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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. 9,239,686
`Inventor: Sheng Tai Tsao
`
`SYSTEM AND METHOD FOR WIRELESS DEVICE ACCESS TO
`EXTERNAL STORAGE
`________________________
`Inter Partes Review No. IPR2020-01271
`________________________
`PETITIONERS’ REPLY BRIEF
`________________________
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`Title:
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`Petitioners’ Reply in IPR2020-01271
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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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`3.
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`Utilizing download information .................................................. 1
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`Cached ......................................................................................... 2
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`Allocating exclusively ................................................................ 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 ........................................................ 4
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`2. McCown/Dutta Satisfy the “transmitting” Claim Language .... 12
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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 ................................................................... 14
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`4. McCown/Dutta Satisfies the “Allocating Exclusively” Claim
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`Language. .................................................................................. 17
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`5.
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`The Petition Demonstrated The “Allocating Exclusively”
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`Language Would Have Been Obvious ...................................... 19
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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 ................................................................................ 21
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`1.
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`Commercial Success ................................................................. 21
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`2.
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`Licensing ................................................................................... 24
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`III. CONCLUSION .............................................................................................. 25
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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) .......................................................................... 17
`Arendi S.A.R.L. v. Apple Inc., et al.,
`832 F.3d 1355 (Fed. Cir. 2016) ............................................................................ 8
`Caterpillar Inc. v. Wirtgen Am., Inc.,
`IPR2017-02186, Paper 10 ................................................................................... 15
`Custom Accessories v. Jeffrey-Allan Indus.,
`807 F.2d 955 (Fed. Cir. 1986) ............................................................................ 21
`Ericsson Inc. v. Intellectual Ventures I LLC,
`890 F.3d 1336 (Fed. Cir. 2018) ................................................................ 1, 11, 18
`Fox Factory, Inc. v. SRAM,
`LLC, 944 F.3d 1366 (Fed. Cir. 2019) ................................................................. 23
`KSR Intern. Co. v. Teleflex Inc.,
`127 S.Ct. 1727 (2007) ........................................................................................... 8
`Merck & Cie v. Gnosis S.P.A.,
`808 F.3d 829 (2015) ............................................................................................ 25
`In re Rouffet,
`149 F.3d 1350 (Fed. Cir. 1998) .......................................................................... 26
`Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530 (Fed. Cir. 1983) .......................................................................... 26
`Tokai Corp. v. Easton Enters., Inc.,
`632 F.3d 1358 (Fed. Cir. 2011) .................................................................... 22, 25
`Transocean Offshore Deepwater v. Maersk Drilling,
`699 F.3d 1340 (Fed. Cir. 2012) .................................................................... 22, 23
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`Statutes
`35 U.S.C. §102(e) .................................................................................................... 21
`Regulations
`37 C.F.R. §42.65(a) .................................................................................................... 1
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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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`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, 6, which is nearly identical to the Board’s interpretation
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`of the “utilizing information …” portion of that same claim language, Inst. Dec.,
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`12. 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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`Those two phrases are not the same thing, as nothing in the words “download
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`information” limits the claim to information “needed” to perform a download (as
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`opposed to information simply “utiliz[ed]” to perform such a download, which is
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`what the claim says), and “information needed to download a file” could include
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`all kinds of information never hinted at in the patent, e.g., checksum information,
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`decryption codes, account numbers. Synkloud does not justify switching in its
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`“needed to download” language or explain why its interpretation should be used
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`instead of the Board’s. Its interpretation should be rejected.1
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`Cached
`2.
`Synkloud also argues against an interpretation of the noun “cache,” POR, 7-
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`10, even though the Petition proposed an interpretation of the transitive verb
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`“cached,” Pet., 6-10, which is the actual word used in the claims, e.g., EX1001,
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`6:36. Synkloud does not propose its own interpretation, but cites the testimony of
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`its expert stating that a cache is a mechanism used to save information that may be
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`needed multiple times, and that “includes a cache search mechanism … [and] … a
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`replacement algorithm.” POR, 8. The expert cites only a dictionary stating how a
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`cache purportedly “works,” EX2014,¶¶28-33, not what a “cache” is, let alone what
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`the claim word “cached” means.
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`Moreover, the Petition demonstrated that McCown inherently discloses a
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`cache and Dutta expressly discloses one. Pet., 38-40. Thus, to the extent the
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`1 The Petition however demonstrated that McCown/Dutta stored a web page of
`URLs used to download a file from a remote server. Pet., 33-46. Such URLs
`would be “information needed to download a file from a remote server” because a
`URL is the Internet address of the file to be downloaded. Pet., 36-37; EX1030,
`487.
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`2
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`expert’s testimony could be interpreted to set forth characteristics that define a
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`cache, then the caches of McCown and Dutta would include those characteristics
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`too. To the extent those characteristics are not necessarily part of every cache,
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`they are not properly included in a construction of that term, since they do not
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`define what a cache is and are not required by the intrinsic evidence.2
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`Allocating exclusively
`3.
`Synkloud also argues that the “allocating exclusively a first one of the
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`storage spaces of a predefined capacity to a user of a first wireless device” claim
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`language should be construed to require “deciding or setting in advance by a server
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`an amount of storage space exclusively to a user of a wireless device,” POR, 10-
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`11, but that would be a rewriting of the claim language. The claims require that
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`the server perform the allocating of a storage space; they do not require that the
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`server perform the “predefining.” EX1001, 7:24-26. The claims are silent as to
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`what entity “predefines” the capacity of the storage spaces that are eventually
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`allocated by the server.
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`Indeed, Synkloud itself argues that “predefining an amount of storage” is
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`something different from “allocating” storage: “Petitioners conflate predefining
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`
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`2 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, 22,
`but Synkloud’s expert confirms that is exactly what a cache is for. EX2014,¶28.
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`capacity (predefining an amount of storage) and allocating (reserving or assigning)
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`storage.” POR, 11. Synkloud thus equates the claim term “allocating” with
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`“reserving or assigning,” but in its proposed claim interpretation it construes
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`“allocating” to mean “deciding or setting in advance,” which has a different
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`meaning. Its analysis should be rejected.
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`B.
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`The Challenged Claims Are Unpatentable
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`1. McCown/Dutta Satisfy the “download a file from a remote
`server …” Claim Language
`Synkloud argues the combination of McCown and Dutta does not satisfy the
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`“download[ing] a file from a remote server …” claim language, POR, 15-18, but
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`its reasoning ignores the disclosure of those references and the Petition’s analysis.
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`a.
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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, 16, 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, 16-17. Synkloud repeats this argument at POR, 18-19, 21, 23-24,
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`and 25. That argument ignores 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., 37, citing EX1005, 10:18-27,
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`which would necessarily mean it is stored at the user site in some manner.
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`McCown further states that “the functionality of the user site software application
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`may be implemented as part of a browser,” EX1005, 9:22-23; Pet., 38.3 Dutta
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`discloses a browser cache, Pet., 40, citing EX1006, ¶[0029], which a Skilled
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`Artisan would understand to be a storage device for caching (i.e., storing) web
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`pages, Pet., 9, 40-42, EX1010, ¶[0002]; EX1011, 1:66-2:1; EX1003,¶¶215-218.
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`Thus, McCown discloses storing “download information” – a webpage of URLs –
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`at the user site/browser, and Dutta discloses a browser cache for storing web pages.
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`Combining the two satisfies the claim phrase “download information for the file
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`cached in the first wireless device.”
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`b.
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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 “information for the file”) “from the wireless device web page
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`display,” but not from cache storage. POR, 18, citing EX2014,¶45. It repeats this
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`argument at POR, 20, 24, 25-26, 33, and 34.
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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. The argument is, in any event,
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`based on a misunderstanding of the petition, which demonstrated that it would
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`3 In this brief, all emphasis had been added unless otherwise indicated.
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`have been obvious to store McCown’s webpage of URLs (i.e., the claimed
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`“download information”) in cache storage of McCown (e.g., as supplied by Dutta)
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`and later retrieve one or more of those URLs from the cache for transmission to the
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`storage server. Pet., 42. Thus, in the combination analyzed in the petition, the
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`URLs are obtained from the cache, not from the display.
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`c. McCown/Dutta Is Not Limited to a User Downloading
`All Available Files at Once, or Accessing the Webpage
`Only Once
`Synkloud next objects to the petition’s showing that it would have been
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`obvious to store the “download information” – i.e., the web page of URLs – in a
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`browser cache because McCown supposedly “retrieves all the download
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`information at once and sends it to the storage server,” so the download
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`information would not be needed again. POR, 19. Synkloud repeats this argument
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`at POR, 21-22, 24, 28, 35, 36, 37.4 It similarly contends that McCown or Dutta do
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`not disclose the user re-opening the web page of URLs or a reason why a user
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`4 Synkloud cites its expert’s assertion at EX2014,¶50 as support for this argument,
`POR, 19, but that testimony cites no portion of McCown that includes such a
`disclosure or explains why the expert thinks that is the case. 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,
`EX1005, 11:12-14, which clearly means the user can select one or more.
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`would. POR, 25, 33, 34, 37. In that same vein, Synkloud argues that McCown
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`discloses the user accessing the URLs only once, so there would be no need to
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`cache them. POR, 32, 36. These arguments once again ignore the record.
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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 for 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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`webpage in a cache. Pet., 43. 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 Intern. 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., et al., 832 F.3d
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`1355, 1361 (Fed. Cir. 2016). And, the Petition cited ample other prior art evidence
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`of that motivation that Synkloud does not dispute. Pet., 41-45.
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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,¶28 (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,¶184. That is the very purpose of a cache. EX1010, ¶[0002].
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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 ’686 Patent,” POR, 18-19, which it describes as
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`“namely storing and subsequent retrieving of download information for out-of-
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`band operation,” POR, 19. But the claims require only that the download
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`information be “cached,” e.g., EX1001, 6:36, and say nothing any “non-
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`conventional” use of cache storage.5
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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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`5 The 686 Patent refers to an optional “out-band approach,” EX1001, 2:52-55,
`without ever explaining what that phrase means. The claims don’t recite the
`phrase “out-band” either, so that concept cannot distinguish the claims from the
`prior art.
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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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`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, 20.
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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, McCown discloses hard disk emulation, EX1005, 10:4-6, 16:2-4,
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`16:23-17:3, and web browsers that included a cache, EX1003,¶¶127, 235; EX1005,
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`8:5-10; EX1024, 7:8-10; EX1025, 3:3-8, so McCown’s hard disk emulation
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`already works with a browser cache in the system. Similarly, for the claimed drag-
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`and-drop/copy-and-paste functionality, the Petition relied on Coates for its file and
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`folder manipulation techniques, Pet., 62-74. Coates also includes a cache and uses
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`it with that functionality, EX1007, 3:22-38, 10:60-66, so Coates’s folder
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`manipulation functionality also already works with a cache in the system. It is
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`nonsense to suggest that simply storing a web page of URLs in a cache would by
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`itself break the functionality disclosed in these references, and neither Synkloud
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`nor its expert 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,¶¶47, 138; 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,¶¶137-138, a fact neither
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`Synkloud nor 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, 14-15. Those assertions are incorrect. The Petition
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`relied on specifically cited disclosures in McCown and Dutta, as well as the
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`detailed analysis of Dr. Houh and portions of eleven other pieces of evidence. Pet.,
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`15-46. That was far more than attorney argument or a conclusory statement, and
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`more 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 claims 2 and 14, POR, 25-31, but for the most part
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`Synkloud merely rehashes the erroneous arguments addressed above. It argues, for
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`example, that McCown does not disclose storing “download information” in a
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`cache, POR, 25, that in McCown the URLs are retrieved from the display of the
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`webpage, POR, 25-26, that Dutta does not disclose a reason for storing McCown’s
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`page of URL’s in the cache and that the page is “not needed past the initial
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`display,” POR, 28.
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`But those arguments have been shown to be erroneous above. See
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`§§II.B.1.a-II.B.1.c above. As demonstrated there and in the petition, in the
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`combination of McCown and Dutta the “download information” is stored in the
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`browser cache for multiple reasons, including because a use might choose to select
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`additional files for download after an initial selection. Pet., 36-45.
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`b.
`Synkloud Mischaracterizes The Analysis of the Petition
`Synkloud next attempts to show that Petitioner’s reading of the claims and
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`of McCown do not coincide, but it presents an inaccurate version of the petition’s
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`analysis. POR, 26-28. 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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`retrieves the download information from the currently displayed page …”.
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`POR, 27 (bold and underlining in original). That is not what McCown discloses
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`and not what was argued.
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`As demonstrated in the Petition and above in §II.B.1.b, in the cited
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`combination of McCown and Dutta, after the user selects files for download (i.e.,
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`not “immediately after receipt of the web page”), the appropriate URLs are
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`retrieved from the cached web page of URLs and sent to the storage site as a data
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`request. Pet., 41-43. Thus, in the combination of McCown and Dutta, the URLs
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`are retrieved from the cache, not “from the currently displayed page.” Pet., 42-43;
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`§II.B.1.b above.
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`c.
`Synkloud’s Precedent is Inapposite
`Synkloud next discusses precedent supposedly directed to the situation
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`where “a claim limitation is wholly absent from the teachings of the prior art.”
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`POR, 29-31. But that is not the case here, so those arguments and precedent are
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`inapposite. As demonstrated in the Petition and above in §II.B.1.a, McCown
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`discloses all elements of the independent claims except actually storing his
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`webpage of URLs in a cache. E.g., Pet., 15-46. Dutta discloses a browser cache, a
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`device known to be specifically designed for the storage of webpages. Pet., 13, 39-
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`45. Dutta thus merely provided the place to store the webpage of URLs that was
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`not expressly disclosed in McCown. As the Petition demonstrated, combining the
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`two references satisfies all elements of the claims, e.g., Pet., 15-46, and there were
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`ample reasons to make that combination, Pet., 40-45.6
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`3.
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`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
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`analysis that is based on its incorrect assumption regarding the level of ordinary
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`skill in the art.” POR, 31. It asserts that “Petitioners failed to provide any
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`evidence whatsoever” that combining McCown and Dutta would satisfy the claims,
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`POR, 31-32, and that the Petition supposedly makes only “conclusory arguments”
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`regarding obviousness, POR, 32, 43.
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`This is incorrect. The Petition’s analysis is supported by numerous citations
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`to evidence in the prior art, e.g., Pet., 15-46, which is the very opposite of improper
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`hindsight. Caterpillar Inc. v. Wirtgen Am., Inc., IPR2017-02186, Paper 10 at 26.
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`
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`6 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, 29-31. The
`petition did not rely on “common sense” for that purpose. Pet., 18, 27, 43.
`14
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`Petitioners’ Reply in IPR2020-01271
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`Moreover, Synkloud does not contest the level of 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., 41-45.
`
`b.
`Synkloud Rehashes It Erroneous Arguments a Third Time
`Synkloud next argues that the 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, 32. It also contends
`
`that “there is no reason for the user to go back to the page containing the URLs,
`
`since the user already sent the URLs of the desired files to the storage site,” POR,
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`33-34, and that the user will not need the URLs again, POR, 35.7 It then repeats
`
`the argument that the URLs of McCown are used “only once, including because all
`
`the files available for download are always downloaded in response to the user’s
`
`first access to the webpage of URLs. POR, 36-37. As demonstrated above, see
`
`
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`7 Synkloud misleadingly characterizes this passage as “Petitioners’ own description
`of McCown,” but then quotes from its expert’s declaration mischaracterizing the
`analysis in the petition. POR, 34, quoting EX2001,¶89.
`15
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`Petitioners’ Reply in IPR2020-01271
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`§§II.B.1.a-II.B.1.c, these arguments are incorrect and mischaracterize the
`
`combination of McCown/Dutta analyzed in the petition.8
`
`c.
`
`The Petition Provided Objective Evidence of Motivation
`to Combine and Reasonable Expectation of Success
`Synkloud next asserts that the Petition failed to provide objective evidence
`
`of motivation to combine and reasonable expectation of success. POR, 38. That is
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`incorrect, as such objective evidence was cited in the Petition, including EX1010
`
`through EX1013. Pet., 39, 42. Moreover, web caches were known, EX1010; and
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`McCown, Dutta and the other prior art references supporting the combination are
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`all issued U.S. patents, and therefore presumptively self-enabling. Amgen Inc. v.
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`Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003). Further, Dr.
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`Houh explained that “a Skilled Artisan could therefore have readily made this
`
`combination without undue effort or experimentation.” EX1003,¶137.
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`Moreover, Synkloud does not contest (and therefore concedes) the additional
`
`reasons set forth in the Petition showing that caching McCown’s web page of
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`
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`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, 32-33. The Petition argued that
`storing the URLs in a cache would make them more readily accessible to the user
`application at the user site, not that doing so would permit the human user to select
`from them more easily from the screen. Pet., 41, 43.
`16
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`Petitioners’ Reply in IPR2020-01271
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`URLs would have been obvious, including because to do so would “provide the
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`user with a faster method of remote storage,” Pet., 43, and was only the
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`arrangement of old elements with each performing the same function it had been
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`known to perform and yielding no more than one would expect from such an
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`arrangement, Pet., 44-45.
`
`4. McCown/Dutta Satisfies the “Allocating Exclusively” Claim
`Language.
`a.
`Synkloud Provides No Explanation to Support Its
`Assertions
`Synkloud argues that McCown/Dutta does not satisfy the “allocating
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`exclusively” language of the claims. POR, 38-42. It argues For example that
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`McCown’s disclosure of account information would not have satisfied Synkloud’s
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`erroneous interpretation of this claim language. POR, 40. And while it cites the
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`declaration of its expert submitted with the preliminary reply, the expert provides
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`no additional explanation either, but instead baldy states his conclusions. EX2001,
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`¶¶179-181. That kind of ipse dixit analysis cannot support the fact-finding of the
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`Board.. Ericsson, supra.
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`As shown, McCown discloses “storage space accounts” at a storage server
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`that a user may log onto with user identification and password and thereafter store
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`files into remotely. Pet., 20-21. The Petition demonstrated that (1) a Skilled
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`Artisan would understand that disclosure to mean that the storage site’s storage
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`17
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`Petitioners’ Reply in IPR2020-01271
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`capacity had been partitioned and allocated and therefore that the user had been
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`exclusively allocated “a storage space of a predefined capacity,” (2) that it would
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`have been obvious to include that limitation in McCown, and (3) that it also would
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`have been obvious in view of McCown combined with Dutta. Pet., 20-26.
`
`b.
`
`The Claims Do Recite “When” The Storage Capacity
`Must Be Defined
`Synkloud also argues that “Dutta does not compensate for McCown’s
`
`deficiencies” because Dutta supposedly does not specify “when” the “certain
`
`amount” of capacity allocated to the user is defined and because it may be
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`allocated “after user registration is complete.” POR, 40-41.
`
`That is incorrect, as Dutta discloses that “the user is allocated a certain
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`amount of online storage space 336 in which the user may store various types of
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`data.” EX1006, ¶[0038]. Thus, Dutta discloses that the storage is allocated before
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`the user may store data in it, and therefore the storage capacity is “predefined” in
`
`the sense that it is defined before the user stores data into it.
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`Moreover, neither the claims nor Synkloud’s proposed claim interpretation
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`require that the “predefined capacity” of the claims be allocated or defined before
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`user registration. Indeed, the 686 Patent does not even use the phrase “user
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`registration,” and the claims merely say “predefined.”
`
`c.
`
`The Claims Do Not Require The Server to Predefine The
`Capacity
`
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`18
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`Petitioners’ Reply in IPR2020-01271
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`Synkloud next argues that “Dutta does not specify who (what entity) defines
`
`the ‘certain amount’ of storage space.” POR, 41. The claims, however, do not
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`require any particular “entity” to define the storage capacity that is allocated.
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`Claim 9, 12 and 20 require that the server include program instructions for
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`allocating that storage capacity. EX1001, 7:6-10, 7:24-26, 8:35-40.
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`d. McCown/Dutta Satisfies “Predefined Capacity”
`Synkloud next argues the term “predefined capacity” is different from
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`“capacity,” and that neither McCown nor Dutta disclose the former. POR, 42.
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`Once again, this is just an ipse dixit assertion, which should be ignored. Moreover,
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`the Petition demonstrated that in
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