NON-CONFIDENTLAL VERSION
`
`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
`
`US. 9,098,526
`
`PATENT OWNER SUR—REPLY
`
`

`

`Contents
`
`PATENT OWNER SUR-REPLY ......................................................................................... i
`
`I.
`
`Introduction .................................................................................................................... 1
`
`II. PO’s Claim Constructions Are Consistent With the Plain and Ordinary Meaning Of
`The Claims As Understood By A POSA and With The Specification. ............................... 2
`
`A. Predefined Capacity .................................................................................................... 2
`
`B. Coupling...................................................................................................................... 4
`
`C. Comprising storing a data object therein or retrieving a data object therefrom ......... 7
`
`III. None Of The Claims Would Have Been Obvious Over The Combination Of Prust
`
`and Major Under The Proper Claim Construction............................................................... 7
`
`A. The Combination of Prust/Maj or Would Not Have Taught “utilizing download
`information for the file stored in said cache storage.” ...................................................... 8
`
`B. The Combination of Prust/Major Would Not Have Taught “a storage space of a
`predefined capacity assigned exclusively to a user of the wireless device by a storage
`server.” ............................................................................................................................ 12
`
`C. The Combination of Prust/Major Would Not Have Taught “coupling of the wireless
`device with the storage server.” ...................................................................................... 13
`
`D. The Combination of Prust/Major Would Not Have Taught “a plurality of storage
`devices, one of the storage devices being configured with the storage space assigned
`exclusively to the user.” .................................................................................................. 14
`
`E. A POSITA Would Not and Could Not Have Combined Prust and Major and
`Reasonably Expect Success. ........................................................................................... 15
`
`IV. None Of The Claims Would Have Been Obvious Over The Combination Of
`
`Chaganti and Major Under The Proper Claim Construction. ............................................ 16
`
`A. The Combination of Chaganti/Maj or Would Not Have Taught “download[ing] a
`file utilizing download information for the file stored in said cache storage.” .............. 16
`
`B. The Combination of Chaganti/Maj or Would Not Have Taught “a storage space of a
`predefined capacity assigned exclusively to a user of the wireless device by a storage
`server.” ............................................................................................................................ 17
`
`C. The Combination of Chaganti/Maj or Would Not Have Taught “one of the storage
`devices being configured with the storage space assigned exclusively to the user,” As
`Required By Dependent Claims 3 and 20 ....................................................................... 17
`
`D. The Combination of Chaganti/Maj or Would Not Have Taught “obtaining and
`transmitting download information from the cache of a wireless device,” As Recited In
`
`

`

`Dependent Claims 4 and 12. ........................................................................................... 18
`
`E. The Combination of Chaganti/Maj or Would Not Have Taught That The Wireless
`Device Remotely Creates, Deletes, Moves, Copies Or Renames A Folder, As Required
`By Dependent claims 6, 7, 10, 13, 14, and 15. ............................................................... 18
`
`F. A POSITA Would Not Have and Could Not Have Combined Chaganti and Maj or
`and Reasonably Expect Success. .................................................................................... 19
`
`V. Objective Indicia of Non-obviousness Support The Patentability Of The Claims Of
`The ‘526 Patent. ................................................................................................................. 20
`
`

`

`I.
`
`Introduction.
`
`Under the proper claim construction as set forth by Patent Owner Synkloud
`
`Technologies, LLC (“PO” or “Synkloud”), none of the claims of US. Patent 9,098,526
`
`(“the ‘526 patent”) would have been obvious. Many of the claim limitations are wholly
`
`absent from the prior art.
`
`Under these circumstances, documentary evidence is required to establish that the
`
`absent limitations would have been obvious. K/S HIMPP v. Hear- Wear Technologies,
`
`LLC, 751 F.3d 1362, 1366 (Fed. Cir. 2014)(“an assessment of basic knowledge and
`
`common sense as a replacement for documentary evidence for factual findings lacks
`
`substantial evidence support”). But Petitioner Unified Patents (“Unified”) makes no
`
`attempt in its Reply to provide the documentary evidence required to establish
`
`obviousness. Nor does it attempt to argue that K/S HIMPP is not the law.
`
`Instead, Unified restates its sole reliance on its expert declaration to advance the
`
`theory that the limitations that are absent from the prior art would have been obvious. See
`
`Reply, 9-21. For this very reason, Unified’s argument violates the mandate of K/S
`
`HIMPP. It is improper to rely on after-the-fact expert declarations, rather than
`
`contemporaneous documentary evidence, to support an obviousness theory that relies on
`
`modifications of the prior art to supply missing limitations. Indeed, Unified’s Reply
`
`ignores the testimony of Synkloud’s expert Mr. Jawadi, which explains why a person of
`
`ordinary skill in the art (POSITA) would not have been motivated to modify the prior art
`
`1
`
`

`

`to include the missing claim limitations.
`
`Moreover, Unified’s arguments are based on erroneous claim construction.
`
`Although Unified contends that the claims would have been obvious under Synkloud’s
`
`constructions, it does not, in fact, apply Synkloud’s constructions in its Petition or Reply,
`
`Unified’s Petition and Reply are based on erroneous claim constructions and the
`
`mistaken view that the claim limitations that are wholly absent from the prior art would
`
`have been obvious just because it says so (e.g., without any supporting documentary
`
`evidence). Unified has not nearly met its burden to show by a preponderance of the
`
`evidence that any claim of the ‘526 patent would have been obvious.
`
`II.
`
`PO’s Claim Constructions Are Consistent With the Plain and Ordinary
`Meaning Of The Claims As Understood By A POSA and With The
`Specification.
`
`A.
`
`Predefined Capacity
`
`The proper construction of “a storage space of a predefined capacity assigned
`
`exclusively to the user of a wireless device by a storage server” requires that “the server
`
`assigns an amount of storage, storage to be assigned exclusively for one user, that amount
`
`having been set in advance of any interaction or negotiation between the server and the
`
`user.” PO Response, 11.
`
`In response, Unified builds and then knocks down a straw man argument that
`
`Synkloud never made. According to Unified, Synkloud’s attention to the plain and
`
`ordinary meaning of this claim limitation as understood by a POSITA means that
`
`Synkloud’s “argument is based on a tortured read of the specification that, even if correct
`
`2
`
`

`

`would amount to nothing more than a prohibited importation of limitations from the
`
`specification.” Reply, 6. But this is plainly not so.
`
`Synkloud agrees with and endorses the Federal Circuit’s prohibition against
`
`importing limitations from the specification into the claims. But it is simply not relevant
`
`here. Synkloud does not make the argument prohibited by the Federal Circuit. Rather,
`
`Synkloud explains that its construction is consistent with the plain and ordinary meaning
`
`as understood by a POSITA. As explained by the expert, Mr. Jawadi, a POSITA would
`
`have understood that predefining capacity is different than allocating storage:
`
`a POSITA would have understood the predefining capacity to mean defining
`
`
`(i.e., deciding or setting in advance) the amount of storage before the storage
`
`is allocated or assigned to the user (EX2007, § 161);
`
`a POSTIA [sic] would not have conflated predefining capacity (predefining
`
`amount of storage before the storage is allocated or assigned) and allocating
`
`or assigning storage (which happens first) (ibid).
`
`Indeed, the prefix “pre” in “predefined” means “before.” Ibid. Moreover, the claims
`
`explicitly recite that “a storage space of predefining capacity,” is “assigned exclusively to
`
`the user
`
`by a storage server,” (EXlOOl, 5:65-66)—not by the user.
`
`The Specification of the ‘526 patent confirms the plain and ordinary meaning “that
`
`storage capacity is predefined (i.e., defined, decided, or set out in advance) by the
`
`server (not by the user) for users before allocating storage to users” (id. at 11164
`
`(emphasis in original»:
`
`Each server unit (e.g., the server 3 0f the FIG. 2) partitions its storage
`
`3
`
`

`

`system into volume and each of the volumes will have multiple GB in
`
`size. Therefore, each user of the wireless devices can be exclusively
`
`assigned for access to a specific storage volume on a server unit
`
`(EX1001, 2:39-44. (emphasis added);
`
`Based on the received storage information the administration staff on
`
`the console host (12), for example, can use a web-console (13) to partition
`
`each storage device and send the storage partition information to the console
`
`support software (5) of the server (3). The storage partition information
`
`includes the number of the partitions (volumes) and the size of each
`
`partition (volume).
`
`Id. at 4: 12-16 (emphasis added).
`
`Unified’s expert did not respond to Mr. Jawadi’s explanation of how a POSITA would
`
`have understood this claim limitation—even though he had the opportunity to do so by a
`
`declaration that could have been filed with its Reply.
`
`Synkloud’s construction should be adopted by the Board. Unified does not propose
`
`a different construction for this limitation.
`
`B.
`
`Coupling
`
`The term “coupling” recited in claims 1, 11, 13, 14, and 15 should be defined as
`
`“linking of a system’s components to form a relationship.” EX2007, 11198, quoting
`
`EX2005. For the wireless device “to carry out [a] requested operation for remote access
`
`to the assigned storage space” (EX1001, 6: 1-4), it must be linked with the storage server.
`
`This plain and ordinary meaning of the claim term “couple”—in addition to being
`
`supported by the claim language itself—is also consistent with the Specification, which
`
`4
`
`

`

`states that there is a “communication link between” the wireless device and the storage
`
`server. EXlOOl, 4:62.
`
`In response, Unified alleges that “PO suggests that ‘coupling’ must be a high
`
`performance coupling.” Reply, 7. But neither Synkloud nor its expert Mr. Jawadi made
`
`any such suggestion; neither mentioned “high performance coupling.” Unified just made
`
`it up and then, addressed its own made-up arguments instead of addressing the arguments
`
`that Synkloud and Mr. Jawadi actually made.
`
`Mr. Jawadi explained how a POSITA would have understood the claim term
`
`“coupling” in the context of the Specification. He explained that the claim limitation
`
`“coupling with the storage server to carry out” requires the wireless device to link with
`
`the storage server to carry out various operations:
`
`Dependent Claims 13, 14, 15, and 17 recite “coupling with the storage server
`7) (L
`
`to carry out an operation for
`
`remotely deleting, moving, copying, or
`
`renaming a folder in the assigned storage space” (Claim 13), “remotely
`
`creating a folder structure in the assigned storage space” (Claim 14),
`
`“remotely creating a folder in the assigned storage space” (Claim 15), and
`
`“remotely deleting, moving, copying, or renaming a file in the assigned
`
`storage space” (Claim 17).
`
`EX2007, 11202. He then concluded that an “email mechanism is not suitable for
`
`performing any of these operations” because emails do not have the efficiency,
`
`effectiveness, and interactivity to meet the inventor’s purpose of performing operations
`
`for the wireless device in the storage server, as recited in the language surrounding the
`
`

`

`“coupling” term.1 Id. at 1111 202-205; Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve,
`
`Inc., 796 F.2d 443, 444 (Fed. Cir. 1986); Brookhill-Wilk I , LLC. v. Intuitive Surgical,
`
`Inc., 334 F.3d 1294, 1300 (Fed. Cir. 2003) (“while certain terms may be at the center of
`
`the claim construction debate, the context of the surrounding words of the claim also
`
`must be considered in determining the ordinary and customary meaning of those terms”);
`
`see also HockersoniHalbeI/sladi, Inc. v. Converse Inc., 183 F.3d 1369, 1374,
`
`(Fed.Cir. 1999).
`
`In addition, Synkloud’s proposed construction is supported by the Specification,
`
`which explains that the claimed coupling must have some efficiency, effectiveness, and
`
`interactivity to enable the claimed operations to be performed:
`
`a system and method for the wireless device to efficiently and effectively
`
`use remotely located storage space (EX1001, ‘526 patent, Abstract);
`
`a user of a wireless device can access and browse any web-site on the
`
`Internet (id. at 3:3-6).
`
`These types of claimed operations are simply not done by an email exchange. No one has
`
`ever browsed the web, for example, by sending an email to a server, receiving a web page
`
`1Unified’s allegation that “PO’s own expert could not explain with any precision to what
`
`degree something must be “efficient, effective, and interactive” before it qualifies as a
`
`“coupling” under PO’s construction.” (Reply, 8) is demonstrably false; Mr. Jawadi
`
`testified that coupling requires a “linking of a system’s components to form a
`
`relationship” (EX2007, 11198, citing EX2005); see also EX1022, 106: 13-107:7.
`
`6
`
`

`

`via email in response, and displaying the web page on the wireless device. Unified did
`
`not introduce into evidence a single document suggesting in any way that an email
`
`exchange would have been considered to be a coupling or connection between a wireless
`
`device and a server. Indeed, Unified’s expert did not respond to Mr. Jawadi.
`
`Synkloud’s proposed construction is consistent with the plain and ordinary
`
`meaning as understood by a POSITA and the Specification. It should be adopted by the
`
`Board. Unified did not propose a different claim construction.
`
`C. Comprising storing a data object therein or retrieving a data object
`therefrom
`
`Unified argues that the claim limitation requires either storing or retrieving a data
`
`object, not both. Reply, 3-4. But Unified fails to explain how a data object could possibly
`
`be retrieved from a storage space before it is stored there. Ibid. The plain and ordinary
`
`meaning of this claim limitation, therefore, requires either storing a data object or both
`
`storing and later retrieving a data object.
`
`111. None Of The Claims Would Have Been Obvious Over The Combination Of
`
`Prust and Major Under The Proper Claim Construction.
`
`The section of Unified’s brief commencing with the heading “The Board need not
`
`construe any claim terms proposed by Patent Owner since the Petition demonstrates how
`
`the art discloses the limitations under Patent Owner’s proposed constructions” (Reply, 3),
`
`in fact, fails to explain how the Petition’s obviousness analysis applies to Patent Owner
`
`Synkloud’s claim constructions. The heading is a canard. It does not reflect the content
`
`

`

`of Unified’s argument in the body of the section. Indeed, Petitioner fails to apply
`
`Synkloud’s claim construction throughout its Reply. See Reply, 9-21.
`
`A. The Combination of Prust/Major Would Not Have Taught “utilizing
`download information for the file stored in said cache storage.”
`
`Unified sets forth two theories of why the claim limitation quoted above would
`
`have been obvious. First, Unified argues that “Prust includes a conventional web
`
`browser and thus, a PO SA understood that a conventional web browser includes cache.”
`
`Reply, 9. Second, Unified argues that “the Petition sets forth modifying the teachings of
`
`Prust to indicate the web cache as taught by Major, and includes detailed motivations
`
`therefor.” Ibid. Unified attempts to support its theories on the basis that “PO’s expert
`
`gutted the PO’s cache arguments and demonstrated that none had factual support”
`
`because he “admitted that the use of cache with web browsers was ‘well-known and
`
`widespread in 2003.” Id. at 10-11.
`
`Both of Unified’s theories miss the mark entirely and are not commensurate with
`
`the scope of the claims of the ‘526 patent. All the claims require much more than a mere
`
`cache; they require “utilizing download information for the file stored in said cache
`
`storage in response to the user device performed the operation for downloading the file
`
`from the remote server into the assigned storage space.” EXIOOl, 6:7 -15. The
`
`Specification describes this claimed method using the system depicted in FIG. 3:
`
`1) The user of the wireless device (1) via a web-browser (8) access to a remote
`
`web server site (15) to obtain information of the data for the downloading via path (a) of
`
`

`

`FIG. 3
`
`2) The other software modules (9) of the wireless device (1) obtain the
`
`downloading information for the data, which becomes available in the cached web-pages
`
`on the wireless device (1) after the web-browser (8) access to the web site (15).
`
`3) The other software modules (9) of the wireless device (1) send the obtained
`
`downloading information to other service modules (7) of the storage server (3) via path
`
`(b) of FIG. 3.
`
`4) Upon receiving the downloading information from the wireless device (1), the
`
`other service module (7) of the storage server (3) sends a web download request to the
`
`web-site (15) via path (0) of FIG. 3 based on download information obtained. and
`
`receives the downloading data streams from the web server of the web-site (15).
`
`5) Upon receiving downloaded data streams, the other service modules (7) of the
`
`storage server (3) write the data streams into the file system of the assigned storage
`
`volume (11) in the server (3) for the wireless device (1).
`
`EX1001, 5:7-16.2
`
`None of the portions of Prust and Major cited by Unified in its Petition and Reply
`
`would have taught the claim limitation of utilizing download information in the cache of
`
`a wireless device to download a file to an assigned storage space. The so-called
`
`“dragging and dropping” alleged to be disclosed in Prust by Unified relates to dragging a
`
`file stored on the user’s device—not a “remote server,” as claimed in the ‘526 patent.
`
`Unified also alleges that “Prust taught seamless access to remote storage using the
`
`2 This portion of the Specification clearly demonstrates that Unified’s allegations that the
`
`‘526 patent does not disclose a cache (Reply, XX) is false.
`
`9
`
`

`

`operating system, browser, and email applications of a wireless device” and “transmitting
`
`URLs in an instruction to a remote storage to initiate an out-of—band download of a file at
`
`the URL onto the remote storage.” Reply, 12. But the portion of Prust that mentions
`
`transmitting URLs describes a process in which a user types the URL into an email and
`
`sends the email. There is not a whisper of a suggestion in Prust that the URLs would have
`
`been retrieved from a cache storage of a wireless device and utilized to download a file
`
`from a remote server to assigned storage on a storage server, as claimed by the ‘526
`
`patent.
`
`Prust, even if combined with Major’s teachings of a web cache, would not have
`
`taught this important limitation. The mere mention of a web cache would not have taught
`
`that download information from the web cache is utilized to download a file from a
`
`remote server to a storage server. Moreover, Prust’s email application also does not meet
`
`the “coupling” limitation that is recited throughout the claims. Infra, § III.C; PO
`
`Response, 28-30.
`
`When claim limitations are wholly absent from the prior art, contemporaneous
`
`documentary evidence is required to support an obviousness theory that relies on
`
`modification of the prior art to supply the missing limitations. K/S HIMPP, 751 F.3d at
`
`1366. Unified and its expert, Dr. Long, did not provide the required documentary
`
`evidence. See Reply, 9-13.
`
`Unified’s statements that “PO does not meaningfiilly contest the expert opinions of
`
`10
`
`

`

`Dr. Long,
`
`7) (L’
`ignores the wireless device product literature Chaganti,” and that PO’s
`
`expert concedes the so-called “general knowledge” (Reply, 12) are demonstrably false.
`
`Mr. Jawadi explained in detail why utilizing download information stored in cache would
`
`not have been obvious:
`
`copy and paste operation (or typing) with web browser cache does not
`
`disclose utilizing download information stored in cache (EX2007, pp. 9-46);
`
`no reason to add cache to Prust (id. at 14-19);
`
`the copy-and-paste (which is heavily relied upon by Unified) is not even
`
`mentioned in Prust, Major, or the ‘526 patent (id. at 19-21);
`
`the steps of using copy-and—paste from web browser cache in wireless device
`
`are not convention and not obvious (id. at 22—25);
`
`the user (not the code) performs copy-and-paste (id. at 25-29);
`
`URLs of data objects are not displayed by the browser and cannot be copied
`
`directly using copy-and-paste (id. at 29-33);
`
`the web page containing the URL must be cacheable (id. at 33);
`
`not all web pages are cacheable or cached (id. at 33-36);
`
`a user cannot tell if a web page displayed by the web browser is from cache
`
`or stored in cache (id. at 36-38);
`
`Prust does not discloser where the URL for the purported out-of-band
`
`download is obtained from (id. at 38-39);
`
`Prust does not disclose out-of—band download through browser or through
`
`operating system (id. at 39-41);
`
`Typing is impractical (id. at 42-43);
`
`Petitioner’s theory regarding utilizing download information stored in cache
`
`is far fetched (id. at 43-45); and
`
`11
`
`

`

`Purpose of Major’s cache does not match the ‘526 patent (id. at 45-46).
`
`Unified’s expert had the opportunity to respond to this extensive testimony from Mr.
`
`Jawadi but did not do so.
`
`Unified does not nearly show by a preponderance of the evidence that this
`
`limitation would have been obvious.
`
`B. The Combination of Prust/Major Would Not Have Taught “a storage
`space of a predefined capacity assigned exclusively to a user of the wireless
`device by a storage server.”
`
`As explained supra § ILA, the proper construction of the claim limitation quoted
`
`above requires that “the server assigns an amount of storage, storage to be assigned
`
`exclusively for one user, that amount having been set in advance of any interaction or
`
`negotiation between the server and user.”
`
`Neither of the two sentences relied upon by Unified (Reply, 14, citing EX1006,
`
`Prust, 4:39-41 and 4:46-49) relates to this claim limitation. The first states that “the
`
`storage network 220 defines a pool of virtual storage area 225 that can be individually
`
`assignable” (id. at 4:39-41). There is a significant difference between defining a pool of
`
`virtual space as taught by Prust and assigning a “predefined capacity” of storage
`
`“exclusively to a user,” as required by the claims.
`
`The second sentence of Prust (4:46-59) relied upon by Petitioner describes the
`
`allocation of storage to a user: “[u]pon prior approval, storage network 220 allocates a
`
`storge area 225 to the user such that, as described in detail below, the user can remotely
`
`access the corresponding virtual storage area via client computers 205.” This is very
`
`l2
`
`

`

`different than pre-defining capacity exclusively to a user, as required by the claims. As
`
`explained by Mr. Jawadi, “[a] POSITA would have known that predefined capacity
`
`means that the server defines, in advance, the amount of storage to allocate to the user
`
`before allocating any storage to the user
`
`Petitioner conflates allocating (reserving,
`
`setting aside, or holding) and predefining (which happens in advance of allocating).”
`
`EX2007, 1] 187. Unified did not even attempt to show that Prust would have taught the
`
`predefined requirement. Nor did it allege that Maj or compensates for Prust’s deficiencies.
`
`See Reply, 13-14.
`
`Accordingly, Prust would not have taught (i) capacity is predefined exclusively for
`
`each user (ii) by the storage server, (iii) before any interaction between the user and
`
`storage server. And Unified did not provide any documentary evidence showing that the
`
`limitations that are wholly absent from the prior art would have been obvious.
`
`C. The Combination of Prust/Major Would Not Have Taught “coupling of the
`wireless device with the storage server.”
`
`As explained supra § 1B, the proper construction of “coupling” is “linking of a
`
`system’s components to form a relationship.” Unified states that “PO’s construction is
`
`not correct and should be rejected” (Reply, 14) but does not state which construction
`
`should be used. Id. at 14-15.
`
`Synkloud had explained that Prust’s email did not satisfy the “couple” limitation
`
`because email does not link components of a system to form a relation. PO Response, 28-
`
`30. Unified’s argument in response that it “relies on the email embodiment for the storage
`
`13
`
`

`

`operation,” not the other claimed operations (Reply, 15), misses the point. Unified relied
`
`only upon the email of Prust for the claimed operation of “download[ing] a file from a
`
`remote server
`
`into the assigned storage space through utilizing download information
`
`for the file stored in said cache storage.” This storing operation, as well as the other
`
`operations are required to be “carr[ied] out” by “coupl[ing] [the wireless device] with the
`
`storage server.” EXIOOl, 6:1-3.
`
`Prust’s email is not coupling. Any operation performed by email in Prust does not
`
`satisfy the “couple” claim requirement. Supra, § II.B. In addition, both the Patent Owner
`
`Response (pp. 28-30) and Mr. Jawadi’s declaration (EX2007, 1W 126-133) explain why
`
`the other two mechanisms for a user device to access the storage server (1'. 6., browser and
`
`operating system) would not have taught the claimed operations.
`
`Once again, Unified fails to set forth any documentary evidence indicating that the
`
`“couple” limitation, which is wholly absent from the prior art, would have been obvious.
`
`See Reply, 14-15.
`
`D. The Combination of Prust/Major Would Not Have Taught “a plurality of
`storage devices, one of the storage devices being configured with the
`storage space assigned exclusively to the user.”
`
`The claim language itself requires “the storage space assigned exclusively to the
`
`user” to be on “one of the storage devices.” EXlOOI , 5:65-67 (emphasis added). Prust
`
`would not have taught this requirement, even under Unified’s theory. As Unified admits
`
`(Reply, 15), Prust discloses that “[t]he storage devices provide a plurality of virtual
`
`l4
`
`

`

`storage areas where each virtual storage area is assigned to a user.” EX1006, Abstract.
`
`That is, Prust discloses that the “virtual storage area assigned to a user” is on a plurality
`
`(116., two or more) of “storage devices” because the “s” at the end of the term “devices”
`
`means that the term is plural. Thus, Prust would not have taught the very different
`
`structure of dependent claims 3 and 20, in which “the storage space assigned exclusively
`
`to a user” is on “one” storage device. EX2007, 1111 223-231.
`
`Unified’s reliance on the disclosure of RAID as one possible embodiment in the
`
`‘526 patent (Reply, 15) is misplaced because claims need not be construed to encompass
`
`all disclosed embodiments where the claim language is clearly limited to one or more
`
`embodiment. TIP Systems, LLC v. Phillips & Brooks/Gladwz'n, Inc. (Fed. Cir. June 18,
`
`2008)
`
`E. A POSITA Would Not and Could Not Have Combined Prust and Major
`and Reasonably Expect Success.
`
`Synkloud and its expert Mr. Jawadi described five groups of reasons why a
`
`POSITA would not have been motivated to combine Prust and Major in the manner
`
`suggested by Unified: (i) there was no reason to add Major’s cache to Prust (ii) Major’s
`
`teachings discourage wireless device access to external storage (iii) Major stores data
`
`objects in cache, negating the need for external storage (iv) Prust discourages using only
`
`one mode to access remote storage and (v) Prust does not disclose out-of-band download
`
`through a browser. EX2007, pp. 70-77. Unified ignored them. See Reply, 16.
`
`Instead, Unified limits its response to an incomplete portion of only one of
`
`15
`
`

`

`Synkloud’s arguments relating to Major’s desire to reduce wireless access. Reply, 16. In
`
`the complete argument, Synkoud and Mr. Jawadi explained that Major discourages
`
`wireless access to external storage and teaches storing data objects in a “raw data cache”
`
`to thereby negate the need for external storage. PO Response, 34; EX2007, W 243 -248.
`
`Unified ignores this argument. Reply, 16. Indeed, Unified’s expert did not even respond
`
`to Mr. Jawadi at all. Unified’s obviousness analysis is flawed because it fails to address
`
`the reasons that would have discouraged a POSITA from combining the prior elements in
`
`the manner claimed by the ‘526 patent. In re Dow Chem. Co. 837 F.2d. 469 (Fed. Cir.
`
`1988) (all information, “including that which might lead away from the claimed
`
`invention” must be considered).
`
`IV. None Of The Claims Would Have Been Obvious Over The Combination Of
`
`Chaganti and Major Under The Proper Claim Construction.
`
`A. The Combination of Chaganti/Major Would Not Have Taught
`“download[ing] a file utilizing download information for the file stored in
`said cache storage.”
`
`Chaganti and Major would not have taught the claim limitation quoted above.
`
`Neither reference makes any mention of utilizing download information for the file stored
`
`in the cache storage of the wireless device to download a filed from a remote server to an
`
`assigned storage space, as required by independent claims 1 and 11.
`
`Unified’s arguments in response are internally inconsistent. It first “states that
`
`Patent Owner criticized Chaganti for not ‘teach[ing] a URL” but later quotes that Patent
`
`16
`
`

`

`Owner as acknowledging that
`
`a line to a URL pointing to a digital item appears in
`
`LL?
`
`Chaganti.”’ Reply 18, quoting PO Response 38. More importantly, Unified’s arguments
`
`are not commensurate with the scope of the claims. The mere mention of a link
`
`containing a URL is not nearly sufficient to show that the URL is retrieved from a cache
`
`and utilized to download a file from a remote server to an assigned storage space.
`
`EX2007, 1111 310—333.
`
`B. The Combination of Chaganti/Major Would Not Have Taught “a storage
`space of a predefined capacity assigned exclusively to a user of the wireless
`device by a storage server.”
`
`None of the portions of Chaganti and Major cited in the Institution Decision and
`
`the Petition would have taught the claim limitation quoted above. EX2007, 1W 338-351.
`
`Those portions disclose allocating storage by the user (not the server as required by the
`
`claims) and allocating additional storage as the need arises (not a predefined capacity as
`
`required by the claims). Ibid.
`
`In response, Unified refers to the same arguments in its Petition that were shown to
`
`be deficient by Mr. Jawadi; it does not provide any response from its expert or present
`
`any documentary evidence showing that this limitation, which is wholly absent from the
`
`prior art, would have been obvious.
`
`C. The Combination of ChagantiMajor Would Not Have Taught “one of the
`storage devices being configured with the storage space assigned
`exclusively to the user,” As Required By Dependent Claims 3 and 20.
`
`Neither Unified’s Petition nor Reply identifies any teaching in Chaganti or Major
`
`17
`
`

`

`of a single storage device having storage space that is assigned exclusively to one user
`
`(i. e., that no other user may be assigned the same storage space). In addition, Unified did
`
`not set forth any contemporaneous documentary evidence showing that this limitation
`
`that is wholly absent from the prior art would have been obvious. See Reply, 20.
`
`D. The Combination of Chaganti/Major Would Not Have Taught “obtaining
`and transmitting download information from the cache of a wireless
`device,” As Recited In Dependent Claims 4 and 12.
`
`As explained above, neither Chaganti nor Major mention where any download
`
`information is obtained from, let alone that it is obtained from a cache of a wireless
`
`device. Supra, § III.A; EX2007, 1H] 359-360. Unified did not set forth any
`
`contemporaneous documentary evidence showing that this limitation that is wholly
`
`absent from the prior art would have been obvious a