PTAB

IPR2020-01235

Adobe Inc v. Synkloud Technologies LLC

Key Events

Petition

petition

Title: System and Method for Wireless Device Access to External Storage
Brief Description: The ’254 patent describes a remote storage system for wireless devices. The core disclosed method involves a "wireless out-band download," where a user on a wireless device utilizes cached information (e.g., a URL from a webpage) to instruct a remote server to download a file from a third-party website directly into the user's allocated storage space on that server.

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 nearly all limitations of independent claim 9. Prust disclosed a remote storage system where a user on a wireless device (like a PDA) could remotely access storage spaces and instruct the server to download a file from a URL provided in an email. The final limitation of claim 9, requiring the server to use "information for the file cached in a cache storage in the first wireless device," was not explicitly taught by Prust. Petitioner asserted that Major supplied this teaching by disclosing a web browser for wireless devices (including PDAs) that explicitly used a "page cache" to store visited webpages, including any URLs on those pages, to improve performance.
- Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) implementing Prust’s system on a PDA would have been motivated to incorporate the teachings of Major. A POSITA would combine Major’s web-caching browser with Prust’s system to gain the predictable benefits of increased speed and efficiency, particularly in the limited-bandwidth wireless environments common at the time.
- Expectation of Success: A POSITA would have had a high expectation of success, as Major merely confirmed the well-known practice of using caching in web browsers on PDAs to improve performance.

Prior Art Relied Upon: Prust (Patent 6,735,623), Major (WO 02/052785), Kraft (Patent 6,309,305), and Reuter (Application # US2002/0019908).
Core Argument for this Ground:
- Prior Art Mapping: This ground addressed dependent claim 13, which added program instructions for a "web console" used to partition storage devices. Petitioner argued the combination of Prust and Major/Kraft established the base invention of claim 9. Reuter was introduced because it explicitly disclosed a "web-based management interface" or "management console" that enabled an administrator to perform storage management tasks, including creating and allocating virtual disks ("storage spaces"). This browser-based wizard in Reuter directly taught the "web console" limitation.
- Motivation to Combine: Prust’s system required a method for administrators to create and assign storage spaces, but it did not specify how. A POSITA would have been motivated to combine Reuter’s complementary teaching of a browser-based management console with Prust's system to provide a known, user-friendly, and cost-effective method for managing the remote storage.

Prior Art Relied Upon: Nomoto (Application # US2001/0028363) and Major (WO 02/052785).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner presented Nomoto as an alternative primary reference to Prust. Nomoto disclosed a file managing web server that provided remote storage for users on wireless devices like PDAs and mobile phones. Critically, Nomoto taught an "automatic download function" where a user could enter a URL on a webpage, which was sent to the server to schedule and execute a download from that URL to the user's storage folder. Similar to the Prust argument, Petitioner contended that Major’s teaching of a caching web browser for wireless devices supplied the final limitation of claim 9 regarding the use of cached information.
- Motivation to Combine: The motivation was analogous to the Prust/Major combination. A POSITA implementing Nomoto’s remote storage system would naturally look to improve its web browser functionality. The POSITA would combine Major’s caching techniques to provide faster and more reliable access on the PDAs and mobile phones taught by Nomoto.
Additional Grounds: Petitioner asserted additional obviousness challenges, including claims 9-12, 14, and 15 as obvious over Prust alone or Nomoto alone (arguing the caching limitation was an obvious implementation detail) and in combination with Kraft (which taught copy-and-paste functionality on mobile devices, providing another form of caching via a clipboard).

"cached in cache storage in the first wireless device" (claim 9): Petitioner proposed this term should be construed to mean "stored in a location on the wireless device that is more readily accessible than the original source of the information." This construction is broader than just a web-browser cache and would encompass other temporary storage like RAM or a clipboard buffer, which was relevant to the arguments involving Kraft.
"web console" (claim 13): Petitioner argued this term should mean a "web-based user interface through which management tasks are performed." This construction would not limit the console's function solely to partitioning storage, aligning with the broader management capabilities taught by the Reuter reference.

Petitioner argued that discretionary denial under §314(a), based on the Fintiv factors, was inappropriate. The core arguments were:
- The parallel district court trial date was uncertain due to the COVID-19 pandemic and was scheduled only three months before the Final Written Decision (FWD) deadline.
- Investment in the district court case was minimal, with fact discovery not yet open and claim construction proceedings having just commenced.
- There was not a complete overlap of issues, as four of the eight IPR grounds relied on the Kraft reference, which was not part of Petitioner's district court invalidity contentions.
- Petitioner stipulated that, if the IPR were instituted, it would not pursue the grounds raised (or those that reasonably could have been raised) in the parallel litigation, eliminating concerns of duplicative efforts.

Petitioner requested institution of an inter partes review and cancellation of claims 9-15 of the ’254 patent as unpatentable.