UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`ADOBE INC.,
`
`Petitioner,
`
`v.
`
`SYNKLOUD TECHNOLOGIES, LLC,
`
`Patent Owner.
`
`____________
`
`
`
`Case IPR2020-01301
`
`U.S. Patent No. 9,219,780
`
`____________
`
`
`
`DECLARATION OF ZAYDOON (“JAY”) JAWADI
`IN SUPPORT OF PATENT OWNER’S RESPONSE
`
`
`
`
`IPR2020-01301
`Exhibit 2001
`Adobe Inc. v. SynKloud Technologies, LLC
`
`
`
`

`

`TABLE OF CONTENTS
`
`
`I. BACKGROUND AND QUALIFICATIONS ..................................................... 1
`
`II. MATERIALS REVIEWED ................................................................................ 6
`
`III. LEGAL UNDERSTANDING ............................................................................. 7
`
`IV. CLAIM CONSTRUCTION ................................................................................ 7
`
`A. Petitioner’s Construction of “cached in the first wireless device” Is Flawed ..................... 8
`
`V. OPINIONS .........................................................................................................13
`
`Independent Claim 9 Is Not Obvious in View of Prust Alone or in Combination with
`A.
`Major or Kraft ........................................................................................................................... 14
`
`a. Claim 9: Utilizing Download Information for the File Including Name of the File and
`Internet Protocol (“IP”) Address of the Remote Server, Cached in a Cache Storage of the
`First Wireless Device Is Not Disclosed in Prust Alone and/or in Combination with Major
`and/or Kraft ........................................................................................................................... 14
`
`i. Prust Does Not Disclose Storing Download Information in Cache Storage or
`Retrieving Download Information from Cache Storage ................................................... 15
`
`ii.
`
`Prust Does Not Disclose Where Download Information Is Obtained from............ 15
`
`Petitioner’s Theory with Three Hypotheses Regarding Utilizing Download
`iii.
`Information for the File Cached in the First Wireless Device .......................................... 16
`
`Petitioner’s First Hypothesis That Download Information Is Obtained from a Web
`iv.
`Page is Flawed and Unsupported by Prust ........................................................................ 17
`
`Petitioner’s Second Hypothesis That Download Information Is Cached Is Flawed
`v.
`and Unsupported by Prust ................................................................................................. 20
`
`It Would Not Have Been Obvious to a POSITA That The Download Information in
`vi.
`Prust’s Email Is from a Web Page Cached in the Wireless Device .................................. 22
`
`vii. Petitioner’s Third Hypothesis That the User’s Typing or Copying of Download
`Information Discloses Cached Download Information Is Flawed and Unsupported by
`Prust 23
`
`Petitioner’s Third Hypothesis (Typing Scenario) That the User’s Typing of
`viii.
`Download Information Discloses Cached Download Information Is Flawed and
`Unsupported by Prust ........................................................................................................ 24
`
`Petitioner’s Third Hypothesis (Copying Scenario) That the User’s Copying of
`ix.
`Download Information Discloses Cached Download Information Is Flawed and
`Unsupported by Prust ........................................................................................................ 25
`
`x.
`
`xi.
`
`Caching the Download Information in Prust Is Unnecessary and Wasteful ........... 28
`
`Prust and Major ....................................................................................................... 32
`
`
`
`i
`
`

`

`xii. Prust and Kraft ........................................................................................................ 33
`
`Therefore, Claim 9 Is Not Obvious in View of Prust Alone or in Combination
`xiii.
`with Major or Kraft ........................................................................................................... 35
`
`Dependent Claims 9-15 Are Not Obvious in View of Prust Alone or in Combination
`b.
`with Major or Kraft, and Dependent Claim 10 Is Not Obvious Further in View of McCown
`
`35
`
`Independent Claim 9 Is Not Obvious in View of Nomoto Alone or in Combination with
`B.
`Major or Kraft ........................................................................................................................... 35
`
`a. Claim 9: “utilizing download information for the file, including name of the file and
`internet protocol (“IP”) address of the remote server, cached in a cache storage of the first
`wireless device” Is Not Disclosed in Nomoto Alone and/or in Combination with Major
`and/or Kraft ........................................................................................................................... 36
`
`i. Nomoto Does Not Disclose Storing Download Information in Cache Storage or
`Retrieving Download Information from Cache Storage ................................................... 36
`
`ii.
`
`Nomoto Does Not Disclose Where Download Information Is Obtained from ....... 37
`
`Petitioner’s Theory with Three Hypotheses Regarding Utilizing Download
`iii.
`Information for the File Cached in a Cache Storage in the First Wireless Device ........... 39
`
`Petitioner’s First Hypothesis That Download Information Is Obtained from a Web
`iv.
`Page is Flawed and Unsupported by Nomoto ................................................................... 39
`
`Petitioner’s Second Hypothesis That Download Information Is Cached Is Flawed
`v.
`and Unsupported by Nomoto ............................................................................................ 41
`
`It Would Not Have Been Obvious to a POSITA That The Download Information in
`vi.
`Nomoto Is from a Web Page Cached in the Wireless Device .......................................... 43
`
`vii. Petitioner’s Third Hypothesis That the User’s Typing or Copying of Download
`Information Discloses Cached Download Information Is Flawed and Unsupported by
`Nomoto ............................................................................................................................. 44
`
`Petitioner’s Third Hypothesis (Typing Scenario) That the User’s Typing of
`viii.
`Download Information Discloses Cached Download Information Is Flawed and
`Unsupported by Nomoto ................................................................................................... 45
`
`Petitioner’s Third Hypothesis (Copying Scenario) That the User’s Copying of
`ix.
`Download Information Discloses Cached Download Information Is Flawed and
`Unsupported by Nomoto ................................................................................................... 46
`
`x.
`
`Caching the Download Information in Nomoto Is Unnecessary and Wasteful ...... 49
`
`xi. Nomoto and Major .................................................................................................. 52
`
`xii. Nomoto and Kraft ................................................................................................... 54
`
`Therefore, Claim 9 Is Not Obvious in View of Nomoto Alone or in Combination
`xiii.
`with Major or Kraft ........................................................................................................... 56
`
`c. Dependent Claims 10-15 Are Not Obvious in View of Nomoto Alone or in
`Combination with Major and Kraft, and Dependent Claims 10 Is Not Obvious Further in
`View of McCown. ................................................................................................................. 56
`
`
`
`ii
`
`

`

`C. Major’s Teachings Discourage Combining with Prust or Nomoto .................................. 57
`
`a. Major’s Teachings Discourage Wireless Device Access to External Storage ............... 57
`
`b. Major Stores Data Objects in Cache, Negating the Need for External Storage ......... 60
`
`VI. CONCLUSION ..................................................................................................60
`
`
`
`
`
`iii
`
`

`

`I, Zaydoon (“Jay”) Jawadi, declare as follows:
`
`I.
`
`BACKGROUND AND QUALIFICATIONS
`
`1. My name is Zaydoon (“Jay”) Jawadi.
`
`2.
`
`I am an independent expert and consultant. I have been retained as an
`
`expert witness on behalf of SynKloud Technologies, LLC (“SynKloud”) for the
`
`above-captioned Inter Partes Reviews (IPRs) regarding U.S. Patent No. 9,219,780
`
`(“’780 Patent”).
`
`3.
`
`As shown in my curriculum vitae (attached as Exhibit 2002), I have a
`
`Bachelor of Science in Electrical Engineering from Mosul University, a Master of
`
`Science in Computer Science from Columbia University with a Citation for
`
`Outstanding Achievement – Dean’s Honor Student, and over 40 years of
`
`experience in software and product design and development, engineering,
`
`consulting, and management in the fields of data storage, Internet, software, data
`
`networking, computing systems, and telecommunication.
`
`4.
`
`I have worked with and possess expertise in numerous technologies,
`
`including data storage
`
`technologies and
`
`interfaces, Internet and website
`
`technologies, databases, data networking
`
`technologies and protocols, and
`
`telephony.
`
`5.
`
`From 1978 to 1980, I worked as a telecommunication/electrical
`
`engineer for Emirtel (formerly Cable and Wireless, now Etisalat). During my
`
`
`
`1
`
`

`

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

`

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

`

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

`

`to thousands of professional engineers and academic students in the United States,
`
`Europe, and Asia.
`
`15.
`
`In my work as an expert and consultant, I have examined, analyzed,
`
`and inspected numerous data storage systems, computer systems, software
`
`products, cell phone applications, tens of millions of lines of source code, and the
`
`frontend and backend software of more than 100 websites, including massive,
`
`highly-trafficked consumer and business websites.
`
`16. Through my education, industry and expert experience, and industry
`
`and expert knowledge, I have gained a detailed understanding of the technologies
`
`at issue in this case.
`
`17. My additional industry experience is in my curriculum vitae.
`
`18. My expert litigation support cases, including cases in which I have
`
`testified during the last four years as an expert, can be found in my curriculum
`
`vitae, which is Exhibit 2002.
`
`19. As such, I am qualified to provide opinions regarding the state of the
`
`art at the time the ’780 Patent was filed (which I understand to be no later than
`
`September 25, 2013, but claiming a priority date of December 4, 2003) and how a
`
`person of ordinary skill in the art (“POSITA”) at that time would have interpreted
`
`and understood the ’780 Patent.
`
`
`
`5
`
`

`

`20.
`
`I am being compensated for my work and any travel expenses in
`
`connection with
`
`this proceeding at my standard consulting rates.
`
` My
`
`compensation is in no way dependent on or contingent on the outcome of my
`
`analysis or opinions rendered in this proceeding and is in no way dependent on or
`
`contingent on the results of these or any other proceedings relating to the above-
`
`captioned patent.
`
`21. Although I am not rendering an opinion about the level of skill of a
`
`POSITA proffered by Petitioner, based on my professional experience, I have an
`
`understanding of the capabilities of a POSITA (as such a POSITA is defined by
`
`Petitioner). Over the course of my career, I have supervised and directed many
`
`such persons. Additionally, I myself, at the time the ’780 Patent was filed and at
`
`its priority date, qualified as at least a POSITA.
`
`II. MATERIALS REVIEWED
`
`22.
`
`In preparing this declaration, I reviewed the ’780 Patent, including its
`
`claims in view of its specification, the prosecution history of the ’780 Patent,
`
`various prior art and technical references from the time of the invention, and the
`
`IPR2020-01301 Petition (“Petition”) and its exhibits.
`
`23.
`
`I also reviewed the following references attached as exhibits:
`
`Exhibit
`Exhibit
`2003
`
`
`
`
`
`Description
`Hypertext Transfer Protocol -- HTTP/1.1, rfc2616, June 1999
`
`6
`
`

`

`III. LEGAL UNDERSTANDING
`
`24.
`
`I have worked with counsel in the preparation of this Declaration.
`
`Nevertheless, the opinions, statements, and conclusions offered in this Declaration
`
`are purely my own and were neither suggested nor indicated in any way by counsel
`
`or anyone other than myself. I confirmed with counsel my understanding that the
`
`term “obvious,” as used in the Petition addressed herein and as a general matter
`
`under United States law, refers to subject matter that would have occurred to a
`
`POSITA to which the ’780 Patent is directed without inventive or creative thought.
`
`That which is obvious, it is my understanding, flows naturally from the art and the
`
`education one of skill practicing in that art would have had in the relevant time
`
`frame, which for the ’780 Patent is 2003.
`
`IV. CLAIM CONSTRUCTION
`
`25.
`
`I reviewed the comments in the Petition and Petitioner’s expert’s
`
`declaration (Ex. 1003) pertaining to claim “construction of the claims” of the ’780
`
`Patent.
`
` Petitioner’s expert’s constructions are not consistent with
`
`the
`
`understanding that a POSITA would have had of the claims of the ‘780 patent.
`
`Patent Owner’s constructions, as set forth in the Preliminary Response, are
`
`consistent with a POSITA’s understanding. Nonetheless, none of the claims of the
`
`‘780 patent would have been obvious even under Petitioner’s constructions.
`
`
`
`
`
`7
`
`

`

`A.
`
`Petitioner’s Construction of “cached in the first wireless device”
`Is Flawed
`
`26. Petitioner argues that “[i]n the context of both wired and wireless
`
`networked computer systems, it [cache storage] would be understood to refer to
`
`storage that is more readily accessible than the original source of information.”
`
`Petition, 5-6.
`
`27.
`
`In my opinion, Petitioner’s construction is flawed and improper.
`
`28. Petitioner also argues that the phrase “cached in a cache storage of the
`
`first wireless device” means “stored in a location on the wireless device that is
`
`more readily accessible than the original source of the information.” Petition, 7.
`
`29.
`
`In my opinion, Petitioner’s construction of “cached in a cache storage
`
`of the first wireless device” is also flawed and improper.
`
`30. A POSITA would have known that cache storage is not merely any
`
`storage location “that is more readily accessible than the original source of the
`
`information.” Such construction omits three basic cache principles.
`
`31. First, cache storage is used to save information that may be needed
`
`multiple times (subsequent to initial access) in a more readily accessible location,
`
`eliminating the need to retrieve the data again from the original source of the
`
`information. In other words, storing information in cache, when the information is
`
`initially fetched, is intended not for the initial access to the information, but for
`
`
`
`8
`
`

`

`subsequent access or accesses to that information. Petitioner’s construction omits
`
`this basic principle of cache.
`
`32. Second, cache storage includes a cache search mechanism invoked
`
`when information is needed. The cache search mechanism is used to determine if
`
`the requested information is in cache (cache hit) or not in cache (cache miss). If
`
`the information is not in cache, the information is fetched and stored in cache in
`
`anticipation of subsequent accesses to that information. Petitioner’s construction
`
`also omits this basic principle of cache.
`
`33. Third, cache storage includes a replacement algorithm, mechanism, or
`
`policy for replacing information in cache, such as least recently used (LRU)
`
`algorithm. Petitioner’s construction also omits this basic principle of cache.
`
`34. Petitioner’s own references for cache storage describe these three
`
`basic cache principles, namely that cache storage is used to save information that
`
`may be needed multiple times (subsequent to initial access), that cache storage
`
`includes a mechanism to determine cache hit/miss, and that cache storage includes
`
`a replacement algorithm.
`
`35. Petitioner’s EX-1025 (Newton’s Telecom Dictionary) confirms that
`
`cache storage is used to save information that may be needed multiple times
`
`(subsequent to initial access), that cache storage includes a mechanism to
`
`determine cache hit/miss, and that cache storage includes a replacement algorithm.
`
`
`
`9
`
`

`

`“A cache works like this. When the CPU needs data from memory,
`the system checks to see if the information is already in the cache. If it
`is, it grabs that information; this is called a cache hit. If it isn’t, it’s
`called a cache miss and the computer has to fetch the information by
`access the main memory or hard disk, which is slower. Data retrieved
`during a cache miss is often written into the cache in anticipation of
`further need for it.
`...
`Generally, when the cache is exhausted, it is flushed and the data is
`written back to main memory, to be replaced with the next cache
`according to a replacement algorithm.
`...
`The cache also will hold information that you recently accessed, in
`anticipation of your wanting to back up, or access it again.
`...
`Caching A process by which information is stored in memory or
`server in anticipation of next request for information.” EX-1025,
`Newton’s Telecom Dictionary, emphasis added
`
`36. Petitioner’s EX-1026 (Microsoft Press Computer Dictionary) also
`
`confirms that cache storage is used to save information that may be needed
`
`multiple times (subsequent to initial access) and that cache storage includes a
`
`mechanism to determine cache hit/miss.
`
`“A special memory subsystem in which frequently used data values
`are duplicated for quick access. A memory cache stores the contents
`of frequently accessed RAM locations and the addresses where
`these data items are stored. When the processor references an address
`in memory, the cache checks to see whether it holds that address.
`If it does hold the address, the data is returned to the processor; if it
`does not, a regular memory access occurs.” EX-1026, Microsoft
`Press Computer Dictionary, emphasis added
`
`37. Petitioner’s EX-1027 (New Penguin Dictionary of Computing) also
`
`confirms that cache storage is used to save information that may be needed
`
`
`
`10
`
`

`

`multiple times (subsequent to initial access) and that cache storage includes a
`
`mechanism to determine cache hit/miss.
`
`“A small region of fast MEMORY interposed between a data
`processing device and a larger slower memory to hold copies of the
`most frequently or recently used data so that they may be access
`more quickly.
`...
`Caches may be employed in many other forms of communication, for
`example to enable WEB PAGES recently read to be read again
`more quickly, and between a computer's CPU and disk drives of
`various kinds (where the speed discrepancy is even greater than with
`memory)
`...
`cache hit A request by a computer's processor to read or write a data
`item that finds its target in the processor's CACHE and therefore does
`not have to reach out over the bus to external memory to access it.
`...
`cache miss A request by a computer's processor to read or write a data
`item that does not find its target in the processor's CACHE and
`therefore must continue through into main memory to access the
`item.” EX-1027 (New Penguin Dictionary of Computing), emphasis
`added
`
`38. Petitioner’s EX-1006 (Major) describes (at 21:1-5) a mechanism to
`
`determine cache hit/miss and describes (at 11:15-16, 11:20-21, 18:18-19) a
`
`replacement policy (algorithm).
`
`39. Petitioner’s omitting (from the cache storage construction) these three
`
`basic principles (that cache stores information that may be needed multiple times /
`
`subsequent to initial access, that cache storage includes a mechanism to determine
`
`cache hit/miss, and that cache storage includes a replacement algorithm) results in
`
`considering or deeming as cache any location that is “more readily accessible than
`
`
`
`11
`
`

`

`the original source of the information.” In other words, under such overly broad
`
`and flawed construction, any storage location (e.g., disk drive, random access
`
`memory, etc.) that stores the information and that is faster than the original source
`
`would constitute cache, even if the information is only transitorily and temporarily
`
`stored in that location and not saved for future hits, even if the location is never
`
`intended or designed to operate as cache, even if the location does not operate as
`
`cache (missing the three basic cache principles mentioned above), and even if the
`
`location entirely contradicts the three basic cache principles described earlier.
`
`40. Under Petitioner’s construction, other than the original location where
`
`a web page is stored at the web server, any storage location where the web page is
`
`stored would constitute cache, because any such alleged storage location other than
`
`the original location is “more readily accessible than the original source of the
`
`information.”
`
`41. For at least these reasons, in my opinion, Petitioner’s construction of
`
`“cache storage” as “storage that is more readily accessible than the original source
`
`of information” is flawed and improper.
`
`42. And for at least these reasons, in my opinion, Petitioner’s construction
`
`of “cached in a cache storage on the first wireless device” as “stored in a location
`
`on the wireless device that is more readily accessible than the original source of the
`
`information” is flawed and improper.
`
`
`
`12
`
`

`

`V. OPINIONS
`
`43. Petitioner challenges independent Claim 9 of the ’780 Patent and
`
`challenges dependent claims 10-15, which depend from Claim 9.
`
`44. Petitioner presents two sets of grounds under which Claims 9-15 of
`
`the ’780 Patent are purportedly invalid.
`
`45.
`
`In the first set of grounds, Petitioner contends that Claims 9-15 are
`
`obvious over Prust (EX-1004) as primary prior art reference, contends that Claims
`
`9-15 are obvious over Prust (EX-1004) alone or combined with the teachings of
`
`Major (EX-1006) or Kraft (EX-1007), and contends that Claim 10 is obvious based
`
`on the additional teachings of McCown (EX-1008). Petition, 1.
`
`46.
`
`In the second set of grounds, Petitioner contends that Claims 9-15 are
`
`obvious over Nomoto (EX-1005) as primary prior art reference, contends that
`
`Claims 9-15 are obvious over Nomoto (EX-1005) alone or combined with the
`
`teachings of Major (EX-1006) or Kraft (EX-1007), and contends that Claim 10 is
`
`obvious based on the additional teachings of McCown (EX-1008). Petition, 1.
`
`47.
`
`In my opinion, as described below, Petitioner has not established a
`
`reasonable basis to conclude that the challenged claims of the ’780 Patent are
`
`obvious.
`
`
`
`13
`
`

`

`A.
`
`Independent Claim 9 Is Not Obvious in View of Prust Alone or in
`Combination with Major or Kraft
`
`48. Petitioner contends that independent Claim 9 is obvious over Prust
`
`(EX-1004) as primary prior art reference and contends that Claim 9 is obvious over
`
`Prust (EX-1004) alone or combined with the teachings of Major (EX-1006) or
`
`Kraft (EX-1007). Petition, 1.
`
`a. Claim 9: Utilizing Download Information for the File
`Including Name of the File and Internet Protocol (“IP”)
`Address of the Remote Server, Cached in a Cache Storage of
`the First Wireless Device Is Not Disclosed in Prust Alone
`and/or in Combination with Major and/or Kraft
`
`49.
`
`Independent Claim 9 of the ’780 Patent recites utilizing download
`
`information for the file cached in the cache storage of the first wireless device.
`
`“9. A server comprising:
`a pool of a plurality of storage spaces, and non-transitory computer-
`readable storage medium comprising program instructions which,
`being executed by the server, causes the server delivering storage
`service, the program instructions include:
`. . .
`utilizing download information for the file including name of the file
`and internet protocol (“IP”) address of the remote server, cached in a
`cache storage of the first wireless device.” ’780 Patent, Claim 9.
`
`In the following sections, I will show that Prust (EX-1004) alone or
`
`50.
`
`combined with Major (EX-1006) or Kraft (EX-1007), does not disclose utilizing
`
`download information for the file cached in a cache storage of the first wireless
`
`device.
`
`
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`14
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`

`

`i. Prust Does Not Disclose Storing Download Information
`in Cache Storage or Retrieving Download Information
`from Cache Storage
`
`51. Prust does not disclose cache, and, in my opinion, Prust does not
`
`disclose, suggest, or imply storing download information in cache storage or
`
`retrieving download information from cache storage.
`
`52.
`
`Indeed, Petitioner confirms that Prust does not disclose cached
`
`download information: “Prust does not explicitly disclose that the remote
`
`downloading technique utilizes information for the file ‘cached in a cache storage
`
`of the first wireless device.’ That is, Prust does not specify the source of the URL
`
`in the email.” Petition, 22.
`
`ii. Prust Does Not Disclose Where Download Information Is
`Obtained from
`
`53. Prust does not disclose where download information (URL) is
`
`obtained from.
`
`54. Prust mentions URL (universal resource locator) only once at
`
`6:67-7:4, which Petitioner cites.
`
`“In an alternative embodiment, the user does not attach a data file but
`includes within the electronic mail message a universal resource
`locator (URL) that indicates where storage server 210 can retrieve the
`data file to be stored.” Prust (Ex-1004) at 6:67-7:4, emphasis added
`
`55. Prust does not disclose where the user obtains the URL pointing to the
`
`object in the purported out-of-band download operation. Prust does not disclose
`
`
`
`15
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`

`

`where the URL is stored or where the URL originates from. Instead, Prust merely
`
`mentions that the user “includes” the URL in an email.
`
`56. Merely mentioning that the user “includes” a URL (download
`
`information) of an object does not disclose where the URL is obtained from, let
`
`alone that the URL is obtained from a page displayed by the browser, let alone that
`
`the URL is obtained from a page displayed by the browser and also stored in the
`
`cache, let alone that the URL is obtained using copy-and-paste or re-typed from a
`
`cached page displayed by the browser from the cache.
`
`57. Petitioner does not offer any evidentiary support from Prust to show
`
`where the user obtains such URL from, where the URL is stored, or where the
`
`URL originates from. Instead, Petitioner relies on Petitioner’s expert’s opinions,
`
`which also offer no evidentiary support from Prust or otherwise regarding where in
`
`Prust the URL is obtained from. Petition, 22-23.
`
`iii. Petitioner’s Theory with Three Hypotheses Regarding
`Utilizing Download Information for the File Cached in
`the First Wireless Device
`
`58. Petitioner presents a theory regarding utilizing download information
`
`stored in cache at the wireless device, and that theory requires three hypotheses to
`
`be true. The first hypothesis assumes that the URL of Prust is obtained from a web
`
`page. The second hypothesis assumes that the web page containing the URL of
`
`Prust is cached. And the third hypothesis assumes that the user copies the URL
`
`
`
`16
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`

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`from the web page containing the URL of Prust, or, alternatively, that the user
`
`re-types the URL. Petitioner’s theory requires that all three hypotheses be true in
`
`order to satisfy the ’780 cached download information limitation. Petitioner and
`
`Petitioner’s expert rely on the alleged knowledge of a POSITA for all three
`
`hypotheses. I will address the three hypotheses below.
`
`iv. Petitioner’s First Hypothesis That Download
`Information Is Obtained from a Web Page is Flawed and
`Unsupported by Prust
`
`59.
`
`In my opinion, Petitioner’s first hypothesis that download information
`
`is obtained from a web page is flawed and unsupported by Prust.
`
`60. To overcome Prust’s deficiency of not disclosing where the URL is
`
`obtained from, Petitioner, relying on Petitioner’s expert’s opinion, states that “a
`
`POSITA would have known that the single most likely source for a URL
`
`identifying a file to be stored by the user is a webpage presented by a remote
`
`webserver. EX-1003 ¶187.” Petition, 22.
`
`61.
`
`I disagree.
`
`62. First, as described earlier, Prust does not disclose, suggest, or imply
`
`wher