UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`ADOBE INC.,
`
`Petitioner,
`
`v.
`
`SYNKLOUD TECHNOLOGIES, LLC,
`
`Patent Owner.
`
`____________
`
`
`
`Case IPR2020-01393
`
`U.S. Patent No. 9,239,686
`
`____________
`
`
`
`SECOND DECLARATION OF ZAYDOON (“JAY”) JAWADI
`IN SUPPORT OF PATENT OWNER’S RESPONSE
`
`
`
`
`IPR2020-01393
`Exhibit 2014
`
`
`
`

`

`TABLE OF CONTENTS
`
`
`I. BACKGROUND AND QUALIFICATIONS ..................................................... 1
`
`II. MATERIALS REVIEWED ................................................................................ 6
`
`III. LEGAL UNDERSTANDING ............................................................................. 7
`
`IV. CLAIM CONSTRUCTION ................................................................................ 7
`
`A.
`
`
`Petitioner’s Construction of “cached in the first wireless device” Is Flawed
`8
`
`V. OPINIONS .........................................................................................................13
`
`Independent Claim 12 Is Not Obvious in View of Prust Alone or in
`A.
`Combination with Jewett ......................................................................................14
`
`a.
`
`Claim 12: Prust and Jewett Do Not Disclose Predefined Capacity .........14
`
`i. Responses to PTAB Decision Regarding Predefined Capacity ...............15
`
`ii.
`
`Predefined Capacity in the ’686 Patent .................................................19
`
`iii. Prust’s RAID Does Not Disclose ’686 Predefined Capacity ................22
`
`iv. Prust’s Billing Address Does Not Disclose ’686 Predefined Capacity 27
`
`v.
`
`Prust Does Not Disclose Capacity ........................................................28
`
`vi. Prust Does Not Disclose Predefined Capacity ......................................29
`
`vii. Jewett Does Not Disclose Predefined Capacity ....................................32
`
`viii. The Combination of Prust and Jewett Does Not Disclose Predefined
`Capacity .........................................................................................................36
`
`ix. Claims 12-20 Are Not Obvious in View of Prust (Ex 1104) and Jewett
`(Ex 1109) .......................................................................................................36
`
`b. Claim 12: Prust’s Email Does Not Disclose Establishing a
`Communication Link for the Wireless Device to Remotely Access the Storage
`Space .................................................................................................................36
`
`c.
`
`Claim 12: Prust’s Email Does Not Disclose Retrieving ..........................41
`
`d. Claim 12: Prust’s Email Does Not Disclose Storing and Retrieving ......43
`
`e. A POSITA Would Not Have Been Motivated to Combine Prust with
`Jewett .................................................................................................................44
`
`
`
`i
`
`

`

`B. Dependent Claim 13 Is Not Obvious in View of Prust Alone or in
`Combination with Jewett and Further in View of Major or Kraft .......................45
`
`Claim 13: Utilizing Download Information for the File Cached in the
`a.
`First Wireless Device Is Not Disclosed in Prust Alone and/or in Combination
`with Jewett and Further in Combination with Major and/or Kraft ...................46
`
`i. Responses to PTAB Decision Regarding Utilizing Download
`Information for the File Cached in the Wireless Device ...............................46
`
`1. Response to Decision p. 36 Third Paragraph: Prust Does Not Disclose
`Cache Storage ..............................................................................................46
`
`2. Response to Decision p. 37 Second Paragraph: Cache Storage
`Construction Is Flawed and Prust Does Not Disclose Cache Storage or
`Retrieving from Cache Storage ...................................................................48
`
`3. Response to Decision p. 37 Third Paragraph: Typing Does Not
`Disclose Retrieving from Cache Storage ....................................................52
`
`4. Response to Decision p. 37 Fourth Paragraph: Email Does Not
`Disclose Retrieving from Cache Storage ....................................................53
`
`5. Response to Decision p. 30 Second Paragraph: Major .........................53
`
`6. Response to Decision p. 39 First Paragraph: Cache Storage
`Construction Is Flawed and Kraft Does Not Disclose Cache Storage or
`Retrieving from Cache Storage ...................................................................54
`
`7. Additional Response to Decision ..........................................................56
`
`Prust Does Not Disclose Storing Download Information in Cache
`ii.
`Storage or Retrieving Download Information from Cache Storage ..............56
`
`iii. Prust Does Not Disclose Where Download Information Is Obtained
`from 56
`
`iv. Petitioner’s Theory with Three Hypotheses Regarding Utilizing
`Download Information for the File Cached in the Wireless Device .............58
`
`Petitioner’s First Hypothesis That Download Information Is Obtained
`v.
`from a Web Page is Flawed and Unsupported by Prust ................................58
`
`vi. Petitioner’s Second Hypothesis That Download Information Is Cached
`Is Flawed and Unsupported by Prust .............................................................61
`
`
`
`ii
`
`

`

`vii. It Would Not Have Been Obvious to a POSITA That the Download
`Information in Prust’s Email Is from a Web Page Cached in the Wireless
`Device ............................................................................................................63
`
`Petitioner’s Third Hypothesis That the User’s Typing or Copying of
`viii.
`Download Information Discloses Cached Download Information Is Flawed
`and Unsupported by Prust ..............................................................................64
`
`ix. Petitioner’s Third Hypothesis (Typing Scenario) That the User’s
`Typing of Download Information Discloses Cached Download Information
`Is Flawed and Unsupported by Prust .............................................................65
`
`Petitioner’s Third Hypothesis (Copying Scenario) That the User’s
`x.
`Copying of Download Information Discloses Cached Download Information
`Is Flawed and Unsupported by Prust .............................................................66
`
`xi. Difference between Retrieving from Cache and Retrieving from
`Displayed Webpage .......................................................................................69
`
`xii. Download Information for the File (Singular) ......................................72
`
`xiii. Caching the Download Information in Prust Is Unnecessary and
`Wasteful .........................................................................................................73
`
`xiv.
`
`Prust and Major ..................................................................................76
`
`xv. Prust and Kraft ......................................................................................78
`
`Therefore, Claim 13 Is Not Obvious in View of Prust Alone or in
`xvi.
`Combination with Jewett and Major or Kraft ................................................79
`
`b. Dependent Claims 15-20 Are Not Obvious in View of Prust Alone or in
`Combination with Jewett, and Dependent Claim 14 Is Not Obvious Further in
`View of Major or Kraft and McCown ..............................................................80
`
`C. Independent Claim 12 Is Not Obvious in View of Nomoto Alone or in
`Combination with Jewett ......................................................................................80
`
`a.
`
`Claim 12: Nomoto Does Not Disclose Predefined Capacity ...................80
`
`b. Claim 12: Nomoto and Jewett Do Not Disclose Predefined Capacity ....82
`
`c. A POSITA Would Not Have Been Motivated to Combine Nomoto with
`Jewett .................................................................................................................82
`
`D. Dependent Claim 13 Is Not Obvious in View of Nomoto Alone or in
`Combination with Jewett and Major or Kraft ......................................................83
`
`Claim 13: Utilizing Download Information for the File Cached in the
`a.
`Wireless Device Is Not Disclosed in Nomoto Alone or in Combination with
`Jewett and Major or Kraft .................................................................................84
`
`
`
`iii
`
`

`

`i. Responses to Board’s Decision Regarding Utilizing download
`Information for the File Cached in the Wireless Device Relying on Nomoto
`(with Major and Kraft)...................................................................................84
`
`ii. Nomoto Does Not Disclose Storing Download Information in Cache
`Storage or Retrieving Download Information from Cache Storage ..............85
`
`iii. Nomoto Does Not Disclose Where Download Information Is Obtained
`from 85
`
`iv. Petitioner’s Theory with Three Hypotheses Regarding Utilizing
`Download Information for the File Cached in the First Wireless Device .....87
`
`Petitioner’s First Hypothesis That Download Information Is Obtained
`v.
`from a Web Page is Flawed and Unsupported by Nomoto ...........................88
`
`vi. Petitioner’s Second Hypothesis That Download Information Is Cached
`Is Flawed and Unsupported by Nomoto ........................................................89
`
`vii. It Would Not Have Been Obvious to a POSITA That the Download
`Information in Nomoto Is from a Web Page Cached in the Wireless Device
`
`91
`
`Petitioner’s Third Hypothesis That the User’s Typing or Copying of
`viii.
`Download Information Discloses Cached Download Information Is Flawed
`and Unsupported by Nomoto .........................................................................92
`
`ix. Petitioner’s Third Hypothesis (Typing Scenario) That the User’s
`Typing of Download Information Discloses Cached Download Information
`Is Flawed and Unsupported by Nomoto ........................................................93
`
`Petitioner’s Third Hypothesis (Copying Scenario) That the User’s
`x.
`Copying of Download Information Discloses Cached Download Information
`Is Flawed and Unsupported by Nomoto ........................................................94
`
`xi. Caching the Download Information in Nomoto Is Unnecessary and
`Wasteful .........................................................................................................97
`
`xii. Nomoto and Major ..............................................................................100
`
`xiii. Nomoto and Kraft ............................................................................102
`
`Therefore, Claim 13 Is Not Obvious in View of Nomoto Alone or in
`xiv.
`Combination with Jewett and Major or Kraft ..............................................104
`
`b. Dependent Claims 15-20 Are Not Obvious in View of Nomoto Alone or
`in Combination with Jewett, and Dependent Claim 14 Is Not Obvious Further
`in View of Major or Kraft and McCown ........................................................104
`
`E. Major’s Teachings Discourage Combining with Prust or Nomoto .............105
`
`
`
`iv
`
`

`

`a. Major’s Teachings Discourage Wireless Device Access to External
`Storage .............................................................................................................105
`
`b. Major Stores Data Objects in Cache, Negating the Need for External
`Storage .............................................................................................................107
`
`VI. CONCLUSION ................................................................................................108
`
`
`
`
`
`v
`
`

`

`I, Zaydoon (“Jay”) Jawadi, declare as follows:
`
`I.
`
`BACKGROUND AND QUALIFICATIONS
`
`1. My name is Zaydoon (“Jay”) Jawadi.
`
`2.
`
`I am an independent expert and consultant. I have been retained as an
`
`expert witness on behalf of SynKloud Technologies, LLC (“SynKloud”) for the
`
`above-captioned Inter Partes Reviews (IPRs) regarding U.S. Patent No. 9,239,686
`
`(“’686 Patent”).
`
`3.
`
`As shown in my curriculum vitae (attached as Exhibit 2002), I have a
`
`Bachelor of Science in Electrical Engineering from Mosul University, a Master of
`
`Science in Computer Science from Columbia University with a Citation for
`
`Outstanding Achievement – Dean’s Honor Student, and over 40 years of
`
`experience in software and product design and development, engineering,
`
`consulting, and management in the fields of data storage, Internet, software, data
`
`networking, computing systems, and telecommunication.
`
`4.
`
`I have worked with and possess expertise in numerous technologies,
`
`including data storage
`
`technologies and
`
`interfaces, Internet and website
`
`technologies, databases, data networking
`
`technologies and protocols, and
`
`telephony.
`
`5.
`
`From 1978 to 1980, I worked as a telecommunication/electrical
`
`engineer for Emirtel (formerly Cable and Wireless, now Etisalat). During my
`
`
`
`1
`
`

`

`employment at Emirtel, among other things, I worked on telephony and
`
`telecommunication products and services, and I developed software in assembly
`
`and high-level languages for archiving, storing, and retrieving data to and from
`
`data storage devices, such as disk drives and tape drives.
`
`6.
`
`From 1981 to 1983, I worked as a software engineer for Amdahl
`
`Corporation (now Fujitsu), a California-based major supplier of computers,
`
`systems, and data storage subsystems.
`
`7.
`
`From 1984 to 1994, I worked as a software, data storage, and systems
`
`consultant to various data storage and computer companies in California, the
`
`United States, Asia, and Europe. I provided technical consulting services in data
`
`storage, data storage systems, data storage devices, software design and
`
`development, system software, device driver software, data storage device
`
`firmware, data storage software, data storage chips, data storage tools, data storage
`
`test systems and test software, data storage and I/O protocol development systems,
`
`data storage and I/O protocol analyzers, data storage and I/O monitoring systems,
`
`and data storage manufacturing systems and software.
`
`8.
`
`From 1992 to 1996, I was President and founder of Zadian
`
`Technologies, Inc., a California-based leading supplier of networked data storage
`
`test systems, with over 50,000 units installed worldwide in mission-critical
`
`customer operations with premier high-technology customers, such as Conner
`
`
`
`2
`
`

`

`Peripherals (now Seagate), DEC (now HP), EMC (now Dell EMC), Exabyte,
`
`Fujitsu, HP, IBM, Intel, Iomega, Quantum (now Seagate), Seagate, Sony,
`
`StorageTek, Tandberg, Tandem (now HP), Toshiba, Unisys, and WD. The
`
`company’s products
`
`included
`
`test systems, manufacturing systems, and
`
`development systems for data storage devices (disk drives, tape drives, removable
`
`drives, flash drives, optical drives, CD-ROM drives, Jukeboxes, and RAID) and
`
`data storage interfaces (SCSI, ATA / IDE / ATAPI, Fibre Channel, SSA, and
`
`PCMCIA / PC Card).
`
`9.
`
`In 1996, Zadian Technologies was acquired by UK-based Xyratex
`
`International LTD (NASDAQ: XRTX, which was later acquired by Seagate,
`
`NASDAQ: STX, in 2014). Following Zadian’s acquisition by Xyratex, I became
`
`an employee of Xyratex until 1998. At Xyratex, I was a general manager of a data
`
`storage interface business unit and, subsequently, a general manager of a data
`
`networking analysis tools business unit, which designed and built Gigabit Ethernet
`
`network protocol analysis and monitoring products, which were sold, under OEM
`
`agreement, by the largest supplier of network protocol analysis and monitoring
`
`products.
`
`10. From 1999 to 2001, I was CEO, Chairman, and cofounder of Can Do,
`
`Inc., a California-based Internet eCommerce and community company. The
`
`CanDo.com website offered over 10,000 products for sale as well as extensive
`
`
`
`3
`
`

`

`consumer features, such as news, chat, messages, and product information for
`
`people with disabilities. The company also provided technologies for display
`
`magnification and sound/audio adaptation through the Internet to make websites
`
`more accessible to persons with vision and hearing impairments. The company
`
`was funded by leading venture capital firms.
`
`11. From 2001 to 2007, I was President and cofounder of CoAssure, Inc.,
`
`a California-based provider of Web-based technology services and solutions for
`
`automated telephony speech recognition and touchtone applications, serving
`
`multiple Fortune-500 companies.
`
`12.
`
`In 2009, I cofounded and have since been President of Rate Speeches,
`
`Inc., a California-based Internet company providing online services, resources, and
`
`technologies for creating, rating, evaluating, and enhancing public speaking,
`
`presentation, and communication skills. Rate Speeches also operates the
`
`ratespeeches.com website and the Speech Evaluator online software.
`
`13. Since moving to Silicon Valley in Northern California in 1981, I have
`
`worked on numerous technology products that have generated billions of dollars in
`
`sales.
`
`14.
`
`I hold a California community college lifelong computer science
`
`instructor credential. I have taught various data storage and computer technologies
`
`
`
`4
`
`

`

`to thousands of professional engineers and academic students in the United States,
`
`Europe, and Asia.
`
`15.
`
`In my work as an expert and consultant, I have examined, analyzed,
`
`and inspected numerous data storage systems, computer systems, software
`
`products, cell phone applications, tens of millions of lines of source code, and the
`
`frontend and backend software of more than 100 websites, including massive,
`
`highly-trafficked consumer and business websites.
`
`16. Through my education, industry and expert experience, and industry
`
`and expert knowledge, I have gained a detailed understanding of the technologies
`
`at issue in this case.
`
`17. My additional industry experience is in my curriculum vitae.
`
`18. My expert litigation support cases, including cases in which I have
`
`testified during the last four years as an expert, can be found in my curriculum
`
`vitae, which is Exhibit 2002.
`
`19. As such, I am qualified to provide opinions regarding the state of the
`
`art at the time the ’686 Patent was filed (which I understand to be no later than
`
`September 25, 2013, but claiming a priority date of December 4, 2003) and how a
`
`person of ordinary skill in the art (“POSITA”) at that time would have interpreted
`
`and understood the ’686 Patent.
`
`
`
`5
`
`

`

`20.
`
`I am being compensated for my work and any travel expenses in
`
`connection with
`
`this proceeding at my standard consulting rates.
`
` My
`
`compensation is in no way dependent on or contingent on the outcome of my
`
`analysis or opinions rendered in this proceeding and is in no way dependent on or
`
`contingent on the results of these or any other proceedings relating to the above-
`
`captioned patent.
`
`21. Although I am not rendering an opinion about the level of skill of a
`
`POSITA proffered by Petitioner, based on my professional experience, I have an
`
`understanding of the capabilities of a POSITA (as such a POSITA is defined by
`
`Petitioner). Over the course of my career, I have supervised and directed many
`
`such persons. Additionally, I myself, at the time the ’686 Patent was filed and at
`
`its priority date, qualified as at least a POSITA.
`
`II. MATERIALS REVIEWED
`
`22.
`
`In preparing this declaration, I reviewed the ’686 Patent, including its
`
`claims in view of its specification, the prosecution history of the ’686 Patent,
`
`various prior art and technical references from the time of the invention, and the
`
`IPR2020-01392 and 01393 Petitions (“Petitions”) and their exhibits.
`
`23.
`
`I also reviewed the following references attached as exhibits:
`
`Exhibit
`Exhibit
`2003
`
`
`
`Description
`Hypertext Transfer Protocol -- HTTP/1.1, rfc2616, June 1999
`
`6
`
`

`

`Exhibit
`Exhibit
`2004
`Exhibit
`2005
`
`Exhibit
`2006
`Exhibit
`2007
`
`Description
`Microsoft Computer Dictionary - 5th Edition – 2002
`
`Predefine, Merriam-Webster
`of
`Dictionary Definitions
`Dictionary, Oxford Dictionary, Cambridge Dictionary, Last
`Viewed December 24, 2019
`Patrick-Turner's Industrial Automation Dictionary; Clarence T.
`Jones, S. Percy Jones; 1996
`Macmillan Dictionary of Information Technology; Dennis
`Longley, Michael Shain; 1988
`
`
`III. LEGAL UNDERSTANDING
`
`24.
`
`I have worked with counsel in the preparation of this Declaration.
`
`Nevertheless, the opinions, statements, and conclusions offered in this Declaration
`
`are purely my own and were neither suggested nor indicated in any way by counsel
`
`or anyone other than myself. I confirmed with counsel my understanding that an
`
`obviousness determination requires an analysis of the scope and content of the
`
`prior art, the differences between the prior art and the claims, the level of ordinary
`
`skill in the pertinent art at the time of the invention of the challenged patent, and an
`
`evaluation of any relevant secondary considerations.
`
`IV. CLAIM CONSTRUCTION
`
`25.
`
`I reviewed the comments in the Petitions and Petitioner’s expert’s
`
`declaration (EX-1103) pertaining to claim “construction of the claims” of the ’686
`
`Patent. My understanding is simply that the claims should be construed in
`
`accordance with their plain and ordinary meaning in the context of the
`
`specification of the patent and its file history.
`
`
`
`7
`
`

`

`A.
`
`Petitioner’s Construction of “cached in the first wireless device”
`Is Flawed
`
`26. Petitioner argues that “[i]n the context of both wired and wireless
`
`networked computer systems, it [cache storage] would be understood to refer to
`
`storage that is more readily accessible than the original source of information.”
`
`’01393 Petition, 5.
`
`27.
`
`In my opinion, Petitioner’s construction is flawed and improper.
`
`28. Petitioner also argues that the phrase “cached in the first wireless
`
`device” means “stored in a location on the wireless device that is more readily
`
`accessible than the original source of the information.” ’01393 Petition, 7.
`
`29.
`
`In my opinion, Petitioner’s construction of “cached in the first
`
`wireless device” is also flawed and improper.
`
`30. A POSITA would have known that cache storage is not merely any
`
`storage location “that is more readily accessible than the original source of the
`
`information.” Such construction omits three basic cache principles.
`
`31. First, 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. In other words, storing information in cache, when the information is
`
`initially fetched, is intended not for the initial access to the information, but for
`
`
`
`8
`
`

`

`subsequent access or accesses to that information. Petitioner’s construction omits
`
`this basic principle of cache.
`
`32. Second, cache storage includes a cache search mechanism invoked
`
`when information is needed. The cache search mechanism is used to determine if
`
`the requested information is in cache (cache hit) or not in cache (cache miss). If
`
`the information is not in cache, the information is fetched and stored in cache in
`
`anticipation of subsequent accesses to that information. Petitioner’s construction
`
`also omits this basic principle of cache.
`
`33. Third, cache storage includes a replacement algorithm, mechanism, or
`
`policy for replacing information in cache, such as least recently used (LRU)
`
`algorithm. Petitioner’s construction also omits this basic principle of cache.
`
`34. Petitioner’s own references for cache storage describe these three
`
`basic cache principles, namely that cache storage is used to save 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.
`
`35. Petitioner’s EX-1127 (Newton’s Telecom Dictionary) confirms that
`
`cache storage is used to save 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.
`
`
`
`9
`
`

`

`“A cache works like this. When the CPU needs data from memory,
`the system checks to see if the information is already in the cache. If it
`is, it grabs that information; this is called a cache hit. If it isn’t, it’s
`called a cache miss and the computer has to fetch the information by
`access the main memory or hard disk, which is slower. Data retrieved
`during a cache miss is often written into the cache in anticipation of
`further need for it.
`...
`Generally, when the cache is exhausted, it is flushed and the data is
`written back to main memory, to be replaced with the next cache
`according to a replacement algorithm.
`...
`The cache also will hold information that you recently accessed, in
`anticipation of your wanting to back up, or access it again.
`...
`Caching A process by which information is stored in memory or
`server in anticipation of next request for information.” EX-1127,
`Newton’s Telecom Dictionary, emphasis added
`
`36. Petitioner’s EX-1128 (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.
`
`“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-1128, Microsoft
`Press Computer Dictionary, emphasis added
`
`37. Petitioner’s EX-1129 (New Penguin Dictionary of Computing) also
`
`confirms that cache storage is used to save information that may be needed
`
`
`
`10
`
`

`

`multiple times (subsequent to initial access) and that cache storage includes a
`
`mechanism to determine cache hit/miss.
`
`“A small region of fast MEMORY interposed between a data
`processing device and a larger slower memory to hold copies of the
`most frequently or recently used data so that they may be access
`more quickly.
`...
`Caches may be employed in many other forms of communication, for
`example to enable WEB PAGES recently read to be read again
`more quickly, and between a computer's CPU and disk drives of
`various kinds (where the speed discrepancy is even greater than with
`memory)
`...
`cache hit A request by a computer's processor to read or write a data
`item that finds its target in the processor's CACHE and therefore does
`not have to reach out over the bus to external memory to access it.
`...
`cache miss A request by a computer's processor to read or write a data
`item that does not find its target in the processor's CACHE and
`therefore must continue through into main memory to access the
`item.” EX-1129 (New Penguin Dictionary of Computing), emphasis
`added
`
`38. Petitioner’s EX-1106 (Major) describes (at 21:1-5) a mechanism to
`
`determine cache hit/miss and describes (at 11:15-16, 11:20-21, 18:18-19) a
`
`replacement policy (algorithm).
`
`39. Petitioner’s omitting (from the cache storage construction) these three
`
`basic principles (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) results in
`
`considering or deeming as cache any location that is “more readily accessible than
`
`
`
`11
`
`

`

`the original source of the information.” In other words, under 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
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`cache (missing the three basic cache principles mentioned above), and even if the
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`location entirely contradicts the three basic cache principles described earlier.
`
`40. Under 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.”
`
`41. For at least these reasons, in my opinion, Petitioner’s construction of
`
`“cache storage” as “storage that is more readily accessible than the original source
`
`of information” is flawed and improper.
`
`42. And for at least these reasons, in my opinion, Petitioner’s construction
`
`of “cached in the first wireless device” as “stored in a location on the wireless
`
`device that is more readily accessible than the original source of the information”
`
`is flawed and improper.
`
`
`
`12
`
`

`

`43.
`
`I respectfully disagree with the PTAB’s Decision to adopt Petitioner’s
`
`construction of the term “cached in the first wireless device” as “stored in storage
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`on the wireless device that is more readily accessible than the original storage
`
`location.” Decision, 15
`
`44.
`
`In my opinion, the terms “cache,” “cache storage,” and “cached in
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`first wireless device” should be construed in accordance with their plain and
`
`ordinary meaning in the context of the specification of the ’686 Patent and its file
`
`history.
`
`V. OPINIONS
`
`45. Petitioner challenges independent Claim 12 of the ’686 Patent and
`
`challenges dependent Claims 12-20, which depend from Claim 12.
`
`46. Petitioner presents two grounds under which independent Claim 12of
`
`the ’686 Patent is purportedly invalid; the first ground relies on Prust (EX-1104) as
`
`primary prior art reference and the second ground relies on Nomoto (EX-1105) as
`
`primary prior art reference. Based on these two grounds, Petitioner presents eight
`
`grounds under which dependent Claims 13-20 are purportedly invalid.
`
`47.
`
`In the first ground, Petitioner contends that Claims 12 and 13-20 are
`
`obvious over Prust (EX-1104) as primary prior art reference, contends that Claims
`
`12 and 13-20 are obvious over Prust (EX-1104) alone or combined with the
`
`teachings of Jewett (EX-1109), contends that Claim 13 is obvious based on the
`
`
`
`13
`
`

`

`additional teachings of Major (EX-1106) or Kraft (EX-1107), and contends that
`
`Claim 14 is obvious based on the additional teachings of McCown (EX-1108).
`
`’01393 Petition, 13-42.
`
`48.
`
`In the second ground, Petitioner contends that Claims 12 and 13-20
`
`are obvious over Nomoto (EX-1105) as primary prior art reference, contends that
`
`Claims 12 and 13-20 are obvious over Nomoto (EX-1105) alone or combined with
`
`the teachings of Jewett (EX-1109), contends that Claim 13 is obvious based on the
`
`additional teachings of Major (EX-1106) or Kraft (EX-1107), and contends that
`
`Claim 14 is obvious based on the additional teachings of McCown (EX-1108).
`
`’01393 Petition, 42-65.
`
`49.
`
`In my opinion, as described below (§§ V.A-V.E), Petitioner has not
`
`established a reasonable basis to conclude that the challenged claims of the ’686
`
`Patent are obvious.
`
`A.
`
`Independent Claim 12 Is Not Obvious in View of Prust Alone or
`in Combination with Jewett
`
`a. Claim 12: Prust and Jewett Do Not Disclose Predefined
`Capacity
`
`
`
`50.
`
`In my opinion, “the server allocating exclusively a first one of the
`
`storage spaces of a predefined capacity to a user of a first wireless device”
`
`indicates that the storage server predefines storage capacity that is assigned
`
`exclusively to a user of the wireless device. The word “predefined” is defined by
`
`
`
`14
`
`

`

`Merriam-Webster dictionary as “defined in advance,” by Oxford dictionary as
`
`“defined, limited, or established in advance,” and by Cambridge dictionary as
`
`“decided, set, or arranged before something is done.” Exhibit 2005 (Merriam-
`
`Webster Dictionary, Oxford Dictionary, and Cambridge Dictionary Definitions of
`
`Predefine, Last Viewed December 24, 2019)
`
`i. Responses to PTAB Decision Regarding Predefined
`Capacity
`
`
`
`51. The Decision states that Petitioner fi