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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
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`Petitioner,
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`v.
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`REALTIME DATA, LLC D/B/A IXO,
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`Patent Owner.
`____________________
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`Case IPR2016-01737
`Patent No. 8,880,862
`____________________
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`
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`PATENT OWNER’S MOTION TO AMEND
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Submitted Electronically via the PTAB E2E System
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`IPR2016-01737
`MOTION TO AMEND
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`Table of Contents
`Introduction .......................................................................................................... 1
`I.
`II. Statement of Relief Requested ........................................................................... 2
`III. The Substitute Claims Meet All the Requirements of 37 C.F.R. § 42.121 ...... 2
`IV. The Original Non-Provisional Application Supports Each Limitation of the
`Proposed Substitute Claims ............................................................................. 4
`A. Independent Claim 118 ................................................................................... 5
`B.
`Independent Claim 122 ................................................................................... 8
`C.
`Independent Claim 124 ................................................................................. 11
`D. Dependent Claims ......................................................................................... 15
`V. Level of Ordinary Skill in the Art .................................................................... 17
`VI. Claim Construction ......................................................................................... 17
`VII. The Proposed Substitute Claims Are Patentable Over the Prior Art .............. 18
`A. The Proposed Substitute Claims Are Patentable Over the Art At Issue In
`this Proceeding ..................................................................................................... 19
`1. None of Petitioner’s references, alone or in combination, teaches or
`suggests “preloading” compressed boot data into a “volatile” memory, as each
`proposed substitute claim requires. .................................................................. 19
`2. None of Petitioner’s references, alone or in combination, teaches or
`suggests “preloading” compressed boot data “wherein preloading comprises
`transferring” the compressed boot data “during the same boot sequence in
`which a boot device controller receives a command over a computer bus to
`load the boot data,” as each proposed substitute claim requires. .................... 22
`B. The Proposed Substitute Claims Are Likewise Patentable Over the Material
`Prior Art At Issue During Prosecution ................................................................. 24
`VIII. Conclusion ...................................................................................................... 25
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`IPR2016-01737
`MOTION TO AMEND
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`EXHIBIT LIST
`
`Description
`Declaration of S. Desmond Jui in Support of Motion for
`Admission Pro Hac Vice
`Declaration of Kayvan B. Noroozi in Support of Motion
`for Admission Pro Hac Vice
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756-
`773, dated August 14, 2012
`Deposition Exhibit Declaration of Dr. Charles J. Neuhauser
`filed in IPR2016-01737 proceeding (not filed)
`Deposition Exhibit Declaration of Dr. Charles J. Neuhauser
`filed in IPR2016-01738 proceeding (not filed)
`Deposition Exhibit Declaration of Dr. Charles J. Neuhauser
`filed in IPR2016-01739 proceeding (not filed)
`Excerpt from Microsoft Computer Dictionary, 5th Ed.,
`Microsoft (2002)
`Declaration of Dr. Godmar Back (“Dr. Back Dec.”)
`Curriculum Vitae of Dr. Godmar Back
`Prosecution History of U.S. Provisional Patent Application
`No. 60/801,114
`Deposition Transcript of Charles J. Neuhauser, dated June
`2, 2017
`Excerpt from Joint Claim Construction and Prehearing
`Statement in matter Realtime Data, LLC d/b/a IXO v.
`Apple Inc., C.A. No. 16-cv-02595-JB (N.D. Cal.)
`Excerpt from Operating System Concepts, Silberschatz et
`al. (2009)
`UNUSED
`UNUSED
`Application No. 11/551,211 as filed
`Application No. 09/776,267 as filed
`U.S. Patent No. 6,539,456 (“Stewart”)
`U.S. Patent No. 6,173,381 (“Dye ’381”)
`U.S. Patent No. 6,434,695 (“Esfahani”)
`U.S. Patent No. 6,073,232 (“Kroeker”)
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`Exhibit No.
`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
`2009
`2010
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`2011
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`2012
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`2013
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`2014
`2015
`2016
`2017
`2018
`2019
`2020
`2021
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`2022
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`2023
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`IPR2016-01737
`MOTION TO AMEND
`Declaration of Dr. Godmar Back in Support of Motion to
`Amend
`Excerpts from the Prosecution History of U.S. Patent No.
`7,181,608 (Application No. 09/776,267)
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`IPR2016-01737
`MOTION TO AMEND
`
`I.
`
`Introduction
`Patent Owner Realtime Data, LLC (“Realtime” or “Patent Owner”)
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`respectfully moves under 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121 to amend
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`U.S. Patent No. 8,880,862 (“the ’862 patent”), contingent on the outcome of this
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`trial. In the event the Board finds independent claims 1, 6, and 13 unpatentable,
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`Patent Owner respectfully requests that the Board grant this motion to amend and
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`issue the corresponding substitute claims presented herein.
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`As the motion and the accompanying declaration of Dr. Back demonstrate,
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`this motion and the substitute claims meet all of the requirements of 37 C.F.R §
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`42.121. Namely, each contingent amendment is responsive to a ground of
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`unpatentability involved in this proceeding, none of the amendments seeks to
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`enlarge the scope of the claims or introduce new subject matter, each amendment
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`proposes only one substitute claim for each conditionally canceled claim, and the
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`motion clearly shows the changes sought and the support in the original disclosure
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`of the patent for each claim that is added or amended.
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`Moreover, although Patent Owner respectfully believes that it should not
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`bear the burden of either persuasion or production regarding the patentability of the
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`amended claims as a condition of allowance, and further believes that the Board
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`may not sua sponte question the patentability of the proposed amended claims, see
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`In re Aqua Products, Inc., 833 F.3d 1335, 1336 (Fed. Cir. 2016) (en banc decision
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`IPR2016-01737
`MOTION TO AMEND
`pending), the instant motion and supporting declaration of Dr. Back demonstrate
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`that the proposed amended claims are patentable over the references at issue in this
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`proceeding and the material prior art at issue during prosecution.1
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`II.
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`Statement of Relief Requested
`To the extent the Board finds any original claim unpatentable in this
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`proceeding, Realtime respectfully requests that the Board grant this motion to
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`amend with respect to each corresponding substitute claim presented herein. The
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`Board should not consider this motion for each original claim it finds patentable.
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`III. The Substitute Claims Meet All the Requirements of 37 C.F.R. § 42.121
`As shown in the attached claims appendix, proposed substitute independent
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`claims 118, 122, and 124 retain all features of the original claims and do not
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`enlarge the scope of the claims in any way. Rather, the contingent amendments add
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`only narrowing features. Specifically, the substitute claims add the following
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`limitations to the original claims: (1) a limitation to “preloading” compressed boot
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`data, rather than simply “loading” the boot data; (2) a limitation that the
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`compressed boot data is preloaded into a “volatile memory” rather than a
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`1 Patent Owner reserves its right to obtain the contingently proposed
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`amended claims under the minimum requirements eventually established by the
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`Federal Circuit’s en banc ruling in In re Aqua Products.
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`IPR2016-01737
`MOTION TO AMEND
`“memory”; (3) a limitation that “preloading” comprises “transferring” the
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`
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`compressed boot data into the volatile memory; and (4) a limitation that the
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`“preloading” occurs during the same boot sequence in which a boot device
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`controller receives a command over a computer bus to load the boot data.
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` For the same reasons, the proposed substitute dependent claims 119-121,
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`123, and 125-173 likewise do not enlarge the scope of any original claim. See 37
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`C.F.R. § 42.121(a)(2)(ii).
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`The proposed substitute independent claims are further responsive to one or
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`more grounds of unpatentability at issue in this proceeding. See 37 C.F.R. §
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`42.121(a)(2)(i). Specifically, Petitioner in this proceeding has asserted that the
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`asserted prior art references disclose aspects of the original independent claims,
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`which this motion conditionally seeks to amend. Compare Petition, IPR2016-
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`01737 Paper 2, at 6-17, 29, 32, 36-37, 60-66, 76 with Claims Appendix, infra.
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`The substitute dependent claims correspond to the original dependent claims
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`and are amended only to reflect their new dependency from the amended substitute
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`independent claims and to be consistent with the substitute independent claims.
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`Because the dependent claims have not been substantively amended, the dependent
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`claim amendments are also responsive to the § 103 grounds of unpatentability. See
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`Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26, Decision at 9
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`(PTAB June 11, 2013).
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`IPR2016-01737
`MOTION TO AMEND
`For each original claim, Realtime proposes only one substitute claim. The
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`amended claims therefore fit the “presumption . . . that only one substitute claim
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`would be needed to replace each challenged claim,” and they present a reasonable
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`number of substitute claims. 37 C.F.R. § 42.121(a)(3).
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`And as demonstrated in the next section, the proposed substitute claims are
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`supported by the original non-provisional application to which the ’862 patent
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`claims priority, so they do not introduce any new subject matter. See 37 C.F.R. §
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`42.121(a)(2)(ii).
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`IV. The Original Non-Provisional Application Supports Each Limitation of
`the Proposed Substitute Claims
`The ’862 Patent issued from application No. 13/118,122 (Ex. 1002 at 1133-
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`1195), filed on Oct. 19, 2006; which is a continuation of application No.
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`11/551,211 (Ex. 2016), filed on Oct. 19, 2006, now Pat. No. 8,112,619; which is a
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`continuation of application No. 09/776,267 (“the ’267 application”) (Ex. 2017),
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`filed on Feb. 2, 2001, now Pat. No. 7,181,608; which is based on U.S. Provisional
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`Application Ser. No. 60/180,114 (Ex. 2010), filed on Feb. 3, 2000.
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`For purposes of this Motion to Amend, Realtime identifies the following
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`portions of the non-provisional ’267 application (Ex. 2017) that provide § 112
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`support for the proposed substitute claims. As demonstrated below and in the
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`accompanying Declaration of Dr. Godmar Back (Ex. 2022), one of ordinary skill in
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`IPR2016-01737
`MOTION TO AMEND
`the art would have understood based on the disclosures of the non-provisional ’267
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`application (Ex. 2017) that the inventors possessed the substitute claims’ systems
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`and methods at the time of the application. Back Decl. ¶¶ 22-54.
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`Independent Claim 118
`A.
`The ’267 application provides support for the preamble of claim 118, “A
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`method for providing accelerated loading of an operating system in a computer
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`system.” Back Decl. ¶ 22. For example, the ’267 application discloses that it is
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`directed “to data storage controllers employing lossless and/or lossy data
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`compression and decompression to provide accelerated loading of operating
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`systems and application programs.” Ex. 2017 at 5:20-6:1; Back Decl. ¶ 22.
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`The ’267 application also provides support for “preloading a portion of boot
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`data in a compressed form into a volatile memory,” as recited in claim 118. Back
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`Decl. ¶ 23. Specifically, the ’267 application discloses that “the data storage
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`controller can proceed to pre-load the portions of the computer operating system
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`from the boot device (e.g., hard disk) into the on-board cache memory.” Ex. 2017
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`at 41:4-5; Back Decl. ¶ 23. The ’267 application further discloses that the data to
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`be loaded may be in compressed form. See, e.g., Ex. 2017 at 46:3-5, 46:9-50:12;
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`Back Decl. ¶ 23. The ’267 application also discloses that the preloading may occur
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`into volatile memory. See, e.g., Ex. 2017 at 12:16-18 (“[T]he cache 13 may
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`comprise volatile or non-volatile memory, or any combination thereof. Preferably,
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`IPR2016-01737
`MOTION TO AMEND
`the cache 13 is implemented in SDRAM (static dynamic random access
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`
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`memory).”); Back Decl. ¶ 23. A person of ordinary skill in the art (“POSA”) would
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`have understood that SDRAM is volatile memory. Back Decl. ¶ 23.
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`The ’267 application discloses “the portion of boot data in the compressed
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`form being associated with a boot data list for booting the computer system,” as
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`recited in claim 118. See, e.g., Ex. 2017 at 42:4-16; Back Decl. ¶ 24. The ’267
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`application further supports “wherein the preloading comprises transferring the
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`portion of boot data in the compressed form into the volatile memory,” as recited
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`in claim 118. See Ex. 2017 at 41:4-5 (“[T]he data storage controller can proceed to
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`pre-load the portions of the computer operating system from the boot device (e.g.,
`
`hard disk) into the on-board cache memory.”) (emphasis added); Back Decl. ¶ 25.
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`The ’267 application also supports “wherein the preloading occurs during
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`the same boot sequence in which a boot device controller receives a command over
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`a computer bus to load the portion of boot data,” as recited in claim 118. See, e.g.,
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`Ex. 2017 at 43:13-14 (“[U]pon the next boot sequence, the boot device controller
`
`would pre-load that data into the local cache memory along with the other boot
`
`data previously on the list.”); id. at 41:7-9 (“Since the same portions of the
`
`operating system must be loaded upon each boot process, it is advantageous . . . to
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`preload such portions and not wait until . . . commanded to load the operating
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`system.”); id. at 42:17-20 (“[U]pon each subsequent power-on/reset [ ], the data
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`IPR2016-01737
`MOTION TO AMEND
`storage controller would retrieve and read the stored list [ ] and proceed to preload
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`
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`the boot data specified on the list . . . into the onboard cache memory (step 77)”; id.
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`at Fig. 7B; Back Decl. ¶ 26.
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`The ’267 application also provides support for “accessing the preloaded
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`portion of the boot data in the compressed form from the volatile memory,” as
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`recited in claim 118. See, e.g., Ex. 2017 at 41:12-14 (“Once the data is preloaded,
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`when the computer system bus issues its first read commands to the data storage
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`controller seeking operating system data, the data will already be available in the
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`cache memory of the data storage controller.”); id. at 41:16-17 (“Before
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`transmission to the bus, if the data was stored in compressed format on the boot
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`device, the data will be decompressed.”); id. at 12:17-18 (“Preferably, the cache 13
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`is implemented in SDRAM (static dynamic random access memory).”); id. at 43:4-
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`6 (“If the host computer issues a request for boot data that is pre-loaded in the local
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`memory of the data storage controller (affirmative result in step 80), the request is
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`immediately serviced using the preloaded boot data (step 81).”); Back Decl. ¶ 27.
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`The ’267 application further provides support for “decompressing the
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`accessed portion of the boot data in the compressed form at a rate that decreases a
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`boot time of the operating system relative to loading the operating system utilizing
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`boot data in an uncompressed form,” as recited in claim 118. For example, the ’267
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`application discloses that “if the [data] was stored in compressed format on the
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`IPR2016-01737
`MOTION TO AMEND
`boot device, the data will be decompressed,” Ex. 2017 at 41:16-18, and further
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`
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`discloses “accelerated data retrieval.” See, e.g., id. at 10:18-22; Back Decl. ¶ 28.
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`The ’267 application also provides support for “updating the boot data list,”
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`as recited in claim 118. For example, the ’267 application discloses that “the data
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`storage controller would update the boot data list by recording any changes in the
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`actual data requests as compared to the expected data requests already stored in the
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`list (step 83).” Ex. 2017 at 43:10-12; Back Decl. ¶ 29.
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`The ’267 application also provides support for “wherein the decompressed
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`portion of boot data comprises a portion of the operating system,” as claim 118
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`recites. For example, the ’267 application states “[t]he boot data may comprise
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`program code associated with an operating system of the computer system, an
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`application program, and a combination thereof.” Id. at 6:6-8; Back Decl. ¶ 30.
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`Independent Claim 122
`B.
`The ’267 application provides support for “a processor,” “a first volatile
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`memory,” and “a second memory configured to store boot data in a compressed
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`form for booting the system and a logic code associated with the processor,” as
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`recited in claim 122. For example, the ’267 application discloses at least five
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`system architecture embodiments, which depict a processor, a first volatile
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`memory, and a second memory. See Ex. 2017 at Figs. 1-5, 9:23-23:5. Moreover,
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`Figures 3-5 show that a first memory may be a RAM (random access memory),
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`IPR2016-01737
`MOTION TO AMEND
`which a POSA would understand to be a volatile memory. Back Decl. ¶ 31. The
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`
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`’267 application also discloses that the second memory may store boot data and
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`logic code associated with the processor in a compressed form. See, e.g., Ex. 2017
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`at 16:14-22, 17:12-15, 21:5-22:8; 46:3-5; Back Decl. ¶ 31.
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`The ’267 application further provides support for “wherein the processor is
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`configured to preload a portion of the boot data in the compressed form into the
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`first volatile memory, the portion of the boot data in the compressed form being
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`associated with a boot data list used for booting the system,” as recited in claim
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`122. For example, the ’267 application discloses that “the data storage controller
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`can proceed to pre-load the portions of the computer operating system from the
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`boot device (e.g., hard disk) into the on-board cache memory.” Id. at 41:4-5; Back
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`Decl. ¶ 32. The ’267 application further discloses that the on-board cache memory
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`may be a volatile memory, id. at 12:16-18, and that the data to be loaded into the
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`first memory may be associated with a boot data list, see, e.g., id. at 42:4-16, and
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`may be in compressed form. See, e.g., id. at 46:3-5, 46:9-50:12; Back Decl. ¶ 32.
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`The ’267 application also provides support for “wherein the preloading
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`comprises transferring the portion of the boot data in the compressed form into the
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`first volatile memory,” as recited in claim 122. See, e.g., Ex. 2017 at 41:4-5
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`(“[T]he data storage controller can proceed to pre-load the portions of the
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`computer operating system from the boot device (e.g., hard disk) into the on-board
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`IPR2016-01737
`MOTION TO AMEND
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`cache memory.”) (emphasis added); Back Decl. ¶ 33.
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`The ’267 application further provides support for “wherein the preloading
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`occurs during the same boot sequence in which a boot device controller receives a
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`command over a computer bus to load the portion of the boot data,” as recited in
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`claim 122. See, e.g., Ex. 2017 at 43:13-14 (“[U]pon the next boot sequence, the
`
`boot device controller would pre-load that data into the local cache memory along
`
`with the other boot data previously on the list.”); id. at 41:7-9 (“Since the same
`
`portions of the operating system must be loaded upon each boot process, it is
`
`advantageous . . . to preload such portions and not wait until . . . commanded to
`
`load the operating system.”); id. at 42:17-20 (“[U]pon each subsequent power-
`
`on/reset [ ], the data storage controller would retrieve and read the stored list [ ]
`
`and proceed to preload the boot data specified on the list . . . into the onboard
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`cache memory (step 77)”; id. at Fig. 7B; Back Decl. ¶ 34.
`
` The ’267 application likewise discloses that “the processor is configured . . .
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`to access the preloaded portion of the boot data in the compressed form from the
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`first volatile memory,” as recited in claim 122. See, e.g., Ex. 2017 at 41:12-14
`
`(“Once the data is preloaded, when the computer system bus issues its first read
`
`commands to the data storage controller seeking operating system data, the data
`
`will already be available in the cache memory of the data storage controller.”); id.
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`at 41:16-17 (“Before transmission to the bus, if the data was stored in compressed
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`IPR2016-01737
`MOTION TO AMEND
`format on the boot device, the data will be decompressed.”); id. at 12:17-18
`
`
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`(“Preferably, the cache 13 is implemented in SDRAM (static dynamic random
`
`access memory).”); id. at 43:4-6 (“If the host computer issues a request for boot
`
`data that is pre-loaded in the local memory of the data storage controller
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`(affirmative result in step 80), the request is immediately serviced using the
`
`preloaded boot data (step 81).”); Back Decl. ¶ 35.
`
`The ’267 application also provides support for the processor being
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`configured “to decompress the accessed portion of the boot data in the compressed
`
`form at a rate that decreases a boot time of the system relative to booting the
`
`system with uncompressed boot data,” as recited claim 122. For example, the ’267
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`application discloses that “if the [data] was stored in compressed format on the
`
`boot device, the data will be decompressed,” id. at 41:16-18, and “accelerated data
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`retrieval.” See, e.g., id. at 10:18-22; Back Decl. ¶ 36.
`
`The ’267 application also provides support for the processor being
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`configured “to update the boot data list,” as claim 122 recites. For example, the
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`’267 application states “the data storage controller would update the boot data list
`
`by recording any changes in the actual data requests as compared to the expected
`
`data requests already stored in the list (step 83).” Id. at 43:10-12; Back Decl. ¶ 37.
`
`Independent Claim 124
`C.
`The ’267 application provides support for the preamble of claim 124, “A
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`IPR2016-01737
`MOTION TO AMEND
`method for providing accelerated loading of an operating system in a computer
`
`
`
`system.” For example, the ’267 application discloses that it is directed “to data
`
`storage controllers employing lossless and/or lossy data compression and
`
`decompression to provide accelerated loading of operating systems and application
`
`programs.” Id. at 5:20-6:1; Back Decl. ¶ 38.
`
`The ’267 application also provides support for “preloading boot data in a
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`compressed form into a volatile memory,” as recited in claim 124. Back Decl. ¶ 39.
`
`Specifically, the ’267 application discloses that “the data storage controller can
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`proceed to pre-load the portions of the computer operating system from the boot
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`device (e.g., hard disk) into the on-board cache memory.” Ex. 2017 at 41:4-5; Back
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`Decl. ¶ 39. The ’267 application further discloses that the data to be loaded may be
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`in compressed form. See, e.g., Ex. 2017 at 46:3-5, 46:9-50:12; Back Decl. ¶ 39.
`
`The ’267 application also discloses that the preloading may occur into volatile
`
`memory. See, e.g., Ex. 2017 at 12:16-18 (“[T]he cache 13 may comprise volatile or
`
`non-volatile memory, or any combination thereof. Preferably, the cache 13 is
`
`implemented in SDRAM (static dynamic random access memory).”); Back Decl. ¶
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`39. A person of ordinary skill in the art (“POSA”) would have understood that
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`SDRAM is volatile memory. Back Decl. ¶ 39.
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`The ’267 application also discloses “the boot data in the compressed form
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`being associated with a boot data list from a boot device,” as recited in claim 124.
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`IPR2016-01737
`MOTION TO AMEND
`See, e.g., Ex. 2017 at 42:4-16; Back Decl. ¶ 40. The ’267 application further
`
`
`
`supports “wherein the preloading comprises transferring the boot data in the
`
`compressed form into the volatile memory,” as recited in claim 124. See, e.g., Ex.
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`2017 at 41:4-5 (“[T]he data storage controller can proceed to pre-load the portions
`
`of the computer operating system from the boot device (e.g., hard disk) into the
`
`on-board cache memory.”) (emphasis added); Back Decl. ¶ 41.
`
`The ’267 application also supports “wherein the preloading occurs during
`
`the same boot sequence in which a boot device controller receives a command over
`
`a computer bus to load the boot data,” as recited in claim 124. See, e.g., Ex. 2017
`
`at 43:13-14 (“[U]pon the next boot sequence, the boot device controller would pre-
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`load that data into the local cache memory along with the other boot data
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`previously on the list.”); id. at 41:7-9 (“Since the same portions of the operating
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`system must be loaded upon each boot process, it is advantageous . . . to preload
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`such portions and not wait until . . . commanded to load the operating system.”); id.
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`at 42:17-20 (“[U]pon each subsequent power-on/reset [ ], the data storage
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`controller would retrieve and read the stored list [ ] and proceed to preload the boot
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`data specified on the list . . . into the onboard cache memory (step 77)”; id. at Fig.
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`7B; Back Decl. ¶ 42.
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`The ’267 application also provides support for “accessing the preloaded boot
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`data in the compressed form from the volatile memory,” as recited in claim 124.
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`See, e.g., Ex. 2017 at 41:12-14 (“Once the data is preloaded, when the computer
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`
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`system bus issues its first read commands to the data storage controller seeking
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`operating system data, the data will already be available in the cache memory of
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`the data storage controller.”); id. at 41:16-17 (“Before transmission to the bus, if
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`the data was stored in compressed format on the boot device, the data will be
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`decompressed.”); id. at 12:17-18 (“Preferably, the cache 13 is implemented in
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`SDRAM (static dynamic random access memory).”); id. at 43:4-6 (“If the host
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`computer issues a request for boot data that is pre-loaded in the local memory of
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`the data storage controller (affirmative result in step 80), the request is immediately
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`serviced using the preloaded boot data (step 81).”); Back Decl. ¶ 43.
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`The ’267 application further provides support for “decompressing the
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`accessed boot data in the compressed form at a rate that decreases a time to load
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`the operating system relative to loading the operating system with the boot data in
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`an uncompressed form,” as recited in claim 124. For example, the ’267 application
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`discloses that “if the [data] was stored in compressed format on the boot device,
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`the data will be decompressed,” Ex. 2017 at 41:16-18, and further discloses
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`“accelerated data retrieval.” See, e.g., id. at 10:18-22; Back Decl. ¶ 44.
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`The ’267 application also discloses “updating the boot data list,” as recited
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`in claim 124. Id. at 43:10-12 (“the data storage controller would update the boot
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`data list by recording any changes in the actual data requests as compared to the
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`expected data requests already stored in the list (step 83).”); Back Decl. ¶ 45.
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`
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`D. Dependent Claims
`Proposed substitute dependent claims 119-121, 123, and 125-173 are
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`amended only to reflect their new dependency from the substitute independent
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`claims and to be consistent with the substitute independent claims. The ’267
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`application’s specification supports all features of the proposed substitute
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`dependent claims. Back Decl. ¶ 46.
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`The ’267 application provides support for compressing additional data (as
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`recited in claim 121 and 168), including using a data compression encoder (as
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`recited in claim 123), and storing that additional data (as recited in claim 169). See,
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`e.g., Ex. 2017 at 16:14-22, 17:12-15, 43:6-10, 46:9-50:12; Back Decl. ¶ 47.
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`The ’267 application provides support for updating the boot data list by
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`associating additional data with the list (as recited in claim 119 and 121), updating
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`the list based on the accessing of data (as recited in claim 171, 172, 173), or
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`accessing data not associated with the list and updating the list based on that
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`accessing (as in claim 161, 163, and 165). See, e.g., id. at 43:3-14; Back Decl. ¶ 48.
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`The ’267 application further provides support for removing an association of data
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`from the list, including disassociating non-accessed data from the list, as recited in
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`claims 120, 162, 164, and 166. See, e.g., id. at 43:15-19. The ’267 application
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`further provides support for storing the list in a non-volatile memory, as recited in
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`claim 167. See, e.g., id. at 21:5-22:8, 42:14-16; Back Decl. ¶ 48.
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`
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`The ’267 application provides support for the data being a program code
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`associated with an operating system (as recited in claims 126, 138, and 150), an
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`application program, or both (as recited in claims 131, 143, and 155). See, e.g., id.
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`at 6:6-8; Back Decl. ¶ 49. The ’267 application further provides support that the
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`data (as recited in claims 125, 137, 142, 149), operating system (as recited in
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`claims 130 and 154), or application program (as recited in the claims 132, 144, and
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`156) may be a plurality of files. See, e.g., id. at 46:19-22; Back Decl. ¶ 49.
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`The ’267 application provides support for compressing data to provide it in a
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`compressed form, including using a compression encoder or data compression
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`engine, as recited in claims 123, 127, 139, and 151; and decompressing data
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`utilizing a decompression decoder, as recited in claims 128, 140, and 152. See, e.g.,
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`id. at 41:12-18, 46:9-52:11; Back Decl. ¶ 50.
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`The ’267 application provides support for the memory being a physical
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`memory, as recited in claims 129, 141, and 153. See, e.g., id. at 12:16-18, 41:3-5;
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`Back Decl. ¶ 51. The ’267 application provides support for accessing preloaded
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`data via direct memory access, as recited in dependent claims 133, 145, and 157.
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`See, e.g., id. at 13:5-23; Back Decl. ¶ 52.
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`The ’267 application support the use of dictionary encoding, as recited in
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`dependent claims 134, 146, and 158; and Lempel-Ziv encoding, as recited in
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`dependent claims 135, 147, and 159. See, e.g., id. at 47:6-13; Back Decl. ¶ 53. The
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`
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`’267 application also supports using a plurality of encoders, as recited in dependent
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`claims 136, 148, 160, and 170. See, e.g., id. at 47:14-48:11; Back Decl. ¶ 54.
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`V. Level of Ordinary Skill in the Art
`Patent Owner agrees that one of ordinary skill would be a person with a
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`Bachelor’s Degree in electrical engineering, computer engineering, or a related
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`area of study, such as computer science. See Ex. 1003 ¶ 15. In addition, this person
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`would have between three and five years of practical experience in the design and
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`implementation of computer systems, such as personal computers. Alternatively, a
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`person with a Master’s Degree in the area of electrical engineering, computer
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`engineering, or a related area of study, such as computer science, and somewhat
`
`less practical experience would be similarly qualified. See Back Decl. ¶¶ 17-21.
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`VI. Claim Construction
`In other papers submitted in this Proceeding as well as IPR2016-01365,
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`Patent Owner and Dr. Back have proposed constructions for certain terms that
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`appear in the proposed substitute claims. In this Motion to Amend, Patent Owner
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`does not rely on those or any other specific claim constructions to demonstrate
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`patentability of the proposed substitute claims over the prior art. Rather, Patent
`
`Owner demonstrates patentability based on the new limitations of the proposed
`
`substitute claims. The meaning of the new limitations—taken as a whole—is
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`discernible from their context and would be readily understood by those of
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`
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`ordinary skill in the art. See Back Decl. ¶ 55.
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`VII. The Proposed Substitute Claims Are Patentable Over the Prior Art
`Patent Owner respectfully believes that it should not bear the burden of
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`either persuasion or production regarding the patentability of the amended claims
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`as a condition of allowing them, and further believes that the Board may not sua
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`sponte question the patentability of the