Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
` Paper No. 11
`
`
` Entered: January 18, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`REALTIME DATA LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01365
`Patent 7,181,608 B2
`____________
`
`
`
`Before GEORGIANNA W. BRADEN, J. JOHN LEE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`

`
`IPR2016-01365
`Patent 7,181,608 B2
`
`
`
`
`
`
`
`
`
`
`
`
`INTRODUCTION
`On July 8, 2016, Petitioner Apple, Inc. filed a Petition (Paper 2,
`
`“Pet.”) requesting inter partes review of claims 1–31 (“the challenged
`claims”) of U.S. Patent No. 7,181,608 B2 (Ex. 1001, “the ’608 Patent”).
`Patent Owner Realtime Data, LLC timely filed a Preliminary Response
`(Paper 9, “Prelim. Resp.”) on October 20, 2016.
`Under 35 U.S.C. § 314, an inter partes review may not be instituted
`
`unless the information presented in the Petition shows “there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” See also 37 C.F.R § 42.4(a) (delegating
`authority to the Board). Upon consideration of the Petition and Patent
`Owner’s Preliminary Response, and the evidence cited therein, we determine
`that the information presented demonstrates a reasonable likelihood that
`Petitioner would prevail in establishing the unpatentability of each of the
`challenged claims. Accordingly, we institute an inter partes review of the
`challenged claims.
`
`Related Proceedings
`A.
`The parties identify the following cases as related to the challenged
`
`patent: Realtime Data, LLC v. Microsoft Corporation, Case No. 4:14-cv-
`00827 (E.D. Tex.) and Realtime Data, LLC v. Apple, Inc., Case No. 3:16-cv-
`02595 (N.D. Cal.) (transferred from Realtime Data, LLC v. Apple, Inc., Case
`No. 6:15-cv-00885 (E.D. Tex.)). Pet. 1; Paper 8, 2.
`
`The ’608 Patent
`B.
`The ’608 Patent relates to “providing accelerated loading of operating
`
`system and application programs upon system boot or application launch,”
`
`2
`
`

`
`IPR2016-01365
`Patent 7,181,608 B2
`
`
`
`
`
`
`
`
`
`
`
`
`and to the use of data compression and decompression techniques for such
`purpose. Ex. 1001, 1:15–21. The specification discusses the limits of prior
`art storage devices, particularly the significant bandwidth limitations of
`“mass storage devices” such as hard disk drives. Id. at 1:39–52, 2:4–14.
`According to the specification,
`“[A]ccelerated” data storage comprises receiving a digital data
`stream at a data transmission rate which is greater than the data
`storage rate of a target storage device, compressing the input
`stream at a compression rate that increases the effective data
`storage rate of the target storage device and storing the
`compressed data in the target storage device.
`
`Id. at 5:48–54.
`
`Challenged Claims
`C.
`Petitioner challenges claims 1–31 of the ’608 Patent. Pet. 2. Claims
`
`1, 7, 22, and 27 are independent. Claim 1 is illustrative of the challenged
`claims, and is reproduced below:
`1.
`A method for providing accelerated loading of an
`operating system, comprising the steps of:
`maintaining a list of boot data used for booting a computer
`system;
`initializing a central processing unit of the computer system;
`preloading the boot data into a cache memory prior to
`completion of initialization of the central processing unit of the
`computer system, wherein preloading the boot data comprises
`accessing compressed boot data from a boot device; and
`servicing requests for boot data from the computer system using
`the preloaded boot data after completion of initialization of the
`central processing unit of the computer system, wherein
`servicing requests comprises accessing compressed boot data
`from the cache and decompressing the compressed boot data at
`a rate that increases the effective access rate of the cache.
`
`3
`
`

`
`
`
`
`Asserted Prior Art and Grounds of Unpatentability
`D.
`Petitioner asserts the following grounds of unpatentability under
`
`35 U.S.C. § 103 (Pet. 2):
`Challenged Claim(s)
`1–31
`1–31
`1–31
`1–31
`
`Additionally, Petitioner relies on the Declaration of Dr. Charles J. Neuhauser
`(Ex. 1003) to support its challenges.
`
`Asserted Prior Art
`Sukegawa1 and Dye2
`Sukegawa, Dye, and Settsu3
`Sukegawa, Dye, and Burrows4
`Sukegawa, Dye, Settsu and Burrows
`
`
`ANALYSIS
`
`Claim Construction
`A.
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). No claim terms
`require express construction for purposes of this Decision. See Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`
`
`
`1 U.S. Patent No. 5,860,083, issued Jan. 12, 1999 (Ex. 1005, “Sukegawa”).
`2 U.S. Patent No. 6,145,069, filed Apr. 26, 1999, issued Nov. 7, 2000
`(Ex. 1008, “Dye”).
`3 U.S. Patent No. 6,374,353 B1, filed Mar. 3, 1999, issued Apr. 16, 2002
`(Ex. 1006, “Settsu”).
`4 Michael Burrows et al., On-line Data Compression in a Log-structured
`File System (1992) (Ex. 1007, “Burrows”).
`
`4
`
`IPR2016-01365
`Patent 7,181,608 B2
`
`
`
`
`
`
`
`
`
`

`
`IPR2016-01365
`Patent 7,181,608 B2
`
`
`
`
`
`
`
`
`
`
`
`
`Overview of the Asserted Prior Art
`B.
`1.
`Sukegawa
`
`Sukegawa relates to “a data storage system using a flash memory unit
`
`and an HDD [(hard disk drive)].” Ex. 1005, at [57]. The flash memory unit
`is used, for example, to store “data which is used frequently for a relatively
`long time period.” Id. Such data could include “control information
`necessary for starting an application program (AP) and an OS [(operating
`system)].” Id. at 2:65–3:3. Although such control information is stored on
`the HDD, the data may be stored also on the flash memory unit so that the
`OS may be started using the control information on the flash memory unit
`instead of the HDD. Id. at 6:45–54. This is advantageous because the flash
`memory unit has a “higher access speed,” which allows the OS to be started
`more quickly. Id. at 6:54–58.
`
`
`
`Dye
`2.
`Dye relates to controllers for flash or embedded memory that include
`
`data compression and decompression engines “for increased effective
`memory density and improved bandwidth.” Ex. 1008, 1:17–22, 2:42–46.
`According to Dye, such a controller enables conventional flash memory to
`“achieve higher bandwidth, more effective density, with less system power
`and noise.” Id. at 3:3–12, 3:23–28. The technology permits data to be
`“saved in either a normal or compressed format, retrieved from the Flash
`Memory Array for MPU [(microprocessing unit)] execution in a normal or
`compressed format, or transmitted and stored on a medium in a normal or
`compressed format.” Id. at 3:66–4:8.
`
`
`5
`
`

`
`IPR2016-01365
`Patent 7,181,608 B2
`
`
`
`
`
`
`
`
`
`
`
`
`
`Settsu
`3.
`
`Settsu relates to “[a] method of booting up an information processing
`
`apparatus.” Ex. 1006, at [57]. One embodiment described in Settsu
`involves dividing the main body of an operating system into modules and
`storing each module as compressed files on a boot device. Id. at 14:58–63.
`Each of these modules is decompressed each time it is loaded into memory,
`and “the time required for I/O [(input/output)] processing can be reduced” as
`a result, which “provides an advantage of being able to further reduce the
`time required for booting up the information processing apparatus.” Id. at
`14:64–15:4.
`
`
`
`Burrows
`4.
`Burrows states that it “appeared in the proceedings of the Fifth
`
`International Conference on Architectural Support for Programming
`Languages and Operating Systems (ASPLOS-V), 12–15 October, 1992,
`published by ACM Press.” Ex. 1007, iv. According to Burrows, “[b]uilding
`a file system that compresses the data it stores on disk is clearly an attractive
`idea,” at least because “more data would fit on the disk” and using a “fast
`hardware data compressor” would “increase the effective disk transfer rate
`by the compression factor, thus speeding up the system.” Id. at 1. Burrows
`describes a particular type of file system utilizing data compression and
`reports the results of tests of that system. See id. at v.
`
`Alleged Obviousness in View of Sukegawa and Dye
`C.
`Petitioner contends the combination of Sukegawa and Dye teaches or
`
`suggests each element of claims 1–31. Pet. 24–67. A claim is unpatentable
`under 35 U.S.C. § 103 if the differences between the claimed subject matter
`
`6
`
`

`
`IPR2016-01365
`Patent 7,181,608 B2
`
`
`
`
`
`
`
`
`
`
`
`
`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 person of ordinary skill in
`the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). This
`determination is made in light of the relevant facts concerning: (1) the scope
`and content of the prior art, (2) the differences between the prior art and the
`claims at issue, (3) the level of ordinary skill in the pertinent art,5 and
`(4) secondary considerations, such as commercial success, long felt but
`unsolved needs, failure of others, etc. Graham v. John Deere Co., 383 U.S.
`1, 17–18 (1966). In addition, it may be “important to identify a reason that
`would have prompted a person of ordinary skill in the relevant field to
`combine the elements in the way the claimed new invention does.” KSR,
`550 U.S. at 418.
`
`
`
`Independent Claim 1
`1.
`The Petition sets forth detailed contentions and supporting evidence
`
`alleging that claim 1 is obvious in light of the combined teachings of
`Sukegawa and Dye. Pet. 24–41. On the present record, we conclude the
`Petition has made an adequate showing for purposes of institution.
`
`For the recited step of “maintaining a list of boot data used for booting
`a computer system,” Petitioner identifies teachings in Sukegawa relating to
`maintaining “control information” necessary for starting an OS or an
`application program. Id. at 25–29. For the step of “initializing” a CPU,
`Petitioner asserts that Sukegawa teaches a CPU and, as Dr. Neuhauser
`testifies, that a person of ordinary skill would have understood that the CPU
`
`
`5 For purposes of this Decision, we determine the asserted prior art reflects
`the appropriate level of ordinary skill in the art. See Okajima v. Bourdeau,
`261 F.3d 1350, 1355 (Fed. Cir. 2001).
`
`7
`
`

`
`IPR2016-01365
`Patent 7,181,608 B2
`
`
`
`
`
`
`
`
`
`
`
`
`must be initialized to start an OS or application program. Pet. 29–30; Ex.
`1003 ¶¶ 106–07; Ex. 1005, 4:22–30, 6:19–58.
`
`With respect to the step of “preloading the boot data into a cache
`memory prior to completion of initialization of the central processing unit,”
`Petitioner identifies teachings in Sukegawa regarding the copying of control
`information (e.g., for the OS) from a HDD to portions of a flash memory
`unit, which Sukegawa indicates is used “as a cache memory.” Pet. 30–33
`(quoting Ex. 1005, 4:7–10); see Ex. 1005, 6:35–39, 6:45–49. Sukegawa
`explains that “when the OS is started at the time of the next turning-on of
`power, the control information necessary for starting the OS is read out not
`from HDD2 but from the . . . cache memory area [of the flash memory
`unit].” Ex. 1005, 6:49–53. According to Petitioner, these aspects of
`Sukegawa teach preloading boot data into a cache memory (i.e., copying
`control information from the HDD to the flash memory unit) prior to
`completion of CPU initialization (i.e., before the next time the computer is
`turned on), as recited in claim 1. Pet. 31–33.
`
`As to the requirement of claim 1 that the preloading step comprises
`“accessing compressed boot data from a boot device,” Petitioner relies on
`the combination of teachings from Sukegawa and Dye. Pet. 33–35.
`Petitioner argues the HDD of Sukegawa teaches the recited boot device
`because it stores the control information necessary to boot the OS and
`application programs. Id. at 33 (citing Ex. 1005, 4:1–21, 6:19–58, Figs. 1, 4;
`Ex. 1001, 21:53–56). For the requirement that the boot data be compressed,
`Petitioner relies on Dye’s description of a memory controller using data
`
`8
`
`

`
`IPR2016-01365
`Patent 7,181,608 B2
`
`
`
`
`
`
`
`
`
`
`
`
`compression and decompression engines to compress data for storage.6 Pet.
`33–34. Based on the testimony of its expert, Dr. Neuhauser, Petitioner
`argues a person of ordinary skill would have been motivated to apply these
`teachings of Dye to the control information of Sukegawa because Dye
`explicitly teaches that compression and decompression technology provides
`the benefits of improved memory capacity and performance, which also was
`well-known in the art. Id.; Ex. 1003 ¶¶ 63, 118–20; see Ex. 1008, at [57],
`2:42–46.
`
`For the step of “servicing requests for boot data from the computer
`system using the preloaded boot data,” Petitioner relies on Sukegawa. Pet.
`35–36. Specifically, Sukegawa describes a controller that “controls the flash
`memory unit 1 and HDD 2, as an integrated storage system, in accordance
`with access requests (read/write commands) issued from the host system 4 to
`the HDD.” Ex. 1005, 4:26–30. As discussed above, Sukegawa describes a
`procedure by which control information for an OS or application program is
`copied from an HDD to a flash memory unit, and the control information is
`provided from the flash memory unit instead of the HDD for a subsequent
`boot-up of the computer. Id. at 6:45–54.
`
`Claim 1 further requires the servicing requests step to comprise
`“accessing compressed boot data from the cache and decompressing the
`compressed boot data at a rate that increases the effective access rate of the
`
`
`6 The Petition also relies on U.S. Patent Application No. 09/239,659 (issued
`as U.S. Patent No. 7,190,284 B1 (“Dye ’284,” Ex. 1009)), which Petitioner
`asserts is incorporated by reference into Dye. Pet. 12. Patent Owner
`contends Dye’s incorporation by reference of Dye ’284 is insufficient.
`Prelim. Resp. 17–20. For purposes of this Decision, we need not reach this
`issue because Petitioner has made a sufficient showing for purposes of
`institution even without considering Dye ’284.
`
`9
`
`

`
`IPR2016-01365
`Patent 7,181,608 B2
`
`
`
`
`
`
`
`
`
`
`
`
`cache.” As to this limitation, Petitioner argues that Dye teaches accessing
`and decompressing compressed data from flash memory, and that doing so
`increases the read access rate of the memory. Pet. 37–41. Again, Petitioner
`contends a person of ordinary skill would have been motivated to modify the
`Sukegawa system with the compression/decompression technology taught in
`Dye to achieve the benefits described in Dye, such as improved memory
`capacity and access bandwidth. Id. at 37, 41.
`
`Based on the present record, we conclude Petitioner’s contentions and
`evidence, as discussed above, demonstrates a reasonable likelihood of
`prevailing as to claim 1 on the ground of unpatentability based on Sukegawa
`and Dye. Patent Owner’s arguments, addressed in detail below, are
`unpersuasive at this stage.
`
`First, Patent Owner argues Petitioner fails to demonstrate that the
`asserted art teaches the “preloading” step of claim 1. Prelim. Resp. 11. To
`the contrary, as discussed above, Petitioner explains sufficiently at this stage
`how the combination of Sukegawa and Dye teaches the preloading step. See
`Pet. 30–35. Patent Owner’s arguments that Petitioner fails to show the
`asserted art teaches “accessing compressed boot data” and “decompressing
`the compressed boot data at a rate that increases the effective access rate of
`the cache” (Prelim. Resp. 12–13) are unpersuasive for similar reasons. See
`Pet. 33–35; 37–41.7
`
`Patent Owner also argues that Petitioner fails to articulate a sufficient
`motivation to combine Sukegawa and Dye. See Prelim. Resp. 20–24. As
`
`
`7 Several of Patent Owner’s arguments appear to be based in large part on
`Patent Owner’s belief that the Petition improperly relies on Dye ’284. See,
`e.g., Prelim. Resp. 11 n.30. As discussed above, Petitioner’s showing is
`sufficient at this stage even if Dye ’284 is not considered.
`
`10
`
`

`
`IPR2016-01365
`Patent 7,181,608 B2
`
`
`
`
`
`
`
`
`
`
`
`
`discussed above, however, Petitioner explains that a person of ordinary skill
`would have been motivated to combine Sukegawa’s system with Dye’s
`compression and decompression teachings because Dye indicates those
`teachings lead to improved memory capacity and performance. Pet. 34, 37,
`41; Ex. 1003 ¶¶ 63, 118–20; see Ex. 1008, at [57], 2:42–46. On this record,
`Petitioner has articulated sufficient reasoning with rational underpinning to
`combine the references as asserted, for purposes of institution.
`
`Next, Patent Owner contends that Dye “teaches away” from the
`asserted combination with Sukegawa because Dye’s teachings are in the
`context of “solid state disk and Execute In Place (‘XIP’) architectures,”
`which are distinguished from systems that include hard disk drives. Prelim.
`Resp. 25–28. At this stage, however, Patent Owner does not identify any
`evidence in Dye or elsewhere that criticizes, discredits, or otherwise
`discourages the use of compression or decompression techniques with hard
`disk drives. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Merely
`describing how a compression/decompression technique may be
`advantageously used in one type of system architecture does not teach away
`from its use in other systems. See id.; In re Gurley, 27 F.3d 551, 554 (Fed.
`Cir. 1994).
`
`In addition, Patent Owner’s argument is unpersuasive that the specific
`configuration of the compression/decompression engine in Dye, when
`inserted into the system of Sukegawa, would not yield the claimed invention.
`Prelim. Resp. 28–29. “The test for obviousness is not whether the features
`of a secondary reference may be bodily incorporated into the structure of the
`primary reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). “Rather,
`the test is what the combined teachings of the references would have
`suggested to those of ordinary skill in the art.” Id.; see In re Mouttet, 686
`
`11
`
`

`
`IPR2016-01365
`Patent 7,181,608 B2
`
`
`
`
`
`
`
`
`
`
`
`
`F.3d 1322, 1332 (Fed. Cir. 2012) (citing Keller); see also In re Etter, 756 F.2d
`852, 859 (Fed. Cir. 1985) (en banc) (“Etter’s assertions that Azure cannot be
`incorporated in Ambrosio are basically irrelevant, the criterion being not whether
`the references could be physically combined but whether the claimed inventions
`are rendered obvious by the teachings of the prior art as a whole.”).
`
`Patent Owner further argues that Petitioner’s showing with respect to
`the step of “preloading the boot data . . . prior to completion of initialization
`of the [CPU]” is insufficient because Petitioner’s evidence does not support
`“a de facto inherency argument.” Prelim. Resp. 32–36. According to Patent
`Owner, Petitioner’s evidence only shows that the CPU of Sukegawa “may”
`be initialized, not that it is necessarily so, which is insufficient for inherency.
`Id. We note, however, that Petitioner’s asserted ground of unpatentability is
`based on obviousness, not anticipation. Moreover, Petitioner presents
`evidence supporting its allegation that a person of ordinary skill would have
`understood Sukegawa to teach that its CPU must be initialized before
`starting an OS or application program, including the testimony of Dr.
`Neuhauser. Pet. 29–30; Ex. 1003 ¶¶ 106–07; Ex. 1005, 4:22–30, 6:19–58.
`At this stage, Petitioner’s evidence is sufficient.
`
`For the reasons discussed above, Petitioner has demonstrated a
`reasonable likelihood of prevailing as to claim 1 on the ground of
`obviousness in view of Sukegawa and Dye.
`
`
`
`Remaining Challenged Claims
`2.
`The Petition sets forth detailed contentions and supporting evidence
`
`alleging that claims 2–31 are obvious in light of the combined teachings of
`Sukegawa and Dye. Pet. 41–67. For instance, as discussed above,
`Sukegawa describes “control information” necessary to start an OS as well
`
`12
`
`

`
`IPR2016-01365
`Patent 7,181,608 B2
`
`
`
`
`
`
`
`
`
`
`
`
`as control information necessary to start application programs, which the
`Petition applies to the limitations of claims 2 and 9. Id. at 41–42, 53–55.
`With respect to the claims reciting Huffman or Lempel-Ziv encoding,
`Petitioner identifies disclosures in Dye that reference these encoding
`schemes. Pet. 59, 61, 64, 66. As for the “direct memory access” limitation
`of claim 13, Petitioner relies on the combination of Sukegawa’s teachings
`regarding accessing boot data from a HDD and Dye’s teachings regarding
`data compression, as well as Dr. Neuhauser’s testimony that a person of
`ordinary skill would have understood Sukegawa to teach direct memory
`access via a PCI bus (Ex. 1003 ¶¶ 260–62). Pet. 58.
`
`For the system claims (e.g., claim 7 and 27), Petitioner identifies
`structures taught in Sukegawa—for example, Sukegawa’s cache system
`controller 3 (“digital signal processor (DSP) or controller” (claim 7)), flash
`memory unit 1 (“cache memory device” (claim 7), “cache memory” (claim
`27)), and HDD 2 (“non-volatile memory device” (claim 7), “boot device”
`and “non-volatile memory” (claim 27)), and the compression/decompression
`engine of Dye (“data compression engine” (claim 27)). Pet. 48–49, 65–66;
`see also id. at 37–38 (arguments regarding Dye’s compression and
`decompression engine, which are cross-referenced in Petitioner’s arguments
`for claim 27), 55–58 (arguments regarding Dye’s compression and
`decompression engine with respect to the “data compression engine”
`limitations of claim 10).
`
`Patent Owner presents the same or similar arguments for the
`remaining claims as it does for claim 1, which are unpersuasive on the
`present record for similar reasons as for claim 1. In addition, Patent Owner
`argues Petitioner failed to address the limitation in claim 27 of “preloading
`compressed boot data associated to the list” (emphasis added), which it
`
`13
`
`

`
`IPR2016-01365
`Patent 7,181,608 B2
`
`
`
`
`
`
`
`
`
`
`
`
`contends is different than similar language recited in claim 1. Prelim. Resp.
`36–37. Petitioner relies solely on its arguments regarding the preloading
`step of claim 1, which it argues apply equally to this aspect of claim 27. See
`Pet. 65. At this stage, we disagree with Patent Owner’s characterization of
`the claim. Claim 27 recites, “maintaining a list associated with boot data”
`(emphasis added), as compared to claim 1, which recites “maintaining a list
`of boot data” (emphasis added). Neither party argues these phrases are
`different in scope in any respect relevant to this proceeding, nor do we
`perceive any such difference. The recitation in claim 27 of preloading “boot
`data associated to the list” (emphasis added) appears to be simply a
`reference to the previously recited “list associated with boot data,” i.e., the
`boot data that the list is “associated with.” Thus, at this juncture, we are not
`persuaded that “preloading compressed boot data associated to the list,” as
`recited in claim 27, is appreciably different in scope than “preloading the
`boot data . . . compris[ing] accessing compressed boot data,” as recited in
`claim 1.
`
`Based on the evidence available at this stage of the case and the
`analysis presented in the Petition, Petitioner has demonstrated a reasonable
`likelihood of prevailing as to claims 2–31 on the ground of obviousness in
`view of Sukegawa and Dye.
`
`C.
`
`Alleged Obviousness in View of Sukegawa, Dye, and Settsu and/or
`Burrows
`
`For the remaining asserted grounds of unpatentability, Petitioner
`
`principally relies on the same arguments and evidence as in the ground
`based solely on Sukegawa and Dye, which are discussed above. Petitioner
`presents additional arguments relating to Settsu and Burrows as to specific
`
`14
`
`

`
`IPR2016-01365
`Patent 7,181,608 B2
`
`
`
`
`
`
`
`
`
`
`
`
`limitations in certain claims. Pet. 67–70. For example, for claim 1,
`Petitioner contends Settsu teaches accessing compressed operating system
`files on a “boot device.” Id. at 68; see Ex. 1006, 14:58–66. Settsu indicates
`doing so reduces the time required for booting up (Ex. 1006, 14:66–15:4),
`which Petitioner argues provides further motivation for a person of ordinary
`skill to combine the system of Sukegawa with teachings about
`compression/decompression, such as in Dye and Settsu. Pet. 68. Similarly,
`Petitioner notes Burrows teaches “that compression/decompression was
`well-known to increase the speed of accessing data from a hard drive,”
`which it contends would have further motivated a skilled artisan to combine
`the system of Sukegawa with the teachings of Burrows and Dye to apply
`compression/decompression to store the control information on the hard disk
`drive in compressed format. Id. at 69; see id. at 17–18 (citing Ex. 1007, 1).
`
`In addition to its arguments relating to the asserted combination of
`Sukegawa and Dye, Patent Owner further argues that Petitioner’s alleged
`motivation to combine based on Settsu is insufficient because “Settsu does
`not discuss improving boot time on a system such as Sukegawa, which also
`claims to improve boot time using another technique,” and no evidence
`indicates applying Settsu to Sukegawa could further improve boot speed.
`Prelim. Resp. 30–31. As discussed earlier, however, “[t]he test for
`obviousness is not whether the features of a secondary reference may be
`bodily incorporated into the structure of the primary reference.” Keller, 642
`F.2d at 425; see In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing
`Keller). Patent Owner also argues Burrows does not supply sufficient
`evidence of a motivation to combine by merely indicating that data
`compression is “attractive.” Prelim. Resp. 31–32. Petitioner, however,
`identifies more specific and detailed portions of Burrows that support its
`
`15
`
`

`
`IPR2016-01365
`Patent 7,181,608 B2
`
`
`
`
`
`
`
`
`
`
`
`
`contentions sufficiently on this record. See Pet. 17–18, 69; Ex. 1007, 1
`(specifying that compression would mean “more data would fit on the disk,”
`and the “disk transfer rate” could be increased).
`
`Based on the present record and the analysis presented in the Petition,
`we are persuaded Petitioner has demonstrated a reasonable likelihood of
`prevailing as to claims 1–6 and 9–17 on the grounds of obviousness in view
`of (1) Sukegawa, Dye, and Settsu; (2) Sukegawa, Dye, and Burrows; and
`(3) Sukegawa, Dye, Settsu, and Burrows. With respect to independent
`claims 7, 22, and 27, as well as their dependent claims, however, Petitioner
`does not present any specific argument or evidence regarding Settsu or
`Burrows.8 Thus, we decline to institute Petitioner’s challenges to those
`claims based on Settsu or Burrows. See 37 C.F.R. § 42.108.
`
`Remaining Patent Owner Arguments
`D.
`Patent Owner makes several additional arguments against the Petition
`
`generally. First, Patent Owner argues the Petition violated 35 U.S.C.
`§ 312(a)(3) and 37 C.F.R. §§ 42.22, 42.104 through the use of improper
`“cross-referencing, nested citations, and citations to expert declaration,”
`among other alleged failings. Prelim. Resp. 37–44. Aside from the table on
`page 71 of the Petition (see supra note 8), we determine the Petition is not in
`violation of these rules and requirements. Additionally, Patent Owner
`argues the Petition improperly incorporates Dr. Neuhauser’s Declaration by
`reference and seeks to circumvent the word limit for petitions. Prelim. Resp.
`44–48. We disagree with this argument as well. Finally, Patent Owner
`
`
`8 Although the Petition includes a table that purports to indicate which
`claims its “Settsu/Burrows Analysis” applies to, the table is inadequate to
`meet the requirements of 37 C.F.R. § 42.104(b).
`
`16
`
`

`
`IPR2016-01365
`Patent 7,181,608 B2
`
`
`
`
`
`
`
`
`
`
`
`
`urges that all grounds except obviousness in view of Sukegawa and Dye be
`rejected as “redundant.” Id. at 48–50. Although we have discretion to
`decline to institute on any asserted ground, including those that are
`duplicative of other grounds, we decline to exercise that discretion beyond
`as already discussed above.
`
`
`CONCLUSION
`For the foregoing reasons and on the present record, we determine that
`
`the information presented in the Petition demonstrates a reasonable
`likelihood that Petitioner would prevail in establishing the unpatentability of
`claims 1–31.
`
`
`ORDER
`
`Accordingly, it is
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`hereby instituted on the following asserted grounds of unpatentability:
`(1) Claims 1–31 as unpatentable under 35 U.S.C. § 103(a) in
`view of Sukegawa and Dye;
`(2) Claims 1–6 and 9–17 as unpatentable under 35 U.S.C.
`§ 103(a) in view of Sukegawa, Dye, and Settsu;
`(3) Claims 1–6 and 9–17 as unpatentable under 35 U.S.C.
`§ 103(a) in view of Sukegawa, Dye, and Burrows; and
`(4) Claims 1–6 and 9–17 unpatentable under 35 U.S.C.
`§ 103(a) in view of Sukegawa, Dye, Settsu, and Burrows;
`FURTHER ORDERED that no other grounds are authorized for this
`inter partes review other than those specifically identified above; and
`
`17
`
`

`
`IPR2016-01365
`Patent 7,181,608 B2
`
`
`
`
`
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`will commence on the entry date of this decision.
`
`
`
`
`
`
`
`18
`
`

`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01365
`Patent 7,181,608 B2
`
`PETITIONER:
`
`Walter Renner
`Jeremy Monaldo
`Andrew Patrick
`Katherine Vidal
`FISH & RICHARDSON P.C.
`IPR39521-0023IP1@fr.com
`PTABInbound@fr.com
`
`PATENT OWNER:
`
`Richard Zhang
`FISCH SIGLER LLP
`richard.zhang.ipr@fischllp.com
`
`
`
`19