IPR2020-01393
`U.S. Patent No. 9,239,686
`
`
`
`
`
`
`
`
`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 9,239,686
`
`
`
`__________________
`
`
`SynKloud Technologies, LLC’s Patent Owner Response
`
`
`
`
`
`
`
`
`
`
`

`

`IPR2020-01393
`U.S. Patent No. 9,239,686
`
`TABLE OF CONTENTS
`
`I. INTRODUCTION .......................................................................................................................1
`
`II. TECHNOLOGY BACKGROUND ...........................................................................................2
`
`A.
`
`B.
`
`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 .........................................5
`
`IV. CLAIM CONSTRUCTION. ....................................................................................................6
`
`a.
`
`b.
`
`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 (dependent claim 13). .....................7
`
`Allocating exclusively a first one of the storage spaces of a predefined
`capacity to a user of a first wireless device (independent claim 12 and
`dependent claim 20). ........................................................................................12
`
`V.
`
`A.
`
`THE PETITIONER FAILED TO DEMONSTRATE IT IS REASONABLY
`LIKELY TO PREVAIL ON ANY OF ITS PROPOSED OBVIOUSNESS
`GROUNDS. .................................................................................................................14
`
`Independent Claim 12 As Well As The Claims Dependent Therefrom Would
`Not Have Been Obvious Over Prust In Combination With The Secondary
`References. ...................................................................................................................15
`
`1.
`
`Prust, Alone or In Combination With Jewett Would Not Have Taught
`“allocating exclusively a first one of the storage spaces of a predefined
`capacity to a user of a first wireless device,” As Recited in Independent
`Claim 12. ................................................................................................................17
`
`i. Responses to Board’s Institution Decision Regarding the “predefined
`capacity” Claim Limitations ............................................................................17
`
`ii.
`
`iii.
`
`iv.
`
`Prust’s Disclosure of RAID Would Not Have Taught The “predefined
`capacity” Of The ’686 Patent ...........................................................................21
`
`Prust’s Disclosure Of A Billing Address Would Not Have Taught The
`“predefined capacity” Of The ’686 Patent .......................................................25
`
`Prust Would Not Have Taught Or Suggested The “predefined
`capacity” Of The ’686 Patent ...........................................................................26
`
`
`
`ii
`
`

`

`IPR2020-01393
`U.S. Patent No. 9,239,686
`
`v.
`
`vi.
`
`2.
`
`3.
`
`Jewett Does Not Compensate For Prust’s Deficiencies; It Would Not
`Have Taught Or Suggested The “predefined capacity” Of The ’686
`Patent................................................................................................................27
`
`A POSITA Would Not Have Been Motivated To Combine Jewett
`With Prust And Reasonably Expect Success. ..................................................31
`
`Prust Alone Or In Combination With Jewett And 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 Dependent Claim 13. ............................................................................32
`
`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 Dependent Claim 13 Of The ’686 Patent
`With A Reasonable Expectation Of Success. ........................................................43
`
`B.
`
`Independent Claim 12 As Well As The Claims Dependent Therefrom Would
`Not Have Been Obvious Over Nomoto In Combination With The Secondary
`References. ...................................................................................................................49
`
`1.
`
`2.
`
`3.
`
`Nomoto, Alone or In Combination With Jewett Would Not Have Taught
`“allocating exclusively a first one of the storage spaces of a predefined
`capacity to a user of a first wireless device,” As Recited in Independent
`Claim 12. ................................................................................................................49
`
`The Combination Of Nomoto with Jewett and 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 Dependent Claim 13. ............................................................................51
`
`The Petitioner Failed To Show That A POSITA Would Have Been
`Motivated To Modify Nomoto With Jewett and Either Major or Kraft To
`Achieve The Particular Device Recited In Dependent Claim 13 Of The
`’686 Patent With A Reasonable Expectation Of Success. .....................................52
`
`C.
`
`Objective Indicia Of Non-Obviousness Support The Patentability Of The
`Claims Of The ’686 Patent. .........................................................................................54
`
`VI.
`
`CONCLUSION ............................................................................................................78
`
`
`
`iii
`
`

`

`IPR2020-01393
`U.S. Patent No. 9,239,686
`
`TABLE OF AUTHORITES
`
`
`
`
`
`
`
`
`
`
`
`PAGE NO.
`
`CASES
`
`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)
`
`Kolbe & Kolbe Millwork Co., Inc. v. Sierra Pacific Industries,
`
`2019 WL 5070454 (PTAB 2019)
`
`
`
`
`K/S Himpp v. Hear-Wear Techs., LLC,
`
`751 F.3d 1362 (Fed. Cir. 2014)
`
`Teleflex, Inc. v. Ficosa N Am. Corp.,
`
`299 F.3d 1313, 63 USPQ2d 1374 (Fed. Cir. 2002)
`
`Texas Digital Systems, Inc. v. Telegenix, Inc.,
`
`308 F.3d 1193 (Fed. Cir. 2002)
`
`STATUTES
`
`37 C.F.R. §42.107
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`15, 33
`
`42
`
`4, 16
`
`16, 41, 42
`
`
`
`
`
`
`
` 14, 42
`
`
`
`
`
`6
`
`80i
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`iv
`
`

`

`PATENT OWNER’S EXHIBIT LIST
`
`Exhibit Number Description
`
`IPR2020-01393
`U.S. Patent No. 9,239,686
`
`2001
`
`2002
`
`2003
`
`2004
`2005
`
`2006
`
`2007
`
`2008
`2009
`2010
`
`2011
`2012
`
`2013
`2014
`2015
`
`2016
`2017
`
`2018
`
`2019
`
`Declaration of Zaydoon Jawadi
`
`Curriculum Vitae of Zaydoon Jawadi
`
`Hypertext Transfer Protocol -- HTTP/1.1, rfc2616, June
`1999.
`
`Microsoft Computer Dictionary - 5th Edition – 2002
`Dictionary Definitions of Predefine, Merriam-Webster
`Dictionary, Oxford Dictionary, Cambridge Dictionary.
`Patrick-Turner's
`Industrial Automation Dictionary;
`Clarence T. Jones, S. Percy Jones; 1996
`Macmillan Dictionary of Information Technology; Dennis
`Longley, Michael Shain; 1988
`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
`https://www.microsoft.com/en-us/microsoft-
`365/onedrive/compare-onedrive-
`plans?activetab=tab:primaryr2, last viewed September 15,
`2020.
`
`
`
`v
`
`

`

`2020
`
`2021
`2022
`
`2023
`
`2024
`
`2025
`
`2026
`
`2027
`
`2028
`
`2029
`
`2030
`2031
`
`IPR2020-01393
`U.S. Patent No. 9,239,686
`
`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)
`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.
`
`
`
`vi
`
`

`

`IPR2020-01393
`U.S. Patent No. 9,239,686
`
`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)
`
`2032
`
`2033
`
`2034
`
`2035
`
`2036
`2037
`2038
`
`2039
`
`
`
`
`vii
`
`

`

`IPR2020-01393
`U.S. Patent No. 9,239,686
`
`
`I. INTRODUCTION
`
` 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.
`
`First, each of Petitioner’s proposed grounds of rejection is missing one or
`
`more limitations of the claims of the ’686 patent. Infra, §§ V.B.1 and V.C.1.
`
`For example, none of the combinations of prior art references asserted by
`
`Petitioner would have taught “allocating exclusively a first one of the storage
`
`spaces of a predefined capacity to a user of a first wireless device,” as recited in
`
`independent claim 12 of the ’686 patent or “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 dependent claim 13. Neither of Petitioner’s primary references (i.e., Prust
`
`and Nomoto) mention capacity or cache. And although some of the
`
`secondary references (e.g., Major, Kraft) do mention cache, they do not make
`
`any mention of how any of the data in cache would be used, let alone that
`
`download information in the cache of a wireless device would be used remotely
`
`from the wireless device—not locally at the wireless device—to download a file
`
`from a remote server (e.g., a web site) to a remote storage space.
`
`
`
`1
`
`

`

`
`Second, the Petitioner did not present any objective evidence as to why
`
`IPR2020-01393
`U.S. Patent No. 9,239,686
`
`one of ordinary skill in the art would have been motivated to modify either
`
`Prust or Nomoto, the primary references, with the teachings of the secondary
`
`references (e.g., Major, Kraft, Jewett), and reasonably expect success. OSRAM
`
`Sylvania, Inc. v. Am Induction Techs., Inc., 701 F.3d 698, 706 (Fed. Cir. 2012).
`
`Third, objective indicia of non-obviousness, including the commercial
`
`success of the devices that infringe the claims of the ’686 Patent and two licenses
`
`showing industry respect for the claimed invention support the patentability of the
`
`claims. Infra, § V.B.
`
`II. TECHNOLOGY BACKGROUND
`
`A. Prior Art Storage Systems
`
`As discussed in the background section of the ’686 patent, prior art
`
`storages systems are “categorized as internal storage or external storage.”
`
`EX1001, 1:33-34. “The internal storages of a computing system include those
`
`storage media such as hard disk drives, memory sticks, memory, and others
`
`that are internally connected within the computing system through [a] system
`
`bus or a few inches of cable.” Id. at 1:35-38. That is, internal storage media
`
`“are internal components of the computing system in a same enclosure.” Id. at
`
`1:39-40.
`
`
`
`2
`
`

`

`
`In contrast, “[t]he external storages of a computing system are those
`
`IPR2020-01393
`U.S. Patent No. 9,239,686
`
`storage media that are not the internal components of the computing system in
`
`a same enclosure.” Id. at 1:42-45. Instead, external storage is “connected
`
`through [a] longer cable, such as through Ethernet cable for IP based storage,
`
`Fiber channel cable for fiber channel storage, or wireless communication
`
`media, and others.” Id. at 1:43-47. “[E]xternal storage could be magnetic hard
`
`disk drives, solid state disk, optical storage drives, memory card and others,
`
`and could be in any form.” Id. at 1:47-51.
`
`The inventor of the ’686 patent, however, recognized that storage on
`
`users’ “wireless devices such as in their cell phone or personal data assistant
`
`devices (“PDA”) … [was] usually limited to 256 MB for the PDA and much
`
`less for the cell phone.” Id. at 2:39-42. Accordingly, the invention recognized a
`
`need to provide wireless devices with “multiple gigabytes (GB) of storage”
`
`from a remote storage server to support multimedia applications. Id. at 2:43-
`
`47. Moreover, because multimedia data require large amounts of memory,
`
`there was a need to store data from various sources (e.g., a web server) to the
`
`remote storage server. Id. at 2:50-54.
`
`
`
`B. The ’686 Patent: Mr. Sheng Tai Tsao Invents An Approach For
`Downloading Data From A Web Site To A Remote Storage Server
`
`
`
`3
`
`

`

`IPR2020-01393
`U.S. Patent No. 9,239,686
`
`
`Using Download Information Stored In The Cache Of A Wireless
`Device.
`
`The ’686 patent addresses the deficiencies of the prior art with an
`
`approach that downloads data from a web site to a remote storage server using
`
`download information in a cache of a wireless device, as shown by FIG. 3,
`
`which is reproduced below.
`
`One embodiment of the invention includes a wireless device (1) having a
`
`web browser (8) and other software (9); a website (15); and external storage
`
`(10) having file systems (11) on a server (3). Id. at 3:60-4:2. The present
`
`
`
`
`
`4
`
`

`

`IPR2020-01393
`U.S. Patent No. 9,239,686
`
`
`invention downloads data using the download information in the cache of the
`
`user’s wireless device (1) from the web site (15) to the user’s assigned file
`
`system (11) on the server. The downloaded data can later be accessed by the
`
`user device. Id. at 5:48-58.
`
`Thus, the invention of the ’686 patent includes a novel and non-obvious
`
`way to utilize download information in a cache of a wireless device to enable
`
`easy and efficient downloading of data (e.g., a web page, a file) from a web
`
`server to a remote storage space.
`
`
`
`III. SUMMARY OF THE INSTITUTED GROUNDS FOR REVIEW
`
`Below is a summary of the proposed grounds instituted by the Board:
`
`i.
`
` Claims 12-20 have been alleged to have been obvious under § 103
`
`over Prust (EX-1104) alone or combined with Jewett (EX-1109);
`
`ii. Claim 13 has been alleged to have been obvious over Prust alone
`
`or combined with Jewett and further combined with Major (EX-1106) or Kraft
`
`(EX-1107);
`
`iii. Claim 14 has been alleged to have been obvious over Prust alone
`
`or combined with Jewett, Major or Kraft and further combined with McCown
`
`(EX-1108);
`
`
`
`5
`
`

`

`
` Claims 12-20 have been alleged to have been obvious under § 103
`
`iv.
`
`IPR2020-01393
`U.S. Patent No. 9,239,686
`
`over Nomoto (EX-1105) alone or combined with Jewett;
`
`v. Claim 13 has been alleged to have been obvious over Nomoto
`
`alone or combined with Jewett and further combined with Major or Kraft;
`
`vi. Claim 14 has been alleged to have been obvious over Nomoto
`
`alone or combined with Jewett, Major or Kraft and further combined with
`
`McCown.
`
`
`
`IV. CLAIM CONSTRUCTION.
`
`Claim construction is generally an issue of law. Claims in an inter partes
`
`review are construed pursuant to the principle set forth by the court in Phillips
`
`v. AWH Corp, 415 F.3d 1303, 1312-15 (Fed. Cir. 2005) (en banc). Under
`
`Phillips, the specification is the single best source for claim interpretation. 415
`
`F.3d at 1312. “The terms used in the claims bear a heavy presumption that they
`
`mean what they say and have the ordinary meaning that would be attributed to
`
`those words by persons skilled in the relevant art.” Texas Digital System, Inc. v.
`
`Telegenix, Inc., 308 F.3d 1193, 1202 (Fed. Cir. 2002) (emphasis added) (internal
`
`quotation marks omitted). Additionally, the “appropriate context” to read a
`
`claim term includes both the specification and the claim language itself. In re
`
`Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010).
`
`
`
`6
`
`

`

`IPR2020-01393
`U.S. Patent No. 9,239,686
`
`
`
`
`
`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 (dependent claim 13).
`
`This claim limitation 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.
`
`This claim construction is consistent with the claim language itself and
`
`the Specification. Claim 13 explicitly recites that the “download information
`
`for the file cached in the first wireless device.” EX1101, 8:6-9. Claim 13 also
`
`recites “download[ing] a file from a remote server.” Ibid. Therefore, the
`
`claimed “download information” is for the file at the remote server and this
`
`“download information” is stored in the cache storage of the “wireless device.”
`
`The Specification explains that the claimed “download information for
`
`the file” is stored in the cache of the wireless device: “the downloading
`
`information for the data, which becomes available in the cached web-pages on
`
`the wireless device.” Id. at 5:30-33. This download information in the wireless
`
`device’s cache is, in fact, utilized to download the file:
`
`
`
`7
`
`

`

`IPR2020-01393
`U.S. Patent No. 9,239,686
`
`
`3) The other software modules (9) of the wireless device (1) send
`
`the obtained downloading information to other service modules
`
`(7) of the storage server (3) via path (b) of FIG. 3.
`
`
`
`4) Upon receiving the downloading information from the wireless
`
`device (1), the other service module (7) of the storage server (3)
`
`sends a web download request to the web-site (15) via path (c) of
`
`FIG. 3 based on download information obtained. and receives the
`
`downloading data streams from the web server of the web-site
`
`(15).
`
`EX1101, 5:34-43.
`
`Petitioner’s construction of “cache” as “storage that is more readily
`
`accessible than the original source of the information” (Petition, 5) is flawed.
`
`As explained by Mr. Jawadi, “[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” because it “omits three basic cache
`
`principles.” EX2001, ¶ 30.
`
`“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. “Second, cache storage includes a cache search mechanism
`
`invoked when information is needed. The cache search mechanism is used to
`
`
`
`8
`
`

`

`IPR2020-01393
`U.S. Patent No. 9,239,686
`
`
`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.” Id.
`
`at ¶ 32 (emphasis in original). “Third, cache storage includes a replacement
`
`algorithm, mechanism, or policy for replacing information in cache, such as
`
`least recently used (LRU) algorithm.” Id. at ¶ 33 (emphasis in original).
`
`Indeed, Petitioner’s own references describe these three principles. For
`
`example, “Petitioner’s EX-1125 (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” (EX2001, ¶ 35):
`
`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.
`...
`
`
`
`9
`
`

`

`IPR2020-01393
`U.S. Patent No. 9,239,686
`
`
`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). “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” (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-1128, Microsoft Press Computer Dictionary (emphasis added). “Petitioner’s
`
`EX-1129 (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
`
`
`
`10
`
`

`

`IPR2020-01393
`U.S. Patent No. 9,239,686
`
`
`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). In
`
`addition, Major describes a way to determine whether there is a hit or miss in
`
`cache and a replacement algorithm. EX1106, 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
`
`
`
`11
`
`

`

`
`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
`
`IPR2020-01393
`U.S. Patent No. 9,239,686
`
`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 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.
`
`For all these reasons, a POSITA would not have understood the “cache”
`
`limitations to have the constructions proposed by Petitioner. Petitioner’s
`
`constructions are improper.
`
`b. Allocating exclusively a first one of the storage spaces of a
`predefined capacity to a user of a first wireless device
`(independent claim 12 and dependent claim 20).
`
`These claim limitations in claims 12 and 20 require deciding or setting in
`
`advance by a storage 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 12 recites that the “capacity” “allocate[ed]
`
`
`
`12
`
`

`

`IPR2020-01393
`U.S. Patent No. 9,239,686
`
`
`exclusively … to a user of a first wireless device” is “predefined” (EX1101,
`
`7:24-26), meaning that it is decided or set in advance. Claim 12 also recites
`
`that the assigning of “a first one of the storage spaces of a predefined capacity”
`
`is done “by a server for delivering storage services.” Id. at 7:18-26.
`
`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. Therefore, a 4096 GB storage
`
`system on the server unit can support a total of 1024 the users.
`
`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 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 6-12), its obviousness analysis is based upon an
`
`improper understanding of this limitation’s meaning. Petitioner conflates
`
`predefining capacity (predefining an amount of storage) and allocating
`
`(reserving or assigning) storage. EX2001, ¶ 68. Moreover, “a POSITA would
`
`
`
`13
`
`

`

`
`have understood predefining capacity to mean defining (i.e., deciding or setting
`
`in advance) the amount of storage before the storage is allocated or assigned to
`
`IPR2020-01393
`U.S. Patent No. 9,239,686
`
`the user.” Id. at ¶ 54.
`
`
`
`V. THE PETITIONER FAILED TO DEMONSTRATE IT IS
`REASONABLY LIKELY TO PREVAIL ON ANY OF ITS
`PROPOSED OBVIOUSNESS GROUNDS.
`
`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, 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 Petitioner’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
`
`
`
`14
`
`

`

`
`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.,
`
`IPR2020-01393
`U.S. Patent No. 9,239,686
`
`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 a license showing industry
`
`respect for the claimed invention.
`
`
`
`A.
`
`Independent Claim 12 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 Jewett would not have taught