BOT M8, LLC

Patent Trials and Appeals Board

Oct 4, 2021

IPR2020-00726 (P.T.A.B. Oct. 4, 2021)

Trials@uspto.gov Paper 36
571-272-7822 Date: October 4, 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.

IPR2020-00726
Patent 8,112,670 B2

Before KALYAN K. DESHPANDE, LYNNE E. PETTIGREW, and
AMBER L. HAGY, Administrative Patent Judges.
DESHPANDE, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)
Denying Patent Owner’s Motion to Exclude Evidence
37 C.F.R. § 42.64

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I. INTRODUCTION
A. Background
Sony Interactive Entertainment LLC (“Petitioner”) filed a Petition
requesting inter partes review of claims 1–5 of U.S. Patent No. 8,112,670
B2 (Ex. 1001, “the ’670 patent”). Paper 1 (“Pet.”). Bot M8, LLC (“Patent
Owner”) filed a Preliminary Response. Paper 9 (“Prelim. Resp.”). With our
authorization, Petitioner thereafter filed a Reply (Paper 11 (“Reply”)) and
Patent Owner filed a Sur-reply (Paper 12 (“Sur-reply”)) to address issues
involving 35 U.S.C. § 325(d).
On October 6, 2020, we instituted inter partes review of claims 1–5 of
the ’670 patent. Paper 13 (“Dec.”). After institution, Patent Owner filed a
Patent Owner’s Response. Paper 17 (“PO Resp.”). In response, Petitioner
filed Petitioner’s Reply to Patent Owner’s Response. Paper 20 (“Pet.
Reply”). Patent Owner filed a Sur-Reply to Petitioner’s Reply to Patent
Owner’s Response. Paper 22 (“PO Sur-reply”).
The parties requested oral argument (Papers 23, 24), which we held
by video on July 13, 2021. Paper 35 (“Tr.”).
The Board has jurisdiction under 35 U.S.C. § 6. In this Final Written
Decision, after reviewing all relevant evidence and arguments, we determine
Petitioner has met its burden of showing, by a preponderance of the
evidence, that claims 1–5 of the ’670 patent are unpatentable.
B. Related Matters
Petitioner and Patent Owner indicate that the ’670 patent was the
subject of a patent litigation BOT M8, LLC v. Sony Corporation of America
et al., No. 1: 19-cv-07529 (SDNY), which was transferred to the Northern
District of California (No. 3:19-cv-07027). Pet. 73; Paper 5, 1. Petitioner
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3
indicates that this case has been dismissed with respect to the ’670 patent.
Paper 8, 1.
We note a related inter partes review pending between the parties,
Sony Interactive Entertainment LLC v. Bot M8, LLC, IPR2020-01288, that
was instituted on February 16, 2021. IPR2020-01288 relates to U.S. Patent
No. 7,664,988 (“the ’988 patent”), which issued from the parent application
(U.S. Serial No. 11/205,121) of the ’670 patent. PO Resp. 23.
C. The ’670 Patent
The ’670 patent discloses “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, 1:36–40. Figure 1 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 2:15–16.
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 2:36–39. CPU 12 controls
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information process device 1 and executes various programs, and therefore,
“CPU 12 corresponds to a control device.” Id. at 2:40–42. 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 2:43–51.
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 1:21–26, 3:19–25.
Information process device 1 begins to operate when CPU 12 executes
the start program and, in turn, the boot program. Id. at 3:53–58. The boot
program initializes the BIOS and the operating system. Id. at 3:59–64. The
operating system is then loaded into RAM 14 and starts to operate. Id. at
3:65–66. 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
4:1–9. If there is no fault in hard disk 24, the application program is loaded
into RAM 14 and begins to execute. Id. at 4:15–19. Otherwise, if there is a
fault in hard disk 24, an error is displayed on output device 21. Id. at 4:19–
23. 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 4:25–31.
D. Illustrative Claims
Petitioner challenges claims 1–5 of the ’670 patent. Pet. 4–72.
Independent claims 1 and 4 are illustrative of the challenged claims and are
reproduced below:
1. A gaming device configured to execute a game, the gaming
device comprising:
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a mother board on which a first memory device is
provided;
a second memory device configured to store a game
application program, the second memory device being connected
to the mother board; and
a control device for executing a fault inspection program
for the second memory device to inspect whether or not a fault
occurs in the second memory device;
wherein the fault inspection program is stored in the first
memory device, and the control device completes the execution
of the fault inspection program before the game is started.
Ex. 1001, 4:61–5:7.

4. A gaming device configured to execute a game, the gaming
device comprising:
a ROM configured to store a fault inspection program;
a memory device which is electrically rewritable a game
application program stored therein;
a control device configured to execute the fault inspection
program to inspect whether or not a fault occurs in the game
application program stored in the memory device;
wherein 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.
Id. at 5:15–6:10.

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E. Instituted Grounds of Unpatentability and Evidence of Record
We instituted the instant trial based on the following grounds of
unpatentability.1 Dec. 6, 35.
Claim(s) Challenged 35 U.S.C. § References
1–4 103(a) Sugiyama,2 Gatto3
5 103(a) Sugiyama, Gatto, Yamaguchi4
1–4 103(a) Morrow ’952,5 Morrow ’7716

II. ANALYSIS
A. 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
with one or more years of experience in the field of authentication,
verification, and/or error detection in the context of computer hardware
and/or software.” Pet. 2 (citing Ex. 1003 ¶¶ 49–51). Patent Owner proposes
that “a person of ordinary skill in the art [o]n August 17, 2005 (the earliest
effective date of the ’670 Patent) would have had a Bachelor’s degree in
Electrical Engineering, Physics, or a related field, and approximately one or

1 Petitioner also relies on the Declaration of Andrew Wolfe, Ph.D. Ex. 1003.
Patent Owner relies on the Declaration of Long Yang, Ph.D. Ex. 2041.
2 JP 2000-35888, published Feb. 2, 2000 (“Sugiyama,” Ex. 1005).
3 WO 2004/004855 A1, published Jan. 15, 2004 (“Gatto,” Ex. 1006).
4 US 5,844,776, issued Dec. 1, 1998 (“Yamaguchi,” Ex. 1036).
5 US 2004/0054952 A1, published Mar. 18, 2004 (“Morrow ’952,”
Ex. 1007).
6 US 2003/0064771 A1, published Apr. 3, 2003 (“Morrow ’771,” Ex. 1008).
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more years of professional experience in the field of computer architecture.”
PO Resp. 32 (citing Ex. 2041 ¶¶ 66–70).
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., passim.
To the extent necessary herein, we apply Patent Owner’s definition of
the level of ordinary skill in the art. We determine the definition offered by
Patent Owner is consistent with the teachings of the ’670 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’ competing proposals are material to the issues
before us. We further note that our adoption of Patent Owner’s proposed
definition does not reflect a view that adopting Petitioner’s competing
definition of the level of ordinary skill in the art would have any impact on
the outcome of this proceeding. To the contrary, our conclusions would be
the same under either party’s definition.
B. Claim Construction
We apply the claim construction standard used to construe the claims
in a civil action under 35 U.S.C. § 282(b) articulated in Phillips v. AWH
Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b)
(2019). Under the Phillips standard, claim terms must be given “the
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meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention.” 415 F.3d at 1313.
1. “Fault inspection program”
Independent claims 1 and 4 recite a “fault inspection program.”
Petitioner asserts that the ’670 patent explains that a “fault inspection
program” is “a program for inspecting whether or not a fault such as
damage, change or falsification occurs in the programs or data.” Pet. 20
(citing Ex. 1001, 1:22–25); Reply 6–7. Petitioner argues that “fault” is not
limited to mean only damage to the memory device and “change or
falsification” to the programs. Reply 6–7. Petitioner emphasizes that the
fault inspection program inspects faults in either the hardware or software
because the Specification of the ’670 patent does not disclose any
requirement to inspect both hardware and software. Id. at 7 (citing Ex. 1001,
1:17–18, 4:6–10, claims 1 and 4).
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. 23 (citing
Ex. 2041 ¶¶ 79–82) (bolding omitted). With this definition, Patent Owner
contends that the fault inspection program: (1) is other than a boot program,
and (2) inspects for faults including damage to the memory device and
change or falsification of stored programs. See id. at 23–28. We address
each contention below.
Patent Owner argues that, during prosecution of the ’988 patent, the
Applicant distinguished a prior art reference (Bizzarri7) “on the basis that

7 US 5,732,268, issued Mar. 25, 1998 (“Bizzarri,” Ex. 2001).
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that ‘the boot program and the fault inspection program are distinct.’” Id. at
23 (quoting Ex. 1025, 66) (bolding omitted). Patent Owner argues that this
“statement defines the meaning of the terms, and should control their
construction.” Id. (citing ProMOS Techs., Inc. v. Samsung Elecs. Co., 809
F. App’x 825, 832 (Fed. Cir. 2020) (nonprecedential)); see also PO Sur-
reply 8 (citing MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323,
1330 (Fed. Cir. 2007)). Patent Owner argues that “fault inspection program”
and “boot program” are separately listed claim elements and are thus
mutually-exclusive parts of the claimed invention. PO Resp. 24–25 (citing
Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254
(Fed. Cir. 2010)). Patent Owner further argues that the Specification
describes “boot program” and “fault inspection program” as “distinct
programs stored in distinct portions of the ROM.” See id. at 24, 26–27
(citing Ex. 1001, 2:46–56, 3:59–4:9, Fig. 1).
Petitioner responds that “Patent Owner’s construction improperly
reads in numerous unclaimed limitations and is contrary to the intrinsic
record.” Pet. Reply 2. Petitioner asserts that Patent Owner’s alleged
prosecution history disclaimer during the prosecution of the ’988 patent
addressed a claim that recited both a “boot program” and a “fault inspection
program,” unlike claim 1 of the ’670 patent. Id. at 3–4. Petitioner further
asserts that, to the extent the Specification describes embodiments in which
“a ‘fault inspection program’ and a ‘boot program’ are stored in distinct
portions of the ROM,” the limitations of specific embodiments should not be
read into the claims. Id. at 4.
We agree with Petitioner. As we determined in our Decision on
Institution, the ’670 patent indicates that the “fault inspection program” is “a
program for inspecting whether or not a fault such as damage, change or
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falsification occurs in the programs or data.” Ex. 1001, 1:22–25; Dec. 17.
We see nothing in the record that precludes the “fault inspection program”
from also being a “boot program.” Although Patent Owner contends that it
presented this argument during the prosecution of the ’988 patent, we are not
persuaded to limit the scope of “fault inspection program” as recited in the
claims of the ’670 patent. Importantly, Patent Owner does not present any
persuasive evidence or argument as to whether the claims of the ’988 patent
are substantially similar to those of the ’670 patent, or why Applicant’s
statement during the prosecution of a parent to the ’670 patent necessitates a
narrowing of the scope of the meaning of the term “fault inspection
program” for the claim scope of the ’670 patent. That is, even if we were to
consider Applicant’s statement as a disclaimer, we are left to speculate how
to construe “fault inspection program” as being distinct from the boot
program in the claims of the ’670 patent.
Accordingly, as we did in the Decision on Institution, we construe
“fault inspection program” to be “a program for inspecting whether or not a
fault such as damage, change or falsification occurs in the programs or
data.”
Second, Patent Owner argues that “[a] ‘fault inspection program’ must
be capable of inspecting both hardware and software faults.” PO Sur-Reply
1; PO Resp. 45–47 (bolding omitted). Again, Patent Owner argues that,
during prosecution of the ’988 patent, “Applicant reiterated the conjunctive
construction of ‘or’ to overcome references such as Bizzarri, Chang, and
Yamato.” PO Sur-Reply at 2–3 (citing Ex. 1025, 66, 97); see Tr. 45:10 –
46:10. Patent Owner further argues that the Specification “compels a
conjunctive interpretation of the word ‘or’” because “the specification
confirms that in order to inspect whether a fault occurs in hardware or
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software, the fault inspection program must be capable of detecting both
types of faults.” Id. at 4 (citing PO Resp. 3–4; Ex. 1001, 4:6–9).
Petitioner responds that the Specification lists non-limiting examples
of faults, “such as” damage, change, or falsification in programs or data.
Pet. Reply 2 (citing Ex. 1001, 1:22–25). Petitioner further asserts that
requiring fault inspection of both hardware and software contradicts the
Specification’s reference to inspecting a fault in “hardware or software.” Id.
(citing Ex. 1001, 1:17–18).
We agree with Petitioner. The ’670 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, 1:17–18. We find that a
person of ordinary skill in the art would understand from the ’670 disclosure
that the faults can be in either hardware or software, or both. We do not
agree with Patent Owner that a person of ordinary skill in the art would
understand that a description of faults as “software or hardware” uses “or” in
the conjunctive sense to mean both software and hardware. See Tr. 45:23–
46:6.
2. “Boot program”
Dependent claim 2 recites a “boot program executed when the gaming
device is started to operate.” Petitioner argues that the boot program should
be afforded its plain and ordinary meaning as a start-up program that enables
a computer to load larger programs. Pet. 4; Reply 6 (citing Ex. 1003,
¶¶ 155, 222–223). Petitioner explains that the Specification does not
otherwise limit or diverge from the plain and ordinary meaning. Reply 5.
Petitioner relies on two examples provided in the ’670 Specification to
support its construction that the boot program may load larger programs (an
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extended BIOS program and Operating System). Id. (citing Ex. 1001, 3:59–
64).
Patent Owner contends that a boot program is “a program that
initializes various devices including the extended BIOS and the operating
system.” PO Resp. 29 (citing Ex. 2041 ¶¶ 79–81). Patent Owner argues that
the Specification supports this interpretation with two descriptions. First,
the Specification discloses:
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.
Id. at 29 (quoting Ex. 1001, 3:57–62) (bolding omitted). Second, Patent
Owner argues that the Specification refers to the ROM as “a boot ROM”
because it loads and starts the OS. Id. (citing Ex. 1001, 3:65–67). Patent
Owner further argues that the extrinsic evidence supports a construction that
“a ‘boot program’ is a program that is ‘designed to start a computer’ and not
simply any program that enables the computer to load a larger one.” PO
Sur-reply 9–12 (citing Ex. 2041 ¶ 48; Ex. 1039, 39:20–41:3, 43:13–25).
Petitioner responds that the Specification does not expressly define
“boot program.” Pet. Reply 6. Rather, the Specification describes an
exemplary embodiment of “a boot program here that loads other example
programs.” Id. at 6 (citing Ex. 1001, 3:59–64). Petitioner distinguishes the
Specification’s description from other definitional terminology. Id. at 7
(citing American Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1361 (Fed.
Cir. 2010)). Petitioner argues that “the example provided in the
specification of a boot program that initializes both an extended BIOS and
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an OS, is consistent with the broader plain and ordinary meaning of a startup
program that loads larger programs.” Id. at 8.
We are not persuaded by Patent Owner to limit the scope of the term
“boot program” to “a program that initializes various devices including the
extended BIOS and the operating system.” Rather, we agree with Petitioner
that the term “boot program” should be afforded its plain and ordinary
meaning of “a start-up program that enables a computer to load larger
programs.” We agree with Petitioner that the example provided in the ’670
Specification is consistent with the plain and ordinary meaning. The
example provided in the ’670 patent Specification of a “boot program” is
within the context of the ’670 patent and describes the various items that are
initialized in the ’670 patent. A person with ordinary skill in the art would
understand this example to be consistent with the plain and ordinary
meaning of a “boot program” to mean “a start-up program that enables a
computer to load larger programs.”
C. Alleged Obviousness of Claims 1–4 over Sugiyama and Gatto
Petitioner contends that claims 1–4 of the ’670 patent are unpatentable
under 35 U.S.C. § 103(a) as obvious over Sugiyama and Gatto. Pet. 4–40.
As discussed below, Petitioner has demonstrated by a preponderance of the
evidence that claims 1–4 would have been obvious over Sugiyama and
Gatto. See Pet. 4–40.
1. Sugiyama (Ex. 1005)
Sugiyama is directed to “a service program for executing failure
diagnosis, restoration, or the like to processing means in a communication
terminal.” Ex. 1005, code (57). Specifically, Sugiyama relates to a karaoke
device that receives an application program, “for example, a karaoke
performance processing program, a singing scoring program, or the like,”
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over a communication network, and stores the application program on a hard
disk drive. Id. ¶ 2.
In an embodiment, a karaoke terminal 3 includes “CPU (processing
means and writing means) 20 for controlling portions of the device
according to various programs,” “ROM (non-volatile memory) 22,” “RAM
23,” and “hard disk drive (magnetic storage means) 24.” Id. ¶ 10. ROM 22
stores “a startup program necessary for starting up the karaoke terminal,” as
well as “an initialization program P1 for initializing the hard disk drive 24
and an HDD inspection program P2 for examining the hard disk drive 24.”
Id. ¶ 11.
When karaoke terminal 3 is turned on, if no abnormality occurs, “the
application program stored in the application storage area 24a of the hard
disk drive 24 is loaded into the RAM 23, and normal karaoke performance
processing is performed.” Id. ¶ 22. If an abnormality does occur, “it is
determined whether the abnormality is an abnormality relating to the hard
disk drive 24.” Id. ¶ 23. In such case, “the CPU 20 executes the HDD
inspection program P2 stored in the ROM 22.” Id. If there is no damage to
the hard disk drive itself, for example, “when the stored data is destroyed, or
the like, the initialization program P1 is executed by the CPU 20 . . . and
initializes the hard disk drive 24.” Id. ¶ 24. Backup data may then be
written to the hard disk drive. Id. If, on the other hand, “restoration is not
possible, for example, when the hard disk drive 24 itself is damaged, the
manufacturer of the karaoke terminal 3, a restoration company, or the like is
requested for repairs.” Id.
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2. Gatto (Ex. 1006)
Gatto is directed to “[a] method for gaming terminals, gaming kiosks
and lottery terminals to ensure that the code-signing verification process of
downloaded game software can be trusted.” Ex. 1006, code (57).
Specifically, when a game operator decides to deploy a new game, a game
terminal downloads the code for the game and “executes a program to verify
the code signature of the downloaded code.” Id. at 10:2–7. “If the
downloaded code can be trusted (successfully passes the verification), it is
stored locally in persistent memory in the gaming machine.” Id. at 10:9–10.
When the downloaded code is executed, “the stored signed code is retrieved
. . . and its code signature is verified.” Id. at 10:14–15. “If the retrieved
downloaded code cannot be trusted, the code is trashed or quarantined”;
otherwise, “[i]f the retrieved downloaded code can be trusted, it is
executed.” Id. at 10:15–17. But, because the code-signing verification
process “itself might be a fraudulent verification process,” Gatto also
“verif[ies] that the code-signing verification platform can be trusted.” Id. at
13:11–16.
3. Analysis of Claim 1
a) Petitioner’s Arguments
The preamble of claim 1 recites a “gaming device configured to
execute a game.” Ex. 1001, 4:61. Petitioner argues that, to the extent the
preamble is limiting, Sugiyama teaches “a communication terminal’
configured to execute an ‘application program, for example, a karaoke
performance processing program, a singing scoring program, or the like,’”
which a “PHOSITA would have understood . . . is a type of ‘game.’” Pet. 8
(citing Ex. 1005 ¶ 2; Ex. 1003 ¶ 126). Petitioner also argues that, to the
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extent Sugiyama’s communication terminal is not considered a gaming
device, Gatto discloses a “software verification process applicable to
download gaming machine software and games, such as for use in a casino.”
Id. at 11 (citing Ex. 1006, 1:3–4, 9:27–28, 10:2–17, Fig. 1; Ex. 1003 ¶¶ 70,
127, 125–130). Petitioner asserts that a person with ordinary skill in the art
would have modified Sugiyama’s terminal to execute a gaming application
program instead of a karaoke application program because “the modification
is nothing more than simple substitution of one form of executable program
for another, yielding a predictable result (i.e., a communication terminal
configured to execute game application programs).” Id. at 11–12 (citing
Ex. 1003 ¶¶ 125–130).
Claim 1 further recites “a mother board on which a first memory
device is provided.” Ex. 1001, 4:64. Petitioner contends that the
combination of Sugiyama and Gatto discloses this limitation. Pet. 12–17.
Petitioner argues that Sugiyama teaches a first memory device, specifically,
a ROM that is connected to a bus within a communication terminal. Id. at
12–13 (citing Ex. 1005 ¶ 10). Petitioner further contends that Gatto
discloses “a motherboard with non-volatile memory components (such as
ROM or BIOS) provided thereon and persistent storage media (e.g., HDD or
flash memory) connected thereto.” Id. at 14 (citing Ex. 1006, 4:25, 5:25–26,
6:26, 7:12–17, 13:28–30, 18:25–29, 20:26–30, 22:5–9, 23:19–25; Ex. 1003
¶¶ 73–76, 131–135). Petitioner argues that a person with ordinary skill in
the art would have modified Sugiyama to include the ROM connected to the
motherboard because it “amounts to a combination of known elements (i.e.,
printed circuit boards and common computing components, such as a CPU,
RAM, ROM, and HDD) according to known methods (i.e., electrically
connecting the components on a main (‘mother’) board) to obtain a
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predictable result—that the components would have worked together in a
gaming machine or other computer system, such as a karaoke terminal.” Id.
at 16 (citing Ex. 1003 ¶¶ 131–135).
Claim 1 also recites “a second memory device configured to store a
game application program, the second memory device being connected to
the mother board.” Ex. 1001, 4:65–67. Petitioner argues that the
combination of Sugiyama and Gatto discloses this limitation. Petitioner
argues that Sugiyama teaches a second memory device, specifically a “‘hard
disk drive (HDD),’ configured to store a game application program such as a
karaoke ‘singing scoring program.’” Pet. 17 (citing Ex. 1005 ¶¶ 2, 10, 12).
Petitioner further argues that Gatto discloses connecting a second memory
device to a motherboard for the same reasons discussed above. Id.
Claim 1 additionally recites “a control device for executing a fault
inspection program for the second memory device to inspect whether or not
a fault occurs in the second memory device.” Ex. 1001, 5:1–3. Petitioner
argues that Sugiyama teaches “a control device, namely the ‘CPU,’ for
executing a fault inspection program such as ‘HDD inspection program
P2.’” Pet. 20 (citing Ex. 1005 ¶ 23). Petitioner argues that “‘HDD
inspection program P2’ inspects whether or not a fault occurs in the second
memory device (i.e., ‘hard disk drive (HDD)’).” Id. (citing Ex. 1005 ¶ 23).
As discussed above, a fault inspection program is “a program for inspecting
whether or not a fault such as damage, change or falsification occurs in the
programs or data.” Id. Petitioner contends that Sugiyama discloses that the
CPU executes a process for examining and restoring failures of an area for
storing an application program, such as the HDD. Id. at 21 (citing Ex. 1005,
abstract). Specifically, Petitioner argues Sugiyama discloses that, after an
initial startup program, “‘recovery processing’ steps Sa2 and relevant steps
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Sa4 through Sa16 are executed by CPU 20.” Id. (citing Ex. 1005 ¶¶ 22–28).
According to Petitioner, first it is determined whether an abnormality has
occurred in the terminal (step Sa2) and whether the abnormality relates to
HDD 24 (step Sa4). Id. at 22 (citing Ex. 1005 ¶ 22, Fig. 5). That is,
Petitioner argues that steps Sa2 and Sa4 through Sa11 are collectively a fault
inspection program. Id. at 25 (citing Ex. 1005, Fig. 5). Alternatively,
Petitioner argues that step Sa5 (“Execute HDD inspection program P2”) is a
fault inspection program by itself. Id. (citing Ex. 1005, Fig. 5).
Claim 1 further recites “wherein the fault inspection program is stored
in the first memory device, and the control device completes the execution
of the fault inspection program before the game is started.” Ex. 1001, 5:4–7.
Petitioner argues that Sugiyama “teaches that the fault inspection program
(e.g., ‘HDD inspection program P2’ alone or in combination with processing
steps Sa2 and Sa4 through Sa11 of Fig. 5) is stored in the first memory
device (i.e., ROM)” and is separate from the hard disk drive. Pet. 26–28
(citing Ex. 1005 ¶¶ 11, 22, 23, 30, Fig. 3, Fig 5). Petitioner further argues
that the “‘HDD inspection program 22’ is executed in step Sa5, which
occurs before the game begins in step Sa3.” Id. at 28.
Petitioner argues that “[i]t would have been obvious to a PHOSITA to
implement the communication terminal of Sugiyama as a gaming device
instead of (or in addition to) a karaoke device” because “the modification is
nothing more than simple substitution of one form of executable program for
another, yielding a predictable result.” Pet. 12. In addition, Petitioner
argues that “Gatto recognizes that communication terminals have been
capable of receiving new games and updated software via downloads and
executing such downloaded programs since the late 1980s.” Id. (citing
Ex. 1006, 1:6–8). Alternatively, Petitioner asserts that Gatto discloses that
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“it is significantly easier to detect fraudulent code prior to its execution than
prevent someone to introduce fraudulent code somewhere amongst the
gigantic storage disk space, by numerous means, and at unpredictable
times.” Id. at 31 (quoting Ex. 1006, 29:13–18).
b) Patent Owner’s Arguments
(1) Separate “fault inspection program”
Patent Owner argues that Sugiyama does not disclose a “fault
inspection program” separate from a “boot program.” PO Resp. 37. Patent
Owner argues that Sugiyama’s steps Sa1–Sa11 are assigned to one of a
“Startup program,” “HDD inspection program P2,” or “Initialization
program P1,” none of which can be considered the claimed “fault inspection
program.” See id. at 38–39.
First, Patent Owner argues that Sugiyama’s “HDD inspection program
P2” is not a “fault inspection program” because it “does not ‘inspect whether
or not a fault occurs in’ the second memory device or the game application
program.” Id. at 39. Patent Owner argues that “HDD Inspection program
P2” (step Sa5) “merely ‘checks the details’ of an abnormality that was
already previously identified by [the] Startup program.” Id. at 39 (citing
Ex. 1005 ¶ 23).8 Patent Owner argues that because “Startup program” step
Sa2 identifies an abnormality, “HDD inspection program P2” does not

8 Patent Owner argues that Sugiyama’s “Initialization Program P1,”
including steps Sa7–Sa10, is not a fault inspection program. See PO Resp.
44. Patent Owner argues that steps Sa7–Sa10 are remediation steps
performed “only after an error has been detected and are, therefore, not part
of a ‘fault inspection program.’” Id. (citing Ex. 1005 ¶ 24, Fig. 5).
However, as Petitioner indicates, those steps are “applicable to inspecting
the hard disk drive 24.” See Pet. 24.
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inspect whether or not a fault occurs in the second memory device or the
game application program as recited in claim 1. See id. at 39–40.
We disagree with Patent Owner. Sugiyama discloses that, in step Sa5,
the HDD inspection program P2 is executed. Ex. 1005, Fig. 5. Although an
abnormality is detected in steps Sa2 and Sa4, we are not persuaded that step
Sa5 does not also execute a program to detect faults. Rather, step Sa5
involves ascertaining the details of the abnormality, which requires
identifying the abnormality itself. Id. ¶ 23. Accordingly, we find that
Sugiyama’s HDD inspection program P2 discloses the claimed “fault
inspection program.”
Second, Patent Owner argues that Sugiyama’s “Startup program” is
not a “fault inspection program” because it is not separate from a “boot
program.” See PO Resp. 40–44. Patent Owner argues that the “Startup
program” includes at least steps Sa1, Sa2, and Sa4. Id. at 40. Patent Owner
argues that Petitioner maps step Sa1 to a “boot program.” See id. at 40
(citing Pet. 21, 31–33, 35). Patent Owner argues that because steps Sa2 and
Sa4 are also part of the “Startup program,” there is no “program distinct and
separate from a boot program, which is responsible for detecting
abnormalities in the hard disk.” Id. at 40. Patent Owner further argues that
“Petitioner’s contention that steps Sa2 and Sa4–Sa11 of Figure 5 collectively
constitute ‘a fault inspection program’ is impossible and overbroad because
the Startup program, which performs steps Sa2, Sa4, and Sa11, cannot
simultaneously be both the ‘boot program’ and the ‘fault inspection
program.’” Id. at 42 (citing Ex. 1005 ¶¶ 22–23, Figs. 3, 5; Ex. 2045, 79:18–
80:7) (bolding omitted).
We are not persuaded by Patent Owner’s argument. First, Patent
Owner’s argument is predicated on our adoption of its claim construction for
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the term “fault inspection program” as necessarily distinct from a boot
program, which we declined to adopt, as discussed above.
See Section II.B.1. Furthermore, as argued by Petitioner, Sugiyama
discloses that first it is determined whether an abnormality has occurred in
the terminal (step Sa2), and then it is determined whether the abnormality
relates to HDD 24 (step Sa4). Pet. 22 (citing Ex. 1005 ¶ 22, Fig. 5). That is,
Petitioner argues that steps Sa2 and Sa4 through Sa11 are collectively a fault
inspection program. Id. at 25 (citing Ex. 1005, Fig. 5). We are not
persuaded by Patent Owner that steps Sa2 and Sa4 are limited to being part
of the “startup program,” and even if we were persuaded of that point, we
disagree that the “startup program” cannot include the “fault inspection
program” independent of HDD inspection program P2.
(2) Detecting hardware and software faults
Patent Owner argues that “Sugiyama also fails to disclose the claimed
‘fault inspection program’ because it is not capable of determining whether a
HDD abnormality is a hardware abnormality . . . or a software abnormality.”
PO Resp. 45–46. That is, Patent Owner argues that “Sugiyama’s steps Sa2–
Sa11 cannot be a ‘fault inspection program’ because they are not capable of
detecting the two types of faults that the inspection program must
identify, . . . i.e. damage to the memory device and change or falsification of
programs stored thereon.” Id. at 47. Patent Owner argues that steps Sa2 and
Sa4 are typical of a “power-on self-test” that detects memory failures. Id. at
46–47 (citing Ex. 2041 ¶ 41).9 Patent Owner argues that, after the test,
Sugiyama “can load HDD inspection program P2 in order to check the

9 PO cites to Exhibit 2014 in the original. However, the Yang Declaration is
Exhibit 2041.
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details of the abnormality,” but cannot access the file allocation table
(“FAT”) of a memory device without an OS loaded. Id. at 47 (citing
Ex. 1005 ¶ 22; Ex. 2041 ¶ 43).
We disagree with Patent Owner. Patent Owner’s argument is
predicated on our adoption of its claim construction, which we decline to do.
See supra Section II.B.1. Specifically, Patent Owner’s argument requires
that we construe “fault inspection program” to be able to detect both
software and hardware faults. However, as discussed above, we are not
persuaded that the claimed “fault inspection program” must detect both
hardware and software faults. See id. Accordingly, we determine that
detecting either hardware or software faults meets the claim limitation.
Patent Owner concedes that Sugiyama discloses abnormalities such as
memory failures, which are a type of software fault. See PO Resp. 47.
(3) “Fault inspection program” completed before the game is
started
Patent Owner argues that “Sugiyama does not disclose a control
device that “completes the execution of the fault inspection program before
the game is started.” PO Resp. 50. Referring to Sugiyama’s Figure 5,
Patent Owner argues that starting the game (step Sa3) following steps Sa1
and Sa2 does not execute HDD inspection program P2. Id. at 50–51. Patent
Owner argues that starting the game (step Sa3) following process steps Sa2
to Sa4–Sa11 does not involve executing the fault inspection program for the
same reasons Patent Owner argues that steps Sa4–Sa11 do not qualify as a
fault inspection program. Id.
We disagree with Patent Owner. Sugiyama discloses that “if no
abnormality occurs in the karaoke terminal 3 (step Sa2), the application
stored in the application storage area 24a of the hard disk drive 24 is loaded
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into the RAM 23, and normal karaoke performance processing is performed
(step Sa3).” Ex. 1005 ¶ 22; see Pet. 28–31. That is, the application
processing is not started until the “fault inspection program” has completed.
(4) Motivation to combine Sugiyama and Gatto
Patent Owner advances several arguments against Petitioner’s
combination of Sugiyama and Gatto. PO Resp. 51–63. The thrust of Patent
Owner’s arguments is that Sugiyama’s teachings relate to an embedded OS
appropriate for a karaoke machine, in contrast with Gatto’s teaching for
adopting a desktop OS for gaming computer hardware. See id. at 52–56.
Patent Owner argues that modifying Sugiyama’s embedded OS with Gatto’s
desktop OS: (1) would render Sugiyama inoperable for its intended purpose
(see id. at 55–56), (2) would present an obstacle to the combination (see id.
at 56–58), and (3) would preclude a reasonable expectation of success (see
id. at 60–63).
Petitioner replies that a “POSITA would have understood that merely
connecting Sugiyama’s components to a well-known motherboard, in view
of Gatto’s teachings to connect such components to a motherboard, would
not have required replacing Sugiyama’s OS with Gatto’s OS.” Pet. Reply
16. Petitioner further argues that the “use of a motherboard, as taught by
Gatto, would not render Sugiyama inoperable or change its principle of
operation because it would merely be providing a well-known way to
connect Sugiyama’s computer components.” Id. Petitioner also argues that:
(1) Patent Owner does not establish that Sugiyama is limited to an embedded
OS (see id. at 16–18), (2) obviousness does not require bodily incorporation
of the secondary reference into the primary reference (see id. at 19), and
(3) the claims at issue do not refer to an OS, so that the issues of operating
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system implementation are irrelevant to a reasonable expectation of success
(see id. at 20).
We disagree with Patent Owner. Patent Owner’s argument that
“modifying the embedded OS of Sugiyama to accommodate the desktop OS
in Gatto would render Sugiyama inoperable for its intended purposes of
producing a karaoke machine running a singing scoring program” requires
the bodily incorporation of Gatto into Sugiyama. However, bodily
incorporation is not the standard for obviousness analysis. See In re
Mouttet, 686 F.3d 1322, 1332–33 (Fed. Cir. 2012).
Rather, we credit the testimony of Petitioner’s expert, Dr. Wolfe.
See Pet. 19. Dr. Wolfe explains that a person with ordinary skill in the art
would have been motivated to combine different aspects of Sugiyama and
Gatto. Ex. 1003 ¶ 123. Dr. Wolfe further explains that Petitioner’s
proffered combination of Sugiyama and Gatto is the combination of features
known in the art to yield nothing more than predictable results. Id. Dr.
Wolfe opines that a person with ordinary skill in the art would have been
motivated to create “a more versatile system that detects faults in a memory
device using a trusted fault inspection program that is guaranteed to operate
properly. A PHOSITA would have understood that the use of a
motherboard, for example, was common and ordinary in the field.” Id.
¶ 124. Dr. Wolfe concludes that a person with ordinary skill in the art
“would have been well-equipped with sufficient education, knowledge, and
training to make the specific combination . . . with a reasonable expectation
of success.” Id.
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4. Analysis of Claim 2
Claim 2 recites the limitations of independent claim 1, and further
recites “wherein the first memory device stores a boot program executed
when the gaming device is started to operate.” Ex. 1001, 5:8–10. Petitioner
argues that Sugiyama teaches a “startup program” provided within ROM 22
(the first memory device). Pet. 31–32 (citing Ex. 1005, Fig. 3, ¶ 11).
Petitioner argues that “[t]he startup program loads an application or service
program into RAM, and would have been considered by a PHOSITA to be a
‘boot program.’” Id. at 32–33 (citing Ex. 1005 ¶¶ 12–13; Ex. 1003 ¶¶ 153–
158). Petitioner further argues that “[i]n the context of the service program
startup method, the startup program in step Sa1 of Figure 5 loads the service
program into RAM.” Id. at 33 (citing Ex. 1005 ¶ 13).
Claim 2 also recites “wherein the control device executes the fault
inspection program after the boot program is executed.” Ex. 1001, 5:11–12.
Petitioner argues that Sugiyama “teaches that CPU 20 (i.e., control device)
executes the abnormality inspection program processing for HDD 24 (i.e.,
‘HDD inspection program P2’ executed in step Sa5 of Figure 5; or,
alternatively, steps Sa2 and Sa4-Sa11 collectively) after the startup program
at step Sa1 (i.e., boot program) is executed.” Pet. 35 (citing Ex. 1005,
Fig. 5, ¶¶ 22–28; Ex. 1003 ¶¶ 153–158). Petitioner’s arguments as to
claim 2 are supported by the cited evidence and are persuasive.
Patent Owner argues that “Sugiyama’s alleged fault inspection
program is part of its boot program, i.e., the Startup Program.” PO Resp. 63.
Patent Owner further argues that “[a]ll of the processing discussed with
respect to Sugiyama’s FIG. 2, including steps Sa2–Sa11, occurs as part of
the boot program and before the application program is loaded.
Accordingly, Sugiyama fails to disclose ‘executes the fault inspection
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program after the boot program is executed.’” Id. at 63–64 (bolding
omitted). We disagree with Patent Owner. Patent Owner’s argument is
substantially the same as presented above with respect to claim 1.
Accordingly, we disagree with Patent Owner for the same reasons discussed
above. See supra Section II.C.3.b.3.
5. Analysis of Claim 3
Claim 3 recites the limitations of independent claim 1 and further
recites “wherein the second memory device is electrically rewritable.”
Ex. 1001, 5:13–14. Petitioner argues that Sugiyama teaches a hard disk
device 24 (second memory device) that is electrically rewritable. Pet. 35–36
(citing Ex. 1005 ¶¶ 9, 12, 19, Fig. 4; Ex. 1003 ¶¶ 159–160).
Petitioner’s arguments as to claim 3 are supported by the cited
evidence and are persuasive.
Patent Owner does not present separate arguments as to dependent
claim 3.
6. Analysis of Claim 4
Claim 4 is an independent claim that recites a gaming device similar
to claim 1. See Ex. 1001, 5:15–6:10. Petitioner presents arguments similar
to those previously presented as to claim 1. See Pet. 37–44. For example,
Petitioner refers to the analysis of claim 1 for some of claim 4’s recited
features, including the preamble, “a ROM configured to store a fault
inspection program” (see claim 1, first memory device), and “a memory
device which is electrically rewritable a game application program stored
therein” (see claims 1 and 3, a second, electrically rewritable, memory
device). See id. at 37–38.
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Claim 4 further recites “a control device configured to execute the
fault inspection program to inspect whether or not a fault occurs in the game
application program stored in the memory device.” Ex. 1001, 6:4–6:7.
Referring to the previous arguments as to claim 1, Petitioner argues that
“Sugiyama teaches a control device, namely the CPU, for executing a fault
inspection program such as ‘HDD inspection program P2’ alone or in
combination with processing steps Sa2 and Sa4 through Sa11 of Fig. 5.”
Pet. 38. Petitioner argues that “it would have been obvious to implement
Sugiyama’s HDD inspection program P2 to inspect whether or not a fault
occurs in a game application program, as taught in Gatto.” Id. (citing
Ex. 1003 ¶¶ 169–172).
Claim 4 also recites “wherein 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, 6:7–10. Referring to the previous arguments as to
claim 1, Petitioner argues that “Sugiyama discloses that control device (i.e.,
the CPU) executes the fault inspection program (i.e., “HDD inspection
program P2” at step Sa5 either alone or in combination with processing steps
Sa2 and Sa4 through Sa11 of Figure 5) when the gaming device is started to
operate.” Pet. 40 (citing Ex. 1003 ¶¶ 173–174). Petitioner argues that
“Sugiyama further teaches that the CPU completes execution of this program
before the game is started, or, alternatively, such an implementation would
have been obvious.” Id.
Petitioner’s arguments as to claim 4 are supported by the cited
evidence and are persuasive.
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Patent Owner does not present separate arguments as to claim 4.
Instead, Patent Owner argues claims 1 and 4 together. See PO Resp. 37–63.
We disagree with Patent Owner for the reasons noted above.
D. Alleged Obviousness of Claim 5 over Sugiyama, Gatto, and
Yamaguchi
Petitioner contends that claim 5 of the ’670 patent is unpatentable
under 35 U.S.C. § 103(a) as obvious over Sugiyama, Gatto, and Yamaguchi.
Pet. 40–44. As discussed below, Petitioner has demonstrated by a
preponderance of the evidence that claim 5 would have been obvious over
Sugiyama, Gatto, and Yamaguchi. See id.
1. Yamaguchi (Ex. 1036)
Yamaguchi is directed to “[a] static memory device [that] has
compatibility with a disk drive installed in an electronic apparatus as an
external storage unit.” Ex. 1036, code (57). In an embodiment, “mother
board 1 performs a variety of control operations and is provided with a
connector 1a,” and “hard disk drive 22 . . . can also be connected to the
connector 1a through the flat cable 8.” Id. at 6:15–22.
2. Analysis
Claim 5 recites the limitations of independent claim 4, and further
recites “wherein the ROM is provided on a mother board having a
connector, and the memory device is connectable to the mother board
through the connector of the mother board.” Ex. 1001, 6:11–14. Petitioner
argues that “Sugiyama in view of Gatto teaches a ROM provided on a
motherboard and a hard disk drive (HDD) (i.e., memory device[]) connected
thereto.” Pet. 41. Petitioner further argues that, “to the extent disclosure of
a specific ‘connector’ is required to satisfy claim 5, the same is disclosed in
Yamaguchi.” Id. at 41–42. Petitioner contends that Yamaguchi discloses
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connector 22a that connects hard disk drive 22 to motherboard 1 via flat
cable 8, where the motherboard includes ROM 13. Id. at 42 (citing
Ex. 1036, 6:6–8, 6:21–23).
Petitioner argues that “it would have been obvious to a PHOSITA that
the motherboard and HDD memory device must have been connected to
communicate, and a PHOSITA would have been motivated to look to known
connectors that provide this necessary connection.” Id. at 44. Petitioner
argues that Yamaguchi “provides express disclosure of well-known and
obvious design choices that would have been easy to implement and, given
the common and predictable nature of the electrically connecting computing
elements using motherboards at the time of the ’670 Patent, would have had
a reasonable expectation of success in doing so.” Id.
Petitioner’s arguments as to claim 5 are supported by the cited
evidence and are persuasive.
Patent Owner argues that Petitioner has not demonstrated that claim 5
is unpatentable as obvious over Sugiyama, Gatto, and Yamaguchi for the
same reasons discussed above with respect to obviousness of claims 1–4
over Sugiyama and Gatto. PO Resp. 64. We disagree with Patent Owner’s
arguments for the same reasons discussed above. See supra Section II.C.3.b.
E. Alleged Obviousness of claims 1–4 over Morrow ’952 and Morrow
’771
Petitioner contends that claims 1–4 of the ’670 patent are unpatentable
under 35 U.S.C. § 103(a) as obvious over Morrow ’952 and Morrow ’771.
Pet. 45–72. As discussed below, Petitioner has demonstrated by a
preponderance of the evidence that claims 1–4 would have been obvious
over Morrow ’952 and Morrow ’771. See id.
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1. Morrow ’952 (Ex. 1007)
Morrow ’952 is directed to “verifying a device by verifying the
components of that device,” for example, “processors, persistent storage
media, volatile storage media, random access memories, read-only memories
(ROMs), erasable programmable ROMs, data files,” etc. Ex. 1007 ¶ 6. The
device may be “a gaming machine, wherein the verification of the gaming
machine is performed before game play is allowed.” Id. ¶ 19.
In an embodiment, device 10 includes “one or more processors 62,
persistent storage media 80 and 90, volatile storage media such as random
access memories (RAMs) 76, read-only memories (ROMs) 77 or electrically
erasable programmable ROMs (EEPROMS) such as basic input/output
systems (BIOS) 64.” Id. ¶ 37. Device 10 also includes data files 54, such as
software program files 92–96 and operating system files 98. Id.
Further, “[e]ither within the device 10, or in the diagnostic system 140
attachable to the device 10, are executable instructions or a software
program 70 for verification of the components (verification software 70),
which may itself be one of the components 50 to verify if it is internal to the
device 10.” Id. ¶ 38. “Preferably, the verification software 70 is stored in a
basic input/output system (BIOS) 64 device or chip.” Id. This “mak[es] it
hard to bypass the verification process” “because the code in the BIOS 64 is
usually the first code executed upon boot or start-up of the device 10.” Id.
Thus, “operating system files 98 may be verified before loading or booting,
or before any software program 92 is run from the persistent storage media
90. This makes the verification software 70 completely independent of data
files 54 stored on the persistent storage media 90 which are being verified.”
Id. ¶ 64.
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2. Morrow ’771 (Ex. 1008)
Morrow ’771 is directed to “gaming machines having the ability to
reconfigure entire games, pay tables and/or artwork.” Ex. 1008 ¶ 1. In an
embodiment, a gaming platform 70 “enables casino owners to draw off of
the large library of casino game functions available in a traditional master
processing unit (MPU) stand-alone platform, while adding the graphics and
sound capabilities of a personal computer.” Id. ¶ 29. Gaming platform 70
includes processor 90 that has a CD-ROM drive for storing “graphics, sound
files, presentation software for at least one game, and [a] basic operating
system.” Id. ¶ 31. Processor 90 also has a “customized BIOS chip, referred
to as BIOS+, which provides typical PC boot functions, as well as
verification and decryption algorithms.” Id. “The gaming platform 70
performs many verification processes during boot-up and game operation,”
and “an algorithm that originates on the BIOS+ conducts verification of all
files on the CD-ROM.” Id. ¶ 37.
3. Analysis of Claim 1
a) Petitioner’s Arguments
The preamble of claim 1 recites a “gaming device configured to
execute a game.” Ex. 1001, 4:61. Petitioner argues that, to the extent the
preamble is limiting, Morrow ’952 teaches “gaming machine 10” configured
to execute a game. Pet. 47 (citing Ex. 1007, Fig. 4). Claim 1 further recites
“a mother board on which a first memory device is provided.” Ex. 1001,
4:64. Petitioner argues that Morrow ’952 teaches “a first memory device,
namely ‘electrically erasable programmable ROMs (EEPROMS) such as
basic input/output systems (BIOS) 64.’” Pet. 49 (citing Ex. 1007 ¶ 37).
Petitioner alternatively argues that “[a] PHOSITA would recognize that
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Morrow discloses that the BIOS+ 64 chip is placed on a motherboard,” or
“this disclosure would have been obvious to a PHOSITA, especially in light
of the explicit teachings in the related Morrow ’771 reference.” Id. at 49–50
(citing Ex. 1003 ¶¶ 95–100, 198–204). Petitioner further argues that
Morrow ’771 discloses that the “BIOS+ on the Pentium motherboard
verifies the CD-ROM before the contents of the CD-ROM can be loaded
into the Pentium RAM.” Id. at 51 (quoting Ex. 1008 ¶ 31). Petitioner
argues that a person with ordinary skill in the art would have been motivated
to look to Morrow ’771 “to further understand the commonly described
technology, including of the preferred hardware environment for the
commonly described BIOS+ chip.” Id. Accordingly, Petitioner asserts that
the combination of Morrow ’952 and Morrow ’771 “amounts to a
combination of known elements . . . according to known methods (i.e.,
electrically connecting the components on a main (‘mother’) board) to
obtain a predictable result.” Id. (citing Ex. 1003 ¶¶ 201–204).
Claim 1 also recites “a second memory device configured to store a
game application program, the second memory device being connected to
the mother board.” Ex. 1001, 4:65–67. Petitioner argues that Morrow ’952
“teaches a second memory device, namely ‘persistent storage media 90,’
configured to store game software application program 92,” and that “[a]
PHOSITA would recognize that Morrow discloses that this memory device
is connected to the motherboard.” Pet. 52 (citing Ex. 1007 ¶¶ 37–38, Fig. 1;
Ex. 1003 ¶ 207). Petitioner further argues that, alternatively, “this disclosure
would have been obvious to a PHOSITA, especially in light of the explicit
teachings in Morrow ’771.” Id. at 52–53. As argued with the preamble,
Petitioner contends that Morrow ’771 discloses a Pentium motherboard, and
a person with ordinary skill in the art would have connected a second
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memory device to the motherboard for the same reasons discussed above.
Id. at 55–56.
Claim 1 additionally recites “a control device for executing a fault
inspection program for the second memory device to inspect whether or not
a fault occurs in the second memory device.” Ex. 1001, 5:1–3. Petitioner
argues that Morrow ’952 teaches “CPU 60 (i.e., control device) for
executing verification software program 70 (i.e., fault inspection program)
for the persistent storage media 90 (i.e., second memory device) to inspect
whether or not a damage, change or falsification (i.e., fault) occurs in the
hardware of the media 90 . . . [or] any software programs or data stored on
media 90.” Pet. 56. Specifically, Petitioner contends that Morrow ’952
discloses that CPU 60 executes verification program 70 in BIOS+ 64. Id. at
57 (citing Ex. 1007 ¶ 38, Fig. 1). According to Petitioner, Morrow ’952
discloses that hardware components are verified by reading an identification
number for each hardware component, software is verified by reading a
digital signature, and when the read value does not match an expected value,
a tilt condition message is generated. Id. at 58–60 (citing Ex. 1007 ¶¶ 41,
46, 49, 51; Ex. 1003 ¶¶ 101–111).
Claim 1 further recites “wherein the fault inspection program is stored
in the first memory device, and the control device completes the execution
of the fault inspection program before the game is started.” Ex. 1001, 5:4–7.
Petitioner argues that Morrow ’952 “teaches that the fault inspection
program (i.e., ‘verification software 70’) is stored in the first memory device
(i.e., ‘BIOS+ 64’),” and “that the control device (i.e., ‘CPU’) completes the
execution of this program before the game is started.” Pet. 62–66.
Specifically, Petitioner argues that Morrow ’952 discloses that “CPU 60
(control device) completes the execution of verification software 70 before
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the game is started, explaining that the verification is done ‘before any
software program is run from the storage media.’” Id. at 63–64 (citing Ex.
1007 ¶¶ 27, 64).
b) Patent Owner’s Arguments
Patent Owner argues that the combination of Morrow ’952 and
Morrow ’771 “fails to disclose the fault inspection program at least because
these references are only concerned with verifying programs and do not
teach inspecting a memory device for damage.” PO Resp. 64. Patent Owner
argues determining that “the identification number is not readable,” as
disclosed in Morrow ’952, is not an example of inspecting the media for
damage. PO Resp. 65. Patent Owner argues that Petitioner relies on its
expert declaration for this feature rather than the express teachings of
Morrow ’952. Id. (citing Pet. 59; Ex. 1003 ¶¶ 132, 135–137).
We agree with Petitioner. As discussed above, we construe “fault
inspection program” to mean “a program for inspecting whether or not a
fault such as damage, change or falsification occurs in the programs or
data.” See Section II.B.1. Petitioner argues that Morrow ’952 discloses that
“[v]erification failure may be due to, for example, an error in the data file
(i.e., damage) or tampering (i.e., change or falsification) of the data file
and/or media 90.” Pet. 61 (citing Ex. 1007 ¶ 52). That is, according to
Petitioner, Morrow ’952 determines fault based on damage, change, or
falsification. These faults are within the scope of “fault inspection program”
under our construction. Accordingly, we are persuaded that Morrow ’952
discloses the verification of hardware or software is by a “fault inspection
program.”
Patent Owner further argues that Morrow ’952 “does not state that it
does (or can) determine that an error in a data file means that the media is
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damaged. Rather, Morrow ’952 discloses that detecting an error in a data
file could indicate either a ‘bad sector on a hard disk’ or ‘that tampering’
occurred.” PO Resp. 66 (citing Pet. 61) (bolding omitted). Patent Owner’s
expert analogizes this feature to a “‘check engine light’ that indicates, e.g., a
bad sector had occurred and does not, therefore, make it a ‘fault inspection
program’ as the term is properly construed because it never inspects the
media to detect whether the damage is hardware or software damage.” Id. at
66 (citing Ex. 2041 ¶ 90). Petitioner responds that the proper claim
construction “does not require inspecting whether faults occur due to
physical damage to hardware. Instead, it encompasses inspecting whether
faults occur in programs or data, whether they be due to damage, change,
falsification, or any other reason.” Pet. Reply 22. Petitioner further argues
that “Morrow ’952’s verification program 70 can perform verification to
detect errors in data files 54, whether it be, for example, caused by a bad
sector on a hard disk (i.e., damage) or whether it be caused by tampering
(i.e., change or falsification).” Id. at 23 (citing Ex. 1007 ¶ 52).
We agree with Petitioner. As discussed above, we construe the “fault
inspection program” as detecting faults in either software or hardware.
See supra Section II.B.1. Morrow ’952 discloses verification software to
determine whether a data file contains an error. Ex. 1007 ¶ 52. The
verification software determines whether the “invalid data file [] is simply an
error in the data file [], and not tampering, step 302.” Id. (emphasis
omitted). Accordingly, Morrow ’952 discloses a “fault inspection program”
as claimed because it detects a fault in software.
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4. Analysis of Claim 2
Claim 2 depends from independent claim 1 and recites “wherein the
first memory device stores a boot program executed when the gaming device
is started to operate, and wherein the control device executes the fault
inspection program after the boot program is executed.” Ex. 1001, 5:8–12.
Petitioner argues that Morrow ’952 teaches
a gaming device according to claim 1 (see Claim 1), wherein the
BIOS+ 64 (i.e., first memory device) stores a file allocation
reader 76 (i.e., boot program) executed when the gaming device
is started to operate and that CPU 60 (i.e., control device)
executes the verification program 70 (i.e., fault inspection
program) only after the file allocation reader 76 is executed.
Pet. 66. Specifically, Petitioner contends that Morrow ’952 discloses that
the “file allocation reader 76 is a computer program which comprises a set of
executable instructions for processing the file allocation structure such as
that used by the operating system 98.” Id. at 68 (quoting Ex. 1007 ¶ 63)
(underlining omitted). Petitioner argues that Morrow ’952 discloses an
operating system that uses a “‘file access system’ that is used at boot up to
‘perform file access operations.’” Id. (citing Ex. 1007 ¶ 25; Ex. 1003
¶¶ 219–224).
Patent Owner argues that “Petitioner’s allegation that Claim 2 is
obvious over Morrow ’952 in view of Morrow ’771 relies entirely on its
overbroad construction of the term ‘boot program,’ which contradicts the
intrinsic record.” PO Resp. 67 (citing Ex. 1025, 66). Patent Owner argues
that Morrow’s “file allocation reader” is executed before booting the
operating system. Id. at 68. Patent Owner contends that because Morrow’s
“file allocation reader” does not initialize the operating system, it does not
meet the claimed boot program. Id.
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We agree with Petitioner. Morrow ’952 discloses that processor 60
accesses file allocation reader 76 to open the file allocation structure. Pet.
67–68 (citing Ex. 1007 ¶ 63). This allows the system to verify operating
system files before any software program is run. Ex. 1007 ¶ 64.
Accordingly, we agree with Petitioner that Morrow ’952 discloses execution
of the fault inspection program after the boot program is executed, and we
disagree with Patent Owner’s contrary argument.
5. Analysis of Claim 3
Claim 3 depends from claim 1 and recites “wherein the second
memory device is electrically rewritable.” Ex. 1001, 5:13–14. Petitioner
argues that Morrow ’952 “teaches that persistent storage media 90 (i.e.,
second memory device) may be a removable flash memory device,” which is
electrically rewritable. Pet. 70 (citing Ex. 1007 ¶¶ 13, 52, 59; Ex. 1003
¶¶ 44, 225–228). Petitioner’s argument is supported by the cited evidence
and is persuasive.
Patent Owner does not present separate arguments as to dependent
claim 3.
6. Analysis of Claim 4
Claim 4 is an independent claim that recites a gaming device similar
to claim 1. See Ex. 1001, 5:15–6:10. Petitioner presents arguments similar
to those previously presented as to claim 1. See Pet. 70–72. For example,
Petitioner refers to the analysis of claim 1 for some of claim 4’s features,
including the preamble, “a ROM configured to store a fault inspection
program” (see claim 1, first memory device), and “a memory device which
is electrically rewritable a game application program stored therein” (see
claims 1 and 3, a second, electrically rewritable, memory device). See id. at
70–71.
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Claim 4 further recites “a control device configured to execute the
fault inspection program to inspect whether or not a fault occurs in the game
application program stored in the memory device.” Ex. 1001, 6:4–6:7.
Referring to the previous arguments as to claim 1, Petitioner argues that
Morrow ’952 “discloses CPU 60 (i.e., control device) for executing
verification software program 70 (i.e., fault inspection program) for the
persistent storage media 90 (i.e., memory device) to inspect whether or not a
damage, change or falsification (i.e., fault) occurs in ‘any application
programs 92’ stored on media 90.” Pet. 71–72 (citing Ex. 1007 ¶ 64;
Ex. 1003 ¶¶ 234–235).
Claim 4 also recites “wherein 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, 6:7–10. Referring to the previous arguments as to
claim 1, Petitioner argues that Morrow ’952 “teaches that CPU 60 (i.e.,
control device) executes verification software 70 (i.e., fault inspection
program) upon boot or start-up of the device.” Pet. 72 (citing Ex. 1007 ¶¶ 9,
11, 38). Petitioner also argues that Morrow ’952 “further teaches that the
CPU completes execution of this program before the game is started, or,
alternatively, such an implementation would have been obvious.” Id. (citing
Ex. 1003 ¶¶ 236–237).
Petitioner’s arguments as to claim 4 are supported by the cited
evidence and are persuasive.
Patent Owner does not present separate arguments as to claim 4.
Instead, Patent Owner argues claims 1 and 4 together. See PO Resp. 64–67.
We disagree with Patent Owner for the reasons noted above.
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III. MOTION TO EXCLUDE
The party moving to exclude evidence bears the burden of proving
that it is entitled to the relief requested—namely, that the material sought to
be excluded is inadmissible under the Federal Rules of Evidence (“FRE”).
See 37 C.F.R. §§ 42.20(c), 42.62(a).
Patent Owner moves to exclude Exhibits 1040–1044. Paper 27.
Patent Owner contends that Exhibits 1040–1044 should be excluded as:
(1) hearsay under FRE 801 and 802; (2) not authenticated under FRE 901;
and (3) having little probative value under FRE 403. Id. at 1. Patent Owner
further moves to exclude paragraph 10 of the Reply Declaration of Andrew
Wolfe, Ph.D. (Exhibit 1037) because it relies on Exhibits 1040–1044. Id. at
4.
Petitioner opposes. Paper 28. Petitioner argues that Exhibits 1040–
1044 are not relied on for the truth of the matter asserted therein; rather,
Dr. Wolfe cites to these exhibits as “corroborating the knowledge a
PHOSITA would have had regarding the embedded nature of the operating
systems discussed.” Paper 28, 1–2 (citing Ex. 1037 ¶ 10). Petitioner further
argues that these exhibits are admissible because “[t]he ‘appearance,
contents, substance, internal patterns, or other distinctive characteristics of
the item, taken together with all the circumstances’ are sufficient to
authenticate Exhibits 1040–1044 under F.R.E. 901(b)(4).” Id. at 4. Finally,
Petitioner argues that even if “Exhibits 1040–1044 are themselves
inadmissible, Dr. Wolfe may still rely on these exhibits under F.R.E. 703
and his testimony based thereon is not itself inadmissible.” Id. at 6. Patent
Owner filed a Reply in support of its motion (Paper 29).
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We do not rely on Exhibits 1040–1044. We also do not rely on the
challenged portion of Exhibit 1037. Accordingly, we dismiss Patent
Owner’s Motion to Exclude as moot as to Exhibits 1037 and 1040–1044.
IV. CONCLUSION10
Based on the information presented, we conclude that Petitioner has
shown, by a preponderance of the evidence, that claims 1–5 of the ’670
patent are unpatentable. We dismiss Patent Owner’s Motion to Exclude as
moot.
In summary:

V. ORDER
After due consideration of the record before us, and for the foregoing
reasons, it is:

10 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
Claims

35
U.S.C. §
Reference(s)/Basis Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1–4 103(a) Sugiyama, Gatto 1–4
5 103(a) Sugiyama, Gatto,
Yamaguchi
5
1–4 103(a) Morrow ’952,
Morrow ’771
1–5
Overall
Outcome
1–5
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ORDERED that claims 1–5 of the ’670 patent are held unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
dismissed as moot;
FURTHER ORDERED that because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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FOR PETITIONER:
Eric Buresh
Jason Mudd
Kathleen Fitterling
ERISE IP, P.A.
eric.buresh@eriseip.com
jason.mudd@eriseip.com
kathleen.fitterling@eriseip.com

FOR PATENT OWNER:
James Hannah
Jonathan Caplan
Jeffrey Price
KRAMER LEVIN NAFTALIS & FRANKEL LLP
jhannah@kramerlevin.com
jcaplan@kramerlevin.com
jprice@kramerlevin.com