Trials@uspto.gov
`571-272-7822
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` Paper 21
` Entered: June 29, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION and HP INC.,
`Petitioner,
`
`v.
`
`SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`IPR2020-00316
`Patent 9,098,526 B1
`____________
`
`
`
`Before SALLY C. MEDLEY, JESSICA C. KAISER, and SCOTT
`RAEVSKY, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`

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`IPR2020-00316
`Patent 9,098,526 B1
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`I. INTRODUCTION
`Microsoft Corporation and HP Inc. (collectively “Petitioner”) 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 81 (“Prelim.
`Resp.”). Institution of an inter partes review is authorized by statute when
`“the information presented in the petition . . . and any response . . . shows
`that there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`§ 314(a). Upon consideration of the Petition, the Preliminary Response, and
`the evidence of record, we determine that Petitioner has established a
`reasonable likelihood of prevailing with respect to the unpatentability of at
`least one claim of the ’526 patent. Accordingly, for the reasons that follow,
`we institute an inter partes review of claims 1–20 of the ’526 patent.
`
`A. Related Matters
`Petitioner indicates that the ’526 patent is or has been the subject of,
`or relates to, the following court proceedings: Synkloud Technologies, LLC
`v. HP Inc., Case No. 1-19-cv-01360 (D. Del. filed July 22, 2019) and
`Synkloud Technologies, LLC v. BLU Products, Inc., Case No. 1-19-cv-00553
`(D. Del. filed Mar. 22, 2019). Pet. 3 (Mandatory Notices). Petitioner also
`indicates that the ’526 patent is the subject of IPR2019-01655, for which a
`decision to institute inter partes review has been granted. Id. (citing Unified
`Patents LLC v. Synkloud Technologies, LLC, IPR2019-01655 (PTAB Sept.
`
`
`1 Patent Owner filed two identical Preliminary Responses. Papers 7, 8. We
`refer to Paper 8. In this decision, we further expunge Paper 7 as duplicative.
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`30, 2019) (“IPR1655”)); see IPR1655, Paper 13. 2 In IPR1655, Unified
`Patents LLC filed a petition challenging claims 1–20 of the ’526 patent
`based on prior art not asserted in the instant Petition. IPR1655, Paper 1 at 1.
`Petitioner argues that we should not exercise our discretion to deny
`institution under 35 U.S.C. § 314(a), citing and discussing the General
`Plastic factors. Pet. 3–5 (citing General Plastic Industrial Co., Ltd. v.
`Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 16 (PTAB Sept. 6,
`2017) (precedential as to § II.B.4.i)). In particular, Petitioner asserts that
`none of the General Plastic factors weigh in favor of denial
`because, for example, (1) a different petitioner challenged the
`526 in that earlier proceeding, (2) Petitioners’ grounds in this
`proceeding all rely on different prior art than that earlier
`proceeding, and (3) Petitioners have not already received the
`Preliminary Patent Owner response for that earlier proceeding.
`Id. at 5. Patent Owner does not contest Petitioner’s showing as to this issue.
`See generally Prelim. Resp. Based on the record before us, having
`considered Petitioner’s showing and the General Plastic factors, we
`determine not to exercise our discretion to deny institution under § 314(a).
`
`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
`
`
`2 Two additional court proceedings, which assert continuation patents
`sharing a common specification with the ’526 Patent, were identified in
`IPR1655: Synkloud Technologies, LLC v. Dropbox, Inc., Case No. 6:19-cv-
`00526 (W.D. Tex. filed Sept. 6, 2019) and Synkloud Technologies, LLC v.
`Adobe Inc., Case No. 6:19-cv-00527 (W.D. Tex. filed Sept. 6, 2019). See
`IPR1655, Paper 13 at 3.
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`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.
`In one embodiment, the storage server’s external storage may be
`partitioned by dividing it into multiple small volumes of storage space that
`may be exclusively assigned to users. Id. at 4:1–31. Partitioning may be
`done through a web-console on a console host by an administrator. Id. at
`4:5–8. Based on storage information received from the storage server’s
`support software, the administrator may use the web-console to partition
`each storage device and send storage partition information to the support
`software. Id. at 4:9–18. The support software may perform the actual
`partition by dividing the storage device into multiple small volumes, each of
`which may be exclusively assigned to and used by a user of a specific
`wireless device. Id. at 4:21–31.
`The ’526 patent also describes a “wireless out-band download”
`approach for downloading data from a remote location to an assigned
`storage volume. Id. at 2:8–10, 2:50–53, 5:1–30, Fig. 3.
`Figure 3 is illustrative and is reproduced below.
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`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
`information to other service modules 7 of storage server 3 via path (b). Id. at
`5:18–20. Fourth, other service modules 7 may send a web download request
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`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 additionally 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
`storage space in response to the user from the wireless
`device performing the operation,
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`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, see also id. at 11 (Certificate of Correction).
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–20 are unpatentable based on the
`following grounds (Pet. 5):
`
`References
`McCown, 4 Dutta5
`McCown, Dutta, Coates6
`
`Claims Challenged
`1–5, 9, 11, 12, 16, 18–20
`6–8, 10, 13–15, 17
`
`35 U.S.C §
`103(a)3
`103(a)
`II. DISCUSSION
`A. Claim Construction
`In this inter partes review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2019). The claim
`construction standard includes construing claims in accordance with the
`
`
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’526
`patent has an effective filing date before the effective date of the applicable
`AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and
`103.
`4 WO 01/67233 A2, published Sept. 13, 2001 (Ex. 1005, “McCown”).
`5 U.S. Pat. Appl. Pub. No. US 2002/0078102 A1, published June 20, 2002
`(Ex. 1006, “Dutta”).
`6 U.S. Pat. No. 7,266,555 B1, issued Sept. 4, 2007 (Ex. 1007, “Coates”).
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`ordinary and customary meaning of such claims as understood by one of
`ordinary skill in the art and the prosecution history pertaining to the patent.
`See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en
`banc).
`
`“wireless device”
`Through the arguments for its proposed construction of “cache for a
`wireless device” (Prelim. Resp. 5–6) and those regarding whether the prior
`art meets a “cache for a wireless device” (id. at 11–16), we understand
`Patent Owner construes a wireless device as something other than a
`computer or personal computer, such as a personal data assistant (PDA).
`There is nothing in claim 1 or independent claim 11 that excludes personal
`computers or computers from the category of “wireless devices”; all that the
`plain claim language requires is that the device be wireless.
`Claim 5, which depends directly from claim 1, recites “wherein the
`wireless device further is one of a cell phone or a personal data assistant and
`management device (‘PDA’).” Claim 19 depends directly from independent
`claim 11 and is similar. “The concept of claim differentiation ‘normally
`means that limitations stated in dependent claims are not to be read into the
`independent claim from which they depend.’” Nazomi Comms., Inc. v. Arm
`Holding, PLC, 403 F.3d 1364, 1370 (Fed. Cir. 2005) (quoting Karlin Tech.,
`Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971–72 (Fed. Cir. 1999)); see
`also Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 699 (Fed. Cir.
`1983) (explaining it is not proper “to read into an independent claim a
`limitation explicitly set forth in another claim.”). To the extent that Patent
`Owner is attempting to limit claim 1 or independent claim 11 in accordance
`with the recitation in dependent claims that require the wireless device must
`be a cell phone or a PDA (at the exclusion of a computer), and based on the
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`current record, we decline to so limit independent claims 1 and 11.
`Accordingly, at this juncture of the proceeding we determine that a “wireless
`device” does not exclude a personal computer or computer.
` “cache storage”
`Petitioner proposes that the phrase “cache storage,” as recited in claim
`1, should be construed to mean “storage that is more readily accessible by
`the user or user application than the original storage location.” Pet. 13
`(citing Ex. 1003 ¶ 77), see id. at 11–13 (citing Ex. 1003 ¶¶ 70, 71, 73–75,
`77). Petitioner explains that its proposed construction reflects the ordinary
`meaning of the term in the context of the ’526 patent, which “discloses that
`the user accesses a web page ‘which contains the data name for the
`downloading,’ which information ‘becomes available in the cached
`web-pages on the wireless device after the web-browser access to the web
`site.” Id. at 12 (citing Ex. 1001, 5:8–17; Ex. 1003 ¶ 71). According to
`Petitioner,
`[t]he download information is therefore stored on the wireless
`device in some convenient memory location of that device, so
`that it can be more readily accessed, without having to make
`another request to the remote server site for the information,
`when the user makes a selection of what information should be
`downloaded and stored.
`Id. at 12–13 (citing Ex. 1003 ¶ 74).
`Patent Owner does not disagree with Petitioner’s proposed
`construction, but argues that the term “cache storage” should be construed in
`the context of the ’526 patent’s claim language, which recites “a wireless
`device comprising at least one cache storage.” Prelim. Resp. 5 (citing Ex.
`1001, 5:61–62 (claim 1)). Patent Owner explains that “a cache . . . is
`intended to refer to both cache and cache storage . . . for a wireless device,”
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`which “can be completely different, and require and provide different effect,
`from a cache designed for a computer or other wired device.” Id. at 5–6. As
`explained above and at this juncture of the proceeding, we determine that a
`“wireless device” does not exclude a personal computer or a computer. At
`this juncture of the proceeding and based on the current record, we find
`Petitioner’s contentions on this term sufficiently persuasive, and we adopt
`Petitioner’s proposed construction for “cache storage” to mean “storage that
`is more readily accessible by the user or user application than the original
`storage location.” See Pet. 11–13 (citing Ex. 1001, 5:8–26; Ex. 1003 ¶¶ 70–
`77).
`
` “utilizing download information”
`Petitioner argues the phrase “utilizing download information for the
`
`file stored in said cache storage” “should be construed to mean using
`information stored in the cache storage of the wireless device to download a
`file from a remote server.” Pet. 14 (citing Ex. 1003 ¶ 82). According to
`Petitioner, “as Dr. Houh explains, the ‘cache storage’ is claimed as part of
`the wireless device, . . . but the file being downloaded is never sent to the
`wireless device; it is instead transferred directly from the remote site to the
`assigned storage location.” Id. (citing Ex. 1001, 5:8–17, 5:60–62; Ex. 1003
`¶¶ 79–82; Ex. 1005, 5:21–26; Ex. 1009, 81).
`
`Patent Owner argues, “‘[u]tilizing download information for the file’
`should be understood to mean ‘utilizing a URL which points to the file’”
`because “Petitioners’ Expert, [Dr. Houh], and the Petition itself, make it
`clear that the information in question is a Universal Record Locator, or
`URL.” Prelim. Resp. 7–8 (citing Ex. 1003 ¶ 200; Pet. 50; Ex. 2001 ¶ 59).
`At this juncture of the proceeding and based on the current record, we find
`Petitioner’s contentions on this term sufficiently persuasive, and we adopt
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`Petitioner’s construction of “utilizing download information for the file
`stored in said cache storage” to mean “using information stored in the cache
`storage of the wireless device to download a file from a remote server” to
`clarify that it is the download information that is stored in cache storage, not
`the file itself. See Pet. 14 (citing Ex. 1001, 5:8–17, 5:60–62; Ex. 1003 ¶¶
`79–82; Ex. 1005, 5:21–26; Ex. 1009, 81).
`For purposes of this Decision, we need not expressly construe any
`other claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed
`that are in controversy, and only to the extent necessary to resolve the
`controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.
`in the context of an inter partes review).
`
`B. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(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;7 and (4) when in evidence, objective
`
`7 Relying on the testimony of Dr. Henry Houh, Petitioner offers an
`assessment as to the level of ordinary skill in the art and the general
`knowledge of a person of ordinary skill (POSA) at the time of the ’526
`patent. Pet. 6 (citing Ex. 1003 ¶ 47). For example, Dr. Houh states that a
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`indicia of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`C. Asserted Obviousness of Claims 1–5, 9, 11, 12, 16, and 18–20 over
`McCown and Dutta
`Petitioner contends claims 1–5, 9, 11, 12, 16, and 18–20 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over McCown and Dutta.
`Pet. 26–62. In support of its showing, Petitioner relies upon the declaration
`of Dr. Henry Houh. Id. (citing Ex. 1003). In support of its Preliminary
`Response, Patent Owner relies upon the declaration of Mr. Zaydoon Jawadi
`(Ex. 2001). Prelim. Resp. 4.
`
`1. McCown
`McCown describes a method for downloading files across a network
`from a remote site into a client’s storage space account within a storage site.
`Ex. 1005, 3:26–28, 8:12–13. The method may include the use of a user site,
`a remote site that has a web server, and a storage site. See, e.g., id. at 3:26–
`4:7, 7:17–25.
`The user site may be a machine capable of digital network
`communications with input and output devices for sending and receiving
`information, and a browser for Internet connectivity. Id. at 7:27–8:1, 8:5–6.
`
`
`POSA “would have been someone with a bachelor’s degree in electrical,
`computer engineering, computer science, or related field with two years of
`experience in a relevant technical field, such as remote storage systems with
`related experience in wireless technologies and wireless devices.” Ex. 1003
`¶ 47. Patent Owner does not propose an alternative assessment. See
`generally Prelim. Resp. To the extent necessary, and for purposes of this
`Decision, we accept the assessment offered by Petitioner as it is consistent
`with the ’526 patent and the asserted prior art.
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`Examples of a user site include a personal computer, laptop, palmtop, or a
`cell phone. Id. at 7:27–29.
`The remote site may be a web site on the Internet with one or more
`files available for downloading. Id. at 6:17–18. Remote site may include a
`storage medium for storing files as well as file lists used to identify each file,
`for example, by URL. Id. at 6:23, 7:8–14. Remote site may also include a
`web server for interfacing the remote storage medium to the Internet, and the
`web server may be capable of sending and receiving information over the
`Internet, the information sent including webpages, file lists, and files. Id. at
`7:17–25.
`The storage site may include a storage medium with storage space
`accounts implemented thereon for clients to access on the Internet. Id. at
`8:11–13, 8:17–18. To access its storage space account, a client must
`provide a user identification and password, which may be authenticated by
`an account manager. Id. at 8:27–9:6. The storage space account may appear
`as a mounted drive to the user site and client. Id. at 9:14–16. The storage
`site may also include a web server for sending and receiving information
`over the Internet and may communicate with the remote site’s web server.
`Id. at 9:9–13.
`In one embodiment, the user site may generate a request for a web
`page containing a file list and send the request to the remote site. Id. at
`10:19–23. Having received the request, the remote site may send the
`requested web page to the user site. Id. at 10:24–25. The user site may then
`display the file list to the client through an output device. Id. at 10:25–29.
`Using an input device, the client may select files from the file list for
`downloading. Id. at 11:4–7. The user site’s software application may accept
`and use the URL of a selected file to generate a data request and send it over
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`the Internet to the storage site’s software application. Id. at 11:17–22. The
`data request may be used to generate a download request, which is sent to
`the storage site’s web server. Id. at 12:23–26. The web server may then
`send the download request to the remote site, which may download the files
`identified by the URLs to the storage site. Id. at 12:26–29. The storage site
`may receive the downloaded files and store them into the client’s storage
`space account. Id. at 12:29–13:2.
`
`2. Dutta
`Dutta describes a method and system for customizing the storage of
`captured Web content. Ex. 1006 ¶ 10.
`A client may receive a Web page displayed by a browser application
`in response to a user’s request to browse the Web page. Id. The user may
`use a control within a toolbar of the browser application to capture content
`being displayed, and the captured data and user parameters may be pushed
`over a wired or wireless network to a server for customized processing. Id.
`¶¶ 10, 21, 35, 37.
`The server may receive the pushed information from the client and
`automatically store captured data. Id. ¶ 11. In addition, the server may
`automatically modify a user Web page or file that was previously stored in
`the server’s storage, for example, by inserting a hyperlink to the captured
`data. Id. ¶¶ 11, 53. Such a modification may be accomplished by executing
`a server-side script (e.g., a user-specified script contained in the information
`the server received from the client). Id. ¶¶ 11, 44, 52.
`Dutta also describes that the client may maintain a local storage for
`use by the browser and other applications. Id. ¶ 29. The browser may store
`a bookmark file, a browser cache, and other types of files such as user-saved
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`Web pages. Id. A user of the client may also register to create a personal
`account for gaining authorization and access to the server and its services.
`Id. ¶ 38. After the user has been registered, the user may be allocated a
`certain amount of online storage space within the server’s storage for storing
`various types of data. Id.
`
`3. Discussion
`Claim 1 recites “[a] wireless device comprising: at least one cache
`storage, one wireless interface, and program code configured to cause the
`wireless device to.” Petitioner contends McCown teaches a wireless device
`with its disclosure of a user site through which a client may access a remote
`site, wherein the user site may be a palmtop device or an enhanced cellular
`phone. Pet. 27 (citing Ex. 1005, 7:26–29), see also id. at 27–28 (citing Ex.
`1003 ¶¶ 116–17; Ex. 1005 at 2:13–16, 9:14–17, 9:23–26). Except as
`discussed below in the context of the limitations that follow, Patent Owner
`does not contest Petitioner’s showings for the “wireless device” claim
`element. See generally Prelim. Resp.
`Petitioner next contends that McCown, alone or in view of Dutta,
`satisfies “at least one cache storage.” Id. at 28–33. In particular, Petitioner
`argues that McCown discloses the use of a browser, such as Microsoft
`Internet Explorer or Netscape Communicator, and “[a] Skilled Artisan
`would understand that each of these browsers on McCown’s wireless
`devices included ‘at least one cache storage.’” Id. at 28 (citing Ex. 1003 ¶
`121; Ex. 1005, 8:5–10; Ex. 1024, 7:8–10 (“Both Netscape Navigator and
`Microsoft Internet Explorer have cache memories”); Ex. 1025, 3:3–8).
`Patent Owner argues that Petitioner fails to establish that McCown’s
`wireless device included cache storage. Prelim. Resp. 11–15. Patent Owner
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`argues that although browsers such as Microsoft Internet Explorer and
`Netscape Communicator for computers were known at the time of the
`invention, browsers for wireless devices were not known. Id. (“while
`Internet Explorer was available for computers running windows, Macintosh
`and Unix operating systems by 2003, Internet Explorer was not available for
`wireless devices by that time”). We understand Patent Owner construes a
`wireless device as something other than a computer, such as a cellular
`telephone or personal digital assistant (PDA). As explained above, and at
`this juncture of the proceeding, we determine that a “wireless device” does
`not exclude a personal computer or computer. For these reasons, Patent
`Owner’s arguments and evidence regarding what was known in the art
`regarding browsers only existing on computers and not on cell phones or
`PDAs does not undermine Petitioner’s persuasive showing, because Patent
`Owner has not explained why claims 1 and 11 should be interpreted to
`exclude personal computers. In any event, McCown describes that user site
`130 can be a cellular telephone or palmtop device and that user site 130
`includes a browser 136. Ex. 1005, 7:26–29, 8:5–10, 9:22–23, Fig. 1.
`Petitioner alternatively argues that
`[t]o the extent one might argue that McCown does not
`sufficiently disclose ‘at least one cache storage,’ . . . . [a]
`Skilled Artisan would understand that the use of a browser
`cache in wireless devices was well-known in the art by 2003
`and would have been motivated to use one in the browser of
`McCown in order to provide for the faster retrieval of
`information.
`Pet. 29 (citing Ex. 1003 ¶¶ 122–24; Ex. 1005, 9:22–23, Fig. 1; Ex. 1010 ¶ 2;
`Ex. 1011, 1:66–2:1).
`Patent Owner argues that Petitioner’s assertion that it would have
`been obvious to use cache storage in the browser of McCown is conclusory.
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`Prelim. Resp. 15. We disagree. Patent Owner overlooks Petitioner’s
`supporting evidence. For example, Exhibit 1010 explains that “caching is a
`process that web browsers typically use that provides for faster retrieval of
`web page content.” Ex. 1010 ¶ 2. The reference goes on to explain how a
`visited web page is cached locally, and that later when the same web page is
`accessed, content for the web page is retrieved from memory rather than
`from over the network, improving download time and reducing bandwidth
`usage. Id. Additionally, the reference explains that browser caching for
`wireless devices was known. Id. ¶¶ 4–5, 14.
`Petitioner alternatively relies on Dutta for teaching a browser cache in
`local storage, i.e., “at least one cache storage.” Pet. 30 (citing Ex. 1003
`¶ 126; Ex. 1006 ¶ 29), see also id. at 31 (citing Ex. 1003 ¶¶ 127–28; Ex.
`1006, Fig. 3; Ex. 1008, 114; Ex. 1030, 72). Petitioner articulates the
`following rationale for combining McCown and Dutta:
`[t]he combination would have been obvious because it would
`have been only the arrangement of old elements (the remote
`storage system of McCown and the browser cache technique of
`Dutta) with each performing the same function it had been
`known to perform (remote storage of data objects on a storage
`space; cache memory for faster access to frequently used data
`objects, such as files to be stored) and yielding no more than
`one would expect from such an arrangement (a combined,
`remote storage method with cache memory on a wireless device
`for quick access to data).
`Id. at 32 (citing Ex. 1003 ¶ 131). 8 Petitioner further asserts that “a Skilled
`Artisan would have been motivated to make such a combination in order to
`
`8 See also id. at 32–33 (explaining that “[t]he use of a browser cache was
`well-known in the prior art” and that “[a] Skilled Artisan could therefore
`have readily made this combination without undue effort or
`experimentation”); Ex. 1003 ¶ 132; Ex. 1010 ¶ 2; Ex. 1012, 14:30–33.
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`provide the user with a faster and more convenient storage for the user site
`application program data.” Id. at 33 (citing Ex. 1003 ¶ 133; Ex. 1006 ¶ 29;
`Ex. 1010 ¶¶ 2–3; Ex. 1013, 2:13–15).
`
`Patent Owner argues that Dutta does not disclose a cache for a
`wireless device because “the reference in Dutta to a cache or similar is a
`reference limited to wired computers, not wireless devices.” Prelim. Resp.
`16 (citing Ex. 2001 ¶ 40), see also id. at 16–17 (citing Ex. 1006 ¶¶ 28–29,
`36; Ex. 2001 ¶¶ 41–42). Patent Owner additionally argues that a wireless
`device with a cache would not result from the combination of McCown and
`Dutta, nor would one of skill in the art be led to such a device given the
`proposed combination. Id. at 19–20 (citing Ex. 2001 ¶ 45).
`
`Dutta describes that its clients “may be represented by a variety of
`computing devices, such as mainframes, personal computers, personal
`digital assistants (PDAs), etc.” Ex. 1006 ¶ 21. Network 101 “is a medium
`that may be used to provide communications links between various devices
`and computers connected” and “may include permanent connections, such as
`wire or fiber optic cables, or temporary connections made through telephone
`or wireless communications.” Id. Patent Owner’s argument that Dutta’s
`browser cache refers to a browser running on “wired computers” overlooks
`Dutta’s description that the network providing communications links
`between various devices may include temporary connections made through
`wireless communications. For similar reasons, we are not persuaded by
`Patent Owner’s arguments that a person having ordinary skill in the art
`would not have combined McCown and Dutta because its arguments are
`based on a narrow proposed construction of “wireless device” and overlook
`the prior art’s teachings of wireless devices with a cache as explained above.
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`As to the claimed “one wireless interface,” Petitioner contends
`
`McCown’s user site—such as a palmtop device or an enhanced cellular
`phone—may access a storage site via the Internet. Pet. 34 (citing Ex. 1003
`¶ 137; Ex. 1005, 7:27–29, 8:11–12). Petitioner cites Dr. Houh’s explanation
`that “such wireless devices necessarily include a ‘wireless interface,’ such as
`a mechanism to interface with other devices wirelessly”—“[o]therwise, they
`could not communicate wirelessly and would therefore not be a wireless
`device.” Id. (citing Ex. 1003 ¶ 138).
`
`Claim 1 further recites “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.” Petitioner contends McCown, alone or
`in view of Dutta, satisfies this limitation. Pet. 35–43.
`Petitioner argues that “McCown discloses the use of ‘information
`storage media recording computer programs’ (‘program code’) executed at
`the user site (‘a wireless device’), . . . which would implement the remote
`access techniques described” therein. Id. at 35–36 (citing Ex. 1003 ¶ 144;
`Ex. 1005, 3:26–27, 5:1–6; Ex. 1030, 450). Petitioner also argues that
`“McCown discloses that the stora