IPR2020-01392
`U.S. Patent No. 9,239,686
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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
`
`
`v.
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`
` SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner
`
`
`
`Case IPR2020-01392
`U.S. Patent 9,239,686
`
`
`
`__________________
`
`
`SynKloud Technologies, LLC’s Patent Owner Response
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`

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`IPR2020-01392
`U.S. Patent No. 9,239,686
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`TABLE OF CONTENTS
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`I. INTRODUCTION .......................................................................................................................1
`
`II. TECHNOLOGY BACKGROUND ...........................................................................................2
`
`A.
`
`B.
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`Prior Art Storage Systems ..............................................................................................2
`
`The ’686 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. .............................................3
`
`III. SUMMARY OF THE INSTITUTED GROUNDS FOR REVIEW .........................................6
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`IV. CLAIM CONSTRUCTION. ....................................................................................................7
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`a.
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`b.
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`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 (independent claim 1). ....................7
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`Allocate exclusively a second one of the storage spaces of a predefined
`capacity to a user of a second wireless device (dependent claim 9). ...............12
`
`THE PETITIONER FAILED TO DEMONSTRATE BY A
`PREPONDERANCE OF THE EVIDENCE THAT ANY OF THE
`CHALLENGED CLAIMS WOULD HAVE BEEN OBVIOUS ON ANY
`INSTITUTED GROUND. ...........................................................................................13
`
`Independent Claim 1 As Well As The Claims Dependent Therefrom Would
`Not Have Been Obvious Over Prust In Combination With The Secondary
`References. ...................................................................................................................15
`
`The Combination Of Prust with Either Major or Kraft Would Not Have
`Taught “download[ing] 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,” As Recited in Independent
`Claim 1. ..................................................................................................................17
`
`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 1 Of The ’686 Patent
`With A Reasonable Expectation Of Success. ........................................................28
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`Dependent Claim 9 Would Not Have Been Obvious Over Prust Alone Or
`In Combination With The Secondary References. ................................................38
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`V.
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`A.
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`1.
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`2.
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`3.
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`ii
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`IPR2020-01392
`U.S. Patent No. 9,239,686
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`B.
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`Independent Claim 1 As Well As The Claims Dependent Therefrom Would
`Not Have Been Obvious Over Nomoto In Combination With The Secondary
`References. ...................................................................................................................41
`
`1.
`
`2.
`
`The Combination Of Nomoto with Either Major or Kraft Would Not Have
`Taught “download[ing] 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,” As Recited in Independent
`Claim 1. ..................................................................................................................42
`
`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 1 Of The ’686 Patent With A
`Reasonable Expectation Of Success. .....................................................................44
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`C.
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`Objective Indicia Of Non-Obviousness Support The Patentability Of The
`Claims Of The ’686 Patent. .........................................................................................50
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`VI.
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`CONCLUSION ............................................................................................................74
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`IPR2020-01392
`U.S. Patent No. 9,239,686
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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)
`
`Harmonic Inc. v. Avid Tech., Inc.,
`
`815 F.3d 1356 (Fed. Cir. 2016)
`
`In re Magnum Oil Tools Int’l, Ltd.,
`
`829 F.3d 1364 (Fed. Cir. 2016)
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`Kolbe & Kolbe Millwork Co., Inc. v. Sierra Pacific Industries,
`
`2019 WL 5070454 (PTAB 2019)
`
`
`
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`K/S Himpp v. Hear-Wear Techs., LLC,
`
`751 F.3d 1362 (Fed. Cir. 2014)
`
`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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`Texas Digital Systems, Inc. v. Telegenix, Inc.,
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`308 F.3d 1193 (Fed. Cir. 2002)
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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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`49
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`14, 18, 43
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`27
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`4, 17, 42
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`26, 27
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`13, 28
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`7
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`18
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`18
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`i
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`IPR2020-01392
`U.S. Patent No. 9,239,686
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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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`2004
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`2005
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`2006
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`2007
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`2008
`2009
`2010
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`2011
`2012
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`2013
`2014
`2015
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`2016
`2017
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`2018
`
`Declaration of Zaydoon Jawadi
`
`Curriculum Vitae of Zaydoon Jawadi
`
`Hypertext Transfer Protocol -- HTTP/1.1, rfc2616, June
`1999.
`
`Microsoft Computer Dictionary, 5th Edition.
`
`Dictionary Definitions of Predefine, Merriam-Webster
`Dictionary, Oxford Dictionary, Cambridge Dictionary.
`
`Patrick Turner’s Industrial Automation Dictionary, 1st
`Edition.
`
`Maxmillan Dictionary Of Information Technology, Third
`Edition
`
`Claim Chart of wireless devices with Microsoft OneDrive
`Claim Chart of wireless devices with Adobe cloud services
`Claim Chart of wireless devices with Dropbox cloud
`services
`Claim Chart of wireless devices with Microsoft OneDrive
`Claim Chart of wireless devices with Microsoft OneDrive
`for the ’686 Patent
`Reserved
`Second Declaration of Jaydoon Jawadi
`Claim Chart of the HP Laptop computers with Microsoft
`OneDrive
`Claim Chart of wireless devices with Microsoft OneDrive
`Microsoft Securities and Exchange Commission Form
`10K filing for the fiscal year ending June 30, 2019
`https://blog.goptg.com/microsoft-office-365-statistics, last
`viewed September 15, 2020
`
`
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`v
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`2019
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`2020
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`2021
`2022
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`2023
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`2024
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`2025
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`2026
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`2027
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`2028
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`2029
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`IPR2020-01392
`U.S. Patent No. 9,239,686
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`https://www.microsoft.com/en-us/microsoft-
`365/onedrive/compare-onedrive-
`plans?activetab=tab:primaryr2, last viewed September 15,
`2020.
`https://techcommunity.microsoft.com/t5/microsoft-
`onedrive-blog/top-4-tips-to-protect-your-remote-
`workforce-with-data-compliance/ba-
`p/1452108?WT.mc_id=eml_CXM_EN-
`US_Comm_M365_Engagement_NewsletterEdition02_Em
`ail_01_V01_622_FY21Aug_ENUS, last viewed September
`15, 2020.
`Claim Chart of BLU wireless device with Google Drive
`“The Verizon Plan FAQs,” Verizon website
`(https://www.verizonwireless.com/support/the-verizon-
`plan-faqs/), last viewed September 15, 2020
`“Report: State of the Web,” HTTP Archive website
`(https://httparchive.org/reports/state-of-the-web), last
`viewed September 15, 2020.
`Microsoft OneDrive Pricing
`(https://products.office.com/en-US/onedrive-for-
`business/compare-onedrive-for-business-plans), last
`viewed September 15, 2020.
`“Cloud Data Storage Service Use Among Consumers in
`the United States, as of 2017,” Statista
`(https://www.statista.com/statistics/714140/us-usage-
`cloud-storage-services/), last viewed September 15, 2020.
`“Annual Estimates of the Resident Population: April 1,
`2010 to July 1, 2018,” U.S. Census Bureau, American Fact
`Finder.
`“United States Population,” Worldometer website
`(https://www.worldometers.info/world-population/us-
`population/), last viewed September 15, 2020.
`Ballard, John, “What is Dropbox’s Competitive
`Advantage?” The Motley Fool, August 21, 2018
`https://www.fool.com/investing/2018/08/21/what-is-
`dropboxs-competitive-advantage.aspx), last viewed
`September 15, 2020.
`Claim chart of smart phone with cloud storage (filed under
`seal)
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`2030
`2031
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`2032
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`2033
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`2034
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`2035
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`2036
`2037
`2038
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`2039
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`IPR2020-01392
`U.S. Patent No. 9,239,686
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`License to the ’686 Patent (filed under seal)
`https://www.microsoft.com/en-
`us/surface/devices/surface-pro/tech-specs, last viewed
`September 19, 2020.
`https://support.microsoft.com/en-us/office/using-office-
`for-the-web-in-onedrive-dc62cfd4-120f-4dc8-b3a6-
`7aec6c26b55d#:~:text=In%20your%20web%20browser%2
`C%20go,Office%20for%20the%20web%20program, last
`viewed September 19, 2020
`https://www.dummies.com/computers/operating-
`systems/windows-10/how-to-access-onedrive-from-
`anywhere/, last viewed September 19, 2020
`https://www.microsoft.com/en-us/microsoft-
`365/onedrive/compare-onedrive-
`plans?ef_id=CjwKCAjwkoz7BRBPEiwAeKw3qwWV_91
`zlJtXmTwNvg1VRHD4lR_L8VuIUbASJYJAIKfOODGF
`tWQzwhoCuaMQAvD_BwE:G:s&OCID=AID2100137_
`SEM_CjwKCAjwkoz7BRBPEiwAeKw3qwWV_91zlJtX
`mTwNvg1VRHD4lR_L8VuIUbASJYJAIKfOODGFtWQ
`zwhoCuaMQAvD_BwE:G:s&lnkd=Google_O365SMB_
`App&gclid=CjwKCAjwkoz7BRBPEiwAeKw3qwWV_91
`zlJtXmTwNvg1VRHD4lR_L8VuIUbASJYJAIKfOODGF
`tWQzwhoCuaMQAvD_BwE&activetab=tab:primaryr2,
`last viewed September 19, 2020
`https://www.steeves.net/news/top-9-reasons-for-
`onedrive-in-your-business/, last viewed September 19,
`2020.
`Modified Protective Order
`Redline Version of Modified Protective Order
`"Number of internet users in the United States from 2015
`to 2025 (in millions),” Statista
`(https://www.statista.com/statistics/325645/usa-number-
`of-internet-users/), last viewed September 20, 2020.
`License to the ’686 Patent (filed under seal)
`
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`

`
`I. INTRODUCTION
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`IPR2020-01392
`U.S. Patent No. 9,239,686
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` The Board should not cancel any claims of U.S. Patent No. 9,239,686 (“the
`
`’686 patent”) because Petitioner did not demonstrate by a preponderance of the
`
`evidence that any claim is unpatentable for three separate and independent reasons.
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`First, each of Petitioner’s proposed grounds of rejection is missing one or more
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`limitations of the claims of the ’686 patent. Infra, §§ V.B.1 and V.C.1. For example,
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`none of the combinations of prior art references would have taught “download[ing] a
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`file from a remote server across a network into the first one of the storage spaces
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`through utilizing download information for the file cached in the first wireless
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`device,” as recited in independent claim 1 of the ’686 patent. Neither of Petitioner’s
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`primary references (i.e., Prust and Nomoto) even mention cache. And although
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`some 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 that
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`download information in the cache of a wireless device would be used remotely from
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`the wireless device—not locally at the wireless device—to download a file from a
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`remote server (e.g., a web site) to a remote storage space.
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`Second, the Petitioner did not present any objective evidence as to why one of
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`ordinary skill in the art would have been motivated to modify either Prust or
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`Nomoto, with the teachings of the secondary references and reasonably expect
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`
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`1
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`

`

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`success. OSRAM Sylvania, Inc. v. Am Induction Techs., Inc., 701 F.3d 698, 706 (Fed.
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`IPR2020-01392
`U.S. Patent No. 9,239,686
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`Cir. 2012).
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`Third, objective indicia of non-obviousness, including the commercial success of
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`the devices that infringe the claims of the ’686 Patent and two licenses showing industry
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`respect for the claimed invention support the patentability of the claims. Infra, § V.B.
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`
`
`II. TECHNOLOGY BACKGROUND
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`A. Prior Art Storage Systems
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`As discussed in the background section of the ’686 patent, prior art storage
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`systems are “categorized as internal storage or external storage.” EX1001, 1:33-34.
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`“The internal storages of a computing system include those storage media such as
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`hard disk drives, memory sticks, memory, and others that are internally connected
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`within the computing system through [a] system bus or a few inches of cable.” Id. at
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`1:35-38. That is, internal storage media “are internal components of the computing
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`system in a same enclosure.” Id. at 1:39-40.
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`In contrast, “[t]he external storages of a computing system are those storage
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`media that are not the internal components of the computing system in a same
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`enclosure.” Id. at 1:42-45. Instead, external storage is “connected through [a] longer
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`cable, such as through Ethernet cable for IP based storage, Fiber channel cable for
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`fiber channel storage, or wireless communication media, and others.” Id. at 1:43-47.
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`U.S. Patent No. 9,239,686
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`“[E]xternal storage could be magnetic hard disk drives, solid state disk, optical
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`storage drives, memory card and others, and could be in any form.” Id. at 1:47-51.
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`The inventor of the ’686 patent, however, recognized that storage on users’
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`“wireless devices such as in their cell phone or personal data assistant devices
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`(“PDA”) … [was] usually limited to 256 MB for the PDA and much less for the cell
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`phone.” Id. at 2:39-42. Accordingly, the invention recognized a need to provide
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`wireless devices with “multiple gigabytes (GB) of storage” from a remote storage
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`server to support multimedia applications. Id. at 43-47. Moreover, because
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`multimedia data require large amounts of memory, there was a need to store data
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`from various sources (e.g., a web server) to the remote storage server. Id. at 2:50-54.
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`
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`B. The ’686 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.
`
`The ’686 patent addresses the deficiencies of the prior art with an approach
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`that downloads data from a web site to a remote storage server using download
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`information in a cache of a wireless device, as shown by FIG. 3, which is reproduced
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`below.
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`3
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`IPR2020-01392
`U.S. Patent No. 9,239,686
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`One embodiment of the invention includes a wireless device (1) having a web
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`browser (8) and other software (9); a website (15); and external storage (10) having
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`file systems (11) on a server (3). Id. at 3:60-4:2. When a user of the wireless device
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`(1) desires to download data from a web server (15) to an assigned file system of the
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`assigned external storage (10) on a server (3), the following steps are performed:
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`“1) Provide the user from a web-browser (8) of the wireless device (1) access to
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`a remote web server site (15) to obtain information for the downloading via the path
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`(a) of the FIG. 3”;
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`4
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`“2) The other software modules (9) of the wireless device (1) obtain the
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`IPR2020-01392
`U.S. Patent No. 9,239,686
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`downloading information, which becomes available in the cached web-pages on the
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`wireless device (1) after the web-browser (8) access[es] the web site (15)”;
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`“3) The other software modules (9) of the wireless device (1) send the obtained
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`downloading information to [the] other service modules (7) of the storage server (3)
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`via the path (b)”;
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`“4) Upon receiving the downloading information from the wireless device (1),
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`the other service module (7) of the storage server (3) sends a web download request
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`to the web-site (15) via the path (c) based on download information obtained and
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`then receives the downloading data from the web server of the web-site (15)”; and
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`“5) Upon receiving downloading data, the other service modules (7) of the
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`storage server (3) write[s] the data for the wireless device (1) into the assigned file
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`system (11) on the server (3).”
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`Id. at 5:23-47.
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`In this manner, the present invention downloads data using the download
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`information in the cache of the user’s wireless device (1) from the web site (15) to the
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`user’s assigned file system (11) on the server. Id. at 5:48-58.
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`Thus, the invention of the ’686 patent includes a novel and non-obvious way to
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`utilize download information in a cache of a wireless device to enable easy and
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`5
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`

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`efficient downloading of data (e.g., a web page, a file) from a web server to a remote
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`IPR2020-01392
`U.S. Patent No. 9,239,686
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`storage space.
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`III. SUMMARY OF THE INSTITUTED GROUNDS FOR REVIEW
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`Below is a summary of the proposed claim rejections instituted by the Board:
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`i.
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` Claims 1-11 have been alleged to have been obvious under § 103 over
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`Prust (EX-1004) alone or combined with Major (EX-1006) or Kraft (EX-1007);
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`ii. Claim 2 has been alleged to have been obvious over Prust alone or
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`combined with Major or Kraft and McCown (EX-1008);
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`iii. Claim 9 has been alleged to have been obvious over Prust alone or
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`combined with Major or Kraft and Jewett (EX-1009);
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`iv. Claims 1-11 have been alleged to have been obvious under § 103 over
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`Nomoto (EX-1005) alone or combined with Major or Kraft;
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`v.
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`Claim 2 has been alleged to have been obvious over Nomoto alone or
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`combined with Major or Kraft and McCown;
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`vi. Claim 9 has been alleged to have been obvious over Nomoto alone or
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`combined with Major or Kraft and Jewett.
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`IPR2020-01392
`U.S. Patent No. 9,239,686
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`IV. CLAIM CONSTRUCTION.
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`
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`Claim construction is generally an issue of law. Claims in an inter partes review
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`are construed pursuant to the principle set forth by the court in Phillips v. AWH Corp,
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`415 F.3d 1303, 1312-15 (Fed. Cir. 2005) (en banc). Under Phillips, the specification is
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`the single best source for claim interpretation. 415 F.3d at 1312. “The terms used in
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`the claims bear a heavy presumption that they mean what they say and have the ordinary
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`meaning that would be attributed to those words by persons skilled in the relevant art.”
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`Texas Digital System, Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed. Cir. 2002)
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`(emphasis added) (internal quotation marks omitted). Additionally, the “appropriate
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`context” to read a claim term includes both the specification and the claim language
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`itself. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010).
`
`
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`a.
`
`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
`(independent claim 1).
`
`This claim limitation requires information needed to download a file from a
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`remote server to be (i) stored in a cache storage of a wireless device and (ii) utilized
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`to download the file across a network into an assigned storage space for the user of
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`the wireless device.
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`This claim construction is consistent with the claim language itself and the
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`Specification. Claim 1 explicitly recites that the “download information for the file
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`IPR2020-01392
`U.S. Patent No. 9,239,686
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`cached in the first wireless device.” EX1001, 6:35-36. Claim 1 also recites
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`“download[ing] a file from a remote server.” Id. at 6:34-35. Therefore, the claimed
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`“download information” is for the file at the remote server and this “download
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`information” is stored in the cache storage of the “wireless device.”
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`The Specification explains that the claimed “download information for the
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`file” is stored in the cache of the wireless device: “the downloading information for
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`the data, which becomes available in the cached web-pages on the wireless device.”
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`Id. at 5:30-33. This download information in the wireless device’s cache is, in fact,
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`utilized to download the file:
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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 other service modules (7) of the
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`storage server (3) via path (b) of FIG. 3.
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`4) Upon receiving the downloading information from the wireless device
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`(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 path (c) of FIG. 3 based on
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`download information obtained. and receives the downloading data
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`streams from the web server of the web-site (15).
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`EX1001, 5:34-43.
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`Petitioner’s construction of “cache” as “storage that is more readily accessible
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`than the original source of the information” (Petition, 5) is flawed. As explained by
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`Mr. Jawadi, “[a] POSITA would have known that cache storage is not merely any
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`IPR2020-01392
`U.S. Patent No. 9,239,686
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`storage location “‘that is more readily accessible than the original source of the
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`information’” because it “omits three basic cache principles.” EX2001, ¶ 30.
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`“First, cache storage is used to save information that may be needed multiple times
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`(subsequent to initial access) in a more readily accessible location, eliminating the need to
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`retrieve the data again from the original source of the information.” Id. at ¶ 31 (emphasis
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`in original). “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 requested
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`information is in cache (cache hit) or not in cache (cache miss).” Id. at ¶ 32 (emphasis in
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`original). “Third, cache storage includes a replacement algorithm, mechanism, or policy
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`for replacing information in cache, such as least recently used (LRU) algorithm.” Id. at ¶
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`33 (emphasis in original).
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`Indeed, Petitioner’s own references describe these three principles. For example,
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`“Petitioner’s EX-1025 (Newton’s Telecom Dictionary) confirms that cache storage is used
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`to save information that may be needed multiple times (subsequent to initial access), that
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`cache storage includes a mechanism to determine cache hit/miss, and that cache storage
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`includes a replacement algorithm” (EX2001, ¶ 35):
`
`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.
`...
`
`
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`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.
`
`EX-1027, Newton’s Telecom Dictionary (emphasis added). “Petitioner’s EX-1028
`
`(Microsoft Press Computer Dictionary) also confirms that cache storage is used to save
`
`information that may be needed multiple times (subsequent to initial access) and that cache
`
`storage includes a mechanism to determine cache hit/miss” (EX2001, ¶ 36):
`
`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-1028, Microsoft Press Computer Dictionary (emphasis added). “Petitioner’s EX-1029
`
`(New Penguin Dictionary of Computing) also confirms that cache storage is used to save
`
`information that may be needed multiple times (subsequent to initial access) and that
`
`cache storage includes a mechanism to determine cache hit/miss” (EX2001, ¶ 37):
`
`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)
`
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`
`
`...
`cache hit A request by a computer's processor to read or write a data item
`that finds its target in the processor's CACHE and therefore does not have to
`reach out over the bus to external memory to access it.
`...
`cache miss A request by a computer's processor to read or write a data item
`that does not find its target in the processor's CACHE and therefore must
`continue through into main memory to access the item.”
`
`EX-1029 (New Penguin Dictionary of Computing) (emphasis added). In addition, Major
`
`describes a way to determine whether there is a hit or miss in cache and a replacement
`
`algorithm. EX1006, 21:1-5, 11:15-16, 11:20-21, 18:18-19.
`
`Thus, Petitioner’s construction, which deems as cache any location that is “more
`
`readily accessible than the original source of the information” neglects to 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 overly broad and flawed construction,
`
`any storage location (e.g., disk drive, random access memory, etc.) that stores the
`
`information and that is faster than the original source would constitute cache, even if the
`
`information is only transitorily and temporarily stored in that location and not saved for
`
`future hits, even if the location is never intended or designed to operate as cache, even if
`
`the location does not operate as cache (missing the three basic cache principles
`
`mentioned above), and even if the location entirely contradicts the three basic cache
`
`
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`principles described earlier.” EX2001, ¶ 39. Indeed, “[u]nder Petitioner’s construction,
`
`other than the original location where a web page is stored at the web server, any storage
`
`location where the web page is stored would constitute cache, because any such alleged
`
`storage location other than the original location is ‘more readily accessible than the
`
`original source of the information.’” Id. at ¶ 40.
`
`b. Allocate exclusively a second one of the storage spaces of a
`predefined capacity to a user of a second wireless device
`(dependent claim 9).
`
`This claim limitation requires deciding or setting in advance by a server an amount
`
`of storage space exclusively to a user of a wireless device.
`
`This construction is consistent with the language of the claim itself and the
`
`Specification. Claim 9 recites that the “exclusively” assigned “capacity to a user of a
`
`second wireless device” is “predefined” (EX1001, 7:6-9), meaning that it is decided or
`
`set in advance. Claim 9 also recites that the assigning of “storage spaces of a predefined
`
`capacity” is done by a “server.” Ibid.
`
`Also, the Specification repeatedly states that an amount of storage space is defined
`
`in advance to a user of a wireless device:
`
`each user of the wireless devices can be exclusively assigned for access to a
`
`specific storage volume on a server unit. For example, if we need to provide
`
`each user a 4 GB storage space, then a 160 GB disk drive can support 40
`
`users.
`
`
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`Id. at 2:53-58. The Specification also indicates that it is the storage server that defines the
`
`capacity of the storage space for each of the users of wireless devices: “each server unit
`
`(i.e., the server 3 of the FIG. 2) partitions its storage system into volume[s] and each of
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`the volumes will have multiple GB in size.” Id. at 2:50-53.
`
`Although Petitioner did not explicitly set forth a construction for this claim
`
`limitation (see Petition 11-15), its obviousness analysis is based upon an improper
`
`understanding of this limitation. Petitioner conflates predefining capacity (predefining an
`
`amount of storage) and allocating (reserving or assigning) storage. EX2014, ¶¶ 199-212.
`
`Moreover, a POSITA would have understood the predefining capacity to mean defining
`
`(i.e., deciding or setting in advance) the amount of storage before the storage is allocated
`
`or assigned to the user.” Ibid.
`
`
`
`V. THE PETITIONER FAILED TO DEMONSTRATE BY A
`PREPONDERANCE OF THE EVIDENCE THAT ANY OF THE
`CHALLENGED CLAIMS WOULD HAVE BEEN OBVIOUS ON ANY
`INSTITUTED GROUND.
`
`As set forth by the Supreme Court, 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 skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148
`
`USPQ 459, 467 (1966); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 399 (2007)
`
`(“While the sequence of these questions might be reordered in any particular case,
`
`
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`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 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, 701 F.3d at 706. The Petition’s
`
`evidence must also address every limitation of every challenged claim. Where the
`
`Petitioner seeks to rely on the knowledge of skill in the art, how and why one of skill
`
`in the art would modify the references relied upon to demonstrate obviousness must
`
`be set forth with specificity. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363
`
`(Fed. Cir. 2016).
`
`Petitioner cannot prevail on any claim on any of the instituted obviousness
`
`grounds because it (i) failed to demonstrate that one of ordinary skill in the art would
`
`have been motivated to combine the teachings of the numerous prior art references in
`
`the combination to achieve the claimed invention with a reasonable expectation of
`
`success, (ii) failed to demonstrate that any of the different combinations teaches
`
`every element of any of the challenged claims, and; (iii) failed to consider objective
`
`indicia of non-obviousness including commercial success and two licenses showing
`
`industry respect for the claimed invention.
`
`
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`

`A.
`
`
`Independent Claim 1 As Well As The Claims Dependent Therefrom Would
`Not Have Been Obvious Over Prust In Combination With The Secondary
`References.
`
`Prust alone or in combination with either Major or Kraft would not have
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`IPR2020-01392
`U.S. Patent No. 9,239,686
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`taught or suggested the claim limitations of “download[ing] 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,” as recited in
`
`independent claim 1. EX1001, 6:33-36. Indeed, the combination would not even
`
`have taught that this “[download] information for the file [is] cached in the wireless
`
`device.”
`
`Moreover, these prior art combinations, even if supplemented with McCown,
`
`would not have taught “transmitting the cached downloading information [obtained
`
`for a file from a remote server] to the server,” as recited in dependent claim 2.
`
`EX1001, 6:42-44. In addition, the prior art combinations would not have taught
`
`transmitted download information cached in the wireless device “causing the server
`
`in accordance with the downloading information to download the file into the first
`
`one of the storage spaces,” as also recited in dependent claim 2. Id. at 6:44-46.
`
`Prust alone, or in combination with Major or Kraft and Jewett would not
`
`have taught “allocat[ing] exclusively a second one of the storage spaces of a
`
`predefin