By: Vivek Ganti (vg@hkw-law.com) (Reg. No. 71,368); and
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`Gregory Ourada (go@hkw-law.com) (Reg. No. 55,516)
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________
`
`AMERICAN MEGATRENDS, INC.,
`MICRO-STAR INTERNATIONAL CO., LTD,
`MSI COMPUTER CORP.,
`GIGA-BYTE TECHNOLOGY CO., LTD., AND
`G.B.T., INC.
`Petitioners,
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`v.
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`KINGLITE HOLDINGS INC.
`
`Patent Owner
`
`_________________
`
`Case IPR2015-TBA
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`U.S. Patent 6,373,498
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`_________________
`
`PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 6,373,498
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`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Gregory Ourada (go@hkw-law.com) (Reg. No. 55,516)
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`AMERICAN MEGATRENDS, INC.,
`MICRO-STAR INTERNATIONAL CO., LTD,
`MSI COMPUTER CORP.,
`GIGA-BYTE TECHNOLOGY CO., LTD., AND
`G.B.T., INC.
`Petitioners,
`
`v.
`
`KINGLITE HOLDINGS INC.
`
`Patent Owner
`
`_________________
`
`Case IPR2015-TBA
`
`U.S. Patent 6,373,498
`
`_________________
`
`PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 6,373,498
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
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`Petition for Inter Partes Review of U.S. Pat. No. 6,373,498
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`TABLE OF CONTENTS
`Introduction .......................................................................................................... 1
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`
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`I.
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`II. Overview .......................................................................................................... 1
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`III. Mandatory Notices (37 C.F.R. 42.8(a)(1)) ....................................................... 4
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`A. Notice of related matters (37 C.F.R. § 42.8(b)(2))........................................ 4
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`B. Real party-in-interest (37 C.F.R. § 42.8(b)(1)) ............................................. 4
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`C. Notice of Counsel and Service Information (37 C.F.R. § 42.8(b)(3-4)) ....... 5
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`IV. Grounds for Standing ....................................................................................... 6
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`V.
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`Statement of Relief Requested ......................................................................... 6
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`VI. Claim Construction ........................................................................................... 6
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`A. Applicable Principles of Claim Construction. .............................................. 6
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`B.
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`C.
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`Level of Skill in the Art ................................................................................. 7
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`Terms to be Construed .................................................................................. 7
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`1. “user profile” ................................................................................................. 7
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`2. “correspond” .................................................................................................. 8
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`3. “system file” .................................................................................................. 9
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`4. “operating system” ......................................................................................10
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`5. “BIOS memory” ..........................................................................................11
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`6. Summary of proposed claim constructions .................................................12
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`VII.
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`Statement of Material Facts .........................................................................13
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`VIII.
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`Identification of Challenge (37 C.F.R. § 42.104(b)) ...................................13
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`A. Ground 1: Challenged Claims 1-40 and 44 are obvious under 35 U.S.C. §
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`103(a) by PC Tools and Gerace ...........................................................................17
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`B. Ground 2: Challenged Claims 1-40 and 44 are rendered obvious under 35
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`U.S.C. § 103(a) by LogoMania ............................................................................30
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`C. Ground 3: Challenged Claims 41-43 and 45 are rendered obvious under 35
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`U.S.C § 103 by Lee and Piwonka combined with either PC Tools – Gerace or
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`LogoMania ............................................................................................................39
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`IX. No Secondary Conditions exist ......................................................................48
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`X.
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`Fees (37 C.F.R. § 42.103) ...............................................................................49
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`XI. Conclusion ......................................................................................................49
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`
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`Cases
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`TABLE OF AUTHORITIES
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`Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 1323-1324 (Fed. Cir. 1999). ..........19
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`In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006) .................................................19
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`
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`ii
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`Petition for Inter Partes Review of U.S. Pat. No. 6,373,498
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`KSR International Co. v. Teleflex Inc., et al., 127 S.Ct. 1727, 1742 (2007) ... 17, 19,
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`42
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`Liberty Mutual Ins. Co v. Progressive Casualty Ins. Co., CBM2012-00003, Paper 7
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`at 2 .........................................................................................................................16
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`Medtronic, Inc. at al v. Endotach LLC., IPR2014-00659 paper 18 ........................... 7
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`Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir.
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`2005) .....................................................................................................................10
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` Statutes
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`35 U.S.C. § 314(a) ...................................................................................................49
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`37 C.F.R § 42.104(b)(3) ............................................................................................. 6
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`37 C.F.R. § 42.1(b) ........................................................................................... 15, 16
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`37 C.F.R. § 42.10(b) .................................................................................................. 6
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`37 C.F.R. § 42.100(b) ................................................................................................ 6
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`37 C.F.R. § 42.103 ...................................................................................................49
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`37 C.F.R. § 42.104(b) ..............................................................................................13
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`37 C.F.R. § 42.15(a) .................................................................................................49
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`37 C.F.R. § 42.6(d) ..................................................................................................13
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`37 C.F.R. § 42.8(b) .................................................................................................... 5
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`37 C.F.R. § 42.8(b)(1) ................................................................................................ 4
`iii
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`37 C.F.R. § 42.8(b)(2)) .............................................................................................. 4
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`37 C.F.R. 42.8(a)(1) ................................................................................................... 4
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`pre-AIA 35 U.S.C. § 102(a) ........................................................................ 14, 15, 17
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`pre-AIA 35 U.S.C. § 102(b) .....................................................................................15
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`pre-AIA 35 U.S.C. § 102(e) .............................................................................. 14, 15
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`pre-AIA 35 U.S.C. § 103 ................................................................................. passim
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`iv
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`Petition for Inter Partes Review of U.S. Pat. No. 6,373,498
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`EXHIBIT LIST
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`Ex. 1001 U.S. Patent No. 6,373,498 to Abgrall (“498 Patent”)
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`Ex. 1002
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`The file history of the 498 Patent (“File History”)
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`Ex. 1003
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`Experts Exchange forum from June 30, 1997 (“Experts Exchange”)
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`Ex. 1004 Change the Startup and Shutdown Screens - PC Tools (“PC Tools”)
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`Ex. 1005 U.S. Patent No. 5,848,396 to Gerace (“Gerace”)
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`Ex. 1006 Go Crazy with LogoMania - PC Magazine (“LogoMania”)
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`Ex. 1007 Additional copy of LogoMania with figures
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`Ex. 1008 U.S. Patent No. 6,269,441 to Lee et al. (“Lee”)
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`Ex. 1009 U.S. Patent No. 6,073,206 to Piwonka et al. (“Piwonka”)
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`Ex. 1010 Charles A. Anyimi, “Implementing a Plug and Play BIOS Using
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`Intel's Boot Block Flash Memory,” Intel, Feb. 1995
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`Ex. 1011 Kinglite’s Responses to Challenges to Non-UEFI Patents Raised by
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`ECS and Gigabyte (“Kinglite’s Responses”)
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`Ex. 1012 Declaration of Vivek Ganti Esq.
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`Ex. 1013 Declaration of Martin Kaliski (“Kaliski Dec.”)
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`Petition for Inter Partes Review of U.S. Pat. No. 6,373,498
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`I.
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`Introduction
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`American Megatrends, Inc. Micro-Star International Co., Ltd, MSI Computer
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`Corp., Giga-Byte Technology Co., Ltd., and G.B.T., Inc. (“Petitioners”) petitions for
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`inter partes review seeking cancellation of claims 1-45 of U.S. Pat. No. 6,373,498
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`(“the 498 Patent,” Ex. 1001), which is assigned to Kinglite Holdings Inc. (“KL”).
`
`KL is referred to as “Patent Owner” in this Petition.
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`II. Overview
`This Petition furthers the purpose of inter partes review – the cancellation of
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`unpatentable claims. The challenged claims 1-45 of the 498 Patent never should
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`have issued. This Petition establishes a reasonable likelihood that Petitioners will
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`prevail regarding at least one of the claims challenged and that the challenged claims
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`are unpatentable under pre-AIA 35 U.S.C. § 103. Thus, Petitioners respectfully
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`request that the Board grant the Petition and institute trial on all of the challenged
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`claims.
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`The 498 Patent was filed on June 18, 1999 and issued on April 16, 2002. The
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`general field of technology is displaying an image on a computer at a particular point
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`in time (See the 498 Patent/ Ex. 1001, p.1, Abstract). As stated in the Abstract below,
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`the 498 Patent is a simple technique to customize your computer screen when
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`loading an operating system:
`
`The present invention is a method and apparatus to display an image
`during a transition of an operating system in a computer system. An
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`image having an image format compatible with the operating system
`is obtained. Content of a system file corresponding to the transition of
`the operating system is created using the image in a system directory.
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`(Id. – emphasis added). The 498 Patent achieves this by renaming a “content
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`graphics file” and transferring the renamed file to a “Windows™ directory.” (Id. p.
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`14, 10:6-10). Then an “operating system retrieves this file when the operating
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`system is first launched, and hence the content is displayed on the display screen.”
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`(Id.).
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`
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`During prosecution, the applicant of the 498 Patent amended the claims to
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`require that the image “correspond[s] to a user profile.” (See e.g., File History/ Ex.
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`1002, p. 30). This is the first time the term “user profile” appeared in the claim
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`language. In response to this amendment, the examiner allowed the claims. (Id. at
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`p. 148).
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`
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`The 498 Patent issued without the examiner considering numerous online
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`websites, journal publications, and forums that “provide a simple and efficient
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`method to display an image during a transition of the operating system,” which is
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`the problem the 498 Patent addresses. (The 498 Patent/ Ex. 1001, p. 10, 1:24-26).
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`For example, a June 30, 1997 posting on an antedating website of www.Experts-
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`Exchange.com provides a dialogue between two users who discuss the same
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`problem and solution of the 498 Patent:
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`Msali asks: “how do i create my own startup windows 95 logo.
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`Petition for Inter Partes Review of U.S. Pat. No. 6,373,498
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`j2 replies: Save the picture as logo.sys and replace the existing
`logo.sys file (you can find it by START / FIND FILE) Voila, done
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`(Experts Exchange/ Ex. 1003, pp. 1-2). The broad claims of the 498 Patent mirror
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`the level of detail described in the problem-solution above. As discussed in section
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`VIII, this technique of displaying an image during a transition of an operating
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`system is well-known.
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`Martin Kaliski, Ph.D., a technical expert in this field, explains how each of
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`these prior art documents identified in this Petition discloses, teaches or otherwise
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`suggests every feature of the challenged claims, or why each of the features
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`described in the challenged claims were obvious to a person having ordinary skill
`
`in the art (“POSITA”) as of June 18, 1999. (Kaliski Dec./ Ex. 1013). Dr. Kaliski
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`is surprised that the 498 Patent issued as a U.S. Patent when it describes an
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`extremely simplistic concept of replacing an operating system image file with a
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`custom image in order to provide a customized boot up screen. (Id. at ¶ 17).
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`Dr. Kaliski reaches these conclusions based on claim constructions that are
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`amply supported by the claim language and specification. Moreover, as shown
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`below, Patent Owner has attempted to license the 498 Patent by proffering an
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`extraordinarily broad view of what its claims cover. Without endorsing the Patent
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`Owner’s claim construction, to the extent these constructions are considered by the
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`Petition for Inter Partes Review of U.S. Pat. No. 6,373,498
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`Board, Petitioners submit that such broad constructions only further warrant a
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`determination of invalidity.
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`In view of the evidence, the Board should cancel all of the challenged
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`claims.
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`III. Mandatory Notices (37 C.F.R. 42.8(a)(1))
`A. Notice of related matters (37 C.F.R. § 42.8(b)(2))
`The 498 Patent is presently asserted against Micro-star International Co., Ltd
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`(“Micro-Star”) and MSI Computer Corp (collectively, “MSI”) in the District Court
`
`for the Central District of California (CV 14-03009 JVS (PJWx)). The 498 Patent
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`is also presently asserted against GIGA-BYTE Technology Co., Ltd. (“GIGA-
`
`BYTE”) and G.B.T, Inc. (collectively, “GBT”) in the District Court for the Central
`
`District of California (CV 14-04989 JVS (PJWx)). MSI and GBT are both
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`customers of American Megatrends Inc. (“AMI”). AMI has successfully
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`intervened in these two district court cases and the two cases have been
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`consolidated into CV 14-03009 JVS (PJWx). The owner of the 498 Patent then
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`asserted it directly against AMI.
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`B. Real party-in-interest (37 C.F.R. § 42.8(b)(1))
`The real parties in interest are:
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`• American Megatrends, Inc. (American corporation, principal place of
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`business in 5555 Oakbrook Parkway, Norcross, Georgia 30093)
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`Petition for Inter Partes Review of U.S. Pat. No. 6,373,498
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`• Micro-star International Co., Ltd (Taiwanese corporation with its
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`principal place of business at No. 69, Lide Street, Zhonghe District,
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`New Taipei City 235, Taiwan)
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`• MSI Computer Corp (American corporation with its principal place of
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`business at 901 Canada Court, City of Industry, California 91748)
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`• GIGA-BYTE Technology Co., Ltd. (Taiwanese corporation, principal
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`place of business at No.6, Bao Chiang Road, Hsin-Tien Dist., New
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`Taipei City 231, Taiwan)
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`• G.B.T, Inc. (American corporation, principal place of business in
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`17358 Railroad St, City Of Industry, CA 91748)
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`C. Notice of Counsel and Service Information (37 C.F.R. § 42.8(b)(3-4))
`Lead Counsel: Vivek Ganti (Reg. No. 71,368)
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`Address: HILL, KERTSCHER & WHARTON, LLP, 3350 Riverwood
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`
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`Parkway, Suite 800, Atlanta, GA 30339. Tel. 678.384.7453. Fax. 770.953.1358.
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`Backup Counsel: Gregory Ourada (Reg. No. 55,516)
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`Address: HILL, KERTSCHER & WHARTON, LLP, 3350 Riverwood
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`Parkway, Suite 800, Atlanta, GA 30339. Tel. 678.384.7443. Fax. 770.953.1358.
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`Petition for Inter Partes Review of U.S. Pat. No. 6,373,498
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`Please address all correspondence to the lead counsel at the address shown
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`above. Petitioners consent to electronic service of papers by email at: vg@hkw-
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`law.com and go@hkw-law.com.
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`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney by Petitioners
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`appointing each of the above designated counsel is concurrently filed.
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`IV. Grounds for Standing
`Petitioners certify that the 498 Patent is eligible for inter partes review and
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`that the Petitioners are not estopped or barred from requesting inter partes review
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`challenging the claims identified in the Petition. The required fee is paid via online
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`credit card payment. The Office is authorized to charge fee deficiencies and credit
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`overpayments to Deposit Account No. 506541 (Customer ID No. 87296).
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`V. Statement of Relief Requested
`Petitioners request inter partes review and cancellation of claims 1-45 of the
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`498 Patent based on the detailed statements presented in Sections VI and VIII.
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`VI. Claim Construction
`A. Applicable Principles of Claim Construction.
`The Board should construe the claims using the broadest reasonable
`
`interpretation (“BRI”). See 37 C.F.R. § 42.100(b). Petitioners propose BRI-based
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`constructions of terms herein solely for purposes of the inter partes review (“IPR”)
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`proceeding as provided by 37 C.F.R. §§ 42.100(b) and 42.104(b)(3). The BRI-
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`based standard is not used in litigation or other proceedings, and on that basis
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`Petitioners note that these constructions are not necessarily appropriate for use in
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`litigation or any other proceedings which employ a standard of claim construction
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`other than BRI.
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`In addition, Petitioners note below even broader constructions that the Patent
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`Owner has taken during attempts to license the patent. (See Kinglite Responses/
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`Ex. 1011). Petitioners do not endorse such constructions but provide them in order
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`to satisfy their burden to take into consideration possible contentions that may later
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`be advanced by Patent Owner. Medtronic, Inc. at al v. Endotach LLC., IPR2014-
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`00659, paper 18, p. 9.
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`B. Level of Skill in the Art
`With respect to the 498 Patent, a POSITA is a person having at least a
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`Bachelor of Science degree in computer science or software engineering or a
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`Bachelor of Science degree in a technical field requiring computer science or
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`software engineering courses. (Kaliski Decl./ Ex. 1013, pp. 3-4 ¶¶ 10-11).
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`C. Terms to be Construed
`“user profile”
`1.
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`Under the BRI standard, Petitioners submit that the term “user profile” is at
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`least as broad as “information that characterizes the preferences of a user.”
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`(Kaliski Decl./ Ex. 1013, pp. 7-8 ¶¶ 24-25).
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`The term “user profile” appears in the claims without any limitation,
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`restriction, or clarification except for the one element: “said image to correspond to
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` user profile.” (The 498 Patent/ Ex. 1001, p. 16, independent claims 1, 11, 21,
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` a
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`and 31). No other language in the claims specify where the user profile is located,
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`what it is, how it is used, or whether it is limited to electronic information.
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`Because a user profile is something that is specific to a user, Petitioners’ BRI
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`construction of this term is “information that characterizes the preferences of a
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`user.” An image corresponding to a user profile must be an image derived from
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`the information expressed in a user profile. In other words, the image must be
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`based on information that expresses the tastes or preferences of the user. (The 498
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`Patent/ Ex. 1001, p. 14, 9:25-28, 9:40:43).
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`Patent Owner has notified the defendants in the related litigation that it
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`understands “user profile” to be as broad as “any information or selection
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`conforming to, or compatible with, the user and/or any of the user computer
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`system’s hardware and/or any user software.” (Kinglite’s Responses/ Ex. 1011, p.
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`3). Under Patent Owner’s construction, if a user selects a picture, then there is
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`implicitly a user profile because there is some selection conforming to a user. In
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`other words, according to Patent Owner, every selection of an image by a user
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`necessarily means that there is a corresponding user profile.
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`“correspond”
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`2.
`Under the BRI standard, the term “correspond” means “relates to or affected
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`by.” (Kaliski Decl./ Ex. 1013, pp. 8-9 ¶¶ 26 and 27). The term “correspond” often
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`means that there is a one to one correlation such that there is a match between two
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`things. (Id.). For example, a left shoe corresponds to a left foot. (Id.). Dr. Kaliski
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`explains that this requirement of a one-to-one correlation is not part of the claims’
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`usage of “correspond to.”
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`Specifically, looking at dependent claim 41 (which incorporates all the
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`limitations of claim 1), the claimed “image” must correspond to both data stored in
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`BIOS memory” and “a user profile.” (Id.). Thus, the term “correspond” as used in
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`the 498 Patent does not mean matching or a one-to-one correlation. In fact, Dr.
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`Kaliski stated that he “cannot be reasonably certain as to the boundaries of the term
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`‘correspond’ as it is recited in the claims and used in the specification.” (Ex.
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`Kaliski Decl./ Ex. 1013, p. 9, ¶ 27). Therefore. for purposes of this Petition,
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`“correspond” is interpreted to be at least as broad as “relates to or affected by.”
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`“system file”
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`3.
`Under the BRI standard, Petitioners submit that the term “a system file” is at
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`least as broad as “a file of an operating system.” (Id. at ¶ 28). This is consistent
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`with the specification, where every instance of a system file is a file used by an
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`operating system (e.g., LOGO.SYS, LOGOW.SYS, LOGOS.SYS). (See Ex. 1001
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`FIG. 6, item 630). In fact, the file extensions “.SYS” is the file extension for the
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`Windows Operating System’s system file. (Ex. 1004, p. 1 stating “Once your (sic)
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`finished, save the files, change their extensions back to .SYS”; see also Kaliski
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`Dec./ Ex. 1013, pp. 9, 17-18 ¶¶ 28, 55, 58, 59).
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`Patent Owner has expressed that it understands “system file” to be at least as
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`broad as “a file of a system.” (Kinglite’s Responses/ Ex. 1011, p. 4 see also
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`Kaliski Dec./ Ex. 1013, p. 11 ¶ 32). Under Patent Owner’s construction, a Basic
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`Input/Output System (BIOS) is a system file. (Id. at pp. 3, 5). In this respect, any
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`file associated with any kind of system is a system file. (Kaliski Decl./ Ex. 1013,
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`p. 11 ¶ 32). Again, Petitioners wish to clarify that they do not endorse the Patent
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`Owner’s construction. In particular, a judicial claim construction based on
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`Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir.
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`2005) would not properly yield such a broad, technically-suspect construction.
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`However, as noted, Petitioners address Patent Owner’s proffered constructions of
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`its own patent to satisfy it burden of foreseeing potential arguments.
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`“operating system”
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`4.
`Under the BRI standard, Petitioners submit that the term “an operating
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`system” is at least as broad as “a software platform loaded by a BIOS.” (Kaliski
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`Dec./ Ex. 1013, pp. 9-10 ¶ 29). This term is not defined in the 498 Patent,
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`however, every explicit example of an operating system in the 498 Patent is
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`consistent with the conventional meaning of an operating system, which is
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`something that is loaded by a BIOS. (Id.).
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`Patent Owner has expressed its belief that an “operating system” can be
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`construed to be at least as broad as “a user’s system.” (Kinglite’s Responses/ Ex.
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`1011, p. 4; see also Kaliski Dec./ Ex. 1013, p. 11 ¶ 33). Under Patent Owner’s
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`construction, any system that a user operates is an operating system. This includes,
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`for example, a BIOS – as opposed to a software platform loaded by a BIOS. On
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`this point, Petitioners again clarify that this is a highly suspect construction and
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`Petitioners do not endorse it. Nevertheless, it is the Patent Owner’s proffered
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`construction.
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`5.
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`“BIOS memory”
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`Under the BRI standard, Petitioners submit that the term “BIOS memory” is
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`at least as broad as “a space where BIOS related content resides.” (Kaliski
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`Dec./ Ex. 1013, p. 10 ¶ 30). Other than claims 41 and 45, the 498 Patent does not
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`recite the phrase “BIOS memory” anywhere in the written description. Therefore,
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`BIOS memory should be given its broadest reasonable interpretation.
`
`The 498 Patent describes “system firmware 176 [that] includes a system
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`BIOS module 82 having system BIOS handlers, hardware routines, etc.” (Ex.
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`1001, p. 13, 7:19-21). Based on the specification, the “system BIOS handlers,
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`hardware routines, etc.” are examples of BIOS related content. (Id. at 7:29-31).
`
`The 498 Patent further states that such “modules and portions of system firmware
`
`176 may be contained in ROM 180 and/or flash 184.” This suggests that the BIOS
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`Petition for Inter Partes Review of U.S. Pat. No. 6,373,498
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`related content resides in one or more memory locations. Thus, BIOS memory is
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`at least as broad as a space where BIOS related content resides.
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`
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`Summary of proposed claim constructions
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`6.
` To assist the Board, below, is a table that compares Petitioners’ proposed
`
`construction with Patent Owner’s construction of the claim term:
`
`Term
`
`“user profile”
`
`Petitioners’
`Construction
`information that
`characterizes the
`preferences of a user
`
`“correspond"
`
`“system file”
`
`“operating system”
`
`“BIOS Memory”
`
`relates to or affected by
`
`a file of an operating
`system
`a software platform
`loaded by a BIOS
`a space where BIOS
`related content resides
`
`Patent Owner’s
`construction
`any information or
`selection conforming to,
`or compatible with, the
`user and/or any of the
`user computer system’s
`hardware and/or any user
`software
`n/a
`
`A file of a system
`
`A user’s system
`
`n/a
`
`Petitioners submit that its proposed BRI claim constructions more than
`
`
`
`amply support their invalidity arguments. Should the Board adopt the Patent
`
`Owner’s even broader constructions, the invalidity case is enhanced further.
`
`Petitioners will not endeavor to point out each instance in which application of the
`
`Patent Owners construction would enhance the invalidity case.
`12
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`Petition for Inter Partes Review of U.S. Pat. No. 6,373,498
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`VII. Statement of Material Facts
`1. Patent Owner has asserted that the claim term “operating system”
`
`encompasses a “Basic Input/Output System.”
`
`2. Patent Owner has asserted that a “system file” encompasses a BIOS file.
`
`3. Patent Owner has asserted that a “user profile” is any information or
`
`selection conforming to, or compatible with, the user and/or any of the
`
`user computer system’s hardware and/or any user software.
`
`
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`VIII.
`
`Identification of Challenge (37 C.F.R. § 42.104(b))
`Petitioners request IPR on the Grounds of Unpatentability indexed below.
`
`In accordance with 37 C.F.R. § 42.6(d), copies of the references listed in the index
`
`below are filed with this Petition. As further support for the Grounds of
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`Unpatentability, Petitioners submit the accompanying declaration of a technical
`
`expert, Dr. Martin Kaliski. (Kaliski Dec./ Ex. 1013), which explains how a
`
`POSITA would understand the art.
`
`The grounds upon which this Petition is based are summarized as follows:
`
`Ground 1: The combination of PC Tools and Gerace renders obvious
`
`claims 1-40 and 44 under 35 U.S.C. § 103.
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`Petition for Inter Partes Review of U.S. Pat. No. 6,373,498
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`Ground 2: LogoMania renders obvious claims 1-40 and 44 under 35
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`U.S.C. § 103.
`
`Ground 3: Lee and Piwonka combined with either PC Tools - Gerace or
`
`LogoMania render obvious claim 41-43 and 45 under 35 U.S.C. § 103.
`
`Ground 1 applies the combination of PC Tools (PC Tools/ Ex. 1004) and
`
`Gerace (Gerace/ Ex. 1005) to the challenged claims. PC Tools is a website for the
`
`company, PC Tools by Symantec (PC Tools/ Ex. 1004). PC Tools includes a
`
`webpage that was last modified on February 2, 1999. (Id.). PC Tools was
`
`publically available as a printed publication prior to the priority date of the 498
`
`Patent. Accordingly, PC Tools qualifies as prior art under at least 35 U.S.C. §
`
`102(a). Ground 1 also relies on Gerace, which is a U.S. Patent that was filed on
`
`April 26, 1996 and issued on December 8, 1998, before the priority date of the 498
`
`Patent. Accordingly, Gerace is a patent that qualifies as prior art under at least 35
`
`U.S.C. § 102(a) or 102(e). Neither PC Tools nor Gerace was considered during the
`
`prosecution of the 498 Patent.
`
`Ground 2 applies LogoMania (LogoMania/ Ex. 1006) to the challenged
`
`claims. LogoMania is a journal article written by Neil J. Rubenking and published
`
`by PC Magazine on March 25, 1997. (Id. at p. 1). The journal article, titled “Go
`
`Crazy with LogoMania!” discloses a software program called LogoMania that “lets
`
`you replace the standard Windows 95 logo and its cloudy background with your
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`Petition for Inter Partes Review of U.S. Pat. No. 6,373,498
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`own personalized animated logo bitmap.” (Id.). LogoMania is a printed
`
`publication that qualifies as prior art under at least 35 U.S.C. § 102(a) or 102(b).
`
`LogoMania, or any other non-patent literature, was not considered during the
`
`prosecution of the 498 Patent.
`
`LogoMania (Ex. 1006) is printed from a website and includes references to
`
`various figures. Petitioners also submit Ex. 1007, which is a differently formatted
`
`copy of LogoMania obtained through a different website. For purposes of this
`
`Petition, citations of LogoMania are made to Ex. 1006.
`
`Ground 3 applies Lee (Ex. 1008) and Piwonka (Ex. 1009) to address the
`
`additional requirements of dependent claims 41-43 and 45, which are claims that
`
`are not challenged in any other ground. Lee is a U.S. Patent that was filed in
`
`September 9, 1998 and is therefore prior art under at least 35 U.S.C 102(a) or
`
`102(e). Piwonka is a U.S. Patent that was applied for on April 30, 1998, and which
`
`issued on June 6, 2000. Piwonka therefore qualifies as prior art under at least 35
`
`U.S.C. § 102(a) or 102(e). Lee and Piwonka were not considered during the
`
`prosecution of the 498 Patent.
`
`Recognizing that the Board is to secure “the just, speedy, and inexpensive
`
`resolution of every proceeding” (37 C.F.R. § 42.1(b)), Petitioners have narrowly
`
`tailored the discussion of only five references among numerous others which are of
`
`doubtless relevance, in order to avoid straining these resources. As shown herein,
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`Petition for Inter Partes Review of U.S. Pat. No. 6,373,498
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`the interests of justice militate in favor of the institution of IPR on the limited
`
`grounds presented herein.
`
`Petitioners respectfully submit that denial of any of the asserted grounds of
`
`unpatentability in this Petition on the basis of redundancy, without reaching its
`
`merits, would upset the statutory mandate of just, speedy and inexpensive
`
`resolution set forth in 37 C.F.R. § 42.1(b). See Liberty Mutual Ins. Co v.
`
`Progressive Casualty Ins. Co., CBM2012-00003, Paper 7 at 2.
`
`Petitioners respectfully submit that the Board should not adopt an overly
`
`restrictive view of the number of grounds of unpatentability to consider, and
`
`should consider each of the meritorious grounds presented herein. Considering the
`
`estoppel provisions in the event of an unsuccessful trial on the merits, the interests
`
`of justice and speed are best served by taking up IPR on all grounds presented
`
`herein.
`
`While Ground 1 and Ground 2 challenge the same set of claims, these two
`
`grounds are not redundant. As noted above, Patent Owner has put defendants in
`
`the related litigation on notice of its own claim construction for the term “user
`
`profile.” Because of the unusual breadth and scope of Patent Owner’s construction
`
`of “user profile,” which appears to be divorced from the specification, Grounds 1
`
`and 2 provide varying, non-redundant analyses of the term “user profile” in order
`
`to take the varying claim construction possibilities into account. Specifically,
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`Petition for Inter Partes Review of U.S. Pat. No. 6,373,498
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`Ground 1 explicitly discloses a “user profile” for displaying targeted content (e.g.,
`
`advertisements) just like the 498 Patent which discloses processing “user profile or
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`demographic data [that] targets content to the users which have similar profiles.”
`
`(Compare Gerace/ Ex. 1005, Abstract with the 498 Patent/ Ex. 1001, 9:35-37).
`
`However, Ground 2 suggests a user profile (e.g., option settings) that will “produce
`
`an interesting background” —a background explicitly intended for a boot up
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`screen. (Ex. 1006, p. 5).
`
`A. Ground 1: Challenged Claims 1-40 and 44 are rendered obvious under
`35 U.S.C. § 103(a) by PC Tools and Gerace
`
`Ground 1 applies to the combination of PC Tools and Gerace. Because a
`
`POSITA is presumed to be aware of all pertinent art, thinks in accordance with the
`
`conventional wisdom of the art, and is a
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