Case 8:19-cv-02192-GW-AS Document 53 Filed 09/03/20 Page 1 of 30 Page ID #:981
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`
`
`
`John P. Schnurer, Bar No. 185725
`JSchnurer@perkinscoie.com
`Yun (Louise) Lu, Bar No. 253114
`LLu@perkinscoie.com
`Kyle R. Canavera Bar No. 314664
`KCanavera@perkinscoie.com
`PERKINS COIE LLP
`11452 El Camino Real, Suite 300
`San Diego, CA 92130-2080
`Telephone: 858.720.5700
`Facsimile: 858.720.5799
`
`Attorneys for Defendants
`TCT Mobile (US) Inc., Huizhou TCL Mobile
`Communication Co., Ltd., and Shenzhen TCL
`Creative Cloud Technology Co., Ltd.
`
`
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`ANCORA TECHNOLOGIES, INC.,
`
`Plaintiff,
`
`v.
`
`TCT MOBILE (US) INC., HUIZHOU
`TCL MOBILE COMMUNICATION
`CO. LTD., and SHENZHEN TCL
`CREATIVE CLOUD TECHNOLOGY
`CO., LTD.,
`
`
`
`Defendants.
`
`
`
`Case No. 8:19-CV-02192-GW-ASx
`(LEAD CASE)
`
`Case No. 2:20-cv-01252-GW-ASx
`(CONSOLIDATED CASE)
`
`Judge: Hon. George H. Wu
`Judge: Hon. Alka Sagar
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`TCL’S OPENING CLAIM
`CONSTRUCTION BRIEF
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`TCL’S OPENING CLAIM
`CONSTRUCTION BRIEF
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`Case No. 8:19-CV-02192-GW-ASx
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`Case 8:19-cv-02192-GW-AS Document 53 Filed 09/03/20 Page 2 of 30 Page ID #:982
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`
`I.
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`II.
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ........................................................................................... 1
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`BACKGROUND ............................................................................................. 2
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`A.
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`B.
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`C.
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`The ’941 Patent ..................................................................................... 2
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`Prosecution History and Post-Issuance Proceedings ............................ 5
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`Ancora’s Infringement Allegations Against TCL ................................ 7
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`III. LEGAL STANDARDS ................................................................................... 9
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`IV. CLAIM TERMS IN DISPUTE ....................................................................... 9
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`A.
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`“Memory of the BIOS” ......................................................................... 9
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`1.
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`2.
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`Applicant’s Disclaimer During Prosecution ............................. 10
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`TCL’s Construction Accurately Reflects the Disclaimer. ........ 13
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`“Set Up a Verification Structure” ....................................................... 14
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`“License Record” ................................................................................ 18
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`“Selecting a Program Residing in the Volatile Memory” .................. 20
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`“Volatile Memory” ............................................................................. 21
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`“First Non-Volatile Memory Area of the Computer” ......................... 23
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`Claim 8 Language ............................................................................... 24
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`B.
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`C.
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`D.
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`E.
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`F.
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`G.
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`V.
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`CONCLUSION ............................................................................................. 25
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`TCL’S OPENING CLAIM
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`Case 8:19-cv-02192-GW-AS Document 53 Filed 09/03/20 Page 3 of 30 Page ID #:983
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`
`TABLE OF AUTHORITIES
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`Page
`
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`CASES
`
`Am. Piledriving Equip., Inc. v. Geoquip, Inc.,
`637 F.3d 1324 (Fed. Cir. 2011) ............................................................... 14, 18, 19
`
`Ancora Technologies, Inc. v. HTC America, Inc.,
`908 F.3d 1343 (Fed. Cir. 2018) ......................................................................... 6, 8
`
`Ancora Techs., Inc. v. Apple, Inc.,
`744 F.3d 732 (Fed. Cir. 2014) ............................................................................. 22
`
`Aquastar Pool Prods., Inc. v. Color Match Pool Fittings, Inc.,
`EDCV 5:18-CV-00094-GW (SPx), Dkt. 83, slip. op. at 4-6 (C.D.
`Cal. Nov. 21, 2018) ................................................................................................ 9
`
`Aylus Networks, Inc. v. Apple Inc.,
`856 F.3d 1353 (Fed. Cir. 2017) ............................................................... 10, 13, 14
`
`HTC Corp. v. Ancora Techs., Inc.,
`No. CBM2017-00054, 2017 WL 6032605 (PTAB Dec. 1, 2017) ........................ 6
`
`SiRF Technologies, Inc. v. International Trade Commission,
`601 F.3d 1319 (Fed. Cir. 2010) ............................................................................. 7
`
`Tech. Props. Ltd. LLC v. Huawei Techs. Co., Ltd.,
`849 F.3d 1349 (Fed. Cir. 2017) ........................................................................... 10
`
`Techtronic Indus. Co. Ltd. v. Int’l Trade Comm’n,
`944 F.3d 901 (Fed. Cir. 2019) ....................................................................... 15, 17
`
`STATUTES
`
`35 U.S.C. § 271(a) ...................................................................................................... 7
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`35 U.S.C. § 271(b) ...................................................................................................... 7
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`TCL’S OPENING CLAIM
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`Case 8:19-cv-02192-GW-AS Document 53 Filed 09/03/20 Page 4 of 30 Page ID #:984
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`I.
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`INTRODUCTION
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`Plaintiff (“Ancora”) has asserted claims 1–3, 6–14, and 16 of U.S. Patent No.
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`6,411,941 against Defendants (“TCL”). The ’941 Patent discloses and claims a
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`method for verifying that a program is operating within a license when it operates
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`on a specific computer. The purported invention provides assurance to a software
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`distributor that only licensed users/computers are running the software, i.e., that the
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`software is not being pirated.
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`Ancora asserts the claims against a “verified boot” procedure used in the
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`Android operating system on the accused TCL smartphones. But verified boot does
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`not perform the disclosed and claimed functionality. Rather, verified boot is a
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`safety check. Unlike the ’941 patent, where the claimed invention is directed to
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`checking whether a specific computer or user is licensed to run a program, verified
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`boot provides assurance to the user of the smartphone that the software is the same
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`as was provided by the software distributor, i.e., the software is not damaged or
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`malicious.
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`There are seven disputed claim terms. Four of the disputed terms deal with
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`attempts by Ancora to read the terms to fit the infringement read, but in ways that
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`are fundamentally incompatible with the claim language, the specification, the
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`prosecution history, and the extensive post-issuance litigation of the ’941 Patent.
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`See infra §§ IV.A–D. One of the disputed terms deals with an overly broad and
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`needlessly confusing construction by Ancora. See infra § IV.E. Two of the
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`disputed terms deal with language that will be confusing to the jury, and which
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`should be resolved now through claim construction. See infra §§ IV.F–G.
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`For the reasons that follow, TCL requests that the Court adopt its
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`constructions for the disputed terms.
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`Case 8:19-cv-02192-GW-AS Document 53 Filed 09/03/20 Page 5 of 30 Page ID #:985
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`II. BACKGROUND
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`A. The ’941 Patent
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`The ’941 Patent claims priority to May 21, 1998 and describes a “Method of
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`Restricting Software Operation within a License Limitation.” ’941 Patent, Cover
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`Page.
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`The ’941 Patent motivates its disclosure by noting the “grand proliferation of
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`illegally copied software, which is engulfing the marketplace” and causing “billions
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`of dollars in lost profits to commercial software developers.” Id. at 1:14–18.
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`Because of that illegal copying problem, prior art techniques were devised for “the
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`identifying and restricting of an unauthorized software program’s operation.” Id. at
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`1:12–14. But none of those prior art techniques were apparently adequate, so the
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`’941 Patent disclosed that “[t]he present invention relates to a method of restricting
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`software operation within a license limitation.” Id. at 1:38–40. “This method
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`strongly relies on the use of a key and of a record, which have been written into the
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`non-volatile memory of a computer.” Id. at 1:40–43.
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`Against that backdrop, the ’941 Patent depicts the invention with respect to
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`Figure 1, shown below. A computer processor (1) includes a first non-volatile
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`memory area (4) (in red), a second non-volatile memory area (5) (in blue), and a
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`volatile memory area (6) (in green). Id. at 5:9–16. The first non-volatile memory
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`(4) can be “e.g., the ROM section of the BIOS” and stores a key (8). Id. at 5:13–14,
`5:19–24. The second non-volatile memory (5) can be “e.g., the E2PROM section of
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`the BIOS” and stores license records (10), (11), (12). Id. at 5:14–15, 5:25–27. The
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`volatile memory (6) can be “e.g. the internal RAM memory of the computer” and
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`stores a license program (16). Id. at 5:15–16, 5:27–29.
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`Case 8:19-cv-02192-GW-AS Document 53 Filed 09/03/20 Page 6 of 30 Page ID #:986
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`’941 Patent, Fig. 1 (color annotations added).
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`In order to provide a “better understanding of the underlying concept of the
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`invention,” the ’941 Patent makes the following observations.
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`The first non-volatile memory can be a “ROM section” of a “conventional
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`BIOS module,” and the key can be embedded therein “during manufacture.” Id. at
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`1:45–52. ROM, or “read-only memory,” is a memory module that is written with
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`data once, and then cannot be rewritten. That is, it permanently stores some data.
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`ROM, like other non-volatile memory, maintains the data stored thereon even when
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`the power supply is lost. “It is important to note that the key . . . cannot be removed
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`or modified.” Id. at 1:50–52.
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`The volatile memory can be “RAM memory,” and stores a license program.
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`Id. at 5:15–16, 5:27–29. The license program can be an “application program that
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`is to be licensed to run on the specified computer.” Id. at 1:53–54. The license
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`program is “associated with a license record.” Id. at 1:53–55. RAM, or “random-
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`access memory,” is typically used to stored working data and running programs in a
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`TCL’S OPENING CLAIM
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`Case 8:19-cv-02192-GW-AS Document 53 Filed 09/03/20 Page 7 of 30 Page ID #:987
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`computer. RAM, like other volatile memory, loses data stored thereon when the
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`power supply is lost.
`The second non-volatile memory can be “E2PROM” and stores an “encrypted
`license record” that is encrypted using the key. Id. at 1:59–67. E2PROM, or
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`“electrically erasable programmable read-only memory,” is a type of memory that
`can have its data written and rewritten multiple times. E2PROM, like other non-
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`volatile memory, maintains the data stored thereon even when the power supply is
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`lost. “It should be noted that unlike the first non-volatile section, the data in the
`second non-volatile memory may optionally be erased or modified (using E2PROM
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`manipulation commands), so as to enable to add, modify or remove licenses.” Id. at
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`2:1–5.
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`The ’941 Patent disclosed a method of using the aforementioned structures in
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`order to achieve the aim of reducing illegal software copying. That method,
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`described with respect to Figure 2 contains four steps. First, at step (17), the
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`program to be verified is selected from volatile memory. Id. at 2:62–3:3, 6:7–16.
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`Second, at step (18), a “verification structure” is set up in the non-volatile memory.
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`Id. at 2:62–3:3, 6:18–27. Third, at step (19), the selected program is verified using
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`the verification structure. Id. at 2:62–3:3, 6:28–39. Fourth, at step (20), the
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`selected program is acted on based on the result of the verification. Id. at 2:62–3:3,
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`6:40–53.
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`The ’941 Patent observes the following supposed benefits of the above-
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`described arrangement.
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`First, because the license record stored in the second non-volatile memory is
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`encrypted using a key unique to the computer, that encrypted license record is not
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`effective on a second computer, which would have a different unique key. Id. at
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`2:27–59. Thus, “any attempt to run a program at an unlicensed site will be
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`immediately detected.” Id. at 2:27–30. That is, the license record cannot be used to
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`run an illegal copy of the software on the second, unlicensed computer.
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`TCL’S OPENING CLAIM
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`Case 8:19-cv-02192-GW-AS Document 53 Filed 09/03/20 Page 8 of 30 Page ID #:988
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`Second, because the license record is stored in BIOS memory, it is more
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`difficult for a malicious actor to tamper with the license record data. Id. at 3:4–17.
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`Namely, because BIOS was typically stored in specialized memory modules like
`E2PROM, “the required level of system programming expertise that is necessary to
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`intercept or modify commands, interacting with the BIOS, is substantially higher
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`than those needed for tampering with data residing in volatile memory such as hard
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`disk.” Id. at 3:4–9. Also, the risk involved in tampering with data stored in BIOS
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`memory was higher. Id. at 3:13–17. If the hacker inadvertently changed the BIOS
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`data itself, then the computer could be rendered inoperable. Id. “This is too high of
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`a risk for the ordinary software hacker to pay.” Id.
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`B.
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`Prosecution History and Post-Issuance Proceedings
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`Claim 1 as originally filed covered setting up a verification structure in two
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`non-volatile memories, and verifying a program in volatile memory based thereon.
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`(Ex. 1 at 1.) During prosecution, the Applicant amended the claims to recite, as in
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`its ultimately issued form, that the verification structure was stored “in the erasable,
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`non-volatile memory of the BIOS.” (Ex. 2 at 10.) The Applicant later argued that
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`this storing of the license record in the memory of the BIOS was what distinguished
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`claim 1 over the prior art of record. (Ex. 4 at 3–7.) The Applicant alleged that this
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`storage in the memory of the BIOS was unknown in the prior art both because
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`“[t]here is no OS support whatsoever to write data to the system BIOS,” and
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`because “no file system is associated with the BIOS.” (Id. at 6.)
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`The Examiner allowed the claims based on this distinction. The prior art of
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`record disclosed, for instance, a licensing software that stored licenses in a device’s
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`ordinary “persistent non-volatile storage,” (Ex. 5 at 3 (citing U.S. Pat. No.
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`6,189,146 at 12:8–31)), and “the use of BIOS memory for storing licensing
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`numbers,” (id. at 4 (citing U.S. Pat. No. 5,479,639)). But, according to the
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`Examiner, the prior art failed to show “licensed programs running at the OS level
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`interacting with a program verification structure stored in the BIOS . . . [.]” (Id. at
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`4.) “Further, it is well known to those of ordinary skill of the art that a computer
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`BIOS is not setup to manage a software license verification structure.” (Id.)
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`According to the Examiner, the ’941 Patent solved that problem by using the
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`“agent” to set up the verification structure in the memory of the BIOS. (Id.)
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`This feature was cemented as the supposed invention in two post-issuance
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`proceedings.
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`First, the ’941 Patent was subject to a covered business method review. The
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`Board denied institution, finding that the ’941 Patent was not a covered business
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`method patent because it disclosed a technical solution in the form of storing the
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`license record in the memory of the BIOS. HTC Corp. v. Ancora Techs., Inc., No.
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`CBM2017-00054, 2017 WL 6032605, at *3–*5 (PTAB Dec. 1, 2017).
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`Second, the ’941 Patent was subject an appeal to the Federal Circuit in
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`Ancora Technologies, Inc. v. HTC America, Inc., 908 F.3d 1343 (Fed. Cir. 2018).
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`Reviewing a district court ruling on the pleadings that the claims of the ’941 Patent
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`were patent ineligible, the Federal Circuit reversed. The court found that, at step 1
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`of the Alice analysis, claim 1 was not directed to an abstract idea. Id. at 1348–49.
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`The court found that claim 1 was directed to an improvement to computer security
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`with its alleged improvement of “a structure containing a license record is stored in
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`a particular, modifiable, non-volatile portion of the computer’s BIOS, and the
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`structure in that memory location is used for verification by interacting with the
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`distinct computer memory that contains the program to be verified.” Id. On the
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`pleadings, the court did not find any reason to dispute the ’941 Patent’s assertion
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`that this storage in BIOS memory resulted in a “beneficial reduction of the risk of
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`hacking.” Id. at 1349.
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`Two other district courts have issued orders construing the claims of the ’941
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`Patent. (Exs. 10–12.)
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`Case 8:19-cv-02192-GW-AS Document 53 Filed 09/03/20 Page 10 of 30 Page ID #:990
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`C. Ancora’s Infringement Allegations Against TCL
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`Ancora’s infringement allegations against TCL string together two aspects of
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`the Android operating system running on TCL smartphones: (1) over-the-air
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`(“OTA”) updates; and (2) verified boot. An OTA update is a software package that
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`a TCL smartphone downloads and installs. (Ex. 6.) Verified boot is a process by
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`which the TCL smartphone uses cryptographic checks to ensure the safety of
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`software, i.e., that it is not malicious or corrupted. (Ex. 7.)
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`The OTA update functionality is mostly irrelevant to the ’941 Patent’s
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`claims. The TCL smartphone functionality that Ancora maps to the claim features
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`is primarily the verified boot functionality. But Ancora accuses the TCL
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`smartphones’ use of OTA updates for a simple reason: TCL does not itself perform
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`the verified boot functionality. The TCL smartphones have long since left the
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`control of TCL when the TCL smartphones perform a verified boot. Thus, TCL
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`does not directly infringe the claims, all of which are method claims. But TCL also
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`cannot be liable for indirect infringement, because Ancora brought suit, and TCL
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`gained knowledge of the ’941 Patent, after the patent had already expired. Hence,
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`the requisite scienter is impossible for an induced infringement claim.
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`Ancora thus accuses the OTA update functionality because, according to
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`Ancora, the interaction of the TCL servers with the TCL smartphones for an OTA
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`update somehow invokes the narrow legal precedent in SiRF Technologies, Inc. v.
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`International Trade Commission, 601 F.3d 1319 (Fed. Cir. 2010). Other than that
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`attempt at reading an infringement theory in between the lines of 35 U.S.C.
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`§ 271(a) and § 271(b), the OTA update functionality is mostly irrelevant to the ’941
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`Patent’s claims.
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`As for the accused verified boot functionality, Ancora’s allegations go far
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`afield of the ’941 Patent’s disclosure and the reasonable scope of its claims.
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`For the “erasable, non-volatile memory of the BIOS” where a license record
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`is stored—the feature emphasized repeatedly as being the inventive feature of claim
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`TCL’S OPENING CLAIM
`CONSTRUCTION BRIEF
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`Case 8:19-cv-02192-GW-AS Document 53 Filed 09/03/20 Page 11 of 30 Page ID #:991
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`1—Ancora points to the equivalent of the “hard disk” in the TCL smartphones, the
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`very thing that the ’941 Patent contrasts with the “erasable, non-volatile memory of
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`the BIOS.” For example, for the accused BlackBerry KEY2 smartphone, Ancora
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`alleges that the 32 GB or 64 GB Flash memory is the “erasable, non-volatile
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`memory of the BIOS.” As best can be understood, the software that Ancora alleges
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`is the “BIOS” is a software package that is stored in the same primary storage
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`device, the Flash memory, where the operating system and user data are stored.
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`In other words, the alleged “erasable, non-volatile memory of the BIOS” in
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`the TCL smartphones has none of the characteristics previously relied on for
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`distinguishing the memory from other storage devices. It is not true that “the
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`required level of system programming expertise” needed to tamper with the Flash
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`memory is “substantially higher than those needed for tampering with data residing
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`in volatile memory such as hard disk.” ’941 Patent at 3:4–9. It is the exact same
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`level of expertise, because it is the exact same memory. It is not true that the TCL
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`smartphones “rely[ ] on specific and unique characteristics of certain aspects of the
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`BIOS,” Ancora v. HTC, 908 F.3d at 1349, because the BIOS is stored in the same
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`memory as all of the other system resources. The memory in the TCL smartphones
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`that Ancora points to as the “erasable, non-volatile memory of the BIOS” is the
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`modern equivalent of the hard disk, the very thing that the ’941 Patent distinguished
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`the BIOS memory from throughout its disclosure, and not the BIOS memory itself.
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`For other disputed terms, Ancora similarly stretches their meaning beyond
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`that reasonably afforded by the claim language and the intrinsic record.
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`For example, for the “set up a verification structure” term, Ancora accuses an
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`encryption process that uses a key that is not unique to a specific TCL smartphone.
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`As best can be understood, the encryption key that Ancora accuses is a key that is
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`shared by all TCL smartphones of the same model. That is the exact opposite of
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`the way the encryption works in the ’941 Patent. ’941 Patent, 4:12–18.
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`TCL’S OPENING CLAIM
`CONSTRUCTION BRIEF
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`Case 8:19-cv-02192-GW-AS Document 53 Filed 09/03/20 Page 12 of 30 Page ID #:992
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`For the “license record” term, Ancora points to an authentication hash value,
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`i.e., a hash value that verifies that a software package has not been altered from its
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`original form. This is a safety check to make sure the user is receiving software
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`that has not been maliciously altered or corrupted. Contrary to what has been
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`accused in the TCL smartphones, the license record disclosed and claimed in the
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`’941 Patent prevents illegal software copying by verifying that it is within the scope
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`of a license for the software to run on a particular device.
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`For the “selecting a program residing in the volatile memory” term, the OTA
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`update is “verified” (as alleged by Ancora) before it is loaded into volatile memory.
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`Ancora’s infringement allegations and claim construction leave these two steps in
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`the TCL smartphones untethered from one another, and makes the “selecting a
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`program” step essentially meaningless.
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`As discussed further below, when the asserted claims are construed properly
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`in light of their plain language, the specification, and the prosecution history,
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`Ancora’s infringement allegations are seen for the great overreach that they are.
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`III. LEGAL STANDARDS
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`Given the Court’s experience with claim construction, TCL foregoes
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`recitation of general claim construction law. See, e.g., Aquastar Pool Prods., Inc. v.
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`Color Match Pool Fittings, Inc., EDCV 5:18-cv-00094-GW(SPx), Dkt. 83, slip. op.
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`at 4–6 (C.D. Cal. Nov. 21, 2018).
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`IV. CLAIM TERMS IN DISPUTE
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`Seven claim terms are in dispute, the first five of which relate to the only
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`asserted independent claim, claim 1.
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`A.
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`“Memory of the BIOS”
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`Claim
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`1
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`Ancora’s Construction
`plain and ordinary meaning
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`TCL’S OPENING CLAIM
`CONSTRUCTION BRIEF
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`TCL’s Construction
`a memory that: (i) stores the BIOS;
`(ii) is not recognized by an operating
`system as a storage device; and (iii)
`does not have a file system
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`Case 8:19-cv-02192-GW-AS Document 53 Filed 09/03/20 Page 13 of 30 Page ID #:993
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`TCL’s proposed construction is drawn directly from the arguments made by
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`the Applicant during prosecution, arguments that the Examiner relied on to allow
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`the claims. As such, those arguments should be treated as prosecution disclaimer,
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`and TCL’s construction should be adopted.
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`“An applicant’s statements to the PTO characterizing its invention may give
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`rise to prosecution disclaimer.” Tech. Props. Ltd. LLC v. Huawei Techs. Co., Ltd.,
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`849 F.3d 1349, 1357 (Fed. Cir. 2017) (citing Uship Intellectual Props., LLC v.
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`United States, 714 F.3d 1311, 1315 (Fed. Cir. 2013)). “Prosecution disclaimer can
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`arise from both claim amendments and arguments made to the PTO.” Tech. Props.,
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`849 F.3d at 1357 (citing Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090,
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`1095 (Fed. Cir. 2013)). The doctrine does not apply unless the disclaimer is ‘both
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`clear and unmistakable to one of ordinary skill in the art.’” Tech. Props., 849 F.3d
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`at 1357 (Fed. Cir. 2017) (quoting Elbex Video, Ltd. v. Sensormatic Elecs. Corp.,
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`508 F.3d 1366, 1371 (Fed. Cir. 2007)). “‘[W]hen the patentee unequivocally and
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`unambiguously disavows a certain meaning to obtain a patent, the doctrine of
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`prosecution history disclaimer narrows the meaning of the claim consistent with the
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`scope of the claim surrendered.’” Aylus Networks, Inc. v. Apple Inc., 856 F.3d
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`1353, 1359 (Fed. Cir. 2017) (quoting Biogen Idec, 713 F.3d at 1090)).
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`TCL’s proposed construction for this term reflects such a clear and
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`unmistakable disclaimer made by the applicant during prosecution.
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`1.
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`Applicant’s Disclaimer During Prosecution
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`Claim 1 as originally filed recited the following:
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`1. A method of restricting software operation within a license limitation
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`comprising; for a computer having a first non-volatile memory area, a second
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`non-volatile memory area, and a volatile memory area; the steps of:
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`selecting a program residing in the volatile memory,
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`setting up a verification structure in the non-volatile memories,
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`verifying the program using the structure, and
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`TCL’S OPENING CLAIM
`CONSTRUCTION BRIEF
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`Case 8:19-cv-02192-GW-AS Document 53 Filed 09/03/20 Page 14 of 30 Page ID #:994
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`acting on the program according to the verification.
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`’941 File Wrapper, Claims, dated Oct. 1, 1998, p. 1.
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`During prosecution, the applicant introduced the “memory of the BIOS”
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`feature through the following claim amendments (with underlining indicating added
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`language, and strikethrough indicating deleted language):
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`(Ex. 2 at 10.)
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`In the next action from the Patent Office, the Examiner rejected claim 1, as
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`amended, over the combination of prior art references referred to as “Misra” and
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`“Ewertz.” (Ex. 3 at 4–6.) The Examiner explained that Misra disclosed most of the
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`features of claim 1, including “using an agent to set up a verification structure in
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`computer memory where structure data includes a license record.” (Id. at 4.)
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`However, the Examiner admitted that Misra did not disclose “constructing license
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`records within a computer BIOS.” (Id. at 6.) The Examiner found that Ewetz
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`disclosed “expanding BIOS memory to store identification and/or configuration
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`data such as software licenses.” (Id.) Based on the teachings of Ewertz, the
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`Examiner found that “it would have been obvious to one of ordinary skill to use the
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`TCL’S OPENING CLAIM
`CONSTRUCTION BRIEF
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`Case 8:19-cv-02192-GW-AS Document 53 Filed 09/03/20 Page 15 of 30 Page ID #:995
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`BIOS to store licenses in the Misra et al. system as they teach of users storing
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`license data in persistent- non-volatile storage.” (Id.)
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`In order to overcome this rejection, the applicant did not further amend claim
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`1. (Ex. 4 at 9.) Rather, the applicant relied on two arguments to overcome the
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`rejection. First, the applicant argued that the Examiner misinterpreted Ewertz, and
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`the combination of Misra and Ewertz would not result in Misra’s license record
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`being stored in BIOS memory. (Id. at 3–5.) Second, the applicant argued that there
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`was no motivation to combine Misra and Ewertz. (Id. at 5–6.) In explaining why
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`there was no motivation to combine Misra and Ewertz, the applicant argued the
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`following:
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`Moreover, the present invention proceeds against conventional
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`wisdom in the art. Using BIOS to store application data such as that stored in
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`Misra’s local cache for licenses is not obvious. The BIOS area is not
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`considered a storage area for computer applications. An ordinary skilled
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`artisan would not consider the BIOS a storage medium to preserve
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`application data for at least two reasons.
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`First, OS does not support this functionality and is not recognized as a
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`hardware device like other peripherals. . . . There is no OS support
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`whatsoever to write data to the system BIOS. Therefore, an ordinary person
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`skilled in the art would not consider the BIOS as a possible storage medium.
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`Furthermore, it is common that all peripheral devices in the PC are listed and
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`recognized by the OS except for the BIOS. This supports the fact that the
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`BIOS is not considered a peripheral device. Accordingly, an ordinary person
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`skilled in the art would not consider the BIOS for any operation, including
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`writing to the BIOS.
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`Second, no file system is associated with the BIOS. Every writable
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`device connected to the PC is associated with an OS file system to arrange
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`and manage data structures. . . . No such file system is associated with the
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`
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`TCL’S OPENING CLAIM
`CONSTRUCTION BRIEF
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`-12-
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`Case No. 8:19-CV-02192-GW-ASx
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`Case 8:19-cv-02192-GW-AS Document 53 Filed 09/03/20 Page 16 of 30 Page ID #:996
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`BIOS. This is further evidence that OS level application programmers would
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`not consider the BIOS as a storage medium for license data.
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`(Id. at 6 (emphasis added).)
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`In the next action from the Patent Office, the Examiner allowed the claims.
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`(Ex. 5 at 3–4.) In explaining the reasons for allowance, the Examiner directly relied
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`on the two representations quoted above: “Further, it is well known to those of
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`ordinary skill of the art that a computer BIOS is not setup to manage a software
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`license verification structure.” (Id. at 4.)
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`2.
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`TCL’s Construction Accurately Reflects the Disclaimer.
`
`The above-quoted arguments made by the applicant are a textbook case of
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`prosecution disclaimer. The then pending (and now issued) claim 1 recited storing
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`a license record in the “erasable, non-volatile memory of the BIOS.” The applicant
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`described two characteristics of the BIOS memory that allegedly made the license
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`record there non-obvious over the prior art: (1) the operating system does not
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`recogni