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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.,
`Petitioner,
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`v.
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`REALTIME DATA LLC,
`Patent Owner.
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`Case IPR2016-01737
`Patent 8,880,862
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`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION
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`I.
`II.
`III.
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`Proceeding No.: IPR2016-01737
`Attorney Docket: 39521-0025IP1
`TABLE OF CONTENTS
`Patent Owner Relies Upon an Improper Construction of “Preloading” .......... 1
`Settsu and Zwiegincew Render Obvious the Substitute Claims ..................... 2
`Sukegawa and Dye, Further Combined with either of Esfahani or Kroeker,
`Render Obvious the Substitute Claims ............................................................ 3
`IV. Conclusion ....................................................................................................... 5
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`i
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`Proceeding No.: IPR2016-01737
`Attorney Docket: 39521-0025IP1
`UPDATED EXHIBIT LIST
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`APPLE-1001
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`U.S. Patent No. 8,880,862 to Fallon, et al. (“the ’862 patent”)
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`APPLE-1002
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`Excerpts from the Prosecution History of the ’862 Patent (“the
`Prosecution History”)
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`APPLE-1003
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`Declaration of Dr. Charles J. Neuhauser (“Dec.”)
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`APPLE-1004
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`Curriculum Vitae of Dr. Charles J. Neuhauser
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`APPLE-1005
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`U.S. Patent No. 5,860,083 (“Sukegawa”)
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`APPLE-1006
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`U.S. Patent No. 6,374,353 (“Settsu”)
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`APPLE-1007
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`Burrows et al., “On-line Data Compression in a Log-structured
`File System” (1992) (“Burrows”)
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`APPLE-1008
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`U.S. Patent No. 6,145,069 (“Dye”)
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`APPLE-1009
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`U.S. Patent No. 7,190,284 (“Dye ’284”)
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`APPLE-1010
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`U.S. Patent No. 6,317,818 (“Zwiegincew”)
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`APPLE-1011
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`Jeff Prosise, DOS 6 – The Ultimate Software Bundle?, PC
`MAGAZINE, Apr. 13, 1993 (“Prosise”)
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`APPLE-1012
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`Excerpts from John L. Hennessey & David A. Patterson,
`Computer Architecture a Quantitative Approach (1st ed. 1990)
`(“Hennessey”)
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`APPLE-1013
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`(RESERVED)
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`APPLE-1014
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`File, Microsoft Press Computer Dictionary (3d ed. 1997)
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`APPLE-1015
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`Excerpts from Tom Shanley & Don Anderson, PCI System
`Architecture, (4th ed. 1999) (“Shanley”)
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`ii
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`APPLE-1016
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`APPLE-1017
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`Proceeding No.: IPR2016-01737
`Attorney Docket: 39521-0025IP1
`Jacob Ziv & Abraham Lempel, A Universal Algorithm for
`Sequential Data Compression, IT-23 No. 3 IEEE
`TRANSACTIONS ON INFORMATION THEORY 337 (1977)(“Ziv”)
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`James A. Storer & Thomas G. Szymanski, Data Compression
`via Textual Substitution, 19 No. 4 JOURNAL OF THE
`ASSOCIATION FOR COMPUTING MACHINERY (1982)(“Storer”)
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`APPLE-1018
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`Program File, Microsoft Press Computer Dictionary (3d ed.
`1997)
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`APPLE-1019
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`Direct Memory Access, Microsoft Press Computer Dictionary
`(3d ed. 1997)
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`APPLE-1020
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`RAM and RAM Cache, Microsoft Press Computer Dictionary
`(3d ed. 1997)
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`APPLE-1021
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`Decoder, Microsoft Press Computer Dictionary (3d ed. 1997)
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`APPLE-1022
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`(RESERVED)
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`APPLE-1023
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`Excerpts from Kyle Loudon, Mastering Algorithms with C
`(1999) (“Loudon”)
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`APPLE-1024
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`Excerpts from Michael Barr, Programming Embedded Systems
`in C and C++ (1999) (“Barr”)
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`APPLE-1025
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`Excerpts from Eric Pearce, Windows NT in a Nutshell (1999)
`(“Pearce”)
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`APPLE-1026
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`Excerpts from Tim O’Reilly, Troy Mott, and Walter Glenn,
`Windows NT in a Nutshell (1999) (“O’Reilly”)
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`APPLE-1027
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`Cache, Microsoft Press Computer Dictionary (3d ed. 1997)
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`APPLE-1028
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`Table, Microsoft Press Computer Dictionary (3d ed. 1997)
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`APPLE-1029
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`Access, Microsoft Press Computer Dictionary (3d ed. 1997)
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`iii
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`Proceeding No.: IPR2016-01737
`Attorney Docket: 39521-0025IP1
`Second Declaration of Dr. Charles Neuhauser
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`APPLE-1030
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`APPLE-1031 U.S. Patent No. 6,117,187 (“Staelin”)
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`APPLE-1032 U.S. Patent No. 5,625,809 (“Dysart”)
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`APPLE-1033 U.S. Patent No. 5,590,331 (“Lewis”)
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`APPLE-1034 Directory, The Dictionary of Computing & Digital Media
`(1999)
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`APPLE-1035 Directory, Prentice Hall’s Illustrated Dictionary of Computing
`(Third Edition, 1998)
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`APPLE-1036 U.S. Patent No. 5,915,252 (“Misheski”)
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`APPLE-1037 U.S. Patent No. 5,809,295 (“Straub”)
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`APPLE-1038 U.S. Patent No. 6,633,968 (“Zwiegincew ’968”)
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`APPLE-1039 Defendant Apple Inc.’s Invalidity Contentions, Case No. 4:16-
`cv-02595-JD (N.D. Cal.)
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`APPLE-1040
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`APPLE-1041
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`Transcript of June 20, 2017 Deposition of Dr. Back
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`Encoder, Microsoft Press Computer Dictionary (5th ed. 2002)
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`APPLE-1042
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`Encoder, The Computer Desktop Encyclopedia (2nd ed. 1999)
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`APPLE-1043
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`APPLE-1044
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`APPLE-1045
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`APPLE-1046
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`APPLE-1047
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`Third Declaration of Dr. Charles Neuhauser
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`RESERVED
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`RESERVED
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`Transcript of November 2, 2017 Deposition of Dr. Back
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`Transcript of December 7, 2017 Deposition of Dr. Back
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`iv
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`
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`Proceeding No.: IPR2016-01737
`Attorney Docket: 39521-0025IP1
`Jim Handy, Flash Memory vs. HDDs – Which Will Win? (2005)
`(“Handy”)
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`Falan Yinug, The Rise of the Flash Memory Market: Its Impact
`on Firm Behavior and Global Semiconductor Trade Patterns,
`U.S. ITC JOURNAL OF INTERNATIONAL COMMERCE AND
`ECONOMICS (2007) (“Yinug”)
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`v
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`APPLE-1048
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`APPLE-1049
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`I.
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`Proceeding No.: IPR2016-01737
`Attorney Docket: 39521-0025IP1
`Patent Owner Relies Upon an Improper Construction of “Preloading”
`The substitute claims specify that “preloading” must occur “during the same
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`boot sequence in which a boot device controller receives a command over a
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`computer bus to load the portion of boot data.” Notably absent from the claims is
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`language requiring that preloading “must begin before a request for the boot data
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`has been received over [the] computer bus,” as Realtime contends. Pap. 39, 10-11.
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`To circumvent this problem with its own amendments, Realtime seeks to read this
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`additional limitation into the term “preloading” itself. Id.
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`Yet, Realtime and its expert Dr. Back previously submitted a construction of
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`“preloading” in the related IPR2016-01365 proceeding, asserting, in light of the
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`same specification, that the “broadest reasonable interpretation of ‘preloading’ …
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`is ‘transferring data in anticipation of immediate or near-in-time use.’” IPR2016-
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`01365, Ex. 2003, ¶¶47-55. As such, Realtime’s present assertion that the BRI of
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`“preloading” is narrower than its previous construction should be rejected.
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`Moreover, the ’862’s specification demonstrates that “preloading” is a
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`process for retrieving and storing (i.e., loading) data, albeit in advance of that
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`data’s future use. ’862, 21:3-12, 21:43-59. Such a process necessarily includes a
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`request (e.g., to move data into cache) to make data available for future use. Id.
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`The existence or absence of a request to load data is, therefore, not a meaningful
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`distinction between loading and preloading.
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`1
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`II.
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`Proceeding No.: IPR2016-01737
`Attorney Docket: 39521-0025IP1
`Settsu and Zwiegincew Render Obvious the Substitute Claims
`Settsu, both alone and in combination with Zwiegincew, performs the
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`claimed “preloading.” In response to a command received over a bus during a boot
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`sequence, Settsu preloads compressed boot data into cache in anticipation of an
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`expected future request for that data. A-1043, ¶72. Thereafter, the preloaded data is
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`decompressed and, when the future request is ultimately received, the data is used
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`to boot Settsu’s OS. Id.; Settsu, 3:6-25, 13:49-15:5. Thus, Settsu preloads the data
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`prior to the expected request being received. A-1043, ¶¶72-73.
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`Zwiegincew’s preloading techniques also are applicable to boot, and a
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`POSITA would have found it obvious to apply those techniques in Settsu. A-1043,
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`¶74. Realtime’s insistence otherwise is based on an incomplete understanding of
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`Settsu. See Pap. 39, 12. Indeed, Dr. Back admitted that he failed to consider, prior
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`to signing his Oct. 11, 2017 declaration, Settsu’s description of a file used to
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`load/initialize some OS modules prior to the others to allow for specific processes
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`to occur faster during boot. A-1046, 149; Settsu, 16:7-17:62, FIGS. 17-20. As Dr.
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`Neuhauser explains1, a POSITA would have been led by that description to load
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`1Realtime argues that Apple’s response incorporates arguments by Dr. Neuhauser.
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`These arguments were presented in Apple’s brief and properly reinforced by Dr.
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`Neuhauser’s testimony, which did not expand beyond the response arguments.
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`2
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`Proceeding No.: IPR2016-01737
`Attorney Docket: 39521-0025IP1
`and initialize virtual memory module 22 first to enable Zwiegincew’s techniques
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`during the remainder of Settsu’s boot. A-1043, ¶¶75-78.
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`Dr. Back’s most recent declaration is similarly misguided, as he insists that
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`Settsu’s module 22 “likely would not operate until most of the rest of the OS were
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`loaded,” while neglecting to consider that Settsu describes loading and initializing
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`“a minimum number of OS functional modules required for … an application to be
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`automatically executed and run on the OS when booting,” and that the remaining
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`OS modules are loaded and initialized after “execution” of that application. Ex.
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`2027, ¶85; Settsu, 8:24-46, 2:8-13, 16:7-17:62, FIGS. 2, 17-20; A-1043, ¶75-78.
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`III. Sukegawa and Dye2, Further Combined with either of Esfahani or
`Kroeker, Render Obvious the Substitute Claims
`Realtime attempts to distinguish the Sukegawa-Esfahani combination by
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`asserting that claimed “preloading” must begin before any request for boot data has
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`been received over a computer bus. Pap. 39, 10-11. Yet, as discussed above, this
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`assertion is unfounded. Realtime attempts no similar distinction with respect to the
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`Sukegawa-Kroeker combination, and Dr. Back confirmed that Kroeker “transfer[s]
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`2Realtime complains that “Apple’s brief contains no explanation” in support of
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`combining Sukegawa with Dye. Pap. 39, 7-9. Apple’s brief, however, explains that
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`“a POSITA would have maintained use of the features of Sukegawa, Dye, and the
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`other references as applied in the Petition to the challenged claims.” Pap. 37, 1.
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`3
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`Proceeding No.: IPR2016-01737
`Attorney Docket: 39521-0025IP1
`data from disk to cache in anticipation of a request for that data from the host
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`system,” and that “this transfer occurs before a request for the data is received from
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`the host system.” A-1047, 112-113. As Dr. Neuhauser explains, a POSITA would
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`have followed Kroeker’s teachings when combining Sukegawa with Kroeker and
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`Dye. A-1043, ¶22. Consequently, the resulting system would “preload” under any
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`of Realtime’s various constructions.
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`Realtime argues that considerations of speed and cost would have dissuaded
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`a POSITA from making the Sukegawa-based combinations. Pap. 39, 2-7. But, a
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`POSITA would have been motivated by speed and cost to make the combinations.
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`A-1043, ¶¶22-23, 31, 44-50. With respect to speed, Kroeker, e.g., explains that
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`preloading during a period “before the host computer is ready for data but after the
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`disk drive has completed its reset routine” further “increas[es] boot speed of a host
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`computer” by “shortening the load time.” Id., Abs, 1:9-12; 1:55-2:14; A-1043, ¶22.
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`A POSITA would have found it obvious for at least some portion of boot data to be
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`stored on Sukegawa’s HDD 2 given capacity/cost issues for flash memory, and for
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`that portion, to apply Kroeker’s preloading techniques to shorten load time and,
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`thereby, increase boot speed. A-1043, ¶22; Kroeker, Abs, 1:9-12; 1:55-2:14.
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`Realtime attempts to undermine the cost motivation based on ads that are
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`cherry-picked from three issues of PC Magazine, and that are not representative of
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`prices for flash and RAM that a POSITA would have encountered when
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`4
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`Proceeding No.: IPR2016-01737
`Attorney Docket: 39521-0025IP1
`considering whether to modify Sukegawa’s system. See Pap. 39, 4. Setting aside
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`that two of the issues were published after the ’862 Patent’s earliest possible
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`priority date, a POSITA would have understood that the advertised prices cannot
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`reasonably be compared, as the ads for flash pertain to memory cards used in
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`“cameras and the like,” while the ads for RAM instead concern SDRAM DIMM
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`intended to be integrated into desktop PCs. Exs. 2028-2030; A-1047, 47-48, 68. In
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`Dr. Back’s words, the prices of the flash memory cards “would be dominated” by
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`the cost of the flash itself; the price of the SDRAM DIMM, on the other hand,
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`would have reflected many components additional to the RAM itself. A-1047, 73.
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`Moreover, if the ads were deemed reliable, they undermine Realtime by
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`suggesting a 33% decrease in SDRAM DIMM price between 12/1999 and 3/2000,
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`amidst a smaller (20%) decrease in flash cards price. Exs. 2028-2030; A-1047, 63.
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`These trends would have encouraged preloading into RAM in Sukegawa’s system.
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`In absolute terms, historical data also demonstrates that flash was more expensive
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`than RAM in Feb. 2000. See Exs. A-1048, A-1049. This data is consistent with Dr.
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`Back’s prior testimony that a POSITA would have been encouraged to use RAM
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`for preloading, and would have been discouraged from using flash, due to the high
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`cost of flash and its slower speed. A-1046, 58-59, 64-69, 117-118.
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`IV. Conclusion
`Petitioner submits that Realtime’s Motion to Amend should be denied.
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`5
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`Date: December 18, 2017
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`Proceeding No.: IPR2016-01737
`Attorney Docket: 39521-0025IP1
`Respectfully submitted,
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`/W. Karl Renner/
`W. Karl Renner, Reg. No. 41,265
`Jeremy Monaldo, Reg. No. 58,680
`Andrew B. Patrick, Reg. No. 63,471
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Attorneys for Petitioner
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`6
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`Proceeding No.: IPR2016-01737
`Attorney Docket: 39521-0025IP1
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`
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(1) and 42.6(e)(4)(iii), the undersigned
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`certifies that on December 18, 2017, a complete and entire copy of this Petitioner’s
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`Reply to Patent Owner’s Opposition was provided via email to the Patent Owner
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`by serving the email correspondence addresses of record as follows:
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`Joseph F. Edell, Richard Z. Zhang, Desmond S. Jui (pro hac vice)
`Fisch Sigler LLP
`5301 Wisconsin Avenue NW, Fourth Floor
`Washington, DC 20015
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`William P. Rothwell, Kayvan B. Noroozi (pro hac vice)
`Noroozi PC
`2245 Texas Drive, Suite 300
`Sugar Land, TX 77479
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`Email: Joe.Edell.IPR@fischllp.com
`Richard.Zhang.IPR@fischllp.com
`Desmond.Jui.IPR@fischllp.com
`William@nooozipc.com
`Kayvan@noroozipc.com
`
`/Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
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