Trials@uspto.gov
`571-272-7822
`
`Paper 36
`Date: October 4, 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
`
`
`
`
`
`
`
`
`
`Before KALYAN K. DESHPANDE, LYNNE E. PETTIGREW, and
`AMBER L. HAGY, Administrative Patent Judges.
`DESHPANDE, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`Denying Patent Owner’s Motion to Exclude Evidence
`37 C.F.R. § 42.64
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 36
`Date: October 4, 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
`
`
`
`
`
`
`
`
`
`Before KALYAN K. DESHPANDE, LYNNE E. PETTIGREW, and
`AMBER L. HAGY, Administrative Patent Judges.
`DESHPANDE, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`Denying Patent Owner’s Motion to Exclude Evidence
`37 C.F.R. § 42.64
`
`
`
`
`
`
`
`
`
`
`IPR2020-00726
`Patent 8,112,670 B2
`
`I.
`
`INTRODUCTION
`A. Background
`Sony Interactive Entertainment LLC (“Petitioner”) filed a Petition
`requesting inter partes review of claims 1–5 of U.S. Patent No. 8,112,670
`B2 (Ex. 1001, “the ’670 patent”). Paper 1 (“Pet.”). Bot M8, LLC (“Patent
`Owner”) filed a Preliminary Response. Paper 9 (“Prelim. Resp.”). With our
`authorization, Petitioner thereafter filed a Reply (Paper 11 (“Reply”)) and
`Patent Owner filed a Sur-reply (Paper 12 (“Sur-reply”)) to address issues
`involving 35 U.S.C. § 325(d).
`On October 6, 2020, we instituted inter partes review of claims 1–5 of
`the ’670 patent. Paper 13 (“Dec.”). After institution, Patent Owner filed a
`Patent Owner’s Response. Paper 17 (“PO Resp.”). In response, Petitioner
`filed Petitioner’s Reply to Patent Owner’s Response. Paper 20 (“Pet.
`Reply”). Patent Owner filed a Sur-Reply to Petitioner’s Reply to Patent
`Owner’s Response. Paper 22 (“PO Sur-reply”).
`The parties requested oral argument (Papers 23, 24), which we held
`by video on July 13, 2021. Paper 35 (“Tr.”).
`The Board has jurisdiction under 35 U.S.C. § 6. In this Final Written
`Decision, after reviewing all relevant evidence and arguments, we determine
`Petitioner has met its burden of showing, by a preponderance of the
`evidence, that claims 1–5 of the ’670 patent are unpatentable.
`B. Related Matters
`Petitioner and Patent Owner indicate that the ’670 patent was the
`subject of a patent litigation BOT M8, LLC v. Sony Corporation of America
`et al., No. 1: 19-cv-07529 (SDNY), which was transferred to the Northern
`District of California (No. 3:19-cv-07027). Pet. 73; Paper 5, 1. Petitioner
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`2
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`IPR2020-00726
`Patent 8,112,670 B2
`indicates that this case has been dismissed with respect to the ’670 patent.
`Paper 8, 1.
`We note a related inter partes review pending between the parties,
`Sony Interactive Entertainment LLC v. Bot M8, LLC, IPR2020-01288, that
`was instituted on February 16, 2021. IPR2020-01288 relates to U.S. Patent
`No. 7,664,988 (“the ’988 patent”), which issued from the parent application
`(U.S. Serial No. 11/205,121) of the ’670 patent. PO Resp. 23.
`C. The ’670 Patent
`The ’670 patent discloses “an information process device in which it
`can be guaranteed that a fault inspection program properly operates even if a
`fault occurs in a memory device which is inspected through the fault
`inspection program.” Ex. 1001, 1:36–40. Figure 1 shows an information
`process device according to an embodiment of the invention.
`
`
`Figure 1 “is a block diagram of an information process device
`according to the embodiment.” Id. at 2:15–16.
`As depicted in Figure 1, information process device 1 includes central
`processing unit (CPU) 12, read-only memory (ROM) 13, and random access
`memory (RAM) 14 on motherboard 11. Id. at 2:36–39. CPU 12 controls
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`IPR2020-00726
`Patent 8,112,670 B2
`information process device 1 and executes various programs, and therefore,
`“CPU 12 corresponds to a control device.” Id. at 2:40–42. ROM 13 is a
`non-volatile memory that stores various control programs, including a boot
`program, a fault inspection program, and a start program. Id. at 2:43–51.
`Hard disk 24 is connected to motherboard 11 at port 18 through cable 23 and
`stores an operating system (OS), Basic Input Output System (BIOS), and an
`application program. Id. at 1:21–26, 3:19–25.
`Information process device 1 begins to operate when CPU 12 executes
`the start program and, in turn, the boot program. Id. at 3:53–58. The boot
`program initializes the BIOS and the operating system. Id. at 3:59–64. The
`operating system is then loaded into RAM 14 and starts to operate. Id. at
`3:65–66. Next, the fault inspection program begins to inspect “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 24 is conducted.” Id. at
`4:1–9. If there is no fault in hard disk 24, the application program is loaded
`into RAM 14 and begins to execute. Id. at 4:15–19. Otherwise, if there is a
`fault in hard disk 24, an error is displayed on output device 21. Id. at 4:19–
`23. Here, because the fault inspection program is stored in ROM 13,
`independent from hard disk 24, “even if a fault occurs in the hard
`disk 24 . . ., it can be guaranteed that the fault inspection program properly
`operates.” Id. at 4:25–31.
`
`D. Illustrative Claims
`Petitioner challenges claims 1–5 of the ’670 patent. Pet. 4–72.
`Independent claims 1 and 4 are illustrative of the challenged claims and are
`reproduced below:
`1. A gaming device configured to execute a game, the gaming
`device comprising:
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`4
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`IPR2020-00726
`Patent 8,112,670 B2
`a mother board on which a first memory device is
`provided;
`a second memory device configured to store a game
`application program, the second memory device being connected
`to the mother board; and
`a control device for executing a fault inspection program
`for the second memory device to inspect whether or not a fault
`occurs in the second memory device;
`wherein the fault inspection program is stored in the first
`memory device, and the control device completes the execution
`of the fault inspection program before the game is started.
`Ex. 1001, 4:61–5:7.
`
`
`4. A gaming device configured to execute a game, the gaming
`device comprising:
`a ROM configured to store a fault inspection program;
`a memory device which is electrically rewritable a game
`application program stored therein;
`a control device configured to execute the fault inspection
`program to inspect whether or not a fault occurs in the game
`application program stored in the memory device;
`wherein the control device executes the fault inspection
`program when the gaming device is started to operate and
`completes the execution of the fault inspection program before
`the game is started.
`Id. at 5:15–6:10.
`
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`5
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`IPR2020-00726
`Patent 8,112,670 B2
`E. Instituted Grounds of Unpatentability and Evidence of Record
`We instituted the instant trial based on the following grounds of
`unpatentability.1 Dec. 6, 35.
`Claim(s) Challenged 35 U.S.C. §
`
`References
`
`1–4
`
`5
`
`1–4
`
`
`
`103(a)
`
`103(a)
`
`103(a)
`
`Sugiyama,2 Gatto3
`
`Sugiyama, Gatto, Yamaguchi4
`
`Morrow ’952,5 Morrow ’7716
`
`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`Petitioner asserts that a person of ordinary skill in the art would have
`had “the equivalent of at least an undergraduate degree in computer science,
`computer engineering, electrical engineering, or a similar technical field, and
`with one or more years of experience in the field of authentication,
`verification, and/or error detection in the context of computer hardware
`and/or software.” Pet. 2 (citing Ex. 1003 ¶¶ 49–51). Patent Owner proposes
`that “a person of ordinary skill in the art [o]n August 17, 2005 (the earliest
`effective date of the ’670 Patent) would have had a Bachelor’s degree in
`Electrical Engineering, Physics, or a related field, and approximately one or
`
`
`1 Petitioner also relies on the Declaration of Andrew Wolfe, Ph.D. Ex. 1003.
`Patent Owner relies on the Declaration of Long Yang, Ph.D. Ex. 2041.
`2 JP 2000-35888, published Feb. 2, 2000 (“Sugiyama,” Ex. 1005).
`3 WO 2004/004855 A1, published Jan. 15, 2004 (“Gatto,” Ex. 1006).
`4 US 5,844,776, issued Dec. 1, 1998 (“Yamaguchi,” Ex. 1036).
`5 US 2004/0054952 A1, published Mar. 18, 2004 (“Morrow ’952,”
`Ex. 1007).
`6 US 2003/0064771 A1, published Apr. 3, 2003 (“Morrow ’771,” Ex. 1008).
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`Patent 8,112,670 B2
`more years of professional experience in the field of computer architecture.”
`PO Resp. 32 (citing Ex. 2041 ¶¶ 66–70).
`We find that both parties propose similar definitions for the level of
`ordinary skill in the art, with slight variations in the types of professional
`experience. Specifically, Petitioner proposes a narrower field of experience
`(“the field of authentication, verification, and/or error detection in the
`context of computer hardware and/or software”), whereas Patent Owner
`proposes a broader field of experience (“the field of computer architecture”).
`Neither party argues that the level of ordinary skill determines the outcome
`of the patentability analysis. See Pet., PO Resp., passim.
`To the extent necessary herein, we apply Patent Owner’s definition of
`the level of ordinary skill in the art. We determine the definition offered by
`Patent Owner is consistent with the teachings of the ’670 patent and the prior
`art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
`2001) (noting that the prior art itself may reflect an appropriate level of skill
`in the art). We note, however, that neither party explains how the
`differences in the parties’ competing proposals are material to the issues
`before us. We further note that our adoption of Patent Owner’s proposed
`definition does not reflect a view that adopting Petitioner’s competing
`definition of the level of ordinary skill in the art would have any impact on
`the outcome of this proceeding. To the contrary, our conclusions would be
`the same under either party’s definition.
`B. Claim Construction
`We apply the claim construction standard used to construe the claims
`in a civil action under 35 U.S.C. § 282(b) articulated in Phillips v. AWH
`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b)
`(2019). Under the Phillips standard, claim terms must be given “the
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`IPR2020-00726
`Patent 8,112,670 B2
`meaning that the term would have to a person of ordinary skill in the art in
`question at the time of the invention.” 415 F.3d at 1313.
`
`1. “Fault inspection program”
`Independent claims 1 and 4 recite a “fault inspection program.”
`Petitioner asserts that the ’670 patent explains that a “fault inspection
`program” is “a program for inspecting whether or not a fault such as
`damage, change or falsification occurs in the programs or data.” Pet. 20
`(citing Ex. 1001, 1:22–25); Reply 6–7. Petitioner argues that “fault” is not
`limited to mean only damage to the memory device and “change or
`falsification” to the programs. Reply 6–7. Petitioner emphasizes that the
`fault inspection program inspects faults in either the hardware or software
`because the Specification of the ’670 patent does not disclose any
`requirement to inspect both hardware and software. Id. at 7 (citing Ex. 1001,
`1:17–18, 4:6–10, claims 1 and 4).
`Patent Owner contends that the proper construction of “‘fault
`inspection program’ is ‘a program, other than a boot program, that inspects
`a memory device for faults, including damage to the memory device and
`change or falsification of programs stored thereon.’” PO Resp. 23 (citing
`Ex. 2041 ¶¶ 79–82) (bolding omitted). With this definition, Patent Owner
`contends that the fault inspection program: (1) is other than a boot program,
`and (2) inspects for faults including damage to the memory device and
`change or falsification of stored programs. See id. at 23–28. We address
`each contention below.
`Patent Owner argues that, during prosecution of the ’988 patent, the
`Applicant distinguished a prior art reference (Bizzarri7) “on the basis that
`
`
`7 US 5,732,268, issued Mar. 25, 1998 (“Bizzarri,” Ex. 2001).
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`IPR2020-00726
`Patent 8,112,670 B2
`that ‘the boot program and the fault inspection program are distinct.’” Id. at
`23 (quoting Ex. 1025, 66) (bolding omitted). Patent Owner argues that this
`“statement defines the meaning of the terms, and should control their
`construction.” Id. (citing ProMOS Techs., Inc. v. Samsung Elecs. Co., 809
`F. App’x 825, 832 (Fed. Cir. 2020) (nonprecedential)); see also PO Sur-
`reply 8 (citing MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323,
`1330 (Fed. Cir. 2007)). Patent Owner argues that “fault inspection program”
`and “boot program” are separately listed claim elements and are thus
`mutually-exclusive parts of the claimed invention. PO Resp. 24–25 (citing
`Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254
`(Fed. Cir. 2010)). Patent Owner further argues that the Specification
`describes “boot program” and “fault inspection program” as “distinct
`programs stored in distinct portions of the ROM.” See id. at 24, 26–27
`(citing Ex. 1001, 2:46–56, 3:59–4:9, Fig. 1).
`Petitioner responds that “Patent Owner’s construction improperly
`reads in numerous unclaimed limitations and is contrary to the intrinsic
`record.” Pet. Reply 2. Petitioner asserts that Patent Owner’s alleged
`prosecution history disclaimer during the prosecution of the ’988 patent
`addressed a claim that recited both a “boot program” and a “fault inspection
`program,” unlike claim 1 of the ’670 patent. Id. at 3–4. Petitioner further
`asserts that, to the extent the Specification describes embodiments in which
`“a ‘fault inspection program’ and a ‘boot program’ are stored in distinct
`portions of the ROM,” the limitations of specific embodiments should not be
`read into the claims. Id. at 4.
`We agree with Petitioner. As we determined in our Decision on
`Institution, the ’670 patent indicates that the “fault inspection program” is “a
`program for inspecting whether or not a fault such as damage, change or
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`IPR2020-00726
`Patent 8,112,670 B2
`falsification occurs in the programs or data.” Ex. 1001, 1:22–25; Dec. 17.
`We see nothing in the record that precludes the “fault inspection program”
`from also being a “boot program.” Although Patent Owner contends that it
`presented this argument during the prosecution of the ’988 patent, we are not
`persuaded to limit the scope of “fault inspection program” as recited in the
`claims of the ’670 patent. Importantly, Patent Owner does not present any
`persuasive evidence or argument as to whether the claims of the ’988 patent
`are substantially similar to those of the ’670 patent, or why Applicant’s
`statement during the prosecution of a parent to the ’670 patent necessitates a
`narrowing of the scope of the meaning of the term “fault inspection
`program” for the claim scope of the ’670 patent. That is, even if we were to
`consider Applicant’s statement as a disclaimer, we are left to speculate how
`to construe “fault inspection program” as being distinct from the boot
`program in the claims of the ’670 patent.
`Accordingly, as we did in the Decision on Institution, we construe
`“fault inspection program” to be “a program for inspecting whether or not a
`fault such as damage, change or falsification occurs in the programs or
`data.”
`Second, Patent Owner argues that “[a] ‘fault inspection program’ must
`be capable of inspecting both hardware and software faults.” PO Sur-Reply
`1; PO Resp. 45–47 (bolding omitted). Again, Patent Owner argues that,
`during prosecution of the ’988 patent, “Applicant reiterated the conjunctive
`construction of ‘or’ to overcome references such as Bizzarri, Chang, and
`Yamato.” PO Sur-Reply at 2–3 (citing Ex. 1025, 66, 97); see Tr. 45:10 –
`46:10. Patent Owner further argues that the Specification “compels a
`conjunctive interpretation of the word ‘or’” because “the specification
`confirms that in order to inspect whether a fault occurs in hardware or
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`IPR2020-00726
`Patent 8,112,670 B2
`software, the fault inspection program must be capable of detecting both
`types of faults.” Id. at 4 (citing PO Resp. 3–4; Ex. 1001, 4:6–9).
`Petitioner responds that the Specification lists non-limiting examples
`of faults, “such as” damage, change, or falsification in programs or data.
`Pet. Reply 2 (citing Ex. 1001, 1:22–25). Petitioner further asserts that
`requiring fault inspection of both hardware and software contradicts the
`Specification’s reference to inspecting a fault in “hardware or software.” Id.
`(citing Ex. 1001, 1:17–18).
`We agree with Petitioner. The ’670 patent states that “[t]he present
`invention relates to an information process device in which a fault in
`hardware or software is inspected.” Ex. 1001, 1:17–18. We find that a
`person of ordinary skill in the art would understand from the ’670 disclosure
`that the faults can be in either hardware or software, or both. We do not
`agree with Patent Owner that a person of ordinary skill in the art would
`understand that a description of faults as “software or hardware” uses “or” in
`the conjunctive sense to mean both software and hardware. See Tr. 45:23–
`46:6.
`
`2. “Boot program”
`Dependent claim 2 recites a “boot program executed when the gaming
`device is started to operate.” Petitioner argues that the boot program should
`be afforded its plain and ordinary meaning as a start-up program that enables
`a computer to load larger programs. Pet. 4; Reply 6 (citing Ex. 1003,
`¶¶ 155, 222–223). Petitioner explains that the Specification does not
`otherwise limit or diverge from the plain and ordinary meaning. Reply 5.
`Petitioner relies on two examples provided in the ’670 Specification to
`support its construction that the boot program may load larger programs (an
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`Patent 8,112,670 B2
`extended BIOS program and Operating System). Id. (citing Ex. 1001, 3:59–
`64).
`
`Patent Owner contends that a boot program is “a program that
`initializes various devices including the extended BIOS and the operating
`system.” PO Resp. 29 (citing Ex. 2041 ¶¶ 79–81). Patent Owner argues that
`the Specification supports this interpretation with two descriptions. First,
`the Specification discloses:
`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 System) in the hard disk 24 and the OS
`(Operating System) in the hard disk 24 is executed.
`Id. at 29 (quoting Ex. 1001, 3:57–62) (bolding omitted). Second, Patent
`Owner argues that the Specification refers to the ROM as “a boot ROM”
`because it loads and starts the OS. Id. (citing Ex. 1001, 3:65–67). Patent
`Owner further argues that the extrinsic evidence supports a construction that
`“a ‘boot program’ is a program that is ‘designed to start a computer’ and not
`simply any program that enables the computer to load a larger one.” PO
`Sur-reply 9–12 (citing Ex. 2041 ¶ 48; Ex. 1039, 39:20–41:3, 43:13–25).
`Petitioner responds that the Specification does not expressly define
`“boot program.” Pet. Reply 6. Rather, the Specification describes an
`exemplary embodiment of “a boot program here that loads other example
`programs.” Id. at 6 (citing Ex. 1001, 3:59–64). Petitioner distinguishes the
`Specification’s description from other definitional terminology. Id. at 7
`(citing American Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1361 (Fed.
`Cir. 2010)). Petitioner argues that “the example provided in the
`specification of a boot program that initializes both an extended BIOS and
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`IPR2020-00726
`Patent 8,112,670 B2
`an OS, is consistent with the broader plain and ordinary meaning of a startup
`program that loads larger programs.” Id. at 8.
`
`We are not persuaded by Patent Owner to limit the scope of the term
`“boot program” to “a program that initializes various devices including the
`extended BIOS and the operating system.” Rather, we agree with Petitioner
`that the term “boot program” should be afforded its plain and ordinary
`meaning of “a start-up program that enables a computer to load larger
`programs.” We agree with Petitioner that the example provided in the ’670
`Specification is consistent with the plain and ordinary meaning. The
`example provided in the ’670 patent Specification of a “boot program” is
`within the context of the ’670 patent and describes the various items that are
`initialized in the ’670 patent. A person with ordinary skill in the art would
`understand this example to be consistent with the plain and ordinary
`meaning of a “boot program” to mean “a start-up program that enables a
`computer to load larger programs.”
`C. Alleged Obviousness of Claims 1–4 over Sugiyama and Gatto
`Petitioner contends that claims 1–4 of the ’670 patent are unpatentable
`under 35 U.S.C. § 103(a) as obvious over Sugiyama and Gatto. Pet. 4–40.
`As discussed below, Petitioner has demonstrated by a preponderance of the
`evidence that claims 1–4 would have been obvious over Sugiyama and
`Gatto. See Pet. 4–40.
`1. Sugiyama (Ex. 1005)
`Sugiyama is directed to “a service program for executing failure
`diagnosis, restoration, or the like to processing means in a communication
`terminal.” Ex. 1005, code (57). Specifically, Sugiyama relates to a karaoke
`device that receives an application program, “for example, a karaoke
`performance processing program, a singing scoring program, or the like,”
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`over a communication network, and stores the application program on a hard
`disk drive. Id. ¶ 2.
`In an embodiment, a karaoke terminal 3 includes “CPU (processing
`means and writing means) 20 for controlling portions of the device
`according to various programs,” “ROM (non-volatile memory) 22,” “RAM
`23,” and “hard disk drive (magnetic storage means) 24.” Id. ¶ 10. ROM 22
`stores “a startup program necessary for starting up the karaoke terminal,” as
`well as “an initialization program P1 for initializing the hard disk drive 24
`and an HDD inspection program P2 for examining the hard disk drive 24.”
`Id. ¶ 11.
`When karaoke terminal 3 is turned on, if no abnormality occurs, “the
`application program stored in the application storage area 24a of the hard
`disk drive 24 is loaded into the RAM 23, and normal karaoke performance
`processing is performed.” Id. ¶ 22. If an abnormality does occur, “it is
`determined whether the abnormality is an abnormality relating to the hard
`disk drive 24.” Id. ¶ 23. In such case, “the CPU 20 executes the HDD
`inspection program P2 stored in the ROM 22.” Id. If there is no damage to
`the hard disk drive itself, for example, “when the stored data is destroyed, or
`the like, the initialization program P1 is executed by the CPU 20 . . . and
`initializes the hard disk drive 24.” Id. ¶ 24. Backup data may then be
`written to the hard disk drive. Id. If, on the other hand, “restoration is not
`possible, for example, when the hard disk drive 24 itself is damaged, the
`manufacturer of the karaoke terminal 3, a restoration company, or the like is
`requested for repairs.” Id.
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`2. Gatto (Ex. 1006)
`Gatto is directed to “[a] method for gaming terminals, gaming kiosks
`and lottery terminals to ensure that the code-signing verification process of
`downloaded game software can be trusted.” Ex. 1006, code (57).
`Specifically, when a game operator decides to deploy a new game, a game
`terminal downloads the code for the game and “executes a program to verify
`the code signature of the downloaded code.” Id. at 10:2–7. “If the
`downloaded code can be trusted (successfully passes the verification), it is
`stored locally in persistent memory in the gaming machine.” Id. at 10:9–10.
`When the downloaded code is executed, “the stored signed code is retrieved
`. . . and its code signature is verified.” Id. at 10:14–15. “If the retrieved
`downloaded code cannot be trusted, the code is trashed or quarantined”;
`otherwise, “[i]f the retrieved downloaded code can be trusted, it is
`executed.” Id. at 10:15–17. But, because the code-signing verification
`process “itself might be a fraudulent verification process,” Gatto also
`“verif[ies] that the code-signing verification platform can be trusted.” Id. at
`13:11–16.
`
`3. Analysis of Claim 1
`a) Petitioner’s Arguments
`The preamble of claim 1 recites a “gaming device configured to
`execute a game.” Ex. 1001, 4:61. Petitioner argues that, to the extent the
`preamble is limiting, Sugiyama teaches “a communication terminal’
`configured to execute an ‘application program, for example, a karaoke
`performance processing program, a singing scoring program, or the like,’”
`which a “PHOSITA would have understood . . . is a type of ‘game.’” Pet. 8
`(citing Ex. 1005 ¶ 2; Ex. 1003 ¶ 126). Petitioner also argues that, to the
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`Patent 8,112,670 B2
`extent Sugiyama’s communication terminal is not considered a gaming
`device, Gatto discloses a “software verification process applicable to
`download gaming machine software and games, such as for use in a casino.”
`Id. at 11 (citing Ex. 1006, 1:3–4, 9:27–28, 10:2–17, Fig. 1; Ex. 1003 ¶¶ 70,
`127, 125–130). Petitioner asserts that a person with ordinary skill in the art
`would have modified Sugiyama’s terminal to execute a gaming application
`program instead of a karaoke application program because “the modification
`is nothing more than simple substitution of one form of executable program
`for another, yielding a predictable result (i.e., a communication terminal
`configured to execute game application programs).” Id. at 11–12 (citing
`Ex. 1003 ¶¶ 125–130).
`Claim 1 further recites “a mother board on which a first memory
`device is provided.” Ex. 1001, 4:64. Petitioner contends that the
`combination of Sugiyama and Gatto discloses this limitation. Pet. 12–17.
`Petitioner argues that Sugiyama teaches a first memory device, specifically,
`a ROM that is connected to a bus within a communication terminal. Id. at
`12–13 (citing Ex. 1005 ¶ 10). Petitioner further contends that Gatto
`discloses “a motherboard with non-volatile memory components (such as
`ROM or BIOS) provided thereon and persistent storage media (e.g., HDD or
`flash memory) connected thereto.” Id. at 14 (citing Ex. 1006, 4:25, 5:25–26,
`6:26, 7:12–17, 13:28–30, 18:25–29, 20:26–30, 22:5–9, 23:19–25; Ex. 1003
`¶¶ 73–76, 131–135). Petitioner argues that a person with ordinary skill in
`the art would have modified Sugiyama to include the ROM connected to the
`motherboard because it “amounts to a combination of known elements (i.e.,
`printed circuit boards and common computing components, such as a CPU,
`RAM, ROM, and HDD) according to known methods (i.e., electrically
`connecting the components on a main (‘mother’) board) to obtain a
`
`16
`
`
`
`IPR2020-00726
`Patent 8,112,670 B2
`predictable result—that the components would have worked together in a
`gaming machine or other computer system, such as a karaoke terminal.” Id.
`at 16 (citing Ex. 1003 ¶¶ 131–135).
`Claim 1 also recites “a second memory device configured to store a
`game application program, the second memory device being connected to
`the mother board.” Ex. 1001, 4:65–67. Petitioner argues that the
`combination of Sugiyama and Gatto discloses this limitation. Petitioner
`argues that Sugiyama teaches a second memory device, specifically a “‘hard
`disk drive (HDD),’ configured to store a game application program such as a
`karaoke ‘singing scoring program.’” Pet. 17 (citing Ex. 1005 ¶¶ 2, 10, 12).
`Petitioner further argues that Gatto discloses connecting a second memory
`device to a motherboard for the same reasons discussed above. Id.
`Claim 1 additionally recites “a control device for executing a fault
`inspection program for the second memory device to inspect whether or not
`a fault occurs in the second memory device.” Ex. 1001, 5:1–3. Petitioner
`argues that Sugiyama teaches “a control device, namely the ‘CPU,’ for
`executing a fault inspection program such as ‘HDD inspection program
`P2.’” Pet. 20 (citing Ex. 1005 ¶ 23). Petitioner argues that “‘HDD
`inspection program P2’ inspects whether or not a fault occurs in the second
`memory device (i.e., ‘hard disk drive (HDD)’).” Id. (citing Ex. 1005 ¶ 23).
`As discussed above, a fault inspection program is “a program for inspecting
`whether or not a fault such as damage, change or falsification occurs in the
`programs or data.” Id. Petitioner contends that Sugiyama discloses that the
`CPU executes a process for examining and restoring failures of an area for
`storing an application program, such as the HDD. Id. at 21 (citing Ex. 1005,
`abstract). Specifically, Petitioner argues Sugiyama discloses that, after an
`initial startup program, “‘recovery processing’ steps Sa2 and relevant steps
`
`17
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`
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`IPR2020-00726
`Patent 8,112,670 B2
`Sa4 through Sa16 are executed by CPU 20.” Id. (citing Ex. 1005 ¶¶ 22–28).
`According to Petitioner, first it is determined whether an abnormality has
`occurred in the terminal (step Sa2) and whether the abnormality relates to
`HDD 24 (step Sa4). Id. at 22 (citing Ex. 1005 ¶ 22, Fig. 5). That is,
`Petitioner argues that steps Sa2 and Sa4 through Sa11 are collectively a fault
`inspection program. Id. at 25 (citing Ex. 1005, Fig. 5). Alternatively,
`Petitioner argues that step Sa5 (“Execute HDD inspection program P2”) is a
`fault inspection program by itself. Id. (citing Ex. 1005, Fig. 5).
`Claim 1 further recites “wherein the fault inspection program is stored
`in the first memory device, and the control device completes the execution
`of the fault inspection program before the game is started.” Ex. 1001, 5:4–7.
`Petitioner argues that Sugiyama “teaches that the fault inspection program
`(e.g., ‘HDD inspection program P2’ alone or in combination with processing
`steps Sa2 and Sa4 through Sa11 of Fig. 5) is stored in the first memory
`device (i.e., ROM)” and is separate from the hard disk drive. Pet. 26–28
`(citing Ex. 1005 ¶¶ 11, 22, 23, 30, Fig. 3, Fig 5). Petitioner further argues
`that the “‘HDD inspection program 22’ is executed in step Sa5, which
`occurs before the game begins in step Sa3.” Id. at 28.
`Petitioner argues that “[i]t would have been obvious to a PHOSITA to
`implement the communication terminal of Sugiyama as a gaming device
`instead of (or in addition to) a karaoke device” because “the modification is
`nothing more than simple substitution of one form of executable program for
`another, yielding a predictable result.” Pet. 12. In addition, Petitioner
`argues that “Gatto recognizes that communication terminals have been
`capable of receiving new games and updated software via downloads and
`executing such downloaded programs since the late 1980s.” Id. (citing
`Ex. 1006, 1:6–8). Alternatively, Petitioner asserts that Gatto discloses that
`
`18
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`IPR2020-00726
`Patent 8,112,670 B2
`“it is significantly easier to detect fraudulent code prior to its execution than
`prevent someone to introduce fraudulent code somewhere amongst the
`gigantic storage disk space, by numerous means, and at unpredictable
`times.” Id. at 31 (quoting Ex. 1006, 29:13–18).
`
`b) Patent Owner’s Arguments
`(1) Separate “fault inspection program”
`Patent Owner argues that Sugiyama does not disclose a “fault
`inspection program” separate from a “boot program.” PO Resp. 37. Patent
`Owner argues that Sugiyama’s steps Sa1–Sa11 are assigned to one of a
`“Startup program,” “HDD inspection program P2,” or “Initialization
`program P1,” none of which can be considered the claimed “fault inspection
`program.” See id. at 38–39.
`First, Patent Owner argues that Sugiyama’s “HDD inspection program
`P2” is not a “fault inspection program” because it “does not ‘inspect whether
`or not a fault occurs in’ the second memory device or the game application
`program.” Id. at 39. Patent Owner argues that “HDD Inspection program
`P2” (step Sa5) “merely ‘checks the details’ of an abnormality that was
`already previously identified by [the] Startup program.” Id. at 39 (citing
`Ex. 1005 ¶ 23).8 Patent Owner argues that because “Startup program” step
`Sa2 identifies an abnormality, “HDD inspection program P2” does not
`
`
`8 Patent Owner argues that Sugiyama’s “Initialization Program P1,”
`including steps Sa7–Sa10, is not a fault inspection program. See PO Resp.
`44. Patent Owner argues that steps Sa7–Sa10 are remediation steps
`performed “only after an error has been detected and are, therefore, not part
`o
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