Trials@uspto.gov
`571.272.7822
`
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`
`
`
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` Paper No. 59
`
` Entered: March 16, 2018
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`REALTIME DATA LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01738
`Patent 8,880,862 B2
`____________
`
`
`
`Before DEBRA K. STEPHENS, GEORGIANNA W. BRADEN, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318 and 37 C.F.R. § 42.73
`
`
`
`
`
`571.272.7822
`
`
`
`
`
`
` Paper No. 59
`
` Entered: March 16, 2018
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`REALTIME DATA LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01738
`Patent 8,880,862 B2
`____________
`
`
`
`Before DEBRA K. STEPHENS, GEORGIANNA W. BRADEN, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318 and 37 C.F.R. § 42.73
`
`
`
`
`
`
`IPR2016-01738
`Patent 8,880,862 B2
`
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`INTRODUCTION
`
`I.
`
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`
`§ 6, and this Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`
`and 37 C.F.R. § 42.73. For the reasons that follow, we determine that
`
`Petitioner has shown by a preponderance of the evidence that claims 8–12,
`
`14–22, 59–82, 101–104, 114, 115, and 117 (“the challenged claims”) of U.S.
`
`Patent No. 8,880,862 B2 (Ex. 1001, “the ’862 Patent”) are unpatentable.
`
`Additionally, we grant Patent Owner’s Contingent Motion to Amend with
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`respect to proposed substitute claims 118–173.
`
`A. Procedural History
`
`
`
`Apple, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`
`an inter partes review of the challenged claims the ’862 Patent. Realtime
`
`Data, LLC (“Patent Owner”) timely filed a Preliminary Response (Paper 6,
`
`“Prelim. Resp.”).
`
`Pursuant to 35 U.S.C. § 314(a), we instituted an inter partes review of
`
`(1) all claims challenged as unpatentable under 35 U.S.C. § 103(a)1 in view
`
`of Sukegawa2 and Dye3; (2) all claims challenged as unpatentable under
`
`35 U.S.C. § 103(a) in view of Sukegawa, Dye, and Settsu4; (3) all claims
`
`challenged as unpatentable under 35 U.S.C. § 103(a) in view of Sukegawa,
`
`
`1 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. § 100 et seq. effective on March 16, 2013. The ’862 patent issued
`from an application filed before March 16, 2013; therefore, we apply the
`pre-AIA versions of the statutory bases for unpatentability.
`2 U.S. Patent No. 5,860,083, issued Jan. 12, 1999 (Ex. 1005, “Sukegawa”).
`3 U.S. Patent No. 6,145,069, filed Apr. 26, 1999, issued Nov. 7, 2000
`(Ex. 1008, “Dye”).
`4 U.S. Patent No. 6,374,353 B1, filed Mar. 3, 1999, issued Apr. 16, 2002
`(Ex. 1006, “Settsu”).
`
`2
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`Patent 8,880,862 B2
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`Dye, and Burrows5; (4) all claims challenged as unpatentable under 35
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`U.S.C. § 103(a) in view of Sukegawa, Dye, Settsu, and Burrows; and (5) all
`
`claims challenged as unpatentable under 35 U.S.C. § 103(a) in view of
`
`Sukegawa, Dye, and Zwiegincew6. See Paper 7 (“Dec. to Inst.”), 27–28.
`
`After institution of trial, Patent Owner filed a Patent Owner Response
`
`(Paper 21, “PO Resp.”), to which Petitioner filed a Reply (Paper 24,
`
`“Reply”). In addition, Patent Owner filed a Motion to Amend Claims (Paper
`
`20, “Mot. to Amend.”), which was opposed by Petitioner (Paper 25,
`
`“Opp.”). Patent Owner submitted a Reply in Support of its Motion to
`
`Amend. Paper 33, “PO Reply.” During the intervening time, new case law
`
`was issued by the Court of Appeal for the Federal Circuit,7 and the parties
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`submitted additional briefing based on the new case law. Papers 39 (“Pet.
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`Suppl. Opp.”), 41 (“PO Suppl. Response in Support of Mot. to Amend.”), 45
`
`(“Pet. Reply to PO Suppl. Response in Support of Mot. to Amend.”).
`
`Patent Owner also filed objections to Evidence in Petitioner’s Reply
`
`(Paper 46) and a Motion to Exclude Evidence (Paper 48). Petitioner
`
`opposed the Motion to Exclude (Paper 50) and Patent Owner submitted a
`
`Reply in support of its Motion to Exclude (Paper 55). In addition Patent
`
`Owner filed a list of alleged improper reply arguments (Paper 34) to which
`
`Petitioner filed a Reply (Paper 35).
`
`
`5 Michael Burrows et al., On-line Data Compression in a Log-structured
`File System (1992) (Ex. 1007, “Burrows”).
`6 U.S. Patent No. 6,317,818 B1, filed Mar. 30, 1999, issued Nov. 13, 2001
`(Ex. 1010, “Zwiegincew”).
`7 See Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017),
`discussed infra Section II.
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`3
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`An oral argument was held on January 8, 2018. A transcript of the
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`oral argument is included in the record.8 Paper 58 (“Tr.”).
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`B. Related Proceedings
`
`
`
`The parties identify the following cases as related to the challenged
`
`patent: Realtime Data, LLC v. Microsoft Corp., Case No. 4:14-cv-00827
`
`(E.D. Tex.), Realtime Data, LLC v. Apple, Inc., Case No. 6:15-cv-00885
`
`(E.D. Tex.), and Realtime Data, LLC v. Apple, Inc., Case No. 3:16-cv-02595
`
`(N.D. Cal.) (transferred from Realtime Data, LLC v. Apple, Inc., Case No.
`
`6:15-cv-00885 (E.D. Tex.)). Pet. 1; Paper 5, 2 (Patent Owner’s Mandatory
`
`Notice).
`
`C. The ’862 Patent
`
`
`
`The ’862 Patent relates to “providing accelerated loading of operating
`
`system and application programs upon system boot or application launch,”
`
`and the use of data compression and decompression techniques for such
`
`purpose. Ex. 1001, 1:20–26. The specification discusses the limits of prior
`
`art storage devices, particularly the significant bandwidth limitations of
`
`“mass storage devices” such as hard disk drives. Id. at 1:43–57, 2:9–18.
`
`According to the specification,
`
`“[A]ccelerated” data storage comprises receiving a digital data
`stream at a data transmission rate which is greater than the data
`storage rate of a target storage device, compressing the input
`stream at a compression rate that increases the effective data
`
`
`8 Petitioner filed Objections to Demonstrative Exhibits. Paper 54. In this
`Final Written Decision, we rely directly on the arguments presented properly
`in the parties’ briefs and the evidence of record. The demonstrative exhibits
`were only considered to the extent they are consistent with those arguments
`and evidence; therefore, the objections are overruled.
`
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`storage rate of the target storage device and storing the
`compressed data in the target storage device.
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`Id. at 5:41–47. One embodiment of the ’862 Patent is illustrated in Figure 1,
`
`reproduced below.
`
`
`
`As shown in Figure 1, data storage controller 10 is “operatively connected”
`
`to hard disk 11 and to host system’s bus 16. Id. at 5:63–6:53. Controller 10
`
`includes cache 13 for data storage/preloading, and data compression engine
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`12 for data compression/decompression. Id. at 5:63–6:53, 20:50–22:11.
`
`The ’862 Patent explains that, following reset or power on of a computer
`
`system, the “initial bus commands inevitably instruct the boot device
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`controller [e.g., controller 10] to retrieve data from the boot device (such as
`
`a disk) [e.g., hard disk 11] for the operating system.” Id. at 20:36–49.
`
`D. Illustrative Claims
`
`
`
`As noted above, an inter partes review was instituted as to claims 8–
`
`12, 14–22, 59–82, 101–104, 114, 115, and 117 of the ’862 Patent. Dec. to
`
`Inst. 27–28. Claims 8, 11, and 14 are independent. Claim 8 is illustrative of
`
`the challenged claims, and is reproduced below:
`
`8. A method of loading an operating system for booting a
`computer system, comprising:
`
`storing a portion of the operating system in a compressed
`form in a first memory;
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`loading the portion of the operating system from the first
`memory to a second memory, the portion of the operating
`system being associated with a boot data list;
`accessing the loaded portion of the operating system from the
`second memory in the compressed form;
`decompressing the accessed portion of the operating system
`to provide a decompressed portion of the operating
`system;
`utilizing the decompressed portion of the operating system to
`at least partially boot the computer system; and
`updating the boot data list,
`wherein the portion of the operating system is accessed and
`decompressed at a rate that is faster than accessing the
`loaded portion of the operating system from the first
`memory if the portion of the operating system was to be
`stored in the first memory in an uncompressed form.
`
`Ex. 1001, 27:35–54.
`
`A. Claim Construction
`
`II. ANALYSIS
`
`
`
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (“We
`
`conclude that the regulation represents a reasonable exercise of the
`
`rulemaking authority that Congress delegated to the Patent Office.”). Under
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`that standard, and absent any special definitions, we give claim terms their
`
`ordinary and customary meaning, as would be understood by one of ordinary
`
`skill in the art at the time of the invention. In re Translogic Tech., Inc.,
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`504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor, however, may provide a
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`meaning for a term that is different from its ordinary meaning by defining
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`the term in the specification with “reasonable clarity, deliberateness, and
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`Patent 8,880,862 B2
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`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
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`Limitations, however, are not to be read from the specification into the
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`claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). In addition,
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`the Board may not “construe claims during [an inter partes review] so
`
`broadly that its constructions are unreasonable under general claim
`
`construction principles.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d
`
`1292, 1298 (Fed. Cir. 2015), overruled on other grounds by Aqua Prods.,
`
`Inc., 872 F.3d at 1290.
`
`
`
`The parties dispute the proper construction of the terms “boot data
`
`list” and “non-accessed boot data.”
`
`1. “boot data list”
`
`Patent Owner contends the term “boot data list” should mean “record
`
`used to identify and load boot data into memory.” PO Resp. 18. According
`
`to Patent Owner, both the specification and the provisional application to
`
`which the ’862 patent claims priority establish that the claimed “boot data
`
`list” is a record of boot data separate from the boot data itself. Id. Patent
`
`Owner argues that “[b]oot data comprises information such as program code
`
`relating to portions of the operating system and certain application
`
`programs.” Id. (citing Ex. 1001, 3:47–50; Ex. 2010, 58). Patent Owner
`
`reasons that the system stores boot data in a compressed form on a boot
`
`device (id. at 18–19 (citing Ex. 1001, 3:50–52, 3:60–61; Ex. 2010, 58)),
`
`loads boot data into memory upon initialization of the computer system (id.
`
`at 19 (citing Ex. 1001, 3:45–46, 4:16–17; Ex. 2010, 58)), and services
`
`requests for boot data using the loaded boot data (id. (citing Ex. 1001, 3:46–
`
`47, 4:1–3, 4:17–19, 21:40–61, Fig. 7B)). Patent Owner then argues that “the
`
`intrinsic evidence describes a ‘boot data list’ as comprising a list of data—
`
`specifically, boot data—that is to be used for booting a computer system.”
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`7
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`Id. (citing Ex. 1001, 3:44–45, 4:15–16; Ex. 2010, 58). Patent Owner further
`
`argues that “[i]n one exemplary embodiment, a data storage controller
`
`retrieves and reads the ‘boot data list’ upon power-on/reset and preloads the
`
`boot data specified on the list into memory.” Id. at 20 (citing Ex. 1001,
`
`21:43–48, Figs. 7B, 8A, 8B).
`
`Petitioner contests Patent Owner’s proffered construction arguing that
`
`is it overly narrow and improperly imports limitations. Reply 1. Petitioner
`
`contends boot data list should be given its ordinary meaning and at least be
`
`construed broadly enough to include a list of data associated with data
`
`requests expected to result from a system power-on/reset. Id. at 1–2 (citing
`
`Pet. 3–6, 11–16). According to Petitioner, Patent Owner improperly
`
`attempts to import functional use to the term “boot data list,” which renders
`
`other claim language directed to use of the boot data list redundant and
`
`unnecessary. Id. at 2. Specifically, Petitioner argues that Patent Owner’s
`
`reliance on dependent claim 6 is misplaced, because claim 6 explicitly
`
`defines the “boot data list” as being “used for booting the system,” not
`
`“used to identify and load boot data into memory.” Id. at 2–3 (citing PO
`
`Resp. 20). Petitioner also argues that the terms “load” and “into memory”
`
`are additional features added in claim 6 that would be rendered duplicative
`
`and redundant if also imported into the term “boot data list.” Id. at 3.
`
`Petitioner additionally notes that the term “identify” is not used in the claims
`
`(or elsewhere in the specification). Id. Petitioner concludes that the claims
`
`do not support Patent Owner’s attempt to limit “boot data list” as being
`
`“used to identify and load boot data into memory.” Id.
`
`Petitioner further contends that Patent Owner’s proposed claim
`
`construction is not supported by the ’862 patent’s specification, specifically
`
`the description of Figure 7B. Id. at 3 (citing PO Resp. 21–23). According to
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`Petitioner, Patent Owner recognizes that this description is merely “one
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`exemplary embodiment” of the ’862 patent, but fails to explain sufficiently
`
`why the claimed boot data list should be limited to this embodiment. Id.
`
`(citing PO Resp. 20). Additionally, Petitioner argues that the ’862 patent
`
`does not limit use of the boot data list “to identify and load boot data into
`
`memory,” as Patent Owner contends, citing to the ’862 patent’s disclosure of
`
`“a list of boot data used for booting a computer system.” Id. at 2 (citing
`
`Ex. 1001, Abst., 3:42–59).
`
`We are charged with interpreting claim terms according to their
`
`broadest reasonable construction in light of the specification of the patent in
`
`which they appear. 37 C.F.R. § 42.100(b). Therefore, we consult the
`
`patent’s specification to help clarify the meaning of claim terms. Trading
`
`Techs. Int’l, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1352 (Fed. Cir. 2010)
`
`(holding claims “must be read in view of the specification, of which they are
`
`a part” (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979
`
`(Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996))). We must be
`
`careful, however, not to import improperly limitations into the claims or to
`
`read a particular embodiment appearing in the written description into the
`
`claim if the claim language is broader than the embodiment. In re Van
`
`Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Given our mandate under
`
`37 C.F.R. § 42.100(b) and the patent’s various descriptions of “boot data
`
`list,” we understand that the examples laid out in the specification are
`
`exemplary and are not to be read as limitations in the claims.
`
`Patent Owner’s proffered claim construction imports selected
`
`limitations from specific embodiments in the specification into the claim and
`
`provides an overly narrow interpretation of the claim term. Additionally,
`
`Patent Owner has not pointed to any definitions or disavowals in the
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`specification or otherwise clearly explained why the specification’s
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`disclosure of “boot data lists” should not guide our claim construction
`
`analysis. Thus, we are unpersuaded by Patent Owner’s contentions, which
`
`appear to be based on a narrow reading of the claim that is inconsistent with
`
`the broadest reasonable interpretation of the claims.
`
`Accordingly, we decline to adopt Patent Owner’s claim construction
`
`as it would limit unnecessarily the scope of the claims. Instead, we find the
`
`broadest reasonable construction of “boot data list” to encompass a “list of
`
`boot data.”
`
`2. “non-accessed boot data”
`
`Patent Owner contends that the term “non-accessed boot data,” as
`
`used in claims 20, 102, and 104, should mean “boot data identified in the
`
`boot data list that was not requested during system boot-up.” PO Resp. 23
`
`(citing Ex. 2008 ¶¶ 65–70). According to Patent Owner, “the specification
`
`explains that ‘non-accessed boot data’ is boot data that has been retrieved
`
`and recorded in the boot data list during a previous system boot-up but was
`
`not requested during a subsequent system boot-up.” Id. at 23–24. Patent
`
`Owner argues that if the boot data is not requested during system boot-up,
`
`then that boot data is “excluded” from the boot data list. Id. at 26 (citing
`
`Ex. 1001, Fig. 7B, 22:5–11).
`
`Petitioner contests Patent Owner’s position, arguing that the intrinsic
`
`record does not limit functionally the term “non-accessed” to “not
`
`requested” or limit temporally the term “non-accessed” to “during system
`
`boot-up.” Reply 4. Rather, according to Petitioner, under the broadest
`
`reasonable interpretation, a person of ordinary skill in the art would have
`
`viewed the term “non-accessed boot data” per its ordinary meaning as
`
`simply boot data that was not accessed. Id. at 4–5 (citing Ex. 1003 ¶¶ 470–
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`481). Petitioner argues that the embodiments in the specification are non-
`
`limiting examples. Id. at 5. Petitioner further argues that Patent Owner’s
`
`reliance on the embodiment of Figure 7B is misplaced because the very next
`
`embodiment illustrated in Figures 8a and 8b includes references to a “non-
`
`requested data block” “[d]uring the application launch process.” Id. (citing
`
`Ex. 1001, 22:12–23:26; Ex. 1002 (Part 1), 156–157, 160–162). Petitioner
`
`notes that Patent Owner’s citations include the application launch
`
`embodiment, which contradicts limiting non-accessed boot data to only data
`
`“not requested during system boot-up.” Id. at 5–6. Petitioner concludes that
`
`adopting Patent Owner’s construction would exclude improperly a specific
`
`embodiment (during application launch) that Patent Owner cites now in
`
`support of its construction and also cited during prosecution to show written
`
`description support for the disputed term. Id. at 6.
`
`We determine that Patent Owner’s proposed construction is unduly
`
`narrow and improperly attempts to import limitations from the specification.
`
`Rather, we agree with Petitioner’s position and we construe “non-accessed
`
`boot data” as “boot data that has not been accessed.”
`
`3. Additional claim terms
`
`We determine that no additional claim terms require express
`
`construction (see Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`
`803 (Fed. Cir. 1999) (Only terms which are in controversy need to be
`
`construed, and only to the extent necessary to resolve the controversy)).
`
`B. Principles of Law
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
`
`between the subject matter sought to be patented and the prior art are such
`
`that the subject matter as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness is resolved on the basis of underlying
`
`factual determinations, including (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
`
`i.e., secondary considerations. See Graham v. John Deere Co. of Kansas
`
`City, 383 U.S. 1, 17–18 (1966).
`
`“A determination of whether a patent claim is invalid as obvious
`
`under § 103 requires consideration of all four Graham factors, and it is error
`
`to reach a conclusion of obviousness until all those factors are considered.”
`
`Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en
`
`banc) (citations omitted). “This requirement is in recognition of the fact that
`
`each of the Graham factors helps inform the ultimate obviousness
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`determination.” Id.
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`“In an [inter partes review], the petitioner has the burden from the
`
`onset to show with particularity why the patent it challenges is
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`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
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`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`
`petitions to identify “with particularity . . . the evidence that supports the
`
`grounds for the challenge to each claim”)). This burden never shifts to
`
`Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
`
`F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek,
`
`Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of
`
`proof in inter partes review). Furthermore, Petitioner cannot satisfy its
`
`burden of proving obviousness by employing “mere conclusory statements.”
`
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
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`Thus, to prevail in an inter partes review, Petitioner must explain how
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`the proposed combinations of prior art would have rendered the challenged
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`claims unpatentable. At this final stage, we determine whether a
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`preponderance of the evidence of record shows that the challenged claims
`
`would have been obvious over the proposed combinations of prior art.
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`We analyze the instituted grounds of unpatentability in accordance
`
`with the above-stated principles.
`
`C. Level of Ordinary Skill in the Art
`
`In determining whether an invention would have been obvious at the
`
`time it was made, we consider the level of ordinary skill in the pertinent art
`
`at the time of the invention. Graham, 383 U.S. at 17. “The importance of
`
`resolving the level of ordinary skill in the art lies in the necessity of
`
`maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v.
`
`Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The person of ordinary
`
`skill in the art is a hypothetical person who is presumed to have known the
`
`relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573,
`
`1579 (Fed. Cir. 1995). The level of ordinary skill in the art may be reflected
`
`by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`
`Cir. 2001). Factors that may be considered in determining the level of
`
`ordinary skill in the art include, but are not limited to, the types of problems
`
`encountered in the art, the sophistication of the technology, and educational
`
`level of active workers in the field. GPAC, 57 F.3d at 1579. In a given case,
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`one or more factors may predominate. Id. Generally, it is easier to establish
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`obviousness under a higher level of ordinary skill in the art. Innovention
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`Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A
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`less sophisticated level of skill generally favors a determination of
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`nonobviousness . . . while a higher level of skill favors the reverse.”).
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`Petitioner’s declarant, Charles J. Neuhauser, Ph.D. (“Dr. Neuhauser”),
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`opines that a person of ordinary skill in the art relevant to the ’685 patent
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`would have had “a Bachelor’s Degree in electrical engineering, computer
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`engineering, or a related area of study” as well as “between three and five
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`years of practical experience in the design and implementation of computer
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`systems, such as personal computers.” Ex. 1003 ¶ 15. Dr. Neuhauser
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`further opines that, in the alternative, a person with “a Master’s Degree in
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`the area of electrical engineering, computer engineering, or a related area of
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`study and somewhat less practical experience would be similarly qualified.”
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`Id.
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`Patent Owner does not dispute Dr. Neuhauser’ testimony. See
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`generally PO Resp. Patent Owner’s Declarant, Dr. Godmar Back (“Dr.
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`Back”), however, provides his own assessment regarding a person of
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`ordinary skill in the art relevant to the ’862 patent and agrees with Dr.
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`Neuhauser’s testimony. Ex. 2008 ¶ 54.
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`We do not observe meaningful differences between the parties’
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`assessments of a person of ordinary skill in the art. We further note that
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`either assessment appears consistent with the level of ordinary skill in the art
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`at the time of the invention as reflected in the prior art in the instant
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`proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
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`2001). Our analysis in this Decision is supported by either assessment.
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`Based on our review of the ’862 patent, the types of problems and solutions
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`described in the ’862 patent and cited prior art, and the testimony of Dr.
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`Neuhauser and Dr. Back, we adopt and apply Dr. Back’s definition of a
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`person of ordinary skill in the art at the time of the claimed invention for
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`purposes of this Decision.
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`D. Overview of the Asserted Prior Art
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`1.
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`Sukegawa
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`Sukegawa is a U.S. Patent titled “Data Storage System Having Flash
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`Memory and Disk Drive” and relates to “a data storage system using a flash
`
`memory unit and an HDD [(hard disk drive)].” Ex. 1005, [54], [57]. Figure
`
`1 of Sukegawa is reproduced below.
`
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`Figure 1 is “a block diagram showing a main part of a data storage system
`
`according to the present invention.” Id. at 3:44–45. As shown in Figure 1, a
`
`data storage system includes flash memory unit 1, hard disk drive (HDD) 2,
`
`cache system controller 3, and device driver 5. Id. at 4:4–14. Sukegawa
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`teaches device driver 5 controls flash memory 1 under management of the
`
`operation system of host system 4. Id. at 4:12–14. Controller 3 performs
`
`data input/output control for flash memory unit 1 and HDD 2 via respective
`
`device driver 5. Id. at 4:17–21. The flash memory unit is used, for example,
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`to store “data which is used frequently for a relatively long time period.” Id.
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`at Abstr. Such data could include “control information necessary for starting
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`an application program (AP) and an OS [(operating system)].” Id. at 2:65–
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`3:3. Although such control information is stored on the HDD, the data may
`
`be stored also on the flash memory unit so that the OS may be started using
`
`the control information on the flash memory unit instead of the HDD. Id. at
`
`6:45–56. This is advantageous because the flash memory unit has a “higher
`
`access speed,” which allows the OS to be started more quickly. Id. at 6:54–
`
`58.
`
`Figure 4 of Sukegawa, reproduced below, teaches an embodiment of a
`
`system having a data storage mode for storing control information necessary
`
`for starting the OS in the permanent storage area 10A of flash memory unit
`
`1, when the OS is started in a series of operations from turn-on of power to
`
`completion of the starting operation. Id. at 6:20–26.
`
`
`
`As illustrated in Figure 4 of Sukegawa, above, when the system is
`
`switched on and the user sets the data storage mode via the user interface,
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`controller 3 stores control information in permanent storage area 10A in
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`flash memory unit 1 and when the OS is started at the time of the next
`
`turning-on of power, the control information necessary for starting the OS is
`
`read out not from the HDD2 but from permanent storage area 10A or cache
`
`memory area, and transferred to the host system 4. Id. at 6:27–54. “Thus,
`
`the control information can be accessed from the permanent storage area
`
`10A in the flash memory unit 1 having a higher access speed than the HDD
`
`2. As a result, the OS can be started at higher speed.” Id. at 6:45–58.
`
`
`
`
`
`2.
`
`Dye
`
`Dye is a U.S. Patent titled “Parallel Decompression and Compression
`
`System and Method for Improving Storage Density and Access Speed for
`
`Non-Volatile Memory and Embedded Memory Devices.” Ex. 1008, at [54].
`
`Dye relates to controllers for flash or embedded memory that include data
`
`compression and decompression engines “for increased effective memory
`
`density and improved bandwidth.” Id. at 1:17–22, 2:42–46. According to
`
`Dye, such a controller enables conventional flash memory to “achieve higher
`
`bandwidth, more effective density, with less system power and noise.” Id. at
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`3:3–12, 3:23–28. The technology permits data to be “saved in either a
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`normal or compressed format, retrieved from the Flash Memory Array for
`
`MPU [(microprocessing unit)] execution in a normal or compressed format,
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`or transmitted and stored on a medium in a normal or compressed format.”
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`Id. at 3:66–4:8.
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`Figure 10B of Dye is reproduced below.
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`
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`
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`Figure 10B, above, illustrates a preferred embodiment “provid[ing] a
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`parallel implementation of dictionary based (or history table based)
`
`compression/decompression.” Ex. 1008 18:61–63. In the preferred
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`embodiment illustrated in Dye’s Figure 10B, the history table becomes a
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`four symbol parallel flow. Id. at 19:15–17. “[Four] symbols are analyzed in
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`parallel, and multiple compressed outputs may also be provided in parallel.”
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`Id. at 19:17–19. “Other alternate embodiments may contain a plurality of
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`compression windows for decompression of multiple streams.” Id. at 19:19–
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`21.
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`Figure 13 of Dye is reproduced below.
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`Figure 13, above, is a hardware diagram illustrating “operation of the
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`
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`parallel compression algorithm.” Id. at 22:66–67. Each entry of the history
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`table contains a symbol of data, which is compared with the input stream.
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`Id. at 23:1–3. In Figure 13, Entry D Data Byte 602 is compared with each
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`symbol of input data stream 610, shown as four data bytes, Data 0, 1, 2, and
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`3. Id. at 23:3–7. Comparators 608 compare each data byte to Entry D Data
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`Byte 602, generating four compare signals (D0 through D3), with D1
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`through D3 being used by the next entry in the history table and D0 being
`
`used by Results Calculation 606. Id. at 23:7–24. Results Calculation 606
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`sends Output Mask and Output Count to logic shown in Dye’s Figure 14.
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`Id. at 23:16–24.
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`
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`3.
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`Settsu
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`Settsu is a U.S. Patent titled “Information Processing Apparatus
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`Method [sic] of Booting Information Processing Apparatus at a High Speed”
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`and relates to “[a] method of booting up an information processing
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`apparatus.” Ex. 1006, [54], [57]. One embodiment of Settsu is shown in
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`Figure 1, reproduced below.
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`Figur1 illustrates an information processing apparatus with boot device 3,
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`firmware 6, memory device 2, and boot block 4. Id. at 8:2–8. According to
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`Settsu, boot block 4 includes a mini operating system (OS) module that has
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`OS functions required for bootstrap processing, and an OS main body
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`module located in file system 5 that provides the apparatus with the OS
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`functions not included on mini OS module 7. Id. at 8:13–21.
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`
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`Two other embodiments of Settsu are shown in Figures 6 and 13,
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`reproduced below.
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`
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`Figures 6 and 13 illustrate dividing up Mini OS Module 7. Id. at 10:59–
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`11:3, 13:66–14:6. Settsu teaches that Mini OS Module 7 can include OS
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`loading and decompression processing module 50 so that modules can be
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`stored as compressed files on a boot device. Id. at 14:6–12, 14:58–63. Each
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`of these modules is decompressed each time it is loaded into memory, and
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`“the time required for I/O [(input/output)] processing can be reduced” as a
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`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–
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`15:4.
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`
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`Settsu also teaches that its function definition file 71 lists OS modules
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`that must be loaded and initialized during a boot process. See Ex. 1006,
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`16:48–17:20, Fig. 20.
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`As shown in Settsu’s Figure 20, reproduced above, AP execution and OS
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`load processing module 72 in step ST213, loads one of the plurality of OS
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`functional modules listed in function definition file 71 into memory 2. Ex.
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`1006, 17:7–15.
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`
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`
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`4.
`
`Burrows
`
`Burrows is a conference report titled “On-line Data Compression in a
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`Log-structured File System,” which “appeared in the proceedings of the
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`Fifth International Conference on Architectural Support for Programming
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`Languages and Operating Systems (ASPLOS-V), 12–15 Octobe
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