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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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`
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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,
`
`Patent Owner.
`
`
`
`
`
`Case IPR2020-01270
`U.S. Patent 9,219,780
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`
`
`PATENT OWNER SUR-REPLY
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`

`

`Contents
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`PATENT OWNER SUR-REPLY ............................................................................................................... 1
`
`I.
`
`Introduction. ........................................................................................................................................ 1
`
`II. PO’s Claim Constructions Are Consistent With the Plain and Ordinary Meaning Of The Claims As
`Understood By A POSITA In Light Of The Specification. ....................................................................... 3
`
`a. download[ing] a file from a remote server into the first one of the storage spaces through utilizing
`download information for the file including name of the file and internet protocol (“IP”) address of the
`remote server cached in a cache storage of the first wireless (independent claim 9). ............................ 3
`
`III. None Of The Claims Would Have Been Obvious Over The Combination Of McCown and Dutta
`Under The Proper Claim Construction. ...................................................................................................... 6
`
`A. The Combination of McCown/Dutta Would Not Have Taught “download[ing] a file from a
`remote server into the first one of the storage spaces through utilizing download information for the
`file, including name of the file and internet protocol (“IP”) address of the remote server, cached in the
`cache storage of the first wireless device.” ............................................................................................. 6
`
`B. The Combination of McCown/Dutta Would Not Have Taught “transmitting the downloading
`information [obtained for a file from a remote server] cached in the first wireless device to the server”
`As Recited in Dependent Claim 10. ........................................................................................................ 7
`
`C. Petitioners Failed To Show That A POSITA Would Have Been Motivated To Modify
`McCown/Dutta To Include the Absent Claim Limitations. .................................................................... 9
`
`D. A POSITA Would Not and Could Not Have Combined McCown and Dutta and Reasonably
`Expect Success. ..................................................................................................................................... 13
`
`IV. Objective Indicia of Non-obviousness Support The Patentability Of The Claims Of The ’708
`Patent......................................................................................................................................................... 17
`
`
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`
`i
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`

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`I.
`
`Introduction.
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`Petitioners’ Reply, like their Petition, relies on their overly broad claim
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`construction of the claim term “cache” and their unsupported position that “[i]n
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`McCown/Dutta, the [d]ownload [i]nformation is [r]etrieved from the [c]ache, [n]ot [f]rom
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`a [w]ebpage” display. Reply, 10. But their primary prior art reference, McCown, makes
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`no mention of a cache. And even if a cache were added to McCown, there is no
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`documentary evidence in the record that a URL of a file selected from a displayed web
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`page would be retrieved from the cache. Rather, data such as a URL selected from a web
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`page displayed on a user’s device would be retrieved from a web page display. Infra, §
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`III.A.
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`Petitioners’ construction of the claim term “cache storage” as “storage that is more
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`readily accessible by the user or user application than the original storage location”
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`(Petition, 7) is overly broad. See e.g., PO Response, 11-14. Under Petitioners’
`
`construction, any memory (e.g., disk drives, flash drive) at or near a user’s device would
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`qualify as “cache storage” because any such memory is “more readily accessible by the
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`user or user application than the original storage location” (i.e., the web site server).
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`There is no intrinsic or extrinsic evidence in the record indicating that memory such as a
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`disk drive, flash drive, etc., would be considered by a person or ordinary skill in the art
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`(POSITA) to be cache storage.
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`Under the proper claim construction as set forth by Patent Owner (PO), none of the
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`1
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`

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`claims of the ‘780 patent would have been obvious. Indeed, many of the claim limitations
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`are wholly absent from the prior art.
`
`Under these circumstances, documentary evidence is required to establish that the
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`absent limitations would have been obvious. K/S HIMPP v. Hear-Wear Technologies,
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`LLC, 751 F.3d 1362, 1366 (Fed. Cir. 2014) (“an assessment of basic knowledge and
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`common sense as a replacement for documentary evidence for factual findings lacks
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`substantial evidence support.”). But Petitioners make no attempt in their Reply to provide
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`the documentary evidence required to establish obviousness. Nor do they attempt to
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`argue that K/S HIMPP is not the law.
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`Instead, Petitioners blithely rely on “common sense” to add the missing limitations
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`to their prior art combination (Reply 8) and restate their sole reliance on their expert
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`declaration to advance the theory that the limitations that are absent from the prior art
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`would have been obvious. See Reply, 4-19. For this very reason, Petitioners’ argument
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`violates the mandate of K/S HIMPP. It is improper to rely on common sense and after-
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`the-fact expert declarations, rather than contemporaneous documentary evidence, to
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`support an obviousness theory that relies on modifications of the prior art to supply
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`missing limitations. K/S HIMPP, 751 F.3d at 1366. Indeed, Petitioners’ expert failed to
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`respond to the testimony of SynKloud’s expert Mr. Jawadi explaining why a POSITA
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`would not have been motivated to modify the prior art to include the missing claim
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`limitations.
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`
`2
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`

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`
`
`II.
`
`PO’s Claim Constructions Are Consistent With the Plain and Ordinary
`Meaning Of The Claims As Understood By A POSITA In Light Of The
`Specification.
`
`a. download[ing] a file from a remote server into the first one of the storage
`spaces through utilizing download information for the file including name
`of the file and internet protocol (“IP”) address of the remote server cached
`in a cache storage of the first wireless (independent claim 9).
`
`As explained by PO, the proper construction of this claim limitation requires
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`“information needed to download a file from a remote server to be (i) stored in a cache
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`storage of a wireless device and (ii) utilized to download the file across a network into an
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`assigned storage space for the user of the wireless device.” PO Response, 10.
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`Petitioners’ quibbling with SynKloud’s use of the term “needed” in its proposed
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`claim construction (Reply, 1-2) is meant to detract from the important point that the
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`claimed “download information” is required to download a file from a remote server into
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`the assigned storage space. Indeed, the “download information” is required or needed
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`because it identifies the file that is to be downloaded from the remote server to the
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`assigned storage space. The Specification explicitly states that the download information
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`in the wireless device’s cache is, in fact, needed and used to download the file:
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`the other service module (7) of the storage server (3) sends a web download
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`request to the web-site (15) … based on download information obtained. and
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`receives the downloading data streams from the web server of the web-site
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`(15).
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`EX1001, 5:37-42.
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`
`
`3
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`

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`Both the claim language itself and the Specification support PO’s proposed
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`construction. In contrast, Petitioners’ construction of “cache storage” as “storage that is
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`more readily accessible by the user or user application than the original storage location”
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`(Petition, 10) is inconsistent with Petitioners’ own exhibits. For example, Petitioners’
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`EX-1008 (Newton’s Telecom Dictionary) explains that cache storage is used to save
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`information that may be needed multiple times, that cache storage includes a mechanism
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`to determine cache hit/miss, and that cache storage includes a replacement algorithm:
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`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.
`...
`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.
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`EX-1008, 114 (emphasis added). Petitioners’ EX-1030 (Microsoft Press Computer
`
`Dictionary) confirms that cache storage is used to save information that may be needed
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`multiple times and that cache storage includes a mechanism to determine cache hit/miss:
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`A special memory subsystem in which frequently used data values are
`duplicated for quick access. A memory cache stores the contents of
`frequently accessed RAM locations and the addresses where these data
`items are stored. When the processor references an address in memory, the
`cache checks to see whether it holds that address.
`
`EX-1030, 72 (emphasis added).
`
`
`
`4
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`

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`Thus, Petitioner’s construction neglects to consider that a POSITA would have
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`known that memory would need to have these three basic cache principles (i.e., that
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`cache stores information that may be needed multiple times / subsequent to initial access,
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`that cache storage includes a mechanism to determine cache hit/miss, and that cache
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`storage includes a replacement algorithm) to qualify as a cache. Under Petitioners’ overly
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`broad construction, any memory (e.g., disk drive, flash drive) at or near a user’s device
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`that stores a web page would be cache storage because any such memory is “more readily
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`accessible by the user or user applications than the original storage location” (i.e., the
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`web site server). And there is no intrinsic or extrinsic evidence in the record indicating
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`that memory such as a disk drive, flash drive, etc., would have been considered by a
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`POSITA to be cache storage.1
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`
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`1 Petitioners’ argument that SynKloud does not describe “what a ‘cache’ is, let alone
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`what the claim word ‘cache storage’ means (Reply 3) is demonstrably false. The
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`construction of “cache storage” proposed by Petitioners’ and relied upon by the Board in
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`its Institution Decision is overly broad. And SynKloud provided a detailed explanation
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`about the features that memory would need to have to be considered by a POSITA to be a
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`cache (e.g., a search mechanism and a replacement algorithm). PO Response, 11-14.
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`
`
`5
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`

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`III. None Of The Claims Would Have Been Obvious Over The Combination Of
`McCown and Dutta Under The Proper Claim Construction.
`
`A. The Combination of McCown/Dutta Would Not Have Taught
`“download[ing] a file from a remote server into the first one of the storage
`spaces through utilizing download information for the file, including name
`of the file and internet protocol (“IP”) address of the remote server, cached
`in the cache storage of the first wireless device.”
`
`Petitioners fail to show that the combination of McCown/Dutta would have taught
`
`the claim limitation quoted above or that a POSITA would have been motivated to
`
`include this limitation in the combination.
`
`i.
`
`The Claim Limitation of “utilizing download information for the file
`… cached in the cache storage” Is Wholly Absent From
`McCown/Dutta
`
`The section of Petitioners’ brief commencing with the heading “In McCown/Dutta
`
`the Download Information Is Retrieved from the Cache, Not From A Webpage” (Reply,
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`10-11), in fact, fails to identify where McCown or Dutta discloses using information from
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`a cache in a wireless device to download a file. The heading is a canard. It does not
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`reflect the content of Petitioners’ argument in the body of the section. Indeed, Petitioners
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`fail to identify the portions of either McCown or Dutta that disclose this claim limitation.
`
`See Ibid. It is little wonder why. “McCown does not even mention the term cache.”
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`EX2014, ¶ 125. Petitioners did not point to the teachings of Dutta that provide the
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`disclosure that is missing from McCown. See Petition, 41-53; Reply, 9-13. Indeed, as
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`explained by Mr. Jawadi, Dutta “does not disclose how the data in its browser cache may
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`be used for any purpose, function, or utility.” EX2014, ¶ 134.
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`Thus, Petitioners’ arguments miss the mark entirely and are not commensurate
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`
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`6
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`with the scope of the claims of the ’780 patent. All the claims require much more than a
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`mere cache; they require “utilizing download information for the file, including name of
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`the file and internet protocol (“IP”) address of the remote server, cached in the cache
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`storage of the first wireless device.” EX1001, 7:31-34. None of the portions of McCown
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`and Dutta cited by Petitioners would have taught the claim limitation of utilizing
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`download information cached in a cache storage to download a file to an assigned storage
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`space. The mere mention of a cache in Dutta would not have taught that information from
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`the cache is utilized to download a file from a remote server to a storage server. Indeed,
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`Petitioners asserted that “source code … would be necessary to determine what gets
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`stored in cache and what does not.” IPR2020-00316, Paper No. 32 (December 14, 2020),
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`23 (emphasis added). And Petitioners did not present any source code for the web
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`browsers on which they rely for this claim limitation. Reply, 5-13.
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`B. The Combination of McCown/Dutta Would Not Have Taught
`“transmitting the downloading information [obtained for a file from a
`remote server] cached in the first wireless device to the server” As Recited
`in Dependent Claim 10.
`
`As explained in detail in the PO Response (31-37), the claim limitation quoted
`
`above is wholly absent from the combination of McCown and Dutta. Petitioners failed—
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`in both their Petition and Reply—to identify the locations in McCown/Dutta that would
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`have taught this claim limitation. See Petition, 16-54; Reply, 15-16. Indeed, McCown
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`does not even mention a cache. And Dutta does not make any mention of how any of the
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`data in its cache would be used, let alone that download information in the cache of a
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`
`
`7
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`wireless device would be used remotely from the wireless device to download a file from
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`a second server (e.g., a web site) to a remote storage space. EX2014, § V.A.a. Moreover,
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`Petitioners failed to provide any documentary evidence showing that the absent limitation
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`would have been obvious. See Petition, 16-54; Reply, 15-16.
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`Instead, Petitioners build and then knock down a strawman argument that
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`SynKloud never made. According to Petitioners, SynKloud’s attention to what McCown
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`actually would have taught to a POSITA means that SynKloud “mischaracterizes the
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`Petition’s analysis of McCown.” Reply, 14-15 (emphasis omitted). But that is plainly not
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`so. Instead, SynKloud first acknowledged Petitioner’s argument that the McCown/Dutta
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`combination would have taught that URLs are obtained from cache, and then explained
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`that Petitioners’ argument is wrong because even if McCown were modified to include a
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`cache, the URLs for files selected from the displayed web page would be utilized from
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`the web page display, not from the cache. PO Response, 32-37; EX2014, ¶¶ 47, 54.
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`Indeed, McCown repeatedly discloses that the files to be saved to the storage site
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`are selected by the user from a web page displayed on the user’s device:
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`Referring to FIG. 3, selection may be accomplished using an input device
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`132, such as a mouse, to graphically choose one or more files. from the
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`displayed web page, as shown in block 300 (EX1005, 11:4-9);
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`
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`The client 120 then presses a right button on the mouse causing a pop-up
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`window to appear on the display adjacent to the cursor. From the pop-up
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`window, the client 120 selects a command titled "Save to Soft-Drive" with a
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`8
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`

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`left button on the mouse, as shown in block 304. User site software
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`application 152 is operational to accept the URL of the selected file 112
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`from the browser 136 through the operating system.
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`EX1005, 11:12-18 (emphasis added).
`
`As explained by Mr. Jawadi, the URL received by the browser “though the operating
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`system” is retrieved from the displayed web page, not the web browser’s cache:
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`McCown would again obtain the download information during the
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`subsequent retrieval from the web page display, not from cache. Thus, the
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`combination of established functions from McCown and Dutta would not
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`generate the same result as the ’780 Patent recites.
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`EX2014, ¶ 54 (emphasis added). Petitioners’ expert did not even attempt to explain why
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`Mr. Jawadi is mistaken; he did not file a supplemental declaration with Petitioners’
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`Reply. And Petitioners and their expert failed—in both the Petition and Reply—to
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`provide any documentary evidence indicating that an operating system retrieves a URL
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`for a file selected from a web page from a browser’s cache.
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`
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`C. Petitioners Failed To Show That A POSITA Would Have Been Motivated
`To Modify McCown/Dutta To Include the Absent Claim Limitations.
`
`When claim limitations are wholly absent from the prior art, contemporaneous
`
`documentary evidence is required to support an obviousness theory that relies on
`
`modification of the prior art to supply the missing limitations. K/S HIMPP, 751 F.3d at
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`1366. Petitioners and their expert did not provide the required documentary evidence. See
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`Reply, 4-19.
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`
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`9
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`

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`To detract from their failure to meet the Federal Circuit’s requirements for
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`obviousness, Petitioners argue that K/S HIMPP is “inapposite” because “combining the
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`two references [McCown and Dutta} satisfies all elements of the claims.” Reply, 15-16.
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`But the combination does not, in fact, satisfy many claim elements of the ’780 patent.
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`“McCown does not even mention the term cache” (EX2014, ¶ 125) and Dutta “does not
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`disclose how the data in its browser cache may be used for any purpose, function, or
`
`utility.” Id. at ¶ 134. Petitioners failed to identify any portion of McCown or Dutta that
`
`would have taught, inter alia, using download information from a cache storage on a
`
`wireless device to download a file. See e.g., Petition, 47-54; Reply, 15-16.
`
`To further detract from their failure to meet the Federal Circuit’s requirements for
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`obviousness, Petitioners next allege that “Synkloud does not contest (and therefore
`
`concedes) the additional reasons set forth in the Petition showing that caching McCown’s
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`web page URLs would have been obvious … and was only the arrangement of old
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`elements with each performing the same function it had been known to perform and
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`yielding no more than one would expect from such an arrangement.” Reply, 18-19. But
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`PO and Mr. Jawadi did, in fact, explain in detail why each and every motivation
`
`argument set forth by Petitioners would not have, in fact, motivated a POSITA to modify
`
`the teachings of McCown and Dutta to store download information identifying a file at a
`
`remote server in a cache of a user’s wireless device. PO Response, 37-46; EX2014, §§
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`V.A.a.i – V.A.a.xxi.
`
`
`
`10
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`

`

`Petitioners’ expert failed to respond to Mr. Jawadi’s extensive testimony as to why
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`a POSITA would not have been motivated to modify the McCown/Dutta combination to
`
`achieve the claimed invention. Instead, Petitioners respond with mere attorney argument
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`(Reply, 16-19), which should be given no weight. In re Geisler, 116 F.3d 1465, 1471
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`(Fed. Cir. 1997).
`
`For example, Petitioners’ attorneys alleged that if McCown were modified to
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`include a cache at a user’s device, the URL for a file selected from a displayed web page
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`on the user’s device would be retrieved from a cache. Reply, 10-11. They are wrong. As
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`explained by Mr. Jawadi, a URL selected from a displayed web page by an operation
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`such as a mouse click, drag-and drop, or copy and paste operation is retrieved from the
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`web page display, not from cache:
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` McCown teaches obtaining the URL(s) (download information) from the
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`wireless device web page display, which is significantly different from and
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`opposite to obtaining the download information from the wireless device
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`cache storage, as recited in the limitations of the independent claims of the
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`’780 Patent.
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`EX2014, ¶ 47 (emphasis in original), see also id. at ¶¶ 54, 153. Mr. Jawadi’s testimony
`
`is consistent with the McCown itself, which describes retrieving a URL for a file selected
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`by pressing a right button on a mouse. McCown, EX1005, 11:12-23. Because the file is
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`selected with a mouse click on a web page display, the corresponding URL is retrieved
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`from the web page display. EX2014, ¶ 153 (“The list of URLs is generated by the
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`11
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`

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`application using a web page, not a cache of the wireless device.”); id, at ¶¶ 47, 54.
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`Petitioners’ expert had the opportunity to respond to Mr. Jawadi’s testimony but
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`did not do so. Petitioners’ attorneys had the opportunity to file documentary evidence to
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`rebut Mr. Jawadi’s testimony but did not do so. See Reply, 10-11. It is little wonder why.
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`Data selected from a web page displayed on a computing device is retrieved from the
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`web page display, not from cache. EX2014, ¶¶ 47, 54, 153. Unable to provide the
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`required documentary evidence required by the Federal Circuit to establish obviousness,
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`Petitioners’ attorneys instead responded to Mr. Jawadi’s testimony with their own
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`argument and attempt to shift the burden to prove non-obviousness on PO by stating that
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`“[n]either Synkloud nor its expert cite to any supporting evidence for this assertion” that
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`the URLs for files selected from a web page are retrieved from the web page display.
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`Reply, 10.2
`
`That is doubly wrong. First, Patent Owner’s expert did, in fact, explain in detail
`
`that the URLs for files selected from a web page (as taught by McCown) are not retrieved
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`from cache and are instead retrieved from a web page display. EX2014, ¶¶ 47, 54, 153.
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`Second, it is Petitioners’ burden to provide documentary evidence that URLs for the
`
`
`2 Mr. Jawadi is fully qualified as a credible expert in this field. He earned “a Master of
`Science in Computer Science from Columbia University [one of the top universities in
`the world] with a Citation for Outstanding Achievement – Dean’s Honor Student, and
`[has] over 40 years of experience in software and product design and development,
`engineering, consulting, and management in the fields of data storage, Internet, software,
`data networking, computing systems, and telecommunication. EX2014, ¶ 3.
`
`
`
`12
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`

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`selected files would have been retrieved from cache. Pfizer, Inc. v. Apotex, Inc., 480 F.3d
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`1348, 1360 (Fed. Cir. 2007) (“the burden of persuasion always remains with the
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`challenger to patent validity”).
`
`Petitioners did not nearly meet their burden to establish by a preponderance of the
`
`evidence that the combination of McCown and Dutta would have taught utilizing
`
`download information (e.g., a URL) from the cache of a wireless device to download a
`
`file to remote storage, as claimed by the ‘780 patent.
`
`D. A POSITA Would Not and Could Not Have Combined McCown and Dutta
`and Reasonably Expect Success.
`
`As explained above and in the PO Response, Petitioners relied on mere attorney
`
`argument and conclusory expert testimony to support their position that the claim
`
`limitation of downloading a file from remote server utilizing information for the file
`
`stored in the cache storage in the wireless device, would have been obvious.
`
`In response, Petitioners argue that they “relied on specifically cited disclosures in
`
`McCown and Dutta,” and the “analysis of [their expert] Dr. Houh and numerous other
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`pieces of evidence.” Reply, 13. But none of the cited disclosures in McCown or Dutta
`
`disclose, suggests or teach “utilizing download information for the file, including name of
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`the file and internet protocol (“IP”) address of the remote server, cached in a cache
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`storage of the first wireless device,” as recited in independent claim 9 of the ‘780 patent.
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`McCown does not even mention a cache. And Dutta does not make any mention of how
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`any of the data in its cache would be used. E2014, § V.A.a. Dr. Houh does not cite to any
`
`
`
`13
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`

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`documentary evidence indicating that this claim limitation, which is wholly absent from
`
`the prior art, would have been obvious. And Petitioners did not even attempt to explain
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`how their “numerous other pieces of evidence”—which they failed to identify— even
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`relate to this claim limitation, let alone how they would show that the limitation would
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`have been obvious. See Reply, 13-14.
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`Petitioners’ argument that “Synkloud does not contest the level of ordinary skill set
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`forth by the Petitioner” (Reply, 16-17) misses the mark because nothing in Petitioners’
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`POSITA definition indicates that such a person would have found it obvious to modify
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`the McCown/Dutta combination to include the missing claim limitations.
`
`
`
`i.
`
`Petitioners’ Expert Fails To Respond To Mr. Jawadi’s Explanation
`Of Why A POSITA Would Not Have Been Motivated To Modify The
`McCown/Dutta Combination To Utilize Download Information
`Stored Locally In The Cache of A Wireless Device To Download A
`File Stored Remotely On A Remote Server.
`
`SynKloud and Mr. Jawadi, explained in detail why each and every motivation
`
`argument set forth by Petitioners would not have, in fact, motivated a POSITA to modify
`
`the teachings of McCown and Dutta to store download information identifying a file at a
`
`remote server in a cache of a user’s wireless device. PO Response, 37-46; EX2014,
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`§§V.A.a.ix - V.A.a.xix. Petitioners’ expert again failed to respond to Mr. Jawadi’s
`
`extensive testimony.
`
`Petitioners assert—without any support—that “storing the URLs in a cache would
`
`
`
`14
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`

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`make them more readily accessible to the user application at the user site.” Reply, 17-18.
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`But Petitioners’ arguments are inconsistent with the disclosure of McCown itself. As
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`explained in detail above and by Mr. Jawadi, the URL corresponding to file selected on a
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`web page in McCown is retrieved from the web page display, not from cache. EX2014,
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`¶¶ 47, 54, 153. That is, the “list of URLs [in McCown] is generated by an application
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`using the web page, not a cache of the wireless device.” EX2014, ¶ 153. Moreover,
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`McCown’s URLs “are used only once by the user,” thereby negating the need to store the
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`URLs in cache. EX2014, ¶ 155. “McCown describes that the user selects the desired
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`URL or URLs and sends the selected URL or URLs to the storage site from the web page
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`that is already displayed.” EX2014, ¶ 150. McCown states that “[e]ach data request
`
`contains the URL's of the selected files 112”. EX1005, 11:21-23. Because the data
`
`request that is sent by the user of the wireless device to the storage site contains all the
`
`URLs selected by the user, there is “no reason for the user to need the URLs again.”
`
`EX2014. ¶ 164.
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`Petitioners next rely on “common sense” to support their position that the URLs
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`would have been utilized from cache if one were added to McCown’s device. Reply, 8-9.
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`But when a claim limitation is wholly absent from the teachings of the prior art,
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`documentary evidence is required to establish obviousness. K/S HIMPP, 751 F.3d at
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`1366; see also NuVasive, 842 F.3d at 1383 (“common sense” is not reasoned analysis); In
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`re Zurko, 258 F.3d 1379, 1385-1386 (Fed. Cir. 2001). Petitioners fail to provide the
`
`
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`15
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`

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`required documentary evidence and provide mere attorney argument. See Reply, 8-9.
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`Arista Networks, Inc. v. Cisco Systems, Inc., 2016 WL 1083023*5 (PTAB 2015)
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`(conclusory assertions, without evidence, are inadequate to support a Petition for IPR.).
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`Petitioners next allege that PO “does not specifically contest most of the reasons to
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`combine analyzed in the petition,” Reply, 17. Petitioners’ allegations are demonstrably
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`false. PO and Mr. Jawadi provided dozens of pages of analysis explaining why a POSITA
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`would not have been motivated to modify the McCown/Dutta combination to utilize
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`download information stored locally in the cache of a wireless device to identify a file
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`stored remotely on a remote server and download it to an assigned storage space. PO
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`Response, 37-46; EX2014, 13-61.
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`Petitioners’ arguments are unavailing for several reasons. First, as explained by
`
`Mr. Jawadi, “[o]nce the user sends all the URLs to the storage site, there is no need or
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`reason to retrieve the URLs again.” EX2014, ¶ 153. Second, “[o]nce the files are
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`downloaded to the storage site (which is immediately upon receipt of the URLs), the user
`
`will NOT need the URLs again, since the purpose of the URLs is fulfilled after the
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`storage site downloads the files.” EX2014, ¶ 170. Third, there is not a whisper of a
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`suggestion in McCown that a “user re-opens the webpage listing the URLs for purposes
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`of making another selection” (id. at ¶ 88) and Petitioners provide no documentary
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`evidence to support its argument that a user would do so. See Reply, 16-19. Fourth, there
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`
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`16
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`is also no suggestion in McCown of retrieving URLs a second time “whether from cache
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`or otherwise.” EX2014 at ¶ 210 (emphasis in original).
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`
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`IV. Objective Indicia of Non-obviousness Support The Patentability Of The
`Claims Of The ’708 Patent.
`
`Petitioners’ obviousness arguments are very weak. Several claim limitations are
`
`wholly absent from the prior art and Petitioners failed to provide contemporaneous,
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`documentary evidence showing the missing limitations would have been obvious. Supra,
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`§ III. In contrast, the objective indicia of non-obviousness are very strong. Commercial
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`products embodying the claimed inventions have recently generated billions of dollars in
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`revenue. And licenses to the ’780 patent and related patents was taken for substantially
`
`more than the cost of an IPR. EX2030 and EX2039.
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`In response, Petitioners argue with reliance on Fox Factory, Inc. v. SRAM, LLC,
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`944 F.3d 1339 (Fed. Cir. 1999) that PO is “not entitled to a presumption of nexus” for the
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`commercial success of products that contain “components never mentioned in any claim
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`of the ‘780 patent.” Reply, 19-20.
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`Petitioners are wrong. First, a patentee establishes a presumption of nexus that its
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`“proffered objective evidence relates to specific products that “are embodiments of the
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`invention as claimed.” WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1329 (Fed. Cir. 2016).
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`“This [two-part] showing—that the specific products are embodiments of the claimed
`
`invention and that the proffered objective evidence relates to these products—is sufficient
`
`
`
`17
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`to establish the presumption of nexus for the objective considerations at issue ....” Id. at
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`1330; accord Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1057-58 (Fed. Cir. 2016)
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`(en banc) (reversing opinion finding no nexus because “[a]t trial, [patentee] Apple's
`
`expert ... testified that the iPhone practiced the asserted claims”).
`
`Second, the presumption of nexus still applies “even when the product has
`
`additional, unclaimed features.” PPC Broadband, Inc. v. Corning Optical
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`Communications RF, LLC, 815 F.3d 734, 747 (Fed. Cir. 2016); Ecolochem, Inc. v. S. Cal.
`
`Edison Co., 227 F.3d 1361, 1378 (Fed. Cir. 2000) (applying nexus-presumption when
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`embodiment had unclaimed mobility feature).
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`Third, “[a] patentee is not required to prove as part of its prima facie case that the
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`commercial success of the patented invention [for example] is not due to factors other
`
`than the patented invention.” Demaco Corp. v. F. Von Langsdorfl Licensing Ltd., 851
`
`F.2d 1387, 1393-94 (Fed. Cir. 1988) (citation omitted). Moreover, one panel decision—
`
`such as Fox Factory—cannot overrule, disregard or conflict with the Federal Circuit’s
`
`prior en-banc decisions. See, e.g., Newell Cas., Inc. v. Kenney Mfg. Co., 864 F.2d 757,
`
`765 (Fed. Cir. 1988).
`
`PO established a presumption of nexus for the commercial success. It
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`demonstrated with over fifty pages of detailed analysis mapping each claim l