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 IPR2016-01739
`Patent 8,880,862
`
`_______________
`
`
`
`PATENT OWNER REALTIME DATA, LLC D/B/A IXO’S
`PRELIMINARY RESPONSE
`
`
`
`

`
`TABLE OF CONTENTS
`
`I.  
`
`II.  
`
`INTRODUCTION .......................................................................................... 1  
`
`OVERVIEW OF THE ‘862 PATENT AND APPLE’S CHALLENGES TO
`THE CLAIMS ................................................................................................ 3  
`
`A.   The ‘862 Patent ............................................................................................... 3  
`
`B.   Apple’s Challenges to the ‘862 Patent ........................................................... 4  
`
`C.   Claim Construction ......................................................................................... 8  
`
`III.   THE PETITION FAILS TO SHOW A REASONABLE LIKELIHOOD OF
`SUCCESS ....................................................................................................... 8  
`
`A.   Apple’s Petition is Cumulative and Duplicative of Prior Art and Issues
`Previously Considered by the PTO ................................................................ 9  
`
`B.   Ground 1: Challenged Claims Are Not Rendered Obvious by Settsu .......... 17  
`
`1.   Settsu does not teach “storing boot data in compressed form that is
`associated with…a boot data list” ............................................................. 17  
`
`2.   Apple uses impermissible hindsight to modify Settsu to render obvious
`“updating the boot data list” ..................................................................... 25  
`
`C.   Ground 2: Challenged Claims Are Not Rendered Obvious by Settsu in view
`of Zwiegincew .............................................................................................. 30  
`
`1.   Zwiegincew Does Not Cure Apple’s Deficiencies for Claim Element
`5.1 ............................................................................................................. 30  
`
`2.   The combination of Settsu and Zwiegincew does not render obvious
`“updating the boot data list” ..................................................................... 32  
`
`D.   Grounds 3-4: Challenged Claims Are Not Rendered Obvious by Settsu in
`view of Dye .................................................................................................. 34  
`
`1.   Apple uses impermissible hindsight to combine Settsu and Dye ............. 35  
`
`2.   Even if the combination of Settsu and Dye were proper, the combination
`does not render obvious claim element 5.7 .............................................. 37  
`
`  i
`
`

`
`IV.   THE PETITION FAILS TO COMPLY WITH REQUISITE STATUTORY
`AND RULE REQUIREMENTS .................................................................. 39  
`
`A.   The Petition Violates the Board’s Rules to Specify Statutory Grounds and
`Governing Laws and Precedent .................................................................... 39  
`
`B.   Grounds 2-4 Are Redundant of Ground 1 and Violate the Board’s Rules ... 42  
`
`C.   The Board Should Exercise Its Discretion to Deny Additional Petitions that
`Present Same Arguments as Those Presented Here ..................................... 45  
`
`V.  
`
`CONCLUSION ............................................................................................ 47  
`
`
`
`
`
`  ii
`
`

`
`TABLE OF AUTHORITIES
`
`Cases  
`Apple, Inc. v. ContentGuard Holdings, Inc.,
`IPR2015-00453, Paper 9 (P.T.A.B. July 13, 2015) ............................................. 44
`
`ATD Corp. v. Lydall, Inc.,
`159 F.3d 534 (Fed. Cir. 1998) ............................................................................. 40
`
`Bettcher Indus., Inc. v. Bunzl USA, Inc.,
`661 F.3d 629 (Fed. Cir. 2011) ............................................................................. 24
`
`Butamax Advanced Biofuels LLC, v. Gevo, Inc.,
`IPR2014–00581, Paper 8 (P.T.A.B. Oct. 14, 2014) ............................................ 45
`
`Ceramtec GmbH v. Cermedic, LLC,
`IPR2015-00424, Paper 9 (P.T.A.B. July 7, 2105) ............................................... 11
`
`Conobco, Inc. dba Unilever, Inc. v. The Proctor & Gamble Co.,
`IPR2014- 00506, Paper 17 (P.T.A.B. July 7, 2014) ............................................ 10
`
`Conopco, Inc. v. Proctor & Gamble Co.,
`IPR2013-00510, Paper 9 (P.T.A.B. Feb. 12, 2014) ............................................ 25
`
`Ford Motor Co. v. Paice LLC & Abell Found., Inc.,
`IPR2015-00767, Paper 14 (P.T.A.B. Aug. 18, 2015) .......................................... 47
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .............................................................................. 27, 30, 40, 41
`
`Grain Processing Corp. v. Am. Maize-Prod. Co.,
`840 F.2d 902 (Fed. Cir. 1988) ............................................................................. 27
`
`In re Chaganti,
`2014 WL 274514 (Fed. Cir. 2014) ...................................................................... 19
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ....................................................................... 17, 26
`
`In re Robertson,
`169 F.3d 743 (Fed. Cir. 1999) ............................................................................. 24
`
`  iii
`
`

`
`Innogenetics, N.V. v. Abbott Labs.,
`512 F.3d 1363 (Fed. Cir. 2008) ........................................................................... 26
`
`Integrated Global Concepts, Inc. v. Advanced Messaging Techs., Inc.,
`IPR2014-01027, Paper 16 (P.T.A.B. Dec. 22, 2014) .................................. 1, 2, 14
`
`Jacobs Corp. v. Genesis III, Inc.,
`IPR2014-01267, Paper 12 (Jan. 22, 2015) .......................................................... 19
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) ........................................................................... 26
`
`KSR Int'l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) .......................................................................... 19, 27, 29, 36
`
`LG Elecs., Inc. v. ATI Techs. ULC,
`IPR2015-00327, Paper 13 (P.T.A.B. July 10, 2015) ........................................... 47
`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-000003, Paper 7 (P.T.A.B. Oct. 25, 2012) .................................. 42, 44
`
`Microboards Tech., LLC v. Startasys Inc.,
`IPR2015-00287, Paper 13 (P.T.A.B. May 28, 2015) .......................................... 11
`
`Prism Pharma Co., Ltd. v. Choongwae Pharma Corp.,
`IPR2014-00315, Paper 14 (P.T.A.B. July 8, 2014) ............................................. 11
`
`Samsung Elecs. Co., Ltd. v. Affinity Labs of Tex., LLC.,
`IPR2015-00820, Paper 12 (P.T.A.B. Feb. 16, 2016) .......................................... 46
`
`Samsung Elecs. Co., Ltd. v. Rembrandt Wireless Techs., LP,
`IPR2015–00114, Paper 14 (P.T.A.B. Jan. 28, 2015) .......................................... 46
`
`SAS Inst. Inc. v. Complementsoft, LLC,
`IPR2013-00581, Paper 15 (P.T.A.B. Dec. 30, 2013) .......................................... 10
`
`Spansion Inc. v. Macronix Int’l Co.,
`IPR2014-01116, Paper 12 (P.T.A.B. Dec. 22, 2014) .................................... 23, 25
`
`Symantec Corp. v. RPost Comm’ns Ltd.,
`IPR2014-00355, Paper 12 (July 15, 2014) .............................................. 19, 20, 21
`
`  iv
`
`

`
`Toshiba Corp. v. Intellectual Ventures II LLC,
`IPR2014-00201, Paper 11 (P.T.A.B. May 21, 2014) .......................................... 25
`
`Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc.,
`617 F.3d 1296 (Fed. Cir. 2010) ........................................................................... 19
`
`Vista Outdoor Operations LLC v. Liberty Ammunition, LLC,
`IPR2016-00539, Paper 9 (P.T.A.B. Aug. 3, 2016) ....................................... passim
`
`W.L. Gore & Associates v. Garlock,
`721 F.2d 1540 (Fed. Cir. 1983) ..................................................................... 29, 36
`
`Statutes  
`35 U.S.C. § 312(a)(3) .............................................................................................. 39
`
`35 U.S.C. § 314(a) .................................................................................................. 47
`
`35 U.S.C. § 325(d) .................................................................................................. 46
`
`Rules  
`37 C.F.R. § 42.1(b) ................................................................................................. 46
`
`37 C.F.R. § 42.104(b)(5) ......................................................................................... 39
`
`37 C.F.R. § 42.108 .................................................................................................. 42
`
`37 C.F.R. § 42.20(c)................................................................................................ 39
`
`37 C.F.R. § 42.22(a)................................................................................................ 39
`
`  v
`
`

`
`
`
`I.  
`
`INTRODUCTION
`
`Apple seeks to invalidate the ‘862 Patent based on three references that the
`
`Patent Office previously considered: Settsu, Zwiegincew, and Dye. This alone is
`
`grounds for the Board to decline to institute. The Board has discretion to deny
`
`petitions such as these when they are based on the same prior art or same
`
`arguments previously considered by the Office. To protect patentees from such
`
`repetitive challenges, 35 U.S.C. § 325(d) provides:
`
`In determining whether to institute or order a proceeding under this
`chapter, chapter 30, or chapter 31, the Director may take into account
`whether, and reject the petition or request because, the same or
`substantially the same prior art or arguments previously were presented
`to the Office.
`
`Apple provides no basis for the Board to forego applying Section 325(d)
`
`here. Apple did file a declaration from its expert discussing this art, but the Board
`
`has deemed such declarations insufficient to warrant institution. For instance,
`
`in Integrated Global Concepts v. Advanced Messaging Technologies, the only new
`
`evidence presented by the petitioner was an expert declaration.1 In denying that
`
`petition, the Board pronounced that “the Petition did not present any persuasive
`
`evidence to supplement the record that was before the Office during”
`
`
`1 IPR2014-01027, Paper 16 at 7-8 (P.T.A.B. Dec. 22, 2014).
`
`  1
`
`

`
`examination.2 The same conclusion applies here, and the Petition should be denied
`
`for presenting the same art already considered by the Office.
`
`The Petition should also be denied for several other reasons. For instance,
`
`Apple does not provide any rationale explaining how a skilled artisan would have
`
`combined various embodiments of Settsu to arrive at the claimed invention, or
`
`motivation to do so. The Board has denied petitions for failure to provide the
`
`requisite rationale to combine multiple embodiments within a single reference.3 In
`
`doing so, the Board cautioned that “[i]t is Petitioner’s responsibility to explain
`
`specific evidence that support its arguments, not the Board’s responsibility to
`
`search the record and piece together what may support Petitioner’s arguments.” 4
`
`Moreover, Apple fails to explain how Zwiegincew’s disclosure of a new scenario
`
`file would have provided motivation to “update [a] boot data list,” as claimed.
`
`Further still, Apple’s reliance on Dye is misplaced as it succumbs to impermissible
`
`hindsight and does not address the inadequacies of Settsu and Zwiegincew. And
`
`
`2 Id. at 8 (prior art and arguments had been considered by Patent Office during
`
`reexamination).
`
`3 See, e.g., Vista Outdoor Operations LLC v. Liberty Ammunition, LLC, IPR2016-
`
`00539, Paper 9 at 18 (P.T.A.B. Aug. 3, 2016).
`
`4 Id. at 15.
`
`  2
`
`

`
`finally, the Petition violates the Board’s rules requiring particularized identification
`
`of the basis for the request relief.
`
`Realtime thus respectfully requests that the Board decline to institute inter
`
`partes review on Grounds 1-4 of the Petition.
`
`II.   OVERVIEW OF THE ‘862 PATENT AND APPLE’S CHALLENGES
`TO THE CLAIMS
`A.   The ‘862 Patent
`
`Realtime’s ‘862 Patent is generally directed to systems and methods for
`
`providing accelerated loading of operating systems and application programs in a
`
`computer system.5 At the time of the invention, computer systems suffered from
`
`slow boot times. Also at that time, the widespread use of the Internet and
`
`multimedia applications led to an emphasis in the art on storage density,
`
`storewidth, and power consumption.6
`
`To address these concerns, the ‘862 Patent discloses and claims methods and
`
`systems directed to, inter alia, maintaining a list of boot data, loading boot data in
`
`compressed form that is associated with a portion of the boot data list into memory,
`
`accessing the loaded boot data, and decompressing the accessed boot data at a rate
`
`
`5 Ex. 1001 at 1:20-26.
`
`6 Id. at 1:58-61.
`
`  3
`
`

`
`that decreases a boot time of the operating system.7 Another aspect of the
`
`inventions disclosed and claimed in the ‘862 Patent is updating the boot data list by
`
`associating additional boot data, as well as removing an association of additional
`
`boot data associated with the list.8 In yet another aspect of the invention, the
`
`system includes a memory and a processor configured to load boot data in
`
`compressed form associated with a boot data list, to access the loaded boot data, to
`
`decompress the accessed portion of boot data, and to update the boot data list.9
`
`These systems and methods result in a faster boot up of computer systems.
`
`B.   Apple’s Challenges to the ‘862 Patent
`
`Apple challenges the validity of Claims 5, 35-46, 97, 98, and 112 of the ‘862
`
`Patent.10 Of these challenged claims, Claim 5 is independent. The proposed
`
`grounds of unpatentability are as follows:
`
`
`
`
`7 Id. at 3:42-59; 26:38-59; 26:60-27:25; 27:35-54; 28:1-43.
`
`8 Id. at 3:65-4:3; 26:38-59; 28:30-43; 28:58-67.
`
`9 Id. at 4:4-19: 28:9-33; 30:4-26.
`
`10 Petition at 2.
`
`  4
`
`

`
`Ground
`1
`
`2
`
`3
`
`4
`
`Claims
`5, 35-46, 97
`
`References11
`U.S. Patent No. 6,374,353 to Settsu
`(“Settsu”)
`5, 35-46, 97, 98, 112 Settsu and U.S. Patent No. 6,317,818 to
`Zwiegincew (“Zwiegincew”)
`Settsu and U.S. Patent No. 6,145,069 to
`Dye (“Dye”)
`Settsu, Zwiegincew, and Dye
`
`5, 35-46, 97
`
`5, 35-46, 97, 98, 112  
`
`
`
`Apple relies upon Settsu as the foundation of Grounds 1-4. The Patent
`
`Office previously considered Settsu during the prosecution of the ‘862 Patent.12
`
`Settsu discloses a process for booting up a system that comprises a boot device
`
`divided into a mini-operating system (“OS”) module and an OS main body
`
`
`11 Throughout this Preliminary Response, for ease of understanding, Realtime will
`
`refer to these references primarily by the names indicated above, rather than by
`
`exhibit number. Realtime reserves all rights to present further argument and
`
`evidence related to these references and the content of the Petition and supporting
`
`Exhibits if inter partes review is instituted, consistent with the Board’s Rules and
`
`practice. No waiver is intended by any argument withheld at this stage of the
`
`proceeding.
`
`12 Ex. 1002 Part 1 at 284-306.
`
`  5
`
`

`
`wherein modules of the OS main body may be stored as compressed files.13 Settsu
`
`describes various methods of booting in eleven distinct embodiments.14
`
`While Settsu arguably discloses compressing files of functional modules that
`
`may use for boot up, it does not teach the use of a “boot data list” for booting a
`
`computer system or associating compressed “boot data” with the boot data list. Nor
`
`does Settsu disclose updating the boot data list, as Apple concedes.15
`
`Apple also relies upon Zwiegincew in Grounds 2 and 4. The Patent Office
`
`also previously considered Zwiegincew during the prosecution of the ‘862 Patent.16
`
`Zwiegincew discloses a technique for pre-fetching pages, i.e., blocks of data, from
`
`a disk drive to save into virtual memory before a hard page fault sequence occurs.17
`
`This technique may create a scenario file 245 which either includes copies of the
`
`pages likely subject to a hard page fault or includes references to where those
`
`
`13 Settsu at Abs.; 1:51-65; 3:6-12.
`
`14 See, e.g., id. at 5:56-7:62.
`
`15 Petition at 34-36.
`
`16 Ex. 1002 Part 2 at 295.
`
`17 Zwiegincew at Abs.; 6:5-23.
`
`  6
`
`

`
`pages are saved on the disk device.18 While Zwiegincew arguably discloses pre-
`
`fetching pages likely needed due to hard page faults, it does not teach or suggest
`
`loading “boot data” associated with a “boot data list” or updating the boot data list,
`
`as required by the claims.
`
`Apple also relies upon Dye in Grounds 3-4. The Patent Office also
`
`previously considered Dye during the prosecution of the ‘862 Patent.19 Dye
`
`discloses flash memory having compression and/or decompression engines for use
`
`in Execute In Place and solid state disk computer architectures.20 Dye discloses a
`
`flash memory system with a flash memory array 100 and a Compression Enhanced
`
`Flash Memory Controller (“CEFMC”) 200.21 Embedded within CEFMC 200 are
`
`compression and decompression engines 260, 280.22 However, Dye does not
`
`disclose storing compressed “boot data” associated with a “boot data list” or
`
`loading that boot data from a first memory, such as an HDD, as set forth by the
`
`
`18 Id. at 6:62-7:39; see id. at 7:34-37 (disclosing that changes to the pages likely
`
`leading to hard page faults results in the creation of a new scenario file 245).
`
`19 Ex. 1002 Part 2 at 809.
`
`20 Dye at Abs.; Figs. 7-9; 2:32-39; 2:42-53.
`
`21 Id. at 8:29-31.
`
`22 Id. at Abs.; 8:48-52.
`
`  7
`
`

`
`claims. Similarly, Dye fails to disclose updating the boot data list, as recited in the
`
`claims.
`
`C.   Claim Construction
`
`Apple proposes that the claim term “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.”23 Realtime does not dispute that
`
`construction at this time because the term “boot data” is not material to Realtime’s
`
`arguments in this Preliminary Response. Realtime’s decision not to dispute
`
`Apple’s proposed construction, however, does not indicate that Realtime agrees
`
`with Apple’s construction. Realtime reserves the right to object to any of Apple’s
`
`constructions and propose alternative constructions in the future.
`
`III.   THE PETITION FAILS TO SHOW A REASONABLE LIKELIHOOD
`OF SUCCESS
`
`The Petition should be denied for two reasons. First, Apple relies on the
`
`same or substantially the same prior art and arguments already considered by the
`
`PTO. Second, there is no reasonable likelihood that Apple will succeed with
`
`
`23 Petition at 13-16. Apple also appears to propose constructions for the claim
`
`terms “list” and “direct memory access.” See id. at 22, 49-50 (citing Neuhauser
`
`Declaration at ¶¶ 78-79, 173). Realtime does not agree with these proposed
`
`constructions, but will not dispute them at this time.
`
`  8
`
`

`
`respect to at least one claim, because a person of ordinary skill in the art
`
`(“POSITA”) would not have modified Settsu alone or in view of Zwiegincew to
`
`include the step of “updating the boot data list.”
`
`A.   Apple’s Petition is Cumulative and Duplicative of Prior Art and
`Issues Previously Considered by the PTO
`
`The Board has broad discretion to deny a petition for inter partes review that
`
`raises the same or substantially the same prior art or arguments already considered
`
`by the PTO. Indeed, as explained by 35 USC § 325(d):
`
`In determining whether to institute or order a proceeding under this
`chapter, chapter 30, or chapter 31, the Director may take into account
`whether, and reject the petition or request because, the same or
`substantially the same prior art or arguments previously were presented
`to the Office.
`
`Section 325(d) applies in two scenarios. First, a petition should be rejected for
`
`raising “the same or substantially the same prior art” that was previously presented
`
`to the Office. Second, a petition that raises the same or substantially the same
`
`arguments that were previously presented to the Office should be rejected. Here,
`
`denial is warranted for each of Grounds 1-4 because the PTO has already
`
`considered the same prior art and substantially the same arguments raised by
`
`Apple.
`
`The Board routinely invokes section 325(d) to deny inter partes review
`
`petitions asserting the same or substantially the same prior art or issues previously
`
`considered by the Office. For example, in Unilever, Inc. v. Proctor & Gamble, the
`
`  9
`
`

`
`petitioner asserted that the challenged patent was obvious based on different
`
`combinations of 13 prior art references.24 Some of the asserted grounds relied on
`
`references that had been previously considered in combination with references that
`
`were not previously considered.25 The Board determined that the Office had
`
`previously been presented with the same or substantially the same prior art.26 The
`
`Board further determined that even though some of the combinations contained
`
`new art, those combinations raised the same or substantially the same arguments
`
`the Board had previously considered.27 The Board thus declined to institute inter
`
`partes review.28
`
`Similarly, the Board in Prism Pharma v. Choongwae Pharma denied inter
`
`partes review when petitioner presented the same prior art reference that Examiner
`
`
`24 IPR2014- 00506, Paper 17 at 6-8 (P.T.A.B. July 7, 2014).
`
`25 Id. at 6.
`
`26 Id.
`
`27 Id. at 7-8.
`
`28 Id. at 8; see also SAS Inst. Inc. v. Complementsoft, LLC, IPR2013-00581, Paper
`
`15 at 4-5 (P.T.A.B. Dec. 30, 2013) (denying grounds relying on prior art and
`
`arguments previously presented to the Office as substantially similar).
`
`  10
`
`

`
`had previously considered during the original prosecution.29 The Board noted in
`
`Prism Pharma that, “[a]ware of the [prior art asserted in the petition], the
`
`Examiner, together with his supervisor, reviewed the materials and determined that
`
`that challenged claims were ‘free from prior art.’”30
`
`Here, Apple raises substantially the “same prior art” over which the PTO has
`
`already confirmed the patentability of the ‘862 Patent. As in Unilever and Prism
`
`Pharma, Apple relies on a primary reference, Settsu, that was previously presented
`
`to the PTO and considered by the Examiner, who determined the challenged claim
`
`
`29 IPR2014-00315, Paper 14 at 12-13 (P.T.A.B. July 8, 2014); see also
`
`Microboards Tech., LLC v. Startasys Inc., IPR2015-00287, Paper 13 at 11-12
`
`(P.T.A.B. May 28, 2015) (denying ground relying on same prior art and arguments
`
`previously presented to Examiner during prosecution and denying grounds
`
`modifying that same prior art in view of additional references); Ceramtec GmbH v.
`
`Cermedic, LLC, IPR2015-00424, Paper 9 at 11-12 (P.T.A.B. July 7, 2015)
`
`(denying petitioner’s grounds based on anticipation and obviousness of Hayashi
`
`reference because Examiner had considered that reference and found challenged
`
`claim allowable).
`
`30 IPR2014-00315, Paper 14 at 12-13.
`
`  11
`
`

`
`was patentable. Also, Apple cites secondary references, Zwiegincew and Dye, that
`
`were previously presented to the PTO.
`
`More specifically, Apple relies on Settsu to render obvious independent
`
`claim 5’s “updating the boot data list” limitation. The Patent Office, however,
`
`already considered Settsu.31 During prosecution, the Office issued a notice of
`
`allowance over previous rejections based on Settsu after Realtime amended claim 5
`
`to include the step of “updating the boot data list.”32 As such, Apple raises the
`
`same prior art that the Office has previously considered and found not to invalidate
`
`the ‘862 Patent.
`
`Petitioner’s reliance on Zwiegincew and Dye does not alter this conclusion.
`
`Apple asserts Zwiegincew’s disclosure of “scenario files” containing pages that
`
`may cause hard page faults renders obvious “updating the boot data list” step.33
`
`First, the Patent Office previously considered Zwiegincew when Realtime
`
`disclosed that reference to the Office during prosecution.34 As such, Apple again is
`
`
`31 See, e.g., Ex. 1002 Part 1 at 284-306.
`
`32 Id. at 78-80, 119-123 (issued claim 5 corresponds to the application’s claim 6).
`
`33 Petition at 35-36.
`
`34 Ex. 1002 Part 2 at 295 (Examiner’s consideration of Zwiegincew on May 14,
`
`2012).
`
`  12
`
`

`
`simply raising the same prior art that the Office has previously considered and
`
`found not to invalidate the ‘862 Patent. Second, and as detailed below, Zwiegincew
`
`at best suggests creating new scenario files in a system and not updating any
`
`scenario file or list.35 This does not relate to or render obvious the step of “updating
`
`the boot data list” recited in claim 5.
`
`With respect to Dye, Apple does not rely on that reference to address the
`
`novel features identified by the Patent Office—namely claim 5’s “updating the
`
`boot data list” step. Apple instead relies on Dye in Grounds 3-4 as further
`
`motivation for Settsu’s system to load, access, and decompress boot data at a rate
`
`that speeds up data access time.36 Like Zwiegincew, the Patent Office previously
`
`considered Dye when Realtime disclosed that reference to the Office during
`
`
`35 Zwiegincew at 6:29-61; see, e.g., Petition at 36 (conceding that Zwiegincew
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`teaches creating “a new scenario file” based on a pattern of hard page faults).
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`36 Petition at 65 (citing Dye with respect to claim element 5.7 “wherein the loading,
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`the accessing, and the decompressing occur within a period of time which is less
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`than a time to access the boot data from the first memory if the boot data was
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`stored in the first memory in an uncompressed form”).
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`prosecution.37 As such, Apple again is simply raising the same prior art that the
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`Office has previously considered and found not to invalidate the 862 Patent.
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`The only evidence Apple presented that was not before the Patent Office
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`during prosecution of the ‘862 Patent is Dr. Neuhauser’s declaration. In Integrated
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`Global Concepts v. Advanced Messaging Technologies, the Board declined to
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`exercise inter partes review under similar facts.38 In Integrated Global Concepts,
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`the only evidence petitioner presented that was not before the Examiner was an
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`expert declaration.39 The Board found the declaration did not present any
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`persuasive evidence because its prior art assertions were “conclusory, with no
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`persuasive explanation or citation to supporting evidence.”40
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`As in Integrated Global Concepts, Dr. Neuhauser’s opinions are conclusory
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`and lack sufficient supporting evidence. First, he asserts that Settsu renders
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`obvious the “updating the boot data list” step because a POSITA would understand
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`that operating systems, such as Windows 98, need to be updated when
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`37 Ex. 1002 Part 2 at 809 (Examiner’s consideration of Dye on May 14, 2012).
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`38 IPR2014-01027, Paper 16 at 7-8.
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`39 Id. at 8.
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`40 Id.
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`manufacturer updates become available.41 This assertion is based on the
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`assumption that Settsu’s system is intended to be used with generalized operating
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`systems like Windows 98 that require updates. However, there is no evidence that
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`Settsu’s system was intended for such uses. Dr. Neuhauser also asserts that a
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`POSITA would understand that such operating-system-updates result in updating a
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`boot data list versus generating a new boot data list. But he does not provide any
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`explanation why a POSITA would have understood new versions of the operating
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`system result in updated boot data lists nor any citation to evidence supporting this
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`assertion.
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`Second, Dr. Neuhauser asserts a POSITA would have modified Settsu to
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`automatically update its purported boot data lists in view of Zwiegincew’s
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`disclosure of generating a “scenario file” based on a pattern of hard page faults
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`“that may be subject to subsequent refinement.”42 He asserts a POSITA would
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`have been motivated to do so “to utilize pattern recognition…to ensure that
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`frequently requested boot data is loaded into memory.”43 But, as Apple concedes,
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`41 Ex. 1003 at ¶¶ 117-118.
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`42 Id. at ¶¶ 119-122. Dr. Neuhauser does not opine that Dye is relevant to the
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`“updating the boot data list” step. See id. at ¶¶ 116-122.
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`43 Id. at ¶ 121.
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`Zwiegincew discloses generating a “new scenario file” when analyzing hard page
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`faults—not updating scenario files, let alone, updating boot data lists.44 Moreover,
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`Dr. Neuhauser asserts that a POSITA would have been motivated to modify
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`Settsu’s “OS modules” in view of Zwiegincew’s “scenario files.”45 But Dr.
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`Neuhauser fails to explain why a POSITA would look to scenario files for hard
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`page faults when managing an operating system. Dr. Neuhauser also fails to offer
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`evidence supporting his assertion. His opinion is thus unsupported. Dr. Neuhauser
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`also asserts that “refin[ing]” a scenario file would have motivated a POSITA to
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`update a boot data list.46 But again, Dr. Neuhauser offers no evidence supporting
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`his opinion. Accordingly, Zwiegincew does not address the limitation that the
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`44 Petition at 35-36. Apple appears to assert that “subsequent refinement” of
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`scenario files by imputing them into a matching algorithm is akin to “updating a
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`boot data list” Id. at 36. But neither Apple nor the cited paragraph 120-121 of the
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`Neuhauser Declaration explain how inputting a file into a pattern matching
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`algorithm teaches “updating” a “boot data list.”
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`45 Ex. 1003 at ¶¶ 120-122.
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`46 Id. at ¶ 121.
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`Patent Office expressly found absent from the prior art, and Dr. Neuhauser’s
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`assertions otherwise are conclusory and unsupported.47
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`Even if the Board declines to exercise its discretion to deny the Petition, trial
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`should not be instituted because none of proposed Grounds 1-4 provides a basis for
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`the Board to find that there is a reasonable likelihood of prevailing on any
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`challenged claim. Indeed, as explained in detail below, the prior art fails to disclose
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`all of the claim elements, and the claims are thus not obvious.
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`B.   Ground 1: Challenged Claims Are Not Rendered Obvious by
`Settsu
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`1.  
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`Settsu does not teach “storing boot data in compressed form
`that is associated with…a boot data list”
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`In Ground 1, Apple relies solely on Settsu to disclose the claim element 5.1
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`“storing boot data in compressed form that is associated with a portion of a boot
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`data list in a first memory.” This element is recited by claim 5, the only challenged
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`independent claim.48 Apple’s reliance on Settsu is improper for two reasons. First,
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`47 In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“rejections on obviousness
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`grounds cannot be sustained by mere conclusory statements; instead, there must be
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`some articulated reasoning with some rational underpinning to support the legal
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`conclusion of obviousness”).
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`48 Petition at 19-30.
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`  17
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`as detailed below, Apple cherry-picks elements across various distinct
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`embodiments of Settsu to arrive at this claim element. But Apple fails to offer
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`sufficient or credible evidence how a POSITA would have combined those distinct
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`embodiments or why a POSITA would have been motivated to do so.49 Second,
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`Apple’s assertion that Settsu’s functional module files must include boot data lists
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`is a de facto inherency argument lacking evidentiary support. As such, Settsu does
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`not disclose or render obvious claim element 5.1.
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`a)  
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`Apple fails to explain how or why a POSITA would
`combine Settsu’s distinct embodiments to arrive at
`cl