`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`SONY INTERACTIVE ENTERTAINMENT LLC
`
`Petitioner
`
`v.
`
`BOT M8, LLC
`Patent Owner
`____________
`
`
`Case No. 2020-01288
`U.S. Patent No. 7,664,988
`____________
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,664,988
`
`
`
`
`
`
`
`

`

`IPR2020-01288
`U.S. Patent No. 7,664,988
`
`
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION .......................................................................................... 1
`I.
`II. SUMMARY OF THE ’988 PATENT ............................................................ 1
`A. Alleged Invention .................................................................................. 1
`B.
`Prosecution History ............................................................................... 1
`C. The Board Should Not Deny Institution Under § 325(D) ....................... 3
`D. Ordinary Skill in the Art ........................................................................ 4
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104 ......................................................................................................... 5
`A. Grounds for Standing ............................................................................. 5
`B.
`Identification of Challenge .................................................................... 5
`C. Claim Construction ................................................................................ 6
`IV. THERE IS A REASONABLE LIKELIHOOD THAT THE CHALLENGED
`CLAIMS OF THE ’988 PATENT ARE UNPATENTABLE ......................... 8
`A. Ground 1: Sugiyama and Gatto Render Obvious Claims 1-9 ................. 8
`B. Ground 2: Morrow and Morrow ’771 Render Obvious Claims 1-9 .......39
`C. Grounds 3 and 4: Claims 2 and 7 Are Obvious in Further View of
`Yamaguchi ............................................................................................67
`D. Grounds 5 and 6: Claim 8 Is Obvious in Further View of Proudler ......71
`E. Grounds 7 and 8: Claim 10 Is Obvious in View of Cheston ..................73
`V. CONCLUSION .............................................................................................82
`VI. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ........................83
`A. Real Party-In-Interest ...........................................................................83
`
`
`
`i
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`

`

`B. Related Matters.....................................................................................83
`C. Lead and Back-Up Counsel ..................................................................83
`
`IPR2020-01288
`U.S. Patent No. 7,664,988
`
`
`
`ii
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`

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`I.
`
`INTRODUCTION
`
`IPR2020-01288
`U.S. Patent No. 7,664,988
`
`Petitioner Sony Interactive Entertainment LLC requests an Inter Partes
`
`Review (“IPR”) of Claims 1-10 (“Challenged Claims”) of U.S. Patent No. 7,664,988
`
`(“’988 Patent”) (Ex. 1001).
`
`II.
`
`SUMMARY OF THE ’988 PATENT
`A. Alleged Invention
`The ’988 Patent relates to an information processing device such as “a gaming
`
`machine” that “utilizes an operating system (OS) which is generally used in a
`
`personal computer on sale.” ’988 Patent at 2:26-30. It describes techniques “in
`
`which a fault in hardware or software is inspected.” Id. at 1:15-16. Examples of
`
`faults are “damage, change or falsification occur[ring] in the programs or data . . . .”
`
`Id. at 1:21-22; id. at 4:4-7. The ’988 Patent contemplates storing a fault inspection
`
`program in a “first memory device on the mother board which is independent from
`
`the second memory device” so that “even if the fault occurs in the second memory
`
`device, it can be guaranteed that the fault inspection program properly operates.” Id.
`
`at 1:58-63.
`
`Prosecution History
`
`B.
`The application resulting in the ’988 Patent was filed August 17, 2005 and
`
`claims priority to JP 2004-245337 filed on August 25, 2004. For purposes of this
`
`proceeding, Petitioner applies August 25, 2004 as the priority date (“Priority Date”)
`
`of the Challenged Claims.
`
`
`
`1
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`

`

`IPR2020-01288
`U.S. Patent No. 7,664,988
`The Examiner rejected claims 1-3 as unpatentable over US5860122 and
`
`US5971851. ’988 File History (Ex. 1002) at 124-127. In response, Applicant argued
`
`that the prior art did not teach “a memory that includes both a Boot Program and a
`
`Fault Inspection Program” and added new Claims 4-6. Id. at 148-150.
`
`The Examiner
`
`then
`
`rejected Claims 1-6 as unpatentable over
`
`US2005/0246586 and US6115036. Id. at 157-161. The Examiner explained that “it
`
`is well known in the art to use a computer as a business tool with software included
`
`which runs gaming applications as a secondary utilization,” and likewise well known
`
`in the art to include a memory device on a motherboard and to connect a second
`
`memory device (hard disk) to the motherboard. Id. at 158-159. Applicant added new
`
`Claim 7 and amended Claims 1 and 4 to include the phrase “and the application
`
`program stored therein.” Id. at 172-177.
`
`The Examiner then rejected all pending claims as unpatentable over
`
`US5732268 (“Bizzarri”, Ex. 1050) in view of US6393559, US6115036, and
`
`US5864698. Id. at 184-191. Applicant added new dependent Claims 8-10 and
`
`amended the independent claims to require the control device “completes the
`
`execution of the fault inspection program before the game is started.” Id. at 201-204.
`
`Subsequently, Claims 1-10 were allowed.
`
`Sugiyama (Ex. 1005), a Japanese publication, was cited on an IDS and
`
`submitted with only an English abstract and without an English-language translation
`
`
`
`2
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`IPR2020-01288
`U.S. Patent No. 7,664,988
`of the reference itself. Ex. 1002 at 62, 73-80. Sugiyama was never discussed.
`
`The Board Should Not Deny Institution Under § 325(D)
`
`C.
`None of the art or arguments presented in this Petition were considered by the
`
`Examiner. In IPR2020-00726, Paper 9 (regarding the child patent to the ’988), Patent
`
`Owner alleged that Sugiyama is substantially similar or cumulative to Bizzarri. Not
`
`so.
`
`During prosecution of the ’988, the Examiner considered a mapping of
`
`Bizzarri where the E-BIOS diagnostic and repair program was mapped to both the
`
`boot and fault inspection programs. Ex. 1002 at 184-185, 207. Unlike the Bizzarri
`
`mapping, Sugiyama teaches a boot program that is distinct from the fault inspection
`
`program. Namely, Sugiyama’s boot program is the “startup program” (Sugiyama,
`
`Fig. 3, Fig. 5 (Sa1)). See Element 1(a). Sugiyama’s fault inspection program is
`
`“HDD inspection program P2” (Sugiyama, Fig. 3, Fig. 5 (Sa5)) or, alternatively,
`
`processing steps Sa2 and Sa4 through Sa11 (Sugiyama, Fig. 5, [0030], [0011],
`
`[0022]; Ex. 1003, Declaration of Andrew Wolfe, Ph.D. (“Wolfe Decl.”), ¶¶185-190;
`
`see Element 1(e). Sugiyama’s boot program is distinct from Sugiyama’s fault
`
`inspection program because:
`
`1) Sugiyama’s boot program is stored separate from Sugiyama’s fault
`
`inspection program (Sugiyama, Fig. 3, [0030], [0011], [0022]; Wolfe Decl., ¶194;
`
`see Elements 1(a), 1(e));
`
`
`
`3
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`IPR2020-01288
`U.S. Patent No. 7,664,988
`2) Sugiyama’s boot program is independently read at power on (Sugiyama at
`
`[0022]; Wolfe Decl., ¶170; see Element 1(a)); and
`
`3) Sugiyama’s boot program loads Sugiyama’s fault inspection program (i.e.,
`
`service programs(s)) from ROM into RAM (Sugiyama at [0013], Fig. 5; Wolfe Decl.,
`
`¶171, ¶194; see Element 1(a)).
`
`To be clear, steps Sa2 and Sa4 are not executed by Sugiyama’s startup
`
`program (which is step Sa1, the claimed “boot program”). See Elements 1(a) and
`
`1(d); Wolfe Decl., ¶194. Instead, Sa2 and Sa4 (among others) are executed by the
`
`automated recovery processing program, which is distinct from the startup program.
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`Sugiyama at [0030]; Wolfe Decl., ¶194. None of the Becton, Dickinson factors favor
`
`denial of institution of this IPR Petition.
`
`D. Ordinary Skill in the Art
`A person having ordinary skill in the art (“PHOSITA”) at the Priority Date for
`
`the ’988 Patent would have 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. Additional education may substitute for less experience
`
`and vice versa. Wolfe Decl., ¶¶66-68.
`
`
`
`4
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`IPR2020-01288
`U.S. Patent No. 7,664,988
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104
`A. Grounds for Standing
`Petitioner certifies that the ’988 Patent is available for IPR and that Petitioner
`
`is not barred or estopped from requesting IPR of its claims.
`
`Identification of Challenge
`
`B.
`As set forth below, IPR should be instituted, and the Challenged Claims
`
`should be found unpatentable and cancelled.
`
`This Petition uses the following nomenclature to refer to prior art:
`
`Exhibit Reference
`Name
`Sugiyama
`1005
`JP 2000-35888
`Gatto
`1006 WO 2004/004855
`Morrow
`1007
`U.S. Patent Pub. No. 2004/0054952
`Morrow ’771 1008
`U.S. Patent Pub. No. 2003/0064771
`Cheston
`1025
`U.S. Patent Pub. No. 2003/0135350
`Proudler
`1038 WO 00/73904
`Yamaguchi
`1039
`U.S. Patent No. 5,844,776
`
`
`The proposed grounds for unpatentability under § 103(a) are the following:
`
`Ground Claims Prior Art
`Sugiyama, Gatto
`1
`1-9
`Morrow, Morrow ’771
`2
`1-9
`Sugiyama, Gatto, Yamaguchi
`3
`2, 7
`Morrow, Morrow ’771, Yamaguchi
`4
`2, 7
`Sugiyama, Gatto, Yamaguchi, Proudler
`5
`8
`Morrow, Morrow ’771, Yamaguchi, Proudler
`6
`8
`Sugiyama, Gatto, Cheston
`7
`10
`Morrow, Morrow ’771, Cheston
`8
`10
`
`5
`
`
`
`
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`

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`IPR2020-01288
`U.S. Patent No. 7,664,988
`Section IV below identifies where each element of the Challenged Claims is
`
`found in the prior art. Exhibits 1001-1050 are also attached.
`
`C. Claim Construction
`For all claim terms not expressly construed below, Petitioner applies the
`
`ordinary and customary meaning of the claim terms as understood by a PHOSITA.
`
`1.
`
`Boot Program
`
`This term should be construed in accordance with its plain and ordinary
`
`meaning as a small start-up program that enables a computer to load larger programs.
`
`Wolfe Decl., ¶¶70-75 (citing Ex. 1028 at 59, Ex. 1029 at 121). To the extent Patent
`
`Owner alleges that the ’988 specification at 3:57-62 is definitional (see IPR2020-
`
`00726, Paper 9 at 10), it is not. ’988 Patent at 3:57-62 (“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”). First, in the 2004 timeframe, an “extended BIOS” was not a required
`
`component of a computer or gaming device. Wolfe Decl., ¶73. Second, there is (and
`
`was in 2004) no inherent requirement that a boot program load (or initialize, which
`
`includes loading) the operating system. Id. at ¶74. Moreover, the specification does
`
`not purport to define the meaning of “boot program” to require “extended BIOS” but
`
`instead merely provides an example of other programs that would be initialized in
`
`the preferred embodiment. A PHOSITA would have understood that the usage of
`
`
`
`6
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`IPR2020-01288
`U.S. Patent No. 7,664,988
`the term “boot program” in the ’988 Patent is consistent with its plain meaning and
`
`would not have limited this term based upon examples of other programs from a
`
`preferred embodiment. Id. at ¶¶70-75.
`
`2.
`
`Fault Inspection Program
`
`The ’988 Patent describes the fault inspection program as inspecting faults in
`
`hardware (e.g., damage to the hard disk) or software (e.g., change or falsification of
`
`a program stored on the hard disk). ’988 Patent at 1:15-26, 4:1-7. However, each of
`
`the Challenged Claims requires the fault inspection program to inspect whether or
`
`not a fault occurs in the second memory device and the game application program
`
`stored therein. 1 A PHOSITA would have understood this term, as used in the
`
`Challenged Claims, is a program that inspects whether or not a fault (including, but
`
`not limited to, damage, change, or falsification) occurs in the hardware of the second
`
`memory device and the game application program stored therein. Wolfe Decl., ¶¶76-
`
`81.
`
`Patent Owner’s proposed construction in related IPR2020-00726 is “a
`
`program, other than a boot program, that inspects a memory device for faults,
`
`
`
`
` 1
`
` The claims of US8112670 (child patent of the ’988 and subject of IPR2020-00726)
`
`include no such requirement.
`
`
`
`7
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`IPR2020-01288
`U.S. Patent No. 7,664,988
`including damage to the memory device and change or falsification of programs
`
`stored thereon.” To the extent Patent Owner suggests that the boot program cannot
`
`be stored in the same memory as the fault inspection program and that the two
`
`programs cannot interact at all, no such requirements are present in the claims of the
`
`’988 Patent or its child patent and they are not mandated by the intrinsic record.
`
`Wolfe Decl., ¶81. Rather, the claims specify, that the “boot program” and “fault
`
`inspection program” are both stored on the same “first memory device.”
`
`IV. THERE IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS OF THE ’988 PATENT ARE
`UNPATENTABLE
`A. Ground 1: Sugiyama and Gatto Render Obvious Claims 1-9
`Sugiyama, published February 2, 2000, is prior art under 35 U.S.C. §102(b)
`
`(pre-AIA). Sugiyama teaches techniques for inspecting both a hard drive device and
`
`data stored thereon, as well as storing a fault inspection program in ROM. Sugiyama
`
`at Abstract, [0022]-[0024].
`
`Gatto was filed September 19, 2002 (claiming priority to Provisional
`
`60/393,892 (Ex. 1034) filed July 5, 2002) and published January 15, 2004. Gatto is
`
`prior art under 35 U.S.C. §§102(a) and (e) (pre-AIA). Gatto teaches fault inspection
`
`techniques. Gatto at 4:2-3, 7:1-18, 7:25-28, 10:2-17.
`
`Sugiyama and Gatto are analogous art to the ’988 Patent. Like the ’988 Patent,
`
`Sugiyama and Gatto each relate to the field of inspecting faults in an information
`
`
`
`8
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`

`

`IPR2020-01288
`U.S. Patent No. 7,664,988
`processing device. ’988 Patent at 1:15-16; Sugiyama at [0001], [0022]-[0029], Fig.
`
`5; Gatto at Abstract, 29:13-18, 1:2-3, 3:11-17, 7:1-8:7; Wolfe Decl., ¶155.
`
`Sugiyama and Gatto are each reasonably pertinent to certain problems
`
`addressed by the ’988 Patent, e.g., that fault inspection programs cannot be
`
`guaranteed to operate properly when stored in the same memory device that is being
`
`inspected. The ’988 Patent describes storing the fault inspection program in a
`
`different memory device so that “even if the fault occurs in the second memory
`
`device, it can be guaranteed that the fault inspection program properly operates.”
`
`’988 Patent at 1:18-39, 1:61-63, 4:21-28. Sugiyama similarly teaches storing the
`
`inspection program P2 separately (e.g., in ROM 22) from the persistent storage
`
`media device (e.g., HDD 24) being inspected. Sugiyama at [0029], Figs. 2-4; Wolfe
`
`Decl., ¶¶156-157. Gatto also addresses the problem of ensuring that the inspection
`
`program (e.g., “Trusted Verifier driver 702”) can be trusted in its verification of the
`
`contents of various memory devices and multiple partitions of the hard drive. Gatto
`
`at 2:11-13, 8:2-7, 25:23-31, Figs. 7, 13; Wolfe Decl., ¶158.
`
`1.
`
`Claim 1
`
`[1(preamble)]. A gaming device configured to execute a game, the gaming device
`comprising:
`
`Sugiyama discloses a karaoke terminal that executes an “application program,
`
`for example, a karaoke performance processing program, a singing scoring program,
`
`or the like.” Sugiyama at [0002], [0005]. A PHOSITA would have understood that
`
`
`
`9
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`IPR2020-01288
`U.S. Patent No. 7,664,988
`a “singing scoring program,” where people sing karaoke and receive a score, is a
`
`type of “game.” Wolfe Decl., ¶164. Sugiyama’s device is similar to the information
`
`processing device of the ’988 Patent, as shown in the comparison below:2
`
`’988 Patent at Fig. 1; 2:33-3:8.
`
`
`
`
`
`
` 2
`
` Color highlighting, annotations of figures, and text emphasis in this Petition were
`
`added by Petitioner unless otherwise noted.
`
`
`
`10
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`

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`IPR2020-01288
`U.S. Patent No. 7,664,988
`
`
`
`Sugiyama at Fig. 2; [0010], [0013]; Wolfe Decl., ¶164, ¶¶83-86.
`
`To the extent a karaoke device running a “singing scoring program” is not a
`
`gaming device, it would have been obvious in view of Gatto to implement Sugiyama
`
`as one. Wolfe Decl., ¶¶163-168. Sugiyama and Gatto each include user terminals
`
`that receive an interactive application program via a communication network, store
`
`the program in a memory device, and inspect the contents of the memory device
`
`prior to execution of the downloaded program. See, e.g., Sugiyama at [0009], [0012],
`
`[0022]-[0028], Figs. 4, 5; Gatto at 1:3-4, 3:16-17, 9:27-10:17, 12:17-13:10, 29:8-21,
`
`Figs. 1, 3; Wolfe Decl., ¶¶82-89, ¶¶99-110, ¶¶154-162, ¶167. It would have been
`
`obvious to implement the terminal of Sugiyama as a gaming device by configuring
`
`it to also execute a game application program. Wolfe Decl., ¶¶165-168. A PHOSITA
`
`would have been motivated to add gaming functionality to increase user
`
`entertainment. Id. Further, such a modification is nothing more than simple
`
`
`
`11
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`IPR2020-01288
`U.S. Patent No. 7,664,988
`substitution of one form of executable program for another, yielding a predictable
`
`result. Id. Gatto recognizes that terminals have been capable of receiving new games
`
`via download since the late 1980s. Gatto at 1:6-8. Given the predictable and well-
`
`understood nature of the art, a PHOSITA would have had a reasonable expectation
`
`of success in modifying Sugiyama’s terminal to execute game applications. Wolfe
`
`Decl., ¶¶165-168.
`
`[1(a)] a first memory device for storing a boot program executed when the gaming
`device is started to operate;
`
`Sugiyama’s gaming device includes a first memory device (ROM 22) for
`
`storing a boot program (“startup program”) executed when the device is turned on:
`
`Sugiyama at Fig. 3, [0011] (“As illustrated in FIG. 3, a startup program necessary
`
`for starting up the karaoke terminal is stored on the ROM 22.”), [0032].
`
`
`
`
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`12
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`IPR2020-01288
`U.S. Patent No. 7,664,988
`The startup program, step Sa1, precedes inspection processing for HDD 24
`
`(steps Sa2 and Sa4 through Sa11):
`
`Id. at Fig. 5. As Sugiyama explains: “As illustrated in FIG. 5, first, when the user
`
`turns on the power source of the karaoke terminal 3, the startup program stored in
`
`the ROM 22 is read (step Sa1).” Sugiyama at [0022]. The startup program performs
`
`
`
`
`
`13
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`IPR2020-01288
`U.S. Patent No. 7,664,988
`boot operations by loading application or service programs into RAM. Sugiyama at
`
`[0012]-[0013], [0022]-[0028]. Accordingly, a PHOSITA would have understood the
`
`startup program to be a “boot program.” Wolfe Decl., ¶¶169-173, ¶¶88-91.
`
`[1(b)] a mother board on which the first memory device is provided;
`
`Although Sugiyama does not explicitly state that ROM 22 (first memory
`
`device) is on a motherboard, that would have been obvious to a PHOSITA at least
`
`in view of Gatto. Wolfe Decl., ¶¶174-178.
`
`Sugiyama teaches that ROM 22 is “connected to the CPU 20 via a bus 21.”
`
`Sugiyama at [0010], [0005]-[0006], [0011], Fig. 3, Claim 1. This is illustrated in
`
`Figure 2:
`
`
`
`Id. at Fig. 2.
`
`By the time of the alleged invention of the ’988 Patent, motherboards were
`
`ubiquitously utilized in computing devices, including in devices such as disclosed in
`
`Sugiyama. Wolfe Decl., ¶175, ¶¶29-38. Gatto discloses a communication terminal
`
`
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`14
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`IPR2020-01288
`U.S. Patent No. 7,664,988
`utilizing a “motherboard” having ROM provided thereon and persistent storage
`
`media (e.g., HDD or flash) connected thereto. Gatto at 3:13-31 (explaining that
`
`existing “terminals” have a “motherboard”), 17:19-22 (“wide adoption by
`
`motherboard manufacturers”). The figure below “shows a gaming machine or device
`
`1402 that incorporates a PC” with an internal “motherboard”:
`
`
`
`Gatto at Fig. 14, 26:11-13, 27:24-26; Wolfe Decl., ¶¶103-106.
`
`Sugiyama and Gatto are structurally and functionally similar. See Ground 1,
`
`Claim 1(preamble). It would have been obvious to situate the electronics of
`
`Sugiyama’s device 3, including ROM 22, on a “motherboard” as described in Gatto.
`
`Wolfe Decl., ¶¶174-178. Implementation of Sugiyama in this way implements a
`
`well-known method (i.e., electrically connecting components on a main (“mother”)
`
`
`
`15
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`IPR2020-01288
`U.S. Patent No. 7,664,988
`board) to obtain a predictable result—that the components would have worked
`
`together in a gaming machine. Id. A PHOSITA would have recognized such an
`
`implementation as an obvious design choice, given the ubiquitous implementation
`
`of motherboards in computing devices at that time, and would have been motivated
`
`to use such a well-understood, off-the-shelf technique. Id.
`
`Additionally, during prosecution of the ’988 Patent, the Examiner took
`
`“Official Notice” that this limitation “would have been obvious because it is well
`
`known in the art to include a memory device (ROM) on a mother board and to
`
`connect a second memory device (hard disk) to the motherboard, resulting in a
`
`compact, efficient, and properly working computer system.” ’988 File History at
`
`157-161. Applicant did not challenge that finding (id. at 172-175), thereby
`
`acquiescing to the Examiner’s Official Notice and the facts stated therein. See
`
`TorPharm, Inc. v. Ranbaxy Pharmaceuticals, Inc., 336 F.3d 1322, 1330 (Fed. Cir.
`
`2003.
`
`[1(c)] a second memory device for storing a game application program for the
`game, the second memory device being connected to the mother board; and
`
`Sugiyama teaches a second memory device (“hard disk drive (HDD)”)
`
`configured to store a game application program (e.g., a karaoke “singing scoring
`
`program”). Sugiyama, [0002], [0010], [0012]. Although Sugiyama does not
`
`explicitly state that the hard disk is connected to a motherboard, that would have
`
`been obvious in view of Gatto. Supra, Element 1(b).
`
`
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`16
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`IPR2020-01288
`U.S. Patent No. 7,664,988
`Sugiyama’s HDD 24 has “an application storage area (first region) 24a for
`
`storing application programs” and a “karaoke music storage area 24b for storing a
`
`large amount of karaoke music data.” Sugiyama at [0010], [0012], [0002]. HDD 24
`
`is depicted in Figure 4:
`
`Id. at Fig. 4.
`
`HDD 24 is connected to bus 21 within karaoke terminal 3:
`
`
`
`
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`17
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`IPR2020-01288
`U.S. Patent No. 7,664,988
`
`Id. at Fig. 2, [0010].
`
`The “singing scoring program” of Sugiyama is a game application program
`
`or, alternatively, it would have been obvious to include a game application program
`
`in view of Gatto. See Ground 1, Claim 1(preamble); Wolfe Decl., ¶184.
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`Finally, when connecting the electronic components of Sugiyama using a
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`motherboard, a PHOSITA would recognize that the HDD of Sugiyama is connected
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`to the motherboard so that the CPU and HDD are communicably coupled. See
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`Element 1(b); Wolfe Decl., ¶¶179-183, 103-106. Gatto expressly teaches that the
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`“motherboard”
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`is connected
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`to a “hard disk,” which Sugiyama
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`likewise
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`contemplates. Gatto at 22:5-12, Sugiyama, Fig 2. A PHOSITA would have found
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`this conventional approach obvious as discussed in Element 1(b).
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`[1(d)] a control device for executing a fault inspection program for the gaming
`device to inspect whether or not a fault occurs in the second memory device and
`the game application program stored therein,
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`Sugiyama teaches a control device (“CPU”) for executing a fault inspection
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`program (“HDD inspection program P2” and/or processing steps Sa2 and Sa4-Sa11
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`of Figure 5). Sugiyama at [0023]. That “inspection program” inspects whether or not
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`a fault occurs in the second memory device (“HDD 24”) and the game application
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`program stored therein.
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`CPU 20 of Sugiyama is a “control device,” as in the ’988 Patent. ’988 Patent
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`at 2:37-39. Sugiyama’s CPU 20 executes a “fault inspection program,” which
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`according to the ’988 Patent is “a program for inspecting whether or not a fault such
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`as damage, change or falsification occurs in the programs or data.” ’988 Patent at
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`1:16-23. Sugiyama’s “inspection program” is used “for causing a computer to
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`execute failure diagnosis, restoration, and the like.” Sugiyama at [0001]. Sugiyama
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`teaches “causing a CPU 20 to execute processing for examining and restoring
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`failures and the like of a hard disk drive 24” and “examining and restoring failures
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`and the like of an area for storing an application program.” Id. at Abstract. An
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`“inspection program” for “examining” whether “failures” occurs in the hard disk and
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`application program stored thereon constitutes a “fault inspection program.” Wolfe
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`Decl., ¶¶185-190.
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`Sugiyama discloses that, when instructed to perform the service program
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`startup method (see Element 1(e); Sugiyama at [0013], [0030]), the steps of Figure
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`5 are executed:
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`U.S. Patent No. 7,664,988
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`
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`Sugiyama at Fig. 5. In step Sa1, the startup program is executed. After that, service
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`program “recovery processing” steps Sa2 and Sa4-Sa16 are executed by CPU 20.
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`Sugiyama at [0022]-[0028]; Wolfe Decl., ¶¶185-190, ¶89, ¶¶94-97. This processing
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`determines whether an abnormality (i.e., fault) has occurred in the terminal (step
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`20
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`IPR2020-01288
`U.S. Patent No. 7,664,988
`Sa2), and, if so, whether the abnormality relates to HDD 24 (step Sa4). Sugiyama at
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`[0022].
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`When an abnormality is detected in HDD 24, HDD inspection program P2
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`examines the HDD to determine: (1) whether damage to the HDD itself has occurred
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`(e.g., damage occurs in the hardware of the HDD); and (2) whether stored data has
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`been destroyed or corrupted (e.g., damage occurs to the software programs and/or
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`data stored on the HDD). Sugiyama at [0023]-[0024] (“CPU 20 executes the HDD
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`inspection program P2 stored in the ROM 22 (step Sa5) and checks the details of the
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`abnormality of the hard disk drive 24,” where such abnormalities include “damage
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`to the hard disk drive 24 itself” or “when the stored data is destroyed”), [0011],
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`[0029]; Wolfe Decl., ¶¶185-190.
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`Sugiyama’s “HDD inspection program P2” executed in step Sa5 is a “fault
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`inspection program” because it inspects whether faults occurred in the HDD 24 and
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`the program data stored thereon. Wolfe Decl., ¶¶94-97, 185-190. Alternatively,
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`processing steps Sa2 and Sa4-Sa11 of Fig. 5, including HDD inspection program P2,
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`IPR2020-01288
`U.S. Patent No. 7,664,988
`collectively form a fault inspection program. Under either mapping, this claim
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`element is satisfied.3 Id.
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`A PHOSITA would have been motivated to implement Sugiyama with game
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`application programs as taught in Gatto. See Claim 1(preamble); Wolfe Decl., ¶¶191,
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`163-168. In that combination, Gatto similarly teaches a software verification process
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`that inspects whether change or falsification has occurred in a downloaded game
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`application program. Gatto at 29:8-21, 1:6-12, 9:27-10:17, Fig. 1; Wolfe Decl.,
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`¶¶107-110. A PHOSITA would have been motivated to incorporate Gatto’s
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`techniques for inspecting whether faults have occurred in such game programs as a
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`supplement to Sugiyama’s fault inspection program—indeed, as discussed above,
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`Sugiyama explicitly contemplates the use of such inspection techniques, and a
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`PHOSITA would have understood Gatto’s “verification” approach to be one such
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`technique. Wolfe Decl., ¶¶191-192.
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` 3
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` Sugiyama also describes a separate failure diagnosis program P3 that inspects
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`abnormalities other than for HDD 24. Sugiyama at [0026]; Wolfe Decl., ¶188. P3 is
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`not relevant to the instant mapping because P3 does not inspect HDD 24 or game
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`application data stored thereon.
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`U.S. Patent No. 7,664,988
`[1(e)] wherein the fault inspection program is stored in the first memory device,
`and 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.
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`Sugiyama teaches that the fault inspection program (“HDD inspection
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`program P2”) is stored in the first memory device (ROM). Sugiyama at [0023], Fig.
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`3. Sugiyama also teaches that the processing steps of Figure 5 may be automated, in
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`which case the program for causing CPU 20 to execute each of the ordered steps Sa2
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`and Sa4-Sa11 of Figure 5 is also stored in ROM 22. Id. at [0030] (“[W]hen a
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`recovery processing program for causing the CPU 20 to execute the recovery
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`processing such as described above is stored in the ROM 22 and an abnormality
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`occurs, … the recovery processing described above is performed according to this
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`recovery processing program.”); id. at [0022]; Wolfe Decl., ¶89, ¶¶92-93, ¶194.
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`Accordingly, Sugiyama discloses that the “fault inspection program” (i.e., HDD
`
`inspection program P2 alone or in combination with the program for executing steps
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`Sa2 and Sa4-Sa11 of Figure 5) is stored in the first memory device. Wolfe Decl.,
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`¶¶193-195, ¶¶88-95. Further, to the extent Patent Owner contends that the fault
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`inspection program must be distinct from the boot program, this too is disclosed by
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`Sugiyama. See Sugiyama at Fig. 3 (showing the “startup program” separate from
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`“HDD investigation program P2”).
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`Sugiyama further teaches that CPU 20 executes the fault inspection program
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`when the device is started to operate (see Element 1(d)) and completes execution
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`IPR2020-01288
`U.S. Patent No. 7,664,988
`before the game is started. As illustrated in Figure 5, the “HDD inspection program
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`22” is executed in step Sa5, which occurs before the game begins in step Sa3:
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`Sugiyama at Fig. 5. The steps Sa2 and Sa4 through Sa11 are likewise performed at
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`startup and before the game program is run in step Sa3. Id. at [0013] (“[W]hen the
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`karaoke terminal 3 starts up, the service program is loaded from … the ROM 22 into
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`the RAM 23, and a service program such as failure diagnosis is executed.”). The
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`karaoke “singing scoring program” is started only once it is confirmed that no
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`abnormality has occurred. Id. at [0022]; [0025]; Wolfe Decl., ¶196, ¶98.
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`This claim limitation also would have been obvious in view of Gatto. Wolfe
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`Decl., ¶197. Gatto not only provides for a game application program (see Claim
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`1(preamble)), Gatto also teaches completing execution of a fault inspection program
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`before a game is started, explaining that “it is significantly easier to detect fraudulent
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`code prior to its execution . . .” Gatto at 29:13-16, 9:27-10:17, Fig. 1; Wolfe Decl.,
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`¶¶107-110. A PHOSITA would have understood that starting the game before fault
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`inspection is complete could lead to crashes, data corruption, etc. that would be
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`avoided by not starting the game until the fault inspection program P2 finishes
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`execution, as both Sugiyama and Gatto contemplate. Wolfe Decl., ¶¶193-197.
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`Therefore, a PHOSITA would have been motivated to implement a fault inspection
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`program that completes execution before a game is started, as taught by Sugiyama
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`alone or in view of Gatto. Id.
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`2.
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`Claim 2
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`2. The gaming device according to claim 1,
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`See Claim 1.
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`[2(a)] wherein the first memory device is a ROM provided on the mother board,
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`See Element 1(b).
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`[2(b)] wherein the second memory device is a hard disk which is independent from
`the mother board, and
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`The second memory device (“hard disk drive (HDD)”) is a hard disk. Wolfe
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`Decl., ¶¶200, Error! Reference source not found.-Error! Reference source not fo
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`und.. A PHOSITA would have understood that hard disks are connected via a cable
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`or the like to a motherboard, and thus are independent from the motherboard. Wolfe
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`Decl., ¶200. For example, Gatto explains that “the motherboard” is distinct from
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`“peripheral devices” such as “hard disk drives.” Gatto at 18:29-32; Wolfe Decl.,
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`¶201. Such devices can be connected through an interface, such as an SCSI, which
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`was an industry standard means for connecting hard disks to a motherboard via a
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`cable or the like. Gatto at 18:18; Wolfe Decl., ¶201, ¶38. A PHOSITA would have
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`been motivated to implement