IPR2020-01301
`U.S. Patent No. 9,219,780
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`ADOBE INC.,
`Petitioner
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`
`v.
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` SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner
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`
`
`Case IPR2020-01301
`U.S. Patent 9,219,780
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`
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`__________________
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`Synkloud Technologies, LLC’s Patent Owner Preliminary Response Pursuant To
`37 C.F.R. § 42.107(a)
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`

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`IPR2020-01301
`U.S. Patent No. 9,219,780
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`TABLE OF CONTENTS
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`I. INTRODUCTION .......................................................................................................................1
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`II. TECHNOLOGY BACKGROUND ...........................................................................................4
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`A.
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`B.
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`Prior Art Storage Systems ..............................................................................................4
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`The ’780 Patent: Mr. Sheng Tai Tsao Invents An Approach For Downloading
`Data From A Web Site To A Remote Storage Server Using Download
`Information Stored In The Cache Of A Wireless Device. .............................................5
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`III. PETITIONER’S PROPOSED GROUNDS FOR REVIEW .....................................................9
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`IV. CLAIM CONSTRUCTION. ....................................................................................................9
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`a.
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`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 (independent
`claim 9). ...........................................................................................................11
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`THE PETITIONER FAILED TO DEMONSTRATE IT IS REASONABLY
`LIKELY TO PREVAIL ON ANY OF ITS PROPOSED OBVIOUSNESS
`GROUNDS. .................................................................................................................17
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`The Petitioner Failed To Set Forth A Proper Obviousness Analysis ...........................20
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`Independent Claim 9 As Well As The Claims Dependent Therefrom Would
`Not Have Been Obvious Over Prust In Combination With The Secondary
`References. ...................................................................................................................22
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`The Combination Of Prust with Either Major or Kraft Would Not Have
`Taught “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” As Recited in
`Independent Claim 9. .............................................................................................25
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`The Petitioner Failed To Show That A POSITA Would Have Been
`Motivated To Modify Prust With Either Major or Kraft To Achieve The
`Particular Device Recited In Independent Claim 9 Of The ’780 Patent
`With A Reasonable Expectation Of Success. ........................................................30
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`V.
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`A.
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`B.
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`1.
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`2.
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`C.
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`Independent Claim 9 As Well As The Claims Dependent Therefrom Would
`Not Have Been Obvious Over Nomoto In Combination With The Secondary
`References. ...................................................................................................................43
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`1.
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`The Combination Of Nomoto with Either Major or Kraft Would Not Have
`Taught “download[ing] a file from a remote server into the first one of the
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`ii
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`IPR2020-01301
`U.S. Patent No. 9,219,780
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`storage spaces through utilizing download information for the file …
`cached in a cache storage of the first wireless device,” As Recited in
`Independent Claim 9. .............................................................................................45
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`2.
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`The Petitioner Failed To Show That A POSITA Would Have Been
`Motivated To Modify Nomoto With Either Major or Kraft To Achieve
`The Particular Device Recited In Independent Claim 9 Of The ’780 Patent
`With A Reasonable Expectation Of Success. ........................................................48
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`VI.
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`CONCLUSION ............................................................................................................58
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`iii
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`IPR2020-01301
`U.S. Patent No. 9,219,780
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`TABLE OF AUTHORITES
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`PAGE NO.
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`CASES
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`Arista Networks, Inc., v. Cisco Systems, Inc.,
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`2016 WL 1083023 (PTAB 2015)
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`CCS Fitness Inc. v. Brunswick Corp.,
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`288 F.3d 1366, 62 USPQ2d at 1662
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`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
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`809 F.3d 1375 (Fed. Cir. 2015)
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`Harmonic Inc. v. Avid Tech., Inc.,
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`815 F.3d 1356 (Fed. Cir. 2016)
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`In re Magnum Oil Tools Int’l, Ltd.,
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`829 F.3d 1364 (Fed. Cir. 2016)
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`Kolbe & Kolbe Millwork Co., Inc. v. Sierra Pacific Industries,
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`2019 WL 5070454 (PTAB 2019)
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`K/S Himpp v. Hear-Wear Techs., LLC,
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`751 F.3d 1362 (Fed. Cir. 2014)
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`Mylan Pharmaceuticals Inc. v. Boehringer Ingelheim International GMBH,
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`2017 WL 1052517 (PTAB 2017)
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`18, 26, 46
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`Nautilus Hyosung Inc. v. Diebold Nixdorf, Inc.,
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`2017 WL 3447870 (PTAB 2017)
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`SAS Institute v. Iancu,
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`138 S.Ct 1348 (2018)
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`Teleflex, Inc. v. Ficosa N Am. Corp.,
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`299 F.3d 1313, 63 USPQ2d 1374 (Fed. Cir. 2002)
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`10
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`18
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`19, 26, 27, 46
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`20, 29, 47
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`4, 24, 44
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`24, 27, 28, 29, 47
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`19
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`1, 17, 20, 29
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`IPR2020-01301
`U.S. Patent No. 9,219,780
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`1
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`Texas Digital Systems, Inc. v. Telegenix, Inc.,
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`308 F.3d 1193 (Fed. Cir. 2002)
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`Zodiac Pool Systems, Inc. v. Aqua Products, Inc.,
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`2018 WL 6604633 (PTAB 2018)
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`STATUTES
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`35 U.S.C. §312(a)(3)
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`35 U.S.C. §314(a)
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`37 C.F.R. §42.107
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`v
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`IPR2020-01301
`U.S. Patent No. 9,219,780
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`
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`PATENT OWNER’S EXHIBIT LIST
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`Exhibit Number Description
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`2001
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`2002
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`2003
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`Declaration of Zaydoon Jawadi
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`Curriculum Vitae of Zaydoon Jawadi
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`Hypertext Transfer Protocol -- HTTP/1.1, rfc2616, June
`1999.
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`vi
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`IPR2020-01301
`U.S. Patent No. 9,219,780
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`I. INTRODUCTION
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` The Board should deny the present request for inter partes review of
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`U.S. Patent No. 9,219,780 (“the ’780 patent”) because there is not a reasonable
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`likelihood that the Petitioner would prevail at trial with respect to at least one
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`claim of the ’780 patent for three separate and independent reasons.
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`First, each of Petitioner’s proposed grounds of rejection is missing one or
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`more limitations of the claims of the ’780 patent. Infra, §§ V.B.1 and V.C.1.
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`For example, none of the combinations of prior art references asserted by
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`Petitioner would have taught “download[ing] a file from a remote server into
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`the first one of the storage spaces through utilizing download information for
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`the file, including name of the file and internet protocol (“IP”) address of the
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`remote server, cached in a cache storage of the first wireless device,” as recited
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`in independent claim 9 of the ’780 patent. Neither of Petitioner’s primary
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`references (i.e., Prust and Nomoto) even mentions cache. And although some
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`of the secondary references (e.g., Major, Kraft) do mention cache, they do not
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`make any mention of how any of the data in cache would be used, let alone
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`that download information in the cache of a wireless device would be used
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`remotely from the wireless device—not locally at the wireless device—to
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`download a file from a remote server (e.g., a web site) to a remote storage
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`space.
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`1
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`Second, the Petitioner did not present any objective evidence as to why
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`IPR2020-01301
`U.S. Patent No. 9,219,780
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`one of ordinary skill in the art would have been motivated to modify either
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`Prust or Nomoto, the primary references, with the teachings of the secondary
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`references (e.g., Major, Kraft, Jewett), and reasonably expect success in
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`achieving the invention recited by the challenged claims of the ’780 patent.
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`That is, the Petitioner did not show that a “skilled artisan would have been
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`motivated to combine the teachings of the prior art references to achieve the
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`claimed invention, and that the skilled artisan would have had a reasonable
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`expectation of success in doing so.” OSRAM Sylvania, Inc. v. Am Induction
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`Techs., Inc., 701 F.3d 698, 706 (Fed. Cir. 2012).
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`Third, the Petitioner neglected to follow the legal framework for an
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`obviousness analysis set forth long ago by the Supreme Court. Graham v.
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`John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966); see also KSR
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`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 399 (2007) (“While the sequence of
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`these questions might be reordered in any particular case, the [Graham] factors
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`define the controlling inquiry.”) That framework requires consideration of the
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`following factors: (1) the scope and content of the prior art, (2) any differences
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`between the claimed subject matter and the prior art, and (3) the level of skill in
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`the art. The Board has previously warned that failure to identify differences
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`between the cited art and the claims is a basis for denying a petition:
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`2
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`IPR2020-01301
`U.S. Patent No. 9,219,780
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`A petitioner who does not state the differences between
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`a challenged claim and the prior art, and relies instead on the
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`Patent Owner and the Board to determine those differences based
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`on the rest of the submission in the petition risks having the
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`corresponding ground of obviousness not included for trial for
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`failing to adequately state a claim for relief.
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`Liberty Mutual v. Progressive Casualty, CBM-2012-00003, paper 7 at pp. 2-3.
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`The Petitioner ignored the Board’s warning by failing to identify the
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`differences between the challenged claims and the prior art. That is, the
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`Petitioner failed to identify the claim limitations that it believed are missing
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`from the primary references (i.e., Prust and Nomoto) and are instead taught by
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`the secondary references (e.g., Major, Kraft, McCown). Petition, 13-58.
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`Rather, Petitioner provided a description of each reference followed by a
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`conclusory statement that the references taught certain claim limitations,
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`leaving the Board to figure out whether the primary or secondary reference
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`best teaches the claim limitation. Ibid. Under this circumstance, it would be
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`“inappropriate for the Board to take the side of the Petitioner to salvage an
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`inadequately expressed ground …” Liberty Mutual v. Progressive Casualty,
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`CBM-2012-00003, paper 7 at 2 – 3; paper 8 at pp. 14-15. For this additional
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`reason, inter partes review based on obviousness should be denied. See infra, §
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`V.A.
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`3
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`For these reasons and those explained more fully below, the Petitioner
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`IPR2020-01301
`U.S. Patent No. 9,219,780
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`failed to show that it is reasonably likely to prevail on any proposed ground.
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`Accordingly, the Board should deny the Petition.
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`II. TECHNOLOGY BACKGROUND
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`A.
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`Prior Art Storage Systems
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`As discussed in the background section of the ’780 patent, prior art
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`storages systems are “categorized as internal storage or external storage.”
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`EX1001, 1:33-34. “The internal storages of a computing system include those
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`storage media such as hard disk drives, memory sticks, memory, and others
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`that are internally connected within the computing system through [a] system
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`bus or a few inches of cable.” Id. at 1:35-38. That is, internal storage media
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`“are internal components of the computing system in a same enclosure.” Id. at
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`1:39-40.
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`In contrast, “[t]he external storages of a computing system are those
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`storage media that are not the internal components of the computing system in
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`a same enclosure.” Id. at 1:42-44. Instead, external storage is “connected
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`through [a] longer cable, such as through Ethernet cable for IP based storage,
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`Fiber channel cable for fiber channel storage, or wireless communication
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`media, and others.” Id. at 1:45-47. “[E]xternal storage could be magnetic hard
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`4
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`disk drives, solid state disk, optical storage drives, memory card and others,
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`IPR2020-01301
`U.S. Patent No. 9,219,780
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`and could be in any form.” Id. at 1:47-51.
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`The inventor of the ’780 patent, however, recognized that storage on
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`users’ “wireless devices such as in their cell phone or personal data assistant
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`devices (“PDA”) … [was] usually limited to 256 MB for the PDA and much
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`less for the cell phone.” Id. at 2:39-42. Accordingly, the invention recognized a
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`need to provide wireless devices with “multiple gigabytes (GB) of storage”
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`from a remote storage server to support multimedia applications. Id. at 2:43-
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`47. Moreover, because multimedia data require large amounts of memory,
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`there was a need to store data from various sources (e.g., a web server) to the
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`remote storage server. Id. at 2:61-67.
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`B.
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`The ’780 Patent: Mr. Sheng Tai Tsao Invents An Approach For
`Downloading Data From A Web Site To A Remote Storage Server Using
`Download Information Stored In The Cache Of A Wireless Device.
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`The ’780 patent addresses the deficiencies of the prior art with an
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`approach that downloads data from a web site to a remote storage server using
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`download information in a cache of a wireless device, as shown by FIG. 3,
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`which is reproduced below.
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`5
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`IPR2020-01301
`U.S. Patent No. 9,219,780
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`One embodiment of the invention includes a wireless device (1) having a
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`web browser (8) and other software (9); a website (15); and external storage
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`(10) having file systems (11) on a server (3). Id. at 3:60-4:2. When a user of the
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`wireless device (1) desires to download data from a web server (15) to an
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`assigned file system of the assigned external storage (10) on a server (3), the
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`following steps are performed:
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`“1) Provide the user from a web-browser (8) of the wireless device (1)
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`IPR2020-01301
`U.S. Patent No. 9,219,780
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`access to a remote web server site (15) to obtain information for the
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`downloading via the path (a) of the FIG. 3”;
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`“2) The other software modules (9) of the wireless device (1) obtain the
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`downloading information, which becomes available in the cached web-pages
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`on the wireless device (1) after the web-browser (8) access[es] the web site
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`(15)”;
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`“3) The other software modules (9) of the wireless device (1) send the
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`obtained downloading information to [the] other service modules (7) of the
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`storage server (3) via the path (b)”;
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`“4) Upon receiving the downloading information from the wireless
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`device (1), the other service module (7) of the storage server (3) sends a web
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`download request to the web-site (15) via the path (c) based on download
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`information obtained and then receives the downloading data from the web
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`server of the web-site (15)”; and
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`“5) Upon receiving downloading data, the other service modules (7) of
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`the storage server (3) write[s] the data for the wireless device (1) into the
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`assigned file system (11) on the server (3).”
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`Id. at 5:23-47.
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`7
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`In this manner, the present invention downloads data using the
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`IPR2020-01301
`U.S. Patent No. 9,219,780
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`download information in the cache of the user’s wireless device (1) from the
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`web site (15) to the user’s assigned file system (11) on the server. The
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`downloaded data can later be accessed by the user device. Id. at 5:48-53.
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`Thus, the invention of the ’780 patent includes a novel and non-obvious
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`way to utilize download information in a cache of a wireless device to enable
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`easy and efficient downloading of data (e.g., a web page, a file) from a web
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`server to a remote storage space. For example, if a user of the wireless device
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`of the claimed invention of the ’780 patent were to access a picture from a web
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`site (e.g., New York Times) either to view it or to download it to remote
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`storage, the New York Times web site would not need to do anything
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`differently; it would simply transmit a file containing the picture to the
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`requester without needing to know whether the picture would be stored in
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`remote storage or viewed on the device. In other words, the web sites need not
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`be adapted or changed in any way to operate with the wireless device of the
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`present invention.
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`IPR2020-01301
`U.S. Patent No. 9,219,780
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`III. PETITIONER’S PROPOSED GROUNDS FOR REVIEW
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`For the Board’s convenience, below is a summary (as understood by
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`Patent Owner) of the claim rejections proposed by the Petitioner:
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`i.
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` Claims 9-15 have been alleged to have been obvious under § 103
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`over Prust (EX-1004) alone or combined with Major (EX-1006) or Kraft (EX-
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`1007);
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`ii. Claim 10 has been alleged to have been obvious over Prust alone
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`or combined with Major or Kraft and McCown (EX-1008);
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`iii. Claims 9-15 have been alleged to have been obvious under § 103
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`over Nomoto (EX-1005) alone or combined with Major or Kraft;
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`iv. Claim 10 has been alleged to have been obvious over Nomoto
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`alone or combined with Major or Kraft and McCown;
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`v.
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`Claim 9 has been alleged to have been obvious over Nomoto alone
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`or combined with Major or Kraft and Jewett.
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`IV. CLAIM CONSTRUCTION.
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`Claim construction is generally an issue of law. Claims in an inter partes
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`review are construed pursuant to the principle set forth by the court in Phillips
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`v. AWH Corp, 415 F.3d 1303, 1312-15 (Fed. Cir. 2005) (en banc). Under
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`Phillips, the specification is the single best source for claim interpretation. 415
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`9
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`IPR2020-01301
`U.S. Patent No. 9,219,780
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`F.3d at 1312. “The terms used in the claims bear a heavy presumption that
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`they mean what they say and have the ordinary meaning that would be
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`attributed to those words by persons skilled in the relevant art.” Texas Digital
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`System, Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed. Cir. 2002)
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`(emphasis added) (internal quotation marks omitted) (citing CCS Fitness, Inc.
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`v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002); K-2 Corp. v.
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`Salomon S.A., 191 F.3d 1356, 1362-63 (Fed. Cir. 1999); Johnson Worldwide
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`Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989 (Fed. Cir. 1999); Specialty
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`Composites v. Cabot Corp., 845 F.2d 981, 986 (Fed. Cir. 1988)).
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`In addition, a claim preamble may be construed as limiting “if it recites
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`essential structure or steps, or if it is ‘necessary to give life, meaning, and
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`vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289
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`F.3d 801, 808 (Fed. Cir. 2002), quoting Pitney Bowes, Inc. v. Hewlett-Packard
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`Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Additionally, the “appropriate
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`context” to read a claim term includes both the specification and the claim
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`language itself. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir.
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`2010). If a term is “used differently by the inventor,” he may provide a special
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`definition if he does so with “reasonable clarity, deliberateness, and precision.”
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`In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
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`10
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`Although Patent Owner does not agree with Petitioner’s proposed claim
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`IPR2020-01301
`U.S. Patent No. 9,219,780
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`constructions, the Board need not address claim construction at this stage
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`because under Petitioner’s own claim construction, Petitioner failed to show
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`that it is reasonably likely to prevail against any claim on any ground. None of
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`the challenged claims would have been obvious under Petitioner’s own claim
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`construction.
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`a.
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`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
`(independent claim 9).
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`The claim limitation “download[ing] a file from a remote server into the
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`first one of the storage spaces through utilizing download information for the
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`file … cached in a cache storage of the first wireless device” is recited in
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`independent claim 9. This claim limitation requires information needed to
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`download a file from a remote server to be (i) stored in a cache storage of a
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`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.
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`This claim construction is consistent with the claim language itself.
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`Claim 9 explicitly recites that the “download information for the file … [is]
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`cached in the cache storage of the first wireless device.” EX1001, 7:29-34.
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`Claim 9 also recites “download[ing] a file from a remote server.” Id. at 7:28-
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`11
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`30. Therefore, the claimed “download information” is for the file at the remote
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`server and this “download information” is stored in the cache storage of the
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`IPR2020-01301
`U.S. Patent No. 9,219,780
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`wireless device.
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`Patent Owner’s proposed construction is also consistent with the
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`Specification. The Specification explains that the claimed “download
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`information for the file” is stored in the cache of the wireless device: “the
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`downloading information for the data, which becomes available in the cached
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`web-pages on the wireless device.” Id. at 5:30-33. This download information
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`in the wireless device’s cache is, in fact, utilized to download the file:
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`3) The other software modules (9) of the wireless device (1) send
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`the obtained downloading information to other service modules
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`(7) of the storage server (3) via path (b) of FIG. 3.
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`4) Upon receiving the downloading information from the wireless
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`device (1), the other service module (7) of the storage server (3)
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`sends a web download request to the web-site (15) via path (c) of
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`FIG. 3 based on download information obtained. and receives the
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`downloading data streams from the web server of the web-site
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`(15).
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`EX1001, 5:34-43.
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`Both the claim language itself and the Specification support Patent
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`Owner’s proposed construction.
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`12
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`Petitioner’s construction of “cache” as “storage that is more readily
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`IPR2020-01301
`U.S. Patent No. 9,219,780
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`accessible than the original source of the information” (Petition, 5-6) is flawed.
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`As explained by Mr. Jawadi, “[a] POSITA would have known that cache storage
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`is not merely any storage location “that is more readily accessible than the original
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`source of the information” because it “omits three basic cache principles.”
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`EX2001, ¶ 30.
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`“First, cache storage is used to save information that may be needed multiple
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`times (subsequent to initial access) in a more readily accessible location, eliminating
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`the need to retrieve the data again from the original source of the information. In
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`other words, storing information in cache, when the information is initially fetched,
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`is intended not for the initial access to the information, but for subsequent access or
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`accesses to that information.” Id. at ¶ 31 (emphasis in original).
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`“Second, cache storage includes a cache search mechanism invoked when
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`information is needed. The cache search mechanism is used to determine if the
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`requested information is in cache (cache hit) or not in cache (cache miss). If the
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`information is not in cache, the information is fetched and stored in cache in
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`anticipation of subsequent accesses to that information.” Id. at ¶ 32 (emphasis in
`
`original). “Third, cache storage includes a replacement algorithm, mechanism, or
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`policy for replacing information in cache, such as least recently used (LRU)
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`algorithm.” Id. at ¶ 33 (emphasis in original).
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`Indeed, Petitioner’s own references describe these three principles. For
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`example, “Petitioner’s EX-1025 (Newton’s Telecom Dictionary) confirms that
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`cache storage is used to save information that may be needed multiple times
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`(subsequent to initial access), that cache storage includes a mechanism to determine
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`cache hit/miss, and that cache storage includes a replacement algorithm” (EX2001,
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`¶ 35):
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`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). “Petitioner’s EX-1026
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`(Microsoft Press Computer Dictionary) also confirms that cache storage is used to
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`save information that may be needed multiple times (subsequent to initial access)
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`and that cache storage includes a mechanism to determine cache hit/miss” (EX2001,
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`¶ 36):
`
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`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). “Petitioner’s
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`EX-1027 (New Penguin Dictionary of Computing) also confirms that cache
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`storage is used to save information that may be needed multiple times (subsequent
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`to initial access) and that cache storage includes a mechanism to determine cache
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`hit/miss” (EX2001, ¶ 37):
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`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.”
`
`
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`EX-1027 (New Penguin Dictionary of Computing) (emphasis added). In addition,
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`Major describes a way to determine whether there is a hit or miss in cache and a
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`replacement algorithm. EX1006, 21:1-5, 11:15-16, 11:20-21, 18:18-19.
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`Thus, Petitioner’s construction, which deems as cache any location that is
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`“more readily accessible than the original source of the information” neglects to
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`consider that a POSITA would have known of these three basic cache principles
`
`(i.e., 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). “[U]nder such
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`overly broad and flawed construction, any storage location (e.g., disk drive,
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`random access memory, etc.) that stores the information and that is faster than the
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`original source would constitute cache, even if the information is only transitorily
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`and temporarily stored in that location and not saved for future hits, even if the
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`location is never intended or designed to operate as cache, even if the location does
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`not operate as cache (missing the three basic cache principles mentioned above),
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`and even if the location entirely contradicts the three basic cache principles
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`described earlier.” EX2001, ¶ 39. Indeed, “[u]nder Petitioner’s construction, other
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`than the original location where a web page is stored at the web server, any storage
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`location where the web page is stored would constitute cache, because any such
`
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`alleged storage location other than the original location is ‘more readily accessible
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`than the original source of the information.’” Id. at ¶ 40.
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`For all these reasons, a POSITA would not have understood the “cache”
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`limitations to have the constructions proposed by Petitioner. Petitioner’s
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`constructions are improper.
`
`
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`V. THE PETITIONER FAILED TO DEMONSTRATE IT IS
`REASONABLY LIKELY TO PREVAIL ON ANY OF ITS
`PROPOSED OBVIOUSNESS GROUNDS.
`
`As set forth by the Supreme Court, the question of obviousness is
`
`resolved on the basis of underlying factual determinations including (1) the
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`scope and content of the prior art, (2) any differences between the claimed
`
`subject matter and the prior art, (3) the level of skill in the art. Graham v. John
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`Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966); see also KSR Int’l
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`Co. v. Teleflex Inc., 550 U.S. 398, 399 (2007) (“While the sequence of these
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`questions might be reordered in any particular case, the [Graham] factors
`
`define the controlling inquiry.”) A petitioner seeking to invalidate a patent as
`
`obvious must demonstrate that a “skilled artisan would have been motivated to
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`combine the teachings of the prior art references to achieve the claimed
`
`invention, and that the skilled artisan would have had a reasonable expectation
`
`of success in doing so.” OSRAM Sylvania, Inc. v. Am. Induction Techs., Inc.,
`
`
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`701 F.3d 698, 706 (Fed. Cir. 2012). The Petition’s evidence must also address
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`every limitation of every challenged claim.
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`Indeed, it is Petitioner’s burden to demonstrate, based on the parties'
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`papers, “that there is a reasonable likelihood that the petitioner would prevail
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`with respect to at least one of the claims challenged in the petition.” SAS
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`Institute v. Iancu, 138 S. Ct. 1348, 1353 (2018) citing 35 U.S.C. § 314(a).
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`Importantly, the burden rests on Petitioner—there is no burden on Patent
`
`Owner to prove to the contrary. Dynamic Drinkware, LLC v. Nat’l Graphics,
`
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (Petitioner bears the burden of
`
`proving unpatentability of the challenged claims, and the burden of persuasion
`
`never shifts to Patent Owner.); Zodiac Pool Systems, Inc. v. Aqua Products,
`
`Inc., 2018 WL 6604633 *1 (PTAB 2018). In a contest to invalidate a patent
`
`based on obviousness over prior art, the burden is that of Petitioner to point to
`
`the passages in each reference relied upon to show all limitations recited in the
`
`claims, or, in the alternative, demonstrate conclusively that each of those
`
`limitations would be understood by the skilled artisan to be a natural
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`supplement to the express teaching of the references. See, Mylan
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`Pharmaceuticals Inc. v. Boehringer Ingelheim International GMBH, 2017 WL
`
`1052517*1 (PTAB 2017):
`
`
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`It is Petitioner's burden to set forth the basis for its challenge in the
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`Petition. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356,
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`1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3), requiring inter
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`partes review petitions to identify “with particularity ... the
`
`evidence that supports the grounds for the challenge to each
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`claim.”). In Harmonic, the Federal Circuit held that “it was
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`Harmonic's burden to explain to the Board how Haskell combined
`
`with Rossmere rendered the challenged claims unpatentable.
`
`
`
`While references relied upon are understood in light of the level of skill
`
`in the art, if that level of skill in the art is relied upon to show the presence of
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`precise limitations recited in the challenged claims, specific explanation and
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`evidence must be provided to support that contention – mere conclusory
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`statements will not suffice to meet Petitioner’s burden. Importantly, where the
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`Petitioner seeks to rely on the knowledge of skill in the art,