PTAB

IPR2016-01829

eBay Inc v. Global Equity Management Sa Pty Ltd

Log In
Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Fast Switching Between Multiple Operating Systems
  • Brief Description: The ’677 patent describes a computer system capable of "fast switching" between multiple operating systems (OS) installed on a single machine. The invention purports to achieve this by using a "Super OS" to manage the selection and switching process, leveraging a computer's BIOS power management functions (suspend and resume) to transition between OS environments without requiring a full shutdown and reboot cycle (i.e., without a Power-On Self Test).

3. Grounds for Unpatentability

Ground 1: Claims 1-7 are obvious over Hermann in view of the BootMagic Guide and the ACPI Specification.

  • Prior Art Relied Upon: Hermann (EP Patent Publication No. 1 037 133), the PowerQuest BootMagic User Guide (“BootMagic Guide”), and the Advanced Configuration and Power Interface Specification, Rev. 1.0b (“ACPI Specification”).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of these three references taught every limitation of the challenged claims. Hermann was presented as the primary reference, disclosing the core method of quickly switching between two operating systems by replacing a traditional reboot with suspend (hibernate) and resume operations, explicitly noting the process occurs without a "power-down cycle." Petitioner contended Hermann taught a firmware-level, OS-independent storage manager that managed hibernation images, which constituted the claimed "virtual table of contents" (VTOC) for organizing partitions and OS states. To supply the claimed user selection functionality, Petitioner pointed to the BootMagic Guide, which disclosed a well-known graphical user interface (GUI) for selecting among multiple operating systems on a PC. To supply the claimed BIOS-level power management, Petitioner relied on the ACPI Specification, the industry-standard protocol for implementing the suspend/resume functions that Hermann described using the older, related Advanced Power Management (APM) standard. The combination allegedly taught the full switching algorithm, including using a flag to differentiate between a "fast switch" and a standard power-save hibernation.
    • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSITA), starting with Hermann's disclosure of a fast-switching system, would have been motivated to combine it with the other references to create a complete, functional product. Hermann provided the high-level method but lacked implementation details for the user interface and the specific power management routines. A POSITA would logically look to a widely-used commercial tool like BootMagic to implement a user-friendly GUI for OS selection. Similarly, to ensure the system worked on contemporary hardware, a POSITA would implement Hermann’s power management concepts using the modern, industry-standard ACPI Specification rather than the outdated APM standard Hermann referenced.
    • Expectation of Success: Petitioner argued that a POSITA would have had a high expectation of success in making this combination. The integration was characterized as applying known, predictable solutions (a standard GUI, an industry-standard power protocol) to fill in the implementation details of a disclosed method, which would have yielded predictable results.

4. Key Claim Construction Positions

Petitioner argued for several key constructions, many of which were adopted by the Examiner during prosecution, to be applied under the broadest reasonable interpretation standard.

  • "virtual computer system": Proposed construction was "a set of partitions and file systems that are visible and available to a given operating system environment when that environment is actively executing on the physical computer." This construction was central to defining the entities being switched between.
  • "fast switching": Proposed construction required it to be a method "comprised of a Fast Resume method and a Fast Suspend method." These sub-terms were further defined as making modified use of BIOS power management to allow transfer between OS states without a POST, which was critical for distinguishing the invention from a standard reboot.
  • Means-Plus-Function Terms: Petitioner argued that several "means for..." terms in claim 1 (e.g., "means for switching," "means for selecting") were means-plus-function limitations under 35 U.S.C. §112, ¶6. Petitioner identified the corresponding structures as the specific multi-step algorithm for switching disclosed in the specification and a graphical user interface for selection, respectively. These constructions were crucial for mapping the prior art's functional disclosures to the claims.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise discretionary denial under 35 U.S.C. §325(d). The basis for this argument was that the petition raised new arguments based on a combination of prior art references (Hermann, BootMagic Guide, ACPI Specification) that were never considered by the Examiner during the original prosecution of the ’677 patent. Furthermore, the petition was supported by an expert declaration that was also not before the Examiner.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-7 of the ’677 patent as unpatentable under 35 U.S.C. §103.