IPR2020-01235
`U.S. Patent No. 10,015,254
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`ADOBE INC.,
`Petitioner
`
`
`v.
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`
` SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner
`
`
`
`Case IPR2020-01235
`U.S. Patent 10,015,254
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`
`
`__________________
`
`
`Synkloud Technologies, LLC’s Patent Owner Response
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`IPR2020-01235
`U.S. Patent No. 10,015,254
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`TABLE OF CONTENTS
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`I. INTRODUCTION .......................................................................................................................1
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`II. TECHNOLOGY BACKGROUND ...........................................................................................3
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`A.
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`B.
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`Prior Art Storage Systems ..............................................................................................3
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`The ’254 Patent: Mr. Sheng Tai Tsao Invents An Approach For Downloading
`Data From A Web Site To A Remote Storage Server Using Download
`Information Stored In The Cache Of A Wireless Device. .............................................4
`
`III. SUMMARY OF THE INSTITUTED GROUNDS FOR REVIEW .........................................7
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`IV. CLAIM CONSTRUCTION. ....................................................................................................8
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`a.
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`downloading a file from a remote server across a network into the first
`one of the storage spaces through utilizing information for the file
`cached in a cache storage in the first wireless device (independent
`claim 9). .............................................................................................................9
`
`b.
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`Petitioner’s Construction Of The Cache Claim Limitations Is Flawed. ..........10
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`THE PETITIONER FAILED TO DEMONSTRATE BY A
`PREPONDERANCE OF THE EVIDENCE THAT ANY OF THE
`CHALLENGED CLAIMS WOULD HAVE BEEN OBVIOUS ON ANY
`INSTITUTED GROUND. ...........................................................................................14
`
`Independent Claim 9 As Well As The Claims Dependent Therefrom Would
`Not Have Been Obvious Over Prust In Combination With The Secondary
`References. ...................................................................................................................16
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`The Combination Of Prust with Either Major or Kraft Would Not Have
`Taught “downloading a file from a remote server across a network into the
`first one of the storage spaces through utilizing information for the file
`cached in a cache storage in the wireless device,” As Recited in
`Independent Claim 9. .............................................................................................19
`
`The Petitioner Failed To Show That A POSITA Would Have Been
`Motivated To Modify Prust With Either Major or Kraft To Achieve The
`Particular Device Recited In Independent Claim 9 Of The ’254 Patent
`With A Reasonable Expectation Of Success. ........................................................29
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`V.
`
`A.
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`1.
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`2.
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`B.
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`Independent Claim 9 As Well As The Claims Dependent Therefrom Would
`Not Have Been Obvious Over Nomoto In Combination With The Secondary
`References. ...................................................................................................................41
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`ii
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`IPR2020-01235
`U.S. Patent No. 10,015,254
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`1.
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`2.
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`The Combination Of Nomoto with Either Major or Kraft Would Not Have
`Taught “downloading a file from a remote server across a network into the
`first one of the storage spaces through utilizing information for the file
`cached in a cache storage in the wireless device,” As Recited in
`Independent Claim 9. .............................................................................................44
`
`The Petitioner Failed To Show That A POSITA Would Have Been
`Motivated To Modify Nomoto With Either Major or Kraft To Achieve
`The Particular Device Recited In Independent Claim 9 Of The ’254 Patent
`With A Reasonable Expectation Of Success. ........................................................47
`
`C.
`
`Objective Indicia Of Non-Obviousness Support The Patentability Of The
`Claims Of The ’254 Patent. .........................................................................................53
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`VI.
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`CONCLUSION ............................................................................................................82
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`IPR2020-01235
`U.S. Patent No. 10,015,254
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`TABLE OF AUTHORITES
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`PAGE NO.
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`CASES
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`Arista Networks, Inc., v. Cisco Systems, Inc.,
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`2016 WL 1083023 (PTAB 2015)
`
`CCS Fitness Inc. v. Brunswick Corp.,
`
`288 F.3d 1366, 62 USPQ2d at 1662
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`
`809 F.3d 1375 (Fed. Cir. 2015)
`
`
`Harmonic Inc. v. Avid Tech., Inc.,
`
`815 F.3d 1356 (Fed. Cir. 2016)
`
`In re Magnum Oil Tools Int’l, Ltd.,
`
`829 F.3d 1364 (Fed. Cir. 2016)
`
`Kolbe & Kolbe Millwork Co., Inc. v. Sierra Pacific Industries,
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`2019 WL 5070454 (PTAB 2019)
`
`
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`K/S Himpp v. Hear-Wear Techs., LLC,
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`751 F.3d 1362 (Fed. Cir. 2014)
`
`Mylan Pharmaceuticals Inc. v. Boehringer Ingelheim International GMBH,
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`2017 WL 1052517 (PTAB 2017)
`
`
`
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`16, 24, 43
`
`Nautilus Hyosung Inc. v. Diebold Nixdorf, Inc.,
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`2017 WL 3447870 (PTAB 2017)
`
`SAS Institute v. Iancu,
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`138 S.Ct 1348 (2018)
`
`Teleflex, Inc. v. Ficosa N Am. Corp.,
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`299 F.3d 1313, 63 USPQ2d 1374 (Fed. Cir. 2002)
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`55
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`9
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`16
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`17, 24, 43
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`18, 26, 44
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`22, 44
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`22, 25, 26, 44
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`17
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`16
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`15, 18, 27
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`iv
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`IPR2020-01235
`U.S. Patent No. 10,015,254
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`9
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`16
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`17
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`16
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`1
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`Texas Digital Systems, Inc. v. Telegenix, Inc.,
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`308 F.3d 1193 (Fed. Cir. 2002)
`
`Zodiac Pool Systems, Inc. v. Aqua Products, Inc.,
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`2018 WL 6604633 (PTAB 2018)
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`
`
`STATUTES
`
`35 U.S.C. §312(a)(3)
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`35 U.S.C. §314(a)
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`37 C.F.R. §42.107
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`IPR2020-01235
`U.S. Patent No. 10,015,254
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`PATENT OWNER’S EXHIBIT LIST
`
`Exhibit
`Number
`
`Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010-2014
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`Declaration of Zaydoon Jawadi
`
`Curriculum Vitae of Zaydoon Jawadi
`
`Hypertext Transfer Protocol -- HTTP/1.1, rfc2616, June 1999.
`
`Second Declaration of Zaydoon Jawadi
`
`Claim Chart of wireless devices with Microsoft OneDrive for the
`’254 Patent
`Claim Chart of wireless devices with Adobe cloud services for the
`’254 Patent
`Claim Chart of wireless devices with Dropbox cloud services for
`the ’254 Patent
`Claim Chart of wireless devices with Microsoft OneDrive for the
`’254 Patent
`Claim Chart of wireless devices with Microsoft OneDrive for the
`’254 Patent
`Reserved
`Claim Chart of the HP Laptop computers with Microsoft
`OneDrive for the ’254 Patent
`Claim Chart of wireless devices with Microsoft OneDrive for the
`’254 Patent
`Microsoft Securities and Exchange Commission Form 10K filing
`for the fiscal year ending June 30, 2019
`https://blog.goptg.com/microsoft-office-365-statistics, last
`viewed September 15, 2020
`https://www.microsoft.com/en-us/microsoft-
`365/onedrive/compare-onedrive-plans?activetab=tab:primaryr2,
`last viewed September 15, 2020.
`
`
`
`vi
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`

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`2020
`
`2021
`
`2022
`
`2023
`
`2024
`
`2025
`
`2026
`
`2027
`
`2028
`
`2029
`2030
`2031
`
`2032
`
`IPR2020-01235
`U.S. Patent No. 10,015,254
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`https://techcommunity.microsoft.com/t5/microsoft-onedrive-
`blog/top-4-tips-to-protect-your-remote-workforce-with-data-
`compliance/ba-p/1452108?WT.mc_id=eml_CXM_EN-
`US_Comm_M365_Engagement_NewsletterEdition02_Email_01
`_V01_622_FY21Aug_ENUS, last viewed September 15, 2020.
`Claim Chart of BLU wireless device with Google Drive for the
`’254 Patent
`“The Verizon Plan FAQs,” Verizon website
`(https://www.verizonwireless.com/support/the-verizon-plan-
`faqs/), last viewed September 15, 2020
`“Report: State of the Web,” HTTP Archive website
`(https://httparchive.org/reports/state-of-the-web), last viewed
`September 15, 2020.
`Microsoft OneDrive Pricing (https://products.office.com/en-
`US/onedrive-for-business/compare-onedrive-for-business-plans),
`last viewed September 15, 2020.
`“Cloud Data Storage Service Use Among Consumers in the
`United States, as of 2017,” Statista
`(https://www.statista.com/statistics/714140/us-usage-cloud-
`storage-services/), last viewed September 15, 2020.
`“Annual Estimates of the Resident Population: April 1, 2010 to
`July 1, 2018,” U.S. Census Bureau, American Fact Finder.
`“United States Population,” Worldometer website
`(https://www.worldometers.info/world-population/us-
`population/), last viewed September 15, 2020.
`Ballard, John, “What is Dropbox’s Competitive Advantage?”
`The Motley Fool, August 21, 2018
`https://www.fool.com/investing/2018/08/21/what-is-
`dropboxs-competitive-advantage.aspx), last viewed September
`15, 2020.
`Claim chart of smart phone with cloud storage (filed under seal)
`License to the ’254 Patent (filed under seal)
`https://www.microsoft.com/en-us/surface/devices/surface-
`pro/tech-specs, last viewed September 19, 2020.
`https://support.microsoft.com/en-us/office/using-office-for-the-
`web-in-onedrive-dc62cfd4-120f-4dc8-b3a6-
`7aec6c26b55d#:~:text=In%20your%20web%20browser%2C%20
`go,Office%20for%20the%20web%20program, last viewed
`September 19, 2020
`
`
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`vii
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`IPR2020-01235
`U.S. Patent No. 10,015,254
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`https://www.dummies.com/computers/operating-
`systems/windows-10/how-to-access-onedrive-from-anywhere/,
`last viewed September 19, 2020
`https://www.microsoft.com/en-us/microsoft-
`365/onedrive/compare-onedrive-
`plans?ef_id=CjwKCAjwkoz7BRBPEiwAeKw3qwWV_91zlJtX
`mTwNvg1VRHD4lR_L8VuIUbASJYJAIKfOODGFtWQzwho
`CuaMQAvD_BwE:G:s&OCID=AID2100137_SEM_CjwKCAj
`wkoz7BRBPEiwAeKw3qwWV_91zlJtXmTwNvg1VRHD4lR_L
`8VuIUbASJYJAIKfOODGFtWQzwhoCuaMQAvD_BwE:G:s
`&lnkd=Google_O365SMB_App&gclid=CjwKCAjwkoz7BRBP
`EiwAeKw3qwWV_91zlJtXmTwNvg1VRHD4lR_L8VuIUbASJ
`YJAIKfOODGFtWQzwhoCuaMQAvD_BwE&activetab=tab:p
`rimaryr2, last viewed September 19, 2020
`https://www.steeves.net/news/top-9-reasons-for-onedrive-in-
`your-business/, last viewed September 19, 2020.
`Modified Protective Order
`Redline Version of Modified Protective Order
`“Number of internet users in the United States from 2015 to
`2025 (in millions),” Statista
`(https://www.statista.com/statistics/325645/usa-number-of-
`internet-users/), last viewed September 20, 2020.
`License to the ’254 Patent (filed under seal)
`
`
`2033
`
`2034
`
`2035
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`2036
`2037
`2038
`
`2039
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`
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`viii
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`IPR2020-01235
`U.S. Patent No. 10,015,254
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`I. INTRODUCTION
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` The Board should not cancel any claim of U.S. Patent No. 10,015,254
`
`(“the ’254 patent”) because Petitioner has not shown by a preponderance of
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`the evidence that any claim is unpatentable for three separate and independent
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`reasons.
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`First, each of Petitioner’s proposed grounds of rejection is missing one or
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`more limitations of the claims of the ’254 patent. Infra, §§ V.B.1 and V.C.1.
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`For example, none of the combinations of prior art references asserted by
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`Petitioner would have taught “downloading a file from a remote server across
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`a network into the first one of the storage spaces through utilizing information
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`for the file cached in a cache storage in the first wireless device,” as recited in
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`independent claim 9 of the ’254 patent. Neither of Petitioner’s primary
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`references (i.e., Prust and Nomoto) even mention cache. And although some
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`of the secondary references (e.g., Major, Kraft) do mention cache, they do not
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`make any mention of how any of the data in cache would be used, let alone
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`that download information in the cache of a wireless device would be used
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`remotely from the wireless device—not locally at the wireless device—to
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`download a file from a remote server (e.g., a web site) to a remote storage
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`space.
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`IPR2020-01235
`U.S. Patent No. 10,015,254
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`Second, the Petitioner did not present any objective evidence as to why
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`one of ordinary skill in the art would have been motivated to modify either
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`Prust or Nomoto, the primary references, with the teachings of the secondary
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`references (e.g., Major, Kraft), and reasonably expect success in achieving the
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`invention recited by the challenged claims of the ’254 patent. The claimed
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`invention of the ’254 patent is a novel and non-obvious way to utilize
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`download information in a cache of a wireless device to enable easy and
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`efficient downloading of data (e.g., a web page, a file) from a web server to a
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`remote storage space. The Petitioner did not show that a “skilled artisan
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`would have been motivated to combine the teachings of the prior art references
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`to achieve the claimed invention, and that the skilled artisan would have had a
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`reasonable expectation of success in doing so.” OSRAM Sylvania, Inc. v. Am
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`Induction Techs., Inc., 701 F.3d 698, 706 (Fed. Cir. 2012).
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` Third, objective indicia of non-obviousness, including the commercial
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`success of the devices that infringe the claims of the ’254 patent and a license
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`showing industry respect for the claimed invention support the patentability of the
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`claims of the ’254 patent. Infra, § V.B.
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`For these reasons and those explained more fully below, the Petitioners
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`failed to show by a preponderance of the evidence that any claim of the ’254
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`patent is unpatentable.
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`IPR2020-01235
`U.S. Patent No. 10,015,254
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`II. TECHNOLOGY BACKGROUND
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`A. Prior Art Storage Systems
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`As discussed in the background section of the ’254 patent, prior art
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`storages systems are “categorized as internal storage or external storage.”
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`EX1001, 1:27-28. “The internal storages of a computing system include those
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`storage media such as hard disk drives, memory sticks, memory, and others
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`that are internally connected within the computing system through [a] system
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`bus or a few inches of cable.” Id. at 1:29-33. That is, internal storage media
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`“are internal components of the computing system in a same enclosure.” Id. at
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`1:33-34.
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`In contrast, “[t]he external storages of a computing system are those
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`storage media that are not the internal components of the computing system in
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`a same enclosure.” Id. at 1:35-37. Instead, external storage is “connected
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`through [a] longer cable, such as through Ethernet cable for IP based storage,
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`Fiber channel cable for fiber channel storage, or wireless communication
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`media, and others.” Id. at 1:38-41. “[E]xternal storage could be magnetic hard
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`disk drives, solid state disk, optical storage drives, memory card and others,
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`and could be in any form.” Id. at 1:42-45.
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`The inventor of the ’254 patent, however, recognized that storage on
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`users’ “wireless devices such as in their cell phone or personal data assistant
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`IPR2020-01235
`U.S. Patent No. 10,015,254
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`devices (“PDA”) … [was] usually limited to 256 MB for the PDA and much
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`less for the cell phone.” Id. at 2:29-33. Accordingly, the inventory recognized a
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`need to provide wireless devices with “multiple gigabytes (GB) of storage”
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`from a remote storage server to support multimedia applications. Id. at 34-37.
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`Moreover, because multimedia data require large amounts of memory, there
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`was a need to store data from various sources (e.g., a web server) to the remote
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`storage server. Id. at 2:53-58.
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`
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`B. The ’254 Patent: Mr. Sheng Tai Tsao Invents An Approach For
`Downloading Data From A Web Site To A Remote Storage Server
`Using Download Information Stored In The Cache Of A Wireless
`Device.
`
`The ’254 patent addresses the deficiencies of the prior art with an
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`approach that downloads data from a web site to a remote storage server using
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`download information in a cache of a wireless device, as shown by FIG. 3,
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`which is reproduced below.
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`IPR2020-01235
`U.S. Patent No. 10,015,254
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`
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`One embodiment of the invention includes a wireless device (1) having a
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`web browser (8) and other software (9); a website (15); and external storage
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`(10) having file systems (11) on a server (3). Id. at 3:48-58. When a user of the
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`wireless device (1) desires to download data from a web server (15) to an
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`assigned file system of the assigned external storage (10) on a server (3), the
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`following steps are performed:
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`IPR2020-01235
`U.S. Patent No. 10,015,254
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`“1) Provide the user from a web-browser (8) of the wireless device (1)
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`access to a remote web server site (15) to obtain information for the
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`downloading via the path (a) of the FIG. 3”;
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`“2) The other software modules (9) of the wireless device (1) obtain the
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`downloading information, which becomes available in the cached web-pages
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`on the wireless device (1) after the web-browser (8) access[es] the web site
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`(15)”;
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`“3) The other software modules (9) of the wireless device (1) send the
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`obtained downloading information to [the] other service modules (7) of the
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`storage server (3) via the path (b)”;
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`“4) Upon receiving the downloading information from the wireless
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`device (1), the other service module (7) of the storage server (3) sends a web
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`download request to the web-site (15) via the path (c) based on download
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`information obtained and then receives the downloading data from the web
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`server of the web-site (15)”; and
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`“5) Upon receiving downloading data, the other service modules (7) of
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`the storage server (3) write[s] the data for the wireless device (1) into the
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`assigned file system (11) on the server (3).”
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`Id. at 5:10-32.
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`6
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`IPR2020-01235
`U.S. Patent No. 10,015,254
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`In this manner, the present invention downloads data using the
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`download information in the cache of the user’s wireless device (1) from the
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`web site (15) to the user’s assigned file system (11) on the server. The
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`downloaded data can later be accessed by the user device. Id. at 5:33-44.
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`Thus, the invention of the ’254 patent includes a novel and non-obvious
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`way to utilize download information in a cache of a wireless device to enable
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`easy and efficient downloading of data (e.g., a web page, a file) from a web
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`server to a remote storage space. For example, if a user of the wireless device
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`of the claimed invention of the ’254 patent were to access a picture from a web
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`site (e.g., New York Times), the web site would not need to do anything
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`differently; it would simply transmit a file containing the picture to the
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`requester without needing to know whether the picture would be stored in
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`remote storage or viewed on the device. In other words, the web sites need not
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`be adapted or changed in any way to operate with the wireless device of the
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`present invention.
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`III. SUMMARY OF THE INSTITUTED GROUNDS FOR REVIEW
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`Below is a summary of the proposed claim rejections instituted by the
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`Board:
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`7
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`IPR2020-01235
`U.S. Patent No. 10,015,254
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`i.
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`Claims 9-12, 14, and 15 are alleged to have been obvious under
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`§103 over Prust alone or combined with Major or Kraft;
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`ii.
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`Claim 13 is alleged to have been obvious under § 103 over Prust
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`combined with Major or Kraft and Reuter;
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`iii. Claims 9-12, 14, and 15 are alleged to have been obvious under
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`§103 over Nomoto alone or combined with Major or Kraft; and
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`iv. Claim 13 is alleged to have been obvious under § 103 over
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`Nomoto combined with Major or Kraft and Reuter.
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`
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`IV. CLAIM CONSTRUCTION.
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`Claim construction is generally an issue of law. Claims in an inter partes
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`review are construed pursuant to the principle set forth by the court in Phillips
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`v. AWH Corp, 415 F.3d 1303, 1312-15 (Fed. Cir. 2005) (en banc). Under
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`Phillips, the specification is the single best source for claim interpretation. 415
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`F.3d at 1312. “The terms used in the claims bear a heavy presumption that they
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`mean what they say and have the ordinary meaning that would be attributed to
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`those words by persons skilled in the relevant art.” Texas Digital System, Inc. v.
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`Telegenix, Inc., 308 F.3d 1193, 1202 (Fed. Cir. 2002) (emphasis added) (internal
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`quotation marks omitted) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
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`1359, 1366 (Fed. Cir. 2002); K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1362-63
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`IPR2020-01235
`U.S. Patent No. 10,015,254
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`(Fed. Cir. 1999); Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985,
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`989 (Fed. Cir. 1999); Specialty Composites v. Cabot Corp., 845 F.2d 981, 986 (Fed.
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`Cir. 1988)). The “appropriate context” to read a claim term includes both the
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`specification and the claim language itself. In re Suitco Surface, Inc., 603 F.3d
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`1255, 1260 (Fed. Cir. 2010).
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`
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`a.
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`downloading a file from a remote server across a network
`into the first one of the storage spaces through utilizing
`information for the file cached in a cache storage in the first
`wireless device (independent claim 9).
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`This claim limitation requires information needed to download a file from a
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`remote server to be (i) stored in a cache storage of a wireless device and (ii)
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`utilized to download the file across a network into a remote storage space for the
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`user of the wireless device.
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`This claim construction is consistent with the claim language itself. Claim 9
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`explicitly recites “a cache storage in the first wireless device.” EX1001, 7:23.
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`Claim 9 also recites that “information for the file [is] cached in a cache storage in
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`the wireless device.” Id. at 7:22-23. Claim 9 also recites “downloading a file from
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`a remote storage server.” Id. at 7:20-21. Therefore, the claimed “information” is
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`for the file at the remote storage server and this “information” is cached in the
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`cache storage, which is in the “wireless device.”
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`9
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`U.S. Patent No. 10,015,254
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`Patent Owner’s proposed construction is also consistent with the
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`Specification. The Specification explains that the claimed “information for the
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`file” is cached in the cache of the wireless device: “the downloading information
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`[for the file], which becomes available in the cached web-pages on the wireless
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`device.” Id. at 5:17-18. This download information in the wireless device’s cache
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`is, in fact, utilized to download the file:
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`3) The other software modules (9) of the wireless device (1) send the
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`obtained downloading information to other service modules (7) of the
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`storage server (3) via path (b) of FIG. 3.
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`
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`4) Upon receiving the downloading information from the wireless
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`device (1), the other service module (7) of the storage server (3) sends
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`a web download request to the web-site (15) via path (c) of FIG. 3
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`based on download information obtained. and receives the
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`downloading data from the web server of the web-site (15).
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`EX1001, 5:20-28.
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`Both the claim language itself and the Specification support Patent Owner’s
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`proposed construction.
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`
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`b.
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`Petitioner’s Construction Of The Cache Claim Limitations
`Is Flawed.
`
`Petitioner’s construction of the phrase “cached in a cache storage on the
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`first wireless device” as “stored in a location on the wireless device that is more
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`readily accessible than the original source of the information” (Petition, 7) is
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`flawed. As explained by Mr. Jawadi, “[a] POSITA would have known that cache
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`storage is not merely any storage location “that is more readily accessible than the
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`original source of the information” because it “omits three basic cache principles.”
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`EX2001, ¶ 30.
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`“First, cache storage is used to save information that may be needed multiple
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`times (subsequent to initial access) in a more readily accessible location, eliminating
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`the need to retrieve the data again from the original source of the information. In
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`other words, storing information in cache, when the information is initially fetched,
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`is intended not for the initial access to the information, but for subsequent access or
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`accesses to that information.” Id. at ¶ 31 (emphasis in original).
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`“Second, cache storage includes a cache search mechanism invoked when
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`information is needed. The cache search mechanism is used to determine if the
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`requested information is in cache (cache hit) or not in cache (cache miss). If the
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`information is not in cache, the information is fetched and stored in cache in
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`anticipation of subsequent accesses to that information.” Id. at ¶ 31 (emphasis in
`
`original). “Third, cache storage includes a replacement algorithm, mechanism, or
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`policy for replacing information in cache, such as least recently used (LRU)
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`algorithm.” Id. at ¶ 31 (emphasis in original).
`
`
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`Indeed, Petitioner’s own references describe these three principles. For
`
`example, “Petitioner’s EX-1025 (Newton’s Telecom Dictionary) confirms that
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`cache storage is used to save information that may be needed multiple times
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`(subsequent to initial access), that cache storage includes a mechanism to determine
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`cache hit/miss, and that cache storage includes a replacement algorithm” (EX2001,
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`¶ 35):
`
`A cache works like this. When the CPU needs data from memory, the
`system checks to see if the information is already in the cache. If it is,
`it grabs that information; this is called a cache hit. If it isn’t, it’s
`called a cache miss and the computer has to fetch the information by
`access the main memory or hard disk, which is slower. Data retrieved
`during a cache miss is often written into the cache in anticipation of
`further need for it.
`...
`Generally, when the cache is exhausted, it is flushed and the data is
`written back to main memory, to be replaced with the next cache
`according to a replacement algorithm.
`
`EX-1025, Newton’s Telecom Dictionary (emphasis added). “Petitioner’s EX-1026
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`(Microsoft Press Computer Dictionary) also confirms that cache storage is used to
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`save information that may be needed multiple times (subsequent to initial access)
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`and that cache storage includes a mechanism to determine cache hit/miss” (EX2001,
`
`¶ 36):
`
`A special memory subsystem in which frequently used data values
`are duplicated for quick access. A memory cache stores the contents
`of frequently accessed RAM locations and the addresses where
`these data items are stored. When the processor references an address
`in memory, the cache checks to see whether it holds that address.
`
`
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`If it does hold the address, the data is returned to the processor; if it
`does not, a regular memory access occurs.”
`
`EX-1026, Microsoft Press Computer Dictionary (emphasis added). “Petitioner’s
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`EX-1027 (New Penguin Dictionary of Computing) also confirms that cache
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`storage is used to save information that may be needed multiple times (subsequent
`
`to initial access) and that cache storage includes a mechanism to determine cache
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`hit/miss” (EX2001, ¶ 37):
`
`Caches may be employed in many other forms of communication, for
`example to enable WEB PAGES recently read to be read again
`more quickly, and between a computer's CPU and disk drives of
`various kinds (where the speed discrepancy is even greater than with
`memory)
`...
`cache hit A request by a computer's processor to read or write a data
`item that finds its target in the processor's CACHE and therefore does
`not have to reach out over the bus to external memory to access it.
`...
`cache miss A request by a computer's processor to read or write a data
`item that does not find its target in the processor's CACHE and
`therefore must continue through into main memory to access the
`item.”
`
`EX-1027 (New Penguin Dictionary of Computing) (emphasis added). In addition,
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`Major describes a way to determine whether there is a hit or miss in cache and a
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`replacement algorithm. EX1006, 21:1-5, 11:15-16, 11:20-21, 18:18-19.
`
`Thus, Petitioner’s construction, which deems as cache any location that is
`
`“more readily accessible than the original source of the information” neglects to
`
`consider that a POSITA would have known of these three basic cache principles …
`
`
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`13
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`Under such overly broad and flawed construction, any storage location (e.g., disk
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`drive, random access memory, etc.) that stores the information and that is faster
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`than the original source would constitute cache, even if the information is only
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`transitorily and temporarily stored in that location and not saved for future hits,
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`even if the location is never intended or designed to operate as cache, even if the
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`location does not operate as cache (missing the three basic cache principles
`
`mentioned above), and even if the location entirely contradicts the three basic
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`cache principles described earlier.” EX2001, ¶ 39. Indeed, “[u]nder Petitioner’s
`
`construction, other than the original location where a web page is stored at the web
`
`server, any storage location where the web page is stored would constitute cache,
`
`because any such alleged storage location other than the original location is ‘more
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`readily accessible than the original source of the information.’” Id. at ¶ 30.
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`For all these reasons, a POSITA would not have understood the “cache”
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`limitations to have the constructions proposed by Petitioner. Petitioner’s
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`constructions are improper.
`
`
`
`V. THE PETITIONER FAILED TO DEMONSTRATE BY A
`PREPONDERANCE OF THE EVIDENCE THAT ANY OF THE
`CHALLENGED CLAIMS WOULD HAVE BEEN OBVIOUS ON
`ANY INSTITUTED GROUND.
`
`As set forth by the Supreme Court, the question of obviousness is
`
`resolved on the basis of underlying factual determinations including (1) the
`
`
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`scope and content of the prior art, (2) any differences between the claimed
`
`subject matter and the prior art, (3) the level of skill in the art. Graham v. John
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`Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966); see also KSR Int’l Co. v.
`
`Teleflex Inc., 550 U.S. 398, 399 (2007) (“While the sequence of these questions
`
`might be reordered in any particular case, the [Graham] factors define the
`
`controlling inquiry.”) A petitioner seeking to invalidate a patent as obvious
`
`must demonstrate that a “skilled artisan would have been motivated to
`
`combine the teachings of the prior art references to achieve the claimed
`
`invention, and that the skilled artisan would have had a reasonable expectation
`
`of success in doing so.” OSRAM Sylvania, Inc. v. Am. Induction Techs., Inc., 701
`
`F.3d 698, 706 (Fed. Cir. 2012).
`
`The Petition’s evidence must also address every limitation of every
`
`challenged claim. Where the Petitioner seeks to rely on the knowledge of skill
`
`in the art, how and why one of skill in the art would modify the references
`
`relied upon to demonstrate obviousness must be set forth with specificity.
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`Nautilus Hyosung Inc. v. Diebold Nixdorf, Inc., 2017 WL 3447870 *8 (PTAB
`
`2017).
`
`Petitioner cannot prevail on any claim on any of the instituted
`
`obviousness grounds because it (i) failed to demonstrate that one of ordinary
`
`skill in the art would have been motivated to combine the teachings of the
`
`
`
`15
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`IPR2020-01235
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`numerous prior art references in the combination to achieve the claimed
`
`invention with a reasonable expectation of success, (ii) failed to demonstrate
`
`that any of the different combinations teaches every element of any of the
`
`challenged claims, and; (iii) failed to consider objective indicia of non-
`
`obviousness including commercial success and a license showing industry
`
`respect for the claimed invention.
`
`
`
`
`
`Independent Claim 9 As Well As The Claims Dependent Therefrom
`A.
`Would Not Have Been Obvious Over Prust In Combination With The
`Secondary References.
`
`The combination of Prust with either Major or Kraft would not have
`
`taught or suggested the claim limitations to “download a file from a remote
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`server across a network into the first one of the storage spaces through utilizing
`
`information for the file cached in a cache storage in the first wireless device,”
`
`as recited in independent claim 9. EX1001, 7:20-24. Indeed, the combination
`
`would not even have taught that this “[download] information for the file [is]
`
`cached in a cache storage in the wireless device.”
`
`In the Institution Decision, the Board stated that “Patent Owner does
`
`not consider Prust’s teaching of a conventional web browser executing on a
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`client device, such as a PDA … Petitioner’s argument that a user would have
`
`obtained a URL of the webpage from the browser’s cache is sufficiently
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`
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`16
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`IPR2020