Adobe Inc v. Synkloud Technologies LLC

1. Case Identification

• Case #: IPR2020-01393
• Patent #: 9,239,686
• Filed: July 31, 2020
• Petitioner(s): Adobe Inc.
• Patent Owner(s): SynKloud Technologies, LLC
• Challenged Claims: 12-20

2. Patent Overview

• Title: Method and Apparatus for Wireless Devices Access to External Storage
• Brief Description: The ’686 patent describes a system and method for "wireless out-band download," where a user on a wireless device accesses a remote web server to obtain download information (e.g., a URL). This information is then sent to a separate storage server, which uses the information to download the target file from the remote web server and store it in a dedicated space for the user.

3. Grounds for Unpatentability

Ground 1: Obviousness over Prust in view of Jewett - Claims 12 and 15-20 are obvious over Prust in view of Jewett.

• Prior Art Relied Upon: Prust (Patent 6,735,623) and Jewett (Patent 8,271,606).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Prust taught all elements of independent claim 12 except for the limitation that the allocated storage space is "of a predefined capacity." Prust disclosed a remote data storage system that provides "seamless access to remote data storage areas" for client computers, including wireless PDAs. The system could allocate individual storage areas to users and supported common file management operations (creating/deleting folders, moving files). To supply the missing element, Petitioner pointed to Jewett, which disclosed a network storage system with a management program for creating storage partitions "of a specific defined size" (e.g., 20 GB) for allocation to host computers.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Jewett with Prust to provide system administrators with a specific, well-understood method for creating and managing virtual storage spaces of a predefined capacity. Petitioner asserted that since Prust did not disclose a specific technique for defining storage spaces, Jewett’s teaching was a complementary and predictable solution for improving Prust's system by adding cost and resource management benefits.
  • Expectation of Success: A POSITA would have a high expectation of success because implementing a program to create predefined storage partitions, as taught by Jewett, within a general remote storage system like Prust's was a known technique using predictable elements.

Ground 2: Obviousness over Prust/Jewett in view of Major or Kraft - Claim 13 is obvious over the combination of Prust and Jewett, further in view of Major or Kraft.

• Prior Art Relied Upon: Prust (Patent 6,735,623), Jewett (Patent 8,271,606), Major (WO 02/052785), and Kraft (Patent 6,309,305).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground focused on dependent claim 13, which added the "out-band download" feature, requiring the use of "download information for the file cached in the first wireless device." Petitioner argued that Prust's embodiment of a user emailing a URL to the storage server for download met most of this limitation. The key contention was the source of the URL being "cached." Major disclosed a web browser for wireless devices that explicitly cached webpages and their embedded URLs in a "page cache" for quick access. Alternatively, Kraft disclosed copy-and-paste functionality on handsets, where copied information (like a URL) would be temporarily stored in a clipboard cache in RAM. Both represent information "cached in the first wireless device."
  • Motivation to Combine: A POSITA would combine Major with Prust to improve browser performance on a limited-bandwidth wireless device, a known benefit of caching. A POSITA would combine Kraft with Prust to enhance usability by allowing users to copy-and-paste a URL rather than re-typing it, a common feature at the time.
  • Expectation of Success: A POSITA would expect success in combining these features, as web caching and copy-paste functionality were standard, well-understood technologies for wireless devices and would predictably improve the user experience of the Prust system.

Ground 3: Obviousness over Nomoto in view of Jewett - Claims 12 and 15-20 are obvious over Nomoto in view of Jewett.

• Prior Art Relied Upon: Nomoto (Application # US2001/0028363) and Jewett (Patent 8,271,606).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner presented Nomoto as an alternative primary reference to Prust. Nomoto disclosed a file storing-and-managing device (a web server) for receiving, storing, and managing files over the internet for member computers, including PDAs and mobile phones. Critically, Nomoto explicitly taught allocating a "predetermined amount of space in a storage resource" to each member upon sign-up. Petitioner argued this taught the "predefined capacity" limitation directly. For any perceived deficiency, Petitioner again relied on Jewett's explicit teaching of creating storage partitions of a specific, defined size.
  • Motivation to Combine: A POSITA would be motivated to combine Jewett's specific configuration program with Nomoto's system for the same reasons as with Prust: to implement a known, predictable method for managing storage allocation, thereby improving the system's administration and resource management.
  • Expectation of Success: The combination would yield predictable results, as it involved applying a specific technique (Jewett) to improve a similar, known type of system (Nomoto).

• Additional Grounds: Petitioner asserted additional obviousness challenges, including grounds that further combined the Prust- and Nomoto-based art with McCown (WO 01/67233). McCown was cited for its explicit teaching of a user obtaining a file's URL from a remote site and sending it to a storage service to download that file from the same remote site, which Petitioner argued made the "out-band download" steps of claim 14 obvious.

4. Key Claim Construction Positions

• "cached in the first wireless device" (claim 13): This term was central to Petitioner's obviousness argument for claims 13, 14, and 19. Petitioner argued the term should not be limited to the specification's description of a web-browser cache. Instead, based on its plain and ordinary meaning, a POSITA would understand it to mean any information "stored in a location on the wireless device that is more readily accessible than the original source of the information." This broader construction allowed Petitioner to argue that information held in a clipboard's memory (as taught by Kraft) or in a web browser's data cache (as taught by Major) met the claim limitation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under either §325(d) or Fintiv would be inappropriate.
  • §325(d) (Same or Substantially Same Art): Petitioner contended that the primary references (Prust, Nomoto) and key secondary art (Jewett, Kraft) were never considered by the USPTO during prosecution, and thus the grounds were new.
  • Fintiv Factors: Petitioner argued the parallel district court litigation was in its early stages, as it had been recently transferred to a new venue with no trial date set. Furthermore, Petitioner argued that the invalidity contentions in the district court did not rely on Jewett or Kraft, meaning the IPR presented distinct issues. Petitioner also highlighted that the Board was already reviewing a related patent based on Prust and Major, making it the most efficient and expert forum to resolve patentability.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 12-20 of the ’686 patent as unpatentable.