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. IPR2020-01288
`U.S. Patent No. 7,664,988
`____________
`
`REPLY DECLARATION OF ANDREW WOLFE, PH.D.
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`IPR2020-01288
`Sony EX1051 Page 1
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`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY INTERACTIVE ENTERTAINMENT LLC
`Petitioner
`
`v.
`BOT M8, LLC
`Patent Owner
`____________
`
`Case No. IPR2020-01288
`U.S. Patent No. 7,664,988
`____________
`
`REPLY DECLARATION OF ANDREW WOLFE, PH.D.
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`IPR2020-01288
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`IPR2020-01288
`U.S. Patent 7,664,988
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`I, Andrew Wolfe, hereby declare the following:
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`I.
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`INTRODUCTION
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`1.
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`I have been asked to respond to certain selected arguments made by
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`Patent Owner in Patent Owner’s Response and to certain selected opinions provided
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`by Dr. Long Yang in his declaration (Ex. 2041) that accompanied Patent Owner’s
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`Response.
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`2. My opinions in my original declaration (Ex. 1003) remain the same. As
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`such, I incorporate by reference those opinions in their entirety.
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`3.
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`In addition to the materials reviewed in preparing my original
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`Declaration in this matter (Ex. 1003), I have reviewed the following additional
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`materials in this matter subsequent to submitting my original Declaration:
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`• Institution Decision (Paper 11)
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`• Patent Owner’s Response (Paper 15)
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`• Declaration of Dr. Long Yang in Support of Patent Owner’s Response
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`(Exhibit 2041)
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`• Exhibit 1053 - Silberschatz, Abraham, et al., Operating System Concepts,
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`7th Ed., 2005, John Wiley & Sons, Inc. (“Silberschatz”)
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`4.
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`I have set forth my additional responsive opinions on selected issues
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`below.
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`II. OPINION
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`“Boot Program”
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`5.
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`I understand that Dr. Yang and Patent Owner have argued that the term
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`“boot program” as used in the claims of the ’988 patent means “a program that
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`initializes various devices including the extended BIOS and the operating system.”
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`Yang Decl. (Ex. 2041), ¶46; Patent Owner Response, 27. In my opinion, this
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`definition is unduly narrow and is not consistent with the plain and ordinary meaning
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`of the term “boot program” as would have been understood by a PHOSITA. As I
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`explained in my original declaration, this term would have generally been
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`understood by a PHOSITA in a manner consistent with usage of the term “boot” as
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`describing the process of loading into memory a small start-up program that enables
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`a computer to load larger programs. Wolfe Decl. (Ex. 1003), ¶¶74-75 (citing Ex.
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`1028 & Ex. 1029).
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`6.
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`Importantly, a boot program may load other boot programs during the
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`boot process such that a given individual boot program need not itself execute the
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`operating system for a computer. Ex. 1053 (Silberschatz) at 71-72. As an example,
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`computers may use a multi-step process in which a boot program, such as a simple
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`bootstrap loader may fetch a more complex boot program from disk, which may in
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`turn load the kernel for the computer. Id. at 71. The simple bootstrap loader may be
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`in firmware and may be relatively simple code that does not itself execute the
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`operating system but instead retrieves a more complex boot program from disk. Id.
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`at 71-72. Thus, this illustrative boot process is consistent with the plain and ordinary
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`meaning of a boot program being a small start-up program that enables a computer
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`to load larger programs. In some cases, a boot program might itself execute the
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`operating system. But, in other cases, a boot program may be relatively small and
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`may load other larger programs that are not the operating system itself. The
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`Silberschatz textbook is among the most widely used textbooks in computer science
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`education and particularly with respect to operating systems. Google Scholar
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`indicates that it has been cited over 5000 times.
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`7.
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`I understand Dr. Yang and Patent Owner point to column 3, lines 57-62
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`of the specification of the ’988 patent in support of their proposed construction of a
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`“boot program,” specifically they point to the following:
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`Here, the boot program is a program stored in the boot program storing area
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`13 a of the ROM 13, and based on the boot program, initialization of various
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`devices including the extended BIOS (Basic Input Output System) in the hard
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`disk 24 and the OS (Operating System) in the hard disk 24 is executed.
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`Ex. 1001 (’988 Patent), 3:57-62.
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`8. A PHOSITA would have understood the above text to be providing a
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`description of an example of a boot program, but not a definition of the term “boot
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`program,” because the above language is merely exemplary in nature. A boot
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`program need not itself initialize the operating system in order to be deemed a “boot
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`program,” as discussed above. Indeed, the simple bootstrap loader boot program
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`described above does not itself initialize the operating system but is nonetheless an
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`example of a boot program.
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`9.
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`In addition, a “boot program” need not also initialize an extended BIOS
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`because a computer need not have an extended BIOS. If an extended BIOS is
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`present, a separate, larger boot program may be what initializes the extended BIOS.
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`I, therefore, also disagree with the portion of Dr. Yang and Patent Owner’s
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`construction that purports to require that a boot program must initialize both an
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`extended BIOS and operating system in order to be deemed a “boot program.”
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`Opinions regarding Sugiyama’s OS and the combination with Gatto
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`10. As I explained in my original Declaration (Ex. 1003), a PHOSITA
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`would have been readily motivated to use a motherboard in Sugiyama, in view of
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`Gatto’s teachings, in light of the ubiquitous and well-known use of motherboards for
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`electrically connecting computer components such as a CPU, ROM, RAM, and
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`HDD, among other components. Wolfe Decl. (Ex. 1003), ¶¶174-178. I understand
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`that there has been some suggestion from Patent Owner and Dr. Yang that using a
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`motherboard in Sugiyama, as inspired by Gatto’s teaching of using a motherboard,
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`would have required replacing Sugiyama’s operating system (OS) with Gatto’s OS.
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`Patent Owner Response, 49-55. I disagree. A PHOSITA would have understood
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`that merely connecting Sugiyama’s computer components (including, e.g., CPU,
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`ROM, RAM, and HDD) using a well-known motherboard, in view of Gatto’s
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`teachings to connect such components with a motherboard, would not have required
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`replacing Sugiyama’s OS with Gatto’s OS. Instead, because these are all hardware
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`components, the hardware would be connected using a motherboard while
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`preserving the software functionality (and OS) of Sugiyama. In addition, use of a
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`motherboard, as taught by Gatto, would not render Sugiyama inoperable or change
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`its principle of operation because it would merely be providing a well-known and
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`ubiquitous way to connect Sugiyama’s hardware components, while preserving the
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`software functionality of Sugiyama.
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`11. Moreover, Patent Owner misrepresents the operating systems discussed
`
`in Gatto, which are not limited to desktop operating systems but also encompass
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`embedded systems. See Gatto, 3:8-15 (describing software from Microsoft, QNX,
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`WindRiver Systems, and Unix or from the Linux community). Gatto explicitly
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`describes a preferred embodiment using an embedded version of Microsoft
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`Windows. Gatto at 20:10-16 (“Microsoft Windows operating system (standard or
`
`embedded version)”); 21:20-26 (same); 23:4-10 (same). Further, QNX was an
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`embedded operating system, and WindRiver Systems produced the VX works
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`embedded operating system, which I personally used in commercial DVR designs
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`in 2001 and 2002. Gatto, thus, mentions using numerous embedded operating
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`systems. Gatto, therefore, would have been understood by a PHOSITA to disclose
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`use of both desktop and embedded operating systems and would not have been
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`limited to using only a desktop operating system, contrary to Patent Owner and Dr.
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`Yang’s assertions.
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`12.
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`It is also my opinion that Sugiyama does not describe itself as being an
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`embedded system using an embedded OS nor would a PHOSITA have understood
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`Sugiyama to be limited to being implemented as an embedded system using an
`
`embedded OS. In any case, Sugiyama is a gaming machine and Gatto describes
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`specific preferred hardware and software for a gaming machine.
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`13. Dr. Yang and Patent Owner contend that embedded operating systems
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`“do[] not load and execute other applications; instead the operating system is the
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`application.” Patent Owner Response, 11 (citing Ex. 2018; Yang Decl. ¶36)
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`(emphasis in original). According to Dr. Yang, “[t]his means that the [embedded]
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`system is only able to run a single application.” Yang Decl. ¶36. This is incorrect.
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`But even accepting these assertions as correct, there are numerous portions of
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`Sugiyama’s description that are contrary to this characterization of an embedded
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`system set forth by Patent Owner and Dr. Yang.
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`14. Sugiyama’s disclosed karaoke devices can load various application
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`programs received from a center station over a communications network. This is
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`discussed for example, in paragraph [0002] of Sugiyama where it describes that new
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`application programs, such as a karaoke processing program, a singing scoring
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`program, or other similar programs can be supplied from the center station.
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`Sugiyama, ¶[0002] (“In such a communication karaoke system, when supplying a
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`new application program, for example, a karaoke performance processing program,
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`a singing scoring program, or the like, to each terminal karaoke device, application
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`program data is transmitted from a center station via the communication network.”).
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`In addition, when describing its CPU, Sugiyama explains that its CPU can execute
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`various applications, such as application programs and service programs. Sugiyama,
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`¶[0010] (“[T]he karaoke terminal 3 is provided with a CPU (processing means and
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`writing means) 20 for controlling portions of the device according to various
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`programs such as application programs or service programs.”). Thus, Sugiyama’s
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`CPU is not limited to running only one dedicated application program, contrary to
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`Patent Owner and Dr. Yang’s characterization of an embedded OS.
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`15.
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`In addition, Sugiyama describes that its hard disk drive stores multiple
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`application programs, which also demonstrates that it is not limited to running a
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`single application, again contrary to Patent Owner and Dr. Yang’s characterization
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`of an embedded OS. Sugiyama, ¶[0012] (“[T]he hard disk drive 24 has an
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`application storage area (first region) 24a for storing application programs . . . .”).
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`Finally, I note that Sugiyama expresses a desire to afford flexibility in its system to
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`change between application programs. Sugiyama, ¶[0019] (“[T]hus the degree of
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`freedom in changing application programs, adding peripheral devices, and the like
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`is greater.”). This, too, is inconsistent with Patent Owner and Dr. Yang’s assertion
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`that Sugiyama is limited to an embedded OS.
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`16. All of the above description from Sugiyama regarding the ability to store
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`various application programs, the ability to execute multiple application programs,
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`the ability to add new applications, and the ability to change between applications,
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`is not consistent with Patent Owner and Dr. Yang’s contention that Sugiyama is
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`limited to being implemented on a single-application embedded OS. A PHOSITA,
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`therefore, would not view Sugiyama as being limited to being implemented on an
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`embedded OS, in my opinion. In addition, there is no reason why a PHOSITA would
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`view Sugiyama as being limited to being implemented as an embedded system using
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`an embedded OS simply by virtue of Sugiyama being directed to a karaoke system.
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`Indeed, as discussed above, Sugiyama includes a multitude of discussion that is not
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`consistent with it using an embedded OS because it has the ability to store, execute,
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`and switch between multiple application programs and is not limited to being a
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`single-application embedded OS.
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`17. Thus, based on the above and for the foregoing reasons, Patent Owner
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`and Dr. Yang are incorrect to assert that the combination of Sugiyama and Gatto
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`would have involved combining an embedded operating system with a desktop
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`operating system. Sugiyama is not limited to being implemented using an embedded
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`operating system, and, similarly, Gatto is not limited to being implemented using a
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`desktop operating system.
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`III. CONCLUSION
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`18.
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`I declare that all statements made herein of my knowledge are true, and
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`that all statements made on information and belief are believed to be true, and that
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`these statements were made with the knowledge that willful false statements and the
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`like so made are punishable by fine or imprisonment, or both, under Section 1001 of
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`Title 18 of the United States Code.
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`Date:
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`By:
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`Andrew Wolfe, Ph.D.
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`10
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`7/21/21
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