Trials@uspto.gov
`571-272-7822
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` Paper 34
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` Entered: 10 November 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 IPR2015-01140
`Patent 6,519,659 Bl
`____________
`
`
`
`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 34
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` Entered: 10 November 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 IPR2015-01140
`Patent 6,519,659 Bl
`____________
`
`
`
`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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`INTRODUCTION
`I.
`On November 13, 2015, we instituted inter partes review of claims 1–
`24 of U.S. Patent No. 6,519,659 B1 (Ex. 1001, “the ’659 patent”). Paper 13
`(“Dec.”). Patent Owner, Kinglite Holdings Inc., filed a Patent Owner
`Response (Paper 19, “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 25 (“Pet.
`Reply”). Petitioner also filed a Motion to Exclude. Paper 27 (“Pet. Mot.
`Exclude”). Patent Owner filed an Opposition to Petitioner’s Motion to
`Exclude (Paper 29), and Petitioner filed a reply, (Paper 31, “Pet. Mot.
`Reply”). A transcript of an oral hearing held on August 9, 2016 (Paper 33,
`“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 ’659 patent has been asserted in Kinglite
`Holdings Inc. v. Giga-Byte Technology Co., No. 2:14-cv-04989 (C.D. Cal.),
`and Kinglite Holdings Inc. v. Micro-Star International Co., No. 2:14-cv-
`03009 (C.D. Cal.). Pet. 5–6; Paper 7, 1. The Petition also relates to
`IPR2015-01133 (U.S. Patent No. 5,732,268). Pet. 6; Paper 7, 1.
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`B. The ʼ659 Patent
`The ’659 patent discloses a “method and system for accessing at least
`one storage element in a processor-based system.” Ex. 1001, Abstract. The
`system and method disclosed in the ’659 patent
`comprises a memory for storing instruction sequences by which
`the processor-based system is processed. The memory has at
`least one storage element. A processor is coupled to the memory,
`and a storage device is coupled to the processor. Prior to booting
`an operating system on the processor-based system, the stored
`instruction sequences cause the processor to write the contents of
`the at least one storage element to the storage device.
`Id. Figure 3, depicted below, “illustrates a diagram of one embodiment of
`the computer system . . . in which the apparatus and method of invention is
`used.” Id. at 2:36–38.
`
`
`Figure 3 illustrates a logical diagram of computer system 100. Id. at 9:20–
`21. System firmware 176 includes system BIOS module 82 having system
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`BIOS handlers, hardware routines, ROM application program interface
`(RAPI) module 84, initial start-up application (ISUA) module 86, and initial
`payload 88a. Id. at 9:21–29. After power is initially turned on to a new
`computer system 100, the system commences with POST (power-on self-
`test) procedures. During the initial POST, ISUA 86 is transferred to mass
`storage device 152, as shown by line Al. Id. at 9:54–57.
`
`C. Illustrative Claims
`Independent claims 1 and 22 are illustrative and reproduced below
`(Ex. 1001, 15:38–53, 18:7–22):
`1. A system for accessing at least one storage element
`in a processor-based system, comprising:
`a memory for storing instruction sequences by
`which the processor-based system is processed, the
`memory having at least one storage element;
`a processor coupled to said memory, the processor
`executes the stored instruction sequences; and
`a storage device coupled to the processor, where
`said storage device is local to the processor and the
`memory;
`wherein prior to booting an operating system, the
`stored instruction sequences cause the processor to write
`the contents of the at least one storage element to the
`storage device, said act of writing being performed
`independent of a post-boot application program.
`
`In a computer system having a user computer in
`22.
`communication with a remote service computer having
`access to a database identifying information available to
`the service computer, a computer implemented method for
`transferring information to the user computer, comprising:
`(a) writing the contents of at least one storage
`element of the user computer to a storage device on the
`user computer prior to booting an operating system on the
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`user computer, said writing being performed independent
`of a post-boot application program;
`(b) establishing a communications link between the
`user computer and the service computer; and
`(c) presenting at the user computer, information
`available to the user computer.
`D. Grounds of Unpatentability Instituted
`We instituted inter partes review on the following grounds of
`unpatentability (Dec. 23–24):
`
`Reference(s)
`Madden1
`Noll2
`Christeson3
`Madden and Bizzarri4
`Noll and Moran5
`
`Basis
`35 U.S.C. § 102(e)
`35 U.S.C. § 102(e)
`35 U.S.C. § 102(a)
`35 U.S.C. § 103(a)
`35 U.S.C. § 103(a)
`
`Claims Challenged
`1–22
`1–5, 8–12, and 15–19
`1–5, 8–12, and 15–19
`23 and 24
`6 and 13
`
`II. ANALYSIS
`A. Claim Interpretation
`
`In the Decision to Institute, we applied the following claim
`constructions, which the parties did not dispute during trial. Accordingly,
`
`
`1 U.S. Patent No. 6,178,503 B1 to Madden et al., filed Sept. 11, 1998, and
`issued Jan. 23, 2001 (Ex. 1005, “Madden”).
`2 U.S. Patent No. 6,185,696 B1 to Noll, filed May 27, 1998, and issued
`Feb. 6, 2001 (Ex. 1003, “Noll”).
`3 U.S. Patent No. 5,822,581 to Christeson, filed Sept. 29, 1995, and issued
`Oct. 13, 1998 (Ex. 1004, “Christeson”).
`4 U.S. Patent No. 5,732,268 to Bizzarri, filed Feb. 26, 1996, and issued
`Mar. 24, 1998 (Ex. 1006, “Bizzarri”).
`5 U.S. Patent No. 5,519,843 to Moran et al., filed Mar. 15, 1993, and issued
`May 21, 1996 (Ex. 1007, “Moran”).
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`we adopt them in this Decision for the reasons given in the Decision to
`Institute. Dec. 6–10.
`
`1. “memory”
`We determined that the claim term “memory” does not require further
`construction, but is not limited to non-volatile memory as proposed by
`Patent Owner. Id. at 6–7.
`2. “storage device”
`We determined that the broadest reasonable interpretation of “storage
`device” is “a device that persistently maintains information, including
`instructions or data, accessible through the processor.” Id. at 7–8.
`3. “instruction sequences”
`We determined that “instruction sequence” includes “one or more
`segments of computer code that can be executed by the processor to perform
`a task.” Id. at 8–9.
`4. “a post-boot application program”
`We determined that the claim term “a post-boot application program”
`is “software that executes after the operating system is loaded.” Id. at 9.
`5. “a file system”
`We determined that “a file system” is “a system for organizing
`information on a storage device, based on directories and files, which
`defines how to access storage elements.” Id. at 10.
`6. “storage element”
`We determined that “storage element” is “a physical memory
`structure or information contained within memory,” and did not limit the
`term to non-volatile memory or the type of data stored in the element as a
`file or payload. Id. at 10.
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`B. Anticipation by Madden (Ex. 1005)
`1. Madden (Ex. 1005)
`Madden is a U.S. patent that addresses the management of multiple
`operating systems on a single computer and other boot-time problems using
`a boot management program with a graphical user interface. Ex. 1005,
`Abstract. Figure 1 is reproduced below.
`
`
`Figure 1 illustrates a system which implements the Madden invention.
`Ex. 1005, 4:48–49. Figure 1 depicts a system for managing multiple
`operating systems 100 on computer to be booted 102, such as in system 104.
`Id. at 5:47–55. Figure 1 depicts four operating systems 106, 108, 110, and
`112, and one computer to be booted 102. Id. Computers 102, 114 have
`processors 116, 118 for executing instructions, and memories 120, 122 (such
`as random access memory) for storing instructions, respectively. Id. at
`5:56–59. Computers 102, 114 have permanent storage devices 124, 126. Id.
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`at 5:59–60. Madden discloses that suitable storage devices 124, 126 include
`one or more non-volatile storage devices. Id. at 5:61–66.
`Madden states that
`computers 102, 114 may also be capable of using floppy drives,
`tape drives, optical drives or other means to read a removable
`storage medium such as floppy disks, removable hard disks, tape,
`CD-ROMs, PROMs, memory modules, and other computer
`system storage devices. Each memory 120, 122 and storage
`device or medium can be written and read by execution of
`appropriate instructions using the respective processor 116, 118.
`Id. at 6:3–10. In addition, Madden describes the bootstrap process as
`follows:
`The ROM bootstrap routine is usually stored in ROM, but may
`also be stored in flash memory or another device. The starting
`address for the ROM bootstrap routine is hard-coded in the
`machine, so the processor always begins execution with the first
`instruction stored at that address. The ROM bootstrap routine
`reads a disk bootstrap program from the first sector of the disk,
`loads it into RAM, and passes control to it. The disk bootstrap
`program in turn either directly or indirectly reads an operating
`system off the disk into memory and gives it control.
`Id. at 5:26–35.
`
`2. Analysis
`Petitioner contends that Madden anticipates claims 1–22. Pet. 14–33.
`Petitioner provides claim charts and citations to the Declaration of Stefano
`Righi (Ex. 1008) to support its contention that Madden discloses the
`limitations of the challenged claims. Id. (citing Ex. 1008 ¶¶ 30–50).
`Petitioner contends that Madden discloses memory 120 that includes
`at least one storage element that can be written and read by execution of
`instructions by the processor. Id. at 15 (citing Ex. 1005, 6:7–10). Petitioner
`cites Madden’s boot management program as disclosing the “instruction
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`sequences” of claim 1. Id. at 16. Petitioner avers that a person of ordinary
`skill in the art would understand that storage device 124 is local to processor
`116 and memory 120 in Madden as they are contained inside the same
`computer. Id. (citing Ex. 1008 ¶ 40; Ex. 1005, Fig. 1).
`Petitioner also argues that, in Madden, “the boot management
`program first copies the selected OS files into [the] root directory and then
`pass[es] control to the selected operating system.” Id. at 17–18. Thus,
`Madden discloses “wherein prior to booting an operating system, the stored
`instruction sequences cause the processor to write the contents of the at least
`one storage element to the storage device.” Id. at 16. Petitioner asserts that
`the bootstrap routine by the boot management program in Madden performs
`the writing of the contents required in the claims. Id. at 17–18.
`Petitioner argues that the claim 1 limitation of “act of writing being
`performed independent of a post-boot application program” is disclosed in
`Madden, which runs application programs after boot time when control is
`passed to the operating system. Id. at 18. Petitioner relies on the testimony
`of Mr. Righi to support its contention that Madden “demonstrates that the
`contents are moved (e.g., written) independently of a post-boot application
`program.” Id. (citing Ex. 1008 ¶ 34). Petitioner provides sufficient support
`for its contention that Madden discloses the claim 1 limitation of “act of
`writing being performed independent of a post-boot application program”
`and the related limitations in claims 15 and 22. With respect to dependent
`claims 2–14 and 16–21, Petitioner provides claim charts and citations to the
`testimony of Mr. Righi to support that Madden discloses the limitations of
`the challenged claims. Id. at 23–31. We find Mr. Righi’s testimony to be
`credible, and we are persuaded by Petitioner’s analysis as discussed above.
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`Patent Owner contends that Madden does not anticipate claims 1–22
`because it fails to disclose writing at least one storage element to a storage
`device with said writing being performed “independent of a post-boot
`application program.” PO Resp. 1 (citing Ex. 1001, 15:49–53). Patent
`Owner challenges that the “selected OS files” of Madden disclose the
`claimed “at least one storage element” because they constitute operating
`system files and, thus, are not “independent of a post-boot application
`program.” Id. at 3 (citing Ex. 2008 ¶¶ 16–17). Patent Owner’s position
`stems from reading the plain language of the claims to require that the object
`being written in the “act of writing” limitation cannot be OS files. Tr. 25:1–
`26:16 (relying on the claim language and noting the absence of any example
`using OS files as content in ’659 specification).
`We disagree with Patent Owner. First, Patent Owner provides no
`intrinsic evidence that a person of ordinary skill in the art would understand
`that the “act of writing being performed independent of a post-boot
`application program” limits “the contents of the at least one storage element
`to the storage device” recited in claim 1 (and related limitations in claims 15
`and 22). Indeed, we are not convinced that the language of the claims
`themselves exclude OS files from being considered the “contents of the at
`least one storage element.” To the contrary, the claims require that the “act
`of writing” or the “writing” be “independent of a post-boot application
`program” and do not otherwise limit the content that is written. We are not
`persuaded by the testimony of Patent Owner’s declarant (Ex. 2008 ¶¶ 11,
`18, 20), and instead find more credible the testimony of Petitioner’s
`declarant, who testifies that a person of ordinary skill would have
`understood Madden to disclose moving files before any operating system or
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`file system is booted (Ex. 1008 ¶¶ 34, 43). See Ex. 1005, 17:23–24.
`Accordingly, we find that Petitioner has presented persuasive evidence that
`Madden discloses writing “the contents of the at least one storage element to
`the storage device” where the “act of writing being performed [is]
`independent of a post-boot application program.”
`We are also not persuaded by Patent Owner’s arguments and evidence
`that the boot manager program in Madden is executed after loading the
`operating system. PO Resp. 5–6 (citing Ex. 2008 ¶¶ 18–20). Patent
`Owner’s declarant, Dr. Nazarian, relies on the initial loading of the operating
`system and placement of the bootstrap loader on a storage device to support
`the conclusion that Madden discloses no actions that occur prior to the
`booting of the OS. Id.; Ex. 2008 ¶¶ 7, 11, 18–20. Patent Owner’s and Dr.
`Nazarian’s interpretation incorrectly treats the bootstrap loader in Madden as
`equivalent to the OS. Ex. 1011, 100:10–101:6; Pet. Reply 5–6. We are not
`persuaded by the testimony of Dr. Nazarian that the teachings of Madden are
`restricted to placing an operating system bootstrap loader on a storage device
`from a CD-ROM while in a post-boot operating system. Ex. 2008 ¶ 21; Ex.
`1011, 112:24–113:19. This conclusion is not supported by Madden.
`Madden discloses actions by the bootstrap loader that occur before booting
`into the OS. Ex. 1005, 17:15–25. In sum, Patent Owner’s arguments are not
`commensurate with the scope of the claims and fail to address the full scope
`of Madden’s disclosure.
`On the full record, after consideration of the parties’ argument and
`evidence, we find that Petitioner has demonstrated by a preponderance of the
`evidence that Madden discloses the limitations of claim 1. We are also
`persuaded Petitioner has shown by a preponderance of the evidence that
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`Madden also discloses the limitations of claims 2–22 as set forth in the
`Petition. Pet. 14–33. Accordingly, we determine that Petitioner has
`demonstrated by a preponderance of the evidence that claims 1–22 would
`have been unpatentable under 35 U.S.C. § 102(e) as anticipated by Madden.
`
`C. Anticipation by Noll (Ex. 1003)
`1. Noll (Ex. 1003)
`Noll is a U.S. patent titled “System for a primary BIOS ROM
`recovery in a dual BIOS ROM computer system.” Ex. 1003, at [54]. Noll
`discloses a computer system that includes a dual basic input-output system
`(BIOS) and read-only memory (ROM) system to initialize the computer. Id.
`at Abstract. Figure 1, reproduced below, depicts an embodiment of the Noll
`invention.
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`Figure 1, reproduced above, shows computer 10, with CPU 12. Id. at 2:49–
`52. Computer 10 shows RAM 14 and low power RAM 18 (CMOS RAM)
`used to store configuration data. Id. at 2:52–62.
`The system disclosed in Noll includes a first BIOS memory that
`contains a series of computer instructions to initialize the computer, and a
`second BIOS memory also containing the series of computer instructions to
`initialize the computer. Id. at 1:49–67. The first BIOS memory has a chip
`enable input that is initially enabled. An error detection circuit is provided
`to detect and note errors in the first BIOS memory. Id. An enabling circuit
`is included to disable the first BIOS memory chip enable input, and to
`enable the second BIOS memory chip enable input in response to the error
`signal. Id. Thus, the computer in Noll can switch to the second BIOS
`memory in case of error in the first BIOS memory. Id. The second BIOS
`memory also contains instructions that will reprogram the first BIOS
`memory. Id. at 5:64–66. Finally, Noll discloses that the primary BIOS
`ROM can be reprogrammed with the contents of the secondary BIOS ROM
`using the copy in random access memory or from the secondary BIOS ROM
`itself. Id. at Abstract, Fig. 1, 5:64-66.
`2. Analysis
`Petitioner contends that Noll anticipates claims 1–5, 8–12, and 15–19,
`providing claim charts and citations to the Declaration of Righi in support of
`the contentions. Pet. 34–41 (citing Ex. 1008 ¶¶ 54–61). Petitioner contends
`that Noll, which describes reprogramming the BIOS during the POST boot
`period based on instructions stored in the BIOS, discloses the limitations of
`claim 1. Id. at 34–35. Petitioner’s contentions and analysis are persuasive.
`Petitioner provides evidence that Noll discloses copying the contents of the
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`secondary BIOS into the primary BIOS before boot. Ex. 1003, Abstract,
`15:49–51. Petitioner demonstrates that Noll teaches reprogramming occurs
`if an error is detected such that information from the secondary BIOS
`memory passes to the first BIOS memory, or the information is copied
`indirectly via the RAM. Id. at Abstract, 6:23–40. Petitioner maps the first
`and second BIOS memories containing computer instructions to the
`“memory” and “storage element” limitations of the challenged claims. Pet.
`35. Petitioner also shows that the secondary BIOS ROM contains
`instructions that can reprogram the primary BIOS ROM prior to booting.
`Pet. 37 (citing Ex. 1003 5:64–65; 6:23–30). Thus, Petitioner contends that
`Noll discloses the “act of writing being performed independent of a post-
`boot application program” as recited in claims 1. Id. Petitioner has also
`mapped the further limitations of claims 1–5, 8–12, and 15–19 to the
`teachings in Noll. Pet. 35–41 (claim chart). Based on the evidence and
`argument presented, we find that Petitioner has shown by a preponderance
`of the evidence that Noll discloses the limitations of the challenged claims as
`set forth in the Petition.
`Patent Owner contends that Noll fails to disclose “a memory for
`storing instruction sequences” with “the memory having at least one storage
`element” where the “stored instruction sequences cause the processor to
`write the contents of the at least one storage element to the storage device”
`as recited in claim 1 (Ex. 1001, 15:38–51). Patent Owner argues that the
`Board’s Decision on Institution does not indicate what BIOS memory in
`Noll satisfies the “memory” limitation of the ’659 patent. PO Resp. 7.
`Patent Owner further argues that the Board’s Decision does not identify the
`storage element or instruction sequences as claimed. Id. at 7–8. Patent
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`Owner argues that “[g]iven that there is no device that stores instruction
`sequences causing the processor to write a storage element to a storage
`device [in Noll], there is no memory containing such instruction sequences.
`Id. at 9 (citing Ex. 2008 ¶¶ 24–25).
`Patent Owner’s arguments addressed to the citations in the Decision to
`Institute are misplaced and fail to address the evidence and argument cited in
`the Petition, which form the basis for the patentability challenges to the
`claims. In the Petition, Petitioner has shown that Noll discloses copying the
`contents of a secondary BIOS memory into a primary BIOS memory prior to
`boot operations. Ex. 1003, Abstract, 2:1–17; Pet. 34. Petitioner has also
`shown that the BIOS memories in Noll may be FLASH memories that store
`instructions for initializing the computer. Pet. 34 (citing Ex. 1003, 1:49–67,
`2:14–17). The secondary BIOS memory also contains instructions that will
`reprogram the primary BIOS memory. Id. We agree with Petitioner that
`Noll discloses a “memory having at least one storage element” in either the
`secondary BIOS memory or RAM. Pet. Reply 8–9. Thus, Patent Owner’s
`assertion that the “memory” in Noll fails to disclose a “storage element” is
`not consistent with Noll, which teaches reading from and writing to the
`various memories as evidence of storage elements. See Ex. 1003, 1:49–67,
`2:14–17; Pet. 34 –41. Based on the full record, Petitioner has shown by a
`preponderance of the evidence that the BIOS memory disclosed in Noll
`meets the construction of “memory” discussed above. See Pet. 34–41.
`We also are not persuaded by Patent Owner’s argument that Petitioner
`does not identify what in Noll corresponds to “instruction sequences.” PO
`Resp. 8. Noll discloses that “secondary BIOS ROM 30 contains additional
`instructions that will reprogram the primary BIOS ROM 22.” Ex. 1003,
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`5:64–66; Pet. Reply 9–10; Pet. 36. In addition, we agree with Petitioner that
`Noll discloses that instructions are copied from BIOS ROM to RAM.
`Ex. 1011, 59:13–17, 61:22–62:23.
`We are also not persuaded by Patent Owner’s contention that the
`writing function in Noll is not performed as part of Power-On Self Test
`(POST) as part of pre-boot operations. PO Resp. 8. Petitioner provides
`citations to Noll teaching that, during POST, writing from the primary to
`secondary BIOS ROMs takes place. Ex. 1003, Fig. 2B (Steps 220, 222);
`Pet. Reply 10. We also find that Patent Owner relies on insufficient and
`conclusory evidence to support its responsive contention that a person of
`ordinary skill in the art would find Noll’s error detection in BIOS ROM “a
`complicated process.” PO Resp. 9; Ex. 2008 ¶ 23. The testimony of Dr.
`Nazarian proffered by Patent Owner is not commensurate with the scope of
`the reference, because he considers Noll to be limited to error correction and
`asserts that Noll does not teach a storage device. See, e.g., Ex. 1011, 65:10–
`23; id. at 57:20–59:6. Petitioner has provided sufficient evidence that Noll
`discloses BIOS memories that store instructions for initializing the
`computer, and a secondary BIOS memory that contains the instructions that
`will reprogram the primary BIOS memory during the writing process. Ex.
`1003, 1:49–67 5:64–66; Pet. 34–37. We find that Noll teaches a storage
`device that stores instructions and that its teachings are not limited to error
`correction. Id. Accordingly, we are not persuaded by the testimony of Dr.
`Nazarian.
`Based on the parties’ argument and evidence, Petitioner has
`demonstrated by a preponderance of the evidence that claims 1–5, 8–12, and
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`15–19 would have been unpatentable under 35 U.S.C. § 102(e) as
`anticipated by Noll.
`
`D. Anticipation by Christeson (Ex. 1004)
`1. Christeson (Ex. 1004)
`Christeson is a U.S. patent titled “Method for CMOS Configuration
`Information Storage and Retrieval in Flash.” Ex. 1004, at [54]. Christeson
`discloses “[a] computer system . . . for storing CMOS configuration
`information in FLASH and for retrieving a copy of the CMOS configuration
`information stored in FLASH into a CMOS RAM memory.” Id. at Abstract.
`Christeson further discloses “a computer system wherein the CMOS RAM
`configuration information is backed up in a non-volatile memory device
`[and] a processor coupled to a computer readable CMOS RAM memory
`device.” Id. at 2:9–14.
`
`2. Analysis
`Petitioner asserts that Christeson (Ex. 1004) anticipates claims 1–5, 8–
`12, and 15–19, providing claim charts, citations to the Righi Declaration,
`and argument to support its contention. Pet. 42–50 (citing Ex. 1008 ¶¶ 63–
`65, 67, 69–73). Petitioner has provided evidence that Christeson discloses a
`processor (item 101) a memory with a storage element (item 103), and
`examples of storage devices, such as a CMOS RAM Device (item 107),
`which are all coupled together. Id. at 42–43; Ex. 1004, Fig. 1; Ex. 1008
`¶ 63. Petitioner identifies memory including a storage element (BIOS ROM
`or FLASH memory) and a storage device (CMOS RAM) that stores
`instruction sequences that are BIOS routines run at set up. Pet. 42–43.
`Petitioner shows that the memory in Christeson stores configuration
`information and writes the configuration information from FLASH memory
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`to CMOS RAM. Pet. 43. If the configuration information in Christeson is
`corrupted during the boot period, the configuration information from the
`FLASH can be written to the CMOS RAM. Id. at 43–44. Thus, Petitioner
`argues that Christeson discloses the “act of writing being performed
`independent of a post-boot application program” as recited in the challenged
`claims. Based on the full record and the persuasive analysis provided in the
`Petition, Petitioner has shown by preponderance of the evidence that
`Christeson anticipates claims 1–5, 8–12, and 15–19 as set forth in the
`Petition.
`Patent Owner asserts that Christeson does not anticipate the claims
`because “neither CMOS-RAM nor BIOS ROM or FLASH in Christeson is a
`storage device or contains a storage element per the ‘659 specification and
`claims.” PO Resp. 11 (citing Ex. 2008 ¶ 34). We disagree with Patent
`Owner’s contention. Based on the complete record, Petitioner has provided
`persuasive evidence and argument that Christeson includes a storage element
`containing a copy of the CMOS data. Pet 43 (citing Ex. 1008 ¶ 69); Pet.
`Reply 12. In particular, Petitioner identifies that Christeson teaches, “the
`firmware stored in the ROM can be a basic input-output system (BIOS)
`software program,” and that BIOS is stored in a non-volatile memory such
`as FLASH, which contains a copy of the CMOS data (e.g. configuration
`information). Ex. 1004, 1:26–27; 1:40–41; Pet. 43–45; Ex. 1008 ¶¶ 24–27.
`Thus, Petitioner has shown that Christeson teaches a storage device and a
`storage element as recited in the claims. Ex. 1008 ¶¶ 26–27.
`Petitioner has also shown that instruction sequences in Christeson can
`write the contents of the memory to a storage device, the CMOS memory.
`Pet. 43 (citing Ex. 1008 ¶¶ 64, 69; Ex. 1004, 6:65–7:3, Fig. 1 (item 107));
`
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`Pet. Reply 12. Indeed, Christeson states that “if the BIOS during its
`execution of POST, finds the contents of the CMOS memory to be invalid, it
`will check to see if the nonvolatile memory device (FLASH) contains a
`backup of the CMOS image . . . . [and] [i]f so, the BIOS will automatically
`copy its contents into the CMOS memory and continue to boot the system.”
`Ex. 1004, 6:50–59. In addition, Petitioner has provided an element by
`element analysis demonstrating that Christeson discloses the further
`limitations of claims 1–5, 8–12, and 15–19 of the ’659 patent. Pet. 44–50.
`Based on the full record, we find that Petitioner has demonstrated by a
`preponderance of the evidence that claims 1–5, 8–12, and 15–19 are
`anticipated by Christeson.
`
`E. Obviousness Based on Madden (Ex. 1005) and Bizzarri (Ex. 1006)
`Petitioner asserts that Madden in combination with Bizzarri renders
`dependent claims 23 and 24 obvious under 35 U.S.C. § 103. Pet. 51–55.
`Bizzarri discloses that during a boot failure, the BIOS establishes a
`communication link between the user computer and a remote diagnostics
`and repair computer. Ex. 1006, Abstract. The remote diagnostics and repair
`computer can download a slave kernel to the user computer such that an
`automatic software kernel or an operator can perform diagnostics and repair
`on the user computer. Id.; Ex. 1008 ¶ 80. Remote diagnostics saves the
`expense of having to send a repair person to the user computer. Ex. 1006,
`3:22–30.
`Petitioner relies on Madden to teach the limitations of independent
`claim 22. Pet. 51–55. Petitioner provides argument, claim charts, and
`citations to the Righi Declaration in support of its contentions that Madden
`and Bizzarri teach the limitations regarding the application program and
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`collection of system data by the service computer recited in claims 23 and
`24. Id. (citing Ex. 1008 ¶¶ 78–83). Petitioner also provides sufficient
`articulated reasoning with a rational underpinning to support the
`combination of Bizzarri and Madden, specifically testimony that a person of
`ordinary skill in the art would be compelled to combine the diagnostic
`methods of Bizzarri to address the “boot-time problems” disclosed in
`Madden. Id. at 52 (citing Ex. 1008 ¶¶ 81–82).
`Patent Owner argues that the combination of Madden and Bizzarri
`fails to teach the actions that occur prior to the loading of the operating
`system for the same reasons discussed above with respect to anticipation of
`claims 1–22 based on Madden. PO Resp. 11 (citing Ex. 2008 ¶ 35). For the
`reasons discussed above in Section II.B.2, we do not agree with Patent
`Owner that the actions described in Madden cannot occur prior to the
`booting of an operating system.” Id. Based on the evidence and analysis
`presented by Petitioner, we find that Petitioner has demonstrated by a
`preponderance of the evidence that claims 23 and 24 are unpatentable as
`obvious over Madden and Bizzarri.
`
`F. Obviousness Based on Noll (Ex. 1003) and Moran (Ex. 1007)
`Petitioner contends that claims 6 and 13 are unpatentable as obvious
`over Noll and Moran. Pet. 55–57. Claims 6 and 13 are directed to a storage
`element being a file that is written to a file system in the storage device. Ex.
`1001, 16:3–8. Moran discloses a “flash memory system having a controller
`and a flash memory device for providing BIOS, operating system and user
`storage capabilities.” Ex. 1007, Abstract. Such systems can be constructed
`as integrated circuit packages that provide on one chip the different elements
`
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`IPR2
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