Trials@uspto.gov
`571-272-7822
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` Paper 37
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` Entered: November 16, 2016
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`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
`Patent 5,732,268
`____________
`
`
`
`Before TREVOR M. JEFFERSON, BRIAN J. McNAMARA, and
`J. JOHN LEE, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`37 C.F.R. § 318(a) and 37 C.F.R. § 42.73
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`571-272-7822
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` Paper 37
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` Entered: November 16, 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 IPR2015-01133
`Patent 5,732,268
`____________
`
`
`
`Before TREVOR M. JEFFERSON, BRIAN J. McNAMARA, and
`J. JOHN LEE, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`37 C.F.R. § 318(a) and 37 C.F.R. § 42.73
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`IPR2015-01133
`Patent 5,732,268
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`INTRODUCTION
`I.
`On November 17, 2015, we instituted inter partes review of claims 1–
`7, 9–11, and 13–20 of U.S. Patent No. 5,732,268 (Ex. 1001, “the ’268
`patent”). Paper 13 (“Dec.”). Patent Owner, Kinglite Holdings Inc., filed a
`Patent Owner Response (Paper 20, “PO Resp.”) to the Petition (Paper 6,
`“Pet.”) filed by American Megatrends, Inc., Micro-Star International Co.,
`Ltd, MSI Computer Corp., Giga-Byte Technology Co., Ltd., and G.B.T.,
`Inc. (collectively “Petitioner”). Petitioner filed a Reply. Paper 26 (“Pet.
`Reply”). Petitioner also filed a Motion to Exclude. Paper 28 (“Pet. Mot. To
`Exclude”). Patent Owner filed an Opposition to Petitioner’s Motion to
`Exclude (Paper 33, “Opp. Mot. Exclude”), and Petitioner filed a reply (Paper
`34, “Pet. Mot. Reply”). A transcript of an oral hearing held on August 18,
`2016 (Paper 36, “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 full record, we conclude that Petitioner has
`demonstrated by a preponderance of the evidence that the challenged claims
`are unpatentable for the reasons set forth below. For the reasons discussed
`below, we also deny Petitioner’s Motion to Exclude.
`.
`
`A. Related Proceedings
`The parties state that the ’268 patent has been asserted in Kinglite
`Holdings Inc. v. Giga-Byte Technology Co. Ltd., Case No. 1:14-cv-04989
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`(C.D. Cal.), and Kinglite Holdings Inc. v. Micro-Star International Co Ltd.,
`Case No. 1:14-cv-03009 (C.D. Cal.). Pet. 5–6; Paper 7, 1.
`
`B. The ʼ268 Patent
`The ’268 patent is titled “Extended BIOS adapted to establish remote
`communication for diagnostics and repair.” Ex. 1001, at [54]. The ’268
`specification states that:
`a basic input output system (BIOS) is provided comprising a non-
`volatile memory; a first code portion recorded in the non-volatile
`memory and adapted for execution by a CPU to perform startup
`functions for a computer, including initiating boot operations;
`and a second code portion recorded in the non-volatile memory
`and adapted
`for execution by
`the CPU
`to establish
`communication with a remote computer. Code execution by the
`CPU is directed from the first portion to the second portion upon
`failure to complete the boot operations. Communication with the
`remote computer may be established over a telephone link by
`operating a telephone modem to dial a telephone number, using
`either an analog or digital line, and in some embodiments plural
`numbers may be dialed in a priority sequence until a connection
`is established. Communication may be established as well over
`any network connection to remote computers.
`Id. at 3:44–60. Figure 1, depicted below, illustrates an embodiment of the
`’268 invention.
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`Figure 1 depicts “a block diagram of an E-BIOS PC, an E-BIOS diagnostic
`center, and interconnection.” Id. at 4:65–66. The block diagram of Figure 1
`shows local E-BIOS PC 11 connected to remote E-BIOS diagnostic and
`repair facility 13 by communication link 15. Id. at 5:9–13. Link 15 for
`communication can be any of several well-known types. Id. “PC 11 has
`unique E-BIOS 17 . . . and facility 13 is equipped with code for cooperating
`with E-BIOS PC 11 over connection 15. This E-BIOS code in FIG. 1 is
`designated E-BIOS Host 19, and comprises a master kernel 20 and a slave
`kernel 22.” Id. at 5:15–20.
`Figures 2 and 3 below show flow diagrams of E-BIOS PC boot up
`operation (Figure 2) and diagnosis and repair after an E-BIOS PC and
`diagnostic center are connected (Figure 3). Id. at 5:1–5.
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`Figure 2 shows operation of an E-BIOS PC at boot up. Id. at 5:65–67.
`At step 21 power on is initiated. Id. At step 23 the E-BIOS is loaded into
`RAM and execution begins, and at step 25 E-BIOS continues performing
`power on self test (POST) and other BIOS startup functions, while
`monitoring for faults in the boot process. Id. at 6:5–9. If a fault is detected
`at step 27 that prevents normal operation, step 29 communicates with a
`remote E-BIOS diagnostic and repair unit (element 13 in Figure 1). Id. at
`6:20–26.
`Figure 3 is a logic diagram of interaction between a failed E-BIOS PC
`11 and remote diagnostic PC 13 shown in Figure 1. Id. at 7:3–5. At step 31
`communication is established, and at step 33 slave kernel 22 is downloaded
`automatically or manually by a user from diagnostic and repair PC 13 over
`link 15 to failed E-BIOS PC 11. Id. at 7:8–12. At step 35 slave kernel 22 is
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`executed in RAM space of failed PC 11. Id. at 7:14–15. If the slave kernel
`fails, control returns to step 33, or, if the slave is operable, control proceeds
`to step 39, and the slave is used to diagnose and repair failed PC 11. Id. at
`7:15–25.
`
`
`C. Illustrative Claims
`Independent claims 1, 6, 10, 16 and 18 are illustrative and reproduced
`below (Ex. 1001, 8:12–20, 8:35–49, 38–53, 8:62–9:15, 10:1–14, 10:17–27):
`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.
`
`6. A computer comprising:
`a CPU;
`a mass storage device coupled to the CPU and
`having a boot code sector and operating system code
`recorded thereon; and
`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;
`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.
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`10. A system for modifying code and data in a first
`computer having a first CPU upon failure of the first
`computer to boot, comprising:
`a second computer having a second CPU, the
`second computer connected to the first computer by a
`communication link;
`a master code kernel and a slave code kernel stored
`on a memory device at the second computer; and
`an extended basic input output system (E-BIOS) in
`the first computer;
`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
`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.
`
`
`16. 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:
`(a) establishing communication with the first
`computer over a communication link from a diagnostic
`and repair computer;
`(b) loading and executing a master kernel at the
`diagnostic and repair computer;
`(c) downloading a slave operating system kernel to
`the first computer from the second computer; and
`(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.
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`18. A method for establishing contact with a remote
`repair center computer upon failure of a local computer to
`boot, comprising steps of:
`(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; and
`(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.
`D. Grounds of Unpatentability Instituted
`We instituted inter partes review on following grounds of
`unpatentability (Dec. 22–23):
`
`References
`Chang1 and APA2
`Chang and Flaherty4
`Sakai5 and Chang
`
`Basis
`35 U.S.C. § 103(a)
`35 U.S.C. § 103(a)
`35 U.S.C. § 103(a)
`
`Claim(s) Challenged
`1–4, 6, 7, 9, and 18–203
`10, 11, and 13–17
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`1 U.S. Patent No. 5,444,850 to Chang, filed Aug. 4, 1993, and issued
`Aug. 22, 1995 (Ex. 1005, “Chang”).
`2 Petitioner identifies three admissions in the Background section of the ’268
`patent as Admitted Prior Art (“APA”). Pet. 20 (citing Ex. 1001, 1:20–25,
`1:51–55, 2:59–64).
`3 Although the Petition lists different claims as being challenged as
`unpatentable based on Chang and APA (compare Pet. 16 with Pet. 35), we
`determined that the Petition challenged claims 1–4, 6, 7, 9, and 18–20 on
`this ground. Dec. 9 n.4.
`4 U.S. Patent No. 5,146,568 to Flaherty et al., filed Sep. 6, 1988, and issued
`Sep. 8, 1992 (Ex. 1004, “Flaherty”).
`5 U.S. Patent No. 5,473,775 to Sakai et al., filed Oct. 8, 1992, and issued
`Dec. 5, 1995 (Ex. 1007, “Sakai”).
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`II. ANALYSIS
`A. Claim Interpretation
`
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under this standard,
`we interpret claim terms using “the broadest reasonable meaning of the
`words in their ordinary usage as they would be understood by one of
`ordinary skill in the art, taking into account whatever enlightenment by way
`of definitions or otherwise that may be afforded by the written description
`contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
`1054 (Fed. Cir. 1997).
`
`In the Decision to Institute, we applied the following claim
`constructions. We determined that “network communication adapter” is
`properly construed as “an interface device that allows a computer to be
`connected over a network.” Dec. 11–12. We also determined that “kernel”
`is “a software module that encapsulates an elementary function or functions
`of a system.” Id. at 12. We further determined that “remote repair center
`computer” is “a computer used to address a failure of another computer.” Id.
`at 14. The parties did not dispute these constructions during trial, and we
`adopt them in this Decision for the reasons given in the Decision to Institute.
`Id. at 10–14. Based on the Patent Owner Response, Petitioner offered a
`construction of for “establish communication” as recited in the challenged.
`claims. Pet. Reply 2–7. We address this term in the substantive analysis
`below.
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`B. Level of Skill in the Art
`Petitioner contends that a person of ordinary skill in the art for the
`’268 patent would be “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.” Pet. 8 (citing Ex. 1020 ¶ 12). Patent
`Owner did not dispute Petitioner’s proposed level of skill in the art. We
`agree with Petitioner.
`
`C. Obviousness Based on Chang (Ex. 1005) and APA
`1. Chang (Ex. 1005)
`Chang discloses a method and apparatus for a preboot file, and
`information transfer between workstations and servers or other workstations
`on a local area network. Ex. 1005, Abstract. At start up, prior to loading the
`operating system during the boot sequence, a program in the memory uses
`the BIOS of the workstation to enable the workstation to communicate with
`the server, and make workstation resources available to the server
`management application running on the server. Id. Figures 3a and 3b,
`depicted below, show the processes performed at system startup. Id. at
`6:46–48.
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`Figures 3a and 3b are flow charts of the preboot sequence described in
`Chang. Id. at 3:59–60. In normal operation, the invention interrupts the
`boot process after the BIOS is executed, but before the operating system
`executes. Id. at 3:49–52. The flowchart in Figure 3a shows that upon
`workstation power-up (step) 31, the system BIOS is executed (step 33) and
`detects the existence of a program in a ROM socket on a network interface
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`card (step 35), then passing control to this program (step 37). Id. at 6:53–57.
`Figure 3b shows that upon control being passed to the program in the
`PROM, network communications software is loaded from the workstation
`storage (step 39) using its internal mini-operating system and network
`communication protocols, to initiate communication with the server system
`management application (SMA) (step 41). Id. at 6:57–64.
`2. APA Statements
`Petitioner contends that the ’268 patent explains what was typical in
`the prior art. Ex. 1001, 1:20–25, 1:51–55; 2:59–64; Ex. 1020 ¶ 62–66.
`Specifically, Petitioner states that the ’268 patent admits the following.
`(1) “Typically this beginning code [standard set of beginning
`instructions for the computer to follow] is called a basic input output system
`(BIOS), which includes a power-on self-test (POST) procedure.” Ex. 1001,
`1:20–25.
`(2) “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.” Id. at 2:59–64.
`(3) “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.” Id. at 1:51–55.
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`3. Analysis
`Petitioner contends that Chang in combination with the APA renders
`claims 1–4, 6, 7, 9, and 18–20 obvious. Pet. 35–45. Petitioner provides
`claim charts citing Chang and APA, and citations to the Declaration of Dr.
`Hugh Smith to support its contentions. Id. (citing Ex. 1020 ¶¶ 77–79, 129–
`130, 132, 135–139, 141, 144–146, 150–155, 169). Petitioner argues that
`Chang describes “‘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.’” Pet. 35 (citing Ex. 1005, 2:52–63).
`Petitioner argues that Chang and the APA disclose a BIOS with a first
`code portion to perform POST, as recited in claim 1, because the APA
`admits that POST is included in BIOS, which is included in the startup cycle
`of Chang to ensure proper computer functions. Pet. 37 (citing Ex. 1001,
`1:20–25; Ex. 1005, 1:59). Petitioner contends Chang discloses “a second
`code portion adapted for execution by the CPU to establish communication
`with a remote computer” in the connection of the local workstation to the
`remote workstation before the local computer boots up. Pet. 38 (citing Ex.
`1005, 5:45–50). Petitioner further asserts that Chang teaches
`communication between the local and remote workstations and creates a
`network connection at boot time if the drive is damaged or the user does not
`log in. Pet. 38–39 (citing Ex. 1005, 1:38–48, 1:56–58, 3:19–20). Petitioner
`argues that Chang explains that preboot control of the workstation is
`desirable to respond to workstation failures to boot, or a potential virus in
`the boot sector prior to completing the boot process. Pet. 39–40 (citing Ex.
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`1005, 2:60–64, 4:67–5:4; Ex. 1020 ¶¶ 152–153). Petitioner asserts that a
`computer upon failure to boot establishes connection with the remote repair
`center computer in Chang and discloses the limitations of claim 18. Pet. 44–
`45. With respect to dependent claim 6, which depends from claim 1,
`Petitioner contends that Chang and the APA disclose the added “mass
`storage device” with boot sectors limitation. Pet. 40, 43–44. Petitioner
`provides evidence and citations that Chang discloses establishing a
`connection to a remote computer via telephone modem (claims 2, 3, 7, and
`19), or network communication adaptor (claims 4, 9, and 20). Pet. 42–45.
`Petitioner also articulates sufficient reasoning with a rational
`underpinning to support the combination of Chang and the APA, identifying
`evidence to show, for example, that Chang’s “workstation power-up” step
`was well known and matches the conventional POST process described in
`the APA. Pet. 36–37 (citing Ex. 1020 ¶ 130). Petitioner argues that a
`person of ordinary skill in the art “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.” Pet. 36 (citing Ex. 1020 ¶¶129–130). In addition,
`Petitioner asserts a person of ordinary skill in the art would understand the
`conventional booting practices disclosed in the APA are the foundation
`building blocks of the invention described in Chang. Pet. 36–37 (citing Ex.
`1020 ¶ 130). Petitioner provides sufficient support for the rationale to
`modify Chang to be responsive to a POST failure by reference to the
`teachings of Chang establishing communication with a remote computer
`after a conflict resulting in failure is detected. Pet. 39 (citing Ex. 1020,
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`¶¶ 151–154; Ex. 1005, 1:65–2:2, 2:60–64). In addition, Petitioner cites
`Schieve6 as further evidence of a motivation to modify Chang, asserting that
`Schieve indicates ordinary artisans understood the need to diagnose POST
`failures. Pet. 40 (citing Ex. 1001, 63:16–19; Ex. 1020 ¶ 155).
`Based on the complete record, Petitioner provides persuasive
`argument supported by a preponderance of the evidence that the firmware
`and BIOS disclosed in Chang, in combination with the APA, teaches the
`limitations of claims 1–4, 6, 7, 9, and 18–20 as set forth in the Petition.
`Patent Owner contends that Chang does not teach connecting to the
`server at boot failure, but instead consistently teaches connecting to the
`server at startup, independent of boot failure. PO Resp. 7. Patent Owner
`disputes that Chang could be modified to be responsive to a POST failure,
`arguing that Chang discloses “a connection to a remote repair facility occurs
`automatically upon start-up.” Id. Patent Owner also contends that the
`diagnostic system described in Schieve is “invoked prior to booting” and is a
`manual selection for a remote connection that requires the entry of telephone
`number. Id. (citing Ex. 1016, Figs. 4–6; Ex. 2013, 46:1–47:12). Patent
`Owner asserts that Petitioner uses hindsight to reconstruct the general
`system for a wide range of problems as described in Chang into a system
`responding to a subset of those problems, or to use Schieve to modify the
`teachings of Chang. Id. at 7 (citing In re Fine, 837 F.2d 1071, 1075 (Fed.
`Circ. 1988)), 8 (citing Ex. 2012 ¶ 10).
`
`
`6 U S. Patent No. 5,455,933 to Schieve, et al., filed Jul. 14, 1993, issued Oct.
`3, 1995 (Ex.1016, “Schieve”).
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` As Petitioner points out (Pet. Reply 7–8; Pet. 35–40), however,
`Chang “establishes communication with a server when errors are found in
`the boot process.” Ex. 1005, 8:3–5 (“If errors are found during the preboot
`process, the PROM programming could provide the appropriate updates
`from the server files.”). Moreover, as Petitioner notes, Chang describes
`using SNMP to communicate with the server to resolve boot failures. Id. at
`6:1–4. For example, Chang teaches that a detected virus can cause the
`system to remove the virus and restore the boot sector by using the remote
`server. Id. at 5:1–3. Petitioner argues that Chang teaches connecting to the
`server for different purposes, such as obtaining a new boot sector or
`“[r]emote software installation, distribution, metering and diagnostics.” Id.
`at 3:32–33, 5:1–3. Petitioner also argues that claim 6 includes the
`limitations in claim 1 and adds the limitation for “a mass storage device
`coupled to the CPU and having a boot code sector and operating system
`code recorded thereon.” Ex. 1001, 8:36–39; Pet 40. Petitioner argues that
`the APA discloses that this feature was well known in the prior art (Ex.
`1001, 1:51–55), and that Chang discloses mass storage devices (Ex. 1005,
`3:2–5). Pet. 40 (citing Ex. 1020 ¶ 169).
`Patent Owner argues that Chang and Schieve do not teach establishing
`communication upon boot failure because they teach connecting to a server
`at startup, i.e., before any boot failure. PO Resp. 6. Patent Owner’s
`argument requires that establishing communication upon failure to complete
`boot operations, as required in the challenged claims, be construed as
`establishing only an initial communication connection, and prohibits the use
`of a prior communication link between the CPU and remote computer that is
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`established before the failure to boot. PO Resp. 6; Tr. 22:18–24:2 (Patent
`Owner’s counsel arguing that communication cannot be established if a
`communication link has previously been set up). Patent Owner, therefore,
`contends that because the communication link already exists in Chang and
`Schieve and is initiated before the failure, using that link to communicate
`with the server upon failure does not constitute “establishing
`communication.”
`To support this narrow reading of the claim requirement, Patent
`Owner points to the plain language of the claims as requiring establishing
`communication only after booting has started and some failure to boot
`occurs. PO Resp. 3 (citing Ex. 1001, 8:16–21 (claim1); Ex. 2012 ¶ 4).
`Patent Owner also argues that Figure 2 of the ’268 patent clearly shows a
`communication established upon boot failure. PO Resp. 2 (citing figure);
`Tr. 28:8–14 (citing figure as not showing a preexisting communication).7
`Patent Owner, however, has not provided sufficient evidence or argument to
`establish that a person of ordinary skill in the art would understand the
`claims or Figure 2 of the ’268 patent to exclude use of an existing
`
`
`7 Patent Owner also argues that the file history of the ’268 patent
`distinguishes prior art because it does not establish communication “upon
`failure” to boot. Tr. 28:15–29:2 (citing Ex. 1003, 53). Patent Owner fails to
`cite or discuss this prosecution history-based argument in the Patent Owner
`Response. However, even if properly raised, we are not persuaded. The
`evidence cited by Patent Owner distinguished the pending claims over the
`prior art that established a connection with a remote computer automatically
`after POST, and never in response to a boot failure. Ex. 1003, 53. In
`addition, Patent Owner’s arguments made during prosecution of the ’268
`patent do not preclude that communication is established at startup before
`boot failure and reestablished upon boot failure.
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`communication link to “establish communication” “upon failure” as recited
`in the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
`(noting that we must be careful not to read a particular embodiment
`appearing in the written description into the claim if the claim language is
`broader than the embodiment.) We are not persuaded that the ’268 patent
`specification or intrinsic evidence supports such a narrow interpretation.
`We further agree with Petitioner that the ’268 specification does not
`support Patent Owner’s limited interpretation of “establish communication.”
`See Pet. Reply 2–4. The’268 patent does not define or describe establishing
`communication as limited to the initial network connection, but instead
`discusses establishing a network connection as an initial step and
`establishing communications over that existing network connection. Id. at 4.
`For example, the ’268 specification states that:
`If, in the processes at step 27, a fault is encountered that would
`prevent normal operation, control is diverted to step 29, and
`specific code in the E-BIOS queries for a modem or a LAN
`connection, and
`finding one or
`the other, establishes
`communication with a remote EBIOS diagnostic and repair unit
`(element 13 in FIG. 1).
`Ex. 1001, 6:20–25. We agree with Petitioner that the references to the LAN
`in the preferred embodiment of the ’268 patent informs a person of ordinary
`skill in the art that such connections may be initialized and available for use
`for various purposes. Pet. Reply 4 (citing Ex. 1023, 20:11–19; Ex. 1001,
`6:20–25).
`With respect to Chang, we also find persuasive the testimony of Dr.
`Levy, Patent Owner’s declarant, who testified that Chang teaches
`establishing communication for other purposes after verifying the initial
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`connection as shown in Figure 3b of Chang. Ex. 1023, 77:6–17; 84:1–14.
`In addition, Patent Owner’s argument that Schieve does not provide a
`motivation to modify Chang to establish communication in response to boot
`failure is unavailing. PO Resp. 8. Schieve describes an exemplary process
`for responding to boot failures. Pet. 40 (citing Ex. 1020 ¶ 155). To
`diagnose a boot fault in Schieve, the PC confirms proper operation of a
`modem, receives selected diagnostic routines from a server, and performs
`those routines locally to address the failure. Ex. 1016, 3:35–53. Thus, we
`agree with Petitioner that Schieve indicates a person of ordinary skill would
`have been motivated to modify Chang to include making a connection in
`response to a POST failure. Pet. Reply 11 (citing Ex. 1020 ¶ 155; Ex. 1016,
`2:11–13, 3:43–52, 3:35–38). Patent Owner’s arguments regarding the
`manual process in Schieve disregards Schieve’s express teachings that are
`nearly identical to the process of the challenged claims, except for the
`manual establishment of the communication with the remote server
`described in Schieve. Ex. 1016, 2:11–13, 3:35–38, 3:43–52, 4:41–45; Pet.
`Reply 11–12. Accordingly, we do not agree that Petitioner uses hindsight to
`apply the teachings of Schieve to modify the teachings of Chang regarding
`establishing communications to resolve preboot faults and failures. See Ex.
`1020 ¶¶ 148–153; Ex. 1005, 8:2–5.
`Claim 3 recites that the second code 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.” Ex. 1001, 8:25–29. Patent Owner contends that
`Petitioner’s evidence, relying on Dr. Smith’s testimony regarding the general
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`knowledge of a person of ordinary skill in the art (e.g., Ex. 1020 ¶ 106), is
`conclusory. PO Resp. 9–10. Patent Owner does not refute this testimonial
`evidence, but merely relies on the allegation that it is conclusory. Id. We
`disagree and find credible the testimony of Dr. Smith, who testifies that
`priority dialing behavior falls within the general knowledge of a person of
`ordinary skill in the art, who would have had experience in computer
`networking and a relevant technical degree. Ex. 1020 ¶¶ 100, 163.
`Claim 4 states “A BIOS as in claim 1 wherein the second portion
`directs the CPU to establish communication with a remote computer through
`a network communication adapter.” Patent Owner contends that Petitioner
`fails to mention an adapter. PO Resp. 10. Thus, Patent Owner argues that
`Chang and APA do not disclose claim 4, or claims 19 and 20, each of which
`recite this limitation. Id.
`Petitioner contends that the claim chart refers to Figure 1 of Chang
`that describes a local area network, and describes the Network Interface
`Card (NIC) in Chang as a type of network communication adapter. Pet.
`Reply 13–14 (citing Pet. 43; Ex. 1005, Fig. 1, 4:57–59, 6:55–57; Ex. 1020
`¶ 165). We determine Petitioner has provided persuasive evidence and
`argument with respect to the network adapter of Chang teaching the
`limitations of claim 4. We also find that Petitioner has provided sufficient
`evidence that Chang and the APA teach the communication link of claims
`19 and 20. Pet. Reply 14 (citing Pet. 42; Ex. 1001, 2:59–64; Ex. 1005,
`Fig.1; Ex. 1020 ¶¶ 159, 182).
`Based on the foregoing, and upon consideration of the full record, we
`determine that Petitioner has shown by a preponderance of the evidence that
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`claims 1–4, 6, 7, 9, and 18–20 are unpatentable as obvious under 35 U.S.C
`§ 103(a) over Chang and APA.
`
`D. Obviousness Based on Chang (Ex. 1005) and Flaherty (Ex. 1004)
`1. Flaherty (Ex. 1004)
`Flaherty discloses a “system and method of downloading operating
`system or other executable programs to a computer on a network without a
`boot device and without requiring a modification of the loadable image.”
`Ex. 1004, 4:5–9. Upon power up, the network device requests a boot, and a
`minimum-boot program is transferred over the network into the requesting
`computer’s memory. Id. at 4:10–15. This minimum-boot program contains
`the functionality necessary to establish a network connection to a disk server
`on the network. Id. at 4:6–15. Figures 1 and 2, provided below, show a host
`system and a node to be booted (Fig. 1) and the minimum boot program
`structure (Fig. 2). Id. at 4:30–34.
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`Figure 1 illustrates a network with computer node 10, which does not
`have a local boot device, and computer host node 14, with disk 20
`containing the operating system of node 10. Id. at 4:40–48. Communication
`link 12 is shown connecting computer node 10 and computer host node 14,
`which has communication interface 28. Id. Disk 20 on host 14 not only
`contains operating system 23 but also minimum-boot program 34 needed to
`load node 10, and virtual disk file 33 containing operating system 22 for
`node 10. Id. at 4:56–60. Figure 2 shows a minimum-boot program
`consisting of header 41, which identifies it as a network program to the
`host’s operating system; boot-control program 42, which prepares node 10
`for the downline load; and Local Area Disk (LAD) program 48, which
`allows a file on a network disk to be treated as a virtual local disk by node
`10. Id. at 5:24–31.
`
`2. Analysis
`Petitioner argues that Chang and Flaherty teach the limitations of
`claims 10, 11, and 13–17. Pet. 45–58. Petitioner provides citations to the
`cited references, the testimony of Dr. Smith, and argument in support of its
`contentions. Id. (citing Ex. 1020 ¶¶
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