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 5,732,268
`
`_________________
`
`
`
`DECLARATION OF HUGH SMITH, PhD.
`
`
`
`
`1
`
`EX 1020
`IPR of Pat. No. 5,732,268
`
`
`EXHIBIT 2003
`
`
`
`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 5,732,268
`
`_________________
`
`
`
`DECLARATION OF HUGH SMITH, PhD.
`
`
`
`
`1
`
`EX 1020
`IPR of Pat. No. 5,732,268
`
`
`EXHIBIT 2003
`
`
`
`I, Hugh Smith, declare as follows:
`
`
`1.
`
`I have been retained by Hill, Kertscher, & Wharton, LLP, which
`
`represents American Megatrends, Inc. Micro-Star International Co., Ltd, MSI
`
`Computer Corp., Giga-Byte Technology Co., Ltd., and G.B.T., Inc., in connection
`
`with a petition for inter partes review of U.S. Patent No. 5,732,268, titled Extended
`
`BIOS adapted to establish remote communication for diagnostics and repair (“268
`
`Patent”). I understand that the 268 Patent is currently assigned to Kinglite
`
`Holdings Inc.
`
`
`
`SCOPE OF ANALYSIS
`
`2.
`
`I have reviewed and am familiar with the 268 Patent, which issued to
`
`Bizzari on March 24, 1998. I understand that the 268 Patent includes 20 claims. I
`
`also understand that the Petition for inter partes review that accompanies this
`
`Declaration seeks to cancel claims 1-20 of the 268 Patent. Thus, my analysis and
`
`opinions will focus on these challenged claims.
`
`3. My analysis assumes that the time of invention is February 26, 1996,
`
`which is, in this case, the filing date of the 268 Patent.
`
`4.
`
`I have reviewed and am familiar with various references, written
`
`materials, and literature, which are itemized below:
`
`
`
`2
`
`
`EXHIBIT 2003
`
`
`
`a) Ex. 1001 U.S. Patent No. 5,732,268 to Bizzarri (“268 Patent”)
`
`b) Ex. 1002 U.S. Patent No. 5,596,711 to Burckhartt et al
`
`(“Burckhartt”)
`
`c) Ex. 1003
`
`The file history of the 268 Patent
`
`d) Ex. 1004 U.S. Pat. No. 5,146,568 to Flaherty et al (“Flaherty”)
`
`e) Ex. 1005 U.S. Pat. No. 5,444,850 to Chang (“Chang”)
`
`f) Ex. 1006 U S. Patent No. 5,850,562 to Crump (“Crump”)
`
`g) Ex. 1007 U S. Patent No. 5,473,775 to Sakai (“Sakai”)
`
`h) Ex. 1008 Computerworld – March 1993
`
`i) Ex. 1009
`
`Excerpts from the Dictionary of Computer Words
`
`j) Ex. 1010 Bootstrap Loading using TFTP
`
`k) Ex. 1011 U S. Patent No. 5,299,314 to Gates (“Gates”)
`
`l) Ex. 1012 U S. Patent No. 5,465,273 to Cole (“Cole”)
`
`m) Ex. 1013 U S. Patent No. 5,701,477 to Chejlava (“Chejlava”)
`
`n) Ex. 1014
`
`The RFC 1157 Specification (“SNMP”)
`
`o) Ex. 1015 U S. Patent No. 5,408,614 to Thornton et al.
`
`(“Thornton”)
`
`p) Ex. 1016 U S. Patent No. 5,455,933 to Schieve et al. (“Schieve”)
`
`q) Ex. 1017 U S. Patent No. 5,150,402 to Yamada (“Yamada”)
`
`3
`
`
`EXHIBIT 2003
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`
`
`r) Ex. 1018 U S. Patent No. 4,868,848 to Magnusson et al.
`
`(“Magnusson”)
`
`s) Ex. 1019 U S. Patent No. 5,463,685 to Gaechter et al. (“Gaechter”)
`
`
`
`5.
`
`I have been asked to consider how a person of ordinary skill in the art
`
`(“POSITA”) would have understood the claims subject to inter partes review in
`
`light of the disclosure of the 268 Patent. I have also been asked how a POSITA
`
`would have understood the applied the Flaherty and Chang references.
`
`6.
`
`I am being compensated at my standard hourly rate of $550 dollars
`
`per hour. My compensation is not dependent on the outcome of this inter partes
`
`review and in no way affects the substance of my testimony in this matter.
`
`
`
`QUALIFICATIONS AND EXPERTISE
`
`7. My resume/curriculum vitae is attached to this declaration as Exhibit
`
`A.
`
`8.
`
`For over 30 years, I have been active in the fields of computer science
`
`and computer engineering.
`
`9.
`
`I hold a doctoral degree (PhD) in Computer Science, granted by
`
`Michigan State University (MSU) in 1999, as well as a Master’s degree in
`
`4
`
`
`EXHIBIT 2003
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`
`
`Computer Science from MSU and a Bachelor’s degree in Computer Science from
`
`Xavier University obtained in 1985.
`
`10.
`
`I am currently an Associate Professor at California Polytechnic State
`
`University (Cal Poly) were I have been a faculty member since 2000. From 2009-
`
`2013 I was the Director of the Computer Engineering program at Cal Poly. My
`
`classes have included circuit board design, operating systems topics including
`
`system level programming and computer networks.
`
`11. Over the last 30 years I have worked on a number of hardware and
`
`software related projects. This work goes from chip and board design to firmware
`
`and application software development. For example as part of my research I lead a
`
`project which developed the hardware and fireware to off load the computer
`
`network processing from the workstations operating system to this board.
`
`A PERSON OF ORDINARY SKILL IN THE ART
`
`12.
`
`I have been advised and understand that a person having ordinary skill
`
`in the art (“POSITA”) is presumed to be aware of all pertinent art, thinks along
`
`conventional wisdom in the art, and is a person of ordinary creativity. With this
`
`understanding, a POSITA at the time of the invention claimed in the 268 Patent is
`
`a person holding a Bachelor of Science degree (or an equivalent) in electrical
`
`engineering or a related technical field such as computer engineering, having at
`
`least one year of experience in a relevant field such as computer networking.
`
`5
`
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`EXHIBIT 2003
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`
`
`
`
`MY UNDERSTANDING OF CLAIM CONSTRUCTION
`
`13.
`
`I have been advised and understand that the claims are to be given
`
`their broadest reasonable construction in light of the specification as it would be
`
`read by a POSITA at the time of invention.
`
`
`
`MY UNDERSTANDING OF OBVIOUSNESS
`
`14.
`
`I have been advised and understand that a claimed invention is
`
`unpatentable if the differences between the invention and the prior art are such that
`
`the subject matter as a whole would have been obvious at the time the invention
`
`was made to a POSITA to which the subject matter pertains.
`
`15.
`
`It is my understanding that obviousness is a question of law based on
`
`underlying factual findings: (1) the scope and content of the prior art; (2) the
`
`differences between the claims and the prior art; (3) the level of skill in the art; and
`
`(4) objective considerations of nonobviousness.
`
`16.
`
`I understand that for one or more references to render the claimed
`
`invention obvious, a POSITA must have a sufficient reason to combine the
`
`teachings of the references to arrive at the claims. I further understand that a basis
`
`to combine teachings from the references need not be stated expressly in any prior
`
`6
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`EXHIBIT 2003
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`
`
`art reference. However, there must be an articulated reasoning with rational
`
`underpinnings to support a motivation to combine teachings.
`
`17.
`
`I understand that when considering whether a patent claim is
`
`obviousness, a POSITA should consider whether a teaching, suggestion, or
`
`motivation to combine the references exists so as to avoid impermissibly applying
`
`hindsight.
`
`
`
`TECHNICAL ANALYSIS OF THE 268 PATENT
`
`18. The 268 Patent relates to computer networking in the context of
`
`booting a computing device. To be more specific, the technology described in the
`
`268 Patent pertains to remotely booting a computer. The 268 Patent was filed over
`
`a decade after the Trivial File Transfer Protocol. (Bootstrap Loading using TFTP,
`
`p.1). According to the TFTP specification, “It is often convenient to be able to
`
`bootstrap a computer system from a communications network. This RFC proposes
`
`the use of the IP TFTP protocol for bootstrap loading in this case.” (Bootstrap
`
`Loading using TFTP, p.1). The state of the art in 1984 was advanced to the point
`
`where it was known how to establish remote communication before an operating
`
`system is active. The ‘202 Patent uses the premise of this 1984 technology and
`
`adds minor variations to it. Mainly, the ‘202 Patent focuses on when a remote
`
`communication should be made.
`
`7
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`EXHIBIT 2003
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`
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`19. The general boot process of a computer was well known to a POSITA
`
`prior to the time of invention. This typical boot process is carried out by a BIOS
`
`(Basic Input/Output System). The BIOS implements the following two
`
`fundamental steps: 1) initializing/testing the computer and its hardware and 2)
`
`executing a bootstrap loader.
`
`20. The Crump reference (Ex. 1006), which was applied for in 1994,
`
`elaborates on these two points:
`
`When computers are turned on, they typically go through a ‘booting’
`process. When a computer ‘boots’ it first performs a power-on self-
`test (POST), which involves running various tests to ensure that the
`computer is functioning correctly and involves initializing the
`registers within certain hardware devices. Part of performing the
`POST involves loading the basic input and output system (BIOS) code
`into memory. After performing the POST, the computer typically
`loads an operating system (OS), such as IBM's PC-DOS or OS/2 or
`Microsoft's MS-DOS.
`(Crump, p.8, col. 1, lines 45-55).
`21. The first step of initializing a computer may be referred to as a power
`
`on self-test (POST) routine. As shown in Crump, for example, POSITA would
`
`know that a POST is intimately interwoven with a BIOS prior to the time of
`
`invention. The BIOS code must initially be stored in non-volatile memory. Non-
`
`volatile memory is memory that can retain data, even when no power supply is
`
`provided.
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`8
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`EXHIBIT 2003
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`22.
`
`In Crump, the POST tests and initializes the system memory, as well
`
`as other components of the computing system. POST loads the remainder of the
`
`BIOS from ROM into system memory. System memory is volatile, which means
`
`that it is used while power is supplied to the computer.
`
`23. A POSITA would understand the importance of the POST routine and
`
`its role in initializing and/or testing the computing system before the computer
`
`becomes fully operational. The 268 Patent reinforces the functionality and purpose
`
`of POST, as it has existed prior to the time of invention. Specifically, the 268
`
`Patent states that a POST routine’s purpose is “to assure that all circuits are active,
`
`properly connected, and functional.” (268 Patent, p.5, col. 1, lines 20-24).
`
`24. Once loaded into system memory, a fundamental purpose of a BIOS,
`
`as recited in Crump, is to execute a bootstrap loader in order to hand control over
`
`to an operating system. Executing a bootstrap loader program has been commonly
`
`referred to as “booting,” prior to the time of invention.
`
`25. Flaherty alludes to the limitations on ROM not permitting an
`
`operating system to be stored there, as well as the need to have the hard disk driver
`
`and system software initialized before system memory can load an operating
`
`system. Flaherty teaches that boot-strapping is used to navigate these issues. In
`
`booting (also known as bootstrap loading):
`
`9
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`EXHIBIT 2003
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`
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`a small program is provided in … the boot-ROM. When the computer
`is first started, the contents in the boot-ROM are read and that
`program executed. The boot-ROM program is a small program which
`instructs the CPU where on a disk to find a larger boot program,
`which is termed the ‘boot-block’ program. It also instructs the CPU
`how to load the program into memory and execute it. The boot-block
`program is executed to copy the operating system off the disk. Once
`the operating system is in memory, it is executed and the computer is
`completely functional.
`(Flaherty, p.8, col. 1, lines 47-57).
`
`26. As it was known by a POSITA prior to the time of invention, a
`
`bootstrap loader is a program that is loaded into the initialized system memory by
`
`the BIOS. Once loaded, the bootstrap loader is executed in order to load an
`
`operating system. Flaherty is one of numerous references in the prior art teaching
`
`the elemental concept of bootstrap loading. Bootstrap loading is a fundamental
`
`concept known to persons of ordinary skill in the art. Bootstrap loading from a
`
`partitioned hard disk was known to involve going to the boot sector of the disk,
`
`which is often referred to as a Master Boot Record. U.S. Pat. 5,701,477
`
`(Chejlava), which was applied for in March 1995, states in the Abstract that “The
`
`Master Boot Record … is generally located on cylinder 0, head 0, sector 1 on a
`
`disk drive[.]” (Ex. 1013, p.1, Abstract). Likewise, in 1984, “Bootstrap Loading
`
`using Trivial File Transfer Protocol” described the convenience of being “able to
`
`10
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`EXHIBIT 2003
`
`
`
`bootstrap a computer system from a communications network.” (Bootstrap
`
`Loading using TFTP, p.1).
`
`27. The foregoing description of booting, POST, and BIOS expresses
`
`certain basic principles of computing known to a POSITA prior to the time of
`
`invention of the 268 Patent.
`
`28. Distilled to its essence, the 268 Patent claims the concept of
`
`establishing communication with a remote computer if the computer fails during
`
`the POST process. (268 Patent, claim 1). The 268 Patent acknowledges that
`
`“Most PCs at a minimum have a telephone modem connection, and may
`
`communicate with another computer over a telephone line in either an analog or a
`
`digital protocol.” (268 Patent, p.5, col. 2, lines 61-64). This is consistent with my
`
`understanding of the prior art, which shows that in September of 1994, ITU
`
`adopted the v34 modem standard for 28.8kb baud communication between
`
`computer modems. See, e.g., Exhibit 1012 - “Modem utilizing parity and
`
`convolutional encoder feedback,” U.S. Pat. 5,465,273 Cole, applied before April
`
`1994 (background of invention states “[m]ore particularly, the present invention
`
`relates to V.34 type modems, a standard (Recommendation) TD-57 for which was
`
`recently adopted (Geneva 1-9 Jun., 1994) by the ITU-T (International
`
`Telecommunications Union--Telecommunications Standardization Sector) under
`
`the subtitle ‘A Modem Operating at Data Signalling Rates of Up to 28800 Bit/s for
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`11
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`EXHIBIT 2003
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`
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`use on the General Switched Telephone Network and on Leased Point-to-Point 2-
`
`Wire Telephone-Type Circuits’, which document is hereby incorporated by
`
`reference herein in its entirety”).
`
`29. The 268 Patent also describes network protocols such as a
`
`conventional diagnostic system called Simple Network Management Protocol
`
`(SNMP), which is also well-known in the art. The original RFC 1157 establishing
`
`SNMP is dated May 1990. http://www.ietf.org/rfc/rfc1157.txt?number=1157
`
`See Ex. 1014. SNMP allows a service person at a remote site to communicate.
`
`(268 Patent, p.6, col. 3, lines 15-19). The 268 Patent leverages a computer’s
`
`ability to establish remote communications and applies it to address the problem of
`
`a POST failure. Toward that end, the 268 Patent teaches the use of a remote
`
`communication before the operating system is active.
`
`
`
`MY UNDERSTANDING OF CERTAIN CLAIM TERMS
`
`30.
`
`I have construed the following terms according to their broadest
`
`reasonable construction in light of the specification of the 268 Patent.
`
`
`
`“BIOS (Basic Input/Output System)”
`
`31. The term “BIOS” appears in independent claims 1 and 6 of the 268
`
`Patent. Under the BRI construction, this term is at least as broad as “a set of
`
`12
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`EXHIBIT 2003
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`
`
`beginning instructions for a computer that activates on startup.” A POSITA would
`
`know that the BIOS includes the initial routines that execute when power is
`
`supplied to a computing system.
`
`32. The specification of the 268 Patent confirms this understanding:
`
`Because a computer, without operating instructions loaded, is
`essentially a piece of dumb hardware, there must be some relatively
`standard set of beginning instructions for the computer to follow. . . .
`Typically this beginning code is called a basic input output system
`(BIOS), which includes a power-on self-test (POST) procedure, to
`assure that all circuits are active, properly connected, and functional
`before attempting to load and initiate all of the code needed to operate
`(268 Patent, col. 1, lines 13-16) (emphasis added).
`
`33. The citation above is consistent with what a POSITA would
`
`understand a BIOS to be at the time of invention.
`
`
`
`“a first code portion” and “a second code portion”
`
`34. These terms appears in independent claims 1, 6, and 18 of the 268
`
`Patent. Under the BRI construction, these terms are at least as broad as “distinct
`
`sets of operating instructions in computer code, each of which are stored in non-
`
`volatile memory.”
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`13
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`EXHIBIT 2003
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`35. The specification of the 268 Patent explains that these code portions
`
`may be part of a BIOS program that is stored in non-volatile memory. (268 Patent,
`
`p.5, col. 1, lines 44-53).
`
`
`
`“upon failure”
`
`36. The term “upon failure” appears in independent claims 1, 6, 10, and
`
`18 of the 268 Patent. Under the BRI construction, this term is at least as broad as
`
`“in response to failure.”
`
`37. The specification states that “the second potion of code executed in
`
`response to the failure of the first computer to boot.” (268 Patent, p.6, col. 4, lines
`
`52-55 of the 268). The specification also states that “the second code portion upon
`
`failure to complete said boot operations.” (268 Patent, p.6, col. 4, lines 5-7).
`
`Finally, FIG. 1 depicts a decision block that makes a decision based on whether
`
`there was a failure to boot. (268 Patent, p.2, FIG. 1, item 25). When taken in its
`
`totality, these examples demonstrate that “upon failure” and “in response to
`
`failure” are synonymous and capture the same scope.
`
`38.
`
`I have reviewed the prosecution history in which, the applicant argued
`
`that, in contrast to the Burkhartt reference which automatically established remote
`
`communication with another computer, “There is no teaching in Burckhartt to
`
`testing boot, and initiating repair and diagnostic contact if the boot fails.” (File
`
`14
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`EXHIBIT 2003
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`
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`History of the 268 Patent, pp.51-52). Although I am advised that statements in the
`
`prosecution history are not necessarily disclaimers of the BRI scope of claim
`
`terms, the manner in which the Patent Owner distinguished the 268 from Burkhartt
`
`reinforces my opinion as to the BRI construction of “upon failure” by making it
`
`clear that the invention commences boot operations through the local CPU BIOS,
`
`and only “extends” the BIOS to a remote computer in the event of a boot failure at
`
`the local level.
`
`
`
`“network communication adapter”
`
`39. The term “network communication adapter” appears in claims 4 and 9
`
`of the 268 Patent. After review of the 268 Patent, I do not see any discussion of a
`
`network communication adapter beyond what is recited in the claims. Applying
`
`BRI, a “network communication adapter” is at least as broad as “an interface
`
`device that allows a computer to be connected to a network.”
`
`40. The term “network communication adapter” does not appear in the
`
`specification outside of the claims. FIG. 1 of the 268 depicts a “LAN link, Serial
`
`Link, Modem or any other wide area or local area network.” A POSITA would
`
`understand that this link is implemented using some type of a network
`
`communication adapter (e.g., a network interface card, or an NIC) to connect a PC
`
`to a network. Accordingly, the network communication adapter that permits the
`
`15
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`EXHIBIT 2003
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`
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`link 15 of FIG. 1 is at least an interface device that allows a computer to be
`
`connected over a network. Another example of such an adapter known in the prior
`
`art is disclosed in U.S. Patent No. 5,299,314, applied for in 1993, titled “Network
`
`adapter using status inlines and data lines for bi-directionally transferring data
`
`between lan and standard p.c. parallel port.” (Ex. 1011.)
`
`41. A POSITA would have general knowledge of the concept of a
`
`network communication adapter, as it has existed prior to the time of invention.
`
`While this term does not connote any particular structure, its function is to provide
`
`a network interface for the PC.
`
`42. My suggested construction is further supported by computer
`
`dictionary definitions published prior to the time of invention. (Dictionary of
`
`Computer Words, p.4).
`
`
`
`“kernel”
`
`43. The term “kernel” appears in claims 10, 14, and 16. Under the BRI
`
`standard, a “kernel” is at least as broad as “a part of an operating system that
`
`handles routine tasks unseen to the user.”
`
`44. The 268 Patent uses the term kernel, which is a general computer
`
`science term used by a POSITA prior to the time of invention to refer to a
`
`16
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`EXHIBIT 2003
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`
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`component of an operating system. The 268 Patent does not deviate from the
`
`ordinary usage of this term.
`
`45.
`
`In some instances, the 268 Patent qualifies a kernel as a “slave” (268
`
`Patent, claim 10) or as a “slave operating system” (268 Patent, claim 16). A
`
`POSITA would see no meaningful difference between the term “slave kernel” of
`
`claim 10 and the “slave operating system kernel” because the concept of a kernel
`
`implies an operating system component.
`
`46.
`
`In other words, the presence of an operating system inherently
`
`includes a kernel. A kernel is the essential piece of an operating system.
`
`47. My suggested construction is further supported by computer
`
`dictionary definitions published prior to the time of invention. (Dictionary of
`
`Computer Words, p.3).
`
`
`
`“master” and “slave”
`
`48. The terms “master” and “slave” are used to qualify the claimed
`
`“kernel” to describe a kernel as either “master” or “slave.”
`
`49. The words “master” and “slave” are not defined in the specification.
`
`Instead, they are used exclusively to characterize a kernel.
`
`50.
`
`In general, the relationship between a master and slave is that the
`
`master exhibits some control over the slave. Applying BRI, “master” is at least as
`
`17
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`EXHIBIT 2003
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`broad as a characteristic of something that controls and “slave” is at least as broad
`
`as a characteristic of something that is controlled.
`
`51. Additionally, based on the specification there is no difference between
`
`a “slave operating system” and a “slave kernel.” This is because a kernel implies
`
`an operating system, so, the “slave kernel” of claim 10 means the same thing as
`
`“slave operating system kernel” of claim 16.
`
`
`
` “E-BIOS”
`
`52. The term “E-BIOS” appears in claim 18. According to the 268 Patent,
`
`E-BIOS refers to extended-BIOS. (268 Patent, p.1, Abstract and p.5, col. 1, line
`
`33). The 268 Patent states that the E-BIOS of the preferred embodiment is the
`
`“unique local BIOS . . . by the inventor” of the 268 Patent. (268 Patent, p.6, col.
`
`3, lines 31-35). In other words, the E-BIOS is a BIOS that includes the “unique”
`
`extensibility feature of the 268 Patent.
`
`53. The allegedly “unique” aspect of the 268 Patent appears to be that the
`
`BIOS is able to establish communication with a remote computer. (268 Patent,
`
`claim 1). For example, the specification of the 268 Patent states:
`
`PC 11 has a unique E-BIOS 17 rather than a conventional PC BIOS,
`and facility 13 is equipped with code for cooperating with E-BIOS PC
`11 over connection 15.
`(268 Patent, p.7, col. 5, lines 15-20).
`
`18
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`EXHIBIT 2003
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`
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`54. Under the BRI standard, E-BIOS is at least as broad as “any BIOS
`
`related software that is able to establish communication with a remote computer.”
`
`
`
`“mass storage device”
`
`55. The term “mass storage device” appears in claims 6 and 16. Under
`
`the BRI standard, a “mass storage device” is at least as broad as “memory that
`
`provides persistent storage capacity.”
`
`56. The 268 Patent explains that “Operating systems are therefore stored
`
`in non-volatile mass storage, typically on a hard disk.” (268 Patent, p.5, col. 2,
`
`lines 23-24). Operating systems require persistent storage. The example of storing
`
`an operating system assists in arriving at the BRI construction because an
`
`operating systems may be the kind of software that is stored in mass storage.
`
`
`
`“coupled”
`
`57. The term “coupled” appears in independent claim 6 of the 268 Patent.
`
`Under the BRI construction, this term is at least as broad as “connected to facilitate
`
`communication”
`
`58. The specification uses the term “coupled” in the following instances:
`
`- “mass storage device coupled to the CPU”
`
`- “read-only memory ROM device coupled to the CPU”
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`- “a basic input output system (BIOS) coupled to the CPU”
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`(268 Patent, p.6, col. 3, lines 62-67).
`
`59.
`
`In each of the examples above, the construction of “coupled to” is at
`
`least as broad as signifying that one component is in communication with another
`
`by way of a connection. A POSITA would understand that two entities which are
`
`joined for the purpose of facilitating communication are “coupled” to one another.
`
`60. Moreover, A POSITA would know that BIOS is software and the
`
`ROM (which the BIOS may reside in) is hardware. Consequently, the
`
`specification’s use of “coupled” applies to the interaction of both hardware
`
`components (e.g., ROM, CPU, mass storage, etc.) and software components (e.g.,
`
`BIOS). In other words, the 268 Patent uses the phrase “coupled” to show that two
`
`components (hardware or software) are in communication with each other.
`
`Therefore, under the BRI standard, “coupled” is at least as broad as “connected to
`
`facilitate communication.”
`
`
`
`“remote repair center computer”
`
`61. The term “remote repair center computer” appears in claim 18. A
`
`“remote repair center computer” is not a technical term of art. In the context of the
`
`claims, the words “repair center” is an adjective that expresses an intended purpose
`
`of a computer, which is to address failures or problems of another computer. In
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`20
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`EXHIBIT 2003
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`view of the 268 Patent, the remote repair center computer “get[s] the failed
`
`machine operable again without the necessity of sending a repair technician.” (268
`
`Patent, p.7, col. 5, lines 63-64). Therefore, under BRI, the “remote repair center
`
`computer” is at least as broad as “a computer used to address the failure of another
`
`computer.”
`
`
`
`ADMITED PRIOR ART (APA) DISCLOSED IN THE 268 PATENT
`
`62.
`
`I refer to statements made in the 268 as admitted prior art (APA)
`
`when the specification of the 268 Patent admits that a particular concept,
`
`component, device, or function was well known to others as a matter of
`
`convention. I discuss three admissions made in the 268 Patent that reflect
`
`conventional teachings of the prior art. These three admissions regard
`
`technological concepts that were incorporated into store-bought computers prior to
`
`the time of invention.
`
`63.
`
`“Power-on self-test” (POST) – The 268 Patent admits that POST is a
`
`well-known concept known prior to the time of invention. For example, the 268
`
`Patent states: “Typically this beginning code is called a basic input output system
`
`(BIOS), which includes a power-on self-test (POST) procedure.” (268 Patent, p.5,
`
`col. 1, lines 20-25). The word “typically” indicates an admission that POST is part
`
`of the prior art. The 268 Patent’s definition of the term “POST” is the definition
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`
`
`that a POSITA would have adopted to describe POST, prior to the time of
`
`invention. See paragraphs 20-24 above describing POST in conjunction with the
`
`prior art Crump reference. In other words, the POST described in the 268 Patent
`
`does not deviate from conventional practice in the prior art.
`
`64. Remote communication links - The 268 Patent admits that it was
`
`common for computing systems of the prior art to be capable of establishing
`
`remote communication. The 268 Patent admits this in col. 2, lines 59-64: “PCs at
`
`the time of the present invention, however are typically provided with some form
`
`of communication link to other computers. Most PCs at a minimum have a
`
`telephone modem connection, and may communicate with another computer over a
`
`telephone line in either an analog or a digital protocol.” (268 Patent, p.5, col. 2,
`
`lines 59-64). The 268 Patent’s use of a communication link is consistent with how
`
`a POSITA would have understood and used this concept prior to the time of
`
`invention. See paragraph 28 above in reference to conventional v.34 modem
`
`technology for establishing computer-to-computer communications at a baud rate
`
`of 28.8kb.
`
`65. For an additional example, a communication link to a remote server is
`
`described in the Abstract of the Chang reference, wherein it describes “using the
`
`basic input/output system (BIOS) of the workstation to enable the workstation to
`
`communicate with a server on the network and make the necessary resources of the
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`workstation available to a server management application running on the server via
`
`the network.” (Chang, p.1, Abstract).
`
`66. Storing an operating system on a boot sector of a mass storage
`
`device – Prior to the time of invention, a POSITA would have general knowledge
`
`that an operating system (e.g., DOS, which stands for disk operating system) is
`
`stored in mass storage (e.g., a floppy drive, a hard disk, etc.). As discussed above
`
`in reference to the technical background section of Flaherty, a POSITA would
`
`know that the area where the operating system is stored is referred to as a boot
`
`sector of the mass storage, when that mass storage is a hard disk. See paragraph 26
`
`above discussing the use of MBR for the boot sector of a partitioned hard disk.
`
`These concepts were known to a POSITA and are also admitted as prior art by the
`
`268 Patent: “A floppy disk with DOS and a boot sector was called a Boot disk, and
`
`the name is still used, although operating systems and boot sectors are typically
`
`now recorded on hard disk drives.” (268 Patent, p.5, col. 1, lines 51-55). For
`
`example, the 268 Patent describes a boot floppy with a boot sector in the same
`
`manner as Chejlava (Ex. 1013). Chejlava states: “The boot sector on a floppy disk
`
`or in a partition on a hard disk consists primarily of a short machine language
`
`program that starts the process of loading the operating system into memory.”
`
`(Chejlava, p.9, col. 1, line 65 – col. 2, line 1).
`
`
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`TECHNICAL ANALYSIS OF FLAHERTY
`
`67.
`
`I have reviewed and am familiar with U.S. Pat. No. 5,146,568 issued
`
`to Flaherty et al (“Flaherty”). (Ex. 1004).
`
`68. Among the topics covered in Flaherty, this prior art reference
`
`describes conventional POST routines. (Flaherty, p.9, col. 3, lines 20-25).
`
`Flaherty explains that part of the POST routine is to look for a boot device.
`
`(Flaherty, p.9, col. 3, lines 20-25). If this portion of POST fails, then the processor
`
`establishes communication and allows the networked device to request to boot over
`
`the network. (Flaherty, p.9, col. 3, lines 20-25). This is the only circumstance
`
`described in the reference when the local computer establishes remote
`
`communication to a second computer.
`
`69. Flaherty acknowledges that communication protocols are usually
`
`complex. (Flaherty, p.9, col. 3, lines 25-30). This is consistent with what a
`
`POSITA would know prior to the time of invention. Specifically, fully operational
`
`computers can handle complex network protocols, as they are supported by an
`
`active operating system.
`
`70. Because communication protocols can be complex, Flaherty proposes
`
`using simpler communication protocols in order to communicate with a remote
`
`computer before an operating system is available. (Flaherty, p.9, col. 3, lines 31-
`
`35). For example, Flaherty states: “instead, a simple protocol is used which
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`24
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`EXHIBIT 2003
`
`
`
`consists of a small set of specialty messages for performing, testing, making boot
`
`requests, etc.” (Flaherty, p.9, col. 3, lines 31-35). In other words, Flaherty implies
`
`that his communication protocols allow for communication before an operating
`
`system is loaded. Specifically, the reason Flaherty establishes remote
`
`communication to respond to a POST failure to locate an operating system.
`
`71.
`
`If Flaherty’s system is able to locate a remotely stored operating
`
`system in response to the POST failure, Flaherty states that it loads the remotely
`
`stored operating system. (Flaherty, p.9, col. 3, lines 55-59). Loading an operating
`
`system or portions of an operating system means that the kernel of that operating
`
`system is loaded. This is because a kernel is an inherent component of an
`
`operating system.
`
`
`
`TECHNICAL ANALYSIS OF CHANG
`
`72.
`
`I have reviewed and am familiar with U.S. Pat. No. 5,444,850 issued
`
`to Chang (“Chang”). (Ex. 1005)
`
`73. Chang’s system includes a local computer referred to as a User
`
`Workstation and a remote computer r
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