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.
`
`IPR2020-01393
`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
`
`
`
`
`
`
`
`

`

`IPR2020-01393
`Patent 9,239,686 B2
`
`I. INTRODUCTION
`
`Petitioner, Adobe Inc., filed a Petition for inter partes review of
`
`claims 12–20 of U.S. Patent No. 9,239,686 B2 (Ex. 1101, “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 12–20 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-
`
`01392, 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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`IPR2020-01393
`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. 1101, 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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`

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`IPR2020-01393
`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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`

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`IPR2020-01393
`Patent 9,239,686 B2
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`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
`
`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 Claims
`
`Petitioner challenges claims 12–20 of the ’686 patent. Claim 12, the
`
`sole independent claim challenged in this proceeding, and dependent
`
`claim 13 are illustrative and are reproduced below:
`
`12. A server for delivering storage service, comprising:
`
`a plurality of storage spaces, and a non-transitory computer-
`readable medium comprising program instructions that,
`executed by the server, causes the server to deliver the
`storage service; wherein the program instructions
`comprise:
`
`program instructions for the server allocating exclusively a first
`one of the storage spaces of a predefined capacity to a
`user of a first wireless device;
`
`5
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`

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`IPR2020-01393
`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 sending information of the first one of
`the storage spaces to the first wireless device for
`presenting the first one of the storage spaces to the user;
`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 creating from the first
`wireless device a folder structure of a plurality of folders
`in the first one of the storage spaces, and comprises to
`delete or move or copy or rename a first one of the
`folders in the folder structure, wherein each of the folders
`being used by the first wireless device for storing data
`therein or retrieving data therefrom.
`
`13. The server as recited in claim 12, wherein said storing data
`includes 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. 1101, 7:18–8:10.
`
`6
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`

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`IPR2020-01393
`Patent 9,239,686 B2
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`D. Asserted Grounds of Unpatentability
`
`Petitioner asserts that claims 12–20 are unpatentable based on the
`
`following grounds (Pet. 1–2):
`
`Claim(s) Challenged 35 U.S.C. §
`103(a)1
`12–20
`12–20
`103(a)
`13
`103(a)
`13
`103(a)
`13
`103(a)
`13
`103(a)
`14
`103(a)
`14
`103(a)
`14
`103(a)
`14
`103(a)
`14
`103(a)
`14
`103(a)
`12–20
`103(a)
`12–20
`103(a)
`13
`103(a)
`13
`103(a)
`13
`103(a)
`13
`103(a)
`
`Reference(s)
`
`Prust2
`Prust, Jewett3
`Prust, Major4
`Prust, Jewett, Major
`Prust, Kraft5
`Prust, Jewett, Kraft
`Prust, McCown6
`Prust, Jewett, McCown
`Prust, Major, McCown
`Prust, Jewett, Major, McCown
`Prust, Kraft, McCown
`Prust, Jewett, Kraft, McCown
`Nomoto7
`Nomoto, Jewett
`Nomoto, Major
`Nomoto, Jewett, Major
`Nomoto, Kraft
`Nomoto, Jewett, Kraft
`
`
`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. 1104, “Prust”).
`3 U.S. Patent No. 8,271,606 B2, issued Sept. 18, 2012 (Ex. 1109, “Jewett”).
`Petitioner asserts that Jewett has an effective filing date of August 10, 2001.
`Pet. 13 n.8; see Ex. 1109, code (60).
`4 WO 02/052785 A2, published July 4, 2002 (Ex. 1106, “Major”).
`5 U.S. Patent No. 6,309,305 B1, issued Oct. 30, 2001 (Ex. 1107, “Kraft”).
`6 WO 01/67233 A2, published Sept. 13, 2001 (Ex. 1108, “McCown”).
`7 U.S. Patent Application Publ’n No. 2001/0028363 A1, published Oct. 11,
`2001 (Ex. 1105, “Nomoto”).
`
`7
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`

`

`IPR2020-01393
`Patent 9,239,686 B2
`
`Claim(s) Challenged 35 U.S.C. §
`14
`103(a)
`14
`103(a)
`14
`103(a)
`14
`103(a)
`14
`103(a)
`14
`103(a)
`
`Reference(s)
`Nomoto, McCown
`Nomoto, Jewett, McCown
`Nomoto, Major, McCown
`Nomoto, Jewett, Major, McCown
`Nomoto, Kraft, McCown
`Nomoto, Jewett, Kraft, McCown
`
`
`
`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 12 and dependent claims 13–20. In IPR2020-01392,
`
`Petitioner challenges independent claim 1 and dependent claims 2–11.
`
`IPR2020-01392, 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
`
`
`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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`

`

`IPR2020-01393
`Patent 9,239,686 B2
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`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)).
`
`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 12 occupies approximately
`
`twenty pages of the Petition, which is reasonable in view of the length of
`
`claim 12. Pet. 13–23, 42–51. Petitioner’s showing for claim 1, which is
`
`9
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`IPR2020-01393
`Patent 9,239,686 B2
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`different in scope from claim 12,9 occupies approximately twenty-seven
`
`pages of the other petition, which also is reasonable in view of the length of
`
`claim 1. IPR2020-01392, Paper 1 at 13–26, 43–55. Moreover, some of the
`
`dependent claims are lengthy or complex, necessitating several pages of
`
`explanation. See, e.g., Pet. 23–42, 51–66; IPR2020-01392, Paper 1 at 26–
`
`31, 35–43, 55–58, 60–66. 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
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`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
`
`
`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.
`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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`IPR2020-01393
`Patent 9,239,686 B2
`
`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. 1103 ¶ 51). Patent
`
`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,” recited in dependent claim 13. 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. 8. Nevertheless, Patent Owner argues that Petitioner’s
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`11
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`IPR2020-01393
`Patent 9,239,686 B2
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`proposed construction of the “cached” limitation is “flawed.” Id. at 10.
`
`Patent Owner also proposes constructions 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,” recited in claim 13, and for “allocating
`
`exclusively a first one of the storage spaces of a predefined capacity to a
`
`user of a first wireless device,” recited in independent claim 12. Id. at 9–10,
`
`15–17. We address the parties’ arguments below. For 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 13, 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. 1103 ¶ 89; Ex. 1127, 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. 1128, 72 (defining “cache”
`
`as “[a] special memory subsystem in which frequently used data values are
`
`duplicated for quick access”); Ex. 1129, 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)).
`
`12
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`Patent 9,239,686 B2
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`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. 1101,
`
`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
`
`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. 10 (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. 11. 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. 11. Third, Mr. Jawadi asserts that “cache storage includes a
`
`replacement algorithm, mechanism, or policy for replacing information in
`
`13
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`cache, such as least recently used (LRU) algorithm.” Ex. 2001 ¶ 33
`
`(emphasis omitted); see Prelim. Resp. 11.
`
`Patent Owner contends that the technical dictionaries cited by
`
`Petitioner describe these principles. Prelim. Resp. 11. 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
`
`hit/miss.” Id. at 12–13 (quoting Ex. 2001 ¶¶ 35–37); see Ex. 1127, 126;
`
`Ex. 1128, 72; Ex. 1129, 60–61. Patent Owner also asserts that one of the
`
`dictionaries “confirms . . . that cache storage includes a replacement
`
`algorithm.” Prelim. Resp. 11–12 (quoting Ex. 2001 ¶ 35); see Ex. 1127,
`
`126.
`
`Patent Owner argues that Petitioner’s construction is improper
`
`because it neglects to consider these three principles. Prelim. Resp. 10–15.
`
`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 9. 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.
`
`14
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`IPR2020-01393
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`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
`
`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 13,
`
`“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. 9. 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 9–10. At this
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`juncture and based on the current record, we adopt Patent Owner’s
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`construction to clarify that it is the download information, not the file itself,
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`that is cached in the first wireless device.
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`3. “allocating exclusively a first one of the storage spaces of a predefined
`capacity to a user of a first wireless device”
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`Independent claim 12 recites “program instructions for the server
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`allocating exclusively a first one of the storage spaces of a predefined
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`capacity to a user of a first wireless device.” Ex. 1101, 7:24–26. Dependent
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`claim 20 recites a similar limitation. Id. at 8:35–39. Petitioner does not
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`propose any specific construction for this limitation. See generally Pet.; see
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`also Prelim. Resp. 16 (acknowledging that Petitioner does not explicitly set
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`forth a construction for this limitation).
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`Patent Owner argues that “allocating exclusively a first one of the
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`storage spaces of a predefined capacity to a user of a first wireless device” in
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`the context of the claims requires “deciding or setting in advance by a
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`storage server an amount of storage space exclusively to a user of a wireless
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`device.” Prelim. Resp. 15. Patent Owner argues that the claim language
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`“recites that the ‘capacity’ ‘allocat[ed] exclusively . . . to a user of a first
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`wireless device’ is ‘predefined[,’] meaning that it is decided or set in
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`advance” and “that the assigning of ‘a first one of the storage spaces of a
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`predefined capacity’ is done ‘by a server for delivering storage services.’”
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`Id. (citing Ex. 1101, 7:18–26). Patent Owner further argues that its proposed
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`construction is consistent with the Specification of the ’686 patent, which,
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`Patent Owner contends, “repeatedly states that an amount of storage space is
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`defined in advance to a user of a wireless device,” and “also indicates that it
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`is the storage server that defines the capacity of the storage space for each of
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`the users.” Id. at 16 (citing Ex. 1101, 2:50–58).
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`We begin our analysis with the claim language. Claim 12 recites
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`“program instructions for the server allocating exclusively a first one of the
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`storage spaces of a predefined capacity to a user of a first wireless device.”
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`Ex. 1101, 7:24–26. That claim language requires that a storage space be
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`allocated by the server, but the claim does not require that the server be the
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`entity that defines the capacity of the storage space. Further, the claim
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`language requires that a storage space be allocated exclusively to a user, but
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`it does not require that the capacity of the storage space be defined in
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`advance to a user. On this record, although we agree with Patent Owner that
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`“predefined” means “decided or set in advance,” it does not follow that
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`claim 12 requires only the server to perform the predefining or that the
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`capacity be defined in advance to a particular user.
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`Moreover, based on the present record, we are not persuaded that the
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`Specification of the ’686 patent requires the claim language to be interpreted
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`as narrowly as Patent Owner proposes. The disclosure cited by Patent
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`Owner provides that “each server unit . . . partition[s] its storage system into
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`volumes, such that each of the volumes will have multiple GB in size.”
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`Ex. 1101, 2:50–53; see Prelim. Resp. 16. But elsewhere, the ’686 patent
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`describes an administrator partitioning volumes of storage on the server.
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`Ex. 1101, 3:41–52, 4:24–29. On the present record, we are not persuaded
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`that the preferred embodiment of the ’686 patent requires the capacity of a
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`storage space to be predefined only by the server. Furthermore, the
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`additional disclosure cited by Patent Owner in support of its proposed
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`construction merely provides an example of how storage on a server could
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`be partitioned among a number of users; it does not state that capacity is
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`“defined in advance to a user of a wireless device,” as Patent Owner
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`contends. See Prelim. Resp. 16; Ex. 1101, 2:55–57 (“For example, if we
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`need to provide each user a 4 GB storage space, then a 160 GB disk drive
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`can support 40 users.”). In any event, even if the disclosure relied on by
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`Patent Owner were as restrictive as Patent Owner urges, which we find it is
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`not, we decline to import unclaimed features into the claim language. See
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`Ventana Med. Sys., Inc. v. BioGenex Labs., Inc., 473 F.3d 1173, 1181 (Fed.
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`Cir. 2006) (“[E]ach claim does not necessarily cover every feature disclosed
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`in the specification, [and] it is improper to limit the claim to other,
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`unclaimed features.”).
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`For these reasons, we determine that, on this record, “allocating
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`exclusively a first one of the storage spaces of a predefined capacity to a
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`user of a first wireless device,” as recited in claim 12, does not require that
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`the capacity be defined “in advance to a user of a wireless device” or that
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`the capacity be predefined by the server. The parties may wish to address
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`the construction of this limitation further at trial.
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`E. Asserted Obviousness Grounds Based on Prust
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`Petitioner contends that claims 12–20 of the ’686 patent are
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`unpatentable under 35 U.S.C. § 103(a) as obvious over Prust alone or Prust
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`and Jewett. Pet. 13–32, 38–40. Additionally, Petitioner contends that
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`claim 13 is unpatentable under 35 U.S.C. § 103(a) as obvious over Major
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`combined with Prust or Prust and Jewett, or Kraft combined with Prust or
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`Prust and Jewett. Id. at 32–38. Petitioner also contends that claim 14 is
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`unpatentable under 35 U.S.C. § 103(a) as obvious over McCown combined
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`with: (i) Prust, (ii) Prust and Jewett, (iii) Prust and Major, (iv) Prust, Jewett,
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`and Major, (v) Prust and Kraft, or (vi) Prust, Jewett, and Kraft. Id. at 38–42.
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`Petitioner relies on the Declaration of Dr. Weissman in support of its
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`showing. Id. at 13–42 (citing Ex. 1103). In support of its Preliminary
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`Response directed to these grounds, Patent Owner relies on the Declaration
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`of Mr. Jawadi. Prelim. Resp. 19–49 (citing 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. 1104, 1:6–8, 4:31–49. Figure 2 of
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`Prust is illustrative and reproduced below.
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`
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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. 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. 1109, 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,