`UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________
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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 IPR2016-01738
`Patent 8,880,862
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`______________________
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`PETITIONER’S REQUEST FOR REHEARING
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`I.
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`Proceeding No. IPR2016-01738
`Attorney Docket No. 39521-0025IP2
`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED
`Petitioner hereby requests rehearing under 37 CFR § 42.71(d), in response to
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`the Final Written Decision (“Decision”) in proceeding IPR2016-01738. In the
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`Decision, the Board found that “Petitioner fails to establish that proposed substitute
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`claims 174-218 are obvious” over prior art and combinations of prior art set forth
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`in Petitioner’s Papers 25, 39, and 45. Pap. 59, 23. This finding is based on a
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`misapprehension and/or oversight of Settsu and Petitioner’s explanation of how
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`Settsu preloads during the same boot sequence in which a boot device controller
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`receives a command to load. For this reason, Petitioner requests rehearing.
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`Notably, the Decision states that, “[a]lthough we do not adopt Patent
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`Owner’s construction of ‘preloading,’ because the added limitation of the
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`amended claim requires preloading to occur in the same boot sequence, we
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`understand Settsu to load after a command has been received over a computer
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`bus (i.e., in a different boot sequence).”1 Pap. 59, 64. Here, in the underlined
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`portion, the claimed “preloading during the same boot sequence” is tacitly
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`construed to cover something other than “load[ing] … after a command has been
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`received over a computer bus.” Id. This result cannot be reached without
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`misapprehension or oversight of:
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`(a) the plain language of the substitute claims themselves, which recite either
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`1 Throughout this paper, unless indicated, emphasis in quotations is added.
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`1
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`Proceeding No. IPR2016-01738
`Attorney Docket No. 39521-0025IP2
`that “preloading occurs during the same boot sequence in which a boot
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`device controller receives a command over a computer bus to load” or,
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`alternatively, that “preloading occurs upon initialization of the computer
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`system and during the same boot sequence in which a boot device controller
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`receives a command over a computer bus to load” (Pap. 20, iii-v (presenting
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`substitute independent claims 174, 177, and 179));
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`(b) cited intrinsic evidence related to specification description relevant to
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`preloading, in particular, a portion of the ’862 Patent specification noting
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`that “the preloading process may be … continued after the boot process
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`begins (in which case booting and preloading are performed
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`simultaneously)” (’862 Patent, 21:48-52; see also Pap. 20, 6, 9-10, 12); and
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`(c) cited deposition testimony of Patent Owner’s expert Dr. Back who, when
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`asked whether a POSITA would have understood that the data storage
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`controller may receive requests for preloaded boot data while it is preloading
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`other boot data, testified on cross-examination that: “[y]es, that is correct,”
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`adding that “it is possible for the data storage controller to … engage in the
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`preloading process while already servicing requests for preloaded data
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`during that second phase where booting and preloading may be performed
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`simultaneously” (Ex. 1046, 120:13-121:11; see also Pap. 49, 5-6).
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`Indeed, as demonstrated in this request and the arguments advanced
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`2
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`
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`Proceeding No. IPR2016-01738
`Attorney Docket No. 39521-0025IP2
`throughout this proceeding, no claim language or record evidence justifies a
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`narrowed construction of “preloading … during the same boot sequence” that
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`excludes “load[ing] after a command has been received over a computer bus.”
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`Rather, this construction is reached only through oversight or misapprehension of
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`the intrinsic record, which, as indicated above, demonstrates the opposite by
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`establishing that preloading encompasses processes performed before or “after a
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`command has been received over a computer bus,” as disclosed by Settsu. Pap. 25,
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`10-18; Pap. 33, 7-8.
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`As the Decision notes, “[i]n an inter partes review, claim terms in an
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`unexpired patent are interpreted according to their broadest reasonable construction
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`in light of the specification of the patent in which they appear.” Pap. 59, 6 (citing
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`37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46
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`(2016)). As such, and absent any special definitions, claim terms are given “their
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`ordinary and customary meaning, as would be understood by one of ordinary skill
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`in the art at the time of the invention.” Pap. 59, 6 (citing In re Translogic Tech.,
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`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007)).
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`Under this standard, proper consideration of the full record compels a
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`conclusion that Settsu describes “preloading … during the same boot sequence in
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`which a boot device controller receives a command over a computer bus to load
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`the portion of boot data,” as recited in the substitute claims. Accordingly,
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`3
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`
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`Proceeding No. IPR2016-01738
`Attorney Docket No. 39521-0025IP2
`Petitioner requests that the Board reconsider its Decision with respect to the
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`substitute claims based upon the full record, and respectfully submits that the
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`Board should find that substitute claims 174-218 are obvious over Settsu, as set
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`forth in Petitioner’s Papers 25, 39, and 45.
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`II. LEGAL STANDARDS
`A request for rehearing “must specifically identify all matters the party
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`believes the Board misapprehended or overlooked, and the place where each
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`matter was previously addressed in a motion, an opposition, or a reply.” 37 CFR §
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`42.71(d). “When rehearing a decision on petition, a panel will review the decision
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`for an abuse of discretion.” 37 CFR § 42.71(c). “An abuse of discretion is found
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`if the decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an
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`erroneous conclusion of law; (3) rests on clearly erroneous fact finding; or (4)
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`involves a record that contains no evidence on which the Board could rationally
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`base its decision.” Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821
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`F.3d 1359, 1367 (Fed. Cir. 2016); Koninklijke Philips Electronics N.V. v. Cardiac
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`Science Operating Co., 590 F.3d 1326, 1334 (Fed. Cir. 2010).
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`III. BASIS FOR RELIEF REQUESTED
`The Decision erred in interpreting “preloading … during the same boot
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`sequence” to cover something other than the preloading performed by Settsu. As
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`set forth in Papers 25, 39, and 45, Petitioner explained how Settsu meets (1) the
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`4
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`Proceeding No. IPR2016-01738
`Attorney Docket No. 39521-0025IP2
`plain language of the substitute claims, (2) Settsu aligns with disclosed examples in
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`the ’862 Patent’s specification, and (3) Settsu aligns with the explanation of the
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`substitute claim language offered by Patent Owner’s own expert. Pap. 25, 10-25;
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`Pap. 39, 8-12; Pap. 45, 1-3. As explained below, the Decision misapprehended or
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`overlooked these arguments.
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`A. The Decision misapprehended or overlooked the plain language of
`the substitute claims, and overlooked Petitioner’s arguments and
`Dr. Neuhauser’s testimony regarding the same
`The Decision credited the substitute claims with language that was not
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`recited. Notably, the claims fail to require preloading to occur prior to receipt of a
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`command to load; indeed, this requirement is narrower than (and thereby
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`inconsistent with the broadest reasonable interpretation of) the temporal limitations
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`on preloading that appear within the plain language of the amended claims
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`themselves, which recite that “preloading occurs during the same boot sequence
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`in which a boot device controller receives a command over a computer bus to
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`load, or, alternatively, that “preloading occurs upon initialization of the computer
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`system and during the same boot sequence in which a boot device controller
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`receives a command over a computer bus to load.” See, e.g., Pap. 59, 64; Pap. 20,
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`iii-v.
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`Language indicating that preloading must begin before a request for the boot
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`data has been received over the computer bus, as the Decision requires, is different
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`5
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`Proceeding No. IPR2016-01738
`Attorney Docket No. 39521-0025IP2
`from alternative and expressly-stated timing requirements set forth by the claims.
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`Pap. 45, 1 (quoting Pap. 41, 10-11); see also Ex. 1053, ¶¶ 63-71. That is, the
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`claims are not without timing requirements; they simply include different timing
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`requirements than applied in the Decision. Instead of imposing a requirement that
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`preloading occur before receipt of any command, the substitute claims specify that
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`preloading must occur “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 portion of boot data
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`….” Pap. 37, 8-9; Ex. 1045, ¶¶ 63-71.
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`In an earlier portion of the Decision, the Board seems to have acknowledged
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`that “preloading … during the same boot sequence in which a boot device
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`controller receives a command over a computer bus,” as recited in the substitute
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`claims, is broad enough to encompass preloading after a request and/or command
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`to load is received over a computer bus. See Pap. 59, 4. Specifically, and in the
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`course of rejecting a construction of “preloading” set forth by Patent Owner, the
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`Board wrote that, “[g]iven the plain language of the proposed amended claims, we
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`do not agree that preloading requires a process to begin before a request,
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`because the claim only requires it to [occur] during the same boot sequence.”
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`IPR2016-01738 Pap. 59, 54.
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`This earlier acknowledgement that the plain language of the substitute
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`claims does not require the preloading “process to begin before a request” stands in
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`6
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`Proceeding No. IPR2016-01738
`Attorney Docket No. 39521-0025IP2
`stark contrast to the Decision’s later determination that Settsu does not preload,
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`because it only “load[s] after a command has been received over a computer bus
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`(i.e., in a different boot sequence).”2 Pap. 59, 64.
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`As Dr. Neuhauser explained, “one of ordinary skill would have understood
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`that preloading in the substitute claims is broad enough to include transfer of
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`data from disk into memory based on a command to load that is received by the
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`controller over a computer bus.” Ex. 1045, ¶ 71.
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`This is true because the plain language of the claims requires preloading to
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`occur “during the same boot sequence” in which the command to load is received,
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`but does not specify where in that boot sequence the preloading must occur relative
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`to the command to load; squarely leaving open the potential for the preloading to
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`occur before or after the command. Pap. 20, 6-7, 9-10; Pap. 39, 8-9.
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`Misapprehension or oversight would be required to attribute such an
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`additional temporal limitation to a term the claim term that is devoid of language
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`2 The plain language of independent substitute claim 177 further confirms that the
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`Board’s earlier acknowledgment of breadth is proper, by its recitation that
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`“preloading occurs upon initialization of the computer system and during the
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`same boot sequence in which a boot device controller receives a command over a
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`computer bus to load the boot data.”
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`7
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`Proceeding No. IPR2016-01738
`Attorney Docket No. 39521-0025IP2
`justifying the same, particularly under the broadest reasonable interpretation and
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`despite the argued existence of contrary testimony from patent owner’s expert and
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`contrary disclosure within the specification, each described in greater detail below.
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`See, e.g., Pap. 20, iii-v; Pap. 25, 10-18; Pap. 39, 8-9; Pap. 45, 1; Ex. 1045, ¶¶ 63-
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`71. Accordingly, Petitioner requests reconsideration.
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`B. The Decision misapprehended or overlooked relevant disclosure
`from the ’862 Patent’s specification, and misapprehended or
`overlooked Petitioner’s arguments and Dr. Neuhauser’s testimony
`regarding the same
`The meaning attributed by the Decision to “preloading ... during the same
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`boot sequence” is defied by the very embodiment cited by Patent Owner when
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`offering that language in its Motion to Amend. Specifically, when offering support
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`for the limitation where “preloading occurs during the same boot sequence,” Patent
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`Owner cited to the embodiment depicted in Fig. 7B of the ’862 Patent, which is
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`reproduced below. See Pap. 20, 6 (citing Ex. 2017, 41:7-9, 42:17-20, 43:13-14,
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`FIG. 7B), 9-10, 12.
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`8
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`Proceeding No. IPR2016-01738
`Attorney Docket No. 39521-0025IP2
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`The Fig. 7B embodiment cited by Patent Owner involves
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`preloading/prefetching boot data at step 77, and then receiving a request for the
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`preloaded boot data over a computer bus at step 79, after an intervening step 78 in
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`which “the boot process begins (i.e., the storage controller is initialized and the
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`system bus reset is deasserted).” ’862 Patent, 21:24-22:4.
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`Notably, and as Petitioner previously observed in its arguments, this same
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`embodiment contemplates that “depending on the resources of the given system
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`(e.g., memory, etc.), the preloading process may be completed prior to
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`9
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`Proceeding No. IPR2016-01738
`Attorney Docket No. 39521-0025IP2
`commencement of the boot process, or continued after the boot process begins (in
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`which case booting and preloading are performed simultaneously).” ’862 Patent,
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`21:48-52; Pap. 37, 8 (quoting ’862 Patent, 21:43-22:4).
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`Thus, the very embodiment cited by Patent Owner to demonstrate enabling
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`disclosure of “preloading … during the same boot sequence,” like the claim
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`language itself, fails to suggest that preloading is temporally limited with respect to
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`when a command is received over a computer bus. Instead, the specification
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`explicitly contemplates preloading both before (“prior to commencement of the
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`boot process”) and after (“continued after the boot process begins”). ’862 Patent,
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`21:48-52; Pap. 37, 8. Indeed, from the ’862 Patent’s specification, a POSITA
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`would have understood that preloading is broad enough to include transfer of data
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`from disk into memory based on a command to load that is received by the
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`controller over a computer bus. Pap. 37, 8-9 (citing Ex. 1043, ¶¶63-71).
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`Accordingly, Petitioner requests reconsideration because the Decision
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`misapprehended or overlooked relevant disclosure from the ’862 Patent’s
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`specification, and misapprehended or overlooked Petitioner’s arguments and Dr.
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`Neuhauser’s testimony regarding that disclosure. See, e.g., ’862 Patent, 21:24-
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`22:4, 21:48-52, FIG. 7B; Pap. 39, 8-9 (citing Ex. 1045, ¶¶63-71).
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`10
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`Proceeding No. IPR2016-01738
`Attorney Docket No. 39521-0025IP2
`C. The Decision misapprehended or overlooked the deposition
`testimony of Patent Owner’s expert Dr. Back, and Petitioner’s
`arguments regarding the same
`The Decision misapprehended or overlooked the deposition testimony of
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`Patent Owner’s expert Dr. Back, who admitted under cross-examination that the
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`data storage controller may engage in the preloading process while already
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`servicing requests for preloaded data (i.e., after a command to load). Specifically,
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`when asked whether a POSITA would have understood that the data storage
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`controller may receive requests for preloaded boot data while it is preloading other
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`boot data, Dr. Back testified as follows: “[y]es, that is correct,” adding that “it is
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`possible for the data storage controller to … engage in the preloading process
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`while already servicing requests for preloaded data during that second phase
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`where booting and preloading may be performed simultaneously.” Ex. 1046,
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`120:13-121:11; see also Pap. 49, 5-6.
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`Here, by confirming that preloading in the ’862 Patent occurs after a
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`command has been received, Dr. Back endorsed an understanding of “preloading”
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`that is broader than the implicit construction required by the Decision.
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`Further demonstrating that it is unreasonable and inconsistent with the BRI
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`standard to inject the relied-upon temporal limitation into the claim, in related
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`proceeding IPR2016-01365, Dr. Back offered an alternative construction of
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`“preloading” that was also without the temporal limitation relied upon in the
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`11
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`Proceeding No. IPR2016-01738
`Attorney Docket No. 39521-0025IP2
`instant Decision. In that proceeding, Dr. Back asserted, in light of the same
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`specification, that the broadest reasonable interpretation of preloading is
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`“transferring data in anticipation of immediate or near-in-time use,” without further
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`temporal qualification. Pap. 45, 1 (citing IPR2016- 01365, Ex. 2003, ¶¶47-55); see
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`also Pap. 49, 4-5.3
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`Accordingly, Petitioner requests reconsideration because the Decision
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`misapprehended or overlooked Dr. Back’s deposition testimony, in which he
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`admitted under cross-examination that the data storage controller may engage in
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`the preloading process while already servicing requests for preloaded data (i.e.,
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`after a command to load).
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`IV. CONCLUSION
`For the foregoing reasons, Petitioner respectfully submits that, under the
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`BRI standard, proper consideration of the full record compels a conclusion that the
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`3 Notably, when Dr. Back was asked whether a person of ordinary skill would have
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`had the same understanding of the meaning of the term “preloading” when reading
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`the claims of the ’608 patent and the amended claims of the ’862 patent, Dr. Back
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`testified on cross-examination that “I would say they would have the same
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`understanding.” Pap. 49, 4-5 (citing Ex. 1046, 82:4-83:8).
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`12
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`Proceeding No. IPR2016-01738
`Attorney Docket No. 39521-0025IP2
`prior art teaches and suggests preloading “during the same boot sequence in which
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`a boot device controller receives a command over a computer bus to load the
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`portion of boot data,” as recited in the substitute claims. Accordingly, Petitioner
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`requests that the Board reconsider its Decision with respect to the substitute claims
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`based upon the full record, and respectfully submits that the Board should find that
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`substitute claims 174-218 are obvious over the prior art and combinations of prior
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`art set forth in Petitioner’s Papers 25, 39, and 45.
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`Dated: April 16, 2018
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`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
`
`
`Attorneys for Petitioner
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`13
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`Proceeding No. IPR2016-01738
`Attorney Docket No. 39521-0025IP2
`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 April 16, 2018, a complete and entire copy of this Petitioner’s
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`Request for Rehearing was provided via email to the Patent Owner by serving the
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`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:
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`
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`Joe.Edell.IPR@fischllp.com
`Richard.Zhang.IPR@fischllp.com
`Desmond.Jui.IPR@fischllp.com
`William@noroozipc.com
`Kayvan@noroozipc.com
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`/Diana Bradley/
`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
`
`
`
`
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