Petition for Inter Partes Review of
`U.S. Patent No. 10,642,787
`
`
`
`
`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. IPR2023-00431
`U.S. Patent No. 10,642,787
`Filing Date: January 23, 2020
`Issue Date: May 5, 2020
`
`
`Title: Pre-File-Transfer Update Based on Prioritized Metadata
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 10,642,787
`
`
`
`

`

`Table of Contents
`
`
`Page
`
`
`Introduction ..................................................................................................... 1 
`I. 
`II.  Mandatory Notices (§ 42.8(a)(1)) .................................................................. 1 
`A. 
`Real Parties-In-Interest (§ 42.8(b)(1)) .................................................. 1 
`B. 
`Related Matters (§ 42.8(b)(2)) ............................................................. 1 
`C. 
`Lead and Back-Up Counsel (§ 42.8(b)(3)) .......................................... 2 
`D. 
`Service Information (§ 42.8(b)(4)) ....................................................... 3 
`Fee Payment (§ 42.103) .................................................................................. 4 
`III. 
`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 
`Considerations Under §§314(a)/325(d) ................................................ 5 
`C. 
`V.  Overview of ’787 Patent ................................................................................. 5 
`VI.  Level of Ordinary Skill in the Art .................................................................. 6 
`VII.  Claim Construction ......................................................................................... 6 
`VIII.  The Challenged Claims are Unpatentable ...................................................... 6 
`A. 
`Earliest Effective Filing Date ............................................................... 6 
`B. 
`Overview of Grounds Including Prior Art Qualification ..................... 7 
`C. 
`Summary of Prior Art ........................................................................... 8 
`B. 
`Ground 1: Obviousness over Sigurdsson with Shappell and
`Rao. ..................................................................................................... 12 
`
`i
`
`

`

`Table of Contents
`
`(continued)
`
`Page
`
`
`C. 
`
`Ground 2: Obviousness over Brown with Hesselink, Shappell,
`and Rao. .............................................................................................. 47 
`IX.  Conclusion .................................................................................................... 70 
`
`
`ii
`
`

`

`
`
`
`Exhibit
`No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`
`List of Exhibits
`
`iii
`
`1015
`
`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)
`1022
`Jim Boyce, Microsoft Outlook Version 2002 Inside Out (2001)
`(“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”)
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1023
`
`1024
`
`1025
`
`

`

`
`
`
`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. 10,642,787
`I.
`INTRODUCTION
`Petitioners Box, Inc., and Dropbox, Inc., respectfully petition for Inter Partes
`
`Review (“IPR”) of claims 1-4, 8-11, and 13-16 (“Challenged Claims”) of U.S. Patent
`
`No. 10,642,787 (“’787”).
`
`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 ’787 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; 10,289,607; 10,754,823; and 11,003,622 (“Related
`
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 10,642,787
`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 ’787 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. 10,642,787
`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 ’787, 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. 10,642,787
`III. FEE PAYMENT (§ 42.103)
`Petitioners request review of 12 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 ’787 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
`1-4, 8-11, and
`13-16
`1-4, 8-11, and
`13-16
`
`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. 10,642,787
`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, 53.)
`
`V. OVERVIEW OF ’787 PATENT
`
`A. Claim Listing
`
`Appendix A lists the Challenged Claims.
`
`B.
`
`Specification
`
`The ’787 generally relates to file transfer and synchronization between a
`
`user’s multiple electronic devices, including “automatic modification-triggered
`
`5
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 10,642,787
`transfer of a file.” (E.g., ’787, 1:24-26, 3:55-57, 4:3-17, 8:32-49.) 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
`
`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 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 ’787 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
`
`6
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 10,642,787
`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 (quotation marks and
`
`citation 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 disclose limitations [1b]-[1f], [8a]-[8e], and [13a]-[13e],2 so the
`
`claims’ effective priority is no earlier than 11/10/2008. (Balakrishnan, ¶¶65, 74-81.)
`
`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
`
`Rao
`
`2/22/2005
`
`Shappell
`
`10/24/2003
`
`7/26/2007
`
`8/24/2006
`
`4/28/2005
`
`§102(a)/(b)/(e)
`
`§102(a)/(b)/(e)
`
`§102(a)/(b)/(e)
`
`Brown
`
`3/15/2002
`
`12/19/2002
`
`§102(a)/(b)/(e)
`
`
`2 See Appendix A for bracketed labels.
`
`7
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 10,642,787
`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.
`
`In litigation, PO has claimed (without support) a priority date would allegedly
`
`pre-date Sigurdsson. Petitioners’ second ground indisputably qualifies entirely
`
`under §102(b). Ground 2 relies on Brown in view of Hesselink, disclosing the core
`
`synchronization features, along with Shappell and Rao.
`
`C.
`
`Summary of Prior Art
`1.
`Sigurdsson
`Sigurdsson is strikingly similar to the challenged patents, contemplating
`
`synchronizing files across a user’s multiple client devices. (Sigurdsson, ¶¶2-14, 26-
`
`27.) Figure 4 shows the relevant system:
`
`8
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 10,642,787
`
`
`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, 112-13, 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
`9
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 10,642,787
`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, ¶72.)
`
`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,
`
`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.)
`
`For such files, icons associated with the files may be displayed “ghosted.” (Rao,
`
`¶66 (“ghosted files may be displayed as grayed out or semi-transparent.”).)
`
`3.
`Shappell
`Shappell teaches “shared spaces” where files are shared and synchronized
`
`among group members. (Shappell, ¶76.) Shappell discloses that a computer may
`
`transmit file metadata first, when a file is modified, to facilitate user-interface
`
`display regarding file availability before the file is transmitted. (Shappell, ¶¶76, 78-
`
`10
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 10,642,787
`79.) Shappell also discloses an “automatic replication” option that, when enabled,
`
`causes automatic replacement of old versions of shared files with modified new
`
`versions. (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.”).)
`
`
`
`
`
`(Brown, Fig. 1.) “From the user’s perspective, the synchronization process is
`11
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 10,642,787
`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 synchronizing a user’s multiple computers,
`
`such as home, work, and laptop. (Hesselink, ¶210.) The user can be “ensured of
`
`having a completely up to date master copy 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, with all connected devices
`
`“automatically updated concurrently.” (Hesselink, ¶¶183, 189, 197.) Hesselink’s
`
`system “automatically and repeatedly” checks whether synchronizing devices are in
`
`communication to initiate synchronization. (Hesselink, ¶¶182, 189-190.)
`
`B. Ground 1: Obviousness over Sigurdsson with Shappell and Rao.
`1.
`Claim 1.
`(a)
`[1pre]
` Sigurdsson discloses a content sharing and synchronization “system”
`
`comprising clients A-C (102, 104, 406) and server 106 as shown in Figure 4:
`
`12
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 10,642,787
`
`
`(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.)
`
`13
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 10,642,787
`(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 (network), 112-
`
`13 (network), 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”);
`
`14
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 10,642,787
`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 463,
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`220.)
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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 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 it obvious to synchronize through the
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`server. (Sigurdsson, ¶51 (“Although FIG. 4 does not show explicit arrows between
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`the Client C 406 and the Server 106,” Client C can “communicate with the Server
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`106 in a manner similar to the method used by the Clients A or B,” including method
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`200 of 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 the [sic] Clients 102, 104 or 406.”); Power Integrations v. Fairchild
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`Semiconductor Int’l, 843 F.3d 1315, 1337 (Fed. Cir. 2016) (prior art “that
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`sometimes, but not always, embodies a claimed method nonetheless teaches that
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`aspect of the invention.” (citation omitted)); Balakrishnan, ¶155.)
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`(d)
`[1c]
`Sigurdsson in combination with Shappell and Rao renders obvious claim [1c].
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`(Balakrishnan, ¶¶160-194.) Sigurdsson discloses first metadata associated with
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`the first file generated from the user modifying the content of the first file.
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`Sigurdsson explains that when the user (e.g., at Client A) modifies a file (e.g., a
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`resume), “metadata describing the content, such as the time the resume was saved,
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`can also be transmitted to the Server 106” along with the file. (Sigurdsson, ¶¶32-34,
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`5 (“The method also includes automatically extracting content from the first file in
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`response to the event using the first client and generating metadata to associate with
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`the content[.]”), 65 (“metadata that describes . . . when the data was last changed”),
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`72-73 (“list of the content that was generated” while Client C was offline, such as
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`“metadata describing the file and the time it was accessed”);3 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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`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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`Petition for Inter Partes Review of
`U.S. Patent No. 10,642,787
`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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`[1d], and [1g] recite further “priority”-related limitations. (Balakrishnan, ¶165.)
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`Therefore, for convenience, the Petition will address the interrelated “priority”-
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`related limitations of [1c], [1d], and [1g] together. (Id.)
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`For context in interpreting these priority-related limitations, the ’787
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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.” (’787, 9:28-29; 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.” (Id.) Consistent with the specification’s non-limiting disclosure, claim
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`[1c] does not recite that “the first metadata being assigned a first priority” must be
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`assigned its priority prior to the server system receiving that “first metadata.” (Id.)
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`On the contrary, claim [1g] provides that the server may be the only entity that
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`Petition for Inter Partes Review of
`U.S. Patent No. 10,642,787
`assigns “the” first priority to the first metadata, which could naturally occur after
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`the server receives that metadata. (See [1g] (“at least one of the server system or the
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`first client device assigns the first priority to the first metadata”); Balakrishnan,
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`¶166.) Furthermore, the ’787’s Summary mentions only the server transmitting
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`metadata before transmitting the associated file, without disclosing the server
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`receiving metadata before
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`the file.
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` (’787, 4:3-18; Balakrishnan, ¶166.)
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`Nevertheless, to the extent [1c] requires assigning the “first priority” to the first
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`metadata before the server receives that metadata, the prior art discloses and renders
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`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 [1c], [1d], and
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`[1g], 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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`Petition for Inter Partes Review of
`U.S. Patent No. 10,642,787
`before transmitting associated files, Sigurdsson alone discloses and renders them
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`obvious (in addition to rendering them obvious with Shappell and Rao, as discussed
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`further below). (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.) Specifically, Sigurdsson discloses an optional
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`variation that prioritizes transferring metadata prior to files. (Id., ¶¶169-170.) A
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`“priority algorithm” (discussed below), optionally implemented on the clients and/or
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`Server 106, prioritizes the order in which files are transferred. (Sigurdsson, ¶¶58-
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`60, 72; Balakrishnan, ¶170.) Higher-priority (e.g., smaller and/or newer) files may
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`be transferred before lower-priority (e.g., larger and/or older) files. (See id.) As a
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`result of the priority algorithm, Server 106 can first receive from the first client
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`device the metadata associated with a low-priority file that Server 106 has not
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`received: “The content of this file may not be transmitted to the Server 106 because
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`of the execution of a priority algorithm (as discussed earlier). Instead, metadata
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`describing the file and the time it was accessed may be transmitted to the Server
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`106.” (Sigurdsson, ¶72; Balakrishnan, ¶170.) And although it does not appear to be
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`a requirement of the claim, this “metadata describing the file and the time it was
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`accessed” obviously includes metadata generated from the user modifying the file
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`Petition for Inter Partes Review of
`U.S. Patent No. 10,642,787
`content (which would change the file’s description and last-accessed time), matching
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`the “metadata describing the content, such as the time the [file] was saved” generated
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`when a user modifies a file. (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. (Sigur