Trials@uspto.gov
`571.272.7822
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`
`
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` Paper No. 7
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` Entered: March 14, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`REALTIME DATA LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01737
`Patent 8,880,862 B2
`____________
`
`
`
`Before GEORGIANNA W. BRADEN, J. JOHN LEE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
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`

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`IPR2016-01737
`Patent 8,880,862 B2
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`
`INTRODUCTION
`
`I.
`
`A. Background
`
`Apple, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`an inter partes review of claims 1–4, 6–7, 13, 23–34, 47–58, 83–96, 99–100,
`105–111, 113, and 116 (“the challenged claims”) of U.S. Patent No.
`8,880,862 B2 (Ex. 1001, “the ’862 Patent”). Realtime Data, LLC (“Patent
`Owner”) timely filed a Preliminary Response (Paper 6, “Prelim. Resp.”).
`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, 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.
`
`B. Related Proceedings
`
`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.), Realtime Data, LLC v. Microsoft Corporation, Case No.
`6:15-cv-00885 (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 5, 2.
`
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`IPR2016-01737
`Patent 8,880,862 B2
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`C. The ’862 Patent
`
`
`
`The ’862 Patent relates to “providing accelerated loading of operating
`
`system and application programs upon system boot or application launch,”
`and the use of data compression and decompression techniques for such
`purpose. Ex. 1001, 1:20–26. 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 1:43–57, 2:9–18.
`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 5:41–47. One embodiment of the ’862 Patent is illustrated in Figure 1,
`reproduced below.
`
`
`As shown in Figure 1, data storage controller 10 is “operatively connected”
`to hard disk 11 and to host system’s bus 16. Id. at 5:63–6:53. Controller 10
`includes cache 13 for data storage/preloading, and data compression engine
`12 for data compression/decompression. Id. at 5:63–6:53, 20:50–22:11.
`The ’862 Patent explains that, following reset or power on of a computer
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`IPR2016-01737
`Patent 8,880,862 B2
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`system, the “initial bus commands inevitably instruct the boot device
`controller [e.g., controller 10] to retrieve data from the boot device (such as
`a disk) [e.g., hard disk 11] for the operating system.” Id. at 20:36–49.
`
`D. Illustrative Claims
`
`As noted above, Petitioner challenges claims 1–4, 6–7, 13, 23–34, 47–
`
`58, 83–96, 99–100, 105–111, 113, and 116 of the ’862 Patent. Pet. 1.
`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 in a computer system, the method comprising:
`loading a portion of boot data in a compressed form that is
`associated with a portion of a boot data list for booting the
`computer system into a memory;
`accessing the loaded portion of the boot data in the compressed
`form from the memory;
`decompressing the accessed portion of the boot data in the
`compressed form at a rate that decreases a boot time of the
`operating system relative to loading the operating system
`utilizing boot data in an uncompressed form; and
`updating the boot data list,
`wherein the decompressed portion of boot data comprises a
`portion of the operating system.
`Ex. 1001, 26:38–51.
`E. The Evidence of Record and Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability under
`
`35 U.S.C. § 103 (Pet. 2):
`
`4
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`IPR2016-01737
`Patent 8,880,862 B2
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`Challenged Claims
`All Challenged Claims
`All Challenged Claims
`All Challenged Claims
`All Challenged Claims
`All Challenged Claims
`
`
`Asserted Prior Art
`Sukegawa1 and Dye2
`Sukegawa, Dye, and Settsu3
`Sukegawa, Dye, and Burrows4
`Sukegawa, Dye, Settsu, and Burrows
`Sukegawa, Dye, and Zwiegincew5
`
`
`Additionally, Petitioner relies on the Declaration of Dr. Charles J. Neuhauser
`(Ex. 1003) to support its challenges.
`
`II. ANALYSIS
`
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to 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) (“We
`conclude that the regulation represents a reasonable exercise of the
`rulemaking authority that Congress delegated to the Patent Office.”). Under
`that standard, and absent any special definitions, we give claim terms their
`ordinary and customary meaning, as would be understood by one of ordinary
`
`
`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”).
`5 U.S. Patent No. 6,317,818 B1, filed Mar. 30, 1999, issued Nov. 13, 2001
`(Ex. 1010, “Zwiegincew”).
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`skill in the art at the time of the invention. In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor, however, may provide a
`meaning for a term that is different from its ordinary meaning by defining
`the term in the specification with “reasonable clarity, deliberateness, and
`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Limitations, however, are not to be read from the specification into the
`claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). In addition,
`the Board may not “construe claims during [an inter partes review] so
`broadly that its constructions are unreasonable under general claim
`construction principles.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d
`1292, 1298 (Fed. Cir. 2015).
`
`Based on a review of the record, we determine that 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).
`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
`between the subject matter sought to be patented 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 having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
`i.e., secondary considerations. See Graham v. John Deere Co. of Kansas
`City, 383 U.S. 1, 17–18 (1966).
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`Patent 8,880,862 B2
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`“A determination of whether a patent claim is invalid as obvious
`under § 103 requires consideration of all four Graham factors, and it is error
`to reach a conclusion of obviousness until all those factors are considered.”
`Apple v. Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en
`banc) (citations omitted). “This requirement is in recognition of the fact that
`each of the Graham factors helps inform the ultimate obviousness
`determination.” Id.
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden never shifts to
`Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
`F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek,
`Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of
`proof in inter partes review). Furthermore, Petitioner cannot satisfy its
`burden of proving obviousness by employing “mere conclusory statements.”
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`Thus, to prevail in an inter partes review, Petitioner must explain how the
`proposed combinations of prior art would have rendered the challenged
`claims unpatentable. At this preliminary stage, we determine whether the
`information presented in the Petition shows there is a reasonable likelihood
`that Petitioner would prevail in establishing that the challenged claims
`would have been obvious over the proposed combinations of prior art.
`We analyze the challenges presented in the Petition in accordance
`with the above-stated principles.
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`C. Level of Ordinary Skill in the Art
`
`
`
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham, 383 U.S. at 17. “The importance of
`resolving the level of ordinary skill in the art lies in the necessity of
`maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v.
`Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).
`Petitioner’s declarant, Dr. Charles J. Neuhauser, opines that a person
`of ordinary skill in the art relevant to the ’685 patent would have had “a
`Bachelor’s Degree in electrical engineering, computer engineering, or a
`related area of study” as well as “between three and five years of practical
`experience in the design and implementation of computer systems, such as
`personal computers.” Dr. Neuhauser further opines that, in the alternative, a
`person with “a Master’s Degree in the area of electrical engineering,
`computer engineering, or a related area of study and somewhat less practical
`experience would be similarly qualified.” Ex. 1003 ¶ 15.
`Patent Owner does not dispute Dr. Neuhauser’ testimony or proffer its own
`assessment regarding a person of ordinary skill in the art relevant to the ’862
`patent at the time of the invention.
`
`Based on our review of the ’862 patent, the types of problems and
`solutions described in the ’862 patent and cited prior art, and the testimony
`of Dr. Neuhauser, we adopt and apply Dr. Neuhauser’s definition of a person
`of ordinary skill in the art at the time of the claimed invention for purposes
`of this Decision. We also note that the applied prior art reflects the
`appropriate level of skill at the time of the claimed invention. See Okajima
`v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`
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`Patent 8,880,862 B2
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`D. Overview of the Asserted Prior Art
`1.
`Sukegawa
`
`
`Sukegawa is a U.S. Patent titled “Data Storage System Having Flash
`Memory and Disk Drive” and relates to “a data storage system using a flash
`memory unit and an HDD [(hard disk drive)].” Ex. 1005, at [54], [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.
`2.
`Dye
`
`
`Dye is a U.S. Patent titled “Parallel Decompression and Compression
`System and Method for Improving Storage Density and Access Speed for
`Non-Volatile Memory and Embedded Memory Devices.” Ex. 1008, at [54].
`Dye relates to controllers for flash or embedded memory that include data
`compression and decompression engines “for increased effective memory
`density and improved bandwidth.” Id. at 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,
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`or transmitted and stored on a medium in a normal or compressed format.”
`Id. at 3:66–4:8.
`3.
`Settsu
`
`
`Settsu is a U.S. Patent titled “Information Processing Apparatus
`Method [sic] of Booting Information Processing Apparatus at a High Speed”
`and relates to “[a] method of booting up an information processing
`apparatus.” Ex. 1006, at [54], [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 is a conference report titled “On-line Data Compression in a
`Log-Structured File System,” and 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, Title, 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 teaches a particular type of file system utilizing data
`compression and reports the results of tests of that system.
`
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`Patent 8,880,862 B2
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`
`Zwiegincew
`5.
`Zwiegincew is a U.S. Patent titled “Pre-Fetching of Pages Prior to a
`
`Hard Page Fault Sequence,” and it recognizes problems of slow boot that
`result when hard page faults occur during the boot process. Ex. 1010, at
`[54], 1:45–51, 2:12–15, 5:50–51. To improve boot speed, Zwiegincew
`proposes pre-fetching, from a hard disk to memory, pages that are expected
`to be requested during the boot process, thereby reducing occurrence of hard
`page faults. Id. at [57], 1:5–3:55. “Copies of, or references to, the . . . pages
`are stored in a scenario file” and, “[w]hen a hard page fault scenario is
`detected, a corresponding scenario file is fetched from disk storage and the
`determined pages, or copies thereof, are transferred into RAM.” Id. at [57].
`Zwiegincew also recognizes benefits of compressing pre-fetched page data.
`For instance, Zwiegincew’s system includes “a disk
`compressor/decompressor,” which employs “compression algorithms” on
`pre-fetched data to achieve pre-fetch time improvements. Id. at 8:66–9:13,
`Figs. 1–2.
`
`E. Alleged Obviousness of the Challenged Claims in View of Sukegawa and
`Dye
`Petitioner contends the combination of Sukegawa and Dye teaches or
`
`suggests each element of claims 1–4, 6–7, 13, 23–34, 47–58, 83–96, 99–100,
`105–111, 113, and 116. Pet. 6–59. Patent Owner disputes Petitioner’s
`contentions. Prelim. Resp. 9–15, 18–30, and 37–44. For reasons that
`follow, we determine Petitioner has demonstrated a reasonable likelihood of
`prevailing as to the challenged claims.
`1.
`Analysis of Cited Art as Applied to Independent Claim 1
`
`
`Petitioner contends the combined teachings of Sukegawa and Dye
`render every element claim 1 of the ’862 patent obvious. Pet. 6–24. Patent
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`
`Owner disputes Petitioner’s contentions. Prelim. Resp. 9–15, 18–30, 37–44.
`Patent Owner specifically argues that Petitioners fail to show that Dye
`teaches (1) “load[ing] . . . boot data in [a/the] compressed form that is
`associated with . . . a boot data list” (id. at 12–13, 28–30); (2) “access[ing]
`the loaded…boot data in the compressed form” (id. at 13); (3)
`“decompress[ing] the accessed . . . boot data in the compressed form at a rate
`that decreases a boot time of the [operating] system” (id. at 14); and (4) “the
`decompressed portion of boot data comprises a portion of the operating
`system” (id. at 14–15).
`
`After considering the parties’ arguments and evidence, we determine
`that Petitioner presents sufficient evidence to establish a reasonable
`likelihood of prevailing on the ground of obviousness in view of Sukegawa
`and Dye. We address the issues disputed by Patent Owner in more detail
`below.
`
`a. “loading . . . boot data in a compressed form that is associated
`with . . . a boot data list”
`
`For the recited step of “load[ing] . . . boot data in [a/the] compressed
`
`form that is associated with . . . a boot data list,” Petitioner identifies
`teachings in Sukegawa relating to maintaining “control information”
`necessary for starting an OS or an application program as boot data used for
`booting a computer system. Id. at 8–9. For the step of “loading,” Petitioner
`asserts that Sukegawa’s controller 3 loads boot data out of HDD2 and into
`flash memory 1 in performing “data input/output control (including cache
`operation control) for flash memory unit 1 and HDD.” Pet. 9 (citing
`Ex. 1005, 4:1–21, 5:1–7:2). According to Petitioner, Sukegawa teaches two
`techniques for loading boot data: (1) user selection of data to load, and (2)
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`automatic selection of data to load. Id. (citing Ex. 1005, 5:10–6:58, 7:28–
`55).
`
`Petitioner contends Sukegawa discloses multiple forms of boot data
`lists that are associated with loaded boot data, and that are used in the
`loading process. Id. at 10 (citing Ex. 1003 ¶¶ 122–123). Petitioner further
`contends that by loading files (or portions of files) of application/OS control
`information into flash memory 1, Sukegawa’s controller 3 loads a portion of
`boot data associated with a portion of a boot data list for booting the
`computer system. Id. at 11 (citing Ex. 1003 ¶¶ 122–124). Petitioner relies
`on the testimony of Dr. Neuhauser to support its position.
`
`Dr. Neuhauser specifically opines that one of ordinary skill would
`have recognized that a file of control information, as described by
`Sukegawa, is a “list” (that is, a list of data) under a broadest reasonable
`interpretation. Ex. 1003 ¶ 122 (citing Ex. 1014 for a definition of the term
`“file” as “[a] complete, named collection of information, such as a program,
`a set of data used by a program, or a user-created document” that “binds a
`conglomeration of instructions . . . into a coherent unit that a user can
`retrieve, change, delete, save, or send to an output device”).6 As supported
`by the cited definition, Dr. Neuhauser testifies one of ordinary skill would
`have understood Sukegawa’s OS and AP program files to be lists of data
`
`
`6 The term “boot data list” is recited explicitly in the challenged claims. See,
`e.g., Ex. 1001, 26:41. Both parties provide contentions regarding the claim
`term, but neither provides a proposed construction. Dr. Neuhauser opines on
`the scope and application of the term, as supported by Exhibit 1014, which is
`sufficient for purposes of this Decision. See Ex. 1003 ¶ 122. To the extent,
`however, the parties present additional evidence concerning the proper scope
`of this term during the course of this proceeding, we will address it in the
`Final Written Decision.
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`(including, e.g., program instructions). Id. Dr. Neuhauser then testifies that
`because the files of control information maintained by controller 3 are
`necessary for starting the corresponding AP or OS, and because they may be
`used directly as a result of the turn-on of power, these files are, in this
`example, the claimed “list of boot data.” Based on Dr. Neuhauser’s
`testimony, Petitioner concludes that Sukegawa’s loaded boot data (e.g.,
`application/OS control information) becomes part of a boot data list (e.g.,
`part of a file or files of boot data) and, thus, is associated with that boot data
`list. Id. at 11–12 (citing Ex. 1003 ¶¶ 122–124).
`
`For the requirement that the boot data be compressed, Petitioner relies
`on Dye’s description of a memory controller using data compression and
`decompression engines to compress data for storage.7 Id. at 13–14.
`Petitioner argues that Dye describes a controller that “uses data compression
`and decompression for improved system cost and performance.” Id. at 13–
`14 (citing Ex. 1008, at [57], 2:42–4:55, 7:34–9:5, and 10:19–41). 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, and to modify Sukegawa, to increase
`the effective density and read access rate of the non-volatile storage devices
`in Sukegawa’s system, and to thereby achieve further reduction in the time
`required for booting up. Id. at 14–15 (citing Ex. 1003 ¶¶ 79–91, 130–139).
`
`
`7 The Petition also relies on U.S. Patent Application No. 09/239,659 (issued
`as U.S. Patent No. 7,190,284 B2 (“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. 9–11, 18–20. 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.
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`Patent Owner contests Petitioner’s position, arguing Petitioner fails to
`
`demonstrate that Dye teaches that compression technology could or should
`be used to load compressed “boot data” associated with a “boot data list”
`into memory from a boot device as required by claim 1. Prelim. Resp. 11.
`Patent Owner further argues that Petitioner does not rely on Sukegawa to
`disclose or suggest this claim element. Id. To the contrary, as discussed
`above, Petitioner explains sufficiently at this stage how the combined
`teachings of Sukegawa and Dye teach or at least suggest the loading step.
`See Pet. 11–17.
`b. access[ing] the loaded . . . boot data in the compressed form,”
`and “decompress[ing] the accessed . . . boot data in the
`compressed form at a rate that decreases a boot time of the
`[operating] system”
`
`Petitioner contends that a person of ordinary skill in the art would
`
`have modified Sukegawa’s controller 3 to include Dye’s
`compression/decompression engine. Pet. 17 (citing Ex. 1003 ¶¶ 151–155).
`According to Petitioner, in servicing requests, controller 3 would access
`compressed control information from flash memory 1 and use Dy’s
`decompression engine to decompress the compressed control information at
`a rate that increases flash memory 1’s effective access rate. Id. (citing Ex.
`1003 ¶¶ 151–153; Ex. 1008, at [57], 7:34–43).
`
`Patent Owner’s arguments that Petitioner fails to show the asserted art
`teaches “accessing the loaded portion of the boot data in compressed form
`from the memory” and “decompressing the accessed . . . boot data in the
`compressed form at a rate that decreases a boot time” (Prelim. Resp. 13–14)
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`are unpersuasive for similar reasons as discussed above.8 Therefore, based
`on the supporting testimony from Dr. Neuhauser, we are persuaded
`Petitioner’s evidence is sufficient at this stage of the proceeding. See Pet.
`17–20; Ex. 1003 ¶¶ 151–155.
`c. “wherein the decompressed portion of boot data comprises a
`portion of the operating system”
`
`Petitioner contends Sukegawa describes that controller 3 services
`
`requests for control information necessary for booting the OS using control
`information that has been loaded into areas 10A/10C of flash memory 1.
`Pet. 23 (citing Ex. 1003 ¶¶ 188–189; Ex. 1005, 2:11–16, 5:10–6:58, 7:28–
`55). As Petitioner notes, Sukegawa states that “the control information,
`which is pre-stored in the HDD 2 and necessary for starting the OS, is read
`out and stored in the permanent storage area 10A (steps S16 and S17).” Id.
`(citing Ex. 1005, 6:36–39). Sukegawa further states, “[a]ccordingly, 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 the HDD 2 but
`from the permanent storage area 10A . . . .” Id. (citing Ex. 1005, 6:49–54).
`From this description, Petitioner argues that a person of ordinary skill in the
`art would have understood that Sukegawa’s control information, which is
`“necessary for starting” an operating system, includes a portion of the
`operating system. Id. at 23–24 (citing Ex. 1003 ¶ 189). Dr. Neuhauser
`supports this position by citing to Sukegawa’s description of “the OS and
`AP [being] permanently stored in the flash memory.” Ex. 1003 ¶ 189 (citing
`
`
`8 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. 13 n.36, 14 n.39. As discussed above, Petitioner’s
`showing is sufficient at this stage even if Dye ’284 is not considered.
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`Ex. 1005, 2:11–16). Petitioner further contends that a person of ordinary
`skill in the art would have modified Sukegawa’s controller 3 to service
`requests from Sukegawa’s host system by using Dye’s
`compression/decompression engine to decompress compressed data
`accessed from flash memory 1. Pet. 23 (citing Ex. 1003 ¶ 190).
`
`Patent Owner contests Petitioner’s position, arguing that Dye’s
`compression technology coupled to flash memory does not teach that such
`technology could or should be used such that “the decompressed portion of
`boot data comprises a portion of the operating system,” as recited in claim 1.
`Prelim. Resp. 15. At this stage of the proceeding, we are persuaded
`Petitioner has provided sufficient evidence and explanation that the
`combined teachings of Sukegawa and Dye teach or at least suggest “the
`decompressed portion of boot data comprises a portion of the operating
`system.”
`d. Alleged Rationale to Combine Asserted Art
`Patent Owner argues that Petitioner fails to articulate a sufficient
`
`motivation to combine Sukegawa and Dye without the benefit of
`impermissible hindsight analysis. See Prelim. Resp. 21–25. Petitioner,
`however, argues 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, specifically improved data density, efficiency,
`and bandwidth. Pet. 13, 15, 19, 41; Ex. 1003 ¶¶ 79–91, 130–39, 165–168;
`see Ex. 1008, at [57], 2:42–46. On this record, we are satisfied for purposes
`of institution that Petitioner has articulated sufficient reasoning with rational
`underpinning to combine the references as asserted.
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`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 used
`advantageously 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. 28–30. “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
`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.”).
`
`At this stage, Petitioner’s evidence is sufficient. Accordingly, for the
`reasons discussed above, Petitioner has demonstrated a reasonable likelihood
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`of prevailing as to claim 1 on the ground of obviousness in view of
`Sukegawa and Dye.
`2.
`Remaining Challenged Claims
`
`
`The Petition sets forth detailed contentions and supporting evidence
`alleging that claims 2–4, 6–7, 13, 23–34, 47–58, 83–96, 99–100, 105–111,
`113, and 116 are obvious in light of the combined teachings of Sukegawa
`and Dye. Pet. 29–59. For instance, as discussed above, Sukegawa teaches
`“a second memory configured to store boot data” in the form of control
`information stored on HDD2, which the Petition applies to the limitations of
`claims 6 and 7. Id. at 29, 33. With respect to the claims reciting Huffman or
`Lempel-Ziv encoding in claims 33, 57, and 93, Petitioner identifies
`disclosures in Dye that reference these encoding schemes. Id. at 49, 52, 54.
`As for the “plurality of files” limitation of claims 23, 28, 30, 47, 52, 54, 83,
`88, and 90, Petitioner relies on Sukegawa’s teachings that controller 3 reads
`OS control information out of HDD2 and stores it “as one file in the
`permanent storage area 10A,” and stores “control information necessary for
`starting” an application program as another file. Pet. 38 (citing Ex. 1005,
`5:10–25, 6:21–23, 6:50–53, 7:2, Fig. 4). According