Adobe Inc v. Synkloud Technologies LLC

1. Case Identification

• Case #: IPR2020-01301
• Patent #: 9,219,780
• Filed: July 15, 2020
• Petitioner(s): Adobe Inc.
• Patent Owner(s): Synkloud Technologies, LLC
• Challenged Claims: 9-15

2. Patent Overview

• Title: Method and System for Wireless Device Access to External Storage
• Brief Description: The ’780 patent describes a system for providing remote storage services to wireless devices. The core disclosed method involves an "out-band download" where a user on a wireless device can instruct a remote storage server to download a file from a third-party website directly into the user’s allocated storage space.

3. Grounds for Unpatentability

Ground 1: Claims 9-15 are obvious over Prust.

• Prior Art Relied Upon: Prust (6,735,623).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Prust discloses a remote storage system accessible by wireless devices (PDAs) that meets most limitations of independent claim 9. Prust teaches a user can send an email containing a URL to the storage server, which then downloads the file from that URL into the user's storage. The central dispute concerned the limitation requiring download information (the URL) to be "cached in a cache storage of the first wireless device." Petitioner asserted that while Prust does not explicitly use the word "cached" for this process, a person of ordinary skill in the art (POSITA) would have understood that the URL was most likely obtained from a webpage viewed on the PDA's browser, which would cache the webpage data.
  • Motivation to Combine (for §103 grounds): This ground relies on Prust alone, supplemented by the general knowledge of a POSITA. The motivation was to use Prust's disclosed out-of-band download feature for its intended purpose. Petitioner argued it would have been obvious for a user to copy-and-paste a URL from a cached webpage into an email to initiate the download, as this obviates re-typing and uses known device functionalities. The paste buffer itself would act as a form of cache.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success in using a cached URL for Prust’s system, as it represented a predictable application of known web browsing and copy-paste technologies to achieve a more efficient workflow.

Ground 2: Claims 9-15 are obvious over Prust in view of Major.

• Prior Art Relied Upon: Prust (6,735,623) and Major (WO 02/052785).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground strengthened the argument for the "cached" limitation. While Prust implies caching, Major explicitly discloses a web browser for wireless devices that uses a "page cache" to store visited webpages and their embedded URLs. Petitioner contended that Major’s explicit teaching of a web cache on a wireless device, including its benefits for speed and offline access, fills any perceived gap in Prust’s disclosure regarding the source and caching of the URL.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Major’s web-caching browser with Prust’s remote storage system to gain the predictable benefits of speed, efficiency, and reliability, especially in a limited-bandwidth wireless environment. Implementing a caching browser was a known method to improve user experience.
  • Expectation of Success (for §103 grounds): Success was expected because Major’s browser was designed for the very type of wireless device (PDA) disclosed in Prust, and combining the elements involved no technical challenges or unpredictable results.

Ground 3: Claims 9-15 are obvious over Nomoto.

• Prior Art Relied Upon: Nomoto (US2001/0028363).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner presented Nomoto as an alternative primary reference that teaches a file-managing web server providing remote storage to members using wireless devices like PDAs and mobile phones. Nomoto discloses an "automatic download function" where a user can enter a URL on a webpage to have the server download the corresponding file to the user's storage. Similar to the argument against Prust, Petitioner asserted a POSITA would have understood that the URL provided by the user would originate from a cached webpage on the wireless device.
  • Motivation to Combine (for §103 grounds): This ground relied on Nomoto alone in view of a POSITA's knowledge. The motivation was to use Nomoto’s disclosed features in a conventional and obvious manner, such as by copy-pasting a URL from a cached webpage to utilize the automatic download function.
  • Expectation of Success (for §103 grounds): A POSITA would have expected this to work predictably, as it involved combining standard web browsing and data entry functionalities on a wireless device with Nomoto’s server system.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Prust or Nomoto with Kraft (6,309,305) to explicitly teach copy-paste functionality on a wireless device. Further grounds combined these references with McCown (WO 01/67233) to explicitly teach obtaining the download URL from the same remote server that hosts the file.

4. Key Claim Construction Positions

• The petition argued for a broad construction of the term "cached in a cache storage of the first wireless device" (claim 9). Petitioner contended the term is not limited to a web-browser cache. Instead, it 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 was critical to the invalidity arguments, as it would encompass not only a browser's page cache but also other temporary memory like a clipboard or paste buffer used in a copy-paste operation.

5. Arguments Regarding Discretionary Denial

• The petition argued extensively that discretionary denial under §314(a) based on Fintiv factors would be inappropriate.
• Key arguments included: the district court trial date was uncertain due to the COVID-19 pandemic and was scheduled only three months prior to the Final Written Decision (FWD) due date; there was minimal investment in the merits of the parallel litigation; there was no overlap in claim construction; and half of the IPR grounds (those relying on Kraft) were not part of the district court invalidity contentions. Petitioner also stipulated that it would not pursue any IPR grounds in the district court if the petition was instituted, eliminating the risk of duplicative efforts.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 9-15 of the ’780 patent as unpatentable.