UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICROSOFT CORPORATION and HP INC.,
`Petitioners,
`
`v.
`
`SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner.
`
`Patent No. 9,098,526
`Issued: August 4, 2015
`Filed: January 8, 2014
`
`Inventor: Sheng Tai Tsao
`
`Title:
`
`SYSTEM AND METHOD FOR WIRELESS DEVICE ACCESS TO
`EXTERNAL STORAGE
`________________________
`Inter Partes Review No. IPR2020-00316
`________________________
`PETITIONERS’ REPLY BRIEF
`________________________
`
`PUBLIC VERSION
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICROSOFT CORPORATION and HP INC.,
`Petitioners,
`
`v.
`
`SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner.
`
`Patent No. 9,098,526
`Issued: August 4, 2015
`Filed: January 8, 2014
`
`Inventor: Sheng Tai Tsao
`
`Title:
`
`SYSTEM AND METHOD FOR WIRELESS DEVICE ACCESS TO
`EXTERNAL STORAGE
`________________________
`Inter Partes Review No. IPR2020-00316
`________________________
`PETITIONERS’ REPLY BRIEF
`________________________
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`PUBLIC VERSION
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`Petitioners’ Reply in IPR2020-00316
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
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`ARGUMENT ................................................................................................... 1
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`I.
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`II.
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`A.
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`B.
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`Patent Owner’s Expert Testimony Is Not Credible .............................. 2
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`Patent Owner’s Claim Constructions Are Legally Erroneous .............. 3
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`1.
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`2.
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`Download a file from a remote server … ................................... 3
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`A storage space of a predefined capacity …............................... 5
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`C.
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`The Challenged Claims Are Unpatentable ............................................ 7
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`1. McCown/Dutta Satisfy “download[ing] a file from a remote
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`server …” .................................................................................... 7
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`2.
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`A Skilled Artisan Would Have Been Motivated to Combine
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`McCown and Dutta ................................................................... 11
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`3. McCown and Dutta Satisfy “a storage space of a predefined
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`capacity …” ............................................................................... 18
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`4.
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`A Skilled Artisan Could Combined McCown and Dutta With a
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`Reasonable Expectation of Success .......................................... 19
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`5.
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`Patent Owner Has Failed to Prove Any Relevant Objective
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`Indicia of Non-Obviousness ..................................................... 21
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`III. CONCLUSION .............................................................................................. 25
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`I.
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`INTRODUCTION
`Patent Owner’s main argument in response to the Petition is that it would not
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`have been obvious for the browser of McCown to store a web page of URLs in a
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`browser cache specifically intended to store web pages. That just ignores what a
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`browser cache is for. Indeed, the Response goes to great length to ignore the
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`Petition’s argument that some users would seek to access the web page of URLs
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`more than once, so a Skilled Artisan would have been motivated to cache it. By
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`ignoring the argument, Patent Owner concedes it.
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`Patent Owner’s secondary argument is that, even though McCown discloses
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`a user logging on to a storage space account and then storing files into the account,
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`and Dutta discloses a storage server allocating “a certain amount of online storage
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`space” after the user has registered, in the combination of those references it would
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`not have been obvious to assign the user “a storage space of a predefined
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`capacity.” That argument ignores what these references disclose. Both arguments
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`should be rejected.
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`Patent Owner also seeks to prove secondary considerations of non-
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`obviousness, but has no evidence of the required nexus, or that the commercial
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`products it cites actually practice any claim of the 526 Patent. These arguments
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`should be rejected as well.
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`II. ARGUMENT
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`A.
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`Patent Owner’s Expert Testimony Is Not Credible
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`Patent Owner cites to the declaration of its expert Mr. Jawadi, but the cited
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`testimony is in almost every case unexplained and unsupported by citation to
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`evidence. See, e.g., EX2014,¶¶58, 62, 64, 68, 73, 76, 81, 84, 86-89, 100-103, 105-
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`115, 120-121. Such ipse dixit expert testimony cannot support the fact finding of
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`the Board, Ericsson Inc. v. Intellectual Ventures I LLC, 890 F.3d 1336, 1346 (Fed.
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`Cir. 2018), and should be rejected on that basis alone.
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`Moreover, the expert applies a legally erroneous understanding of both the
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`law of obviousness and of claim construction. He testifies, for example, that he
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`understands the term “obvious” to refer “to subject matter that would have
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`occurred to a POSITA to which the ’526 Patent is directed without inventive
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`or creative thought.” EX2014,¶26.1 That, of course, is not the standard for
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`obviousness. E.g., KSR Int'l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1740 (2007)
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`(“[W]hen a patent ‘simply arranges old elements with each performing the same
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`function it had been known to perform’ and yields no more than one would expect
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`from such an arrangement, the combination is obvious.”) (quoting Sakraida v. Ag
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`Pro, Inc., 425 U.S. 273, 282 (1976).
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`1 In this brief, emphasis has been added unless otherwise indicated.
`2
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`Similarly, the expert testifies that his understanding of claim construction is
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`that “one arrives at the appropriate ‘construction’ or definition of what is embraced
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`by the claims of the ’526 Patent and what is excluded by those claims by a reading
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`of the ’526 Patent and arriving at what, based on that reading, the inventor of the
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`claimed subject matter intended to protect as her or his invention.”
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`EX2014,¶27. That, too, is not the law. Markman v Westview Instruments, Inc., 52
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`F.3d 967, 986 (Fed. Cir. 1995) (“Thus the focus in construing disputed terms in
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`claim language is not the subjective intent of the parties to the patent contract when
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`they used a particular term.”)
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`Expert testimony based on an erroneous understanding of the law is entitled
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`to no weight. InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1348
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`(Fed. Cir. 2014). The testimony of Patent Owner’s expert should be given none.
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`B.
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`Patent Owner’s Claim Constructions Are Legally Erroneous
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`Download a file from a remote server …
`1.
`Patent Owner argues the claim phrase “download a file from a remote server
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`across a network into the assigned storage space through utilizing download
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`information for the file stored in said cache storage” should be construed to
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`“require[] information needed to download a file from a remote server to be (i)
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`stored in a cache storage of a wireless device and (ii) utilized to download the file
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`3
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`across a network into an assigned storage space for the user of the wireless
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`device.” POR, 10-11.2
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`Patent Owner never explains why the interpretation of this language adopted
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`in the Institution Decision is inappropriate, and indeed its proposal is similar to the
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`one adopted in that Decision. For example, the Board’s construction requires that
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`it is “the download information that is stored in cache storage, not the file itself,”
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`Inst. Dec., 11, which is exactly what is required by part (i) of Patent Owner’s
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`proposal. Similarly, the Board’s construction requires “using information stored in
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`the cache storage of the wireless device to download a file from a remote server,”
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`Inst. Dec., 10-11, which is exactly what is required by part (ii) of Patent Owner’s
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`proposal.
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`The main difference between the Board’s interpretation and Patent Owner’s
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`is that Patent Owner changes the claim phrase “download information” to
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`“information needed to download a file from a remote server.” Those two phrases
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`are not the same thing, as nothing in the words “download information” limits the
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`claim to information “needed” to perform a download (as opposed to information
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`
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`2 This proposal is different from the proposal Patent Owner advanced in its
`preliminary response, where it asked that the phrase “utilizing download
`information for the file stored in said cache storage” be construed to mean
`“utilizing a URL which points to the file.” Paper No. 8, 6-8.
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`simply “utiliz[ed]” to perform such a download), and “information needed to
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`download a file” could include all kinds of information never even hinted at in the
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`patent, e.g., checksum information, decryption codes, account numbers. Patent
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`Owner does not even attempt to justify switching in its “needed to download”
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`language or explain why its interpretation should be used instead of the Board’s.
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`Its interpretation should be rejected.3
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`A storage space of a predefined capacity …
`2.
`Patent Owner argues that the claim phrase “a storage space of a predefined
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`capacity assigned exclusively to a user of the wireless device by a storage server”
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`should be construed to “require[] deciding or setting in advance by a storage server
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`an amount of storage space exclusively to a user of a wireless device.” POR, 12-
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`13. That proposal should also be rejected.
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`First, Patent Owner’s proposal drops the requirement that the recited storage
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`space be “assigned” to the user. That may be a typo – the proposed construction is
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`grammatically meaningless as written, since it requires “deciding or setting … an
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`
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`3 In any event, the Petition demonstrated that McCown and McCown/Dutta stored
`a web page of URLs in a cache and used those URLs to download filed from a
`remote server. Pet., 49-54. Such URLs would be “information needed to
`download a file from a remote server” in a McCown-based system because a URL
`is the Internet address of the file to be downloaded. Pet., 50; EX1030, 487.
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`amount of storage space … to a user” – but as written the proposal does not track
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`the language of the claim and Patent Owner has not justified deleting the
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`“assignment” aspect of the claim.
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`Second, Patent Owner seeks to substitute the phrase “deciding or setting in
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`advance” for the claim word “predefined.” But it provides no sufficient basis for
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`doing so, and instead merely asserts without citation to evidence that the former is
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`the “meaning” of the latter. See POR, 12. Nor do any of the dictionaries submitted
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`by Patent Owner define “predefined” in that manner. See EX2011-EX2013.
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`“Predefined” is an ordinary English word the Board can readily apply.
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`Finally, and again without justification, Patent Owner’s proposal changes the
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`claim phrase “a storage space …,” which is a noun, to “deciding or setting …,”
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`which are verbs. That proposal would substantially change the scope of this claim
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`language such that instead of covering a thing (“a storage space”) it would cover
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`activity (“deciding or setting”). Such a change would represent a wholesale
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`rewriting of the claim language, which the Board may not do. K-2 Corp. v.
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`Salomon S.A., 191 F.3d 1356, 1364 (Fed.Cir. 1999) (“Courts do not rewrite claims
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`…”) (citation omitted).4
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`C.
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`The Challenged Claims Are Unpatentable
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`1. McCown/Dutta Satisfy “download[ing] a file from a remote
`server …”
`Patent Owner argues the combination of McCown and Dutta does not satisfy
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`the claim language requiring “download[ing] a file from a remote server across a
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`network into the assigned storage space through utilizing information for the file
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`stored in said cache storage,” POR, 17, but its reasoning ignores the disclosure of
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`those references and the analysis of the Petition.
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`For example, Patent Owner asserts that “McCown does not even mention a
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`cache and therefore, could not have possibly taught or suggested storing download
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`information in cache storage or utilizing download information from cache
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`storage.” POR, 17. It further contends that “Dutta does not compensate for the
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`deficiencies of McCown. Petitioners cite to Dutta generally as providing a
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`POSITA with the understanding to modify the McCown to include a cache storing
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`
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`4 In any event, the Petition demonstrated that McCown and McCown/Dutta
`included a storage space of an amount that was set in advance by a storage server
`and assigned exclusively to a user of a wireless device. Pet., 38-43.
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`download information identifying files at a remote site.” Id., 17-19. Both
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`assertions are incorrect.
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`a. McCown/Dutta Includes a Cache
`As the Petition demonstrated, McCown discloses a user site 130 that
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`includes a browser, EX1005, Fig. 1, 8:5-10, which McCown states may be either
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`of two well-known, prior art web browsers, each of which included a cache. Pet,
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`28. Patent Owner does not contest that those browsers necessarily included a
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`cache. Thus, to a Skilled Artisan, McCown discloses that its user site includes a
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`web browser having cache, even if the cache is not “mentioned.” See IXI IP, LLC
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`v. Samsung Elecs, Co., 903 F.3d 1257, 1262-64 (Fed. Cir. 2018) (finding claim
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`limitation disclosed in reference even though not expressly mentioned).
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`The Petition also demonstrated that it would have been obvious to include a
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`browser cache in the client of McCown because such caches were well-known and
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`because they would “provide for the faster retrieval of information.” Pet., 29. The
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`Petition cited prior art patents EX1010 and EX1011, and the expert testimony of
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`Dr. Houh, as support for those facts, id., 29-30, and Patent Owner does not contest
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`the prior art knowledge of a browser cache or the motivation to use one. It is, of
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`course, not necessary that McCown itself provide a “suggestion” to modify
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`McCown. KSR, 127 S. Ct. at 1742.
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`The Petition also pointed specifically to the browser cache of Dutta, and
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`demonstrated numerous reasons why it would have been obvious to include that
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`cache in the browser of McCown, Pet., 30-33, none of which are contested by
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`Patent Owner.
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`b. McCown/Dutta Stores Download Information In The
`Cache
`The Petition also demonstrated that it would have been obvious to store the
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`claimed “download information” (a webpage of URLs in McCown) in the browser
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`cache of McCown/Dutta and to use that information to download files from the
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`remote site to the storage site of McCown, as claimed, because doing so:
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`• would make those URLs “more readily accessible.” Pet., 51-52.
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`• would remove the necessity of downloading the page of URLs a
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`second time, should the user seek to make an additional selection.
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`Pet., 52.
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`• would “provide the user with a faster method of remote storage.”
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`Pet., 52-53.
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`• was a common practice that would have motivated a Skilled Artisan
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`to use it. Pet., 53.
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`• was only the arrangement of old elements with each performing the
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`same function it had been known to perform and yielding no more
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`than one would expect from such an arrangement. Pet., 53-54.
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`Patent Owner argues this analysis is “conclusory,” POR, 19-21, 22, which is
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`nonsense given the pages of analysis, detailed citations to the prior art, and expert
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`testimony supporting it.
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`Patent Owner also seems to argue that the Petition was required to show
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`where in either McCown or Dutta “download information” used to download files
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`to a remote storage site is stored in a cache. POR, 17-21. That is incorrect. As the
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`Petition demonstrated, McCown already discloses a web page of URLs
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`(“download information”) stored at the user site and utilized to download files to a
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`remote storage site, and also discloses or renders obvious a browser cache. Pet.,
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`28-30, 50-51. Petitioner’s burden was thus to show it would have been obvious to
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`store that web page in the cache. The Petition did so with particularity. Pet. 28-30,
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`50-54.
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`c.
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`Patent Owner’s Arguments Are Precluded By the Printed
`Matter Doctrine
`Patent Owner does not contest that the combination of McCown and Dutta
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`includes a browser cache, or that such a cache would store information, such as
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`web pages. Rather, Patent Owner argues that its claims are patentable because of
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`the specific information – i.e., the recited “download information” – is claimed to
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`be stored in the cache. POR, 17-30. Patent Owner’s argument thus depends on the
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`content of the information its claims require be stored in the cache.
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`Such claim limitations are entitled to no patentable weight, pursuant to the
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`Printed Matter Doctrine. “[P]rinted matter encompasses any information claimed
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`for its communicative content.” C.R. Bard Inc. v. Angiodynamics, Inc., Nos.
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`2019-1756, 2019-1934, 2020 WL 6573331, at *6 (Fed. Cir. Nov. 10, 2020).
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`Moreover, “[c]laim limitations directed to printed matter are not entitled to
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`patentable weight unless the printed matter is functionally related to the substrate
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`on which the printed matter is applied.” Praxair Distrib., Inc. v. Mallinckrodt
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`Hosp. Prods. IP Ltd., 890 F.3d 1024, 1031 (Fed. Cir. 2018) (citations omitted).
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`Here, the claimed “download information” bears no such functional
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`relationship to the cache in which it is stored. The 526 Patent never describes the
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`cache as having any particular relationship to the “download information” at all.
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`The patent states that the download information “becomes available in the cached
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`web-pages,” EX1001, 5:15, so the “download information” is stored in the cache
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`just as any web page is stored therein. The claim element requiring “download
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`information” be stored in the cache is therefore entitled to no patentable weight.
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`2.
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`A Skilled Artisan Would Have Been Motivated to Combine
`McCown and Dutta
`Patent Owner argues the Petition’s analysis “is rooted in forbidden hindsight
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`analysis that is based on its incorrect assumption regarding the level of ordinary
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`skill in the art.” POR, 22, 34-35. Both assertions are incorrect. The Petition’s
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`analysis is supported by numerous citations to evidence in the prior art, Pet., 28-33,
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`39-42, 45, 51-53, 57, which is the very opposite of improper hindsight. Caterpillar
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`Inc. v. Wirtgen Am., Inc., IPR2017-02186, Paper 10 at 26. Moreover, Patent
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`Owner does not contest the level of ordinary skill set forth in the Petition and
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`adopted at Institution, EX2014, ¶21, so its bald, unexplained assertion regarding
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`that level should be ignored.
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`a.
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`Cache Storage Makes Information More Readily
`Accessible.
`Patent Owner also argues that a finding that storing information in a cache
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`would make it more readily available is “inconsistent with the disclosure of
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`McCown” because its expert states that ‘“[o]nce the user has selected these files
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`and sent them to the storage site, there is no need or reason to retrieve the URLs
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`(download information) again.”’ POR, 23-24 (citing EX2014,¶65).
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`But as demonstrated above, the testimony of Patent Owner’s expert cannot
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`support the fact-finding of the Board because he applied the wrong legal standard.
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`See InTouch Techs., Inc. at 1348. Moreover, the cited testimony, EX2014,¶65,
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`includes no explanation of the statement above or citation to evidence. Such ipse
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`dixit expert testimony is entitled to no weight, see Ericsson Inc. at 1346,
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`particularly where it is wholly inconsistent with the prior art evidence cited in the
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`Petition, see, e.g., EX1010,¶¶[0002]-[0003] (noting that the purpose of a cache is
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`to store information so that a user may more readily access it again); EX1011,
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`1:66-2:9 (same).
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`Moreover, McCown discloses that the list of URLs from which the user
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`selects files for download are included on a web page. EX1005, 7:14-16. A
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`Skilled Artisan would have understood that a browser cache is specifically
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`designed to store web pages, EX1010,¶¶[0002]-[0003], so storing the McCown’s
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`web page of URLs in such a cache would have been the most readily accessible
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`place for its storage.5
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`b.
`A User Might Seek to Re-Access the Webpage of URLs
`Patent Owner also argues that “‘McCown provides no reason for the user to
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`need the URLs again’ after they are selected by the user,” POR, 24-25, citing a
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`paragraph of its expert’s declaration that baldly asserts “McCown describes that
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`the URLs (download information) are used only once by the user.” EX2014,¶68.
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`But just because McCown discloses one access of the URLs does not mean
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`that it would have been non-obvious to access them more than once. Nor is it
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`required that McCown itself provide a reason why a user might access the list of
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`5 Patent Owner argues that because the user in McCown selects URLs using a
`mouse, those URLs are sent to the storage site “manually” and that those URLs
`would not be readily accessible if stored in a cache. POR, 23-24. The Petition
`argued, however, that storing the URLs in a cache would make them more readily
`accessible to the user application at the user site, not that doing so would permit
`the human user to select from them more easily from the screen. Pet., 31.
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`URLs a second time. Any need or problem in the field and addressed by the patent
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`can provide such a reason. KSR, 127 S. Ct. at 1742. Indeed, an obviousness
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`analysis “need not seek out precise teachings directed to the specific subject matter
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`of the challenged claim, for a court can take account of the inferences and creative
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`steps that a person of ordinary skill in the art would employ.” Id., at 1741. Even
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`common sense can provide such a reason. Arendi S.A.R.L. v. Apple Inc., et al., 832
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`F.3d 1355, 1361 (Fed. Cir. 2016).
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`Here, there is nothing in McCown that would preclude a user from accessing
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`the web page of URLs more than once, and the prior art cited in the Petition
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`expressly discloses that browser caches are used precisely because a user might
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`access the same web page more than once. EX1010,¶¶[0002]-[0003]; EX1011,
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`1:66-2:9; EX1030, 72; EX1008, 114. Further, it is simply common sense that such
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`multiple accesses could happen in a system such as McCown’s. People change
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`their minds, or forget what they meant to do. A user, after downloading one or
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`more files using McCown’s system, may later choose to download another, or later
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`remember that she meant to download others. That McCown does not explicitly
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`disclose a user doing so is beside the point. A Skilled Artisan would have
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`understood that some users would seek to access that web page of URLs more than
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`once, and therefore be motivated to cache it and thereby improve the efficiency of
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`the system. EX1003,¶203. That is the very purpose of a cache. EX1010,
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`¶[0002].6
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`Patent Owner’s expert never addresses whether a user might access the web
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`page more than once, and certainly never provides any reason why a user of
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`McCown would not do so. His assertion that McCown itself does not disclose
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`multiple accesses from a single user, thus fails to rebut, or even address, the
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`obviousness analysis of the Petition.
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`Patent Owner also argues that “[a] POSITA would not have been motivated
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`to modify McCown to include a cache and to store download information in the
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`cache because McCown stores the files at the storage site.” POR, 25-26. That also
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`ignores that some users would seek to download additional files beyond the initial
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`set that had already been downloaded to the storage site, as argued in the Petition.
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`Pet., 29-33.
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`c.
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`It Was Obvious to Use The Common Practice of Caching
`Web Pages
`Patent Owner next repeats its assertions that the URLs of McCown are used
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`only once and that the downloaded files are stored at the storage cite in order to
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`6 The fact that the claims refer to downloading “a file” (i.e., singular) does not
`change the analysis, as the second time the user sought to access the web page of
`URLs would be to download a file.
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`contend that “even if the use of a browser cache were ‘common practice,’ … a
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`POSITA would not have been motivated to modify McCown to use download [sic]
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`from a cache.” POR, 27-29. That argument again ignores that some users would
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`seek to access the web page of URLs of McCown more than once, so a Skilled
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`Artisan would be motivated to provide for that eventuality. It also ignores that the
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`law does not require McCown to provide the motivation.
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`The argument is also wrong on the merits. As demonstrated in the Petition,
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`the combination of McCown and Dutta includes a browser cache for caching web
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`pages, and McCown’s list of URLs is included on a web page. Pet., 30-33, 49-54.
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`There is nothing in the record to suggest that the browsers in McCown would
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`exclude McCown’s web page from the cache, or that it could not be cached. Thus,
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`regardless of what McCown says, the common practice of caching web pages
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`renders it obvious to cache the web page of URLs in McCown because the browser
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`would cache web pages as a matter of practice. EX1010, ¶[0002] (noting that
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`“Caching is a process that web browsers typically use …”).7
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`7 Nor is it relevant that some web pages might not be cached, because many are,
`caching is the main purpose of a browser cache, see id., and Patent Owner has
`pointed to nothing that would suggest some reason existed not to cache the web
`pages of McCown.
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`Patent Owner also argues that the Petition was required to show
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`“experimental data or other objective evidence” of motivation to combine and a
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`reasonable expectation of success. POR, 29-30. The law includes no requirement
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`of experimental data, and the case Patent Owner cites stands for no such
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`proposition. KSR, 127 S.Ct. at 1742-43 (rejecting “[r]igid preventative rules that
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`deny factfinders recourse to common sense”). But such objective evidence was
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`cited in the Petition, including EX1010 through EX1013. Moreover, web caches
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`were known, EX1010; and McCown, Dutta and the other prior art references
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`supporting the combination are all issued U.S. patents, and therefore presumptively
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`enabling. Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed.
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`Cir. 2003). Further, Dr. Houh explained that “a Skilled Artisan could therefore
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`have readily made this combination without undue effort or experimentation.”
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`EX1003,¶132. Patent Owner has not sought to contest any of these facts or rebut
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`the presumption of enablement.
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`Moreover, Patent Owner does not contest the additional reasons set forth in
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`the Petition showing that caching McCown’s web page of URLs would have been
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`obvious, including because to do so would “provide the user with a faster method
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`of remote storage,” Pet., 52-53, and was only the arrangement of old elements with
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`each performing the same function it had been known to perform and yielding no
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`more than one would expect from such an arrangement, Pet., 53-54. Patent Owner
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`therefore concedes those facts.
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`3. McCown and Dutta Satisfy “a storage space of a predefined
`capacity …”
`As demonstrated in the Petition, McCown discloses “storage space
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`accounts” at a storage server that a user may logon to with user identification and
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`password and thereafter store files into remotely. Pet., 38-39. The Petition
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`demonstrated that a Skilled Artisan would understand these disclosures to mean
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`that the user had been assigned “a storage space of a predefined capacity,” that it
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`would have been obvious to include that limitation in McCown, and that it also
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`would have been obvious in view of McCown combined with Dutta. Pet., 38-42.
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`Patent Owner responds that “McCown’s provisioning of the storage space
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`into accounts assigned to respective users would not have taught to a POSITA the
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`claim requirements of deciding or setting in advance by a storage server an amount
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`of storage space exclusively to a user of a wireless device,” but its analysis is ipse
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`dixit, as is the cited testimony of its expert, without any explanation of why it
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`believes that to be so. POR, 30-32; EX2014, ¶¶95, 97-99. Indeed, neither Patent
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`Owner nor its expert address the detailed reasoning in the Petition showing why
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`this claim element would have been obvious.
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`Patent Owner does argue that Dutta does not fill the supposed gap in
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`McCown because Dutta does not specify when the storage space is allocated and
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`therefore does not disclose that the allocated capacity is “predefined.” POR, 33-
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`34. That is incorrect, as Dutta discloses that “the user is allocated a certain amount
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`of online storage space 336 in which the user may store various types of data.”
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`EX1006, ¶[0038]. Thus, Dutta discloses that the storage is allocated before the
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`user may store data in it, and therefore the storage capacity is “predefined” in the
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`sense that it is defined before the user stores data into it.
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`Relying on its expert, Patent Owner also asserts that the storage of Dutta
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`could have been allocated “after user registration is complete, rather than based on
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`a predefined amount that was defined in advance.” POR, 33 (emphasis in
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`original). Neither the claims nor Patent Owner’s proposed claim interpretation
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`require that the “predefined capacity” of the claims be allocated or defined before
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`user registration. Indeed, the 526 Patent does not even use the phrase “user
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`registration,” and the claims merely say “predefined.” Patent Owner’s argument is
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`thus based on a legally erroneous understanding of claim scope.
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`4.
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`A Skilled Artisan Could Combine McCown and Dutta With
`a Reasonable Expectation of Success
`Patent Owner next attempts to attack the motivation to combine McCown
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`and Dutta as it relates to the “predefined capacity” claim language by attacking the
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`relevance of EX1017 and EX1018. POR, 35-36. Those exhibits, however, were
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`not cited in the analysis of the McCown/Dutta combination. Rather, they were
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`cited to show it would have been obvious to include the “predefined capacity”
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`claim requirements in the system of McCown based on McCown alone. Pet., 39-
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`40
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`Patent Owner’s arguments are erroneous in any event. It argues that
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`EX1017 and EX1018 – relied on to show that “memory partitioning and allocation
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`techniques in order to predefine a particular amount of storage were well-known in
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`the prior art,” Pet., 39 – “do not even relate to the invention of the ’526 Patent”
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`because they relate to “primary storage or internal memory,” but supposedly not to
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`storage media in a storage server such as a disk drive. POR, 35-36, 38-39.
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`But there is no rule of law that requires proving what a Skilled Artisan
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`would know only from evidence that “relates to the invention” of the subject
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`patent, whatever that phrase means. A Skilled Artisan is presumed to be aware of
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`all pertinent prior art, Custom Accessories v. Jeffrey-Allan Indus., 807 F.2d 955,
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`962 (Fed. Cir. 1986), and prior art techniques for allocating primary storage as
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`disclosed in EX1017 and EX1018 are clearly pertinent to, and relate to, a patent
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`directed to downloading files into predefined and assigned portions of primary
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`storage in a remote server.
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`In any event, it was also known to use such partitioning and allocation
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`techniques with other types of storage, such as hard disk drives used to store
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`downloaded media. See EX1033, [0005]-[0007], [0044], which is prior art to the
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`526 Patent under 35 U.S.C. §102(e).
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`Patent Owner also asserts that the passage of EX1017 cited in the Petition
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`“would not have taught ‘predefined capacity’ or ‘predefined capacity assigned
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`exclusively by a storage server to user of the wireless device’” because it
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`“discloses allocating memory and partitioning shared memory into blocks.” POR,
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