Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 26
`Date: February 15, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SONY INTERACTIVE ENTERTAINMENT LLC,
`Petitioner,
`v.
`BOT M8, LLC,
`Patent Owner.
`
`IPR2020-01288
`Patent 7,664,988 B2
`
`
`
`
`
`
`
`
`
`Before KALYAN K. DESHPANDE, LYNNE E. PETTIGREW, and
`JAMES A. TARTAL, Administrative Patent Judges.
`PETTIGREW, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 26
`Date: February 15, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SONY INTERACTIVE ENTERTAINMENT LLC,
`Petitioner,
`v.
`BOT M8, LLC,
`Patent Owner.
`
`IPR2020-01288
`Patent 7,664,988 B2
`
`
`
`
`
`
`
`
`
`Before KALYAN K. DESHPANDE, LYNNE E. PETTIGREW, and
`JAMES A. TARTAL, Administrative Patent Judges.
`PETTIGREW, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-01288
`Patent 7,664,988 B2
`
`I. INTRODUCTION
`In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
`Sony Interactive Entertainment LLC (“Petitioner”) challenges claims 1–10
`of U.S. Patent No. 7,664,988 B2 (Ex. 1001, “the ’988 patent”), owned by
`Bot M8, LLC (“Patent Owner”). This Final Written Decision is entered
`pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons
`discussed below, Petitioner has shown by a preponderance of the evidence
`that claims 1–10 of the ’988 patent are unpatentable.
`A. Procedural History
`Petitioner filed a Petition for inter partes review of claims 1–10 of the
`’988 patent. Paper 1 (“Pet.”). Patent Owner filed a Preliminary Response.
`Paper 6. Applying the standard set forth in 35 U.S.C. § 314(a), which
`requires demonstration of a reasonable likelihood that Petitioner would
`prevail with respect to at least one challenged claim, we instituted an inter
`partes review of the challenged claims. Paper 11 (“Inst. Dec.”).
`Following institution, Patent Owner filed a Patent Owner Response
`(Paper 15, “PO Resp.”), Petitioner filed a Reply (Paper 18, “Pet. Reply”),
`and Patent Owner filed a Sur-reply (Paper 19, “PO Sur-reply”). An oral
`hearing was held on November 10, 2021, and a copy of the hearing
`transcript has been entered into the record. Paper 25.
`B. Real Parties in Interest
`Petitioner identifies Sony Interactive Entertainment, LLC, Sony
`Corporation, Sony Corporation of America, and Sony Interactive
`Entertainment Inc. as the real parties-in-interest. Pet. 83. Patent Owner
`identifies itself as the real party-in-interest. Paper 3, 1 (Patent Owner’s
`Mandatory Notices).
`
`2
`
`
`
`IPR2020-01288
`Patent 7,664,988 B2
`
`C. Related Matters
`Petitioner and Patent Owner indicate that the ’988 patent was the
`subject of a patent infringement lawsuit, Bot M8, LLC v. Sony Corporation
`of America et al., No. 1:19-cv-07529 (S.D.N.Y.), which was transferred to
`the Northern District of California (No. 3:19-cv-07027). Pet. 83; Paper 3, 1.
`Petitioner indicates that the district court proceeding has been dismissed
`with respect to the ’988 patent. Pet. 83.
`Petitioner identifies IPR2020-00726, involving U.S. Patent
`No. 8,112,670 B2 (“the ’670 patent”), a continuation of the ’988 patent, as a
`related proceeding. Id. In that proceeding, the Board determined in a Final
`Written Decision that all challenged claims of the ’670 patent are
`unpatentable. Sony Interactive Entm’t LLC v. Bot M8, LLC, IPR2020-
`00726, Paper 36 (PTAB Oct. 4, 2021). Patent Owner’s request for rehearing
`is pending. See IPR2020-00726, Paper 37.
`D. Overview of the ’988 Patent
`The ’988 patent describes “an information process device in which it
`can be guaranteed that a fault inspection program properly operates even if a
`fault occurs in a memory device which is inspected through the fault
`inspection program.” Ex. 1001, 1:35–39. Figure 1, reproduced below,
`
`3
`
`
`
`IPR2020-01288
`Patent 7,664,988 B2
`shows an information process device according to an embodiment of the
`invention.
`
`
`Figure 1 “is a block diagram of an information process device according to
`the embodiment.” Id. at 2:14–15.
`As depicted in Figure 1, information process device 1 includes central
`processing unit (CPU) 12, read-only memory (ROM) 13, and random access
`memory (RAM) 14 on motherboard 11. Id. at 2:33–36. CPU 12 controls
`information process device 1 and executes various programs and, therefore,
`“corresponds to a control device.” Id. at 2:37–39. ROM 13 is a non-volatile
`memory that stores various control programs, including a boot program, a
`fault inspection program, and a start program. Id. at 2:40–48. Hard disk 24
`is connected to motherboard 11 at port 18 through cable 23 and stores an
`operating system (OS), Basic Input Output System (BIOS), and an
`application program. Id. at 3:16–23.
`Information process device 1 begins to operate when CPU 12 executes
`the start program and, in turn, the boot program. Id. at 3:51–56. The boot
`program initializes various devices including the BIOS and the operating
`
`4
`
`
`
`IPR2020-01288
`Patent 7,664,988 B2
`system. Id. at 3:57–62. The operating system is then loaded into RAM 14
`and starts to operate. Id. at 3:63–64. Next, the fault inspection program
`begins to inspect “whether or not a damage occurs in the hard disk 24 or
`whether or not change or falsification of the program stored in the hard
`disk 24 is conducted.” Id. at 3:66–4:7. If there is no fault in hard disk 24,
`the application program is loaded into RAM 14 and begins to execute. Id. at
`4:12–16. Otherwise, if there is a fault in hard disk 24, an error is displayed
`on output device 21. Id. at 4:16–20. Here, because the fault inspection
`program is stored in ROM 13, independent from hard disk 24, “even if a
`fault occurs in the hard disk 24 . . . , it can be guaranteed that the fault
`inspection program properly operates.” Id. at 4:22–28.
`E. Illustrative Claims
`Petitioner challenges claims 1–10 of the ’988 patent. Pet. 8–82.
`Claims 1, 6, and 10 are independent, claims 2–5 depend directly from
`claim 1, and claims 7–9 depend directly or indirectly from claim 6.
`Independent claims 1 and 10 are illustrative of the challenged claims and are
`reproduced below:
`1. A gaming device configured to execute a game, the gaming
`device comprising:
`a first memory device for storing a boot program executed
`when the gaming device is started to operate;
`a mother board on which the first memory device is provided;
`a second memory device for storing a game application
`program for the game, the second memory device being
`connected to the mother board; and
`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,
`
`5
`
`
`
`IPR2020-01288
`Patent 7,664,988 B2
`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.
`Ex. 1001, 4:55–6:5.
`10. A gaming device configured to execute a game, the gaming
`device comprising:
`a first memory device for storing a boot program executed
`when the gaming device is started to operate;
`a mother board on which the first memory device is provided;
`a second memory device for storing a game application
`program for the game and a BIOS, the second memory
`device being connected to the mother board; and
`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,
`wherein the fault inspection program is stored in the first
`memory device, and the control device executes the boot
`program to initialize the BIOS stored in the second
`memory device before executing 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.
`Ex. 1001, 6:19–38.
`
`6
`
`
`
`IPR2020-01288
`Patent 7,664,988 B2
`F. Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claims are unpatentable based on
`the following grounds (Pet. 5):
`References/Basis
`Claim(s) Challenged 35 U.S.C. §
`Sugiyama,2 Gatto3
`1–9
`103(a)1
`1–9
`103(a) Morrow ’952,4 Morrow ’7715
`2, 7
`103(a)
`Sugiyama, Gatto, Yamaguchi6
`103(a) Morrow ’952, Morrow ’771,
`2, 7
`Yamaguchi
`Sugiyama, Gatto, Yamaguchi,
`103(a)
`Proudler7
`103(a) Morrow ’952, Morrow ’771,
`Yamaguchi, Proudler
`103(a)
`Sugiyama, Gatto, Cheston8
`103(a) Morrow ’952, Morrow ’771,
`Cheston
`
`8
`
`8
`10
`10
`
`
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’988
`patent has an effective filing date before the effective date of the applicable
`AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and
`103.
`2 Japanese Unexamined Patent Application Publication JP 2000-35888,
`published Feb. 2, 2000 (Ex. 1005, “Sugiyama”).
`3 WIPO Int’l Publication No. WO 2004/004855 A1, published Jan. 15, 2004
`(Ex. 1006, “Gatto”).
`4 U.S. Patent Application Publication No. US 2004/0054952 A1, published
`Mar. 18, 2004 (Ex. 1007, “Morrow ’952”).
`5 U.S. Patent Application Publication No. US 2003/0064771 A1, published
`Apr. 3, 2003 (Ex. 1008, “Morrow ’771”).
`6 U.S. Patent No. 5,844,776, issued Dec. 1, 1998 (Ex. 1039, “Yamaguchi”).
`7 WIPO Int’l Publication No. WO 00/73904 A1, published Dec. 7, 2000
`(Ex. 1038, “Proudler”).
`8 U.S. Patent Application Publication No. US 2003/0135350 A1, published
`July 17, 2003 (Ex. 1025, “Cheston”).
`
`7
`
`
`
`IPR2020-01288
`Patent 7,664,988 B2
`
`G. Testimonial Evidence
`In support of the unpatentability contentions in its Petition, Petitioner
`relies on a declaration and a reply declaration of Andrew Wolfe, Ph.D. See
`Exs. 1003, 1051. Patent Owner cross-examined Dr. Wolfe via deposition.
`See Ex. 2045.
`In support of its Patent Owner Response, Patent Owner relies on a
`declaration of Dr. Long Yang. See Ex. 2041. Petitioner cross-examined
`Dr. Yang via deposition. See Ex. 1052.
`
`II. DISCUSSION
`A. Legal Principles
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are “such that the
`subject matter as a whole would have been obvious at the time the invention
`was made to a person having ordinary skill in the art to which said subject
`matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`The question of obviousness is resolved on the basis of underlying factual
`determinations, including (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of ordinary skill in the art; and (4) when in evidence, objective indicia of
`nonobviousness.9 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`To prevail on its challenges to Patent Owner’s claims, Petitioner must
`demonstrate by a preponderance of the evidence that the claims are
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes
`
`
`9 With respect to the fourth Graham factor, the parties do not present
`arguments or evidence regarding objective indicia of non-obviousness. See
`Pet.; PO Resp. Therefore, the obviousness analysis herein is based on the
`first three Graham factors.
`
`8
`
`
`
`IPR2020-01288
`Patent 7,664,988 B2
`review], the petitioner has the burden from the onset to show with
`particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
`Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C.
`§ 312(a)(3) (requiring inter partes review petitions to identify “with
`particularity . . . the evidence that supports the grounds for the challenge to
`each claim”)).
`
`B. Level of Ordinary Skill in the Art
`Petitioner asserts that a person of ordinary skill in the art would have
`had “the equivalent of at least an undergraduate degree in computer science,
`computer engineering, electrical engineering, or a similar technical field,”
`and “one or more years of experience in the field of authentication,
`verification, and/or error detection in the context of computer hardware
`and/or software.” Pet. 4 (citing Ex. 1003 ¶¶ 66–68). Patent Owner proposes
`that “a person of ordinary skill in the art [o]n August 17, 2005 (the earliest
`effective date of the ’988 Patent) would have had a Bachelor’s degree in
`Electrical Engineering, Physics, or a related field, and approximately one or
`more years of professional experience in the field of computer architecture.”
`PO Resp. 31 (citing Ex. 2041 ¶¶ 69–73).
`We find that both parties propose similar definitions for the level of
`ordinary skill in the art, with slight variations in the types of professional
`experience. Specifically, Petitioner proposes a narrower field of experience
`(“the field of authentication, verification, and/or error detection in the
`context of computer hardware and/or software”), whereas Patent Owner
`proposes a broader field of experience (“the field of computer architecture”).
`Neither party argues that the level of ordinary skill determines the outcome
`of the patentability analysis. See Pet.; PO Resp.
`
`9
`
`
`
`IPR2020-01288
`Patent 7,664,988 B2
`To the extent necessary herein, we apply Patent Owner’s definition of
`the level of ordinary skill in the art, which is consistent with the teachings of
`the ’988 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect
`an appropriate level of skill in the art). We note, however, that neither party
`explains how the differences in the parties’ proposals are material to the
`issues before us. We further note that our analysis and conclusions in this
`Final Written Decision would be the same under either party’s definition of
`the level of ordinary skill in the art.
`C. Claim Construction
`In an inter partes review, we apply the same claim construction
`standard that would be used in a civil action under 35 U.S.C. § 282(b),
`following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303
`(Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019). Under that
`standard, claim terms are generally given their ordinary and customary
`meaning, as would be understood by a person of ordinary skill in the art, at
`the time of the invention and in the context of the entire patent disclosure.
`Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed
`claim limitation, we look principally to the intrinsic evidence of record,
`examining the claim language itself, the written description, and the
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
`415 F.3d at 1312–17). Extrinsic evidence is “less significant than the
`intrinsic record in determining ‘the legally operative meaning of claim
`language’” and should be considered in the context of the intrinsic evidence.
`Phillips, 415 F.3d at 1317–19 (citations omitted).
`
`10
`
`
`
`IPR2020-01288
`Patent 7,664,988 B2
`The parties dispute the construction of “fault inspection program” and
`“boot program,” which we address below. No other claim terms need to be
`construed expressly for purposes of this Final Written Decision. See Nidec
`Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
`(Fed. Cir. 2017) (holding that only claim terms in controversy need to be
`construed, and only to the extent necessary to resolve the controversy (citing
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999))).
`
`1. “fault inspection program”
`Independent claims 1, 6, and 10 recite a “fault inspection program.”
`Ex. 1001, 4:64, 5:29–30, 6:28. These claims further require the fault
`inspection program “to inspect whether or not a fault occurs in the second
`memory device and the game application program stored therein.” Id. at
`4:65–67, 5:30–32, 6:29–31.
`Petitioner contends that a “fault inspection program” as set forth in the
`’988 patent is “‘a program for inspecting whether or not a fault such as
`damage, change or falsification occurs in the programs or data.’” Pet. 18–19
`(quoting Ex. 1001, 1:20–23); Pet. Reply 2 (same). Patent Owner contends
`that the proper construction of “‘fault inspection program’ is a program,
`other than a boot program, that inspects a memory device for faults,
`including damage to the memory device and change or falsification of
`programs stored thereon.” PO Resp. 21 (citing Ex. 2041 ¶¶ 90–94)
`(emphasis modified). With this proposed construction, Patent Owner
`contends that the claimed “fault inspection program”: (1) must be capable
`of inspecting for faults including damage to the memory device (i.e.,
`hardware) and change or falsification of stored programs (i.e., software), and
`
`11
`
`
`
`IPR2020-01288
`Patent 7,664,988 B2
`(2) is other than a boot program. Id. at 21–27; PO Sur-reply 1–7. We
`address each contention below.
`First, Patent Owner argues that, during prosecution of the ’988 patent,
`the Applicant distinguished the then-pending claims over Chang, a prior art
`reference, “on the basis that its BIOS program, which inspects for hardware
`faults, ‘does not perform any analysis of application programs’ (i.e.,
`software).” PO Resp. 22 (quoting Ex. 1002, 176); PO Sur-reply 3 (same).
`Therefore, Patent Owner argues, “the Examiner understood that a fault
`inspection program must inspect for both hardware faults and software
`faults.” PO Resp. 22; see PO Sur-reply 3. Patent Owner also argues that the
`Applicant distinguished the claims over other references—Bizzarri and
`Yamamoto—on the same basis, i.e., that they do not teach a fault inspection
`program that inspects faults in both the hard disk (hardware) and the game
`program (software). PO Sur-reply 2–3 (citing Ex. 1002, 207).
`Patent Owner contends that the specification of the ’988 patent
`confirms this interpretation. PO Resp. 22; PO Sur-reply 3. Specifically,
`Patent Owner contends that the disclosed fault inspection program must be
`capable of detecting both hardware and software faults because it “need[s] to
`differentiate whether a hardware fault or a software fault had occurred.” PO
`Resp. 22–23 (citing Ex. 1001, 4:4–7 (“Concretely, according to the fault
`inspection program, [the hard disk 24] is inspected whether or not a damage
`occurs in the hard disk 24 or whether or not change or falsification of the
`program stored in the hard disk 24 is conducted.”) (emphasis omitted)); PO
`Sur-reply 3 (“By virtue of the need to differentiate whether a hardware fault
`or a software fault had occurred, the specification compels a conjunctive
`interpretation of the word ‘or.’” (citations omitted)).
`
`12
`
`
`
`IPR2020-01288
`Patent 7,664,988 B2
`We agree with Petitioner that Patent Owner’s construction is contrary
`to the intrinsic evidence. See Pet. Reply 2–4. The written description of the
`’988 patent states that “[t]he present invention relates to an information
`process device in which a fault in hardware or software is inspected.”
`Ex. 1001, 1:15–16 (emphasis added). It also explicitly describes a “fault
`inspection program” as “a program for inspecting whether or not a fault such
`as damage, change or falsification occurs in the programs or data
`(hereinafter, abbreviated as ‘fault inspection program’).” Id. at 1:20–23
`(emphasis added). Based on this disclosure, a person of ordinary skill in the
`art would have understood that a “fault inspection program” inspects for
`faults in either hardware or software, or both, and that damage, change, and
`falsification are non-limiting examples of faults. See Pet. Reply 2–3. We
`also agree with Petitioner that, although the embodiment disclosed in the
`’988 patent inspects for damage to the hard disk, or change or falsification of
`the program, the claim term encompasses inspection for any faults and is not
`limited to “inspection of only memory damage (as opposed to other memory
`faults such as tampering)” or “inspection of only change or falsification of
`programs (as opposed to other faults such as damage).” Id. at 2.
`Furthermore, the prosecution history that Patent Owner cites does not
`support its proposed construction of the term “fault inspection program.” As
`Petitioner points out, the independent claims of the ’988 patent require the
`fault inspection program “to inspect whether or not a fault occurs in the
`second memory device and the game application program stored therein.”
`Ex. 1001, 4:65–67, 5:30–32, 6:29–31 (emphasis added); see Pet. Reply 3.
`At the time the Applicant distinguished the claims over prior art references
`that do not teach a fault inspection program able to inspect both hardware
`and software, the Applicant had amended the claims to recite explicitly that
`
`13
`
`
`
`IPR2020-01288
`Patent 7,664,988 B2
`the “fault inspection program” inspects both the second memory device and
`the application program stored therein. See Ex. 1002, 176. Thus, the claims
`of the ’988 patent expressly require a “fault inspection program” to inspect
`for faults in both the second memory device (hardware) and the game
`application program (software), and there is no basis for importing that
`requirement into the construction of the term “fault inspection program”
`itself. See Pet. Reply 3.
`Next, Patent Owner argues that a “fault inspection program” must be
`distinct from and mutually exclusive of a “boot program” because the two
`elements are listed separately in the claims. PO Resp. 24–25 (citing Becton
`Dickinson & Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed.
`Cir. 2010)); see PO Sur-reply 5–6. Patent Owner cites Figure 1 of the
`’988 patent, which shows a fault inspection program and boot program
`stored in separate areas of a ROM. PO Resp. 25–26; PO Sur-reply 6. Patent
`Owner also argues that, during prosecution of the ’988 patent, the Applicant
`distinguished Bizzarri on the basis that “‘the boot program and the fault
`inspection program are distinct.’” PO Resp. 26 (quoting Ex. 1002, 207)
`(emphasis omitted); PO Sur-reply 6–7 (same). Thus, Patent Owner
`contends, “the claim terms ‘boot program’ and ‘fault inspection program’
`cannot both refer to the same program.” PO Resp. 27; PO Sur-reply 7.
`In response, Petitioner argues that Patent Owner’s proposed
`construction of “fault inspection program” as being “other than a boot
`program” “improperly reads in a requirement that the fault inspection
`program cannot itself be a boot program or be part of, or initiated by, a boot
`program.” Pet. Reply 4. Petitioner argues that the language “other than a
`boot program” is not present in the ’988 patent’s definition of a “fault
`inspection program” as “a program for inspecting whether or not a fault such
`
`14
`
`
`
`IPR2020-01288
`Patent 7,664,988 B2
`as damage, change or falsification occurs in the programs or data.” Id.
`(quoting Ex. 1001, 1:20–23). As for the prosecution history cited by Patent
`Owner, Petitioner contends that the Applicant was responding to the
`Examiner’s “assert[ion] that the E-BIOS in [Bizzarri] is equivalent to both of
`Applicant’s claimed fault inspection program and boot program.” Ex. 1002,
`207; see Pet. Reply 4 (citing Ex. 1002, 184–85). Thus, according to
`Petitioner, the Applicant “was merely noting that the separately recited ‘boot
`program’ and ‘fault inspection program’ in Claim 1 should not be mapped to
`the exact same thing so as to avoid reading one out of the claim.” Pet.
`Reply 4. In Petitioner’s view, it can establish that the prior art teaches both a
`“fault inspection program” and a “boot program” so long as the Petition
`maps separate elements of the prior art to the two limitations. See id. at 5.
`Looking first at the claim language, we agree with Patent Owner that
`each of the independent claims of the ’988 patent recites a “fault inspection
`program” and a “boot program” as separate claim limitations. The
`Applicant’s statement during prosecution confirms that these are separate
`and distinct claim limitations such that a gaming device would read on the
`claim only if it had a fault inspection program separate from a boot program.
`As Petitioner asserts, however, the Applicant did not state that a “fault
`inspection program” cannot itself be a boot program or perform some steps
`of a boot program. See id. In other words, Patent Owner has not pointed to
`anything in the record that compels a construction of “fault inspection
`program” as something “other than a boot program.” Accordingly, the
`claims of the ’988 patent require a “fault inspection program” separate from
`a “boot program,” but we are not persuaded that “other than a boot program”
`should be included in the construction of the claim term “fault inspection
`program.”
`
`15
`
`
`
`IPR2020-01288
`Patent 7,664,988 B2
`For these reasons, we construe “fault inspection program” as
`Petitioner proposes—a “program for inspecting whether or not a fault such
`as damage, change or falsification occurs in the programs or data.”
`2. “boot program”
`Independent claims 1, 6, and 10 recite a “boot program executed when
`the gaming device is started to operate.” Ex. 1001, 4:55–57–58, 5:22–23,
`6:21–22. Petitioner argues that the term “boot program” should be afforded
`its “plain and ordinary meaning” as a “small start-up program that enables a
`computer to load larger programs.” Pet. 6 (citing Ex. 1003 ¶¶ 70–75 (citing
`Ex. 1028, 59; Ex. 1029, 121)10); Pet. Reply 6. Petitioner contends that the
`specification of the ’988 patent does not expressly define “boot program”
`and the disclosed embodiment is merely an example of a boot program
`consistent with Petitioner’s proposed construction. Pet. 6–7 (citing
`Ex. 1001, 3:57–62); Pet. Reply 6–8 (citing Ex. 1001, 3:57–62).
`Patent Owner contends that a boot program, as used in the
`’988 patent, is “a program that initializes various devices including the
`extended BIOS and the operating system.” PO Resp. 27 (citing Ex. 2041
`¶ 46); PO Sur-reply 7. Patent Owner contends that this “construction
`follows precisely from the description of the ‘boot program’ in the
`specification.” Id. (citing Ex. 1001, 3:57–62). Patent Owner also contends
`it is consistent with the ordinary and customary meaning of the term “boot,”
`“which involves a ‘computer execut[ing] the software that loads and starts
`the computer’s more complicated operating system and prepares it for use.’”
`PO Resp. 27 (quoting Ex. 2003, 3) (citing Ex. 2041 ¶ 46). Citing several
`
`
`10 Citations to Exhibits 1028 and 1029 are to the original pagination of these
`exhibits rather than the pagination added by Petitioner.
`
`16
`
`
`
`IPR2020-01288
`Patent 7,664,988 B2
`dictionary definitions, Patent Owner argues that a person of ordinary skill in
`the art would have understood that a boot program must bring the system
`into a useable state to perform its intended functions. Id. at 28–29 (citing
`Ex. 1028, 59; Ex. 1029, 121; Ex. 2021, 4; Ex. 2022, 3; Ex. 2003, 3;
`Ex. 2023, 3);11 see Ex. 2041 ¶¶ 53–54. Patent Owner argues that
`Petitioner’s proposed construction “is overbroad and inconsistent with both
`the intrinsic record and the overwhelming weight of the extrinsic evidence.”
`PO Resp. 27. According to Patent Owner, under Petitioner’s interpretation
`“any program that enables a computer to load larger programs (e.g., the
`operating system itself) would qualify as a boot program.” PO Sur-Reply 9.
`We begin with the intrinsic evidence relied on by the parties. In the
`detailed description of the preferred embodiment, the ’988 patent provides:
`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.
`Ex. 1001, 3:57–62. We agree with Petitioner that this passage does not
`define “boot program.” Pet. Reply 6. Rather, as Petitioner asserts, “the
`specification is simply describing an example of a “boot program here (i.e.,
`in the preferred embodiment) that loads other example programs.” Id. The
`description of the boot program as “initializ[ing] various devices” suggests
`that the full scope of the term “boot program” encompasses initializing or
`loading programs other than an operating system or extended BIOS. See
`Ex. 1001, 3:57–62. Although the parties’ declarants disagree as to whether a
`boot program at the time of the invention was required to load an operating
`
`
`11 Citations to Exhibits 2003, 2021, 2022, and 2023 are to the pagination
`added by Patent Owner.
`
`17
`
`
`
`IPR2020-01288
`Patent 7,664,988 B2
`system, they both testify that not every computer used an extended BIOS.
`Ex. 1003 ¶ 74; Ex. 1051 ¶¶ 5–9; Ex. 1052, 39:20–41:20. This testimony
`further supports Petitioner’s position that the ’988 patent’s description of a
`boot program merely provides examples of devices or programs that a boot
`program initializes. Thus, Petitioner persuasively argues that the
`embodiment described in the ’988 patent is consistent with the construction
`of a “boot program” as a “small start-up program that enables a computer to
`load larger programs.”
`The parties both cite extrinsic evidence (i.e., dictionary definitions) in
`support of their proposed “ordinary” meanings. Pet. 6 (citing Ex. 1028, 59;
`Ex. 1029, 121); PO Resp. 28–29 (citing Ex. 1028, 59; Ex. 1029, 121;
`Ex. 2021, 4; Ex. 2022, 3; Ex. 2003, 3; Ex. 2023, 3). Patent Owner contends
`that “[f]our out of six [dictionaries] state that a boot program will start an
`operating system,” whereas only one supports Petitioner’s construction. PO
`Resp. 28–29 (citing Ex. 2041 ¶ 53). Petitioner argues that “Patent Owner
`concedes that multiple dictionary definitions of ‘boot’ merely refer to
`starting up a computer and do not expressly require initializing specific
`programs, such as an OS or extended BIOS.” Pet. Reply 8 (citing PO
`Resp. 28–29 (citing Ex. 1028, 59; Ex. 1029, 121)). Petitioner also faults
`Patent Owner for “selectively quot[ing] certain of its own preferred
`definitions, many of which also broadly refer to ‘boot’ as starting up a
`computer, without requiring initialization of specific programs such as an
`OS or an extended BIOS.” Id. (citing Ex. 2021, 4; Ex. 2022, 3; Ex. 2003, 3;
`Ex. 2023, 3).
`Having reviewed the extrinsic and intrinsic evidence together, we are
`persuaded by Petitioner’s construction of a “boot program” as a “small start-
`up program that enables a computer to load larger programs.” We find
`
`18
`
`
`
`IPR2020-01288
`Patent 7,664,988 B2
`persuasive a dictionary that explains that “boot” is “derive[d] from the idea
`that the computer has to ‘pull itself up by the bootstraps,’ that is, load into
`memory a small program that enables it to load larger programs.” Ex. 1028,
`59. Other definitions broadly refer to “boot” as starting up a computer. See
`Ex. 1029, 121; Ex. 2021, 4; Ex. 2003, 3; Ex. 2022, 3; Ex. 2023, 3. Although
`some dictionary definitions further specify that “boot” includes loading the
`operating system (see Ex. 2021, 4; Ex. 2022, 3; Ex. 2003, 3; Ex. 2023, 3),
`the extrinsic evidence considered with the specification of the ’988 patent
`supports construing “boot program” not to require loading an operating
`system. See Ex. 1001, 3:57–62.
`Moreover, the ’988 patent explains that a boot program may initialize
`the extended BIOS. Id. Patent Owner, however, does not provide any
`dictionary definitions of “boot” that include initializing the extended BIOS.
`See PO Resp. 27–31; PO Sur-reply 7–10. Accordingly, we are persuaded by
`Petitioner’s broader construction in light of the ’988 patent specification’s
`disclosure of a boot program initializing various devices, including the
`extended BIOS. See Ex. 1001, 3:57–62.
`Finally, we are not persuaded by Patent Owner’s argument that
`Petitioner’s construction is overbroad because it encompasses any program
`that enables a computer to load larger programs, such as a shortcut file or a
`word processing program. See PO Sur-reply 9–10. Patent Owner ignores
`the “start-up” language in Petitioner’s proposed construction. Thus, a “boot
`program” under Petitioner’s construction is not simply any program that
`enables a computer to load larger programs—it is a program that is executed
`during the process of starting a computer.
`
`19
`
`
`
`IPR2020-01288
`Patent
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
