By: Vivek Ganti (vg@hkw-law.com) Reg. No. 71,368; and
`
`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 IPR2015-01197
`
`U.S. Patent 6,487,656
`
`_________________
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
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`i
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`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 IPR2015-01197
`
`U.S. Patent 6,487,656
`
`_________________
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
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` PAGE
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`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ............................................................................ iii
`
`PETITIONERS’ CURRENT EXHIBIT LIST .................................................. iv
`
`
`I.
`Introduction ....................................................................................... 1
`II. Applicable Claim Construction ......................................................... 3
`III. Motivation to Combine AMIBIOS with Nunn ................................. 3
`IV. Petitioner Shows an “Interface Module” [Element [1.1]] ................. 5
`V.
`There is Translation of Information [1.4] to be Transferred
`to the Display Module [1.5] .............................................................. 8
`“Cause the Corresponding Module to Perform a Task Associated
`with the Transferred Translated Information” ................................. 14
`VII. AMIBIOS was Published Prior to the Time of Invention ................. 15
`VIII. Patent Owner Waived All Other Preliminary Response
`Arguments ......................................................................................... 19
`IX. Conclusion ......................................................................................... 20
`
`VI.
`
`
`
`
`
`ii
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`
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`TABLE OF AUTHORITIES
`
` PAGE
`
`CASE LAW
`
`United States Supreme Court
`KSR International Co. v. Teleflex Inc., et al., 550 U.S. (2007) ........................ 4
`
`Federal Circuit Court of Appeals
`Kyocera Wireless Corp. v. Int’l Trade Comm'n, 545 F.3d (Fed. Cir. 2008) .... 15-17
`SRI Int'l Inc. v. Internet Sec. Sys. Inc., 511 F.3d (Fed. Cir. 2008).................... 15
`
`USPTO, Patent Trial and Appeal Board
`American Megatrends Inc. v. Kinglite, IPR2015-01189 .................................. 8
`American Megatrends Inc. v. Kinglite, IPR2015-01094 .................................. 16
`SAP Am., Inc. v. Versata Dev. Group, Inc., CBM2012-00001, Paper 81 ........ 19
`
`STATUTES
`35 U.S.C. §102(a) ............................................................................................. 18, 19
`35 U.S.C. §102(b) ............................................................................................. 19
`
`FEDERAL REGULATIONS
`37 C.F.R. § 42.105 ............................................................................................ 19
`
`iii
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`
`
`PETITIONERS’ CURRENT EXHIBIT LIST1
`
`Exhibit No.
`
`Document Description
`
`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
`
`U.S. Patent No. 6,487,656 to Kim et al (“656 Patent”)
`The file history of the 656 Patent
`U S. Patent No. 6,317,828 (“Nunn”)
`The NexGen user manual (“NexGen”)
`AMIBIOS Technical Reference 98 (“AMIBIOS”)
`U.S. Patent No. 6,115,813 (“Hobson”)
`ISO/IEC 8859-1 (“ISO 8859-1”)
`U.S. Patent No. 6,269,441 (“Lee”)
`U.S. Patent No. 6,073,206 to Piwonka et al. (“Piwonka”)
`VESA BIOS Extension 3.0 (“VESA”)
`BIOS Boot Specification 1.01 Jan 11 1996 - Appendix A
`Declaration of Stefano Righi
`Declaration of Vivek Ganti
`Declaration of Steven G. Hill
`Deposition Transcript of Dr. Nazarian
`Declaration of Mr. Shankar
`
`
`
`
`1 Newly filed exhibits are in bold
`
`
`
`iv
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`
`
`I.
`
`Introduction
`
`Normal BIOS code includes instructions relating to BIOS boot-up, to POST
`
`(power-on self-test), to initialization, to configuration of peripheral devices and
`
`other system tests. (Ex. 1001, p.16, 5:58-62). This can be considered the “system
`
`BIOS.” (Ex. 1015, Nazarian Dep., p.22:1-17). The 656 Patent’s written
`
`description builds onto the normal BIOS, by teaching that an “Interface Module
`
`510 includes a hook dispatcher [that] . . . obtains media and/or system device
`
`information from the BIOS…” (Ex. 1001, p.18, 9:9-11). BIOS setup is not integral
`
`to system BIOS, and may be the interface module in question. When a user
`
`invokes a hot key to initiate setup, that request is carried out by system BIOS.
`
`“When a task or performance of a system BIOS function (e.g., displaying of a
`
`processor graphics image) is required or requested, a request is issued from system
`
`BIOS.” (Id., 9:50-53). The task can be, for example, to display any graphic image.
`
`(Ex. 1015, pp.28:18-29:5). Of course, the system information is in raw binary
`
`form and cannot be shown to the user until the interface module translates it into a
`
`suitable format for display. Thus, the need for translation in terms of translating
`
`the data to a character string, and then translating the character string into a
`
`properly-sized glyph. “The raw number is converted by one of a plurality of
`
`Information Translators 514 to a readable format for another software module…”
`
`
`
`1
`
`
`
`(Ex. 1001, 9:56-58). It is then passed on to a corresponding module, such as a
`
`display generator or a sound generator. (Id., p.8, boxes 540 and 550).
`
`Based upon these teachings, Claim 1 of the 656 Patent recites:
`
`[1P] A method to provide functionalities to a system BIOS,
`
`comprising:
`
`[1.1] interfacing an interface module to the system BIOS;
`
`[1.2] receiving a request from the system BIOS to perform a task;
`
`[1.3] receiving the system device information associated with the task
`
`from system BIOS;
`
`[1.4] translating, by the interface module, the system device
`
`information to provide translated information; and
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`[1.5] transferring the translated information to a corresponding
`
`module.
`
`The focus on this reply is to address Patent Owner’s arguments, which are
`
`confined to elements [1.1], [1.4] and [1.5]. Petitioner shows herein that in addition
`
`to the Petition’s showing which formed the basis for the institution of these
`
`proceedings, Patent Owner’s expert has largely conceded the correctness of the
`
`Board’s finding that good grounds warranting cancellation of Claims 1, 10, 11, 12,
`
`19 and 20 of the 656 Patent as obvious in light of the combination of Nunn and
`
`AMIBIOS.
`
`
`
`2
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`
`
`II. Applicable Claim Construction
`
`Based on the Institution Decision (pp.6-9), the applicable constructions are
`
`as follows:
`
`Claim Term
`Interface module
`
`
`
`A request . . . to perform a task
`Translating
`Corresponding module
`
`Construction
`Program instructions used to translate
`information and to transfer the
`translated information. (Paper 14, p.9)
`Soliciting action to be taken (Id., p.6)
`Converting to another data format (Id.)
`A software module associated with
`another module (Id.)
`
`The Patent Owner’s Response fails to take issue with any of the Board’s
`
`
`
`constructions.
`
`III. Motivation to Combine AMIBIOS with Nunn
`
`A POSITA would have combined Nunn and AMIBIOS because of the desire
`
`“to increase the ease of use of the setup.” (Ex. 1012, p. 22, ¶ 70). Since AMIBIOS
`
`recites a user friendly graphic user interface, Patent Owner asserts that there would
`
`be no reason for a POSITA to seek out another easy to use graphic user interface
`
`(Nunn). (Patent Owner Response (“POR”), p.4). Next, Patent Owner concludes
`
`there is no reason to combine the references because AMI and Dell never
`
`combined AMIBIOS with Nunn, even though Nunn worked for Dell at the time of
`
`her invention. (POR, pp.4-5). Under cross-examination, Patent Owner’s expert
`
`Dr. Nazarian testified that it was possible that Dell’s engineers modified the
`
`
`
`3
`
`
`
`AMIBIOS setup. (Ex. 1015, p.97:1-5 (discussing Ex. 2005)). In fact, Petitioners
`
`submit the fact that Dell and AMI worked together only heightens the predictable
`
`nature of a modification to AMIBIOS adapted to the functionality of Nunn, to
`
`increase the ease of use. In product development, products incrementally improve
`
`in favor of customer/end user satisfaction. This motivates a POSITA to make
`
`products easier to use.
`
`First of all, Patent Owner cites no authority for the arguments that it asserts.
`
`This is not surprising. The fact that two references seek to solve the same general
`
`problem does not render them unfit for combination under Section 103, and no
`
`case has so held. To the contrary, “any need or problem known in the field of
`
`endeavor at the time of invention” may supply the reason to combine. KSR
`
`International Co. v. Teleflex Inc., et al., 550 U.S. 398, 420 (2007). Secondly,
`
`indulging for the sake of argument that Patent Owner’s assumption that AMIBIOS
`
`and Nunn were not combined in the real world (Patent Owner offers no proof that
`
`AMI and Dell did not combine to create an even friendlier BIOS setup module),
`
`this does not mean that it was not obvious to combine the references, or that a
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`POSITA would not appreciate the motivation to combine the references in any
`
`event. For example, Dell may have decided not combine the teachings for business
`
`or commercial reasons, even though it was obvious to do so from a technological
`
`standpoint. No court has ever held that parties must demonstrate an empirical
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`
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`4
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`
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`combination of references into a real world system in order to demonstrate
`
`obviousness. Likewise, merely because a combination was not actually
`
`constructed in the prior art does not mean a POSITA would have thought the
`
`combination to be non-obvious.
`
`IV. Petitioner Shows an “Interface Module” [Element [1.1]]
`
`Interfacing the interface module to system BIOS may refer in one case to
`
`“whatever it is that hooks the interface module to the system BIOS.” (Ex. 1015,
`
`p.59:21-60:2; see also id., p.62:4-23, p.63:6-14; Ex. 1001, p.18, 10:56-58 (example
`
`of system BIOS passing system information to the interface module)). More
`
`generally, a POSITA would understand broadly that communication between
`
`system BIOS and the interface module would satisfy the “interfacing” requirement.
`
`(Ex. 1015, p.64:1-16).
`
`The Board construed the term “interface module” as “program instructions
`
`used to translate information and to transfer the translated information.” Patent
`
`Owner asserts that the setup of Nunn is “just a display,” lacking the requisite
`
`program instructions. (POR, p.5). The Patent Owner’s position is meritless, for
`
`Nunn’s specification uses the phrase “setup program” repeatedly, at least 15
`
`times. (Ex. 1003). Nunn also executes the setup program, which demonstrates
`
`that the setup program is made up of program instructions. (Ex. 1003, 1:38-42). In
`
`any event, a POSITA would appreciate that any graphical user interface (GUI)
`
`
`
`5
`
`
`
`contains program instructions. (Ex. 1015, p.133:8-25 and p.136:15-25 (software is
`
`program instructions; Abstract of Nunn (Ex. 1003) refers to a software routine for
`
`display which would include instructions), and p.72:6-21 (GUI can be an interface
`
`module if it translates and transfers information).
`
`Next, the Patent Owner repeats the argument that it made in its Preliminary
`
`Response to the effect that the BIOS setup utility requires a level of human
`
`interaction, while the preferred embodiment of the 656 Patent teaches an interface
`
`which does not require human interaction. (POR, p.6). The specification the
`
`specification speaks only in terms of requests without limiting the source of the
`
`request when it states “When a task or performance of a system BIOS function
`
`(e.g., displaying of a processor graphics image) is required or requested, a request
`
`is issued from system BIOS.” (Ex. 1001, p.18, 9:51-53). The Board’s claim
`
`construction disposes of this argument, for there is nothing in the construction of
`
`the interface module programming instructions which precludes the interface
`
`module from being a GUI so long as it meets the Board’s construction of interface
`
`module. (Paper 14, p.12, wherein the Board states that “[w]e are not persuaded by
`
`Patent Owner’s argument because the claim language is not limited to functions
`
`that do not require user intervention”). Even if the 656 claimed an automatic
`
`process only, it was already known in the art to automatically execute a setup
`
`
`
`6
`
`
`
`program in the event of a CMOS Checksum failure. (Ex. 1005, p.398 “Run[ning]
`
`AMIBIOS setup” when the CMOS RAM is either corrupt of nonexistent”).
`
`Patent Owner then argues that the “interface module” should be limited to
`
`modules provided by motherboard and PC manufacturers which add functionality
`
`to the system BIOS. (POR, p.7). However, the construction of “interface module”
`
`does not adopt such restrictive language. The specification does not state that the
`
`invention is limited to interface modules developed by these manufacturers. To the
`
`contrary, it states that the interface module “enables various parties such as PC
`
`system manufacturers and motherboard manufacturers to provide additional system
`
`BIOS functionalities[.]” (Ex. 1001, p. 14, 2:19-23 -- emphasis added). This is
`
`open-ended language which does not require a manufacturer, and which does not
`
`preclude the interface module from being a GUI.2
`
`Patent Owner also asserts that the setup program of the prior art is part of the
`
`system BIOS and therefore may not be an interface module interfaced to the
`
`system BIOS. This is false. System BIOS does not necessitate a setup program.
`
`(Ex. 1001, p.16, 5:58-62; Ex. 1015, p.22:1-17). Dr. Nazarian stated, “we don't
`
`
`2 Patent Owner makes no attempt to reconcile this argument with its earlier
`
`argument that Nunn’s setup program GUI was a computer program developed
`
`while she was working for Dell Computers, a known PC manufacturer.
`
`
`
`7
`
`
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`need [setup program]. So all we need is a BIOS. And we could actually
`
`completely remove the Setup program and this, based on the default setting, would
`
`boot up, and then user would not have a -- a choice of going to the setup utility and
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`making adjustments, seeing some information.” (Ex. 1015, p.123:20-25). Simply
`
`stated, a setup program, properly understood, is an interface program which
`
`interfaces with system BIOS. The fact that the setup program may be packaged
`
`with system BIOS and collated in the same firmware3 is of no moment because a
`
`setup module provides a GUI so that the user can view and manipulate BIOS
`
`settings relating to system BIOS functions.
`
`V. There is Translation of Information [1.4] to be Transferred to the
`Display Module [1.5]
`
`In addition to the points established by the Petition itself, it is important to
`
`note the testimony of the Patent Owner’s expert, Dr. Nazarian. His testimony
`
`demonstrates the obviousness of the interface module in light of the prior art
`
`references at issue. Dr. Nazarian testified on behalf of the Patent Owner that “any
`
`graphics display needs a controller. And then as part of the controlling, it needs to
`
`
`3 In a related IPR that challenges U.S. Pat. No. 5,836,013 (the 013 Patent) (filed
`
`before the 656), the 013 Patent describes “System ROM 210 [that] comprises
`
`BIOS (Basic Input/Output System) 310, and optionally setup program 320[.]”
`
`American Megatrends Inc. v. Kinglite, IPR2015-01189, Exhibit 1 at p.14, 3:16-18.
`
`
`
`8
`
`
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`be initialized. Then later on it has to be able to send the image data in the
`
`proper form to the … screen.” (Ex. 1015, p.33:10-20—emphasis added). The
`
`Information Translator of the preferred embodiment performs the function of
`
`changing the form of the data before sending it on to the corresponding module
`
`(e.g., graphics display module). (Id., p.41:1-19). In practice, the system BIOS
`
`provides system information in raw (binary) form to the interface module. (Id.,
`
`p.43, 13-23).4 A computer can “only read the ones and zeros…[it] stores the data
`
`in terms of ones and zeros.” (Id., pp.124:22-125:2). One purpose of the translator
`
`of the preferred embodiment (although in and of itself insufficient to put data on
`
`the screen graphical form for the user to see) is to take that raw system BIOS data
`
`and translate it to a readable character string. (Id., pp.43:17-44:12, p.126:5-8). A
`
`setup program is what allows a user to examine, and potentially alter, raw system
`
`information data stored in CMOS and accessible through system BIOS. (Id., 87:6-
`
`
`4 System configuration information resides in binary code in CMOS RAM, a
`
`small battery-powered chip which will not lose settings in the event of a loss of
`
`power. (Ex. 2002; see also Ex. 1015, p.85:9-21). Dr. Nazarian is apparently not
`
`familiar ESCD, and he offered no rebuttal to Mr. Righi’s Declaration explaining
`
`ESCD and system BIOS retrieving raw data from CMOS RAM. (Ex. 1015,
`
`p.100:4-5).
`
`
`
`9
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`
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`16 and p.90:12-18 (referring to the discussion of CMOS setup utilities in Ex. 2002
`
`(“Understanding the CMOS”); see also Ex. 1012, p. 7, ¶23 and p. 11, ¶37).
`
`[T]hese information translators 514 … take something that is received
`
`in a raw form from the system BIOS and change the data format to
`
`something that can be used by the interface module and whatever
`
`corresponding modules it may communicate the string to[.]
`
`(Ex. 1015, p.45:2-9).
`
`Translating requires an adjustment to the form of the raw data, which
`
`may comprise, for example, conversion from raw data to a simple ASCIIZ
`
`string. (Id., p.49:9-18; p.52:9-21). In the case of the BBS IPL table (Ex.
`
`1011, p.32), the ASCII string description pointer sets the character string of
`
`each device for the user to see (once the string is converted into a glyph and
`
`displayed on the video by the corresponding module) during use of the setup
`
`program. Dr. Nazarian is mistaken that the “data describing a device is
`
`already in ASCIIZ string” (Ex. 1011, ¶7). BBS reflects data used by the
`
`interface module, not the interface module itself. Dr. Nazarian’s merely
`
`indicates how data might appear after it has been translated to ASCIIZ.
`
`Of course, translation from binary to ACSIIZ is not adequate to
`
`format the data (e.g., including graphical attributes) for the graphics module
`
`(corresponding module) because the string also has to be translated based on
`
`graphical formatting requirements such as font letter-type and sizing for the
`
`
`
`10
`
`
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`screen. (Ex. 1015, pp.107:25-108:9 and p.129:3-25). For example,
`
`AMIBIOS teaches that the setup program translates the raw data into
`
`parameters (translated information) that are used by a corresponding module
`
`that provides video service. (Ex. 1005, p.116). Specifically, the raw data is
`
`formatted with a line and column number (DH and DL, respectively) as well
`
`as an attribute (BL). (Id.). The setup program uses an “AMIBIOS Setup
`
`Color Table” to format the color of the data. (Ex. 1005, p.48). Once the
`
`parameters are created, the INT 10 video interrupt routine displays the data
`
`according to the parameters (translated information). (Id., p.106).
`
`This is entirely consistent with the Board’s decision to institute this
`
`proceeding. (Paper 14, p.14, rejecting the Patent Owner’s argument that
`
`Petition has not shown the Nunn or AMI WINBIOS translates raw data, in
`
`view of the Petition’s showing that “BIOS/Utility Setup Display gets IPL
`
`device information that requires translation to be displayed and formats the
`
`information for screen size, position, and color to be compatible with a
`
`graphics controller”) (emphasis added).
`
`
`
`Essentially, the purpose of the translator within the interface module
`
`is to take the binary data and “convert [it] to something that -- a piece of
`
`code and here, as an example, the [corresponding module] can understand.
`
`So data packet is something that [corresponding module] receives and then
`
`
`
`11
`
`
`
`converts to image, something that the display could understand.” (Ex. 1015,
`
`p.54:14-19). Translation occurs in multiple ways such as converting the raw
`
`data into an ASCII string and also converting an ASCII string into the
`
`adjusted form of a glyph with graphic attributes (font, size, position) before
`
`it is sent to the display module for the user to see. (Ex. 1015, pp.155:22-
`
`156:21). Petitioners also note that the claimed “translating” step is not
`
`limited to converting data to specifically be an ASCII string, but is broad
`
`enough to encompass translating data to any other format.
`
`During the deposition of Dr. Nazarian, he was shown exemplary BIOS setup
`
`utility screen shots taken from Ex. 1004, which pertains to the prior art WINBIOS
`
`setup used with AMIBIOS. For instance, he was shown Figure 5 (Ex. 1004, p.21).
`
`“[T]his represents various information that the setup would need to … obtain from
`
`system BIOS… [including] system configuration data [from CMOS RAM].” (Ex.
`
`1015, p.105:7-15). What is shown in the BIOS setup screen is human-readable
`
`system data, not the computer readable (binary) data of the system BIOS/CMOS
`
`RAM. (Id., pp.106:1-107:13). In short, the binary system information has been
`
`translated and then transferred to the corresponding graphics module. In
`
`discussing the Nunn (Ex. 1003) reference to “display,” Dr. Nazarian testified that
`
`the raw system configuration data cannot get to the display screen without
`
`translation to a display-ready format. (Ex. 1015, p.153:8-25).
`
`
`
`12
`
`
`
`
`
`In his declaration, Dr. Nazarian testified that “If the data describing a device
`
`is already in ASCIIZ string, there is no need for further translation.” In the first
`
`place, during his deposition, Dr. Nazarian was very equivocal regarding the
`
`implication of his declaration that the system BIOS of the prior art converted any
`
`raw data to ASCIIZ without the assistance of the setup program. (Id., p.128:3-17
`
`(opining that this is a “possibility,” and further stating that “still you might,
`
`despite all those facts, go ahead and convert it to ASCIIZs because you're thinking
`
`maybe at some other point of time, you need to display them”) (emphasis added).
`
`In the second place, even if a setup program received an ASCIIZ string rather than
`
`binary data – something that seems extremely unlikely since a computer does not
`
`need or read ASCIIZ -- the string would nonetheless need to be adjusted into a
`
`glyph before it is be passed on for graphics display. (Id., pp.107:25-108:9 and
`
`p.129:3-25; Paper 14, pp.13-14).
`
`Dr. Nazarian’s equivocation extended to his understanding of the setup
`
`program in Nunn. Because Dr. Nazarian does not equate Nunn’s invention to a
`
`setup utility program (and instead claims that Nunn is just teaching an integral part
`
`of system BIOS), he is unconstrained by logic and thus opines that Nunn may not
`
`teach an interface module which translates data. Yet even on this point, he
`
`wavered, stating, “the way Nunn's inventions have to be implemented, it has to be
`
`
`
`13
`
`
`
`part of the BIOS. So I -- I don't say this is impossible to do. Obviously it's
`
`possible, and Nunn could do the translation.” (Ex. 1015, p.149:14-18).
`
`The translated data is, in the end, transferred to a corresponding module,
`
`namely a display (video or graphics) controller. (Id., pp.157:8-158:6). On this
`
`point, Dr. Nazarian’s testimony is consistent with the Petition’s discussion of
`
`INT10h transferring the glyph to the video controller software driver, and the
`
`Board’s own institution decision.
`
`VI. “Cause The Corresponding Module To Perform A Task Associated
`With The Transferred Translated Information”
`
`Claim 20 of the ‘656 patent separately requires that “the program code . . .
`
`causes the processor to cause the corresponding module to perform the task
`
`associated with the transferred information.” Patent Owner’s final argument,
`
`which is based strictly on attorney argument, is that this element is not shown by
`
`the Petition. (POR, p.11). Petitioner disagrees. The computer graphics module
`
`serves as a corresponding module to the BIOS setup program for the purpose of
`
`displaying translated information on screen for the user to see. (Pet. 19, citing Ex.
`
`1012 (Righi Dec.), p. 13, ¶ 76). A POSITA would understand that when the user
`
`selects a particular function, it triggers system BIOS to make the function call
`
`request to the setup to show the user selection on the screen, via the graphics
`
`module. (Ex. 1012, ¶ 85). This causes the computer graphics module to perform a
`
`task associated with the transferred and translated system information, as the Board
`
`
`
`14
`
`
`
`correctly determined in the Institution Decision. (Paper 14, p.15). The fact that
`
`Patent Owner’s expert was not willing to support the Patent Owner’s argument as
`
`to this issue speaks volumes.
`
`In addition, Patent Owner asserts that Mr. Righi’s testimony about a
`
`POSITA regarding a BIOS display service request (INT 10h) is conclusory. (POR,
`
`p.10). Mr. Righi’s opinions are consistent with AMIBIOS which devotes 11 pages
`
`to describe the INT 10h video services. (Ex. 1005, pp.106-116). Using INT 10h to
`
`invoke video services in the context of BIOS was well within the knowledge of a
`
`POSITA. Again, Patent Owner’s arguments are not supported by the prior art
`
`teachings or its witness, Dr. Nazarian.
`
`VII. AMIBIOS was published prior to the time of invention
`
`Patent Owner asserts that AMIBIOS is not prior art as a printed publication.
`
`(POR, paper 28, pp.1-2). Distilled to its essence, the issue is when AMIBIOS was
`
`made publically available.
`
`A reference is publicly accessible “upon a satisfactory showing that such
`
`document has been disseminated or otherwise made available to the extent that
`
`persons interested and ordinarily skilled in the subject matter or art exercising
`
`reasonable diligence, can locate it. . . .” Kyocera Wireless Corp. v. Int’l Trade
`
`Comm'n, 545 F.3d 1340, 1351 (Fed. Cir. 2008) quoting SRI Int'l Inc. v. Internet
`
`Sec. Sys. Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Therefore, the test focuses
`
`
`
`15
`
`
`
`on when it was made available and not when it was actually accessed. (See id.). In
`
`addition, it would be overly burdensome on the proffering party to track down
`
`recipients as a requirement in order to prove public accessibility.
`
`AMIBIOS was publically accessible at least as early as June 1998.
`
`Petitioners submit the declaration of Subramonian Shankar (Ex. 1016)5, President
`
`of Petitioner AMI, who has personal knowledge of AMI’s AMIBIOS reference
`
`being publically accessible in 1998 (Ex. 1003). Mr. Shankar explains that
`
`AMIBIOS was made available to both AMI's customers and also to those who
`
`wished to purchase the manual in 1998. (Ex. 1016, p.2, ¶2). 300 physical copies
`
`of AMIBIOS were printed for distribution by AMI on May 26, 1998. (Id., ¶11). In
`
`addition, AMI did not restrict the availability of AMIBIOS to any individual or
`
`entity. (Id., ¶4).
`
`To go even further, Mr. Shankar conducted a search to identify detailed
`
`records of AMIBIOS’s public distribution. The search results show that AMIBIOS
`
`was distributed on at least June 5, June 9, and June 15, 1998. (Id., ¶4). This
`
`evidence demonstrates that AMIBIOS has been disseminated or otherwise made
`
`available prior to June 15, 1998. See Kyocera Wireless Corp., 545 F.3d at 1351.
`
`
`5 Petitioners submit the same declaration of Subramonian Shankar that was filed in
`
`the related matter of IPR2015-01094.
`
`
`
`16
`
`
`
`To resolve any question of public accessibility, Petitioners’ served the
`
`Shankar Declaration on Patent Owner in response to the evidentiary objections.
`
`Mr. Shankar explains that the records showing AMIBIOS being checked out
`
`demonstrates that it was shipped to third persons. (Ex. 1015, p.3, ¶7). The
`
`shipping of AMIBIOS is further evidence of the dissemination of AMIBIOS to the
`
`public.
`
`Under the governing standard, public accessibility is shown when the
`
`document was “made available to the extent that persons interested and ordinarily
`
`skilled in the subject matter or art exercising reasonable diligence, can locate it. . .
`
`.” Kyocera Wireless Corp, 545 F.3d at 1351 (emphasis added). To locate it, all an
`
`AMI customer had to do was order it from AMI. (See Ex. 1016, ¶2). The Shankar
`
`Declaration demonstrates AMIBIOS was made available when it was shipped prior
`
`to June 15, 1998 to AMI customers. In fact, AMIBIOS may have even been made
`
`available in May 1998, when AMI decided to allow its customers to order a copy
`
`of AMIBIOS. Evidence of an actual shipment is not the test for publication.
`
`Not all AMIBIOS manuals were invoiced because some were given to AMI
`
`customers while others were sold to requestors. (See Ex. 1016, ¶2). Ex. C of the
`
`Shankar declaration shows some invoices related to the sale of AMIBIOS, which
`
`
`
`17
`
`
`
`includes a sale made on August 25, 1998 to GAIN Systems. (Id., ¶13). AMIBIOS
`
`is prior art under §102(a)6, as stated in the instant Petition. (Petition, p.12).
`
`Mr. Shankar, the individual responsible for disseminating AMIBIOS,
`
`provides testimony of public accessibility without restriction or any non-disclosure
`
`agreement. (Ex. 1016, ¶¶3-4). Patent Owner points to boilerplate copyright
`
`language in AMIBIOS calling the copyrighted contents “proprietary” to AMI.
`
`(POR, p.1). However, this boilerplate language is directed to any subsequent
`
`reproduction/distribution by unauthorized third parties in violation of AMI’s
`
`copyright, not to the distribution of AMIBIOS by AMI.
`
`As “evidence” that AMIBIOS must have been subjected to a nondisclosure
`
`agreement, Patent Owner cites to the testimony of Mr. Sartori (Ex. 2004, p. 26:16 –
`
`p.27:7). Instead of directly quoting the testimony, Patent Owner mischaracterizes
`
`it, asserting that “Dr. Gabriele Sartori, testified that such legend reflects the fact
`
`that such documents were provided by AMI under a non-disclosure agreement.”
`
`(POR, p.1). Yet Mr. Sartori’s actual testimony is as follows:
`
`[T]here is always the possibility, but it's not a guarantee that inside the
`
`document that are information that you cannot disclose to third
`
`parties. We try to treat them carefully, but it's also true that we'll
`
`
`6 AMIBIOS prior art under pre-AIA 35 U.S.C. §102(a) because it is a printed
`
`publication, by others, in this or a foreign country, before December 10, 1999.
`
`
`
`18
`
`
`
`produce those document normally, they put the boiler plate,
`
`proprietary information just to cover all the possibility, not
`
`necessarily the document has proprietary information.
`
`(Ex. 2004, p. 26:16 – p.27:7—emphasis added). As shown above, Mr. Sartori
`
`discusses AMI documentation in general, not specifically AMIBIOS (Ex. 1003).
`
`Mr. Sartori does not even recall if he ever saw the version of AMIBIOS submitted
`
`as Ex. 1003. (Ex. 2004, p.29:8-13). This undercuts any weight attaching to any
`
`basis for any opinion whether AMIBIOS was subject to a nondisclosure
`
`agreement. No such nondisclosure agreements exist and Patent Owner has not
`
`produced any witness professing first-hand knowledge relating to the issue. In
`
`addition, Mr. Sartori explains that he recalls seeing documents similar to
`
`AMIBIOS in bookstores. (Id., p.28:17-25).
`
` Based on the foregoing, AMIBIOS is a prior art printed publication under
`
`§§102(a) and 102 (b).
`
`VIII. Patent Owner Waived All Other Preliminary Response Arguments
`
`Because the POR does not reference various arguments presented in the
`
`Preliminary Response, the Patent Owner has waived these arguments. See SAP
`
`Am., Inc. v. Versata Dev. Group, Inc., CBM2012-00001, Paper 81, p.3 (Sept. 13,
`
`2013) (concluding that the patent owner had waived preliminary response
`
`arguments by not presenting them in its patent owner response).
`
`
`
`19
`
`
`
`CONCLUSION
`
`For the reasons discussed above, the Board should find that Petitioners have
`
`shown, by a
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