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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,
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`v.
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`SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner.
`
`U.S. Patent No. 9,219,780
`Inventor: Sheng Tai Tsao
`
`METHOD AND SYSTEM FOR WIRELESS DEVICE ACCESS TO
`EXTERNAL STORAGE
`________________________
`Case IPR2020-01270
`________________________
`PETITIONERS’ REPLY BRIEF
`________________________
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`Title:
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`Petitioners’ Reply in IPR2020-01270
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
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`ARGUMENT ................................................................................................... 1
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`I.
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`II.
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`A.
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`Synkloud’s Claim Construction Is Legally Erroneous ......................... 1
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`1.
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`2.
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`Utilizing download information .................................................. 1
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`Cached ......................................................................................... 3
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`B.
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`The Challenged Claims Are Unpatentable ............................................ 4
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`1. McCown/Dutta Satisfy the “download a file from a remote
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`server …” Claim Language ........................................................ 5
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`2. McCown/Dutta Satisfy the “Transmitting” Claim Language ... 14
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`3.
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`A Skilled Artisan Would Have Been Motivated to Combine
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`McCown and Dutta ................................................................... 16
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`C.
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`Synkloud Has Failed to Prove Any Relevant Objective Indicia of
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`Non-Obviousness ................................................................................ 19
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`1.
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`2.
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`Commercial Success ................................................................. 19
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`Licensing ................................................................................... 21
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`III. CONCLUSION .............................................................................................. 22
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Amgen Inc. v. Hoechst Marion Roussel, Inc.,
`314 F.3d 1313 (Fed. Cir. 2003), aff’d and remanded in part, 457
`F.3d 1293 (Fed. Cir. 2006) ................................................................................. 18
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016), cert. denied, 137 S. Ct. 1329
`(2017) .................................................................................................................... 8
`Caterpillar Inc. v. Wirtgen Am., Inc.,
`IPR2017-02186, Paper 10 (PTAB May 1, 2019) ............................................... 16
`Ericsson Inc. v. Intellectual Ventures I LLC,
`890 F.3d 1336 (Fed. Cir. 2018) .......................................................................... 12
`Fox Factory, Inc. v. SRAM,
`LLC, 944 F.3d 1366 (Fed. Cir. 2019), cert. denied, 141 S. Ct. 373
`(2020) .................................................................................................................. 19
`KSR Int’l Co. v. Teleflex Inc.,
`127 S. Ct. 1727 (2007) .......................................................................................... 8
`Merck & Cie v. Gnosis S.P.A.,
`808 F.3d 829 (Fed. Cir. 2015), cert. denied, 137 S. Ct. 297 (2016)................... 21
`Microsoft Corp. v. Synkloud Techs., LLC,
`IPR2020-00316, Paper 43 (PTAB June 14, 2021) ....................................... 1, 2, 7
`Ormco Corp. v. Align Tech., Inc.,
`463 F.3d 1299 (Fed. Cir. 2006) .......................................................................... 19
`In re Rouffet,
`149 F.3d 1350 (Fed. Cir. 1998) .......................................................................... 22
`Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530 (Fed. Cir. 1983) .......................................................................... 22
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`Tokai Corp. v. Easton Enters., Inc.,
`632 F.3d 1358 (Fed. Cir. 2011) .................................................................... 19, 20
`Transocean Offshore Deepwater v. Maersk Drilling, Inc.,
`699 F.3d 1340 (Fed. Cir. 2012) .......................................................................... 19
`Regulations
`37 C.F.R. §42.65(a) .................................................................................................. 12
`37 C.F.R. § 42.73(d)(3)(i) .......................................................................................... 1
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`Petitioners’ Reply in IPR2020-01270
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`I.
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`INTRODUCTION
`The Petition demonstrated it would have been obvious to combine a prior art
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`browser cache, a device known to be used for storing web pages, with the system
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`of McCown in order to store a webpage of URLs. Synkloud’s response asserts a
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`scattershot of unsupported and mostly unexplained arguments that ignore the
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`actual analysis of the Petition and the disclosures of the prior art. Those arguments
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`should be rejected.
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`Moreover, the Board has recently rejected many of the arguments Synkloud
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`asserts here in a final written decision concerning a related patent sharing the same
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`specification and nearly identical claim language as at issue here. See Microsoft
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`Corp. v. Synkloud Techs., LLC, IPR2020-00316, Paper 43 (PTAB June 14, 2021)
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`(“the 316 FWD”). Synkloud should therefore be estopped from making these
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`arguments here, as doing so would be “taking action inconsistent with the adverse
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`judgment” in the 316 FWD, in contravention of 37 C.F.R. § 42.73(d)(3).
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`II. ARGUMENT
`Synkloud’s Claim Construction Is Legally Erroneous
`A.
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`Utilizing download information
`1.
`Synkloud argues for a construction of the phrase “download a file from a
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`remote server …,” POR, 8-13, which is nearly identical to the Board’s
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`interpretation of the “utilizing information …” portion of that same claim language,
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`Inst. Dec., 14. The main difference is that Synkloud changes the phrase “download
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`information” to “information needed to download a file from a remote server.”
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`POR, 9.1
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`Those two phrases are not the same thing, as nothing in the words
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`“download information” limits the claim to information “needed” to perform a
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`download (as opposed to information simply “utiliz[ed]” to perform such a
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`download, which is what the claim says), and “information needed to download a
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`file” could include all kinds of information never hinted at in the patent, e.g.,
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`checksum information, decryption codes, account numbers. Synkloud does not
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`justify switching in its “needed to download” language or explain why its
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`interpretation should be used instead of the Board’s. It instead argues its
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`construction is “consistent” with the specification because the specification
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`discloses that such information is “utilized to download the file.” POR, 9-10. But
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`consistency with the specification is no basis to construe claim language in a
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`manner much narrower than its ordinary meaning.2
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`1 In this brief, all emphasis had been added unless otherwise indicated.
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`2 The Board has already finally rejected this same construction in the 316 FWD.
`IPR2020-00316, Paper 43 at 9-10.
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`In any event, the Petition demonstrated that McCown/Dutta stored a web
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`page of URLs used to download a file from a remote server. Pet., 27-48. Such
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`URLs would be “information needed to download a file from a remote server”
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`because a URL is the Internet address of the file to be downloaded. Pet., 40
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`EX1030, 487.
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`Cached
`2.
`Synkloud also argues against an interpretation of the noun “cache,” POR,
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`10-13, even though the Petition proposed an interpretation of “cache storage,” Pet.,
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`7-10, which is the actual phrase used in the claims, e.g., EX1001, 6:12. Synkloud
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`contends that three “basic cache principles” should be read into the claims from
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`extrinsic evidence. POR, 10-13. Synkloud makes no attempt to justify importing
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`these limitations based on the intrinsic record, and it mischaracterizes the extrinsic
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`evidence it cites.
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`For example, both Synkloud and its expert cite dictionaries that describe
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`how a cache “works,” not what a “cache” is, let alone what the claim phrase “cache
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`storage” means. EX2014,¶¶28-34 (quoting EX1008, which states “A cache works
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`like this …” and EX1030 explaining what a cache does). Moreover, the claim
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`language here is “cache storage,” so it recites only the storage portion of a cache,
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`not the cache itself.
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`In any event, the Petition demonstrated that McCown inherently discloses a
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`cache (and therefore “cache storage”) and Dutta expressly discloses one. Pet., 43-
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`46. Thus, to the extent the three “basic cache principles” could be interpreted as
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`necessary characteristics of “cache storage,” then the caches of McCown and Dutta
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`include those characteristics too. To the extent those characteristics are not
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`necessarily part of every cache, they are not properly included in a construction of
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`that term, since they do not define what a cache is and are not required by the
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`intrinsic evidence.3
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`B.
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`The Challenged Claims Are Unpatentable
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`Synkloud first argues, in text cut and pasted from its Preliminary Response,
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`that “Institution should be denied” because the petition did not set forth a proper
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`obviousness analysis. Compare POR, 16-19 with PPOR, 17-20. The Board has
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`already rejected these arguments by instituting this proceeding, so the argument
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`should be ignored as irrelevant. Synkloud does not, in any event, point to any
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`particular aspect of the petition’s analysis that is insufficient, so the argument
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`should again be rejected. The argument is also erroneous, as the Petition set forth,
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`
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`3 Synkloud also disagrees with the Board conclusion that a browser cache would be
`“understood to store information so that it is more readily accessible,” POR, 26,
`but Synkloud’s expert confirms that is exactly what a cache is for, EX2014,¶29.
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`among other things, the level of ordinary skill (Pet., 4), the scope and content of
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`the prior art (Pet., 13-15), the differences between the prior art and the claims (e.g.,
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`Pet., 43-44), and why the claims would have been obvious to a Skilled Artisan
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`(e.g., Pet., 43-53). Moreover, as confirmed below, there are no relevant secondary
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`considerations of nonobviousness.
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`1. McCown/Dutta Satisfy the “download a file from a remote
`server …” Claim Language
`Synkloud also argues that the combination of McCown and Dutta does not
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`satisfy the “download[ing] a file from a remote server …” claim language, POR,
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`19-22, but its reasoning ignores the disclosure of those references and the
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`Petition’s analysis. As explained in detail in the Petition and below, McCown
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`discloses all elements of the claims except actually storing the “download
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`information” (a web page of URLs) in a cache storage. Dutta discloses a browser
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`cache, a device known to be used for the storage of web pages. In the combination
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`analyzed in the Petition, Dutta’s browser cache is added to the system of McCown
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`and used to store the download information. The combination thus satisfies every
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`element of the challenged claims. Synkloud’s more specific assertions are
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`addressed below.
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`a. McCown/Dutta Is Not Limited to a User Downloading
`All Available Files at Once, or Accessing the Webpage
`Only Once
`Synkloud objects to the petition’s showing that it would have been obvious
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`to store the “download information” – i.e., the web page of URLs – in a browser
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`cache because McCown supposedly “retrieves all the download information at
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`once and sends it to the storage server,” so the download information would not be
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`needed again. POR, 23 (citation omitted). Synkloud repeats this argument at
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`POR, 28, 40.4 It similarly contends that McCown or Dutta do not disclose the user
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`re-opening the web page of URLs or a reason why a user would. POR, 32, 40-43.
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`In that same vein, Synkloud argues that McCown discloses the user accessing the
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`4 Synkloud cites its expert’s assertion at EX2014,¶¶39-47 as support for this
`argument, POR, 17-18, but that testimony cites no portion of McCown that
`discloses sending all of the “download information” to the storage site and the
`expert never explains why he thinks it does. Nor could he, as McCown never
`discloses that all the download information (URLs) are sent to the storage server at
`once. It discloses that the user can select URLs one at a time and that the selected
`URLs are sent, EX1005, 11:12-20, which clearly means the user can select one or
`more for sending.
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`URLs only once, so there would be no need to cache them. POR, 17, 26, 28, 37-
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`43. These arguments are utterly erroneous and ignore the record.5
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`For example, the assertion that McCown “retrieves the download
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`information all at once and sends it to the storage server to use for downloading,”
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`is misleading. McCown discloses retrieving the download information (a web
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`page of URLs) into the user site and then, after the user selects at least one of the
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`URLs listed on the page, sending the selected URLs to the storage server to initiate
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`download of the files pointed to by those URLs. EX1005, 11:17-20. While a user
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`could certainly select all URLs on the web page, thereby causing all URLs to be
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`sent to the storage server, there is nothing in McCown which discloses that
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`example or requires it. Indeed, McCown discloses that the user selects only one
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`URL at a time, EX1005, 11:12-14, indicating that the user can select as few as one
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`file for download, which would result in only one URL being sent to the storage
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`server.
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`As to whether McCown or Dutta disclose that the user might reopen the
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`webpage of URLs, that argument is irrelevant. The Petition noted that a user might
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`reopen that web page to make a subsequent selection as a motivation to store the
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`5 Moreover, the Board has already finally rejected these arguments in the 316
`FWD. IPR2020-00316, Paper 43 at 35-38.
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`webpage in a cache. Pet., 48. Such a motivation need not come from the actual
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`prior art references forming the combination, as any need or problem in the field
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`and addressed by the patent can provide such a reason. KSR Int’l Co. v. Teleflex
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`Inc., 127 S. Ct. 1727, 1742 (2007). Indeed, an obviousness analysis “need not seek
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`out precise teachings directed to the specific subject matter of the challenged
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`claim, for a court can take account of the inferences and creative steps that a
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`person of ordinary skill in the art would employ.” Id. at 1741. Even common
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`sense can provide such a reason. Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355,
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`1361 (Fed. Cir. 2016), cert. denied, 137 S. Ct. 1329 (2017). And, the Petition cited
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`ample other prior art evidence of that motivation that Synkloud does not dispute.
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`Pet., 18-22, 49-54.
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`Here, there is nothing in McCown that would preclude a user from accessing
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`the web page of URLs more than once, and the prior art cited in the Petition
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`discloses that browser caches are used precisely because a user might access the
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`same web page more than once. EX1010,¶¶[0002]-[0003]; EX1011, 1:66-2:9;
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`EX1030, 72; EX1008, 114. Indeed, even Synkloud’s expert testifies that “cache
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`storage is used to save information that may be needed multiple times (subsequent
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`to initial access).” EX2014,¶29 (underlining in original).
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`Further, it is simply common sense that such multiple accesses could happen
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`in a system such as McCown’s. People change their minds, or forget what they
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`meant to do. A user, after downloading one or more files using McCown’s system,
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`may later choose to download another, or later remember that she meant to
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`download others. That McCown does not explicitly disclose a user doing so is
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`beside the point. A Skilled Artisan would have understood that some users would
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`seek to access that web page of URLs more than once, or might, and therefore be
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`motivated to cache it and thereby improve the efficiency of the system.
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`EX1003,¶¶217-218. That is the very purpose of a cache. EX1010, ¶[0002].
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`b.
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`The McCown/Dutta Combination Stores Download
`Information in the Cache
`Synkloud contends that “McCown does not even mention a cache,” so it
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`could not have suggested storing download information in it, POR, 19, and that
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`“Dutta does not compensate for the deficiencies of McCown” because it
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`supposedly does not “provide the explicit disclosure that is missing from
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`McCown,” POR, 20. It repeats this argument at POR, 19-21, 24-28. The
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`argument ignores the combination analyzed in the Petition.
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`McCown discloses “download information” (a webpage of URLs) received
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`by the user site and then presented to the user, Pet., 55 (citing EX1005, 10:18-27),
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`which would necessarily mean the “download information” is stored at the user
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`site in some manner. McCown further states that “the functionality of the user site
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`software application 152 may be implemented as part of the browser,” EX1005,
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`9:22-23; Pet., 60. Dutta discloses a browser cache, Pet., 15, 45 (citing EX1006,
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`¶[0029]), which a Skilled Artisan would understand to be a storage device for
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`caching (i.e., storing) web pages, Pet., 43-44; EX1010, ¶[0002]; EX1011, 1:66-2:1;
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`EX1003,¶118. Thus, McCown discloses storing “download information” – a
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`webpage of URLs – at the user site/browser, and Dutta discloses a browser cache
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`for storing web pages. Combining the two satisfies the claim phrase “download
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`information for the file … cached in the cache storage” of claim 1 and the
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`analogous language in the other independent claims.
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`c.
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`In McCown/Dutta, the Download Information is
`Retrieved from the Cache, Not From a Webpage
`Synkloud next asserts that McCown supposedly teaches obtaining URLs
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`(i.e., the claimed “download information”) “from the wireless device web page
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`display,” but not from cache storage. POR, 22 (citing EX2014,¶47). It repeats
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`this argument at POR, 31, 32-33, 40, 43.
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`Neither Synkloud nor its expert cite any supporting evidence for this
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`assertion; nor is there any supporting analysis. McCown does not disclose
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`obtaining the URLs to be sent to the storage site from the web page display.
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`The argument is, in any event, based on a misunderstanding of the Petition,
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`which demonstrated that it would have been obvious to store McCown’s webpage
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`of URLs (i.e., the claimed “download information”) in cache storage of McCown
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`(e.g., as supplied by Dutta) and later retrieve one or more of those URLs from the
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`cache for transmission to the storage server. Pet., 46-54. Thus, in the
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`combination analyzed in the Petition, the URLs are obtained from the cache, not
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`from the display. Whether or not McCown alone obtains the URLs from the
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`display (it doesn’t), is irrelevant.
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`d.
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`The Claims Require Only Conventional Caching, Which
`McCown/Dutta Includes
`Synkloud asserts that there is a difference between the “conventional
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`browser cache” in McCown/Dutta and the “non-conventional use of wireless
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`device cache storage in the ’780 Patent,” which it describes as “namely storing and
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`subsequent retrieving of download information for out-of-band operation.” POR,
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`22-24. But the claims require only that the download information be “cached in
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`the cache storage” e.g., EX1001, 6:37-40, and say nothing about any “non-
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`conventional” use of cache storage.6
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`Further, McCown’s system can transfer data through ISDN, EX1005, 10:10-
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`14, which provides out-of-band signaling, EX1041, 13:29-33, so the combination
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`cited in the Petition would satisfy even the unclaimed “out-of-band” limitation
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`argued by Synkloud.
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`6 The 780 Patent refers to an optional “out-band approach,” EX1001, 2:64, without
`ever explaining what that phrase means. The claims don’t recite the phrase “out-
`band” either, so that concept cannot distinguish the prior art.
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`e. McCown/Dutta Requires No Major Architectural
`Changes
`Synkloud next argues that a Skilled Artisan would be “discouraged” from
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`making the combination of McCown and Dutta because its expert says the
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`combination would require “major architectural changes to both McCown and
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`Dutta” that would require McCown’s hard disk emulation and drag-and-drop/copy-
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`and-paste functionality “to be modified and adapted.” POR, 24.
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`But the expert never explains why merely adding a browser cache to
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`McCown and storing a web page in it would require that functionality to be
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`changed in such a substantial way as to discourage a Skilled Artisan from making
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`the combination. Nor does the expert explain what specific changes would need to
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`be made—such ipse dixit expert testimony is entitled to no weight. Ericsson Inc. v.
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`Intellectual Ventures I LLC, 890 F.3d 1336, 1346 (Fed. Cir. 2018); 37 C.F.R. §
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`42.65(a).
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`Moreover, the expert’s testimony is not credible. McCown discloses hard
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`disk emulation, EX1005, 10:4-6, 16:2-4, 16:23-17:3, and web browsers that
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`included a cache, EX1003,¶115; EX1005, 8:5-10; EX1024, 7:8-10; EX1025, 3:3-8,
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`so McCown’s hard disk emulation already works with a browser cache in the
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`system. Similarly, the claims do not recite drag-and-drop/copy-and-paste
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`functionality, but to the extent the expert was referring to the folder and file
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`manipulation claim language, the Petition relied on Coates for for those elements,
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`Pet., 62-77. Coates also includes a cache and uses it with that functionality,
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`EX1007, 3:22-38, 10:60-66, so Coates’s folder manipulation functionality also
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`already works with a cache in the system. It is nonsense to suggest that simply
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`storing a web page of URLs in a browser cache would by itself break the
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`functionality disclosed in these references, and neither Synkloud nor its expert
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`attempt to explain why it might.
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`Indeed, browser caches were well-known, conventional technology, well
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`within the level of ordinary skill in the art. EX1003,¶118; EX1010, ¶[0002];
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`EX1011, 1:66-2:1; EX1012, 14:30-33. And Dr. Houh testifies that combining the
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`browser cache of Dutta with the system of McCown “could … have been readily
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`made without undue experimentation,” EX1003,¶125, a fact neither Synkloud nor
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`its expert disputes.
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`f.
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`The Petition Identified The Cited Combination With
`Particularity
`Synkloud next asserts that the Petition failed to rely on “the discrete
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`disclosure of a prior art reference” and instead relies on “mere attorney argument
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`and conclusory statements from their expert,” but it fails to cite any particular
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`portion of the petition. POR, 18-19, 34-35. Those assertions are incorrect. The
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`Petition relied on specifically cited disclosures in McCown and Dutta, as well as
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`the detailed analysis of Dr. Houh and numerous other pieces of evidence. Pet., 16-
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`55. That was far more than attorney argument or a conclusory statement, and more
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`than sufficient to carry petitioner’s burden.
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`2. McCown/Dutta Satisfy the “Transmitting” Claim Language
`a.
`Synkloud’s Repeated Arguments Are Just as Erroneous
`The Second Time They Are Made
`Synkloud next contends that McCown/Dutta does not satisfy the
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`“transmitting” language of claim 10, POR, 30-35, but for the most part Synkloud
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`merely rehashes the erroneous arguments addressed above. It argues, for example,
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`that McCown does not disclose storing “download information” in a cache, POR,
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`30, that in McCown the URLs are retrieved from the display of the webpage, POR,
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`30, that Dutta does not disclose a reason for storing McCown’s page of URL’s in
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`the cache and that the page is “not needed past the initial display,” POR, 33.
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`But those arguments have been shown to be erroneous above. See §II.B.1
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`above. As demonstrated there and in the Petition, in the combination of McCown
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`and Dutta the “download information” is stored in the browser cache for multiple
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`reasons, including because a user might choose to select additional files for
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`download after an initial selection. Pet., 10-11, 42-43, 47-48.
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`b.
`Synkloud Mischaracterizes The Analysis of the Petition
`Synkloud also attempts to show that Petitioner’s reading of the claims and of
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`McCown do not coincide, but it presents an inaccurate version of the Petition’s
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`analysis. POR, 30-32. For example, it mischaracterizes the Petition’s analysis of
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`McCown as “[t]he wireless device (immediately after receipt of the web page,
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`not later) retrieves the download information from the currently displayed
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`page …”. POR, 32 (bold and underlining in original). That is not what McCown
`
`discloses and not what was argued in the Petition.
`
`As demonstrated in the Petition, in the cited combination of McCown and
`
`Dutta, after the user selects files for download (i.e., not “immediately after receipt
`
`of the web page”), the appropriate URLs are retrieved from the cached web page
`
`of URLs and sent to the storage site as a data request. Pet., 10-11, 42-43, 47-48.
`
`Thus, in the combination of McCown and Dutta, the URLs are retrieved from the
`
`cache, not “from the currently displayed page.”
`
`c.
`Synkloud’s Precedent is Inapposite
`Synkloud next discusses precedent supposedly directed to the situation
`
`where “a claim limitation is wholly absent from the teachings of the prior art.”
`
`POR, 33-35; see also id., 18-20. But that is not the case here, see, e.g., §II.B.1.b
`
`above, so those arguments and precedent are inapposite. As demonstrated in the
`
`Petition and above, McCown discloses all elements of the independent claims
`
`except actually storing his webpage of URLs in a cache. E.g., Pet., 16-54. Dutta
`
`discloses a browser cache, a device known to be specifically designed for the
`
`storage of webpages. E.g., EX1010, [0002]. Dutta thus merely provided the place
`
`to store the webpage of URLs that was not expressly disclosed in McCown. As the
`
`
`
`15
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`
`
`Petitioners’ Reply in IPR2020-01270
`
`Petition demonstrated, combining the two references satisfies all elements of the
`
`claims, e.g., Pet., 16-54, and there were ample reasons to make that combination,
`
`Pet., 46-50.7
`
`3.
`
`A Skilled Artisan Would Have Been Motivated to Combine
`McCown and Dutta
`a.
`The Petition Included a Detailed Obviousness Analysis
`Grounded in the Prior Art
`Synkloud argues the petition’s analysis “is rooted in forbidden hindsight
`
`analysis that is based on its incorrect assumption regarding the level of ordinary
`
`skill in the art.” POR, 36. It asserts that “Petitioners failed to provide any
`
`evidence whatsoever” that combining McCown and Dutta would satisfy the claims,
`
`POR, 36-37, and that the Petition supposedly makes only “conclusory arguments”
`
`regarding obviousness, POR, 36.
`
`All of that is incorrect. The Petition’s analysis is supported by numerous
`
`citations to evidence in the prior art, e.g., Pet., 16-54, which is the very opposite of
`
`improper hindsight. Caterpillar Inc. v. Wirtgen Am., Inc., IPR2017-02186, Paper
`
`10 at 26 (PTAB May 1, 2019). Moreover, Synkloud does not contest the level of
`
`
`
`7 Synkloud’s precedent is also inapplicable as standing for the proposition that
`“common sense” cannot be used as a replacement for documentary or other
`evidence to prove a claim limitation is satisfied by the prior art. POR, 35. The
`petition did not rely on “common sense” for that purpose.
`
`
`
`16
`
`
`
`Petitioners’ Reply in IPR2020-01270
`
`ordinary skill set forth in the Petition and adopted at Institution and does not
`
`specifically contest most of the reasons to combine analyzed in the petition. Pet.,
`
`46-50.
`
`b.
`Synkloud Rehashes It Erroneous Arguments
`Synkloud next argues, once again, that the fact that storing McCown’s web
`
`page of URLs in a Dutta cache would make it more readily accessible is
`
`supposedly “inconsistent with the disclosure of McCown” because McCown only
`
`discloses the user accessing the web page once and shows the user selecting files
`
`for downloading by clicking “from a web page, not from a cache of a wireless
`
`device. This URL information is then manually forwarded by the user.” POR, 37-
`
`38. It also contends that “there is no reason for the user to go back to the page
`
`containing the URLs.” POR, 37-39.
`
`As demonstrated above, see §II.B.1, these arguments are incorrect and
`
`mischaracterize both the combination of McCown/Dutta and reasons for making
`
`that combination analyzed in the petition.8
`
`
`
`8 Moreover, the argument that because the user in McCown selects URLs using a
`mouse, those URLs are sent to the storage site “manually” and that those URLs
`would not be readily accessible is mistaken. POR, 37. The Petition argued that
`storing the URLs in a cache would make them more readily accessible to the user
`17
`
`
`
`
`
`Petitioners’ Reply in IPR2020-01270
`
`c.
`
`The Petition Provided Objective Evidence of Motivation
`to Combine and Reasonable Expectation of Success
`Synkloud also asserts that the Petition failed to provide objective evidence of
`
`motivation to combine and reasonable expectation of success. POR, 42-43. That
`
`is incorrect, as such objective evidence was cited in the Petition, including EX1010
`
`through EX1013. Pet., 49-52. Moreover, web caches were known, EX1010,
`
`[0002]; and McCown, Dutta and the other prior art references supporting the
`
`combination are all issued U.S. patents, and therefore presumptively self-enabling.
`
`Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003),
`
`aff’d and remanded in part, 457 F.3d 1293 (Fed. Cir. 2006). Further, Dr. Houh
`
`explained that “[a] Skilled Artisan could therefore have readily made this
`
`combination without undue effort or experimentation.” EX1003,¶126.
`
`Moreover, Synkloud does not contest (and therefore concedes) the additional
`
`reasons set forth in the Petition showing that caching McCown’s web page of
`
`URLs would have been obvious, including because to do so would “provide the
`
`user with a faster method of remote storage,” Pet., 49, and was only the
`
`arrangement of old elements with each performing the same function it had been
`
`
`
`application at the user site, not that doing so would permit the human user to select
`them more easily from the screen. Pet., 26-27, 43.
`
`
`
`18
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`Petitioners’ Reply in IPR2020-01270
`
`known to perform and yielding no more than one would expect from such an
`
`arrangement, Pet., 50.
`
`C.
`
`Synkloud Has Failed to Prove Any Relevant Objective Indicia
`of Non-Obviousness
`Synkloud asserts that commercial success and licensing represent secondary
`
`considerations of non-obviousness in this case, POR, 43-74, but the evidence it
`
`cites fails to show the required nexus and is far outweighed by the analysis of the
`
`Petition.
`
`Commercial Success
`1.
`Synkloud bears the burden “to show both commercial success and that a
`
`nexus exists between that success and the merits of the claimed invention.”
`
`Transocean Offshore Deepwater v. Maersk Drilling, Inc., 699 F.3d 1340, 1350
`
`(Fed. Cir. 2012) (citation omitted). Moreover, “[i]f commercial success is due to
`
`an element in the prior art, no nexus exists.” Tokai Corp. v. Easton Enters., Inc.,
`
`632 F.3d 1358, 1369 (Fed. Cir. 2011) (quoting Ormco Corp. v. Align Tech., Inc.,
`
`463 F.3d 1299, 1312 (Fed. Cir. 2006)).
`
`Synkloud argues entitlement to a presumption of nexus because it says
`
`certain Microsoft devices practice the claimed inventions, citing Exhibits 2008-
`
`2012. POR, 68-69. But Synkloud is not entitled to a presumption of nexus
`
`because it has not shown that the cited devices are “coextensive” with any claim of
`
`the 780 Patent. Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir.
`
`
`
`19
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`
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`Petitioners’ Reply in IPR2020-01270
`
`2019), cert. denied, 141 S. Ct. 373 (2020). Nor could it, as the cited devices
`
`include multiple important components never mentioned in any claim of the 780
`
`Patent, including operating systems, processors, displays, and cameras. EX1037,
`
`1-2; EX1038, 1-5; EX103
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