IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`James J. Fallon, et al.
`In re Patent of:
`8,880,862 Attorney Docket No.: 39521-0025IP3
`U.S. Patent No.:
`November 4, 2014
`
`Issue Date:
`Appl. Serial No.: 13/118,122
`
`Filing Date:
`May 27, 2011
`
`Title:
`SYSTEMS AND METHODS FOR ACCELERATED
`LOADING OF OPERATING SYSTEMS AND APPLICA-
`TION PROGRAMS
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 8,880,862 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`

`
`Attorney Docket No. 39521-0025IP3
`IPR of U.S. Patent No. 8,880,862
`TABLE OF CONTENTS
`
`I. 
`
`IV. 
`
`MANDATORY NOTICES UNDER 37 C.F.R § 42.8 ....................................... 1 
`A.  Real Party-In-Interest ....................................................................................... 1 
`B.  Related Matters ................................................................................................. 1 
`C.  Lead And Back-Up Counsel ........................................................................... 1 
`D.  Service Information .......................................................................................... 2 
`PAYMENT OF FEES ............................................................................................. 2 
`II. 
`III.  REQUIREMENTS FOR IPR ................................................................................. 2 
`A.  Grounds for Standing ....................................................................................... 2 
`B.  Challenge and Relief Requested .................................................................... 2 
`INTRODUCTION ................................................................................................... 3 
`A.  ’862 Patent Overview ...................................................................................... 3 
`B.  Settsu Shows that Preloading Compressed Boot Data was Known to
`Decrease Computer System Boot Time ........................................................ 6 
`C.  Zwiegincew Confirms that Updating a Boot Data List Was Well-Known
`in the Context of Preloading Compressed Boot Data to Decrease
`Computer System Boot Time ......................................................................... 9 
`CLAIM CONSTRUCTION ................................................................................. 13 
`V. 
`VI.  APPLICATION OF PRIOR ART TO CHALLENGED CLAIMS ................ 16 
`A.  GROUNDS 1-2 – Claims 5, 35-46, and 97 are obvious over Settsu
`Alone (Ground 1) and Claims 5, 35-46, 97, 98, and 112 are obvious over
`Settsu in view of Zwiegincew (Ground 2) .................................................. 16 
`B.  GROUNDS 3-4 – Claims 5, 35-46, and 97 are obvious over Settsu in
`view Dye and Claims 5, 35-46, 97, 98, and 112 are obvious over Settsu
`and Zwiegincew in view of Dye .................................................................. 60 
`VII.  CONCLUSION ...................................................................................................... 70 
`
`
`
`i
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`

`
`Attorney Docket No. 39521-0025IP3
`IPR of U.S. Patent No. 8,880,862
`
`EXHIBITS
`
`APPLE-1001
`
`U.S. Patent No. 8,880,862 to Fallon, et al. (“the ’862 Patent”)
`
`APPLE-1002
`
`Excerpts from the Prosecution History of the ’862 Patent (“the
`Prosecution History”)
`
`APPLE-1003
`
`Declaration of Dr. Charlie Neuhauser (“Dec.”)
`
`APPLE-1004
`
`Curriculum Vitae of Dr. Charlie Neuhauser
`
`APPLE-1005
`
`(RESERVED)
`
`APPLE-1006
`
`U.S. Patent No. 6,374,353 (“Settsu”)
`
`APPLE-1007
`
`Burrows et al., “On-line Data Compression in a Log-structured
`File System” (1992) (“Burrows”)
`
`APPLE-1008
`
`U.S. Patent No. 6,145,069 (“Dye”)
`
`APPLE-1009
`
`U.S. Patent No. 7,190,284 (“Dye ’284”)
`
`APPLE-1010
`
`U.S. Patent No. 6,317,818 (“Zwiegincew”)
`
`APPLE-1011
`
`Jeff Prosise, DOS 6 – The Ultimate Software Bundle?, PC
`MAGAZINE, Apr. 13, 1993 (“Prosise”)
`
`APPLE-1012
`
`Excerpts from John L. Hennessey & David A. Patterson, Com-
`puter Architecture a Quantitative Approach (1st ed. 1990)
`(“Hennessey”)
`
`APPLE-1013
`
`U.S. Patent No. 6,158,000 (“Collins”)
`
`APPLE-1014
`
`File, Microsoft Press Computer Dictionary (3d ed. 1997)
`
`APPLE-1015
`
`Excerpts from Tom Shanley & Don Anderson, PCI System Ar-
`chitecture (4th ed. 1999) (“Shanley”)
`
`ii
`
`

`
`APPLE-1016
`
`APPLE-1017
`
`Attorney Docket No. 39521-0025IP3
`IPR of U.S. Patent No. 8,880,862
`Jacob Ziv & Abraham Lempel, A Universal Algorithm for Se-
`quential Data Compression, IT-23 No. 3 IEEE TRANSACTIONS
`ON INFORMATION THEORY 337 (1977)(“Ziv”)
`
`James A. Storer & Thomas G. Szymanski, Data Compression
`via Textual Substitution, 19 No. 4 JOURNAL OF THE ASSOCIA-
`TION FOR COMPUTING MACHINERY (1982)(“Storer”)
`
`APPLE-1018
`
`Program File, Microsoft Press Computer Dictionary (3d ed.
`1997)
`
`APPLE-1019
`
`Direct Memory Access, Microsoft Press Computer Dictionary
`(3d ed. 1997)
`
`APPLE-1020
`
`RAM and RAM Cache, Microsoft Press Computer Dictionary
`(3d ed. 1997)
`
`APPLE-1021
`
`Decoder, Microsoft Press Computer Dictionary (3d ed. 1997)
`
`APPLE-1022
`
`(RESERVED)
`
`APPLE-1023
`
`Excerpts from Kyle Loudon, Mastering Algorithms with C
`(1999) (“Loudon”)
`
`APPLE-1024
`
`Excerpts from Michael Barr, Programming Embedded Systems
`in C and C++ (1999)(“Barr”)
`
`APPLE-1025
`
`Excerpts from Eric Pearce, Windows NT in a Nutshell
`(1999)(“Pearce”)
`
`APPLE-1026
`
`Excerpts from Tim O’Reilly, Troy Mott, and Walter Glenn,
`Windows 98 in a Nutshell (1999)(“O’Reilly”)
`
`APPLE-1027
`
`(RESERVED)
`
`iii
`
`
`
`

`
`Attorney Docket No. 39521-0025IP3
`IPR of U.S. Patent No. 8,880,862
`Apple Inc. petitions for inter partes review (“IPR”) of claims 5, 35-46, 97,
`
`98, and 112 (“the Challenged Claims”) of U.S. 8,880,862 (“’862 Patent”). IPR
`
`should be instituted, as a reasonable likelihood exists that Apple will prevail in
`
`proving the Challenged Claims unpatentable.
`
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8
`A. Real Party-In-Interest
`Apple Inc. is the real party-in-interest.
`
`
`
`B. Related Matters
`Apple is not aware of any disclaimers, certificates, or petitions for IPR for
`
`the ’862 Patent. The ’862 Patent has been the subject of two civil actions in the
`
`Eastern District of Texas, captioned as Civil Action Nos. 4-14-cv-00827 and 6:15-
`
`cv-0085, and one civil action in the Northern District of California, captioned as
`
`Civil Action No. 3-16-cv-02595 (currently pending). Apple previously filed two
`
`petitions for IPR of related patents in IPR control nos. IPR2016-01365 and
`
`IPR2016-01366. Apple is concurrently filing two additional petitions against the
`
`’862 Patent, each challenging different claims than challenged in this petition.
`
`C. Lead And Back-Up Counsel
`Lead Counsel
`W. Karl Renner, Reg. No. 41,265
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Email: IPR39521-0025IP3@fr.com
`
`Backup Counsel
`Jeremy Monaldo, Reg. No. 58,680
`Andrew Patrick, Reg. No. 63,471
`Katherine A. Vidal, Reg. No. 46,333
`
`
`1
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`

`
`Attorney Docket No. 39521-0025IP3
`IPR of U.S. Patent No. 8,880,862
`
`D.
`Service Information
`Please address all correspondence/service to the address listed above. Apple
`
`consents to electronic service by email at IPR39521-0025IP3@fr.com.
`
`II.
`PAYMENT OF FEES
`Apple authorizes charge of necessary fees to Deposit Acct. 06-1050.
`
`III. REQUIREMENTS FOR IPR
`
`A. Grounds for Standing
`Apple certifies that the ’862 Patent is available for IPR. This Petition is be-
`
`ing filed within one year of service of a complaint against Apple on October 8,
`
`2015. Apple is not barred or estopped from requesting review of the Challenged
`
`Claims.
`
`B. Challenge and Relief Requested
`Apple requests IPR of the Challenged Claims on the grounds in the table
`
`shown below, as explained below and in Exhibit APPLE-1003, the Declaration of
`
`Dr. Charles Neuhauser (“Dec.”).
`
`Basis
`’862 Claims
`Ground
`Ground 1 5, 35-46, 97
`Obvious over Settsu
`Ground 2 5, 35-46, 97, 98, 112 Obvious over Settsu and Zwiegincew
`Ground 3 5, 35-46, 97
`Obvious over Settsu and Dye
`Ground 4 5, 35-46, 97, 98, 112 Obvious over Settsu, Zwiegincew, and Dye
`
`
`2
`
`

`
`Attorney Docket No. 39521-0025IP3
`IPR of U.S. Patent No. 8,880,862
`The earliest proclaimed priority date of the ’862 Patent is February 3, 2000.
`
`As shown below, each reference pre-dates this date and qualifies as prior art:
`
`Reference
`Settsu
`Zwiegincew
`Dye
`
`Date
`Mar. 3, 1999 (filed)
`Mar. 30, 1999 (filed)
`Apr. 26, 1999 (filed)
`
`Prior art §
`102(e)
`102(e)
`102(e)
`
`
`
`IV.
`
`INTRODUCTION
`A.
`’862 Patent Overview
`The ’862 Patent relates “to data storage controllers” that “provide acceler-
`
`ated loading of operating systems and application programs.” ’862, 1:20-26. As
`
`depicted by FIG. 1 below, the ’862 Patent describes a data storage controller 10
`
`that is “operatively connected” to a hard disk 11 and to a host system’s bus 16. Id.,
`
`5:63-6:53. The controller 10 includes a cache 13 for data storage/preloading, and a
`
`data compression engine 12 for data compression/decompression. Id., 5:63-6:53,
`
`20:50-22:11.
`
`3
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`Attorney Docket No. 39521-0025IP3
`IPR of U.S. Patent No. 8,880,862
`
`The ’862 Patent explains that, following reset or power on of a computer
`
`
`
`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., 20:36-49. The ’862 Patent recognizes that
`
`this functionality results in a problem of slow boot of the computer system. Id.
`
`As a solution, the ’862 Patent proposes that “a data storage controller …
`
`may employ a technique of data preloading to decrease the computer system boot
`
`time.” Id., 20:50-52. For example, “[s]ince the same portions of the operating sys-
`
`tem must be loaded upon each boot process,” the controller, “prior to host system
`
`reset,” “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.,
`
`20:58-21:2. “Once the data is preloaded, when the computer system bus issues its
`
`4
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`Attorney Docket No. 39521-0025IP3
`IPR of U.S. Patent No. 8,880,862
`first commands” to the controller, the “data will already be available in the [con-
`
`troller’s] cache memory,” enabling the controller to “instantly start transmitting the
`
`data to the system bus,” which results in a faster boot process. Id., 21:3-8.
`
`The ’862 Patent describes techniques for preloading involving boot data lists
`
`that “allow the data storage controller to know what data to preload from the boot
`
`device.” Id., 21:18-21. “One technique utilizes a custom utility program that
`
`would allow the user to specify what applications/data should be preloaded,” while
`
`another uses “an automatic process that requires no input from the user,” in which
`
`the controller maintains a list of data associated with requests received from “the
`
`host system after a power-on/reset.” Id., 21:18-23, 21:24-22:11. With the latter
`
`technique, the controller analyzes actual data requests that result from power-on/re-
`
`set and, based on the analysis, automatically selects the applications/data to preload
`
`to the local cache memory to speed the boot process. Id. This automatic selection
`
`of applications/data to preload results in updates to the boot data list when, for ex-
`
`ample, data requests change from one power-on/reset to another. Dec., ¶¶22-23;
`
`’862 Patent, 21:24-22:11.
`
`To supplement the proposed preloading solution, the ’862 Patent contem-
`
`plates using compression on the preloaded data. Id., 21:8-12. In this case, “if the
`
`data was stored in compressed format on the boot device, the data will be decom-
`
`pressed” “[b]efore transmission to the bus.” Id., 21:8-12. With this structure, the
`
`5
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`

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`Attorney Docket No. 39521-0025IP3
`IPR of U.S. Patent No. 8,880,862
`’862 Patent contends that “preloading required (compressed) portions of the oper-
`
`ating system significantly reduces the computer boot process time.” Id., 21:10-12.
`
`B.
`
`Settsu Shows that Preloading Compressed Boot Data was
`Known to Decrease Computer System Boot Time
`Like the ’862 Patent, Settsu describes accelerated loading of an operating
`
`system (“OS”) and frequently used applications. Settsu, 1:8-12 (“The present in-
`
`vention relates to an information processing apparatus capable of reducing the time
`
`required for booting itself when it is powered on, and a method of booting an infor-
`
`mation processing apparatus at a high speed”), Abstract, 1:1-4, 1:43-2:25, 3:6-25,
`
`10:43-12:16, 13:49-15:4. In fact, and as explained in detail below, Settsu’s system
`
`is highly similar to that described by the ’862 Patent. See id., FIG. 12 (depicting a
`
`hard disk boot device 3 storing OS boot data, a memory 2 into which boot data is
`
`loaded, and a mini OS module 7 that facilitates the boot process).
`
`
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`6
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`

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`Attorney Docket No. 39521-0025IP3
`IPR of U.S. Patent No. 8,880,862
`In more detail, and as shown in Settsu’s FIG. 12, Settsu’s boot device 3 is
`
`subdivided into a “boot block 4,” which stores a “mini OS module 7” with “func-
`
`tions required for bootstrap processing,” and a “file system 5,” which stores an
`
`“OS main body module” “with OS functions.” Settsu, 7:65-8:23, 13:49-65. As de-
`
`picted, the OS main body module is itself divided into “a plurality of functional
`
`modules” that “are separately stored as compressed files” in “file system 5 of boot
`
`device 3.” Id., 13:55-65.
`
`In a series of operations starting from “[w]hen the information processing
`
`apparatus is powered on,” the mini OS module 7 loads the OS main body module’s
`
`plurality of compressed files into memory 2. Settsu, Abstract, 8:21-35, 8:66-9:3,
`
`9:7-11, 11:7-9. The plurality of compressed files loaded into memory 2 are then
`
`decompressed to facilitate a computer system’s boot process. Id., Abstract 1:1-4,
`
`1:51-57, 3:6-9, 13:49-15:5. By using compression/decompression on preloaded
`
`data, Settsu explains that “the time required for I/O processing can be reduced,”
`
`which “further reduce[s] the time required for booting up.” Id., 14:58-15:5.
`
`During prosecution, the Examiner cited Settsu as anticipating independent
`
`claim 5 (then independent claim 6) of the ’862 Patent in a February 19, 2014 Of-
`
`fice Action, noting that Settsu taught every feature then presented in the claim, in-
`
`cluding: “maintaining a list of compressed boot data for booting a computer sys-
`
`tem,” “storing compressed boot data associated with the list of compressed boot
`
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`Attorney Docket No. 39521-0025IP3
`IPR of U.S. Patent No. 8,880,862
`data on a non-volatile memory,” “loading the compressed boot data from the non-
`
`volatile memory to a second memory,” “accessing the compressed boot data from
`
`the second memory,” “decompressing the compressed boot data to provide decom-
`
`pressed boot data,” “and utilizing the decompressed boot data to boot the computer
`
`system, wherein the accessing and the decompressing occur within a period of time
`
`which is less than a time to access the boot data from the non-volatile memory in
`
`an uncompressed form.” Prosecution History, 289-290.
`
`In response, the Applicant amended the independent claims on May 6, 2014
`
`to include an additional feature: “updating the boot data list.” Id., 229-261. After
`
`an additional round of prosecution in which no further substantive amendments to
`
`independent claim 5 (then independent claim 6) were presented, the Examiner al-
`
`lowed the application, including the Challenged Claims. Id., 75-81, 120-166.
`
`However, as Dr. Neuhauser explains in the affidavit accompanying this Petition,
`
`which was unavailable to the Examiner, updating a list of boot data was well-
`
`known by February 3, 2000, the ’862 Patent’s earliest priority date, and a person of
`
`ordinary skill in the art as of that date (“POSITA”) would have been motivated to
`
`update boot data lists in Settsu’s system. Dec., ¶¶32, 117-118. As such, Petitioner
`
`respectfully submits that the arguments presented in this Petition (and supported by
`
`Dr. Neuhauser’s testimony) with respect to the obviousness of the Challenged
`
`8
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`

`
`Attorney Docket No. 39521-0025IP3
`IPR of U.S. Patent No. 8,880,862
`Claims over Settsu alone are new, and that IPR should be instituted, as a reasona-
`
`ble likelihood exists that Apple will prevail in proving the Challenged Claims un-
`
`patentable.
`
`Moreover, as discussed below, updating a list of boot data was itself well-
`
`known prior to the ’862 Patent, and the Examiner never considered a combination
`
`of Settsu with Zwiegincew, a reference that discloses updating a boot data list in
`
`the context of preloading compressed boot data to increase boot speed. Dec., ¶¶37-
`
`40.
`
`C. Zwiegincew Confirms that Updating a Boot Data List Was
`Well-Known in the Context of Preloading Compressed Boot
`Data to Decrease Computer System Boot Time
`A POSITA would have been motivated, for example, by Zwiegincew to up-
`
`date boot data lists in Settsu’s system. Zwiegincew recognizes the problem of
`
`slow boot time that results when hard page faults occur during the boot process.
`
`Zwiegincew, 1:45-51, 2:12-15, 5:50-51. To address this problem and improve
`
`boot speed, Zwiegincew proposes pre-fetching, from a hard disk to memory, pages
`
`that are expected to be requested during the boot process, thereby reducing occur-
`
`rence of hard page faults. Id., Abstract, 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 de-
`
`tected, a corresponding scenario file is fetched from disk storage and the deter-
`
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`Attorney Docket No. 39521-0025IP3
`IPR of U.S. Patent No. 8,880,862
`mined pages, or copies thereof, are transferred into RAM.” Id., Abstract. Zwieg-
`
`incew also recognizes the benefit of using compression on the pre-fetched page
`
`data. For instance, Zwiegincew’s system includes “a disk compressor/decompres-
`
`sor,” which employs “[w]ell known compression algorithms” on pre-fetched data
`
`to achieve pre-fetch time improvements. Id., 8:66-9:13, FIGS. 1, 2.
`
`A POSITA would have recognized that, as described by Zwiegincew, a sce-
`
`nario file used in the context of preventing hard page faults during boot is a form
`
`of boot data list, at least because the scenario file includes copies of, or references
`
`to, data used during the boot process (i.e., boot data). Dec., ¶¶37-39; Zwiegincew,
`
`Abstract, 2:43-3:49.
`
`Zwiegincew 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.” Zwiegincew, 6:29-67. For example, a “hard page fault ana-
`
`lyzer 240 may log hard page faults that occur upon execution of a process,” and “a
`
`pattern matching algorithm may be used to find a pattern of hard page faults based
`
`on all log files generated for the process.” Id., 7:24-34. “If a pattern of hard page
`
`faults is found, a new scenario file may be generated based on the pages that are re-
`
`trieved from disk during the pattern,” with pages corresponding to faults that “re-
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`Attorney Docket No. 39521-0025IP3
`IPR of U.S. Patent No. 8,880,862
`occur frequently” being included in the generated scenario file. Id., 6:29-61, 7:24-
`
`38.
`
`Zwiegincew further describes that “[a]utomatically generated scenario files
`
`may be subject to subsequent refinement” based on pattern recognition, to ensure
`
`that pages corresponding to faults that “re-occur frequently” are included. Zwieg-
`
`incew, 6:29-61, 7:24-40. In this regard, like the ’862 Patent, Zwiegincew describes
`
`automatically updating a boot data list, for the purpose of ensuring that frequently
`
`requested data is available in memory during the boot process. Dec., ¶40.
`
`From this and related description, a POSITA would have been motivated to
`
`automatically update Settsu’s boot data lists based on patterns of requests received
`
`during Settsu’s boot process. Dec., ¶40; Zwiegincew, 6:29-61, 7:24-40. A
`
`POSITA would have been motivated to ensure that frequently requested boot data
`
`is loaded into memory 2 with corresponding updates to Settsu’s boot data lists.
`
`Dec., ¶40.
`
`A POSITA also would have recognized that the occurrence of hard page
`
`faults during Settsu’s boot process could be reduced by adapting Settsu’s system to
`
`pre-fetch, from boot device 3 into memory 2, pages that are expected to be re-
`
`quested during the boot process, in the manner described by Zwiegincew. Dec.,
`
`¶41. Indeed, a POSITA would have recognized that Zwiegincew’s techniques for
`
`11
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`Attorney Docket No. 39521-0025IP3
`IPR of U.S. Patent No. 8,880,862
`reducing the time required for a system to boot are complementary to those de-
`
`scribed by Settsu. Dec., ¶41. Accordingly, a POSITA would have recognized that
`
`modifying Settsu’s system to use scenario files and related processes, such as those
`
`described by Zwiegincew, would further Settsu’s stated goal of booting at a high
`
`speed. Dec., ¶41; Settsu, Abstract, 1:43-2:25, 3:6-25, 10:43-12:16, 13:49-15:4;
`
`Zwiegincew, Abstract, 1:45-51, 1:5-3:55, 2:12-15, 5:50-51, 8:66-9:13, FIGS. 1, 2.
`
`As such, a POSITA would have been motivated to modify Settsu’s system to gen-
`
`erate, store, and update scenario files on boot device 3, and to pre-fetch, from boot
`
`device 3 into memory 2, pages that are expected to be requested during the boot
`
`process, as identified in the scenario files. Dec., ¶41.
`
`As noted above, the Examiner never considered the combination of Settsu
`
`with Zwiegincew, a reference that complements Settsu’s teachings of increasing
`
`boot speed by preloading compressed boot data with disclosure of updating a boot
`
`data list in the same context. As such, Petitioner respectfully submits that the argu-
`
`ments presented in this Petition (and supported by Dr. Neuhauser’s testimony) with
`
`respect to the obviousness of the Challenged Claims over Settsu and Zwiegincew
`
`are new, and that IPR should be instituted, as a reasonable likelihood exists that
`
`Apple will prevail in proving the Challenged Claims unpatentable.
`
`12
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`Attorney Docket No. 39521-0025IP3
`IPR of U.S. Patent No. 8,880,862
`
`V. CLAIM CONSTRUCTION
`The broadest reasonable construction is applied herein 1. For purposes of
`
`IPR, “boot data” should be construed broadly enough to include and be met by data
`
`associated with data requests expected to result from a system power-on/reset.
`
`Dec., ¶62.
`
`Many claims of the ’862 Patent recite “boot data.” Claim 5 recites “storing
`
`boot data in a compressed form … loading the stored compressed boot data … ac-
`
`cessing the loaded compressed boot data; decompressing the accessed compressed
`
`boot data; utilizing the decompressed boot data ….” ’862, 26:60-27:8.
`
`A POSITA would have understood that boot data includes operating system
`
`data. Dec., ¶64. Claim 36 recites that “the boot data comprises: a program code
`
`associated with an operating system of the computer system.” ’862, 29:49-52.
`
`
`1 The claim construction standard for district court (“ordinary and customary
`
`meaning”) is different than the broadest reasonable interpretation standard applied
`
`in IPR. Due to the different standards, disclosure of the references identified by
`
`Petitioner as teaching a claim term of the ’862 Patent is not an admission that the
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`claim term is met by any disclosure for infringement purposes, or that the claim
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`term is enabled or meets the requirements for written description.
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`
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`13
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`

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`Attorney Docket No. 39521-0025IP3
`IPR of U.S. Patent No. 8,880,862
`The ’862 Patent’s specification also describes that boot data includes operat-
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`ing system data. Id., Abstract; 3:47-49; 9:9-14; 20:36-21:12. For instance, the
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`’862 Patent describes the “operating system” as an example of boot data retrieved
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`“upon host computer power-up and/or assertion of a system-level ‘reset.’” Id., 9:9-
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`14 (“boot data (e.g., operating system, etc.)”).
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`A POSITA also would have understood that boot data includes data other
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`than operating system data. Dec., ¶66. Claim 41 recites that “the boot data com-
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`prises: a program code associated with … an application program.” ’862, 30:1-4.
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`The ’862 Patent’s specification confirms that boot data includes data other
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`than operating system data. Id., Abstract; 3:47-49; 9:9-14; 21:3-22:10. Indeed, the
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`’862 Patent describes preloading “computer operating systems and applications,”
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`and that, “[i]n addition to preloading operating system data, the data storage con-
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`troller could also preload other data that the user would likely want to use at
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`startup,” including data associated with “a frequently used application such as a
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`word processor and any number of document files.” Id., 9:9-14, 21:3-17 (empha-
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`ses added). Thus, “the data storage controller... utilizes a custom utility program
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`that would allow the user to specify what applications/data should be preloaded.”
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`Id., 21:18-21. As this disclosure confirms, the preloaded boot data includes other
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`data (e.g., applications/files) because this other data is expected to be requested af-
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`ter a system power-on/reset. Id., 21:3-17; Dec., ¶67.
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`14
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`

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`Attorney Docket No. 39521-0025IP3
`IPR of U.S. Patent No. 8,880,862
`This description is consistent with the ’862 Patent’s description of auto-
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`mated preloading of any data requested after a system power-on/reset. See id.,
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`21:24-22:11. In the ’862 Patent, the “data storage controller maintain[s] a list com-
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`prising the data associated with the first series of data requests received by the data
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`storage controller by the host system after a power-on/reset.” Id., 21:24-30. The
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`’862 Patent does not limit what type of data is contemplated by “the data associ-
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`ated with … data requests,” leaving the disclosure general and, under the broadest
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`reasonable interpretation, covering any data requested by the system on/after
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`startup, including operating system data, application data, and document files, as
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`discussed above. Id., 21:12-22:11. In fact, the ’862 Patent defines “the boot data
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`specified on the list” generally as “the data associated with the expected data re-
`
`quests.” Id., 21:43-48 (“the boot data specified on the list (i.e., the data associated
`
`with the expected data requests)”) (emphasis added).
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`Further, the ’862 Patent confirms that a “boot” includes a “power-on” or “re-
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`set.” Id., 21:24-52. In fact, the ’862 Patent describes “an initial power-up event”
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`as a “cold boot” and “resets” as “warm boots.” Id., 9:39-42; 12:34-41; 12:52-61.
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`Thus, in the ’862 Patent, a “boot” involves “a system power-on/reset.” Dec., ¶¶68-
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`69. As a consequence, and coupled with the general disclosure of “boot data” in-
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`cluding data associated with expected data requests, a POSITA would have under-
`
`stood that “boot data,” as used in the ’862 Patent, should be interpreted broadly
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`15
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`

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`Attorney Docket No. 39521-0025IP3
`IPR of U.S. Patent No. 8,880,862
`enough to include and be met by “data associated with data requests expected to
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`result from a system power-on/reset.” Dec., ¶69.
`
`VI. APPLICATION OF PRIOR ART TO CHALLENGED CLAIMS
`As detailed above (incorporated herein) and below, this request shows a rea-
`
`sonable likelihood that Petitioner will prevail on the Challenged Claims.
`
`A. GROUNDS 1-2 – Claims 5, 35-46, and 97 are obvious over
`Settsu Alone (Ground 1) and Claims 5, 35-46, 97, 98, and 112 are
`obvious over Settsu in view of Zwiegincew (Ground 2)
`Claims 5, 35-46, and 97 of the ’862 Patent are obvious over Settsu alone,
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`and claims 5, 35-46, 97, 98, and 112 are obvious over a combination of Settsu and
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`Zwiegincew. As discussed in Sections IV.B. and IV.C., Settsu teaches increasing
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`boot speed by preloading compressed boot data, and Zwiegincew complements
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`Settsu’s teachings with disclosure of updating a boot data list in the same context.
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`Dec., ¶¶70-71. Accordingly, Zwiegincew would have provided a POSITA addi-
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`tional motivation to update boot data lists in Settsu’s system. Dec., ¶¶38-40.
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`Thus, Petitioner proposes, as Ground 1, that claims 5, 35-46, and 97 are obvious
`
`over Settsu and, as Ground 2, that claims 5, 35-46, 97, 98, and 112 are obvious
`
`over the combination of Settsu with Zwiegincew.
`
`In the combination of Settsu and Zwiegincew, Settsu is applied in a similar
`
`manner to that discussed below with respect to obviousness over Settsu alone. In-
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`deed, the analysis and citations to Settsu presented in Section VI.A. applies equally
`
`16
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`

`
`Attorney Docket No. 39521-0025IP3
`IPR of U.S. Patent No. 8,880,862
`to Grounds 1 and 2. Ground 2 simply relies on Zwiegincew for additional motiva-
`
`tion and guidance with respect to certain features of the Challenged Claims. Ex-
`
`amples of additional motivation and guidance, including discussion of how Zwieg-
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`incew further motivates updating boot data lists in Settsu’s system, are provided
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`below for claim elements 5.1-5.2, 5.6, 37.0-39.0, 44.0-46.0, 97.0-98.0, and 112.0.
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`The remaining claim elements are addressed fully, in both Grounds 1 and 2, by the
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`analysis and citations to Settsu.
`
`Thus, as discussed in Sections IV.B. and IV.C., and below, claims 5, 35-46,
`
`and 97 of the ’862 Patent are obvious over Settsu, and claims 5, 35-46, 97, 98, and
`
`112 are obvious over Settsu and Zwiegincew.
`
`5.0: A method for booting a computer system, the method comprising:
`
`
`
`As explained in Section IV.B., Settsu describes “an information processing
`
`apparatus capable of reducing the time required for booting itself when it is pow-
`
`ered on, and a method of booting an information processing apparatus at a high
`
`speed” (emphasis added). Settsu, 1:8-12; see also id., Abstract, 1:43-2:25, 3:6-25,
`
`17
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`

`
`Attorney Docket No. 39521-0025IP3
`IPR of U.S. Patent No. 8,880,862
`10:43-12:16, 13:49-15:4.2 Settsu’s “information processing apparatus” is a com-
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`puter system. See id.; Dec., ¶70.
`
`
`2 Settsu describes multiple “preferred embodiments,” including the “fourth embodi-
`
`ment” depicted in Settsu’s FIG. 12. Because Settsu’s FIGS. 1 and 5 (depicting, re-
`
`spectively, Settsu’s first and second embodiments) include “the same reference nu-
`
`merals . . . designat[ing] the same or like elements,” Settsu omits description of
`
`those elements from its discussion of FIG. 12. Settsu, 10:43-51, 13:49-55. Even
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`where numerals referring to similar elements differ between these embodiments,
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`Settsu is clear that functionality ascribed to elements from one embodiment applies
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`equally to similar elements of other embodiments. Dec., ¶¶27-30. For instance,
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`Settsu describes the “OS loading and decompression processing module 50” of the
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`fourth embodiment, e.g., as performing, in addition to other functions, the func-
`
`tions of the “OS load processing module 30” of the second embodiment, which
`
`module 50 replaces. Settsu, 14:6-12. From this and related disclosure, a POSITA
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`would have understood and found it obvious that the description of elements pro-
`
`vided by Settsu with respect to one embodiment applies equally to similar elements
`
`of other embodiments. Dec., ¶70. Accordingly, Petitioner has provided, in the dis-
`
`cussion that of Settsu, quotation from, and citation to, disclosure from several of
`
`Settsu’s embodiments.
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`18
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`

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`Attorney Docket No. 39521-0025IP3
`IPR of U.S. Patent No. 8,880,862
`In this regard, Settsu discloses a method for booting a computer system.
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`Dec., ¶70.
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`5.1: storing boot data in a compressed form that is associated with a portion of
`
`a boot data list in a first memory;
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`As explained in Section IV.B., Settsu describes an “information processing
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`apparatus” (i.e., a computer system) that includes a “memory 2” and a “boot device
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`3.” Settsu, 7:65-8:23. The ’862 Patent uses a similar “boot device (e.g., hard
`
`disk)” and suggests that its hard disk boot device qualifies as a memory. See ’862
`
`Patent, 21:45-65. Indeed, during prosecution, Patent Owner confirmed that “[o]ne
`
`of ordinary skill in the art would recognize the ‘boot device (e.g., hard disk)’ as be-
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`ing an example of ‘a first memory.’” Prosecution History, August 20, 2014 Re-
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`sponse to Final Rejection, p. 39. Thus, Settsu’s “boot device 3” is a first memory.
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`Dec., ¶74.
`
`In addition, Settsu’s “boot dev