PTAB

IPR2019-01655

Unified Patents LLC v. Synkloud Technologies LLC

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1. Case Identification

2. Patent Overview

  • Title: System and Method for Wireless Device Access to External Storage
  • Brief Description: The ’526 patent discloses a system to overcome storage limitations on wireless devices, such as PDAs, by providing remote server-based storage. The system allows a user to initiate an "out-of-band" download of a file from a third-party server directly to their assigned remote storage space by using download information (e.g., a URL) that is stored in the cache of the user's wireless device.

3. Grounds for Unpatentability

3.1. Ground 1: Obviousness over Prust and Major - Claims 1-3, 5-11, and 13-20 are obvious over Prust in view of Major.

  • Prior Art Relied Upon: Prust (Patent 6,735,623) and Major (WO 02/052785).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Prust taught a remote data storage system for a client computer, which could be a wireless PDA. Prust disclosed a user initiating an out-of-band download by providing a URL to a storage server, which then retrieves the file. However, Prust did not explicitly describe that the URL was stored in a cache on the user's device. Major was cited to remedy this, as it disclosed a conventional web browser for wireless devices (PDAs) that explicitly used a "page cache" to store web page data, including URLs, to improve performance. Petitioner contended that Prust’s use of a "conventional web browser" implicitly taught caching, and even if it did not, combining Major's explicit caching with Prust's system was obvious.
    • Motivation to Combine: A POSITA would combine Major’s web-caching with Prust’s remote storage system to achieve predictable benefits. The motivation stemmed from improving the performance and user experience of Prust's system, particularly in the limited-bandwidth wireless environments of the time. Major expressly taught that caching allows web pages to display "very quickly," which would directly support Prust's stated goal of providing "seamless access" to remote storage by reducing network delays.
    • Expectation of Success: A POSITA would have a high expectation of success because implementing web-caching was a well-known, conventional feature of web browsers. The combination involved standard software modifications to yield the predictable result of faster performance without changing the fundamental operation of Prust’s remote download system.

3.2. Ground 2: Obviousness over Chaganti and Major - Claims 1-20 are obvious over Chaganti in view of Major.

  • Prior Art Relied Upon: Chaganti (Patent 8,117,644) and Major (WO 02/052785).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Chaganti taught a remote "online personal library" system where a user on a device, such as a PDA, could initiate an out-of-band download. Chaganti explicitly disclosed that a user could drag-and-drop or copy-and-paste a link from a source browser window to a destination window representing the remote library to trigger the download. Chaganti further taught that in some cases, a digital item or its link information could be downloaded to a "cache area" on the user's computer. The petition argued Chaganti alone taught the key limitations. The combination with Major was presented as an alternative, arguing that if Chaganti was deemed insufficient, it would have been obvious to implement its system using a wireless device with the conventional web-caching taught by Major.
    • Motivation to Combine: A POSITA would be motivated to ensure Chaganti's wireless device implementation used web-caching as taught by Major for performance benefits. When a user performs a copy/paste or drag-and-drop operation to initiate the download, pulling the link/URL information from a local cache is substantially faster than re-requesting it from the source server. This would make Chaganti's user interface more responsive and efficient, a known benefit taught by Major.
    • Expectation of Success: A POSITA would have a high expectation of success in combining the teachings. The combination involved applying a well-understood technology (web-caching) to improve the performance of a known user interface action (copy-and-paste for downloads), which was a routine and predictable design choice.

4. Key Claim Construction Positions

  • "comprises storing a data object therein or retrieving a data object therefrom" (Claim 1): Petitioner argued this phrase should be construed with its plain and ordinary meaning, where "or" is disjunctive. This construction means the claim is satisfied if the prior art discloses either storing a data object or retrieving a data object.
  • Importance to Petitioner's Arguments: This construction was critical because the detailed limitations regarding the "out-of-band download...utilizing download information...stored in said cache storage" only modify the "storing" alternative. Petitioner argued that references like Prust unequivocally taught retrieving data from remote storage. Therefore, under this construction, the claim would be obvious based on the "retrieving" prong alone, even before considering the more detailed "storing" prong, which Petitioner also argued was met by the prior art.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-20 of Patent 9,098,526 as unpatentable.