`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 CFR. § 42.108
`
`Realtime 2023
`
`Page 1 of 964
`
`Realtime 2023
`Page 1 of 964
`
`
`
`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 US. 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 CPR § 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.
`
`A.
`
`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.) 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.
`
`B.
`
`The ’608 Patent
`
`The ’608 Patent relates to “providing accelerated loading of operating
`
`system and application programs upon system boot or application launch,”
`
`Realtime 2023
`
`Page 2 of 964
`
`Realtime 2023
`Page 2 of 964
`
`
`
`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.
`
`C.
`
`Challenged Claims
`
`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:
`
`A method for providing accelerated loading of an
`1.
`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;
`
`to
`preloading the boot data into a cache memory prior
`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.
`
`Realtime 2023
`
`Page 3 of 964
`
`Realtime 2023
`Page 3 of 964
`
`
`
`IPR2016-01365
`
`Patent 7,181,608 B2
`
`D.
`
`Asserted Prior Art and Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability under
`
`35 U.S.C. § 103 (Pet. 2):
`
`
`Challenged Claim(s)
`Asserted Prior Art
`
`
`
`
`
`
`
`
`
`Additionally, Petitioner relies on the Declaration of Dr. Charles J. Neuhauser
`
`(Ex. 1003) to support its challenges.
`
`A.
`
`Claim Construction
`
`ANALYSIS
`
`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 CPR. § 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 US. Patent No. 5,860,083, issued Jan. 12, 1999 (Ex. 1005, “Sukegawa”).
`2 US. Patent No. 6,145,069, filed Apr. 26, 1999, issued Nov. 7, 2000
`(Ex. 1008, “Dye”).
`3 US. 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
`
`Realtime 2023
`
`Page 4 of 964
`
`Realtime 2023
`Page 4 of 964
`
`
`
`IPR2016—01365
`
`Patent 7,181,608 B2
`
`B.
`
`Overview of the Asserted Prior Art
`
`I.
`
`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—33. 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 6254-5 8.
`
`2.
`
`Dye
`
`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 forma .” Id. at 3:66—4:8.
`
`Realtime 2023
`
`Page 5 of 964
`
`Realtime 2023
`Page 5 of 964
`
`
`
`'IPR201'6-01365
`
`Patent 7,181,608 B2
`
`3.
`
`Settsu
`
`Settsu relates to‘‘[a] method of booting up an information processing
`apparatus.” Ex. 1006, at [57]. One embodiment described1n 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 ofthese 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—15z4.
`
`4.
`
`Burrows
`
`Burrows states that it “appeared in the proceedings ofthe Fifth I
`
`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
`I 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.
`
`C.
`
`Alleged Obviousness in View ofSukegawa and Dye
`
`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
`
`Realtime 2023
`
`Page 6 of 964
`
`Realtime 2023
`Page 6 of 964
`
`
`
`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 C0,, 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.
`
`1.
`
`.Independent Claim 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 skillin the art See Okajima v. Bourdeau,
`261 F. 3d 1350, 1355 (Fed. Cir. 2001)
`
`Realtime 2023
`
`Page 7 of 964
`
`Realtime 2023
`Page 7 of 964
`
`
`
`IPR2016-01365
`
`Patent 7,181,608 B2
`
`must be initialized to start an OS or application program. Pet. 29—30; Ex.
`
`1003 1111 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 ofteachings from Sukegawa and Dye. Pet. 33—35.
`
`Petitioner argues the IHDD 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, 421—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
`
`Realtime 2023
`
`Page 8 of 964
`
`Realtime 2023
`Page 8 of 964
`
`
`
`IPR20164n365
`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 co\ntrol 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 W 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 dn 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.
`I
`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 US. Patent Application No. 09/239,659 (issued
`as US. 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 ’2 84.
`
`.
`
`9
`
`Realtime '2023
`
`Page 9 of 964
`
`Realtime 2023
`Page 9 of 964
`
`
`
`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
`
`Realtime 2023
`
`Page 10 of 964
`
`Realtime 2023
`Page 10 of 964
`
`
`
`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 W 63, 118—20; see Ex. 1008, at [57], 2:42—46. On this record,
`Petitioner has articulated sufficient reasoning with rational underpinning to
`combinethe 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 (‘X1P’) 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 ofcompression‘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). '
`'
`I
`In addition,'Patent Owner’s argument is'unpersuasive that the specific
`
`I
`
`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
`
`_ I- suggested to those of ordinary skill in the art.” Id.; see In re Mouttet, 686
`
`-
`
`11
`
`Realtime 2023
`
`Page 11 of 964
`
`Realtime 2023
`Page 11 of 964
`
`
`
`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 defacto 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 1111 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.
`
`2.
`
`Remaining Challenged Claims
`
`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
`
`Realtime 2023
`
`Page 12 of 964
`
`Realtime 2023
`Page 12 of 964
`
`
`
`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 111) 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
`
`Realtime 2023
`
`Page 13 of 964
`
`Realtime 2023
`Page 13 of 964
`
`
`
`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
`
`ofboot 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 ofSukegawa, Dye, and Settsu and/0r
`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
`
`Realtime 2023
`
`Page 14 of 964
`
`Realtime 2023
`Page 14 of 964
`
`
`
`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—15z4),
`
`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
`
`drivein compressed format. Id. at 69; see id. at 17—1 8._(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
`“
`
`\
`
`1 5
`
`Realtime 2023
`
`Page 15 of 964
`
`Realtime 2023
`Page 15 of 964
`
`
`
`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,’j
`
`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 areasonable 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 BUIrows. 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
`lclaims based on Settsu or Burrows. See 37 C.F.R. § 42.108.
`
`D.
`
`Remaining Patent. Owner Arguments
`
`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 CPR. §§ 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
`
`Realtime 2023 i
`
`Page 16 of 964
`
`Realtime 2023
`Page 16 of 964
`
`
`
`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—3 1.
`
`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
`
`Realtime 2023
`
`Page 17 of 964
`
`Realtime 2023
`Page 17 of 964
`
`
`
`IPR2016-01365
`
`Patent 7,181,608 B2
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(0) and
`
`37 CPR. § 42.4, notice is hereby given of the institution of a trial; the trial
`
`will commence on the entry date of this decision.
`
`'18
`
`Realtime 2023
`
`Page 18 of 964
`
`Realtime 2023
`Page 18 of 964
`
`
`
`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
`
`richardzhang.ipr@fischllp.com
`
`19
`
`Realtime 2023
`
`Page 19 of 964
`
`Realtime 2023
`Page 19 of 964
`
`
`
`Case 6:15—cv-00885 Document 4 Filed 10/05/15 Page 1 of 1 PagelD #: 206
`
`A0 120 Rev. 08/10)
`
`REPORT ON THE
`
`
`T0‘
`Mail Stop 8
`
`'
`Director of the US. Patent and Trademark Office
`FILING OR DETERMINATION OF AN
`
`
`
`PO. Box 1450
`ACTION REGARDING A PATENT OR
`
`
`
`Alexandria, VA 22313-1450
`TRADEMARK
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § ll 16 you are hereby advised that a court action has been
`filed in the us. District Court
`Eastern District of Texas, Tyler Division
`on the following
`El Trademarks or
`[ZPatents T E the pateht action inVOOlvesr3757 USO §7 292.):
`
`DOCKET NO.
`DATE FILED
`U.8. DISTRICT COURT
`
`
`
`
`6:15-cv—885
`10/5/2015
`Eastern District of Texas, T ler Division
`DEFENDANT
`PLAINTIFF
` Apple, Inc.
`
`
`
`
`HOLDER OF PATENT OR TRADEMARK
`TRADEMARK NO.
`
`1 7,181,608 w Realtime Data, LLC d/b/a IXO
`
`
`Reaitime Data, LLC d/b/a iXO
`
`ATENT OR
`
`DATE OF PATENT
`
`3 8,880,862
`m 8/19/2008
`
`Realtime Data, LLC d/b/a IXO
`Reaitime Data, LLC d/b/a IXO
`
`
`
`
`
`
`
`
`
`
`
`
`In the aboveflentitled case, the following patent(s)/ trademark(s) have been included:
`
`
`
`DATE INCLUDED
`
`PATENT OR
`
`TRADEMARK N0.
`
`In the above—entitled case, the following decision has been rendered or judgement issued:
`
`
`DECISION/JUDGEMENT
`
`BY) DEPUTY CLERK
`
`Copy l—Upon initiation of action, mail this copy to Director Copy 3—-Upon termination of action, mail this copy to Director
`Copy 2—Upon filing document adding patent(s), mail this copy to Director Copy 4—Case file copy
`
`Realtime 2023
`
`Page 20 of 964
`
`
`INCLUDED BY
`
`
`El Cross Bill
`1:! Answer
`El Amendment
`E] Other Pleading
`
`
`OR TRADEMARK
`HOLDER OF PATENT OR TRADEMARK
`
`DATE OF PATENT
`
`
`
`
`
`Realtime 2023
`Page 20 of 964
`
`
`
`
`
`
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`INCLUDED BY
`
`[:I Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`
`
`
`
`
`
`
`
`
`
`
`[I Answer
`
`I] Cross Bill
`
`[I Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`Case 4:14-cv-00827 Document 2 Filed 12/19/14 Page 1 of 1 PagelD #: 161
`A0 120 Rev. 08/10
`
`TRADEMARK
`
`TO:
`
`Mail Stop 8
`Director of the US. Patent and Trademark Office
`P.0. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT 0R
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`
`for the Eastern District of Texas
`
`filed in the us. District Court
`
`on the following
`
`El Trademarks or M Patents.
`
`( I] the