IPR2020-01218
`U.S. Patent 8,095,990
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`SONY INTERACTIVE ENTERTAINMENT LLC
`Petitioner
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`v.
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`BOT M8 LLC
`Patent Owner
`____________
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`
`Case No. IPR2020-01218
`U.S. Patent No. 8,095,990
`____________
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`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,095,990
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`IPR2020-01218
`U.S. Patent No. 8,095,990
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`TABLE OF CONTENTS
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`INTRODUCTION ...................................................................................... 1
`I.
`SUMMARY OF THE ’990 PATENT ........................................................ 1
`II.
`A. DESCRIPTION OF THE ALLEGED INVENTION OF THE ’990 PATENT .................... 1
`B. SUMMARY OF THE PROSECUTION OF THE ’990 PATENT ................................... 2
`C. LEVEL OF SKILL OF A PERSON HAVING ORDINARY SKILL IN THE ART ............... 2
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§42.104 ................................................................................................................... 3
`A. GROUNDS FOR STANDING UNDER 37 C.F.R. §42.104(A) ................................. 3
`B. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. §42.104(B) AND RELIEF
`REQUESTED ......................................................................................................... 3
`C. CLAIM CONSTRUCTION UNDER 37 C.F.R. §42.104(B)(3) ................................ 4
`IS A REASONABLE LIKELIHOOD THAT THE
`IV. THERE
`CHALLENGED CLAIMS OF THE ’990 PATENT ARE UNPATENTABLE . 5
`A. GROUND 1: GAZDIC/RYAN ALONE OR IN VIEW OF DIAMANT RENDERS CLAIMS 1,
`5, AND 9 OBVIOUS. ............................................................................................... 5
`B. GROUND 2: GAZDIC/RYAN IN VIEW OF DIAMANT AND ALCORN RENDERS CLAIMS
`4, 8, 9 AND 10 OBVIOUS. .....................................................................................40
`C. GROUND 3: GAZDIC/RYAN IN VIEW OF DIAMANT, ALCORN, AND GATTO RENDERS
`CLAIMS 2-3 AND 6-7 OBVIOUS. ...........................................................................47
`D. GROUND 4: TAKEDA IN VIEW OF DIAMANT RENDERS CLAIMS 1, 5, AND 9
`OBVIOUS. ............................................................................................................49
`E. GROUND 5: TAKEDA IN VIEW OF DIAMANT AND ALCORN RENDERS CLAIMS 4, 8,
`9 AND 10 OBVIOUS. .............................................................................................75
`F. GROUND 6: TAKEDA IN VIEW OF DIAMANT, ALCORN, AND GATTO RENDERS
`CLAIMS 2-3 AND 6-7 OBVIOUS ............................................................................79
`V. CONCLUSION ......................................................................................... 80
`VI. MANDATORY NOTICES UNDER 37 C.F.R. §42.8(A)(1) .................... 81
`A. REAL PARTY-IN-INTEREST ...........................................................................81
`B. RELATED MATTERS .....................................................................................81
`C. LEAD AND BACK-UP COUNSEL ....................................................................82
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`I.
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`INTRODUCTION
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`IPR2020-01218
`U.S. Patent No. 8,095,990
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`Petitioner Sony Interactive Entertainment LLC requests Inter Partes Review
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`(“IPR”) of Claims 1-10 of U.S. Patent No. 8,095,990 (the “’990 Patent”). ’990
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`Patent (Ex. 1001).
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`II. SUMMARY OF THE ’990 PATENT
`A. Description of the alleged invention of the ’990 Patent
`The ’990 Patent describes a “gaming machine” that can “authenticate and load
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`gaming information stored in a portable storage medium.” ’990 Patent, 1:18-23. To
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`do this, it proposes using various “authentication” programs to verify the integrity
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`of the data, such as highlighted in Figure 1 below:
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`
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`Id., Fig. 1.
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` 1
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`Summary of the prosecution of the ’990 Patent
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`B.
`The application that issued as the ’990 Patent was filed on April 19, 2006, and
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`IPR2020-01218
`U.S. Patent No. 8,095,990
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`claims priority to two Japanese Applications, both filed on April 25, 2005.1 Id.
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`Following multiple rejections, Applicant amended the claims to add the
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`following limitation: “a removable storage medium storing therein gaming
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`information including a mutual authentication program.” Ex. 1002 (8/23/11 Claim
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`Amendment) at 410. The patent then issued. Id. at 423.
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`C. Level of skill of a person having ordinary skill in the art
`A person having ordinary skill in the art (“PHOSITA”) in April 2005 would
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`have the equivalent of at least an undergraduate degree in computer science,
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`computer engineering, electrical engineering, or a similar technical field, and with
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`one or more years of work experience in the field of computer hardware and/or
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`software authentication or verification. Additional education may substitute for less
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`work experience and vice versa. See Ex. 1003, Declaration of Andrew Wolfe (“Wolfe
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`Decl.”), ¶¶46-48.
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`1 For purposes of this Petition only, Petitioner does not contest this priority claim.
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`IPR2020-01218
`U.S. Patent No. 8,095,990
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`III.
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`REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37
`C.F.R. §42.104
`A. Grounds for standing under 37 C.F.R. §42.104(a)
`Petitioner certifies that the ’990 Patent is available for IPR and that the
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`Petitioner is not barred or estopped from challenging the claims of the ’990 Patent.
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`B.
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`Identification of challenge under 37 C.F.R. §42.104(b) and relief
`requested
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`IPR should be instituted, and Claims 1-10 of the ’990 Patent (“Challenged
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`Claims”) should be found unpatentable and cancelled based on the following
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`statutory rejections. 37 C.F.R. §42.104(b)(1)-(2).
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`Proposed Grounds of Unpatentability
`Ground 1: Claims 1, 5, and 9 are obvious under §103(a) in view
`of Publ. No. US 2005/0009599 (“Ryan”) (and incorporated by
`reference Publ. No. US 2003/0195033 (“Gazdic”)) (collectively,
`“Gazdic/Ryan”) alone or in view of Diamant.
`Ground 2: Claims 4, 8, 9 and 10 are obvious under §103(a) over
`Gazdic/Ryan in view of Diamant and Alcorn.
`Ground 3: Claims 2-3 and 6-7 are obvious under §103(a) over
`Gazdic/Ryan
`in view of Diamant, Alcorn, and Publ. No.
`2004/00198496 (“Gatto”)
`Ground 4: Claims 1, 5, and 9 are obvious under §103(a) in view
`of U.S. Patent No. 6,394,905 (“Takeda”) and Publ. No. US
`2006/0101310 (“Diamant”)
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`Exhibits
`1008, 1009,
`1006
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`1008, 1009,
`1006, 1007
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`1008, 1009,
`1006, 1007,
`1027
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`1005, 1006
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`IPR2020-01218
`U.S. Patent No. 8,095,990
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`Proposed Grounds of Unpatentability
`Ground 5: Claims 4, 8, 9 and 10 are obvious under §103(a) over
`Takeda in view of Diamant and U.S. Patent No. 6,149,522
`(“Alcorn”).
`Ground 6: Claims 2-3 and 6-7 are obvious under §103(a) over
`Takeda in view of Diamant, Alcorn and U.S. Patent No. 7,908,486
`(“Gatto”)
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`Exhibits
`1005, 1006,
`1007
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`1005, 1006,
`1007, 1027
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`Section IV identifies where each element of the Challenged Claims is found
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`in the prior art, including the relevance of the evidence to the challenges raised. 37
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`C.F.R. §42.104(b)(4)-(5). The exhibit numbers of the supporting evidence are
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`attached hereto. Exhibits 1001–1027.
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`C. Claim construction under 37 C.F.R. §42.104(b)(3)
`“In an inter partes review proceeding, a claim of a patent . . . shall be
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`construed using the same claim construction standard that would be used to construe
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`the claim in a civil action under 35 U.S.C. §282(b), including construing the claim
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`in accordance with the ordinary and customary meaning of such claim as understood
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`by one of ordinary skill in the art and the prosecution history pertaining to the
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`patent.” 37 C.F.R. §42.100(b) (as amended, effective Nov. 13, 2018); see Phillips
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`v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). Petitioner does not believe
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`that any terms need to be construed to resolve this IPR proceeding.
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`IPR2020-01218
`U.S. Patent No. 8,095,990
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`IV. THERE IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS OF THE ’990 PATENT ARE
`UNPATENTABLE
`A. Ground 1: Gazdic/Ryan alone or in view of Diamant renders
`Claims 1, 5, and 9 obvious.
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`Ryan incorporates Gazdic by reference in its entirety and, therefore, Ryan
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`expressly includes the teachings of Gazdic as if they were a single disclosure.2 Ryan,
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`[0001]. Accordingly, Petitioner will refer to the collective teachings of Ryan and
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`Gazdic as Gazdic/Ryan, but will specifically cite to each individually.3
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`Gazdic and Ryan published on October 16, 2003 and January 13, 2005,
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`respectively, qualifying as prior art under §102(a), (b) and/or (e) (pre-AIA). Gazdic
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`(Ex. 1008); Ryan (Ex. 1009). Ryan identifies Gazdic as a “related application” and
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`2 “Material not explicitly contained in the single, prior art document may still be
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`considered … if that material is incorporated by reference into the document.”
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`Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir.
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`2000); see also Comcast Cable Comm’ns, LLC v. Rovi Guides, Inc., IPR2017-01065,
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`Paper 35 at 19-20 (Oct. 15, 2018); Moderna Therapeutics, Inc. v. Protiva
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`Biotherapeutics, Inc., IPR2018-00680, Paper 46 at 17-18 (Sept. 10, 2019).
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`3 To the extent that Patent Owner argues that Gazdic/Ryan should not be treated as
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`a single disclosure, it would have been obvious to combine the references as
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`discussed herein. Wolfe Decl., ¶¶292, fn.4.
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`U.S. Patent No. 8,095,990
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`shares a common inventor. Ryan, [0001]. Neither Gazdic nor Ryan were cited or
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`considered during prosecution of the ’990 Patent.
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`Gazdic/Ryan discloses a gaming system that authenticates a gaming program
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`on an external memory prior to execution. Gazdic, Abstract; [0005]. Gazdic/Ryan
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`teaches that the game program is stored on a high capacity storage device, such as a
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`removable CD-ROM or DVD-ROM. Id., [0004] (“High capacity storage devices
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`may, for example, include CD-ROMs, hard disk drives, and flash devices.”); [0018];
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`[0020]; Fig. 2 (component 22); Ryan, [0026]; Fig. 2 (component 48). Gazdic/Ryan
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`teaches that the game program is authenticated by a gaming machine processor using
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`an authentication program stored in boot memory. See Gazdic, [0018]; [0019];
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`[0028]-[0030]; Fig. 2 (components 20, 44a); Ryan, [0043].
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`Like the ’990 Patent, Gazdic/Ryan describes a game device whereby game
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`information stored on external storage is authenticated. Compare ‘990 Patent, 1:18-
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`23 with Gazdic, Abstract, [0029]-[0030], Fig. 5b; Ryan, [0006]; [0026], [0043].
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`Thus, Gazdic/Ryan is from the same field of endeavor. Wolfe Decl., ¶¶293-299.
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`Gazdic/Ryan is also reasonably pertinent to a certain problem to be solved in
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`the ‘990 Patent, i.e., ensuring that authentication of gaming information is
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`performed. Compare, e.g., ’990 Patent, 2:4-8 with Gazdic, [0001]-[0004]; Ryan at
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`[0006]. Gazdic/Ryan is analogous art. Wolfe Decl., ¶¶293-299.
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`IPR2020-01218
`U.S. Patent No. 8,095,990
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`Diamant was filed on October 22, 2004 and published May 11, 2006, and
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`therefore qualifies as prior art for the ’990 Patent under at least §§102(a), (e) (pre-
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`AIA). Diamant (Ex. 1006). Diamant teaches using a first verification program to
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`evaluate the authenticity of a second verification program that evaluates the
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`authenticity of content software stored on, for example, an attachable memory
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`device. Diamant at Abstract. The first verification program, second verification
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`program, and content software can be stored in various places, including on the
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`electronic device or the attachable memory device. Diamant, [0010]-[0015], [0022].
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`Like the ’990 Patent, Diamant generally relates to an electronic device
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`whereby software stored in a portable storage medium is authenticated and loaded
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`onto an electronic device. Compare ‘990 Patent, 1:18-23 with Diamant at Abstract;
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`see also Wolfe Decl., ¶¶131-139. Thus, Diamant is from the same field of endeavor.
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`Diamant is also reasonably pertinent to a certain problem purportedly solved
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`in the ‘990 Patent, i.e., ensuring that authentication of the software to be run on the
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`electronic device is performed. Compare, e.g., ’990 Patent, 2:4-8 with Diamant,
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`[0015], [0028]-[0029], [0033]; Wolfe Decl., ¶¶131-139. Thus, Diamant is analogous
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`art.
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`i.
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`Claim 1
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`1. A gaming machine comprising:
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`IPR2020-01218
`U.S. Patent No. 8,095,990
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`Gazdic/Ryan teaches “a gaming machine 10 [] operable to conduct a wagering
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`game such as mechanical or video slots, poker, keno, bingo, or blackjack.” Gazdic,
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`[0014]; Ryan, [0020].
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`Gazdic, Fig. 1.
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`[1(a)] a game action executing device configured to execute a game action;
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`Gazdic/Ryan teaches a game action executing device (i.e., video and audio
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`circuitry) configured to display images and provide sounds during gameplay (i.e.,
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`IPR2020-01218
`U.S. Patent No. 8,095,990
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`execute a game action). “[A] central processing unit (CPU) controls operation of
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`the gaming machine 10.” Gazdic, [0017]; Ryan, [0023]. The “CPU includes a
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`microprocessor and computer readable storage.” Gazdic, [0018]; Fig. 2 (element
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`32); Ryan, [0024]; Fig. 2 (items 32, 36). The CPU controls operation of the game
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`and causes associated circuitry to output images and sounds associated with
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`gameplay.
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`[T]he CPU 30 randomly selects a game outcome from a plurality of
`possible outcomes and causes the display 12, via the video circuitry 39
`and video out 40, to depict indicia representative of the selected game
`outcome. … In the case of slots, for example, mechanical or simulated
`slot reels are rotated and stopped to place symbols on the reels in visual
`association with one or more pay lines.
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`Ryan, [0023] (emphasis added)4; see id., [0008]; Gazdic, [0017]. This is achieved
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`through video and audio circuitry in the gaming machine.
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`The video circuitry 39 supplies display information to a video display
`12 that may comprise a CRT, LCD, plasma, or other display device.
`Audio circuitry 42 generates sounds for game play on the gaming
`machine 10.
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`Ryan, [0025].
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`4 Unless otherwise noted, all emphases in quoted material and annotations to figures
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`have been added by Petitioner.
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`IPR2020-01218
`U.S. Patent No. 8,095,990
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`Ryan, Fig. 2.
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`A PHOSITA would have understood that the visual and audio circuitry in
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`Gazdic/Ryan are a game action executing device configured to execute a game
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`action. Wolfe Decl., ¶¶94-100, 304-309;’990 Patent, 9:2-7 (describing a “sound
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`control circuit” and “image control circuit” that “operate as a game action executing
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`device.”); 9:40-48.
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`[1(b)(i)] a loading device including a connection unit configured to be connected
`to a removable storage medium
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`Gazdic/Ryan teaches a CD or DVD drive (i.e., loading device) and associated
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`interfaces such as interface bus 34 (i.e., a connection unit) configured to be
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`connected to a high capacity storage memory 22, such as a CD-ROM or DVD-ROM
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`(i.e., removable storage medium).
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`Gazdic/Ryan teaches a high capacity storage memory.
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`The CPU includes a microprocessor and computer readable storage. …
`[T]he computer-readable storage includes a boot memory 20, a high
`capacity storage memory 22, and a serial read-write memory 24. … The
`high capacity storage memory 22 is preferably a compact flash card.
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`Gazdic, [0018]; Fig. 2 (item 22). The high capacity storage memory can be
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`removable, such as a CD-ROM or DVD-ROM. Ryan, [0026] (“The high capacity
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`storage memory 48 … may also be a hard disk drive, CD drive, DVD drive….”); see
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`id., [0024]; [0046]; Fig. 2; see also Gazdic, [0004]; [0018]; Fig. 2; Wolfe Decl., ¶¶94-
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`100, 310-313.
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`The various memory devices of Gazdic/Ryan, including removable high
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`capacity storage memory, interface with the CPU via an interface bus.
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`The CPU 30 includes a microprocessor 32 and various memory devices
`…. The microprocessor 32 interfaces with many other components of
`the gaming machine 10 via an interface bus 34.
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`Ryan, [0024]; [0033].
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`IPR2020-01218
`U.S. Patent No. 8,095,990
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`Ryan, Fig. 2.
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`Based on Gazdic/Ryan’s teachings, a PHOSITA would have understood that
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`a CD drive, for example, and the associated interface bus of Gazdic/Ryan, would be
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`a loading device and connection unit configured to be connected to a removable CD-
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`ROM. Wolfe Decl., ¶¶94-100, 310-313; ’990 Patent, 7:8-10; 7:45-51.
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`[1(b)(ii)] storing [in the removeable storage medium] gaming information
`including a mutual authentication program; and
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`U.S. Patent No. 8,095,990
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`Gazdic/Ryan teaches that the high capacity storage memory (i.e., removable
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`storage medium) stores game and operating system executable program files
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`(hereinafter “executable game/OS files”) (i.e., gaming information):
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`The high capacity storage memory 22 stores game and operating system
`executable program files, sound operating system files, sound bank
`files, graphics files, a manifest file, and a digital signature 32. The
`above files, taken together, constitute a "game data set” as that term is
`used herein, and the various files constitute "data files" as that term is
`used herein.
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`Gazdic, [0020]; see id., [0005]; Ryan, [0029].
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`Gazdic, Fig. 2 (excerpt); Ryan, Fig. 2.
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`IPR2020-01218
`U.S. Patent No. 8,095,990
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`Gazdic/Ryan teaches that the executable game/OS files are loaded from the
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`high capacity storage memory to system RAM after authentication. Id. at [0029].
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`The program for authenticating the executable game/OS files is stored in boot
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`memory of the gaming machine. Id., [0019]; see also id., [0029]-[0030]; Ryan,
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`[0027]; [0035]; [0043].
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`Gazdic, Fig. 2 (excerpt); Ryan, Fig. 2. The authentication program will be further
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`described below in connection with Claim 1(d)(iii), (e), (f)(i), and (g).5
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`Gazdic/Ryan teaches that the game/OS program files contains executable
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`instructions that are used during the authentication procedure. Id., [0020].
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`5 Unless stated otherwise, a reference to “Claim 1(a),” for example, refers to the
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`mapping of that limitation in the same Ground.
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`Specifically, Gazdic/Ryan teaches that each individual file, including the executable
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`game/OS files, are run through the authentication program in boot memory. Gazdic,
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`[0030], Figs. 4, 5b. For example, a fresh digital signature 50 is generated from
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`previously signed memory contents 40 to a message digest 48 using hash function
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`42 ….” Id., [0025]; [0030]; Fig. 4. This digital signature is then processed to
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`determine if the file is authentic. Id., [0030]; Fig. 4; Ryan, [0027]; [0035]; [0044]-
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`[0045]; Fig. 3.
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`
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`Gazdic/Ryan further teaches that boot memory and executable game/OS files
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`are continuously authenticated during run-time. Gazdic, [0031]-[0032], Fig. 6. “The
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`purpose of continuous run-time authentication is to ensure that the information that
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`was loaded to system RAM during the boot process has not been altered and that the
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`memories have not been changed.” Id., [0032]. In particular, the second cycle of
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`the run-time authentication process authenticates the boot memory 20 (including the
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`authentication program) at step 108 and files that are executing from system RAM
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`(including the executable game/OS files) at steps 110 and 112. Id., [0032], Fig. 6.
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`In one embodiment, the run-time authentication process does not use the DSA verify
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`operation of Fig. 4 that is stored in boot memory. Id., [0032]. A PHOSITA would
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`understand that the run-time authentication program of Gazdic’s Fig. 6 uses a
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`different program from the one stored in the boot memory, but Gazdic/Ryan does
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`not disclose the location of this program. Wolfe Decl., ¶¶314-328. A PHOSITA,
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`IPR2020-01218
`U.S. Patent No. 8,095,990
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`however, would have found it obvious to include the run-time authentication
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`program in the executable game/OS files on high capacity storage memory. Id. For
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`example, as shown in Gazdic’s Figure 6, the run-time authentication program is
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`executed in conjunction with executing the “MAIN APPLICATION” (which is
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`loaded from HIGH CAPACITY STORAGE MEMORY into CPU COMPONENT /
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`SYSTEM RAM after authentication, as shown in Figure 5b). Id. It would therefore
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`have been obvious to include the run-time authentication program within the
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`executable game/OS files stored in high capacity storage memory. Id. Indeed, a
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`PHOSITA would understand that the run-time authentication process is a set of
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`executable instructions and would naturally be included with the executable
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`game/OS program files on the high capacity storage memory. Gazdic, [0020]; Wolfe
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`Decl., ¶¶314-328. Further, a PHOSITA would understand that storing the run-time
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`authentication program in a location different from the authentication program in
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`boot memory increases security because tampering with one location would be
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`insufficient to defeat authentication. Id. Thus, the run-time authentication program
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`from the high capacity storage memory authenticates the authentication program on
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`boot memory. Id. In turn, the authentication program in boot memory authenticates
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`the executable game/OS files (including the run-time authentication program). Id.
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`This is mutual authentication because each of the authentication programs
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`IPR2020-01218
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`authenticates the other, rendering the run-time authentication program a “mutual
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`authentication program.” Id.
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`To the extent implementing such a functionality in the high capacity memory
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`would not have been obvious in view of the teachings of Gazdic/Ryan alone, it would
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`have been obvious in view of Diamant to store within the executable game/OS files
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`on removeable memory a program (such as the run-time authentication program of
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`Gazdic) that authenticates the “authentication program” that in turn authenticates the
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`software on removeable memory. Wolfe Decl., ¶¶314-328.
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`Diamant teaches a first verification program that can be stored on an external
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`storage medium (e.g., high capacity memory of Gazdic) to evaluate the authenticity
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`of a second verification program that, in turn, is used to evaluate the authenticity of
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`the software stored on the external storage medium. See Diamant, Abstract; [0019;
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`[0011]; [0015]; [0024]; Wolfe Decl., ¶¶314-328. Diamant provides a mutual
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`authentication program via a first verification program (“integrity checker 24”) that
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`can be stored on an external storage medium to evaluate the authenticity of an
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`authentication program referred to as a second verification program (or “integrity
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`checking algorithm 22”) that, in turn, is used to evaluate the authenticity of the
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`content software stored on the external storage medium before it is executed on the
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`electronic device. See Diamant, Abstract (“using a first verification algorithm or
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`program to evaluate the integrity or authenticity of a second verification program. .
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`IPR2020-01218
`U.S. Patent No. 8,095,990
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`. . The second verification program may evaluate the authenticity or integrity of …
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`software … that is included on the attachable device”); [0019] (“For example,
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`integrity checker 24 may verify or confirm that a verification program such as for
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`example integrity checking algorithm 22 is valid for use on device 10 and has not
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`been corrupted or compromised.”); [0011]; [0015]; [0024].
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`Diamant discloses an embodiment where integrity checker 24 is stored in
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`device ROM 14 and integrity checking algorithm 22 is stored in attachable memory
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`device 16. Id., Fig. 1. However, Diamant discloses multiple different embodiments
`
`that reflect flexibility in the placement of these two verification programs. Wolfe
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`Decl., ¶¶74-82, 314-328. Diamant discloses that integrity checking algorithm 22
`
`(the second verification program) may be stored in memory of device 10 rather than
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`attachable memory device 16. Diamant, [0015] (“integrity checking algorithm 22
`
`that may be stored for example in a downloaded program, in memory device 16 or
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`elsewhere in device 10”). Diamant similarly discloses that integrity checker 24 (the
`
`first verification program) may be stored in attachable memory. Id., [0022]
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`(“instructions that may include … integrity checker 24 may be stored … on … a disc
`
`… or other memory unit”). In this embodiment, “ROM 14 may include a loader
`
`such as for example a boot loader 28 that may read and load a program from …
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`another data storage device such as memory device 16 into for example RAM 15
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`and provide such program to processor 12 for execution[.]” Id., [0011]. Thus, in this
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`embodiment, a PHOSITA would understand that integrity checker 24 may be stored
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`on removeable memory device 16 and read from that location to RAM for execution
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`by processor 12. See Wolfe Decl., ¶¶314-328.
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`Integrity checker 24 (mutual authentication program) “verifies that integrity
`
`checking algorithm 22 is valid.” Diamant, [0015]. Once completed, “processor 12
`
`may load and execute integrity checking algorithm 22 which may check and verify
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`the integrity of … software … stored on … external memory device 16.” Id.; see
`
`also id., [0012]; [0028]. The authenticated software from the attachable memory
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`device is then loaded and executed by the electronic device processor. Id., [0015];
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`[0022]; [0028]; [0033]-[0034]; FIG. 3.
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`It would have been obvious to a PHOSITA to supplement Gazdic/Ryan’s
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`executable game/OS files on the high capacity storage memory with Diamant’s first
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`verification program (integrity checker 24). Wolfe Decl., ¶¶314-328. Gazdic/Ryan
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`teaches sending executable game/OS files from the high capacity storage memory
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`to the gaming machine. Id. Similarly, Diamant describes an embodiment, detailed
`
`above, where integrity checker 24 is stored on removeable memory device 16 and is
`
`read into RAM 15 to verify integrity checking algorithm, which can be stored on
`
`device 10. Id.; Diamant at [0015], [0022]. As disclosed in Diamant, the purpose of
`
`integrity checker 24 is to authenticate the main authentication program (integrity
`
`checking algorithm 22).
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`A PHOSITA would be motivated to make this modification to beneficially
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`increase the security of Gazdic/Ryan by providing a mutual integrity check on the
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`“authentication program” using an authentication program stored in a different
`
`location. Id. Diamant expressly teaches authenticating the authentication program,
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`and a PHOSITA would appreciate that this mutual authentication using programs
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`stored in different locations provides greater security. Id. Implementation of
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`Gazdic/Ryan in this way amounts to combining known techniques according to
`
`known methods to obtain a predictable result – a verified authentication program
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`that in turn authenticates software on external memory. Id. Combining Gazdic/Ryan
`
`with Diamant, thus, would have resulted in a more secure environment in which to
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`execute software from external storage. Id. Further, given the predictable nature of
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`computer programming at the time of the ’990 Patent, a PHOSITA would have had
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`a reasonable expectation of success in modifying Gazdic/Ryan’s executable
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`game/OS files to include Diamant’s integrity checker 24. Id.
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`[1(c)] a process device including a readable and rewritable storage unit,
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`Gazdic/Ryan
`
`teaches a process device (i.e., microprocessor, system
`
`RAM/main memory, and boot memory) including a readable and rewritable storage
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`unit (i.e., system RAM/main memory). Gazdic, [0018] (“CPU includes a
`
`microprocessor and computer
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`readable
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`storage.”); Ryan,
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`[0024]-[0025].
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`Gazdic/Ryan teaches that each executable game/OS file in high capacity storage
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`memory is sequentially authenticated and then loaded to system RAM. Gazdic,
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`[0029] (“loads each authenticated file into the CPU component (e.g., system RAM)
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`where the data file will reside and execute from during normal machine operation”);
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`see id., [0030] (“the data file is loaded to an associated CPU component”).
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`Additionally, “main memory 36 may be DRAM or SRAM or substantially any other
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`volatile memory device or reprogrammable non-volatile memory device.” Ryan,
`
`[0025]. The “process device” is discussed further with respect to Claims 1(i)-(j). A
`
`PHOSITA would understand that the “associated CPU component (e.g., system
`
`RAM)” or “main memory” of Gazdic/Ryan is rewritable as it would continuously be
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`written to with sequentially authenticated executable game/OS files. Wolfe Decl.,
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`¶¶329-336.
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`Gazdic/Ryan further teaches that after all executable game/OS files from the
`
`high capacity storage memory are authenticated, “the main software application is
`
`launched from system RAM[.]” Gazdic, [0030]; [0029] (“loads each authenticated
`
`data file into the CPU component (e.g., system RAM) where the data file will reside
`
`and execute from during normal operation”). A PHOSITA would understand that
`
`in order to execute the game data files from system RAM, Gazdic/Ryan’s
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`microprocessor reads the files from system RAM. Wolfe Decl., ¶¶329-336. The
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`system RAM or main memory, therefore, is readable and rewritable and included in
`
`a process device. Id.
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`[1(d)(i)] wherein each of a program storage unit … is included in at least one of
`the loading device and the process device:
`
`
`
`Gazdic/Ryan teaches boot memory (i.e., program storage unit) included in the
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`process device (i.e., gaming machine CPU including microprocessor, system RAM,
`
`and boot memory). “FIG. 2 is a block diagram of computer-readable storage
`
`contained in the gaming machine” (Gazdic, [0008]):
`
`
`
`Gazdic, Fig. 2; Ryan, Fig. 2. “[B]oot memory stores … an authentication program.”
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`Gazdic, [0020]; see id., [0005]; Ryan, [0027]; Claim 1(e). This parallels the
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`description of the program storage unit in the ’990 Patent.’990 Patent, 7:37-38.
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`[1(d)(ii)] wherein each of … a reading unit … is included in at least one of the
`loading device and the process device:
`
`Gazdic/Ryan teaches a reading unit (i.e., microprocessor) included in the
`
`process device (i.e., microprocessor, system RAM/main memory, and boot memory.
`
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`See Claim 1(c); see also Gazdic, [0018]; [0029]; Ryan, [0024]. Gazdic/Ryan teaches
`
`that CPU includes a microprocessor. Gazdic, [0018]; Ryan, [0024].
`
`The microprocessor reads data, such as the game program, from the high
`
`capacity storage medium to generate a hash message digest used during
`
`authentication. See Ryan, [0044]-[0045]; Gazdic, [0020]; [0023]-[0025]; [0044]-
`
`[0045]; Claim 1(f)(ii). The microprocessor also reads the authentication program
`
`out of boot memory. See Gazdic, [0005]; [0018]-[0020], [0025]; [0028]-[0030];
`
`Figs. 4, 5a-5b; see Claim 1(f)(i).
`
`A PHOSITA would understand that the microprocessor is a reading unit
`
`included in the process device. Wolfe Decl., ¶¶342-344; see Claim 1(f)(i)-(ii).
`
`[1(d)(iii)] wherein each of … an authentication unit … is included in at least one
`of the loading device and the process device:
`
`Gazdic/Ryan teaches that the process device (i.e., microprocessor, system
`
`RAM/main memory, and boot memory) includes a microprocessor that authenticates
`
`the game program (i.e., an authentication unit):
`
`FIG. 4 illustrates a method of authenticating the digital signatures 30,
`32, 34, and 36 already stored in the memories. … The method employs
`the boot memory's authentication program, which includes the hash
`function 42, the DSA verify operation 44a, and the public key 46a. …
`
`Gazdic, [0025]; see id., [0005]; [0017] (“A central processing unit (CPU) controls
`
`operation of the gaming machine 10.”); [0019]; [0029] (“File authentication and
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`loading sequentially authenticates the executable data files [] ….”); [0030] Fig. 4;
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`Ryan, [0033]; [0035]; [0044]-[0045]; Fig. 3. A PHOSITA would underst