Petition for Inter Partes Review of
`U.S. Patent No. 10,289,607
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`BOX, INC., and DROPBOX, INC.,
`Petitioners
`
`
`v.
`
`
`TOPIA TECHNOLOGY, INC.,
`Patent Owner
`
`
`
`Case No. IPR2023-00429
`
`U.S. Patent No. 10,289,607
`
`
`
`
`
`
`
`Filing Date: June 25, 2018
`Issue Date: May 14, 2019
`
`Title: Architecture for Management of Digital Files Across Distributed Network
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 10,289,607
`
`
`
`

`

`Table of Contents
`
`
`Page
`
`
`
`I.
`
`Introduction ..................................................................................................... 1
`
`II. Mandatory Notices (§ 42.8(a)(1)) .................................................................. 1
`
`A.
`
`Real Parties-In-Interest (§ 42.8(b)(1)) .................................................. 1
`
`B.
`
`C.
`
`Related Matters (§ 42.8(b)(2)) ............................................................. 1
`
`Lead and Back-Up Counsel (§ 42.8(b)(3)) .......................................... 2
`
`D.
`
`Service Information (§ 42.8(b)(4)) ....................................................... 3
`
`III.
`
`Fee Payment (§ 42.103) .................................................................................. 4
`
`IV. Requirements Under §§ 42.104 and 42.108 and Considerations Under
`§§314(a)/325(d) .............................................................................................. 4
`
`A. Grounds for Standing ........................................................................... 4
`
`B.
`
`Identification of Challenge and Statement of Precise Relief
`Requested ............................................................................................. 4
`
`C.
`
`Considerations Under §§314(a)/325(d) ................................................ 5
`
`V. Overview of ’607 Patent ................................................................................. 5
`
`VI. Level of Ordinary Skill in the Art .................................................................. 5
`
`VII. Claim Construction ......................................................................................... 6
`
`VIII. The Challenged Claims are Unpatentable ...................................................... 6
`
`A.
`
`Earliest Effective Filing Date ............................................................... 6
`
`B.
`
`C.
`
`B.
`
`Overview of Grounds Including Prior Art Qualification ..................... 7
`
`Summary of Prior Art ........................................................................... 8
`
`Ground 1: Obviousness over Sigurdsson with Shappell and
`Rao. ..................................................................................................... 11
`
`i
`
`

`

`Table of Contents
`
`(continued)
`
`Page
`
`
`C.
`
`Ground 2: Obviousness over Brown with Hesselink, Shappell,
`and Rao. .............................................................................................. 45
`
`IX. Conclusion .................................................................................................... 69
`
`
`ii
`
`

`

`
`
`List of Exhibits
`
`Description of Document
`
`U.S. Patent No. 9,143,561 (“’561” or “’561 patent”)
`U.S. Patent No. 10,067,942 (“’942” or “’942 patent”)
`U.S. Patent No. 10,289,607 (“’607” or “’607 patent”)
`U.S. Patent No. 10,642,787 (“’787” or “’787 patent”)
`U.S. Patent No. 10,754,823 (“’823” or “’823 patent”)
`U.S. Patent No. 11,003,622 (“’622” or “’622 patent”)
`Prosecution History of the ’561 Patent
`Prosecution History of the ’942 Patent
`Prosecution History of the ’607 Patent
`Prosecution History of the ’787 Patent
`Prosecution History of the ’823 Patent
`Prosecution History of the ’622 Patent
`Case No. IPR2022-00782, Paper No. 1, Petition for IPR
`Case No. IPR2022-00782, Paper No. 17, Decision Granting
`Institution of IPR (Redacted – Public Version)
`U.S. Provisional Patent Application No. 60/986,896 (“’896
`provisional”)
`U.S. Patent Application Publication No. 2007/0174246 A1 to
`Johann Tomas Sigurdsson, et al. (“Sigurdsson”)
`File History of U.S. Patent Application Publication No.
`2007/0174246 A1 to Johann Tomas Sigurdsson, et al. (“Sigurdsson
`File History”)
`U.S. Patent No. 7,734,690 B2 to George P. Moromisato, et al.
`(“Moromisato”)
`U.S. Patent Application Publication No. 2006/0190506 A1 to
`Rajesh M. Rao, et al. (“Rao”)
`U.S. Patent Application Publication No. 2005/0091289 A1 to
`Michael Shappell, et al. (“Shappell”)
`1021 Microsoft Computer Dictionary (5th ed. 2002) (excerpts)
`Jim Boyce, Microsoft Outlook Version 2002 Inside Out (2001)
`1022
`(“Boyce”) (excerpts)
`European Patent Application Publication No. EP 1,621,990 A2 to
`Kitamaru, et al. (“Kitamaru”)
`U.S. Patent No. 5,923,325 to Ronald Jason Barber and Edwin
`Joseph Selker (“Barber”)
`U.S. Patent No. 7,035,847 B2 to David K. Brown, et al. (“Brown”)
`
`
`Exhibit
`No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1023
`
`1024
`
`1025
`
`iii
`
`

`

`
`
`
`Exhibit
`No.
`1026
`
`1027
`
`1028
`
`
`List of Exhibits
`
`Description of Document
`
`U.S. Patent Application Publication No. 2005/0120082 A1 to
`Lambertus Hesselink, et al. (“Hesselink”)
`Topia Technology, Inc. v. Box, Inc., Case No. 6:21-cv-1372-ADA,
`D.I. 60 (Joint Claim Construction Chart)
`Declaration of Dr. Ravin Balakrishnan
`
`iv
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 10,289,607
`
`I.
`
`INTRODUCTION
`
`Petitioners Box, Inc., and Dropbox, Inc., respectfully petition for Inter Partes
`
`Review (“IPR”) of claims 1, 3-5, 7, 12, 14, 17, 19, and 20 (“Challenged Claims”) of
`
`U.S. Patent No. 10,289,607 (“’607”).
`
`II. MANDATORY NOTICES (§ 42.8(a)(1))
`
`A. Real Parties-In-Interest (§ 42.8(b)(1))
`
`Petitioners Box, Inc. (“Box”), and Dropbox, Inc. (“Dropbox”), are the real
`
`parties-in-interest to this IPR petition. The other defendants in the pending
`
`litigations, Vistra Corp., SailPoint Technologies Holdings, Inc., Clear Channel
`
`Outdoor Holdings, Inc., and Egnyte, Inc. are not real-parties-in-interest and have had
`
`no involvement with this proceeding but are identified here in the interest of over-
`
`inclusion.
`
`B. Related Matters (§ 42.8(b)(2))
`
`The ’607 is the subject of pending litigation involving Petitioners and Patent
`
`Owner Topia Technology, Inc. (“PO”) (Topia Technology, Inc. v. Box, Inc., No.
`
`6:21-cv-01372-ADA (W.D. Tex.), Topia Technology, Inc. v. Dropbox, Inc., No.
`
`6:21-cv-01373-ADA (W.D. Tex.)) and involving an unrelated defendant (Topia
`
`Technology, Inc. v. Egnyte, Inc., No. 1:21-cv-01821 (D. Del.)).
`
`Petitioners are also filing IPR petitions challenging the asserted claims of five
`
`related patents PO also asserts against Petitioners in litigation: U.S. Patent Nos.
`
`9,143,561; 10,067,942; 10,642,787; 10,754,823; and 11,003,622 (“Related
`
`
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 10,289,607
`
`Patents”). All of the patents purport to claim priority to the same provisional and
`
`non-provisional applications, and all share substantially similar specifications
`
`including substantially the same Detailed Description section.
`
`An IPR petition filed by Unified Patents, LLC against certain claims of U.S.
`
`Patent No. 10,067,942 was instituted on November 17, 2022. IPR2022-00782,
`
`Decision Granting Institution, Paper 17 (EX1014, “Unified ID”). None of the
`
`references presented in that proceeding are the same as, or related to, any of the
`
`references presented in this Petition.
`
`PO’s complaints asserting infringement of the ’607 were served on Box and
`
`Dropbox on January 5, 2022. This Petition is timely filed.
`
`C. Lead and Back-Up Counsel (§ 42.8(b)(3))
`
`Petitioners provide the following designation of counsel.
`
`LEAD COUNSEL
`
`BACK-UP COUNSEL
`
`Heidi L. Keefe (Reg. No. 40,673)
`hkeefe@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW
`Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`
`Reuben H. Chen (Admission pro hac vice
`to be requested)
`rchen@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, D.C. 20004
`Tel: (202) 728-7070
`Fax: (202) 842-7899
`Lowell D. Mead (Admission pro hac vice
`to be requested)
`lmead@cooley.com
`COOLEY LLP
`
`2
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 10,289,607
`
`LEAD COUNSEL
`
`BACK-UP COUNSEL
`
`
`
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, D.C. 20004
`Tel: (202) 728-7070
`Fax: (202) 842-7899
`Samuel K. Whitt (Reg. No. 65,144)
`swhitt@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, D.C. 20004
`Tel: (202) 728-7070
`Fax: (202) 842-7899
`
`
`D.
`
`Service Information (§ 42.8(b)(4))
`
`This Petition is being served by Federal Express to the attorneys of record for
`
`the ’607, John Bird and Andrew Taska of Sughrue Mion, PLLC, 2000 Pennsylvania
`
`Ave., N.W., Suite 9000, Washington, D.C. 20006. A courtesy copy of this Petition
`
`is also being served via Federal Express on PO’s counsel of record in the district
`
`court cases, Topia Technology, Inc. v. Box, Inc., Case No. 6:21-cv-01372-ADA
`
`(W.D. Tex.), and Topia Technology, Inc. v. Dropbox, Inc., Case No. 6:21-cv-01373-
`
`ADA (W.D. Tex.).
`
`Petitioners consent to electronic service at the email addresses provided above
`
`for lead and back-up counsel.
`
`3
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 10,289,607
`
`III. FEE PAYMENT (§ 42.103)
`
`Petitioners request review of 10 claims. Payment of $41,500 is submitted
`
`herewith.
`
`IV. REQUIREMENTS UNDER §§ 42.104 AND 42.108 AND CONSIDERATIONS
`UNDER §§314(a)/325(d)
`
`A. Grounds for Standing
`
`Petitioners certify that the ’607 is available for IPR and that Petitioners are
`
`not barred or otherwise estopped.
`
`B.
`
`Identification of Challenge and Statement of Precise Relief
`Requested
`
`Petitioners request IPR institution based on the following Grounds:
`
`Ground Claims
`1
`1, 3-5, 7, 12, 14,
`17, 19, and 20
`1, 3-5, 7, 12, 14,
`17, 19, and 20
`
`2
`
`Basis for Challenge
`Obvious by Sigurdsson in view of Shappell and
`Rao
`Obvious by Brown in view of Hesselink, Shappell,
`and Rao
`
`
`
`Submitted with this Petition is the Declaration of Dr. Ravin Balakrishnan, a
`
`qualified technical expert (“Balakrishnan”).1 (Balakrishnan, ¶¶1-12.)
`
`
`1 Given the significant overlap in claimed subject matters, Dr. Balakrishnan’s
`
`Declaration additionally addresses the Related Patents. This Petition cites only the
`
`portions relevant here.
`
`4
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 10,289,607
`
`C. Considerations Under §§314(a)/325(d)
`
`§314(a): The Fintiv factors do not support denial. The pending litigation is in
`
`early stages. No claim construction rulings or significant discovery have occurred.
`
`The court recently granted Petitioners’ motions to transfer venue, and no case
`
`schedule has been entered in the transferee court. Petitioners also intend to move to
`
`stay pending any instituted IPR.
`
`Petitioners will not pursue invalidity in litigation based on any instituted
`
`ground raised herein.
`
`§325(d): The presented references were not cited during prosecution and are
`
`not cumulative of cited references. (Balakrishnan, ¶¶51, 54.)
`
`V. OVERVIEW OF ’607 PATENT
`
`A. Claim Listing
`
`Appendix A lists the Challenged Claims.
`
`B.
`
`Specification
`
`The ’607 generally relates to file transfer and synchronization between a
`
`user’s multiple devices. (E.g., ’607, 1:20-22, 3:53-67, 8:29-37.) Cf. Unified ID at
`
`7-9 (summarizing specification).
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`
`As discussed below, the claims’ earliest effective filing date is November 10,
`
`2008. A person of ordinary skill in the art (“POSA”) would have possessed a
`
`5
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 10,289,607
`
`bachelor’s degree in computer science (or similar degree), and two years of work
`
`experience developing software, including at least some experience with storage,
`
`synchronization, and human-computer interaction technologies. (Balakrishnan,
`
`¶¶15-21.) A person could also have qualified with more formal education and less
`
`technical experience, or vice versa. (Balakrishnan, ¶¶17, 21.)
`
`VII. CLAIM CONSTRUCTION
`
`Petitioners do not believe express claim construction is presently necessary.
`
`In the pending litigation, PO proposes that no terms need construction; Petitioners
`
`propose a construction for transferring a file “responsive to” a user modifying the
`
`file that is satisfied by the grounds herein. (EX1027.)
`
`VIII. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`
`A. Earliest Effective Filing Date
`
`The ’607 claims priority to 11/9/2007 Provisional Application No. 60/986,896
`
`(EX1015) and a 11/10/2008 non-provisional. Patent claims are not presumptively
`
`entitled to the benefit of a provisional application filing date; PO bears the burden
`
`of proving priority. Dynamic Drinkware v. Nat’l Graphics, 800 F.3d 1375, 1380-81
`
`(Fed. Cir. 2015); PowerOasis v. T-Mobile USA, 522 F.3d 1299, 1305-06 (Fed. Cir.
`
`2008). PO must demonstrate that the provisional “convey[s] with reasonable clarity
`
`to those skilled in the art that, as of the filing date sought, the inventor was in
`
`possession of the invention.” PowerOasis, 522 F.3d at 1306; see also D Three
`
`6
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 10,289,607
`
`Enterprises v. SunModo, 890 F.3d 1042, 1047 (Fed. Cir. 2018) (priority requires
`
`“disclosure”). As Dr. Balakrishnan explains, the provisional fails to disclose
`
`limitations [1b]-[1d], [1f]-[1g], [12a]-[12c], [12e]-[12f], [17b]-[17d], [17f]-[17g],
`
`[19a]-[19c], and [19e]-[19f],2 so the claims’ effective priority is no earlier than
`
`11/10/2008. (Balakrishnan, ¶¶65, 82-91.) Petitioners reserve the right to respond
`
`if PO attempts to demonstrate disclosure in the provisional.
`
`B. Overview of Grounds Including Prior Art Qualification
`
`Each reference qualifies as prior art under 35 U.S.C. §102:
`
`Reference
`
`Filed
`
`Published/Issued
`
`§102 (pre-AIA)
`
`Sigurdsson
`
`1/25/2006
`
`7/26/2007
`
`§102(a)/(b)/(e)
`
`Rao
`
`2/22/2005
`
`8/24/2006
`
`§102(a)/(b)/(e)
`
`Shappell
`
`10/24/2003
`
`4/28/2005
`
`§102(a)/(b)/(e)
`
`Brown
`
`3/15/2002
`
`12/19/2002
`
`§102(a)/(b)/(e)
`
`Hesselink
`
`11/13/2004
`
`6/2/2005
`
`§102(a)/(b)/(e)
`
`
`
`Ground 1 relies primarily on Sigurdsson, which discloses the claims’ core
`
`synchronization features, as the Examiner found in a related patent prosecution
`
`(EX1012 at 118-140), in combination with Shappell and Rao.
`
`
`2 See Appendix A for bracketed labels.
`
`7
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 10,289,607
`
`In litigation, PO has claimed a priority date would allegedly pre-date
`
`Sigurdsson. Although PO’s claim is not substantiated by corroborating evidence
`
`(and PO did not attempt to swear behind Sigurdsson during prosecution), Petitioners
`
`present a second ground qualifying entirely under §102(b) even assuming the
`
`11/9/2007 provisional date. Ground 2 relies on Brown with Hesselink, disclosing
`
`the core synchronization features, and Shappell and Rao.
`
`C.
`
`Summary of Prior Art
`
`1.
`
`Sigurdsson
`
`Sigurdsson is strikingly similar to the challenged patents, discussing
`
`substantially similar needs and proposed solutions. (Sigurdsson, ¶¶2-14.)
`
`Sigurdsson describes synchronizing files across a user’s multiple client devices.
`
`(Sigurdsson, ¶¶26-27.) Figure 4 shows the relevant system:
`
`8
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 10,289,607
`
`
`
`Clients A, B, and C may be associated with the same user and exchange new and
`
`modified files, and associated metadata, with server 106. (Sigurdsson, ¶¶27, 54, 58,
`
`69, 72, 84, 112-13, 51.)
`
`2.
`
`Rao
`
`Rao teaches client/synchronization in two phases: first metadata, and then raw
`
`file data. (Rao, ¶63.) Rao explains that transmitting metadata first enables useful
`
`functionality at the client, whereas the raw data “may be extraordinarily large” and
`
`“may require a long time to transfer.” (Id., ¶¶43-44, 46, 48.)
`
`3.
`
`Shappell
`
`Shappell teaches “shared spaces” for sharing and synchronizing files.
`
`9
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 10,289,607
`
`(Shappell, ¶76.) When a file is modified, metadata is transmitted that facilitates
`
`user-interface display regarding file availability. (Id., ¶¶76, 78-79.) Shappell also
`
`discloses an “automatic replication” option that, when enabled, automatically
`
`replaces old versions of files with updated versions. (Id., ¶81.)
`
`4.
`
`Brown
`
`Brown discloses a client/server system where a user’s client devices (e.g.,
`
`desktop 130 and laptop 135) synchronize through a server (105). The “[c]lient
`
`machines synchronize with each other by synchronizing to a common server
`
`account.” (Brown, 2:65-67.)
`
`
`
`
`
`10
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 10,289,607
`
`(Id., Fig. 1.) “From the user’s perspective, the synchronization process is automatic,
`
`runs in the background and requires minimal monitoring or intervention.” (Id., 3:40-
`
`42.) Synchronization includes two main steps: first, metadata is exchanged between
`
`clients and the server, and second, new or recently updated files are exchanged. (Id.,
`
`5:4-24.)
`
`5. Hesselink
`
`Like Brown, Hesselink discloses synchronization among a user’s multiple
`
`computers. (Hesselink, ¶210.) The system ensures “a completely up to date master
`
`copy of each shared data file” on each user device. (Id., ¶192.) Modified files are
`
`automatically synchronized “as soon as the update has been performed” at one
`
`device, so all connected devices “may be automatically updated concurrently.” (Id.,
`
`¶¶183, 189, 197.) Hesselink’s system “automatically and repeatedly” checks
`
`whether synchronizing devices are
`
`in communication prior
`
`to
`
`initiating
`
`synchronization. (Id., ¶¶182, 189-190.)
`
`B. Ground 1: Obviousness over Sigurdsson with Shappell and Rao.
`
`1.
`
`Claim 1.
`
`(a)
`
`[1pre]
`
` Sigurdsson discloses a “system” comprising clients A-C (102, 104, 406) and
`
`server 106 as shown in Figure 4:
`
`11
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 10,289,607
`
`
`
`(Sigurdsson, Fig. 4, ¶¶45-51; Balakrishnan, ¶¶146-149.)
`
`(b)
`
`[1a]
`
` Server 106 comprises a “server system comprising one or more
`
`processors programmed with computer program instructions that, when
`
`executed, cause the server system to” perform operations. (Balakrishnan, ¶¶150-
`
`152.) Server 106 may include “System 900,” including “Processor 910”
`
`programmed with executable program instructions. (Sigurdsson, ¶¶104-105, 109
`
`(System 900 “implemented in a computer program …, for execution by a
`
`programmable processor”); Balakrishnan, ¶151.)
`
`12
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 10,289,607
`
`(c)
`
`[1b]
`
`Server 106 “receive[s], over a network, a copy of a first file from a first
`
`client device associated with a user,” such as “Client A” (“first client device”).
`
`(Sigurdsson, ¶¶8, 27-29, 52, 55, 58, 84, 51 (Figure 4 clients can share content using
`
`method 200 of Figure 2 implementing Figure 1 client/server system); Balakrishnan,
`
`¶¶153-159.) Each client device is “associated with a user,” such as the user’s
`
`“home computer” (Client A), “work computer” (Client B), and mobile device (Client
`
`C). (Sigurdsson, ¶¶27-29, 55, 51, Figs. 1-2, 4; Balakrishnan, ¶159.)
`
`Sigurdsson’s client devices send content including “file[s]” to Server 106
`
`“over a network.” (Sigurdsson, ¶¶8, 28 (content may be “file”), 69, 112-13, 51,
`
`Fig. 4; Balakrishnan, ¶¶153-154.) For example, “Client A Content” such as a
`
`“maintenance manual” (exemplary “first file”) is stored on Client A (“stored on the
`
`first client device”). (Sigurdsson, ¶58; Balakrishnan, ¶159.)
`
`Server 106 “automatically receives” a “copy of the first file from the first
`
`client device responsive to the user modifying a content of the first file.”
`
`(Sigurdsson, ¶¶26-28 (when user saves modifications to file, “Client A Content 108,
`
`which can include a copy of the user’s file, is sent automatically to the
`
`Server 106.”), 52 (“edit and save”), 84 (“Client A 102 posts Client A Content 108 to
`
`the Server 106 when content is changed on the Client A 102” and “posting can
`
`occur as soon as an event is generated by an action, such as saving a file”);
`
`13
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 10,289,607
`
`Balakrishnan, ¶¶156-157.) The “copy of the first file [is] an updated version of
`
`the first file that is generated from the user modifying a content of the first file.”
`
`(Sigurdsson, ¶¶26-28, 58 (exemplary “maintenance manual” and “update[d]” “office
`
`memo” synchronized via Server 106), 84; Balakrishnan, ¶¶157, 159.) A POSA
`
`would have understood that performing a file-save operation on an edited file would
`
`result in modifying a content of a stored file (i.e., “modifying a content of the first
`
`file stored on the first client device”). (Balakrishnan, ¶¶156-158; EX1021 at 220,
`
`463.)
`
`Although Figure 4 of Sigurdsson depicts both client/server and peer-to-peer
`
`connections, a POSA would have appreciated Sigurdsson’s teachings of the obvious
`
`advantages of a client/server arrangement. (Balakrishnan, ¶¶154-155.) The server
`
`can stay online while user computers periodically go offline, so that Server 106
`
`beneficially provides a “drop-box” for “a user’s files” to “facilitate sharing this
`
`information between the user’s computers by storing the shared content if the
`
`target computer is offline.” (Sigurdsson, ¶¶27-29, 61 (server tracks clients’
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`online/offline status); Balakrishnan, ¶155.) A server may also have more available
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`bandwidth relative to clients for transferring data. (Sigurdsson, ¶79.) Sigurdsson
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`makes clear the peer-to-peer and client/server pathways between the user’s multiple
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`client devices are interchangeable, rendering obvious synchronization through the
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`server. (Id., ¶51 (“Although FIG. 4 does not show explicit arrows between the Client
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`C 406 and the Server 106,” Client C can “communicate with the Server 106 in a
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`manner similar to the method used by the Clients A or B,” including method 200 of
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`Figures 1-2); Balakrishnan, ¶155.) For example, each client may include an
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`“HTTPS Client/server” that may interchangeably be used for synchronization with
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`Server 106 (Sigurdsson, ¶54) or with other clients (id., ¶47). (Balakrishnan, ¶155.)
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`Even when clients can communicate peer-to-peer, they can still also use Server 106
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`for content sharing. (Sigurdsson, ¶¶51, 79 (“Server 106 can still serve as a drop-
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`box for temporarily (or permanently) storing Client X Content 410 originating
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`from any
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`the Clients 102, 104 or 406.”); Power Integrations v. Fairchild
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`Semiconductor, 843 F.3d 1315, 1337 (Fed. Cir. 2016) (prior art “that sometimes, but
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`not always, embodies a claimed method nonetheless teaches that aspect of the
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`invention.”); Balakrishnan, ¶155.)
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`(d)
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`[1c]
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`Sigurdsson with Shappell and Rao renders obvious claim [1c]. (Balakrishnan,
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`¶¶160-194.) Sigurdsson discloses first metadata associated with the first file
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`generated from the user modifying the content of the first file. When the user
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`(e.g., at Client A) modifies a file (e.g., a resume), “[m]etadata describing the content,
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`such as the time the resume was saved, can also be transmitted to the Server 106”
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`along with the file. (Sigurdsson, ¶¶32-34, 5 (“The method also includes
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`automatically extracting content from the first file in response to the event using the
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`first client and generating metadata to associate with the content[.]”), 65
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`(“metadata that describes . . . when the data was last changed”), 72-73 (“list of the
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`content that was generated” while Client C was offline, such as “metadata describing
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`the file and the time it was accessed”);3 Balakrishnan, ¶163.)
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`Server 106 then receives over a network, from the first client device (e.g.,
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`Client A), that first metadata, along with the updated first file (per claim 1[b]).
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`(Sigurdsson, ¶¶6 (“transmitting the content and the metadata to the server.”), 35
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`(“Server 106 updates database tables with the Client A Content 108 and any
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`3 Although this exemplary metadata is disclosed in the context of a “peer-to-peer
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`content flow” (Sigurdsson, ¶65), it would have been obvious to incorporate such
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`metadata into Sigurdsson’s client-server flow, such as the paragraphs 72-73 example
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`where Client A transfers metadata associated with a large file (e.g., maintenance
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`manual) to the server. Boston Sci. Scimed v. Cordis, 554 F.3d 982, 991 (Fed. Cir.
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`2009) (“Combining two embodiments disclosed adjacent to each other in a prior art
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`patent does not require a leap of inventiveness.”); Sigurdsson, ¶¶51, 65, 72;
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`Balakrishnan, ¶163 n.10. For example, a POSA would have been motivated to
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`include metadata about when a large maintenance manual (“first file”) was last
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`modified so that users know if they have the most up-to-date maintenance
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`instructions. (Balakrishnan, ¶163 n.10.)
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`corresponding metadata describing the Content 108 it received from the Client
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`A 102.”); 54 (“In step 506, the content originating on the client is posted to the
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`server. The content can include a copy of the document . . . that was saved by the
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`user as well as metadata that describes information, such as the type of data, its
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`source, when it was saved, and when it was posted to the server”), 72-73 (list
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`containing generated metadata “transmitted to the Server”); Balakrishnan, ¶164.)
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`Claim [1c] further recites “the first metadata being assigned a priority that
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`is greater than a second priority assigned to the copy of the first file,” and claims
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`[1f] and 3 recite further “priority”-related limitations. (Balakrishnan, ¶165.) For
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`convenience, the Petition addresses these interrelated “priority”-related limitations
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`together.
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`For context, the ’607 specification states only: “An embodiment’s directory
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`update system updates at a higher priority than the documents to be synchronized.”
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`(’607, 9:9-10; EX1015 at 17; Balakrishnan, ¶166.) No affirmative assignment of
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`priority values is described. Nor does the specification explain which component, if
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`any, controls the “higher priority.” Claim [1c] also does not recite that “the first
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`metadata being assigned a first priority” must be assigned its priority prior to the
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`server system receiving that “first metadata.” On the contrary, per claim 3, the server
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`may be the only entity that assigns “the” first priority to the first metadata, which
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`could naturally occur after the server receives that metadata. (See claim 3;
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`Balakrishnan, ¶166.) Nevertheless, to the extent [1c] requires assigning the “first
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`priority” to the first metadata before the server receives that metadata, the prior art
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`discloses and renders that obvious, as discussed below. (Id.)
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`Under any reasonable interpretation consistent with the specification,
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`Sigurdsson in view of Shappell and Rao disclose and render obvious claims [1c],
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`[1f], and 3 together providing the server system to automatically transfer the first
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`metadata (received from the first client device) over a network to a second client
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`device prior to transferring the first file, based on a first, greater priority
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`assigned to metadata by a priority assignment configuration on the first client
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`device or server system that assigns a first, greater priority to metadata and a
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`second, lower priority to files. (Balakrishnan, ¶¶167-194.)
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`Under a first interpretation, if these limitations are interpreted to encompass a
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`server system configured to receive metadata from a first device, and then
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`automatically (not user-manually) transfer that metadata to a second client device
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`before transmitting associated files, Sigurdsson discloses and renders them obvious
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`(in addition to rendering them obvious with Shappell and Rao). (Id., ¶168.)
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`Sigurdsson discloses and renders obvious that Server 106 receives from the
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`first client device a file’s generated metadata before receiving the file, and then the
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`server automatically transfers that metadata to a second client device before
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`transmitting the file. (Id., ¶169.) A “priority algorithm” (discussed below),
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`Petition for Inter Partes Review of
`U.S. Patent No. 10,289,607
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`optionally implemented on the clients and/or Server 106, prioritizes the order in
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`which files are transferred. (Sigurdsson, ¶¶58-60, 72; Balakrishnan, ¶170.) Higher-
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`priority (e.g., smaller and/or newer) files may be transferred before lower-priority
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`(e.g., larger and/or older) files. (See id.) As a result of the priority algorithm, Server
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`106 can first receive from the first client device the metadata associated with a low-
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`priority file that Server 106 has not received: “The content of this file may not be
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`transmitted to the Server 106 because of the execution of a priority algorithm (as
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`discussed earlier). Instead, metadata describing the file and the time it was
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`accessed may be transmitted to the Server 106.” (Sigurdsson, ¶72; Balakrishnan,
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`¶170.) And although it does not appear to be a requirement of the claim, this
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`“metadata describing the file and the time it was accessed” obviously includes
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`metadata generated from the user modifying the file content (which would change
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`the file’s description and last-accessed time), matching the “metadata describing the
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`content, such as the time the [file] was saved” generated when a user modifies a file.
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`(Sigurdsson, ¶34; Balakrishnan, ¶170.)
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`That metadata received by Server 106 is then transmitted by Server 106 to a
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`second client device before Server 106 transfers the associated file. (Balakrishnan,
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`¶172.) Specifically, that received “metadata describing the file and the time it was
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`accessed . . . may be included in a list tracking content that was generated” during
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`a period of time when another client (e.g., Client C) was offline. (Sigurdsson, ¶¶69-
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`73; Balakrishnan, ¶172.) Once that client (e.g., Client C) comes back online, it
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`requests and receives from Server 106 that “list of missing content” including the
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`metadata. (Sigurdsson, Fig. 6 (steps 612, 614, 616), ¶¶69-73; Balakrishnan, ¶172.)
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`That client uses the list to obtain the missing files, which Server 106 may transfer.
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`(Sigurdsson, ¶¶74, 79-80, 96; Balakrishnan, ¶172.)
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`Accordingly, the client device’s request for a list of missing content
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`configures Server 106 to prioritize transmitting the first metadata received from
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`the first client device to the second client device before transmitting the file.
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`(Id., ¶173.)
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`Under a second interpretation, if the priority-related limitations of claims [1c],
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`[1f], and 3 are interpreted to require affirmative, categorical assignment of
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`greater/lesser priorities to metadata and files, they are additionally rendered obvious
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`by Sigurdsson with Shappell, which teaches prioritizing transfer of metadata for a
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`modified file before transferring the file itself, and Rao, which teaches categorical
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`assignment of first and second “phases” to transfer metadata before files between
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`clients and server. (Id., ¶174.)
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`As noted, Sigurdsson’s overall “system 400” (including Server 106 and/or
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`client devices) optionally assigns “priority” to items using a “priority algorithm,” to
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`address the concern that limited available network bandwidth may cause “content
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`sharing [to] fall behind demand.” (Sigurdsson, ¶58; Balakrishnan, ¶175.) For
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`U.S. Patent No. 10,289,607
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`example, “[a]lthough the Server 106 can receive content for all three data items in
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`the order that the user accessed them, the Server 106 can also deal with the data
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`items by assigning it priorities. The Server 106 can handle the higher priority data
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`items first, and save the lower priority data items for later.” (Id., ¶¶58-59 (each
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`client may also use the priority algorithm; priority scores may be based on attributes
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`such as “size, type or age”); Balakrishnan, ¶175.)
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`Sigurdsson in view of Shappell and Rao renders obvious a predictable
`
`variation where t