`
`Triais@Quspto. gov
`Tel: 571-272-7822
`
`Paper16
`Date: August 8, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BOX, INC. AND DROPBOX,INC.,
`Petitioner,
`
`V.
`
`TOPIA TECHNOLOGY,INC.,
`Patent Owner.
`
`IPR2023-00430
`Patent 11,003,622 B2
`
`Before THOMASL. GIANNETTI, NEIL T. POWELL,and
`JOHN R. KENNY,Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`DECISION
`Denying Institution of /nter Partes Review
`35 US.C. $314
`
`Granting Petitioner’s Motion to Seal
`37 C.ELR. § 42.14
`
`Granting Patent Owner’s Motionto Seal
`37 C.ELR. § 42.14
`
`
`
`IPR2023-00430
`Patent 11,003,622 B2
`
`I.
`
`INTRODUCTION
`
`A.|BACKGROUND
`
`Box, Inc., and Dropbox, Inc.(“Petitioner”) filed a Petition for inter
`
`partes review ofclaims 1, 3-5, 7,11, 12, 14, 16, and 17 of U.S. Patent
`
`No. 11,003,622 B2 (Ex. 1006, “the °622 patent”). Paper 3 (“Pet.”). Topia
`
`Technology,Inc. (“Patent Owner”) filed a Prelimmary Response. Paper6
`
`(Prelim. Resp.”’). As authorized by an Order (Paper 7 (Conduct of
`
`Proceeding)), Petitioner filed a supporting Preliminary Reply (Paper 9
`
`(Prelim. Reply”)) and Patent Ownerfiled a sealed Sur-Reply (Paper 15
`
`(Prelim. Sur-Reply”)).
`
`Under 35 U.S.C. § 314(a), an interpartes review may notbe instituted
`
`unless the information presented in the Petition and any response thereto
`
`shows“there is a reasonablelikelihood that the petitioner would prevail with
`
`respectto at least 1 of the claims challenged in the petition.” 35 U.S.C.
`
`§ 314(a). Having considered the arguments and the associated evidence, we
`
`determinethat Petitioner has not shown a reasonablelikelihood thatit will
`
`prevail in establishing the unpatentability of any of the challenged claims.
`
`Accordingly, we do not institute interpartes review.
`
`B.|RELATED PROCEEDINGS
`
`Theparties note the 622 patent is involved in the following district
`
`court proceedings: Zopia Technology,Inc. v. Box, Inc.,
`
`No. 6:21-cv-01372-ADA (W.D. Tex.); Zopia Technology, Inc. v. Dropbox,
`
`Inc., No. 6:21-cv-01373-ADA(W.D. Tex.); Topia Technology, Inc. v.
`
`Egnyte, Inc., No. 1:21-cv-01821 (D. Del. )); Zopia Technology, Inc. v. Box,
`
`Inc., SailPoint Technologies Holdings, Inc., and Vistra, Inc.,
`
`6:20-cv-01175-ADA; Topia Technology, Inc. v. Box, Inc.,
`
`
`
`IPR2023-00430
`Patent 11,003,622 B2
`
`3:32-cv-00063LB; and Topia Technology, Inc. v. Dropbox, Inc.,
`
`3:23-cv-00062AGT. Pet. 1; Paper 4, 1.
`
`Theparties also identify the following related IPR matters:
`
`IPR2022-00782 (Patent 10,067,942); IPR2023-00427 (Patent 9,143,561);
`
`IPR2023-00429 (Patent 10,289,607); IPR2023-0043 1 (Patent 10,642,787);
`
`IPR2023-00432 (Patent 10,754,823); IPR2023-00433 (Patent 10,067,942).
`
`Pet. 1—2; Paper4, 3.
`
`Patent Owneradditionally notes the following U.S. Patent
`
`applications as claiming priority to one or moreofthe currently challenged
`
`patents: 17/306,548; 17/940,730; and 17/941,518. Paper 4, 3-4.
`
`C.
`
` THE’622 PATENT
`
`The ’622 patent’s disclosed “invention relates generally to
`
`computer-implementedprocesses and, morespecifically, to sharing of
`
`electronic files among computer systems.” Ex. 1006, 1:22—24. The
`
`°622 patent identifies the following problem:
`
`Although modern devicesare easily connected, they do
`not provide the customer a seamless environment; the customer
`must manually handle many aspects of that connection. With
`regardsto file management, customers must manually move
`files between their devices using some protocollike email, ftp,
`or by posting them on the Web.
`
`Id. at 1:37-42. According to the *622 patent, “[t]hat a customerhasto
`
`manually movefiles around to ensure their accessibility on his devicesis
`
`unnecessary.” /d. at 1:66—-67. With this background,the ’622 patent
`
`discloses:
`
`[A]utomatic modification-triggered transfer of a file among two
`or more computer systems associated with a user.
`In some
`embodiments, copy of a first file may be received, via a first
`
`
`
`IPR2023-00430
`Patent 11,003,622 B2
`
`application at a first computer system, from a secondapplication
`at a second computer system associated with a user. Thefirstfile
`copy may be automatically received from the second application
`responsiveto the user modifying a contentofthe first file, where
`the first file copy is a version ofthe first file that is generated
`from the user modifying the contentofthefirstfile. Responsive
`to receivingthe first file copy from the second computer system,
`the first file copy may be automatically transferred via the first
`application to a third computer system associated with the user
`to replace an older version of the first file stored on the third
`computer system.
`
`Id. at 3:55—4:2.
`
`The ’622 patent discusses tts approach in moredetail in connection
`
`with Figure 3, which is reproduced below.
`
`
`
`
`
`
`
`USER DEVICE
`288
`
`STORAGE
`
`
`
`
`
`[Figure] 3 is a functional block diagram illustrating file sharing and/or
`
`synchronization according to an embodimentofthe invention.”
`
`Td. at 4:15—17.
`
`
`
`IPR2023-00430
`Patent 11,003,622 B2
`
`Morespecifically, Figure 3 showsuser devices 210, 280 and
`
`server 230, which may be ownedor controlled by a user.
`
`/d. at 7:60—8:2.
`
`File-transfer applications on user devices 210, 280 providefile transfer
`
`clients 310, 320.
`
`/d. at 8:2—5. File-transfer client 310 may include mobile-
`
`agent runtime environment 330.
`
`/d. at 8:5—7. Likewise,file-transfer
`
`chent 320 may include mobile-agent runtime environment 340.
`
`/d. The
`
`file-transfer applications on user devices 210, 280 may also include user
`
`interfaces 350, 360 displayed on respective displays 250, 290.
`
`Id. at 8:11-13.
`
`Files the user wants to be shared or synched may “be uploaded by one
`
`or more ofthe user devices 210, 280 andstored in storage 270.”
`
`Id. at 8:16-18. For example, “[u]pon a predetermined and user-configurable
`
`triggering event, the transfer client 310 transfers the modified file 370, or a
`
`copy of the modified file, to the server 230.” /d. at 8:37-40. Thetriggering
`
`event may be whentheusersavesthe file, when the file has been open a
`
`certain amountof time, or when a communication session between
`
`device 210 and server 230 1s re-initiated.
`
`/d. at 8:40—44.
`
`On server 230, synchronization application 380 maybe executing.
`
`Id. at 8:45—46. Synchronization application may include a mobile-agent
`
`runtime environment.
`
`/d. “[S]ynchapplication 380 monitorsa set of user
`
`devices to whichthe file 370 should be transferredto effect file
`
`synchronization.” /d. 8:48—50. Inthe example shownin Figure 3, user
`
`device 280 is included in the monitored set.
`
`/d. at 8:50—-51. User device 280
`
`is polled by synch application 380 to determine whetheruser device 280 is
`
`in communication with server 230.
`
`/d. at 8:51-54. Ifnot, file 370 may be
`
`stored in storage 270 by synch application 380, pending reestablishment of
`
`
`
`IPR2023-00430
`Patent 11,003,622 B2
`
`communication between user device 280 and server 230.
`
`/d. at 8:59-63. In
`
`the event server 230 and user device 280 are in communication,file 370 is
`
`transferred to device 280 by synch application 380.
`
`/d. at 8:54-56. At such
`
`time, the previousversion offile 370 cached on device 280 1s replaced by
`
`transfer client 320 with the latest version offile 370 altered on user
`
`device 210.
`
`/d. at 8:54-59. Inthe case offile 315 altered on device 280,
`
`transfer clients 310, 320 and synch application 380 may execute a similar
`
`reverse-direction synchronization operation.
`
`/d. at 8:64—67.
`
`D.
`
`ILLUSTRATIVE CLAIMS
`
`Of the challenged claims, claims 1, 11, and 16 are independent. Each
`
`of claims 3—5, 7, 12, 14, and 17 depends, from one of independentclaims1,
`
`11, and 16. Claim11s illustrative and is reproduced below with certain
`
`reformatting:
`
`1.
`[la]
`
`[1pre] A system comprising:
`a server system comprising one or more processors
`programmed with computer program instructionsthat,
`whenexecuted, cause the server system to:
`
`[1b] receive, over a network, a copyofa first file from a first
`client device associated with a user, wherein the copy
`of thefirst file is automatically recetved from thefirst
`client device responsive to the user modifying a
`contentofthe first file stored on thefirst client device,
`the copyofthefirst file being a version ofthefirst file
`that is generated from the user modifying the content
`ofthe first file;
`
`[1c] store the copyofthe first file on the server system;
`
`' Wehave addedthe samelabels that Petitioner applies to each of the
`portions of clam 1. See Pet. App. A.
`
`
`
`IPR2023-00430
`Patent 11,003,622 B2
`
`[1d] receive, from thefirst client device,first metadata associated
`with the version ofthefirst file that is generated from
`the user modifying the contentofthefirst file, the first
`metadata being assigneda first priority greater than a
`second priority assigned to the copy ofthefirst file;
`[le] automatically transfer, based on the first priority being
`greater than the second priority, the first metadata to
`the second client device suchthatthe first metadata is
`transferred to the second client device prior to the copy
`of the first file bemg transferred to the secondclient
`device; and
`
`[1f] automatically transfer, over a network, the copy ofthe first
`file to the secondclient device associated with the user
`to replace an older versionofthefirst file stored on the
`second client device, responsive to receiving the copy
`of thefirst file from the first client device.
`
`Ex. 1006, 10:60—24.
`
`E.
`
`EVIDENCE
`
`Petitioner relies on the following evidence:
`
`(1) U.S. Patent Application Publication No. 2007/0174246 Al,
`
`published July 26, 2007 (Ex. 1016, “Sigurdsson’”);
`
`(2) U.S. Patent Application Publication No. 2006/0190506 Al,
`
`published Aug. 24, 2006 (Ex. 1019, “Rao”);
`
`(3) U.S. Patent Application Publication No. 2005/0091289 Al,
`
`published Apr. 28, 2005 (Ex. 1020, “Shappell’’);
`
`(4) U.S. Patent No. 7,035,847 B2, published Apr. 25, 2006 (Ex. 1025,
`
`“Brown’);
`
`(5) U.S. Patent Application Publication No. 2005/0120082 A1,
`
`published June 2, 2005 (Ex. 1026, “Hesselink’’);
`
`(6) Declaration of Ravin Balakrishnan, Ph.D (Ex. 1028).
`
`
`
`IPR2023-00430
`Patent 11,003,622 B2
`
`Patent Ownerrelies on the following evidence:
`
`(1) Declaration of Dr. Prashant Shenoy (Ex. 2013); and
`
`(2) Microsoft Computer Dictionary, Fifth Edition (2002) (Ex. 2015).
`
`F.
`
`ASSERTED GROUNDSOF UNPATENTABILITY
`
`Petitioner challenges the patentability of clams 1, 3-5, 7,11, 12, 14,
`
`16, and 17 of the ’622 patent on the following grounds(Pet. 4):
`
`Sigurdsson, Shappell, Rao 1,3-5, ’é 0s 12, 14,
`
`Brown, Hesselink, Shappell, Rao
`
`1, 3-5, 7, oA 12, 14,
`
`103
`103
`
`Il. ANALYSIS
`
`A.
`
`LEVEL OF ORDINARY SKILL
`
`Petitioner contends: “[T]he claims’ earliest effective filing date is
`
`November10, 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.)” Pet. 7—8. Patent Ownerdoesnotdispute
`
`Petitioner’s definition of a person of ordinary skill in the art. See generally
`
`Prelim. Resp; Prelim. Sur-Reply. Wefind Petitioner’s position consistent
`
`with the *622 patent and the asserted prior art, and supported by Dr.
`
`Balakrishnan’s testimony (Ex. 1028 §§/15—21). Therefore, we adopt
`
`Petitioner’s definition of a person of ordinary skill in theart.
`
`
`
`IPR2023-00430
`Patent 11,003,622 B2
`
`B.|CLAIM CONSTRUCTION
`
`In an interpartes review proceeding, a claim of a patent 1s construed
`
`using the samestandardusedin federaldistrict court, including construing
`
`the claim in accordance with the ordinary and customary meaningofthe
`
`claim as understood by oneof ordinary skill in the art and the prosecution
`
`history pertaining to the patent. 37 C.F.R. § 42.100(b) (2020). According to
`
`the applicable standard, claim terms“are generally given their ordinary and
`
`customary meaning” as understood by a person of ordinary skill in the art in
`
`question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303,
`
`1312-13 (Fed. Cir. 2005) (en banc)(citations omitted).
`
`Petitioner believes that we presently need not construe any claim
`
`language expressly. Pet. 8. Patent Ownerdoesnot argue that we need to
`
`construe any claim language expressly. See generally Prelim. Resp; Prelim.
`
`Sur-Reply. Further, we do not see the need to expressly construe any claim
`
`language. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`
`803 (Fed. Cir. 1999) (“[O]nly those terms need be construedthat are in
`
`controversy, and only to the extent necessary to resolve the controversy.”);
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`
`1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an interpartes
`
`review).
`
`C.|GROUND 1: ALLEGED OBVIOUSNESS OF CLAIMS 1, 3-5, 7, 11, 12,
`14, 16, AND 17 OVER SIGURDSSON, SHAPPELL, AND RAO
`
`1.
`
`Overview ofSigurdsson
`
`Sigurdsson’s disclosed invention “relates to a sharing and search
`
`method and system.” Ex. 10164 1. Sigurdssonidentifies the following
`
`problem:
`
`
`
`IPR2023-00430
`Patent 11,003,622 B2
`
`[U]sers want to have access to their digital information
`whetherthey are on their home computer, usingalaptop at work,
`or on the road with a wireless personaldigital assistant.
`
`Some current systems permit a user to movefiles to a
`synchronization folder, which can be used to transfer files
`between two or more clients. These systems, however, may
`require explicit user action for this synchronizationto take place.
`In this case, even if a user has recently accessedafile, it will not
`be synchronized unless the user movesit to the synchronization
`folder.
`
`Id. ¥§ 2-3. Withthis background, Sigurdsson discloses “assist[ing] users...
`
`in entering to share andfind data across[their] devices.” /d. 94. For
`
`example, Sigurdsson discloses a methodfor doing so:
`
`The method includes receiving an event indicating an
`action associated with a first file has been performed by a user
`using a first client.
`... The methodalso includes automatically
`extracting content from the first file in response to the event
`using the first clent and generating metadata to associate with
`the content, and transmitting, using the first client, the content
`and the metadata to a peer client if the peer client and thefirst
`client are currently operating and visible to each other on a
`network.
`The timing of the transmission is determined
`automatically after the event is received.
`Id. 5.
`
`Sigurdsson discusses an embodimentin connection with Figure 3,
`
`whichis reproduced below.
`
`10
`
`
`
`IPR2023-00430
`Patent 11,003,622 B2
`
`Content
`
`Content B
`
`Manager
`Time Range Authentication
`
`:
`
`i
`
`Listener
`
`Fife to TexfHTML
`Converter
`
`HTTPS
`Client*Server
`
`HFTPS
`Client/Server
`
`Time Stamp
`
`Synchronization
`Manager
`
`Missing
`Content for
`Specified
`
`woo
`
`FIG. 3
`
`Figure 3 “is a block diagram showing the system 100”with its “Server 106
`
`...act[ing] as a temporary storage location thatfacilitates synchronization
`
`between the user’s clients,” which include Client A 102 and Client B 104.
`
`Id. 45.
`
`In operation,“[t]he Chent A 102 posts the Client A Content 108 to the
`
`Server 106 after content is changed on the Client A 102.” /d. “TheClient A
`
`Content 108 is received by and stored in the Server 106.” /d. 946. “In order
`
`to keep its locally stored content synchronized with content from the other
`
`clients, the Client B 104 periodically issues a Request for Missing
`
`Content 310 to the Server 106.” Jd. “The Request 310 includes a Time
`
`Range 312 parameteridentifying the range of time stampsfor the missing
`
`content.” /d.
`
`“The Server 106 can locate the content by checking time stamps
`
`stored in tables.” /d. 4 46. “The time stamps correspondto content received
`
`11
`
`
`
`IPR2023-00430
`Patent 11,003,622 B2
`
`earlier by the Server 106 from the Client A 102.” /d. “[T |he time stamps
`
`may indicate when the content was transmitted to the Server 106[.]” /d. “If
`
`the Server 106 finds time stampsin its table within the specified Time
`
`range 312,” Server 106 sends Client B 104 Missing Content for Specified
`
`Time Range 314, which “includes the content with time stampsthatfall
`
`within the Time Range 312.” /d.
`
`“Client A 102 can include .
`
`.
`
`. Files 316, hypertext markup language
`
`(HTML) Files 318,. .
`
`. an Index 320[,]. .
`
`. Event Listener 322, a File to
`
`Text/HTML Converter 324, and a hypertext transfer protocol secure
`
`(HTTPS) Chent/server 326.” /d. 947. Client B 104 can include similar
`
`components.
`
`/d. 450. Client A 102’s “Event Listener 322 listens for and
`
`detects user actions, suchas saving a file, deleting a file, or viewing a web
`
`page, that may require the associated content Client A Content 108 to be
`
`posted to the Server 106.” /d. at47. Additionally,
`
`[t]he HTTPS Chent/server 326 can be used as a client that tracks
`web access|,] can contain a Time Stamp 328 which associates
`viewed web pages with a time that they were accessed by the
`user[, and]... can also be used asa server to provide contentto
`peerclients]. |
`
`Id.
`
`“The Server 106 can contain a Storage 330, a Synchronization
`
`Manager 332, and an Authentication Manager 334.” /d. 4 48.
`
`The Storage 330 can contain the Content A, and Content B
`through Content N 336 that has been received from the user's
`variousclients[, each item having] an associated time stamp TS
`A, and TS B through TS N 338, which can identify the time
`at which each ofthe items were created.
`
`Id. “The Synchronization Manager332 contains a Space Quota 342 and a
`
`Throughput Threshold 344.” /d. Synchronization Manager332 “can use the
`
`12
`
`
`
`IPR2023-00430
`Patent 11,003,622 B2
`
`Time Stamps338 to synchronize content stored on and shared betweenthe
`
`Client A 102 andthe Client B 104.” /d. Using Time Stamps 338 and Space
`
`Quota 342, Synchronization Manager 332 can implementa first in, first out
`
`method for purging the oldest content whena client’s storage quota 1s
`
`reached.
`
`/d. Authentication Manager 334 can ensure unauthorized clients
`
`do not store or request content.
`
`/d. 449.
`
`In addition to disclosing clients sharing data via server 106,
`
`Sigurdsson discloses directly sharing data between clients. For example,
`
`Sigurdsson discusses such an approachin connection with Figure 4, whichis
`
`reproduced below.
`
`
`
`
`Client X
`Content
`
`
`102 >
`ROY
`=,
`s
`
`.
`
`
`410 %
`an
`Cltent X
`Centent
`
`—~|
`
`Ghent B
`
`: Cantent
`
`é
`~ 49
`
`|4
`
`Chent ©
`
`FIG. 4
`
`Soatlios
`Client Lye
`\
`Client X |
`3
`\ Gentent
`<
`—BY
`
`
`fn
`
`
`
`
`
`
`
` eee raSeee Cheni x |
`
`Client X |
`|,
`Content
`
`
`aco"
`
`‘
`
`[Figure] 4 is a schematic showing a system for sharing and synchronizing
`
`content using a mixed peer-to-peer and client/server architecture.” /d. 419.
`
`13
`
`
`
`IPR2023-00430
`Patent 11,003,622 B2
`
`Specifically, Figure 4 shows system 400, which allows Client A 102
`
`and Client B 104 to share data via Server 106 or in a peer-to-peer manner.
`
`Id. 451. The peer-to-peer sharing approachallows“direct sharing of
`
`content amongthe Clients 102, 104 and 406, thus bypassing the Server 106.”
`
`Id. This can reduce the volumeof data transmission at Server 106.
`
`/d. “The
`
`Server 106 canstill serve as a drop-box for temporarily (or permanently)
`
`storing Client X Content 410 originating from any the Clients 102, 104
`
`or 406.” Jd. System 400 mayrely on Server 106 to store content in
`
`instances where a client’s offline status prevents it from immediately
`
`receiving a direct transmission of new content from anotherclient.
`
`/d.
`
`“Although FIG. 4 does not show explicit arrows between the Client C 406
`
`and the Server 106, the Client C 406 can .. . communicate with the
`
`Server 106 in a mannersimilar to the method used by the Clients A or B.”
`
`Id.
`
`2.
`
`Overview ofRao
`
`Raorelates to synchronizing computer databases. Ex. 101992. Rao
`
`discusses an embodimentin connection with Figure 1, which is reproduced
`
`below.
`
`14
`
`
`
`IPR2023-00430
`Patent 11,003,622 B2
`
`COMMUNICATION BATH
`106
`SYSTEM
`
`
`
`
`too ae
`13ge PARAMETER "| 14075
`HERS?
`Op
`NULpamametER PepRLe
`ti.
`PX Aa
`x
`. a
`Taye
`TEM
`t'
`1‘411
`
`1[egPARAMETER etss4
`
`
`1 E_AAPARAMETER!
`ay
`vs
`Vs rem ag
`
`a
`“a—panameter
`22
`PLt—paramerza
`|! 134
`al1
`oy
`‘
`BEN
`fUTEM
`*
`*
`‘.
`wood
`‘t',k
`
`
`Py
`8 Ling
`“Oe ,
`Tseewe“
`fiFEM
`
`
`wenn
`Ht
`TAEM
`t4
`“2 136
`a
`£varameter 4 26
`
`
`
`
`PARAMETER %\2)
`St eked
`,
`ar
`t
`PARAMETER i rir]
`
`Mepanameren TUPLE
`ei
`+
`a
`ot
`
`.
`wy
`
`
`7
`i
`
`
`
`[fhe tag A
`epee
`1 30 TEA
`SYNCHEGMIZEDS
`FEM REPOSITORY
`uneROsTtORY
`Fe
`
`—_—
`,
`sod SERVER STORAGE
`124 CLIENT STORASE
`‘_
`C0
`SYHCHROMZED
`DATABASE SYSTEM
`
`wees
`
`:
`NS
`
`,.
`
`111
`
`iit
`
`FIGURE 1
`
`“[Figure] 1 is a diagrammaticillustration of an embodiment showing a
`
`synchronized database system.” /d. 49.
`
`In particular, Figure 1 shows synchronized database system 100,
`
`which includesserver system 102, client system 104, and communication
`
`path 106.
`
`/d. 422. Server system 102 and client system 104 may be any
`
`apparatus that may manipulate and store date, such as computer systems.
`
`Id. 4 25. Communication path 106 may include any communication
`
`mechanism allowing communication between server 102 and client 104.
`
`Id. § 26.
`
`Server system 102 includes storage system 108.
`
`/d. § 23. File 120
`
`andfile 126 are in storage system 108.
`
`/d. § 23, Fig. 1. Additionally,
`
`storage system 108 holds item repository.
`
`/d. § 23. Items 112, 114, and 116
`
`15
`
`
`
`IPR2023-00430
`Patent 11,003,622 B2
`
`reside in item repository 110.
`
`/d. 923; Fig. 1. “Items 112, 114, and 116 are
`
`comprised of parameters 118, 122, and 124, respectively.” /d. 4 23.
`
`Client system 104 includes storage system 128.
`
`/d. 424. Storage
`
`system 128 holds item repository 130, which includes “[iJtems 132, 134, and
`
`136... comprised of parameters 138, 142, and 144, respectively.” /d. ¥ 24,
`
`Fig. 1. Storage system also holds ghostedfile 140 and synchronized
`
`file 146.
`
`/d. 7 24, Fig. 1.
`
`Item repository 110 and item repository 130 may hold metadata.
`
`Id. {4 23-24, Fig. 1. In item repository 110, “items 112, 114, and 116 may
`
`contain metadata.” /d. 428. Initem repository 130, item 132 contains
`
`metadata.
`
`/d. 4 43.
`
`“File backed items havea related file may contain various metadata
`
`aboutthefile.” /d. 931. For instance, item 112 relates to file 120, and
`
`item 116 relates to file 126.
`
`/d. Similarly, ttem 132 contains metadata
`
`relating to file 140.
`
`/d. 43.
`
`Rao explains that “metadata may include derived data, which can be
`
`ascertained by analyzingthefile directly, as well as non-deriveddata.”
`
`Id. 4 31. Rao discusses creation of metadata in connection with Figure 2,
`
`whichis reproduced below.
`
`16
`
`
`
`IPR2023-00430
`
`Patent 11,003,622 B2
`
`
`
`“[Figure] 2 is a flowchart illustration of an embodiment 200 of a method by
`
`which metadata may be generated fromafile.” /d. 50.
`
`FIGURE 2
`
`After the method begins at block 202, “[t]he file is stored in a file
`
`system in block 204.” /d. Inblock 206, an item relating to the file is
`
`created.
`
`/d. In block 208, if the file is a special type, an analysis program
`
`executes at block 210 to produce metadata.
`
`/d. In block 212, the metadata
`
`is stored in the item.
`
`/d. “Ifthe file is not a special type in block 208, or
`
`whenthe metadatais stored in the item in block 212, the item is stored in the
`
`repository in block 214.” /d. 450. The method concludesin block 206.
`
`/d.
`
`Raoalso discloses that “[t]he client system 104 is synchronized with
`
`the server system 102.” /d. 37. Toreach this result, Rao discloses
`
`17
`
`
`
`IPR2023-00430
`Patent 11,003,622 B2
`
`synchronizing in two phases.
`
`/d. 463. First, Rao’s system synchronizes
`
`metadata between server and client.
`
`/d. Second, Rao’s system synchronizes
`
`raw data betweenserverand client.
`
`/d.
`
`3.
`
`Overview ofShappell
`
`Shappell’s disclosed invention “relates to communication and
`
`interaction over a computer network”and “‘is directed to... defining a
`
`server-less shared memory space and sharing files among group membersin
`
`the shared space.” Ex. 102091. Shappell identifies the following problem:
`
`[E]xisting network interaction mechanismsdonot provide
`a mechanism for
`readily manipulating shared data and
`information among a desired group ofusers.
`.. .
`
`There thus remains a needto facilitate group interaction
`... through which users can access, and maintain control with
`respect to files shared in their shared relationships with one
`another.
`
`Id. ¥§ 5—6. Withthis background, Shappell discloses “a system and method
`
`for sharing files in [a] shared space”’:
`
`An ownerof the shared space can invite other users into
`the space for the purpose of sharing files suchas pictures, video
`or other content.
`...
`[U]sers can drag and dropfiles into the
`shared spaceitself as well as perform otherfile system operations
`with respect to the sharedfiles and directories. ... [T]he shared
`files include associated metadata that is propagated to other
`membersofthe shared space.
`1d.4 9.
`
`“For sharing files among group members, metadata1s
`
`transmitted to all members whenfiles become available[.|” Jd. | 76.
`
`“Such metadataare sufficient to render an icon ofthe sharedfile and
`
`may include date, time, thumb-nail information, namesize, and
`
`18
`
`
`
`IPR2023-00430
`Patent 11,003,622 B2
`
`optionally the source of the information.” /d. “This may include an
`
`identifier for the source computing machine[.|” /d. “[S]hared content
`
`can be downloadedfrom any machine upon which the shared content
`
`resides.” Id.
`
`“When a modification of a file contained in a shared space
`
`occurs, a notification to other membersin the group occurs[. ]”
`
`Id. 4 81. The local machine’s reaction to such a notification depends
`
`on whether automatic replication of the sharedfile is enabled.
`
`/d. If
`
`so, the local machine may acquire the file’s updated version.
`
`/d. If
`
`not, the local machine may removeits out-of-date copyofthefile,
`
`whichwill alter the file’s visual representation to “missing.” /d.
`
`4.
`
`Discussion
`
`In asserting obviousof claims 1, 3-5, 7, 11, 12, 14, 16, and 17 over
`
`Sigurdsson, Shappell, and Rao,Petitioner “relies primarily on Sigurdsson.”
`
`Pet. 9, 14-46 (emphases omitted). Petitioner relies on Shappell and Rao as
`
`allegedly “further render[ing] obviousthe limitations relating to metadata
`
`and priority assignments.” /d. at9, 19-36.
`
`Patent Ownerarguesthat Petitioner presents a deficient obviousness
`
`challenge because “Sigurdsson in view of Shappell and Rao doesnot
`
`disclose several claimed features.” Prelim. Resp. 35. For example, Patent
`
`Ownerarguesthat Sigurdsson, Shappell, and Rao do notdisclose the
`
`challenged claims’ limitations regarding prioritization of metadata.
`
`Td. at 49-52.
`
`Weturn now to detailed discussion of the parties’ patentability
`
`dispute. We begin with the dispute regarding claim 1’s limitations requiring
`
`prioritization.
`
`19
`
`
`
`IPR2023-00430
`Patent 11,003,622 B2
`
`a
`
`Claim!
`
`(1)
`
`Limitations 1d and le
`
`Limitation ld relates to a first file and associated first metadata:
`
`receive, from the first client device, first metadata associated
`with the version ofthe first file that is generated from the user
`modifying the content of the first file, the first metadata being
`assigneda first priority greater than a secondpriority assigned to
`the copyofthefirstfile.
`
`Ex. 1006, 11:6—11. Limitation 1e also relates to the first metadata:
`
`automatically transfer, based on the first priority bemg greater
`than the secondpriority, the first metadata to the secondclient
`device such that the first metadata is transferred to the second
`client device prior to the copy ofthefirst file bemg transferred to
`the secondclient device.
`
`Id. at 11:12—17. Petitioner contendsthat these limitations are met by
`
`Sigurdsson with Shappell and Rao. Pet. 19-32.
`
`Petitioner explains that Sigurdsson discloses “first metadata
`
`associated with thefirst file generated from the user modifying the content
`
`of the first file.” /d. at 15 (emphasis omitted). Petitioner asserts that in
`
`Sigurdsson, when a user modifies a file, metadata describing the content can
`
`be transmitted to Server 106 along withthefile.
`
`/d.
`
`Regarding the recitation in the claim of assigning priorities to the first
`
`metadata andthe copyofthe first file, Petitioner observesthat in the ’622
`
`patent, “[n]o affirmative assignmentofpriority values is described.”
`
`Id. at 21. Petitioner argues further that “Claim [1d]... does not recite that
`
`‘the first metadata being assigneda first priority’ must be assignedits
`
`priority prior to the server system receiving that ‘first metadata.’” /d.
`
`Petitionerasserts also that “[uJnder any reasonable interpretation consistent
`
`with the specification, Sigurdsson in view of Shappell and Rao disclose and
`
`20
`
`
`
`IPR2023-00430
`Patent 11,003,622 B2
`
`render obviousclaims [1d], [le], and 3.”? /d. at 22 (emphases omitted).
`
`Petitioner discusses two scenarios.
`
`Inthefirst scenario, Petitioner
`
`relies on Sigurdsson alone,“if these limitations are interpreted to encompass
`
`a server system configured to receive metadata fromafirst device, and then
`
`automatically (not user-manually) transfer that metadata to a secondclient
`
`device.” /d. Petitioner explains under this scenario, Server 106 in
`
`Sigurdsson “receives from thefirst client device a file’s generated metadata
`
`before receiving thefile, and then the server automatically transfers that
`
`metadata to a secondclient device before transmitting the file.” /d. (some
`
`emphases omitted).
`
`Sigurdsson discloses a “priority algorithm”that “prioritizes the order
`
`in whichfiles are transferred.” /d. at22—23. Petitioner contendsthat “[a]s a
`
`result of the priority algorithm, Server 106 canfirst receive from thefirst
`
`client device the metadata associated with a low-priority file that Server 106
`
`has not received.” /d. at 23 (citing Ex. 10164 72; Ex. 1028 4 170)
`
`(emphasesomitted).
`
`Petitioner continuesthat “metadata received by Server 106 is then
`
`transmitted by Server 106 to a second client device before Server 106
`
`transfers the associated file.” /d. (emphasis omitted). According to
`
`Petitioner, when a client comes back online after a period of time and
`
`requestsa list of “missing content” from Server 106, this request “configures
`
`Server 106 to prioritize transmitting the first metadata received from thefirst
`
`? Petitioner includes “‘priority-related limitation” le and dependentclaim 3
`underits discussion for limitation 1d. Pet. 21,32,36. Claims 11, 16, and 17
`include similar priority-related limitations. Prelim. Resp. 49. See infra.
`
`21
`
`
`
`IPR2023-00430
`Patent 11,003,622 B2
`
`client device to the secondclient device before transmitting thefile.” /d. at
`
`24 (citing Ex. 1028 | 173) (emphases omitted).
`
`Underthe second scenario, where the claims “are interpreted to
`
`require affirmative, categorical assignmentof greater/lesser priorities to
`
`metadata andfiles,” Petitioner relies on Sigurdsson with Shappell and Rao.
`
`Id. at 24-28. Inthis scenario, Sigurdsson’s priority algorithm is
`
`“configured” to “categorically assign[] greater priority to metadata and
`
`lowerpriority to files, thereby causing metadatato transfer prior to the
`
`transfer of the associatedfiles based on the greaterpriority,” Petitioner
`
`argues.
`
`/d. at 25 (citing Ex. 1028 4 176).
`
`Petitioner contendsthat “Shappell teaches synchronizingfiles across
`
`multiple computers using metadata.” /d. at 26 (citing Ex. 102099; Ex. 1028
`
`4, 178) (emphasis omitted). Petitioner contendsthat “Rao providesnaturally
`
`complementary teachings to categorically prioritize synchronizing metadata
`
`before files between server and client, to advantageously enable functionsat
`
`the client.” /d. at 28 (citing Ex. 1028 § 180) (emphasis omitted). According
`
`to Petitioner,
`
`[iJt would have been obvious to combine Sigurdsson with
`Shappell’s and Rao’s metadata-priority teachings, predictably
`resulting in Sigurdsson’s system whereapriority algorithm at the
`first client and at Server 106 assigns a first, greater priority to
`metadata and lesser priority to files, resulting in the metadata
`transferring first (based on the first priority) before transferring
`associated files.
`
`Id. at 28-29 (citing Ex. 1028 4 181).
`
`Patent Ownerrespondsthat“Petitioner mischaracterizesthe “priority
`
`algorithm’ in Sigurdsson.” Prelim. Resp. 50. PatentOwner continues,“the
`
`‘priority algorithm’ in Sigurdssonis for prioritizing between the contentthat
`
`22
`
`
`
`IPR2023-00430
`Patent 11,003,622 B2
`
`is to be synchronized and notfor prioritizing between metadata and the
`
`content.” /d. (citing Ex. 2013 4 44). Patent Owner concludesthat
`
`“Sigurdsson does not teach or suggest that ‘the first metadata being assigned
`
`a first priority greater than a secondpriority assigned to the copy ofthefirst
`
`file.’” Jd. at 51 (quoting limitation 1d).
`
`Webegin with the language oflimitations 1d and le, which require
`
`“first metadata being assignedafirstpriority greater than a secondpriority
`
`assigned to the copyofthe first file” and automatically transferring thefirst
`
`metadata “based on thefirstpriority beinggreater than the secondpriority.”
`
`Ex. 1006, 11:9—11, 11:12—17 (emphas
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
