Trials@uspto.gov
`571-272-7822
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`
`
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`Paper No. 35
`Entered: September 22, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY INTERACTIVE ENTERTAINMENT LLC,
`Petitioner,
`
`v.
`
`BOT M8, LLC,
`Patent Owner.
`____________
`
`IPR2020-00726
`Patent 8,112,670 B2
`____________
`
`Record of Oral Hearing
`Held: July 13, 2021
`____________
`
`
`
`Before KALYAN K. DESHPANDE, LYNNE E. PETTIGREW, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper No. 35
`Entered: September 22, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY INTERACTIVE ENTERTAINMENT LLC,
`Petitioner,
`
`v.
`
`BOT M8, LLC,
`Patent Owner.
`____________
`
`IPR2020-00726
`Patent 8,112,670 B2
`____________
`
`Record of Oral Hearing
`Held: July 13, 2021
`____________
`
`
`
`Before KALYAN K. DESHPANDE, LYNNE E. PETTIGREW, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`
`
`
`
`
`IPR2020-00726
`Patent 8,112,670 B2
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`ERIC BURESH, ESQ.
`JASON MUDD, ESQ.
`ERISE IP, P.A.
`6201 College Boulevard
`Suite 300
`Overland Park, Kansas 66211
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`JAMES HANNAH, ESQ.
`AARON FRANKEL, ESQ.
`Kramer Levin Naftalis & Frankel, LLP
`990 Marsh Road
`Menlo Park, California 94025
`
`
`
`
`The above-entitled matter came on for hearing on Tuesday, July 13,
`
`2021, commencing at 1:00 p.m., by video/by telephone.
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`IPR2020-00726
`Patent 8,112,670 B2
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`P R O C E E D I N G S
`- - - - -
`JUDGE DESHPANDE: This is the oral argument for
`IPR2020-00726. Let's start off with having our counsel's
`appearance. Who do we have for Petitioner?
`MR. MUDD: Jason Mudd and Eric Buresh are here
`for Petitioner.
`JUDGE DESHPANDE: Great. And who do we have
`for Patent Owner?
`MR. HANNAH: Good morning -- or good afternoon,
`depending on where you're located. This is James Hannah on
`behalf of BOT M8, and I also have my co- counsel Aaron Frankel,
`who is on the line.
`JUDGE DESHPANDE: Great. Today, we have set
`aside 60 minutes per side to present oral arguments. Petitioner
`bears the burden of proof.
`As you know, we are on a video system right now. So
`please keep yourself muted if you're not talking, that will help
`facilitate the flow of our discussion today. And also, if you're
`referring to demonstratives, please refer to the demonstrative
`number so that we can follow along, that way we have a clear
`indication both for us and the court reporter as to where we are
`in the presentation.
`Anyone have any questions as to today's procedure or
`processes?
`MR. HANNAH: I have a quick question, Your Honor.
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`Patent 8,112,670 B2
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`JUDGE DESHPANDE: Yeah.
`MR. HANNAH: Oh, sorry.
`JUDGE DESHPANDE: Yes, Mr. Hannah.
`MR. HANNAH: Is it possible that we can share our
`screen? It looks like we have that capability and, if I can do it,
`that would be great. I think it will probably make it go a little
`bit smoother, but I just wanted to ask Your Honor if that's okay
`with you.
`
`JUDGE DESHPANDE: Yeah, I think we prefer that
`we don't share screens only because we lose -- whenever you
`share the screen, we can't see your face quite as well. So we're
`very -- we've been very well practiced in following along
`demonstratives, if you want to go ahead and point us to what
`slide number you're on. I think that will be the easier way for us
`to follow.
`
`MR. HANNAH: Okay, that's fine. But, you know,
`my face isn't that great to be looking at anyway, but --
`(Laughter)
`MR. HANNAH: -- that's fine. We'll just go with the
`standard protocol. Thank you, Your Honor, I appreciate it.
`JUDGE DESHPANDE: Thank you.
`Any questions from Petitioner?
`MR. MUDD: No, Your Honor.
`JUDGE DESHPANDE: Great. Mr. Buresh, we've set
`aside 60 minutes for each party to present arguments. Petitioner,
`you will present first. You can save up to 15 minutes for
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`IPR2020-00726
`Patent 8,112,670 B2
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`rebuttal. Patent Owner, you will also have 60 minutes to present
`and you can save up to 15 minutes for surrebuttal.
`Mr. Buresh, you have the floor. You may begin when
`you're ready. And you may indicate how much time you want to
`reserve, so that we can keep track of time for you.
`MR. MUDD: Just to clarify, Your Honor, it's Jason
`Mudd presenting for Petitioner.
`JUDGE DESHPANDE: Oh.
`MR. MUDD: Mr. Buresh is here in the room with me.
`JUDGE DESHPANDE: No problem. I'm sorry, I got
`that wrong. Mr. Mudd, you are free to begin whenever you're
`ready.
`
`MR. MUDD: Thank you, Your Honor. May it please
`the Board, Jason Mudd for Petitioner, Sony Interactive
`Entertainment. Of my 60 minutes of argument time, I plan to
`reserve ten minutes for rebuttal.
`Turning first to slide number 2, the Board has
`instituted these three grounds raised by Petitioner in this
`proceeding. First, in Ground 1, that Claims 1 through 4 are
`obvious over Sugiyama in view of Gatto; second, in Ground 2,
`that Claim 5 is obvious over Sugiyama in view of Gatto and
`further review of Yamaguchi; and, third, in Ground 3, that
`Claims 1 through 4 are obvious over Morrow '952 in view of
`Morrow '771.
`Turning to s lide 3, I'll first briefly highlight the issues
`raised by Patent Owner, then I'll step back and provide a brief
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`IPR2020-00726
`Patent 8,112,670 B2
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`background on the '670 patent and how the prior art already
`solved the same problem addressed by the '670 patent, but
`starting first with the issues that have been raised by Patent
`Owner.
`
`First, the proper claim construction of the terms "fault
`inspection program." And, second, the term "boot program,"
`which appears in Claim 2.
`Third, whether Sugiyama discloses the claimed "fault
`inspection program."
`Fourth, whether Sugiyama in view of Gatto disclose a
`control device that completes execution of the fault inspection
`program before the game is started.
`Fifth, whether a POSITA would have been motivated
`to combine Sugiyama with Gatto.
`And then, sixth, with regard to Claim 2, whether
`Sugiyama's fault inspection program is executed after a boot
`program.
`
`And then with regard to Ground 3, issue number 7 of
`whether Morrow '952 discloses the claimed fault inspection
`program.
`
`And, finally, also with regard to Ground 3, issue
`number 8 of whether Morrow '952's fault inspection program is
`executed after a boot program.
`These are the disputes that have been raised by Patent
`Owner, I'll generally be focusing on these areas, but first I want
`to highlight the reported problem addressed by the '670 patent
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`IPR2020-00726
`Patent 8,112,670 B2
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`and how the prior art already addressed this same problem.
`Turning to slide 4, the stated purpose of the '670
`patent is to store a fault inspection program in a first memory
`device, so that even if a fault occurs at a second memory device,
`the fault inspection program still properly operates. This comes
`from column 1, lines 60 to 65 of the '670 patent.
`In the specific embodiment described in the '670
`patent, a ROM or read-only memory is used as the first memory
`device that stores the fault inspection program. The program
`inspects whether a fault occurs in the second memory device,
`which, again, in this specific embodiment discloses a hard disk
`drive. Thus, even if a fault occurs in the hard drive, the fault
`inspection program in the ROM still properly operates because it
`is stored separately from the hard drive.
`Turning to slide 5, the Sugiyama reference addressed
`this same issue. Sugiyama stores a hard drive fault inspection
`program on ROM 22 to inspect a separate hard disk drive 24.
`Sugiyama describes in paragraph 29 that it's undesirable to store
`the service program for inspecting the hard drive on the hard
`drive itself because the hard drive could become corrupted. So
`Sugiyama describes it's desirable to store the service program
`separately in the ROM instead.
`Specifically, Sugiyama states in paragraph 29, in the
`highlighted text, "In consideration of this point, in this karaoke
`terminal 3, the service program relating to the hard disk drive 24
`is stored in the ROM 22. Thereby, when data of the hard disk
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`IPR2020-00726
`Patent 8,112,670 B2
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`drive 24 is corrupted, it is possible to perform recovery
`processing of the hard disk drive 24 as described above."
`So, as can be seen, Sugiyama addresses the same
`problem in the same way as the '670 patent. Specifically,
`Sugiyama, like the '670 patent, stores a hard drive fault
`inspection program on ROM separately from the hard drive that's
`being inspected. So that, even if a fault occurs in the hard drive,
`the fault inspection program still properly operates.
`Turning to slide 6, the '670 patent describes its fault
`inspection program very broadly and provides very little detail as
`to how it actually operates. Column 1 at lines 20 to 27 provides
`a definition of the term fault inspection program as being, quote,
`"a program for inspecting whether or not a fault such as damage,
`change, or falsification occurs in the programs or data," which
`the '670 patent states as here and after abbreviated as, quote,
`"fault inspection program."
`So the '670 patent is in effect defining the term "fault
`inspection program." And the term broadly encompasses
`inspecting whether or not a fault occurs in programs or data and
`it lists exemplary faults such as damage, change, or falsification.
`Turning to slide 7, like the fault inspection program
`in the '670 patent, Sugiyama discloses in Figure 5 a series of
`steps that are designed to determine whether or not a fault
`occurs. Specifically, the CPU 20 executes an HDD inspection
`program P2 and checks the details of the abnormality of the hard
`disk drive 24.
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`IPR2020-00726
`Patent 8,112,670 B2
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`
`Turning to slide 8, after the details of the abnormality
`or fault have been confirmed, they are displayed. Sugiyama can
`detect whether the problem is damage to the hard drive itself
`and, if it's not, such as when stored data is destroyed, an
`initialization program can be executed to restore the destroyed
`data. When restoration is not possible, such as when the hard
`drive itself is damaged, the manufacturer or a restoration
`company can be called for the requested repairs.
`Thus, Sugiyama discloses a fault inspection program
`that inspects either physical damage to the hard disk or damage
`to stored data.
`Turning to slide 9, and now turning to the issues
`raised by Patent Owner, the first issue is the proper construction
`of the term "fault inspection program." Patent Owner repeats its
`same construction it raised in its preliminary response of, quote,
`"A program other than a boot program that inspects a memory
`device for faults, including damage to the memory and change or
`falsification of programs stored thereon."
`The Board rejected this construction at institution and
`instead construed the term as, "A program for inspecting whether
`or not a fault such as damage, change, or falsification occurs in
`the programs or data." And Petitioner has proposed this same
`construction as the Board.
`As shown on slide 10, the Board's claim construction
`for fault inspection program mirrors the definitional statement in
`the '670 patent itself, which abbreviates the term "fault
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`IPR2020-00726
`Patent 8,112,670 B2
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`inspection program" as, quote, "A program for inspecting
`whether or not a fault such as damage, change, or falsification
`occurs in the programs or data." Thus, the Board's construction
`verbatim repeats this definition, as it should, because when the
`Applicant acts as a lexicographer in the specification and defines
`a term, that definition is controlling, as it should be here.
`Importantly, in this language, damage, change, and
`falsification are exemplary types of faults, they are thus not the
`only types of faults. Thus, inspecting damage to the memory
`should not be a requirement of the proper construction of the
`term "fault inspection program." Damage is only one exemplary
`type of fault.
`Looking back at Patent Owner's construction on slide
`9, that construction improperly requires inspecting damage to the
`memory.
`
`Patent Owner's construction also imposes a
`requirement of inspecting both hardware and software faults, but,
`as shown on slide 11, the '670 patent makes clear that a fault in
`either hardware or software is inspected. Specifically at column
`1, lines 16 to 18, the '670 patent states that "the present
`invention relates to an information-process device in which a
`fault in hardware or software is inspected." That statement is
`entirely consistent with the definition we just looked at on slide
`10, which lists damage, change, and falsification as each being
`exemplary types of faults.
`This usage of "or" is repeated within the '670 patent at
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`IPR2020-00726
`Patent 8,112,670 B2
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`column 4, lines 3 to 10. There, it again uses the word "or" and
`states, "It is inspected whether or not a damage occurs in the
`hard disk 24 or whether or not change or falsification of the
`program stored in the hard disk is conducted."
`Patent Owner is proposing with its construction to
`improperly rewrite "or" to instead say "and." The spec could
`have clearly required inspection of both hardware and software
`in its definition of the term, but it did not do so. As a result, it
`would be improper under the guise of claim construction to
`rewrite the patent's definition so as to require inspection of both
`hardware and software faults.
`Turning next to slide 12, the next part of Patent
`Owner's construction that improperly reads in a limitation are the
`words here underlined, "other than a boot program."
`Most notably, these words, "other than a boot
`program," are not present anywhere in the '670 specification and
`they're certainly not present within the language we just looked
`at in the specification's definition of what a fault inspection
`program is defined to be.
`Now, Patent Owner purports to take this language
`"other than a boot program" from the file history of the '988
`patent, which is the parent to the '670 patent. In that file history,
`the applicant stated that in Applicant's Claim 1 the boot program
`and the fault inspection program are distinct. That of course is
`referring to different claim language.
`Claim 1 there had recited a boot program and a fault
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`IPR2020-00726
`Patent 8,112,670 B2
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`inspection program. Claim 1 of the '670 patent does not recite a
`boot program. In any event, this statement merely is saying that
`the boot program of Claim 1 and the fault inspection program of
`Claim 1 are distinct and should not be mapped to the very same
`thing; otherwise, it could render the use of different terms
`superfluous and risk reading one out of the claim.
`What this statement did not state is that a fault
`inspection program can never be a boot program or can never be
`part of a boot program or cannot be initiated by a boot program,
`it never said that. All it was saying is that the claimed boot
`program and the claimed fault inspection program should not be
`the same thing, and here, in this IPR, Petitioner has not mapped
`them both to the same thing.
`Turning to slide 13, Patent Owner also tries to support
`its other than a boot program construction by relying on Figure 1
`of the '670 patent, which depicts a boot program storing area 13a
`and a fault inspection program storing area 13b. But this of
`course is simply describing an embodiment of a particular way of
`storing the boot program and the fault inspection program. It
`would be improper to read in a limitation from an embodiment.
`And, again, nothing in the spec indicates even in an embodiment
`that a fault inspection program cannot also be a boot program or
`cannot be a part of or initiated by a boot program.
`Thus, as the Board noted in institution, shown here at
`the bottom of slide 13, "We seek nothing in the record that
`precludes the fault inspection program from also being a boot
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`IPR2020-00726
`Patent 8,112,670 B2
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`program." There's nothing more in the record to change that
`conclusion now and the Board should therefore reaffirm its claim
`construction of fault inspection program.
`Turning to slide 14, the next claim construction issue
`is the proper construction of the term "boot program" in Claim 2
`of the '670 patent. Patent Owner proposes to construe this term
`as "A program that initializes various devices, including the
`extended BIOS and the operating system."
`This again is the same construction Patent Owner
`proposed in its preliminary response and that the Board rejected
`at institution. The Board construed this term at institution to
`have its plain and ordinary meaning as "a startup program that
`enables a computer to load larger programs."
`Petitioner has also proposed to construe this term in
`the same manner as the Board.
`Turning to slide 15, the Board construed this term in a
`manner consistent with its usage in the plain claim language.
`Specifically, Claim 2 recites "A boot program executed when the
`gaming device has started to operate." This establishes a boot
`program as being a startup program.
`Patent Owner relies on an embodiment for reading in
`the limitations requiring initializing the extended BIOS and the
`operating system. Specifically, Patent Owner relies on column
`3, lines 59 to 64 of the '670 specification, which states that
`"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,
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`IPR2020-00726
`Patent 8,112,670 B2
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`initialization of various devices, including the extended BIOS
`and the hard disk 24 and the OS in the hard disk 24 is executed."
`By using this signal, here, the spec. is referring to this
`particular embodiment. Nothing in this sentence is purporting to
`be a definition. It does not say this language is abbreviated as
`being a boot program like it did for the fault inspection program,
`it also does not say that the term boot program as used herein
`means this or anything similar. So it's not definitional
`language. Because the spec. does not give it a narrow definition,
`the term should be afforded its full plain and ordinary meaning.
`Turning to slide 16, as shown from this dictionary of
`computer terms, the term "boot" means to start up a computer.
`The term "boot" 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. Thus, a boot
`program is a startup program that enables a computer to load
`large programs.
`Importantly, an extended BIOS and operating system
`are not recited in the claims. Patent Owner's construction would
`result in wholesale incorporation of two different programs that
`are not recited anywhere in the claims.
`JUDGE DESHPANDE: Counsel, can we go back one
`slide to slide 15?
`MR. MUDD: Yes.
`JUDGE DESHPANDE: My question is, even if we
`were to look at this passage and say this gives us a little bit of a
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`Patent 8,112,670 B2
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`clue as to what a boot program should be, when looking at this
`language, when it says "including the extended BIOS and the
`OS," are those more or less to be read as examples or are we just
`-- it almost reads to me like they're examples of what can be
`booted, as one of some of the various things that can be booted
`by a boot program, but it's not limited to those two. Is that
`consistent with your reading or is that sort of at tension with the
`way you're defining it?
`MR. MUDD: Yes, I think that is consistent with our
`reading, Your Honor. There are examples of larger programs
`that may be executed by a boot program, but they're not required
`in every instance for a boot program to initialize those programs.
`I think those are examples, as Your Honor noted.
`JUDGE DESHPANDE: Also, similarly within the
`language, it doesn't use the word "definition," but it does
`somewhat expressly say this is what it is. Is your argument that
`we shouldn't read this to be a special definition?
`MR. MUDD: Yes, Your Honor, we don't believe it's a
`special definition. And I don't believe it says this is what a boot
`program is or always is. We saw that elsewhere in the spec.
`when it referred to fault inspection program, it specifically puts
`it in quotation marks and defines it. In this instance, there is no
`intent here to put boot program in quotation marks and define it.
`
`So when the spec wanted to define a term, we saw that it
`was able to do so, but here it's not providing a definition of the
`term.
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`Patent 8,112,670 B2
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`JUDGE DESHPANDE: Thank you.
`MR. MUDD: Returning back to slide 16. So, as we
`noted, the extended BIOS and operating system are not recited in
`the claim. So the Patent Owner's construction would be reading
`these programs into the claim language where they don't
`otherwise exist.
`In addition, Petitioner's expert, Dr. Wolfe, explained
`that not all boot programs need initialize an operating system
`because there are such programs called bootstrap loaders which
`load larger programs and do not themselves initialize an
`operating system. And, as Patent Owner's expert agreed,
`computers do not need to use an extended BIOS either. So this
`establishes that boot program need not initialize an operating
`system and an extended BIOS. Thus, Patent Owner's
`construction improperly requires both of these and the Board
`should again reject this construction and reaffirm the Board's
`construction from institution.
`Turning to slide 17 and turning to the next issue,
`Sugiyama discloses the claimed fault inspection program; it does
`so in two alternative ways. First, HDD inspection program P2 is
`a fault inspection program; and, second, steps Sa2 and Sa4
`through Sa11 of Figure 5 are also a fault inspection program.
`As described in the abstract of Sugiyama, the karaoke
`terminal 3 has "A service program for causing a CPU 20 to
`execute processing for examining and restoring failures and the
`like of a hard disk drive 24."
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`Patent 8,112,670 B2
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`Turning to slide 18, in step Sa2 it's determined
`whether an abnormality has occurred. If so, then in Sa4 it's
`determined whether it's an abnormality relating to hard disk
`drive. Then, in Sa5, the CPU executes the HDD inspection
`program P2 stored in the ROM to, quote, "check the details of
`the abnormality of the hard disk drive 24."
`When the details of the abnormalities are confirmed,
`the confirmed details are then displayed on the monitor of the
`display unit in step Sa6.
`Now, the process of checking the details of the
`abnormality on the hard disk and then displaying them is itself
`the inspection of a fault, as the Board noted in its institution
`decision on page 25. So in this way the HDD inspection program
`P2 is itself a fault inspection program.
`Turning to slide 19, when the details of the
`abnormality are not damage to the hard drive itself, such as when
`the stored data is destroyed, then an initialization program P1 re-
`initializes the hard drive in step Sa7. Paragraph 29 in the middle
`of slide 19 describes it as follows: "When data of the hard disk
`drive 24 is corrupted, it is possible to perform recovery
`processing of the hard disk drive as described above."
`As shown in the bottom of slide 19, Sugiyama may
`determine that the hard disk drive itself is damaged and that
`initialization is not possible. In that case, the manufacturer or a
`restoration company is requested for repairs. Thus, in this way,
`the additional steps Sa2 and Sa4 through Sa11 are also a fault
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`IPR2020-00726
`Patent 8,112,670 B2
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`inspection program.
`Turning to slide 20, Patent Owner argues that
`Sugiyama's fault inspection program is part of a boot program
`and, thus, cannot be a fault inspection program based on Patent
`Owner's claim construction of the term.
`First, as we've already discussed, Patent Owner's
`other than a boot program claim construction is incorrect for the
`reasons that we've discussed. The proper construction does not
`preclude the fault inspection program from being part of a boot
`program or from being initiated by a boot program.
`Second, in any event, even under Patent Owner's
`construction, both the fault inspection programs identified by
`Petitioner are still other than a boot program. In Sugiyama, the
`startup program is a boot program, which Patent Owner does not
`dispute, and that startup program executes in step Sa1. Steps
`Sa2 and Sa4 through Sa11 are defined as separate steps from
`Sa1, so those steps are other than a boot program.
`Similarly, the inspection program P2 is also separate
`from the startup program in step Sa1 and is thus also other than a
`boot program. In fact, the inspection program P2 is depicted in
`Figure 3 as being stored separately from the startup program in
`the ROM 22.
`Turning to slide 21, Patent Owner next argues that
`Sugiyama cannot inspect both hardware and software faults.
`First, Patent Owner's claim construction is incorrect.
`Inspection of both damage to memory and change or falsification
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`of programs is not required by the proper construction. Thus,
`Sugiyama need not inspect both hardware and software faults as
`long as it inspects one or the other.
`Second, even under Patent Owner's claim
`construction, Sugiyama still satisfies it because in Sugiyama, as
`has been discussed, the fault inspection program can inspect both
`hardware faults such as damage to the hard drive itself and can
`also inspect software faults such as from destroyed or corrupt
`data which can be reinitialized.
`This is shown in slide 22. First, as shown in
`paragraph 24, the fault may be from damage to the hard disk
`drive itself, or the fault may be caused from stored data being
`destroyed or corrupted. As noted in paragraph 29, if the fault is
`from stored data being corrupted, then recovery processing can
`be performed in the form of reinitializing the hard drive in step
`Sa7. Otherwise, as noted in paragraph 24, if the hard drive itself
`is damaged, then Sugiyama displays that restoration is not
`possible and the manufacturer or a restoration company is
`requested for repairs.
`So, thus, Sugiyama can inspect both damage to the
`hard drive itself and it can inspect destroyed or corrupted data.
`Sugiyama can therefore inspect both hardware and software
`faults and meets even Patent Owner's incorrect construction of a
`fault inspection program.
`Turning next to slide 23. The next issue pertains to
`whether Sugiyama executes the fault inspection program before
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`the game is started.
`First, Patent Owner does not dispute that Sugiyama's
`karaoke singing-scoring program is a game. Second, the process
`flow of Figure 5 shows that Sugiyama inspects for faults prior to
`starting the game, which happens at the last step in Sa3.
`Starting with first in step Sa2, Sugiyama determines
`whether an abnormality has occurred and, if not, then normal
`karaoke processing is performed at step Sa3. So in that example
`an initial fault inspection occurs prior to starting the game.
`Now, if an abnormality does occur at step Sa2, then
`the process flows to steps Sa4 through Sa11 to address a hard
`disk drive abnormality. That flow includes executing the HDD
`inspection program P2. Then, after step Sa11 has been
`completed, then again, quote, "normal karaoke performance
`processing is performed at step Sa3 when the game is started."
`So in both instances the game is executed last in step
`Sa3 after fault inspection has occurred.
`And, importantly, Patent Owner's expert agreed in his
`declaration at paragraph 82 that Sugiyama executes the
`inspection programs prior to executing its application program.
`And this of course all makes sense that you would inspect for
`faults prior to starting the game to help avoid system crashes or
`avoid other problems with game play.
`Skipping ahead to slide number 25 and turning to the
`next issue, "A PHOSITA would have been motivated to combine
`Gatto with Sugiyama."
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`In particular, a PHOSITA would have been motivated
`to combine Gatto's motherboard with Sugiyama for connecting
`Sugiyama's computer components. Now, this is for numerous
`reasons. It's undisputed that motherboards were ubiquitously
`utilized by the time of the invention and they were a common,
`well-known way for connecting common computer components
`such as a CPU, RAM, ROM, and a hard drive. Thus, this would
`have been a combination of known elements according to known
`methods and an obvious design choice given the predictable
`nature of using a motherboard to connect such components.
`Now, Patent Owner argues that there would have been
`no motivation to combine because a PHOSITA would not have
`combined Sugiyama's embedded operating system with Gatto's
`desktop operating system. This argument fails for numerous
`reasons.
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`First, simply using a motherboard as taught by Gatto
`would not have involved combining Gatto's operating system
`with Sugiyama's operating system. As Petitioner's expert
`explained, a motherboard is being used, not Gatto's operating
`system.
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`Second, in any event, Sugiyama is not limited to
`being implemented as an embedded operating system and Gatto
`is not limited to being implemented as a desktop operating
`system. Thus, there is no combination occurring of an embedded
`OS with a desktop OS.
`Turning to slide 26, first, Sugiyama is not limited to
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`using an embedded OS by Patent Owner's own definition. Patent
`Owner and its expert both emphasize that an embedded OS is a
`single application system that, quote, "does not load and execute
`other applications; instead, the operating system is the
`application. This means the system is only able to run a single
`application."
`Now, Sugiyama's express teachings are not consistent
`with this definition because Sugiyama is not a single application
`system. Sugiyama's karaoke devices are described as loading
`various applications received from a center station. They have a
`CPU for executing various application programs or service
`programs, they have a hard drive for storing multiple
`applications, and Sugiyama describes them as having flexibility
`in changing between multiple applications. Thus, all of these
`indicate to a person of skill in the art that Sugiyama is not
`limited to using an embedded operating system. So the entire
`premise of Patent Owner's motivation to combine arguments are
`incorrect because Sugiyama is not limited to being an embedded
`OS that runs a single application.
`Turning to slide 27, similarly, even if Sugiyama were
`limited to being an embedded OS, Gatto was not limited to being
`a desktop OS. Instead, Gatto, by its own express disclosure,
`gives a preferred embodiment of using either a standard or,
`quote, "embedded version of the Microsoft Windows operating
`system." Thus, Gatto was not limited to
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