UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________
`
`ADOBE INC.
`Petitioner
`
`v.
`
`SYNKLOUD TECHNOLOGIES, LLC
`Patent Owner
`
`___________
`
`Patent No. 9,219,780
`___________
`
`DECLARATION OF JON WEISSMAN, PH.D.
`
`REGARDING U.S. PATENT NO. 9,219,780
`
`Adobe – Exhibit 1003, cover
`
`

`

`TABLE OF CONTENTS
`
`V.
`
`Background and Qualifications .......................................................................... 1
`I.
`II. Materials Considered .......................................................................................... 5
`III.
`Legal Standards for Patentability ....................................................................... 8
`IV.
`The ’780 Patent ................................................................................................. 14
`A.
`Effective Filing Date of the ’780 Patent ................................................ 14
`B.
`Overview of the ’780 Patent .................................................................. 15
`C.
`Prosecution History of the ’780 Patent .................................................. 20
`D.
`Claims of the ’780 Patent ....................................................................... 21
`State of the Art in 2003 .................................................................................... 23
`A.
`Level of Ordinary Skill in the Art .......................................................... 23
`B.
`General Knowledge of a Person of Ordinary Skill in the Art ................ 25
`1.
`Network Communication Protocols ............................................ 26
`2.
`Caching on Wireless Devices ...................................................... 30
`3.
`Uniform Resource Locators (URLs) ........................................... 33
`4.
`Remote Storage Systems for Wireless Devices ........................... 34
`5. Wireless Application Protocol (WAP) and Wireless Markup
`Language (WML) for Mobile Browsers ...................................... 39
`VI. Claim Construction ........................................................................................... 40
`A.
`“cached in a cache storage of the first wireless device” ........................ 41
`VII. Overview of Prior Art References .................................................................... 44
`A.
`Overview of Prust................................................................................... 44
`B.
`Overview of Nomoto .............................................................................. 53
`C.
`Overview of Major ................................................................................. 60
`D.
`Overview of Kraft .................................................................................. 63
`E.
`Overview of McCown ............................................................................ 67
`VIII. The Challenged Claims Are Rendered Obvious by Prust As the Primary
`Prior Art Reference ........................................................................................... 69
`A.
`Claim 9 ................................................................................................... 70
`B.
`Claim 10 ................................................................................................. 99
`
`Adobe – Exhibit 1003, page i
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`

`

`Claim 11 ............................................................................................... 105
`C.
`Claim 12 ............................................................................................... 106
`D.
`Claim 13 ............................................................................................... 107
`E.
`Claim 14 ............................................................................................... 108
`F.
`Claim 15 ............................................................................................... 109
`G.
`H. Motivation to Combine Prior Art References ...................................... 110
`1.
`The ’780 Patent, Prust, Major, Kraft, and McCown Are
`Analogous References ............................................................... 110
`Motivation to Combine Prust with Major .................................. 113
`a)
`Prust And Major Address Similar Technology and
`Functionality .................................................................... 113
`A POSITA Would Have Recognized The Benefits Of
`Combining Prust With Major .......................................... 114
`A POSITA Would Have Recognized That Prust
`Could Be Modified to Employ Major’s Caching
`Browser ............................................................................ 116
`Motivation to Combine Prust with Kraft ................................... 117
`a)
`Prust and Kraft Address Similar Technology And
`Functionality .................................................................... 117
`A POSITA Would Have Recognized the Benefits of
`Combining Prust with Kraft ............................................ 119
`A POSITA Would Have Recognized That Prust
`Could Be Modified to Employ Kraft’s Copy-and-
`Paste Functionality .......................................................... 120
`Motivation to Combine Prust with McCown ............................ 122
`a)
`Prust and McCown Address Similar Technology and
`Functionality .................................................................... 122
`A POSITA Would Have Recognized the Benefits of
`Combining Prust with McCown ...................................... 124
`A POSITA Would Have Recognized That Prust
`Could Be Combined with the Teaching of McCown ...... 125
`
`b)
`
`b)
`
`c)
`
`b)
`
`c)
`
`c)
`
`TABLE OF CONTENTS
`(continued)
`
`Adobe – Exhibit 1003, page ii
`
`2.
`
`3.
`
`4.
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`IX.
`
`The Challenged Claims Are Rendered Obvious by NOMOTO As the
`Primary Prior Art Reference ........................................................................... 126
`A.
`Claim 9 ................................................................................................. 127
`B.
`Claim 10 ............................................................................................... 151
`C.
`Claim 11 ............................................................................................... 157
`D.
`Claim 12 ............................................................................................... 157
`E.
`Claim 13 ............................................................................................... 158
`F.
`Claim 14 ............................................................................................... 160
`G.
`Claim 15 ............................................................................................... 160
`H. Motivation to Combine Prior Art References ...................................... 161
`1.
`The ’780 Patent, Nomoto, Major, Kraft, and McCown Are
`Analogous References ............................................................... 161
`Motivation to Combine Nomoto with Major ............................. 164
`a)
`Nomoto and Major Address Similar Technology and
`Functionality .................................................................... 164
`A POSITA Would Have Recognized The Benefits Of
`Combining Nomoto With Major ..................................... 166
`A POSITA Would Have Recognized That Nomoto
`Could Be Modified to Employ Major’s Web Caching
`Functionality .................................................................... 168
`Motivation to Combine Nomoto with Kraft .............................. 170
`a)
`Nomoto and Kraft Address Similar Technology and
`Functionality .................................................................... 170
`A POSITA Would Have Recognized the Benefits of
`Combining Nomoto with Kraft ....................................... 171
`A POSITA Would Have Recognized That Nomoto
`Could Be Modified to Employ Kraft’s Copy-and-
`Paste Functionality .......................................................... 172
`Motivation to Combine Nomoto with McCown ........................ 174
`a)
`Nomoto and McCown Address Similar Technology
`and Functionality ............................................................. 175
`
`b)
`
`2.
`
`3.
`
`4.
`
`c)
`
`b)
`
`c)
`
`Adobe – Exhibit 1003, page iii
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`b)
`
`A POSITA Would Have Recognized the Benefits of
`Combining Nomoto with McCown ................................. 176
`A POSITA Would Have Recognized That Nomoto
`Could Be Combined with the Teaching of McCown ...... 178
`Conclusion ...................................................................................................... 178
`
`c)
`
`X.
`
`Adobe – Exhibit 1003, page iv
`
`

`

`I, Jon Weissman, Ph.D., declare as follows:
`
`1.
`
`I make this declaration based upon my own personal knowledge and,
`
`if called upon to testify, would testify competently to the matters stated herein.
`
`2.
`
`I have been asked by Adobe Inc. to provide technical assistance in
`
`connection with the inter partes review of U.S. Patent No. 9,219,780 (which I will
`
`refer to as the “’780 Patent”). This declaration is a statement of my opinions on
`
`issues related to the patentability of claims 9-15 (which I will refer to as the
`
`“challenged claims”) of the ’780 Patent.
`
`3.
`
`My compensation is not based on the content of my opinions or the
`
`resolution of this matter.
`
`I.
`
`BACKGROUND AND QUALIFICATIONS
`
`4.
`
`In formulating my opinions, I have relied on my knowledge, training,
`
`and experience in the relevant field, which I will summarize briefly.
`
`5.
`
`My academic and professional background is in computer science,
`
`specifically in the areas of distributed systems, Internet and Web technologies, and
`
`mobile and cloud computing. I am a leading researcher and educator in these
`
`areas. My career includes over 25 years’ experience in industry and academia.
`
`My curriculum vitae, which includes a more detailed summary of my background,
`
`experience, and publications, as well as a list of cases in which I have testified at
`
`deposition or trial during at least the past four years, is attached as Attachment A.
`
`Adobe – Exhibit 1003, page 1
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`

`

`Below I provide a short summary of my education and experience, which I believe
`
`to be most pertinent to the opinions that I express in this declaration.
`
`6.
`
`I received a Bachelor of Science degree in Applied Mathematics and
`
`Computer Science from Carnegie Mellon University in 1984. I received a Master
`
`of Science degree in Computer Science in 1989 and a Ph.D. degree in Computer
`
`Science in 1995, both from the University of Virginia. My Ph.D. thesis involved
`
`developing the first automated scheduling system for parallel and distributed
`
`applications across heterogeneous local and wide-area networks. I have also
`
`worked in industry for five years in the area of distributed systems.
`
`7.
`
`In 1995, I joined the faculty of the University of Texas in San Antonio
`
`as Assistant Professor of Computer Science. In 1999, I joined the faculty of the
`
`University of Minnesota as Assistant Professor of Computer Science, where I am
`
`currently Full Professor of Computer Science – the highest academic rank at a top-
`
`tier research University. At the University of Minnesota, I lead the Distributed
`
`Computing Systems Group, consisting of faculty colleagues and both graduate and
`
`undergraduate students. I also serve as an investigator for the Center for Research
`
`in Intelligent Storage (CRIS), sponsored by the National Science Foundation, and
`
`the Digital Technology Center (DTC), University of Minnesota. The DTC
`
`integrates research, education, and outreach in digital design, computer graphics
`
`and visualization, telecommunications, intelligent data storage and retrieval
`
`Adobe – Exhibit 1003, page 2
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`

`

`systems, multimedia, data mining, scientific computation, and other digital
`
`technologies.
`
`8.
`
`As a systems researcher, I have built practical systems that have
`
`application in a wide variety of settings across many different types of distributed
`
`and parallel systems. The ’780 Patent generally relates to providing remote storage
`
`for wireless client devices. I have experience with similar systems and techniques
`
`including those that enable less capable client devices (in terms of computing
`
`power, memory, and network capability) to access more powerful remote
`
`resources. For example, I was a lead designer on one of the first distributed Grid
`
`computing systems that spanned the Internet, called Legion. My current work
`
`includes Wiera, a distributed cloud storage system, Nebula (now Armada), a
`
`distributed edge-based cloud platform for outsourcing computation and data
`
`storage, and Constellation, a distributed Internet-of-Things (IoT) middleware
`
`system for caching data in support of sensor applications connected on wireless
`
`networks. In Constellation, a local edge node caches sensor data for application
`
`access; specifically, Constellation uses an in-memory cache to speed up application
`
`access to sensor data and enables an application to avoid accessing the sensor when
`
`there is fresh sensor data already in the cache. All of these platforms run on the
`
`Internet and utilize Web technologies. In earlier work, I developed several mobile-
`
`server outsourcing systems that offloaded storage and computation to localized
`
`Adobe – Exhibit 1003, page 3
`
`

`

`edge servers and the cloud, and a proxy network system that provided network
`
`storage, computation, and communication routing, for poorly resourced and
`
`connected client devices. In particular, the Nebula, mobile outsourcing and proxy
`
`projects enabled a client device (such as a wireless mobile device) to store and
`
`retrieve data at a more capable machine equipped with greater storage. Details of
`
`these systems may be found at dcsg.cs.umn.edu.
`
`9.
`
`I have published over 100 technical articles, most in connection with
`
`highly competitive refereed conferences or for rigorously reviewed journals. I
`
`have served on the technical editorial boards of several leading journals, including
`
`IEEE Transactions on Parallel and Distributed Systems and IEEE Transactions on
`
`Computers. I am also the steering committee chair for the ACM International
`
`Symposium on High Performance Parallel and Distributed Systems, the flagship
`
`conference in my area.
`
`10.
`
`I also teach a variety of courses that have explored topics relevant to
`
`the ’780 Patent, including operating systems, distributed systems, and Internet and
`
`Web applications: Undergraduate Operating Systems, Graduate Operating
`
`Systems, Distributed Systems, Advanced Distributed Systems, Computer
`
`Networking, Internet Programming, to name a few. In these classes, I teach the
`
`students about Web protocols, uploading and downloading of content, remote
`
`storage, mobile-to-server offloading and storage, networking and communication,
`
`Adobe – Exhibit 1003, page 4
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`

`

`and Internet/Web applications.
`
`11. Based on my substantial academic and professional experiences, I
`
`believe that I am qualified in the technology fields pertaining to this ’780 Patent, as
`
`at least a person of ordinary skill in the relevant art.
`
`II. MATERIALS CONSIDERED
`
`12.
`
`I have reviewed and considered the following documents, among
`
`others, in connection with my analysis of the ’780 Patent:
`
`• the ’780 Patent (Ex. 1001);
`
`• the prosecution history of U.S. Patent Application No. 14/623,476,
`
`which led to the issuance of the ’780 Patent (“File History”)
`
`(Ex. 1002);
`
`• U.S. Patent No. 6,735,623 (“Prust”) (EX-1004);
`
`• U.S. Patent Application Publication No. US2001/0028363
`
`(“Nomoto”) (EX-1005);
`
`• International Patent Application Publication WO 02/052785
`
`(“Major”) (EX-1006);
`
`• U.S. Patent No. 6,309,305 (“Kraft”) (EX-1007);
`
`• International Patent Application Publication WO 01/67233
`
`(“McCown”) (EX-1008);
`
`• RFC 1738: “Uniform Resource Locators (URL)” (EX-1009);
`
`Adobe – Exhibit 1003, page 5
`
`

`

`• RFC 793: “Transmission Control Protocol, DARPA Internet Program,
`
`Protocol Specification” (EX-1010);
`
`• RFC 959: “File Transfer Protocol (FTP)” (EX-1011);
`
`• RFC 1945: “Hypertext Transfer Protocol - HTTP/1.0” (EX-1012);
`
`• RFC 2518: “HTTP Extensions for Distributed Authoring –
`
`WEBDAV” (EX-1013);
`
`• “Disconnected Operation in the Coda File System,” James J. Kistler
`
`and M. Satyanarayanan, ACM Transactions on Computer Systems,
`
`Vol. 10, No. 1, February 1992 (EX-1014);
`
`• “TranSquid: Transcoding and Caching Proxy for Heterogeneous E-
`
`Commerce Environments,” Maheshwari et al., Proceedings of the
`
`12th International Workshop on Research Issues in Data Engineering:
`
`Engineering e-Commerce/e-Business Systems (RIDE ’02), 2002
`
`(EX-1015);
`
`• “Managing Update Conflicts in Bayou, a Weakly Connected
`
`Replicated Storage System,” Terry et al., SOSP95: 15th ACM
`
`Symposium on Operating Systems Principles, Copper Mountain
`
`Colorado USA, December, 1995 (EX-1016);
`
`• “A Mobility-Aware File System for Partially Connected Operation”
`
`by Dwyer et al., ACM SIGOPS Operating Systems Review, January
`
`Adobe – Exhibit 1003, page 6
`
`

`

`1997 (EX-1017);
`
`• “Reducing File System Latency using a Predictive Approach” by
`
`Griffioen et al., USTC’94: Proceedings of the USENIX Summer 1994
`
`Technical Conference on USENIX Summer 1994 Technical
`
`Conference - Volume 1, 1994 (EX-1018);
`
`• U.S. Patent No. 8,117,644 (“Chaganti”) (EX-1019);
`
`• U.S. Patent No. 6,907,225 (“Wilkinson”) (EX-1020);
`
`• U.S. Patent Application Publication No. US 2003/0167316
`
`(“Bramnick”) (EX-1021);
`
`• “Wireless Application Protocol Architecture Specification,” Wireless
`
`Application Protocol Forum, Ltd., (Apr. 30, 1998) (EX-1022);
`
`• “WebDAV: What It Is, What It Does, Why You Need It,” Hernández,
`
`et al., SIGUCCS ‘03: Proceedings of the 31st annual ACM SIGUCCS
`
`Fall Conference, 2003 (EX-1023);
`
`• U.S. Patent Application Publication No. US 2002/0067742 (“Or”)
`
`(EX-1024);
`
`• Newton’s Telecom Dictionary, 15th Edition, Miller Freeman, Inc.,
`
`1999 (excerpts) (EX-1025);
`
`• Microsoft Press Computer Dictionary, Third Edition, Microsoft Press,
`
`1997 (excerpts) (EX-1026); and
`
`Adobe – Exhibit 1003, page 7
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`

`

`• The New Penguin Dictionary of Computing, Dick Pountain, 2001
`
`(excerpts) (EX-1027).
`
`13.
`
`In addition, my opinions are based on my years of experience with
`
`network communications and distributed systems, specifically including remote
`
`storage systems and associated techniques to access storage.
`
`14.
`
`I also reviewed several declarations by expert witnesses that I
`
`understand were submitted in support of or in opposition to IPR petitions filed by
`
`others challenging either the ’780 Patent or another related patent. I did not base
`
`my opinions expressed in this declaration on any of those other declarations, and I
`
`did not see anything that changed any of my opinions.
`
`III. LEGAL STANDARDS FOR PATENTABILITY
`
`15. My opinions are also formed by my understanding of the relevant law.
`
`I am not an attorney. For purposes of this declaration, I have been informed about
`
`certain aspects of the law as it relates to my opinions.
`
`16.
`
`I understand that for an invention claimed in a patent to be found
`
`patentable, it must be (among other things) new and not obvious based on what
`
`was known before the invention was made.
`
`17.
`
`I understand that the information that is used to evaluate whether an
`
`invention was new and not obvious when made is generally referred to as “prior
`
`art.” I understand that the prior art includes all patents and printed publications
`
`Adobe – Exhibit 1003, page 8
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`

`

`that existed before the earliest filing date of the patent (i.e., the “effective filing
`
`date”). This includes foreign language material. I also understand that a patent is
`
`prior art if it was filed before the effective filing date of the claimed invention and
`
`that a printed publication is prior art if it was publicly available before the effective
`
`filing date.
`
`18.
`
`I understand that in this inter partes review proceeding, Adobe has the
`
`burden of proving that the challenged claims of the ’780 Patent are unpatentable in
`
`light of the prior art by a preponderance of the evidence. I understand that a
`
`preponderance of the evidence is evidence sufficient to show that a fact is more
`
`likely true than not true.
`
`19.
`
`I understand that patent claims in an inter partes review are
`
`interpreted by applying the same standard that applies in District Court litigation.
`
`After the claims are construed, they are then compared to the prior art.
`
`20.
`
`I understand that in this inter partes review proceeding, the
`
`information that may be evaluated is limited to patents and printed publications.
`
`My analysis, which is set out in detail below, compares the challenged claims of
`
`the ’780 Patent to patents and printed publications that are prior art to the claims.
`
`21.
`
`I understand that prior art can render the claim “obvious” to a person
`
`of ordinary skill in the art. My understanding of this legal standard is set out
`
`below.
`
`Adobe – Exhibit 1003, page 9
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`

`

`22.
`
`I understand that prior art can render a patent claim unpatentable
`
`where subject matter that falls within the scope of the claim would have been
`
`obvious to a person of ordinary skill in the art. I understand that the following
`
`standards govern the determination of whether a patent claim is rendered
`
`“obvious” in light of the prior art. I have applied these standards in my evaluation
`
`of whether the challenged claims of the ’780 Patent are obvious in light of the prior
`
`art.
`
`23.
`
`I understand that a claimed invention is not patentable if it would have
`
`been obvious to a person of ordinary skill in the field of the invention at the time
`
`the invention was made. The person of ordinary skill in the art is a hypothetical
`
`person who is presumed to have known the relevant art at the time of the invention.
`
`Even if all the requirements of a claim were not found in a single prior art
`
`reference, the claim is not patentable if the differences between the subject matter
`
`in the prior art and the subject matter in the claim would have been obvious to a
`
`person of ordinary skill in the art at the time the application was filed. Prior art
`
`disclosing a method or device that falls within the scope of a claim can render that
`
`claim obvious even if other, different methods or devices might also fall within the
`
`scope of the claim.
`
`24.
`
`I understand that a determination as to whether a claim would have
`
`been obvious should be based on four factors (though not necessarily in the
`
`Adobe – Exhibit 1003, page 10
`
`

`

`following order): (i) the level of ordinary skill in the art at the time the application
`
`was filed; (ii) the scope and content of the prior art; (iii) the differences between
`
`the claimed invention and the prior art; and (iv) any “objective factors” indicating
`
`obviousness or non-obviousness that may exist in a particular case.
`
`25.
`
`I understand that an obviousness analysis should not be based on
`
`hindsight, but must be done using the perspective of a person of ordinary skill in
`
`the relevant art as of the effective filing date of the patent claim.
`
`26.
`
`I understand the objective factors indicating obviousness or non-
`
`obviousness may include: commercial success of products covered by the patent
`
`claims; a long-felt but unaddressed need for the invention; failed attempts by
`
`others to make the invention; copying of the invention by others in the field;
`
`expressions of surprise by experts and those skilled in the art at the making of the
`
`invention; and the patentee having proceeded contrary to the accepted wisdom of
`
`the prior art. I also understand that any of this evidence must be specifically
`
`connected to the claimed invention rather than associated with the prior art or with
`
`marketing or other efforts to promote an invention. I am not presently aware of
`
`any evidence of such objective factors suggesting the claims of the ’780 Patent are
`
`non-obvious. Should the Patent Owner submit evidence purportedly showing such
`
`objective factors, I reserve the right to consider the evidence and respond to it.
`
`27.
`
`I understand that the teachings of two or more prior art references may
`
`Adobe – Exhibit 1003, page 11
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`

`

`be combined in the manner disclosed in the claim if such a combination would
`
`have been obvious to one having ordinary skill in the art. In determining whether a
`
`combination would have been obvious, the following exemplary rationales may
`
`support a conclusion of obviousness:
`
`• combining prior art elements according to known methods to yield
`
`predictable results;
`
`• simple substitution of one known element for another to obtain
`
`predictable results;
`
`• use of a known technique to improve similar devices (methods, or
`
`products) in the same way;
`
`• applying a known technique to a known device (method, or product)
`
`ready for improvement to yield predictable results;
`
`• “obvious to try” – choosing from a finite number of identified,
`
`predictable solutions, with a reasonable expectation of success;
`
`• known work in one field of endeavor may prompt variations of it for
`
`use in either the same field or a different one based on design
`
`incentives or other market forces if the variations are predictable to
`
`one of ordinary skill in the art;
`
`• some teaching, suggestion, or motivation in the prior art that would
`
`have led one of ordinary skill to modify the prior art reference or to
`
`Adobe – Exhibit 1003, page 12
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`

`

`combine prior art reference teachings to arrive at the claimed
`
`invention; and
`
`• common sense.
`
`28.
`
`I understand that the obviousness analysis need not seek out precise
`
`teachings directed to the specific subject matter of the challenged claim, but
`
`instead can take account of the ordinary innovation and experimentation in the
`
`relevant field that does no more than yield predictable results.
`
`29.
`
`I understand that, in assessing whether there was an apparent reason to
`
`modify or combine known elements as claimed, it may be necessary to look to
`
`interrelated teachings of multiple patents and printed publications, the effects of
`
`commercial demands, and the background knowledge of a person of ordinary skill
`
`in the art. I further understand that any motivation that would have applied to a
`
`person of ordinary skill in the art, including motivation from common sense or
`
`derived from the problem to be solved, is sufficient to explain why references
`
`would have been combined.
`
`30.
`
`I understand that modifications and combinations suggested by
`
`common sense are important and should be considered. Common sense suggests
`
`that familiar items can have obvious uses beyond the particular application being
`
`described in a prior art reference, that if something can be done once it would be
`
`obvious to do it multiple times, and that in many cases a person of ordinary skill in
`
`Adobe – Exhibit 1003, page 13
`
`

`

`the art can fit the teachings of multiple patents together in an obvious manner to
`
`address a particular problem. Further, the prior art does not need to be directed to
`
`solving the same problem that is addressed in the patent.
`
`31.
`
`I understand that a person of ordinary skill in the art is also a person
`
`of ordinary creativity. In many fields, it may be that there is little discussion of
`
`obvious techniques, modifications, and combinations, and it may be the case that
`
`market demand, rather than scientific research or literature, will drive a new
`
`design. When there is market pressure or design need to solve a particular problem
`
`and there are a finite number of identified, predictable solutions, a person of
`
`ordinary skill has a good reason to employ the known options. If this leads to the
`
`expected success, then it is likely the product of ordinary skill and common sense
`
`as opposed to patentable innovation. I understand that if a combination was
`
`obvious to try, that may show that it was obvious and therefore unpatentable. That
`
`a particular combination of prior art elements was obvious to try suggests that the
`
`combination was obvious even if no one made the combination.
`
`IV. THE ’780 PATENT
`
`A.
`
`32.
`
`Effective Filing Date of the ’780 Patent
`
`The ’780 Patent issued from U.S. Application No. 14/623,476, which
`
`was filed on February 16, 2015. ’780 Patent at cover (Ex. 1001). That application
`
`was a continuation of U.S. Application No. 14/150,106, which was filed on
`
`Adobe – Exhibit 1003, page 14
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`

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`January 8, 2014, and later issued as U.S. Patent No. 9,098,526. That prior
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`application was a continuation of U.S. Application No. 14/079,831, which was
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`filed on November 14, 2013, and issued as U.S. Patent No. 8,868,690. That prior
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`application was a continuation of U.S. Application No. 10/726,897, which was
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`filed on December 4, 2003, and issued as U.S. Patent No. 8,606,880.
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`33.
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`I have been asked to assume that the effective filing date of the ’780
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`Patent is December 4, 2003, the date on which the earliest related patent
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`application was filed. For purposes of this declaration, I have evaluated the
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`challenged claims from the perspective of a person of ordinary skill in the art as of
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`December 4, 2003.
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`34.
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`I understand that, in related district court proceedings, the patent
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`owner has claimed that the priority date for the ’780 Patent is January 22, 2003. I
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`have not reviewed any evidence supporting that assertion and have formed no
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`opinion with regard to its merit. However, I have considered whether any of the
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`opinions I express in this declaration would change if the priority date of the ’780
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`Patent is January 22, 2003, instead of December 4, 2003. My opinions would not
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`change.
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`B.
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`35.
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`Overview of the ’780 Patent
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`The ’780 Patent is entitled “Method and System for Wireless Device
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`Access to External Storage.” ’780 Patent at cover (Ex. 1001). According to the
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`Adobe – Exhibit 1003, page 15
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`patent specification, the “invention focuses on a wireless device accessing and
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`using external storage space provided by a server.” ’780 Patent at 1:24-25.
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`36.
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`The “Background Information” section of the ’780 Patent draws a
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`distinction between “internal storage” and “external storage.” ’780 Patent at 1:35-
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`53. Internal storage includes “storage media such as hard disk drives memory
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`sticks, and memory etc.” that “actually are internal components of the computing
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`system in a same enclosure.” ’780 Patent at 1:36-41. External storage “are those
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`storage media that are not the internal components of the computing system in a
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`same enclosure” and must be connected through the use of a connecting medium
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`such as an Ethernet cable or a wireless communication medium. ’780 Patent at
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`1:42-49. The storage devices “usually need to be partitioned into storage
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`volumes,” and “each of the volumes can be used for establishing a file system on
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`top of it.” ’780 Patent at 1:54-57.
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`37.
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`The ’780 Patent is directed to addressing “the problem of lack of
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`storage capacity configured on [user’s] wireless devices such as [a] cell phone or
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`PDA ….” ’780 Patent at 2:40-43. To address the problem, the patent states that
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`“storage spaces provided by a server can be used as the external storage of the
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`wireless devices.” ’780 Patent at 2:43-48.
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`38.
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`The ’780 Patent states that the storage on the remote server “needs to
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`be partitioned into suitable size of volumes ….” ’780 Patent at 4:13-15. Referring
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`Adobe – Exhibit 1003, page 16
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`to Figure 2, the patent states that partitioning can be performed by “console
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`support software (5) of the server (3)” and “can be done through a web-console
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`(13) on a console host (12) by an administrative staff.” ’780 Patent at 4:13-20.
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`Software on the remote storage server sends “storage information of the server (3)
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`to the web-console (13) of the console host (12)” so that “the administration staff
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`on the console host (12), for example, can use a web-console (13) to partition each
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`storage device and send the storage partition information to the console support
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`software (5) of the server (3).” ’780 Patent at 4:21-30. Then, “upon receiving the
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`storage partition information from the from the web-console (13) of the console
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`host (12), the console support software (5) of the server (3) performs the actual
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`storage partition by dividing the entire storage into multiple small volumes,” each
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`of which can be “assigned to a user of a specific wireless device (1) by the console
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`support software (5) of the server (3).” ’780 Patent at 4:32-43. A “file system
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`could be built up” on each storage volume. ’780 Patent at 4:36-37.
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`39.
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`Interacting with the same “cons