Trials@uspto.gov
`571-272-7822
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`Paper 30
`Entered: January 19, 2017
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN MEGATRENDS, INC., et al.,
`Petitioner,
`
`v.
`
`KINGLITE HOLDINGS INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01515
`Patent 5,978,912
`____________
`
`
`
`Before GLENN J. PERRY, TREVOR M. JEFFERSON, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`PERRY, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`571-272-7822
`
`
`
`
`Paper 30
`Entered: January 19, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN MEGATRENDS, INC., et al.,
`Petitioner,
`
`v.
`
`KINGLITE HOLDINGS INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01515
`Patent 5,978,912
`____________
`
`
`
`Before GLENN J. PERRY, TREVOR M. JEFFERSON, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`PERRY, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
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`Case IPR2015-01515
`Patent 5,978,912
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`I. INTRODUCTION
`This is a Final Written Decision entered in an inter partes review
`instituted pursuant to 35 U.S.C. § 314. For reasons discussed below, we
`determine that Petitioner has shown by a preponderance of the evidence that
`some, but not all, of the claims at issue of U.S. Patent No. 5,978,912 (Ex.
`1001, “the ’912 patent”) are unpatentable.
`
`
`A. Procedural History
`American Megatrends, Inc., Micro-Star International Co. Ltd, MSI
`Computer Corp., Giga-Byte Technology Co., Ltd., and G.B.T., Inc.
`(“Petitioner”) filed a Petition (Paper 7, “Pet.”) to institute inter partes review
`of claims 1–60 of the ’912 patent. 35 U.S.C. § 311. Patent Owner, Kinglite
`Holdings Inc., timely filed a Preliminary Response (Paper 12, “Prelim.
`Resp.”) contending that the Petition should be denied as to all. We instituted
`trial as to claims 1–10, 12–15, 17–19, 21−30, 32−45, and 47–60. Paper 16,
`“Dec. to Inst.” Patent Owner filed a Patent Owner Response (Paper 22, “PO
`Resp.”), and Petitioner filed a Petitioner Reply (Paper 23, “Pet. Reply”).
`Petitioner also requested rehearing of our Decision to Institute. Paper 18. In
`our rehearing decision, we added claims 11, 16, and 46 to the review. Paper
`24, “Dec. on Reh’g.” We authorized and received from Patent Owner a
`Supplemental Response directed to the added claims (Paper 26, “Supp.
`Resp.”) and a Petitioner Reply to that Supplemental Response. Paper 27,
`“Reply to Supp. Resp.” We heard oral argument on October 17, 2016 and
`entered a transcript of that argument into the record. Paper 29 (“Tr.”).
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`B. Related Matters
`American Megatrends reports the following related matters in civil
`litigation:
`Kinglite Holdings Inc. v. Giga-Byte Tech. Co. Ltd., et al., CV 14-
`04989 JVS (PJWx) (C.D. Ca); and
`Kinglite Holdings Inc. v. Micro-Star Int’l Co. Ltd., et al., CV 14-
`03009 JVS (PJWx) (C.D. Ca). Paper 6, 1.
`American Megatrends reports the following related matters before the
`Board:
`American Megatrends Inc., et al. v. Kinglite Holdings Inc., IPR2015-
`01079 (U.S. Pat. No. 6,373,498);
`American Megatrends Inc., et al. v. Kinglite Holdings Inc., IPR2015-
`01081 (U.S. Pat. No. 5,987,604);
`American Megatrends Inc., et al. v. Kinglite Holdings Inc., IPR2015-
`01094 (U.S. Pat. No. 6,401,202);
`American Megatrends Inc., et al. v. Kinglite Holdings Inc., IPR2015-
`01132 (U.S. Pat. No. 6,523,123);
`American Megatrends Inc., et al. v. Kinglite Holdings Inc., IPR2015-
`01133 (U.S. Pat. No. 5,732,268);
`American Megatrends Inc., et al. v. Kinglite Holdings Inc., IPR2015-
`01140 (U.S. Pat. No. 6,519,659);
`American Megatrends Inc., et al. v. Kinglite Holdings Inc., IPR2015-
`01141 (U.S. Pat. No. 6,633,976);
`American Megatrends Inc., et al. v. Kinglite Holdings Inc., IPR2015-
`01188 (U.S. Pat. No. 5,836,013);
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`American Megatrends Inc., et al. v. Kinglite Holdings Inc., IPR2015-
`01189 (U.S. Pat. No. 5,836,013);
`American Megatrends Inc., et al. v. Kinglite Holdings Inc., IPR2015-
`01191 (U.S. Pat. No. 6,892,304);
`American Megatrends Inc., et al. v. Kinglite Holdings Inc., IPR2015-
`01197 (U.S. Pat. No. 6,487,656);
`American Megatrends Inc., et al. v. Kinglite Holdings Inc., IPR2015-
`01487 (U.S. Pat. No. 6,308,265); and
`American Megatrends Inc., et al. v. Kinglite Holdings Inc., IPR2015-
`01488 (U.S. Pat. No. 7,185,189). Id. at 1–2.
`
`
`
`C. The ’912 Patent (Ex. 1001)
`1. Described Invention
`The ’912 patent describes a computer that, prior to booting its
`operating system or after an operating system failure, can communicate with
`a networked computer. Ex. 1001, Abstract. A “multitasking kernel” that
`supports communication is implemented in a network-enhanced BIOS. Id.
`Figure 4 of the ’912 patent is reproduced below.
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`Figure 4 depicts a flowchart showing software contained on a computer
`configured for communication in accordance with a preferred embodiment.
`
`Figure 4 explains operation of “network-enhanced BIOS” 600, which
`works with “conventional BIOS” 500 to provide network communication in
`the absence of a functional operating system. Ex. 1001, 7:1–50. At start-up
`410, control passes to “Early Power On Self Test” (POST) 510 which
`performs preliminary tasks such as programming the memory controller,
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`interrupt controller, system bus controller, and other chipset registers. At
`412 control passes to the network-enhanced BIOS installation check routine1
`which scans non-volatile memory 125 looking for a signature indicating the
`start of network-enhanced BIOS 600 code (right side Figure 4). If no
`signature is present, the rest of POST routine 520 executes at 413 and
`control passes at 414 to an operating system (OS) bootstrapping routine. At
`432 the bootstrapping routine loads the OS and at 415 passes CPU control to
`the OS. Ex. 1001, 7:1–18.
`If a network-enhanced BIOS 600 code signature is present, a
`relocation routine 416 copies the network-enhanced BIOS 600 from non-
`volatile memory 125 into RAM 120, and CPU control passes, at 417, to
`initialization routine 610 of the network-enhanced BIOS 600 code stored at a
`an address at a known offset from the signature. Because conventional
`BIOS 500 typically operates in real mode, the network-enhanced BIOS
`initialization routine 610 switches the CPU into protected mode and
`initializes 32-bit kernel 620, and each component of protocol stack 640. Id.,
`7:19–30.
`Network-enhanced BIOS kernel 620 is preferably multithreaded. A
`task may be prevented from executing if waiting for an external event or
`another task on which it depends. To manage tasks, the kernel provides
`functions for signal, semaphore and mutual exclusion. Kernel dispatcher
`621 switches CPU control among tasks. Id., 7:1–18, 7:31–34.
`
`
`1 The check routine is part of enabler 560 shown in Figure 3 of the ’912
`patent.
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`Plural 32-bit protected mode threads, started by the network-enhanced
`BIOS initialization routine 610, support network protocol stack 640, and
`communication with management workstation 200 application. Ex. 1001,
`7:44–50.
`
`2. Illustrative Claim
`Claims 1, 37, 38, 51, 52, 57, and 58 are independent. Claim 1 of the
`’912 patent is illustrative of the challenged claims:
`1. A method of operating a computer, said computer
`including a central processing unit (CPU) and a network
`interface coupling said computer to a network, said method
`comprising:
`automatically executing an initial start-up software on
`said CPU upon CPU system start-up;
`loading and executing a network-enhanced software on
`said CPU on completion of at least a first portion of said start-
`up software, said network-enhanced software supporting a
`protocol for communicating with workstations coupled to said
`computer network via said network interface; and
`loading and executing an operating system software on
`said CPU after said loading of said network-enhanced software,
`said operating system software being accessible by user-level
`application software programs executing on said CPU.
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`D. Instituted Challenges
`We instituted inter partes review, as to all claims, except claims 20
`and 31, as set forth in the following table:
`
`Basis
`35 U.S.C. § 103
`
`Reference(s)
`Chang2 and Dent3
`Chang, Dent, and
`Bizzarri4
`Chang, Dent, and Aegis5 35 U.S.C. § 103
`
`35 U.S.C. § 103
`
`Claim(s) challenged
`1–18, 24–30, 32, 35–
`53, 55, 56, 59 and 60
`19, 21–23, 28, 29
`and 54
`33 and 34
`
`Flaherty6 and Chang
`
`35 U.S.C. § 103
`
`57 and 58
`
`
`
`II. DISCUSSION
`A. Claim Interpretation
`The Board interprets unexpired claims using the “broadest reasonable
`construction in light of the specification of the patent in which [they]
`appear[].” 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard as the claim interpretation standard to be
`applied in inter partes reviews). Under this standard, we interpret claim
`
`
`2 U.S. Patent 5,444,850, issued August 22, 1995 (Ex. 1003, “Chang”).
`3 U.S. Patent 5,884,073, issued March 16, 1999 (Ex. 1004, “Dent”).
`4 U.S. Patent 5,732,268, issued March 24, 1998 (Ex. 1008, “Bizzarri”).
`5 Arbaugh, William A; Farber, David J.; and Smith, Jonathan M., A Secure
`and Reliable Bootstrap Architecture, University of Pennsylvania Scholarly
`Commons, December 2, 1996 (Ex. 1014, “Aegis”).
`6 U.S. Patent 5,146,568, issued September 8, 1992 (Ex. 1006, “Flaherty”).
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`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). We
`generally presume that claim terms have their ordinary and customary
`meaning. See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir.
`2016) (“Under a broadest reasonable interpretation, words of the claim must
`be given their plain meaning, unless such meaning is inconsistent with the
`specification and prosecution history.”); In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is
`the meaning that the term would have to a person of ordinary skill in the art
`in question.” (internal quotation marks omitted)). A patentee, however, may
`rebut this presumption by acting as his or her own lexicographer, providing a
`definition of the term in the specification with “reasonable clarity,
`deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994).
`In our Decision to Institute, we preliminary construed the following
`claim terms:
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`Claim Term
`“initial start-up software”
`
`“network-enhanced software
`(NES)”
`“operating system (OS) software”
`
`“power on self-test (POST)”
`
`Preliminary Construction
`“a set of instructions that initializes
`a computer system”
`“software that facilitates
`networking”
`“system-level software that controls
`the execution of user level programs
`and that provides services to such
`user-level programs such as
`resource allocation, scheduling, I/O
`control and data management”
`“the testing and initialization phases
`of the BIOS that begins when a
`system powers on”
`
`
`Patent Owner continues to argue for a more restrictive construction of
`“network-enhanced software” that would require various specific functions
`of software described in the Specification. PO Resp. 8. However, we do not
`read into this claim term limitations of particular embodiments in the
`absence of a reason to do so. Here there is none. The term “network-
`enhanced software” appears only in the claims and not elsewhere in the
`Specification. We find no description of the term “network-enhanced
`software” in the Specification that would rise to the level of a definition.
`Embodiments are described as including a “network-enhanced BIOS.” The
`term “BIOS” appears in some, but not all, of the claims. We regard the term
`“network-enhanced software” as being broader in scope than “network-
`enhanced BIOS” based on our understanding that the term BIOS connotes to
`computer engineers specialized software particular to the rudimentary
`operation of a computer. We therefore adopt our preliminary constructions
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`along with our reasoning expressed in our Decision to Institute for purposes
`of this decision. Dec. to Inst. 12−14.
`
`
`B. Overview of the References
`We provide an overview of the references discussed in the specific
`challenges.
`
`1. Chang
`Chang describes information and file transfer between a computer, not
`yet booted to its local operating system, and a network computer. Ex. 1003,
`Abstract. To enable communication, a ROM or PROM containing code is
`placed in either 1) an unused boot ROM socket of a LAN card, or 2) a
`motherboard. Id.
`During a boot sequence and prior to loading its operating system
`(OS), the computer performs certain functions using its BIOS to enable
`communication via the network. Id. This process is described at column 6,
`line 49 through column 7, line 36, with reference to Figures 3a and 3b,
`reproduced below.
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`Figures 3a and 3b depict flow charts showing
`processing carried out by Chang at system startup.
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`The boot process interrupts after the BIOS executes but before the
`Disk Operating System (DOS) executes. At power-up (step 31), the system
`BIOS is executed (step 33). The system BIOS detects the existence of a
`program in a ROM socket on a network interface card (step 35) and passes
`control to this program (step 37). Network communications software loads
`from the workstation storage medium (step 39) using its internal mini-
`operating system and the appropriate network communications protocols.
`Communication with the Server Management Application (SMA) is
`initiated (step 41). Under instructions from the SMA, the invention executes
`the appropriate functions contained in the executive services engine of the
`program in the PROM. The executive services engine uses low-level control
`functions (e.g., BIOS under DOS) to perform the instructions sent by the
`server SMA to the workstation. After the server connects in step 41, the
`workstation NIC address is verified (step 43). If the NIC address is not in
`the address in access control list database (ACL-DB) (step 45), the
`connection to the network is cut, otherwise an attempt is made to connect the
`workstation to the network (step 47) and, if successful, workstation files are
`updated (step 49). Otherwise, the attempt to initiate the network connection
`is repeated (step 41). At step 49, the server sends any required workstation
`updates to the client and performs any assigned tasks under control from the
`SMA. During update, processes programmed in the PROM are executed
`and acknowledged (ACK) (step 51) by the firmware under instruction from
`the server SMA. The server and client communicate directly with
`workstation hardware and firmware at a level below the operating system,
`thus providing a sterile, controlled operating environment. Control then
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`returns to the workstation boot process (step 53) and the normal boot process
`is completed (step 55). Steps 39 and 41 are performed by file handler 27a
`and 27b. Steps 43, 45, 47, 49, 51, and 53 are performed by network services
`27c and executable services engine 23. Ex. 1003, 6:49–7:36.
`The firmware kernel provides the workstation with a pristine
`operating environment. The workstation can execute any instructions sent
`by the SMA, exit from control of the firmware, and commence normal boot.
`Changes made during the pre-boot process by the SMA are reflected
`immediately at the workstation.
`
`2. Dent
`Dent describes altering a boot sequence provided by a Basic
`Input/Output System (BIOS) to enable diagnostics of the electronic system
`containing the BIOS by a service provider. Access to the service provider is
`established through a publicly accessible network (e.g., Internet). Ex. 1004,
`Abstract. Dent’s Figure 4 is reproduced below.
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`Figure 4 depicts a flowchart illustrating a boot sequence that
`establishes an interconnection over a network for remote servicing of
`the electronic system upon experiencing a boot error.
`
`As shown in Dent’s Figure 4, after the electronic system has been
`powered, it undergoes a boot sequence in which components critical to
`establishing remote access through a publicly accessible network are
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`initialized before proceeding with the standard boot sequence (step 410). If
`it is necessary to service a boot error in the electronic system before
`proceeding with the standard boot sequence, remote communications are
`established over the Internet (steps 420 and 430). Otherwise, the boot
`sequence proceeds as discussed above by performing an initialization,
`testing and allocation phases before loading the operating system (steps
`440−480). Ex. 1004, 5:1–15.
`
`3. Bizzarri
`Bizzarri describes an extended BIOS to establish remote
`communication for diagnostics and repair. Ex. 1008, Title.
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`Bizzarri’s Figure 2 is reproduced below.
`
`Figure 2 depicts a logic flow diagram of operation
`of an E-BIOS PC at boot up.
`
`After power on at step 21, the E-BIOS is loaded into RAM and begins
`to execute at step 23. At step 25 E-BIOS execution continues, performing
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`POST and other BIOS startup functions and monitors for any fault that will
`prevent completion of the boot process. If no fault prevents normal system
`operation, boot continues. If a fault prevents normal system operation, boot
`proceeds at step 27 to presenting on a display monitor the interactive
`interface allowing a user to direct continuing operation. Control is diverted
`to step 29 and the E-BIOS establishes communication with a remote E-BIOS
`diagnostic and repair unit (item 13 in Figure 1). Ex. 1008, 5:66–6:26.
`4. Aegis
`Aegis is an academic article describing a secure and reliable bootstrap
`architecture. Ex. 1014, cover page. It describes the “AEGIS” architecture
`for initializing a computer system. It validates integrity at each layer
`transition in the bootstrap process. AEGIS also includes a recovery process
`for integrity check failures. Ex. 1014, Abstract.
`5. Flaherty
`Figure 1 of Flaherty is reproduced below.
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`Figure 1 depicts a network having a computer node 10 that makes
`use of the host OS 23 and a minimum-boot program 34 of computer
`host node 14 via communications interface 28.
`
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`Flaherty describes Figure 1 at column 5, lines 1–21. It depicts a network
`having a computer node 10 that makes use of the host OS 23 and a
`minimum-boot program 34 of computer host node 14 via communications
`interface 28. At power up, processor 24 executes a power on self test
`(“POST”) sequence during which it attempts to find a boot device which
`contains a file with its operating system in it. If it does not find a boot
`device, the network device 26 broadcasts a request for an operating system
`over the network communications line 12. The network device 28 on the
`host 14 determines that the message is in broadcast mode and notifies CPU
`30. Ex. 1006, 4:40–68. The CPU 30 determines a message to be a boot
`request and identifies an OS for the node 10. If it finds such an
`identification, it constructs a message by attaching the hardware address of
`the network device 26 of node computer 10 onto a minimum-boot program
`file 34 and places the message on the communications line 12. The
`communications device 26 of the node 10 receives the message and copies
`the minimum boot program into the node’s low memory addresses 36 of its
`memory 27. The CPU 24 then begins to execute the minimum-boot
`program. The minimum-boot program is then copied into the high addresses
`46 of memory 27 and the POST sequence completes. Ex. 1006, 5:1–21.
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`C. Challenges Relying on Chang and Dent
`Petitioner contends that claims 1–18, 24–30, 32, 35–53, 55, 56, 59 and
`60 are obvious under 35 U.S.C. § 103 based on Chang and Dent, relying on
`the supporting testimony in the form of a Declaration by Mr. Stefano Righi
`(Ex. 1019). Pet. 9. Petitioner provides a detailed reading of these
`challenged claims on Chang and Dent, including references to the Righi
`Declaration. Id. at 11–47.
`Patent Owner argues that this challenge should be denied because
`portions of Mr. Righi’s testimony are not discussed in the Petition itself. PO
`Resp. 6–29. Patent Owner correctly notes that a Petitioner must make its
`arguments in the Petition. We have only considered portions of the Righi
`testimony that relate to arguments presented in the Petition.
`Except for claims 15, 16 and 50, as noted below, Petitioner’s detailed
`reading of the challenged claims on the references has established by a
`preponderance of the evidence that these claims are unpatentable based on
`Chang and Dent. The discussion below focuses on claims for which Patent
`Owner provides argument, albeit not supported by any declaration
`testimony. These arguments essentially contend that Petitioner did not
`sustain its burden to establish unpatentability.
`1. Combining Chang and Dent
`Petitioner argues that one of ordinary skill would have had a reason to
`combine Chang with Dent because Chang’s system can pre-boot remote
`diagnostics. Pet. 13 (citing Ex. 1003, 3:32–33). Dent provides specific
`details on how to implement diagnostics in a similar computing
`environment. Id. (citing Ex. 1004, Figure 3–2). Both references provide
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`similar solutions to the problem of providing communication capability
`before the OS is loaded. Both references disclose using a BIOS to establish
`a network connection before an operating system is active. Id. (citing Ex.
`1019 ¶ 56).
`According to Petitioner, Chang implements firmware that interfaces
`with a server management application (SMA) of a remote computer (e.g.,
`workstation server) before a full operating system is active. Id. (citing Ex.
`1003, 4:46–50; Ex. 1019 ¶ 56). Chang details how a remote server accesses,
`updates, manages, controls, and repairs a local computer. Id. (citing Ex.
`1019 ¶ 42; Ex. 1003, 3:12–50). Dent describes a similar concept, i.e., after
`computer initialization upon power-on, establishing remote connection by
`initializing a network interface controller (NIC) in response to a boot error.
`Id. (citing Ex. 1004, Figure 5, item 560).
`Patent Owner argues that there is no motivation to combine Chang
`and Dent. PO Resp. 6–7. According to Patent Owner, Petitioner’s analysis
`ignores fundamental differences in operation between the systems taught in
`the two references. PO Resp. 6. Chang establishes a connection with a
`server upon detection of a program in the PROM. Pet. 6–7 (citing Ex. 1003
`at 6:55–57 (“The system BIOS detects the existence of a program in a ROM
`socket on a network interface card (step 35) and passes control to this
`program (step 37).”)). Dent establishes communication only when there is a
`boot error. Ex. 1004 at 3:4–8 (“to enable remote system level diagnostics
`through a privately or publicly accessible network in the event of a boot
`error”). Patent Owner argues that given these differences, there would have
`been no motivation to combine these references. PO Resp. 6−7.
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`We determine that the differences noted by Patent Owner would not
`dissuade one of ordinary skill from combining the teachings Chang and
`Dent. As noted above, Chang, during a boot sequence and prior to loading
`its operating system (OS), uses its BIOS to enable network communication.
`Dent describes a boot sequence that establishes an interconnection over a
`network for remote servicing of an electronic system upon experiencing a
`boot error. Thus, they address the same general problem and are similar in
`overall approach to solving that problem.
`2. Independent Claims 1, 38, and 52
`Independent claim 1 requires “loading and executing a network-
`enhanced software on said CPU on completion of at least a first portion of
`said start-up software.” The specification describes “early POST” 510 and
`the rest of POST 520. Ex. 1001, 6:38–58.
`Petitioner reads claim 1 on Chang and Dent, noting that both of these
`references describe the limitations of claim 1. Petitioner argues that Chang’s
`BIOS detects the existence of a program in the ROM of a network interface
`card and then passes control to this program. Petitioner also argues that
`Dent executes BIOS software upon completion of at least a first portion of
`initial start-up software (ISUS). Pet. 14–17.
`We agree with Petitioner’s understanding of Chang and Dent as they
`apply to the limitations of claim 1. Claim 1 merely recites that a “first
`portion” of software is executed. Petitioner demonstrates that at least some
`portion of software has beenexecuted in both Chang and Dent before
`“network-enhanced software” is loaded and executed.
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`As to independent claims 1, 38, and 52, Patent Owner argues that
`Chang and Dent do not meet the “network-enhanced software” limitation
`because Chang’s operation always requires an operating system to be
`present before connecting to the network server. PO Resp. 7.
`According to Patent Owner, Chang uses its mini-operating system to
`download the network communications software from the workstation
`storage medium (Paper No. 16 at 14), and the client and the server
`communicate in a sterile operating environment (Id. at 15). However,
`according to Patent Owner, “Chang requires an operating system to be
`present before connecting to the network server.” Id. at 29. Chang teaches
`“[a] suitable operating system kernel 25 is available from Hitech Business
`Solutions, Inc. of Wilmington, Del.” Ex. 1003 at 6:43–45. This “kernel” is
`located in Hitech’s X-DOS disk operating system for personal computers.
`HBS X-DOS 5 PC Disk Operating System User Manual, 1–1 & 5–10 (Aug.
`8, 1995) (Ex. 2003).
`Patent Owner further argues that under a proper construction of
`“network-enhanced software,” Chang’s operating system kernel does not
`satisfy the “network-enhanced software” required by claims 1, 38 and 52 of
`the ‘912 patent. PO Resp. 8.
`As stated in our claim construction, we do not limit the term
`“network-enhanced software” as suggested by Patent Owner. Rather, we
`construe “network-enhanced software,” as used in claim 1, to encompass the
`kernel of an operating system.
`Thus, we are not persuaded by Patent Owner’s arguments that
`Chang’s “kernel” does not meet the requirements of the “network enhanced
`
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`software” described by independent claims 1, 38 and 52. We conclude,
`based on Petitioner’s detailed read of these independent claims on Chang
`and Dent that Petitioner has established by a preponderance of the evidence
`that claims 1, 38, and 52 are unpatentable based on Chang and Dent.
`3. Independent Claims 37 and 51
`Claims 37 and 51 do not refer to “networked enhanced software,” as
`in claim 1. Rather, they recite a “second BIOS” supporting communication.
`Thus, at least as to this limitation, claims 37 and 51 are not as broad in scope
`as claim 1. Independent claim 37 is reproduced below.
`
`37. A method of operating a computer, said computer
`including a central processing unit (CPU) and a network
`interface coupling said computer to a network, said CPU
`operating in at least two modes including a real mode and a
`protected mode, said method comprising:
`
`executing a first basic input/output system (BIOS) on
`said CPU in real mode, said first BIOS performing a power on
`system test of said computer;
`
`executing a second BIOS on said CPU in protected mode
`after execution of a portion of said first BIOS, said second
`BIOS supporting a network protocol stack; and
`
`executing an operating system on said CPU in protected
`mode after execution of a portion of said second BIOS, said
`operating system software supporting user-level application
`software programs executing on said CPU.
`
`Petitioner’s claim chart for claim 37 appears at pages 37–39 of the
`Petition. The claim chart points to a statement in the ’912 patent that use of
`real and protected modes was commonly known (Ex. 1003, 7:20–24). We
`credit this statement and find that those of ordinary skill would, at the time
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`of the invention, understand how to use real and protected modes. The claim
`chart also points to the subject matter of Melo (Ex. 1010, 4:10–14) as being
`known to one of ordinary skill in the art. Melo describes in detail
`transitioning between real and protected modes of operation of a CPU.
`Petitioner points to Banset (Exhibit 1011, 1:43–50), which describes how
`UNIX operates in protected mode and directly controls its applications, as
`being known to one of ordinary skill. Petitioner also points to IBM (Ex.
`1017), which describes switching from real to protected mode, as being
`known to one of ordinary skill. Petitioner also points to Bartek (Ex. 1012,
`1:45–47), which explains operating a CPU running OS/2 in protected mode,
`as being known to one of ordinary skill. Petitioner relies upon Chang and
`Dent in much the same manner as with respect to claim 1. Id.
`Patent Owner argues that the plain meaning of “BIOS” is a “basic
`input/output system.” PO Resp. 9 (citing Ex. 1003, 5:8). According to
`Patent Owner, there is nothing in the Chang reference that describes its
`operating system kernel as being a portion of a BIOS. Patent Owner notes
`that kernel is depicted and described as part of the PROM or ROM of the
`invention. Id. (citing Ex. 1003, 6:8–11, 6:30–38, Figure 2). Chang’s BIOS
`detects the presence of a program in a ROM socket and passes control to the
`program in the PROM. Id. at 6:55–59. Thus, according to Patent Owner,
`Chang’s operating system kernel is not part of BIOS, and cannot satisfy the
`“second BIOS” limitation of claims 37 and 51. Patent Owner argues that
`because the Board did not rely upon the Dent reference as separately
`teaching this limitation, the subject prior art combination lacks this
`limitation.
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`Petitioner argues, and we agree, that one of ordinary skill would
`consider Chang’s firmware to be a “BIOS.” Pet. 30 (citing Ex. 1019 ¶ 113).
`Petitioner also provides a detailed argument in its claim chart that Chang’s
`operating system kernel is, in effect, a “mini operating system.” Pet. 38
`(citing Ex. 1003, 6:30–38). Patent Owner has not cited any testimony or
`other evidence to the contrary.
`Patent Owner further argues that claims 37 and 51 require that the
`“first BIOS” execute in “real mode” and that Chang and Dent say nothing
`about a) operating BIOS in real mode; and b) operating a second, discrete
`BIOS in protected mode; and c) operating two BIOS programs sequentially
`in real and protected modes. PO Resp. 9–10.
`Patent Owner correctly notes that Petitioner relies upon the
`knowledge of one of ordinary skill when reading Chang and Dent. This
`knowledge includes the subject matter described by Melo, Banset, IBM and
`Bartek. The ordinarily skilled person reading these references would
`appreciate that when a computer using an Intel 80386 or 80486 processor is
`first turned on, it begins operation in “real mode.” Pet. 37; Ex. 1019 ¶ 53.
`Petitioner establishes that Chang meets the “second BIOS” limitation by
`offering the unrebutted Righi testimony which explains the knowledge of
`one of ordinary skill of real and protected modes, and that it would have
`been obvious to execute the second BIOS in protected mode, which was
`well-known at the time of the invention. Ex. 1019 ¶¶ 48–57. Patent Owner
`offers no testimony to counter the Righi testimony.
`We find that, at the time of the invention, real and protected modes
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