Trials@uspto.gov
`571-272-7822
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`Paper No. 25
`Entered: December 10, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SONY INTERACTIVE ENTERTAINMENT LLC,
`Petitioner,
`
`v.
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`BOT M8, LLC,
`Patent Owner.
`_______________
`
`IPR2020-01288
`Patent 7,664,988 B2
`_______________
`
`Record of Oral Hearing
`Held: November 10, 2021
`_______________
`
`
`
`
`Before KALYAN K. DESHPANDE, LYNNE E. PETTIGREW, and
`JAMES A. TARTAL, Administrative Patent Judges.
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`571-272-7822
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`Paper No. 25
`Entered: December 10, 2021
`
`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
`_______________
`
`Record of Oral Hearing
`Held: November 10, 2021
`_______________
`
`
`
`
`Before KALYAN K. DESHPANDE, LYNNE E. PETTIGREW, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-01288
`Patent 7,664,988 B2
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`
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`ERIC A. BURESH
`JASON R. MUDD
`CALLIE PENDERGRASS
`Erise IP, P.A.
`7015 College Blvd. Ste. 700
`Overland Park, KS 66211
`913.777.5600
`eric.buresh@eriseip.com
`jason.mudd@eriseip.com
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`JEFFREY H. PRICE, ESQ.
`AARON FRANKEL, ESQ.
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`212.715.9100
`jprice@kramerlevin.com
`
`
`
`
`The above-entitled matter came on for hearing on Wednesday,
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`November 10, 2021, commencing at 9:00 a.m. EST, by video/by telephone.
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`IPR2020-01288
`Patent 7,664,988 B2
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`P R O C E E D I N G S
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` (8:01 a.m.)
`JUDGE PETTIGREW: Good morning. Welcome, everybody.
`This is an oral argument for IPR2020-01288. I'm Judge Pettigrew, and the
`other panel members are Judge Deshpande and Judge Tartal. Let's begin
`with appearances from counsel.
`Who do we have for Petitioner?
`MR. MUDD: Jason Mudd for Petitioner, and also with me is lead
`counsel Eric Buresh.
`JUDGE PETTIGREW: Thank you, Mr. Mudd.
`And who do we have for Patent Owner?
`MR. PRICE: For Patent Owner, Your Honor, we've got Jeffrey Price
`from Kramer, Levin, Naftalis, and Frankel, and with me is Aaron Frankel.
`JUDGE PETTIGREW: Thank you, Mr. Price.
`As you know, today, we've set aside 60 minutes for each side to
`present your arguments. Petitioner has the burden of proof and will present
`first, and you can reserve up to 15 minutes for rebuttal. Patent Owner will
`present second, and you can reserve up to 15 minutes for surrebuttal.
`A couple of reminders about this video hearing format before we
`begin. First, our primary concern is that you be heard, so that if any time
`during the proceeding you encounter any difficulties, please let us know
`immediately by contacting the team members who provided you with the
`connection information.
`Also, when you're not speaking, please mute yourself. It helps keep
`down the background noise. Third, please identify yourself when you begin
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`speaking. This helps the court reporter prepare an accurate transcript. And
`lastly, we have the entire record, including the demonstratives, so when you
`refer to a demonstrative or some other paper or exhibit, please do so clearly
`and explicitly by a slide or a page number.
`I think that's it. Petitioner, you may proceed when you're ready.
`MR. MUDD: Thank you, Your Honor. May it please the Board,
`Jason Mudd for Petitioner, Sony Interactive Entertainment. Of my 60
`minutes of argument time, I plan to reserve 10 minutes for rebuttal.
`Turning first to Slide Number 2, the Board has instituted these eight
`grounds of unpatentability raised by Petitioner in this proceeding. Patent
`Owner's arguments, however, focus on only the Sugiyama and Gatto
`references, as well as the Morrow '952 reference, so that is where my
`argument will focus.
`Turning to Slide 3, I'll begin with a brief background on the '988
`patent and how the prior art already solved the problem addressed by the
`'988 patent.
`The stated purpose of the '988 patent is to store a fault inspection
`program in a first memory device so that even if a fault occurs in a second
`memory device, a fault inspection program still properly operates. And this
`comes from Column 1, Lines 58 to 63 of the '988 patent.
`In the specific embodiment described in the '988 patent, a ROM or
`read-only memory is used as the first memory device that stores the fault
`inspection program. The fault inspection program inspects whether a fault
`occurs in the second memory device, which, in the specific embodiment
`disclosed, is a hard disk drive.
`Thus even if a fault occurs in the hard drive, the fault inspection
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`program in the ROM still properly operates because the program is stored
`separately from the hard drive.
`Turning to Slide 4, the Sugiyama reference addressed this same issue.
`Sugiyama stores a hard drive fault inspection program on ROM 22 to inspect
`a separate hard disk drive 24. Sugiyama describes in paragraph 29 that it's
`undesirable to store the service program for inspecting the hard drive on the
`hard drive itself because the hard drive could become corrupted.
`So Sugiyama describes it's desirable to store the service program
`separately in the ROM instead. Specifically, Sugiyama states in paragraph
`29 in the middle of Slide 4, "In consideration of this point, in this karaoke
`terminal 3, the service program relating to the hard disk drive 24 is stored in
`the ROM 22. Thereby, when data of the hard disk drive 24 is corrupted, it
`is possible to perform recovery processing of the hard disk drive 24."
`So as can be seen, Sugiyama addresses the same program in the same
`way as the '988 patent. Specifically, Sugiyama, like the '988 patent, stores a
`hard drive fault inspection program on ROM separately from the hard drive
`being inspected so that even if a fault occurs in the hard drive, the fault
`inspection program still properly operates.
`Turning to Slide 5, the '988 patent describes its fault inspection
`program very broadly and provides very little detail as to how it actually
`operates.
`Column 1 at lines 18 to 25 in the '988 patent provide a definition of
`the term "fault inspection program" as being a program for inspecting
`whether or not a fault such as damage, change, or falsification occurs in the
`programs or data, which the '988 patent states is hereinafter abbreviated as
`"fault inspection program."
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`So, the '988 patent is, in effect, defining the term "fault inspection
`program," and the term broadly encompasses inspecting whether or not a
`fault occurs in programs or data, and it lists exemplary faults such as
`damage, change, or falsification.
`Turning to Slide 6, like the fault inspection program of the '988 patent,
`Sugiyama discloses in Figure 5 the series of steps that are designed to
`determine whether or not a fault occurs. Specifically the CPU 20 executes
`an HDD inspection program P2 and checks the details of the abnormality of
`the hard disk drive 24.
`Turning to Slide 7, after the details of the abnormality are faulted and
`confirmed, they are displayed. Sugiyama can detect whether the problem is
`damage to the hard drive itself, and if it's not, such as when stored data is
`destroyed, an initialization program can be executed to restore the destroyed
`data.
`
`When restoration is not possible, such as when the hard drive itself is
`damaged, a company is requested for the requested repairs. Thus,
`Sugiyama discloses a fault inspection program that inspects both physical
`damage to the hard disk and damage to stored data.
`Turning to Slide 8, having provided that brief overview of the '988
`patent and Sugiyama, here's an overview of the issues raised by Patent
`Owner in this proceeding.
`First, the proper construction of the term "fault inspection program."
`Second, the proper construction of the term "boot program." Third, whether
`Sugiyama discloses the claimed "fault inspection program." Fourth,
`whether a POSITA would have been motivated to combine Sugiyama with
`Gatto.
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`Fifth, whether Sugiyama in view of Gatto disclose the control device
`that completes execution of the fault inspection program before the game is
`started. Sixth, whether Morrow '952 discloses the claimed fault inspection
`program. And seventh, whether Morrow '952's file allocation reader is a
`boot program.
`Turning to Slide 9, the first issue is the proper construction of the term
`"fault inspection program." Patent Owner repeats its same construction that
`it raised in its preliminary response of "a program, other than a boot
`program, that inspected a memory device for faults, including damage to the
`memory and change or falsification of programs stored thereon."
`The Board rejected this construction at institution and instead
`construed the term as "a program for inspecting whether or not a fault such
`as damage, change, or falsification occurs in the programs or data."
`Petitioner has proposed the same construction as the Board.
`As shown on Slide 10, the Board's claim construction for fault
`inspection program nears the definitional statement in the '988 patent itself,
`which abbreviates the term "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."
`Thus, the Board's construction verbatim repeats this definition, as it
`should, because when the applicant acts as a lexicographer in the
`specification and defines the term, that definition is controlling under
`Phillips, as it should be here.
`Importantly, in this definition in the '988 specification, damage,
`change, and falsification are exemplary types of faults; they are thus not the
`only types of faults. Inspecting damage to the memory should not be a
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`requirement for the proper construction of the term "fault inspection
`program." Damage is only one exemplary type of fault listed.
`Looking at back at Patent Owner's construction on Slide 9, that
`construction improperly requires inspecting damage to the memory. But
`again, damage is only one exemplary type of fault. Change or falsification,
`such as tampering, for example, are also examples of faults that would be
`included within the scope of fault inspection program by the '988 patent.
`But the claim language recites inspecting whether or not a fault occurs
`in the second memory device and the game application program stored
`therein. Importantly, this language encompasses any types of faults in the
`second memory device containing the application program.
`Damage, change, or falsification are all exemplary types that are
`encompassed, and indeed, any faults whatsoever are encompassed. Thus,
`limiting the term "fault inspection program" to requiring inspection for only
`memory damage would be improper.
`Turn to Slide 11. The next part of Patent Owner's construction that
`improperly reads in a limitation are the words "other than a boot program."
`Most notably, the words "other than a boot program" are not present
`anywhere in the '988 patent specification, and they're certainly not present
`within the specification's definition of what a fault inspection program is
`defined to be.
`A patent owner purports to pull this "other than a boot program"
`language from the file history of the '988 patent. In the file history, the
`Applicant stated that in Applicant's Claim 1, the boot program and the fault
`inspection program are distinct.
`This statement merely said that the boot program of Claim 1 and the
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`fault inspection program of Claim 1 are distinct and should not be mapped to
`the same thing, because in prosecution, the examiner had mapped both the
`boot program and fault inspection program to the exact same thing.
`Of course, they should not be mapped to the exact same thing because
`it would render use of different terms superfluous and could risk reading one
`out of the claim.
`But what this statement in the file history did not state is that a fault
`inspection program can never be a boot program or can never be part of a
`boot program or cannot be initiated by a boot program. It never said that.
`All it was saying is that the claimed boot program and the claimed fault
`inspection program should not be the exact same thing, and here in this IPR,
`Petitioner has not mapped them both to the same thing.
`Turning to Slide 12, Patent Owner also tries to support its "other than
`a boot program" construction by relying on Figure 1 of the '988 patent,
`which depicts a boot program storing area 13a and the fault inspection
`program storing area in 13b.
`But this, of course, is simply describing an embodiment of a particular
`way of storing the boot program and the fault inspection program. It would
`be improper to read in a limitation from an embodiment. And again,
`nothing in the spec indicates, even in an embodiment, that a fault inspection
`program cannot also be a boot program, or cannot be a part of or initiated by
`a boot program.
`Thus, as the Board noted at institution at the bottom of Slide 12, "We
`see nothing persuasive in the record that precludes the fault inspection
`program from also being a boot program."
`There's nothing more in the record to change that conclusion now, and
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`the Board should therefore reaffirm its claim construction of fault inspection
`program.
`Turning to Slide 13, the next claim construction issue is the proper
`construction of the term "boot program." Patent Owner proposes to
`construe this term as "a program that initializes various devices, including
`the extended BIOS and the operating system."
`This is the same construction that Patent Owner proposed in his
`preliminary response that the Board rejected at institution. The Board
`construed this term at institution to have its plain and ordinary meaning as "a
`small start-up program that enables a computer to load larger programs."
`Petitioner has also proposed to construe the term in the same manner as the
`Board.
`Turn to Slide 14, the Board construed this term in a manner consistent
`with its usage in the plain claim language. Specifically, the claim language
`recites "a boot program executed when the gaming device is started to
`operate." This establishes a boot program as being a start-up program.
`Patent Owner relies on an embodiment for reading in the limitations
`requiring initializing devices, including the extended BIOS and the operating
`system.
`Specifically, Patent Owner relies on column 3, lines 57 to 62 of the
`'988 specification, which states that here the boot program is a program
`stored in the boot program storing area 13a of the ROM13, and based on the
`boot program, initialization of various devices, including the extended BIOS
`in the hard disk 24 and the OS in the hard disk 24 is executed.
`JUDGE TARTAL: Counsel, this Judge Tartal.
`MR. MUDD: In view of --
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`JUDGE TARTAL: Sorry to interrupt.
`MR. MUDD: Sorry, Your Honor.
`JUDGE TARTAL: Just while it's on my mind, can we go back to
`your Slide 11? And are you acknowledging that the statement that the boot
`program and the fault inspection program are distinct is sufficient to
`constitute a disclaimer?
`MR. MUDD: Well, there -- not the type of disclaimer that the Patent
`Owner is arguing. The Patent Owner is arguing that a fault inspection
`program can never be a boot program, and that's not what the file history
`says.
`The file history simply says that the boot program claimed in Claim 1
`and the fault inspection program claimed in Claim 1 are distinct, so those
`two things should not be mapped to the exact same thing in the prior art.
`And Petitioner here has not mapped those two things to the exact same thing
`in the prior art.
`JUDGE TARTAL: Could you explain what you mean by not to “the
`exact same thing”? Because, as I understand, you were suggesting that the
`boot program could also be a fault inspection program. What is it that
`you're arguing makes that same element still have two distinct features
`covering both the boot program and the fault inspection program?
`MR. MUDD: Well, what I'm saying is that -- I mean, the Patent
`Owner is taking it to the extreme, to say that a fault inspection program can
`never be a boot program, when that's not what the file history was talking
`about. The file history was really saying that the claimed boot program in
`Claim 1 and the claimed fault inspection program in Claim 1 are distinct, so
`those two claimed items are distinct from each other. That's far different
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`than saying that a fault inspection program is never a boot program.
`JUDGE TARTAL: So a single element can satisfy both of the claim
`features, the boot program and the fault inspection program. Is that your
`position?
`MR. MUDD: No. That's not. That's not our position. Our
`position is that the claimed boot program and the claimed fault inspection
`program should not be mapped to the same thing, and indeed they're not by
`Petitioner in this proceeding. They're mapped to different elements in the
`prior art.
`For example, in Sugiyama, the start-up programs didn't map to the
`boot program, and the fault inspection program isn't mapped to both the
`HDD inspection program P2, or alternatively, steps SA2 and SA4 through
`SA11. So they'd been mapped to different things than Sugiyama.
`Similarly, in Morrow, the file allocation reader's been mapped to the
`boot program, and the verification software 70 has been mapped to the fault
`inspection program. So in neither instance has Petitioner mapped the terms
`the boot program and the fault inspection program to the same thing.
`JUDGE TARTAL: So you’re suggesting that it could be a -- both the
`boot program and inspection program in one element, and in a separate
`reference, just one or the other. Is that correct? I'm trying to understand
`what you’re --
`MR. MUDD: I'm not sure I understand your question.
`JUDGE TARTAL: -- calling it distinct as. Is it because you're
`pointing to two different references for each element, one for the boot
`program and one for the fault inspection program, that you're suggesting that
`they are distinct, even if one of those two would encompass, for example, a
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`boot program, as well?
`MR. MUDD: Yes. I think that's right, Your Honor. We're pointing
`to different things in the prior art for those two elements, so they are distinct,
`even if you would -- could classify one of them as being also a boot program
`in addition to a fault inspection program.
`JUDGE TARTAL: Okay. Thank you.
`MR. MUDD: So I think that's right, Your Honor. Yes. Thank you.
`Returning to the proper construction of the term "boot program,"
`so -- and I was on Slide Number 14 -- and Patent Owner relies -- again is
`relying on an embodiment for reading in limitations requiring initializing
`extended BIOS and the operating system.
`Specifically,
`Patent Owner relied on column 3, lines 57 to 62 of the '988 specification,
`which, again, states that here the boot program is stored in the boot program
`storing area 13a. And based on the boot program, initialization of various
`devices, including the extended BIOS in the hard disk 24 and the OS in the
`hard disk 24, is executed.
`By using the signal "here," the spec is referring to this particular
`embodiment. Nothing in this sentence is purporting to be a definition. It
`does not say this language is abbreviated as being a boot program like it did
`for the fault inspection program. We saw that when the specification tends
`to define a term such as it did for a fault inspection program, it uses very
`specific language. Here it does not use similar language.
`The specification also does not say, "the term boot program as used
`here, it means X," or used any similar signaling language to clearly indicate
`the Applicant was acting as a lexicographer. So because the spec does not
`give it a narrow definition, the term "boot program" should be afforded its
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`full plain and ordinary meaning.
`Turn to Slide 15. As shown from this dictionary of computer terms,
`the term "boot" means "to start up a computer. The term 'boot' derives 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.'"
`Thus, a boot program is a small start-up program that enables a computer to
`load larger programs.
`Importantly, an extended BIOS and operating system are not recited
`in the claims. Patent Owner's construction would result in wholesale
`incorporation of two programs not recited in claims. Also, Petitioner's
`expert explained that there was no inherent requirement that a boot program
`load an operating system.
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`He further explained that boot programs exist that do not initialize an
`operating system and provided an example of such boot programs, such as
`bootstrap loaders, which do not initialize an operating system, and as Patent
`Owner's expert agreed, computers need not use an extended BIOS.
`Thus, Patent Owner's construction improperly requires a boot program
`initialize the extended BIOS and operating system. The Board should again
`reject this construction and reaffirm the Board's construction of boot
`program.
`Turning to Slide 16 and turning to the next issue, Sugiyama discloses
`the claimed fault inspection program. It does so in two alternative ways.
`First, the HDD inspection program P2 is a fault inspection program. And
`second, alternatively, steps Sa2 and Sa4 through Sa11 of Figure 5 are also a
`fault inspection program.
`As described in the abstract of Sugiyama, the karaoke terminal 3 has a
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`service program for causing a CPU 20 to execute processing for examining
`and restoring failures and the like of a hard disk drive 24.
`Turn to Slide 17. In step Sa2, it's determined whether an abnormality
`has occurred. If so, then in Sa4, it's determined whether it's an abnormality
`relating to the hard disk drive. Then in Sa5, the CPU executes the HDD
`inspection program P2 stored in the ROM to "check the details of the
`abnormality of the hard disk drive 24."
`When the details of the abnormality are confirmed, the confirmed
`details are then displayed on the monitor of the display unit in step Sa6.
`The process of ascertaining the details of the abnormality on the hard disk
`and then displaying them is, itself, the inspection of a fault, as the Board
`noted in its institution decision on page 29. In this way, HDD inspection
`program P2 is itself a fault inspection program.
`Turning to Slide 18, when the display details of the abnormality are
`not damage to the hard drive itself, such as when stored data is destroyed,
`then an initialization program, P1, reinitializes the hard drive in step Sa7.
`Paragraph 29 in the middle of Slide 18 describes it as follows, "when data of
`the hard disk drive 24 is corrupted, it is possible to perform recovery
`processing of the hard disk drive as described above."
`Whereas, shown on the bottom of Slide 18, Sugiyama may determine
`that the hard disk drive itself is damaged and that initialization is not
`possible. In that case, the manufacturer or restoration company is requested
`for repairs. Thus, in this way, the steps Sa2 and Sa4 through Sa11 are also
`a fault inspection program.
`Turning to Slide 19, Patent Owner argues --
`JUDGE PETTIGREW: Counsel, this is Judge Pettigrew. Could you
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`go back to Slide 18 just for a moment.
`MR. MUDD: Yes.
`JUDGE PETTIGREW: Just while we have that figure up, I wanted
`to revisit the discussion we were having earlier about what you're relying on
`for the boot program, versus what you're relying on for the fault inspection
`program. Remind us, in this figure, what you're relying on for teaching the
`boot program in Claim 1.
`MR. MUDD: Yes. So, step Sa1, the spec says that that is where the
`start-up program is executed. So that is the boot program that we're relying
`on. That's step Sa1.
`JUDGE PETTIGREW: All right. And that's completely separate
`from any of the steps that you're relying on for either of your alternatives for
`the fault inspection program?
`MR. MUDD: Yes, that's correct, Your Honor.
`JUDGE PETTIGREW: Okay. Thank you.
`MR. MUDD: Turning to Slide 19, Patent Owner's arguing that
`Sugiyama's fault inspection program is part of a boot program and thus
`cannot be a fault inspection program as construed by Patent Owner.
`First, Patent Owner's "other than a boot program" claim construction
`is incorrect for the reasons discussed. The proper construction of a fault
`inspection program does not preclude it from being part of a boot program or
`from being initiated by a boot program.
`Second, in any event, both of the fault inspection programs of
`Sugiyama identified by Petitioner are other than a boot program. The
`start-up program executed in step Sa1 is a boot program. Steps Sa2 and Sa4
`through Sa11 are defined as separate steps from Sa1, so those steps are other
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`than a boot program.
`Similarly, the inspection program P2 is also separate from the start-up
`program in Sa1 and is thus also other than a boot program. In fact, the
`inspection program P2 is depicted in Figure 3 as being stored separately
`from the start-up program in the ROM 22.
`Turning to Slide 20, Patent Owner next argues that Sugiyama cannot
`inspect both hardware and software faults. But in Sugiyama, as has been
`discussed, the fault inspection program can inspect both hardware faults,
`such as damage to the hard disk drive itself, and can also inspect software
`faults, such as from destroyed and corrupt data, which can be reinitialized.
`This is shown in Slide 21, which is a repeat of an earlier slide.
`First, as shown in paragraph 24 in Slide 21, the fault may be from
`damage to the hard disk drive itself, or the fault may be caused from stored
`data being destroyed or corrupted. As noted in paragraph 29, if the fault is
`from stored data being corrupted, then recovery processing can be performed
`in the form of reinitializing the hard drive in step Sa7.
`Otherwise, as noted in paragraph 24, if the hard drive itself is
`damaged, then Sugiyama displays that restoration is not possible, and the
`manufacturer or a restoration company is requested for repairs. Thus
`Sugiyama can inspect both damage to the hard drive itself, and it can inspect
`software through inspecting destroyed or corrupted data.
`Sugiyama can therefore inspect both hardware and software faults and
`thus is capable of inspecting whether or not a fault occurs in the second
`memory device and the game application program stored therein.
`Turning next to Slide 22, the next issue I'd like to address pertains to
`whether Sugiyama executes the fault inspection program before the game is
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`started. First, Patent Owner does not dispute that Sugiyama's karaoke
`singing scoring program is a game.
`Second, the process flow of Figure 5 shows that Sugiyama inspects
`for faults prior to starting the game. In step Sa2, Sugiyama determines
`whether an abnormality has occurred. And if not, then normal karaoke
`processing is performed in step Sa3.
`So, in that example, an initial fault inspection occurs prior to starting
`the game. If an abnormality does occur in step Sa2, then the process flows
`to steps Sa4 through Sa11 to address a hard disk drive abnormality. That
`flow includes executing HDD inspection program P2. After step Sa11 has
`been completed, then again normal karaoke processing is performed at step
`Sa3 when the game is started.
`So, in both instances, the game is executed last in step Sa3 after fault
`inspection has occurred. And importantly, as shown in the bottom of Slide
`22, Patent Owner's expert agrees that Sugiyama executes the inspection
`programs prior to executing its application program.
`This, of course, all makes sense that you would inspect for faults first,
`prior to starting the game, to help avoid system crashes or other problems
`with game play.
`I'm going to skip ahead to Slide 24. I'm turning to the next issue.
`The next issue is that a POSITA would have been motivated to combine
`Gatto with Sugiyama. In particular, a POSITA would have been motivated
`to combine Gatto's motherboard with Sugiyama for connecting Sugiyama's
`computer components. This is for numerous reasons.
`It's undisputed that motherboards were ubiquitously utilized by the
`time of the invention, and they were a common, well-known way to connect
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`common computer components such as a CPU, RAM, ROM, and a hard
`drive. This would have been a combination of known elements according
`to known methods, and an obvious design choice, given the predictable
`nature of using a motherboard to connect such components.
`Patent Owner argues that there would have been no motivation to
`combine, because a POSITA would not have combined Sugiyama's
`embedded operating system with Gatto's desktop operating system. This
`argument fails for numerous reasons.
`First, merely using a motherboard, as taught by Gatto, would not have
`involved combining Gatto's operating system with Sugiyama's operating
`system, as Petitioner's expert explained. A motherboard is being used, not
`Gatto's operating system.
`Second, in any event, Sugiyama is not limited to being implemented
`as an embedded OS, and Gatto is not limited to being implemented as a
`desktop OS. Thus there is no combination occurring of an embedded OS
`being combined with a desktop OS.
`Turning to Slide 25, first Sugiyama is not limited to using an
`embedded OS by Patent Owner's own definition. Patent Owner and its
`expert both emphasized that an embedded OS is a single application system
`that does not load and execute other applications. Instead, the system is
`only able to run a single application.
`Sugiyama's express teachings are not consistent with this definition of
`an embedded system. Sugiyama is not a single application system.
`As noted at the bottom of Slide 25, Sugiyama's karaoke devices load
`various applications received from a center station. They have a CPU for
`executing various application programs or service programs. They have a
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`hard drive for storing multiple applications, and Sugiyama describes its
`karaoke devices as having flexibility in changing between multiple
`applications.
`Sugiyama is a multiple application system, thus Sugiyama is not
`limited to being an embedded OS
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