Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 49
`
`Date Entered: October 27, 2016
`
`
`
`
`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 IPR2015-01079
`Patent 6,373,498 B1
` ____________
`
`
`
`Before GLENN J. PERRY, TREVOR M. JEFFERSON, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and
` 37C.F.R. § 42.73
`
`
`
`571-272-7822
`
`
` Paper No. 49
`
`Date Entered: October 27, 2016
`
`
`
`
`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 IPR2015-01079
`Patent 6,373,498 B1
` ____________
`
`
`
`Before GLENN J. PERRY, TREVOR M. JEFFERSON, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and
` 37C.F.R. § 42.73
`
`
`
`
`IPR2015-01079
`Patent 6,373,498 B1
`
`
`BACKGROUND
`
`On October 29, 2015 we instituted an inter partes review of claims 1–
`
`45 of U. S. Patent No. 6,373,498 B1 (“the ’498 Patent”). Paper 17 (“Dec. to
`
`Inst.”). Patent Owner filed a Patent Owner Response. Paper 31 (“PO
`
`Resp.”), Petitioner filed a Petitioner Reply. Paper 39 (“Pet. Reply”). Patent
`
`Owner also filed a Corrected Contingent Motion to Amend. Paper 33
`
`(“Mot. To Amend”). Petitioner filed an Opposition to the Motion to Amend.
`
`Paper 40 (“Opp. To Mot. To Amend”). Patent Owner filed a Reply to
`
`Petitioner’s Opposition to the Motion to Amend. Paper 41 (“Reply to Opp.
`
`To Mot. To Amend”). Petitioner filed a Motion to Exclude. Paper 42
`
`(“Mot. To Exclude”). Patent Owner filed an Opposition to Petitioner’s
`
`Motion to Exclude. Paper 45 (“Opp. To Mot. To Exclude”). Petitioner filed
`
`a Reply to Patent Owner’s Motion to Exclude. Paper 46 (“Reply to Opp. To
`
`Mot. To Exclude”). A transcript of an oral hearing held on June 29, 2016
`
`(Paper 48, “Hr’g Tr.”) has been entered into the record.
`
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`
`Decision is issued pursuant to 35 U.S.C. §318(a). We base our decision on
`
`the preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`
`Having reviewed the arguments of the parties and the supporting
`
`evidence, we conclude that Petitioner has demonstrated by a preponderance
`
`of the evidence that the challenged claims are unpatentable. For the reasons
`
`discussed below, we deny Patent Owner’s Motion to Amend and Petitioner’s
`
`Motion to Exclude.
`
`THE ’498 PATENT
`
`The ’498 Patent concerns manipulating the display presented to a user
`
`during operating system (OS) transitions, e.g., during boot-up and shutdown.
`
`
`
`2
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`
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`IPR2015-01079
`Patent 6,373,498 B1
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`Ex. 1001, col. 1, ll. 65–67. According to the invention, a graphic file
`
`replaces a boot-up system file and/or a shutdown system file, so that images
`
`other than OS standard images can be displayed when the OS boots up
`
`and/or shuts down. Id. at col. 1, l. 67–col. 2, l. 4. In one example, the first
`
`time a computer completes Power-On Self-Test (POST) an initial payload
`
`image is displayed as the system loads the OS. Id. at Fig. 4A. After
`
`establishing a communication link with an infomediary, based on user
`
`preferences and other criteria, another payload (Payload 1-N) is downloaded
`
`and the memory is updated, so that on a subsequent execution of the POST,
`
`the downloaded payload is displayed. Id. at Fig. 4A, 4B; col. 8, l. 47–col. 9,
`
`l. 65. As shown in Figure 6 of the ’498 Patent, this display is achieved by
`
`creating the graphic files in a bitmap file format, saving the original
`
`LOGO.SYS, LOGOW.SYS, and LOGOS.SYS files in a temporary directory
`
`with different extensions or names, renaming the created boot-up and
`
`shutdown graphics files as LOGO.SYS, LOGOW.SYS, and LOGOS.SYS
`
`system files respectively, and transferring these renamed boot-up and shut-
`
`down files to appropriate directories so that they are retrieved by the
`
`operating system. Id. at Fig. 6; col. 10, ll. 2–16, col. 11, ll. 5–21. Figure 7
`
`of the ’498 Patent illustrates another embodiment in which the graphic data
`
`can be extracted from graphics memory. Id. at Fig. 7; col. 11, l. 29–col. 12,
`
`l. 60.
`
`ILLUSTRATIVE CLAIM
`
`Claim 1 is illustrative:
`
`1. A method to display an image during a transition of an
`operating system in a computer system, the method comprising:
`obtaining the image having an image format compatible with
`the operating system; and,
`
`
`
`3
`
`
`
`IPR2015-01079
`Patent 6,373,498 B1
`
`
`creating content of a system file using the image, the system
`file to be accessed during the transition of the operating system,
`said image to correspond to a user profile.
`
`
`GROUNDS OF INSTITUTION
`
`In our Decision to Institute, we instituted trial on the following
`
`challenges to patentability:
`
`Claims 1–40 and 44 as obvious under 35 U.S.C. § 103 over the
`
`combination of PC Tools1 and Gerace2;
`
`Claims 1–40 and 44 as obvious under 35 U.S.C. § 103 over
`
`LogoMania3;
`
`Claims 41–43 and 45 as obvious under 35 U.S.C. § 103 over the
`
`combination of Lee4 and Piwonka5 and PC Tools and Gerace; and
`
`Claims 41–43 and 45 as obvious under 35 U.S.C. § 103 over the
`
`combination of Lee and Piwonka and LogoMania.
`
`
`
`CLAIM CONSTRUCTION
`
`In the Decision to Institute, we applied the following claim
`
`constructions:
`
`User Profile: data describing characteristics of a user, including, but
`
`not limited to, user preferences. Dec. to Inst. 8.
`
`
`1 PC Tools PC Software & Windows Tools Change the Startup and
`Shutdown Screens (Windows 95/98/Me) Popular; http://www.pctools.com/
`guides/registry/detail/254/; © 1998–2014 PC Tools (Ex. 1004)
`2 U.S. Patent No. 5,848,396 issued Dec. 8, 1998 (Ex. 1005)
`3 Go Crazy with LogoMania!, Neil J. Rubenking, Mar. 25, 1997 (Article, Ex.
`1007); Web Version (Ex. 1006)
`4 U.S. Patent No. 6,269,441 B1 issued July 31, 2001 (Ex. 1008)
`5 U.S. Patent No. 6,073,206, issued June 6, 2000 (Ex. 1009)
`
`
`
`4
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`IPR2015-01079
`Patent 6,373,498 B1
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`Correspond: ordinary meaning, i.e., having a direct relationship. Id.
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`System file: a file of a computer system that facilitates functioning of
`
`the computer’s operating system. Id. at 9.
`
`Operating System: a set of one or more programs which control the
`
`computer system’s operation and the allocation of resources. Id.
`
`BIOS memory: a memory that stores a BIOS. Id. at 10.
`
`The parties have not disputed these constructions, and we adopt those
`
`constructions for the reasons given in the Decision to Institute.
`
`
`
`ANALYSIS OF PRIOR ART CHALLENGES
`
`Obviousness of Claims 1–40 and 44 Over the Combination of PC
`Tools and Gerace
`
`Petitioner cites PC Tools as disclosing a “virtually identical” method
`
`as that described in the ’498 Patent. Pet. 17–18. As an initial matter, we
`
`note Patent Owner’s objection to Petitioner’s citation of PC Tools because
`
`the specific reference has not been shown to be authentic, i.e., Patent
`
`Owner’s objection states there is insufficient evidence PC Tools is a
`
`document published in February 1999. PO Resp. 2–3; Paper 19 (“PO’s
`
`Objections to Evidence”), 4. A motion to exclude must be filed to preserve
`
`any objection. 37 C.F.R. § 42.64(c). Patent Owner did not file any motions
`
`to exclude any evidence introduced by Petitioner. Thus, all of Patent
`
`Owner’s objections to evidence have been waived.6
`
`
`6 Patent Owner also objected to (i) Ex. 1010 (this appears to be a
`typographical error, as Patent Owner’s objection states that each page of the
`document bears a legend indicating that it was provided under Federal Rule
`of Evidence 408 for settlement discussion purposes only—although that is
`not true of Ex. 1010, which is an Intel Application Note, each page of Ex.
`
`
`
`5
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`IPR2015-01079
`Patent 6,373,498 B1
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`
`PC Tools describes a method of changing Microsoft Windows®
`
`startup and shutdown down screens by copying the LOGOW.SYS and
`
`LOGOS.SYS files to a temporary folder and renaming the extension to
`
`.BMP, opening the files and modifying them as desired, and changing the
`
`extensions back to .SYS before copying them back over the original files in
`
`the Windows directory. Ex. 1004. Patent Owner states that, in PC Tools,
`
`the computer user performs these steps and chooses the graphics to display.
`
`PO Resp. 2 (citing Ex. 1004, Ex. 2009, Corrected Transcript of Deposition
`
`of Dr. Martin Kaliski (“Kaliski Tr.”), 12:9–18).
`
`Petitioner cites Gerace as disclosing the use of customized images
`
`based on user profiles for applications relating to home screens or login
`
`screens. Id. at 20–21. In Gerace, the first time a user logs into a program,
`
`he or she selects display preferences, e.g., weather, sports, and news, and the
`
`system generates a customized home page that, on subsequent user visits, is
`
`displayed to the user as a substitute for the initial home page. Ex. 1005, col.
`
`4, ll. 1–10, 23–28. Patent Owner states that Gerace teaches a computer
`
`program whose purpose is to create a profile for the user in order to create a
`
`customized web page at a server remote from the user, using a controller that
`
`determines which advertisements to display to the user. PO Resp. 3.
`
`Petitioner contends that it would have been obvious to combine the
`
`method of changing the startup and shut down screens disclosed in PC Tools
`
`with Gerace’s display of a customized home page based on a user profile,
`
`because both a home page and a startup screen are graphics initially
`
`
`1011 bears this legend), and (ii) the opinions expressed in the Declaration of
`Dr. Marin Kaliski on the basis that Dr. Kaliski references extrinsic evidence.
`In the absence of Motion to Exclude, these objections are also waived.
`
`
`
`6
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`IPR2015-01079
`Patent 6,373,498 B1
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`presented to a user. Pet. 20. Patent Owner argues that a person of ordinary
`
`skill would not have been motivated to combine these references because
`
`they are directed to different audiences, i.e., PC Tools is directed to the
`
`computer user interested in changing the graphics on his or her computer,
`
`and Gerace is directed to the programmer of a web server aiming to
`
`customize web pages for the user. PO Resp. 4–5. According to Patent
`
`Owner, “[i]t would have been highly unlikely that the computer user would
`
`have consulted a reference directed to web server programming, and it is
`
`equally unlikely that a server programmer would have consulted a reference
`
`regarding the manipulation of graphics on a personal computer.” Id. (citing
`
`Ex. 2010, Declaration of Dr. Shahin Nazarian (“Nazarian Decl.”) ¶¶ 20–25).
`
` Petitioner and Patent Owner agree that a person of ordinary skill in
`
`the art is one who has a Bachelor of Science degree in computer science or
`
`software engineering or a Bachelor of Science in a technical field requiring
`
`computer science of software engineering courses. Pet. 7 (citing Ex. 1013,
`
`Declaration of Dr. Martin Maklisk (“Kaliski Decl.” ¶¶ 10, 11); Prelim. Resp,
`
`22–23, Nazarian Decl. ¶ 28. Considering this background, we are not
`
`persuaded by Dr. Nazarian’s testimony that, because a course catalog from
`
`the Illinois Institute of Technology in the 1995–97 time frame indicates that
`
`a computer science graduate at that institution was not required to take
`
`courses in web design or programming, an ordinarily skilled artisan would
`
`not have thought to combine the teachings of PC Tools and Gerace.
`
`Nazarian Decl. ¶ 29. Obviousness must be gauged in view of common sense
`
`and the creativity of an ordinarily skilled artisan. KSR Int’l Co. v. Teleflex
`
`Inc., 550 U.S. 398, 419 (2007).
`
`
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`7
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`IPR2015-01079
`Patent 6,373,498 B1
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`Petitioner persuasively argues that PC Tools and Gerace are pertinent
`
`pieces of prior art because they both relate to displaying images in start-up
`
`screens, e.g., homepages and login screens. Pet. Reply. 9 (citing Kalsiki
`
`Decl. ¶ 50). Petitioner cites Gerace’s description of the benefits of
`
`displaying items based on a user profile upon logging-on as providing a
`
`person of ordinary skill motivation for the combination. Pet. Reply 9 (citing
`
`Ex. 1005, col. 17, ll. 5–11). We agree with Petitioner’s argument, because
`
`“[i]f a technique has been used to improve one device, and a person of
`
`ordinary skill in the art would recognize that it would improve similar
`
`devices in the same way, using the technique is obvious unless its actual
`
`application is beyond his or her skill.” KSR, 550 U.S. at 417.
`
`Patent Owner further contends that Petitioner has not explained how
`
`one of ordinary skill would have combined the technology described in the
`
`references, arguing that the differences in the technologies are such that “one
`
`skilled in the art would not have thought to combine these references given
`
`the facial lack of interoperability between them.” PO Resp. 4–5 (citing
`
`Nazarian Decl. ¶¶ 20–25). As evidence one of ordinary skill would not have
`
`combined PC Tools and Gerace, Patent Owner cites testimony indicating
`
`that Petitioner’s expert, Dr. Kaliski, did not know “whether there was
`
`sufficient storage in either the LOGOS.SYS and LOGOW.SYS files
`
`identified in PC Tools to store the customized web pages taught in Gerace.”
`
`PO Resp. 4–5 Patent Owner also argues that Dr. Kaliski conceded it was
`
`unlikely one could access a web page during computer start up and shut
`
`down. Id. at 5.
`
`Patent Owner’s analysis on this point is not persuasive. In the context
`
`of obviousness “[T]he analysis need not seek out precise teachings directed
`
`
`
`8
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`IPR2015-01079
`Patent 6,373,498 B1
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`to the specific subject matter of the challenged claim, for a court can take
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`account of the inferences and creative steps that a person of ordinary skill in
`
`the art would employ.” KSR, 550 U.S. at 418. The test for obviousness is
`
`not whether the features of a secondary reference can be bodily incorporated
`
`into the structure of the primary reference, nor is it that the claimed
`
`invention must be expressly suggested in any or all of the references—the
`
`test for obviousness is what the combined teachings would have suggested to
`
`one of ordinary skilled in the art. In re Keller, 642 F.2d. 413, 425 (Fed. Cir.
`
`1981).
`
`As discussed above, PC Tools describes the claimed steps to change
`
`the information displayed to the user’s preferred information, i.e., by
`
`replacing the content of the LOGOS.SYS and LOGOW.SYS files. Ex.
`
`1004. Petitioner cites Gerace for the proposition that what is displayed to
`
`the user, whether on a home page or a startup screen, can be customized
`
`based on a user profile. Pet. 20 (citing Kaliski Decl. ¶ 56). Thus, Petitioner
`
`has demonstrated that PC Tools and Gerace disclose the elements of claim 1
`
`and that a person of ordinary skill would have been motivated to combine
`
`the teachings of these references to present content that the user finds
`
`interesting and appealing
`
`In our Decision to Institute, we stated that we had reviewed
`
`Petitioner’s claim charts and additional analysis for claims 1–40 and claim
`
`44 and found Petitioner’s arguments concerning the combination of PC
`
`Tools and Gerace persuasive. Dec. to Inst. 13. Patent Owner argues against
`
`the combination of PC Tools and Gerace, but has not responded to
`
`Petitioner’s arguments concerning specific claims. PO Resp. 2–7.
`
`Independent computer program product claim 11, independent computer
`
`
`
`9
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`IPR2015-01079
`Patent 6,373,498 B1
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`data signal claim 21, and independent system claim 31 correspond generally
`
`to independent method claim 1 discussed above, and similar arguments
`
`apply. Dependent claims in each corresponding claim group recite: the
`
`system file is saved in a file directory (claims 2, 12, 22, and 32), the
`
`directory is compatible with the operating system (claims 10, 20, 30, and
`
`40), the operating system is compatible with a Windows operating system
`
`(claims 3, 13, 23, and 33), the image format is a bitmap format (claims 4, 14,
`
`24, and 34), the image has a resolution compatible with the operating system
`
`(claims 5, 15, 25, and 35), the transition is a boot-up sequence (claim 6, 16,
`
`26, and 36) or a shut-down sequence (claims 8, 18, 28, and 38), and the
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`system file is a LOGO.SYS file (claims 7, 17, 27, and 37), or a LOGOS.SYS
`
`file or a LOGOW.SYS file (claims 9, 19, 29, and 39). As the claim charts
`
`in the Petition demonstrate, each of these limitations concerns a feature of
`
`the image or system that does not patentably distinguish the claim over the
`
`combination of PC Tools and Gerace. Pet. 22–28.
`
`Claim 44 depends from claim 1 and recites that the step of creating
`
`content of a system file comprises creating that content before the transition
`
`using the image. As Petitioner notes, this feature is found in PC Tools’
`
`disclosure of displaying the image before transitioning to shut-down. Pet.
`
`28.
`
`Obviousness of Claims 1–40 and 44 Over LogoMania
`
`Patent Owner acknowledges that Logo Mania “teaches the same three
`
`steps as PC Tools, ‘but in more detail,”’ and that “from the standpoint of the
`
`invention claimed in the ’498 Patent, PC Tools and LogoMania contain
`
`effectively the same teachings.” PO Resp. 8 (citing Ex. 2009, Kaliski Tr.,
`
`
`
`10
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`IPR2015-01079
`Patent 6,373,498 B1
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`24:18–22; Nazarian Decl. ¶ 39). To the extent that Logomania and PC tools,
`
`teach the same features, we apply our analysis of PC Tools above.
`
`In this challenge to patentability Petitioner cites LogoMania as also
`
`disclosing the claimed user profile. Patent Owner argues that LogoMania
`
`does not teach the claimed “user profile,” as we have construed that term.
`
`Id. (citing Kaliski Tr., 25:1–5 as evidence that Dr. Kaliski that had formed
`
`no opinion about whether the purported user profile in LogoMania contains
`
`characteristics of a user). Patent Owner contends that LogoMania is an
`
`example of a graphics editor that PC Tools instructs a user to employ in
`
`performing the three steps to select graphics to display during Windows
`
`start-up and shut-down. PO Resp. 8.
`
`In our Decision to Institute, we noted Petitioner’s acknowledgement
`
`that LogoMania does not employ the term “user profile.” Dec. to Inst. 13
`
`(citing Pet. 29). Instead, we were persuaded by Petitioner’s argument that,
`
`by disclosing that a combination of user option settings can produce an
`
`interesting background, LogoMania teaches retrieving an image using
`
`information that characterizes the preferences of the user. Id. (citing Ex.
`
`1006, 5); Pet. 29. Although LogoMania discusses techniques to generate
`
`static and animated images, it begins by suggesting that the user replace the
`
`Microsoft logo displayed during startup with the user’s own logo:
`
`“LogoMania lets you replace the standard logo with your own animated logo
`
`bitmap. You can float your company’s logo over a hypnotic moving
`
`background . . . or put a color-changing company name in from of a serene
`
`mountain landscape.” Ex. 1006, 1. A user’s selection of backgrounds and
`
`other image features in displaying its company logo using LogoMania is
`
`
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`11
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`IPR2015-01079
`Patent 6,373,498 B1
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`indicative of how the software is used to obtain an image that corresponds to
`
`a user profile.
`
`At the oral hearing, Patent Owner argued the difference between
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`“obtaining an image” and “creating content of a system file.” Hr’g Tr. 22–
`
`25. Patent Owner argued that in the ’498 Patent, knowing the user’s
`
`preferences, the computer obtains an image, stores it, and creates content,
`
`but that the image obtained is indicative of the user’s preference, while in
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`LogoMania the user creates the content. Id. at 28. Petitioner points out that
`
`Patent Owner did not assert this argument in the Patent Owner Response.
`
`Id. at 53. As noted in the Scheduling Order, arguments not made in the
`
`Patent Owner Response are waived. Paper 18, 3. We also note that neither
`
`party requested that we construe the term “obtaining” or the term “creating.”
`
`In any event, our Decision to Institute addresses a similar argument
`
`Patent Owner raised in its Preliminary Response. Dec. to Inst. 13–14 (citing
`
`Pet. Resp. 24). We are not persuaded by Patent Owner’s oral arguments
`
`because the claims of the ’498 Patent do not include any limitations
`
`concerning where or how the image is obtained. Claim 1 recites obtaining
`
`an image to be displayed during the transition of an operating system in a
`
`computer system. The only limitations claim 1 places on the image are that
`
`it is one “having an image format compatible with the operating system” and
`
`that it “correspond to a user profile.” The content created is the content of a
`
`system file using the image. Claim 4, which depends from claim 3, recites
`
`that the image format is a bit map format. Claim 41, which depends from
`
`claim 1 recites that the image corresponds to data stored in a BIOS memory.
`
`Claims 11–20 recite program code for obtaining an image and for
`
`creating content of a system file using the image. Claims 21–30 recite an
`
`
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`12
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`IPR2015-01079
`Patent 6,373,498 B1
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`image obtaining code segment for obtaining the image and a content creation
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`code segment for creating content of a system file using the image. Claims
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`31–40 recite a system having a memory that causes a processor to obtain the
`
`image and to create content of a system files using the image. In all cases,
`
`however, the claims also limit the image reciting “said image to correspond
`
`to a user profile.” Thus, although the image must correspond to a user
`
`profile, the claims do not limit how the image is obtained or generated.
`
`Patent Owner argues that creating content based on user preferences is
`
`not what the claim calls for because “what the user is doing is creating the
`
`content that goes into the system file. But because the image that’s obtained
`
`doesn’t say anything about user preferences, the obtained image doesn’t
`
`correspond to those user preferences.” Hr’g Tr. 27. According to Patent
`
`Owner the image must be obtained before creation occurs, i.e., the claim
`
`calls for “obtaining the image before creation ever occurs, and that image
`
`has to correspond to correspond before the creating ever occurs to a user
`
`preference.” Hr’g Tr. 29.
`
`Patent Owner’s argument fails because independent claims 1, 11, 21,
`
`and 31 recite “creat[ing] content of a system file using the image.” This
`
`system file is to be “accessed during the transition of the operating system.”
`
`Thus, the claims limit the content to be created to the content of a system file
`
`that is accessed during the transition of the operating system. The claims do
`
`not limit how the image is obtained. There is nothing in the limitation
`
`“obtaining the image” that precludes the user from obtaining as the image to
`
`be used in creating the system file an image of his own logo as disclosed in
`
`LogoMania, i.e., an image corresponding to a user profile. Even when
`
`arguing that the ’498 patent is “supposed to be a way to present to the user
`
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`13
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`IPR2015-01079
`Patent 6,373,498 B1
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`ab initio something that’s reflective of the user’s references,” Patent Owner
`
`acknowledges that “there’s nothing in the claims that really talk about a user
`
`versus computer doing this [obtaining the image].” Id. at 28.
`
`Patent Owner further contends that “LogoMania does not alert a user
`
`to opportunities, which the Board found to be a central feature of a ‘user
`
`profile.’” Id. at 9 (citing Nazarian Decl. ¶¶ 30–38). According to Dr.
`
`Nazarian, there is no evidence that LogoMania performs this alerting
`
`function. Nazarian Decl. ¶ 24 (citing “user profile” in the Decision to
`
`Institute as somehow requiring this alerting feature). The subject matter Dr.
`
`Nazarian references concerns the non-limiting description of the term “user
`
`profile” in the ’498 Patent. The Decision to Institute explicitly states
`
`Claim 1 does not limit the sources from which the image may
`be obtained, nor does claim 1 limit the information that
`establishes the user profile. . . The only requirement implicit in
`the term “user profile” as used in claim 1 is the profile, i.e., the
`user data that makes up the profile, be associated with the user.
`Therefore, we construe the term to “user profile” to mean data
`describing characteristics of a user, including, but not limited
`to, user preferences.
`
`Dec. to Inst. 8 (emphasis added). Contrary to Dr. Nazarian’s testimony,
`
`there is no alerting function in our undisputed claim construction.
`
`As discussed above, independent computer program product claim 11,
`
`independent computer data signal claim 21, and independent system claim
`
`31 correspond generally to independent method claim 1 discussed above,
`
`and similar arguments apply. Dependent claims in each corresponding claim
`
`group recite: the system file is saved in a file directory (claims 2, 12, 22, and
`
`32), the directory is compatible with the operating system (claims 10, 20, 30,
`
`and 40), the operating system is compatible with a Windows operating
`
`
`
`14
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`
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`IPR2015-01079
`Patent 6,373,498 B1
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`system (claims 3, 13, 23, and 33), the image format is a bitmap format
`
`(claims 4, 14, 24, and 34), the image has a resolution compatible with the
`
`operating system (claims 5, 15, 25, and 35), the transition is a boot-up
`
`sequence (claim 6, 16, 26, and 36) or a shut-down sequence (claims 8, 18,
`
`28, and 38), and the system file is a LOGO.SYS file (claims 7, 17, 27, and
`
`37), or a LOGOS.SYS file or a LOGOW.SYS file (claims 9, 19, 29, and 39).
`
`As the claim charts in the Petition demonstrate, each of these limitations
`
`concerns a feature of the image or system that does not patentably
`
`distinguish the claim over LogoMania. Pet. 31–37.
`
`In consideration of the above, we are persuaded that Petitioner has
`
`established by a preponderance of the evidence that claims 1–40 and 44
`
`would have been obvious to one of ordinary skill in the art over LogoMania.
`
`
`
`Claims 41–43 and 45 as Obvious Over Lee, Piwonka and either PC
`Tools and Gerace or LogoMania
`
`Based on the parties’ arguments, we address Petitioner’s challenge to
`
`claims 41–43 and 45 as obvious over the combination of Lee, Piwonka, PC
`
`Tools, and Gearce and the combination of Lee, Pinwonka, and LogoMania
`
`together. We first address whether the references disclose the additional
`
`elements of the dependent claims, and then address whether a skilled artisan
`
`would have been motivated to combine the references.
`
`Claim 41
`
`Claim 41 depends from claim 1 and recites that the image corresponds
`
`to data stored in a BIOS memory. Petitioner contends that Lee discloses
`
`storing in BIOS memory images and a logo number that corresponds to each
`
`image, so that by selecting a logo number, the user may select a logo to be
`
`
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`15
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`IPR2015-01079
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`displayed upon booting the computer system. Pet. 38–39. Petitioner notes
`
`that Lee discloses a utility program to store the selected logo number in
`
`CMOS RAM, which Petitioner contends is a form of low power memory
`
`used to store BIOS configuration settings. Pet. 39 (citing Ex. 1008, col. 6, ll.
`
`35–41; Kaliski Decl. ¶¶ 92–93).
`
`Petitioner contends Piwonka exemplifies that a person of ordinary
`
`skill would have known that non-volatile CMOS RAM can be used to store
`
`configuration information in an Extended System Configuration Data
`
`(ESCD) format, which allows BIOS code to more fully configure a
`
`computer system at power up. Pet. 39–40. Piwonka discloses flashing an
`
`Extended System Configuration Data (ESCD) and associated variables to a
`
`read only memory (ROM). Ex. 1009, Abstract. Piwonka discloses that
`
`ESCD allows Plug and Play System Basic Input and Output Services (BIOS)
`
`code to more fully configure a computer system at power up by specifying
`
`the system resources that have been installed in the system and that System
`
`BIOS code is used by the OS to read or write ESCD as the non-volatile
`
`storage storing ESCD. Piwonka also discloses that ECSD has traditionally
`
`resided in the BIOS memory space (Ex. 1009, col. 5, ll. 28–30) and that it
`
`was conventional at that time to update ESCD by accessing the non-volatile
`
`memory (Ex. 1009, col. 7, ll. 28–40). As Dr. Kaliaki testifies, ECSD is
`
`stored in CMOS RAM. Kaliski Decl. ¶ 94.
`
`On this basis, Petitioner asserts that Lee’s CMOS RAM discloses
`
`BIOS memory. Pet. 40 (citing Kaliski Decl. ¶ 95 and the general knowledge
`
`of a person of ordinary skill, as exemplified by Piwonka, Ex. 1009, col. 1, ll.
`
`28–30). Petitioner further contends that the combination of Lee and
`
`Piwonka is suggested by the need to store the data concerning a user’s
`
`
`
`16
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`IPR2015-01079
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`desired logo somewhere in the system, as in Gerace and PC Tools or
`
`LogoMania, and that a BIOS memory, such as CMOS RAM is one of a
`
`finite number of possibilities. Id. at 40.
`
`Patent Owner acknowledges that Lee teaches a logo number stored in
`
`CMOS RAM and that Piwonka discloses storing information in CMOS
`
`RAM, but argues that CMOS RAM does not correspond to BIOS memory.
`
`PO Resp. 10 (citing Nazarian Decl. ¶ 49). However, Petitioner points to
`
`contradictory testimony from Patent Owner’s expert, Dr. Nazarian, that
`
`CMOS RAM stores BIOS data. Pet. Reply, 18 (citing Ex. 1016, Transcript
`
`of Deposition of Dr. Shahin Nazarian (“Nazarian Tr.”) 105:15–106:3,
`
`107:18–22).
`
`Patent Owner also argues that, because we construed “correspond” to
`
`have its ordinary meaning, i.e., having a direct relationship, in the context of
`
`the ’498 Patent, the data must actually generate the image. Id. Claim 41
`
`recites only that the image corresponds to data stored in the BIOS memory.
`
`Claim 41 does not recite a specific relationship and does not recite that the
`
`data actually generate the image, as argued by Patent Owner. For the
`
`reasons discussed above, we conclude that Lee and Piwonka disclose the
`
`additional features recited in claim 41.
`
`Claim 42
`
`Claim 42 depends from claim 41 and recites that the data is updated
`
`during execution of the operating system. Petitioner contends that claim 42
`
`(and claims 43 and 45) recites nothing more than the time when the data or
`
`content is updated/created. Pet. 41. Petitioner argues that Piwonka explains
`
`that CMOS RAM containing BIOS or configuration data is typically stored
`
`in ESCD format and that an operating system uses BIOS to read or write
`
`
`
`17
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`IPR2015-01079
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`ESCD traditionally residing in system BIOS memory space. Thus, Piwonka
`
`discloses using an executing operating system to update CMOS RAM. Id. at
`
`42–43. Petitioner next argues that a person of ordinary skill would
`
`understand how to use ECSD during the execution of the operating system
`
`to update a logo number stored in CMOS RAM as disclosed by Lee. Id. at
`
`43.
`
`Patent Owner contends that although the operating system of Piwonka
`
`may initiate ESCD sector, the actual updating happens during the POST that
`
`occurs before the operating system is loaded. PO Resp. 11 (citing Ex. 1009,
`
`col. 5, ll. 25–27; Nazarian Decl. ¶ 58). Piwonka discloses that ESCD
`
`generally allows Plug and Play system BIOS code to configure a computer
`
`system at power up by specifying the system resources assigned to devices
`
`that have been installed on the system. Ex. 1009, col. 1, ll. 20–24.
`
`However, contrary to Patent Owner’s argument Piwonka also explicitly
`
`discloses that “ESCD may be updated during a Power-On Self-Test” or at
`
`runtime. Id. at col. 1, ll. 58–59 (emphasis added). Petitioner notes that
`
`Patent Owner’s argument ignores Figure 4 of Piwonka, in which step 214
`
`discloses updating ESCD after POST during runtime, when the operating
`
`system is active. Pet. Reply 20. Petitioner further notes that Piwonka states
`
`“System BIOS code is used by the operating system to read or write ESCD.”
`
`Id. (citing Ex. 1009, col. 1, ll. 28–29).
`
`Patent Owner also argues that Petitioner fails to identify a teaching in
`
`Lee that logo numbers can be updated. PO Resp. 11. However, Petitioner
`
`notes the disclosure in Lee of changing a sign-on logo by changing the BIOS
`
`noting that Lee demonstrates it was known to store start-up logo related data
`
`in a B
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