-- NON-CONFIDENTIAL VERSION --
`
`
`
`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
`_______________________
`
`
`
`PETITIONER’S REPLY
`TO PATENT OWNER’S RESPONSE
`
`
`
`
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`IPR2019-01655, U.S. Patent 9,098,526
`Petitioner’s Reply (Non-Confidential Version)
`
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`B.
`
`B.
`
`Page
`INTRODUCTION ........................................................................................... 1
`CLAIM CONSTRUCTION ............................................................................ 3
`A.
`The Board need not construe any claims terms proposed by Patent
`Owner since the Petition demonstrates how the art discloses the
`limitations under Patent Owner’s proposed construction ..................... 3
`“Comprises storing a data object therein or retrieving a data object
`therefrom” ............................................................................................. 3
`“Predefined capacity” ............................................................................ 5
`C.
`“Coupling” ............................................................................................. 7
`D.
`III. CLAIMS 1-3, 5-11, 13-20 ARE OBVIOUS OVER PRUST AND
`MAJOR............................................................................................................. 9
`A.
`Prust/Major render obvious “utilizing download information for
`the file stored in (said) cache storage.” ................................................. 9
`Prust/Major render obvious “a storage space of predefined
`capacity assigned exclusively to a user of the wireless device by
`a storage server.” ................................................................................. 13
`Prust/Major render obvious “coupling of the wireless device with
`the storage server.” .............................................................................. 14
`Prust/Major render obvious the multiple devices of claims 3 and
`20. ........................................................................................................ 15
`Prust/Major are properly combinable. ................................................ 16
`E.
`IV. CLAIMS 1-20 ARE OBVIOUS OVER CHAGANTI AND MAJOR. ........... 17
`A.
`Chaganti/Major render obvious utilizing download information. ...... 17
`B.
`Chaganti/Major render obvious a predefined capacity. ...................... 20
`i
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`C.
`
`D.
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`IPR2019-01655, U.S. Patent 9,098,526
`Petitioner’s Reply (Non-Confidential Version)
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`C.
`
`Chaganti/Major render obvious dependent claims 3, 4, 6, 7, 10,
`12, 13, 14, 15 and 20. .......................................................................... 20
`1.
`Claims 3 and 20......................................................................... 20
`
`2.
`
`3.
`
`Claims 4 and 13......................................................................... 20
`
`Claims 6, 7, 10, 13, 14 and 15 .................................................. 21
`
`V.
`
`Chaganti/Major are properly combinable ........................................... 21
`D.
`SECONDARY CONSIDERATION OF NON-OBVIOUSNESS ................ 22
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`IPR2019-01655, U.S. Patent 9,098,526
`Petitioner’s Reply (Non-Confidential Version)
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`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Brown v. 3M, 265 F.3d 1349 (Fed. Cir. 2001) ............................................................ 5
`Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371 (Fed. Cir.
`2004) ...................................................................................................................... 4
`Cisco Systems, Inc. v. Centripetal Networks, IPR2018-01436, Paper 40
`(PTAB Jan. 23, 2020) .......................................................................................... 24
`Eastman Kodak Co. v. Goodyear Tire & Rubber Co., 114 F.3d 1547
`(Fed. Cir. 1997) ...................................................................................................... 4
`EWP Corp. v. Reliance Universal Inc., 755 F.2d 898 (Fed. Cir. 1985) ................... 24
`Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366 (Fed. Cir. 2019) .................... 23, 25
`Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288 (Fed. Cir.
`2009) ...................................................................................................................... 5
`In re GPAC Inc., 57 F.3d 1573 (Fed. Cir. 1995) ...................................................... 23
`Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317 (Fed. Cir.
`2004) .................................................................................................................... 24
`In re Keller, 642 F.2d 413 (CCPA 1981) ................................................................... 2
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`1013 (Fed. Cir. 2017) ............................................................................................. 3
`SciMed Life Sys. v. Advanced Cardiovascular Sys., 242 F.3d 1337
`(Fed. Cir. 2001) ............................................................................................... 6-7, 9
`In re Self, 671 F.2d 1344 (CCPA 1982) ................................................................... 13
`Straight Path IP Group, Inc. v. Sipnet EU S.R.O., 806 F.3d 1356 (Fed.
`Cir. 2015) ............................................................................................................... 4
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`IPR2019-01655, U.S. Patent 9,098,526
`Petitioner’s Reply (Non-Confidential Version)
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`SuperguideCorp. v. DirecTV Enters., Inc., 358 F.3d 870 (Fed. Cir.
`2004) ...................................................................................................................... 6
`Vocalife LLC v. Amazon.Com, Inc., No. 2:19-cv-00123-JRG, 2020
`U.S. Dist. LEXIS 60526 (E.D. Tex. Apr. 6, 2020) ................................................ 8
`WMS Gaming Inc. v Int’l Game Tech. 184 F.3d 1339 (Fed. Cir 1999) ............... 23-24
`Suspects
`KSR, 550 U.S. at 419................................................................................................. 13
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`IPR2019-01655, US. Patent 9,098,526
`Petitioner’s Reply (Non-Confidential Version)
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`UPDATED PETITIONER’S EXHIBIT LIST
`
`“The ’526 Patent” or “Challenged Patent”: US. Patent 9,098,526
`to Tsao, titled “System and Method for Wireless Device Access
`to External Storage,” and filed Jan. 8, 2014, priority claimed to
`December 4, 2003.
`
`
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
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`
`
`“The ’526 File History”: Prosecution history of the ’526 Patent
`
`“The ’690 File History”: Prosecution history of US 8,868,690
`0 arent to the ’526 Patent
`
`“Long Decl.” or “Long”: Declaration of Petitioner’s Expert, Dr.
`Darrell Lon ;
`
`“The ’880 File History”: Prosecution history of US 8,606,880
`; andiarent to the ’526 Patent
`
`“Prust”: US. Patent 6,735,623 to Prust, titled “Method and
`
`System for Accessing a Remote Storage Area,” filed Feb. 9,
`2000, issued Ma 11, 2004
`
`“Major”. PCT Publication W0 02/052785, PCT/CA01/01857,
`to Major et al., titled “Information Browser System And Method
`For A Wireless Communication Device,” filed Dec. 21, 2001,
`
`ublished Jul 4, 2002
`
`“Chaganti US 8,117,644 to Chaganti et al., titled “Method and
`System for Online Document Collaboration,” filed May 5, 2010,
`as continuation of application 09/634,725 filed August 5, 2000,
`issued Februa
`14, 2012
`
`
`
`“The ’725 Application”: US. patent application 09/634,725 to
`Chaganti et al., filed August 5, 2000
`“Chaganti File History”: Prosecution history of US 8,117,644
`Cha; anti
`“Palm Web Browser Handbook”: PalmTM Web Browser Pro
`
`
`
`Handbook, 2000, Palm, Inc., together with an authenticating
`declaration from the Internet Archive
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`

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`IPR2019-01655, US. Patent 9,098,526
`Petitioner’s Reply (Non-Confidential Version)
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`“BlackBerry 6710 User Guide”: BlackBerry Wireless Handheld,
`900/ 1900 MHZ GSM/GPRS Networks, 900/ 1800 MHZ
`
`
`
`GSM/GPRS Networks, Handheld User Guide (Blackberry 6710,
`
`“BlackBerry 6510 User Guide”; BlackBerry 6510 from Nextel®,
`Handheld User Guide, 27 Ma 2003
`
`“BlackBerry 6750 User Guide”: BlackBerry Wireless Handheld,
`800/ 1900 MHz CDMA Network, Handheld User Guide
`
`Blackbe
`
`6750
`
`a 13, 2003
`
`US. 6,985,927 to Drive, LLC “Shared Internet Storage Resource,
`User Interface System, and Method, ” filed February 11, 2002,
`and issued January 10, 2006
`1017
`
`1013
`
`1014
`
`1015
`
`1016
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`
`
` US. 7,107,045 to Sprint Spectrum L.P., “Method and System for
`
`Distribution of Media,” field Dec. 3, 2002 and Issued Sep. 12,
`2006
`
`“Whitehead”: E. J. Whitehead, et al., WebDAV A network
`protocolfor remote collaborative authoring on the Web, in
`Proceedings of the Sixth European Conference on Computer
`Su - n orted Coo erative Work, 1999 , at 291—3 10
`
`“WebDAV IETF RFC2518”: IETF RFC2518 HTTP Extensions
`
`for Distributed Authorin_ — WEBDAV Feb. 1999
`
`“Microsoft Dictionary”: Excerpts of Microsoft Computer
`Diction , 4th ed., 1999
`a ”_
`“Newton 5 . Excerpts of Newton’s Telecom Dictionary, (15th
`ed., 1999
`
`Zaydoon (“Jay”) Jawadi Full Deposition Transcript V. 1. taken 8-
`27-2020
`
`Director Memorandum dated Au_ st 18, 2020
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`IPR2019-01655, U.S. Patent 9,098,526
`Petitioner’s Reply (Non-Confidential Version)
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`I.
`
`INTRODUCTION
`Nothing in SynKloud’s Patent Owner Response (“Resp.,” Paper 16) refutes
`
`the clear grounds of obviousness that led the Board to institute this inter partes
`
`review on the two separate grounds, (a) Prust (Ex-1006) in view of Major (Ex-1007)
`
`(b) Chaganti (Ex-1008) in view of Major.
`
`PO’s winding arguments misapprehend the law, the scope of the claims
`
`challenged, the disclosures of the ’526 Patent and prior art, and wholesale fail to
`
`address multiple arguments in the Petition (“Pet.,” Paper 1). PO rehashes the same
`
`arguments that the Board properly rejected in its Institution Decision (“Ins. Dec.”,
`
`Paper 13), without providing the Board with additional evidence, authority or
`
`rationale that would address the Board’s stated reasoning and findings. The
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`Response is largely based on arguments that are not commensurate with the scope
`
`of the claims. PO offers tortured claim constructions that are neither proper, nor
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`effective in distinguishing the evidence of invalidity in the Petition.
`
`The foundation of the Response is its repeated assertion that the prior art itself
`
`must disclose all elements of the claims explicitly, before the knowledge of the
`
`ordinary artisan can be considered, and then only for the purpose of “modifying” or
`
`“combining” what is expressly taught by the references. See, e.g., Resp. 13 (“PO
`
`stresses that unless and until the Petitioner demonstrates that each of the recitations
`
`are met by features in the two references ...”). That is not the correct legal
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`IPR2019-01655, U.S. Patent 9,098,526
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`framework, and is a dispositive legal flaw in PO’s attempt to rebut the strong
`
`showing of unpatentability demonstrated by the Petition.
`
`Specifically, PO’s attempt to persuade the Board to ignore the knowledge of
`
`the artisan is directly contrary to Director Iancu’s recently issued guidance on the
`
`use of the knowledge of a POSA: “The use of evidence of the skilled artisan's general
`
`knowledge
`
`is foundational
`
`to a proper obviousness analysis.”
`
` Director
`
`Memorandum (Ex-1023), Aug. 18, 2020 at 4 (citing KSR, 50 U.S. at 401; Randall
`
`Mfg. v. Rea, 733 F.3d 1355, 1362-63 (Fed. Cir. 2013); Dystar Textilfarben GmbH v.
`
`C.H Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006)). And while the art here
`
`teaches all claim limitations, the Director’s Memorandum expressly rejects the
`
`premise of many of PO’s arguments: “Permissible uses of general knowledge of one
`
`having ordinary skill under §103 include ... supplying missing claim limitations that
`
`were generally known in the art[.]” Id. at 4-6 (citing Koninklijke Philips v. Google,
`
`948 F.3d 1330, 1337-39 (Fed. Cir. 2020); see also In re Keller, 642 F.2d 413, 425
`
`(CCPA 1981). The Board already admonished that “neither PO nor Mr. Jawadi
`
`consider the purported knowledge of a person having ordinary skill in the art at the
`
`time of the invention.” Inst. Dec. 19. Tellingly, PO did not rectify the deficiency,
`
`but instead doubled down by urging the Board not to consider the knowledge of a
`
`POSA in interpreting the references.
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`IPR2019-01655, U.S. Patent 9,098,526
`Petitioner’s Reply (Non-Confidential Version)
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`II. CLAIM CONSTRUCTION
`A. The Board need not construe any claims terms proposed by Patent
`Owner since the Petition demonstrates how the art discloses the
`limitations under Patent Owner’s proposed construction
`As an initial matter, the Board need not construe any of PO’s proposed claim
`
`terms, because the art renders the claim terms obvious, even under PO’s proposed
`
`constructions. See Institution Decision, 8, 14, 17. The Board only needs to construe
`
`terms in controversy, and only to the extent necessary to resolve the controversy.
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
`
`(Fed. Cir. 2017).
`
`That is particularly so here, where the PO disregards controlling case law,
`
`does not proffer viable constructions, and fails to identify intrinsic evidence that
`
`supports departing from the plain and ordinary meaning of the terms.
`
`B.
`
`“Comprises storing a data object therein or retrieving a data object
`therefrom”
`PO charges that “Petitioner’s argument rests on grammatical analysis of the
`
`word ‘OR’, not the understanding one of skill in the art would have, reading the ‘526
`
`Patent.” Resp. 8. But PO’s argument misapplies governing law, as contextual
`
`understanding of a specification does not give one permission to rewrite claims,
`
`particularly where “claim language is plain.” Straight Path IP Group, Inc. v. Sipnet
`
`EU S.R.O., 806 F.3d 1356, 1361 (Fed. Cir. 2015). PO’s arguments fall flat. There is
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`IPR2019-01655, U.S. Patent 9,098,526
`Petitioner’s Reply (Non-Confidential Version)
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`nothing in the specification that manifestly requires the inclusion of the out-of-band
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`download feature of a preferred embodiment, and certainly nothing that is
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`definitional or disavowing––arguments that PO does not make.
`
`Instead, PO admits that the plain meaning of the claim term “or” does not
`
`support its proposed construction, but asks the Board to ignore this plain meaning
`
`and instead divine the “intent” of the drafter. Resp. 8 (“although the grammar
`
`structure in the claims may not be perfect, the inventor (this application was
`
`prosecuted pro se) clearly intended to claim….”). That turns the public notice
`
`function of claims on its head and is the opposite of what the law requires. Claims
`
`are read according to the rules of ordinary English grammar and syntax. Eastman
`
`Kodak Co. v. Goodyear Tire & Rubber Co., 114 F.3d 1547, 1553 (Fed. Cir. 1997);
`
`Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1373-1374 (Fed. Cir. 2004)
`
`(“[I]n accord with our settled practice, we construe claims as written, not as the
`
`patentees wish they had written it.”). If the claims were written in error, as it now
`
`seems PO admits, the PO should have sought reissue of the patent prior to litigation,
`
`or filed a motion to amend in this proceeding. It did neither. Thus, it is improper for
`
`the PO to ask the Board to change the construction of the term, when it was unwilling
`
`to do so itself through proper procedure.
`
`PO also posits that an alternative limitation “contravenes a fundamental rule
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`IPR2019-01655, U.S. Patent 9,098,526
`Petitioner’s Reply (Non-Confidential Version)
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`of claim construction, in that it renders the ‘storing’ aspect of the claim superfluous
`
`and unnecessary.” Resp. 8. PO again misapprehends the law. Just like the
`
`individual elements of any Markush group are not superfluous, the alternative
`
`limitations in the ’526 Patent are not superfluous––at least one of the alternatives
`
`must be satisfied. Under PO’s theory, drafting limitations in the alternative would
`
`always generate superfluous limitations and thus would always be improper. That
`
`fails on its face; drafting claim limitations in the alternative is a well-established
`
`practice. Brown v. 3M, 265 F.3d 1349, 1352, (Fed. Cir. 2001); Fresenius USA, Inc.
`
`v. Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009).
`
`“Predefined capacity”
`C.
`PO argues that “predefined capacity” should purportedly require “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.” Resp. 11.
`
`The Board should reject PO’s construction. Nothing in the claims requires
`
`the capacity be defined prior to “any interaction or negotiation with the user.”1 PO’s
`
`
`
`1 PO’s construction includes additional, extraneous language: “the server assigns
`
`an amount of storage, storage to be assigned exclusively for one user, that amount
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`IPR2019-01655, U.S. Patent 9,098,526
`Petitioner’s Reply (Non-Confidential Version)
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`argument is based solely on a tortured read of the specification that, even if correct,
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`would amount to nothing more than a prohibited importation of limitations from the
`
`specification. See SuperguideCorp. v. DirecTV Enters., Inc., 358 F.3d 870, 875
`
`(Fed. Cir. 2004); SciMed Life Sys. v. Advanced Cardiovascular Sys., 242 F.3d 1337,
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`1340 (Fed. Cir. 2001). But, like the claims, none of the preferred embodiments
`
`require defining the capacity in advance of any user interaction or negotiation as
`
`advocated by PO. The specification does not even use the term “predefined” and
`
`only uses the term “capacity” in passing. Ex-1001 2:29-32. The specification only
`
`gives examples of partitioning and assigning storage volumes, without restrictive
`
`language requiring that the size of the volume must have been established in advance
`
`of any user interaction or negotiation. For example, the specification uses open-
`
`ended language: “a user of each of the wireless devices can be assigned with a
`
`storage Volume having a desired size.” Id. 3:38-40 (emphasis added); 4:3-5
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`(“suitable size of volumes (11) such as 4GB”) (emphasis added). PO does not point
`
`
`
`having been set in advance of any interaction or negotiation between the server and
`
`the user.’” Resp. 11 (emphasis added). The extra language in bold has nothing to do
`
`with the meaning of the terms “predefined capacity”; this is not claim construction,
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`but claim drafting, and should be rejected out of hand.
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`IPR2019-01655, U.S. Patent 9,098,526
`Petitioner’s Reply (Non-Confidential Version)
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`to any restrictive language or rationale that establishes the preferred embodiment
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`precludes a “desired” or “suitable” storage size being defined as part of user
`
`interaction prior to assignment or access being granted. Tellingly, PO does not argue
`
`disclaimer, disavowal, or lexicography. Nor does the PO explain how any critical
`
`feature of the purported invention turns on the storage capacity being defined in
`
`advance of any user interaction or negotiation. At best, PO’s argument is based on
`
`a strained interpretation of details of a preferred embodiment, but preferred
`
`embodiments do not limit claims. SciMed, 242 F.3d at 1340.
`
`“Coupling”
`D.
`In a clearly outcome-driven effort, PO suggests that “coupling” must be a high
`
`performance coupling: “linked to form a relationship such that the coupled system
`
`is efficient, effective and interactive.” Resp. 11-12. The construction fails for
`
`multiple reasons. First, as the Board properly observed, “we cannot find anything
`
`in the Specification of the ’526 patent outside of the claims that defines, explains, or
`
`even mentions the word ‘couple’ or ‘coupling’ that would lead us to determine
`
`‘couple’ means something other than the ordinary and customary meaning of that
`
`term there is nothing in the specification that would permit narrowing the term from
`
`its plain meaning.” Inst. Dec. 16.
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`Second, the qualifiers of “efficient, effective and interactive” do not clarify
`
`the claims, but instead impermissibly inject subjective, ambiguous language into an
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`IPR2019-01655, U.S. Patent 9,098,526
`Petitioner’s Reply (Non-Confidential Version)
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`otherwise simple claim term. See e.g., Vocalife LLC v. Amazon.Com, Inc., No. 2:19-
`
`cv-00123-JRG, 2020 U.S. Dist. LEXIS 60526, at *49-50 (E.D. Tex. Apr. 6, 2020)
`
`(“Court rejects Defendants' proposed construction. Rewriting ‘target’ as ‘desired’
`
`does not clarify claim scope and potentially injects ambiguity regarding the
`
`subjective nature of desire.”). Here, 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. See Jawadi Dep. Aug.
`
`27, 2020 (Ex-1022) 117:24-120:9. Even the Response is internally inconsistent
`
`about its construction, injecting another, subjective requirement: “smooth.” Resp.
`
`29 (“the coupled system ... must be effective and smooth.”).
`
`The inherently ambiguous nature of the proposal does nothing to resolve the
`
`dispute between the parties. Even using PO’s construction, if a reference includes a
`
`coupling that is less efficient, effective and interactive than that disclosed by the ’526
`
`Patent, it would still satisfy the proposal, which does not require the most efficient,
`
`effective and interactive coupling. This is unworkable.
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`Third, it is unsupported. There are no performance limitations in the claim
`
`language, which would exclude, e.g., inefficient coupling. None of PO’s citations
`
`(Resp. 12) to the specification even refer to the purported link/connection/coupling,
`
`but instead are general statements. E.g. Abstract (referring to efficient and effective
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`IPR2019-01655, U.S. Patent 9,098,526
`Petitioner’s Reply (Non-Confidential Version)
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`“use” of remote storage, not efficient and effective coupling); 3:3-6 (describing the
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`network, i.e., the Internet as being “built up”). The proposal is little more than an
`
`importation of miscellaneous words from the specification into the claims, that in
`
`any event do not distinguish the cited references. SciMed, 242 F.3d at 1340.
`
`III. CLAIMS 1-3, 5-11, 13-20 ARE OBVIOUS OVER PRUST AND MAJOR.
`A. Prust/Major render obvious “utilizing download information for
`the file stored in (said) cache storage.”
`PO misrepresents the Petition, Prust and Major regarding web cache. The
`
`Petition sets forth that Prust includes a conventional web browser and thus a POSA
`
`understood that a conventional web browser includes cache. Pet. 20. Alternately,
`
`the Petition sets forth modifying the teachings of Prust to include the web cache as
`
`taught by Major, and includes detailed motivations therefor. Pet. 16-21.
`
`PO makes three interrelated arguments why the recited cache limitation is
`
`missing, and specifically why cache storing a URL is missing.2 Resp. 13-24.
`
`
`
`2 For context, the ’526 Patent never uses the term “cache” in the specification or
`
`claims as originally filed. Ex-1001; Ex-1002 528-29. The specification refers to
`
`“cached web-pages”, i.e. caching for the conventional purpose of caching visited
`
`web-pages. EX-1001 5:13-17. The terms “URL” or “uniform resource locator” do
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`IPR2019-01655, U.S. Patent 9,098,526
`Petitioner’s Reply (Non-Confidential Version)
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`Underlying PO’s arguments is the faulty premise that the use of web cache in a web
`
`browser was not well-known and widespread in 2003. PO argues:
`
`• that web cache and storing of web pages is foreign to a POSA, Resp.
`14 (“Quite simply, the idea of storing or obtaining URLs is foreign to
`Prust.”);
`• that the cache recited in the ’526 Patent is a “special purpose” cache,
`Id. (“The term cache is used in the ‘526 Patent to refer to a storage
`provision that does only one thing–it stores download information, the
`hyperlink or URL”);
`• that a POSA does not know where to get a URL or how to store it in
`
`cache, Id. (The references “[do] not teach the artisan where to obtain a
`
`URL, where in the cache it might be stored, or where it came from.”);
`
`and
`
`• that a POSA “would further recognize that storing such a URL is
`
`unnecessary and a waste of resources.” Resp. 15.
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` However, the cross-examination testimony of PO’s expert gutted the PO’s
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`cache arguments and demonstrated that none had factual support. Specifically, PO’s
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`not appear in the ’526 Patent. Id. If the ’526 Patent developed some new and unique
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`caching technology having the “sole purpose” of storing URLs, it would have been
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`described; it is conspicuously absent.
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`expert admitted that the use of cache with web browsers was “well-known and
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`widespread in 2003.” Ex-1022 27:17-20. In fact, he could recall specific web
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`browsers that used cache in 2003, but could not recall any that did not. Id. at 25:12-
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`27.3. He further admitted that it was generally accurate that “the use of web
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`browsers was common on wireless devices in 2003.” Id. at 23:16-18.
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`PO’s expert further admitted that the ‘526 Patent did not explain how the
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`cache operated and did not show where the cache is located in the figures, but a
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`POSA in 2003 would know that the cache was located in the web browser and
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`understood how cache operated and that it would be used to store web pages. Id. at
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`43:15-47:6. He further testified that the cache would also store URLs for fetched
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`web pages. Jawadi Dep. 75:12-77:15 (admitting URLs on a newly browsed page
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`are stored in web cache when the page is browsed), 77:17-78:18 (admitting that
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`when a user returns to a webpage already in web cache, the page and its URLs are
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`retrieved from cache).
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`Separately from PO’s faulty legal premise of its cache arguments, the Board
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`is entitled to completely disregard its cache arguments for failing to provide proper
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`factual support, and for which its attorney arguments were refuted by its own expert.
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`PO’s arguments that even if a URL was stored in cache, a POSA would not know
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`what to do with it is likewise factually unsupportable. Resp. 17-24. As explained
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`IPR2019-01655, U.S. Patent 9,098,526
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`in the Petition, Prust taught seamless access to remote storage using the operating
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`system, browser, and email applications of a wireless device. Pet. 36-37. Prust
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`taught dragging and dropping files to the remote storage. Id. Prust taught
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`transmitting URLs in an instruction to the remote storage to initiate an out-of-band
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`download of a file at the URL into the remote storage. Id. at 31-32. As explained
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`by Dr. Long, a POSA would readily understand that users using the device of Prust
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`with the web-cache of Major would use URLs stored in web-cache to effect out-of-
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`band transfers, including through the use of copy-and-paste, typing, or otherwise.
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`Id. at 32-25. The reference to common functionality and general knowledge
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`applicable to the devices taught by Prust and Major is not only proper, it is what the
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`law of obviousness requires.
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` PO does not meaningfully contest the expert opinions of Dr. Long––
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`supported by extensive corroborating documentation––that using web browsers of
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`wireless devices to find and copy URLs was part of the general knowledge in 2003.
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`Pet. 8-12. In contrast, PO’s expert essentially concedes this knowledge, and at
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`deposition, could not identify any documents to rebut Dr. Long. Jawadi Dep. 18:3-
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`17. Patent Owner ignores the wireless device product literature, Chaganti, and the
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`other references demonstrating the copy-and-paste functionality, including of the
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`wireless devices described in Prust & Major, that was part of the general knowledge
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`of a POSA in 2003.
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`PO argues that employing copy-and-paste would not be obvious to a POSA
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`because that technique would be “cumbersome and unconventional.” Resp. 21-23.
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`PO posits that the copy-and-paste would arbitrarily require multiple steps using PDA
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`functionality. Id. Whether browsers, trackwheels and menu functionality of
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`commercial available PDAs in 2003 were cumbersome is not legally relevant as
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`“non-cumbersome” is not a claim limitation. KSR, 550 U.S. at 419; In re Self, 671
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`F.2d 1344, 1348 (CCPA 1982). What is legally relevant, however, is that this
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`functionality was known (here, even reflected in commercially available products),
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`and that PO acknowledges that this functionality was known. See Ex-2007 ¶¶ 69-
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`82 (citing functionality in Blackberry 6510 User Manual (Ex-1014) and admitting
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`8-step process “known”).
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`B. Prust/Major render obvious “a storage space of predefined
`capacity assigned exclusively to a user of the wireless device by a
`storage server.”
`Apart from its faulty claim construction argument, PO argues that Prust does
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`not teach a server that defines the capacity, because, PO argues, a user does that.
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`Resp. 24-26. That fails for multiple reasons. First, the claims require a server
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`assigning a storage space, the claims do not require that server be the entity that
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`defines the capacity of the storage space. PO again makes arguments based on
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`limitations not in the claims. Second, contrary to PO’s argument, in Prust it is the
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`server and storage network 220 (not the user) that defines the capacity and assigns
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`it to the user. Pet. 14, 25-26. Prust discloses that “the storage network 220 defines
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`a pool of virtual storage areas 225 that can be individually assignable” (Prust 4:39–
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`41), and then later does the assignment (id. at 4:46-49). Third, while PO complains
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`that capacity definition is in response to a user request, PO confuses assignment with
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`capacity definition. Prust can hardly be criticized for assigning storage area
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`responsive to a user request, as that is always the case. Fourth, even if PO were
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`correct that in Prust the user requests the quantity of storage (something not taught
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`by Prust), it is self-evident that the user has no ability to define actual storage
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`amount; the server––a machine––necessarily does that, and involvement by a
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`human, if any, does not diminish the action by the server. For example, in the ’526
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`Patent, it is an administrator that partitions the volumes of the storage, but despite
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`that human interaction it is the server that necessarily operates on the storage
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`devices. Ex-1001 3:31-41.
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`C. Prust/Major render obvious “coupling of the wireless device with
`the storage server.”
`PO argues that Prust’s email method of coupling with the remote storage is
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`not “efficient, effective, and interactive” and thus is not coupling. Resp. 28-30. As
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`discussed above (§II.D), PO’s construction is not correct and should be rejected.
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`IPR2019-01655, U.S. Patent 9,098,526
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`Furthermore, this argument does not distinguish Petitioner’s arguments, as it only
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`pertains to the “out-of-band” download limitation, which is optional in any event
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`(supra §II.B). And even then, the argument does not apply to Petitioner’s copy-and-
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`paste arguments. Pet. 27-29. Moreover, even if one relies on the email embodiment
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`of Prust for the storing operation of [1d], the operation of [1c] need not be email,
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`because “the operation” can be a group of operations. See, e.g., Claims 1 ([1d] “the
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`operation…comprises”), claim 6 (“said operation further comprising”), and claim 8
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`(same). Likewise, Prust taught usin