`
`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 IPR2020-01288
`U.S. Patent No. 7,664,988
`__________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`TABLE OF CONTENTS
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`Page
`Introduction .................................................................................................... 1
`Overview of the ’988 Patent .......................................................................... 2
` Claim Construction ........................................................................................ 4
`A.
`“fault inspection program” .................................................................. 4
`B.
`“boot program” .................................................................................. 11
` Overview of the Asserted References ......................................................... 12
`A.
`Sugiyama ........................................................................................... 12
`B.
`Gatto .................................................................................................. 13
`C. Morrow ’952 and Morrow ’771 ........................................................ 15
`D. Yamaguchi ......................................................................................... 15
`E.
`Cheston .............................................................................................. 16
`F.
`Proudler ............................................................................................. 17
`The Board Should Deny the Petition Pursuant To 35 U.S.C.
`§ 325(d) ........................................................................................................ 18
`A.
`Petitioner Presents the Same Prior Art and Arguments
`That the Office Previously Considered. ............................................ 21
`1.
`The Same, Similar, and Cumulative Nature
`Between the Asserted Art and the Prior Art
`Involved During Examination................................................. 22
`The Extent of the Overlap Between the Arguments
`Made During Examination and the Manner in
`Which Petitioner Relies on the Prior Art or Patent
`Owner Distinguishes the Prior Art. ......................................... 25
`Petitioner Failed to Sufficiently Demonstrate Error by the
`Office. ................................................................................................ 30
` The Challenged Claims are Patentable ........................................................ 32
`A. Ground 1: Claims 1–9 Are Patentable Over Sugiyama
`and Gatto ........................................................................................... 32
`
`B.
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`2.
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`- i -
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`1.
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`2.
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`2.
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`IPR2020-01288 (U.S. Patent No. 7,664,988)
`Patent Owner’s Preliminary Response
`Petitioner Has Not Demonstrated That Sugiyama
`in View of Gatto Discloses the Claimed Fault
`Inspection Program ................................................................. 32
`Petitioner Has Not Demonstrated That Sugiyama
`in View of Gatto Disclose a Control Device that
`“Completes the Execution of the Fault Inspection
`Program Before the Game is Started” ..................................... 39
`Ground 2: Claims 1-9 Are Patentable Over Morrow ’952
`and Morrow ’771 ............................................................................... 43
`1.
`Petitioner Has Not Demonstrated That Morrow
`’952 and Morrow ’771 Disclose the Claimed Fault
`Inspection Program ................................................................. 43
`Petitioner Has Not Demonstrated that Morrow
`’952 and Morrow ’771 Disclose “a First Memory
`Device [for Storing or Configured to Store] a Boot
`Program Executed When the Gaming Device is
`Started to Operate” .................................................................. 46
`Grounds 3 and 4: Claims 2, 7 Are Further Patentable
`Over Yamaguchi ................................................................................ 47
`D. Grounds 5 and 6: Claim 8 Is Further Patentable Over
`Proudler ............................................................................................. 48
`Ground 7 and 8: Claim 10 Is Further Patentable Over
`Cheston .............................................................................................. 48
` Conclusion ................................................................................................... 53
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`
`B.
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`C.
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`E.
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`- ii -
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`IPR2020-01288 (U.S. Patent No. 7,664,988)
`Patent Owner’s Preliminary Response
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Federal Cases
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte
`GmbH,
`No. IPR2019-01469, Paper 6 (P.T.A.B. Feb. 13, 2020) ................... 19, 22, 30, 31
`Akzo Nobel Coatings, Inc. v. Dow Chem. Co.,
`811 F.3d 1334 (Fed. Cir. 2016) ............................................................................ 7
`Becton, Dickinson, & Co. v. B. Braun Melsungen AG,
`No. IPR2017-01586, Paper 8 (P.T.A.B. Dec. 15, 2017) ........................ 21, 22, 31
`Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP,
`616 F.3d 1249 (Fed. Cir. 2010) ...................................................................... 7, 10
`E-Pass Techs., Inc. v. 3Com Corp,
`343 F.3d 1364 (Fed. Cir. 2003) ............................................................................ 5
`K/S Himpp v. Hear–Wear Techs,
`4751 F3d 1362 (Fed. Cir. 2014) ......................................................................... 45
`McKesson Information Solutions, Inc. v. Bridge Medical, Inc.,
`487 F.3d 897 (Fed. Cir. 2007) ............................................................................ 26
`Neville v. Found. Constructors, Inc.,
`972 F.3d 1350 (Fed. Cir. Aug. 27, 2020) ............................................................. 7
`Personalized Media Communs., LLC v. Apple Inc.,
`952 F.3d 1336 (Fed. Cir. Mar. 13, 2020) ................................................ 10, 12, 46
`Phillips v. AWH Corp,
`415 F.3d 1303 (Fed. Cir. 2005) .......................................................................... 10
`Power Mosfet Techs., LLC v. Siemens AG,
`378 F3d 1396 (Fed. Cir. 2004) ............................................................................. 8
`ProMOS Techs., Inc. v. Samsung Elecs. Co., Ltd.,
`809 Fed. Appx. 825 (Fed. Cir. Apr. 6, 2020) ....................................................... 5
`
`- iii -
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`IPR2020-01288 (U.S. Patent No. 7,664,988)
`Patent Owner’s Preliminary Response
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`Shire Dev., LLC v. Watson Pharms., Inc.,
`787 F. 3d 1359 (Fed. Cir. 2015)f ........................................................................ 47
`Sunovian Pharms. Inc. v. Teva Pharms USA, Inc.,
`809 Fed. Appx. 825 (Fed. Cir. Apr. 6, 2020) .......................................... 5, 10 , 46
`Sony Interactive Entertainment LLC v. Bot M8, LLC,
`IPR2020-00726, Paper No. 13 (P.T.A.B. Oct. 6, 2020) ................................. 9, 10
`Travelocity.com L.P. v. Cronos Techs., LLC,
`No. CBM2014-00082, Paper 12 (P.T.A.B. Oct. 16, 2014) .................................. 2
`Willis Elec. Co., Ltd. v. Polygroup Macau Ltd. (BVI),
`777 Fed. Appx. 495 (Fed. Cir. 2019) .............................................................. 7, 10
`Federal Statutes
`35 U.S.C. § 325(d) ............................................................................................passim
`Other Authorities
`37 C.F.R. § 1.97(e) ....................................................................................... 20, 22, 25
`37 C.F.R. §§ 1.98(a)(2)–(3) ..................................................................................... 26
`37 C.F.R. § 42.104(b)(4) .......................................................................................... 34
`
`
`- iv -
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`IPR2020-01288 (U.S. Patent No. 7,664,988)
`Patent Owner’s Preliminary Response
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`On July 27, 2020, Sony Interactive Entertainment LLC (“Sony” or
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`“Petitioner”) submitted a Petition to institute inter partes review of Bot M8, LLC’s
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`(“Bot M8” or “Patent Owner”) U.S. Patent No. 7,664,988 (Ex. 1001, “the ’988
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`Patent”), challenging claims 1–10 (“the Challenged Claims”). The Board should
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`deny institution of inter partes review because Petitioner has not demonstrated a
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`reasonable likelihood that any Challenged Claim is unpatentable.
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`
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`Introduction
`The Board should deny the Petition because every Challenged Claim
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`requires a separate boot program and fault inspection program. As set forth below,
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`the proposed grounds variously identify only a single program that purportedly
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`performs the boot and fault inspection programs—failing to satisfy the separate
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`program requirement—or do not even disclose a fault inspection program.
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`Without such a disclosure, none of the grounds create a reasonable likelihood that
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`any Challenged Claim is unpatentable.
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`The Board should also deny the Petition because it rehashes the same prior
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`art and arguments that were cited during prosecution. In particular, the file history
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`submitted by Petitioner fails to include a European Search Report that the
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`Applicant submitted during prosecution. See Ex. 1002 at 61–62, 119–20; Ex.
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`2007. The European Search Report characterizes Petitioner’s primary reference,
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`Sugiyama (Ex. 1005), in the same way that Petitioner does. The Challenged
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`1
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`IPR2020-01288 (U.S. Patent No. 7,664,988)
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`Claims were allowed to issue over those arguments, and the Petition does not
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`identify any reason why the Board should revisit the issue.1
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`Although this case has some similarities to another case the Board already
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`instituted, the Board should deny the Petition because the European Search Report
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`was not disclosed in that case and because the proposed grounds fail to disclose
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`separate boot and fault inspection programs.
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` Overview of the ’988 Patent
`The technology underlying the ’988 Patent was developed by Universal
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`Entertainment Corporation (“UEC”), a Japanese gaming conglomerate with a
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`history dating back to 1969. Ex. 2008 at 1. UEC’s products include single and
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`multiplayer arcade cabinets used in arcade gaming halls, software for home
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`gaming machines such as Sony’s PlayStation, gaming software for personal
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`computers, and electronic wagering machines such as slot machines. See id. at 1-3.
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`1 Although there are a variety of reasons why the ’988 Patent is valid over
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`Petitioner’s asserted references, this Preliminary Response focuses on only limited
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`reasons why inter partes review should not be instituted. See Travelocity.com L.P.
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`v. Cronos Techs., LLC, No. CBM2014-00082, Paper 12 at 10 (P.T.A.B. Oct. 16,
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`2014) (“[N]othing may be gleaned from the Patent Owner’s challenge or failure to
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`challenge the grounds of unpatentability for any particular reason.”).
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`2
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`IPR2020-01288 (U.S. Patent No. 7,664,988)
`Patent Owner’s Preliminary Response
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`At the time of the invention, it was common for gaming machines, including
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`those sold by Aruze Corporation/UEC, to experience faults, including damage to
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`one or more of its memory devices and falsification or other changes to the
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`programs stored thereon, but existing solutions were insufficient to address such
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`faults. See ’988 Patent at 1:14–30.
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`To address this long-felt need, the ’988 Patent discloses a gaming machine
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`that executes a process for detecting faults in its hardware and software. Id. at
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`1:15–16. This process, referred to in the ’988 Patent as a “fault inspection
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`program” is responsible for detecting faults, including damage to the memory
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`device and change or falsification of a game application stored in the memory
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`device. Id. at 4:4–7. The fault inspection program is stored in a first memory
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`device separate from a second memory device storing the game application
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`program so that a fault in the second memory device will not affect the fault
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`inspection program. Id. at 1:58–63, 4:22–29.
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`Importantly, the fault inspection program is separate and distinct from the
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`apparatus’ boot program, which may be stored in the same memory:
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`3
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`IPR2020-01288 (U.S. Patent No. 7,664,988)
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`
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`Id. at FIG. 1 (annotated); see also id. at FIG. 2, 2:40–53; Ex. 1002 (’988 Patent
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`FH) at 207. Executing the fault inspection program after the boot program has
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`initialized the hardware and operating system but before executing the game
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`program allows the fault inspection program to check all hardware and software
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`components for faults and avoid issues during gameplay. ’988 Patent at 3:66–4:28.
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` Claim Construction
`A.
`“fault inspection program”
`The proper construction of the term “fault inspection program” is “a
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`program, other than a boot program, that inspects a memory device for faults,
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`4
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`IPR2020-01288 (U.S. Patent No. 7,664,988)
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`including damage to the memory device and change or falsification of programs
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`stored thereon.”
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`During prosecution of the ’988 Patent, the Applicant distinguished the
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`Bizzarri reference (Ex. 1050) on the basis that “the boot program and the fault
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`inspection program are distinct.” Ex. 1002 at 207 (emphasis added). This clear
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`statement defines the meaning of the terms, and should control their construction.
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`See ProMOS Techs., Inc. v. Samsung Elecs. Co., Ltd., 809 Fed. Appx. 825, 832
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`(Fed. Cir. Apr. 6, 2020) (non-precedential) (“unless ‘the patentee has chosen to be
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`his own lexicographer in the specification or has clearly disclaimed coverage
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`during prosecution,’ we must interpret claims according to their plain language”)
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`(quoting E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1370 (Fed. Cir.
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`2003)).
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`The Applicant’s definitional statement during prosecution is consistent with
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`the rest of the intrinsic record. The ’988 Patent explains that the term “fault
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`inspection program” refers to “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” stored in a
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`memory device. ‘988 Patent at 1:20-24. Moreover, the fault inspection program
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`cannot simultaneously be the boot program. Id.
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`5
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`IPR2020-01288 (U.S. Patent No. 7,664,988)
`Patent Owner’s Preliminary Response
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`Using Claim 1, reproduced below, as a representative claim for the ’988
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`Patent, “the boot program” and “the fault inspection program” are claimed as
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`separate programs:
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`1. A gaming device configured to execute a game, the gaming
`device comprising:
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`a first memory device for storing a boot program executed when
`the gaming device is started to operate;
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`a mother board on which the first memory device is provided;
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`a second memory device for storing a game application program
`for the game, the second memory device being connected to the mother
`board; and
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`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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`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.
`’988 Patent, Claim 1 (emphasis added).
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`While “a boot program” and “a fault inspection program” must reside on the
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`first memory device, Applicant UEC drafted the claims such that “a boot program”
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`and “a fault inspection program” are listed as separate elements, so the plain
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`language is that both “a boot program” and “a fault inspection program” must be
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`6
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`IPR2020-01288 (U.S. Patent No. 7,664,988)
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`distinct, mutually exclusive components of the patented invention. See id.; Ex.
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`1002 at 207.
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`Separately listed claim elements are distinct, mutually exclusive parts of
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`claimed invention. Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616
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`F.3d 1249, 1254 (Fed. Cir. 2010) (“Where a claim lists elements separately, ‘the
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`clear implication of the claim language’ is that those elements are ‘distinct
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`component[s]’ of the patented invention”). Moreover, separately-recited claim
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`elements cannot “coexist as the same element.” Willis Elec. Co., Ltd. v. Polygroup
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`Macau Ltd. (BVI), Case Nos. 2018-2125, 2018-2151, 777 Fed. Appx. 495, 498
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`(Fed. Cir. 2019) (“Nothing in the claims suggest that ‘inner void’ and the ‘channel
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`void’ can coexist as the same element.”).
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`Furthermore, the Federal Circuit has held that “[a] claim construction that
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`renders asserted claims facially nonsensical cannot be correct.” Neville v. Found.
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`Constructors, Inc., No. 20-1132, 972 F.3d 1350, 1357 (Fed. Cir. Aug. 27, 2020)
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`(affirming the lower court’s construction where a “protrusion” is “extending
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`outwardly” from the “end plate” “does not extend to a structure in which the
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`alleged ‘end plate’ is an indistinguishable part of the alleged ‘protrusion’; an object
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`cannot protrude from itself”). Here, conflating the two program elements would
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`render the separate claim elements meaningless surplusage. Akzo Nobel Coatings,
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`Inc. v. Dow Chem. Co., 811 F.3d 1334, 1339–40 (Fed. Cir. 2016) (“Interpretations
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`7
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`IPR2020-01288 (U.S. Patent No. 7,664,988)
`Patent Owner’s Preliminary Response
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`that render some portion of the claim language superfluous are disfavored.”)
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`(quoting Power Mosfet Techs., LLC v. Siemens AG, 378 F.3d 1396, 1410 (Fed. Cir.
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`2004)).
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`The Specification and Claims confirm the fact that “the boot program and
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`the fault inspection program are distinct.” Ex. 1002 at 207. For example, as
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`illustrated in and described with respect to FIG. 1 of the ’988 Patent, the “boot
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`program” and “fault inspection program” are distinct programs stored in distinct
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`portions of the ROM:
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`The ROM 13 corresponds to a first memory device. And in the ROM
`13, as shown in FIG. 1, a boot program storing area 13a for storing a
`boot program, a fault inspection program storing area 13b for storing
`a fault inspection program and a start program storing area 13c for
`storing a start program are formed.
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`8
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`IPR2020-01288 (U.S. Patent No. 7,664,988)
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`
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`’988 Patent at 2:43–48 and FIG. 1 (annotated); see also id. at 2:49–53, 3:57–4:11.
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`Accordingly, the intrinsic record demands that the “fault inspection
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`program” recited in the Challenged Claims be distinct from a “boot program.” As
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`discussed in detail below, because Petitioner contends that Sugiyama’s Start
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`program is both a “boot program” and a fault inspection program, the purported
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`invalidity challenge fails and the Petition must be denied.
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`The Board’s construction of a parallel term in a different proceeding should
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`not control. Sony Interactive Entertainment LLC v. Bot M8, LLC, IPR2020-00726,
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`Paper No. 13 (P.T.A.B. Oct. 6, 2020) (“IPR2020-00726”). The Board’s conclusion
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`that “[the Board] see[s] nothing in the record that precludes the ‘fault inspection
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`9
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`IPR2020-01288 (U.S. Patent No. 7,664,988)
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`program’ from also being a ‘boot program’” is contrary to the intrinsic record
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`discussed above, including the Applicant’s definitional statement during
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`prosecution, and the Federal Circuit precedent that separately listed elements
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`should be construed to be distinct parts of the invention. Becton, Dickinson, 616
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`F.3d at 1254; Willis Elec. Co., 777 Fed. Appx. at 498.
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`The Petitioner’s construction, adopted by the Board in that case, is further
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`flawed because it is based upon extrinsic evidence to the exclusion of all of the
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`intrinsic evidence discussed above. IPR2020-00726, Paper No. 13, at 14–17.
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`Extrinsic evidence is not to be used to contradict the unambiguous meaning of
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`claim terms in view of the intrinsic record. Personalized Media Communs., LLC v.
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`Apple Inc., 952 F.3d 1336, 1339 (Fed. Cir. Mar. 13, 2020) (“‘When construing
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`claim terms, we . . . primarily rely on, the intrinsic evidence including the claims
`
`themselves, the specification, and the prosecution history of the patent, which is
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`usually dispositive,’” in part because “‘patentees frequently use terms
`
`idiosyncratically.’”) (quoting Sunovion Pharms., Inc. v. Teva Pharms. USA, Inc.,
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`731 F.3d 1271, 1276 (Fed. Cir. 2013) and Phillips v. AWH Corp., 415 F.3d 1303,
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`1314 (Fed. Cir. 2005), respectively). Here, the Applicant’s plain definitional
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`statement during prosecution should control.
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`10
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`IPR2020-01288 (U.S. Patent No. 7,664,988)
`Patent Owner’s Preliminary Response
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`B.
`“boot program”
`The term “boot program” means “a program that initializes various devices
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`including the extended BIOS and the operating system.” This construction follows
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`from the explicit description of a “boot program” in the Specification of the ’988
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`Patent:
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`Here, the boot program is a program stored in the boot program storing
`area 13a of the ROM 13, and based on the boot program, initialization
`of various devices including the extended BIOS (Basic Input Output
`System) in the hard disk 24 and the OS (Operating System) in the
`hard disk 24 is executed.
`
`’988 Patent at 3:57–62 (emphasis added). This explanation is consistent with a
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`POSITA’s understanding of the term “boot,” which involves a “computer
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`execut[ing] the software that loads and starts the computer’s more complicated
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`operating system and prepares it for use.” Ex. 2003 at 3.
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` Petitioner’s proposed construction of the term “boot program”—that a “boot
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`program” is “a small start-up program that enables a computer to load larger
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`programs”—is overbroad. Petition at 6. As explicitly stated in the ’988
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`Patent, the term “boot program” refers to a program that initializes various
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`devices including the extended BIOS and the operating system. ’988 Patent
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`at 3:57–62. Therefore, when the Specification provides a definition of a
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`“boot program,” the definition holds particular precedence over other
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`11
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`IPR2020-01288 (U.S. Patent No. 7,664,988)
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`constructions. See Personalized Media Communs., LLC, 952 F.3d at 1339
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`(“‘When construing claim terms, we . . . primarily rely on, the intrinsic
`
`evidence including the claims themselves, the specification, and the
`
`prosecution history of the patent, which is usually dispositive,’” in part
`
`because “‘patentees frequently use terms idiosyncratically.’”) (citations
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`omitted).
`
`As discussed in detail below, Morrow ’952’s file allocation reader, which
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`executes “before booting the operating system,” cannot be a “boot program”
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`because the term “boot program” requires initialization of the operating system.
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`See § VI.B, infra.
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` Overview of the Asserted References
`A.
`Sugiyama
`Applicant UEC cited to the Office Japanese Unexamined Patent Application
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`Publication No. JP 2000-35888 to Sugiyama (“Sugiyama”) in an Information
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`Disclosure Statement (“IDS”) for the ’988 Patent. Ex. 1002 at 61–62.
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`Sugiyama discloses a karaoke terminal that includes “a service program for
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`causing a CPU to execute processing for examining and restoring failures and the
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`like of a hard disk drive . . . .” Sugiyama at Abstract. Critically, and like the
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`Bizzarri reference that was considered during prosecution of the ’988 Patent,
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`Sugiyama discloses utilizing a boot program to “initially inspect[] whether or not
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`12
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`IPR2020-01288 (U.S. Patent No. 7,664,988)
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`an abnormality (i.e., fault) occurs on HDD 24.” Petition at 22; see also Sugiyama
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`at [0022] (disclosing a “startup program” that determines whether or not an
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`abnormality has occurred in a karaoke terminal). Only after this boot program
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`runs, including detecting abnormalities, does Sugiyama execute an HDD inspection
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`program, which merely “checks the details of the abnormality of the hard disk
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`drive,” That was already detected by the boot program. Sugiyama at [0023].
`
`B. Gatto
`Gatto (Ex. 1006) discloses a method for verifying downloaded game
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`software. Gatto at Abstract. The verification process uses a code signing
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`mechanism to verify the code signature of downloaded code both after
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`downloading and before executing the code. Gatto at 12:2-17.
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`13
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`IPR2020-01288 (U.S. Patent No. 7,664,988)
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`
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`Gatto at FIG. 1.
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`Unlike the “fault inspection program” disclosed and claimed in the ’988
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`Patent, Gatto’s verification process only verifies a program’s code signature and
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`fails to inspect a memory device for damage. See § III.A, supra (“The proper
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`construction of the term ‘fault inspection program’ is ‘a program, other than a boot
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`program, that inspects a memory device for faults, including damage to the
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`memory device and change or falsification of programs stored thereon.’”).
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`14
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`IPR2020-01288 (U.S. Patent No. 7,664,988)
`Patent Owner’s Preliminary Response
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`C. Morrow ’952 and Morrow ’771
`Like Gatto, Morrow ’952 discloses a verification program rather than a fault
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`inspection program. Morrow ’952’s verification software 70 verifies the various
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`system components by comparing identification numbers associated with the
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`components against values stored in a database. Morrow ’952 at [0037]–[0041].
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`Importantly, this verification software fails to inspect a memory device for faults
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`and it is executed before the boot program. Id. at [0062].
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`Morrow ’771 (Ex. 1008) discloses a similar software verification technique
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`but rather than being executed prior to booting the system, Morrow ’771’s
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`verification software executes “during boot-up and game operation.” Morrow ’771
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`at [0037]. Accordingly, Morrow ’771 suffers from the same deficiencies as
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`Morrow ’952 as well as Sugiyama, in that neither disclose a boot program nor a
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`fault inspection program.
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`D. Yamaguchi
`Yamaguchi discloses a static memory device that “has compatibility with a
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`disk drive installed in an electronic apparatus as an external storage unit.”
`
`Yamaguchi at Abstract. In particular, Yamaguchi describes a “hard disk drive 22”
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`having a “connector 22a to which is coupled the connector 8a provided at an end of
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`the flat cable 8,” wherein “the hard disk drive 22 explained with reference to FIG.
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`2C can also be connected to the connector 1a through the flat cable 8.” Id. at 5:5-
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`8, 6:6-8, 6:21-23, Figs. 2C, 14. Notably, Yamaguchi does not disclose a boot
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`program nor a fault inspection program.
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`E. Cheston
`Cheston discloses a “system and method for storing adaptor card Option
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`ROM BIOS extensions on the system’s DASD [Direct Access Storage Device]
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`and, more particularly, on a partition of the DASD that is generally inaccessible to
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`the operating system.” Cheston at Abstract. Cheston provides that “BIOS
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`extensions files are stored in the hidden partition” of a hard disk drive. Id.
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`Further, Cheston describes that the system BIOS, when executed, “interrogates the
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`hidden partition [of hard disk drives or DASD 120] for BIOS extension files.” Id.
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`Indeed, as Cheston shows in Figure 3, annotated below, “[i]f the hidden partition
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`contains a BIOS extension file corresponding to an identified peripheral device,
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`[then] the file is verified for authenticity,” prior to initializing the BIOS. Id. at
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`[0024], FIG. 3.
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`Cheston at FIG. 3 (annotated).
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`F.
`Proudler
`Like the software verification program described in Morrow ’952 or the
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`software validation program described in Cheston, Proudler discloses a “trusted
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`component having a processor and trusted memory area” that carries out “[a]
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`method of security monitoring of data files in a computer platform.” Proudler at
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`Abstract. Indeed, Proudler describes “applying a hash function” to data files or, in
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`other words, only software files to “produce hash function data corresponding to
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`said data file,” wherein discrepancies or “differences between a previous and a
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`current digest data indicate that a file in the untrusted memory area has been
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`corrupted.” Id. at Abstract, 5:8–10.
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` The Board Should Deny the Petition Pursuant To 35 U.S.C. § 325(d)
`The Board should deny the Petition pursuant to 35 U.S.C. § 325(d) because
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`it rehashes art and arguments already before the Office during original prosecution.
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`Specifically, Applicant submitted to the Office a European Search Report which
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`discussed the same aspects of Sugiyama that the Petition relies on. Petitioner did
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`not include this important non-patent literature document in its submission of the
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`file history along with the Petition. The Applicant also overcame other references
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`and arguments that are the same or substantially the same as the grounds presented
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`in the Petition.
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`Because the Petition presents grounds cumulative over those already
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`considered, the Board should exercise its discretion to deny institution of the inter
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`partes review of the Challenged Claims of the ’988 Patent under 35 U.S.C.
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`§ 325(d). The subject matter of the prior art relied on by Petitioner was previously
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`considered and distinguished during prosecution of the ’988 Patent. See Ex. 1002;
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`Ex. 2007.
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`The Board uses a two-part framework to evaluate whether to exercise its
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`discretion under Section 325(d). Advanced Bionics, LLC v. MED-EL
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`Elektromedizinische Geräte GmbH, No. IPR2019-01469, Paper 6 at 8-9 (P.T.A.B.
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`Feb. 13, 2020) (precedential) (framework demonstrates “a commitment to defer to
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`previous Office evaluations of the evidence of record unless material error is
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`shown.”) (emphasis added). The Board focuses on: (1) whether the same or
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`substantially the same art or arguments previously were presented to the Office;
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`and (2) if that condition is satisfied, then whether Petitioner has demonstrated that
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`the Office erred in a manner material to the patentability of the Challenged Claims.
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`Id.
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`As previously mentioned, during prosecution of the ‘988 Patent, Applicant
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`cited to the Office Japanese Unexamined Patent Application Publication No. JP
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`2000-35888 to Sugiyama (“Sugiyama”) in an Information Disclosure Statement2
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`(“IDS”) for the ’988 Patent. Ex. 1002 at 61–62.
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`
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`2 Applicant UEC submitted the IDS pursuant to its duty to the PTO to
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`disclose references relied upon in a European Search Report from a co-pending
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`This European Search Report and Opinion is missing from Petitioner’s
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`purported submission of the ’988 Patent’s file history wrapper. See Ex. 1002 at 61
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`(“The applicant(s) wish to make of record the reference(s) cited in the attached
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`Extended European Search Report and listed on the attached form PTO-1449”),
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`119–20 (Electronic Filing Receipt dated January 25, 2008, showing the submission
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`of a six-page document with the Document Description “NPL Document[]”).
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`This now-missing-but-previously-filed non-patent literature (NPL)
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`document referenced in the Electronic Filing Receipt is the Extended European
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`Search Report, as evidenced by the following: (1) the submitted foreign references
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`match the cited art in the search report and IDS, (2) the search report and IDS both
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`cite the same art, (3) the transmittal letter explicitly references “an attached
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`Extended European Search Report,” and (4) under 37 C.F.R. § 1.97(e), the
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`Applicant must disclose the art cited within European Search Report (dated
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`December 7, 2007) “not more than three months prior to” the filing of the IDS
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`European Patent (EPO) counterpart EP 1630659 (EP Application No. 05018280.7).
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`Ex. 1002 at 119–20; see 37 C.F.R. § 1.97(e). Both the ’988 Patent and its EPO
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`counterpart claim priority to the same Japanese Patent Application JP 2004-
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`245337, and the counterpart is the only foreign counterpart filed with the European
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`Patent Office. Ex. 1001 at code (30); Ex. 2009 a