PTAB

IPR2020-01392

Adobe Inc v. Synkloud Technologies LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method and Apparatus for Wireless Devices Access to External Storage
  • Brief Description: The ’686 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 obtains download information (e.g., a URL) from a remote site, sends that information to a dedicated storage server, and the storage server then downloads the file directly from the remote site into the user's allocated storage space.

3. Grounds for Unpatentability

Ground 1: Obviousness over Prust and Major - Claims 1-11 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 disclosed a remote data storage system accessible by wireless devices, such as PDAs, that meets nearly all limitations of claim 1. Prust taught a storage server that allocates storage space to users and allows them to perform file operations. Critically, Prust disclosed an out-of-band download feature where a user can email a URL to the storage server, which then retrieves the corresponding file and stores it. Petitioner contended the only element Prust did not explicitly teach was that the download information (the URL) was "cached in the first wireless device." Major was introduced to supply this teaching, as it disclosed a web browser for wireless devices that explicitly used a "page cache" to store visited webpages, including any embedded URLs. A URL stored in Major's page cache constituted information "cached in the first wireless device."
    • Motivation to Combine: Petitioner asserted a POSITA would combine Major's caching web browser with Prust's remote storage system to achieve predictable benefits. The motivation was to improve the speed, efficiency, and reliability of browsing on a limited-bandwidth wireless device, which were the well-known advantages of web caching.
    • Expectation of Success: A POSITA would have had a high expectation of success because implementing known web-caching techniques into the "conventional web browser" used by Prust's PDA was a standard and predictable improvement.

Ground 2: Obviousness over Nomoto and Major - Claims 1-11 are obvious over Nomoto in view of Major

  • 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 teaching a similar remote storage system where users of wireless devices (PDAs, mobile phones) could manage files on a web server. Nomoto disclosed an "automatic download function" that allowed a user to enter a URL on a webpage, which prompted the server to download the file to the user's storage folder. Petitioner argued this system taught all elements of claim 1 except for the same "cached" limitation missing from Prust. As in the previous ground, Major was cited to disclose a caching web browser on a wireless device, thereby teaching that the download information (URL) obtained from a webpage would be "cached in the first wireless device."
    • Motivation to Combine: The motivation was identical to the Prust combination. A POSITA would have been motivated to incorporate the web-caching techniques of Major into the web browser used to access Nomoto's system to gain the known performance benefits of caching in a wireless environment.
    • Expectation of Success: The combination would have been straightforward, as it involved applying a known technology (web caching) to a known system (remote storage accessed by a browser on a PDA) to achieve predictable results.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 1-11 are obvious over Prust alone or Nomoto alone, based on the inherent knowledge of a POSITA regarding caching. Further combinations were asserted against all claims using Kraft (Patent 6,309,305) to teach copy-and-paste functionality as another form of caching. Specific dependent claims were also challenged with additional combinations, including McCown (WO 01/67233) for claim 2 and Jewett (Patent 8,271,606) for claim 9, to provide more explicit teachings on obtaining download information and configuring storage partitions, respectively.

4. Key Claim Construction Positions

  • "cached in the first wireless device" (claim 1): Petitioner argued this term should be construed according to its plain and ordinary meaning, which is broader than the patent's specific embodiment of a web-browser cache. Petitioner proposed the construction "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 its argument, as it allowed information stored in a web-browser's page cache (from Major) or a copy-paste clipboard buffer (from Kraft) to satisfy the claim limitation.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be inappropriate. The related district court litigation was in an early stage, with the case having been recently transferred and no trial date set. Petitioner asserted that neither the court nor the parties had invested substantial resources in the merits of invalidity. Furthermore, the prior art presented in the petition, particularly Kraft and Jewett, was not duplicative of the art being used in the district court case. Petitioner also argued that the Board was uniquely positioned to resolve the dispute efficiently, noting that the Board was already reviewing a related patent based on Prust and Major.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-11 of the ’686 patent as unpatentable under 35 U.S.C. §103.