`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`REALTIME DATA, LLC D/B/A IXO,
`
`Patent Owner.
`____________________
`
`Case IPR2016-01738
`Patent No. 8,880,862
`____________________
`
`
`
`PATENT OWNER’S MOTION TO AMEND
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Submitted Electronically via the PTAB E2E System
`
`
`
`
`
`
`
`
`
`
`IPR2016-01738
`MOTION TO AMEND
`
`Table of Contents
`Introduction .......................................................................................................... 1
`I.
`II. Statement of Relief Requested ........................................................................... 2
`III. The Substitute Claims Meet All the Requirements of 37 C.F.R. § 42.121 ...... 2
`IV. The Original Non-Provisional Application Supports Each Limitation of the
`Proposed Substitute Claims ............................................................................. 4
`A. Independent Claim 174 ................................................................................... 5
`B.
`Independent Claim 177 ................................................................................... 8
`C.
`Independent Claim 179 ................................................................................. 11
`D. Dependent Claims ......................................................................................... 13
`V. Level of Ordinary Skill in the Art .................................................................... 16
`VI. Claim Construction ......................................................................................... 16
`VII. The Proposed Substitute Claims Are Patentable Over the Prior Art .............. 16
`A. The Proposed Substitute Claims Are Patentable Over the Art At Issue In
`this Proceeding ..................................................................................................... 18
`B. The Proposed Substitute Claims Are Likewise Patentable Over the Material
`Prior Art At Issue During Prosecution ................................................................. 20
`VIII. Conclusion ...................................................................................................... 22
`
`
`
`
`
`- i -
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01738
`MOTION TO AMEND
`
`EXHIBIT LIST
`
`Description
`Declaration of S. Desmond Jui in Support of Motion for
`Admission Pro Hac Vice
`Declaration of Kayvan B. Noroozi in Support of Motion
`for Admission Pro Hac Vice
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756-
`773, dated August 14, 2012
`Deposition Exhibit Declaration of Dr. Charles J. Neuhauser
`filed in IPR2016-01737 proceeding (not filed)
`Deposition Exhibit Declaration of Dr. Charles J. Neuhauser
`filed in IPR2016-01738 proceeding (not filed)
`Deposition Exhibit Declaration of Dr. Charles J. Neuhauser
`filed in IPR2016-01739 proceeding (not filed)
`Excerpt from Microsoft Computer Dictionary, 5th Ed.,
`Microsoft (2002)
`Declaration of Dr. Godmar Back (“Dr. Back Dec.”)
`Curriculum Vitae of Dr. Godmar Back
`Prosecution History of U.S. Provisional Patent Application
`No. 60/801,114
`Deposition Transcript of Charles J. Neuhauser, dated June
`2, 2017
`Excerpt from Joint Claim Construction and Prehearing
`Statement in matter Realtime Data, LLC d/b/a IXO v.
`Apple Inc., C.A. No. 16-cv-02595-JB (N.D. Cal.)
`Excerpt from Operating System Concepts, Silberschatz et
`al. (2009)
`UNUSED
`UNUSED
`Application No. 11/551,211 as filed
`Application No. 09/776,267 as filed
`U.S. Patent No. 6,539,456 (“Stewart”)
`U.S. Patent No. 6,173,381 (“Dye ’381”)
`U.S. Patent No. 6,434,695 (“Esfahani”)
`U.S. Patent No. 6,073,232 (“Kroeker”)
`Declaration of Dr. Godmar Back in Support of Motion to
`Amend
`
`- ii -
`
`
`
`
`
`Exhibit No.
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`2009
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`2015
`2016
`2017
`2018
`2019
`2020
`2021
`2022
`
`
`
`
`
`
`2023
`
`IPR2016-01738
`MOTION TO AMEND
`Excerpts from the Prosecution History of U.S. Patent No.
`7,181,608 (Application No. 09/776,267)
`
`
`
`
`
`
`- iii -
`
`
`
`
`
`
`
`IPR2016-01738
`MOTION TO AMEND
`
`I.
`
`Introduction
`Patent Owner Realtime Data, LLC (“Realtime” or “Patent Owner”)
`
`respectfully moves under 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121 to amend
`
`certain claims of U.S. Patent No. 8,880,862 (“the ’862 patent”), contingent on the
`
`outcome of this trial. In the event the Board finds independent claims 8, 11, and 14
`
`unpatentable, Patent Owner respectfully requests that the Board grant this motion
`
`to amend and issue the corresponding substitute claims presented herein.
`
`As the motion and the accompanying declaration of Dr. Back demonstrate,
`
`this motion and the substitute claims meet all of the requirements of 37 C.F.R §
`
`42.121. Namely, each contingent amendment is responsive to a ground of
`
`unpatentability involved in this proceeding, none of the amendments seeks to
`
`enlarge the scope of the claims or introduce new subject matter, each amendment
`
`proposes only one substitute claim for each conditionally canceled claim, and the
`
`motion clearly shows the changes sought and the support in the original disclosure
`
`of the patent for each claim that is added or amended.
`
`Moreover, although Patent Owner respectfully believes that it should not
`
`bear the burden of either persuasion or production regarding the patentability of the
`
`amended claims as a condition of allowance, and further believes that the Board
`
`may not sua sponte question the patentability of the proposed amended claims, see
`
`In re Aqua Products, Inc., 833 F.3d 1335, 1336 (Fed. Cir. 2016) (en banc decision
`
`
`
`
`- 1 -
`
`
`
`
`IPR2016-01738
`MOTION TO AMEND
`pending), the instant motion and supporting declaration of Dr. Back demonstrate
`
`
`
`that the proposed amended claims are patentable over the references at issue in this
`
`proceeding and the material prior art at issue during prosecution.1
`
`II.
`
`Statement of Relief Requested
`To the extent the Board finds any original claim unpatentable in this
`
`proceeding, Realtime respectfully requests that the Board grant this motion to
`
`amend with respect to each corresponding substitute claim presented herein. The
`
`Board should not consider this motion for each original claim it finds patentable.
`
`III. The Substitute Claims Meet All the Requirements of 37 C.F.R. § 42.121
`As shown in the attached claims appendix, proposed substitute independent
`
`claims 174, 177, and 179 retain all features of the original claims and do not
`
`enlarge the scope of the claims in any way. Rather, the contingent amendments add
`
`only narrowing features. Specifically, the substitute claims add the following
`
`limitations to the original claims: (1) a limitation to “preloading” compressed boot
`
`data, rather than simply “loading” the boot data; (2) a limitation that “preloading”
`
`comprises “transferring” the compressed boot data into the memory; and (3) a
`
`1 Patent Owner reserves its right to obtain the contingently proposed
`
`amended claims under the minimum requirements eventually established by the
`
`Federal Circuit’s en banc ruling in In re Aqua Products.
`
`
`
`
`
`
`- 2 -
`
`
`
`
`
`IPR2016-01738
`MOTION TO AMEND
`limitation that the “preloading” occurs during the same boot sequence in which a
`
`
`
`boot device controller receives a command over a computer bus to load the boot
`
`data.
`
` For the same reasons, the proposed substitute dependent claims likewise do
`
`not enlarge the scope of any original claim. See 37 C.F.R. § 42.121(a)(2)(ii).
`
`The proposed substitute independent claims are further responsive to one or
`
`more grounds of unpatentability at issue in this proceeding. See 37 C.F.R. §
`
`42.121(a)(2)(i). Specifically, Petitioner in this proceeding has asserted that the
`
`asserted prior art references disclose aspects of the original independent claims,
`
`which this motion conditionally seeks to amend. Compare Petition, IPR2016-
`
`01738 Paper 2, at 11-17, 28-29, 33 with Claims Appendix, infra.
`
`The substitute dependent claims correspond to the original dependent claims
`
`and are amended only to reflect their new dependency from the amended substitute
`
`independent claims and to be consistent with the substitute independent claims.
`
`Because the dependent claims have not been substantively amended, the dependent
`
`claim amendments are also responsive to the § 103 grounds of unpatentability. See
`
`Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26, Decision at 9
`
`(PTAB June 11, 2013).
`
`For each original claim, Realtime proposes only one substitute claim. The
`
`amended claims therefore fit the “presumption . . . that only one substitute claim
`
`
`
`- 3 -
`
`
`
`
`
`
`IPR2016-01738
`MOTION TO AMEND
`would be needed to replace each challenged claim,” and they present a reasonable
`
`
`
`number of substitute claims. 37 C.F.R. § 42.121(a)(3).
`
`And as demonstrated in the next section, the proposed substitute claims are
`
`supported by the original non-provisional application to which the ’862 patent
`
`claims priority, so they do not introduce any new subject matter. See 37 C.F.R. §
`
`42.121(a)(2)(ii).
`
`IV. The Original Non-Provisional Application Supports Each Limitation of
`the Proposed Substitute Claims
`The ’862 Patent issued from application No. 13/118,122 (Ex. 1002 at 1133-
`
`1195), filed on Oct. 19, 2006; which is a continuation of application No.
`
`11/551,211 (Ex. 2016), filed on Oct. 19, 2006, now Pat. No. 8,112,619; which is a
`
`continuation of application No. 09/776,267 (“the ’267 application”) (Ex. 2017),
`
`filed on Feb. 2, 2001, now Pat. No. 7,181,608; which is based on U.S. Provisional
`
`Application Ser. No. 60/180,114 (Ex. 2010), filed on Feb. 3, 2000.
`
`For purposes of this Motion to Amend, Realtime identifies the following
`
`portions of the non-provisional ’267 application (Ex. 2017) that provide § 112
`
`support for the proposed substitute claims. As demonstrated below and in the
`
`accompanying Declaration of Dr. Godmar Back (Ex. 2022), one of ordinary skill in
`
`the art would have understood based on the disclosures of the non-provisional ’267
`
`application (Ex. 2017) that the inventors possessed the substitute claims’ systems
`
`
`
`
`
`
`- 4 -
`
`
`
`
`
`IPR2016-01738
`MOTION TO AMEND
`and methods at the time of the application. Back Decl. ¶¶ 22-53.
`
`
`
`Independent Claim 174
`A.
`The ’267 application provides support for the preamble of claim 174, “A
`
`method of loading an operating system for booting a computer system,
`
`comprising.” Back Decl. ¶ 22. For example, the ’267 application discloses that it is
`
`directed “to systems and methods for providing accelerated loading of operating
`
`system and application programs upon system boot or application launch.” Ex.
`
`2017 at 1:10-12; Back Decl. ¶ 22.
`
`The ’267 application also provides support for “storing a portion of the
`
`operating system in a compressed form in a first memory,” as recited in claim 174.
`
`Back Decl. ¶ 23. For example, the ’267 application discloses at least five system
`
`architecture embodiments, which depict a processor, a first memory, and a second
`
`memory. See id. at Figs. 1-5, 9:23-23:5; Back Decl. ¶ 23. The ’267 application also
`
`discloses that the first memory may store a portion boot data, comprising a portion
`
`of the operating system, see, e.g., id. at 6:6-8, in a compressed form in the first
`
`memory. See, e.g., id at 16:14-22, 17:12-15, 46:3-5; 46:9-50:12; Back Decl. ¶ 23.
`
`The ’267 application also provides support for “preloading the portion of the
`
`operating system by transferring the portion of the operating system from the first
`
`memory to a second memory,” as recited in claim 174. For example, the ’267
`
`application discloses that “the data storage controller can proceed to pre-load the
`
`
`
`- 5 -
`
`
`
`
`
`
`IPR2016-01738
`MOTION TO AMEND
`portions of the computer operating system from the boot device (e.g., hard disk)
`
`
`
`into the on-board cache memory.” Id. at 41:4-5; Back Decl. ¶ 24. The ’267
`
`application further discloses the data being associated with a boot data list. See,
`
`e.g., id. at 42:4-16; Back Decl. ¶ 24.
`
`The ’267 application also provides support for “wherein the preloading
`
`occurs during the same boot sequence in which a boot device controller receives a
`
`command over a computer bus to load the portion of the operating system,” as
`
`claim 174 recites. See, e.g., Ex. 2017 at 43:13-14 (“[U]pon the next boot sequence,
`
`the boot device controller would pre-load that data into the local cache memory
`
`along with the other boot data previously on the list.”); id. at 41:7-9 (“Since the
`
`same portions of the operating system must be loaded upon each boot process, it is
`
`advantageous . . . to preload such portions and not wait until . . . commanded to
`
`load the operating system.”); id. at 42:17-20 (“[U]pon each subsequent power-
`
`on/reset [ ], the data storage controller would retrieve and read the stored list [ ]
`
`and proceed to preload the boot data specified on the list . . . into the onboard
`
`cache memory (step 77)”; id. at Fig. 7B; Back Decl. ¶ 25.
`
`The ’267 application also provides support for “accessing the preloaded
`
`portion of the operating system from the second memory in the compressed form,”
`
`as recited in claim 174. For example, the ’267 application discloses accessing the
`
`preloaded boot data to service requests from the host computer. Id. at 43:4-6 (“If
`
`
`
`- 6 -
`
`
`
`
`
`
`IPR2016-01738
`MOTION TO AMEND
`the host computer issues a request for boot data that is pre-loaded in the local
`
`
`
`memory of the data storage controller (affirmative result in step 80), the request is
`
`immediately serviced using the preloaded boot data (step 81).”); Back Decl. ¶ 26.
`
`The ’267 application also provides support for “decompressing the accessed
`
`portion of the operating system to provide a decompressed portion of the operating
`
`system,” as recited in claim 174. Back Decl. ¶ 27. For example, the ’267
`
`application discloses that “if the [data] was stored in compressed format on the
`
`boot device, the data will be decompressed.” Id. at 41:16-18; Back Decl. ¶ 27.
`
`The ’267 application also provides support for “utilizing the decompressed
`
`portion of the operating system to at least partially boot the computer system,” as
`
`recited in claim 174. For example, the ’267 application discloses that “the
`
`preloading process may be completed prior to commencement of the boot process,
`
`or continued after the boot process begins (in which case booting and preloading
`
`are performed simultaneously).” Id. at 42:22-43:1; Back Decl. ¶ 28.
`
`The ’267 application also provides support for “updating the boot data list,”
`
`as recited in claim 174. Back Decl. ¶ 29. For example, the ’267 application
`
`discloses that “the data storage controller would update the boot data list by
`
`recording any changes in the actual data requests as compared to the expected data
`
`requests already stored in the list (step 83).” Id. at 43:10-12; Back Decl. ¶ 29.
`
`
`
`
`
`
`- 7 -
`
`
`
`
`
`IPR2016-01738
`MOTION TO AMEND
`The ’267 application also provides support for “wherein the portion of the
`
`
`
`operating system is accessed and decompressed at a rate that is faster than
`
`accessing the preloaded 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,” as recited in claim 174. Back Decl. ¶ 30. For example, the
`
`’267 application discloses “accelerated data retrieval,” which “comprises retrieving
`
`a compressed digital data stream from a target storage device at the rate equal to,
`
`e.g., the data access rate of the target storage device and then decompressing the
`
`compressed data at a rate that increases the effective data access rate of the target
`
`storage device.” See, e.g., id. at 10:18-22; Back Decl. ¶ 30.
`
`Independent Claim 177
`B.
`The ’267 application provides support for the preamble of claim 177, “A
`
`method for providing accelerated loading of an operating system in a computer
`
`system.” Back Decl. ¶ 31. For example, the ’267 application discloses that it is
`
`directed “to data storage controllers employing lossless and/or lossy data
`
`compression and decompression to provide accelerated loading of operating
`
`systems and application programs.” Ex. 2017 at 5:20-6:1; Back Decl. ¶ 31.
`
`The ’267 application also provides support for “preloading boot data in a
`
`compressed form that is associated with a boot data list from a boot device into a
`
`memory,” as recited in claim 177. Back Decl. ¶ 32. For example, the ’267
`
`
`
`- 8 -
`
`
`
`
`
`
`IPR2016-01738
`MOTION TO AMEND
`application discloses that “the data storage controller can proceed to pre-load the
`
`
`
`portions of the computer operating system from the boot device (e.g., hard disk)
`
`into the on-board cache memory.” Ex. 2017 at 41:4-5; Back Decl. ¶ 32. The ’267
`
`application further discloses the data to be preloaded being associated with a boot
`
`data list, see Ex. 2017 at 42:4-16, and that data preloaded by the data storage
`
`controller may be in compressed form. Id. at 46:3-5, 46:9-50:12; Back Decl. ¶ 32.
`
`The ’267 application also provides support for “wherein the preloading
`
`comprises transferring the boot data in the compressed form into the memory,” as
`
`recited in claim 177. Back Decl. ¶ 33. For example, the ’267 application discloses
`
`that “the data storage controller can proceed to pre-load the portions of the
`
`computer operating system from the boot device (e.g., hard disk) into the on-board
`
`cache memory.” Id. at 41:4-5; Back Decl. ¶ 33.
`
`The ’267 application also provides support for “wherein the preloading
`
`occurs upon initialization of the computer system and during the same boot
`
`sequence in which a boot device controller receives a command over a computer
`
`bus to load the boot data,” as recited in claim 177. For example, the ’267
`
`application discloses “preloading the boot data upon initialization of the computer
`
`system.” Ex. 2017 at 6:4-5. It also teaches carrying out the preloading “upon each
`
`subsequent power-on/reset.” Id. at 42:17-20 (“upon each subsequent power-
`
`on/reset [ ], the data storage controller would retrieve and read the stored list [ ]
`
`
`
`- 9 -
`
`
`
`
`
`
`IPR2016-01738
`MOTION TO AMEND
`and proceed to preload the boot data specified on the list . . . into the onboard
`
`
`
`cache memory (step 77)”; id. at Fig. 7B; Back Decl. ¶ 34.
`
`The ’267 application also provides support for “accessing the preloaded boot
`
`data in the compressed form from the memory,” as recited in claim 177. For
`
`example, the ’267 application discloses accessing the preloaded boot data to
`
`service requests from the host computer. Id. at 43:4-6 (“If the host computer issues
`
`a request for boot data that is pre-loaded in the local memory of the data storage
`
`controller (affirmative result in step 80), the request is immediately serviced using
`
`the preloaded boot data (step 81).”); Back Decl. ¶ 35.
`
`The ’267 application also provides support for “decompressing the accessed
`
`boot data in compressed form at a rate that decreases a time to load the operating
`
`system relative to loading the operating system with the boot data in an
`
`uncompressed form,” as recited in claim 177. Back Decl. ¶ 36. For example, the
`
`’267 application discloses that “if the [data] was stored in compressed format on
`
`the boot device, the data will be decompressed, id. at 41:16-18, and “accelerated
`
`data retrieval.” See, e.g., id. at 10:18-22; Back Decl. ¶ 36.
`
`The ’267 application also provides support for “utilizing the decompressed
`
`boot data to load at least a portion of the operating system for the computer
`
`system,” as recited in claim 177. Back Decl. ¶ 37. For example, the ’267
`
`application discloses that “[t]he boot data may comprise program code associated
`
`
`
`
`- 10 -
`
`
`
`
`IPR2016-01738
`MOTION TO AMEND
`with an operating system of the computer system,” id. at 6:6-8, and that “the
`
`
`
`preloading process may be completed prior to commencement of the boot process,
`
`or continued after the boot process begins (in which case booting and preloading
`
`are performed simultaneously).” Id. at 42:22-43:1; Back Decl. ¶ 37.
`
`The ’267 application also provides support for “updating the boot data list,”
`
`as recited in claim 177. For example, the ’267 application discloses that “the data
`
`storage controller would update the boot data list by recording any changes in the
`
`actual data requests as compared to the expected data requests already stored in the
`
`list (step 83).” Id. at 43:10-12; Back Decl. ¶ 38.
`
`Independent Claim 179
`C.
`The ’267 application provides support for the preamble of claim 179, “A
`
`method for providing accelerated loading of an operating system in a computer
`
`system.” Back Decl. ¶ 39. For example, the ’267 application discloses that it is
`
`directed “to data storage controllers employing lossless and/or lossy data
`
`compression and decompression to provide accelerated loading of operating
`
`systems and application programs.” Ex. 2017 at 5:20-6:1; Back Decl. ¶ 39.
`
`The ’267 application also provides support for “accessing boot data for
`
`booting the computer system, wherein a portion of the boot data is in a compressed
`
`form and is associated with a boot data list,” as claim 179 recites. For example, the
`
`’267 application discloses a data storage controller accessing boot data, see, e.g.,
`
`
`
`- 11 -
`
`
`
`
`
`
`IPR2016-01738
`MOTION TO AMEND
`id. at 42:17-20, the data being associated with a boot data list, see, e.g., id. at 42:4-
`
`
`
`16, and that data loaded by the data storage controller may be in compressed form.
`
`Id. at 46:3-5, 46:9-50:12; Back Decl. ¶ 40.
`
`The ’267 application also provides support for “preloading the boot data into
`
`a memory, wherein the preloading comprises transferring the boot data into the
`
`memory,” as recited in claim 179. Back Decl. ¶ 41. For example, the ’267
`
`application discloses that “the data storage controller can proceed to pre-load the
`
`portions of the computer operating system from the boot device (e.g., hard disk)
`
`into the on-board cache memory.” Id. at 41:4-5; Back Decl. ¶ 41.
`
`The ’267 application also provides support for “wherein the preloading
`
`occurs during the same boot sequence in which a boot device controller receives a
`
`command over a computer bus to load the boot data,” as recited in claim 179. Back
`
`Decl. ¶ 42. For example, the ’267 application discloses carrying out the preloading
`
`“upon each subsequent power-on/reset.” Id. at 42:17-20 (“upon each subsequent
`
`power-on/reset [ ], the data storage controller would retrieve and read the stored
`
`list [ ] and proceed to preload the boot data specified on the list . . . into the
`
`onboard cache memory (step 77)”; id. at Fig. 7B; Back Decl. ¶ 42.
`
`The ’267 application also provides support for “servicing a request for the
`
`boot data from the computer system to access the preloaded compressed boot data
`
`and to decompress the accessed compressed boot data at a rate that decreases a
`
`
`
`- 12 -
`
`
`
`
`
`
`IPR2016-01738
`MOTION TO AMEND
`boot time of the operating system relative to loading the operating system utilizing
`
`
`
`the boot data in an uncompressed form,” as recited in claim 179. Back Decl. ¶ 43.
`
`For example, the ’267 application discloses accessing the preloaded boot data to
`
`service requests from the host computer. Id. at 43:4-6 (“If the host computer issues
`
`a request for boot data that is pre-loaded in the local memory of the data storage
`
`controller (affirmative result in step 80), the request is immediately serviced using
`
`the preloaded boot data (step 81).”); Back Decl. ¶ 43. The ’267 application also
`
`discloses that “if the [data] was stored in compressed format on the boot device,
`
`the data will be decompressed,” id. at 41:16-18, and “accelerated data retrieval.”
`
`Id. at 10:18-22; Back Decl. ¶ 43.
`
`The ’267 application also provides support for “updating the boot data list,”
`
`as recited in claim 179. Back Decl. ¶ 44. For example, the ’267 application
`
`discloses that “the data storage controller would update the boot data list by
`
`recording any changes in the actual data requests as compared to the expected data
`
`requests already stored in the list (step 83).” Id. at 43:10-12; Back Decl. ¶ 44.
`
`D. Dependent Claims
`The proposed substitute dependent claims set forth in the Claims Appendix
`
`and discussed below are amended only to reflect their new dependency from the
`
`substitute independent claims. All features of the proposed substitute dependent
`
`claims are supported by the ’267 application’s specification. Back Decl. ¶ 45.
`
`
`
`- 13 -
`
`
`
`
`
`
`IPR2016-01738
`MOTION TO AMEND
`The ’267 application further provides support for compressing additional
`
`
`
`data not associated with the boot data list, including using a data compression
`
`encoder (as recited in claim 175, 176, and 178), as well as storing and utilizing that
`
`data (as recited in claim 175). See, e.g., id. at 16:14-22, 17:12-15, 43:6-10, 46:9-
`
`50:12; Back Decl. ¶ 46.
`
`The ’267 application provides support for updating the boot data list by
`
`associating additional boot data with the list, updating the boot data list based on
`
`the accessing or utilizing of data or servicing of requests (as recited in claim 216,
`
`217, and 218), or accessing data not associated with the list and updating the list
`
`based on that accessing (as in claim 184, 212, and 214). See, e.g., id. at 43:3-14;
`
`Back Decl. ¶ 47. The ’267 application further provides support for removing the
`
`association of data from the list, including disassociating non-accessed data from
`
`the list, as recited in claims 185, 213, and 215. See, e.g., id. at 43:15-19; Back
`
`Decl. ¶ 47. The ’267 application further provides support for maintaining the list,
`
`as recited in claim 186. See, e.g., id. at 42:4-8; Back Decl. ¶ 47.
`
`The ’267 application provides support for the boot data or operating system
`
`data being a program code associated with an operating system (as recited in
`
`claims 180, 189, and 201), an application program, or both (as recited in claims
`
`182, 194, and 206). See, e.g., id. at 6:6-8; Back Decl. ¶ 48. The ’267 application
`
`further provides support that the boot data (as recited in claims 188 and 200),
`
`
`
`- 14 -
`
`
`
`
`
`
`IPR2016-01738
`MOTION TO AMEND
`operating system (as recited in claims 181, 193, and 205), or application program
`
`
`
`(as recited in claims 183, 195, and 207) may be, represent, or comprise a plurality
`
`of files. See, e.g., id. at 46:19-22; Back Decl. ¶ 48.
`
`The ’267 application provides support for compressing boot data to provide
`
`it in a compressed form, as recited in claims 190 and 202; and decompressing the
`
`accessed data utilizing a decompression decoder, as recited in claims 191 and 203.
`
`See, e.g., id. at 41:12-18, 46:9-52:11; Back Decl. ¶ 49.
`
`The ’267 application provides support for the memory being a physical
`
`memory, as recited in claims 192 and 204, and for accessing boot data from a non-
`
`volatile memory, as recited in claim 187. See, e.g., id. at 12:16-18, 41:3-14; Back
`
`Decl. ¶ 50.
`
`The ’267 application provides support for accessing preloaded data via
`
`direct memory access, as recited in dependent claims 196 and 208. See, e.g., id. at
`
`13:5-23; Back Decl. ¶ 51.
`
`The ’267 application provides support for the use of dictionary encoding, as
`
`recited in dependent claims 197 and 209; and Lempel-Ziv encoding, as recited in
`
`dependent claims 198, 210. See, e.g., id. at 47:6-13; Back Decl. ¶ 52.
`
`The ’267 application provides support for the use of a plurality of encoders,
`
`as recited in dependent claims 199 and 211. See, e.g., id. at 47:14-48:11; Back
`
`Decl. ¶ 53.
`
`
`
`
`
`- 15 -
`
`
`
`
`
`
`
`IPR2016-01738
`MOTION TO AMEND
`
`V. Level of Ordinary Skill in the Art
`Patent Owner agrees that one of ordinary skill would be a person with a
`
`Bachelor’s Degree in electrical engineering, computer engineering, or a related
`
`area of study, such as computer science. See Ex. 1003 ¶ 15. In addition, this person
`
`would have between three and five years of practical experience in the design and
`
`implementation of computer systems, such as personal computers. Alternatively, a
`
`person with a Master’s Degree in the area of electrical engineering, computer
`
`engineering, or a related area of study, such as computer science, and somewhat
`
`less practical experience would be similarly qualified. See Back Decl. ¶¶ 17-21.
`
`VI. Claim Construction
`In other papers submitted in this Proceeding as well as IPR2016-01365,
`
`Patent Owner and Dr. Back have proposed constructions for certain terms that
`
`appear in the proposed substitute claims. In this Motion to Amend, Patent Owner
`
`does not rely on those or any other specific claim constructions to demonstrate
`
`patentability of the proposed substitute claims over the prior art. Rather, Patent
`
`Owner demonstrates patentability based on the new limitations of the proposed
`
`substitute claims. The meaning of the new limitations—taken as a whole—is
`
`discernible from their context and would be readily understood by those of
`
`ordinary skill in the art. See Back Decl. ¶ 54.
`
`VII. The Proposed Substitute Claims Are Patentable Over the Prior Art
`
`
`
`
`
`
`- 16 -
`
`
`
`
`
`IPR2016-01738
`MOTION TO AMEND
`Patent Owner respectfully believes that it should not bear the burden of
`
`
`
`either persuasion or production regarding the patentability of the amended claims
`
`as a condition of allowing them, and further believes that the Board may not sua
`
`sponte question the patentability of the proposed amended claims, see In re Aqua
`
`Products, Inc., 833 F.3d 1335, 1336 (Fed. Cir. 2016) (en banc decision pending).
`
`Patent Owner nonetheless confirms that no combination of the prior art of
`
`record or known to it teaches or suggests the subject matter of the proposed claims.
`
`This motion and the supporting declaration of Dr. Back discusses the known art
`
`closest to the features highlighted above based on a review of the prior art in the
`
`prosecution history of the ’862 patent, the prosecution history of the applications to
`
`which it claims priority, and the asserted prior art in this proceeding. See
`
`MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 42 at 2 (PTAB July
`
`15, 2015); Nike, Inc. v. Adidas AG, 812 F. 3d 1326, 1350-51 (Fed. Cir. Feb. 11,
`
`2016). Realtime is not aware of any other prior art material to the claimed elements
`
`or the system as a whole. Consistent with its duty under 37 C.F.R. § 42.11,
`
`Realtime discloses and distinguishes below not just the closest primary
`
`reference(s), but also the closest secondary references that might be deemed
`
`material to the claimed features. See VMWare, Inc. v. Clouding Corp., IPR2014-
`
`
`
`
`
`
`- 17 -
`
`
`
`
`
`
`
`IPR2016-01738
`MOTION TO AMEND
`
`01292, Paper 23 at 2 (PTAB April 7, 2015).2
`
`A. The Proposed Substitute Claims Are Patentable Over the Art At
`Issue In this Proceeding
`As noted, the substitute claims add three categories of limitations to the
`
`existing scope of the original claims: (1) “preloading” compressed boot data, rather
`
`than simply “loading” the boot data; (2) that “preloading” comprises “transferring”
`
`the compressed boot data into the memory; and (3) that the “preloading” occurs
`
`during the same boot sequence in which a boot device controller receives a
`
`command over a computer bus to load the boot data.
`
`None of Petitioner’s references, alone or in combination, teaches or suggests
`
`“preloading” compressed boot data “wherein preloading comprises transferring”
`
`the compressed boot data “during the same boot sequence in which a boot device
`
`controller receives a command over a computer bus to load the boot data,” as each
`
`proposed substitute claim requires. Back Decl. ¶ 56.
`
`In Apple’s separate Petition challenging the patentability of Realtime’s U.S.
`
`Patent 7,181,608, Apple argues that the Sukegawa reference teaches “preloading”
`
`
`2 As noted, Patent Owner reserves its right to obtain the contingently
`
`proposed amended claims under the minimum requirements eventually established
`
`by the Federal Circuit’s en banc ruling in In re Aqua Products.
`
`
`
`
`
`
`- 18 -
`
`
`
`
`
`IPR2016-01738
`MOTION TO AMEND
`as recited in the challenged claims of that patent. See IPR2016-01365, Paper 2 at
`
`
`
`30-33. Apple does not contend in that proceeding, however, that the two
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
