Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
` Paper No. 7
`
` Entered: March 14, 2017
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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 IPR2016-01739
`Patent 8,880,862 B2
`____________
`
`
`
`Before GEORGIANNA W. BRADEN, J. JOHN LEE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
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`

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`IPR2016-01739
`Patent 8,880,862 B2
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`INTRODUCTION
`
`I.
`
`A. Background
`
`Apple, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`an inter partes review of claims 5, 35–46, 97, 98, and 112 (“the challenged
`claims”) of U.S. Patent No. 8,880,862 B2 (Ex. 1001, “the ’862 Patent”).
`Realtime Data, LLC (“Patent Owner”) timely filed a Preliminary Response
`(Paper 6, “Prelim. Resp.”).
`Under 35 U.S.C. § 314, an inter partes review may not be instituted
`
`unless the information presented in the Petition shows “there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” See also 37 C.F.R § 42.4(a) (delegating
`authority to the Board). Upon consideration of the Petition, Patent Owner’s
`Preliminary Response, and the evidence cited therein, we determine that the
`information presented demonstrates a reasonable likelihood that Petitioner
`would prevail in establishing the unpatentability of each of the challenged
`claims. Accordingly, we institute an inter partes review of the challenged
`claims.
`
`B. Related Proceedings
`
`The parties identify the following cases as related to the challenged
`patent: Realtime Data, LLC v. Microsoft Corporation, 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.
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`Patent 8,880,862 B2
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`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
`storage rate of the target storage device and storing the
`compressed data in the target storage device.
`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
`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
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`system, the “initial bus commands inevitably instruct the boot device
`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, Petitioner challenges claims 5, 35–46, 97, 98, and
`
`112 of the ’862 Patent. Pet. 2. Of the challenged claims, claims 5 is the
`only independent claim. Claim 5 is illustrative of the challenged claims, and
`is reproduced below:
`5.
`A method for booting a computer system, the method
`comprising:
`storing boot data in a compressed form that is associated with a
`portion of a boot data list in a first memory;
`loading the stored compressed boot data from the first memory;
`accessing the loaded compressed boot data;
`decompressing the accessed compressed boot data;
`utilizing the decompressed boot data to at least partially boot the
`computer system; and
`updating the boot data list,
`wherein the loading, the accessing, and the decompressing occur
`within a period of time which is less than a time to access the boot
`data from the first memory if the boot data was stored in the first
`memory in an uncompressed form.
`
`Ex. 1001, 26:60–27:8.
`
`E. The Evidence of Record and Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability under
`35 U.S.C. § 103 (Pet. 2):
`
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`IPR2016-01739
`Patent 8,880,862 B2
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`Challenged Claims
`5, 35–46, 97
`5, 35–46, 97, 98, 112
`5, 35–46, 97
`5, 35–46, 97, 98, 112
`
`
`Asserted Prior Art
`Settsu1
`Settsu and Zwiegincew2
`Settsu and Dye3
`Settsu, Zwiegincew, and Dye
`
`
`Additionally, Petitioner relies on the Declaration of Dr. Charles J. Neuhauser
`(Ex. 1003) to support its challenges.
`
`II. ANALYSIS
`
`A. Claim Construction
`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
`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.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor, however, may provide a
`meaning for a term that is different from its ordinary meaning by defining
`
`
`1 U.S. Patent No. 6,374,353 B1, filed Mar. 3, 1999, issued Apr. 16, 2002
`(Ex. 1006, “Settsu”).
`2 U.S. Patent No. 6,317,818 B1, filed Mar. 30, 1999, issued Nov. 13, 2001
`(Ex. 1010, “Zwiegincew”).
`3 U.S. Patent No. 6,145,069, filed Apr. 26, 1999, issued Nov. 7, 2000
`(Ex. 1008, “Dye”).
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`the term in the specification with “reasonable clarity, deliberateness, and
`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Limitations, however, are not to be read from the specification into the
`claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). In addition,
`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).
`
`Based on a review of the record, we determine that no claim terms
`require express construction for purposes of this Decision. See Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`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
`invention was made to a person having ordinary skill in the art to which said
`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 v. Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en
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`banc) (citations omitted). “This requirement is in recognition of the fact that
`each of the Graham factors helps inform the ultimate obviousness
`determination.” Id.
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`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).
`Thus, to prevail in an inter partes review, Petitioner must explain how the
`proposed combinations of prior art would have rendered the challenged
`claims unpatentable. At this preliminary stage, we determine whether the
`information presented in the Petition shows there is a reasonable likelihood
`that Petitioner would prevail in establishing that the challenged claims
`would have been obvious over the proposed combinations of prior art.
`We analyze the challenges presented in the Petition 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
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`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).
`Petitioner’s declarant, Dr. Charles J. Neuhauser, opines that a person
`of ordinary skill in the art relevant to the ’862 patent would have had “a
`Bachelor’s Degree in electrical engineering, computer engineering, or a
`related area of study” as well as “between three and five years of practical
`experience in the design and implementation of computer systems, such as
`personal computers.” Dr. Neuhauser further opines that, in the alternative, a
`person with “a Master’s Degree in the area of electrical engineering,
`computer engineering, or a related area of study and somewhat less practical
`experience would be similarly qualified.” Ex. 1003 ¶ 15.
`Patent Owner does not dispute Dr. Neuhauser’ testimony or proffer its
`own assessment regarding a person of ordinary skill in the art relevant to the
`’862 patent at the time of the invention.
`
`Based on our review of the ’862 patent, the types of problems and
`solutions described in the ’862 patent and cited prior art, and the testimony
`of Dr. Neuhauser, we adopt and apply Dr. Neuhauser’s definition of a person
`of ordinary skill in the art at the time of the claimed invention for purposes
`of this Decision. We also note that the applied prior art reflects the
`appropriate level of skill at the time of the claimed invention. See Okajima
`v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`D. Overview of the Asserted Prior Art
`1. Settsu
`
`
`Settsu is a U.S. Patent titled “Information Processing Apparatus
`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
`apparatus.” Ex. 1006, at [54], [57]. One embodiment of Settsu is shown in
`Figure 1, reproduced below.
`
`
`Figur1 illustrates an information processing apparatus with boot device 3,
`firmware 6, memory device 2, and boot block 4. Id. at 8:2–8. According to
`Settsu, boot block 4 includes a mini operating system (OS) module that has
`OS functions required for bootstrap processing, and an OS main body
`module located in file system 5 that provides the apparatus with the OS
`functions not included on mini OS module 7. Id. at 8:13–21.
`
`Two other embodiments of Settsu are shown in Figures 6 and 13,
`reproduced below.
`
`Figures 6 and 13 illustrate dividing up Mini OS Module 7. Id. at 10:59–
`11:3, 13:66–14:6. Settsu discloses that Mini OS Module 7 can include OS
`
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`loading and decompression processing module 50 so that modules can be
`stored as compressed files on a boot device. Id. at 14:6–12, 14:58–63. Each
`of these modules is decompressed each time it is loaded into memory, and
`“the time required for I/O [(input/output)] processing can be reduced” as a
`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–
`15:4.
`Dye
`2.
`
`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
`3:3–12, 3:23–28. The technology permits data to be “saved in either a
`normal or compressed format, retrieved from the Flash Memory Array for
`MPU [(microprocessing unit)] execution in a normal or compressed format,
`or transmitted and stored on a medium in a normal or compressed format.”
`Id. at 3:66–4:8.
`3.
`Zwiegincew
`
`
`Zwiegincew is a U.S. Patent titled “Pre-Fetching of Pages Prior to a
`Hard Page Fault Sequence,” and it recognizes problems of slow boot that
`result when hard page faults occur during the boot process. Ex. 1010, at
`[54], 1:45–51, 2:12–15, 5:50–51. To improve boot speed, Zwiegincew
`proposes pre-fetching, from a hard disk to memory, pages that are expected
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`to be requested during the boot process, thereby reducing occurrence of hard
`page faults. Id. at [57], 1:5–3:55. “Copies of, or references to, the . . . pages
`are stored in a scenario file” and, “[w]hen a hard page fault scenario is
`detected, a corresponding scenario file is fetched from disk storage and the
`determined pages, or copies thereof, are transferred into RAM.” Id. at [57].
`Zwiegincew also recognizes benefits of compressing pre-fetched page data.
`For instance, Zwiegincew’s system includes “a disk
`compressor/decompressor,” which employs “compression algorithms” on
`pre-fetched data to achieve pre-fetch time improvements. Id. at 8:66–9:13,
`Figs. 1–2.
`
`E. Alleged Obviousness of the Challenged Claims in View of Settsu
`
`Petitioner contends Settsu teaches or suggests each element of claims
`
`5, 35–46, and 97. Pet. 16–60. Patent Owner disputes Petitioner’s
`contentions. Prelim. Resp. 17–30. For reasons that follow, we determine
`Petitioner has demonstrated a reasonable likelihood of prevailing as to the
`challenged claims.
`1.
`Analysis of Cited Art as Applied to Independent Claim 5
`
`
`Petitioner contends the teachings of Settsu renders every element of
`claim 5 of the ’862 patent obvious. Pet. 16–38. Patent Owner disputes
`Petitioner’s contentions. Prelim. Resp. 17–30. Patent Owner specifically
`argues that Petitioner fails to show that Settsu teaches (1) “storing boot data
`in compressed form that is associated with . . . a boot data list” (id. at 17–
`23); (2) “a boot data list” (id. at 24–25); and (3) “updating the boot data list”
`(id. at 25–30).
`
`After considering the parties’ arguments and evidence, we determine
`that Petitioner presents sufficient evidence to establish a reasonable
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`likelihood of prevailing on the ground of obviousness in view of Settsu. We
`address the issues disputed by Patent Owner in more detail below.
`a. “storing boot data in compressed form that is associated with
`. . . a boot data list”
`
`For the recited step of “storing boot data in compressed form that is
`
`associated with . . . a boot data list,” Petitioner identifies teachings in Settsu
`relating to an “information processing apparatus” (i.e., a computer system)
`that includes “memory 2” and “boot device 3,” where “boot device 3” stores
`compressed operating files. Pet. 19 (citing Ex. 1006, 7:65–8:23, 13:49–65).
`According to Petitioner, Settsu’s boot device 3 is a first memory, and
`because Settsu stores the OS main body module “as compressed files” on
`boot device 3, Settsu describes storing its OS main body module in a
`compressed form in a first memory as required by claim 5. Id. at 20 (citing
`Ex. 1003 ¶ 75).
`
`For the requirement that the boot data be compressed, Petitioner relies
`on Settsu’s description of a series of operations; starting from “[w]hen the
`information processing apparatus is powered on,” mini OS module 7 loads
`OS main body module 8’s plurality of compressed files into memory 2. Id.
`at 20–21 (citing Ex. 1006, at [57], 8:21–35, 8:66–9:3, 9:7–11, 11:7–9).
`Petitioner argues that the plurality of compressed files loaded into memory 2
`are then decompressed to facilitate a computer system’s boot process. Id. at
`21 (citing Ex. 1006, at [57], 1:1–4, 1:51–57, 3:6–9, 13:49–15:5).
`
`Petitioner contends Settsu discloses multiple forms of boot data lists
`that are associated with loaded boot data. Id. (citing Ex. 1003 ¶ 77).
`According to Petitioner, Settsu provides at least two examples of storing
`boot data associated with boot data list: (1) lists of boot data that are stored
`within the OS functional module files themselves; and (2) lists of boot data
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`that are referenced by mini OS module 7 in the course of booting the OS.
`Id. (citing Ex. 1003 ¶ 77; Ex. 1006, 13:55–65, 16:7–17:62, Figs. 12, 20).
`Petitioner relies on the testimony of Dr. Neuhauser to support its position.
`
`Dr. Neuhauser specifically opines that an OS functional module file
`stored on boot device 3, as described by Settsu, includes a list of data
`necessary for starting the OS and, thus, is a boot data “list” (that is, a list of
`data) under a broadest reasonable interpretation. Ex. 1003 ¶ 78 (citing
`Ex. 1014 for a definition of the term “file” as “[a] complete, named
`collection of information, such as a program, a set of data used by a
`program, or a user-created document” that “binds a conglomeration of
`instructions . . . into a coherent unit”).4 As supported by the cited definition,
`Dr. Neuhauser testifies one of ordinary skill would have understood Settsu’s
`compressed OS functional module files to be lists of data (including, e.g.,
`program instructions). Id. Based on Dr. Neuhauser’s testimony, Petitioner
`concludes that through its description of storing compressed OS functional
`module files on boot device 3, Settsu teaches storing boot data in a
`compressed form that is associated with a portion of a boot data list as
`recited by claim 5. Pet. 22 (citing Ex. 1003 ¶ 79).
`
`Patent Owner contests Petitioner’s position, arguing Petitioner fails to
`demonstrate that Settsu teaches storing boot data in compressed form that is
`
`
`4 The term “boot data list” is recited explicitly in the challenged claims. See,
`e.g., Ex. 1001, 26:41. Both parties provide contentions regarding the claim
`term, but neither provides a proposed construction. Dr. Neuhauser opines on
`the scope and application of the term, as supported by Exhibit 1014, which is
`sufficient for purposes of this Decision. See Ex. 1003 ¶ 78. To the extent,
`however, the parties present additional evidence concerning the proper scope
`of this term during the course of this proceeding, we will address it in the
`Final Written Decision.
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`associated with a portion of a boot data list in a first memory, as required by
`claim 5. Prelim. Resp. 17. First, Patent Owner argues that Petitioner cherry-
`picks elements across various distinct embodiments of Settsu to arrive at the
`claim element, but does not offer evidence of how or why a person of
`ordinary skill in the art would have combined the distinct embodiments. Id.
`at 18. Second, Patent Owner argues that Petitioner’s assertion that Settsu’s
`functional module files must include boot data lists is a de facto inherency
`argument lacking evidentiary support. Id.
`
`We are not persuaded by Patent Owner’s position, because Petitioner
`acknowledges citations to different embodiments but argues persuasively
`that a person of ordinary skill in the art would have understood and found it
`obvious that the description of elements provided by Settsu with respect to
`one embodiment applies equally to similar elements of other embodiments.
`Pet. 18 n.2. Additionally, at this stage, we credit the testimony of Dr.
`Neuhauser regarding Settsu’s OS functional module files being lists of data.
`See Ex. 1003 ¶ 78. Therefore, after reviewing Settsu’s description of each
`embodiment, we are persuaded Petitioner explains sufficiently at this stage
`how the disclosure in Settsu teaches or at least suggest the storing step. See
`Pet. 19–30.
`b. “a boot data list” and “updating the boot data list”
`
`Petitioner contends Settsu describes a boot data list in at least two
`
`ways: (1) in the form of lists of boot data that are stored within the OS
`functional module files themselves; and (2) in the form of lists of boot data
`that are referenced by mini OS module 7 in the course of booting the OS.
`Pet. 19–21, 34 (citing Ex. 1003 ¶¶ 70, 77, 116; Ex. 1006, 5:39–51, 7:65–
`8:23, 13:49–65, 14:44–52, 16:7–17:62, Figs. 12, 20 (ST213)). Petitioner
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`argues that Settsu’s description renders obvious updating both types of lists.
`Id. (citing Ex. 1003 ¶ 117). According to Petitioner, Settsu OS main body
`module is divided into “a plurality of functional modules” that “are
`separately stored as compressed files” in “file system 5 of boot device 3.”
`Id. (citing Ex. 1006, 13:55–65). From this description, Petitioner argues that
`a person of ordinary skill in the art would have understood that OS modules,
`such as Settsu’s, require updates when new, updated code becomes
`available. Id.
`
`Petitioner supports it position with the Declaration of Dr. Neuhauser.
`Id. at 35 (citing Ex. 1003 ¶ 117). Dr. Neuhauser testifies that to benefit from
`updates in Settsu’s system or simply to account for changes in user
`preference, a person of ordinary skill in the art would have understood that
`Settsu’s system updates the OS data stored in boot device 3. Ex. 1003 ¶ 117
`(citing Ex. 1026, 110–112) (describing regular updates to the Windows 98
`operating system). Dr. Neuhauser further testifies that to accomplish these
`updates, a person of ordinary skill in the art would have understood that
`updates occur to boot data lists in Settsu; namely, updates to lists of boot
`data included within OS functional module files stored in boot device 3, as
`well as updates to lists of boot data, such as function definition file 71 or OS
`main body module 8. Id. ¶ 117 (citing Ex. 1006, 5:39–51, 13:55–65, 14:44–
`52, 16:7–17:62, Figs. 12, 20 (ST213)).
`
`Patent Owner contests Petitioner’s position. First, Patent Owner
`argues that Petitioner fails to show the asserted art discloses a “boot data
`list” and incorrectly relies on the references inherently teaching the
`limitation. Prelim. Resp. 24–25. Second, Patent Owner argues that
`Petitioner relies on impermissible hindsight analysis as the basis for arguing
`that Settsu discloses “updating the boot data list” as recited in claim 5 (id. at
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`25–30). According to Patent Owner, Petitioner’s arguments are based on
`multiple assumptions for which there is no supporting evidence.
`
`Patent Owner’s arguments that Petitioner fails to show the asserted art
`teaches “boot data list” (Prelim. Resp. 24–25) are unpersuasive for similar
`reasons as discussed above regarding the “storing” limitation. Additionally,
`at this stage of the proceeding, we are persuaded by the testimony of Dr.
`Neuhauser regarding the similarities between Settsu’s OS and the
`functionality of the Windows 98 OS, and why a person of ordinary skill in
`the art would have considered updates to have occurred to the boot data lists
`in Settsu. See Ex. 1003 ¶ 117. Therefore, based on the current record, we
`are persuaded Petitioner has provided sufficient evidence and explanation
`that the disclosure of Settsu teaches or at least suggests “updating the boot
`data list.”
`Remaining Challenged Claims
`2.
`
`
`The Petition sets forth detailed contentions and supporting evidence
`alleging that claims 35–46 and 97 are obvious in light of the teachings of
`Settsu. Pet. 38–58. For instance, for the “plurality of files” limitation of
`claims 35, 40, and 42, Petitioner relies on Settsu’s teachings of an OS “main
`body module” that is “divided into a plurality of functional modules” that
`“are separately stored as compressed files” in “file system 5 of boot device
`3.” Pet. 38 (citing Ex. 1006, 2:5–67, 13:55–65). According to Petitioner, as
`supported by Dr. Neuhauser’s testimony, a person of ordinary skill in the art
`would have understood a program, like the operating system loaded by
`Settsu into memory 2, typically includes a plurality of files. Id. (citing Ex.
`1003 ¶ 131). With respect to the claims reciting compression or
`decompression, such as claims 37, 38, 39, 43, and 97, Petitioner identifies
`disclosures in Settsu that describe loading OS files from a boot device’s file
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`system “into [a] memory 2 as compressed data,” and then decompressing the
`loaded OS files to speed up a computer system’s boot process. Id. at 42–43
`(citing Ex. 1006, at [57], 1:1–4, 1:51–57, 3:6–9, 13:49–15:5). As for those
`claims that recite a form of dictionary encoding or the Lempel-Ziv algorithm
`for compression, such as claims 44 and 45, Petitioner notes that the Lempel-
`Ziv algorithm, which uses a form of dictionary encoding to compress data,
`was well-known at the time of the ’862 patent. Id. at 50 (citing Ex. 1003 ¶
`176). According to Petitioner, a skilled artisan would have found it obvious
`to use the well-known Lempel-Ziv algorithm to compress the OS files in
`Settsu. Id. at 50–51 (citing Ex. 1003 ¶¶ 175–177).
`
`Patent Owner generally presents the same or similar arguments for the
`remaining claims as it does for claim 1, which are unpersuasive on the
`present record for similar reasons as for claim 1. At this stage of the
`proceeding, we are persuaded by Petitioner’s position, as supported by the
`testimony of Dr. Neuhauser, with regards to the challenged dependent
`claims. Accordingly, based on the current record, we are persuaded
`Petitioner has demonstrated a reasonable likelihood of prevailing as to
`claims 35–46 and 97 on the ground of obviousness in view of Settsu.
`F. Alleged Obviousness of the Challenged Claims in View of Settsu and
`Zwiegincew
`
`Petitioner contends the combination of Settsu and Zwiegincew teaches
`
`or suggests each element of claims 35–46, 97, 98, and 112. Pet. 16–60.
`Patent Owner disputes Petitioner’s contentions. Prelim. Resp. 30–34. For
`reasons that follow, we determine Petitioner has demonstrated a reasonable
`likelihood of prevailing as to the challenged claims.
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`Analysis of Cited Art as Applied to Independent Claim 5
`1.
`
`Petitioner contends the teachings of Settsu and Zwiegincew renders
`
`every element of claim 5 of the ’862 patent obvious. Pet. 17–38. Patent
`Owner disputes Petitioner’s contentions. Prelim. Resp. 30–34. Patent
`Owner specifically argues that Petitioner fails to show that: (1) Zwiegincew
`remedies the alleged deficiencies of Settsu (id. at 30–31); (2) a person of
`ordinary skill in the art would have motivation to combined the cited
`references (id. at 31–32); and (3) the combined disclosures of Settsu and
`Zwiegincew teach “updating the boot data list” (id. at 32–34).
`
`After considering the parties’ arguments and evidence, we determine
`that Petitioner presents sufficient evidence to establish a reasonable
`likelihood of prevailing on the ground of obviousness in view of Settsu and
`Zwiegincew. We address the issues disputed by Patent Owner in more detail
`below.
`
`a. “updating the boot data list”
`As described above, Petitioner contends Settsu describes a boot data
`
`list in at least two ways: (1) in the form of lists of boot data that are stored
`within the OS functional module files themselves; and (2) in the form of lists
`of boot data that are referenced by mini OS module 7 in the course of
`booting the OS. Pet. 19–21, 34 (citing Ex. 1003 ¶¶ 70, 77, 116; Ex. 1006,
`5:39–51, 7:65–8:23, 13:49–65, 14:44–52, 16:7–17:62, Figs. 12, 20 (ST213)).
`Petitioner argues that Settsu’s description renders obvious updating both
`types of lists. Id. (citing Ex. 1003 ¶ 117). According to Petitioner, Settsu’s
`OS main body module is divided into “a plurality of functional modules”
`that “are separately stored as compressed files” in “file system 5 of boot
`device 3.” Id. (citing Ex. 1006, 13:55–65). From this description, Petitioner
`argues that a person of ordinary skill in the art would have understood that
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`OS modules, such as Settsu’s, require updates when new, updated code
`becomes available. Id. (citing Ex. 1003 ¶ 117 (citing Ex. 1026, 110–112)
`(describing regular updates to the Windows 98 operating system)).
`Petitioner then cites to Zwiegincew, arguing that Zwiegincew
`describes a boot data list in the form of a scenario file that is used in the
`context of preventing hard page faults during a system’s boot process. Id. at
`35 (citing Ex. 1003 ¶ 119; Ex. 1010, at [57], 1:45–51, 1:5–3:55, 8:66–9:13,
`Fig. 1, 2). According to Petitioner, Zwiegincew also describes automatic
`processes for generating a scenario file to ensure that it includes “ordered
`copies of the pages that will likely be retrieved from disk due to one or more
`hard page faults during the [corresponding] hard page fault scenario,” and
`the “[a]utomatically generated scenario files may be subject to subsequent
`refinement, i.e., they may be input into the pattern-matching algorithm.” Id.
`at 36 (citing Ex. 1010, 6:29–67, 7:38–40). Based on this description,
`Petitioner argues that a person of ordinary skill in the art would have been
`motivated to automatically update Settsu’s boot data lists based on patterns
`of requests received during Settsu’s boot process. Id. (citing Ex. 1003
`¶¶ 120–121; Ex. 1010, 6:29–61, 7:24–40). A person of ordinary skill in the
`art would have been motivated, for example, to ensure that frequently
`requested boot data is loaded into memory 2, with corresponding updates to
`a scenario file. Id. (citing Ex. 1003 ¶ 121).
`
`Petitioner supports its position with the Declaration of Dr. Neuhauser.
`Id. at 35–36 (citing Ex. 1003 ¶¶ 117, 121). Dr. Neuhauser testifies that the
`combination of Settsu and Zwiegincew render obvious updating the boot
`data list. Ex. 1003 ¶ 122. Dr. Neuhauser specifically opines that, to benefit
`from updates in Settsu’s system or simply to account for changes in user
`preference, a person of ordinary skill in the art would have understood that
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`Patent 8,880,862 B2
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`Settsu’s system updates the OS data stored in boot