Trials@uspto.gov
`571-272-7822
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`Paper 10
`Entered: April 8, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ADOBE INC.,
`Petitioner,
`v.
`SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner.
`
`IPR2020-01301
`Patent 9,219,780 B2
`
`
`Before SALLY C. MEDLEY, LYNNE E. PETTIGREW, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`SAWERT, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
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`571-272-7822
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`Paper 10
`Entered: April 8, 2021
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ADOBE INC.,
`Petitioner,
`v.
`SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner.
`
`IPR2020-01301
`Patent 9,219,780 B2
`
`
`Before SALLY C. MEDLEY, LYNNE E. PETTIGREW, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`SAWERT, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
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`IPR2020-01301
`Patent 9,219,780 B1
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`
`I. INTRODUCTION
`Adobe Inc. (“Petitioner”) filed a Petition for inter partes review of
`claims 9–15 of U.S. Patent No. 9,219,780 B1 (Ex. 1001, “the ’780 patent”).
`Paper 1 (“Pet.”). Patent Owner, Synkloud Technologies, LLC filed a
`Preliminary Response. Paper 6 (“Prelim. Resp.”).
`Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to
`institute an inter partes review if “the information presented in the
`petition . . . and any response . . . shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a). After considering the
`Petition, the Preliminary Response, and the evidence of record, we
`determine the information presented shows a reasonable likelihood that
`Petitioner would prevail in establishing the unpatentability of at least one of
`the challenged claims of the ’780 patent. Accordingly, we institute an inter
`partes review of claims 9–15 of the ’780 patent on the grounds asserted in
`the Petition.
`
`II. BACKGROUND
`A. Related Matters
`The parties identify several district court proceedings involving, or
`relating to, the ’780 patent. Pet. xi; Paper 4 (Patent Owner’s Mandatory
`Notices). Patent Owner identifies IPR2020-01269 and IPR2020-01270,
`based on petitions filed jointly by Microsoft Corporation and HP Inc., as
`matters involving the ’780 patent. Paper 4. The parties also identify several
`other matters pending before the Board involving patents related to the ’780
`patent. Pet. xi–x; Paper 4.
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`B. Overview of the ’780 Patent
`The ’780 patent, titled “Method and System for Wireless Device
`Access to External Storage,” relates to “a wireless device accessing and
`using external storage space provided by a server.” Ex. 1001, 1:24–25. The
`’780 patent aims to address the lack of storage capacity faced by users on
`their wireless devices by allowing a wireless device to use an external server
`for storing and retrieving data. Id. at 2:40–48, 5:3–57.
`In one embodiment, the storage server’s external storage may be
`partitioned by dividing it into multiple small volumes of storage space that
`may be exclusively assigned to users. Id. at 4:12–37. Partitioning may be
`done through a web-console on a console host by an administrator. Id. at
`4:16–20. Based on storage information received from the storage server’s
`support software, the administrator may use the web-console to partition
`each storage device and send storage partition information to the support
`software. Id. at 4:21–30. The support software may perform the actual
`partition by dividing the storage device into multiple small volumes, each of
`which may be exclusively assigned to and used by a user of a specific
`wireless device. Id. at 4:32–37.
`The ’780 patent also describes a “wireless out-band download”
`approach for downloading data from a remote location to an assigned
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`storage volume. Id. at 2:18–20, 2:61–64, 5:15–46, Fig. 3. Figure 3 is
`illustrative and is reproduced below.
`
`
`Figure 3 shows a “wireless out-band download” approach, which includes a
`sequence of steps for downloading data from remote web site server 15 into
`assigned storage volume 11 of external storage system 10 on server 3. See
`id. at 2:18–20, 2:61–64, 5:15–46. First, the user of wireless device 1 may
`access remote web server site 15 via web-browser 8 to obtain information
`about the data for downloading (e.g., data name) via path (a). Id. at 5:22–27.
`Second, other software modules 9 of wireless device 1 may obtain the
`download information for the data, which becomes available in cached
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`web-pages on wireless device 1. Id. at 5:28–32. Third, other software
`modules 9 of wireless device 1 may send obtained download information to
`other service modules 7 of storage server 3 via path (b). Id. at 5:33–36.
`Fourth, other service modules 7 may send a web download request to remote
`web site server 15 via path (c) based on the obtained download information
`and receive the downloaded data streams from remote web site server 15.
`Id. at 5:37–42. Lastly, other service modules 7 may write (i.e., store) the
`data streams to assigned storage volume 11 in server 3 for wireless device 1.
`Id. at 5:43–46.
`The ’780 patent additionally describes retrieving data from an
`assigned storage volume. Id. at 5:47–57. In one embodiment, the user may
`use the wireless device’s web-browser (with embedded video or music
`functionality) to retrieve and play multimedia data files already stored in the
`assigned storage volume on the server. Id. at 5:49–53. In another
`embodiment, the wireless device may retrieve data from the file system of
`the assigned storage volume on the server. Id. at 5:54–57.
`C. The Challenged Claims
`Petitioner challenges claims 9–15 of the ’780 patent. Pet. 1. Claim 9
`is reproduced below, which includes changes made per a Certificate of
`Correction.
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`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:
`program instructions for allocating exclusively, via the storage
`pool, a first one of the storage spaces to a user of a first
`wireless device;
`program instructions for establishing a communication link for
`the first wireless device remotely access to the first one
`of the storage spaces;
`program instructions for sending information of the first one of
`the storage spaces to the first wireless device for
`presenting the first one of the storage spaces to the user
`on the wireless device; and
`program instructions for updating the first one of the storage
`spaces in response to the user from the first wireless
`device performing an operation for said remotely access
`to the first one of the storage spaces,
`wherein said access to the first one of the storage spaces
`comprises storing data therein or retrieving data
`therefrom,
`the storing of the data including to download a file from a
`remote server into the first one of the storage spaces
`through utilizing download information for the file,
`including name of the file and internet protocol (“IP”)
`address of the remote server, cached in a cache storage of
`the first wireless device in response to the user from the
`first wireless device performing the operation for the
`downloading.
`Ex. 1001, 7:7–36, p. 10.
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`D. Asserted Evidence
`Petitioner submits the following evidence:
`Exhibit No.
`Evidence
`1003
`Declaration of Jon Weissman, Ph.D.
`1004
`U.S. Patent No. 6,735,623 B1 (May 11, 2004) (“Prust”)
`U.S. Patent Application Publ’n No. 2001/0028363 A1
`1005
`(published Oct. 11, 2001) (“Nomoto”)
`1006
`WO 02/052785 A2 (published July 4, 2002) (“Major”)
`1007
`U.S. Patent No. 6,309,305 B1 (Oct. 30, 2001) (“Kraft”)
`WO 01/67233 A2 (published Sept. 13, 2001) (“McCown”) 1008
`
`Pet. 1.
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`Claims Challenged
`35 U.S.C. §
`References
`9, 11–15
`103(a)1
`9, 11–15
`103(a)
`9, 11–15
`103(a)
`10
`103(a)
`10
`103(a)
`9, 11–15
`103(a)
`9, 11–15
`103(a)
`9, 11–15
`103(a)
`10
`103(a)
`10
`103(a)
`
`Prust
`Prust, Major
`Prust, Kraft
`Prust, Major, McCown
`Prust, Kraft, McCown
`Nomoto
`Nomoto, Major
`Nomoto, Kraft
`Nomoto, Major, McCown
`Nomoto, Kraft, McCown
`
`Pet. 1.2
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125
`Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’780
`patent has an effective filing date before the effective date of the applicable
`AIA amendments, we refer to the pre-AIA version of 35 U.S.C. § 103.
`
` 2
`
` On page 13 of the Petition, Petitioner contends that “Prust Alone or
`Combined with the Teachings of Major or Kraft Renders Claims 9 and 11–
`15 Obvious.” Pet. 13. Similarly, on page 38, Petitioner contends that
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`III. DISCUSSION
`Petitioner contends that claims 9–15 of the ’780 patent are
`unpatentable under 35 U.S.C. § 103 as obvious over various combinations of
`prior-art references Prust, Major, Kraft, McCown, and Nomoto. A patent
`claim is unpatentable under § 103(a) if the differences between the claimed
`subject matter and the prior art are such that the subject matter, as a whole,
`would have been obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject matter pertains. KSR
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of ordinary
`skill in the art; and (4) when in evidence, objective indicia of
`non-obviousness.3 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden of persuasion never
`
`
`“Nomoto Alone or Combined with the Teachings of Major or Kraft Renders
`Claims 9 and 11–15 Obvious.” Id. at 38. We consider the recitation of
`claims “9–15” in the table on page 1 of the Petition to be a typographical
`error.
`3 With respect to the fourth Graham factor, the parties at this time do
`not present arguments or evidence regarding objective indicia of non-
`obviousness. Therefore, the obviousness analysis at this stage of the
`proceeding is based on the first three Graham factors.
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`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
`inter partes review).
`We organize our patentability analysis into four sections. First, we
`address the level of ordinary skill in the art. Second, we address claim
`construction. Third, we provide an overview of the asserted references.
`And fourth, taking account of the information presented, we consider
`whether the Petition satisfies the threshold requirement for instituting an
`inter partes review under 35 U.S.C. § 314(a).
`A. Level of Ordinary Skill in the Art
`We consider the asserted grounds of unpatentability in view of the
`understanding of a person of ordinary skill in the art. In assessing the level
`of ordinary skill in the art, various factors may be considered, including the
`“type of problems encountered in the art; prior art solutions to those
`problems; rapidity with which innovations are made; sophistication of the
`technology; and educational level of active workers in the field.” In re
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom
`Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir.
`1986)). “[O]ne or more factors may predominate.” Id.
`Citing the Declaration of Dr. Weissman, Petitioner contends that an
`ordinarily skilled artisan at the time of the invention would have had “an
`undergraduate degree (or equivalent) in electrical engineering, computer
`science, or a comparable subject and two years of professional work
`experience in a technical field with exposure to remote storage systems and
`wireless technologies and wireless devices, such as portable digital assistants
`(PDAs) and similar devices.” Pet. 5 (citing Ex. 1003 ¶ 51). Petitioner
`further contends that “[a] higher level of education could substitute for less
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`industry experience, and more industry experience could substitute for the
`specific level of education.” Id. Patent Owner does not propose an
`alternative assessment of the level of ordinary skill in the art. See generally
`Prelim. Resp.; see also Ex. 2001 ¶ 21 (Declaration of Mr. Zaydoon Jawadi).
`To the extent necessary, and for purposes of this Decision, we adopt
`Petitioner’s assessment of the level of ordinary skill in the art as it is
`consistent with the ’780 patent and the asserted prior art. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`B. Claim Construction
`In this inter partes review, we apply the same claim construction
`standard that would be used in a civil action under 35 U.S.C. § 282(b).
`37 C.F.R. § 42.100(b) (2019). In applying this standard, we generally give
`claim terms their ordinary and customary meaning as would be understood
`by an ordinarily skilled artisan at the time of the invention and in the context
`of the entire patent disclosure. See id.; see also Phillips v. AWH Corp.,
`415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc).
`Petitioner proposes a construction for “cached in a cache storage of
`the first wireless device,” recited in independent claim 9. Pet. 5–7. Patent
`Owner states that “[a]lthough Patent Owner does not agree with Petitioner’s
`proposed claim constructions, the Board need not address claim construction
`at this stage because under Petitioner’s own claim construction, Petitioner
`failed to show that it is reasonably likely to prevail against any claim on any
`ground.” Prelim. Resp. 11. Nevertheless, Patent Owner argues that
`Petitioner’s proposed construction of the “cached” limitation is “flawed.”
`Id. at 13. Patent Owner also proposes a construction for the longer claim
`phrase “download[ing] a file from a remote server into the first one of the
`storage spaces through utilizing download information for the file . . . cached
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`in a cache storage of the first wireless device” recited in independent claim
`9. Id. at 11–17.
`We address the parties’ arguments below. We also determine that no
`other claim terms require construction for this Decision. See Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017) (holding that only claim terms in controversy need to be
`construed, and only to the extent necessary to resolve the controversy (citing
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999))).
`
`1. “cached in a cache storage of the first wireless device”
`Petitioner contends that “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.” Pet. 7.
`Petitioner cites Dr. Weissman’s testimony and three technical dictionaries
`for support. Id. at 5–7 (citing Ex. 1003 ¶¶ 64–67, 89, 91; Ex. 1025, 126 (“In
`the context of computer systems and networks, information is cached by
`placing it closer to the user or user application in order to make it more
`readily and speedily accessible, and transparently so.”); Ex. 1026, 72
`(defining “cache” as “[a] special memory subsystem in which frequently
`used data values are duplicated for quick access”); Ex. 1027, 60–61
`(describing “cache” as “[a] small region of fast MEMORY . . . to hold
`copies of the most frequently or recently used data so that they may be
`accessed more quickly”) (Petitioner’s emphases modified)).
`Petitioner further contends that the ’780 patent describes a web-
`browser cache on a wireless device that comes within the scope of
`Petitioner’s proposed construction. Id. at 6–7. Specifically, in the disclosed
`“wireless out-band download process,” the user accesses a webpage to
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`obtain download information for the data to be downloaded. Id. at 6 (citing
`Ex. 1001, 5:23–24). The download information can include the IP address
`of a remote website and the data name for downloading. Id. (citing Ex.
`1001, 5:25–27). The download information then becomes available in the
`cached web-pages on the wireless device. Id. at 6–7 (citing Ex. 1001, 5:28–
`31). Although the claim phrase “cache storage” encompasses placing data in
`a web-browser cache on a wireless device, Petitioner argues, neither the
`claim language nor the written description of the ’780 patent limits the
`recited type of cache storage to a web-browser cache. Id. at 7.
`Patent Owner, relying on the testimony of Mr. Jawadi, argues that
`Petitioner’s proposed construction of “cache” “omits three basic cache
`principles.” Prelim. Resp. 13 (quoting Ex. 2001 ¶ 30). First, Mr. Jawadi
`asserts that “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,” and “is intended not for the initial access to the
`information, but for subsequent access or accesses to that information.”
`Ex. 2001 ¶ 31 (emphasis modified); see also Prelim. Resp. 13. Second,
`Mr. Jawadi asserts that “cache storage includes a cache search mechanism
`. . . to determine if the requested information is in cache (cache hit) or not in
`cache (cache miss).” Ex. 2001 ¶ 32 (emphasis modified); see also Prelim.
`Resp. 13. Third, Mr. Jawadi asserts that “cache storage includes a
`replacement algorithm, mechanism, or policy for replacing information in
`cache, such as least recently used (LRU) algorithm.” Ex. 2001 ¶ 33
`(emphasis modified); see also Prelim. Resp. 13.
`Patent Owner argues that the technical dictionaries cited by Petitioner
`describe these principles. Prelim. Resp. 14–16. Specifically, Patent Owner
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`argues that all three dictionaries “confirm[] 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.” Id. at 14 (quoting Ex. 2001 ¶ 35); see also id. at 14–16 (citing
`Ex. 1003 ¶¶ 35–37; Ex. 1025, 126; Ex. 1026, 72; Ex. 1027, 60–61). Patent
`Owner also argues that one of the dictionaries “confirms . . . that cache
`storage includes a replacement algorithm.” Id. at 14 (quoting Ex. 2001
`¶ 35); see also Ex. 1025, 126.
`Patent Owner argues that Petitioner’s construction is improper
`because it neglects to consider these three principles. Prelim. Resp. 16–17.
`Patent Owner, however, does not explicitly argue that the three principles
`somehow should be incorporated into the claim construction, nor does Patent
`Owner cite any language from the claims or written description of the ’780
`patent supporting a construction that would include them. See id. at 13–17.
`Moreover, the only construction Patent Owner offers is part of its
`construction of the longer phrase “download[ing] a file from a remote server
`into the first one of the storage spaces through utilizing download
`information for the file . . . cached in a cache storage of the first wireless
`device,” which Patent Owner argues requires the download information to
`be “stored in a cache storage of a wireless device.” Id. at 11. Patent Owner
`does not explain how that proposed construction takes into account the three
`alleged cache principles, nor does Patent Owner’s proposed construction
`further address the meaning of the term “cached” itself.
`At this juncture, and based on the present record, the arguments and
`evidence do not persuade us that the “cache principles” raised by Patent
`Owner should be imported into the construction of “cached in a cache
`storage of the first wireless device,” as used in the ’780 patent. For this
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`Decision, we adopt Petitioner’s proposed construction of that phrase as
`“stored in a location on the wireless device that is more readily accessible
`than the original source of the information.” Pet. 7. The parties may wish to
`address the construction of this limitation further at trial.
`2. “download[ing] a file from a remote server into the first one of the storage
`spaces through utilizing download information for the file . . . cached in a
`cache storage of the first wireless device”
`Patent Owner argues that this limitation, recited in claim 9, “requires
`information needed to download a file from a remote server to be (i) stored
`in a cache storage of a wireless device and (ii) utilized to download the file
`across a network into an assigned storage space for the user of the wireless
`device.” Prelim. Resp. 11. Patent Owner argues that this construction is
`consistent with the claim language and the written description of the ’780
`patent, which provide that the “download information” is for the file at the
`remote server and this “download information” is cached in the cache
`storage of the first wireless device. Id. at 11–12. At this juncture and based
`on the current record, we preliminarily adopt Patent Owner’s construction
`for the sole purpose of clarifying that it is the download information, not the
`file itself, that is cached in the cache storage of the first wireless device.
`C. The Asserted Prior Art
`Before turning to Petitioner’s asserted grounds of unpatentability, we
`provide a brief summary of the asserted references.
`1. Prust
`Prust describes a storage system that provides users access over a
`network to a remote storage area. Ex. 1004, 1:6–8, 4:31–49. Figure 2 of
`Prust is illustrative and reproduced on the following page.
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`Figure 2 of Prust shows client computers 205 communicatively coupled over
`global computer network 215 to remote storage network 220 via storage
`servers 2101 . . . N. Id. at 4:34–37, Fig. 2. Client computer 205 may be a
`pocket-sized mobile computer (e.g., hand-held PC or personal digital
`assistant (PDA)) using a wireless connection. Id. at 3:17–20, 3:55–62,
`Fig. 1. Storage network 220 defines a pool of virtual storage areas 2251 . . . N,
`each of which may be allocated exclusively to a particular user. Id. at 4:39–
`52, 7:33–48, Fig. 8. The user is able to access its assigned virtual storage
`area via the client computer’s operating system (id. at 5:21–6:19, Figs. 3–5),
`web browser (id. at 5:8–17, 6:33–47, Fig. 6), or email application (id. at
`6:48–7:13, Fig. 7). Prust describes that a user may access the virtual storage
`area via email by emailing files directly into a specified directory within a
`virtual storage area from a remote network location or including in an email
`to the storage server a URL that indicates where the storage server can
`retrieve the data file to be stored. Id. at 6:62–7:4.
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`2. Major
`Major describes a system and method for browsing content on the
`World Wide Web (WWW) using a wireless device. Ex. 1006, 1:6–7, 15:16–
`22, 34:5–7.4 In a disclosed embodiment, the memory of the wireless device
`includes a page cache for storing rendered page objects. Id. at 6:1–4, 16:1–
`5, 24:9–11, Fig. 5. When the user asks to see a URL, the browser first asks
`the page cache if the page object corresponding to the URL is available. Id.
`at 10:7–9. If it is, the page object can be loaded from the page cache and
`displayed by the browser very quickly (e.g., upon start-up or following a
`subsequent user request). Id. at 10:9–10, 11:12–14, 18:8–15.
`3. Kraft
`Kraft describes copy and paste operations for handsets. Ex. 1007,
`code (57). Kraft discloses a phone with a user interface having a copy and
`paste function for copying data between applications. Id. at 2:5–7. In one
`embodiment, the phone includes RAM that acts as a clipboard for the copy
`and paste function. Id. at 4:15–17. A user can select information from one
`application, press a soft key to copy the information to the clipboard, and
`then press a soft key to paste the information from the clipboard to another
`application. Id. at 4:56–59, 5:2–6. Types of text that may be copied include
`Internet addresses. Id. at 8:42–45.
`4. McCown
`McCown describes a method for downloading files across a network,
`from a remote site into a client’s storage space account within a storage site.
`Ex. 1005, 3:26–28, 8:12–13. The method may include the use of a user site,
`
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`4 Citations are to Major’s original page numbers.
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`a remote site that has a web server, and a storage site. See, e.g., id. at 3:26–
`4:7, 7:17–25.
`The user site may be a machine capable of digital network
`communications with input and output devices for sending and receiving
`information, and a browser for Internet connectivity. Id. at 7:27–8:1, 8:5–6.
`Examples of a user site include a personal computer, laptop, palmtop, or a
`cell phone. Id. at 7:27–29.
`The remote site may be a web site on the Internet with one or more
`files available for downloading. Id. at 6:17–18. The remote site may
`include a storage medium for storing files as well as file lists used to identify
`each file, for example, by URL. Id. at 6:23, 7:8–14. The remote site may
`also include a web server for interfacing the remote storage medium to the
`Internet, and the web server may be capable of sending and receiving
`information over the Internet, the information sent including webpages, file
`lists, and files. Id. at 7:17–25.
`The storage site may include a storage medium with storage space
`accounts implemented thereon for clients to access on the Internet. Id. at
`8:11–13, 8:17–18. To access its storage space account, a client must provide
`a user identification and password, which may be authenticated by an
`account manager. Id. at 8:27–9:6. The storage space account may appear as
`a mounted drive to the user site and client. Id. at 9:14–16. The storage site
`may also include a web server for sending and receiving information over
`the Internet and may communicate with the remote site’s web server. Id. at
`9:9–13.
`In one embodiment, the user site may generate a request for a web
`page containing a file list and send the request to the remote site. Id. at
`10:19–23. Having received the request, the remote site may send the
`17
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`IPR2020-01301
`Patent 9,219,780 B1
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`requested web page to the user site. Id. at 10:24–25. The user site may then
`display the file list to the client through an output device. Id. at 10:25–29.
`Using an input device, the client may select files from the file list for
`downloading. Id. at 11:4–7. The user site’s software application may accept
`and use the URL of a selected file to generate a data request and send it over
`the Internet to the storage site’s software application. Id. at 11:17–22. The
`data request may be used to generate a download request, which is sent to
`the storage site’s web server. Id. at 12:23–26. The web server may then
`send the download request to the remote site, which may download the files
`identified by the URLs to the storage site. Id. at 12:26–29. The storage site
`may receive the downloaded files and store them into the client’s storage
`space account. Id. at 12:29–13:2.
`5. Nomoto
`Nomoto discloses a method and device for receiving, storing, and
`managing files over the Internet. Ex. 1005, code (57). Figure 1 of Nomoto
`is illustrative and reproduced below:
`
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`IPR2020-01301
`Patent 9,219,780 B1
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`Figure 1 of Nomoto shows file-managing device 1, which is composed of
`one or a plurality of computers and has the basic functions of a web server.
`Id. ¶ 42. File-managing device 1 communicates with member computers 3
`over the Internet and provides a service of receiving, storing, and managing
`files. Id. Member computers are, for example, PDAs, laptop computers,
`and mobile phones capable of accessing the Internet. Id. ¶ 6.
`Nomoto’s file-managing device 1 comprises a large-scale storage
`resource composed of external devices such as hard disks and DVD-RAMs.
`Id. ¶ 44. File-managing device 1 receives files from a member computer
`through the Internet, classifies and stores the received files in the storage
`resource, and manages the files. Id. In a disclosed embodiment, file-
`managing device 1 manages a share folder for each member, which is a
`folder for storing files viewable only to particular members. Id. ¶ 18. A
`user may view and manage the files received by file-managing device 1
`from his member computer 3 via a web browser page that shows a received-
`file storage structure diagram. Id. ¶ 48, Fig. 2.
`Nomoto describes “normal” uploads and downloads between member
`computer 3 and file-managing device 1 in which a user drags and drops files
`into folders. Id. ¶¶ 53–55, 63–65. Nomoto also describes an “automatic
`download function” allowing a user to download a file located at a specific
`URL to an appropriate folder in the storage resource at a predetermined
`time. Id. ¶¶ 97–99. The user enters into a web page information such as the
`URL of the file to be downloaded, the download date and time, and the
`folder to which the file is to be downloaded. Id. ¶ 99. File-managing device
`1 then downloads the file at the specified URL to the member’s specified
`folder at the scheduled time. Id.
`
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`D. Alleged Grounds of Unpatentability
`We now consider whether the Petition satisfies the threshold
`requirement for instituting an inter partes review under 35 U.S.C. § 314(a)
`by addressing each of Petitioner’s asserted grounds of unpatentability,
`below.
`
`1. Asserted Obviousness Grounds Based on Prust
`Petitioner contends that claims 9 and 11–15 of the ’780 patent are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Prust alone, Prust
`and Major, or Prust and Kraft. Pet. 13–33. Petitioner also contends that
`claim 10 is unpatentable under 35 U.S.C. § 103(a) as obvious over Prust and
`Major or Kraft, further in view of McCown. Id. at 33–38. Petitioner relies
`on the Declaration of Dr. Weissman in support of its showing. Id. (citing
`Ex. 1003). Patent Owner opposes. Prelim. Resp. 22–43. In support of its
`Preliminary Response directed to these grounds, Patent Owner relies on the
`Declaration of Mr. Jawadi. See, e.g., id. at 23–24 (citing Ex. 2001).
`a. Claim 9
`The preamble of claim 9 recites “[a] server.” Ex. 1001, 7:7.
`Petitioner contends that Prust describes “a computing system in which a
`storage server provides seamless access to remote storage areas” and that
`each of servers 2101–210N is “a server” as claimed. Pet. 13 (citing Ex. 1004,
`1:61–63, Fig. 2; Ex. 1003 ¶ 138). Claim 9 recites that the server comprises
`“a pool of a plurality of storage spaces.” Ex. 1001, 7:8. Petitioner contends
`that each storage server in Prust is connected to a “remote storage network
`220” including virtual storage areas 2251–225N that can be assigned
`individually to different users. Pet. 13–14 (citing Ex. 1004, 4:34–37, 4:39–
`41, Fig. 2; Ex. 1003 ¶¶ 140–141).
`
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`Claim 9 recites that the server also comprises a “non-transitory
`computer-readable storage medium comprising program instructions which,
`being executed by the server, causes the server delivering storage service.”
`Ex. 1001, 7:8–11. Petitioner contends that Prust teaches this limitation.
`Pet. 14–15 (citing Ex. 1003 ¶¶ 143–147). For example, Petitioner contends
`that each of Prust’s storage servers is a computer with a hard drive for
`storing software applications that are copied to RAM for execution by a
`processor. Id. at 14 (citing Ex. 1004, 3:63–66, 4
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