PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. …fishpostgrant.com/wp-content/uploads/IPR2015-01133.pdf · By: Vivek Ganti ([email protected]) (Reg. No. 71,368); and Gregory Ourada

By: Vivek Ganti ([email protected]) (Reg. No. 71,368); and

Gregory Ourada ([email protected]) (Reg. No. 55516)

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

_________________

AMERICAN MEGATRENDS, INC.,

MICRO-STAR INTERNATIONAL CO., LTD,

MSI COMPUTER CORP.,

GIGA-BYTE TECHNOLOGY CO., LTD., AND

G.B.T., INC.

Petitioners,

v.

KINGLITE HOLDINGS INC.

Patent Owner

_________________

Case IPR2015-01133

U.S. Patent 5,732,268

_________________

PETITION FOR INTER PARTES

REVIEW OF U.S. PATENT NO. 5,732,268

Mail Stop PATENT BOARD

Patent Trial and Appeal Board

U.S. Patent & Trademark Office

P.O. Box 1450

Alexandria, VA 22313-1450

mailto:[email protected]


Petition for Inter Partes Review of U.S. Pat. No. 5,732,268

TABLE OF CONTENTS

I. Introduction .......................................................................................................... 1

II. Overview .......................................................................................................... 1

Technical description of the 268 Patent ........................................................ 1

III. Mandatory Notices (37 C.F.R. 42.8(a)(1)) ....................................................... 5

Notice of related matters (37 C.F.R. § 42.8(b)(2))........................................ 5

Real party-in-interest (37 C.F.R. § 42.8(b)(1)) ............................................. 6

IV. Notice of Counsel and Service Information (37 C.F.R. § 42.8(b)(3-4)) .......... 6

V. Statement of Relief Requested ......................................................................... 7

VI. Claim Construction ........................................................................................... 7

Applicable Principles of Claim Construction. .............................................. 7

Level of Skill in the Art ................................................................................. 8

Terms to be Construed .................................................................................. 8

1. “BIOS (Basic Input/Output System)” ........................................................... 8

2. “a first code portion” and “a second code portion” ....................................... 9

3. “upon failure” ..............................................................................................10

4. “network communication adapter”..............................................................11

5. “kernel” ........................................................................................................11


ii

6. “master” and “slave” ...................................................................................12

7. “E-BIOS” .....................................................................................................13

8. “mass storage device” .................................................................................13

9. “coupled” .....................................................................................................14

10. “remote repair center computer” ..............................................................14

VII. Identification of Challenge (37 C.F.R. § 42.104(b)) ...................................15

Ground 1: The combination of Flaherty and the APA renders obvious

claims 1-4, 6-9, 12, and 18-20 under 35 U.S.C. § 103. ........................................18

Ground 2: The combination of Chang and the APA renders obvious claims

1, 2, 4, 6, 7, 9, and 18-20 under 35 U.S.C. § 103. ................................................35

Ground 3: The combination of Chang and Flaherty renders obvious claims

10, 11, and 13-17 under 35 U.S.C. § 103. ............................................................45

Ground 4: Sakai combined with either Flaherty-APA or Chang-APA

renders obvious claim 5 under 35 U.S.C. § 103. ..................................................58

VIII. No Secondary Conditions Exist ..................................................................59

IX. Fees(37 C.F.R. § 42.103) ................................................................................59

X. Conclusion ......................................................................................................59


iii

TABLE OF AUTHORITIES

Cases

CBS Interactive Inc. et al v. Helferich, IPR2013-00033, Paper 21, pp.23-24) .......18

Garmin International,. Inc. Cuozzo Speed. Technologies, LLC., IPR2012-00001,

Paper 59, pp.39-47 ................................................................................................21

Graham v. John Deere Co., 383 U.S. 1 (1966) ........................................................21

In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006) .................................................22

Intri-Plex Tech. et al. v. Saint-Gobain Performance Plastics Rencol Ltd., IPR2014-

00309, paper 83 .....................................................................................................21

KSR v. Teleflex, 550 U.S. 398 (2007) ........................................................ 21, 27, 35

Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-00003, Paper

7, p.2 ......................................................................................................................17

Tempo Lighting Inc., v. Tivoli, LLC, 2013-1140, p.8 (Fed. Cir 2014) ...................11

Statutes

35 U.S.C. § 102(a) ...................................................................................... 16, 17, 18

35 U.S.C. § 102(b) ...................................................................................... 16, 17, 18

35 U.S.C. § 102(e) ...................................................................................................17

35 U.S.C. § 103 ....................................................................................... 1, 18, 45, 58

35 U.S.C. § 314(a) ...................................................................................................60

37 C.F.R. § 42.1(b) ..................................................................................................17


iv

37 C.F.R. § 42.10(b) ............................................................................................7, 15

37 C.F.R. § 42.100(b) ................................................................................................ 8

37 C.F.R. § 42.103 ...................................................................................................59

37 C.F.R. § 42.104(b)(3) ............................................................................................ 8

37 C.F.R. § 42.15(a) .................................................................................................59

37 C.F.R. § 42.8(b)(1) ................................................................................................ 6

37 C.F.R. § 42.8(b)(2) ................................................................................................ 5

37 C.F.R. § 42.8(b)(3-4) ............................................................................................ 6

37 C.F.R. §§ 42.100(b) .............................................................................................. 8

37 C.F.R. 42.8(a)(1) ................................................................................................... 5


v

EXHIBIT LIST

Ex. 1001 U.S. Patent No. 5,732,268 to Bizzarri (“268 Patent”)

Ex. 1002 U.S. Patent No. 5,596,711 to Burckhartt et al (“Burckhartt”)

Ex. 1003 The file history of the 268 Patent

Ex. 1004 U.S. Pat. No. 5,146,568 to Flaherty et al (“Flaherty”)

Ex. 1005 U.S. Pat. No. 5,444,850 to Chang (“Chang”)

Ex. 1006 U S. Patent No. 5,850,562 to Crump (“Crump”)

Ex. 1007 U S. Patent No. 5,473,775 to Sakai (“Sakai”)

Ex. 1008 Computerworld – March 1993

Ex. 1009 Excerpts from the Dictionary of Computer Words

Ex. 1010 Bootstrap Loading using TFTP

Ex. 1011 U S. Patent No. 5,299,314 to Gates (“Gates”)

Ex. 1012 U S. Patent No. 5,465,273 to Cole (“Cole”)

Ex. 1013 U S. Patent No. 5,701,477 to Cole (“Chejlava”)

Ex. 1014 The RFC 1157 Specification (“SNMP”)

Ex. 1015 U S. Patent No. 5,408,614 to Thornton et al. (“Thornton”)

Ex. 1016 U S. Patent No. 5,455,933 to Schieve et al. (“Schieve”)

Ex. 1017 U S. Patent No. 5,150,402 to Yamada (“Yamada”)

Ex. 1018 U S. Patent No. 4,868,848 to Magnusson et al. (“Magnusson”)

Ex. 1019 U S. Patent No. 5,463,685 to Gaechter et al. (“Gaechter”)


vi

Ex. 1020 Declaration of Hugh Smith, PhD. (“Smith Dec.”)

Ex. 1021 Declaration of Vivek Ganti


1

I. Introduction

American Megatrends, Inc. Micro-Star International Co., Ltd, MSI Computer

Corp., Giga-Byte Technology Co., Ltd., and G.B.T., Inc. (“Petitioners”) petitions for

inter partes review seeking cancellation of claims 1-20 of U.S. Pat. No. 5,732,268

(“the 268 Patent,” Ex. 1001), which is assigned to Kinglite Holdings Inc. (“KL”).

KL is referred to as “Patent Owner” in this Petition.

II. Overview

This Petition furthers the purpose of inter partes review – the cancellation of

unpatentable claims. The challenged claims 1-20 of the 268 Patent never should

have issued. This Petition establishes a reasonable likelihood that Petitioners will

prevail regarding at least one of the claims challenged and that the challenged claims

are unpatentable under pre-AIA 35 U.S.C. § 103. Thus, Petitioners respectfully

request that the Board grant the Petition and institute trial on all of the challenged

claims.

Technical description of the 268 Patent

The 268 Patent issued on March 24, 1998, and appears to claim priority to

February 26, 1996. (Ex. 1001, p.1). It describes loading a basic input output system

(BIOS) onto a computer. (Ex. 1001, Abstract). The BIOS has code that performs a

typical power on self-test (POST) routine to “to assure that all circuits are active,

properly connected, and functional.” (Ex. 1001, p.5, 1:20-24 (describing the

background of the invention)). POST is commonly found in the BIOS prior to the


2

time of invention. (Ex. 1020, p.11, ¶27). POST is an important routine because it

ensures that the system memory is properly initialized in order to handle any

subsequent computer routine. (Id., p.9, ¶23).

According to the invention, in the event of a POST failure, the local central

processing unit (CPU) establishes communication with a remote computer. (Ex.

1001, p.1, Abstract). The remote computer can diagnose and rectify the local failure

to boot. (Id.)

During prosecution, the then-pending claims were rejected as being

anticipated by U.S. Pat. No. 5,596,711 issued to Burckhartt et al (“Burckhartt”),

submitted as Ex. 1002. (Ex. 1003, pp.36-41). Burkhartt discloses:

The computer system performs its power on program and checks the

memory array for bad memory blocks, which are mapped out of the

memory. Next, the computer system alerts the operator of the

failure using a pager. . . The system further provides for remote

access so that the operator may interact with the diagnostics program

from a remote location.

(Ex. 1002, p.1, Abstract)(emphasis added). Given the similarities between

Burckhartt and the then-pending claims, the applicant amended the then-pending

claims to include the claim limitation of a “power on self test (POST routine).”

(Ex. 1003, p.51). Thereafter, the applicant attempted to distinguish the then-

pending claims from Burckhartt by arguing:


3

The Examiner's attention is drawn to the fact that in applicant's

claimed invention, after POST, the computer is directed to boot, while

in Burckhartt, the computer is directed to immediately page a remote

computer operator. Contact is initiated with a second computer in

applicant's claimed invention only if after a boot attempt, the

computer fails to boot. . . There is no teaching in Burckhartt to

testing boot, and initiating repair and diagnostic contact if the

boot fails.

(Ex. 1003, pp.51-52) (emphasis added). In this respect, the applicant asserts that

the missing element in the prior art is specifically initiating contact with a remote

computer in response to a local computer’s failure to boot itself. (Id.)

The foregoing principle is apparent in claim 1 of the 268 Patent:

1. A basic input output system (BIOS) comprising;

a first code portion adapted for execution by a CPU to

perform power on self test (POST) routine and to initiate boot

operations; and

a second code portion adapted for execution by the CPU to

establish communication with a remote computer;

wherein code execution by the CPU is directed from the first

portion to the second portion upon failure to complete said boot

operations.

(Ex. 1001, p.8, 8:12-21) (emphasis added)).


4

In addition to independent claims 1, 6, and 18, the 268 Patent also includes

independent claims 10 and 16, which vary from independent claims 1, 6, and 18.

Unlike independent claims 1, 6, and 18, independent claims 10 and 16 recite a

“master kernel” and a “slave kernel”/“slave operating system kernel.” (Ex. 1001,

pp.8-9, 8:62-9:15 and 10:1-14)). According to the specification, in a system “with

a copy of the slave kernel in the first computer and the master kernel active in the

second computer, a user at the second computer may diagnose and modify code

and data in the first computer from the second computer.” (Ex. 1001, p.6, 4:25-

28). This concept of remotely diagnosing and modifying code and data was well

known in the prior art. (See Ex. 1005). For example, US. Pat. No. 5,444,850

issued to Chang (“Chang,” Ex. 1005) discloses that “[o]nce [a] client is identified

to the server, any preboot activity such as file transfers, file updates or operating

system rescue (due to malicious or accidental damage) can take place

automatically under control of the [server management application] SMA.” (Ex.

1005, p.8, 4:46-50) (emphasis added).

This Petition shows that the challenged claims of the 268 Patent are rendered

obvious by various combinations of U.S. Pat. No 5,146,568 issued to Flaherty et al

(“Flaherty,” Ex. 1004), U.S. Pat. No. 5,444,850 issued to Chang, and admitted

prior art (APA) identified in the specification of the 268 Patent. Flaherty and


5

Chang are references that were not before the Examiner during prosecution of the

268 patent or its progeny.

Hugh Smith, Ph.D., a technical expert in this field for over thirty years,

explains how each of these prior art documents disclose, teach and otherwise

suggest every feature of the challenged claims and how each of the features

described in the challenged claims were obvious to a person having ordinary skill

in the art (“POSITA”) as February 26, 1996. (Ex. 1020). As Dr. Smith explains,

the challenged claims of the 268 are unpatentable. (Ex. 1020). In view of the

evidence, the Board should cancel all of the challenged claims.

III. Mandatory Notices (37 C.F.R. 42.8(a)(1))

Notice of related matters (37 C.F.R. § 42.8(b)(2))

The 268 Patent is presently asserted against Micro-star International Co., Ltd

(“Micro-Star”) and MSI Computer Corp (collectively, “MSI”) in the District Court

for the Central District of California (CV 14-03009 JVS (PJWx)). The 268 Patent

is also presently asserted against GIGA-BYTE Technology Co., Ltd. (“GIGA-

BYTE”) and G.B.T, Inc. (collectively, “GBT”) in the District Court for the Central

District of California (CV 14-04989 JVS (PJWx)). MSI and GBT are both

customers of American Megatrends Inc. (“AMI”). AMI has successfully

intervened in these two district court cases and the two cases have been

consolidated. In response the Patent Owner asserted the 268 Patent against AMI.


6

Additionally, this instant Petition relates to IPR2015-01140.

Real party-in-interest (37 C.F.R. § 42.8(b)(1))

The real parties in interest are:

American Megatrends, Inc. (American corporation, principal place of

business in 5555 Oakbrook Parkway, Norcross, Georgia 30093)

Micro-star International Co., Ltd (Taiwanese corporation with its

principal place of business at No. 69, Lide Street, Zhonghe District,

New Taipei City 235, Taiwan)

MSI Computer Corp (American corporation with its principal place of

business at 901 Canada Court, City of Industry, California 91748)

GIGA-BYTE Technology Co., Ltd. (Taiwanese corporation, principal

place of business at No.6, Bao Chiang Road, Hsin-Tien Dist., New

Taipei City 231, Taiwan)

G.B.T, Inc. (American corporation, principal place of business in

17358 Railroad St, City Of Industry, CA 91748)

IV. Notice of Counsel and Service Information (37 C.F.R. § 42.8(b)(3-4))

Lead Counsel: Vivek Ganti (Reg. No. 71,368)

Address: HILL, KERTSCHER & WHARTON, LLP, 3350 Riverwood

Parkway, Suite 800, Atlanta, GA 30339. Tel. 678.384.7453. Fax. 770.953.1358.

Backup Counsel: Gregory Ourada (Reg. No. 55516)


7

Address: HILL, KERTSCHER & WHARTON, LLP, 3350 Riverwood

Parkway, Suite 800, Atlanta, GA 30339. Tel. 678.384.7443. Fax. 770.953.1358.

Please address all correspondence to the lead counsel at the address shown

above. Petitioners consent to electronic service of papers by email at: vg@hkw-

law.com and [email protected].

Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney by Petitioners

appointing each of the above designated counsel is concurrently filed.

IV. Grounds for Standing

Petitioners certify that the 268 Patent is eligible for inter partes review and

that the Petitioners are not estopped or barred from requesting inter partes review

challenging the claims identified in the Petition. The required fee is paid via online

using Deposit Account No. 506541 (Customer ID No. 87296). The Office is

authorized to charge fee deficiencies and credit overpayments to this Deposit

Account No. 506541.

V. Statement of Relief Requested

Petitioners request inter partes review and cancellation of claims 1-20 of the

268 Patent based on the detailed statements presented in Sections VI and VII.

VI. Claim Construction

Applicable Principles of Claim Construction.

Unless otherwise noted, all claim terms employ their plain and ordinary

meanings. The Board should construe these claims using the broadest reasonable





8

interpretation (“BRI”). See 37 C.F.R. § 42.100(b). Petitioners propose BRI-based

constructions of terms herein solely for purposes of the inter partes review (“IPR”)

proceeding as provided by 37 C.F.R. §§ 42.100(b) and 42.104(b)(3). The BRI-

based standard is not used in litigation or other proceedings, and on that basis

Petitioners note that these constructions are not necessarily appropriate for use in

litigation or any other proceedings which employ a standard of claim construction

other than BRI.

Level of Skill in the Art

With respect to the 268 Patent, a POSITA is a person holding a Bachelor of

Science degree (or equivalent) in electrical engineering or a related technical field

such as computer engineering, having at least one year of experience in a relevant

field such as computer networking. (Ex. 1020, p. 5, ¶12).

Terms to be Construed

1. “BIOS (Basic Input/Output System)”

The term “BIOS” appears in independent claims 1 and 6 of the 268 Patent.

(Ex. 1001, p.8, 8:12 and 8:41-42). Under the BRI construction, this term is at least

as broad as “a set of beginning instructions for a computer that activates on

startup.” (Ex. 1020, pp. 12-13, ¶¶31-32).

The specification of the 268 Patent states:

Because a computer, without operating instructions loaded, is

essentially a piece of dumb hardware, there must be some relatively


9

standard set of beginning instructions for the computer to follow. . . .

Typically this beginning code is called a basic input output system

(BIOS), which includes a power-on self-test (POST) procedure, to

assure that all circuits are active, properly connected, and functional

before attempting to load and initiate all of the code needed to operate

(Ex. 1001, p.5, 1:13-16).

The 268 Patent uses the term BIOS in a manner that is consistent with the

way a POSITA would have understand a BIOS at the time of invention. (Ex.

1020, p. 13, ¶33). A POSITA would know that, at the minimum, a BIOS includes

the initial routines that execute when power is supplied to a computing system.

(Ex. 1020, pp. 12-13, ¶31).

2. “a first code portion” and “a second code portion”

These terms appear in independent claims 1, 6, and 18 of the 268 Patent.

(Ex. 1001, p.8, 8:12-21, 8:41-49; p.9, 10:20-27). Under the BRI construction,

these terms are at least as broad as “distinct sets of operating instructions in

computer code, each of which are stored in non-volatile memory.” (Ex. 1020, pp.

13-14, ¶¶34-35). Based on the specification of the 268 Patent, code portions may

be part of a BIOS program that is stored in non-volatile memory. (Ex. 1001, p.5,

1:26-31). The qualifiers “first” and “second” presumptively imply that the two

code portions are distinct sets of operating instructions.


10

3. “upon failure”

The term “upon failure” appears in independent claims 1, 6, 10, and 18 of

the 268 Patent. The BRI construction for this term is “in response to failure.” (Ex.

1020, pp. 14-15, ¶¶36-38). The specification of the 268 Patent shows taking action

“upon failure” by using the words, “in response to the failure,” (Ex. 1001, p.6,

4:52-55), “upon failure to complete,” (id., 4:5-7), and illustrating a decision block

that decides how to proceed based on determining whether a failure occurred (id.,

p.3, FIG. 2, item 25). Therefore, under BRI, “upon failure” is at least as broad as

“in response to failure.”

During prosecution, the Patent Owner embraced the notion that remote

communication upon failure is remote communication in response to failure and

that the remote communication is “only if” there is a failure to boot. (Ex. 1003,

pp.50-51). Thus, for purposes of the arguments presented herein, the relevant

teachings of the prior art are demonstrated to show the initiation of communication

to a remote computer in response to a local failure to boot, as opposed to Burkhartt,

wherein the remote communication may be initiated “when the system fails.” (Ex.

1002, p 16, 1:58).1

1 The Federal Circuit has recently held that this Board is generally “under no

obligation to accept a claim construction proffered as a prosecution history


11

4. “network communication adapter”

The term “network communication adapter” appears in claims 4 and 9 of the

268 Patent. (Ex. 1001, p.8, 8:29-31 and 8:59-61). Otherwise, this term is non-

existent in the 268 Patent. Applying BRI, a “network communication adapter” is

at least as broad as “an interface device that allows a computer to be connected

over a network.” (Ex. 1020, pp. 15-16, ¶¶39-40). Dr. Smith explains that the

concept of a network communication adapter has existed prior to the time of

invention. (Id., pp. 15-16, ¶¶40-41). Its function is to provide a network interface.

(Id.).

5. “kernel”

The term “kernel” appears in claims 10, 14, and 16. (Ex. 1001, p.9, 9:1,

9:25-26 and 10:7-10; Ex. 1020, p. 16, ¶43). Under the BRI standard, a “kernel” is

at least as broad as “a part of an operating system that handles routine tasks unseen

to the user.” (Ex. 1020, p.16, ¶43). In fact, because a kernel is the essential piece

of an operating system, an operating system inherently discloses a kernel. (Id., p.

disclaimer, which generally only binds the patent owner.” Tempo Lighting Inc., v.

Tivoli, LLC, 2013-1140, p.8 (Fed. Cir 2014).


12

17, ¶46-47). Likewise, a kernel implies the existence of an operating system.

(Id.).

6. “master” and “slave”

The terms “master” and “slave” appear in claims 10, 14, and 16. (Ex. 1001,

p.9, 9:1, 9:25-26 and 10:7-10). These two terms are used to qualify the claimed

“kernel” to describe a kernel as either “master” or “slave.” (Ex. 1020, p. 17, ¶48).

The 268 Patent does not define what “master” and “slave” mean. (Ex. 1020,

p. 17, ¶49). Instead, the 268 Patent describes a relative arrangement of a master

kernel and a slave kernel. For example, the master kernel is software that is active

in the remote (second computer) while the slave kernel is software that is active in

the local (first) computer. (Ex. 1001, p.6, 4:22-28). In general, the relationship

between a master and slave is that the master exhibits some control over the slave.

(Ex. 1020, pp. 17-18, ¶50). Applying BRI, “master” is at least as broad as a

characteristic of something that controls and “slave” is at least as broad as a

characteristic of something that is controlled. (Ex. 1020, pp. 17-18, ¶50).

Additionally, the claims use the phrase “slave” (see claim 10) and “slave

operating system” (claim 16). Because a kernel implies an operating system, the

“slave kernel” of claim 10 means the same thing as “slave operating system

kernel” of claim 16. (Id., p. 18, ¶51).


13

7. “E-BIOS”

The term E-BIOS appears in claim 18. (Ex. 1001, p.9, 10:22-28). This

term is at least as broad as “any BIOS related software that is able to establish

communication with a remote computer.” (Ex. 1020, p. 19, ¶54). The 268 Patent

states that the “E-BIOS” is the “unique local BIOS . . . by the inventor” of the 268

Patent. (Ex. 1001, p.5, 1:31-35). The Abstract refers to it as “extended basic input

output system (E-BIOS).” (Id., p.1, Abstract). The 268 Patent states:

PC 11 has a unique E-BIOS 17 rather than a conventional PC BIOS,

and facility 13 is equipped with code for cooperating with E-BIOS PC

11 over connection 15.

(Ex. 1001, p.7, 5:15-20). The alleged “unique” quality of E-BIOS is its

extensibility to a remote PC. (Ex. 1020, p. 18, ¶¶52-53). This is consistent

throughout the specification, and apparent in claim 18’s usage of the term.

8. “mass storage device”

“Mass storage device” appears in claims 6 and 16. Under the BRI standard,

a “mass storage device” is at least as broad as “memory that provides persistent

storage capacity.” (Ex. 1020, p. 19, ¶¶55-56).

The 268 Patent explains that “Operating systems are therefore stored in non-

volatile mass storage, typically on a hard disk.” (Ex. 1001, p.5, 2:23-24). Dr.

Smith explains that operating systems require persistent storage. (1020, p. 19,

¶¶55-56). The example of storing an operating system assists in arriving at the


14

BRI construction because an operating system may be the kind of software that is

stored in mass storage. (Id.).

9. “coupled”

The term “coupled” appears in claims 6. Under the BRI standard, “coupled”

is at least as broad as “connected to facilitate communication.” (Ex. 1020, p. 19,

¶57). The specification uses the term “coupled” to describe connecting hardware-

to-hardware and hardware-to-software. (Id., pp. 19-20, ¶¶58-60). For example, the

specification states that a CPU (hardware) can be coupled to a read-only memory

ROM (hardware) and the CPU can be coupled to a BIOS (software). (Id.).

In each case, the specification uses the term “coupled” to indicate facilitating

communication between these interconnected components. Therefore, applying

BRI, “coupled” is at least as broad as “connected to facilitate communication.”

(Ex. 1020, p. 19, ¶57).

10. “remote repair center computer”

The term “remote repair center computer” appears in claim 18. Under the

BRI standard, a “remote repair center computer” is at least as broad as “a computer

used to address a failure of another computer.” (Ex. 1020, pp. 20-21, ¶61). In the

268 Patent, the repair center computer is described as being part of a repair facility

13. (Ex. 1001, p.7, 5:9-12). This repair facility may or may not require human

intervention. (Id., 5:23-28). At the very minimum, the remote repair center


15

computer “get[s] the failed machine operable again without the necessity of

sending a repair technician.” (Id., 5:63-64). Therefore, under BRI, the “remote

repair center computer” is at least as broad as “a computer used to address a failure

of another computer.” (Ex. 1020, pp. 20-21, ¶61).

VII. Identification of Challenge (37 C.F.R. § 42.104(b))

Petitioners request IPR on the Grounds of Unpatentability indexed below.

In accordance with 37 C.F.R. § 42.6(d), copies of the references listed in the index

below are filed with this Petition. As further support for the Grounds of

Unpatentability, Petitioners submit the accompanying declaration of a technical

expert, Hugh Smith, Ph.D. (Ex. 1020), which explains how a POSITA would

understand the art.

Dr. Smith is highly qualified to analyze the pertinent prior art and how it

renders the challenged claims unpatentable. As set forth in his declaration, Dr.

Smith is a computer science professor at California Polytechnic State University

(Cal Poly), having obtained his masters and doctoral degrees in computer science

from Michigan State University. After reviewing the 268 Patent as well the prior

art referenced in this Petition, Dr. Smith opines that the challenged claims are

unpatenable because they were obvious to a POSITA at the time of invention.

The grounds upon which this Petition is based are summarized as follows:


16


claims 1-4, 6-9, 12, and 18-20 under 35 U.S.C. § 103(a).

Ground 2: The combination of Chang and APA renders obvious claims 1-

4, 6-9, 12, and 18-20 under 35 U.S.C. § 103(a).

Ground 3: The combination of Chang and Flaherty renders obvious claims

10, 11, and 13-17 under 35 U.S.C. § 103(a).

Ground 4: Sakai combined with either Chang or Flaherty renders obvious

claim 5 under 35 U.S.C. § 103(a).

Ground 1 applies Flaherty (Ex. 1004), an especially relevant reference with a

priority date of 1988, which was filed almost seven years prior to the priority date

of the 268 Patent. Flaherty is prior art under at least 35 U.S.C. § 102(a) and

102(b). Flaherty is applied in view of admitted prior art (APA), which are

statements in the specification of the 268 Patent evidencing what was well-known

to a POSITA, prior to the time of invention. Dr. Smith has independently

considered and validated the elements of the APA at issue in this ground in order

to ensure that the APA was within the knowledge of a POSITA at the time of

invention.

Ground 2 applies Chang (Ex. 1005), an especially relevant reference with a

priority date of 1993, which was filed almost three years prior to the priority date


17

of the 268 Patent. Chang is prior art under 35 U.S.C. § 102(a) and 102(e). Chang

is also applied in view of the APA.

Ground 3 applies the combination of Chang and Flaherty directed to claims

not addressed in Grounds 1 and 2.

Ground 4 applies Sakai to show that the limitation of dependent claim 5 is

an obvious variation of what was known in the prior art. Sakai is a U.S. Patent that

was filed on October 8, 1992 and issued on December 5, 1995, and therefore

qualifies as prior art under 35 U.S.C. § 102(a) and 102(b).

Recognizing that the Board is to secure “the just, speedy, and inexpensive

resolution of every proceeding” (37 C.F.R. § 42.1(b)), Petitioners have narrowly

tailored the discussion of only three references among numerous others which are

of doubtless relevance, in order to avoid straining the Board’s resources. As

shown herein, the interests of justice militate in favor of the institution of IPR on

the limited grounds presented herein.

Petitioners respectfully submit that denial of any of the asserted grounds of

unpatentability in this Petition on the basis of redundancy, without reaching its

merits, would upset the statutory mandate of just, speedy and inexpensive

resolution set forth in 37 C.F.R. § 42.1(b). See CBM2012-00003, Paper 7, p. 2.

As a practical matter, the page limitations applicable to this Petition

constrain the Petitioners. These page limitations, combined with font-size and


18

margin limitations, inherently balance the need for both justice and speed.

Petitioners respectfully submit that the Board should not adopt an overly restrictive

view of the number of grounds of patentability to consider, for the failure to

consider potentially meritorious grounds presented in these limited pages would

threaten the balance of the foregoing factors of justice and speed. When the Board

further considers the estoppel provisions in the event of an unsuccessful trial on the

merits, Petitioners are confident that the Board will conclude that the interests of

justice and speed are best served by taking up IPR on all grounds presented herein.

Petitioners now present each ground of unpatentability of the challenged

claims in detail:


claims 1-4, 6-9, 12, and 18-20 under 35 U.S.C. § 103.

Flaherty was filed on September 6, 1988, and issued on September 8, 1992.

(Ex. 1004, p.1). Flaherty is prior art under at least 35 U.S.C. § 102(a) and 102(b).

A divisional patent application of Flaherty, which has the U.S. Patent No.

5,280,627, is cited in the prosecution history of the 268 Patent (Ex. 1003, p.89,

p.91). The examiner did not use U.S. Patent No. 5,280,627 as a basis for his

rejection. The statute “does not require the Director, in deciding whether to

institute inter partes review, to defer to a prior determination in the Office, even

one which considered the same prior art and arguments.” CBS Interactive Inc. et

al v. Helferich, IPR2013-00033, Paper 21, pp.23-24).


19

Flaherty teaches the very essence of the challenged claims in the 268 Patent

– self-testing a computer when it powers on and, if it fails to boot, communication

with a remote computer to address the problem. When combined with prior art

admitted within the 268 Patent itself, Flaherty makes each element of the

challenged claims obvious to a POSITA.

The Background section of Flaherty describes, among other things, a

conventional “self-test/power up sequence.” (Ex. 1004, p.9, 3:20-25). As part of

this sequence, the processor looks for a boot device. Id. If the processor “fails to

find a boot device, the processor will allow the network device to request a boot

over the network.” This failure to boot is the only event disclosed in Flaherty

which causes a call to a remote computer requesting assistance. (Ex. 1020, p. 32,

¶¶91-92).

The “Background” section of Flaherty explains that, prior to the time of

Flaherty’s invention, a computers had a local boot device and it was known to

establish a remote communication in response to a failure to find the local boot

device. (Ex. 1004, p.9, 3:20-25). Flaherty’s “Description of an Illustrative

Embodiment” explains a computer implementation that lacks a local boot device.

(Ex. 1004, p.9, 4:40-41). In this case, a POSITA would have known that failing to

find a local boot device will result in a failure to boot every time.


20

In addition to Flaherty, three admissions made in the 268 Patent concerning

prior art support Ground 1 by explaining what was “typical” in the art before the

268 Patent issued. These admissions show claim elements that were already

known to the public at that time. (Ex. 1020, p. 21, ¶62). The APA includes the

following three admissions found in the Background section of the 268 Patent:

- “Typically this beginning code is called a basic input output

system (BIOS), which includes a power-on self-test (POST)

procedure.” (Ex. 1001, p.5, 1:20-25)

- “PCs at the time of the present invention, however are typically

provided with some form of communication link to other

computers. Most PCs at a minimum have a telephone modem

connection, and may communicate with another computer over a

telephone line in either an analog or a digital protocol.” (Ex. 1001,

p.5, 2:59-64).

- “A floppy disk with DOS and a boot sector was called a Boot disk, and

the name is still used, although operating systems and boot sectors are

typically now recorded on hard disk drives.” (Ex. 1001, p.5, 1:51-55)

Each of these three statements explain what was “typically” known to the public

prior to the time of invention and not intended to be within the scope of the


21

invention.2 Dr. Smith has independently validated all of the APA statements in the

268 Patent. (Ex. 1020, pp. 21-23, ¶¶63-66).

It would be obvious to combine Flaherty with the APA. A POSITA is

presumed to be aware of all pertinent art, thinks in accordance with the

conventional wisdom of the art, and is a person of ordinary creativity. KSR v.

Teleflex, 550 U.S. 398, 420 (2007). Given this legal standard, Flaherty represents

an obvious way to combine remote booting in response to a POST failure given the

description in Flaherty, including the description of the APA. See IPR2012-00001,

Paper 59, pp.39-47 (combining four references to determine that three patent

claims were unpatentable under Section 103).

“The combination of familiar elements according to known methods is likely

to be obvious when it does no more than yield predictable results.” KSR, 550 U.S.

at 416. In Graham v. John Deere Co., 383 U.S. 1 (1966), the United States

Supreme Court clarified the nonobviousness requirement in United States patent

2 “The written description can assist the public in understanding the notice given in

the claims by explaining which portions of the relevant art the patent does not

cover.” Intri-Plex Tech. et al. v. Saint-Gobain Performance Plastics Rencol Ltd.,

IPR2014-00309, paper 83, p.25 (citing PSC Computer Prods., Inc. v. Foxconn

Int’l, Inc., 355 F.3d 1353, 1359 (Fed. Cir. 2004)).


22

law, set forth in 35 U.S.C. § 103. The Court held that §103 requires a

determination of the scope and content of the prior art, the differences between the

claimed invention and the prior art, and the level of ordinary skill in the prior art.

(Id. at 17-18). In addition, “secondary considerations” may, in appropriate cases,

serve as evidence of nonobviousness. Id. A basis to combine teachings from the

references need not be stated expressly in any prior art reference. In re Kahn, 441

F.3d 977, 987-88 (Fed. Cir. 2006). There need only be an articulated reasoning

with rational underpinnings to support a motivation to combine teachings. (Id. at

988).

Here, Flaherty and APA teach compatible approaches to employing a

“standard set of beginning instructions for the computer to follow” to load an

operating system onto a computer. (Ex. 1020, p. 28, ¶80). Flaherty describes a

system based on conventional concepts of POST, remote communication links, and

storing an operating system on a boot sector. The APA explains these same

concepts in greater detail in a manner that is consistent with the understanding of a

POSITA.

Dr. Smith testifies that each of these three admissions are consistent with the

general knowledge and understanding known to a POSITA. (Ex. 1020, p. 28, ¶80).

The teachings of the APA – BIOS, POST, booting and a modem communication

package -- at the time of invention were some of the fundamental building blocks


23

of modern personal computers. (Id., pp. 21-23, ¶63-66). These precepts underlie

the POSITA’s understanding of computing at the time of invention, and therefore

underlie the disclosure of Flaherty. (Id., p. 28, ¶80).

As such, a POSITA would be motivated to combine the three teachings of

APA with Flaherty in much the same way as a POSITA would seek to apply

Flaherty to a store-bought computer. (Ex. 1020, p. 28, ¶80). First, the APA’s

description of POST is a more detailed explanation of the POST described in

Flaherty, which is the way a POST routine is understood by a POSITA. (Ex. 1020,

pp. 28-30, ¶¶82-85). Second, the APA’s telephone modem connection may be

used to implement Flaherty’s network adapter because a POSITA would know that

a modem connection is another popular way to establish communication with a

remote computer at the time of invention.3 (Ex. 1020, pp. 33-34, ¶¶95-97).

Specifically, Dr. Smith testifies that it was known to use the telephone modems

referenced in the APA in systems like Flaherty. (Ex. 1020, p. 34, ¶97 relying on

Ex. 1015).

Third, the APA’s teaching of a boot code sector and operating system

recorded thereon is another way of describing Flaherty’s local boot device. (Ex.

3 One example of a motivation to combine is “Simple substitution of one known

element for another to obtain predictable results.” (MPEP § 2141).


24

1020, p. 39, ¶114). In other words, a POSITA would equate Flaherty’s local boot

device to the APA because both similarly describe how conventional computers

boot an operating system. (Ex. 1020, pp. 24, 39, ¶¶67, 114).

Claim 1 addresses the concept of a BIOS that establishes a remote

connection upon a POST failure. The APA explains that POST is commonly

included in a BIOS. (Ex. 1001, p.5, 1:20-25 stating “Typically this beginning code

is called a basic input output system (BIOS), which includes a power-on self-test

(POST) procedure”). Flaherty explains that part of a POST routine includes the

step of attempting to find a boot device. (Ex. 1004, p.9, 4:61-64). A boot device is

a memory device that stores the files needed to boot an operating system. (Ex.

1020, p. 39, ¶114). Without any boot device, the computer will fail to load an

operating system. In the background section of Flaherty, if a computer “fails to

find a boot device, the processor will allow the network device to request a boot

over the network.” (Ex. 1004, p.9, 3:23-25). Flaherty also suggests that prior art

systems established combination with a remote computer only if there is a failure

to boot (e.g., failing to find a boot device as part of a POST routine). Within the

four corners of the Flaherty patent, Flaherty describes no other instance of

establishing communication with the remote host computer other than to respond

to the POST failure of finding a boot device. (Ex. 1020, p. 32, ¶91). In other


25

words, Flaherty does not establish remote communication unless there is a POST

failure. (Id.).

Claim 1 is rendered obvious by using the conventional wisdom articulated in the

APA and applying it to Flaherty’s express teaching of extending the BIOS by

remote communication if there is a local failure to boot. (Ex. 1020, p. 32, ¶92).

Claim 6 includes the limitations of claim 1 with the additional limitation of

element [6.2], “a mass storage device coupled to the CPU and having a boot code

sector and operating system code recorded thereon.” (Ex. 1001, p.8, 8:36-39). The

Background section of Flaherty suggests that a local computer node may have a

local boot device. (Ex. 1004, p.9, 3:23-25)(indicating that a computer searches for

a local boot device before making a request over a network). According to a

POSITA, a local boot device is a mass storage device (e.g., disk drives) that has a

boot code sector for storing an operating system. (Ex. 1020, p. 39, ¶114). Thus,

Flaherty teaches the only element that Claim 6 adds to Claim 1.

The APA describes a local boot device consistently with Flaherty’s

description. (Ex. 1001, p.5, 1:51-55; Ex. 1020, p. 39, ¶114).

Specifically, the APA describes a boot code sector that is essentially a

master boot record, which is the beginning portion of a memory device that stores

the files necessary for booting a computer from a partitioned media such as a hard

drive. (Ex. 1020, pp. 10-11, ¶26).


26

Additionally, Flaherty discloses Claim 6’s limitation by describing a remote

boot device. (Ex. 1020, pp. 38-39, ¶113). Flaherty’s mass storage (e.g., disk 20) is

remotely located with respect to the processor and it is coupled to the processor

(e.g., CPU 24) by way of communication link 12 and network device 26. (See Ex.

1004, p.2, FIG. 1; Ex. 1020, pp. 38-39, ¶113). A POSITA would understand the

communication link and network device couple the CPU to the disk in order to

give the CPU access to the contents on the disk. (Ex. 1020, pp. 38-39, ¶113). The

CPU’s ability to access the contents of the disk 20 demonstrates that the CPU is

connected to the hard disk in a manner that facilitates communication between the

CPU and hard disk. (Id.).

Claim 18 includes the limitations of claim 1 with two additional

requirements: 1) a “remote repair center computer” and 2) an “E-BIOS.” The

combination of Flaherty and APA discloses these two additional limitations. First

Flaherty describes a remote host computer node (Ex. 1004, p.2, FIG. 1, item 14)

responding to a request by a local node 10 upon failure to find a boot device. (Ex.

1004, p.9, 4:61-67). The host responds to the local node’s failure by searching for

an operating system for the local node. (Id., p.10, 5:1-3). Applying BRI, the

remote host discloses a “remote repair center computer” because it is a remote

computer which addresses the local node’s failure to boot. (Ex. 1020, pp. 44-45,

¶126).


27

Second, Flaherty and APA disclose an “E-BIOS” by explaining that as part

of the POST sequence (a BIOS routine), the processor will request to boot over the

network in the event of a failure. (Ex. 1004, p.9, 3:20-25). Applying BRI,

Flaherty and APA demonstrate that POST is a common part of the BIOS and

Flaherty’s POST routine establishes a remote connection in response to a failure.

(Ex. 1020, pp. 44-45, ¶126).

Claims 2, 7, and 19 require the remote connection to be made via a

“telephone link by operating a telephone modem to dial a telephone number.”

Flaherty discloses a communications link/line 12 to achieve a “local area network

(LAN).” (Ex. 1004, p.2, FIG. 1 (item 12); p.8, 1:64-67). Although Flaherty

discloses the design choice of a LAN line, it would be obvious to modify Flaherty

to communicate via a telephone link by operating a telephone modem. (Ex. 1020,

pp. 33-34, ¶¶96-97). The claims are obvious when there is a design need to solve a

problem and there are a finite number of identified, predictable solutions such that

a POSITA has good reason to pursue the known options within his or her technical

grasp. KSR, 550 U.S. at 402.

Here, the type of communication link was a matter of design choice selected

from a number of finite possibilities in order to meet the design need of

establishing a network. (Ex. 1020, p. 33, ¶96). Moreover, the APA (Ex. 1001, p.5,

2:59-64) demonstrates that it would be obvious to use a telephone modem because


28

“most PCs at a minimum have a telephone modem connection” prior to the time of

invention. (Ex. 1020, p. 33, ¶94).

Claims 3, 8, and 12 include further establishing communication by

accessing “a priority record of telephone numbers” and dialing the telephone

numbers in order of priority until a call is answered and a pre-programmed signal

is returned. The subject matter of claims 3, 8, and 12 is nothing more than a

mental process of dialing a phone numbers until a call is answered. (Ex. 1020, p.

35, ¶101). To that end, these claims take ordinary human behavior and embody it

as computer code. (Id.).

Dr. Smith testifies that a POSITA possessed the general knowledge of

dialing phone numbers according to a priority list until the phone call is answered.

(Ex. 1020, pp. 35, 36-37, ¶¶102, 106). Programming a computer to automatically

dial numbers was known prior to the time of invention. (Ex. 1020, pp. 35-39,

¶¶102-14 citing to Ex. 1019, p.1, Abstract which states: “The telephone numbers

are automatically dialed at one or more predetermined scheduled times. When one

of the dialed telephones is answered, the NOCM complex sets up a connection

through the public switched telephone network.”).

A POSITA would have known that lists are prioritized. Because more than

one call cannot be placed at the same time, some prioritization is needed to

determine which number to dial first. (See Ex. 1020, p. 35, ¶101). Also, a


29

POSITA would know to continue calling until a call is answered. (Id.). Anytime a

call is answered, a preprogramed signal (e.g., a signal that connects the call) is

returned. This preprogrammed signal is not returned if the call is unanswered.

(Ex. 1020, p. 36, ¶105).

Applying this general knowledge to the combination of Flaherty and APA is

obvious. (Ex. 1020, pp. 36-37, ¶106). When using a modem, a POSITA would be

motivated to ensure remote communication and this is achieved by continuing to

dial phone numbers to achieve a connection. Given that a POSITA knew that

computers can automatically dial phone numbers, and given that establishing

remote communication is a purpose of Flaherty, it would be obvious to

automatically dial a priority of phone numbers until a remote communication is

established. (Id.).

Claim Chart I indicates that the combination of Flaherty and the APA

renders obvious claims 1, 2, 4, 6, 7, 9, and 18-20. Specifically, Chart I shows the

relevant scope and content of the prior art, as well as the lack of differences

between the challenged claims and the prior art combination at issue, as understood

and interpreted by a POSITA. Unless otherwise noted, all underlining and bolding

of text in the chart are emphasis added.

The 268 Patent Claim Chart I –Flaherty and The APA


30

[1P] A basic input output

system (BIOS)

comprising:

Flaherty: “As part of the [POST] sequence, the processor

looks for a boot device. If it fails to find a boot

device, the processor will allow the network device

to request a boot over the network.” (Ex. 1004, p.9,

3:21-25).

“Upon powering up, the processor 24 of computer

10 executes a power-on/self-test sequence during

which it attempts to find a boot device which

contains a file with its operating system in it.” (Ex.

1004, p.9, 4:61-64).

The APA: “Typically this beginning code is called a

basic input output system (BIOS), which includes a

power-on self-test (POST) procedure.” (Ex. 1001,

p.5, 1:20-25).

See also Ex. 1020, pp. 28-29, ¶¶82-83.

[1.1] a first code portion

adapted for execution by a

CPU to perform power on

self test (POST) routine

and to initiate boot

operations;

Flaherty: “Upon powering up, the processor 24 of

computer 10 executes a power-on/self-test sequence

during which it attempts to find a boot device which

contains a file with its operating system in it.” (Ex.

1004, p.9, 4:61-64).



power-on self-test (POST) procedure.” (Ex. 1001,

p.5, 1:20-25).

See also Ex. 1020, p. 30, ¶85.

[1.2] a second code

portion adapted for

execution by the CPU to

establish communication

with a remote computer

Flaherty: “If it finds an option board, it processes

any initialization routines located on the board.

When the option board is network device 26, the

initialization routines (Step 102) on the device

requests a boot from the network by broadcasting a

boot request (Step 104).” (Ex. 1004, p.10, 5:54-59)

(emphasis added).

“If it fails to find a boot device, the processor will

allow the network device to request a boot over the

network.” (Ex. 1004, p.9, 3:23-25).


31

See also Ex. 1020, pp. 30-31, ¶87.

[1.3] wherein code

execution by the CPU is

directed from the first

portion to the second

portion upon failure to

complete said boot

operations




contains a file with its operating system in it. If it

finds no boot device, the network device 26

broadcasts a request for an operating system over

the network communications line 12. The network

device 28 on the host 14 determines that the message

is in broadcast mode and notifies the CPU 30.” (Ex.

1004, p.9, 4:61-67) (emphasis added).

Smith Dec: “within the entire disclosure of Flaherty,

there is no other instance that triggers the execution

of code that establishes a connection with a remote

computer. This suggests that Flaherty establishes a

remote connection only if there is a failure to boot.

The second portion of code execution is in the option

board of network device 26.” (Ex. 1020, p. 32, ¶91).

[2] A BIOS as in claim 1

wherein the second

portion directs the CPU to



through a telephone link

by operating a telephone

modem to dial a telephone

number.

The APA: “PCs at the time of the present invention,

however are typically provided with some form of

communication link to other computers. Most PCs at

a minimum have a telephone modem connection,

and may communicate with another computer over a

telephone line in either an analog or a digital

protocol.” (Ex. 1001, p.5, 2:59-64).

See also Ex. 1020, p. 34, ¶97.


wherein the second


access a priority record of

telephone numbers and to

dial the telephone

numbers in order of

priority until a call is

answered and a pre-

programmed signal is

returned.

Smith Dec.: “The subject matter of claim 3

constitutes general knowledge possessed by a

POSITA prior to the time of invention.” (Ex. 1020,

p. 35, ¶ 100).

“A POSITA would combine these two teachings to

meet the objective of establishing communication

with a remote computer. Specifically, an automated

telephone process, which was well known prior to

1987, was used for the very purpose of persistently

dialing phone numbers until a connection was

made.” (Id., p. 36-37, ¶ 106).


32


wherein the second




through a network

communication adapter.

Flaherty: FIG. 1 discloses a communication

interface 28.

(Ex. 1004, p.2 (FIG.1)).

[6P] A computer

comprising:

Flaherty: Flaherty discloses a computer node 10.

(Ex. 1004, p.2, FIG. 1).

[6.1] a CPU;

Flaherty: “The node 10 has many of the elements

of an ordinary computer, such as a memory 27 and a

central processing unit (CPU) 24.” (Ex. 1004, p.9,

4:49-51) (emphasis added).

[6.2] a mass storage

device coupled to the

CPU and having a boot

code sector and operating

system code recorded

thereon;

Flaherty (mass storage): “disk 20.” (Ex. 1004, p.9,

4:43; p.2, FIG. 1, item 20). See also Ex. 1020, pp.

38-39, ¶113.

“As part of the sequence, the processor looks for a

boot device.” (Ex. 1004, p.9, 3:23-24). See also Ex.

1020, p. 39, ¶114.

Perla Dec.: “[a] POSITA would know that ‘disk 29’

(FIG. 1, item 29) can be a boot device.” (Ex. 1020,

p. 39, ¶114).

Flaherty (a boot code sector and operating system

code):


33

“The boot-sector 56 enables the node 10 to request

the operating system” (Ex. 1004, p.11, 7:1-2; p.2,

FIG. 1, items 22 and 56).

The APA: “A floppy disk with DOS and a boot

sector was called a Boot disk, and the name is still

used, although operating systems and boot sectors

are typically now recorded on hard disk drives.”

(Ex. 1001, p.5, 1:51-55) (emphasis added).

[6.3] a basic input output system (BIOS) coupled to

the CPU, the BIOS having a first code portion

adapted for execution by the CPU to perform power

on self test (POST) routine and to initiate boot

operations, and a second code portion adapted for

execution by the CPU to establish communication

with a remote computer;

See [1P], [1.1], and [1.2] of

this chart.

[6.4] wherein code execution by the CPU is

directed from the first code portion to the second

code portion upon failure to complete said boot

operations.

See [1.3] of this chart.

[8] A computer as in claim 7 wherein the second

portion directs the CPU to access a priority record

of telephone numbers, and to dial the telephone

numbers in order of priority until a call is answered

and a pre-programmed signal is returned.

See [3] of this chart.


code portion directs the CPU to establish

communication with a remote computer through a

telephone link by operating a telephone modem to

dial a telephone number.



portion directs the CPU to establish communication

with a remote computer through a network



[12] A system as in claim 11 wherein the first CPU

accesses a priority record of telephone numbers,

and dials the telephone numbers in order of priority

until a call is answered and a pre-programmed

signal is returned.



34

[18P] A method for establishing contact with a

remote repair center computer upon failure of a

local computer to boot, comprising steps of:

See [1.2] and [1.3] of this

chart.

[18.1] (a) sensing failure of the local computer to

boot through action of a first portion of code in an

extended basic input output system (E-BIOS)

installed and operable in the first computer;


[18.2] (b) activating a

communication link to the

remote repair center

computer through action

of a second portion of

code in the E-BIOS, the

second potion of code

executed in response to

the failure of the first

computer to boot.


Flaherty (remote repair center computer): “The

CPU 30 of host 14 determines that the message is a

boot request and searches its memory 32 to attempt

to identify an operating system for the node 10. If it

finds such an identification, it constructs a message

by attaching the hardware address of the network

device 26 of node computer 10 onto a minimum-

boot program file 34 and places the message on the

communications line 12.” (Ex. 1004, p.10, 5:1-8)

(emphasis added).








device 28 on the host 14 determines that the message

is in broadcast mode and notifies the CPU 30.” (Ex.

1004, p.9, 4:61-67) (emphasis added).

Perla Dec.: “A POSITA will know that the network

device 26 has an option board containing the second

portion of the code (‘'E-BIOS’).

See also Ex. 1020, pp. 44-45, ¶126.

[19] The method of claim 18 wherein the

communication link is a telephone modem link.


[20] The method of claim 18 wherein the

communication link is a network communication

link.

Flaherty: “network

communications line 12”

(Ex. 1004, p.9, 4:66).


35

Applying the combination of Flaherty and APA to the challenged claims 1,

2-4, 6-9, 12, and 18-20 construed in accordance with the BRI standard, renders the

claims unpatentable under 35 U.S.C. § 103 (obviousness). (Ex. 1020, p. 28, ¶80).

This ground of unpatentability demonstrates that the challenged claims of the 268

Patent simply state what already was known in the field; these claims, if allowed to

stand, merely diminish the resources available to skillful men. KSR, 550 U.S. at

415-16.

Ground 2: The combination of Chang and the APA renders obvious

claims 1, 2, 4, 6, 7, 9, and 18-20 under 35 U.S.C. § 103.

Chang was filed August 4, 1993 and issued as U.S. Pat. No. 5,444,850 on

August 22, 1995. Chang is prior art under at least 35 U.S.C. § 102(a) and 102(b).

Chang describes, among other things, “preboot functions” that take place at a

workstation” where the “workstation which has experienced a conflict resulting in

a failure could be rebooted remotely and, during the reboot cycle, boot files

changed to clear possible conflicts.” (Ex. 1005, p.7, 2:52-55, 2:60-63)(emphasis

provided). Chang is compelling prior art because it undercuts the alleged

innovative aspects of the invention described in the 268 Patent and included in the

challenged claims. According to the 268 Patent:

There is a conventional diagnostic system called Simple Network

Management Protocol (SNMP), well-known in the art, that allows a


36

service person at a remote site to communicate with a troubled PC and

to perform some alterations, but SNMP requires that at least a

minimum operating system be active and operable in the troubled PC.

For those cases in which a PC will not boot, SNMP has no value.

(Ex. 1001, p.6, 3:15-21). However, before the priority date of the 268 Patent,

Chang already solved this problem - Chang’s Server Management Application

(SMA) “serves the same function as SNMP” as the SMA controls a client device

with regard to “any preboot activity” (e.g., a preboot activity occurs before an

operating system is active). (Ex. 1005, p.8, 4:46-50, p.9, 6:18-20; Ex. 1020, pp.

26-27, ¶¶77-79).

It would be obvious to combine Chang with APA. Chang describes a

“workstation power-up” step that is performed in a manner that is well-known in

the art. (Ex. 1005, p.9, 6:50-55). According to a POSITA, this power-up step

matches the conventional POST process described in the APA. Therefore, a

POSITA would recognize that the teachings of the APA relating to POST could

and likely would relate to Chang’s discussion of a power-up step because the

POST of the prior art would exemplify the power-up step of Chang. (Ex. 1020, p.

46, ¶¶129-130).

Chang also mentions using remote communication links (e.g., a LAN) and

storing an operating system on a boot sector of a boot device (e.g., floppy disk,

hard drive). The APA of the 268 Patent explains these same building block


37

concepts, albeit in greater detail, in a manner consistent with the understanding of a

POSITA. As such, a POSITA would be motivated to incorporate the teachings of

APA as building blocks of the invention described in Chang because a POSITA

would not expect Chang to abandon the conventional booting practices described

in the APA. (Ex. 1020, p. 46, ¶130).

Claim 1

The preamble [1P] of claim 1 requires a BIOS. Under BRI, this limitation is

met when the prior art discloses a set of beginning instructions for a computer that

activate on startup. (Ex. 1020, p. 47, ¶132). Chang discloses beginning

instructions as BIOS and the firmware that extends the functionality of BIOS.

(Id.). Chang’s BIOS and firmware are interwoven to function together as a single

program: Chang’s firmware “interrupts the boot process after the BIOS . . . is

executed.” (Ex. 1005, p.9, 6:50-53).

Element [1.1] of claim 1 requires the BIOS to include a first code portion

that is POST. The APA admits that POST is typically included in BIOS. (Ex.

1001, p.5, 1:20-25). It would be obvious to a POSITA to include a POST

procedure in Chang’s “boot (startup) cycle” (Ex. 1005, p.7, 1:59) to ensure that the

computer is functioning correctly. “When computers are turned on, they typically

go through a "booting" process. When a computer "boots" it first performs a

power-on self-test (POST), which involves running various tests to ensure that the


38

computer is functioning correctly and involves initializing the registers within

certain hardware devices.” (Ex. 1020, pp. 48-49, ¶¶135-139; see also Ex. 1006,

p.8, 1:45-50).

Element [1.2] of claim 1 requires “a second code portion adapted for

execution by the CPU to establish communication with a remote computer.” A

substantial portion of Chang explains the ability to achieve “remote pre-boot

control of any network workstation” (Ex. 1005, p.9, 5:45-50). In this respect, a

local computer (Chang’s user workstation 13) communicates with a remote

computer (Chang’s workstation server 11) before the local computer completes

booting and hands control to the operating system. (Ex. 1020, p. 49, ¶141).

Element [1.3] of claim 1 requires the code execution of the CPU to be

“directed from the first portion to the second portion upon failure to complete said

boot operations.” Claim element [1.3] describes the concept of executing code that

establishes communication with a remote computer in response to failure to

complete said boot operations during POST. (Ex. 1020, p. 50, ¶¶144-146).

Chang states that a local User Workstation would establish communication

with a remote Workstation Server before the boot operations of the local User

Workstation are complete in order to provide, inter alia, workstation fault

correction. (Ex. 1005, p.7, 1:38-48). Chang explains that the reasons to


39

communicate with the remote server are “associated with computer functions that

take place during the workstation’s boot (startup) cycle.” (Id., p.7, 1:56-58).

Chang’s system is “[a]ble to create a network connection for the workstation

at boot time even if the local drive is damaged or the user does not log in.” (Id.,

p.8, 3:19-20). This is particularly important when the User Workstation

experiences a preboot failure. (Ex. 1020, p. 51, ¶150). Chang addresses this by

explaining that any preboot activity such as an operating system rescue (due to

malicious or accidental damage) can take place automatically under control of the

Workstation Server. (Ex. 1005, p.8, 4:47-50). It would be obvious to establish a

connection with a remote computer upon a failure to complete the boot operations

during POST. (Ex. 1020, pp. 51-52, ¶151-154).

For example, the rationale to modify Chang to be responsive to a POST

failure is found in Chang itself. First, Chang identifies that the local computer

attempts to boot locally. (Ex. 1020, p. 52, ¶154). Chang next explains that preboot

control over a workstation “is very desirable.” (Ex. 1005, p.7, 1:65-2:2). Chang

indicates a desire to respond to workstation failures by establishing communication

with a remote computer: “a workstation which has experienced a conflict resulting

in a failure could be rebooted remotely and, during the reboot cycle, boot files

changed to clear possible conflicts.” (Id., p.7, 2:60-64).


40

Finally, Chang establishes a remote connection in order to address a

potential virus infection in the boot sector prior to the completion of booting. (Ex.

1005, pp.8-9, 4:67-5:4; Ex. 1020, p. 52, ¶¶152-153). These examples demonstrate

why it would be obvious to respond to a preboot failure by establishing a remote

connection. (Ex. 1020, p. 52, ¶154). In view of the APA, POST is typically

included as part of the preboot activity. (Ex. 1001, p.5, 1:20-25).

Additional motivation to modify Chang to respond to POST failures is

expressed in Schieve which documents the need to diagnose POST failures (Ex.

1016, p.8, 3:16-19; Ex. 1020, pp. 52-53, ¶155). A POSITA, applying ordinary

skill would logically establish remote communication once a failure occurs. (Ex.

1020, pp. 52-53, ¶155). Therefore, the combination of Chang and APA render

obvious claim 1.

Claim 6 includes the limitations of claim 1 with the additional limitation of

element [6.2],“a mass storage device coupled to the CPU and having a boot code

sector and operating system code recorded thereon.” (Ex. 1001, p.8, 8:36-39). The

268 Patent admits that this feature of computers was well known in the prior art.

(Id., p.5, 1:51-55). Chang discloses the same mass storage device as the APA by

explaining that workstations have boot sectors on hard drives. (Ex. 1005, p.8, 3:2-

5; Ex. 1020, p. 57, ¶169).


41

Claim Chart II demonstrates that applying the combination of Chang and the

APA to the challenged claims 1, 2, 4, 6, 7, 9, and 18-20, construed in accordance

with the BRI standard, renders the claims unpatentable under 35 U.S.C. § 103

(obviousness). This ground of unpatentability again demonstrates that the

challenged claims of the 268 Patent state what already was known in the field.

The 268 Patent Claim Chart II – Chang and the APA

[1P] A basic input output

system (BIOS)

comprising:

Chang: “at system startup, prior to loading of the

workstation operating system software during the boot

sequence, it performs certain operating system

functions by using the basic input/output system

(BIOS) of the workstation to enable the workstation to

communicate with a server on the network and make

the necessary resources of the workstation available to

a server management application running on the server

via the network.” (Ex. 1005, p.1, Abstract).

See also Ex. 1020, p. 47, ¶132.

[1.1] a first code portion

adapted for execution by

a CPU to perform power

on self test (POST)

routine and to initiate

boot operations;



power-on self-test (POST) procedure.” (Ex. 1001, p.5,

1:20-25).

Smith Dec.:“[I]t would be obvious to include a POST

procedure in Chang’s ‘boot (startup) cycle’” (Chang,

col. 1, line 59) to ensure that the computer is

functioning correctly. A POSITA would understand

Chang’s power-up step is a conventional POST

routine (like the one described in the APA) because it

is performed in a manner that is well known.” (Ex.

1020, pp. 47-48, ¶134; see also p. 49, ¶139).

[1.2] a second code

portion adapted for

Chang: “The invention utilizes a client server

technology, implemented as firmware (i.e.,

programming in a PROM or ROM), which allows full,


42

execution by the CPU to



remote pre-boot control of any network workstation”

(Ex. 1005, p.9, 5:45-50) (emphasis added).

“means for executing said loaded network

communications program to establish connection with

a server management application which is executing in

a server coupled to said network. (Ex. 1005, p.10,

8:50- 53).

See also Ex. 1020, p. 49, ¶¶141-142.

[1.3] wherein code

execution by the CPU is

directed from the first

portion to the second

portion upon failure to

complete said boot

operations.

Chang: “Able to create a network connection for the

workstation at boot time even if the local drive is

damaged or the user does not log in.” (Id., p.8, 3:19-

20).

“This process . . . allows a variety of preboot functions

to take place in the workstation. For Example . . . a

workstation which has experienced a conflict resulting

in a failure could be rebooted remotely and, during the

reboot cycle, boot files changed to clear possible

conflicts. (Ex. 1005, p.7, 2:53- 63).

See also Ex. 1020, pp. 52-53, ¶¶154-155.


wherein the second




through a telephone link

by operating a telephone

modem to dial a

telephone number.

Chang: “In particular, each time a client workstation

attempts to connect to the network, firmware 19a or

19b executes a program which seeks a server on the

network with which to communicate.” (Ex. 1005, p.5,

4:51-54).

The APA: “PCs at the time of the present invention,

however are typically provided with some form of

communication link to other computers. Most PCs at a

minimum have a telephone modem connection, and

may communicate with another computer over a

telephone line in either an analog or a digital

protocol.” (Ex. 1001, p.7, 2:59-64).

Smith Dec.: “Given the fact that telephone modems

were typically included in most computers prior to the

time of invention, it would be obvious to leverage this

functionally to establish a communication with a


43

remote device because the telephone modem is readily

available to achieve such desired purposes.” (Ex.

1020, pp. 54-55, ¶159).


wherein the second


access a priority record of

telephone numbers and to

dial the telephone

numbers in order of

priority until a call is

answered and a pre-

programmed signal is

returned.

Smith Dec.: “The subject matter of claim 3 constitutes

general knowledge possessed by a POSITA prior to

the time of invention.” (Ex. 1020, p. 35, ¶ 100).

“A POSITA would combine these two teachings to

meet the objective of establishing communication with

a remote computer. Specifically, an automated

telephone process, which was well known prior to

1987, was used for the very purpose of persistently

dialing phone numbers until a connection was made.”

(Id., pp.55-56, ¶ 163).


wherein the second




through a network


Chang: FIG. 1 discloses a local area network. (Ex.

1005, p.2, FIG.1).

“The client workstation then sends, using the invented

subsystem, its network interface card (NIC) address

to the server” (Ex. 1005, p.4:57-59) (emphasis added).

Smith Dec.: “A NIC is a specific type of network

communication adapter.” (Ex. 1020, p. 56, ¶165).

[6P] A computer

comprising:

Chang: Chang discloses a client workstation 13 (Ex.

1005, p.2, FIG. 1, item 13).

[6.1] a CPU;

Chang: Chang’s client workstation includes a central

processing unit (CPU). (Ex. 1005, p.10, 7:58).

[6.2] a mass storage

device coupled to the

CPU and having a boot

code sector and operating

system code recorded

thereon

Chang: “It could be customized to verify that the

boot sector of the client is free of virus infection and

that the boot sector is intact.” (Ex. 1005, p.8, 4:67-

5:2).

“Once all client-server preboot functions are complete

and acknowledged by the client, the firmware 19a or

19b on the client returns boot control to the client’s

basic input/ output system (BIOS). The client then

boots in the normal manner, loading the complete

workstation operating system” (Ex. 1005, p.9, 5:5-11).

“. . . loading of a complete workstation operating

system onto a storage medium accessible to a


44

processor of the workstation” (Ex. 1005, p.10, 8:12-

16).

The APA: “A floppy disk with DOS and a boot sector

was called a Boot disk, and the name is still used,

although operating systems and boot sectors are

typically now recorded on hard disk drives.” (Ex.

1001, p.5, 1:51-55; Ex. 1020, p. 24, ¶ 69).

[6.3] a basic input output system (BIOS) coupled to the

CPU, the BIOS having a first code portion adapted for

execution by the CPU to perform power on self test

(POST) routine and to initiate boot operations, and a

second code portion adapted for execution by the CPU to

establish communication with a remote computer;

See [1P], [1.1], and

[1.2] of this chart.

[6.4] wherein code execution by the CPU is directed from

the first code portion to the second code portion upon

failure to complete said boot operations.


[7] A computer as in claim 6 wherein the second code

portion directs the CPU to establish communication with

a remote computer through a telephone link by operating

a telephone modem to dial a telephone number.


[9] A computer as in claim 6 wherein the second portion

directs the CPU to establish communication with a remote

computer through a network communication adapter.


[18P] A method for

establishing contact with

a remote repair center

computer upon failure of

a local computer to boot,

comprising steps of:

See [1.2] and [1.3] of this chart.

Chang (remote repair center computer): “Remote

software installation, distribution, metering and

Diagnostics.” (Ex. 1005, p.8, 3:31-33).

[18.1] (a) sensing failure

of the local computer to

boot through action of a

first portion of code in an

extended basic input

output system (E-BIOS)

installed and operable in

the first computer;

See [1.1] and [1.3] of this chart.

Chang (E-BIOS): “The invention utilizes a client

server technology, implemented as firmware (i.e.,

programming in a PROM or ROM), which allows full,

remote pre-boot control of any network workstation.”

(Ex. 1005, p.9, 5:46-50).


45

See also Ex. 1020, p. 61, ¶178.

[18.2] (b) activating a communication link to the

remote repair center computer through action of a

second portion of code in the E-BIOS, the second

potion of code executed in response to the failure of

the first computer to boot.


[19] The method of claim 18 wherein the communication

link is a telephone modem link.


[20] The method of claim 18

wherein the communication

link is a network

communication link.

Chang: “local area network” (Ex. 1005, FIG. 1).

See also. Ex. 1020, p. 63, ¶182.

Applying the combination of Chang and Flaherty to the challenged claims 1,

2, 4, 6, 7, 9, and 18-20 construed in accordance with the BRI standard, renders the


Ground 3: The combination of Chang and Flaherty renders obvious

claims 10, 11, and 13-17 under 35 U.S.C. § 103.

Chang and Flaherty describe systems where a local computer can

communicatively link to a remote computer before booting operations complete.

(Ex. 1020, p.64, ¶184). Chang’s system focuses on the remote computer’s control

of the local computer during a preboot cycle. (Id.). Flaherty centers on a local

computer’s ability to broadcast requests to a remote computer if the local computer

fails to find a boot device. (Id.). Chang and Flaherty are each based on a local area

network, and therefore employ similar communication protocols. (Ex. 1020, p. 63,

¶183). Thus, it would be obvious to combine the teachings of these two references.


46

(Id., pp. 64-67, ¶¶185-191). The combination of these two references renders the

challenged claims obvious for the following reasons:

Claim 10

The preamble [10P] of claim 10 describes a “system for modifying code and

data in a first computer having a first CPU upon failure of the first computer to

boot.” Some of the “high value technologies” provided by Chang’s system are

“Configuration management (remote edit and installation of workstation system

files)” and “workstation crash recovery.” (Ex. 1005, p.8, 3:12-31). In other words,

Chang’s Workstation Server modifies code (e.g., operating system files) in a User

Work station. (Ex. 1020, pp. 69-70, ¶¶197, 199). Chang demonstrates that it was

known, prior to the time of invention, to take preboot control over User

Workstation that experiences crashes or failures. (Ex. 1020, pp. 69-70, ¶198). For

example, Chang describes “operating system rescue” which suggests the idea of

modifying operating system files upon a failure to boot. (Ex. 1005, p.8, 4:46-50;

Ex. 1020, p. 70, ¶199).

Element [10.1] recites: “[A] second computer having a second CPU, the

second computer connected to the first computer by a communication link.”

Chang discloses a second computer (Workstation Server 11) connected to a first

computer (User Workstation 13) via a communication link (a local area network).

(Ex. 1005, p.2, FIG. 1). Flaherty has the same arrangement: a second computer


47

(Host Computer Node 14) is connected to a first computer (computer node 10) via

a communication link (communication link 12). (Ex. 1004, p.2, FIG. 1; Ex. 1020,

p. 71, ¶205).

Element [10.2] recites: “[A] master code kernel and a slave code kernel

stored on a memory device at the second computer.” Chang discloses a master

code kernel (the server management application (SMA)) and the slave code kernel

(e.g., workstation system files, files needed for workstation crash recovery, etc.)

stored on a memory device at the second computer. (e.g., Workstation Server 11).

(Ex. 1020, p. 72, ¶¶207-208). A POSITA would understand that the SMA is a

kernel because it may be “a NetWare Loadable Module (NLM) in a Novell

NetWare environment.” (Ex. 1005, p.8, 4:4-7; Ex. 1020, p. 72, ¶207 citing Ex.

1008, p.3 which explains that NetWare includes a “kernel”). The SMA is a master

because it is responsible for controlling the User Workstation. (Ex. 1020, p. 72,

¶207).

A POSITA would also understand Chang to suggest that a slave code kernel

is stored in the Workstation Server. (Ex. 1020, p. 72, ¶208). The Workstation

Server has all the necessary files to update, repair, or rescue the operating system

of the User Workstation. (Ex. 1005, p.8, 4:46-50; Ex. 1020, p. 72, ¶208). To a

POSITA, this suggests that a kernel of the User Workstation is stored in the

Workstation Server because the Workstation Server is designed to upgrade the


48

operating system of the User Workstation. (Ex. 1020, p. 73, ¶¶210-211; see also

Ex. 1005, p.9, 5:22-26 stating: “A second advantage is that any updates or repairs

to critical software systems can be managed centrally using a sterile operating

environment without interfering with the user of the client in any way.”).

To allow the slave kernel to be downloaded, Chang discloses using an

“Operating System kernel 25,” which resides in the User Workstation. (Ex. 1005,

p.9, 6:30). Chang states: “In step 49, the server sends any required workstation

updates to the client and performs any assigned tasks under control from SMA”

(Ex. 1005, p.10, 7: 10-12). A POSITA would consider a new, updated operating

system a slave because its transfer is controlled by the master SMA. (Ex. 1020, p.

73, ¶211). Specifically, Chang teaches that “the [workstation] server sends any

required [user] workstation updates to the client and performs any assigned tasks

under control from the SMA [of the workstation server].” (Ex. 1005, p.10, 7:10-

12).

Alternatively, Chang’s operating system kernel 25, which is controlled by

the SMA, is a slave kernel itself. (Id., p.10, 7:30-36; Ex. 1020, pp. 73-74, ¶212).

Although Chang stores this kernel in the local first computer, a POSITA would

find it obvious to store the operating system kernel 25 on a remote second

computer. Flaherty provides an explicit rationale to modify Chang by relocating

the initial storage of the operating system kernel 25. (Ex. 1020, pp. 73-74, ¶212).


49

Specifically, Flaherty explains that based on the technological innovation of

networked systems:

It became unnecessary, therefore, that the computer, which is

receiving the operating system, have an operating system on a disk or

have a disk at all. For such a system to function, there are only two

requirements. The first is that the network device be capable of

generating a message and transmitting it over the communications

link to request the operating system from another computer on the

network. The second is that the network device be capable of loading

the operating system it received into memory and causing the CPU to

execute it.

(Ex. 1004, p.8, 2:57-67). It was obvious to store Chang’s operating system kernel

25 in the second computer based on the rationale that a POSITA was aware of the

benefits of storing files on disks remotely over a network. (Ex. 1020, p. 74, ¶213).

Dr. Smith testifies that a POSITA would be motivated to relocate software from a

local computer to a remote computer for the purpose of saving memory space as

well as to store the software in a more secure environment. (Ex. 1020, p. 65-66,

¶187-188). Further, Flaherty demonstrates that this was a common way of

thinking prior to the time of invention: “It did not take users long to realize that the

network could make files on disks belonging to one computer system on the

network available to all computers on the network.” (Ex. 1004, p.8, 2:24-27).


50

Element [10.3] recites: “[A]n extended basic input output system (E-BIOS)

in the first computer.” Chang discloses an intertwined BIOS and firmware that

meets the requirements of an E-BIOS. For example, Chang states that “[t]he

invention utilizes a client server technology, implemented as firmware (i.e.,

programming in a PROM or ROM), which allows full, remote pre-boot control of

any network workstation.” (Ex. 1005, p.9, 5:46-50).

Element [10.4] recites: “[W]herein, upon sensing failure of the first

computer to boot, the E-BIOS establishes communication with the second

computer over the communication link, and the second CPU in response causes a

copy of the slave kernel to be copied to the RAM of the first computer and to be

made available to the first CPU for execution.” As discussed in Ground 2 with

respect to element [1.3], Chang suggests that its User Workstation utilize the

established communication with a Workstation Server to resolve failure conditions.

Additionally, Chang’s SMA performs various updates and operating system rescue

operations which suggest copying the slave kernel to the User Workstation, to

achieve the update or rescue, with the slave kernel becoming available to first CPU

for execution.

A POSITA would know that the slave kernel (e.g., the new, updated

operating system) is copied into RAM because operating systems are executed

from RAM. (Ex. 1020, pp. 75-76, ¶217 relying on Flaherty (Ex. 1004, p.8, 4:37-


51

40) which states “The operating system is usually stored on a magnetic disk and

read into Random Access Memory (RAM) to be executed”).

Lastly, element [10.5] recites: “[W]herein, with a copy of the slave kernel in

the first computer and the master kernel active in the second computer, a user at

the second computer may diagnose and modify code and data in the first computer

from the second computer.” Chang discloses that the SMA can perform “[r]emote

software installation, distribution, metering and diagnostics.” (Ex. 1005, p.8, 3:31-

33). According to a POSITA, this suggests that a user at the Workstation Server

may diagnose and modify code in the first computer (Ex. 1020, p. 76, ¶221).

Also, Chang renders obvious the notion of performing the diagnosis and

modification with a copy of the slave kernel in the first computer and the master

kernel active in the second computer. For example, the diagnosis and modification

using the SMA may occur once the slave kernel (e.g., an updated or rescued

operating system) has been copied to the User Workstation. (Ex. 1020, p. 76,

¶220). Furthermore, it would be obvious to continue to diagnose and upgrade code

residing in a User Workstation even after a previous operating system

update/rescue has occurred in order to maintain a secure operating environment.

(Id.).

Claim 11 states: “[W]herein the communication link is one of an Integrated

Services Digital Network (ISDN) and an analog telephone line.” This is an


52

obvious variation of Chang’s “local area network with a pair of client workstations

and a single server.” (Ex. 1005, p.8, 3:65-67; Ex. 1020, pp. 77-78, ¶¶224-225). It

would be obvious to a POSITA to use an ISDN to effectuate a local area network

at the time of invention because ISDN was a popular communication standard at

the time of invention. (Ex. 1020, pp. 77-78, ¶224). Moreover, it was known, prior

to the time of invention, to use an adapter to convert a non-ISDN line into an ISDN

line in diagnostic purposes. (Ex. 1020, p. 78, ¶225). Furthermore, since the claim

requires that the communication link is one of an Integrated Services Digital

Network (ISDN) and an analog telephone line, the prior teaching of employing a

modem to support a network communication link is adequate to teach this claim.

(Ex. 1020, pp. 33, 54-55, ¶¶95, 159).

Claim 15 states: “[W]herein an operator at the second computer may repair

a corrupted boot sector on a disk drive of the first computer, and wherein an

operator at the second computer may modify file allocation tables at the first

computer.” In this respect the subject matter of claim 15 is directed to allowing a

person remotely control a local computer. Chang expresses this advantage of

having remote control, which is a benefit over older methods:

While this process is common, it is always performed by an operator

entering commands while sitting at the workstation. The invention

enables this functionality to be carried out remotely.


53

(Ex. 1005, p.7, 2:63-67). Here, Chang demonstrates that an operator at a

second computer may repair the first computer. (Ex. 1020, pp. 79-80, ¶228).

Claim 15 also states that the repair concerns “a corrupted boot sector on a

disk drive of the first computer.” Chang also discloses remotely repairing such

defects. For example, Chang attempts to “remove the virus and restore the boot

sector.” (Ex. 1005, pp.7-8, 4:67-5:4).

Lastly, claim 15 requires that “an operator at the second computer may

modify file allocation tables at the first computer.” According to a POSITA,

anytime a file is modified, the file allocation table is consequently modified. (Ex.

1020, pp. 80-81, ¶229). A file allocation system is a computer file architecture that

maintains a directory for files. (Id.). When a file is updated, the directory structure

is updated and as a result, a file allocation table of the file allocation system is

updated. (Id.).

Claim Chart III illustrates that applying the combination of Chang and

Flaherty to the challenged claims 10, 11, and 13-17, construed in accordance with

the BRI standard, renders the claims unpatentable under 35 U.S.C. § 103

(obviousness), as the challenged claims of the 268 Patent are obvious combinations

of well-known elements.

The 268 Patent Claim Chart III – Chang and Flaherty


54

[10P] A system for

modifying code and data

in a first computer having

a first CPU upon failure

of the first computer to

boot, comprising:

Chang: Chang discloses an “invention to modify

information in the workstation during the preboot

process.” (Ex. 1005, p.8, 4:8-10).

“. . . a workstation which has experienced a conflict

resulting in a failure could be rebooted remotely

and, during the reboot cycle, boot files changed to

clear possible conflicts.” (Id., p.7, 2:60-64).

“Some examples of possible server management

applications enabled by the present invention are:

Configuration management (remote edit and

installation of workstation system files).” (Id., p.8,

3:23-27).

[10.1] a second computer

having a second CPU, the

second computer

connected to the first

computer by a

communication link;

Chang: “FIG. 1 is a block overview diagram

showing a local area network with a single server

workstation 11, a client workstation designated

User 13” (Ex. 1005, p.8, 3:65-67).

Flaherty: “communication link” (Ex. 1004, p.2,

FIG. 1, item 12).

See also Ex. 1020, p. 71, ¶¶ 204-205.

[10.2] a master code

kernel and a slave code

kernel stored on a

memory device at the

second computer; and

Chang (master code kernel): “. . . a server management application (SMA) such

as a NetWare Loadable Module (NLM) in a Novell

NetWare environment.” (Ex. 1005, p.8, 4:3-6).

“the server sends any required workstation updates

to the client and performs any assigned tasks under

control from the SMA.” (Id., p.10, 7:10-12).

See also Ex. 1020, p. 72, ¶207.

Chang (slave code kernel): “Configuration management (remote edit and

installation of workstation system files)” (Ex. 1005,

p.8, 3:26-27).

“file transfers, file updates or operating system

rescue (due to malicious or accidental damage) can

take place automatically under control of the SMA.”


55

(Ex. 1005, p.8, 4:47-50). See also Ex. 1020, p. 72,

¶208.

Flaherty: “One of the files which can be accessed across the

network are the operating system files. In fact, even

before the LAD concept made the access to a file

easy, many systems were developed to ‘downline’

load an operating system to a computer on the

network.” (Ex. 1004, p.8, 2:53-58).

“The CPU 30 of host 14 determines that the

message is a boot request and searches its memory

32 to attempt to identify an operating system for the

node 10.” (Ex. 1004, p.10, 5:1-3).

See also Ex. 1020, p. 73, ¶211.

[10.3] an extended basic

input output system (E-

BIOS) in the first

computer

Chang: “[t]he invention utilizes a client server


programming in a PROM or ROM), which allows

full, remote pre-boot control of any network

workstation.” (Ex. 1005, p.9, 5:46-50).

[10.4] wherein, upon

sensing failure of the first

computer to boot, the E-

BIOS establishes

communication with the

second computer over the

communication link, and

the second CPU in

response causes a copy of

the slave kernel to be

copied to the RAM of the

first computer and to be

made available to the first

CPU for execution, and

Chang: “[A] workstation which has experienced a

conflict resulting in a failure could be rebooted

remotely and, during the reboot cycle, boot files

changed to clear possible conflicts. (Ex. 1005, p.7,

2:60- 63).

“Configuration management (remote edit and

installation of workstation system files).” (Ex.

1005, p.8, 3:26-27).

“the executable services engine and the SMA

together control the actions of the workstation

prior to the commencement of the workstation boot

process.” (Ex. 1005, p.9, 6:26-29).

Smith Dec.: “Chang implies that the slave kernel

(e.g., the new, updated operating system) is copied

into the RAM of the User Workstation because


56

operating systems are executed from RAM.” (Ex.

1020, p. 75, ¶216).

Flaherty: “The operating system is usually stored

on a magnetic disk and read into Random Access

Memory (RAM) to be executed” (Ex. 1004, p.8,

4:37-40).

“Upon powering up, the processor 24 of computer

10 executes a power-on/self-test sequence during

which it attempts to find a boot device which





device 28 on the host 14 determines that the

message is in broadcast mode and notifies the CPU

30.” (Id., 4:61-67) (emphasis added).

[10.5] wherein, with a

copy of the slave kernel

in the first computer and

the master kernel active

in the second computer, a

user at the second

computer may diagnose

and modify code and data

in the first computer from

the second computer.

Chang: “Remote software installation, distribution,

metering and diagnostics.” (Ex. 1005, p.8, 3:31-

33).

“Once the client is identified to the server, any

preboot activity such as file transfers, file updates or

operating system rescue (due to malicious or

accidental damage) can take place automatically

under control of the SMA.” (Ex. 1005, p.8, 4:46-

50).

Smith Dec.: “with a copy of the updated or rescued

operating system (e.g., after a slave kernel has been

copied), Chang may perform diagnostics or updates

to system files or User Workstation configuration

data. (Chang, col. 3, lines 41-50)..” (Ex. 1020,

p.76, ¶¶219-221).

[11] A system as in claim

10 wherein the

communication link is

one of an Integrated

Chang: “a local area network with a pair of client

workstations and a single server.” (Ex. 1005, p.8,

3:65-67).


57

Services Digital Network

(ISDN) and an analog

telephone line.

Smith Dec: “A POSITA would have been aware

than a non-ISDN computer can be made to

communicate over an ISDN using an adapter.” .

(Ex. 1020, pp. 77-78, ¶224).


10 wherein the

communication link is a

network link.

Chang: “a local area network with a pair of client

workstations and a single server.” (Ex. 1005, p.8,

3:65-67).


10 wherein the master

kernel and the slave

kernel cooperate after

communication is

established to provide for

the second computer to

operate as though the

second computer were the

first computer.

Chang: “The invention utilizes a client server


programming in a PROM or ROM), which allows

full, remote pre-boot control of any network

workstation” (Ex. 1005, p.9, 5:46-50).


10 wherein an operator at

the second computer may

repair a corrupted boot

sector on a disk drive of

the first computer, and

wherein an operator at the

second computer may

modify file allocation

tables at the first

computer.

Chang: “For example, it could be customized to

update files by transferring new files to the client

prior to boot since the file management system is

operating on the client. It could be customized to

verify that the boot sector of the client is free of

virus infection and that the boot sector is intact. If

not, it could remove the virus and restore the boot

sector from the workstation database 11d residing

safely on the server.” (Ex. 1005, p.8, 4:67- 5:4).

Smith Dec: “When the directory structure is

modified, then a file allocation table (FAT) of the

file allocation system is modified in a

corresponding manner.” (Ex. 1020, pp. 79-80,

¶228).

[16P] A method for diagnosing and

modifying code and data in read/write

memory devices and mass storage devices of

a first computer, comprising steps of:

See [10P] and [10.1] of this

chart.


58

[16.1] (a) establishing communication with

the first computer over a communication link

from a diagnostic and repair computer;


[16.2] (b) loading and executing a master

kernel at the diagnostic and repair computer;


[16.3] (c) downloading a slave operating

system kernel to the first computer from the

second computer; and


[16.4] (d) accessing and modifying code and

data on read/write memory devices and mass

storage devices in the first computer through

activity at the second computer.

See [10.4], [14], and [15] of this

chart.

[17] The method of claim

16 further comprising a

step for causing the first

computer to attempt to

reboot after step (d).

Chang: “a workstation which has experienced a

conflict resulting in a failure could be rebooted

remotely and, during the reboot cycle, boot files

changed to clear possible conflicts. While this

process is common, it is always performed by an

operator entering commands while sitting at the

workstation.” (Ex. 1005, p.7, 2:60-65).

Applying the combination of Chang and Flaherty to the challenged claims

10, 11, and 13-17 construed in accordance with the BRI standard, renders the


Ground 4: Sakai combined with either Flaherty-APA or Chang-APA

renders obvious claim 5 under 35 U.S.C. § 103.

Dependent claim 5 requires the non-volatile memory to be “an integrated

circuit read-only memory (ROM) including Flash memory.” This is the first time

“non-volatile memory” is introduced in the claims, without any antecedent basis.


59

Assuming that claim 5 is an attempt to limit the BIOS to be stored in flash

memory, it would have been obvious to use flash memory as the boot-ROM to

store the code that includes the power on/self-test. (Ex. 1020, p. 83, ¶¶239-240).

For example, Sakai states that “the use of a flash memory as the BIOS-ROM

would be convenient” at 1:24-27). Sakai demonstrates that it would be obvious to

use Flash memory as a matter of convenience. (Id.).

VIII. No Secondary Conditions Exist

As explained in Grounds 1-3 above, the prior art renders obvious the

challenged claims of the 268 Patent. No secondary indicia of non-obviousness

having a nexus to the putative "invention" of the 268 Patent exists that is contrary

to that conclusion. Petitioners reserve their right to respond to any assertion of

secondary indicia of non-obviousness advanced by Patent Owner.

IX. Fees(37 C.F.R. § 42.103)

The undersigned provides Deposit Account 506541 for the payment of the

fees ($9,000 request fee; and $14,000 post-institution fee), as set forth in 37 C.F.R.

§ 42.15(a) for this Petition for Inter Partes Review. The undersigned further

authorizes payment for any additional fees (or fee deficiency) that might be due in

connection with this Petition to be charged to the Deposit Account 506541.

X. Conclusion

This Petition demonstrates “a reasonable likelihood that the petitioner would

prevail with respect to at least one of the claims challenged in the petition.” 35


60

U.S.C. § 314(a). Because all elements of the challenged claims 1-20 of the 268

Patent are taught in the prior art, as explained in the detailed proposed Grounds for

Unpatentability, Petitioners request inter partes review of these claims, and the

ultimate cancellation of the challenged claims.

Respectfully submitted,

HILL, KERTSCHER & WHARTON, LLP

Date: May 6, 2015

/Vivek Ganti/

Vivek Ganti (Reg. No. 71,368)

Lead Counsel for Petitioners

3350 Riverwood Pkwy, Suite 800

Atlanta, GA 30339

(770) 953-0995


61

CERTIFICATION OF SERVICE

The undersigned hereby certifies that the foregoing Petition and supporting

materials (included all exhibits and power of attorney documents) were served via

electronic mail on May 6, 2015, as agreed to by the parties4 pursuant to 37 C.F.R. §

42.105, in its entirety on the following:

Rolf O. Stadheim, George C. Summerfield, Kyle L.

Harvey, Robert M. Spalding and Christopher H. St. Peter

STADHEIM & GREAR LTD.

400 N. Michigan Avenue, Suite 2200

Chicago, Illinois 60611

[email protected]

[email protected]

[email protected]

[email protected]

[email protected]

Respectfully submitted,

HILL, KERTSCHER & WHARTON, LLP

Date: May 6, 2015

/Vivek Ganti/

Vivek Ganti (Reg. No. 71,368)

Lead Counsel for Petitioners

3350 Riverwood Pkwy, Suite 800

Atlanta, GA 30339

(770) 953-0995

4 Through its counsel, Patent Owner has consented to service of papers via e-mail

with respect to IPR petitions filed for patents in the related district court litigation.

(Ex. 1021, pp.3-4, ¶¶6-7).






Documents

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. …fishpostgrant.com/wp-content/uploads/IPR2015-01133.pdf · By: Vivek Ganti ([email protected]) (Reg. No. 71,368); and Gregory Ourada