throbber
Trials@uspto.gov
`571-272-7822
`
`Paper 43
`Date: June 14, 2021
`
`
`
`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.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`

`

`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 8 (“Prelim.
`Resp.”). Upon consideration of the Petition and Preliminary Response, we
`instituted inter partes review, pursuant to 35 U.S.C. § 314, as to claims 1–20
`based on the challenges set forth in the Petition. Paper 21 (“Decision to
`Institute” or “Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 28, “PO Resp.”), Petitioner filed a Reply to Patent Owner’s
`Response (Paper 33, “Pet. Reply”1), and Patent Owner filed a Sur-reply
`(Paper 35, “Sur-reply”). On April 7, 2020, we held an oral hearing. A
`transcript of the hearing is of record. Paper 41 (“Tr.”).
`For the reasons that follow, we conclude that Petitioner has proven by
`a preponderance of the evidence that claims 1–20 of the ’526 patent are
`unpatentable.
`
`A. Related Matters
`Petitioner indicates that the ’526 patent is the subject of the following
`court proceeding: Synkloud Technologies, LLC v. HP Inc., No. 1-19-cv-
`01360 (D. Del. filed July 22, 2019). Pet. 3 (Mandatory Notices).2 The ’526
`patent also is the subject of IPR2019-01655, where we held that “claims 1–
`
`1 This Decision refers to the non-confidential version of Petitioner’s Reply
`(Paper 33).
`2 Petitioner also lists Synkloud Technologies, LLC v. BLU Products, Inc.,
`No. 1-19-cv-00553 (D. Del. filed Mar. 22, 2019), which we understand is no
`longer pending. Paper 23.
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`20 of the ’526 patent have been shown to be unpatentable” based on prior art
`not asserted in the instant proceeding. Unified Patents, LLC v. Synkloud
`Techs., LLC, IPR2019-01655, Paper 42, 42 (PTAB March 5, 2021).
`
`B. The ’526 Patent
`The Specification of the ’526 patent describes how a wireless device
`may use external storage provided by a storage server. Ex. 1001, 1:23–24.
`The ’526 patent aims to address the lack of storage capacity faced by users
`on their wireless devices by allowing a wireless device to use an external
`server for storing and retrieving data. Id. at 2:29–37, 5:1–41. The external
`storage system of the server may be partitioned by dividing it into multiple
`small volumes of storage space, each of which may be exclusively assigned
`to and used by a user of a specific wireless device. Id. at 4:1–31.
`One embodiment describes a “wireless out-band download” approach
`for downloading data from a remote location to an assigned storage volume.
`Id. at 2:8–10, 2:50–53, 5:1–30, Fig. 3.
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`Figure 3 is illustrative and is reproduced below.
`
`
`Figure 3 shows a “wireless out-band download” approach, which includes a
`sequence of steps for downloading data from a remote web site server 15
`into an assigned storage volume 11 of external storage system 10 on server
`3. See id. at 2:8–10, 2:50–53, 5:1–30. First, the user of wireless device 1
`may access remote web server site 15 via web-browser 8 to obtain
`information about the data for downloading (e.g., data name) via path (a).
`Id. at 5:8–12. Second, other software modules 9 of wireless device 1 may
`obtain the download information for the data, which becomes available in
`cached web-pages on wireless device 1. Id. at 5:13–17. Third, the other
`software modules 9 of wireless device 1 may send obtained download
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`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
`to remote web site server 15 via path (c) based on the obtained download
`information and receive the downloaded data streams from remote web site
`server 15. Id. at 5:21–26. Lastly, other service modules 7 may write (i.e.,
`store) the data streams to assigned storage volume 11 in server 3 for wireless
`device 1. Id. at 5:27–30.
`The ’526 patent also describes retrieving data from an assigned
`storage volume. Id. at 5:31–41. In one embodiment, the user may use the
`wireless device’s web-browser (with embedded video or music
`functionality) to retrieve and play multimedia data files already stored in the
`assigned storage volume on the server. Id. at 5:33–37. In another
`embodiment, the wireless device may retrieve data from the file system of
`the assigned storage volume on the server. Id. at 5:38–41.
`
`C. Illustrative Claim
`Petitioner challenges claims 1–20 of the ’526 patent. Claims 1 and 11
`are independent claims, and claims 2–10 and 12–20 depend therefrom,
`respectively. Claim 1 is reproduced below, which includes changes made
`per a Certificate of Correction.
`1. A wireless device comprising:
`at least one cache storage, one wireless interface, and program
`code configured to cause the wireless device to:
`establish a wireless link for the wireless device access to a
`storage space of a predefined capacity assigned
`exclusively to a user of the wireless device by a storage
`server, and
`couple with the storage server across the wireless link to carry
`out a requested operation for remote access to the assigned
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`storage space in response to the user from the wireless
`device performing the operation,
`wherein the operation for the remote access to the assigned
`storage space comprises storing a data object therein or
`retrieving a data object therefrom, the storing of a data
`object including to download a file from a remote server
`across a network into the assigned storage space through
`utilizing download information for the file stored in said
`cache storage in response to the user from the wireless
`device performing the operation for downloading the file
`from the remote server into the assigned storage space.
`Ex. 1001, 5:61–6:15, p.11.
`
`D. Instituted Grounds of Unpatentability
`We instituted inter partes review based on the following grounds of
`unpatentability under 35 U.S.C. § 103(a)3 as follows (Dec. 7, 31):
`
`Claims Challenged
`1–5, 9, 11, 12, 16, 18–20
`6–8, 10, 13–15, 17
`
`35 U.S.C §
`103(a)
`103(a)
`II. DISCUSSION
`
`Reference(s)/Basis
`McCown,4 Dutta5
`McCown, Dutta, Coates6
`
`A. Principles of Law
`To prevail in its challenges to Patent Owner’s claims, Petitioner must
`demonstrate by a preponderance of the evidence that the claims are
`
`
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended several provisions of 35 U.S.C., including § 103.
`Because the ’526 patent has an effective filing date before the effective date
`of the applicable AIA amendments, we refer to the pre-AIA version of
`35 U.S.C. § 103.
`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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`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d) (2019). A patent
`claim is unpatentable under 35 U.S.C. § 103(a) if the differences between
`the claimed subject matter and the prior art are such that the subject matter,
`as a whole, would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations
`including (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of ordinary
`skill in the art; and (4) when in evidence, objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`Level of Ordinary Skill
`B.
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted). Petitioner relies on the testimony of Dr. Henry Houh,
`who testifies that a person having ordinary skill in the art “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.” Pet. 6 (citing Ex. 1003 ¶ 47).
`Patent Owner does not propose an alternative assessment. See generally PO
`Resp.; Ex. 2014 ¶ 21.
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`We accept the assessment offered by Petitioner as it is consistent with
`the ’526 patent and the asserted prior art. We further note that the prior art
`of record in the instant proceeding reflects the appropriate level of ordinary
`skill in the art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir.
`2001) (holding the Board may omit specific findings as to the level of
`ordinary skill in the art “where the prior art itself reflects an appropriate
`level and a need for testimony is not shown”).
`
`C. Claim Construction
`In an inter partes review for a petition filed on or after November 13,
`2018, “[claims] of a patent . . . shall be construed using the same claim
`construction standard that would be used to construe the [claims] in a civil
`action under 35 U.S.C. 282(b), including construing the [claims] in
`accordance with the ordinary and customary meaning of such [claims] as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent.” See 37 C.F.R. § 42.100(b) (2019); see also
`Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc).
`“cache storage”
`Petitioner proposes a construction for “cache storage.” Pet. 13 (citing
`Ex. 1003 ¶ 77); see id. at 11–13 (citing Ex. 1003 ¶¶ 70, 71, 73–75, 77). In
`our Decision to Institute, we interpreted “cache storage” to mean “storage
`that is more readily accessible by the user or user application than the
`original storage location” consistent with Petitioner’s proposed construction.
`Dec. 9–10. Neither party has indicated that our interpretation was improper,
`and we do not perceive any reason or evidence that now compels any
`deviation from our initial interpretation. Accordingly, we determine that
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`cache storage means “storage that is more readily accessible by the user or
`user application than the original storage location.”
`“utilizing download information”
`Petitioner proposes a construction for “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.” Pet. 13–14 (citing Ex. 1003 ¶¶ 78–82). In our Decision to Institute,
`we agreed with Petitioner’s proposed construction. Dec. 10–11.
`Patent Owner does not specifically contest Petitioner’s proposed
`construction or our adoption of Petitioner’s construction for “utilizing
`download information.” Patent Owner argues, however, that the longer
`phrase, “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,” requires “information needed to download a
`file from a remote server to be (i) stored in a cache storage of a wireless
`device and (ii) utilized to download the file across a network into an
`assigned storage space for the user of the wireless device.” PO Resp. 10
`(emphasis added). Patent Owner asserts that its proposed construction is
`consistent with the claim language and the Specification of the ’526 patent.
`Id. at 10–11. That is so, Patent Owner argues, because both the claim
`language and the Specification make clear that “the claimed ‘download
`information’ is for the file at the remote server and this ‘download
`information’ is stored in the cache storage” in the wireless device. Id.
`Patent Owner further argues that the Specification of the ’526 patent
`also makes clear that the “download information in the wireless device’s
`cache is, in fact, utilized to download the file.” Id. at 11 (citing Ex. 1001,
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`5:18–26). Importantly, however, Patent Owner fails to explain why the
`phrase must also include “information needed to download a file.” Patent
`Owner fails to explain what information is needed to download a file such
`that we can ascertain the scope of the proposed construction associated with
`the claim phrase. Id. at 10–11. Accordingly, we decline to adopt Patent
`Owner’s proposed construction. We instead construe “utilizing download
`information” like we did in the Decision to Institute to mean “using
`information stored in the cache storage of the wireless device to download a
`file from a remote server.” Dec. 10–11. This construction clarifies that it is
`the download information that is stored in cache storage, not the file itself.
`“predefined capacity”
`Claim 1 recites “a storage space of a predefined capacity assigned
`exclusively to a user of the wireless device by a storage server.” Ex. 1001,
`5:64–67. Independent claim 11 recites a similar phrase. Id. at 6:61–63.
`Patent Owner argues that the phrase means “deciding or setting in advance
`by a storage server an amount of storage space exclusively to a user of a
`wireless device.” PO Resp. 12. Patent Owner further argues that its
`proposed construction is “consistent with the Specification of the ’526
`Patent, which repeatedly states that an amount of storage space is defined in
`advance to a user of a wireless device.” Id. at 12–13 (citing Ex. 1001, 2:40–
`48). Patent Owner contends that “a POSITA7 would have understood the
`predefining capacity to mean defining (i.e., deciding or setting in advance)
`the amount of storage before the storage is allocated or assigned to the
`
`
`7 A person of ordinary skill in the art.
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`user.” Id. at 13 (citing Ex. 2014 ¶ 1028). Patent Owner further contends that
`“the claims explicitly recite that ‘a storage space of a predefined capacity,’ is
`‘assigned exclusively to the user . . . by a storage server,’ not by the user.”
`Sur-reply 3–4 (citing Ex. 1001, 5:65–66). Patent Owner further contends
`that the phrase means “that (i) capacity is predefined exclusively for each
`user (ii) by the storage server, (iii) before any interaction between the user
`and storage server.” Id. at 13.
`It is necessary for us to resolve this issue because there is a dispute
`about whether the prior art (McCown in combination with Dutta) describes
`“a predefined capacity” as claimed. PO Resp. 32–34. For the following
`reasons, we determine that the claim phrase does not require “deciding or
`setting in advance by a storage server an amount of storage space
`exclusively to a user of a wireless device” or that the capacity must be
`predefined by the storage server.
`We begin our analysis with the claim language. Claim 1 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.” Claim 11 recites a similar phrase. Patent Owner focuses on the
`language of claim 1 as representative, as do we. See, e.g., id. at 12–13.
`First, the plain language of claim 1 requires that a storage space be assigned
`by the server (“assigned exclusively to a user of the wireless device by a
`storage server”), but the claim does not require that the server be the entity
`that defines the capacity of the storage space. Further, the claim language
`
`8 We understand Patent Owner’s citation to Exhibit 2104 to be a
`typographical error and intended to be Exhibit 2014, as there is no Exhibit
`2104 in the record.
`
`11
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`requires that a storage space be assigned exclusively to a user, but it does not
`require that the capacity of the storage space be defined in advance to a user,
`or that the space be defined before any interaction between the user and
`storage server.
`Patent Owner directs attention to the second declaration of Mr. Jawadi
`in support of its proposed construction. Id. (citing Ex. 2014 ¶¶ 100–102).
`Mr. Jawadi testifies that “a POSITA would have understood the predefining
`capacity to mean defining (i.e., deciding or setting in advance) the amount of
`storage before the storage is allocated or assigned to the user.” Ex. 2014
`¶ 102. But Mr. Jawadi’s testimony does not support Patent Owner’s claim
`construction. Mr. Jawadi does not contend that claim 1 requires only the
`server to perform the predefining or that the “capacity” be defined in
`advance to a particular user. Moreover, Mr. Jawadi fails to explain in any
`way why the claim requires defining the amount of storage before the
`storage is allocated or assigned to the user. Allocation is not claimed. In
`addition, Mr. Jawadi fails to explain why the claim requires that the amount
`of storage must be defined before the storage is assigned to the user and not
`defined before the user accesses the storage space. See, e.g., Pet. Reply 19
`(explaining that Dutta’s storage capacity is predefined because it is defined
`before the user stores data into it).
`We next turn to the Specification of the ’526 patent. Patent Owner
`argues that its proposed construction is consistent with the Specification of
`the ’526 patent, which “repeatedly states that an amount of storage space is
`defined in advance to a user of a wireless device.” PO Resp. 12. We are not
`persuaded that the Specification of the ’526 patent requires the claim
`language to be interpreted as Patent Owner proposes. The disclosure cited
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`by Patent Owner provides that “each server unit . . . partitions its storage
`system into volume[s] and each of the volumes will have multiple GB in
`size.” Ex. 1001, 2:40–43; see PO Resp. 12–13. But elsewhere, the ’526
`patent describes an administrator partitioning volumes of storage on the
`server. Ex. 1001, 3:31–41, 4:13–18. Accordingly, we are not persuaded that
`the ’526 patent requires the capacity of a storage space to be predefined only
`by the server. Further, the additional disclosure cited by Patent Owner in
`support of its proposed construction merely provides an example of how
`storage on a server could be partitioned among a number of users; it does not
`state that the capacity is “defined in advance to a user of a wireless device,”
`as Patent Owner contends. See PO Resp. 12; Ex. 1001, 2:45–47 (“For
`example, if we need to provide each user a 4 GB storage space, then a 160
`GB disk drive can support 40 users.”).
`In any event, even if the disclosure relied on by Patent Owner were as
`restrictive as Patent Owner urges, which we find that it is not, our reviewing
`court has explained, “each claim does not necessarily cover every feature
`disclosed in the specification,” and “it is improper to limit the claim to other,
`unclaimed features.” Ventana Med. Sys., Inc. v. BioGenex Labs., Inc., 473
`F.3d 1173, 1181 (Fed. Cir. 2006). Furthermore, our reviewing court “has
`repeatedly cautioned against limiting the claimed invention to preferred
`embodiments or specific examples in the specification.” Williamson v.
`Citrix Online, LLC, 792 F.3d 1339, 1346–47 (Fed. Cir. 2015); SuperGuide
`Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (noting
`that “it is important not to import into a claim limitations that are not a part
`of the claim”). “[I]t is the claims, not the written description, which define
`the scope of the patent right.” Williamson, 792 F.3d at 1346–47; see also
`
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`Phillips, 415 F.3d at 1312 (noting that “[i]t is a bedrock principle of patent
`law that the claims of a patent define the invention to which the patentee is
`entitled the right to exclude”). We decline Patent Owner’s invitation to limit
`the claims to unclaimed features.
`For all of the above reasons, we decline to adopt Patent Owner’s
`construction of the phrase “a storage space of a predefined capacity assigned
`exclusively to a user of the wireless device by a storage server” to mean
`“deciding or setting in advance by a storage server an amount of storage
`space exclusively to a user of a wireless device.” We need not otherwise
`construe this phrase or any other terms in the claims. 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., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(citing Vivid Techs. in the context of an inter partes review).
`
`D. Asserted Obviousness of Claims 1–5, 9, 11, 12, 16, and 18–20 over
`McCown and Dutta
`
`1. McCown (Ex. 1005)
`
`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.
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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. The 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. The 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
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`and use the URL of a selected file to generate a data request and send it over
`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 (Ex. 1006)
`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
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`a bookmark file, a browser cache, and other types of files such as user-saved
`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
`Petitioner contends that 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). Patent Owner relies upon the
`Second Declaration of Mr. Zaydoon Jawadi (Ex. 2014). PO Resp.9 Patent
`Owner argues that several limitations are not taught by the prior art and that
`it would not have been obvious to combine McCown and Dutta. Patent
`Owner also presents evidence of nonobviousness.
`For our analysis, we first focus on the terms of each of the claims.
`Then, we evaluate Petitioner’s reasons to combine McCown and Dutta, and
`Patent Owner’s arguments to that end, along with Patent Owner’s
`
`
`9 Any arguments for patentability not raised in the Patent Owner Response
`are deemed waived. See Paper 22, 8; In re NuVasive, 842 F.3d 1376, 1381
`(Fed. Cir. 2016) (explaining that a patent owner waives an argument
`presented in the preliminary response if it fails to renew that argument in the
`patent owner response during the instituted trial). Thus, we only consider
`those specific exhibit citations referenced in Patent Owner’s Response and
`Sur-reply in support of the arguments made. See also Patent Trial and
`Appeal Board Consolidated Trial Practice Guide (Nov. 2019),
`https://www.uspto.gov/TrialPracticeGuideConsolidated, 66 (“[T]he response
`should include any affidavits or additional factual evidence sought to be
`relied upon and explain the relevance of such evidence.”).
`
`17
`
`

`

`IPR2020-00316
`Patent 9,098,526 B1
`
`
`nonobviousness contentions. For the reasons that follow, weighing the
`totality of the evidence of record and the strength of the parties’ showings on
`the inquiries underlying the question of obviousness, we conclude that
`Petitioner has met its burden of proving by a preponderance of the evidence
`that each of the challenged claims 1–5, 9, 11, 12, 16, and 18–20 would have
`been obvious in view of the asserted prior art.
`a. Claim 1: “a wireless device” (preamble)10
`Petitioner contends, and we agree, that 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, 2:13–16, 9:14–17, 9:23–26). Patent
`Owner does not dispute Petitioner’s showing with respect to the preamble.
`See generally PO Resp.
`b. Claim 1: “at least one cache storage, one wireless
`interface, and program code configured to cause the
`wireless device to”
`Petitioner 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).
`
`
`10 We need not determine whether the preamble is limiting
`because, regardless, Petitioner shows that McCown meets the preamble.
`
`18
`
`

`

`IPR2020-00316
`Patent 9,098,526 B1
`
`
`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.
`Id. at 29 (citing Ex. 1003 ¶¶ 122–24; Ex. 1005, 9:22–23, Fig. 1; Ex. 1010
`¶ 2; Ex. 1011, 1:66–2:1). 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. Exhibit 1010 further describes 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. Thus, we agree with Petitioner
`that a person having ordinary skill in the art would have understood that the
`use of a browser cache in a wireless device was well-known at the time of
`the invention because the record evidence supports that contention. Pet. 29
`(citing Ex. 1003 ¶¶ 122–24; Ex. 1005, 9:22–23, Fig. 1; Ex. 1010 ¶ 2;
`Ex. 1011, 1:66–2:1).
`Petitioner alternatively relies on Dutta for teaching a “browser cache”
`in local storage, i.e., “at least one cache storage.” Id. at 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). We agree with Petitioner, and
`further find, that Dutta’s “browser cache” meets the “at least one cache
`storage” limitation of claim 1.
`
`19
`
`

`

`IPR2020-00316
`Patent 9,098,526 B1
`
`
`Although Patent Owner argues that the combination of McCown and
`Dutta fails to teach “storing download information in cache storage or
`util

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