`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`SONY INTERACTIVE ENTERTAINMENT LLC,
`Petitioner,
`
`v.
`
`
`
`BOT M8, LLC,
`Patent Owner.
`____________________
`
`Case IPR2020-00726
`U.S. Patent No. 8,112,670
`__________________________________________________________
`
`DECLARATION OF DR. LONG YANG IN SUPPORT OF PATENT
`
`OWNER’S RESPONSE UNDER 37 C.F.R. § 42.120
`
`
`
`
`
`Patent Owner, Bot M8 LLC - Ex. 2041, p. 1
`
`

`

`
`
`TABLE OF CONTENTS
`
`Page
`
` 
`
` 
`
`EXPERIENCE AND QUALIFICATIONS ................................................... 1 
`A. 
`Curriculum Vitae ................................................................................. 1 
`B. 
`Compensation ...................................................................................... 3 
`  MATERIALS CONSIDERED AND SCOPE OF OPINION ....................... 4 
`A.  Materials Considered ........................................................................... 4 
`B. 
`Summary of Opinions ......................................................................... 5 
`  LEGAL STANDARDS ................................................................................. 5 
`A.  Anticipation ......................................................................................... 6 
`B.  Obviousness ......................................................................................... 7 
`  OVERVIEW OF RELEVANT TECHNOLOGIES .................................... 10 
`A. 
`Embedded System Design ................................................................. 10 
`B.  Operating Systems ............................................................................. 11 
`C. 
`BIOS .................................................................................................. 13 
`D. 
`Power-On Self-Test (“POST”) .......................................................... 14 
`E. 
`Boot Program .................................................................................... 16 
`F. 
`Authentication Program .................................................................... 20 
`G. 
`ROM for BIOS .................................................................................. 21 
`H. 
`Bad Sector On Mass Storage Media ................................................. 23 
`I. 
`Encryption of Mass Storage Devices ................................................ 24 
`The ‘670 Patent ............................................................................................ 25 
`
` 
`
`
`
`Patent Owner, Bot M8 LLC - Ex. 2041, p. 2
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`

`

`
`A. 
`B. 
`
`2. 
`
`C. 
`
`Person of Ordinary Skill in the Art ................................................... 26 
`The Specification of the ’670 Patent ................................................. 27 
`The Execution Sequence of the Fault Inspection
`1. 
`Program ................................................................................... 28 
`The Fault Inspection Program is Separate and
`Distinct from the Boot Program .............................................. 30 
`Claim Construction ........................................................................... 32 
`1. 
`Boot Program .......................................................................... 32 
`2. 
`Fault Inspection Program ........................................................ 34 
`  ALLEGED PRIOR ART ............................................................................. 34 
`A.  Overview of Sugiyama ...................................................................... 34 
`B.  Overview of Gatto ............................................................................. 36 
`C.  Overview of Morrow ’952 ................................................................ 39 
`1.  Morrow ’952’s Verification Does Not Inspect
`Hardware Damage ................................................................... 39 
`2.  Morrow ’952’s Verification Program is Executed
`Prior to Launching the Operating System ............................... 41 
`  THERE IS NO MOTIVATION TO COMBINE THE CITED
`ALLEGED PRIOR ART ............................................................................. 43 
`A. 
`There is No Motivation to Combine Sugiyama and Gatto ............... 43 
`B. 
`There is No Motivation to Combine Morrow ’952 and
`Morrow ‘771 ...................................................................................... 44 
`1.  Morrow ’952’s Verification Program is Executed
`Prior to Launching the OS. ..................................................... 44 
`  ELEMENT-BY-ELEMENT ANALYSIS OF THE
`INSTITUTED CLAIMS OF THE ’670 PATENT ...................................... 48 
`
`IPR2020-00726 (U.S. Patent No. 8,112,670)
`Declaration of Dr. Long Yang
`
`- ii -
`
`Patent Owner, Bot M8 LLC - Ex. 2041, p. 3
`
`

`

`IPR2020-00726 (U.S. Patent No. 8,112,670)
`Declaration of Dr. Long Yang
`
`
`A. 
`
`B. 
`
`The Combination of Sugiyama in view of Gatto Does
`Not Render Claims 1-4 of the ’670 Patent Obvious ......................... 48 
`The Combination of Sugiyama in view of Gatto and
`Yamaguchi Does Not Render Claim 5 of the ’670 Patent
`Obvious ............................................................................................. 56 
`The Combination of Morrow ’952 in view of Morrow
`‘771 Does Not Render Claims 1-4 of the ‘670 Patent
`Obvious ............................................................................................. 56 
`1.  Morrow ’952’s Verification Program Does Not
`Inspect Whether or Not A Fault Such As Damage,
`Change or Falsification Occurs in The Programs or
`Data. ........................................................................................ 57 
`2.  Morrow’s Verification Program Is a Part of The
`Boot Program .......................................................................... 58 
`  CONCLUSION ............................................................................................ 62 
`  APPENDIX A .............................................................................................. 63 
`
`C. 
`
`
`
`- iii -
`
`Patent Owner, Bot M8 LLC - Ex. 2041, p. 4
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`

`

`
`
`IPR2020-00726 (U.S. Patent No. 8,112,670)
`Declaration of Dr. Long Yang
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Aventis Pharm. Inc. v. Amino Chems. Ltd.,
`715 F.3d 1363 (Fed. Cir. 2013) .......................................................................... 32
`Statutes
`35 U.S.C.
`§ 102 .............................................................................................................. 6, 7, 8
`§ 103 ...................................................................................................................... 8
`United States Code Title 18
`§ 1001 .................................................................................................................. 62
`
`
`
`- iv -
`
`Patent Owner, Bot M8 LLC - Ex. 2041, p. 5
`
`

`

`IPR2020-00726 (U.S. Patent No. 8,112,670)
`Declaration of Dr. Long Yang
`
`I, Long Yang, Ph.D., have been asked by Patent Owner, Bot M8 LLC
`
`
`1.
`
`(“Bot M8” or “Patent Owner”), to provide my technical review, analysis, and
`
`opinions concerning the validity of the claims of U.S. Patent 8,112,670 (“the ’670
`
`Patent”) instituted in the above-referenced action. As part of my work in this
`
`action, I have been asked by Bot M8 to respond to opinions offered by Petitioner
`
`Sony Interactive Entertainment LLC’s (“Sony” or “Petitioner”) technical
`
`consultant, Andrew Wolfe, Ph.D., regarding the validity of the ’670 Patent. I make
`
`this declaration based upon my own personal knowledge, information, and belief.
`
`
`
`EXPERIENCE AND QUALIFICATIONS
`A. Curriculum Vitae
`2. My experience and education are detailed in my curriculum vitae,
`
`which is attached as Appendix A to this report.
`
`3.
`
`I received a Bachelor of Science degree in Electrical Engineering
`
`from National Taiwan University, Taipei, in 1980 and a Master of Science and a
`
`Doctorate Degree in Electrical and Computer Engineering from University of
`
`California, Santa Barbara in 1984 and 1988, respectively. During my doctorate
`
`program, I studied under Professor Herbert Kroemer, who obtained the Nobel Prize
`
`in Physics in 2000.
`
`4.
`
`I have been employed as a scientific advisor at Kramer Levin Naftalis
`
`& Frankel LLP in Menlo Park, California, since September 2020. Prior to that, I
`
`1
`
`Patent Owner, Bot M8 LLC - Ex. 2041, p. 6
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`

`

`
`was Vice President of Engineering and Vice President of Research Development
`
`IPR2020-00726 (U.S. Patent No. 8,112,670)
`Declaration of Dr. Long Yang
`
`for many high-tech companies in Silicon Valley, including Toshiba America
`
`Electronic Components. I led teams of scientists and engineers to develop new
`
`technologies/products in the field of optoelectronics, displays, telecommunication,
`
`and semiconductors. My teams and I held many then-world records, such as a
`
`lowest-threshold current of strain-quantum-well-lasers (at AT&T Bell Labs), a
`
`fastest trigger circuit and a highest-transistor-count complementary-metal-oxide-
`
`semiconductor (“CMOS”) integrated circuit (“IC”) (at Hewlett Packard Labs),
`
`highest wall-plug-efficiency from visible light-emitting diodes (“LEDs”) on silicon
`
`wafers, etc.
`
`5.
`
`I have authored and co-authored over 46 publications in a large
`
`variety of technical fields, including semiconductor, laser, display, LEDs, epitaxy,
`
`etc. I was invited to give presentations in renowned international conferences,
`
`such as SEMICON 2012 and 2013. My expertise includes electronics, circuit
`
`design, optics, semiconductor physics, semiconductor devices, thermal analysis,
`
`testing, reliability, and system integration. In particular, when I worked at
`
`MicroDisplay Corporation from 2004 to 2007, I led a multi-disciplinary team,
`
`while personally serving a system engineer role, to design the entire electronics
`
`system for a liquid crystal display. I possess intimate knowledge and expertise in
`
`electronics design for digital televisions including a motherboard with central
`
`2
`
`Patent Owner, Bot M8 LLC - Ex. 2041, p. 7
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`

`

`
`processing unit (“CPU”), daughter boards for various external connectors (e.g.,
`
`IPR2020-00726 (U.S. Patent No. 8,112,670)
`Declaration of Dr. Long Yang
`
`universal serial bus (“USB”), high-definition multimedia interface (“HDMI”),
`
`video graphics array (“VGA”), etc.), power supply unit, sound system, optical
`
`projector, a remote control, and the interfaces between the various components.
`
`The team designed and fabricated the electronics board and its BIOS, developed
`
`the field-programmable gate array (“FPGA”) firmware for video processing, and
`
`software for the operating system for the digital high-definition television. My
`
`aforementioned experience covers the technical breadth disclosed in and scope of
`
`the ’670 Patent.
`
`6.
`
`I am a named inventor on 43 U.S. Patents. These patents are
`
`generally related to semiconductor laser, fiber optics, optical switches, visible
`
`LEDs, high-definition TV, and high-voltage transistors.
`
`7.
`
`I am a registered Patent Agent (Registration No. 79,092) and eligible
`
`to practice before United States Patent Trademark Office.
`
`B. Compensation
`8.
`As an employee, I am compensated with my regular salary. My
`
`compensation is in no way affected by any opinions that I render. I receive no
`
`other compensation from work on this action. My compensation is not dependent
`
`on the outcome of this matter.
`
`3
`
`Patent Owner, Bot M8 LLC - Ex. 2041, p. 8
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`

`

`IPR2020-00726 (U.S. Patent No. 8,112,670)
`Declaration of Dr. Long Yang
`
`
` MATERIALS CONSIDERED AND SCOPE OF OPINION
`A. Materials Considered
`9. My opinions, expressed herein, are based on information I have
`
`reviewed to date, including but not limited to the materials referenced herein and in
`
`the exhibits attached to this report, and are based on my knowledge and experience
`
`in the fields of computer and network security optimization. I expect to review any
`
`reports and/or declarations submitted by the retained experts of the opposing
`
`parties in this matter and I expressly reserve the right to amend or supplement this
`
`declaration, as appropriate, after considering the opinions set forth in any reports or
`
`declarations submitted by the retained experts of the opposing parties or any
`
`additional information produced by the Petitioner after the date of this declaration.
`
`10.
`
`In the process of forming my opinions, I have reviewed and
`
`considered numerous documents and items including, but not limited to: the expert
`
`declaration of Dr. Wolfe, including all documents cited in his declaration,
`
`including the patents assigned to Bot M8 and their file histories, the Board’s
`
`institution decision for this case, and various cited documents, including alleged
`
`prior art.
`
`11.
`
`I have reviewed Dr. Wolfe’s declaration (Ex. 1004). I disagree with
`
`Dr. Wolfe’s ultimate conclusions as well as specific assertions, as detailed below.
`
`4
`
`Patent Owner, Bot M8 LLC - Ex. 2041, p. 9
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`

`

`IPR2020-00726 (U.S. Patent No. 8,112,670)
`Declaration of Dr. Long Yang
`
`Summary of Opinions
`I have been asked by counsel for Bot M8 to consider the following
`
`
`B.
`12.
`
`grounds of invalidity in Dr. Wolfe’s declaration:
`
`
`
`
`
`
`
`13.
`
`Claims 1–4 are obvious under Section 103(a) over Japanese
`Unexamined Patent Application Publication No. JP 2000-35888 to
`Sugiyama (“Sugiyama”) in view of International Publication No. WO
`2004/004855 to Gatto et al. (“Gatto”).
`
`Claim 5 is obvious under Section 103(a) over Sugiyama in view of
`Gatto in further view of U.S. Patent No. 5,844,776 to Yamaguchi et
`al. (“Yamaguchi”).
`
`Claims 1–4 are obvious under Section 103(a) over U.S. Patent
`Publication No. 2004/0054952 to Morrow et al. (“Morrow ’952”) in
`view of U.S. Patent Publication No. 2003/0064771 to Morrow et al.
`(“Morrow ’771”), collectively (“Challenged Claims”).
`It is my opinion that Dr. Wolfe’s opinions regarding the invalidity of
`
`the Challenged Claims are incorrect. It is my opinion that all of the Challenged
`
`Claims of the ’670 Patent are valid. Furthermore, it is my opinion that Dr. Wolfe
`
`failed to sufficiently demonstrate that the Challenged Claims of the ’670 Patent are
`
`invalid.
`
` LEGAL STANDARDS
`14. As a registered Patent Agent, I fully understand the following legal
`
`standards that I have used as a framework in forming my opinions contained
`
`herein:
`
`5
`
`Patent Owner, Bot M8 LLC - Ex. 2041, p. 10
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`

`IPR2020-00726 (U.S. Patent No. 8,112,670)
`Declaration of Dr. Long Yang
`
`
`A. Anticipation
`15.
`I understand that a patent claim is anticipated if each and every
`
`limitation of that claim is disclosed either explicitly or inherently in a single prior
`
`art reference. If not explicitly disclosed, a limitation is inherently disclosed in a
`
`prior art reference if an unstated limitation is necessarily included in the prior art.
`
`16.
`
`I understand that, in order for a prior art reference to anticipate a
`
`patent claim, the reference must also enable one of ordinary skill in the art to make
`
`or practice the claimed invention without undue experimentation.
`
`17.
`
`I understand that under pre-AIA law, if an invention reflected in a
`
`patent claim was known or used by others in the United States, or patented or
`
`described in a printed publication in the United States or a foreign country, before
`
`the invention date of that patent claim, then the patent claim at issue is invalid
`
`under 35 U.S.C. § 102(a).
`
`18.
`
`I understand that if an invention reflected in a patent claim was
`
`patented or described in a printed publication in this or a foreign country or in
`
`public use or on sale in this country more than one year before the earliest priority
`
`date for that patent claim, then the patent claim is invalid under 35 U.S.C. §
`
`102(b).
`
`19.
`
`I understand that if an invention reflected in a patent claim was
`
`disclosed in another patent that was granted from a United States patent application
`
`6
`
`Patent Owner, Bot M8 LLC - Ex. 2041, p. 11
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`

`
`filed before the invention date of the patent claim at issue, then the patent claim at
`
`IPR2020-00726 (U.S. Patent No. 8,112,670)
`Declaration of Dr. Long Yang
`
`issue is invalid under 35 U.S.C. § 102(e).
`
`20.
`
`I understand that if an invention reflected in a patent claim was
`
`invented before the invention date of the patent claim at issue by another inventor
`
`in the United States and not abandoned, suppressed, or concealed by that earlier
`
`inventor, then the patent claim is invalid under 35 U.S.C. § 102(g).
`
`21.
`
`I understand that under pre-AIA law, a patent claim is anticipated if
`
`each and every limitation of that claim is disclosed either explicitly or inherently in
`
`a single prior art reference that predates the invention date of the patent claim
`
`unless the prior art reference is owned by the same entity or has overlaps of
`
`inventorship, in which case, the reference is not considered as prior art unless it is
`
`dated more than one year of the effective filing date of the patent claim.
`
`B. Obviousness
`22.
`I understand that even if a single reference does not contain every
`
`limitation of a patent claim, it can still invalidate that claim if it renders the
`
`claimed invention obvious when considered in light of other prior art references or
`
`devices. If the differences between the claimed invention and the prior art are such
`
`that the claimed invention, as a whole, would have been obvious to a person
`
`having ordinary skill in the art at the time the invention was made without the
`
`benefit of hindsight, then the claim is invalid.
`
`7
`
`Patent Owner, Bot M8 LLC - Ex. 2041, p. 12
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`

`

`IPR2020-00726 (U.S. Patent No. 8,112,670)
`Declaration of Dr. Long Yang
`
`I understand that the types of 35 U.S.C. § 102 prior art described
`
`
`23.
`
`above can individually be a basis for invalidating a patent, or these references can
`
`be combined to show a patent is invalid as obvious under 35 U.S.C. § 103.
`
`24.
`
`I understand that the analysis of obviousness involves several factual
`
`inquiries including the scope and content of the prior art, the differences between
`
`the prior art and the claim, and the level of ordinary skill in the art at the time of
`
`the invention.
`
`25.
`
`I understand that a reference qualifies as prior art for obviousness
`
`purposes when it is analogous to the claimed invention. The test for determining
`
`what art is analogous is: (1) whether the art is from the same field of endeavor,
`
`regardless of the problem addressed, and (2) if the reference is not within the field
`
`of the inventor’s endeavor, whether the reference still is reasonably pertinent to the
`
`particular problem with which the inventor is involved.
`
`26.
`
`I understand that to determine whether a combination of known
`
`elements would have been obvious to a person of ordinary skill in the art at the
`
`time of the invention, one must consider the references in their entirety to ascertain
`
`whether the disclosures in those references render the combination obvious to such
`
`a person.
`
`27.
`
`I understand that the combination of familiar elements according to
`
`known methods is likely to be obvious when it does no more than yield predictable
`
`8
`
`Patent Owner, Bot M8 LLC - Ex. 2041, p. 13
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`

`

`
`results. Additionally, I understand that a patent is likely to be invalid for
`
`IPR2020-00726 (U.S. Patent No. 8,112,670)
`Declaration of Dr. Long Yang
`
`obviousness if a person of ordinary skill in the art can implement a predictable
`
`variation or if there existed at the time of the invention a known problem for which
`
`there was an obvious solution encompassed by the patent’s claims. A combination
`
`is not obvious, however, where the combination cannot be implemented without
`
`undue experimentation or when the motivation to create the combination comes
`
`from hindsight.
`
`28.
`
`I understand that when there is a design need or market pressure to
`
`solve a problem and there are a finite number of identified, predictable solutions, a
`
`person of ordinary skill in the art has good reason to pursue the known options
`
`within his or her technical grasp. I understand that, if this leads to anticipated
`
`success, it is not likely the product of innovation, but rather of ordinary skill and
`
`common sense. I understand that the fact that a combination was obvious to try
`
`might show that the patent claim was obvious.
`
`29.
`
`I understand that, even when all claim limitations can be found in a
`
`combination of prior art references, the fact-finder must consider as part of the
`
`obviousness determination not only what the prior art teaches, but whether the
`
`prior art teaches away from the claimed invention and whether there is a
`
`motivation to combine teachings from separate references in the manner claimed.
`
`9
`
`Patent Owner, Bot M8 LLC - Ex. 2041, p. 14
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`

`

`IPR2020-00726 (U.S. Patent No. 8,112,670)
`Declaration of Dr. Long Yang
`
`
` OVERVIEW OF RELEVANT TECHNOLOGIES
`A. Embedded System Design
`30. Microsoft Computer Dictionary defines embedded systems as
`
`microprocessors used to control devices such as appliances, automobiles, and
`
`machines used in business and manufacturing. An embedded system is created to
`
`manage a limited number of specific tasks within a larger device or system. An
`
`embedded system is often built onto a single chip or board and is used to control or
`
`monitor the host device—usually with little or no human intervention and often in
`
`real time. Ex. 2013, at 190.
`
`31.
`
`It is a characteristic of embedded systems that both hardware and
`
`software have to be considered during their design. Therefore, this type of design is
`
`also called hardware/software co-design. The overall goal is to find the right
`
`combination of hardware and software resulting in the most efficient product
`
`meeting the specification. Ex. 2019, 151.
`
`10
`
`Patent Owner, Bot M8 LLC - Ex. 2041, p. 15
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`

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`
`
`IPR2020-00726 (U.S. Patent No. 8,112,670)
`Declaration of Dr. Long Yang
`
`Ex. 2019, Figure 3.1.
`
`32. Further examples of embedded systems in consumer electronics
`
`include TV sets, and multimedia phones. Ex. 2019, at 7.
`
`B. Operating Systems
`33. An operating system (“OS”) is system software that manages
`
`computer hardware, software resources, and provides common services for
`
`computer programs. Ex. 2014 (William Stallings - Operating Systems (2012)) at 8,
`
`48; see also Ex. 2013 (Microsoft Computer Dictionary, 5th ed.) at p. 378 (“an
`
`operating system as “the software that controls the allocation and usage of
`
`hardware resources such as memory, central processing unit (CPU) time, disk
`
`space, and peripheral devices. The operating system is the foundation software on
`
`which applications depend”). Operating systems are often classified as either
`
`desktop or embedded operating systems.
`
`11
`
`Patent Owner, Bot M8 LLC - Ex. 2041, p. 16
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`

`

`IPR2020-00726 (U.S. Patent No. 8,112,670)
`Declaration of Dr. Long Yang
`
`
`34. A Desktop Operating System is the most important piece of software
`
`that runs on a computer. It manages the computer’s computational
`
`activities associated with the hardware and provides services for application-
`
`level programs. Functions of an operating system include resource allocation, file
`
`system management, memory management, and security. Ex. 2015. Such
`
`operating systems include Windows, Mac OS, Linux for personal computers and
`
`Android, iOS for cellular phones. These operating systems are capable of running
`
`on general purpose hardware and support various input/output configurations. Id.
`
`35. Most modern game machines use powerful desktop operating systems
`
`to support multiple game applications. For example, Petitioner’s PlayStation Orbis
`
`operating system is based on FreeBSD, a version of the UNIX operating system.
`
`Ex. 2016
`
`(https://www.phoronix.com/scan.php?page=news_item&px=MTM5NDI); Ex.
`
`2014 (William Stallings at 94). Similarly, the Microsoft Xbox system software is
`
`based on heavily modified version of Windows. Ex. 2017
`
`(https://arstechnica.com/information-technology/2016/05/onecore-to-rule-them-all-
`
`how-windows-everywhere-finally-happened/2/
`
`36. Embedded Operating Systems, on the other hand, are designed for
`
`use in embedded computer systems. Designed to operate on small machines with
`
`less autonomy (e.g., PDAs), they are very compact and extremely efficient by
`
`12
`
`Patent Owner, Bot M8 LLC - Ex. 2041, p. 17
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`

`
`design and are able to operate with a limited amount of resources. Ex. 2014
`
`IPR2020-00726 (U.S. Patent No. 8,112,670)
`Declaration of Dr. Long Yang
`
`(William Stallings at 576). An important difference between most embedded
`
`operating systems and desktop operating systems is that runs a dedicated
`
`application that includes the operating system, is dedicated towards a certain
`
`application. Ex. 2019, at 3. Unlike a desktop operating system, the embedded
`
`operating system does not load and execute other applications; instead the
`
`operating system is the application. Ex. 2018. This means that the system is only
`
`able to run a single application. Karaoke machines, DVD players, internet routers,
`
`etc. typically utilize embedded operating systems, which operate as the device’s
`
`dedicated application. Ex. 2019, at 7.
`
`C. BIOS
`37.
`It was well known in the art at least since the 1960s to use a basic
`
`input/output system (“BIOS”) in a computer system to prepare the computer for
`
`operation and perform system tests at startup. Ex. 1003, at [35]. The Microsoft
`
`Computer Dictionary defines BIOS in PC-compatible computers as the set of
`
`essential software routines that tests hardware at startup, starts the operating
`
`system, and supports the transfer of data among hardware devices, including the
`
`date and time. [Ex. 2013, at p. 60]
`
`38. The main tasks of the BIOS include a self-test and the initialization of
`
`the hardware as well as the communication between the operating system and other
`
`13
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`Patent Owner, Bot M8 LLC - Ex. 2041, p. 18
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`
`components. Ex. 2034, at ¶ 3. When a computer is turned on, the BIOS starts and
`
`IPR2020-00726 (U.S. Patent No. 8,112,670)
`Declaration of Dr. Long Yang
`
`prepares the PC for booting. First, the BIOS performs the power-on self-test
`
`(POST). The computer checks one-by-one whether the basic hardware
`
`components such as whether the CPU and RAM are working properly. Id. If
`
`errors are found, the BIOS displays them by specific sounds or on screen, if the
`
`graphics have already been tested successfully. Id.
`
`39. Following this self-test, the booting process starts. Id. The hardware
`
`must know from which component it should boot the operating system. Id. The
`
`BIOS searches the operating system in the available devices (hard drives, USB, or
`
`DVD drives) following a specific order. Id. As soon as it finds software, the PC
`
`boots automatically. Id. The order of the drives, on which to search for the
`
`operating system, can be set in the BIOS. Id.
`
`D.
`Power-On Self-Test (“POST”)
`40. The Power-On Self-Test (“POST”) first finds the CPU and then finds
`
`the memory. A typical BIOS on a system emits one beep when the POST and
`
`initialization stages complete successfully. Other audible codes can indicate
`
`errors. At this point, the video card is initialized, the BIOS logo appears on a
`
`connected display, and some narrative outputs on the display as it tests the system
`
`memory that it detected. Ex. 2035.
`
`14
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`Patent Owner, Bot M8 LLC - Ex. 2041, p. 19
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`

`

`IPR2020-00726 (U.S. Patent No. 8,112,670)
`Declaration of Dr. Long Yang
`
`
`41. Phoenix Technologies has been a popular BIOS choice for many PCs
`
`since 1979. A typical Phoenix BIOS beep error codes is shown below:
`
`Phoenix
`Description
`Code
`All is good!
`1
`1-1-3-3 CPU failure
`1-1-3-4 CPU failure
`1-1-4-1 CPU failure
`1-2-2-1 Keyboard controller failure
`1-2-2-3 BIOS ROM checksum error
`1-3-1-1 DRAM memory refresh error
`1-3-1-3 Keyboard controller failure
`1-3-3-1 Memory failure
`1-3-3-2 Memory failure
`1-3-3-3 Memory failure
`1-3-4-1 Memory failure
`1-3-4-3 Memory failure
`1-4-1-1 Memory failure
`2-1-2-2 POST device initialization failure
`2-1-2-3 BIOS ROM copyright notice error
`2-2-3-1 Unexpected interrupt
`2-2-4-1 Memory failure
`
`
`
`Ex. 2035 (https://cromwell-intl.com/technical/bios.html).
`
`15
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`Patent Owner, Bot M8 LLC - Ex. 2041, p. 20
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`

`

`IPR2020-00726 (U.S. Patent No. 8,112,670)
`Declaration of Dr. Long Yang
`
`
`42. All but one of POST’s returned codes signifies hardware failure. The
`
`only exception, associated with error code “1-2-2-3,” is for BIOS ROM checksum
`
`error and checks whether the ROM chip is corrupted. A typical BIOS program
`
`does not authenticate its mass storage media. The reasons are very simple:
`
`(1) BIOS is typically a small program. It does not perform very
`sophisticated tasks.
`(2) Typically, BIOS only loads an operating system (“OS”) when it finds
`it. Ex. 2034. On the other hand, an OS can read the mass storage
`media. Morrow ’952. [0062]
`(3) Even if BIOS can be structured to contain codes for authentication, it
`requires other utility programs to execute the codes prior to loading
`the OS. Morrow ’952. [0062]
`43. This difficulty is described in Exhibit 1007 (“Morrow ’952”) cited by
`
`Petitioner. Without an OS, BIOS needs to have a prior knowledge how to access
`
`the FAT table stored in the mass storage media. Morrow ’952. [0026] &[0062].
`
`E.
`Boot Program
`44. As used in the ’670 Patent, the term “boot program” means “a
`
`program that initializes various devices including the extended BIOS and the
`
`operating system.” This construction follows from the explicit description of a
`
`“boot program” in the specification of the ’670 Patent:
`
`Here, the boot program is a program stored in the boot program storing
`area 13a of the ROM 13, and based on the boot program, initialization
`of various devices including the extended BIOS (Basic Input Output
`
`16
`
`Patent Owner, Bot M8 LLC - Ex. 2041, p. 21
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`

`

`IPR2020-00726 (U.S. Patent No. 8,112,670)
`Declaration of Dr. Long Yang
`
`
`System) in the hard disk 24 and the OS (Operating System) in the hard
`disk 24 is executed.
`’670 Patent at 3:59–64 (emphasis added). This explanation is consistent with a
`
`POSITA’s understanding of the term “boot,” which involves a “computer
`
`execut[ing] the software that loads and starts the computer’s more complicated
`
`operating system and prepares it for use.” Ex. 2003 at 3. A BIOS is a typical boot
`
`program. See § III.C, supra.
`
`45. A POSITA with in the art of embedded system knows that the CPU
`
`operates by a series of instructions. Inside a CPU, there is a program pointer to
`
`locate the next instruction to be executed when the current instruction is
`
`completed. Ex. 2027 at 21, 24 and 44. If there is no next instruction, the CPU will
`
`be trapped into a halt mode. In this condition, only hard interventions (e.g.,
`
`interrupt) can reset the CPU. A hardware reset typically will reboot the system.
`
`Ex. 2027 at 44.
`
`46. For many embedded systems such as smart TVs or smartphones, the
`
`boot program launches operating systems (like iOS, Android, etc.). For others,
`
`such as karaoke machines and DVD players, the boot program launches the
`
`embedded system’s combined operating system/application program. See § III.A-
`
`B, supra.
`
`47. Petitioner argues that a boot program is any “small program that
`
`enables [the computer] to load larger programs. Pet. at 33, 69 (citing Ex. 1003,
`
`17
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`Patent Owner, Bot M8 LLC - Ex. 2041, p. 22
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`

`

`
`¶¶ 155, 223). I disagree. Petitioner’s argument is based on the following
`
`IPR2020-00726 (U.S. Patent No. 8,112,670)
`Declaration of Dr. Long Yang
`
`definition of the term “boot”:
`
`boot to start up a computer. The term boot (earlier bootstrap) derives
`from the idea that the computer has to ‘pull itself up by the bootstraps’,
`that is, load into memory a small program that enables it to load larger
`programs. The operation of booting a computer that has been
`completely shut down is known as a dead start, cold start, or cold boot.
`A warm start or warm boot is a restarting operation in which some of
`the needed instructions are already in memory.
`Ex. 1028 at 59. Petitioner’s chosen definition elides the necessary steps that a boot
`
`program must undertake in order to load “larger programs.”
`
`48. The following is a list of six definitions of the term “boot” from
`
`common computer dictionaries. Four out of the six state that a boot program will
`
`start an operating system. One out of the six states a boot program will bring the
`
`system to operate on its own:
`
`
`1
`
`2
`
`3
`
`4
`
`Dictionary
`Dictionary of
`