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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`Microsoft Corporation and HP Inc.,
`
`Petitioners,
`
`v.
`
`SYNKLOUD TECHNOLOGIES, LLC,
`
`Patent Owner.
`
`
`
`
`
`IPR2021-01271
`U.S. Patent No. 9,239,686
`
`
`
`PATENT OWNER SUR-REPLY
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`

`

`Contents
`
`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 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 (independent claim 1 and dependent claim 13). ..................................... 3
`
`b. Allocating exclusively a first one of the storage spaces of a predefined capacity to a
`user of a first wireless device (independent claim 12 and dependent claims 9 and 20). .. 5
`
`III. None Of The Claims Would Have Been Obvious Over The Combination Of
`McCown and Dutta Under The Proper Claim Construction. ............................................... 8
`
`A. The Combination of McCown/Dutta Would Not Have Taught “download[ing] 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.” ............ 8
`
`B. The Combination of McCown/Dutta Would Not Have Taught “transmitting the
`cached downloading information [obtained for a file from a remote server] to the
`server,” As Recited in Dependent Claim 2 And As Similarly Recited In Dependent
`Claim 14. ........................................................................................................................... 9
`
`C. The Combination of McCown/Dutta Would Not Have Taught “allocating
`exclusively a first one of the storage spaces of a predefined capacity to a user of a first
`wireless device,” As Recited in Independent Claim 12 and As Similarly Recited In
`Dependent Claim 9. ......................................................................................................... 11
`
`D. Petitioners Failed To Show That A POSITA Would Have Been Motivated To
`Modify McCown/Dutta To Include the Absent Claim Limitations. .............................. 13
`
`E. A POSITA Would Not and Could Not Have Combined McCown and Dutta and
`Reasonably Expect Success. ........................................................................................... 16
`
`F. Objective Indicia Indicia of Non-obviousness Support The Patentability Of The
`Claims Of The ’254 Patent. ............................................................................................ 20
`
`
`
`
`
`
`
`i
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`

`

`I.
`
`Introduction.
`
`Petitioners’ Reply, like their Petition, relies on their overly-broad claim
`
`construction of the claim term “cached” and their unsupported position that “[i]n
`
`McCown/Dutta, the [d]ownload [i]nformation is [r]etrieved from the [c]ache, [n]ot [f]rom
`
`a [w]ebpage” display. Reply, 5. But their primary prior art reference, McCown, makes
`
`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, §
`
`III.A.
`
`Petitioners’ construction of the claim term “cached” as “stored in storage that is
`
`more readily accessible by the user or user application than the original storage location”
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`(Petition, 10) is overly broad. Under Petitioners’ construction, storing data in any
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`memory (e.g., disk drives, flash drive) at or near a user’s device would qualify as
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`“cached” because any such memory is “more readily accessible by the user or user
`
`applications than the original storage location” (i.e., the web site server). There is no
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`intrinsic or extrinsic evidence in the record indicating that memory such as a disk drive,
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`flash drive, etc., would be considered by a person or ordinary skill in the art (POSITA) to
`
`be a cache.
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`
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`
`1
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`

`

`Under the proper claim construction as set forth by Patent Owner (PO), none of the
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`claims of the ’686 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
`
`absent limitations would have been obvious. K/S HIMPP v. Hear-Wear Technologies,
`
`LLC, 751 F.3d 1362, 1366 (Fed. Cir. 2014) (“an assessment of basic knowledge and
`
`common sense as a replacement for documentary evidence for factual findings lacks
`
`substantial evidence support.”). But Petitioners make no attempt in their Reply to provide
`
`the documentary evidence required to establish obviousness. Nor do they attempt to
`
`argue that K/S HIMPP is not the law.
`
`Instead, Petitioners blithely rely on “common sense” to add the missing limitations
`
`to their prior art combination (Reply 8, 19) and restate their sole reliance on their expert
`
`declaration to advance the theory that the limitations that are absent from the prior art
`
`would have been obvious. See Reply, 7-25. For this very reason, Petitioners’ argument
`
`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
`
`respond to the testimony of SynKloud’s expert Mr. Jawadi explaining why a POSITA
`
`would not have been motivated to modify the prior art to include the missing claim
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`
`
`2
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`

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`limitations.
`
`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 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 (independent claim 1 and dependent
`claim 13).
`
`As explained by PO, the proper construction of this claim limitation requires
`
`“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, 6.
`
`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 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).
`
`EX1001, 5:39-43.
`
`Both the claim language itself and the Specification support PO’s proposed
`
`
`
`3
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`

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

`

`Thus, Petitioners’ construction neglects to consider that a POSITA would have
`
`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 a cache because any such memory is “more readily
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`accessible by the user or user applications than the original Internet storage location”
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`(i.e., the web site server). And there is no intrinsic or extrinsic evidence in the record
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`indicating that memory such as a disk drive, flash drive, etc., would have been considered
`
`by a POSITA to be a cache.1
`
`b. Allocating exclusively a first one of the storage spaces of a predefined
`capacity to a user of a first wireless device (independent claim 12 and
`dependent claims 9 and 20).
`
`As explained by PO, the proper construction of this claim limitation “requires
`
`deciding or setting in advance by a server an amount of storage space exclusively to a
`
`
`1 Petitioners’ argument that SynKloud “does not propose its own interpretation” and does
`
`not describe “what a ‘cache’ is, let alone what the claim word ‘cached’ means” (Reply 2)
`
`is demonstrably false. The construction of “cache” proposed by Petitioners’ and relied
`
`upon by the Board is overly broad. And SynKloud provided a detailed explanation about
`
`the features that memory would need to have to be considered by a POSITA to be a cache
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`(e.g., a search mechanism and a replacement algorithm). PO Response, 7-10.
`
`
`
`5
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`

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`user of a wireless device.” PO Response, 10.
`
`In response, Petitioners build and then knock down a straw man argument that
`
`SynKloud never made. According to Petitioners, SynKloud’s attention to the plain and
`
`ordinary meaning of this claim limitation as understood by a POSITA means that
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`SynKloud’s construction is a “rewriting of the claim language.” Reply, 3. But this is
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`plainly not so.
`
`SynKloud agrees with and endorses the Federal Circuit’s prohibition against
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`rewriting claims. But it is simply not relevant here. SynKloud does not make the
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`argument prohibited by the Federal Circuit. Rather, SynKloud explains that its
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`construction is consistent with the plain and ordinary meaning as understood by a
`
`POSITA. As explained by Mr. Jawadi, a POSITA would have understood that
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`predefining capacity is different than allocating storage:
`
`a POSITA would have understood the predefining capacity to mean defining
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`(i.e., deciding or setting in advance) the amount of storage before the storage
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`is allocated or assigned to the user (EX2014, ¶ 242);
`
`a POSITA would not have conflated predefining capacity (predefining an
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`amount of storage before the storage is allocated, reserved or assigned) and
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`allocating (reserving or assigning) storage (which happens later). (id. at ¶
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`243).
`
`Indeed, the prefix “pre” in “predefined” means “before.”2 Moreover, the claims explicitly
`
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`2 Petitioners’ allegations that “Synkloud thus equates the claim term ‘allocating’ with
`
`
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`6
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`

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`recite that the assigning of “storage spaces of a predefined capacity” is done by a
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`“server,” not by the user. EX1001, 7:6-9).
`
`The Specification of the ’686 patent confirms the plain and ordinary meaning that
`
`an amount of storage space is defined in advance to a user of a wireless device:
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`Each server unit (e.g., the server 3 of the FIG. 2) partition[s] its storage
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`system into volume and each of the volumes will have multiple GB in size.
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`Therefore, a user of each of the wireless devices can be exclusively assigned
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`for access to a specific storage volume in the server unit.
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`Id. at 2:50-53.
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`Petitioners’ expert did not respond to Mr. Jawadi’s explanation of how a POSITA
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`would have understood this claim limitation—even though he had the opportunity to do
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`so in the declaration that was filed with its Reply.
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`SynKloud’s construction should be adopted by the Board. Petitioners do not
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`propose a different construction for this limitation. See Reply, 3-4.
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`
`
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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,’” (Reply 4) is a gross
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`misrepresentation of SynKloud’s claim construction argument. SynKloud explained—
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`with support from the claim language, the Specification, and expert testimony as to how a
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`POSITA would have understood the claims—that the prefix “pre” in the claim term
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`“predefined” means that the storage is set in advance and that the claimed “predefining
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`capacity” is very different than allocating storage. PO Response, 10-11.
`
`
`
`7
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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 across a network into the first
`one of the storage spaces through utilizing download information for the
`file cached in 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 first wireless device” 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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`5-6), in fact, fails to identify where McCown or Dutta discloses using information from a
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`cache in a wireless device to download a file. The heading is a canard. It does not reflect
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`the content of Petitioners’ argument in the body of the section. Indeed, Petitioners fail to
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`identify the portions of either McCown or Dutta that disclose this claim limitation. See
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`Ibid. It is little wonder why. “McCown does not even mention the term cache.” EX2014,
`
`¶ 123. Petitioners did not point to the teachings of Dutta that provide the disclosure that is
`
`missing from McCown. See Petition, 40-45; Reply, 5-9. Indeed, as explained by Mr.
`
`Jawadi, Dutta does not explain “how the data in the browser cache may be used, let alone
`
`that the cache contents are used ‘to download a file from a second server across a
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`network into the remote storage space through utilizing download information for the file
`
`
`
`8
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`

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`cached in the first wireless device,’ as recited in Claim 1.” EX2014, ¶ 125.
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`Thus, Petitioners’ arguments miss the mark entirely and are not commensurate
`
`with the scope of the claims of the ’686 patent. All the claims require much more than a
`
`mere cache; they require “utilizing download information for the file cached in the first
`
`wireless device.” EX1001, 6:35-38. The mere mention of a cache in Dutta would not
`
`have taught that information from the cache is utilized to download a file from a remote
`
`server to a storage server. Indeed, Petitioners asserted that “source code … would be
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`necessary to determine what gets stored in cache and what does not.” IPR2020-00316,
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`Paper No. 32 (December 14, 2020), 23 (emphasis added). And Petitioners did not present
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`any source code for the web browsers on which they rely for this claim limitation. Reply,
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`5-9.
`
`B. The Combination of McCown/Dutta Would Not Have Taught
`“transmitting the cached downloading information [obtained for a file
`from a remote server] to the server,” As Recited in Dependent Claim 2
`And As Similarly Recited In Dependent Claim 14.
`
`As explained in detail in the PO Response (25-28), the claim limitation quoted
`
`above is wholly absent from the combination of McCown and Dutta. And
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`Petitioners failed to provide any documentary evidence showing that the absent
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`limitation would have been obvious. Ibid.
`
`In response, Petitioners assert that “in the [McCown/Dutta] combination
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`analyzed in the petition, the URLs are obtained from the cache, not from the
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`display.” (Reply, 6 (emphasis omitted)). But Petitioners failed—as they did in their
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`
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`9
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`

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`Petition—to identify the locations in McCown/Dutta that would have taught this
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`claim limitation. Indeed, McCown does not even mention a cache. And Dutta does
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`not make any mention of how any of the data in its cache would be used, let alone
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`that download information in the cache of a wireless device would be used remotely
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`from the wireless device to download a file from a second server (e.g., a web site) to a
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`remote storage space. EX2014, § V.A.a.
`
`Moreover, even if McCown were modified to include a cache, the URLs for
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`files selected from the displayed web page would be utilized from the web page
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`display, not from the cache. McCown repeatedly discloses that the files to be saved
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`to the storage site are selected by the user from a web page displayed on the user’s
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`device:
`
`Referring to FIG. 3, selection may be accomplished using an input
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`device 132, such as a mouse, to graphically choose one or more files.
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`from the displayed web page, as shown in block 300 (EX1005, 11:4-9);
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`
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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-
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`up window, the client 120 selects a command titled "Save to Soft-Drive"
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`with a left button on the mouse … User site software application 152 is
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`operational to accept the URL of the selected file 112 from the browser
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`136 through the operating system. Id. at 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:
`
`
`
`10
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`

`

`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.
`
`EX2014, ¶ 45. Petitioners’ expert did not even attempt to explain why Mr. Jawadi is
`
`mistaken; he did not file a supplemental declaration with Petitioners’ Reply. And
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`Petitioners and their expert failed—in both the Petition and Reply—to provide any
`
`documentary evidence indicating that an operating system retrieves a URL for a file
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`selected from a web page from a browser’s cache.
`
`C. The Combination of McCown/Dutta Would Not Have Taught “allocating
`exclusively a first one of the storage spaces of a predefined capacity to a
`user of a first wireless device,” As Recited in Independent Claim 12 and As
`Similarly Recited In Dependent Claim 9.
`
`As explained supra § II.A, the proper construction of this claim limitation requires
`
`“deciding or setting in advance by a storage server an amount of storage server an
`
`amount of storage space exclusively to a user of a wireless device.” PO Response, 38.
`
`Petitioners state that “SynKloud’s Claim Construction Is Legally Erroneous” (Reply, 1)
`
`but does not propose a construction to use instead. See Reply, 3-4. Indeed, Petitioners
`
`claim construction analysis is flawed because it neglects to consider that the prefix “pre”
`
`in the claim term “predefined” means that the capacity must be assigned in advance.
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`Supra, § II.A.
`
`The sole sentence in Dutta relied upon by Petitioners (Reply, 18, citing EX1006, ¶
`
`
`
`11
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`

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`[0038]) for its obviousness argument does not relate to the “predefined capacity” claim
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`limitation. The sentence states only that “the user is allocated a certain amount of online
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`storage space 336 in which the user may store various types of data.” Ibid.
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`There is a significant difference between allocating storage space as taught by
`
`Dutta and assigning a “predefined capacity” of storage “exclusively to a user,” as
`
`required by the claims of the ’686 patent. As explained by Mr. Jawadi, “[a] POSITA
`
`would have understood the predefining capacity to mean defining (i.e., deciding or
`
`setting in advance) the amount of storage before the storage is allocated or assigned to
`
`the user.” EX2014, ¶ 242. “A POSITA would not have conflated predefining capacity
`
`(predefining an amount of storage before the storage is allocated (reserved or assigned)
`
`and allocating (reserving or assigning) storage (which happens later).” Id., ¶ 243.
`
`Petitioners’ argument that “the expert provides no additional explanation either,
`
`but instead baldy [sic] states his conclusions” of why the “predefined capacity” limitation
`
`would not have been obvious (Reply, 17) is demonstrably false. Mr. Jawadi explained in
`
`detail that (i) “McCown Does Not Disclose Predefined Capacity Allocated Exclusively to
`
`a User of a Wireless Device (EX2014, § V.B.e.iii), (ii) Petitioners’ Memory Partitioning
`
`and Allocation Techniques Do Not Disclose Predefined Capacity Allocated Exclusively
`
`to a User of a Wireless Device (id., § V.B.e.iv), (iii) “Dutta Does Not Disclose
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`Predefined Capacity Allocated Exclusively to a User of a Wireless Device” (id., §
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`V.B.e.v), and (iv) “The Combination of McCown, Dutta, and Coates Does Not Disclose
`
`
`
`12
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`

`

`Predefined Capacity Allocated Exclusively to a User of a Wireless Device Predefined
`
`Capacity Assigned Exclusively to a user of the Wireless Device by a Storage Server” (id.,
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`§ V.B.b.vii). Neither Petitioners nor their expert provided any response to Mr. Jawadi’s
`
`detailed explanation for why the “predefined capacity” claim limitation is wholly absent
`
`from the McCown/Dutta combination and would not have been obvious. See Reply, 17-
`
`21.
`
`Accordingly, the McCown/Dutta combination would not have taught that (i)
`
`capacity is predefined exclusively for each user (ii) by the storage server, (iii) before any
`
`interaction between the user and storage server. And Petitioners did not provide any
`
`documentary evidence showing that these limitations would have been obvious. See
`
`Reply, 17-21.
`
`
`
`D. 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
`
`1366. Petitioners and their expert did not provide the required documentary evidence. See
`
`Reply, 14-21.
`
`To detract from their failure to meet the Federal Circuit’s requirements for
`
`obviousness, Petitioners instead allege that “Synkloud does not contest (and therefore
`
`
`
`13
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`

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`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, 16-17. But
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`PO and Mr. Jawadi did, in fact, explain in detail why each and every motivation
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`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
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`remote server in a cache of a user’s wireless device. PO Response, 31-38; EX2014, §§
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`V.A.a.i – V.A.a.xxi.
`
`Petitioners’ expert failed to respond to Mr. Jawadi’s extensive testimony as to why
`
`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
`
`(Reply, 14-17), which should be given no weight. In re Geisler, 116 F.3d 1465, 1471
`
`(Fed. Cir. 1997).
`
`For example, Petitioners’ attorneys alleged that if McCown were modified to
`
`include a cache at a user’s device, the URL for a file selected from a displayed web page
`
`on the user’s device would be retrieved from a cache. Reply, 5-6. They are wrong. A
`
`URL selected from a displayed web page by an operation such as a mouse click, drag-and
`
`drop, or copy and paste operation is retrieved from the web page display, not from cache:
`
` McCown teaches obtaining the URL(s) (download information) from the
`
`
`
`14
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`

`

`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
`
`’254 Patent.
`
`EX2014, ¶ 45, see also id. at ¶¶ 52, 146, 151. Mr. Jawadi’s testimony is consistent with
`
`McCown itself, which describes retrieving a URL for a file selected by pressing a right
`
`button on a mouse. McCown, EX1005, 11:12-23. Because the file is selected with a
`
`mouse click on a web page display, the corresponding URL is retrieved from the web
`
`page display. EX2003, ¶ 151 (“The list of URLs is generated by the application using a
`
`web page, not a cache of the wireless device.”); id, at ¶¶ 45, 52, 146.
`
`Petitioners’ expert had the opportunity to respond to Mr. Jawadi’s testimony but
`
`did not do so. Petitioners’ attorneys had the opportunity to file documentary evidence to
`
`rebut Mr. Jawadi’s testimony but did not do so. See Reply, 5-6. It is little wonder why.
`
`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, ¶¶ 45, 52, 146, 151, 158. Unable to provide
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`the required documentary evidence, Petitioners’ attorneys instead responded to Mr.
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`Jawadi’s testimony with their own argument and attempt to shift the burden to prove non-
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`obviousness on PO by stating that “[n]either Patent Owner nor its expert cite to any
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`supporting evidence for this assertion” that the URLs for files selected from a web page
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`are retrieved from the web page display. Reply, 5.3
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`3 Mr. Jawadi is fully qualified as a credible expert in this field. He earned “a Master of
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`15
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`That is doubly wrong. First, PO’s expert did, in fact, explain in detail that the
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`URLs for files selected from a web page (as taught by McCown) are not retrieved from
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`cache and are instead retrieved from a web page display. EX2014, ¶¶ 45, 52, 146, 151,
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`158. Second, it is Petitioners’ burden to provide documentary evidence that URLs for the
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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”).
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`Petitioners did not nearly meet their burden to establish by a preponderance of the
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`evidence that the combination of McCown and Dutta would have taught utilizing
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`information (e.g., a URL) from the cache of a wireless device to download a file to
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`remote storage, as claimed by the ’686 patent.
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`E. A POSITA Would Not and Could Not Have Combined McCown and Dutta
`and Reasonably Expect Success.
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`As explained above and in the PO Response, Petitioners relied on mere attorney
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`argument and conclusory expert testimony to support their position that the claim
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`limitation of downloading a file from remote server “utilizing information for the file
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`stored in the cache storage in the wireless device,” would have been obvious.
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`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.
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`16
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`In response, Petitioners argue that they “relied on specifically cited disclosures in
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`the McCown and Dutta [sic],” and the “analysis of [their expert] Dr. Houh and portions
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`of eleven other pieces of evidence.” Reply, 11. But none of the cited disclosures in
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`McCown or Dutta disclose, suggests “utilizing information for the file cached in the
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`cache storage in the wireless device.” McCown does not even mention a cache. And
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`Dutta does not make any mention of how any of the data in its cache would be used.
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`E2014, § V.A.a. Dr. Houh does not cite to any documentary evidence indicating that this
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`claim limitation would have been obvious. And Petitioners did not even attempt to
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`explain how their “eleven other pieces of evidence”—which they failed to identify—
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`would show that the limitation would have been obvious. See Reply, 11-12.
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`Petitioners’ argument that “Patent Owner does not contest the level of ordinary
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`skill set forth by the Petitioner” (Reply, 15) misses the mark because nothing in
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`Petitioners’ POSITA definition indicates that such a person would have found it obvious
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`to modify the McCown/Dutta combination to include the missing claim limitations.
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`i.
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`Petitioners’ Expert Fails To Respond To Mr. Jawadi’s Explanation
`Of Why A POSITA Would Not Have Been Motivated To Modify The
`McCowen/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.
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`SynKloud and Mr. Jawadi, explained in detail why each and every motivation
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`argument set forth by Petitioners would not have, in fact, motivated a POSITA to modify
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`17
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`the teachings of McCown and Dutta to store download information identifying a file at a
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`remote server in a cache of a user’s wireless device. PO Response, 31-38; EX2014,
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`§§V.A.a.ix - V.A.a.xix. Petitioners’ expert again failed to respond to Mr. Jawadi’s
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`extensive testimony.
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`Petitioners assert—without any support—that “storing the URLs in a cache would
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`make them more readily accessible to the user application at the user site.” Reply, 16. But
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`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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`¶¶ 45, 52, 146, 151, 158. That is, the “list of URLs [in McCown] is generated by an
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`application using (displaying) the web page, not from the cache of the wireless device.”
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`EX2014, ¶ 158. Moreover, McCown’s URLs “are used only once by the user,” thereby
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`negating the need to store the URLs in cache. EX2014, ¶ 162. McCown states that
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`“[e]ach data request contains the URL's of the selected files 112”. EX1005, 11:21-23.
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`Thus, there is “no reason for the user to need the URLs again.” EX2014. ¶ 162.
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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.
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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; s