Trials@uspto.gov
` 571-272-7822
`
`
` Paper 13
` Entered: March 19, 2020
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS, LLC,
`Petitioner,
`
`v.
`
`SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`IPR2019-01655
`Patent 9,098,526 B1
`____________
`
`
`
`Before SALLY C. MEDLEY, JESSICA C. KAISER, and
`JOHN R. KENNY, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
` 571-272-7822
`
`
` Paper 13
` Entered: March 19, 2020
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS, LLC,
`Petitioner,
`
`v.
`
`SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`IPR2019-01655
`Patent 9,098,526 B1
`____________
`
`
`
`Before SALLY C. MEDLEY, JESSICA C. KAISER, and
`JOHN R. KENNY, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`IPR2019-01655
`Patent 9,098,526 B1
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`I. INTRODUCTION
`Unified Patents, LLC (“Petitioner”)1 filed a Petition for inter partes
`review of claims 1–20 of U.S. Patent No. 9,098,526 B1 (Ex. 1001, “the
`’526 patent”). Paper 1 (“Pet.”). Synkloud Technologies, LLC (“Patent
`Owner”) filed a Preliminary Response. Paper 9 (“Prelim. Resp.”).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
`Upon consideration of the Petition, the Preliminary Response, and the
`evidence of record, we determine that Petitioner has established a reasonable
`likelihood of prevailing with respect to the unpatentability of at least one
`claim of the ’526 patent. Accordingly, for the reasons that follow, we
`institute an inter partes review of claims 1–20 of the ’526 patent.
`
`A. Related Matters
`Petitioner indicates that the ’526 patent is the subject of the following
`court proceeding: Synkloud Technologies, LLC v. HP Inc., Case No. 1-19-
`cv-01360 (D. Del. filed July 22, 2019). Pet. 2 (Mandatory Notices).2
`
`
`
`1 Petitioner filed an Updated Mandatory Notice indicating that the name of
`Petitioner has changed from Unified Patents Inc., to Unified Patents, LLC.
`Paper 12, 1.
`2 Petitioner also lists Synkloud Technologies, LLC v. BLU Products, Inc.,
`Case No. 1-19-cv-00553 (D. Del. filed Mar. 22, 2019), which, according to
`Petitioner, asserted the ’526 patent and related patents and was dismissed
`without prejudice on June 19, 2019. Pet. 2 (Mandatory Notices).
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`Petitioner also indicates the following court proceedings as “asserting
`continuation patents sharing [a] common specification with the ’526 Patent”:
`Synkloud Technologies, LLC v. Dropbox, Inc., Case No. 6:19-cv-00526
`(W.D. Tex. filed Sept. 6, 2019), and Synkloud Technologies, LLC v. Adobe
`Inc., Case No. 6:19-cv-00527 (W.D. Tex. filed Sept. 6, 2019). Id. at 1–2.
`The ’526 patent also is the subject of IPR2020-00316, for which a
`decision whether to institute inter partes review has not yet been rendered.
`Microsoft Corporation and HP Inc. v. Synkloud Technologies, LLC,
`IPR2020-00316 (“IPR316”) (PTAB Jan. 20, 2020). In IPR316, Microsoft
`Corporation (“Microsoft”) and HP Inc. (“HP”) filed a petition challenging
`claims 1–20 based on prior art not asserted in the instant Petition. IPR316,
`Paper 1, 5.3
`
`B. The ’526 Patent
`The Specification of the ’526 patent describes how a wireless device
`may use external storage provided by a storage server. Ex. 1001, 1:23–24.
`The ’526 patent aims to address the lack of storage capacity faced by users
`on their wireless devices by allowing a wireless device to use an external
`server for storing and retrieving data. Id. at 2:29–37, 5:1–41. The external
`storage system of the server may be partitioned by dividing it into multiple
`small volumes of storage space, each of which may be exclusively assigned
`to and used by a user of a specific wireless device. Id. at 4:1–31.
`
`
`3 Neither party notified the Board of the IPR316 proceeding. The parties are
`reminded that within 21 days of a change of information listed in mandatory
`notices, that they must update such information. 37 C.F.R. § 42.8.
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`One embodiment describes a “wireless out-band download” approach
`for downloading data from a remote location to an assigned storage volume.
`Id. at 2:8–10, 2:50–53, 5:1–30, Fig. 3.
`Figure 3 is illustrative and is reproduced below.
`
`
`
`Figure 3 shows a “wireless out-band download” approach, which
`includes a sequence of steps for downloading data from a remote web site
`server 15 into an assigned storage volume 11 of external storage system 10
`on server 3. See id. at 2:8–10, 2:50–53, 5:1–30. First, the user of wireless
`device 1 may access remote web server site 15 via web-browser 8 to obtain
`information about the data for downloading (e.g., data name) via path (a).
`Id. at 5:8–12. Second, other software modules 9 of wireless device 1 may
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`obtain the download information for the data, which becomes available in
`cached web-pages on wireless device 1. Id. at 5:13–17. Third, the other
`software modules 9 of wireless device 1 may send obtained download
`information to other service modules 7 of storage server 3 via path (b). Id. at
`5:18–20. Fourth, other service modules 7 may send a web download request
`to remote web site server 15 via path (c) based on the obtained download
`information and receive the downloaded data streams from remote web site
`server 15. Id. at 5:21–26. Lastly, other service modules 7 may write (i.e.,
`store) the data streams to assigned storage volume 11 in server 3 for wireless
`device 1. Id. at 5:27–30.
`The ’526 patent also describes retrieving data from an assigned
`storage volume. Id. at 5:31–41. In one embodiment, the user may use the
`wireless device’s web-browser (with embedded video or music
`functionality) to retrieve and play multimedia data files already stored in the
`assigned storage volume on the server. Id. at 5:33–37. In another
`embodiment, the wireless device may retrieve data from the file system of
`the assigned storage volume on the server. Id. at 5:38–41.
`
`C. Illustrative Claim
`Petitioner challenges claims 1–20 of the ’526 patent. Claims 1 and 11
`are independent claims, and claims 2–10 and 12–20 depend therefrom,
`respectively. Claim 1 is reproduced below, which includes changes made
`per a Certificate of Correction.
`1. A wireless device comprising:
`at least one cache storage, one wireless interface, and program
`code configured to cause the wireless device to:
`establish a wireless link for the wireless device access to a
`storage space of a predefined capacity assigned
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`exclusively to a user of the wireless device by a storage
`server, and
`couple with the storage server across the wireless link to carry
`out a requested operation for remote access to the assigned
`storage space in response to the user from the wireless
`device performing the operation,
`wherein the operation for the remote access to the assigned
`storage space comprises storing a data object therein or
`retrieving a data object therefrom, the storing of a data
`object including to download a file from a remote server
`across a network into the assigned storage space through
`utilizing download information for the file stored in said
`cache storage in response to the user from the wireless
`device performing the operation for downloading the file
`from the remote server into the assigned storage space.
`Ex. 1001, 5:61–6:15.
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–20 are unpatentable based on the
`following grounds (Pet. 1):
`
`Claims Challenged
`1–3, 5–11, 13–20
`1–20
`
`35 U.S.C §
`103(a)4
`103(a)
`
`References
`Prust,5 Major6
`Chaganti,7 Major
`
`
`4 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’526
`patent has an effective filing date before the effective date of the applicable
`AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and
`103.
`5 U.S. Pat. No. 6,735,623 B1, issued May 11, 2004 (Ex. 1006, “Prust”).
`6 WO 02/052785 A2, published July 4, 2002 (“Major”) (Ex. 1007, “Major”).
`7 U.S. Pat. No. 8,117,644 B2, issued Feb. 14, 2012 (Ex. 1008, “Chaganti”).
`Petitioner asserts that Chaganti is a continuation of App. No. 09/634,725
`(“the ’725 application”) (Ex. 1010) and is entitled to the ’725 application’s
`filing date of August 5, 2000. Pet. 45–46 (citing Ex. 1008 (Certificate of
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`II. DISCUSSION
`A. Claim Construction
`In this inter partes review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2019). The claim
`construction standard includes construing claims in accordance with the
`ordinary and customary meaning of such claims as understood by one of
`ordinary skill in the art and the prosecution history pertaining to the patent.
`See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en
`banc).
`
`“storing a data object . . . or retrieving a data object”
`Petitioner proposes that the claim term “comprises storing a data
`object therein or retrieving a data object therefrom” (claims 1, 11) “should
`be construed to mean the operation includes at least one of (i) storing a data
`object therein or (ii) retrieving a data object therefrom.” Pet. 6. Petitioner
`explains that “[t]he plain and ordinary meaning of ‘comprising A or B’ is
`that A and B are alternatives.” Id. at 7 (citing Ex. 1004 ¶ 41; Brown v. 3M,
`265 F.3d 1349, 1352 (Fed. Cir. 2001)). Petitioner contends, nonetheless,
`that each challenge “satisfies both alternatives [showing A (storing) and B
`(retrieving)].” Id. at 7–8.
`Although Patent Owner disputes Petitioner’s construction, and
`proposes the term means both storing and retrieving, Patent Owner argues
`that “this is not the forum for unnecessary exercises in claim construction”
`and that “no claim construction is warranted.” Prelim. Resp. 7–8; see also
`
`
`Correction); Ex. 1011, 2–10, 346–48, 421–59). Patent Owner does not
`dispute this assertion. See generally Prelim. Resp.
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`id. at 7–15. In essence, the parties agree that the construction of the phrase
`is not necessary to resolve the dispute before us.
`For reasons discussed in more detail below, we determine, based on
`the record before us, that Petitioner has demonstrated a reasonable likelihood
`that it would prevail in showing that the challenged claims are unpatentable,
`even under Patent Owner’s proposed construction. Although the proper
`construction of this term may be material to whether Petitioner ultimately
`succeeds in demonstrating unpatentability, our institution decision does not
`depend on resolving this dispute. As our reviewing court has held, “only
`those terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy.” See Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp.
`v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir.
`2017) (citing Vivid Techs. in the context of an inter partes review).
`Accordingly, at this stage of the proceeding, we do not determine
`whether the proper construction of “comprises storing a data object therein
`or retrieving a data object therefrom” means storing a data object and
`retrieving a data object as Patent Owner asserts. The parties are encouraged
`to present arguments in support of their proposed constructions of the claims
`during trial.
`
`B. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
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`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art;8 and (4) when in evidence, objective
`indicia of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`C. Asserted Obviousness of Claims 1–3, 5–11, and 13–20 over
`Prust and Major
`Petitioner contends claims 1–3, 5–11, and 13–20 are unpatentable
`under 35 U.S.C. § 103(a) as obvious over Prust and Major. Pet. 13–44. In
`support of its showing, Petitioner relies upon the declaration of Dr. Darrell
`Long. Id. (citing Ex. 1004). In support of its Preliminary Response, Patent
`Owner relies upon the declaration of Mr. Zaydoon Jawadi (Ex. 2001).
`Prelim. Resp. 5.
`
`1. Prust
`Prust describes a storage system that provides users access over a
`network to a remote storage area. Ex. 1006, 1:6–8, 4:31–49.
`Figure 2 of Prust is illustrative and reproduced below.
`
`
`8 Relying on the testimony of Dr. Darrell Long, Petitioner offers an
`assessment as to the level of ordinary skill in the art and the general
`knowledge of a person of ordinary skill (POSA) at the time of the ’526
`patent. Pet. 8–13 (citing Ex. 1004 ¶¶ 43–64). For example, Dr. Long states
`that “a POSA . . . would have a bachelor’s degree in computer science,
`electrical engineering, or related discipline and two years of experience in
`the relevant technical field.” Ex. 1004 ¶ 45. Patent Owner does not propose
`an alternative assessment. Prelim. Resp. 5. To the extent necessary, and for
`purposes of this Decision, we accept the assessment offered by Petitioner as
`it is consistent with the ’526 patent and the asserted prior art.
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`Figure 2 of Prust shows client computers 205 communicatively coupled over
`global computer network 215 to remote storage network 220 via storage
`servers 2101 . . . N. Id. at 4:34–37, Fig. 2. Client computer may be a pocket-
`sized mobile computer (e.g., hand-held PC or personal digital assistant
`(PDA)) using a wireless connection. Id. at 3:17–20, 3:55–62, Fig. 1.
`Storage network 220 defines a pool of virtual storage areas 2251 . . . N, each of
`which may be allocated exclusively to a particular user. Id. at 4:39–52,
`7:33–48, Fig. 8. The user is able to access its assigned virtual storage area
`via the client computer’s operating system (id. at 5:21–6:19, Figs. 3–5), web
`browser (id. at 5:8–17, 6:33–47, Fig. 6), or email application (id. at 6:48–
`7:13, Fig. 7). Prust describes that a user may access the virtual storage area
`via email by emailing files directly into a specified directory within a virtual
`storage area from a remote network location or including in an email to the
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`storage server a URL that indicates where the storage server can retrieve the
`data file to be stored. Id. at 6:62–7:4.
`
`2. Major
`Major describes a system and method for browsing content on the
`World Wide Web (WWW) using a wireless device. Ex. 1007, 1:6–7, 15:16–
`22, 34:5–7.9 In a disclosed embodiment, the memory of the wireless device
`includes a page cache for storing rendered page objects. Id. at 6:1–4, 16:1–
`5, 24:9–11, Fig. 5. If a page object corresponding to a requested URL is in
`the page cache, it can be loaded from the page cache and displayed by the
`browser very quickly (e.g., upon start-up or following a subsequent user
`request). Id. at 10:7–10, 11:12–14, 18:8–15.
`
`3. Discussion
`Claim 1 recites “[a] wireless device comprising: at least one cache
`storage, one wireless interface, and program code configured to cause the
`wireless device to.” Petitioner contends Prust teaches “[a] wireless device
`comprising . . . one wireless interface” because Prust discloses a PDA and
`describes using a modem for making a wireless connection. Pet. 19 (citing
`Ex. 1006, 3:2–3, 3:17–20, 3:55–62, 4:34–41, 4:51–52, Figs. 1, 2; Ex. 1004
`¶¶ 76–77), see also id. at 22 (citing Ex. 1004 ¶ 82). Petitioner contends
`Prust does not explicitly disclose, but at least renders obvious, “at least one
`cache storage” by referencing a “conventional web browser.” Id. at 20
`(citing Ex. 1006, 6:21–23, 34; Ex. 1004 ¶¶ 78–81). For example, Petitioner
`contends that disclosing a “conventional web browser” taught using local
`memory to store web pages visited, since nearly all web browsers did that.
`
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`9 Citations are to original page numbers.
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`Id. (citing Ex. 1004 ¶ 80); see id. at 10–11. Petitioner also contends that
`Major teaches cache storage and that “it would have been obvious to
`implement the wireless device taught by Prust with Major’s web-cache
`teachings.” Id. at 20–21 (citing Ex. 1006, Abstract; Ex. 1007, 3:20–25,
`11:12–16, 16:1–5, 22:4–6, 34:5–7, Fig. 5). Petitioner contends Prust teaches
`“program code configured to cause the wireless device to” operate as
`claimed because Prust discloses a processor, a system memory, an operating
`system executing software applications and carrying out instructions issued
`by the user, and conventional communication applications and utilities for
`accessing virtual storage. Id. at 22 (citing Ex. 1006, 1:37–45, 3:3–6, 4:63–
`5:3, 5:7–17, 5:21–6:19, 6:21–25, 6:33–7:14, Figs. 1, 3, 4, 6, 7).
`Patent Owner does not contest Petitioner’s showings with respect to
`the above elements of claim 1. See generally Prelim. Resp. 15–36.
`Claim 1 further recites “establish a wireless link for the wireless
`device access to a storage space of a predefined capacity assigned
`exclusively to a user of the wireless device by a storage server.” Petitioner
`contends Prust teaches this claim element because Prust discloses a client
`computer communicatively coupled over a global network to storage servers
`such that a user may easily access remote storage areas. Pet. 23 (citing Ex.
`1006, Abstract, 1:34–36, 3:17–20, 3:55–62, 4:34–37, Figs. 1, 2; Ex. 1004
`¶¶ 86–87). Petitioner explains that the storage space is “assigned
`exclusively to a user” and “by a storage server” because Prust discloses that
`its virtual storage areas may be individually assignable to different users and
`requested by the user from the storage server. Id. at 24 (citing Ex. 1006,
`4:37–50, 7:33–48, Figs. 2, 8). Petitioner further explains that Prust teaches a
`“predefined capacity” of storage because Prust discloses “allocating” storage
`to the user, which a person of ordinary skill in the art understood to mean
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`reserve a sufficient amount of memory. Id. at 25 (citing Ex. 1006, 4:46,
`7:33–44; Ex. 1004 ¶ 90). Petitioner contends that Prust describes, like the
`’526 patent, that the storage was on a redundant array of independent disks
`(RAID), and that a person having ordinary skill in the art would have
`understood that using RAID would include assigning storage in predefined
`amounts sufficient to ensure the redundancy and fault recovery benefits for
`users of finite space of the RAID array. Id. (citing Ex. 1001, 1:41–44;
`Ex. 1006, 2:49–51, 4:37–41; Ex. 1004 ¶ 90). Petitioner further contends that
`Prust teaches setting up the user’s account with a billing address, indicating
`payment for storage as a service that would be dependent upon the quantity
`of space. Id. (citing Ex. 1006, 4:41–50, 4:46, 7:33–48, Fig. 8 (steps 803–
`809); Ex. 1004 ¶ 90). Petitioner contends that to the extent Prust does not
`disclose predefined capacity, it would have been obvious to a person having
`ordinary skill in the art to allocate a predefined capacity of storage on a fee
`basis. Id. at 25–26 (citing Ex. 1004 ¶ 91).
`Patent Owner argues that Petitioner has failed to show that Prust,
`Major, or their combination, meets the “predefined capacity” limitation.
`Prelim. Resp. 27–29. In particular, Patent Owner asserts that “predefined
`capacity” means “defined before, in this case, allocating storage to users of
`the storage space.” Id. at 27 (citing Ex. 2001 ¶¶ 112–113). Patent Owner
`argues that Prust’s disclosure of reserving a sufficient amount of memory by
`allocating storage to the user differs from a “predefined capacity” because
`“reserved storage is not allocated in advance,” as the claim element requires.
`Id. at 28 (citing Ex. 2001 ¶¶ 115–116). Patent Owner also contests Prust’s
`disclosure of a RAID configuration of storage because “RAID was used to
`make an array of disk drives act as a single storage unit.” Id. (citing Ex.
`2001 ¶¶ 118–119). Patent Owner further asserts that Prust’s “pay for space”
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`disclosure is deficient because it calls for the user to request the specific
`amount of storage and pay for it, whereas the claim requires the server to
`determine the volume of the storage. Id. at 28–29 (citing Ex. 2001 ¶¶ 121–
`122).
`
`Prust describes that storage network 220 is comprised of one or more
`storage devices, such as a RAID, for storing files. Ex. 1006, 4:37–39. “The
`storage network 220 defines a pool of virtual storage areas 225 that can be
`individually assignable to different users.” Id. at 4:39–41 (emphasis added).
`A user accesses storage server 210 and requests virtual storage area 225. Id.
`at 4:41–43. A reasonable reading of Prust indicates that the storage areas are
`defined before a user requests such storage area (“predefined capacity”).
`We disagree, therefore, with Patent Owner’s argument that Prust’s
`description is dissimilar to the ’526 patent’s description of partitioning (e.g.,
`defining) its storage system into specific volumes, followed by assigning to
`a user a specific storage volume. Prelim. Resp. 28 (citing Ex. 1001, 2:39–
`43).
`
`The above determination regarding what Prust describes is further
`supported by Petitioner’s showing that a person having ordinary skill in the
`art would have understood that Prust’s use of RAID “would include
`assigning storage in predefined amounts sufficient to ensure the redundancy
`and fault recovery benefits for the users of the finite space of the RAID
`array.” Pet. 25 (citing Ex. 1004 ¶ 90). We have considered Patent Owner’s
`arguments that RAID was used to make an array of disk drives act as a
`single storage unit. Prelim. Resp. 28 (citing Ex. 2001 ¶¶ 118–119; Ex.
`2003). But even Patent Owner’s proposed dictionary definition of RAID
`seems to support Petitioner’s notion that the use of RAID would necessarily
`include predefining the amounts of storage in order to know (or ensure) the
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`amount of redundant memory needed. Ex. 2003, 437 (“All the information
`stored on each of the disks is duplicated on other disks in the array. This
`redundancy ensures that no information will be lost if one of the disks
`fails.”).
`Finally, the above determination regarding what Prust describes is
`further supported by Petitioner’s showing regarding what a person having
`ordinary skill in the art would have understood from Prust’s description of
`“billing address.” Pet. 25. In particular, Prust describes, prior to approval
`and allocation of storage space 225, obtaining from the user a billing
`address. Ex. 1006, 4:43–46; 7:33–48, Fig. 8. We agree with Petitioner,
`based on the record before us, that receiving a billing address would indicate
`payment for storage as a service, which would include a price-dependent
`quantity of space (predefined capacity such as 225 that is defined prior to
`allocating the storage). Pet. 25. Patent Owner argues that it could be that in
`Prust the user determines the storage capacity by requesting a specific
`amount of storage and then pays a corresponding price for that storage.
`Prelim. Resp. 28–29 (citing Ex. 2001 ¶¶ 121–122). Prust, however, does not
`describe that it is the user that determines the storage capacity when it makes
`a request. Therefore, based on the current record before us, we are not
`persuaded by this argument.
`
`Lastly, Petitioner explains that to the extent Prust does not describe
`“predefined capacity,” it would have been obvious to allocate a predefined
`capacity of storage on a fee basis to manage finite storage resources among
`paying users to achieve the predictable benefits of ensuring a sufficient level
`of storage for a customer base, ensuring the reliability of RAID storage. Pet.
`25–26 (citing Ex. 1004 ¶ 91). Petitioner’s showing is reasonable, and Patent
`Owner, at this time, does not fully address this assertion made by Petitioner.
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`Claim 1 further recites “couple with the storage server across the
`wireless link to carry out a requested operation for remote access to the
`assigned storage space in response to the user from the wireless device
`performing the operation.” Petitioner contends Prust teaches this claim
`element with its disclosures of (1) a user accessing the virtual storage area
`using a client computer communicatively coupled to the storage servers and
`(2) steps performed by the user at the client computer to store or retrieve
`data files. Pet. 26–27 (citing Ex. 1006, 1:34–36, 4:34–37, 5:7–17, 6:20–24,
`6:48–7:13, Figs. 3, 4, 6, 7; Ex. 1004 ¶¶ 93–102); see id. at 27–29.
`Patent Owner argues that Petitioner has failed to show that Prust,
`Major, or their combination, describes or enables “coupling” to promote
`storage and retrieval. Prelim. Resp. 29–31 (citing Ex. 2001 ¶¶ 125–130,
`137–150). Patent Owner’s arguments are not commensurate in scope with
`claim 1. Despite Patent Owner and Mr. Jawadi urging that “coupling”
`means an apparent direct linking between the wireless device and the storage
`server (id. at 30 (citing Ex. 2005; Ex. 2001 ¶ 126)), claim 1 does not recite
`“coupling” via a direct link between the wireless device and the storage
`server. Patent Owner has not directed us to intrinsic evidence regarding the
`meaning of “couple” to support such a narrow construction. Indeed, we
`cannot find anything in the Specification of the ’526 patent outside of the
`claims that defines, explains, or even mentions the word “couple” or
`“coupling” that would lead us to determine “couple” means something other
`than the ordinary and customary meaning of that term.10 Indeed, it is settled
`
`
`10 We have considered Patent Owner’s extrinsic evidence in the form of a
`definition for “coupling.” Ex. 2005. The definition does not support a direct
`connection, but only “linking of a system’s components to form a
`relationship.” Id.
`
`16
`
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`IPR2019-01655
`Patent 9,098,526 B1
`
`
`that “coupled to” generally means that direct connection is not required.
`See, e.g., Bradford Co. v. Conteyor N. Am., Inc., 603 F.3d 1262, 1270−71
`(Fed. Cir. 2010).
`Moreover, Patent Owner’s arguments are focused on Prust’s email
`embodiment. Prelim. Resp. 30. But Petitioner alternatively relies on Prust’s
`other embodiments of exchanging data objects using a conventional web
`browser or the user device’s operating system to meet this limitation. Pet.
`27–29; see id. at 35–38, 43–44. Further, claim 1 does not preclude an email
`exchange between a wireless device and storage server for retrieving or
`storing a data object as Patent Owner argues. Prelim. Resp. 30–31 (citing
`Ex. 2001 ¶¶ 125–129). Such an email exchange between a storage server
`and a wireless device to ultimately retrieve or store a data object is within
`the scope of claim 1.
`Claim 1 further recites
`wherein the operation for the remote access to the assigned
`storage space comprises storing a data object therein or
`retrieving a data object therefrom, the storing of a data object
`including to download a file from a remote server across a
`network into the assigned storage space through utilizing
`download information for the file stored in said cache storage in
`response to the user from the wireless device perform[ing] the
`operation for downloading the file from the remote server into
`the assigned storage space.
`According to Petitioner, only one of “storing a data object therein or
`retrieving a data object therefrom” needs to be satisfied to meet the claim
`element. See Pet. 30. Thus, Petitioner contends Prust teaches the claim
`element in full because Prust teaches “retrieving a data object” from “the
`assigned storage space” with its disclosure of copying, downloading, or
`retrieving data files from storage using the client computer’s operating
`
`17
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`IPR2019-01655
`Patent 9,098,526 B1
`
`
`system, web browser, or email application. Id. (citing Ex. 1006, 5:28–31,
`6:43–46, 7:4–6; Ex. 1004 ¶¶ 103–105).
`Despite arguing that the wherein limitation of claim 1 is satisfied by a
`showing of retrieving an object, Petitioner also contends that Prust teaches
`storing a data object. Pet. 31. In particular, Petitioner contends that “storing
`a data object” is also satisfied by Prust in view of Major “in at least two
`contexts: (i) Prust’s out-of-band initiating email, and (ii) causing an out-of-
`band download using Prust’s web-browser or operating system access
`methods.” Id. at 31, see also id. at 31–38 (citing Ex 1004 ¶¶ 106–124).
`Petitioner explains that “Prust’s storage server 210 utilized the URL (i.e.
`download information) to download the file ‘across a network’ from the
`remote server pointed to by the URL, storing the file in the assigned virtual
`storage area specified in the user’s email.” Id. at 32, see also id. at 31–32
`(citing Ex. 1006, 6:48–7:4, Fig. 7; Ex. 1004 ¶ 108). Petitioner also explains
`that “storage server 210 downloaded the file ‘in response to’ the user
`performing a download operation from client computer 205, namely, the
`user sending the email instructing download from the URL.” Id. (citing Ex.
`1006, 6:48–7:4, Fig. 7; Ex. 1004 ¶ 109). Additionally, for reasons similar to
`those discussed above for “at least one cache storage,” Petitioner asserts that
`Prust in view of Major teaches download information for the file “stored in
`said cache storage.” Id. at 32–35. Petitioner further explains that
`once a POSA knew––as taught by Prust––that Prust’s remote
`storage server could receive an instruction by email to initiate
`an out-of-band download, and recognized that Prust supported
`drag-and-drop, a POSA would recognize that other common
`operations such as copy-and-paste would likewise be suitable
`for providing the remote server with the URL to effect an out-
`of-band download in the same way as the email would.
`
`18
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`IPR2019-01655
`Patent 9,098,526 B1
`
`
`Id. at 37–38 (citing Ex. 1004 ¶ 121, Ex. 1008, 20:11–20, Ex. 1010, 29:29–
`30:5), see id. at 35–38.
`
`Patent Owner argues that Petitioner has failed to show that Prust,
`Major, or their combination, teaches “utilizing download information for the
`file stored in said cache storage,” as recited in claim 1. Prelim. Resp. 20–27.
`Patent Owner’s arguments are premised on Petitioner relying exclusively on
`the technique of “copy-and-paste” to satisfy this claim element. Id.
`Petitioner, however, does not rely solely on the technique of “copy-and-
`paste.” For example, Petitioner explains that the URL in the email message
`may be typed or copied. See, e.g., Pet. 33 (explaining that the URL would
`have been typed or copied into Prust’s email). Thus, Patent Owner’s
`arguments are not persuasive.
`In any event, we are not persuaded by Patent Owner’s arguments
`regarding “copy-and-paste.” Petitioner explains, with supporting evidence,
`for example, that “PDAs in the 2003 timeframe supported copying-and-
`pasting as a conventional feature and using such conventional feature
`beneficially avoided the nuisance of the user having to precisely type a URL
`into the email of Prust.” Pet. 34–35 (referring back to §V.B.2 of the
`Petition); Ex. 1004 ¶ 114. For instance, Petitioner relies on Exhibit 1020, a
`copy of a 1999 Microsoft Computer Dictionary definition of “copy” which
`supports Petitioner’s assertions that co
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