Trials@uspto.gov
`571-272-7822
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`Paper 8
`Entered: March 11, 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.
`
`IPR2020-01392
`Patent 9,239,686 B2
`
`
`Before SALLY C. MEDLEY, LYNNE E. PETTIGREW, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`

`

`IPR2020-01392
`Patent 9,239,686 B2
`
`I. INTRODUCTION
`
`Petitioner, Adobe Inc., filed a Petition for inter partes review of
`
`claims 1–11 of U.S. Patent No. 9,239,686 B2 (Ex. 1001, “the ’686 patent”).
`
`Paper 1 (“Pet.”). Patent Owner, Synkloud Technologies, LLC, filed a
`
`Preliminary Response. Paper 7 (“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 ’686 patent. Accordingly, we institute an inter
`
`partes review of claims 1–11 of the ’686 patent on the grounds asserted in
`
`the Petition.
`
`II. BACKGROUND
`
`A. Related Matters
`
`The parties identify several district court proceedings involving the
`
`’686 patent. Pet. x; Paper 5 (Patent Owner’s Mandatory Notices).
`
`Petitioner indicates that the ’686 patent is the subject of IPR2020-
`
`01393, based on another petition filed by Petitioner. See Pet. x. The parties
`
`identify IPR2020-01271, based on a petition filed jointly by Microsoft
`
`Corporation and HP Inc., as a matter involving the ’686 patent. Id.; Paper 5.
`
`The parties also identify several other matters pending before the
`
`Board involving patents related to the ’686 patent. Pet. xi–xii; Paper 5.
`
`2
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`

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`IPR2020-01392
`Patent 9,239,686 B2
`
`B. Overview of the ’686 Patent
`
`The ’686 patent describes how a wireless device may access and use
`
`external storage provided by a storage server. Ex. 1001, 1:24–25. The
`
`’686 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 2:39–47, 5:4–58.
`
`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
`
`4:16–19. 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 4:20–29. 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 4:31–37.
`
`The ’686 patent also describes a “wireless out-band download”
`
`approach for downloading data from a remote location to an assigned
`
`3
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`

`

`IPR2020-01392
`Patent 9,239,686 B2
`
`storage volume. Id. at 2:18–21, 2:61–64, 5:16–47, Fig. 3. Figure 3 is
`
`illustrative and is reproduced below.
`
`
`
`Figure 3 shows a “wireless out-band download” approach, which includes a
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`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 2:18–21, 2:61–64, 5:16–47. 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 5:23–28.
`
`Second, other software modules 9 of wireless device 1 may obtain the
`
`download information for the data, which becomes available in cached
`
`4
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`

`

`IPR2020-01392
`Patent 9,239,686 B2
`
`web-pages on wireless device 1. Id. at 5:29–33. Third, the 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 5:34–37.
`
`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.
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`Id. at 5:38–43. Lastly, other service modules 7 may write (i.e., store) the
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`data streams to assigned storage volume 11 in server 3 for wireless device 1.
`
`Id. at 5:44–47.
`
`The ’686 patent additionally describes retrieving data from an
`
`assigned storage volume. Id. at 5:48–58. 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 5:50–54. In another
`
`embodiment, the wireless device may retrieve data from the file system of
`
`the assigned storage volume on the server. Id. at 5:55–58.
`
`C. Illustrative Claim
`
`Petitioner challenges claims 1–11 of the ’686 patent. Claim 1, the
`
`sole independent claim challenged in this proceeding, is reproduced below:
`
`1. A server for delivering storage service, comprising:
`
`a plurality of storage spaces; and
`
`a non-transitory computer-readable medium comprising
`program instructions that, being executed by the server,
`causes the server delivering the storage service; wherein
`the program instructions comprise:
`
`program instructions for allocating exclusively a first one of the
`storage spaces to a user of a first wireless device;
`
`5
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`

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`IPR2020-01392
`Patent 9,239,686 B2
`
`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 presenting the first one of the storage
`spaces to the user on the first wireless device through
`communication with the first wireless device; and
`
`program instructions for updating the first one of the storage
`spaces according to a requested operation for remotely
`access to the first one of the storage spaces in response to
`the user from the first wireless device performing the
`operation,
`
`wherein said operation comprises storing data into the first one
`of the storage spaces or retrieving data therefrom, the
`storing of said data including to download a file from a
`remote server across a network into the first one of the
`storage spaces through utilizing download information
`for the file cached in the first wireless device in response
`to the user from the first wireless device performing the
`operation for downloading the file.
`
`Ex. 1001, 6:11–38.
`
`6
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`

`

`IPR2020-01392
`Patent 9,239,686 B2
`
`D. Asserted Grounds of Unpatentability
`
`Petitioner asserts that claims 1–11 are unpatentable based on the
`
`following grounds (Pet. 1–2):
`
`Claim(s) Challenged
`1–11
`1–11
`1–11
`2
`2
`2
`9
`9
`9
`1–11
`1–11
`1–11
`2
`2
`2
`9
`9
`9
`
`35 U.S.C. §
`103(a)1
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`
`Reference(s)
`
`Prust2
`Prust, Major3
`Prust, Kraft4
`Prust, McCown5
`Prust, Major, McCown
`Prust, Kraft, McCown
`Prust, Jewett6
`Prust, Major, Jewett
`Prust, Kraft, Jewett
`Nomoto7
`Nomoto, Major
`Nomoto, Kraft
`Nomoto, McCown
`Nomoto, Major, McCown
`Nomoto, Kraft, McCown
`Nomoto, Jewett
`Nomoto, Major, Jewett
`Nomoto, Kraft, Jewett
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the
`’686 patent has an effective filing date before the effective date of the
`applicable AIA amendments, we refer to the pre-AIA versions of 35 U.S.C.
`§§ 102 and 103.
`2 U.S. Patent No. 6,735,623 B1, filed Feb. 9, 2000, issued May 11, 2004
`(Ex. 1004, “Prust”).
`3 WO 02/052785 A2, published July 4, 2002 (Ex. 1006, “Major”).
`4 U.S. Patent No. 6,309,305 B1, issued Oct. 30, 2001 (Ex. 1007, “Kraft”).
`5 WO 01/67233 A2, published Sept. 13, 2001 (Ex. 1008, “McCown”).
`6 U.S. Patent No. 8,271,606 B2, issued Sept. 18, 2012 (Ex. 1009, “Jewett”).
`Petitioner asserts that Jewett has an effective filing date of August 10, 2001.
`Pet. 13 n.8; see Ex. 1009, code (60).
`7 U.S. Patent Application Publ’n No. 2001/0028363 A1, published Oct. 11,
`2001 (Ex. 1005, “Nomoto”).
`
`7
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`

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`IPR2020-01392
`Patent 9,239,686 B2
`
`III. DISCUSSION
`
`A. Multiple Petitions (35 U.S.C. § 314(a))
`
`On the same day, Petitioner filed two petitions challenging different
`
`claims of the ’686 patent. In the Petition before us, Petitioner challenges
`
`independent claim 1 and dependent claims 2–11. In IPR2020-01393,
`
`Petitioner challenges independent claim 12 and dependent claims 13–20.
`
`IPR2020-01393, Paper 1. In accordance with the Consolidated Trial
`
`Practice Guide,8 Petitioner filed a separate paper ranking its petitions and
`
`explaining the differences between them. Paper 3 (“Explanation”).
`
`Petitioner argues that “[t]wo petitions were required because the
`
`analysis of all 20 claims of the ’686 Patent could not reasonably fit within
`
`the word limit for a single petition.” Id. at 1. Petitioner further explains that
`
`it has challenged all twenty claims of the ’686 patent because “Patent Owner
`
`has asserted all 20 of those claims against Petitioner in the related district
`
`court litigation.” Id. Petitioner argues that the Board has “recognized that
`
`petitioners would be justified in bringing multiple petitions against a single
`
`patent ‘when the patent owner has asserted a large number of claims in
`
`litigation,’ which is precisely the scenario confronting Petitioner here.” Id.
`
`at 2 (citing Apple Inc. v. Seven Networks, LLC, IPR2020-00156, Paper 10 at
`
`28 (PTAB June 15, 2020) (declining to exercise discretion to deny multiple
`
`petitions filed to challenge twenty claims asserted in related litigation)).
`
`
`8 Patent Trial and Appeal Board Consolidated Trial Practice Guide
`(Nov. 2019), https://www.uspto.gov/TrialPracticeGuideConsolidated, 59–61
`(explaining that the Board may exercise discretion under 35 U.S.C. § 314(a)
`to deny a petition(s) if it determines that more than one petition challenging
`claims of the same patent is not warranted).
`
`8
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`

`

`IPR2020-01392
`Patent 9,239,686 B2
`
`Petitioner notes that each petition addresses a different independent
`
`claim and its dependent claims, an approach that Petitioner contends “was
`
`driven by word limits.” Id. Petitioner also argues that the “Board has found
`
`multiple petitions against a single patent appropriate where, as here, the
`
`petitions rely on the same prior art.” Id. at 3 (citing Microsoft Corp. v. IPA
`
`Techs., Inc., IPR2019-00810, Paper 12 at 11–16 (PTAB Oct. 16, 2019)).
`
`Patent Owner did not file a response to Petitioner’s Explanation or
`
`make any arguments in its Preliminary Response regarding the propriety of
`
`Petitioner having filed two petitions challenging the ’686 patent. Thus,
`
`Patent Owner has not assisted in narrowing the scope of the issues in
`
`dispute. See Consolidated Trial Practice Guide, 61 (explaining that the
`
`patent owner should explain whether the differences identified by the
`
`petitioner are directed to an issue that is not material or not in dispute and
`
`clearly proffer any necessary stipulations in support).
`
`Petitioner’s showing for two petitions is reasonable. In particular, it is
`
`reasonable to conclude that the length of the claims, and the difference in
`
`scope of independent claims 1 and 12, warranted the filing of two petitions.
`
`For instance, Petitioner’s showing for claim 1 occupies approximately
`
`twenty-seven pages of the Petition, which is reasonable in view of the length
`
`of claim 1. Pet. 13–26, 43–55. Petitioner’s showing for claim 12, which is
`
`different in scope from claim 1,9 occupies approximately twenty pages of the
`
`second petition, which also is reasonable in view of the length of claim 12.
`
`IPR2020-01393, Paper 1 at 13–23, 42–51. Moreover, some of the dependent
`
`
`9 For instance, claim 12 recites “wherein said operation comprises
`creating . . . a folder structure of a plurality of folders in the first one of the
`storage space, and comprises to delete or move or copy or rename a first one
`of the folders in the folder structure,” a limitation not recited in claim 1.
`
`9
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`

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`IPR2020-01392
`Patent 9,239,686 B2
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`claims are lengthy or complex, necessitating several pages of explanation.
`
`See, e.g., Pet. 26–31, 35–43, 55–58, 60–66; IPR2020-01393, Paper 1 at 23–
`
`42, 51–66. Based on the facts before us, we decline to exercise our
`
`discretion to deny the Petition under 35 U.S.C. § 314(a).
`
`B. Principles of Law
`
`A 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.10 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`C. Level of Ordinary Skill in the Art
`
`Citing the Declaration of Dr. Jon Weissman, Petitioner contends that a
`
`person of ordinary skill in the art 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. 4 (citing Ex. 1003 ¶ 51). Patent
`
`
`10 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.
`
`10
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`

`

`IPR2020-01392
`Patent 9,239,686 B2
`
`Owner does not propose an alternative assessment of the level of ordinary
`
`skill in the art. See generally Prelim. Resp.; 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 ’686 patent and the asserted prior art. See Okajima v.
`
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`
`D. 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 a person of ordinary skill in the art at the time of the invention and in the
`
`context of the entire patent disclosure. See id.; Phillips v. AWH Corp.,
`
`415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc).
`
`Petitioner proposes a construction for “cached in the first wireless
`
`device.” 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. 10–11.
`
`Nevertheless, Patent Owner argues that Petitioner’s proposed construction of
`
`the “cached” limitation is “flawed.” Id. at 12. Patent Owner also proposes a
`
`construction for the longer claim phrase “download a file from a remote
`
`server across a network into the first one of the storage spaces through
`
`utilizing download information for the file cached in the first wireless
`
`device.” Id. at 11–12. We address the parties’ arguments below. For
`
`11
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`

`

`IPR2020-01392
`Patent 9,239,686 B2
`
`purposes of this Decision, no other claim terms require construction. 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 the first wireless device”
`
`Petitioner contends that “cached in the first wireless device,” recited
`
`in claim 1, 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 5–6 (citing Ex. 1003 ¶ 89; Ex. 1027, 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. 1028, 72 (defining “cache”
`
`as “[a] special memory subsystem in which frequently used data values are
`
`duplicated for quick access”); Ex. 1029, 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 access[ed] more quickly”)
`
`(Petitioner’s emphases modified)).
`
`Petitioner further contends that the ’686 patent describes a web-
`
`browser cache on a wireless device that comes within the scope of
`
`Petitioner’s proposed construction. Id. at 6. Specifically, in the disclosed
`
`“wireless out-band download process,” the user accesses a webpage to
`
`obtain download information for the data to be downloaded. Ex. 1001,
`
`5:24–25. The download information can include the IP address of a remote
`
`website and the data name for downloading. Id. at 5:26–28. The download
`
`12
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`

`

`IPR2020-01392
`Patent 9,239,686 B2
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`information then becomes available in the cached web-pages on the wireless
`
`device. Id. at 5:29–33. Although the claim phrase “cached in the first
`
`wireless device” encompasses placing data in a web-browser cache on a
`
`wireless device, Petitioner argues, neither the claim language nor the written
`
`description of the ’686 patent limits the recited type of cache storage to a
`
`web-browser cache. Pet. 6–7.
`
`Patent Owner, relying on the testimony of Mr. Jawadi, argues that
`
`Petitioner’s proposed construction of “cached” “omits three basic cache
`
`principles.” Prelim. Resp. 12–13 (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 omitted); see 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 omitted); see
`
`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 omitted); see Prelim. Resp. 13.
`
`Patent Owner contends that the technical dictionaries cited by
`
`Petitioner describe these principles. Prelim. Resp. 13. Patent Owner asserts
`
`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
`
`13
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`IPR2020-01392
`Patent 9,239,686 B2
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`hit/miss.” Id. at 13–14 (quoting Ex. 2001 ¶¶ 35–37); see Ex. 1027, 126;
`
`Ex. 1028, 72; Ex. 1029, 60–61. Patent Owner also asserts that one of the
`
`dictionaries “confirms . . . that cache storage includes a replacement
`
`algorithm.” Prelim. Resp. 13–14 (quoting Ex. 2001 ¶ 35); see Ex. 1027,
`
`126.
`
`Patent Owner argues that Petitioner’s construction is improper
`
`because it neglects to consider these three principles. Prelim. Resp. 12–17.
`
`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
`
`’686 patent supporting a construction that would include them. See id.
`
`Moreover, the only construction Patent Owner offers is part of its
`
`construction of the longer phrase “download a file from a remote server
`
`across a network into the first one of the storage spaces through utilizing
`
`download information for the file cached in the first wireless device,” which
`
`Patent Owner contends 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 the first
`
`wireless device,” as used in the ’686 patent. For purposes of this 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
`
`14
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`IPR2020-01392
`Patent 9,239,686 B2
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`original source of the information.” The parties may wish to address the
`
`construction of this limitation further at trial.
`
`2. “download a file from a remote server across a network into the first one
`of the storage spaces through utilizing download information for the file
`cached in the first wireless device”
`
`Patent Owner contends that this limitation, recited in claim 1,
`
`“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 ’686 patent, which provide that the “download
`
`information” is for the file at the remote server and this “download
`
`information” is cached in the first wireless device. Id. at 11–12. At this
`
`juncture and based on the current record, we adopt Patent Owner’s
`
`construction to clarify that it is the download information, not the file itself,
`
`that is cached in the first wireless device.
`
`E. Asserted Obviousness Grounds Based on Prust
`
`Petitioner contends that claims 1–11 of the ’686 patent are
`
`unpatentable under 35 U.S.C. § 103(a) as obvious over Prust alone, Prust
`
`and Major, or Prust and Kraft. Pet. 13–37, 39–40. Additionally, Petitioner
`
`contends that claim 2 is unpatentable under 35 U.S.C. § 103(a) as obvious
`
`over McCown combined with Prust, Prust and Major, or Prust and Kraft. Id.
`
`at 37–39. Petitioner also contends that claim 9 is unpatentable under
`
`35 U.S.C. § 103(a) as obvious over Jewett combined with Prust, Prust and
`
`Major, or Prust and Kraft. Id. at 41–43. Petitioner relies on the Declaration
`
`of Dr. Weissman in support of its showing. Id. at 13–43 (citing Ex. 1003).
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`Patent 9,239,686 B2
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`In support of its Preliminary Response directed to these grounds, Patent
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`Owner relies on the Declaration of Mr. Jawadi. Prelim. Resp. 22–42 (citing
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`Ex. 2001).
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`1. Prust
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`Prust describes a storage system that provides users access over a
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`network to a remote storage area. Ex. 1004, 1:6–8, 4:31–49. Figure 2 of
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`Prust is illustrative and reproduced below.
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`Figure 2 of Prust shows client computers 205 communicatively coupled over
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`global computer network 215 to remote storage network 220 via storage
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`servers 2101 . . . N. Id. at 4:34–37, Fig. 2. Client computer 205 may be a
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`pocket-sized mobile computer (e.g., hand-held PC or personal digital
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`assistant (PDA)) using a wireless connection. Id. at 3:17–20, 3:55–62,
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`Fig. 1. Storage network 220 defines a pool of virtual storage areas 2251 . . . N,
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`each of which may be allocated exclusively to a particular user. Id. at 4:39–
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`52, 7:33–48, Fig. 8. The user is able to access its assigned virtual storage
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`area via the client computer’s operating system (id. at 5:21–6:19, Figs. 3–5),
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`web browser (id. at 5:8–17, 6:33–47, Fig. 6), or email application (id. at
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`6:48–7:13, Fig. 7). Prust describes that a user may access the virtual storage
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`area via email by emailing files directly into a specified directory within a
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`virtual storage area from a remote network location or including in an email
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`to the storage server a URL that indicates where the storage server can
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`retrieve the data file to be stored. Id. at 6:62–7:4.
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`2. Major
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`Major describes a system and method for browsing content on the
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`World Wide Web (WWW) using a wireless device. Ex. 1006, 1:6–7, 15:16–
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`22, 34:5–7.11 In a disclosed embodiment, the memory of the wireless device
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`includes a page cache for storing rendered page objects. Id. at 6:1–4, 16:1–
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`5, 24:9–11, Fig. 5. When the user asks to see a URL, the browser first asks
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`the page cache if the page object corresponding to the URL is available. Id.
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`at 10:7–9. If it is, the page object can be loaded from the page cache and
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`displayed by the browser very quickly (e.g., upon start-up or following a
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`subsequent user request). Id. at 10:9–10, 11:12–14, 18:8–15.
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`3. Kraft
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`Kraft describes copy and paste operations for handsets. Ex. 1007,
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`code (57). Kraft discloses a phone with a user interface having a copy and
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`paste function for copying data between applications. Id. at 2:5–7. In one
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`embodiment, the phone includes RAM that acts as a clipboard for the copy
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`11 Citations are to original page numbers.
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`and paste function. Id. at 4:15–17. A user can select information from one
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`application, press a soft key to copy the information to the clipboard, and
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`then press a soft key to paste the information from the clipboard to another
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`application. Id. at 4:56–59, 5:2–6. Types of text that may be copied include
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`Internet addresses. Id. at 8:42–45.
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`4. McCown
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`McCown describes a method for downloading files across a network,
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`from a remote site into a client’s storage space account within a storage site.
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`Ex. 1008, 3:26–28, 8:12–13. The method may include the use of a user site,
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`a remote site that has a web server, and a storage site. See, e.g., id. at 3:26–
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`4:7, 7:17–25. The user site may be, for example, a laptop computer,
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`palmtop device, or enhanced cellular telephone capable of digital network
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`communications. Id. at 7:27–29. The remote site may be a website on the
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`Internet with one or more files available for downloading. Id. at 6:17–18.
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`As part of the remote storage process, a client operating a user site can
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`see all of the files identified by a file list embedded within a particular web
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`page of the remote site and may select files from the list for downloading.
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`Id. at 10:19–30, 11:4–7. Software on the user site may accept and use the
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`URL of a selected file to generate a download request, which is provided to
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`the storage site’s webserver and then the remote site’s server. Id. at 11:20–
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`22, 12:23–26. The remote site’s server receives the download request and
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`responds by downloading the files to the storage site for storage in the
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`client’s storage space account. Id. at 12:25–29.
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`5. Jewett
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`Jewett describes a network-based storage system that includes one or
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`more block-level storage servers that connect to, and provide disk storage
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`for, one or more host computers. Ex. 1009, code (57). In one embodiment,
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`the total disk space of a block server “may be segmented or subdivided into
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`multiple, variable-size data storage units or ‘partitions,’ each of which may
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`have access privileges independently of other partitions.” Id. at 8:1–4.
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`“Each partition can be independently configured with attributes such as size,
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`‘read-only,’ ‘read-write,’ or zero data before access, and with a list of
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`authorized hosts . . . .” Id. at 8:12–14. For example, one partition “could be
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`configured to be ‘20 GB read-only from Host A and read-write from Hosts B
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`and C,’” while another petition “could be configured as ‘40 GB read-write
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`from Host A only.’” Id. at 8:14–18.
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`6. Claim 1
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`Claim 1 recites “[a] server for delivering storage service.” Ex. 1001,
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`6:11. Petitioner contends that Prust describes a computing system in which
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`a storage server provides seamless access to remote storage areas and that
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`each of servers 2101 . . . N is a server for delivering storage service as claimed.
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`Pet. 13–14 (citing Ex. 1004, 1:61–63, Fig. 2). Claim 1 further recites “a
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`plurality of storage spaces.” Ex. 1001, 6:12. Petitioner contends that each
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`storage server in Prust is connected to “remote storage network 220”
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`including virtual storage areas 2251–225N that can be assigned individually
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`to different users. Pet. 14 (citing Ex. 1004, 4:34–37, 4:39–41, Fig. 2).
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`Claim 1 recites “a non-transitory computer-readable medium
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`comprising program instructions that, being executed by the server, causes
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`the server delivering the storage service.” Ex. 1001, 6:13–15. Petitioner
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`contends that Prust teaches this limitation. Pet. 15. For example, Petitioner
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`contends that each of Prust’s storage servers is a computer with a hard drive
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`for storing software applications that are copied to RAM for execution by a
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`processor. Id. (citing Ex. 1004, 3:63–66, 4:50–52). Further, Petitioner
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`contends, Prust teaches that communication software applications executing
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`on the storage servers can access virtual storage areas. Id. (citing Ex. 1004,
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`4:53–57).
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`Claim 1 further recites “program instructions for allocating
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`exclusively a first one of the storage spaces to a user of a first wireless
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`device.” Ex. 1001, 6:17–18. For this limitation, Petitioner contends that
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`Prust teaches its computers can “be connected to a network using either a
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`wired or wireless connection,” and the client computer can be a PDA (i.e., a
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`“first wireless device”). Pet. 15–16 (emphasis omitted) (citing Ex. 1004,
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`3:17–20, 3:55–62, Fig. 1). Petitioner also cites Prust’s disclosure of the
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`storage network allocating a virtual storage area to a user upon request such
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`that the user can remotely access the corresponding virtual storage area via
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`the client computer. Id. at 16 (citing Ex. 1004, 4:41–49, 7:33–43, Fig. 8).
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`Claim 1 further recites “program instructions for establishing a
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`communication link for the first wireless device remotely access to the first
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`one of the storage spaces.” Ex. 1001, 6:19–21. Petitioner contends that
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`Prust teaches server-side software (e.g. web browser, FTP utility, or
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`conventional email