By: Vivek Ganti (vg@hkw-law.com)
`Reg. No. 71368
`Gregory Ourada (go@hkw-law.com)
`Reg. No. 55516
`
`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, LLC
`
`Patent Owner
`
`_________________
`
`Case IPR2015-01079
`U.S. Patent No. 6,373,498
`_________________
`
`
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`
`Reg. No. 71368
`Gregory Ourada (go@hkw-law.com)
`Reg. No. 55516
`
`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, LLC
`
`Patent Owner
`
`_________________
`
`Case IPR2015-01079
`U.S. Patent No. 6,373,498
`_________________
`
`
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`
`TABLE OF AUTHORITIES……………………………………………………...iii
`
`EXHIBIT LIST………………………………………………………………….....v
`
`Page
`
`I.
`II.
`
`Introduction……………………………………………………………...1
`LogoMania Renders Obvious Claims 1-40 and 44 under 35
`U.S.C. § 103……………………………………………………………...1
`A. LogoMania is analogous Art…………………………………….........2
`B. LogoMania teaches the “user profile” limitation……………………..3
`III. The Combination of PC Tools and Gerace Render Obvious Claims 1-40
`and 44 Under 35 U.S.C. § 103…………………………………………...7
`A. The Claims are obvious regardless of whether PC Tools requires a
`user to manually rename files
`B. A POSITA would be motivated to combine PC Tools and Gerace…..7
`C. A POSITA would have possessed enough knowledge and experience
`to combine the teachings of PC Tools and Gerace………………….11
`D. Claims 1-40 and 44 are obvious even if PC Tools is excluded from
`consideration………………………………………………………...13
`IV. Petitioners Have Demonstrated by a Preponderance of the Evidence a
`Sufficient Reason to Combine the Teachings of Lee and Piwokna with
`either PC Tools + Gerace or with Logo Mania…………………………14
`Lee and Piwokna with either PC Tools + Gerace or with LogoMania
`Render Claim 41 Obvious………………………………………………16
`VI. Lee and Piwokna with either PC Tools + Gerace or with LogoMania
`Render Claim 42 Obvious………………………………………………19
`VII. Lee and Piwokna with either PC Tools + Gerace or with LogoMania
`Render Claims 43 and 45 Obvious……………………………………..21
`VIII. Dr. Nazarian’s Testimony Should Be Given No Weight……………..23
`IX. Conclusion……………………………………………………………...25
`
`
`V.
`
`
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Page
`
`CASE LAW
`
`
`Federal Circuit Court of Appeals
`Ariosa Diagnostics v. Verinata Health, Inc., 2015-1215, 2015-1226, at *11 (Fed.
`Cir. November 16, 2015)……………………………………………………….6
`In Re Blaise Laurent Mouttet, No. 2011-1451, at *15
` (Fed. Cir. June 26, 2012)……………………………………………..10, 11, 12
`BSP Software v. Motion, Inc., IPR2013-00307, Paper 10 at 21 (PTAB May 24,
`2013)……………………………………………………………………………7
`Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F2d 955, 962, (Fed.
`Cir. 1986)…………………………………………………………………....9, 14
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)………………………....7
`Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
`2004)……………………………………………………………………………5
`Symbol Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578, 19 USPQ2d 1241, 1247
`(Fed. Cir. 1991)………………………………………………………………..22
`Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010)……………….3
`
`USPTO, Patent Trial and Appeal Board
`CaptionCall, LLC v. Ultratec Inc., IPR2013-00545, paper 67…………………..10
`
`FEDERAL REGULATIONS
`37 C.F.R §§ 42.23…………………………………………………………………1
`37 C.F.R §§ 42.24…………………………………………………………………1
`
`
`
`
`
`
`
`
`
`PETITIONERS’ CURRENT EXHIBIT LIST1
`
`Exhibit No.
`
`Document Description
`
`U.S. Patent No. 6,373,498 to Abgrall (“498 Patent”)
`The file history of the 498 Patent (“File History”)
`Experts Exchange forum from June 30, 1997 (“Experts
`Exchange”)
`Change the Startup and Shutdown Screens - PC Tools
`(“PC Tools”)
`U.S. Patent No. 5,848,396 to Gerace (“Gerace”)
`Go Crazy with LogoMania - PC Magazine
`(“LogoMania”)
`Additional copy of LogoMania with figures
`U.S. Patent No. 6,269,441 to Lee et al. (“Lee”)
`U.S. Patent No. 6,073,206 to Piwonka et al. (“Piwonka”)
`Charles A. Anyimi, “Implementing a Plug and Play BIOS
`Using Intel's Boot Block Flash Memory,” Intel, Feb. 1995
`Kinglite’s Responses to Challenges to Non-UEFI Patents
`Raised by ECS and Gigabyte (“Kinglite’s Responses”)
`Declaration of Vivek Ganti Esq.
`Declaration of Marty Kaliski (“Kaliski Dec.”)
`Second Declaration of Vivek Ganti
`Declaration of Steven G. Hill
`Deposition Transcript of Dr. Nazarian
`
`
`
`Ex. 1001
`Ex. 1002
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`Ex. 1006
`
`Ex. 1007
`Ex. 1008
`Ex. 1009
`Ex. 1010
`
`Ex. 1011
`
`Ex. 1012
`Ex. 1013
`Ex. 1014
`Ex. 1015
`Ex. 1016
`
`
`
`
`1 Newly filed exhibits are emphasized in bold
`
`
`
`
`
`
`I.
`
`Introduction
`
`Petitioners hereby submit this Reply to respond to Patent Owner’s
`
`Response2 (“POR) pursuant to 37 C.F.R §§ 42.23 and 42.24. The POR reiterates
`
`the arguments it made in Patent Owner’s Preliminary Response (paper 16). The
`
`POR also makes occasional references to the testimony of its witness Dr. Nazarian.
`
`However, as discussed below, Dr. Nazarian offers no testimony which improves
`
`Patent Owner’s prior arguments. Among the number of weaknesses in the POR,
`
`Patent Owner concocts a novel standard for obviousness in contradiction to
`
`established legal precedent. Patent Owner also filed a Contingent Motion to
`
`Amend, presumably because Patent Owner is aware of the strength of the prior art
`
`and the high risk of invalidity. Based on the following, Petitioners respectfully
`
`submit that the challenged claims are unpatentable by a preponderance of the
`
`evidence, in light of the record and Patent Owner’s Response.
`
`II. LogoMania Renders Obvious Claims 1–40 and 44 under 35 U.S.C.
`§ 103
`
`The Petition demonstrates that LogoMania renders claims 1-40 and 44
`
`obvious. Patent Owner attacks this challenge by arguing that 1) LogoMania is
`
`non-analagous art and 2) LogoMania does not disclose a user profile.
`
`
`2 This Reply is responsive to the Patent Owners’ Corrected Response to Petition,
`
`filed February 3, 2016 (Paper 31)
`
`
`
`1
`
`
`
`A. LogoMania is analogous art
`
`LogoMania discloses the concept of creating content of a system file using
`
`the image; LogoMania also discloses the preferred embodiment’s approach in the
`
`498 Patent – modifying the LOGO.SYS file. (Ex. 1013, p.23, ¶72).
`
`Patent Owner asserts that the LogoMania application program discussed in
`
`Ex. 1006 does not create a system file, but that users must manually replace the
`
`logo files in Windows directory. This argument is flawed for two reasons. First, it
`
`ignores the overall teaching of the LogoMania reference, which undoubtedly
`
`informs a POSITA of the concept of renaming a LOGO.SYS files for customized
`
`logos. (Ex. 1006, p.9).
`
`Second, Patent Owner imports a requirement into the claims that precludes a
`
`user from manipulating a computer, where the computer ultimately carries out the
`
`process. Here, the independent claims require a method for “creating content of a
`
`system file” (independent claim 1); “computer readable program code for creating
`
`content of a system file.” (independent claim 11); “a content creation code
`
`segment for creating content of a system file” (independent claim 21) or “program
`
`code when executed by the processor causing the processor to . . . create content
`
`of a system file.” (independent claim 31). Even if the user manually controls a
`
`computer, the computer is ultimately performing these actions using code. For
`
`example, Dr. Kaliski explains:
`
`
`
`2
`
`
`
`Every windows- based computer includes a processor and memory.
`These are necessary components in order to support the minimum
`requirements of a Windows operating system. The processor must
`communicate with the memory in order to execute the Windows
`Operating system. The purpose of the memory in a Windows- based
`computer is to contain program code.
`(Ex. 1013, p.20, ¶66). Dr. Kaliski’s testimony is consistent with the proposition
`
`that code (e.g., an application, an operating system, a combination thereof, etc.) in
`
`memory carries out the process. Therefore, Patent Owner’s attempt to limit the
`
`scope of the claims to exclude a user’s manual influence is unfounded given the
`
`breadth of the claims.
`
`
`
`Because LogoMania describes the preferred embodiment of the 498
`
`Patent (e.g., modifying LOGO.SYS), it is within the same field of endeavor.
`
`Therefore, the Board should maintain its initial determination that LogoMania is
`
`analogous art. See Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir.
`
`2010) (explaining that analogous art is in the same field of endeavor).
`
`B. LogoMania teaches the “user profile” limitation
`
`The Board’s initial construction for “user profile” is “data describing
`
`characteristics of a user, including, but not limited to, user preferences.” A
`
`preponderance of the evidence demonstrates that LogoMania teaches a “user
`
`profile” applying this construction.
`
`
`
`3
`
`
`
`LogoMania
`
`discloses a “Background
`
`Generator Form,” which is
`
`depicted to the right.
`
`(Ex. 1007, p.2, FIG. 3). The Background Generator Form stores recent user
`
`settings so that the user can define how he wishes the logo to look. (Ex. 1013,
`
`p.14, ¶45 citing to Ex. 1006, p.5, stating “LogoMania will remember the most
`
`recent settings you used in the Animated Background Generator form, so you can
`
`easily come back and fine-tune your background bitmap.”). These settings
`
`describe user preferences. Moreover, these user preferences form characterizations
`
`of a user. For example, these selections of the shape, direction, gradient, color, and
`
`width each represent the subjective tastes that demonstrate a user’s graphical
`
`preferences. Thus, LogoMania teaches a “user profile” by applying the Board’s
`
`preliminary construction of “user profile.”
`
`
`
`Patent Owner suggests that Dr. Kaliski’s opinion should be negated based on
`
`his deposition testimony at 23:13-15 of Ex. 2009. (POR, paper 31, p.8). However,
`
`this testimony confirms the opinions in his declaration. The excerpt relied upon by
`
`Patent Owner shows Dr. Kaliski explaining that a user’s design reflects his
`
`preferences. (Ex. 2009, 25:1-5). Consequently, if there is data that reflects a
`
`user’s design choices, then that data forms a user profile because that is data that
`
`
`
`4
`
`
`
`describes characteristics of a user. This is exactly what LogoMania’s “Background
`
`Generator Form” is: a collection of settings reflecting a user’s design choices on
`
`how he prefers a logo to look. Petitioners agree with the Board that “[t]he user’s
`
`selections of backgrounds and animations reflect the user’s preferences concerning
`
`how the software is used.” (Institution Decision, paper 17, p.15).
`
`
`
`The weakness of the Patent Owner’s position is underscored by its efforts to
`
`import into the claims the artificial requirement that a “user profile” must “alert a
`
`user to opportunities.” (POR, paper 31, pp.8-9). Here Patent Owner incorrectly
`
`contorts the Board’s explanation of how a user profile can be used (e.g., alert the
`
`user to opportunities) (Institution Decision, paper 17, p.8) as if said “alerting” was
`
`a requirement for the term “user profile.” Although the specification identifies
`
`potential uses of a user profile, it would be improper to inject representative or
`
`characteristic uses of an object of a claim into the claim as if they were themselves
`
`claim limitations. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d
`
`870, 875 (Fed. Cir. 2004).
`
`Additionally, Dr. Nazarian argues that LogoMania’s Background Form
`
`Generator cannot be a user profile because it does not “advertise to a user.” (Ex.
`
`2010, p.14, ¶38). On this point, it is telling that the Patent Owner’s own proffered
`
`construction of a user profile does not require that something “advertise to a user.”
`
`
`
`5
`
`
`
`Indeed, there is no intrinsic evidence which counsels that something must advertise
`
`to a user in order to comprise a user profile.
`
`
`
`Even if the Board ultimately were to narrow the scope of “user profile” to
`
`require advertising to a user, the claims are nonetheless rendered obvious based on
`
`the arguments raised in the petition. Gerace discloses the user profile limitation by
`
`describing the use of profiles for targeting advertisements. (Ex. 1005, p.1,
`
`Abstract).
`
`This Board may consider the teachings of Gerace as evidence of the
`
`background knowledge of a POSITA, when determining whether LogoMania
`
`renders the claims obvious. (See Ariosa Diagnostics v. Verinata Health, Inc.,
`
`2015-1215, 2015-1226, at *11 (Fed. Cir. November 16, 2015)). The Federal
`
`Circuit has held that the Board should consider such evidence like Gerace, “even
`
`though it was not one of the [] pieces of prior art presented as the basis for
`
`obviousness” with respect to the LogoMania Ground. (Id. at *12).
`
`Gerace’s user profile is used to generate content for alerting users of
`
`opportunities. Given that the parties agree that LogoMania and PC Tools are
`
`similar (POR, paper 31, p.8), a POSITA would be motivated to combine the
`
`teachings of LogoMania and Gerace for the same reasons a POSITA would be
`
`motivated to combine the teachings of PC Tools and Gerace, discussed infra at
`
`§III(b). For these reasons LogoMania renders obvious claims 1–40 and 44.
`
`
`
`6
`
`
`
`III. The Combination of PC Tools and Gerace Render Obvious
`Claims 1–40 and 44 under 35 U.S.C. § 103
`
`The Petition further shows how PC Tools and Gerace demonstrate, by a
`
`preponderance of the evidence, that the challenged claims are obvious. Patent
`
`Owner attacks this challenge by discussing 1) PC Tools’ manual input by a user to
`
`rename files; 2) the combination of PC Tools and Gerace; and 3) the knowledge of
`
`a POSITA. (POR, paper 31, pp.4-7).
`
`A. The claims are obvious regardless of whether PC Tools requires a
`user to manually rename files
`
`Patent Owner asserts that PC Tools’ disclosure of a user operating a
`
`
`
`computer to create a system file creates a patentable distinction from the
`
`challenged claims. (See Preliminary Response, paper 16, p.24; see also POR,
`
`paper 31, p.2 and p.8). However, as discussed above in §II, the challenged
`
`apparatus claims do not preclude manual influence over a computer as long as
`
`there is code responsible for carrying out the process.
`
`
`
`B. A POSITA would be motivated to combine PC Tools and Gerace
`
`To prevail on an obviousness challenge, a petitioner must show why a
`
`POSITA would be motivated to combine teachings. BSP Software v. Motion, Inc.,
`
`IPR2013-00307, Paper 10 at 21 (PTAB May 24, 2013). There must be some
`
`articulated reasoning with rationale underpinning to support the legal conclusion of
`
`obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
`
`
`
`7
`
`
`
`Petitioners have carried their burden of proof by doing precisely that.
`
`Petitioners explain that it would be obvious to use the concept of user profile-based
`
`images (taught by Gerace) as the images in PC Tools in order to provide images
`
`that are more interesting and appealing to a user. (Corrected Petition, paper 10,
`
`p.20 citing to Kaliski Decl./ Ex. 1013, pp. 12-13 ¶¶ 40-41 and Gerace/ Ex. 1005, p.
`
`21, 17:8-10). In other words, the Petition asserted that it would have been obvious
`
`to substitute an image displayed during an operating system transition with an
`
`image customized in accordance with the preferences expressed in a user profile.
`
`The primary goal of PC Tools is to address the “pretty boring” Windows
`
`start-up screens. (Ex. 1004). The pursuit of interesting and appealing images, as
`
`taught by Gerace, is completely consistent with the purpose of PC Tools. Gerace
`
`demonstrates the concept of interesting and appealing images being derived from
`
`user profiles. (Gerace/ Ex. 1005, p. 21, 17:8-10). Dr. Kaliski explains that
`
`Gerace’s teaching of user-profile-based images “can be applied to any default
`
`image in any home page, home screen, login screen, or any other display screen.”
`
`(Ex. 1013, p.13, ¶41). In this respect, while Logo Mania demonstrates the concept
`
`of creating a system file (e.g., LOGO.SYS) using any image to make a start-up
`
`screen less boring, it would be obvious for that image to be based on a user profile
`
`given the teachings of Gerace. The motivation originates from the pursuit of
`
`
`
`8
`
`
`
`making more appealing and relevant images available as part of a start-up or login
`
`process.
`
`Unsatisfied, Patent Owner concocts a new supposed legal requirement for
`
`obviousness, one that requires a petitioner to not only show why a POSITA would
`
`be motivated to combine teachings but how a POSITA would combine the
`
`teachings. (POR, paper 31, p.1). Patent Owner provides no authority to support
`
`this “how” proposition.
`
`In addition, Patent Owner now suggests that Petitioners have the burden of
`
`establishing how a POSITA would have “divined Gerace from all the other web
`
`pages and descriptions of those webpages.” (Id., p.7 citing to BSP.). There is no
`
`such legal requirement because a POSITA is “presumed to be aware of all the
`
`pertinent prior art.” Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807
`
`F2d 955, 962, (Fed. Cir. 1986). Here, PC Tools and Gerace are two pieces of
`
`pertinent prior art because they both relate to displaying images in start-up screens,
`
`home pages, and login screens. (Ex. 1013, p.15, ¶50). The evidence for the
`
`motivation to combine originates from Gerace itself. (Ex. 1005, p.21, 17:5-11,
`
`describing the benefits of displaying items based on a user profile upon logging-
`
`on). Dr. Kaliski’s testimony provides further evidence of this motivation. (Ex.
`
`1013, p.15, ¶50 explaining the motivation of achieving the desired result of
`
`generating content that is interesting and appealing).
`
`
`
`9
`
`
`
`Next, a correct obviousness analysis focuses on whether a POSITA would
`
`have sufficient motivation to combine different teachings to arrive at the claimed
`
`invention. See In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006). However, “[i]t
`
`is well-established that a determination of obviousness based on teachings from
`
`multiple references does not require an actual, physical substitution of elements.”
`
`In Re Blaise Laurent Mouttet, No. 2011-1451, at *15 (Fed. Cir. June 26, 2012)
`
`(emphasis added); see also CaptionCall, LLC v. Ultratec Inc., IPR2013-00545,
`
`paper 67, pp.7-8 (PTAB, December 1, 2015). In the instant case, Patent Owner
`
`advocates for a new standard for obviousness based on the substitution of
`
`components instead of the tried-and-true combination of teachings.
`
`The Petition sufficiently demonstrates by a preponderance of the evidence
`
`that the challenged claims are rendered obvious based on a combination of
`
`concepts taught in PC Tools and Gerace. Patent Owner criticizes this analysis by
`
`alleging that 1) PC Tool’s “LOGO.SYS” file cannot store the customized
`
`webpages of Gerace 2) the webpages in Gerace contained more than 256 colors;
`
`and 3) access to webpages is unlikely during the transition. (POR, paper 31, pp.4-
`
`5). Patent Owner’s analysis improperly focuses on the physical swapping of a
`
`webpage in one reference with the system file logo image of another reference.
`
`Patent Owner and Dr. Nazarian conclude that the physical differences in
`
`technologies facially lack “interoperability.” (Id., p.5; Nazarian Dec./ Ex. 2010,
`
`
`
`10
`
`
`
`p.8, ¶ 22). The Board should reject this obviousness analysis as it is unsupported
`
`by any case law. See In Re Blaise Laurent Mouttet, No. 2011-1451, at *15. Here,
`
`the obviousness ground at issue focuses on the use of images. The minor details
`
`of how to implement an image (e.g., image format) has no bearing as to how the
`
`images are used. Patent Owner’s robotic swapping of Gerace’s image with PC
`
`Tool’s image fails to comport with the proper obviousness standard, which
`
`concerns the combination of the teachings not of the physical elements.
`
`In addition, Patent Owner mischaracterizes the obviousness challenge as
`
`combining the PC Tool’s image with a Gerace’s webpage. To clarify, the
`
`unpatentability challenge is based on Gerace’s teaching of generating content
`
`based on a user profile. (Corrected Petition, paper 10, p.23, citing to Gerace/ Ex.
`
`1005, p. 14, 4:21-28). Petitioners show that Gerace’s concept of user profile-based
`
`content (which includes images) apply to initial home pages or login screens. (Id.,
`
`Kaliski Decl./ Ex. 1013, p. 17 ¶ 56). Thus, it would be incorrect to limit
`
`Petitioner’s Gerace analysis to webpages, in the manner that Patent Owner and Dr.
`
`Nazarian suggest. (Nazaran Dec./ Ex. 2010, p.10, ¶25).
`
`For these reasons, the Board should reject Patent Owner’s flawed
`
`obviousness arguments (as well as Dr. Nazarian’s related opinions), which apply a
`
`legally-unsupported framework and an incorrect characterization of the prior art.
`
`C. A POSITA would have possessed enough knowledge and experience
`to combine the teachings of PC Tools and Gerace
`11
`
`
`
`
`
`
`
`The parties agree that a POSITA “a person having at least a Bachelor of
`
`Science degree in computer science or software engineering or a Bachelor of
`
`Science degree in a technical field requiring computer science or software
`
`engineering courses.” (Preliminary Response, paper 12, pp.22-23). Dr. Kaliski
`
`explains that a POSITA would possess the knowledge that content of any image
`
`can be used to create a logo system file, such as a LOGO.SYS file. (Ex. 1013,
`
`p.34, ¶104; see also p.6, ¶¶19-20; see also Ex. 1004 and Ex. 1006, p.9). As Gerace
`
`teaches the concept of a customized graphic based on user a profile, Dr. Kaliski
`
`indicates that a POSITA would be able to understand that such graphics, as
`
`described in Gerace, can be used as the image in logo system file. (Ex. 1013, p.15,
`
`¶50). Not only would a POSITA know that Gerace’s profile-based content can be
`
`used in LogoMania, a POSITA would be motivated to use Gerace’s profile-based
`
`images to make LogoMania’s start-up screen logos more interesting and appealing.
`
`(Id.). Petitioners have demonstrated by a preponderance of the evidence that a
`
`POSITA would possess the requisite knowledge in combining the references.
`
`Patent Owner asserts that a POSITA “would have been unlikely to combine
`
`a reference regarding BIOS software with a reference related to website design.”
`
`(POR, paper 31, p. 6). Patent Owner incorrectly focuses on combining the entirety
`
`of these references, when the proper inquiry involves combining teachings from
`
`these references. In Re Blaise Laurent Mouttet, No. 2011-1451, at *15. Petitioners
`12
`
`
`
`
`
`cite to Gerace for its teachings on using a user profile to tailor content (e.g.,
`
`advertisements) to users. (Ex. 1005, p.14, 4:29-36). Petitioners further rely on
`
`Gerace’s teaching of displaying such tailored content at the time a user logs on.
`
`(Id., p.21, 17:5-17). These concepts are well-understood in the art. (Ex. 1013,
`
`p.12, ¶40). The fact that Gerace implements the relevant teachings in a home page
`
`or other webpage is nonconsequential. A POSITA would still possess the requisite
`
`skill in the art to comprehend the concepts of Gerace, and various ways of
`
`implementing them. (Ex. 1013, p.34, ¶104).
`
`D. Claims 1-40 and 44 are obvious even if PC Tools is excluded from
`consideration
`
`Patent Owner contests the publication date of PC Tools. (POR, paper 31,
`
`
`
`p.1). However, even if PC Tools is excluded, the Board should nevertheless hold
`
`that the claims are obvious because the concepts of PC Tools were taught in the
`
`prior art and known to a POSITA. (Preliminary Response, paper 16, p.15).
`
`First, during cross examination, Dr. Kaliski confirmed that the teachings of
`
`PC Tools were well-known prior to the time of invention by stating that such
`
`teachings are also found in LogoMania. (Ex. 2009, p.12, 23:13-203). In his
`
`
`3 References to the Kaliski Deposition Transcript Ex. 2009 is made as “p., n:ll”
`
`where “p” is the PDF exhibit page, “n” is the native page or the original, and “ll”
`
`refers to the specific lines of testimony on the page.
`
`
`
`13
`
`
`
`declaration, Dr. Kaliski explained that such teachings were well-known prior to the
`
`time of invention. (Ex. 1013, pp.5-6, ¶¶18-20). Second Patent Owner does not
`
`“dispute that changing logo files in a Windows directory may have been disclosed
`
`prior to the 498 Patent.” (Preliminary Response, paper 16, p.15). Patent Owner
`
`further states that “the content disclosed by PC Tools is identical to the cited Silen
`
`reference (Ex. 2001)” at least in regard to changing logo files. (Id.).
`
`Consequently, the record shows that the subject matter of PC Tools was
`
`known to a POSITA prior to the time of invention. Because a POSITA is
`
`“presumed to be aware of all the pertinent prior art.” (Custom Accessories, Inc.,
`
`807 F2d at 962), the claims are rendered obvious even if PC Tools is excluded.
`
`IV. Petitioners have demonstrated by a preponderance of the
`evidence a sufficient reason to combine the teachings of Lee and
`Piwokna with either PC Tools + Gerace or with LogoMania
`
`Lee and Piwokna demonstrate that the elements added by dependent claims
`
`
`
`41-43 and 45 are nothing more than obvious variations of the prior art. Dr. Kaliski
`
`explains that it would be obvious to combine these teachings because logo
`
`selections must be stored somewhere and BIOS memory is a predictable choice.
`
`(Ex. 1013, p.31, ¶96).
`
`For example, Lee shows that it was known to store start-up logos in BIOS
`
`memory. (Ex. 1013, p.14, ¶48; see also Ex. 1008, p.1, Abstract). These logos may
`
`be selected by a user using an “initial setup menu.” (Ex. 1013, p.29, ¶90; see also
`
`
`
`14
`
`
`
`Ex. 1008, p. 10, 6:15-16). Lee stores selections as BIOS configuration parameters
`
`in BIOS memory referred to as CMOS RAM. (Ex. 1013, pp.29-30, ¶¶92-93).
`
`The technical details of storing BIOS configuration parameters in CMOS
`
`RAM are not fully described in Lee. For example, Lee does not specify that the
`
`CMOS data is limited to any particular format, as long as that data represents a
`
`user’s logo selection. Unlike Lee, Piwonka provides a thorough technical
`
`background of CMOS RAM. Piwonka describes Extended System Configuration
`
`Data (ESCD), which is an example of BIOS configuration data stored in CMOS
`
`RAM. (Ex. 1013, p.30, ¶94). Dr. Kaliski explains that the user’s logo selections
`
`of Lee would be formatted as configuration data like ESCD as it is stored in
`
`CMOS RAM. (Ex. 1013, p.32, ¶99). Dr. Nazarian, does not refute that point.
`
`(See e.g., Ex. 2010, p.19, ¶¶57-58).
`
`In spite of the compatibility between Lee and Piwonka, Patent Owner argues
`
`that the two references provide “mutually exclusive” solutions. (POR, paper 31,
`
`p.9). In making this argument, Patent Owner limits its analysis of Lee to a
`
`statement about the supposed difficulty of updating BIOS ROM. (Id.). Patent
`
`Owner misses the mark. Petitioners’ obviousness argument pertains to how
`
`CMOS RAM was used in the prior art to store and update BIOS configuration
`
`data. Whether it was difficult to update the BIOS ROM does not relate to the point
`
`that Lee and Piwonka show a user’s logo selection being stored in CMOS RAM.
`
`
`
`15
`
`
`
`V. Lee and Piwokna with either PC Tools + Gerace or with
`LogoMania render claim 41 obvious
`
`
`Claim 41 adds the following limitation to claim 1: “said image corresponds
`
`to data stored in a BIOS memory.” The specification of the ‘498 Patent explains
`
`that “subsequent content 64 is downloaded and stored in system firmware” (Ex.
`
`1001, p.14, 9:42-43), and that this subsequent content “may be used to modify the
`
`Windows™ system file” (id., 9:50).
`
`While the claims relate to this type of disclosed embodiment in the
`
`specification, the language of the claims is considerably broader than the described
`
`embodiment. The term “data” appears in claim 41 without an antecedent basis in
`
`claim 1. When the proper standard is applied, “data” is open-ended, so long as a
`
`nexus exists between the “data” stored in BIOS memory and the claimed image.
`
`Lee teaches storing logo selections (e.g., data) in CMOS RAM. (Corrected
`
`Petition, paper 10, p.39). The selected logo corresponds to data indicating the
`
`logo’s selection. Lee refers to this data as a CMOS value. (Ex. 1008, p. 10, 6:35-
`
`41). The logo represents an image having a direct relationship with the logo
`
`number associated with the selected logo. Without question, the logo corresponds
`
`to the logo selection number.
`
`Dr. Nazarian explains that under the Board’s construction of “correspond,”
`
`the claimed term “image corresponds to data” necessarily means that “the data
`
`actually generate the image.” (Ex. 2010, p.16, ¶46 and p.17, ¶50). From this
`16
`
`
`
`
`
`faulty premise, Patent Owner asserts that Lee’s “CMOS value” or logo selection
`
`data does not disclose “data” as it is claimed because the claimed “data” must be
`
`used to generate the image. (POR, paper 31, pp.10-11; Ex. 2010, p.16, ¶46). Of
`
`course, claim 41 is silent on the question of image generation. Two things may
`
`correspond (be directly related), but that does not necessarily mean that one of
`
`those things is generated from the other. (See Institution Decision, paper 17, pp.8
`
`construing “correspond” to mean “having a direct relationship”).
`
`In any event, claim 41 is rendered obvious even under Patent Owner’s
`
`unreasonably narrow construction of the phrase “image corresponds to data.” For
`
`example, Lee describes “making a newly compounded pattern by using an existing
`
`sign-on logo pattern.” (Ex. 1008, p.9, 4:53-54). In this respect, the “data” includes
`
`the base logos and the “image” represents the newly compounded pattern
`
`generated from the base logos. Lee’s logos are stored in BIOS memory. (Ex.
`
`1008, p.6, FIG. 6 and p.9, 3:21-24). Under this analysis of Lee, claim 41 is
`
`rendered obvious even under an unreasonably narrow view of the claim language.
`
`In addition, storing logo selections in CMOS RAM is equivalent to storing
`
`data in BIOS memory. (Corrected Petition, paper 10, p.40). As explained above, a
`
`POSITA would recognize that Lee’s user’s logo selections may be formatted as
`
`ECSD configuration data. (Ex. 1013, p.32, ¶99). Piwonka explains that the
`
`location of ECSD is a BIOS memory space. (Ex. 1009, p.5, 1:28-30).
`
`
`
`17
`
`
`
`Patent Owner counters by averring that “Lee’s CMOS RAM cannot be the
`
`‘BIOS memory’ because the former does not ‘store BIOS,’ as the Board’s
`
`construction requires.” (Ex. 2010, p.17, ¶49). But Patent Owner’s own witness
`
`admits that CMOS RAM stores BIOS data. (Ex. 1016, 105:15-106:3 and107:18-
`
`22). A POSITA would understand that CMOS RAM is an example of BIOS
`
`memory because that is where BIOS configuration data is stored. (Ex. 1013, p.30,
`
`¶94). The fact CMOS RAM stores the BIOS’s configuration data demonstrates
`
`that it is BIOS memory, when properly construed.
`
`The Board preliminarily construed the term BIOS memory to mean a
`
`memory that stores a BIOS. (Institution Decision, paper 17, p.10). As discussed
`
`above, BIOS includes code or data. In arriving at this conclusion, the Board
`
`reasoned that “BIOS Memory is not limited to non-volatile memory.” (Id.). The
`
`498 Patent’s specification supports this by explaining that “the system firmware
`
`176 includes software modules and data that are loaded into system memory 124
`
`during POST and subsequently executed by the processor 104.” (Ex. 1001, p.13,
`
`7:20-23). This shows that the BIOS resides in system memory, which may be
`
`random access memory (RAM). (Ex. 1001, p.12, 5:60-62). Petitioners also note
`
`that BIOS may refer to code and data. (Ex. 1001, p.13, 7:20-23 indicating that
`
`firmware is “software modules and data”).
`
`
`
`18
`
`
`
`Further, the 498 Patent explains that BIOS memory may include separate
`
`memory locations or memory devices. (Corrected Petition, paper 10, pp.11-12
`
`citing to Ex. 1001, p.13, 7:29-31). Given the 498 Patent’s expansive view on the
`
`various memories that constitute BIOS memory, the CMOS RAM that stores BIOS
`
`configuration data, should be included within scope of BIOS memory.
`
`Assuming arguendo that the Board adopts Patent Owner’s narrow view that
`
`limits a BIOS memory strictly to a BIOS ROM, Lee still renders claim 41 obvious.
`
`For example, Lee describes “the storage of a basic input output system (BIOS) and
`
`logos in a read only memory (ROM) and a method of displ
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