UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________
`
` UNIFIED PATENTS, LLC,
`Petitioner
`
`v.
`
`SYNKLOUD TECHNOLOGIES, LLC.,
`Patent Owner
`
`Case IPR2019-01655
`
`Patent 9,098,526
`
`PATENT OWNER’S NOTICE OF APPEAL
`35 U.S.C. § 142 & 37 C.F.R. § 90.2
`
`
`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________
`
` UNIFIED PATENTS, LLC,
`Petitioner
`
`v.
`
`SYNKLOUD TECHNOLOGIES, LLC.,
`Patent Owner
`
`Case IPR2019-01655
`
`Patent 9,098,526
`
`PATENT OWNER’S NOTICE OF APPEAL
`35 U.S.C. § 142 & 37 C.F.R. § 90.2
`
`
`
`Pursuant to 37 C.F.R. § 90.2(a), Patent Owner, SYNKLOUD
`
`TECHNOLOGIES, LLC, hereby provides notice of its appeal to the United States
`
`Court of Appeals for the Federal Circuit for review of the Final Written Decision
`
`of the United States Patent and Trademark Office (“USPTO”) Patent Trial and
`
`Appeals Board (“PTAB”) in Inter Partes Review 2019-01655, concerning U.S.
`
`Patent 9,098,526 (“the ’526 patent”), entered on March 5, 2021, attached hereto as
`
`Appendix A.
`
`ISSUES TO BE ADDRESSED ON APPEAL
`
`A. Whether the PTAB erred in its construction of the claims?
`
`B. Whether the PTAB erred in ruling that claims 1-20 would have been
`
`obvious under § 103(a) over Chaganti and Major?
`
`Simultaneous with submission of this Notice of Appeal to the Director of the
`
`United States Patent and Trademark Office, this Notice of Appeal is being filed
`
`with the Patent Trial and Appeal Board. In addition, this Notice of Appeal, along
`
`with the required docketing fees, is being filed with the United States Court of
`
`Appeals for the Federal Circuit.
`
` 2
`
`
`
`Dated: April 29, 2021
`
`Respectfully submitted,
`
`/Gregory J. Gonsalves/
`Dr. Gregory Gonsalves
`Reg. No. 43,639
`Capitol IP Law Group, PLLC
`1918 18th St, Unit 4, NW
`Washington, DC 20009
`Phone: 571-419-7252
`
` 3
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that in addition to being filed electronically
`
`through the Patent Trial and Appeal Board’s E2E system the foregoing PATENT
`
`OWNER’S NOTICE OF APPEAL was served on the Director of the United States
`
`Patent and Trademark Office, at the following address (in accordance with 37
`
`C.F.R. §§ 90.2(a), 104.2):
`
`Director of the United States Patent and Trademark Office
`
`c/o Office of the General Counsel
`
`United States Patent and Trademark Office
`
`P.O. Box 1450 Alexandria, Virginia 22313-1450
`
`
`
`
`
` 4
`
`
`
`
`
`CERTIFICATE OF FILING
`
`The undersigned certifies that on April 29, 2021, a true and correct copy of
`
`the foregoing PATENT OWNER’S NOTICE OF APPEAL was filed electronically
`
`with the Clerk’s Office of the United States Court of Appeals for the Federal
`
`Circuit at the following address:
`
`Clerk of Court
`
`United States Court of Appeals for the Federal Circuit
`
`717 Madison Place NW
`
`Washington, DC 20005
`
`
`
`
`
` 5
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing PATENT
`
`OWNER’S NOTICE OF APPEAL was served on April 29, 2021, by filing this
`
`document though the PTAB’s E2E system as well as by delivering a copy via
`
`electronic mail to the attorneys of record for the Petitioner listed below:
`
`
`Lead Counsel
`
`John M. Baird
`USPTO Reg. 57,585
`DUANE MORRIS LLP
`505 9th St. NW, Suite 1000
`Washington, D.C. 20004
`P: (202) 776-7819
`F: (202) 379-9850
`JMBaird@duanemorris.com
`
`
`Backup Counsel:
`
`
`Patrick D. McPherson
`USPTO Reg. 46,255
`DUANE MORRIS LLP
`505 9th St. NW, Suite 1000
`Washington, D.C. 20004
`P: (202) 776-5214
`F: (202) 776-7801
`PDMcPherson@duanemorris.com
`
`
`Paul Belnap
`USPTO Reg. 73,106
`DUANE MORRIS LLP
`505 9th St. NW, Suite 1000
`Washington, D.C. 20004
`P: (202) 776-7879
`F: (202) 478-2897
`
` 6
`
`
`
`PHBelnap@duanemorris.com
`
`Ashraf Fawzy
`USPTO Reg. 67,914
`Unified Patents Inc.
`1875 Connecticut Ave NW, Floor 10
`Washington, DC 20009
`P: (202) 871-0110
`afawzy@unifiedpatents.com
`
`
`Jonathan R. Bowser
`USPTO Reg. 54,574
`Unified Patents Inc.
`1875 Connecticut Ave NW, Floor 10
`Washington, DC 20009
`P: (202) 701-1015
`jbowser@unifiedpatents.com
`
`
`Roshan Mansinghani
`USPTO Reg. 62,429
`Unified Patents Inc.
`1875 Connecticut Ave NW, Floor 10
`Washington, DC 20009
`P: (214) 945-0200
`roshan@unifiedpatents.com
`
`
`
`
`
`Dated: April 29, 2021
`
`
`
`
`
`
`
`
`
`/Gregory J. Gonsalves/
`Dr. Gregory Gonsalves
`Reg. No. 43,639
`Capitol IP Law Group, PLLC
`1918 18th St, Unit 4, NW
`Washington, DC 20009
`Phone: 571-419-7252
`
`
`
` 7
`
`
`
`
`
`
`
`
`
`
`
`
`Appendix A
`Appendix A
`
`
` 8
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
` Paper 42
` Date: March 5, 2021
`
`
`
`
`
`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
`SCOTT RAEVSKY, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`IPR2019-01655
`Patent 9,098,526 B1
`
`
`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.”). Upon
`
`consideration of the Petition and Preliminary Response, we instituted inter
`
`partes review, pursuant to 35 U.S.C. § 314, as to claims 1–20 based on the
`
`challenges set forth in the Petition. Paper 13 (“Decision to Institute” or
`
`“Dec.”).
`
` Subsequent to institution, Patent Owner filed a Patent Owner
`
`Response (Paper 16, “PO Resp.”), Petitioner filed a Reply to Patent Owner’s
`
`Response (Paper 30, “Pet. Reply”), and Patent Owner filed a Sur-reply
`
`(Paper 32, “Sur-reply”).2 On December 17, 2020, we held an oral hearing.
`
`A transcript of the hearing is of record. Paper 41 (“Tr.”).
`
`For the reasons that follow, we conclude that Petitioner has proven by
`
`a preponderance of the evidence that claims 1–20 of the ’526 patent are
`
`unpatentable.
`
`A. Related Matters
`
`Petitioner indicates that the ’526 patent is the subject of the following
`
`court proceeding: Synkloud Technologies, LLC v. HP Inc., No. 1-19-cv-
`
`
`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 This Decision refers to the non-confidential versions of Petitioner’s Reply
`(Paper 30) and the non-confidential version of Patent Owner’s Sur-reply
`(Paper 32).
`
`2
`
`
`
`IPR2019-01655
`Patent 9,098,526 B1
`
`
`01360 (D. Del. filed July 22, 2019). Pet. 2 (Mandatory Notices).3 In that
`
`case, the District Court held claims 1–10 invalid under 35 U.S.C. § 101.
`
`Paper 33 (citing Ex. 1024). 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., No. 6:19-cv-00526 (W.D. Tex. filed Sept. 6, 2019), and
`
`Synkloud Technologies, LLC v. Adobe Inc., No. 3:20-cv-07760 (N.D. Cal.
`
`filed Nov. 3, 2020). Id. at 1–2; Paper 36, 2.
`
`The ’526 patent also is the subject of IPR2020-00316, for which
`
`institution was granted. Microsoft Corp. v. Synkloud Techs., LLC, IPR2020-
`
`00316, Paper 21 (PTAB June 29, 2020).
`
`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.
`
`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.
`
`
`3 Petitioner also lists Synkloud Technologies, LLC v. BLU Products, Inc.,
`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).
`
`3
`
`
`
`IPR2019-01655
`Patent 9,098,526 B1
`
`
`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
`
`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
`
`4
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`
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`IPR2019-01655
`Patent 9,098,526 B1
`
`
`information to other service modules 7 of storage server 3 via path (b). Id. at
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`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
`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
`
`5
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`
`
`IPR2019-01655
`Patent 9,098,526 B1
`
`
`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, p.11.
`
`D. Instituted Grounds of Unpatentability
`
`We instituted inter partes review based on the following grounds of
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`unpatentability under 35 U.S.C. § 103(a)4 as follows (Dec. 6, 40):
`
`Claims Challenged
`1–3, 5–11, 13–20
`1–20
`
`35 U.S.C §
`103(a)
`103(a)
`
`Reference(s)/Basis
`Prust,5 Major6
`Chaganti,7 Major
`
`
`4 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended several provisions of 35 U.S.C., including § 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 version of
`35 U.S.C. § 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 (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, such that Chaganti qualifies as prior art under
`pre-AIA 35 U.S.C. § 102(e). Pet. 45–46 (citing Ex. 1008 (Certificate of
`Correction); Ex. 1011, 2–10, 346–48, 421–59). Patent Owner does not
`dispute this assertion. See generally PO Resp.
`
`6
`
`
`
`IPR2019-01655
`Patent 9,098,526 B1
`
`
`II. DISCUSSION
`
`A. Principles of Law
`
`To prevail in its challenges to Patent Owner’s claims, Petitioner must
`
`demonstrate by a preponderance of the evidence that the claims are
`
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d) (2019). 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 (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; and (4) when in evidence, objective evidence of
`
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`B.
`
`Level of Ordinary Skill
`
`In determining the level of ordinary skill in the art, various factors
`
`may be considered, including the “type of problems encountered in the art;
`
`prior art solutions to those problems; rapidity with which innovations are
`
`made; sophistication of the technology; and educational level of active
`
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`
`(citation omitted). Petitioner relies on the testimony of Dr. Darrell Long,
`
`who testifies that a person having ordinary skill in the art would have had “a
`
`bachelor’s degree in computer science, electrical engineering, or related
`
`discipline and two years of experience in the relevant technical field—
`
`remote storage solutions for computing devices, with related experience in
`
`7
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`
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`IPR2019-01655
`Patent 9,098,526 B1
`
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`web-enabled wireless devices, such as portable digital assistants (PDAs)—or
`
`the equivalent.” Pet. 8 (citing Ex. 1004 ¶¶ 43–46). Patent Owner does not
`
`propose an alternative assessment. See generally PO Resp.; Ex. 2007 ¶ 21.
`
`We accept the assessment offered by Petitioner as it is consistent with
`
`the ’526 patent and the asserted prior art. We further note that the prior art
`
`of record in the instant proceeding reflects the appropriate level of ordinary
`
`skill in the art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir.
`
`2001) (holding the Board may omit specific findings as to the level of
`
`ordinary skill in the art “where the prior art itself reflects an appropriate
`
`level and a need for testimony is not shown”).
`
`C. Claim Construction
`
`In an inter partes review for a petition filed on or after November 13,
`
`2018, “[claims] of a patent . . . shall be 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), including construing the [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 37 C.F.R. § 42.100(b) (2019); see also
`
`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,
`
`8
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`
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`IPR2019-01655
`Patent 9,098,526 B1
`
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`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.
`
`Patent Owner disputes Petitioner’s construction and proposes the term
`
`means both storing and retrieving. PO Resp. 7–9. Patent Owner further
`
`argues that “[t]he plain and ordinary meaning of this limitation, therefore,
`
`requires either storing a data object or both storing and later retrieving a data
`
`object.” Sur-reply 7.
`
`For reasons discussed in more detail below, we determine, based on
`
`the record before us, that Petitioner has demonstrated by a preponderance of
`
`the evidence that the challenged claims are unpatentable under either
`
`construction. 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, we need not construe
`
`this term.
`
`“predefined capacity”
`
`Claim 1 recites “a storage space of a predefined capacity assigned
`
`exclusively to a user of the wireless device by a storage server.” Ex. 1001,
`
`5:64–67. Independent claim 11 recites a similar phrase. Id. at 6:61–63.
`
`Patent Owner argues that “predefined capacity” in the context of the claims
`
`means “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 Resp. 11.
`
`Patent Owner further argues that “the ’526 patent confirms the plain and
`
`9
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`IPR2019-01655
`Patent 9,098,526 B1
`
`
`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.” Sur-reply 3–4 (citing Ex. 1001, 2:39–
`
`44, 4:12–16; Ex. 2007 ¶ 164); Tr. 31:9–10 (Patent Owner’s counsel arguing
`
`that “the claims require the server to predefine the capacity and not the
`
`user”).
`
`It is necessary for us to resolve this issue because there is a dispute
`
`about whether the prior art (Chaganti) describes “a predefined capacity” as
`
`claimed. In particular, Patent Owner apparently agrees that Chaganti
`
`describes a storage space of a predefined capacity, but argues that the claim
`
`requires that “only the user predefines the capacity.” PO Resp. 43. For the
`
`following reasons, we determine that “a predefined capacity” does not
`
`require the capacity be defined prior to “any interaction or negotiation
`
`between the server and the user” or that the capacity must be predefined by
`
`the server.
`
`We begin with the claim language. Claim 1 recites “a storage space
`
`of a predefined capacity assigned exclusively to a user of the wireless device
`
`by a storage server.” Claim 11 recites a similar phrase. Patent Owner
`
`focuses on the language of claim 1 as representative, as do we. See, e.g., PO
`
`Resp. 9–11. We agree with Petitioner that the plain language of claim 1
`
`requires that the space be assigned by the server, but the claim “do[es] not
`
`require that the server be the entity that defines the capacity of the storage
`
`space.” Pet. Reply 13. We further agree with Petitioner that there is nothing
`
`in claim 1 that requires the capacity to be defined prior to “any interaction or
`
`negotiation with the user.” Id. at 5. While we agree with Patent Owner that
`
`“‘predefined’ means ‘before’” (PO Sur-reply 3), it does not follow that
`
`claim 1 requires only the server to perform the predefining or that the
`
`10
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`IPR2019-01655
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`“capacity” be defined prior to “any interaction or negotiation between the
`
`server and the user.” PO Resp. 11.
`
`Patent Owner directs attention to the second declaration of Mr. Jawadi
`
`in support of its proposed construction. PO Resp. 10 (citing Ex. 2007
`
`¶¶ 163–164); PO Sur-reply 3–4. Mr. Jawadi testifies that the Specification
`
`of the ’526 patent “describes that storage capacity is predefined (i.e.,
`
`defined, decided, or set in advance) by the server (not by the user) for
`
`users before allocating storage to users.” Ex. 2007 ¶ 164 (citing Ex. 1001,
`
`2:39–56, 4:2–25). Even Mr. Jawadi, however, does not contend that such
`
`descriptions from the ’526 patent require that the storage capacity must be
`
`predefined prior to “any interaction or negotiation between the server and
`
`the user” as Patent Owner argues. Id. ¶¶ 163–164.
`
`As Petitioner points out, the ’526 patent describes that “a user of each
`
`of the wireless devices can be assigned with a storage Volume having a
`
`desired size.” Pet. Reply 6 (citing Ex. 1001, 3:38–40, 4:3–5 (“suitable size
`
`of volumes (11) such as 4GB”)). Moreover, the ’526 patent describes an
`
`administrator partitioning volumes of the storage on a server. Ex. 1001,
`
`3:31–41, 4:14–18. Patent Owner fails to direct us to anything in the ’526
`
`patent that would preclude a “user” from partitioning volumes of storage on
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`the server or a user interacting or negotiating with the server (or
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`administrator) prior to partitioning volumes of the storage on the server
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`“having a desired size.” In other words, we agree with Petitioner that Patent
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`Owner “does not point to any restrictive language or rationale that
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`establishes the preferred embodiment precludes a ‘desired’ or ‘suitable’
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`11
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`storage size being defined as part of user interaction prior to assignment or
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`access being granted.” Pet. Reply 6–7.
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`In any event, even if the embodiment to which Patent Owner directs
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`attention is so restrictive, which we find that it is not, our reviewing court
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`has explained, “each claim does not necessarily cover every feature
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`disclosed in the specification,” and “it is improper to limit the claim to other,
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`unclaimed features.” Ventana Med. Sys., Inc. v. BioGenex Labs., Inc., 473
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`F.3d 1173, 1181 (Fed. Cir. 2006). Furthermore, our reviewing court “has
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`repeatedly cautioned against limiting the claimed invention to preferred
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`embodiments or specific examples in the specification.” Williamson v.
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`Citrix Online, LLC, 792 F.3d 1339, 1346–47 (Fed. Cir. 2015); SuperGuide
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`Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (noting
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`that “it is important not to import into a claim limitations that are not a part
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`of the claim”). “[I]t is the claims, not the written description, which define
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`the scope of the patent right.” Williamson, 792 F.3d at 1346–47; see also
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`Phillips, 415 F.3d at 1312 (noting that “[i]t is a bedrock principle of patent
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`law that the claims of a patent define the invention to which the patentee is
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`entitled the right to exclude”). We decline Patent Owner’s invitation to limit
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`the claims to unclaimed features.
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`For all of the above reasons, we determine that “predefined capacity”
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`as claimed does not require the capacity to be “set in advance of any
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`interaction or negotiation between the server and the user” or that the
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`capacity must be predefined by the server. We need not otherwise construe
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`12
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`this phrase or any other terms in the ’526 patent.8 See Nidec Motor Corp.,
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`868 F.3d at 1017.
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`D. Asserted Obviousness of Claims 1–20 over Chaganti and Major
`
`1. Chaganti (Ex. 1008)
`
`Chaganti describes a method and system that allows a user computer
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`(e.g., a wireless device) to communicate over a network with a server to
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`create and access an online personal library storing digital information. See,
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`e.g., Ex. 1008, 2:20–27, 3:9–11, 7:60–8:12, 17:19–24, 18:13–21, Fig. 1. In a
`
`disclosed embodiment, a user may store a webpage in a user’s library on the
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`server for future access using methods such as drag and drop, cut-and-paste,
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`copy-and-paste, or email. Id. at 3:65–4:3, 18:46–51, 20:11–20.
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`Figure 6 of Chaganti is illustrative and reproduced below.
`
`
`
`
`8 Patent Owner proposes a construction for “coupling.” PO Resp. 11–12. It
`is not necessary to construe the term for purposes of this Decision, which
`focuses on “Ground 2.” Pet. 1; Tr. 8:20–22, 33:7–13.
`
`
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`13
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`Figure 6 shows an architecture for dragging and dropping a digital item from
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`a source computer 610 to a target server 100 over a network 102. Id. at
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`19:12–20:49. More specifically, user 103 browsing web page X 10' (of
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`source computer 610) on user computer 104 may wish to copy the web page
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`and store it in library 100 of the target server for future access. Id. at 19:27–
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`31. With web page X 10' (or a link thereto) being displayed on browser
`
`window 610’ of user computer 104 (and stored in its cache), the user may
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`open another window 100' and identify an area in library 100 to store a copy
`
`of web page X. Id. at 20:3–10. The user may then execute an appropriate
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`sequence of selections to drag and drop, cut-and-paste, or copy-and-paste
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`web page X 10' from window 610' to window 100'. Id. at 20:11–17.
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`Accordingly, web page X 10' may be copied from the cache of user
`
`computer 104 to target server 100. Id. at 20:38–40. Alternatively, the user
`
`may specify the address of the target server 100 and transmit a copy of web
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`page X 10' via email. Id. at 20:17–20.
`
`2. Major (Ex. 1007)
`
`Major describes a system and method for browsing content on the
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`World Wide Web (WWW) using a wireless device. Ex. 1007, 1:6–7, 15:16–
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`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–
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`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.
`
`
`9 Citations are to original page numbers.
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`14
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`3. Discussion
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`Petitioner contends claims 1–20 are unpatentable under 35 U.S.C.
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`§ 103(a) as obvious over Chaganti and Major. Pet. 44–70. In support of its
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`showing, Petitioner relies upon the declaration of Dr. Darrell Long. Id.
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`(citing Ex. 1004). Patent Owner relies upon the Second Declaration of Mr.
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`Zaydoon Jawadi (Ex. 2007). PO Resp.10 Patent Owner argues that several
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`limitations are not taught by the prior art and that it would not have been
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`obvious to combine Chaganti and Major. Patent Owner also presents
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`evidence of nonobviousness.
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`We arrange our analysis the same as the parties. First, we focus on
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`the terms of each of the claims. Then, we evaluate Petitioner’s reasons to
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`combine Chaganti and Major, and Patent Owner’s arguments to that end,
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`along with Patent Owner’s nonobviousness contentions. For the reasons that
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`follow, weighing the totality of the evidence of record and the strength of the
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`parties’ showings on the inquiries underlying the question of obviousness,
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`we conclude that Petitioner has met its burden of proving by a
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`preponderance of the evidence that each of the challenged claims would
`
`have been obvious in view of the asserted prior art.
`
`
`10 Patent Owner argues “PO’s Preliminary Response relied on Exhibits
`2001–2006. PO renews its reliance thereon and further relies on” Exhibits
`2007–2012. PO Resp. 6. Any arguments for patentability not raised in the
`Patent Owner Response are deemed waived. See Paper 14, 7. Thus, we
`only consider those specific exhibit citations referenced in Patent Owner’s
`Response and Sur-reply in support of the arguments made. See also Patent
`Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019),
`https://www.uspto.gov/TrialPracticeGuideConsolidated, 66 (“[T]he response
`should include any affidavits or additional factual evidence sought to be
`relied upon and explain the relevance of such evidence.”).
`
`15
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`a. Claim 1: “a wireless device” (preamble)11
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`Petitioner contends, and we agree, that Chaganti teaches “[a] wireless
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`device,” as recited in claim 1, because Chaganti discloses that a “Palm
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`PilotTM” or other “wireless handset devices” may function in place of a user
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`computer 104 for accessing remote storage. Pet. 51 (citing Ex. 1008, 6:61–
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`7:4, 7:60–8:12, 8:13–36, Fig. 1; Ex. 1004 ¶¶ 165–166). We give substantial
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`weight to Dr. Long’s testimony that although Chaganti occasionally refers to
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`details more common to a desktop computer, “a POSA [person of ordinary
`
`skill in the art] understood how to adapt such details when following
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`Chaganti’s express teaching to use a wireless device such as a PDA.” Ex.
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`1004 ¶ 166. Patent Owner does not dispute Petitioner’s showing with
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`respect to the preamble. See generally PO Resp.
`
` b. Claim 1: “at least one cache storage, one wireless
`interface, and program code configured to cause the
`wireless device to”
`
`Petitioner contends Chaganti’s description that “the digital item may
`
`be downloaded to a cache area on the user computer 104” taught the
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`wireless device had at least one cache storage. Pet. 52 (citing Ex. 1008,
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`20:36–37). As explained above, Chaganti describes that computer 104 may
`
`be a wireless device, and therefore, we agree with Petitioner that Chaganti’s
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`description that the computer 104 with a cache area also applies when the
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`computer is a wireless device and meets the “at least one cache storage”
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`limitation. Ex. 1008, 20:36–37 (“with respect to the HTTP protocol, the
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`digital item may be downloaded to a cache area on the user computer 104”).
`
`
`11 We need not resolve the issue of whether the preamble is limiting
`because, regardless of whether the preamble is limiting, Petitioner shows
`that Chaganti meets the preamble.
`
`16
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`Patent Owner does not dispute that Chaganti alone teaches “at least one
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`cache storage.” See generally PO Resp.
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`Petitioner further contends that to the extent Chaganti does not
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`explicitly teach a wireless device comprising “at least one cache storage,” as
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`recited in claim 1, it would have been obvious to implement the PDA taught
`
`by Chaganti with Major’s web-cache functionality for wireless devices. Pet.
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`52 (citing Ex. 1007, 10:6–10, 11:12–16, Fig. 5). Petitioner asserts, and we
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`agree, that Major teaches a wireless device 300 that uses “page cache 114”
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`(cache storage) in memory 308. Id. We determine that Chaganti in view of
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`Major teaches “at least one cache storage” for a wireless device. Although
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`Patent Owner argues that a person having ordinary skill in the art would not
`
`have combined Chaganti and Major, which we address below, Patent Owner
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`does not dispute that Chaganti in view of Major teaches “at least one cache
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`storage” as claimed. See generally PO Resp.
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`Petitioner further contends, and we agree, that Chaganti teaches “one
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`wireless interface,” as recited in claim 1, because Chaganti’s user computer,
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`which may be a wireless device, was “equipped with suitable
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