UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. UNIFIED PATENTS INC. Petitioner

Transcription

1 Filed on behalf of Unified Patents Inc. By: Vincent J. Galluzzo, Reg. No. 67,830 Teresa Stanek Rea, Reg. No. 30,427 Crowell & Moring LLP 1001 Pennsylvania Avenue, N.W. Washington, D.C Tel: (202) Jonathan Stroud, Reg. No. 72,518 Ashraf Fawzy, Reg. No. 67,914 Unified Patents Inc Connecticut Avenue, N.W., Floor 10 Washington, D.C Tel: (202) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD UNIFIED PATENTS INC. Petitioner v. GLOBAL EQUITY MANAGEMENT (SA) PTY. LTD. Patent Owner IPR Patent 6,690,400 PETITION FOR INTER PARTES REVIEW OF U.S. PATENT 6,690,400 CHALLENGING CLAIMS 1 4, 6, 10, and 15 UNDER 35 U.S.C. 312 AND 37 C.F.R

2 TABLE OF CONTENTS I. MANDATORY NOTICES... 1 A. Real Party-in-Interest... 1 B. Related Matters... 1 C. Counsel... 5 D. Service Information, , Hand Delivery, and Postal... 5 II. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R A. Grounds for Standing under 37 C.F.R (a)... 6 B. Identification of Challenge under 37 C.F.R (b) and Relief Requested... 6 III. INTRODUCTION... 7 IV. TECHNOLOGY BACKGROUND... 9 A. Graphical User Interfaces ( GUIs ) B. Disk Partitioning V. OVERVIEW OF THE ʼ400 PATENT A. Summary of the Disclosure B. Level of Ordinary Skill in the Art C. Prosecution History VI. CLAIM CONSTRUCTION A. Claim Terms for Which Patent Owner Has Agreed to Constructions B. New Terms VII. CLAIMS 1 4, 6, 10, AND 15 ARE OBVIOUS OVER RUFF IN VIEW OF MADDEN A. Overview of Ruff B. Overview of Madden C. Motivation to Combine Ruff and Madden D. Claim 1 is Obvious over Ruff in View of Madden E. Claim 2 is Obvious over Ruff in View of Madden i

3 F. Claim 3 is Obvious over Ruff in View of Madden G. Claim 4 is Obvious over Ruff in View of Madden H. Claim 6 is Obvious over Ruff in View of Madden I. Claim 10 is Obvious over Ruff in View of Madden J. Claim 15 Is Obvious over Ruff in View of Madden VIII. CONCLUSION ii

4 I. MANDATORY NOTICES A. Real Party-in-Interest Pursuant to 37 C.F.R. 42.8(b)(1), Unified Patents Inc. ( Unified or Petitioner ) certifies that Unified is the real party-in-interest, and further certifies that no other party exercised control or could exercise control over Unified s participation in this proceeding, the filing of this petition, or the conduct of any ensuing trial. In this regard, Unified has submitted voluntary discovery. See EX1005 (Petitioner s Voluntary Interrogatory Responses). B. Related Matters ( ʼ400 Patent (EX1001)) is owned by Global Equity Management (SA) Pty. Ltd. ( GEMSA or Patent Owner ). See EX1006 (Ericsson Complaint) at 7. The ʼ400 Patent is involved in another Inter Partes Review proceeding, ebay Inc. et al. v. Global Equity Management (SA) Pty. Ltd., Case No. IPR ( 1828 IPR ), where those Petitioners argued that Claims 1, 2, 16, and 28 of the ʼ400 Patent are obvious over certain prior art. On April 21, 2017, the Board instituted review on Claims 1 and 2 of the ʼ400 Patent in the 1828 IPR. See EX1007 ( 1828 IPR Institution Decision). This Petition does not rely on the same art as in the 1828 IPR, nor does it request review of Claims 16 and 28. 1

5 Since October 30, 2015, GEMSA has filed lawsuits in the Eastern District of Texas and elsewhere alleging infringement of the ʼ400 Patent, as summarized in the following chart. Case Caption Global Equity Management (SA) Pty. Ltd. v. AirBNB, Inc., No. 2:15-cv (E.D. Tex.) Global Equity Management (SA) Pty. Ltd. v. Alibaba.com, Inc. et al., No. 2:15-cv (E.D. Tex.); transferred to the Northern District of California, No. 3:17-cv-02177, on 4/19/2017 Global Equity Management (SA) Pty. Ltd. v. Priceline Group, Inc. et al., No. 2:15-cv (E.D. Tex.) Global Equity Management (SA) Pty. Ltd. v. Priceline Group, Inc. et al., No. 2:15-cv (E.D. Tex.) Global Equity Management (SA) Pty. Ltd. v. Priceline Group, Inc. et al., No. 2:15-cv (E.D. Tex.) Global Equity Management (SA) Pty. Ltd. v. Expedia.com et al., No. 2:16-cv (E.D. Tex.) Global Equity Management (SA) Pty. Ltd. v. Hotels.com, L.P. et al., No. 2:16-cv (E.D. Tex.) Global Equity Management (SA) Pty. Ltd. v. CruiseShipCenters, L.P. et al., No. 2:16-cv (E.D. Tex.) Global Equity Management (SA) Pty. Ltd. v. ebay, Inc., No. 2:16-cv (E.D. Tex.); transferred to the Northern District of California, No. 4:17-cv-02178, on 4/19/2017 Global Equity Management (SA) Pty. Ltd. v. Travelocity USA et al., No. 2:16-cv (E.D. Tex.) Date Filed 10/30/ /30/ /30/ /30/ /30/2015 1/29/2016 1/29/2016 1/29/2016 1/29/2016 1/29/2016 2

6 Case Caption Global Equity Management (SA) Pty. Ltd. v. Travago GmbH et al., No. 2:16-cv (E.D. Tex.); Global Equity Management (SA) Pty. Ltd. v. Orbitz Worldwide, Inc. et al., No. 2:16-cv (E.D. Tex.) Global Equity Management (SA) Pty. Ltd. v. Hotwire, Inc. et al., No. 2:16-cv (E.D. Tex.) Global Equity Management (SA) Pty. Ltd. v. TripAdvisor, Inc., No. 2:16-cv (E.D. Tex.) Global Equity Management (SA) Pty. Ltd. v. Hipmunk, Inc., No. 2:16-cv (E.D. Tex.) Global Equity Management (SA) Pty. Ltd. v. Ericsson, Inc., No. 2:16-cv (E.D. Tex.) Global Equity Management (SA) Pty. Ltd. v. Johnson & Johnson USA, Inc., No. 2:16-cv (E.D. Tex.) Global Equity Management (SA) Pty. Ltd. v. Philips, Inc., No. 2:16-cv (E.D. Tex.) Global Equity Management (SA) Pty. Ltd. v. SAP America, Inc., No. 2:16-cv (E.D. Tex.) Global Equity Management (SA) Pty. Ltd. v. Siemens Corporation, No. 2:16-cv (E.D. Tex.) Global Equity Management (SA) Pty. Ltd. v. The Nasdaq OMX Group, Inc. et al., No. 2:16-cv (E.D. Tex.) Global Equity Management (SA) Pty. Ltd. v. Ticketleap.com, LLC, No. 2:16-cv (E.D. Tex.) Global Equity Management (SA) Pty. Ltd. v. Live Nation Entertainment, Inc. (d/b/a Ticketmaster, Inc.), No. 2:16-cv (E.D. Tex.) Date Filed 1/29/2016 1/29/2016 1/29/2016 1/29/2016 1/29/2016 6/14/2016 6/14/2016 6/14/2016 6/14/2016 6/14/2016 6/14/2016 6/14/2016 6/14/2016 3

7 Case Caption Global Equity Management (SA) Pty. Ltd. v. Ubisoft Studio, Inc. (d/b/a Ubisoft), No. 2:16-cv (E.D. Tex.) Global Equity Management (SA) Pty. Ltd. v. General Electric Company, No. 2:16-cv (E.D. Tex.) Global Equity Management (SA) Pty. Ltd. v. McGraw Hill Financial, Inc. (d/b/a S&P Global and S&P Capital IQ), No. 2:16-cv (E.D. Tex.) Global Equity Management (SA) Pty. Ltd. v. Zynga, Inc., No. 2:16-cv (E.D. Tex.) Global Equity Management (SA) Pty. Ltd. v. Alcatel-Lucent, Inc., No. 2:16-cv (E.D. Tex.) Global Equity Management (SA) Pty. Ltd. v. Uber Technologies, Inc., No. 2:16-cv (E.D. Tex.) Global Equity Management (SA) Pty. Ltd. v. Artek Surfin Chemicals, Ltd. (d/b/a Galata Chemicals, LLC), No. 2:16-cv (E.D. Tex.) Global Equity Management (SA) Pty. Ltd. v. Netflix, Inc., No. 2:16-cv (E.D. Tex.) Global Equity Management (SA) Pty. Ltd. v. AdRoll, Inc., No. 2:16-cv (E.D. Tex.) Global Equity Management (SA) Pty. Ltd. v. Spotify USA, Inc., No. 2:16-cv (E.D. Tex.) Global Equity Management (SA) Pty. Ltd. v. Hitachi America, Ltd., No. 2:16-cv (E.D. Tex.) Global Equity Management (SA) Pty. Ltd. v. Zillow, Inc. et al., No. 2:16-cv (E.D. Tex.) Global Equity Management (SA) Pty. Ltd. v. Amazon.com, Inc. et al., No. 2:16-cv (E.D. Tex.) Date Filed 6/14/2016 6/14/2016 6/14/2016 6/14/2016 6/14/2016 6/14/2016 6/14/2016 6/14/2016 6/14/2016 6/14/2016 6/14/2016 6/14/2016 7/27/2016 4

8 Case Caption Global Equity Management (SA) Pty. Ltd. v. Alibaba Group Holding, Ltd. et al., No. 2:16-cv (E.D. Tex.); transferred to the Northern District of California, No. 3:17-cv , on 4/28/2017 Global Equity Management (SA) Pty. Ltd. v. Ericsson, Inc., No. 2:17-cv (E.D. Tex.); transferred to the Eastern District of Virginia, Case No. 3:17-cv on 1/26/2017 Date Filed 10/4/2016 1/25/2017 Additionally, on July 22, 2016, Amazon Web Services, Inc. and VADATA, Inc. filed suit in the Eastern District of Virginia against GEMSA seeking declaratory judgments of non-infringement and invalidity of the ʼ400 Patent in Amazon Web Services, Inc. et al. v. Global Equity Management (SA) Pty. Ltd., No. 3:16-cv (E.D. Va.). C. Counsel Vincent J. Galluzzo (Reg. No. 67,830) will act as lead counsel; Teresa Stanek Rea (Reg. No. 30,427), Jonathan Stroud (Reg. No. 72,518), and Ashraf Fawzy (Reg. No. 67,914) will act as back-up counsel. D. Service Information, , Hand Delivery, and Postal Unified consents to electronic service at and Petitioner can be reached at Crowell & Moring LLP, 1001 Pennsylvania Avenue, N.W., Washington, D.C , Tel.: (202) , Fax: (202) and Unified 5

9 Patents Inc., 1875 Connecticut Avenue, N.W., Floor 10, Washington, D.C , Tel.: (650) II. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R A. Grounds for Standing under 37 C.F.R (a) Petitioner certifies pursuant to Rule (a) that the patent for which review is sought is available for inter partes review and that Petitioner is not barred or estopped from requesting an inter partes review challenging the patent claims on the grounds identified in this Petition. B. Identification of Challenge under 37 C.F.R (b) and Relief Requested In view of the prior art and evidence presented herein, Claims 1 4, 6, 10, and 15 ( challenged claims ) of the 400 Patent are unpatentable and should be cancelled. 1 The prior art references identified below present a reasonable likelihood that the challenged claims of the 400 Patent are unpatentable and therefore review of the challenged claims should be granted. See 35 U.S.C. 314(a). 1 The ʼ400 Patent issued from a patent application filed prior to enactment of the America Invents Act ( AIA ). Accordingly, pre-aia statutory framework applies. 6

10 Proposed Ground of Unpatentability Claims 1 4, 6, 10, and 15 are obvious under 35 U.S.C. 103(a) over U.S. Patent 5,675,769 ( Ruff ) in view of U.S. Patent 6,178,503 ( Madden ). Exhibit Nos. EX1003 & EX1004 Section VII identifies where each element of the Challenged Claims is found in the prior art patents, with support from the Declaration of Mr. Kendyl Román ( Román Declaration ) (EX1002). 37 C.F.R (b)(4). The exhibit numbers of the supporting evidence relied upon to support the challenges are provided above and the relevance of the evidence to the challenges raised are provided in VII. Exhibits EX1001 EX1025 are attached. III. INTRODUCTION The challenged claims in the 400 Patent recite a graphical user interface (GUI) displaying graphics representing various partitioned storage devices and their contents in a computer. Sole independent claim 1 requires four elements: a Menu Bar, a Cabinet Bar, a Storage Window, and a Cabinet Window, as illustrated below: 7

11 EX1001 (ʼ400 Patent), at Fig. 1 (highlighting added). 2 While the 400 Patent specification describes an interface for manipulating partitions and booting operating systems, the challenged claims do not recite most of that functionality. What they do claim is admittedly found in the prior art, such as methods of activating toolbars and buttons by mouse-clicks or drag-and-drop mouse motions by a user. Similar solutions existed in the art for years prior, including GUIs for controlling disk partitioning and booting operations. 2 Unless otherwise noted, all color highlighting and annotations are added. 8

12 One of those solutions, Ruff, taught GUIs for manipulating disk partitions like the one in the ʼ400 Patent, as shown: EX1003 (Ruff), at Fig. 6. Madden is another solution that shares an inventor with and expands on Ruff s disclosure. Madden discloses organizing and booting discrete operating systems using cabinets and partitions such as those disclosed and controlled by the GUI of Ruff. These two references in combination render the ʼ400 Patent obvious. IV. TECHNOLOGY BACKGROUND The 400 Patent generally discloses using GUIs to manage disk partitioning and operating system booting. As discussed, and as admitted by the 400 Patent, 9

13 these features were well known prior to September 29, See, e.g., EX1001 ( 400 Patent), at 1: A. Graphical User Interfaces ( GUIs ) A graphical user interface, or GUI, is a visual interactive representation for helping users understand and operate computer programs. EX1002 (Román Declaration) at Setting aside more antiquated examples, GUIs have been sold with consumer products and widely used by the public since at least 1984, when Apple Computer began selling the Macintosh desktop computer; many GUI interfaces in commercial products followed. Id. at 52. As developers created and improved GUIs, terminology, designs, and standard practices evolved. For example, in 1995 Alan Cooper published the textbook About Face: The Essentials of User Interface Design, which disclosed and explained features of GUIs, their uses, and their many optional design choices that designers could experiment with to improve user experience and functionality. Id. at As he and others explain, for convenience and ease of design, GUIs are generally made up of self-contained building blocks called widgets, interactive graphics such as scrollbars, text windows, and push buttons, which you use to work with an application. EX1008 (X Window User s Guide), at 266. One early standardized set of widgets for GUIs was called Motif, as shown below: 10

14 Id. Various widgets can be arranged and combined to make various GUI layouts. EX1002 (Román Declaration) at One common widget is the file cabinet. See EX1009 (Schneiderman), at 370 ( Information hierarchies are the most frequently represented metaphor[, e.g.,... f]ile cabinet with folders and documents.... ). It was well within the skill in the art to select, exchange, and arrange various widgets, to change those widgets, and to reorder them in various GUI design choices. EX1002 (Román Declaration) at 59 60; see also EX1003 (Ruff), at 9:66 10:4. B. Disk Partitioning Computer hard drives and solid-state disks are secondary storage devices that can be used to boot, i.e., start, a computer and the associated operating system, such as Windows, Linux, or Mac OS. EX1002 (Román Declaration) at 82; see 11

15 also EX1011 (ʼ183 Patent), at 1: Some secondary storage devices can be divided into one or more smaller pieces of continuous segment[s] of storage called partitions. Id. at 1: Partitions can be demonstrated by a logical diagram of secondary storage split into three partitions of varying memory size: Partition 2 Partition 1 Partition 3 Storage Device A EX1002 (Román Declaration), at 83. The partitions are defined by their starting location in the secondary storage device. A partition also has a size, a type (e.g., FAT or HPFS), and an indicator (known as a flag ) that designates whether it is an active partition. EX1011 (ʼ183 Patent), at 1: The location of and information about each of these partitions is maintained in a partition table. EX1003 (Ruff), at 2: U.S. Patent No. 6,401,183 issued to one of the co-inventors of the 400 Patent (Schumann Rafizadeh), was filed approximately five months before the application that became the 400 Patent, and discloses a Storage Manager that dynamically manipulates and partitions the secondary storage of a computer device. EX1011 (ʼ183 Patent), at Abstract. 12

16 As a user s memory requirements change (e.g., a file or set of data grows or shrinks), one must manage these partitions. See id. at 4: One method involves manually copying the necessary user and system data from the partition to be manipulated into a temporary storage location or device. Id. at 4: The user can then run a disk utility program to modify the partition table and another disk utility program to prepare the partition for use. Id. at 4: Finally, the user copies the data from the temporary location or device back into the modified or new partition on the secondary storage device. Id. at 4: Manual partition management, in addition to being cumbersome, can be confusing and dangerous for many computer users. See id. at 4:45 5:4. As early as 1986, methods and applications were developed to let casual users manipulate partitions safely and easily, EX1002 (Román Declaration) at 88, solutions that were improved upon by Apple, Microsoft, and others throughout the 1980s and 1990s. Id. at V. OVERVIEW OF THE ʼ400 PATENT A. Summary of the Disclosure The ʼ400 Patent, Graphic User Interface for Resources Management of Super Operating System Based Computers, discloses a graphic user interface (GUI) that includes glyphs, or images, representing data storage devices and their contents. See EX1001 (ʼ400 Patent) at Abstract ( This invention is a Graphic User 13

17 Interface (GUI) that enables a user to virtualize the system and to define secondary storage physical devices through the graphical depiction of cabinets. ). The ʼ400 Patent concedes that these GUIs were known by those skilled in the art of computer programming prior to filing. Id. at 3: The ʼ400 Patent is generally directed to a GUI for manipulating partitions and booting operating systems. This claimed GUI requires four primary components, as illustrated in the embodiment of Figure 1 (below): the Menu Bar (60), 4 the Cabinet Bar (70), 5 the Storage Window (80), 6 and the Cabinet Window (90). 7 Also illustrated in Figure 1 are a Main Toolbar (65), and a Cabinet Properties Window (30). Id. at 5: Called the Main Pull Down Menu Bar Called the Cabinet Selection Button Bar Called the Secondary Storage Partitions Window Called the Active Selected Cabinet Visible Partition Window

18 Id. at Fig. 1. Other embodiments of the ʼ400 Patent include other windows elements. See, e.g., id. at Fig. 10 (illustrating a Master Cabinet Visible Partition Window 91). In Figure 1, the Cabinet Bar (70) includes buttons (elements 20, 21) that represent virtual storage devices called cabinets. Id. at 1:57 67, 2:64 3:12, 6:

19 Id. at Fig. 1. These cabinets in turn represent memory partitions of hard-disk drives and other secondary storage devices. Id. The Storage Window (80) illustrates details of the various secondary storage devices and their related partitions. Id.at 7:1 32. Id. at Fig. 1. The Cabinet Window (90) is a detailed view of the particular cabinet selected in the Cabinet Selection Button Bar. Id. Id. at Fig. 1. Claim 1 is the only independent claim challenged, and corresponds to Figure 1, as illustrated and described above: 1. A graphic user interface for displaying means for allocating a computer device's resources to multiple operating system environments, partitioned on individual virtual cabinets, on said computer device, said graphic user interface comprising: a main menu bar; a cabinet selection button bar; said cabinet selection button bar graphically representing at least one virtual cabinet; 16

20 each said at least one virtual cabinet representing a discrete operating system; a secondary storage partitions window; a cabinet visible partition window; said secondary storage partitions window graphically illustrating at least one partition of at least one secondary storage device; said cabinet visible partition window graphically illustrating a cabinet record corresponding to a selected virtual cabinet on said cabinet selection button bar; and each said at least one cabinet visible partition window representing an operating system plus application software, databases and memory configured with said selected virtual cabinet. Id. at claim 1. Per the ʼ400 Patent, the claimed GUI enables a user to allocate and manage the resources of a computer system by defining one or more cabinets, each cabinet containing one or more partitions of one or more existing software and/or data. Id. at 5:9 13. The GUI enables a user to virtualize the system and to define secondary storage physical devices through the graphical depiction of cabinets. Id. at Abstract. The ʼ400 Patent acknowledges that partition software was well-known before the filing date of the underlying application. For example, the specification explains the original assignee, Flash Vos, sold a product called the Flash Vos 17

21 Dynamic or Static Virtual Table of Contents (VTOC) [that] is part of a Storage Manager, wherein relevant identifying information is contained for each Partition of secondary storage. Id. at 2:64 3:1; see also id. at 2:53 58 ( Prior art known in the industry includes... Flash Vos Dynamic or Static Virtual Table of Contents. ). Beyond EX1011 (the 183 Patent, discussed at note 3, supra), which predates the 400 Patent, Patent Owner is also the assignee of another patent that refers to and describes aspects of the ʼ400 Patent. U.S. Patent 7,356,677 by Rafizadeh ( 677 Patent ) states that the function of the GUI described in the ʼ400 Patent is to act as an interface to other functions, such as partition configuration. EX1015 (ʼ677 Patent) at 7:4 9, 7: According to the 677 Patent, the ʼ400 Patent describes a graphical user interface that facilitates the use of a Super Operating System, id. at 7:4 9, but does not otherwise provide novel functionality. Notably, the super operating system limitation is recited only in dependent claim 15 of the ʼ400 Patent. B. Level of Ordinary Skill in the Art A person of ordinary skill in the art ( POSA ) for the ʼ400 Patent would have a bachelor s degree in computer science, computer engineering, or the equivalent, with at least two years of experience in computer operating systems, programs and databases, or graphical user interfaces. EX1002 (Román Declaration) at

22 C. Prosecution History The ʼ400 Patent issued from U.S. Patent Application 09/409,013 ( ʼ013 Application ), which was filed on September 29, EX1001 (ʼ400 Patent) at cover page. The 400 Patent does not claim the benefit of any prior U.S., international, or foreign application. 8 The ʼ013 Application received a first Office Action rejecting the pending claims as obvious over a variety of references, EX1016 ( 400 Patent File History) at Four months after the statutory deadline to file a reply, the applicant petitioned to revive the ʼ013 Application (with Reply). 9 Id. at That Reply 8 The Specification and Inventor Declaration for the ʼ013 Application state that the application is related to the application Storage Manager for Computer Devices and Method for Manipulating Secondary Storage, Ser. No. 90/283,418, Art Unit 2783, filed on Apr. 1, 1999 by Schumann Rafizadeh, assigned to Flash Vos, Inc. Id. at 1:7 11; EX1016 ( 400 Patent File History), at 57 (reciting substantially similar text). The New Application Transmittal form does not claim the benefit of any other application. EX1016 ( 400 Patent File History), at C.F.R (b). Applicant stated that the abandonment was unintentional, though counsel of record earlier verified that no response ha[d] been filed to the Office Action. Compare id. at 95 with id. at

23 contained statements limiting the scope of the claims and further informed their construction. Id. at These limitations are reflected in the claim constructions proposed by Petitioner in VI, infra. After revival, the applicant filed a Request for Continued Examination, and the Examiner allowed the claims based on these statements. Id. at VI. CLAIM CONSTRUCTION In an inter partes review, claim terms in an unexpired patent, such as the 400 patent, are given their broadest reasonable construction in light of the specification of the patent. 37 C.F.R (b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, (2016) (upholding the use of the broadest reasonable construction as the standard to be applied for claim construction in inter partes reviews). However, federal district courts use a different standard to construe patent claims than used in inter partes review. In district court proceedings, claims are given their ordinary meaning... as understood by a person of skill in the art. Cuozzo Speed Techs. at 2142 (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc)). Moreover, only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). 20

24 The ʼ400 Patent has been twice interpreted to date: first as construed by the U.S. District Court for the Eastern District of Texas in Global Equity Management (SA) Pty. Ltd. v. Expedia, Inc., et al., Case No. 2:16-cv RWS-RSP (E.D. Tex. Dec. 22, 2016) ( the Expedia Litigation ) (EX1017) under the Phillips standard; and second as interpreted, preliminarily, for the purposes of institution, by the Board in IPR EX1007 ( 1828 Institution Decision) at While the District Court construed claim terms in claim 1, the Board found no need to construe the terms of claims 1 or 2 in the 1828 IPR at institution. 10,11 Petitioner likewise believes that express constructions of terms in claims 1 and 2 are not necessary here for purposes of institution. To the extent Patent Owner argues for a different claim construction under the BRI, however, the applicable terms construed by the District Court are addressed below. Petitioner also proposes constructions below for a means-plus-function limitation in claim 2, as construction of means-plus-function terms is mandated. See 35 U.S.C. 112, 6; 37 C.F.R (b)(3); In re Donaldson Co., 16 F.3d 10 Petitioner recognizes that the Board here is not bound by the preliminary construction in IPR The Board, like the District Court, found that it was unable to construe terms in Claims 16 and 28 as indefinite; those claims are not at issue here. 21

25 1189, (Fed. Cir. 1994) (en banc); see also Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc). Petitioner also proposes constructions below for certain claim terms (including some means-plus-function limitations) in dependent claims not at issue in the Expedia Litigation or the earlier 1828 IPR. Any claim term not specifically discussed below should be given its broadest reasonable interpretation in light of the specification, as commonly understood by a POSA. Construction of these terms would be the same whether a BRI or Phillips construction standard is used. A. Claim Terms for Which Patent Owner Has Agreed to Constructions 1. A graphic user interface for displaying means for allocating a computer device s resources to multiple operating system environments, partitioned on individual virtual cabinets, on said computer device (Claim 1 Preamble) The preamble of claim 1 should be construed to not be limiting, as [t]he preamble simply states the intended use of the invention, as determined in the 1828 IPR and Expedia Litigation. Id. at 25, 27; EX1018 ( 1828 IPR POPR), at 11 ( The preamble here is not limiting ); see also TomTom, Inc. v. Adolph, 790 F.3d 1315, 1323 (Fed. Cir. 2015) ( a preamble is not limiting where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention (quotation marks omitted)). The preamble here states an intended use or environment of the invention (i.e., a 22

26 graphical user interface for displaying means for allocating computer resources). EX1018 ( 1828 IPR POPR), at 26; In re Otto, 50 C.C.P.A. 938, 940, 312 F.2d 937, 939 (C.C.P.A. 1963) ( inclusion of the [environment worked on] by a structure being claimed does not impart patentability to the claims ). The intrinsic record supports that the preamble is not limiting. For example, in prosecution of the 400 Patent, the patentee distinguished the claims from the prior art using limitations from the body of the claim, rather than any terms from the preamble. See, e.g., EX1016 ( 400 Patent File History) at , , ; see also Am. Med. Sys. v. Biolitec, Inc., 618 F.3d 1354, 1359 (Fed. Cir. 2010) ( If the preamble is reasonably susceptible to being construed to be merely duplicative of the limitations in the body of the claim (and was not clearly added to overcome a prior art rejection), we do not construe it to be a separate limitation. (quotation and modification marks omitted)) (emphasis added). 2. virtual cabinet (Claims 1, 2, 4) This term should be given its plain and ordinary meaning, and is at least broad enough to include a virtual storage device, capable of containing, typically through the use of virtual table of content pointers, all (or partitions of) shared (or non-shared) operating systems, application software (both OS dependent and No- OS embedded), databases and memory, as construed in the Expedia Litigation and as agreed to by Patent Owner in the earlier IPR. EX1017 (Claim Construction 23

27 Order) at 32 33; EX1018 ( 1828 IPR POPR) at See also EX1001 (ʼ400 Patent) at 2:40 52, 5:24 29; EX1016 ( 400 Patent File History) at cabinet selection button bar (Claim 1) This term should be given its plain and ordinary meaning, and is at least broad enough to include a collection of user-selectable graphical items, each graphical item representing a virtual cabinet, as construed in the Expedia Litigation and as agreed to by Patent Owner in the earlier IPR. EX1017 (Claim Construction Order), at 30; EX1018 ( 1828 IPR POPR) at 23. See also EX1001 (ʼ400 Patent) at Fig. 1, 6:13 21, 6:56 63, 7:34 39; EX1016 ( 400 Patent File History) at (describing the cabinet selection bar as providing a visual depiction of the virtual management of cabinets of the present invention ). 4. secondary storage (Claim 1) This term should be given its plain and ordinary meaning, and is at least broad enough to include storage other than main memory, as construed in the Expedia Litigation and agreed to by the Patent Owner in the 1828 IPR. EX1017 (Claim Construction Order), at 36; EX1018 ( 1828 IPR POPR) at 10. See also EX1001 (ʼ400 Patent) at 1:50 52, 2:1 6, 3: secondary storage partitions window (Claim 1) This term should be given its plain and ordinary meaning, and is at least broad enough to include a window that depicts secondary storage devices and that 24

28 is configurable to depict their partitions, as construed in the Expedia Litigation and agreed to by the Patent Owner in the 1828 IPR. EX1017 (Claim Construction Order) at 39; EX1018 ( 1828 IPR POPR) at 29. See also EX1001 (ʼ400 Patent) at Fig. 8, 7: partition (Claims 1, 2) This term should be given its plain and ordinary meaning, and is at least broad enough to include a logical device corresponding to a distinct continuous segment of physical secondary storage, as construed in the Expedia Litigation and agreed to by the Patent Owner in the 1828 IPR. EX1017 (Claim Construction Order) at 48; EX1018 ( 1828 IPR POPR) at 10. See also EX1001 (ʼ400 Patent) at 1:57 65, 2:1 11, 3: cabinet visible partition window (Claims 1, 2) This term should be given its plain and ordinary meaning, and is at least broad enough to include a window that depicts one or more virtual cabinets and that is configurable to depict their files and partitions, as construed in the Expedia Litigation and as agreed to by Patent Owner in the 1828 IPR. EX1017 (Claim Construction Order) at 42; EX1018 ( 1828 IPR POPR) at 27. See also EX1001 (ʼ400 Patent) at Figs. 8 10, 7:

29 8. secondary storage device (Claim 1) This term should be given its plain and ordinary meaning, and is at least broad enough to include a storage device other than a main memory device, as construed in the Expedia Litigation and as agreed to by Patent Owner in the 1828 IPR. EX1017 (Claim Construction Order) at 36; EX1018 ( 1828 IPR POPR) at See also EX1001 (ʼ400 Patent) at 1:50 52, 2:1 6, 3:7 10, 7: cabinet record (Claims 1, 2, and 4) This term should be given its plain and ordinary meaning, and, as the district court found, is at least broad enough to be construed, just as virtual cabinet is above, to mean at least a virtual storage device, capable of containing, typically through the use of virtual table of content pointers, all (or partitions of) shared (or non-shared) operating systems, application software (both OS dependent and No- OS embedded), databases and memory, as construed in the Expedia Litigation and as agreed to by Patent Owner in the earlier IPR. EX1017 (Claim Construction Order) at 32 33; EX1018 ( 1828 IPR POPR) at 11. See also EX1001 (ʼ400 Patent) at 2:40 52, 5:24 29; EX1016 ( 400 Patent File History) at

30 B. New Terms 1. means for manipulating said selected virtual cabinet record through said cabinet visible partition window (Claim 2) This phrase should be construed under pre-aia 35 U.S.C. 112, 6 to include the recited function manipulating said selected virtual cabinet record through said cabinet visible partition window and the following corresponding structure or acts described in the specification, such as a pointer device such as a mouse for performing the following acts, and equivalents thereof: 1. click and drag movements using a pointer device such as a mouse, EX1001 (ʼ400 Patent), at 7:13 22; 2. double clicking using a pointer device such as a mouse, id.; and 3. right clicking a pointer device over the selected partition using a pointer device such as a mouse, id. at 7:22 25; to add[] partitions, delet[e] partitions, nam[e] the cabinet, assign[] an icon to the cabinet, configur[e] partitions in the cabinet, defin[e] user access, defin[e] remote management functions and boot[] the cabinet, in accordance with the Flash Vos GUI. EX1001 (ʼ400 Patent), at 5:29 35; see also id. at 7:1 32, Figs. 8, cabinet properties window (Claim 3) This term should be given its plain and ordinary meaning, and is at least broad enough to include a window that displays the properties of a cabinet, such as the cabinet name. See EX1001 (ʼ400 Patent) at 6:17 6:19 ( FIG. 1 further depicts Cabinet Property Windows 30, within which are Cabinet Name Window 27

31 31, Primary Operating System Version Window 32, and Remote Manager Window 33 for each cabinet ); id. at Fig means for designating and illustrating one of said at least one cabinet record as an active selected virtual cabinet (Claim 4) This phrase should be construed under pre-aia 35 U.S.C. 112, 6 to include the recited function designating and illustrating one of said at least one cabinet record as an active selected virtual cabinet and the corresponding structure or acts described in the specification, such as a visual display for displaying the icons, and equivalents thereof, as explained below. See EX1001 (ʼ400 Patent) at 6:13 21; 7:1 32. Specifically, the ʼ400 Patent discloses displaying at least two icons to differentiate an active selected virtual cabinet from the other cabinets displayed in the GUI, as used in the Figures: Virtual Cabinet Active Selected Virtual Cabinet Id. at Fig. 1. The visual difference between these two icons, and the displaying of these two different icons, provides the underlying structure and acts corresponding to the recited function designating and illustrating one of said at least one cabinet record as an active selected virtual cabinet. 28

32 4. means for remote management of any of said multiple operating systems (Claim 10) This phrase should be construed under pre-aia 35 U.S.C. 112, 6 to include the recited function remote management of any of said multiple operating systems and the following corresponding structure or acts described in the specification, and equivalents thereof: a remote computer accessible through the Internet that can report or manipulate computer system environments, including storage size, user time allocation, user privileges, sharing and security of data, separations of potential users (such as parents and children, teachers and students or classes), [and] different accounting periods and systems by use of support management tools such as Intel s Landesk, CA s Unicenter, Flash Vos and Norton Utilities. EX1001 (ʼ400 Patent), at 2:24 34, 4:26-29; see also id. at 4:12 16 ( This GUI window allows the user to use the Internet to remotely select other systems and organizations that are frequently accessed to be tailored and available for direct communication with or without requiring a specific (OS Dependent or Independent) browser or link up program. ); id. at 6: super operating system (Claim 15) This term is explicitly defined by the Patent Owner to mean an operating system that allows a computer user to load multiple operating systems from secondary storage into main memory. See EX1001 (ʼ400 Patent) at 1:49 51 ( Super operating systems allow computer users to load multiple operating systems 29

33 from secondary storage into main memory. ); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (noting the patentee acts as a lexicographer when the patentee clearly set[s] forth a definition of the disputed claim term in either the specification or prosecution history ). VII. CLAIMS 1 4, 6, 10, AND 15 ARE OBVIOUS OVER RUFF IN VIEW OF MADDEN The following discusses the challenged claims of the ʼ400 Patent, and how they are rendered obvious in view of the asserted prior art. They are supported by the evidence cited, including the Declaration of Mr. Kendyl Román. See EX1002. A. Overview of Ruff Ruff, titled Method for Manipulating Disk Partitions, is directed to a method that allows manipulation of disk partitions including displaying information about a partition; moving a partition to a different location; resizing a partition; and other operations. EX1003 (Ruff) at Abstract. Ruff provides a GUI that allows users who are unfamiliar with technical intricacies to easily manipulate IBM-compatible disk partitions, including extended partitions and logical partitions. Id. That GUI is shown in Figure 6: 30

34 Id. at Fig. 6. The Ruff GUI includes a vertical Menu Bar (consisting of buttons HELP and EXIT ), a Cabinet Bar (120) (called a partition graph window ), a Storage Window (118) (called a drive box group window ), and a Cabinet Window (130) (called a partition list window ). Id. at Fig. 6, 9:51 10:26. Like the embodiment illustrated in Figure 1 of the ʼ400 Patent, Ruff also has a Main Toolbar (134) (called an option box window ) and a Cabinet Properties Window (126) (called a legend ). Id. Ruff teaches that its GUI provides information regarding the partitions presently defined by the partition table, including the names, relative positions, and 31

35 file system types of the partitions. Id. at 9: While the Cabinet Bar (120) of Figure 6 shows partitions by indicating their lettered drive name (e.g., C: ), Ruff teaches that other [c]olors or graphical patterns may be used in partition graph 120 to denote the partitions, as well as a legend 126 that matches colors to file system types or to partition characteristics. Id. at 9:66 10:4. For example, in Figure 6, partitions E: and F: are logical partitions. Id. at 10:4 6. Ruff also teaches that the Cabinet Window (130) provides additional information about the current selected partition, which in Figure 6 is partition C:. Id. at 10:8 14. When a user modifies a partition using the GUI of Ruff, the reference teaches an adjusting step that adjusts the size, location, and contents of the file system structures as needed to reflect differences between the selected partition and the modified partition. Id. at 6: Ruff then follows the adjusting step with an exiting step which may force[] the computer to reboot so that changes in the partition table or file system structures will be detected by the operating system. Id. at 6: Ruff does not explicitly disclose a GUI that is used to manipulate partitioned disks associated with different operating systems. But Madden teaches managing multiple operating systems on a single computer s GUI. 32

36 B. Overview of Madden Madden, titled Managing Multiple Operating Systems on a Single Computer, is directed to improved boot-time support for graphical user interfaces that have menus, tabs, non-ascii characters, and other graphical user interface components in the pre-boot environment. EX1004 (Madden), at Abstract, 3:52. Madden teaches a boot-management software program which provides users with a single menu for all available operating systems and operating system modes on a given computer. Id. at 5:3 9. The GUI of Madden is shown below: Id. at Fig. 6. Madden contemplates complex GUIs that includes elements not illustrated in the figures, such as [t]abs, dialogs, property pages, pop-up menus, 33

37 pull-down menus, scroll bars, radio buttons, push buttons, check boxes, and other graphical user interface components. Id. at 19:6 16. The boot management software of Madden includes organizing operating systems and allowing users to select which operating system to boot. Id. at 3: These operating systems are stored simultaneously on one more hard disks or other permanent storage devices that are either attached to or accessible (e.g., via a network) to the computer to be booted. Id. at 3: These permanent storage devices hold operating systems... and other code and data. Id. at 5: Thus, Madden teaches not only a boot-time operating system selection software, but also mechanisms for organizing the manner in which the multiple operating systems are stored on the hard disk(s) including by the use of partition[s], directories and directory subtrees. Id. at 4:4 10; see also id. at 8:47 59 ( To support more than one operating system 100 in a given disk 124 partition, one embodiment breaks out the operating systems 100 into separate directories so that they can be booted individually. ); id. at 10: C. Motivation to Combine Ruff and Madden A POSA would have been motivated to combine the teachings of the disk partition and virtual cabinet manipulation GUI of Ruff with the teachings of Madden that a virtual cabinet can represent a discrete operating system, and that one can display that discrete operating system as a menu-selectable item in a GUI. 34

38 A POSA would have been motivated to make this combination at the time the 013 Application was filed for several reasons, including at least: (i) that Madden teaches a further development on the concepts of Ruff, and teaches that its disclosure can be extended with additional with graphical user interface and application elements; and (ii) they are in the same field of endeavor and solve the same problems, i.e., manipulating partitions of file systems. As to the first point, a POSA would have read the teachings of Ruff and understood the following: Ruff teaches the concept of manipulating partitions and virtual cabinets via a GUI having various window and button bar layouts, see, e.g., VII.A, supra; EX1002 (Román Declaration), at 125; Ruff discusses the specifics of preparing a partition for a particular type of file system (e.g., FAT or HPFS), id.; and Ruff teaches the concept of providing a GUI for configuring a boot partition for a new OS, id. While Ruff does not explicitly teach that its GUI virtual cabinets and partitions can represent discrete operating systems, Madden does. Id. at 126. A POSA would have read the teachings of Madden and come away with the following understandings: 35

39 Madden teaches the organization of discrete operating systems stored on a number of hard disks or other storage devices, id. at 127; Madden teaches organizing these discrete operating systems by partitions, id.; and Madden teaches selecting these discrete operating systems, and therefore, the associated partitions, to boot by a GUI interface, id. Therefore, Madden, which was filed more than three years after Ruff, expands on the concepts taught in Ruff and improves on means of manipulating partitions as they relate to operating systems and booting, at least by providing a GUI for configuring and preparing different boot partitions. Id. at 128. Madden represents a natural outgrowth of the teachings of Ruff to allow not only for partition and virtual cabinet selection, but also for discrete operating system selection through a GUI menu. Id. A POSA would have been motivated to combine Ruff and Madden in this way for any number of reasons. The obvious combination would be able to (1) maintain and manage multiple operating systems on a single computer more easily, more quickly, and more clearly with less error; (2) maintain separate operating systems and program files from user files; and (3) easily and quickly isolate or protect files related to distinct operating systems in the case of corrupted file or operating systems. EX1002 (Román Declaration) at

40 Other reasons include that the underlying structure and functionality of the computer and storage devices in Ruff and Madden are the same (as they relate to the operating systems). Id. Another reason is that Madden provides an explicit motivation to extend the teachings of the simpler boot-time GUI of Madden to include more complex GUI elements such as those taught in Ruff: Tabs, dialogs, property pages, pop-up menus, pull-down menus, scroll bars, radio buttons, push buttons, check boxes, and other graphical user interface components can be implemented with bitmaps 130 in a manner similar to the implementation of the menu 604 discussed elsewhere herein. Those of skill in the art will readily understand the equivalence, with respect to the boot-time graphical user interface aspects 130, 132 of the present invention, of these and other GUI components. Thus, although specific reference is made to menus, other components may also be made and used according to the invention. EX1005 (Madden), at 19:6 17; EX1002 (Román Declaration), at 131. This is consistent with Mr. Román s view of the skill of a POSA, who would easily be able to create a new GUI layout using a finite set of well-known GUI elements. EX1002 (Román Declaration), at 131. According to Mr. Román, a GUI programmer will generally make design choices from a number of different ways to layout and display a limited number of GUI widgets. Id. Third, Madden points to combining with Ruff by Madden s Figure 6 menu items, Configuration and Prepare for a New OS, 37

41 which are exact functions of the Ruff GUI as a POSA would understand it. Id. at 133. While Ruff generally teaches a run-time graphical user interface and Madden is generally directed to a boot-time graphical user interface, this difference does not teach away from the combination of Ruff and Madden. Id. at 132. Madden explicitly teaches that its GUI may also be used in regular applications that limited-graphics-support environment such as a portable device or an embedded system. EX1004 (Madden) at 5: Moreover, as discussed just above, the underlying structure and functionality of the computer and storage devices in Ruff and Madden are the same (as they relate to the operating systems), regardless of whether the computer device is in a booting or a running state. EX1002 (Román Declaration), at 130. Madden s explicit teachings alone would motivate a POSA to combine the references, to further develop the usefulness of the GUI and the underlying partition management system of Ruff. Id. at 132. Finally, as alluded to above, Ruff and Madden are in the same field of endeavor. They share an inventor (Robert S. Raymond) and were assigned to the same entity (PowerQuest Corporation). They also solve the same problems 38

42 inherent in manipulating partitions of file systems. This is especially true given the overlap in Madden s Figure 6 menu items ( Configuration and Prepare for a New OS ) and Ruff s functionality as discussed above. Id. at 133. Accordingly, a POSA would be further motivated to combine Ruff and Madden to arrive at the claimed GUI of the ʼ400 Patent. See Unwired Planet, LLC v. Google Inc., 841 F.3d 995, (Fed. Cir. 2016). D. Claim 1 is Obvious over Ruff in View of Madden 1. Preamble To the extent the preamble is deemed limiting, Ruff in view of Madden render the preamble obvious. a. A graphic user interface for displaying means for allocating a computer device s resources to multiple operating system environments, To the extent the Board finds the preamble limiting, see VI.A.1, supra, Ruff and Madden teach this portion of the preamble. Ruff teaches a GUI that displays at least a portion of the partition table contents to the user and provide[s] users with feedback regarding the current partition configuration and a command interface for molding that configuration. EX1003 (Ruff) at 9: The GUI of Ruff displays information regarding the partitions presently defined by the partition table of the computer device at issue, including the names, relative positions, and file system types of the partitions. 39

43 Id. at 9: The GUI of Ruff also displays a drive group box 118 which provides the user with information regarding the physical disk drives attached to the computer, including the drive names. Id. at 9: A user can manipulate these resources through the use of the Ruff GUI. Id. at 10: Thus, Ruff teaches a graphic user interface for displaying means for allocating a computer device s resources to multiple operating system environments, as recited in Claim 1. Madden teaches the management of multiple operating systems on a single computer. EX1004 (Madden), at Abstract. To do that with a single computer, and to share the computer s resources, Madden breaks out the [multiple] operating systems 100 into separate directories so that they can be booted individually. Id. at 8: With this and other functionality provided by Madden, a user can install multiple copies of the same operating system and/or multiple different operating systems in the same partition. Id. at 10: Madden provides a boot-time graphical user interface for management of these resources. Id. at Abstract. Thus, Madden also teaches a graphic user interface for displaying means for allocating a computer device s resources to multiple operating system environments, as recited in Claim 1. 40

44 b. partitioned on individual virtual cabinets, on said computer device To the extent the preamble is deemed limiting, Ruff teaches this portion of the preamble. The recited virtual cabinets are construed to mean a virtual storage device, capable of containing, typically through the use of virtual table of content pointers, all (or partitions of) shared (or non-shared) operating systems, application software (both OS dependent and No-OS embedded), databases and memory. The partitions taught by Ruff, such as those shown and indicated by their drive letter number in Figure 6, e.g., C:, are virtual cabinets within this scope of this construction. Ruff Figure 6 ʼ400 Patent Figure 1 First, these Ruff partitions are virtual storage devices that are capable of containing all or portions of operating systems, application software, databases and memory the Ruff partitions can be located on one or more disks attached to one or more disk drives, can possess a specified file system type (e.g., FAT), and can 41

45 be an extended partition or a logical partition. Id. at Abstract, 3:4 35, 5:55 59, 8:5 17. Second, the Ruff partitions can also contain all necessary user and system data which includes without limitation the contents of files created by the user such as textual documents and spreadsheets, the contents of files required to run applications such as word processors, and system data such as directory information. Id. at 4: A POSA would understand this disclosure in Ruff to implicitly include application software, databases, and memory. EX1002 (Román Declaration), at 121. Further, the Ruff partitions may also contain operating systems, such as the OS/2 operating system, depending on the size and location of the partition in the secondary storage drives. See id. at 13:11 14, 13: Thus, Ruff teaches a system which is partitioned on individual virtual cabinets, on said computer device, as recited in Claim said graphic user interface comprising: a main menu bar The GUI of Ruff includes a main menu bar as shown in, e.g., Figure 6, the vertical Help & Exit Menu Bar, showing the menu buttons HELP and EXIT : 42

46 Ruff Figure 6 ʼ400 Patent Figure 1 As shown, Ruff, like the 400 patent, teaches, a HELP button, and explicitly teaches an EXIT button, much like the 400 patent s File button, another toplevel command. Under the BRI, a POSA would consider the vertical menu of Ruff to disclose a main menu bar, at least because it contains the same or similar toplevel menu options (e.g., help and exit ) typically found under file headers, operates for the same purpose, and contains top-level or application-wide functionality for the software, such as exiting and seeking help for the entire application. EX1002 (Román Declaration) at 76 77, 119. To the extent Patent Owner argues that the vertical Help & Exit Menu Bar does not meet the recited main menu bar, it would have been an obvious modification to the vertical Help & Exit Menu Bar to include additional menu options in an elongate main menu bar. Id. With the finite number of design choices available to a GUI designer as discussed above in III.B and the well- 43

47 known relationship between menu items and buttons, including as demonstrated in Madden and reiterated below, this obvious design choice would have been well within the ability of a POSA at the time of the ʼ400 Patent invention. Id. at 59 60; see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ( If a person of ordinary skill can implement a predictable variation, 103 likely bars its patentability. ). Further, as noted above, prior art references like Madden specifically teach tabs, pull-down menus, and other design choices such as style, size, and type of menu are generally equivalent to one of ordinary skill in the art: Tabs, dialogs, property pages, pop-up menus, pull-down menus, scroll bars, radio buttons, push buttons, check boxes, and other graphical user interface components can be implemented with bitmaps 130 in a manner similar to the implementation of the menu 604 discussed elsewhere herein. Those of skill in the art will readily understand the equivalence [...] of these and other GUI components. EX1004 (Madden) at 19:6 17. Thus, it would have been obvious to one of ordinary skill in the art to modify or configure a main menu bar in various locations and configurations, for obvious aesthetic and functional GUI design choices. EX1002 (Román Declaration) at 76 77, 119. Ruff teaches, or at least renders obvious alone or in light of Madden, a graphic user interface comprising: a main menu bar, as recited in Claim 1. 44

48 3. a cabinet selection button bar The GUI of Ruff discloses the recited cabinet selection button bar, wherein the term cabinet selection button bar is construed to mean a collection of userselectable graphical items, each graphical item representing a virtual cabinet. In Ruff, the partition graph 120 as shown in Figure 6 contains a graphically illustrated collection of user-selectable partitions. In turn, each of these Ruff partitions represents a virtual cabinet, as discussed supra in VI.D.2. Ruff Figure 6 ʼ400 Patent Figure 1 Partition graph 120 of Ruff provides information regarding the partitions presently defined by the partition table, including the names, relative positions, and file system types of the partitions. Id. at 9: Finally, the partitions in partition graph 120 of Ruff are user-selectable. For example, in Figure 6, Partition C: is the current selected partition and thus information about that selected partition is indicated in partition list 130 preferably by highlight[ing] or 45

49 otherwise alter[ing the details] in appearance. Id. at 10:8 14. A user can interact with the GUI including selecting the partitions in partition graph 120 by, for example, a mouse, a keyboard, or other familiar input devices as are familiar to those of skill in the art. Id. at 10: The selectability of the partitions in the partition graph 120 is confirmed by the fact that a user of the Ruff GUI can also manipulate the selected partition by moving the edges of the displayed and selected partition in partition graph 120. left edge right edge Id. at Fig. 6; id. at 13: A POSA reading Ruff would conclude that the virtual cabinets displayed in partition graph 120 are user-selectable graphical items. EX1002 (Román Declaration) at 118. Thus, Ruff teaches the cabinet selection button bar, as recited in Claim said cabinet selection button bar graphically representing at least one virtual cabinet Ruff teaches this limitation by disclosing the partition graph 120 of Figure 6 and accompanying explanation. First, as discussed above in VII.D.2, supra, Ruff partitions are virtual cabinets as claimed in the 400 Patent. Second, Ruff s partition graph 120, as seen in Figure 6, represents the virtual cabinets by 46

50 illustrating them as boxes with names and provid[ing] information regarding the partitions presently defined by the partition table. Id. at 9: Id. at Fig. 6. Ruff also teaches that other [c]olors or graphical patterns may be used in the partition graph 120 to denote the partitions, as well as a legend 126 that matches colors to file system types or to partition characteristics. Id. at 9:66 10:4. Thus, Ruff teaches a cabinet selection button bar graphically representing at least one virtual cabinet, as recited in Claim each said at least one virtual cabinet representing a discrete operating system The combination of Ruff and Madden teaches each said at least one virtual cabinet representing a discrete operating system. As discussed above, Ruff teaches representing virtual cabinets in a GUI by the partition graph 120 of Figure 6 and accompanying explanation. Id. at Fig. 6. Ruff also teaches that other [c]olors or graphical patterns may be used in partition graph 120 to denote the partitions, as well as a legend 126 that matches colors to file system types or to partition characteristics. Id. at 9:66 10:4. 47

51 Madden expands on the teachings of Ruff by teaching a GUI with separate menu items, or directories, that each represent a discrete operating system. See EX1004 (Madden), at 8: The GUI of Madden shows these directories as items on the menu 604 in Figure 6, indicated by the operating system that they represent. See id. at 8:50 59, Fig. 6. The applicable operating systems shown are Windows NT 4.0, Windows 95 and IBM-DOS, each of which is a discrete operating system, as claimed. A POSA would have been motivated to combine the GUI of Ruff with the representation of discrete operating systems of Madden for many reasons, such as 48

52 (1) maintaining and managing multiple operating systems on a single computer more easily, more quickly, and more clearly with less error; (2) assisting in maintaining separate operating systems and program files from user files; and (3) helping to easily and quickly isolate or protect files related to distinct operating systems in the case of corrupted file or operating systems. EX1002 (Román Declaration) at And one of skill in the art would have been able to do so, given that Ruff and Madden have the same underlying structure and functionality as it relates to operating systems. Id. at 130. To wit, Ruff teaches manipulating partitions via a GUI. See, e.g., VII.A, supra; EX1002 (Román Declaration) at 125. While Ruff prepares partitions for a particular type of file system (e.g., FAT or HPFS), Madden expands on partitions as they relate to operating systems and booting, providing a GUI for configuring and preparing different boot partitions. Id. at Therefore, Madden, which was filed more than three years after Ruff, represents a natural development of the teachings of Ruff to allow not only for partition and virtual cabinet selection, but also for discrete operating system selection through a GUI menu. Id. at 128. As discussed in more detail in VII.C, supra, a POSA would have been motivated to combine Ruff and Madden and would have arrived at the claimed GUI, particularly this limitation. Thus, Madden in combination with Ruff teaches at 49

53 least one virtual cabinet representing a discrete operating system, as recited in Claim a secondary storage partitions window The GUI of Ruff includes a secondary storage partitions window, wherein the term secondary storage partitions window is construed to mean a window that depicts secondary storage devices and that is configurable to depict their partitions. Figure 6, shown below, depicts the drive group box 118 and partition graph 120. These two elements depict secondary storage devices (i.e., drive group box 118 representing secondary physical drives) and their partitions (i.e., in partition graph 120). 50

54 EX1003 (Ruff), at Fig. 6. Drive group box 118 provides the user with information regarding physical disk drives attached to the computer, including the drive names. Id. at 9: Partition graph 120 provides information regarding the partitions presently defined by the partition table, including the names, relative positions, and file system types of the partitions. Id. at 9: This partition graph 120 is configurable to depict the partitions via the selection of the drive or drives for which partition information is presently being displayed. Id. at 9: Therefore, Ruff teaches a secondary storage partitions window, as recited in Claim a cabinet visible partition window The GUI of Ruff includes a cabinet visible partition window, where cabinet visible partition window is construed to mean a window that depicts one or more virtual cabinets and that is configurable to depict their files and partitions. First, Ruff partitions are virtual cabinets as claimed by the 400 Patent. See VII.D.2, supra. Second, in Figure 6 below, the GUI element which contains partition list 130 depicts the details of a Ruff partition (i.e., of a virtual cabinet). 51

55 Ruff Figure 6 ʼ400 Patent Figure 1 Partition list 130 provides additional information about the partitions via details 132 regarding the currently selected partition (which in Figure 6 is Partition C: ), where the selected partition is preferably highlighted or otherwise altered in appearance. Id. at 10: As shown in Figure 6, partition list 130 incorporates details 132 including the files in Partition C:. Thus, Ruff teaches a cabinet visible partition window, as recited in Claim said secondary storage partitions window graphically illustrating at least one partition of at least one secondary storage device The GUI of Ruff includes the secondary storage partitions window graphically illustrating at least one partition of at least one secondary storage device. In Ruff, the partition graph 120, depicted in Figure 6 below, meets this limitation. 52

56 Id. at Fig. 6. Specifically, the partition graph 120 provides information regarding the partitions presently defined by the partition table, including the names, relative positions, and file system types of the partitions. Id. at 9: These Ruff partitions are contained within the drive or drives currently selected, from drive box 118. Id. at 9: This partition graph imparts several different categories of visual information: the left end corresponds to the disk sector at the lowest physical address... while the right end corresponds to the disk sector at the highest physical address. Id. at 9: In addition, colors or patterns from legend 126 are used to graphically indicate properties of a partition, such as file system types and free space. Id. at 9:67 10:2. Finally, partitions 53

57 E: and F: in the figure above are enclosed by a box 128 to indicate that they are logical partitions ; partition C: is a primary partition and hence has no enclosing box. Id. at 10:4 7. Thus, Ruff teaches a secondary storage partitions window graphically illustrating at least one partition of at least one secondary storage device, as recited in Claim said cabinet visible partition window graphically illustrating a cabinet record corresponding to a selected virtual cabinet on said cabinet selection button bar The GUI of Ruff includes the cabinet visible partition window graphically illustrating a cabinet record corresponding to a selected virtual cabinet on said cabinet selection button bar. In Ruff, partition list 130 provides additional information about the partitions by details 132 regarding the currently selected partition (which in Figure 6 is Partition C: ), where the selected partition is preferably highlighted or otherwise altered in appearance. Id. at 10: As shown in Figure 6, partition list 130 illustrates the contents of Partition C:, which is the selected partition in that Figure: 54

58 Id. at Fig. 6. Thus, Ruff teaches a cabinet visible partition window graphically illustrating a cabinet record corresponding to a selected virtual cabinet on said cabinet selection button bar, as recited in Claim each said at least one cabinet visible partition window representing an operating system plus application software, databases and memory configured with said selected virtual cabinet The GUI of Ruff includes the recited each said at least one cabinet visible partition window representing an operating system plus application software, databases and memory configured with said selected virtual cabinet. The Ruff partitions such as those shown and indicated by their drive letter number in Figure 55

59 6, e.g., C: can contain all necessary user and system data, which includes without limitation the contents of files created by the user such as textual documents and spreadsheets, the contents of files required to run applications such as word processors, and system data such as directory information. Id. at 4: A POSA would read this teaching in Ruff and understand that it implicitly includes application software, databases and memory. EX1002 (Román Declaration), at 121. The Ruff partitions may also contain operating systems, such as the OS/2 operating system, depending on the size and location of the partition in the secondary storage drives. See id. at 13:11 14, 13: Likewise, partition list 130 provides additional information about the partitions by details 132 regarding the currently selected partition (which in Figure 6 is Partition C: ). Id. at 10: These details include the contents of the Ruff partition, such as the contents of Partition C:. Id. at Figure 6. Further, as noted above, prior art references like Madden teach organizing multiple operating systems in partitions and including the [n]ecessary parts of the selected operating system as well as [a]ccessory files associated with the operating system to allow the selected operating system to function properly. EX1004 (Madden), at 4:4 15; see also id. at 3:40 45, 5: When one of those operating systems is selected for booting, Madden copies the operating system code and other files needed to run the selected operating system to a directory 56

60 from which the operating system boots. Id. at 8: Thus, it would have been obvious to one of ordinary skill in the art to modify or configure Ruff and its partitions with such an operating system/application software/database/memory configuration as is taught in Madden. EX1002 (Román Declaration) at 130. Therefore, because the partitions of Ruff are virtual cabinets (per VII.D.2, supra), and can contain operating systems, application software, databases, and memory configured in the Ruff partitions, and because partitions list 130 illustrates the contents of a selected Ruff partition, partitions list 130 can therefore represent an operating system plus application software, databases and memory configured with said selected virtual cabinet. Thus, Ruff teaches, or at least renders obvious in light of Madden, at least one cabinet visible partition window representing an operating system plus application software, databases and memory configured with said selected virtual cabinet, as recited in Claim 1. E. Claim 2 is Obvious over Ruff in View of Madden 1. means for manipulating said selected virtual cabinet record through said cabinet visible partition window Claim 2 depends from Claim 1. Ruff also teaches the additional limitation recited in Claim 2. First, Figure 6 of Ruff provides an options box 134 separate from the partition list 130, discussed in VI.D.8, supra. Second, as discussed in VI.D.1, Ruff partitions are virtual cabinets as defined by the 400 Patent. Third, the options box 134 contains a number of options for manipulating said selected 57

61 virtual cabinet record. EX1003 (Ruff) at 10:15 26 (describing the various operations of options box 134). Ruff Figure 6 ʼ400 Patent Figure 1 Fourth, a POSA in GUI design and programming would only have had a finite set of choices of design elements, as explained by Mr. Román. EX1002 (Román Declaration) at Therefore, it would have been an obvious modification to move the options widget to make it coextensive with the cabinet visible partition window. Thus, Ruff teaches a means for manipulating said selected virtual cabinet record through said cabinet visible partition window, as recited in Claim 2. F. Claim 3 is Obvious over Ruff in View of Madden Claim 3 depends from Claim 2. As set forth below, Ruff also teaches the additional limitations in Claim 3. 58

62 1. a main toolbar The GUI of Ruff includes a main toolbar by the option box 134 or, as shown in Figure 6, the menu options of CHECK, INFO, MOVE, RESIZE, and CONVERT (highlighted in purple): Ruff Figure 6 ʼ400 Patent Figure 1 These options buttons in the option box 134 allow for a number of different functions that relate to the partitions that a user can manipulate with the Ruff GUI: checking or verifying the integrity and internal consistency of a partition s file system structures; displaying information about a partition such as its location, size, and associated file-system-specific details; moving a partition to a different location on a disk that presently holds the partition or to another disk; resizing a partition to include either a lesser or greater number of disk sectors within the partition; and converting a partition from one file system to another file system. Id. at 10: Therefore, Ruff teaches a main toolbar, as recited in Claim 3. 59

63 2. a cabinet properties window The GUI of Ruff includes a cabinet properties window by the legend 126 as shown in Figure 6 below (highlighted in dark blue). Id. at Fig. 6. As discussed above in VI.A and VI.D.4, this legend 126 indicates properties and characteristics of the virtual cabinets by the corresponding color or pattern indicated on the Ruff partitions (which are virtual cabinets as defined by the 400 Patent) listed in partition graph 120. Id. at 9:66 10:4. Therefore, Ruff teaches a cabinet properties window, as recited in Claim 3. 60