Microsoft Corp v. Synkloud Technologies Inc

1. Case Identification

• Case #: IPR2020-01269
• Patent #: 9,219,780
• Filed: July 20, 2020
• Petitioner(s): Microsoft Corporation and HP Inc.
• Patent Owner(s): Synkloud Technologies, LLC
• Challenged Claims: 1-8 and 16-20

2. Patent Overview

• Title: Method And System For Wireless Device Access To External Storage
• Brief Description: The ’780 patent describes a system and method allowing a wireless device to interact with a remote storage server. The technology focuses on transferring data objects from a remote source to an allocated storage space on the server, controlled by the wireless device, and retrieving those objects back to the wireless device.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 7, 8, and 16-20 are obvious over McCown in view of Dutta.

• Prior Art Relied Upon: McCown (International Publication No. 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 a wireless "user site" (e.g., a cellular phone) accessing a remote "storage site" to download files. McCown disclosed most elements of independent claims 1 and 16, including program instructions for establishing a link to remote storage and for transferring data. Petitioner asserted that McCown’s disclosure of using a standard web browser inherently taught the claimed "cache storage," but added Dutta to remove any doubt. Dutta explicitly disclosed a "browser cache" in local storage for faster access to web content. For the limitation of allocating storage space, Petitioner argued McCown’s "storage space accounts" met the requirement, and Dutta supplemented this by teaching the exclusive allocation of a certain amount of storage space to each registered user.
  • Motivation to Combine: Petitioner contended that McCown and Dutta are analogous art, both pertaining to remote data storage and addressing the problem of limited storage on wireless devices. A POSITA would combine Dutta’s well-known browser cache technique with McCown's system to achieve the predictable result of faster and more efficient operation. Specifically, caching download information (like URLs) from Dutta would prevent the need for repeated requests to the remote server, improving system performance. Combining Dutta's storage allocation method would allow for better management of server resources, a known business need.
  • Expectation of Success: The use of a browser cache was a common and well-understood practice at the time. Therefore, a POSITA would have had a high expectation of success in integrating Dutta's standard caching and storage allocation techniques into McCown's remote storage framework to achieve predictable improvements in speed and resource management.

Ground 2: Claims 4-6 and 16-20 are obvious over McCown in view of Dutta, in further view of Coates.

• Prior Art Relied Upon: McCown (International Publication No. 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 base system established by McCown and Dutta to address dependent claims 4, 5, and 6, which recite file and folder management operations. Petitioner argued that while McCown and Dutta provided the remote storage and caching infrastructure, Coates taught the specific functionality of remotely managing the stored data. Coates disclosed a remote storage system with a hierarchical "folder structure" and taught performing directory operations from a client device, including creating, deleting, moving, renaming, and copying folders and files in the remote storage space.
  • Motivation to Combine: Petitioner asserted that a POSITA would combine Coates’s file manipulation techniques with the McCown/Dutta system to provide a complete and more useful product. A user of the McCown/Dutta system would be able to store files but would lack any method to organize or delete them, quickly leading to a full and unmanageable storage space. Adding the file management capabilities taught by Coates was a logical next step to solve this obvious problem and improve the system's usability. This would be a simple combination of known elements to provide a more functional remote storage solution.
  • Expectation of Success: Integrating the file management functions from Coates into the McCown/Dutta system would have been a straightforward programming task for a POSITA. The combination involved applying known file manipulation techniques to a remote storage system, a predictable integration that would not have required undue experimentation.

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 arguing that McCown’s disclosure of a web browser inherently included cache storage, a position explicitly supported by Dutta.
• "utilizing download information... cached in... cache storage": Petitioner argued this phrase was broad enough to cover using information, such as the file name and server IP address contained within a URL, that is stored in the cache to initiate a file download. This was critical for mapping McCown’s use of URLs for file selection to this claim limitation.
• "folder structure": Petitioner proposed this term meant "an arrangement of folders and subfolders for holding files." This construction supported the application of Coates, which explicitly taught a hierarchical file system, to the claims requiring the creation of such a structure.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) by referencing the General Plastics factors. It was asserted that denial would be improper because this was the Petitioners' only inter partes review (IPR) filing against the ’780 patent. Further, a separate IPR filed by another party (IPR2020-01301) relied on different prior art and challenged a smaller set of claims, meaning the issues did not substantially overlap.

6. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 1-8 and 16-20 of the ’780 patent as unpatentable.