Petition for Inter Partes Review of
`U.S. Patent No. 11,003,622
`
`
`
`
`
`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. IPR2023-00430
`
`U.S. Patent No. 11,003,622
`
`
`
`
`
`
`
`Filing Date: March 22, 2019
`Issue Date: May 11, 2021
`
`Title: Architecture for Management of Digital Files Across Distributed Network
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 11,003,622
`
`
`
`

`

`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 ’622 Patent ................................................................................. 7
`
`VI. Level of Ordinary Skill in the Art .................................................................. 7
`
`VII. Claim Construction ......................................................................................... 8
`
`VIII. The Challenged Claims are Unpatentable ...................................................... 8
`
`A.
`
`Earliest Effective Filing Date ............................................................... 8
`
`B.
`
`C.
`
`B.
`
`Overview of Grounds Including Prior Art Qualification ..................... 9
`
`Summary of Prior Art ......................................................................... 10
`
`Ground 1: Obviousness over Sigurdsson with Shappell and
`Rao. ..................................................................................................... 14
`
`i
`
`

`

`Table of Contents
`
`(continued)
`
`Page
`
`
`C.
`
`Ground 2: Obviousness over Brown with Hesselink, Shappell,
`and Rao. .............................................................................................. 47
`
`IX. Conclusion .................................................................................................... 68
`
`
`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. 11,003,622
`
`I.
`
`INTRODUCTION
`
`Petitioners Box, Inc., and Dropbox, Inc., respectfully petition for Inter Partes
`
`Review (“IPR”) of claims 1, 3-5, 7, 11, 12, 14, 16, and 17 (“Challenged Claims”) of
`
`U.S. Patent No. 11,003,622 (“’622”).
`
`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. Petitioners’ co-defendants in the pending
`
`litigation, Vistra Corp., SailPoint Technologies Holdings, Inc., and Clear Channel
`
`Outdoor Holdings, 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 ’622 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 10,289,607 (“Related
`
`Patents”). All of the patents purport to claim priority to the same provisional and
`
`
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 11,003,622
`
`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 ’622 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
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`
`2
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 11,003,622
`
`LEAD COUNSEL
`
`BACK-UP COUNSEL
`
`
`
`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 ’622, 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. 11,003,622
`
`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 ’622 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, 11, 12,
`14, 16, and 17
`1, 3-5, 7, 11, 12,
`14, 16, and 17
`
`2
`
`Basis for Challenge
`Obvious by Sigurdsson in view of Shappell and
`Rao
`Obvious by Brown in view of Hesselink, Shappell,
`and Rao
`
`
`
`Submitted herewith 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. 11,003,622
`
`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): Aside from Sigurdsson, the presented references were not cited
`
`during prosecution and are not cumulative of cited references. None of the asserted
`
`obviousness combinations is cumulative of any obviousness combination considered
`
`during prosecution. (Balakrishnan, ¶¶51, 57-58.)
`
`The citation of Sigurdsson during prosecution does not present any basis to
`
`deny institution on discretionary grounds. During the original ’622 prosecution, the
`
`examiner relied primarily upon Sigurdsson to reject PO’s originally proposed
`
`claims. (EX1012, 118-140.) In response, PO did not identify any error in the
`
`examiner’s findings, and instead added metadata-priority limitations to the
`
`independent claims to overcome the rejections. (EX1012, 101-109.) With this
`
`amendment, PO incorrectly asserted that Sigurdsson “simply describe[s] the use of
`
`priorities between documents or other data items” and cited only Sigurdsson
`
`5
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 11,003,622
`
`paragraph 59 which discusses a “priority algorithm” that assigns priorities to data
`
`items. (EX1012, 108-109.) The examiner then allowed the claims, finding “[i]n
`
`view of applicant’s amendment, remarks” that Sigurdsson did not disclose the
`
`added limitation of “automatically transfer, based on the first priority being greater
`
`than the second priority, the first metadata to the second client device such that the
`
`first metadata is transferred to the second client device prior to the copy of the first
`
`file being transferred to the second client device.” (EX1015, 60.)
`
`As an initial matter, it appears that PO’s characterization of Sigurdsson caused
`
`the examiner to not fully appreciate Sigurdsson’s relevant teachings. As detailed
`
`below regarding element [1c], Sigurdsson describes its server system automatically
`
`transferring metadata to a second client device prior to transferring an associated
`
`modified file to that device. For example, Sigurdsson’s server can be configured to
`
`automatically transfer metadata associated with a modified file (within a list of
`
`“missing content”) to a second client device that was offline when the file was
`
`modified, prior to transferring the modified file to that device. (Sigurdsson, ¶¶69-
`
`73.) Neither PO nor the examiner cited these relevant passages during prosecution.
`
`Furthermore, as detailed below regarding element [1d], newly presented
`
`references that were not cited or discussed by PO or the examiner during
`
`prosecution, namely Shappell and Rao, both teach the added limitations and
`
`motivate an obvious modification of Sigurdsson’s system. (Balakrishnan, ¶¶160-
`
`6
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 11,003,622
`
`194.) A person of ordinary skill in the art (“POSA”) would have viewed Shappell
`
`and Rao as substantially different from, and non-cumulative of, the references cited
`
`during prosecution, expressly teaching and motivating transferring metadata with
`
`relatively higher priority than associated files. (Balakrishnan, ¶¶58.)
`
`Finally, Ground 2 does not rely upon Sigurdsson and presents entirely new
`
`art that was not cited during prosecution and is not cumulative. (Balakrishnan,
`
`¶¶612-645.)
`
`V. OVERVIEW OF ’622 PATENT
`
`A. Claim Listing
`
`Appendix A lists the Challenged Claims.
`
`B.
`
`Specification
`
`The ’622 relates to file transfer and synchronization between a user’s multiple
`
`electronic devices, including “automatic modification-triggered transfer of a file
`
`among two or more computer systems associated with a user.” (’622, Abstract, 1:22-
`
`24, 3:55-4:2, 8:32-40.) 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 POSA would have possessed a 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
`
`7
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 11,003,622
`
`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 of 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 ’622 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 (emphasis omitted);
`
`see also D Three Enters. v. SunModo, 890 F.3d 1042, 1047 (Fed. Cir. 2018) (priority
`
`requires “disclosure”). As Dr. Balakrishnan explains, the provisional fails to
`
`8
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 11,003,622
`disclose limitations [1b], [1d]-[1f], [11a]-[11d], [16a], and [16c]-[16e],2 so the
`
`claims’ effective priority is no earlier than 11/10/2008. (Balakrishnan, ¶¶65, 92-
`
`102.) 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
`
`file synchronization features, as the Examiner found during prosecution (and PO did
`
`not substantively dispute), with Shappell and Rao that further render obvious the
`
`limitations relating to metadata and priority assignments.
`
`In litigation, PO has claimed a priority date would allegedly pre-date
`
`
`2 See Appendix A for bracketed labels.
`
`9
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 11,003,622
`
`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, describing
`
`synchronizing files across a user’s multiple client devices. (Sigurdsson, ¶¶2-14, 26-
`
`27.) Figure 4 shows the relevant system:
`
`
`
`10
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 11,003,622
`
`Clients A, B, and C may be associated with the same user and communicate with a
`
`server “through a network,” such as the Internet, to transfer new and modified files
`
`to the server. (Sigurdsson, ¶¶58, 69, 84, 112-113, 51 (“Although FIG. 4 does not
`
`show explicit arrows between the Client C 406 and the Server 106,” Client C can
`
`“communicate with the Server 106 in a manner similar to the method used by the
`
`Clients A or B,” including method 200 of Figures 1-2).) “Server 106” in Figure 4
`
`“can provide a temporary storage location, or ‘drop box’, for a user’s files,
`
`documents, web pages, or the contents of these documents.” (Sigurdsson, ¶27.)
`
`Content sent from clients to Server 106 may include copies of files and metadata.
`
`(Sigurdsson, ¶54.) Using a “priority algorithm,” different items may be prioritized
`
`differently for synchronization, based on factors such as “size, type, or age.”
`
`(Sigurdsson, ¶58.) As a result, metadata may be sent to Server 106 prior to
`
`associated files, such as when the files are large. (Sigurdsson, ¶72.) Server 106 can
`
`also send a list of “missing” content, including the metadata, to a client that was
`
`offline when the missing content was created or modified. (Sigurdsson, ¶73.)
`
`2.
`
`Rao
`
`Rao teaches synchronizing files between a client and a server in two phases:
`
`first synchronizing metadata associated with files and then synchronizing the raw
`
`file data. (Rao, ¶63.) Rao explains that transmitting metadata first, before raw data,
`
`is useful because it may enable certain functionality before the raw data is present,
`
`11
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 11,003,622
`
`and the “raw data may be extraordinarily large” and “may require a long time to
`
`transfer….” (Rao, ¶¶43-44, 46, 48.) For example, metadata may be used to display
`
`information about a file that is available on the server not on the client. (Rao, ¶43.)
`
`3.
`
`Shappell
`
`Shappell teaches “shared spaces” where files are shared and synchronized
`
`among group members. (Shappell, ¶76.) Shappell discloses that a group member
`
`computer may transmit file metadata first, when a file is modified, to facilitate user-
`
`interface display regarding the availability of the files before the files are
`
`transmitted. (Shappell, ¶¶78, 79, 76.) Shappell also discloses an “automatic
`
`replication” option that, when enabled, causes automatic replacement of old versions
`
`of shared files with new versions when the files are modified. (Shappell, ¶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). (Brown, 2:65-67
`
`(“Client machines synchronize with each other by synchronizing to a common server
`
`account.”).)
`
`12
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 11,003,622
`
`
`
`
`
`(Brown, Fig. 1.) “From the user’s perspective, the synchronization process is
`
`automatic, runs in the background and requires minimal monitoring or intervention.”
`
`(Brown, 3:40-42.) Brown’s synchronization process includes two main steps: first,
`
`metadata is exchanged between clients and the server, and second, new or recently
`
`updated files are exchanged. (Brown, 5:4-24.)
`
`5. Hesselink
`
`Like Brown, Hesselink discloses a synchronization system involving multiple
`
`user computers, such as home, work, and laptop computers. (Hesselink, ¶210.) The
`
`system allows a user to be “ensured of having a completely up to date master copy
`
`13
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 11,003,622
`
`of each shared data file” on each user device. (Hesselink, ¶192.) Hesselink teaches
`
`automatically synchronizing a file “as soon as the update has been performed” at one
`
`device, so all connected devices “may be automatically updated concurrently.”
`
`(Hesselink, ¶¶183, 189, 197.) Hesselink’s system “automatically and repeatedly”
`
`checks whether synchronizing devices are in communication prior to initiating
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`synchronization. (Hesselink, ¶¶182, 189.)
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`B. Ground 1: Obviousness over Sigurdsson with Shappell and Rao.
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`1.
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`Claim 1.
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`(a)
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`[1pre]
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` Sigurdsson discloses a “system” comprising clients A-C and server 106 as
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`shown in Figure 4:
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`(Sigurdsson, Fig. 4, ¶¶45-51; Balakrishnan, ¶¶146-149.)
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`(b)
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`[1a]
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`Server 106 comprises a “server system comprising one or more processors
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`programmed with computer program instructions that, when executed, cause
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`the server system to” perform operations. (Balakrishnan, ¶¶150-152.) Server 106
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`may include “System 900,” including “Processor 910” programmed with executable
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`program instructions. (Sigurdsson, ¶¶104-105, 109 (System 900 “implemented in a
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`computer program . . . , for execution by a programmable processor”); Balakrishnan,
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`¶151.)
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`(c)
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`[1b]
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`Sigurdsson discloses and renders obvious [1b]. (Balakrishnan, ¶¶153-159.)
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`Server 106 “receive[s], over a network, a copy of a first file from a first client
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`device associated with a user,” such as “Client A” (“first client device”).
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`(Sigurdsson, ¶¶8, 27-29, 52, 55, 58, 84, 51 (Figure 4 components can share content
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`using method 200 of Figure 2 implementing Figure 1 client/server system);
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`Balakrishnan, ¶¶153-159.) Each client device is “associated with a user,” such as
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`the user’s “home computer” (Client A), “work computer” (Client B), and mobile
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`device (Client C). (Sigurdsson, ¶¶27-29, 55, 51, Figs. 1-2, 4; Balakrishnan, ¶159.)
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`Sigurdsson’s client devices send content including “file[s]” to Server 106
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`“over a network.” (Sigurdsson, ¶¶8, 28 (content may be “file”), 69, 112-13, 51,
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`Fig. 4; Balakrishnan, ¶¶153-154.) For example, “Client A Content” such as a
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`“maintenance manual” (exemplary “first file”) is stored on Client A (“stored on the
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`first client device”). (Sigurdsson, ¶58; Balakrishnan, ¶159.)
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`Server 106 “automatically receives” a “copy of the first file from the first
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`client device responsive to the user modifying a content of the first file.”
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`(Sigurdsson, ¶¶26-28 (when user saves modifications to file, “Client A Content 108,
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`which can include a copy of the user’s file, is sent automatically to the
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`Server 106.”), 52 (“edit and save”), 84 (“Client A 102 posts Client A Content 108 to
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`the Server 106 when content is changed on the Client A 102” and “posting can
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`occur as soon as an event is generated by an action, such as saving a file”);
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`Balakrishnan, ¶¶156-157.) The “copy of the first file [is] an updated version of
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`the first file that is generated from the user modifying a content of the first file.”
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`(Sigurdsson, ¶¶26-28, 58 (exemplary “maintenance manual” and “update[d]” “office
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`memo” synchronized via Server 106), 84; Balakrishnan, ¶¶157, 159.) A POSA
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`would have understood that performing a file-save operation on an edited file would
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`result in modifying a content of a stored file (i.e., “modifying a content of the first
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`file stored on the first client device”). (Balakrishnan, ¶¶156-158; EX1021 at 220,
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`463.)
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`Although Figure 4 of Sigurdsson depicts both client/server and peer-to-peer
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`connections, a POSA would have appreciated Sigurdsson’s teachings of the obvious
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`advantages of a client/server arrangement. (Balakrishnan, ¶¶154-155.) The server
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`can stay online while user computers periodically go offline, so that Server 106
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`beneficially provides a “drop-box” for “a user’s files” to “facilitate sharing this
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`information between the user’s computers by storing the shared content if the
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`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 for transferring data. (Sigurdsson, ¶79.) Sigurdsson makes clear the
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`peer-to-peer and client/server pathways between the user’s multiple client devices
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`are interchangeable, rendering obvious synchronization through the server. (Id., ¶51
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`(“Although FIG. 4 does not show explicit arrows between the Client C 406 and the
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`Server 106,” Client C can “communicate with the Server 106 in a manner similar to
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`the method used by the Clients A or B,” including method 200 of Figures 1-2);
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`Balakrishnan, ¶155.) For example, each client may include an “HTTPS
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`Client/server” that may interchangeably be used for synchronization with Server 106
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`(Sigurdsson, ¶54) or with other clients (id., ¶47). (Balakrishnan, ¶155.) Even when
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`clients can communicate peer-to-peer, they can still also use Server 106 for content
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`sharing. (Sigurdsson, ¶¶51, 79 (“Server 106 can still serve as a drop-box for
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`temporarily (or permanently) storing Client X Content 410 originating from any
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`the Clients 102, 104 or 406.”); Power Integrations v. Fairchild Semiconductor, 843
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`F.3d 1315, 1337 (Fed. Cir. 2016) (prior art “that sometimes, but not always,
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`embodies a claimed method nonetheless teaches that aspect of the invention.”);
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`Balakrishnan, ¶155.)
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`(d)
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`[1c]
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`Sigurdsson discloses [1c]. (Balakrishnan, ¶¶336-339.) Sigurdsson discloses
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`that its Server stores the modified first file to a memory device in the Server.
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`(Sigurdsson, ¶¶48 (discussing “Storage 330” in Server 106 containing the content
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`received from clients), 74 (“the content may be stored at the server”); Balakrishnan,
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`¶337.) Server 106 also serves as a “temporary storage location that can facilitate
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`synchronization between the user’s clients.” (Id. ¶¶83-85 (“The Client A Content
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`108 is received by and stored in the Server 106.”); Balakrishnan, ¶337.) Server 106
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`further includes “a Space Quota 342 and a Throughput Threshold 344” to control
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`data storage. (Id. ¶48; Balakrishnan, ¶¶337-338.)
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`Sigurdsson also discloses “System 900” in Figure 9 and explains that “the
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`System 900 may be included in either or all of the Client A 102, the Client B 104,
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`and the Server 106.” (Sigurdsson, ¶104; Balakrishnan, ¶339.) Sigurdsson further
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`contemplates the use of standard memory/storage devices. (Id., ¶110; Balakrishnan,
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`¶339.)
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`(e)
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`[1d]
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`Sigurdsson with Shappell and Rao renders obvious [1d]. (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 (“automatically extracting content from
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`the first file in response to the event using the first client and generating metadata
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`to associate with the content”), 65 (“metadata that describes . . . when the data was
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`last changed”), 72-73 (“list of the content that was generated” while Client C was
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`offline, such as “metadata describing the file and the time it was accessed”);3
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`Balakrishan, ¶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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`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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`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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`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 [1d] 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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`[1e] and 3 recite further “priority”-related limitations. (Balakrishnan, ¶165.) For
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`convenience, the Petition will address the interrelated “priority”-related limitations
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`of claims [1d], [1e], and 3 together.
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`For context in interpreting these priority-related limitations, the ’622
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`specification states only: “An embodiment’s directory update system updates at a
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`higher priority than the documents to be synchronized.” (’622, 9:12-13; EX1015 at
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`17; Balakrishnan, ¶166.) No affirmative assignment of priority values is described.
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`Nor does the specification explain which component, if any, controls the “higher
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`priority.” Claim [1d]