PTAB

IPR2015-01133

American Megatrends Inc v. Kinglite Holdings Inc

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Extended Basic Input Output System (E-BIOS)
  • Brief Description: The ’268 patent describes a basic input/output system (BIOS) for a computer that performs a power-on self-test (POST). If the computer fails to complete its boot operations, the BIOS directs the CPU to establish communication with a remote computer, which can then diagnose and rectify the failure.

3. Grounds for Unpatentability

Ground 1: Obviousness over Flaherty and Admitted Prior Art - Claims 1-4, 6-9, 12, and 18-20 are obvious over Flaherty in view of Admitted Prior Art (APA).

  • Prior Art Relied Upon: Flaherty (Patent 5,146,568) and APA from the specification of the ’268 patent.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Flaherty teaches the core of the invention: a computer that performs a self-test/power-up sequence and, upon failure to find a local boot device, initiates a request over a network for a remote boot. The APA, taken from the ’268 patent’s own background section, establishes that it was "typical" and well-known for computers to have a BIOS that includes a POST routine and to be equipped with a communication link like a telephone modem. The combination of Flaherty’s boot-failure-response system with the conventional components described in the APA allegedly renders the claims obvious.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Flaherty and the APA because the APA describes the standard, fundamental building blocks (BIOS, POST, modems) that a POSITA would naturally use to implement the networked booting solution described in Flaherty. The combination represents the application of conventional technology to a known problem—handling boot failures—to achieve a predictable result.
    • Expectation of Success: A POSITA would have a high expectation of success, as the combination merely integrates well-understood, compatible components according to their established functions.

Ground 2: Obviousness over Chang and Admitted Prior Art - Claims 1, 2, 4, 6, 7, 9, and 18-20 are obvious over Chang in view of APA.

  • Prior Art Relied Upon: Chang (Patent 5,444,850) and APA.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Chang discloses a system for remote "preboot control" that allows a remote server to manage a workstation, including performing an "operating system rescue" in response to a failure, even before the local operating system is active. Chang's "workstation power-up" sequence is analogous to the POST routine described as conventional in the APA. Petitioner argued that Chang’s system for preboot failure recovery, when combined with the APA's disclosure that POST is a typical part of a BIOS, meets the limitations of the challenged claims.
    • Motivation to Combine: A POSITA would combine Chang with the APA because the APA's description of a POST is a specific, well-known example of the "power-up" or "preboot" activities that Chang’s system is designed to manage. A POSITA would have been motivated to incorporate a standard POST check into Chang's preboot sequence to ensure the computer was functioning correctly before attempting to boot, a standard and logical step in any boot process.
    • Expectation of Success: The combination involves applying a conventional diagnostic step (POST) to an existing preboot management system (Chang), which a POSITA would expect to work predictably.

Ground 3: Obviousness over Chang and Flaherty - Claims 10, 11, and 13-17 are obvious over Chang in view of Flaherty.

  • Prior Art Relied Upon: Chang (Patent 5,444,850) and Flaherty (Patent 5,146,568).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground targets claims related to a "master kernel" on a remote computer modifying a "slave kernel" on a local computer. Petitioner argued that Chang teaches the master/slave concept, disclosing a remote server with a "server management application" (the master kernel) that performs remote diagnostics, file updates, and "operating system rescue" on a local workstation's files (the slave kernel). However, Chang stores the slave kernel locally. Flaherty provides the missing element by teaching the benefits of storing operating system files remotely on a network server and downloading them to a local machine on demand.
    • Motivation to Combine: A POSITA would be motivated to modify Chang's system to store the slave kernel remotely, as taught by Flaherty, to achieve well-known benefits like saving local memory space and enhancing security. Combining the teachings would allow for Chang's robust remote repair capabilities to be applied to a more efficient and secure system architecture as suggested by Flaherty.
    • Expectation of Success: A POSITA would expect success in relocating the storage of system files from a local machine to a network server, as this was a common and well-understood practice in networked computing at the time.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claim 5 based on Sakai (Patent 5,473,775), arguing the use of flash memory for a ROM was a known and convenient design choice.

4. Key Claim Construction Positions

  • "upon failure": Petitioner proposed this term be construed as "in response to failure." This construction was argued as critical because the Patent Owner distinguished prior art during prosecution by asserting that the claimed invention initiates remote contact only if there is a failure to boot.
  • "BIOS (Basic Input/Output System)": Proposed construction: "a set of beginning instructions for a computer that activates on startup." This broad construction supports applying prior art that describes initial power-on routines, even if not explicitly labeled "BIOS."
  • "master" and "slave": Proposed construction: "master" as a characteristic of something that controls, and "slave" as a characteristic of something that is controlled. This functional definition allows Chang's server management application to be considered a "master kernel" and the workstation's local OS files to be a "slave kernel."

5. Relief Requested

  • Petitioner requests institution of inter partes review and cancellation of claims 1-20 of Patent 5,732,268 as unpatentable.