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`Paper _____
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`UNIFIED PATENTS INC.,
`Petitioner
`
`v.
`
`SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner
`________________
`
`Case No. IPR 2019-01655
`
`Patent No. 9,098,526
`________________
`
`
`
`PATENT OWNER’S RESPONSE
`PURSUANT TO 37 C.F.R. §42.120
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`
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`
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`TABLE OF CONTENTS
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`TABLE OF CONTENTS
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`TABLE OF AUTHORITIES
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`LIST OF EXHIBITS
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`EVIDENCE RELIED UPON
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`CLAIM CONSTRUCTION
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`I.
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`II.
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`A. Storing a Data Object Therein or Retrieving a Data Object
`Therefrom
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`B. Predefined Capacity
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`C. Coupling
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`III. PRUST IN VIEW OF MAJOR DOES NOT RENDER THE CLAIMS
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`OF THE ‘526 PATENT OBVIOUS
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`A. Each of the Challenged Claims Requires Utilizing Download
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`Information for the File Stored in (said) Cache Storage
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`B. One Would Not Modify Prust to Feature a Cache
`C. One of Skill Could Not “Utilize Download Information” from
`The Cache
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`D. Each of the Challenged Claims Require a Storage Space of
`Predefined Capacity Assigned Exclusively to a User of the
`Wireless Device by a Storage Server
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`E. Each of the Challenged Claims Requires Coupling of the
`Wireless Device with the Storage Server
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`F. Claims 3 and 20 Require a Plurality of Storage Devices, Not
`Virtual Storage Areas or Devices
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`G. Prust and Major Are Not Properly Combinable
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`IV. CHAGANTI IN VIEW OF MAJOR DOES NOT RENDER THE
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`CLAIMS OBVIOUS
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`A. Chaganti in View of Major Does Not Render Utilizing Download
`Information Obvious
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`ii
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`ii
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`iv
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`vii
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`6
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`7
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`7
`9
`11
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`13
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`13
`14
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`17
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`24
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`28
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`30
`31
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`36
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`37
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`B. Chaganti and Major Together Do Not Disclose a Predefined
`Capacity Set by the Server
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`C. Dependent Claims 3, 4, 6, 7, 10, 12, 13, 14, 15 and 20
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`Specifically Define Over Chaganti Taken in View of Major
`D. One of Skill in the Art Would Not Combine Chaganti and Major
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`
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`THE ‘526 PATENT IS SUPPORTED BY SECONDARY INDICIA
`OF NON-OBVIOUSNESS
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`42
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`43
`46
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`49
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`V.
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`iii
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`TABLE OF AUTHORITES
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`PAGE NO.
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`CASES
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`Akzo Nobel Coatings, Inc. v. Dow Chemical Co.,
`
`811 F.3d 1334 (Fed. Cir. 2016)
`
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`Allergan, Inc. v. Sandoz Inc.,
`
`796 F.3d 1293 (Fed. Cir. 2015)
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`Apple Inc. v. International Trade Com’n,
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`725 F.3d 1356 (dissent) Fed. Cir. 2013)
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`Arctic Cat Inc. v. Bombardier Recreational Products, Inc.,
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`876 F.3d 1350 (Fed. Cir. 2017)
`
`
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`Brookhill-Wilk 1, LLC, v. Intuitive Surgical, Inc.,
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`334 F.3d 1294 (Fed. Cir. 2003)
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`Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc.,
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`807 F.2d 955 (Fed. Cir. 1988)
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`
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`Demaco Corp. v. F. Von Langsdorff Licensing Ltd.,
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`51 F.2d 1387 (Fed. Cir. 1988)
`
`
`Graham v. John Deere Co.,
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`383 US 1, 86 S.Ct. 684, 15 L.Ed.2d 545, 148 USPT459 (1966)
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`Hockerson-Halberstadt, Inc. v. Converse Inc.,
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`183 F.3d 1369 (Fed. Cir. 1999)
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`In re Cyclobenzaprine Hydrochloride Extended Release Capsule
`Patent Litigation,
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`676 F.3d 1063 (Fed. Cir. 2012)
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`In re Dembiczak,
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`175 F.3d 999, 50 USPQ2d 1617
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`9
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`32
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`50
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`32
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`10
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`49
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`49
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`49
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`11
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`51
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`2,5,48
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`iv
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`
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`In re Gurley,
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`27 F.3d 551 (Fed. Cir. 1994)
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`In re Kotzab,
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`217 F.3d 1365 (Fed. Cir. 2000)
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`In re Rouffet,
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`149 F.3d 1350 (Fed. Cir. 1998)
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`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
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`688 F.3d 1342 (Fed. Cir. 2012)
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`Lindemann Maschinenfabrik GmbH v. American Hoist & Derrick Co.,
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`730 F.2d 1452, 221 USPQ 481 (Fed. Cir. 1984)
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`
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`Medichem, S.A. v. Rolabo, S.L.,
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`437 F.3d 1157 (Fed. Cir. 2006)
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`Merck & Co. v. Teva Pharm. USC, Inc.,
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`395 F.3d 1364 (Fed. Cir. 2005)
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`Panduit Corp. v. Dennison Mfg. Co.,
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`7810 F.2d 1561 (Fed. Cir. 1987)
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`PAR Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc.,
`773 F.3d 1186 (Fed. Cir. 2014)
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`
`
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`Personal Web Technologies, LLC v. Apple, Inc.,
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`848 F.3d 987 (Fed. Cir. 2017)
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`PharmaStem Therapeutics, Inc. v. ViaCell, Inc.,
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`491 F.3d 1342 (Fed. Cir. 2007)
`
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`Power Integrations, Inc. v. Fairchild Semiconductor Int’l., Inc.,
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`711 F.3d 1348 (Fed. Cir. 2013)
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`
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`Power Mosfet Techs., L.L.C. v. Siemens AG,
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`378 F.3d 1396 (Fed. Cir. 2004)
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`32
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`2
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`51
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`44
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`49
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`20
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`9
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`3
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`20
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`19
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`21
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`51
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`9
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`v
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`21
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`32
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`1,31,36
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`
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`1
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`Senju Pharmaceutical Co. v Lupin Ltd.,
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`780 F.3d 1337 (Fed. Cir. 2015)
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`W.L. Gore & Assocs., Inc. v. Garlock, Inc.,
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`721 F.2d 1540 (Fed. Cir. 1983)
`
`
`STATUTES
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`35 U.S.C. §103
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`37 C.F.R. §42.120
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`vi
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`LIST OF EXHIBITS
`
`Description
`Exhibit
`Ex. 2007 The Second Declaration of Jawadi
`Ex. 2008 Excerpt from BBC News of July 16, 2018 (How Two Strangers Set Up
`Dropbox and Made Billions)
`Ex. 2009 Web Caching, Duane Wessels, O’Reilly Media, 2001
`Ex. 2010 Microsoft Computer Dictionary, 5th Edition, 2002
`Ex. 2011 License Agreement (submitted under seal)
`Ex. 2012 Modified Protective Order
`
`
`
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`vii
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`Pursuant to the provisions of 37 C.F.R. § 42.120, Patent Owner responds to
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`the Petition seeking Inter Partes Review of U.S. Patent No. 9,098,526 ( hereinafter
`
`“ the ‘526 Patent”) asserting at least some of Claims 1–20 of the ‘526 Patent to be
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`obvious over either one of two different combinations of references, 35 U.S.C.
`
`§103. Patent Owner Synkloud Technologies, LLC (“PO” herein) responds in light
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`of the Decision of the Patent Trial and Appeal Board dated March 19, 2020 and the
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`Scheduling Order provided therewith. This Response is filed together with a
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`Motion to Seal certain confidential information submitted by PO in support of its
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`position that the claims of the ‘526 Patent are not obvious over the references cited.
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`The nature of that information is addressed herein, and in the Motion to Seal.
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`PO respectfully submits that the Decision of March 19, 2020 (“Decision”
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`herein) makes it clear that the combination of references relied upon, U.S. Patent
`
`No 6,735,623 (“Prust”) in view of Patent Publication WO 02/052785 (“Major”)
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`(with respect to Claims 1-3, 5-11 and 13–20) and U.S. Patent No. 8,117,644
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`(“Chaganti”) in view of Major (with respect to Claims 1–20) do NOT disclose all
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`the elements of the challenged claims. Instead, the Decision consistently cites to
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`and relies on statements excerpted from the Declaration of Long submitted by
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`Petitioner as Exhibit 1004 to seek to establish the prior art knowledge of the recited
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`elements of Claims 1–20 of the ‘526 Patent. Respectfully, PO submits that the
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`reliance on assertions as to the prior art knowledge of those of skill in the art as to
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`
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`1
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`
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`the specific elements of the challenged claims, in addition to the ability of those of
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`skill in the art to combine and extend those teachings, slips easily into the error of
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`hindsight reconstruction which is always an issue when a patent is challenged by
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`reliance on generalized assertions of knowledge some eighteen (18) years after its
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`filing date. In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000) (“Whether the
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`Board relies on an express or an implicit showing, it must provide particular
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`findings related thereto. See, In re Dembiczak, 175 F.3d at 999, 50 USPQ2d at
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`1617. Broad conclusory statements standing alone are not “evidence.” Id.)
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`While each of the asserted grounds of obviousness are addressed
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`hereinbelow, and separate claims are discussed separately, PO provides specific
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`examples of the reliance on general assertions of the knowledge of skill in the art
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`(in place of disclosure of the elements of the claim) in the Decision: See, for
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`example, the Decision at pp. 19–20 which accepts Petitioner’s assertion that a
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`widespread knowledge of how to use “copy-and-paste” techniques by those of
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`ordinary skill in the art would have taught the requirement of the ‘526 Patent
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`claims that call for “utilizing download information for the file stored in said cache
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`storage” even though, as argued in PO’s Preliminary Response, neither Prust nor
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`Major, the references relied upon, teaches, calls for or even suggests utilization of
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`any “copy and paste” technique. Instead, the Board accepted the assurance of Long
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`that those of skill in the art would have known this element and employed it in
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`2
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`combination with the structural elements of the claims, though that requirement is
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`nowhere taught in either reference relied upon. “We are not persuaded by such
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`argument, because neither Patent Owner nor Mr. Jawadi consider the purported
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`knowledge of a person of ordinary skill in the art at the time of the invention.”
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`
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`
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`Decision, pp. 19-20. Respectfully, this inverts the traditional role of the knowledge
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`of those of skill in the art.
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`It is proper and conventional to rely on the level of skill in the art to arrive at
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`the motivation and inspiration on how to combine the elements of a claim taught in
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`separate references. PO respectfully submits that extending this to reliance entirely
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`on the asserted level of skill in the art to provide essential elements of the claims
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`lends itself to hindsight error. Panduit Corp. v. Dennison Mfg. Co., 7810 F.2d
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`1561, 1577 (Fed. Cir. 1987):
`
`The district court improperly dismissed the novel structural claim
`limitations that defined the disposition, positioning, relationship, and
`operation of the elements in the claims. The ignored claim limitations,
`however, define crucial structural elements of the invention as a
`whole, and clearly distinguish (and bind the inventor to the
`distinction) the whole claimed device from those in prior patents. The
`prosecution history and the 15 prior patents cited in the PTO establish
`that no claim was allowed on the mere presence of multiple “teeth”, or
`of a “hinge”, or of a “ledge”. The claims, with their present detailed
`content, resulted from extensive interaction with the Patent Examiner.
`The district court pointed to nothing in the prior art that suggested any
`of the claimed constructions.
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`As in Panduit, Petitioner’s assurance, accepted by the Board without
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`
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`exemplification, of the widespread knowledge and use of “copy-and-paste”
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`3
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`techniques is easily accepted because in 2019, that knowledge WAS widespread.
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`In 2003, it was not so widely employed. None of the ‘526 Patent, Prust or Major
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`even refers to “copy-and-paste.” This is contrary to our practice.
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`This problem recurs. Reference to the Decision at p. 28 shows that the
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`Board characterizes the Chaganti disclosure as indicating that there is a service
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`computer that “allows users to use the server to create, maintain, and operate the
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`personal library” (Decision, p. 28) and then challenges PO to explain why that
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`description does “not meet the disputed limitation” when, as explained in the
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`Preliminary Response and the Declaration of Jawadi (Ex. 2001) the disputed
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`limitation requires the server, not the user, to assign a predefined capacity for
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`storage. It is only the Declaration of Long that suggests that changing the agent
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`acting from the user to the storage server would be obvious to those of skill in the
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`art.
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`While each essential claim limitation in dispute is addressed separately,
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`below, in light of the evidence of record and the Second Declaration of Jawadi (Ex.
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`2007) and the additional evidence submitted herewith, PO notes that the burden
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`imposed is to show that the prior art references relied upon, as they would be
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`understood by those of skill in the art, demonstrate the elements of the challenged
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`claims in the fashion recited, not to demonstrate that those of skill in the art, were
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`aware of the structural elements of the claims without showing the same in the
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`4
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`references. This inevitably invites hindsight reconstruction, when the claims were
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`originally presented so many years ago. “In cases in which “common sense” is
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`used to supply a missing limitation, as distinct from a motivation to combine,
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`moreover, our search for a reasoned basis for resort to common sense must be
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`searching. And, this is particularly true where the missing limitation goes to the
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`heart of an invention.” In re Dembiczak, 175 F. 3rd at 999.
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`5
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`I.
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`NATURE OF THE EVIDENCE RELIED UPON
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`PO‘s Preliminary Response relied on Exhibits 2001–2006. PO renews its
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`reliance thereon and further relies on the following evidence:
`
`Exhibit 2007
`
`The Second Declaration of Jawadi
`
`Exhibit 2008
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`Excerpt From BBC News of July 16, 2018 (how two
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`strangers set up Dropbox and made billions)
`
`Exhibit 2009
`
`Web Caching. Duane Wessels, O’Reilly Media, 2001
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`Exhibit 2010
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`Microsoft Computer Dictionary, 5th Edition, 2002
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`Exhibit 2011
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`Patent License Agreement (submitted under seal and
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`addressed in PO’s Motion to Seal
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`Exhibit 2012
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`Modified Protective Order
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`The evidence relied upon by PO is, for the main part, the straightforward
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`evidence that one of skill in the art would expect – literature addressing, in one
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`fashion or another, the field of computer technology. PO also submits a License
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`Agreement, under seal, as evidence of the non-obviousness of the Patent so
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`licensed, U.S. Patent 9,098,526.
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`6
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`II. CLAIM CONSTRUCTION
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`The Decision of March 19, 2020 raises several issues of claim construction
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`that PO submits may influence or direct a determination of non-obviousness. Each
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`of these is discussed below.
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`
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`
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`A.
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`Storing a Data Object Therein or Retrieving a Data Object
`Therefrom
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`In PO’s Preliminary Response, PO expressed its position that the recitation
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`in the claims reciting “wherein the operation for the remote access to the assigned
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`storage space comprises storing a data object therein or retrieving a data object
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`therefrom…” would have been understood by one of skill in the art in 2003 to
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`require that the invention be able to perform both storing a data object as well
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`retrieving a data object. Clearly, while both operations need not occur
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`simultaneously, the system described is useful only insofar as it provides for both
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`data storage and data retrieval – unlike, for example, the system of Prust which
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`provides for data storage, but requires the intervention of another to achieve data
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`retrieval. (This is referred to as the “email option” in the Decision.)
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`The Board found it unnecessary to resolve proper construction of this term,
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`as it found Petitioner likely to succeed in demonstrating the challenged claims
`
`were unpatentable “even under Patent Owner’s proposed construction.” Decision,
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`p. 8. As noted there, the proper construction of this term may be critical to the
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`required showing of unpatentability, and accordingly, PO requests its construction
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`
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`
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`7
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`be resolved.
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`While the claims are taken as a whole, a specific and far reaching aspect of
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`the device and program code claimed in the ‘526 Patent is the ability to perform
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`“out-of-band” downloading –sending a request to the server to download a file
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`based on download information, for example, identified by a URL/hypertext that
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`points to the file in question. See the ‘526 Patent, e.g., Fig. 3 and Col. 5, ll. 1–41.
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`As described therein, the operation of the claimed invention requires both storing a
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`data object and retrieving a data object. Petitioner’s argument rests on grammatical
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`analysis of the word “OR”, not the understanding one of skill in the art would
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`have, reading the ‘526 Patent. See Exhibit 2007, ¶¶ 217–218. That artisan would
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`have recognized that although the grammar structure in the claims may not be
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`perfect, the inventor (this application was prosecuted pro se) clearly intended to
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`claim both a device and software where the act of storing a data object is as
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`necessary as the act of retrieving a data object – both are required. Exhibit 2007,
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`¶218.
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`Indeed, to interpret the claim to conclude that the device and software
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`invention disclosed is satisfied by either storing or retrieving not only goes
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`contrary to the intent of the drafter, but contravenes a fundamental rule of claim
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`construction, in that it renders the “storing” aspect of the claim superfluous and
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`unnecessary. Exhibit 2007, ¶¶218–219. It is in general contrary to our law and
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`8
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`practice to construe a provision in a patent claim to be superfluous or unnecessary
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`absent a clear and uncontroverted indication in the file history that this is indeed
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`the case. Akzo Nobel Coatings, Inc. v. Dow Chemical Co., 811 F.3d 1334, 1340
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`(Fed. Cir. 2016) citing Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364,
`
`1372 (Fed.Cir.2005) (“A claim construction that gives meaning to all the terms of
`
`the claim is preferred over one that does not do so.”) and Power Mosfet Techs.,
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`L.L.C. v. Siemens AG, 378 F.3d 1396, 1410 (Fed.Cir.2004) (“[I]nterpretations that
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`render some portion of the claim language superfluous are disfavored.”).
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`Accordingly, because, as discussed below, the combination of Prust and
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`Major or Chaganti and Major does not disclose a device or software that provides
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`for both retrieval and storage of a data object like, and no other construction is
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`consistent with the specification and the rules of proper construction, PO
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`respectfully submits the claim term “storing a data object therein or retrieving an
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`object therefrom” should be construed to indicate, as one of skill in the art would
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`have understood it, to call for that device or software to provide for storage and
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`retrieval.
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`B.
`
` Predefined Capacity
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`Each claim presented recites the feature of a “storage space of a predefined
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`capacity assigned exclusively to the user of the wireless device by a storage
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`server.” While this limitation reflects the use of common words in an ordinary
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`9
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`structure, a review of the Petition and the Decision suggests that there is a lack of
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`clarity about precisely what is required by this term. Thus, it is the storage server –
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`not the user – that must determine in advance – predefine – the amount of storage
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`(capacity) that is assigned exclusive to the user. This seems to be confused in the
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`Petition with allocating or assigning storage. Ex. 2007, ¶¶ 159, 160. Importantly,
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`because the server assigns the storage space to the user before the user is provided
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`any access (the space is predefined) the amount of storage that will be made
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`available or allocated to any given user is set or predefined before allocated. Ex.
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`2007, ¶¶ 161 – 165.
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`Any construction of “predefined capacity” that suggests the capacity, that is
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`the amount of storage available to a single user exclusively, is set either by the
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`user, or is defined by an exchange between the user and the server, is inconsistent
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`with the claim term and specification – that capacity, that amount of storage that
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`will be assigned exclusively to one user, is defined in advance, before the server is
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`contacted. Ex. 2007, ¶¶163 – 164. As observed by Jawadi, Ex. 2007 ¶161, to
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`construe the term predefined capacity to suggest the amount of storage to be
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`allocated to a user is the subject of an exchange or a variable determined through
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`contact between the user and the server would be defined capacity, not predefined.
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`As noted by the Court in Brookhill-Wilk 1, LLC. v. Intuitive Surgical, Inc., 334
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`F.3d 1294, 1300 (Fed. Cir. 2003) “while certain terms may be at the center of the
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`10
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`claim construction debate, the context of the surrounding words of the claim also
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`must be considered in determining the ordinary and customary meaning of those
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`terms. See Hockerson–Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374,
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`(Fed. Cir. 1999).” PO respectfully submits that the “predefined capacity” feature of
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`the claims should be construed to mean the server assigns an amount of storage,
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`storage to be assigned exclusively for one user, that amount having been set in
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`advance of any interaction or negotiation between the server and the user.
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`C. Coupling
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`Each of the claims of the ‘526 Patent requires that the invention be
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`configured such that the wireless link with the storage server be provided such that
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`the storage server is coupled so as to carry out “a requested operation for remote
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`access to the assigned storage space in response to the user.” As above, the term
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`“couple” is characterized not just by the ordinary meaning of the single word, but
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`by the meaning of the phrase in which it is featured. The Decision focuses on
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`whether the coupling required of the claims is “an apparent direct linking between
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`the wireless device and the storage server” citing to the Preliminary Response at p.
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`30. Decision, p. 16. With respect, nowhere does the Preliminary Response, nor the
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`Declaration it relies on, argue or advance the proposition that the linkage between
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`the server and wireless device is or must be “direct.”
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`Rather, PO respectfully submits that the interaction between the storage
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`11
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`server and the user of the invention, to satisfy the coupling requirement of the
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`claims, must be linked to form a relationship such that the coupled system is
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`efficient, effective and interactive. This, not the presence or absence of a direct
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`linkage, is the focus of the specification of the ‘526 Patent. See, ‘526 Patent, in the
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`abstract, at 2:3–56 and 3:3–6, as well as the Second Declaration of Jawadi, Ex.
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`2007, ¶¶ 204–205. Whether direct or indirect, the requirement that these be
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`coupled in the claims of the ‘526 Patent would have been understood to describe a
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`linkage that promotes efficient, effective and interactive communication.
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`12
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`III. PRUST IN VIEW OF MAJOR DOES NOT RENDER THE CLAIMS
`OF THE ‘526 PATENT OBVIOUS
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`Petitioner argues that Claims 1-3, 5–11 and 13–20 are obvious over the
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`combination of Prust taken in view of Major. A prerequisite to demonstrating
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`obviousness is a demonstration that each of the claim elements in the challenged
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`claims are 1) present in the two references cited and 2) arranged to cooperate in a
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`fashion that would have been clear to one of skill in the art. PO stresses that unless
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`and until the Petitioner demonstrates that each of the recitations are met by features
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`in the two references, the understanding that one of skill in the art would bring to
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`these elements cannot satisfy the requirement those elements be demonstrated. PO
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`respectfully submits that Petitioner’s showing is inadequate in this regard, elements
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`required by each of the challenged claims are nowhere set forth in either reference,
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`considered together.
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`A. Each of the Challenged Claims Requires Utilizing Download
`Information for the File Stored in (said) Cache Storage
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`
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`The parties appear to be in agreement, the term download information,
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`which is specifically addressed in the “out-of-band” feature of the ‘526 Patent,
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`refers to a hypertext link (or hyperlink), a URL. An important distinction in this
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`regard is that URL’s are not data files themselves, but rather “point” to files, or
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`otherwise indicate the location of those files in a digital medium. Ex. 2007, ¶ 35.
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`13
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`B. One Would not Modify Prust to Feature a Cache
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`The term cache is used in the ‘526 Patent to refer to a storage provision that
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`does only one thing – it stores download information, the hyperlink or URL. Ex.
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`2007, ¶40. Such a feature, a storage that only receives and stores a URL, is
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`nowhere featured in the primary reference, Ex. 1006, Prust. Ex. 2007, ¶¶124–125.
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`There is no cache disclosed or suggested anywhere in Prust. Only Major suggests
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`such a facility, but Petitioner argues, and the Decision concludes, that one of skill
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`in the art would have been motivated to adapt such a cache and use it to store
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`“download information.” The Decision, page 11, seems to conclude that because
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`Prust refers to a PDA that might use a conventional web browser, Prust is
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`somehow consistent with the use of that cache. Why? There is no identified feature
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`or reason to employ such a repository of “download information” or URLs in
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`Prust. Since Prust does not use a cache, there must be some reason to change Prust
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`to feature the cache of Major. Ex. 2007, ¶41.
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`Quite simply, the idea of storing or obtaining URLs is foreign to Prust.
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`Prust, alone or taken in light of Major, does not teach the artisan where to obtain a
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`URL, where in the cache it might be stored, or where it came from. While the
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`Petition asserts that such would be the case, there is no element in Major or Prust
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`that shows storing a URL in the proposed cache, or why it might be used. This is a
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`structural requirement of the claims. What is missing from both the Petition and
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`14
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`
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`the Decision is WHY one of skill in the art would modify Prust to feature a cache
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`for the sole purpose of storing URL hyperlinks. Ex. 2007, ¶46.
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`Not only is the rationale for storing such URLs in a cache to be provided not
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`explained, it is contrary to the understanding of those of skill in the art. The URL is
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`sent, in the system of Prust, from the user in an email. Thus, to access files of any
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`kind in the theorized cache of Prust, the user sends an email to the server,
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`whereupon the file pointed to by that URL is stored. Ex. 2007, ¶47. As noted at Ex.
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`2007, ¶¶47 – 48, if one provided the system of Prust with a cache, it would not be
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`used to store the URL that is the “download information” because in the Prust
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`system, the URL is no longer needed, neither the user nor the server will access the
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`URL because the actual file once pointed to by that URL is now available.
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`With respect, in 2003, one of skill in the art would have been aware that
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`there was no value or utility in storing the URL pointing to a file already accessed,
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`and would further recognize that storing such a URL is unnecessary and a waste of
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`resources. Ex. 2007, ¶¶50 – 52. Petitioner nowhere points to the necessary
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`motivation or rationale to modify the principal reference, Prust, to feature a cache
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`that would not be used. Whether one considers this failing a failure to show a
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`“cache storage” for the purposes of “utilizing download information” or the
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`absence of any suggestion of why one of skill in the art would so modify Prust, the
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`simple conclusion is that claim is unmet – there is no reason, rationale or
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`15
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`
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`motivation to modify Prust to feature a cache for the utilization of download
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`information.
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`This is a particularly problematic issue because we are addressing handheld
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`devices in use in 2003. The POSITA would have known at that time that handheld
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`or mobile devices had very limited storage – there would be no apparent reason to
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`use valuable resources to store a URL that would not be accessed twice.
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`The Decision addresses the basis for combining Major with Prust to modify
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`Prust to feature a cache for the purpose of downloading and storing URLs at pp.
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`20–23. The sole “motivation” discussed is referenced at pp. 20–21 which suggests
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`a POSITA would have been motivated to modify Prust to feature the cache of
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`Major because Major teaches “features beneficially suitable for Prust’s PDA.” This
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`generic suggestion does not explain why one would adapt Prust to feature a cache
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`which is used only to store “download information” that is, URLs when after the
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`initial email is sent, the user in Prust never relies on that download information
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`again. At page 21 of the Decision, reference is made to the observation in Major
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`that web-cache use allows the display of web pages very quickly. Again, such
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`“enhanced speed” would be of no benefit at all, something the POSITA would
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`recognize, since the cache exists only to receive the URL’s, not used after their
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`first retrieval.
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`With respect, the difficulty here has nothing to do with whether Prust
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`16
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`mentions PDAs once or many times – the problem is that no rationale or
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`motivation if offered to provide for a “utilization of download information for the
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`file stored in said cache storage.” While the burden of explaining the rationale or
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`motivation rests on Petitioner in any case, where one of skill in the art would
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`recognize that modifying the principal reference, Prust, in a fashion necessary to
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`meet the claims, would be contrary to reason and logic and wasteful of scarce
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`resources, the burden to provide a clear and specific reason for modification is that
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`much more significant. No rationale is offered. Ex. 2007, ¶¶54 – 56.
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`C. One of Skill Could Not “Utilize Download Information” from the
`Cache
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`The challenged claims require not only the existence of a cache, but call for
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`“utilizing download information (URLs) for the file stored in said ache storage.”
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`As noted, no one of skill in the art would have had a reason to modify Prust to
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`include a cache, the generic suggestion that Major might exhibit features generally
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`beneficial to the Prust user is insufficient to demonstrate a reason to combine
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`where such combination is disadvantageous and would have been recognized as
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`such by those of skill in the art. Beyond that, however, is the question of given
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`such a modified device, how would the user take advantage of the modified device
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`to “utilize download information” from that very same cache? The answer offered
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`in the Petition is through the use of copy-and-paste techniques – that is, the user
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`would “copy and paste” the URL into the device to summon the file. The Decision
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`17
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`expands this, suggesting that if one did not use “copy-and-paste” one could type or
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`copy the URL from the email message of Prust. Respectfully, PO submits that on
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`the evidentiary record, one of skill in the art would not use “copy-and-paste, typing
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`or copying” to “utilize download information.”
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`Copy-and-paste is an idea offered only by Petitioner in hindsight in 2019 –
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`neither Prust nor Major features or so much as refers to copy-and-paste.” Exhibit
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`2007, ¶¶ 59–60. Similarly, the ‘526 Patent nowhere teaches or refers to methods
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`that reflect “copy-and-paste. Instead, Petitioner argues those of kill in the art would
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`have been aware of copy and paste practices by reason of its reliance on WebDAV
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`protocols related in Ex. 1018 and 1019 and discussed in Ex. 1004 at ¶63. This is
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`fundamentally wrong and inconsistent with our practice.
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`As noted at the outset, to demonstrate obviousness, one must first identify
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`the elements of the claims addressed in the references relied upon, and THEN
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`demonstrate that one of skill in the art, given all the elements of the claims, would
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`modify them according to the level of skill in the art. The Decision, pp. 19-20,
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`turns this process on its head, concluding that PO’s arguments fail because:
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`Patent Owner does not address the purported knowledge of a person
`having ordinary skill in the art at the time of the invention, only
`arguing that none of the ‘526 Patent, Prust or Major discusses,
`teaches, describes or enables copy and paste.
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`PO respectfully submits that it is error to “infer” elements of the claims that are not
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`18
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`present in the art relied upon, then conclude that the invention claimed is somehow
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`taught by Prust and Major. Where the elements of the Patent Claims challenged
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`are not set forth, it is premature and improper to further modify the combination of
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`art to include elements not present in either reference. Personal Web Technologies,
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`LLC v. Apple, Inc. 848 F.3d 987, 989 (Fed. Cir. 2017) “We vacate the Board’s
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`obviousness determination as to the appealed claims, because the Board did not
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`adequately support its findings that the prior art disclosed all elements of the
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`challenged claims.”
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`In case after case, the Board considers the art presented – while of course the
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`art is
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