 1001 – Ex. 1036),
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`and the IPR2020-01270 Petition (“’1270 Petition”) and its exhibits (Ex. 1001 – Ex.
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`1036).
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`6
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`23.
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`I also reviewed excerpts from Newton’s Telecom Dictionary, 15th ed.,
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`(1999) attached as Exhibit 2015.
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`III. LEGAL UNDERSTANDING
`
`24.
`
`I have worked with counsel in the preparation of this Declaration.
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`Nevertheless, the opinions, statements, and conclusions offered in this Declaration
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`are purely my own and were neither suggested nor indicated in any way by counsel
`
`or anyone other than myself. I confirmed with counsel my understanding that an
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`obviousness determination requires an analysis of the scope and content of the
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`prior art, the differences between the prior art and the claims, the level of ordinary
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`skill in the pertinent art at the time of the invention of the challenged patent, and an
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`evaluation of any relevant secondary considerations.
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`IV. CLAIM CONSTRUCTION
`
`25.
`
`I reviewed the comments in the Petition and Petitioners’ expert’s
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`declaration (Ex. 1003) pertaining to claim “construction of the claims” of the ’780
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`Patent for both the 1269 and 1270 IPRs. My understanding is simply that the
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`claims should be construed in accordance with their plain and ordinary meaning in
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`the context of the specification of the patent and its file history.
`
`A.
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`Petitioner’s Construction of “Cache Storage” Is Flawed
`
`26. Petitioner argues that “the the ordinary meaning in the context of the
`
`780 Patent of “cache storage” is storage that is more readily accessible by the user
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`
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`7
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`or user application than the original storage location.” 1269 Petition, 7; 1270
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`Petition, 7.
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`27.
`
`In my opinion, Petitioner’s construction of “cache storage” is flawed
`
`and improper.
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`28. A POSITA would have known that cache storage is not merely any
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`storage location “that is more readily accessible by the user or user application than
`
`the original storage location.” Such construction omits three basic cache
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`principles.
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`29. First, cache storage is used to save information that may be needed
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`multiple times (subsequent to initial access) in a more readily accessible location,
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`eliminating the need to retrieve the data again from the original source of the
`
`information. In other words, storing information in cache, when the information is
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`initially fetched, is intended not for the initial access to the information, but for
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`subsequent access or accesses to that information. Petitioner’s construction omits
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`this basic principle of cache.
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`30. Second, cache storage includes a cache search mechanism invoked
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`when information is needed. The cache search mechanism is used to determine if
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`the requested information is in cache (cache hit) or not in cache (cache miss). If
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`the information is not in cache, the information is fetched and stored in cache in
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`8
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`anticipation of subsequent accesses to that information. Petitioner’s construction
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`also omits this basic principle of cache.
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`31. Third, cache storage includes a replacement algorithm, mechanism, or
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`policy for replacing information in cache, such as least recently used (LRU)
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`algorithm. Petitioner’s construction also omits this basic principle of cache.
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`32. Petitioner’s own references for cache storage describe these three
`
`basic cache principles, namely that cache storage is used to save information that
`
`may be needed multiple times (subsequent to initial access), that cache storage
`
`includes a mechanism to determine cache hit/miss, and that cache storage includes
`
`a replacement algorithm.
`
`33. Petitioner’s EX-1008 (Newton’s Telecom Dictionary), 1999 version,
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`confirms that cache storage is used to save information that may be needed
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`multiple times (subsequent to initial access), that cache storage includes a
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`mechanism to determine cache hit/miss, and that cache storage includes a
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`replacement algorithm.
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`“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
`during a cache miss is often written into the cache in anticipation of
`further need for it.
`...
`
`
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`9
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`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.” Exhibit
`2015, Newton’s Telecom Dictionary, emphasis added
`
`34. Petitioner’s EX-1030 (Microsoft Press Computer Dictionary) also
`
`confirms that cache storage is used to save information that may be needed
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`multiple times (subsequent to initial access) and that cache storage includes a
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`mechanism to determine cache hit/miss.
`
`“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
`
`35. Petitioner’s omitting (from the cache storage construction) these three
`
`basic principles (that cache stores information that may be needed multiple times /
`
`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) results in
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`considering or deeming as cache any location that is “that is more readily
`
`accessible by the user or user application than the original storage location.” In
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`10
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`other words, under such overly broad and flawed construction, any storage location
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`(e.g., disk drive, random access memory, etc.) that stores the information and that
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`is faster than the original source would constitute cache, even if the information is
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`only transitorily and temporarily stored in that location and not saved for future
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`hits, even if the location is never intended or designed to operate as cache, even if
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`the location does not operate as cache (missing the three basic cache principles
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`mentioned above), and even if the location entirely contradicts the three basic
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`cache principles described earlier.
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`36. Under Petitioner’s construction, other than the original location where
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`a web page is stored at the web server, any storage location where the web page is
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`stored would constitute cache, because any such alleged storage location other than
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`the original location “is more readily accessible by the user or user application than
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`the original storage location.”
`
`37. For at least these reasons, in my opinion, Petitioner’s construction of
`
`“cache storage” as “stored in storage that is more readily accessible by the user or
`
`user application than the original storage location” is flawed and improper.
`
`38.
`
`I respectfully disagree with the PTAB’s Decision to adopt Petitioner’s
`
`construction of the term “cache storage” as “stored in storage that is more readily
`
`accessible by the user or user application than the original storage location.” 1269
`
`Decision, 13; 1270 Decision, 13
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`11
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`39.
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`In my opinion, the term “cache storage” should be construed in
`
`accordance with its plain and ordinary meaning in the context of the specification
`
`of the ’780 Patent and its file history.
`
`V. OPINIONS
`
`40.
`
`In the 1269 IPR, Petitioners present two grounds under which claims
`
`1-8 and 16-20 of the ’780 Patent are purportedly invalid; in particular, Petitioners
`
`contend that Claims 1-3, 7, 8, and 16-20 are obvious under §103 based on
`
`McCown (Ex. 1005) in view of Dutta (Ex. 1006); and contend that Claims 4-6 and
`
`16-20 are obvious under §103 based on McCown in view of Dutta and Coates (Ex.
`
`1007). ’1269 Petition, 4. In the 1270 IPR, Petitioners present two grounds under
`
`which claims 9-15 of the ’780 Patent are purportedly invalid; in particular,
`
`Petitioners contend that Claims 9, 10, 12, 13, and 15 are obvious under §103 based
`
`on McCown in view of Dutta; and contend that Claims 9-15 are obvious under
`
`§103 based on McCown in view of Dutta, and in further view of Coates. ’1270
`
`Petition, 4.
`
`41.
`
`In my opinion, as described below, Petitioners have not established a
`
`reasonable basis to conclude that the claims of the ’780 Patent are obvious.
`
`
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`12
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`A.
`
`Independent Claims 1, 9, and 16 Are Not Obvious in View of
`McCown and Dutta
`
`42. Petitioners contend that independent Claims 1, 9, and 16 are obvious
`
`over McCown (Ex. 1005) in view of Dutta (Ex. 1006). ‘1269 Petition, 4; ‘1270
`
`Petition, 4. I disagree for the reasons outlined below.
`
`a. Independent Claims 1, 6, and 9: Utilizing Download
`Information for the File Cached in the Cache Storage of the
`Wireless Device
`
`43.
`
`Independent Claim 1 of the ’780 Patent recites utilizing download
`
`information for the file cached in the cache storage of the wireless device.
`
`“1. A wireless device access to a remote storage space, the wireless
`device comprising:
`at least one cache storage, and one non-transitory computer-readable
`medium comprising program instructions which, being executed by
`the wireless device, cause the wireless device remotely access to the
`storage space, the program instructions include:
`…
`program instructions for coupling with the storage server across the
`wireless link to carry out a requested operation for remotely access to
`the storage space in response to the user from the wireless device
`performed the operation,
`wherein the program instructions for carrying out operation for the
`access to the storage space comprises program instructions for storing
`data therein or retrieving data therefrom,
`the program instructions for storing data including program
`instructions for downloading a file from a remote server across the
`Internet into the storage space through utilizing download information
`for the file, including name of the file and internet protocol (“IP”)
`address of the remote server, cached in the cache storage in response
`to the user from the wireless device performed the operation for the
`downloading.” ’780 patent, Claim 1.
`
`
`
`
`13
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`

`

`44.
`
`Independent Claim 9 of the ’780 Patent also recites utilizing download
`
`information for the file cached in the cache storage of the wireless device.
`
`“9. A server comprising:
`a pool of a plurality of storage spaces, and non-transitory computer-
`readable storage medium comprising program instructions which,
`being executed by the server, causes the server delivering storage
`service, the program instructions include:
`program instructions for allocating exclusively, via the storage pool, a
`first one of the storage spaces to a user of a first wireless device;
`program instructions for establishing a communication link for the
`first wireless device remotely access to the first one of the storage
`spaces;
`…
`program instructions for updating the first one of the storage spaces in
`response to the user from the first wireless device performed an
`operation for said remotely access to the first one of the storage
`spaces,
`wherein said access to the first one of the storage spaces comprises
`storing data therein or retrieving data therefrom,
`the storing of a data object including to download 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 in response to the user from
`the first wireless device performed the operation for the
`downloading.” ‘780 patent, claim 9.
`
`
`
`45.
`
`Independent Claim 16 of the ’780 Patent also recites utilizing
`
`download information for the file cached in the cache storage of the wireless
`
`device.
`
`“16. A system comprising:
`at least one storage server and one wireless device;
`wherein the storage server comprises a plurality of storage spaces, a
`first one of which being allocated to a user of the wireless device for
`
`
`
`14
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`

`

`exclusive access, and causes presenting the first one of the storage
`spaces to the user on the wireless device, and
`updates the first one of the storage spaces in response to the user from
`the wireless device performed an operation for remotely access to the
`first one of the storage spaces; and
`wherein the wireless device couples with the storage server across a
`wireless link to carry out a requested operation for remotely access to
`the first one of the storage spaces in response to the user from the
`wireless device performed the operation for the access,
`wherein the operation for remotely access to the first one of the
`storage spaces comprises storing data therein or retrieving data
`therefrom,
`the storing of said data including to download 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 in the
`wireless device in response to the user from the wireless device
`performed the operation for the downloading.” ’780 patent, Claim 16.
`
`
`
`
`
`i. Responses to the Board’s Decision Regarding Utilizing
`Download Information for the File Cached in Cache
`Storage in the Wireless Device
`
`46.
`
`I respectfully disagree with the conclusions in the PTAB’s Decision
`
`regarding the limitation of utilizing download information for the file cached in
`
`cache storage of the wireless device.
`
`1. McCown’s Web Page Display vs. ’780 Cache
`Storage
`
`47.
`
`I respectfully point out that the Decision generally appears to overlook
`
`the fact that McCown teaches obtaining the URL(s) (download information) from
`
`the wireless device web page display, which is significantly different from and
`
`
`
`15
`
`

`

`opposite to obtaining the download information from the wireless device cache
`
`storage, as recited in the limitations of the independent claims of the ’780 Patent.
`
`48.
`
`I elaborate further on this point in later sections (§§ V.A.a.x-
`
`V.A.a.xix) of this declaration.
`
`2. Dutta’s Conventional Browser Cache vs. the
`’780 Non-Conventional Cache Storage Usage
`
`49.
`
`I respectfully point out that the Decision generally appears to overlook
`
`the difference between the conventional browser cache in the combination of
`
`McCown and Dutta versus the non-conventional use of wireless device cache
`
`storage in the ’780 Patent.
`
`50. Dutta discloses a generic browser cache. Dutta does not disclose or
`
`imply download information, does not disclose or imply any purpose for the Dutta
`
`browser cache, and does not disclose or imply storing download information in the
`
`Dutta browser cache.
`
`51. McCown does not disclose or imply cache and does not disclose or
`
`imply storing download information in cache.
`
`52. A POSITA would not have been motivated to combine McCown with
`
`Dutta and would not have been motivated to store McCown’s download
`
`information in cache (whether Dutta’s cache or other cache) at the wireless device,
`
`because McCown retrieves all the download information at once and sends it to the
`
`storage server.
`
`
`
`16
`
`

`

`53.
`
`In other words, Dutta discloses a generic, conventional browser cache,
`
`and the combination of McCown and Dutta would also produce a generic,
`
`conventional browser cache. In contrast, the ’780 Patent recites non-conventional
`
`usage of cache storage at the wireless device, namely storing and subsequent
`
`retrieving of download information for out-of-band operation. The combination of
`
`McCown and Dutta does not disclose this non-conventional cache application. In
`
`addition, in my opinion, a POSITA would not have found obvious the ’780 non-
`
`conventional use of the wireless device cache for storing and subsequent retrieving
`
`of download information for out-of-band operation.
`
`54. Even assuming, arguendo, that a POSITA would have been motivated
`
`to combine Dutta’s cache with McCown, the purpose of such purported cache
`
`combination would still be to obtain / retrieve the download information again. In
`
`such combination, during a purported subsequent retrieval of the web page
`
`containing the URLs (download information), according to McCown’s teachings,
`
`McCown would again obtain the download information during the subsequent
`
`retrieval from the web page display, not from cache. Thus, the combination of
`
`established functions from McCown and Dutta would not generate the same result
`
`as the ’780 Patent recites.
`
`55.
`
`I elaborate further on this point in later sections (§§ V.A.a.x-
`
`V.A.a.xix) of this declaration.
`
`
`
`17
`
`

`

`56. Even assuming, arguendo, that a POSITA would have been motivated
`
`to combine Dutta’s cache with McCown, in my opinion, in 2003, a POSITA would
`
`have understood that combining McCown and Dutta would have required major
`
`architectural changes to McCown and Dutta.
`
`57. For example, McCown requires software on the client wireless device
`
`to emulate a hard disk drive that is actually located on a storage server (e.g.,
`
`McCown at 9:14-18, 15:27-16:4) and requires the software to communicate with
`
`the web browser to support the operations of drag-and-drop and copy-and-paste.
`
`However, in the purported combined system of McCown and Dutta, all these
`
`functions would need to be modified and adapted. Such undertaking would have
`
`discouraged a POSITA from combining McCown and Dutta.
`
`58.
`
`I elaborate further on the above points in later sections (§§ V.A.a.vi-
`
`V.A.a.ix) of this declaration.
`
`3. Response to PTAB Decision, 27-28
`
`59. The PTAB Decision states that “Patent Owner, however, does not
`
`address Petitioner’s contention that “[a] Skilled Artisan would understand that the
`
`use of a browser cache in wireless devices was well-k