PTAB

IPR2020-00316

Microsoft Corp 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 where a wireless device, facing internal storage limitations, can access a dedicated, remote storage server to store and retrieve data. The system facilitates downloading files from a third-party remote site directly to the user's allocated space on the storage server, orchestrated by the wireless device.

3. Grounds for Unpatentability

Ground 1: Claims 1-5, 9, 11, 12, 16, and 18-20 are obvious over McCown in view of Dutta.

  • Prior Art Relied Upon: McCown (WO 01/67233) and Dutta (Application # 2002/0078102).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that McCown taught the core system of the ’526 patent, including a user site (e.g., a cell phone) that initiates the transfer of files from a remote site to a separate storage site where the user has an account. McCown disclosed that the user site receives a webpage with a list of files identified by URLs. The user selects files, and the user site sends a data request using these URLs to the storage site, which then downloads the files from the remote site. However, McCown did not explicitly disclose a "cache storage" on the wireless device for the download information. Petitioner asserted that Dutta supplied this missing element by teaching a client device that maintains local storage, including a "browser cache," for storing information like web pages. The combination of McCown’s system with Dutta’s explicit browser cache allegedly rendered the claims obvious.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the known browser caching technique of Dutta with the remote storage system of McCown to improve system performance and efficiency. Caching the download information (URLs) on the wireless device, as taught by Dutta, would allow the device to generate data requests more quickly without needing to re-request the information from the remote server. Petitioner contended this was a well-known method for faster data retrieval and would have been an obvious optimization.
    • Expectation of Success: Combining a standard browser cache with a remote storage system was a predictable integration of known technologies. A POSITA would expect this combination to yield the desired result of a more efficient system without any unexpected difficulties.

Ground 2: Claims 6-8, 10, 13-15, and 17 are obvious over McCown in view of Dutta, and in further view of Coates.

  • Prior Art Relied Upon: McCown (WO 01/67233), Dutta (Application # 2002/0078102), and Coates (Patent 7,266,555).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of McCown and Dutta to add the file and folder manipulation functionalities required by several dependent claims. Petitioner argued that the base system from McCown and Dutta lacked explicit teachings for remotely creating, deleting, moving, or renaming folders and files. Coates was introduced to provide these missing features, as it disclosed a virtual file system (VFS) on a remote storage server that supports common directory operations. Coates explicitly taught functions such as "create folder," "delete file," "move file," and "move folder," which Petitioner mapped directly to the limitations of the challenged dependent claims.
    • Motivation to Combine: A POSITA, having created the remote storage system of McCown and Dutta, would be motivated to incorporate the file management capabilities of Coates to improve the system's usability. A fundamental user expectation for any storage system is the ability to organize its contents. Coates provided a known and detailed method for implementing such remote file and folder manipulation, making it a logical and desirable enhancement to the base system.
    • Expectation of Success: Adding standard file system operations to a remote storage architecture was a straightforward and predictable improvement. The integration would have been routine, and a POSITA would have had a high expectation of success in creating a more feature-rich and user-friendly system.

4. Key Claim Construction Positions

  • "cache storage": Petitioner proposed this term be construed as "storage that is more readily accessible by the user or user application than the original storage location." This construction was central to their argument, as it allowed a standard browser cache (taught by Dutta), which temporarily stores data locally for quick access, to satisfy the claim limitation.
  • "utilizing download information for the file stored in said cache storage": Petitioner argued this phrase should mean "using information stored in the cache storage of the wireless device to download a file from a remote server." This interpretation was critical for connecting Dutta's teaching of a browser cache to McCown's process, where URLs (the "download information") are received by the wireless device and used to initiate the download to the storage server.
  • "folder structure": Petitioner proposed construing this as "an arrangement of folders and subfolders for holding files." This straightforward construction was used to map the teachings of Coates, which described a hierarchical file system with directories and sub-folders, to the limitations of claims requiring the creation of such a structure.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under the General Plastics factors was unwarranted, despite a previously filed IPR against the same patent (IPR2019-01655). Petitioner asserted that denial would be improper because: (1) the Petitioners (Microsoft and HP) were different from the petitioner in the earlier proceeding; (2) the grounds relied on different prior art combinations than those in the earlier petition; and (3) Petitioners had not yet received the Patent Owner's Preliminary Response in the other proceeding at the time of filing.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-20 of the ’526 patent as unpatentable.