Trials@uspto.gov
`571-272-7822
`
`Paper No. 26
`Entered: November 22, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
` SONY INTERACTIVE ENTERTAINMENT LLC,
`Petitioner,
`v.
`BOT M8, LLC,
`Patent Owner.
`
`IPR2020-00922
`Patent 8,078,540 B2
`
`Before, KALYAN K. DESHPANDE, JAMES A. TARTAL, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
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`IPR2020-00922
`Patent 8,078,540 B2
`We have jurisdiction to conduct this inter partes review
`under 35 U.S.C. § 6. This Final Written Decision is issued pursuant
`to 35 U.S.C. § 318(a) (2018) and 37 C.F.R. § 42.73 (2019). For the reasons
`discussed below, we determine Sony Interactive Entertainment LLC
`(“Petitioner”)1 has shown by a preponderance of the evidence that
`claims 1–6 (“the Challenged Claims”) of U.S. Patent No. 8,078,540 B2
`(Ex. 1001, “the ’540 patent”) are unpatentable.
`I. INTRODUCTION
`A. Summary of Procedural History
`Petitioner filed a Petition pursuant to 35 U.S.C. §§ 311–319
`requesting an inter partes review of the Challenged Claims. Paper 2
`(“Pet.”). We instituted an inter partes review of the Challenged Claims on
`all grounds of unpatentability asserted in the Petition. Paper 9 (“Inst. Dec.”).
`Bot M8, LLC (“Patent Owner”)2 filed a Patent Owner Response. Paper 13
`(“PO Resp.”). Petitioner filed a Reply to the Patent Owner Response.
`Paper 16 (“Pet. Reply”). Patent Owner filed a Sur-reply. Paper 17
`(“PO Sur-reply”).
`Oral argument was held and a transcript of the hearing appears in
`the record. Paper 25 (“Tr.”). Petitioner bears the burden of proving
`unpatentability of each claim challenged by a preponderance of the
`evidence, and the burden of persuasion never shifts to Patent Owner.
`See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d); Dynamic Drinkware, LLC v.
`Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`
`
`1 Petitioner identifies itself and Sony Corporation, Sony Corporation of
`America, and Sony Interactive Entertainment, Inc., as real parties in interest.
`Pet. 70.
`2 Patent Owner identifies no additional real parties in interest. Paper 4, 1.
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`Patent 8,078,540 B2
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`B. Related Proceedings
`The parties identify BOT M8, LLC v. Sony Corporation of America,
`3:19-cv-07027 (NDCA) as a related proceeding. Petitioner explains that
`the ’540 patent was a subject of that case, but that it “has been dismissed due
`to failure to state of [sic] claim of infringement.” Pet. 70; Paper 4, 1. The
`parties identify no additional related matters. See id.
`C. The ’540 Patent
`The ’540 patent, titled “Gaming Machine, Gaming Information
`Authentication and Acquisition Device, and Gaming Information
`Acquisition Device,” issued December 13, 2011, from an application filed
`on February 16, 2010, which was a continuation of an application filed on
`April 17, 2006, that issued as U.S. Patent No. 7,693,282 (“the ’282 patent”).
`Ex. 1001, codes (21), (22), (45), (54), (63). The ’540 patent is directed to
`“a gaming machine, a gaming information authenticating and loading
`device, and a loading device for loading gaming information, whereby
`gaming information recorded on a portable storage medium can be
`authenticated.” Id. at 1:18–22.
`The ’540 patent explains, as background, that in “gaming machines”
`a “gaming program” is supplied “by means of a storage medium,” such as a
`“compact flash memory,” and is used to control “gaming information”
`consisting of the operations required for playing the game. Id. at 1:23–42.
`In prior systems, according to the ’540 patent, the storage medium is
`detachable and at risk of “illegal actions, such as duplicating or manipulating
`the gaming information stored on the medium.” Id. at 1:43–48. The
`’540 patent also states that prior systems authenticated only the storage
`medium, not “the actual gaming information,” which may have been
`manipulated in some way. Id. at 2:14–20.
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`Patent 8,078,540 B2
`The ’540 patent purports to resolve the issues identified with the prior
`systems by describing a system “whereby the gaming information stored on
`a storage medium can be authenticated.” Id. at 2:37–42; see also Pet. 1
`(stating that according to the ’540 patent “the prior art only authenticated the
`medium on which the game program was stored, not the game program
`itself,” and purports to solve this problem “by authenticating the game
`program, not just the storage medium, thereby preventing game-program
`modification”).
`Figure 1 of the ’540 patent is reproduced below.
`
`Figure 1 is “a block diagram showing the general constitution of a gaming
`information authenticating and loading device 1,” including gaming
`board 10 (a “loading device”) and motherboard 20 (a “processing device”).
`Id. at 5:25–30. Game program 30a and game system program 30b “form the
`
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`Patent 8,078,540 B2
`gaming information . . . and are stored on memory card 30.” Id. at 5:34–39.
`Gaming board 10, with card slot 12, CPU 17, and boot ROM 11, “loads a
`game program 30a and a game system program 30b . . . in the
`motherboard 20 from a memory card 30.” Id. at 5:40–46. PCI bus 31
`transmits signals between motherboard 20 and gaming board 10. Id. at
`5:49–52. “[C]ard slot 12 is connected to the motherboard 20 by means of
`an IDE bus 32.” Id. at 6:18–19.
`“The boot ROM 11 stores an authentication program (first
`authentication program) 11a, a preliminary authentication program (second
`authentication program) 11b, . . . and a program (boot code) . . . for booting
`(starting up) the CPU 17 and the preliminary authentication program 11b.”
`Ex. 1001, 5:52–58. Authentication program 11a “states a procedure
`(authentication procedure) for authenticating the gaming information, in
`other words, checking and verifying that the gaming information, which is
`the object of the authenticating and loading process, has not been
`manipulated.” Id. at 61–65. “[P]reliminary authentication program 11b
`states a procedure (authentication procedure) for authenticating the
`authentication program 11a” to verify “that the authentication program 11a
`has not been manipulated.” Id. at 6:8–13.
`Motherboard 20 is a “generic motherboard” and includes
`CPU (Central Processing Unit) 21, ROM (Read Only Memory) 22,
`RAM (Random Access Memory) 23, and I/O port 24 connected to PCI
`bus 31 and IDE bus 32. Id. at 6:25–32; see also id. at 11:12–17 (stating that
`“motherboard 20 is constituted by a commercially available generic
`motherboard, the motherboard 20 has highly generic characteristics and,
`consequently, it is possible to reduce manufacturing costs”). ROM 22 stores
`programs, such as BIOS 22a (standard BIOS on the motherboard 20), which
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`Patent 8,078,540 B2
`is executed by main CPU 21, and permanent data. Id. at 6:33–36. When
`BIOS (Basic Input/Output System) 22a, stored on ROM 22, is executed by
`CPU 21, “then prescribed initialization processing of the peripheral device is
`carried out, and a process for reading the game program 30a and the game
`system program 30b stored in the memory card 30 via the gaming board 10
`is started.” Id. at 6:36–40. “RAM 23 can store, at the least, an
`authentication program 11a read out via the gaming board 10, and the game
`program 30a and the game system program 30b.” Id. at 6:45–48.
`Petitioner summarizes the operation described by the ’540 patent as
`“authenticating the game program . . . by providing an ‘authentication
`program’ on a first circuit board with the game program and a processor on
`the motherboard that executes the authentication program to verify that the
`game program has not been modified.” Pet. 1 (citing Ex. 1001, 2:37–42,
`5:40–6:43); see also PO Resp. 18 (describing the ’540 patent as providing,
`separate from motherboard 20, a gaming board 10 that “stores the gaming
`information until it can be verified and transferred to the motherboard,
`thereby adding a layer of protection between the gaming information and the
`motherboard”) (citing Ex. 1001, 10:1–11, 10:49–62), 19–22 (describing the
`“unique configuration by which the system has an ability to check the status
`of a board having a memory before any operating-system applications are
`permitted to access the memory” purportedly disclosed by the ’540 patent)
`(citations omitted), 22–25 (describing the “strong authentication sequence
`via the unique interfaces” purportedly disclosed by the ’540 patent).
`D. Illustrative Claim of the ’540 Patent
`Petitioner challenges claims 1–6 of the ’540 patent. Pet. 1. Claims 1
`and 4 are independent, with claim 1 reciting “[a] gaming machine” and
`claim 4 reciting “[a] method of controlling a gaming machine.” Ex. 1001,
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`Patent 8,078,540 B2
`12:64–13:25, 13:47–14:24. Claims 2 and 3 depend from claim 1. Claims 5
`and 6 depend from claim 4. Id. at 13:26–46, 14:25–49. Claim 1 is
`illustrative of the claimed subject matter and is reproduced below.
`1. A gaming machine, comprising:
`(i) a board including a memory in which a game program for
`executing a game and an authentication program for
`authenticating the game program are stored;
`(ii) a motherboard which is different from the board and connects
`to the board, the motherboard including another memory
`which is different from the memory, said another memory
`configured to read out and store the game program stored in
`the memory; and
`(iii) a CPU which is provided on the motherboard, for executing
`the game based upon the game program stored in said another
`memory, the CPU being configured to:
`(a) read out the authentication program from the memory of
`the board, and then, store the read out authentication
`program in said another memory of the motherboard;
`(b) execute the authentication program stored in said another
`memory in the process (a), and then, authenticate the game
`program in the memory of the board, based upon the
`executed authentication program;
`(c) write the game program in the memory of the board, to
`said another memory of the motherboard, in a case where
`the game program in the memory of the board is
`authenticated as a result of the authentication process (b);
`and
`(d) execute the game based upon the game program written to
`said another memory of
`the motherboard
`in
`the
`process (c).
`Id. at 12:64–13:25.
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`IPR2020-00922
`Patent 8,078,540 B2
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`E. References and Testimony
`Below we provide an abbreviated summary of the qualifications of
`Dr. Andrew Wolfe, who provides testimony in support of Petitioner, and
`Dr. Long Yang, who provides testimony in support of Patent Owner. We
`also provide a table identifying the primary references relied upon by
`Petitioner, as well as the exhibits corresponding to the declarations and
`deposition testimony in the record for Dr. Wolfe and Dr. Yang.3
`Dr. Wolfe received a B.S. degree in Electrical Engineering and
`Computer Science from the Johns Hopkins University, as well as a
`M.S. degree in Electrical and Computer Engineering and a Ph.D. degree in
`Computer Engineering from Carnegie Mellon University. Ex. 1003 ¶ 6. He
`was as Assistant Professor of Electrical Engineering at Princeton University
`from 1991 through 1997, where he taught “undergraduate and graduate-level
`courses in Computer Architecture, Advanced Computer Architecture,
`Display Technology, and Microprocessor Systems courses, as well as
`conducting sponsored research in the area of computer systems and related
`topics.” Id. ¶ 12. Dr. Wolfe states that he has “published more than 50 peer-
`reviewed papers in computer architecture and computer systems design,” has
`chaired conferences in microarchitecture and integrated circuit design, and is
`“a named inventor on at least fifty-six U.S. patents and thirty-seven foreign
`patents.” Id. ¶ 14.
`Dr. Wolfe details various positions he has held in private industry. Id.
`¶¶ 5, 7, 9–11, 13; see also Ex. 1004 (the curriculum vitae of Dr. Wolfe
`identifying prior employment). Dr. Wolfe states that he is currently a
`
`3 The table provided identifies only a select number of documents.
`A complete identification of the papers and exhibits that form the record of
`this case is available in the docket of this proceeding.
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`Patent 8,078,540 B2
`consultant who provides “technical and business analysis to businesses on
`processor technology, computer systems, display technology, consumer
`electronics, software, design tools, data security, cryptography, and
`intellectual property issues,” as well as “a lecturer at Santa Clara University,
`teaching courses on Microprocessor Systems, Real-time Embedded Systems,
`and Mechatronics in the Electrical and Computer Engineering, Computer
`Science and Engineering, and Mechanical Engineering departments.” Id.
`¶¶ 5, 12.
`Dr. Yang received a Bachelor of Science degree in Electrical
`Engineering from National Taiwan University, as well as a Master of
`Science and a Doctorate Degree in Electrical and Computer Engineering
`from University of California, Santa Barbara. Ex. 2041 ¶ 3. Dr. Yang states
`that he “was Vice President of Engineering or Vice President of Research
`Development for many high-tech companies in Silicon Valley, including
`Toshiba America Electronic Components,” where he “led teams of scientists
`and engineers to develop new technologies/products in the field of
`optoelectronics, displays, telecommunication, and semiconductors.” Id. ¶ 4,
`App. A (curriculum vita of Dr. Yang identifying prior employment).
`Dr. Yang has “authored and co-authored over 46 publications in a large
`variety of technical fields, including semiconductor, laser, display, LEDs,
`epitaxy, etc.,” “was invited to give presentations in renowned international
`conferences,” and is a named inventor on 43 U.S. Patents “generally related
`to semiconductor laser, fiber optics, optical switches, visible LEDs, high-
`definition TV, and high voltage transistors.” Id. ¶ 5. Dr. Yang states that he
`is a registered patent agent and that he is currently employed as a scientific
`advisor at Kramer Levin Naftalis & Frankel LLP, the law firm representing
`Patent Owner in this proceeding. Id. ¶¶ 4, 7.
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`Ex. No.
`Date
`References and Witness Testimony
`Ex. 1005
`U.S. Patent No. 6,565,443 B1 (“Johnson”) May 20, 2003
`Ex. 1006
`US 2003/0130032 A1 (“Martinek”)
`July 10, 2003
`Ex. 1007
`US 2006/0101310 A1 (“Diamant”)
`May 11, 2006
`US 2004/0054952 A1 (“Morrow ’952”)
`March 18, 2004 Ex. 1009
`US 2003/0064771 A1 (“Morrow ’771”)
`April 3, 2003
`Ex. 1010
`Declaration of Andrew Wolfe, PhD.
`May 15, 2020
`Ex. 1003
`Deposition Transcript of Dr. Wolfe
`Feb. 3, 2021
`Ex. 2014
`Declaration of Dr. Long Yang
`Feb. 16, 2021
`Ex. 2041
`Deposition Transcript of Dr. Yang
`May 4, 2021
`Ex. 1041
`
`References/Basis
`
`F. Asserted Grounds of Unpatentability
`Petitioner asserts that the Challenged Claims are unpatentable based
`on the following grounds:
`Claims
`Challenged 35 U.S.C. §
`Johnson, Martinek
`1, 4
`103(a)
`Johnson, Martinek, Diamant
`2, 3, 5, 6
`103(a)
`Morrow ’952, Morrow ’771, Diamant
`1, 4
`103(a)
`Pet. 2–3.4 More specifically, Petitioner contends, for example, that claims 1
`and 4 are obvious over Johnson “in view of” Martinek. Id. In its analysis,
`however, Petitioner makes clear that it relies on Martinek “[t]o the extent
`additional disclosure is required.” See, e.g., id. at 9. Similarly, for
`
`
`4 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. §§ 102, 103 that became effective on March 16, 2013. Pub. L.
`No. 112-29, §§ 3(b)–3(c), 3(n)(1), 125 Stat. 284, 285–87, 293 (2011).
`Because there is no dispute that the ’540 patent claims have an effective
`filing date before March 16, 2013, we apply the pre-AIA versions of these
`statutes.
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`obviousness based on Morrow ’952, Petitioner includes discussion of
`Morrow ’771 and Diamant “[t]o the extent additional disclosure is needed,”
`or as an “alternative” or “addition” to what Morrow ’952 suggests. See, e g.,
`id. at 57, 58, 67. Accordingly, our analysis of the grounds below includes
`consideration of whether Petitioner has shown obviousness based on
`Johnson, alone, or based on Morrow ’952, alone.
`II. ANALYSIS OF PATENTABILITY
`A. Principles of Law
`Petitioner contends under three grounds that claims of the ’540 patent
`are unpatentable based on obviousness. Pet. 2–3. As set forth in 35 U.S.C.
`§ 103(a),
`[a] patent may not be obtained . . . if the differences between the
`subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the
`time the invention was made to a person having ordinary skill in
`the art to which said subject matter pertains.
`The question of obviousness is resolved on the basis of underlying factual
`determinations including (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of ordinary skill in the art; and (4) when in evidence, objective evidence of
`nonobviousness.5 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`An obviousness analysis “need not seek out precise teachings directed to the
`specific subject matter of the challenged claim, for a court can take account
`of the inferences and creative steps that a person of ordinary skill in the art
`would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007);
`accord In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007).
`
`
`5 Neither party addressed objective evidence of nonobviousness.
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`However, Petitioner cannot satisfy its burden of proving obviousness by
`employing “mere conclusory statements.” In re Magnum Oil Tools
`Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Instead, Petitioner must
`articulate a reason why a person of ordinary skill in the art would have
`combined the prior art references. In re NuVasive, 842 F.3d 1376, 1382
`(Fed. Cir. 2016).
`
`B. Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted). Petitioner contends that a person of ordinary skill in the
`art at the time of the invention 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,” where “[a]dditional
`education may substitute for less experience and vice versa.” Pet. 2 (citing
`Ex. 1003 ¶¶ 50–52).
`Patent Owner argues that Petitioner’s proposed level of ordinary skill
`is “incorrect because it fails to account for the requisite technical knowledge
`of computer system design.” PO Resp. 15 (citing Ex. 2041 ¶ 77).
`According to Patent Owner, a person of ordinary skill would have had “the
`equivalent of at least an undergraduate degree in computer engineering,
`electrical engineering, or a similar technical field, and with three to five
`years of experience in the field of computer system designs, and also [would
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`Patent 8,078,540 B2
`have had] knowledge in authentication, verification, and/or error detection in
`the context of computer hardware and/or software.” Id. (citing Ex. 1041
`¶ 76). Patent Owner further states that a person of ordinary skill requires
`one who would have had “knowledge far beyond the curriculum of a typical
`undergraduate computer science program,” including “a clear understanding
`of computer system design and, in particular, how to interface with a
`daughterboard through a PCI interface.” Id. at 16 (citing Ex. 1041 ¶ 78). In
`short, Patent Owner proposes a higher level of ordinary skill than Petitioner.
`During oral argument, Petitioner indicated that any difference
`between the levels of ordinary skill proposed by the parties was not material
`to their dispute. Tr. 16:13–17:9. Likewise, Patent Owner further confirmed
`that any disagreement with Petitioner’s proposed level of ordinary skill had
`“no material impact.” Id. at 42:12–22.
`We apply Petitioner’s definition of the level of ordinary skill in the
`art. We determine the definition offered by Petitioner is consistent with the
`teachings of the ’540 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). Neither party
`contends the differences in their competing proposals are material to the
`issues before us and our adoption of Petitioner’s proposed definition does
`not reflect a view that adopting Patent Owner’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.
`
`C. Claim Construction
`“In an inter partes review proceeding, a claim of a patent . . . shall be
`construed using the same claim construction standard that would be used to
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`construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R.
`§ 42.100(b) (2019). That standard “includ[es] construing the claim in
`accordance with the ordinary and customary meaning of such claim as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent.” Id.; see also Phillips v. AWH Corp., 415 F.3d 1303
`(Fed. Cir. 2005) (en banc).
`Petitioner states that the “ordinary and customary meaning,” as
`understood by a person of ordinary skill in the art at the time of the
`invention, applies in this case and identifies in the Petition no claim term
`that requires express construction. Pet. 3. Patent Owner specifically
`addresses “read” and “configured to” in the claim construction portion of its
`Patent Owner Response, which we discuss below and conclude do not
`require express constructions.
`1. “read”
`Claim 1, for example, recites “memory configured to read out and
`store the game program,” as well as “the CPU being configured to: (a) read
`out the authentication program from the memory of the board, and then,
`store the read out.” Ex. 1001, 12:64–13:25. The Challenged Claims do not
`use the term “load,” but the Specification discusses at length “authenticating
`and loading device 1” (see, e.g., id. at 5:25–39), including that “gaming
`board 10 is a device which loads a game program 30a and a game system
`program 30b . . . in the motherboard 20” (id. at 5:42–46). Petitioner states
`that a person of ordinary skill in the art “would have recognized that the
`disclosed loading processes are reading out of one memory and storing in
`another.” Pet. 21 (citing Ex. 1003 ¶¶ 46–48, 159–162).
`According to Patent Owner, “read” and “load” have “different
`meanings in the context” of the ’540 patent. PO Resp. 26; see also PO Sur-
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`reply 1–4. Patent Owner directs us to the definitions provided by Dr. Wolfe
`on behalf Petitioner from the Microsoft Computer Dictionary. In his
`declaration, Dr. Wolfe explains as follows:
`[T]he 2002 edition of the Microsoft Computer Dictionary defines
`the term “load” as follows:
`load vb. To place information from storage into memory
`for processing, if it is data, or for execution, if it is program
`code.
`Microsoft Computer Dictionary (Ex. 1011) at 315. The Microsoft
`Computer Dictionary similarly defines the term “read” as
`follows:
`read vb. To transfer data from an external source, such as
`from disk or the keyboard, into memory or from memory
`into the Central Processing Unit (CPU).
`Microsoft Computer Dictionary (Ex. 1011) at 440.
`Ex. 1003 ¶ 46. Patent Owner purports to reproduce these definitions in its
`Response, but includes without identification or explanation modifications to
`the definition of “read” to show a division between parts Patent Owner
`labeled (i) and (ii) as follows:
`read vb. To transfer data (i) from an external source, such as
`from disk or the keyboard, into memory or (ii) from memory
`into the Central Processing Unit (CPU).
`PO Resp. 26 (misquoting Ex. 1003 ¶ 46 and Ex. 1011, 440).6 Patent Owner
`proceeds to argue that the ’540 patent uses “read” only “with the read (ii)
`
`
`6 Dr. Yang suggests that “[o]riginally, Microsoft Computer Dictionary’s
`definition of ‘read’ had ‘(i)’ and ‘(ii)’ inserted in its definition of ‘read,’
`which Petitioner apparently omitted.” Ex. 2041 ¶ 110. Dr. Yang does not
`identify any “original” version of the Microsoft Computer Dictionary to
`support his assertion and offers no explanation for why he suggests that
`Petitioner “apparently omitted” some portion of the definition where the
`definition provided by Dr. Wolfe is verbatim what appears in the exhibit
`Dr. Wolfe cites as support. Ex. 1003 ¶ 46 (quoting Ex. 1011, 440).
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`definition, . . . which is to transfer data from memory into the central
`processing unit.” Id. (emphasis omitted) (citing Ex. 2041 ¶ 113).
`Petitioner argues in response, and we agree, that “Patent Owner never
`cites to any intrinsic evidence from the patent to support this construction.”
`Pet. Reply 2. Counsel for Petitioner further stated during oral argument that
`Petitioner does not believe there is any material dispute between the parties
`over the meaning of “read,” because Patent Owner did not argue “that the
`prior art fails to teach ‘read’ as construed.” Tr. 13:2–14:5.
`Subsequently, during oral argument, counsel for Patent Owner
`explained that Patent Owner’s “concern in reference to the definition of
`‘read,’ . . . has been really related to the fact that the gaming information
`cannot be read into RAM until after the authentication is complete,” and that
`“[a]pparently, that’s no longer in dispute.” Id. at 43:20–44:2; see also id.
`at 37:18–23 (counsel for Petitioner confirming that Petitioner has not
`disputed Patent Owner’s position that the Challenged Claims “preclude
`writing the game program into RAM prior to authentication”). The issue
`was further clarified during the oral argument in the following exchange:
`JUDGE HAGY: Is there really a material dispute between the
`parties over the construction of “read”? In other words, does
`patent owner dispute that the prior art teaches transferring data
`from memory into the CPU, as is on your Slide 10?
`MR. FRANKEL: Well, the prior art shows that at some point in
`the process gaming information is put into the -- from memory
`into the CPU, but the dispute is, when it goes into the memory of
`the motherboard -- which, again, now the parties agree is
`required by the claim, so I don't think there’s a dispute before the
`Board anymore on the construction of “read.”
`Id. at 45:3–14. Accordingly, we find on the full record that there is no
`material dispute between the parties with regard to the meaning of “read,”
`and, further, that an express construction of “read” is not necessary.
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`See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed
`that are in controversy, and only to the extent necessary to resolve the
`controversy.”).
`2. “configured to”
`Claim 1 recites, for example, “the CPU being configured to.”
`Ex. 1001, 12:64–13:25. Patent Owner argues that “[t]he Federal Circuit has
`long construed the claim term ‘configured to’ to generally mean ‘adapted
`to,’ ‘made to,’ or ‘designed to’ perform the stated function(s),” and that in
`this proceeding it should be construed to mean “requiring structure designed
`to or configured to accomplish the specified objective, not simply that they
`can be made to serve that purpose.” PO Resp. 27 (citations omitted);
`see also PO Sur-reply 5–8. Petitioner argues that “[t]he use of the term
`‘configured to’ is not an invitation to read in limitations from the
`specification to require the specific hardware configuration described in
`exemplary embodiments in the specification,” and that “if the Board
`construes ‘configured to’ at all, it should confirm that ‘configured to’ does
`not limit the claim to only the specific structure disclosed in the ’540 Patent
`specification.” Pet. Reply 4–5. Further, according to Petitioner, “[b]eyond
`that issue, the meaning of the term ‘configured to’ is not otherwise in dispute
`between the parties and further construction is not necessary.” Id. at 5.
`During oral argument, as with the claim term “read” discussed above,
`Patent Owner similarly explained that “[t]he argument was the CPU has to
`be configured such that it will not be pulling gaming information into RAM
`until after authentication is complete, which is not in dispute.” Tr. 43:3–
`44:2. Patent Owner further confirmed that the use of “configured to” in
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`independent claim 1 of the ’540 patent was not a distinguishing
`characteristic for purposes of our patentability analysis over independent
`claim 4 of the ’540 patent, which does not recite “configured to.”
`Accordingly, we find on the full record that there is no material dispute
`between the parties with regard to the meaning of “configured to,” and,
`further, that an express construction of “configured to” is not necessary for
`purposes of this Decision.
`3. Other Claim Terms
`We find no other claim term requires an express construction for
`purposes of this Decision.
`D. Scope and Content of the Prior Art
`Petitioner relies on Johnson, Martinek, Diamant, Morrow ’952, and
`Morrow ’771, each of which we briefly summarize in relevant part below.
`1. Summary of Johnson
`Johnson, titled “System and Method for Verifying the Contents of a
`Mass Storage Device Before Granting Access to Computer Readable Data
`Stored on the Device,” states that it “relates to a general system and method
`for verifying the contents of a mass storage device before granting access to
`computer readable data stored on the device.” Ex. 1005, code (54), 1:9–12.
`More particularly, Johnson states that it “relates to a method and apparatus
`verifying the contents of a read-only mass storage device as part of a booting
`process of a computer system that is part of a computer controlled gaming
`machines before granting access to gaming application modules and data
`stored on the device.” Id. at 1:12–17. Johnson explains that “a procedure is
`needed to verify the approved media that is inspected by the regulators is
`used each time a computer controlled gaming machine operates.” Id.
`at 4:36–38.
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`Johnson summarizes one embodiment as follows:
`One such aspect of the present invention is a method for
`verifying the contents of a mass storage device attached to a
`computing system having a processor and system random access
`memory. The mass storage device has computer readable data
`stored therein. The method comprises first storing onto the mass
`storage device a mass storage verification module having a set of
`computer executable instructions for use in verifying the
`contents of the mass storage device. Next, the method stores a
`mass storage verification data for use in verifying the contents of
`the mass storage device onto the mass storage device. Before
`permitting an initial access to the computer readable data from
`the mass storage device, the method verifies the contents of the
`mass storage device by executing the instructions contained
`within the mass storage verification module to generate a set of
`computed verification data and comparing the set of computed
`verification data with the mass storage verificatio