UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`MICROSOFT CORPORATION and HP INC.,
`
`Petitioners,
`
`v.
`
`SYNKLOUD TECHNOLOGIES, LLC,
`
`Patent Owner.
`
`____________
`
`
`
`Case IPR2020-01271
`
`U.S. Patent No. 9,239,686
`
`____________
`
`
`
`SECOND DECLARATION OF ZAYDOON (“JAY”) JAWADI
`IN SUPPORT OF PATENT OWNER’S RESPONSE
`
`
`
`
`IPR2020-01271
`Exhibit 20143
`
`
`
`

`

`TABLE OF CONTENTS
`
`
`I. BACKGROUND AND QUALIFICATIONS ..................................................... 1
`
`II. MATERIALS REVIEWED ................................................................................ 6
`
`III. LEGAL UNDERSTANDING ............................................................................. 6
`
`IV. CLAIM CONSTRUCTION ................................................................................ 7
`
`A.
`
`Petitioner’s Construction of “Cached” Is Flawed ......................................... 7
`
`V. OPINIONS .........................................................................................................11
`
`A.
`
`Independent Claim 1 Is Not Obvious in View of McCown and Dutta .......12
`
`Independent Claim 1: Utilizing Download Information for the File
`a.
`Cached in the Wireless Device .........................................................................12
`
`i. Responses to the Board’s Decision Regarding Utilizing Download
`Information for the File Cached in the Wireless Device ...............................12
`
`1. McCown’s Web Page Display vs. ’686 Cache Storage ........................13
`
`2. Dutta’s Conventional Browser Cache vs. ’686 Non-Conventional
`Cache Storage Usage ...................................................................................13
`
`3. Response to PTAB Decision, 25-26 .....................................................16
`
`4. Response to PTAB Decision, 26 ...........................................................20
`
`5. Response to PTAB Decision, 27 ...........................................................21
`
`6. Response to PTAB Decision, 28 ...........................................................23
`
`Summary of Why McCown in View of Dutta Does Not Disclose
`ii.
`Utilizing Download Information for the File Cached in the Wireless Device
`
`24
`
`iii. Petitioners’ Interpretation of Utilizing Download Information for the
`File Cached in the Wireless Device in the ’686 Patent .................................29
`
`iv. Steps of Utilizing Download Information for the File Cached in the
`Wireless Device in the ’686 Patent ...............................................................30
`
`v. McCown Does Not Disclose, Suggest, or Imply Storing Download
`Information in Cache or Retrieving Download Information from Cache .....31
`
`vi. Dutta Does Not Disclose How Any Data in Its Cache Is Used ............31
`
`
`
`i
`
`

`

`vii. Dutta Does Not Disclose, Suggest, or Imply Storing Download
`Information in Cache or Retrieving Download Information from Cache .....34
`
`viii. The Combination of McCown and Dutta Does Not Disclose, Suggest,
`or Imply Storing Download Information in Cache or Retrieving Download
`Information from Cache ................................................................................35
`
`ix. Petitioners Rely Solely on Expert’s Opinion That It Would Have Been
`Obvious to Store the Download Information in Cache and to Retrieve the
`Download Information from Cache ...............................................................36
`
`Petitioners’ Readily Accessible Theory for the Motivation for Storing
`x.
`the Download Information in Cache .............................................................36
`
`xi. McCown Contradicts Petitioners’ Theory for the Motivation for
`Storing the Download Information in Cache .................................................37
`
`xii. Petitioners’ Description of McCown’s Steps Contradicts Petitioners’
`Theory for the Motivation for Storing the Download Information in Cache 40
`
`xiii. McCown Stores the Files in the Storage Site, Further Negating the
`Need to Store the Download Information in Cache ......................................43
`
`’686 Patent vs. McCown’s Steps of Utilizing Download Information
`xiv.
`for the File Cached in the Wireless Device ...................................................45
`
`xv. Difference between Retrieving from Cache and Retrieving from
`Displayed Web Page ......................................................................................48
`
`xvi. Download Information for the File (Singular)...................................50
`
`xvii. Dutta Does Not Cure McCown’s Deficiencies in Storing Download
`Information in Cache and Retrieving Download Information from Cache ..51
`
`xviii. Petitioners’ Second Purported Reason (Re-Opening the Webpage) to
`Store Download Information in Cache ..........................................................52
`
`Storing McCown’s URLs in Cache Is Unnecessary, Wasteful,
`xix.
`Counterintuitive, and Not Obvious ................................................................55
`
`xx. Coates Does Not Cure McCown’s and Dutta’s Deficiencies in Storing
`Download Information in Cache and Retrieving Download Information from
`Cache .............................................................................................................56
`
`xxi. Utilizing Download Information Cached in the Wireless Device:
`Independent Claim 1 Is Not Obvious in View of McCown and Dutta .........56
`
`b. Dependent Claim 2: Cached Downloading Information .........................57
`
`c. Dependent Claim 9: Predefined Capacity ................................................57
`
`
`
`ii
`
`

`

`d. Dependent Claims 2-11 Are Not Obvious in View of McCown and Dutta
`and Are Not Obvious in View of McCown, Dutta, and Coates .......................58
`
`B. Independent Claims 1 and 12 Are Not Obvious in View of McCown, Dutta,
`and Coates .............................................................................................................58
`
`Independent Claim 1: Utilizing Download Information for the File
`a.
`Cached in the Wireless Device .........................................................................59
`
`b. Dependent Claim 2: Cached Downloading Information .........................59
`
`c. Dependent Claim 9: Predefined Capacity ................................................60
`
`d. Dependent Claims 2-11 Are Not Obvious in View of McCown and Dutta
`and Are Not Obvious in View of McCown, Dutta, and Coates .......................60
`
`Independent Claim 12: Allocating Exclusively a Storage Space of a
`e.
`Predefined Capacity to a User of a Wireless Device ........................................60
`
`i. Responses to the Board’s Decision Regarding Predefined Capacity ......61
`
`ii.
`
`Predefined Capacity in the ’686 Patent .................................................62
`
`iii. McCown Does Not Disclose Predefined Capacity Allocated
`Exclusively to a User of a Wireless Device ..................................................62
`
`iv. Petitioners’ Memory Partitioning and Allocation Techniques Do Not
`Disclose Predefined Capacity Allocated Exclusively to a User of a Wireless
`Device ............................................................................................................64
`
`v. Dutta Does Not Disclose Predefined Capacity Allocated Exclusively to
`a User of a Wireless Device ..........................................................................71
`
`vi. Coates Does Not Disclose Predefined Capacity Allocated Exclusively
`to a User of a Wireless Device ......................................................................73
`
`vii. The Combination of McCown, Dutta, and Coates Does Not Disclose
`Predefined Capacity Allocated Exclusively to a User of a Wireless Device 73
`
`f. Dependent Claim 13: Utilizing Download Information for the File Cached
`in the Wireless Device ......................................................................................73
`
`g. Dependent Claim 14: Cached Download Information .............................74
`
`h. Dependent Claims 13-20 Are Not Obvious in View of McCown, Dutta,
`and Coates .........................................................................................................74
`
`VI. CONCLUSION ..................................................................................................75
`
`
`
`
`
`iii
`
`

`

`I, Zaydoon (“Jay”) Jawadi, declare as follows:
`
`I.
`
`BACKGROUND AND QUALIFICATIONS
`
`1. My name is Zaydoon (“Jay”) Jawadi.
`
`2.
`
`I am an independent expert and consultant. I have been retained as an
`
`expert witness on behalf of SynKloud Technologies, LLC (“SynKloud”) for the
`
`above-captioned Inter Partes Review (IPR) regarding U.S. Patent No. 9,239,686
`
`(“’686 Patent”).
`
`3.
`
`As shown in my curriculum vitae (attached as Exhibit 2002), I have a
`
`Bachelor of Science in Electrical Engineering from Mosul University, a Master of
`
`Science in Computer Science from Columbia University with a Citation for
`
`Outstanding Achievement – Dean’s Honor Student, and 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.
`
`4.
`
`I have worked with and possess expertise in numerous technologies,
`
`including data storage
`
`technologies and
`
`interfaces, Internet and website
`
`technologies, databases, data networking
`
`technologies and protocols, and
`
`telephony.
`
`5.
`
`From 1978 to 1980, I worked as a telecommunication/electrical
`
`engineer for Emirtel (formerly Cable and Wireless, now Etisalat). During my
`
`
`
`1
`
`

`

`employment at Emirtel, among other things, I worked on telephony and
`
`telecommunication products and services, and I developed software in assembly
`
`and high-level languages for archiving, storing, and retrieving data to and from
`
`data storage devices, such as disk drives and tape drives.
`
`6.
`
`From 1981 to 1983, I worked as a software engineer for Amdahl
`
`Corporation (now Fujitsu), a California-based major supplier of computers,
`
`systems, and data storage subsystems.
`
`7.
`
`From 1984 to 1994, I worked as a software, data storage, and systems
`
`consultant to various data storage and computer companies in California, the
`
`United States, Asia, and Europe. I provided technical consulting services in data
`
`storage, data storage systems, data storage devices, software design and
`
`development, system software, device driver software, data storage device
`
`firmware, data storage software, data storage chips, data storage tools, data storage
`
`test systems and test software, data storage and I/O protocol development systems,
`
`data storage and I/O protocol analyzers, data storage and I/O monitoring systems,
`
`and data storage manufacturing systems and software.
`
`8.
`
`From 1992 to 1996, I was President and founder of Zadian
`
`Technologies, Inc., a California-based leading supplier of networked data storage
`
`test systems, with over 50,000 units installed worldwide in mission-critical
`
`customer operations with premier high-technology customers, such as Conner
`
`
`
`2
`
`

`

`Peripherals (now Seagate), DEC (now HP), EMC (now Dell EMC), Exabyte,
`
`Fujitsu, HP, IBM, Intel, Iomega, Quantum (now Seagate), Seagate, Sony,
`
`StorageTek, Tandberg, Tandem (now HP), Toshiba, Unisys, and WD. The
`
`company’s products
`
`included
`
`test systems, manufacturing systems, and
`
`development systems for data storage devices (disk drives, tape drives, removable
`
`drives, flash drives, optical drives, CD-ROM drives, Jukeboxes, and RAID) and
`
`data storage interfaces (SCSI, ATA / IDE / ATAPI, Fibre Channel, SSA, and
`
`PCMCIA / PC Card).
`
`9.
`
`In 1996, Zadian Technologies was acquired by UK-based Xyratex
`
`International LTD (NASDAQ: XRTX, which was later acquired by Seagate,
`
`NASDAQ: STX, in 2014). Following Zadian’s acquisition by Xyratex, I became
`
`an employee of Xyratex until 1998. At Xyratex, I was a general manager of a data
`
`storage interface business unit and, subsequently, a general manager of a data
`
`networking analysis tools business unit, which designed and built Gigabit Ethernet
`
`network protocol analysis and monitoring products, which were sold, under OEM
`
`agreement, by the largest supplier of network protocol analysis and monitoring
`
`products.
`
`10. From 1999 to 2001, I was CEO, Chairman, and cofounder of Can Do,
`
`Inc., a California-based Internet eCommerce and community company. The
`
`CanDo.com website offered over 10,000 products for sale as well as extensive
`
`
`
`3
`
`

`

`consumer features, such as news, chat, messages, and product information for
`
`people with disabilities. The company also provided technologies for display
`
`magnification and sound/audio adaptation through the Internet to make websites
`
`more accessible to persons with vision and hearing impairments. The company
`
`was funded by leading venture capital firms.
`
`11. From 2001 to 2007, I was President and cofounder of CoAssure, Inc.,
`
`a California-based provider of Web-based technology services and solutions for
`
`automated telephony speech recognition and touchtone applications, serving
`
`multiple Fortune-500 companies.
`
`12.
`
`In 2009, I cofounded and have since been President of Rate Speeches,
`
`Inc., a California-based Internet company providing online services, resources, and
`
`technologies for creating, rating, evaluating, and enhancing public speaking,
`
`presentation, and communication skills. Rate Speeches also operates the
`
`ratespeeches.com website and the Speech Evaluator online software.
`
`13. Since moving to Silicon Valley in Northern California in 1981, I have
`
`worked on numerous technology products that have generated billions of dollars in
`
`sales.
`
`14.
`
`I hold a California community college lifelong computer science
`
`instructor credential. I have taught various data storage and computer technologies
`
`
`
`4
`
`

`

`to thousands of professional engineers and academic students in the United States,
`
`Europe, and Asia.
`
`15.
`
`In my work as an expert and consultant, I have examined, analyzed,
`
`and inspected numerous data storage systems, computer systems, software
`
`products, cell phone applications, tens of millions of lines of source code, and the
`
`frontend and backend software of more than 100 websites, including massive,
`
`highly-trafficked consumer and business websites.
`
`16. Through my education, industry and expert experience, and industry
`
`and expert knowledge, I have gained a detailed understanding of the technologies
`
`at issue in this case.
`
`17. My additional industry experience is in my curriculum vitae.
`
`18. My expert litigation support cases, including cases in which I have
`
`testified during the last four years as an expert, can be found in my curriculum
`
`vitae, which is Exhibit 2002.
`
`19. As such, I am qualified to provide opinions regarding the state of the
`
`art at the time the ’686 Patent was filed (which I understand to be no later than
`
`September 25, 2013, but claiming a priority date of December 4, 2003) and how a
`
`person of ordinary skill in the art (“POSITA”) at that time would have interpreted
`
`and understood the ’686 Patent.
`
`
`
`5
`
`

`

`20.
`
`I am being compensated for my work and any travel expenses in
`
`connection with
`
`this proceeding at my standard consulting rates.
`
` My
`
`compensation is in no way dependent on or contingent on the outcome of my
`
`analysis or opinions rendered in this proceeding and is in no way dependent on or
`
`contingent on the results of these or any other proceedings relating to the above-
`
`captioned patent.
`
`21. Although I am not rendering an opinion about the level of skill of a
`
`POSITA proffered by Petitioners, based on my professional experience, I have an
`
`understanding of the capabilities of a POSITA (as such a POSITA is defined by
`
`Petitioners). Over the course of my career, I have supervised and directed many
`
`such persons. Additionally, I myself, at the time the ’686 Patent was filed and at
`
`its priority date, qualified as at least a POSITA.
`
`II. MATERIALS REVIEWED
`
`22.
`
`In preparing this declaration, I reviewed the ’686 Patent, including its
`
`claims in view of its specification, the prosecution history of the ’686 Patent,
`
`various prior art and technical references from the time of the invention, and the
`
`IPR2020-01271 Petition (“1271 Petition”) and its exhibits (Ex. 1001 – Ex. 1034).
`
`III. LEGAL UNDERSTANDING
`
`23.
`
`I have worked with counsel in the preparation of this Declaration.
`
`Nevertheless, the opinions, statements, and conclusions offered in this Declaration
`
`
`
`6
`
`

`

`are purely my own and were neither suggested nor indicated in any way by counsel
`
`or anyone other than myself. I confirmed with counsel my understanding that an
`
`obviousness determination requires an analysis of the scope and content of the
`
`prior art, the differences between the prior art and the claims, the level of ordinary
`
`skill in the pertinent art at the time of the invention of the challenged patent, and an
`
`evaluation of any relevant secondary considerations.
`
`IV. CLAIM CONSTRUCTION
`
`24.
`
`I reviewed the comments in the Petition and Petitioners’ expert’s
`
`declaration (Ex. 1003) pertaining to claim “construction of the claims” of the ’686
`
`Patent. My understanding is simply that the claims should be construed in
`
`accordance with their plain and ordinary meaning in the context of the
`
`specification of the patent and its file history.
`
`A.
`
`Petitioner’s Construction of “Cached” Is Flawed
`
`25. Petitioner argues that “the ordinary meaning in the context of the 686
`
`Patent of "cached" is stored in storage that is more readily accessible by the user or
`
`user application than the original storage location.” Petition, 10.
`
`26.
`
`In my opinion, Petitioner’s construction of “cache” is flawed and
`
`improper.
`
`27. A POSITA would have known that cache storage is not merely any
`
`storage location “that is more readily accessible by the user or user application than
`
`
`
`7
`
`

`

`the original storage location.” Such construction omits three basic cache
`
`principles.
`
`28. First, cache storage is used to save information that may be needed
`
`multiple times (subsequent to initial access) in a more readily accessible location,
`
`eliminating the need to retrieve the data again from the original source of the
`
`information. In other words, storing information in cache, when the information is
`
`initially fetched, is intended not for the initial access to the information, but for
`
`subsequent access or accesses to that information. Petitioner’s construction omits
`
`this basic principle of cache.
`
`29. Second, cache storage includes a cache search mechanism invoked
`
`when information is needed. The cache search mechanism is used to determine if
`
`the requested information is in cache (cache hit) or not in cache (cache miss). If
`
`the information is not in cache, the information is fetched and stored in cache in
`
`anticipation of subsequent accesses to that information. Petitioner’s construction
`
`also omits this basic principle of cache.
`
`30. Third, cache storage includes a replacement algorithm, mechanism, or
`
`policy for replacing information in cache, such as least recently used (LRU)
`
`algorithm. Petitioner’s construction also omits this basic principle of cache.
`
`31. Petitioner’s own references for cache storage describe these three
`
`basic cache principles, namely that cache storage is used to save information that
`
`
`
`8
`
`

`

`may be needed multiple times (subsequent to initial access), that cache storage
`
`includes a mechanism to determine cache hit/miss, and that cache storage includes
`
`a replacement algorithm.
`
`32. Petitioner’s EX-1008 (Newton’s Telecom Dictionary) confirms that
`
`cache storage is used to save information that may be needed multiple times
`
`(subsequent to initial access), that cache storage includes a mechanism to
`
`determine cache hit/miss, and that cache storage includes a replacement algorithm.
`
`“A cache works like this. When the CPU needs data from memory,
`the system checks to see if the information is already in the cache. If it
`is, it grabs that information; this is called a cache hit. If it isn’t, it’s
`called a cache miss and the computer has to fetch the information by
`access the main memory or hard disk, which is slower. Data retrieved
`during a cache miss is often written into the cache in anticipation of
`further need for it.
`...
`Generally, when the cache is exhausted, it is flushed and the data is
`written back to main memory, to be replaced with the next cache
`according to a replacement algorithm.
`...
`The cache also will hold information that you recently accessed, in
`anticipation of your wanting to back up, or access it again.
`...
`Caching A process by which information is stored in memory or
`server in anticipation of next request for information.” EX-1008,
`Newton’s Telecom Dictionary, emphasis added
`
`33. Petitioner’s EX-1030 (Microsoft Press Computer Dictionary) also
`
`confirms that cache storage is used to save information that may be needed
`
`multiple times (subsequent to initial access) and that cache storage includes a
`
`mechanism to determine cache hit/miss.
`
`
`
`9
`
`

`

`“A special memory subsystem in which frequently used data values
`are duplicated for quick access. A memory cache stores the contents
`of frequently accessed RAM locations and the addresses where
`these data items are stored. When the processor references an address
`in memory, the cache checks to see whether it holds that address.
`If it does hold the address, the data is returned to the processor; if it
`does not, a regular memory access occurs.” EX-1030, Microsoft
`Press Computer Dictionary, emphasis added
`
`34. Petitioner’s omitting (from the cache storage construction) these three
`
`basic principles (that cache stores information that may be needed multiple times /
`
`subsequent to initial access, that cache storage includes a mechanism to determine
`
`cache hit/miss, and that cache storage includes a replacement algorithm) results in
`
`considering or deeming as cache any location that is “that is more readily
`
`accessible by the user or user application than the original storage location.” In
`
`other words, under such overly broad and flawed construction, any storage location
`
`(e.g., disk drive, random access memory, etc.) that stores the information and that
`
`is faster than the original source would constitute cache, even if the information is
`
`only transitorily and temporarily stored in that location and not saved for future
`
`hits, even if the location is never intended or designed to operate as cache, even if
`
`the location does not operate as cache (missing the three basic cache principles
`
`mentioned above), and even if the location entirely contradicts the three basic
`
`cache principles described earlier.
`
`35. Under Petitioner’s construction, other than the original location where
`
`a web page is stored at the web server, any storage location where the web page is
`
`
`
`10
`
`

`

`stored would constitute cache, because any such alleged storage location other than
`
`the original location is “that is more readily accessible by the user or user
`
`application than the original storage location.”
`
`36. For at least these reasons, in my opinion, Petitioner’s construction of
`
`“cached” as “stored in storage that is more readily accessible by the user or user
`
`application than the original storage location” is flawed and improper.
`
`37. For at least these reasons, in my opinion, Petitioner’s construction of
`
`the term “cached” as “stored in storage that is more readily accessible by the user
`
`or user application than the original storage location” is flawed and improper.
`
`38.
`
`I respectfully disagree with the PTAB’s Decision to adopt Petitioner’s
`
`construction of the term “cached” as “stored in storage that is more readily
`
`accessible by the user or user application than the original storage location.”
`
`Decision,
`
`39.
`
`In my opinion, the terms “cached” should be construed in accordance
`
`with their plain and ordinary meaning in the context of the specification of the ’686
`
`Patent and its file history.
`
`V. OPINIONS
`
`40. Petitioners present two grounds under which claims of the ’686 Patent
`
`are purportedly invalid; in particular, Petitioners contend that Claims 1-4 and 8-11
`
`are obvious over McCown (Ex. 1005) in view of Dutta (Ex. 1006) and contend that
`
`
`
`11
`
`

`

`Claims 1-20 are obvious over McCown (Ex. 1005) in view of Dutta (Ex. 1005) and
`
`Coates (Ex. 1007). Petition, 7.
`
`41.
`
`In my opinion, as described below, Petitioners have not established a
`
`reasonable basis to conclude that the claims of the ’686 Patent are obvious.
`
`A.
`
`Independent Claim 1 Is Not Obvious in View of McCown and
`Dutta
`
`42. Petitioners contend that independent Claim 1 is obvious over
`
`McCown (Ex. 1005) in view of Dutta (Ex. 1006). Petition, 7. I disagree for the
`
`reasons outlined below.
`
`a. Independent Claim 1: Utilizing Download Information for the
`File Cached in the Wireless Device
`
`43.
`
`Independent Claim 1 of the ’686 Patent recites utilizing download
`
`information for the file cached in the wireless device.
`
`“1. A server for delivering storage service, comprising: ... the storing
`of said data including to download a file from a remote server across a
`network into the first one of the storage spaces through utilizing
`download information for the file cached in the first wireless device in
`response to the user from the first wireless device performing the
`operation for downloading the file.” ’686, Claim 1
`
`
`i. Responses to the Board’s Decision Regarding Utilizing
`Download Information for the File Cached in the
`Wireless Device
`
`44.
`
`I respectfully disagree with the conclusions in the PTAB’s Decision
`
`regarding the limitation of utilizing download information for the file cached in the
`
`wireless device.
`
`
`
`12
`
`

`

`1. McCown’s Web Page Display vs. ’686 Cache
`Storage
`
`45.
`
`I respectfully point out that the Decision generally appears to overlook
`
`the fact that McCown teaches obtaining the URL(s) (download information) from
`
`the wireless device web page display, which is significantly different from and
`
`opposite to obtaining the download information from the wireless device cache
`
`storage, as recited in the limitations of the independent claims of the ’686 Patent.
`
`46.
`
`I elaborate further on this point in later sections (§§ V.A.a.x-
`
`V.A.a.xix) of this declaration.
`
`2. Dutta’s Conventional Browser Cache vs.
`’686 Non-Conventional Cache Storage Usage
`
`47.
`
`I respectfully point out that the Decision generally appears to overlook
`
`the difference between the conventional browser cache in the combination of
`
`McCown and Dutta versus the non-conventional use of wireless device cache
`
`storage in the ’686 Patent.
`
`48. Dutta discloses a generic browser cache. Dutta does not disclose or
`
`imply download information, does not disclose or imply any purpose for the Dutta
`
`browser cache, and does not disclose or imply storing download information in the
`
`Dutta browser cache.
`
`49. McCown does not disclose or imply cache and does not disclose or
`
`imply storing download information in cache.
`
`
`
`13
`
`

`

`50. A POSITA would not have been motivated to combine McCown with
`
`Dutta and would not have been motivated to store McCown’s download
`
`information in cache (whether Dutta’s cache or other cache) at the wireless device,
`
`because McCown retrieves all the download information at once and sends it to the
`
`storage server.
`
`51.
`
`In other words, Dutta discloses a generic, conventional browser cache,
`
`and the combination of McCown and Dutta would also produce a generic,
`
`conventional browser cache. In contrast, the ’686 Patent recites non-conventional
`
`usage of cache storage at the wireless device, namely storing and subsequent
`
`retrieving of download information for out-of-band operation. The combination of
`
`McCown and Dutta does not disclose this non-conventional cache application. In
`
`addition, in my opinion, a POSITA would not have found obvious the ’686 non-
`
`conventional use of the wireless device cache for storing and subsequent retrieving
`
`of download information for out-of-band operation.
`
`52. Even assuming, arguendo, that a POSITA would have been motivated
`
`to combine Dutta’s cache with McCown, the purpose of such purported cache
`
`combination would still be to obtain / retrieve the download information again. In
`
`such combination, during a purported subsequent retrieval of the web page
`
`containing the URLs (download information), according to McCown’s teachings,
`
`McCown would again obtain the download information during the subsequent
`
`
`
`14
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`

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`retrieval from the web page display, not from cache. Thus, the combination of
`
`established functions from McCown and Dutta would not generate the same result
`
`as the ’686 Patent recites.
`
`53.
`
`I elaborate further on this point in later sections (§§ V.A.a.x-
`
`V.A.a.xix) of this declaration.
`
`54. Even assuming, arguendo, that a POSITA would have been motivated
`
`to combine Dutta’s cache with McCown, in my opinion, in 2003, a POSITA would
`
`have understood that combining McCown and Dutta would have required major
`
`architectural changes to McCown and Dutta.
`
`55. For example, McCown requires software on the client wireless device
`
`to emulate a hard disk drive that is actually located on a storage server (e.g.,
`
`McCown at 9:14-18, 15:27-16:4) and requires the software to communicate with
`
`the web browser to support the operations of drag-and-drop and copy-and-paste.
`
`However, in the purported combined system of McCown and Dutta, all these
`
`functions would need to be modified and adapted. Such undertaking would have
`
`discouraged a POSITA from combining McCown and Dutta.
`
`56.
`
`I elaborate further on the above points in later sections (§§ V.A.a.vi-
`
`V.A.a.ix) of this declaration.
`
`
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`15
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`3. Response to PTAB Decision, 25-26
`
`57. The PTAB Decision states that “Patent Owner, however, does not
`
`address Petitioner’s contention that “[a] Skilled Artisan would understand that the
`
`use of a browser cache in wireless devices was well-known in the art by 2003 and
`
`would have been motivated to use one in the browser of McCown in order to
`
`provide for the faster retrieval of information.” Decision, 25-26
`
`58.
`
`I respectfully disagree that McCown, alone and/or in combination
`
`with Dutta, teaches utilizing download information for the file cached in the
`
`wireless device.
`
`59.
`
`In my opinion, Petitioner’s contention that “[a] Skilled Artisan would
`
`understand that the use of a browser cache in wireless devices was well-known in
`
`the art by 2003 and would have been motivated to use one in the browser of
`
`McCown in order to provide for the faster retrieval of information” is immaterial to
`
`and does not render obvious the limitation of utilizing download information for
`
`the file cached in the wireless device. The reasons are summarized below in the
`
`following paragraphs and elaborated in later sections (§§ V.A.a.ii-V.A.a.xxi) of
`
`this declaration.
`
`60. The difference between the ’686 and Petitioner’s references (McCown
`
`alone and/or in combination with Dutta) is not whether Petitioner’s references
`
`disclose cache storage. Likewise, the difference between the ’686 and Petitioner’s
`
`
`
`16
`
`

`

`references (McCown alone and/or in combination with Dutta) is not whether a
`
`POSITA would have known about browser cache in wireless devices and would
`
`have been motivated to use a browser cache in the browser of McCown in order to
`
`provide for the faster retrieval of information. Rather, a key difference between
`
`the ’686 Patent and Petitioner’s references is whether the download information is
`
`stored in the wireless device cache (for subsequent retrieval) and subsequently
`
`obtained / retrieved from the wireless device cache.
`
`61.
`
`Independent Claim 1 of the ’686 Patent recites “utilizing download
`
`information for the file cached in the first wireless device,” which requires storing
`
`the download information in the wireless device cache (for subsequent retrieval)
`
`and requires subsequently obtaining / retrieving the download information from the
`
`wireless device cache.
`
`62. Petitioner’s references do not disclose storing
`
`the download
`
`information in the wireless device cache (for subsequent retrieval) and do not
`
`disclose subsequently obtaining / retrieving the download information from the
`
`wireless device cache.
`
`63. Furthermore, in my opinion, a POSITA would not