Patent No. 6,411,941
`Petition For Covered Business Method Patent Review
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`Apple Inc.
`Petitioner
`
`v.
`
`Ancora Technologies Inc.
`Patent Owner
`
`Patent No. 6,411,941
`Issue Date: June 25, 2002
`Title: METHOD OF RESTRICTING SOFTWARE OPERATION WITHIN A
`LICENSE LIMITATION
`_______________
`
`Covered Business Method Review No. CBM2016-00023
`____________________________________________________________
`
`PETITION FOR COVERED BUSINESS METHOD REVIEW
`
`UNDER 35 U.S.C. § 321 AND § 18 OF THE LEAHY-SMITH AMERICA
`INVENTS ACT
`
`
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`TABLE OF CONTENTS
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`Page
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`2.
`
`INTRODUCTION .......................................................................................... 1
`I.
`OVERVIEW ................................................................................................... 1
`II.
`III. NOTICES AND STATEMENTS ................................................................... 1
`IV. SUMMARY OF THE ’941 PATENT ............................................................ 2
`A.
`Specification ......................................................................................... 2
`B.
`Prosecution History of the ’941 Patent ................................................ 4
`1.
`Original Application .................................................................. 4
`2. Microsoft’s Ex Parte Reexamination Request .......................... 6
`V. GROUNDS FOR STANDING ....................................................................... 7
`A.
`Petitioner Has Standing Under 37 C.F.R. § 42.302 ............................. 7
`B.
`The ’941 Patent Is Directed to a Covered Business Method ............... 7
`1.
`Claims of the ’941 Patent Are Financial in Nature .................... 7
`2.
`The ’941 Patent Does Not Include a Technological
`Invention .................................................................................. 10
`VI. PERSON OF ORDINARY SKILL IN THE ART ....................................... 19
`VII. CLAIM CONSTRUCTION ......................................................................... 19
`A.
`“License Record” ............................................................................... 20
`B.
`Indefinite Limitations ......................................................................... 21
`VIII. IDENTIFICATION OF CHALLENGE ....................................................... 22
`A. Ground 1: Claims 1-18 Are Indefinite Under 35 U.S.C. § 112, ¶
`2 .......................................................................................................... 24
`1.
`“An Agent To Set Up a Verification Structure . . . ”
`Renders Claims 1-19 Indefinite ............................................... 24
`Other Indefiniteness Issues with Respect to Dependent
`Claims 3, 5, 8, 16, and 17 ........................................................ 31
`Ground 2: Claims 1-19 Are Unpatentable Under 35 U.S.C. §
`112, ¶ 1 for Lack of Written Description ........................................... 35
`Ground 3: Hasebe in View of DMI Specification Renders
`Obvious Claims 1-3, 5-14, and 16-17 ................................................ 39
`1.
`Claim 1 ..................................................................................... 43
`2.
`Claim 2 ..................................................................................... 51
`3.
`Claim 3 ..................................................................................... 51
`4.
`Claim 5 ..................................................................................... 54
`5.
`Claim 6 ..................................................................................... 54
`6.
`Claim 7 ..................................................................................... 55
`7.
`Claim 8 ..................................................................................... 57
`
`B.
`
`C.
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`TABLE OF CONTENTS
`(continued)
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`Page
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`Claim 9 ..................................................................................... 58
`8.
`Claim 10 ................................................................................... 59
`9.
`10. Claim 11 ................................................................................... 59
`11. Claim 12 ................................................................................... 59
`12. Claim 13 ................................................................................... 60
`13. Claim 14 ................................................................................... 61
`14. Claim 16 ................................................................................... 62
`15. Claim 17 ................................................................................... 62
`D. Ground 4: Hasebe in View of the DMI Specification and Chang
`Renders Obvious Claims 1-3, 5-14, and 16-17 .................................. 63
`Ground 5: Hasebe in View of the DMI Specification and
`Arbaugh Renders Obvious Claims 1-3, 5-14, and 16-17 ................... 66
`Ground 6: Hasebe in View of the DMI Specification and Isikoff
`Renders Obvious Claims 1-3, 5-14, and 16-17 .................................. 68
`G. Ground 7: Hasebe in View of the DMI Specification, Shipman
`and Angelo Renders Obvious Claims 1-3, 5-14, and 16-17 .............. 70
`IX. CONCLUSION ............................................................................................. 72
`
`E.
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`F.
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`CBM2016-00023
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`Exhibit Description
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`Docket No.: 106840000528
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`Exhibit #
`
`1001
`
`1002
`
`1003
`
`1004
`
`U.S. Patent No. 6,411,941 to Mullor et al. (“941 patent”)
`
`October 1, 1998 Application (App. No. 09/164,777)
`
`March 28, 2002 Notice of Allowance (App. No. 09/164,777)
`
`May 28, 2009 Request for Ex Parte Reexamination (App. No.
`90/010,560)
`
`August 3, 2009 Reexamination Determination (App. No. 90/010,560) 1005
`
`March 9, 2010 Notice of Intent to Issue Reexam Certificate (App. No.
`90/010,560)
`
`1006
`
`October 15, 2015 Deposition of Miki Mullor (“Mullor Dep.”)
`
`Declaration of Jon Weissman, Ph.D (“Weissman Decl.”)
`
`1007
`
`1008
`
`Claim Construction Order, Case No. 11-CV-06357, Dkt No. 107
`
`1009
`
`Ancora Techs. v. Apple, Inc., 744 F.3d 732 (Fed. Cir. 2014)
`
`Supplemental Joint Claim Construction Statement Case No. 11-CV-
`06357, Dkt No. 100
`
`European Patent Application Publication No. EP 0 766 165 A2
`(“Hasebe”)
`
`Desktop Management BIOS Specification Version 2.0, March 6,
`1996 (“DMI Specification”)
`
`U.S. Patent No. 5,724,425 (“Chang”)
`
`Arbaugh, W.A et al., “A secure and reliable bootstrap architecture,”
`1997 IEEE Symposium on Security and Privacy, 4-7 May 1997, pp.
`65-71, (“Arbaugh”)
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
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`Docket No.: 106840000528
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`U.S. Patent No. 5,748,084 (“Isikoff”)
`
`PCT Publication No. WO 97/36241 (“Shipman”)
`
`European Patent Application Publication No. EP 0 824 233 A2
`(“Angelo”)
`
`Dictionary of Computer Science, Engineering, and Technology, 12
`(2000)
`
`U.S. Patent No. 5,568,552 (“Davis”)
`
`Christopher Butler Affidavit
`
`Network World, vol. 13, no. 12, March 18, 1996
`
`Computer World, vol. 30, no. 14, April 1, 1996
`
`Desktop Management BIOS Specification Version 2.00.1, July 18,
`1996
`
`System Management BIOS (SMBIOS) Reference Specification
`Version 3.0.0, February 12, 2015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`Ancora’s First Supplemental Infringement Contentions, Exhibit A
`
`1026
`
`1997 IEEE Symposium on Security and Privacy, Table of Contents
`
`1027
`
`IEEE Explore Abstract – A secure and reliable bootstrap architecture 1028
`
`U.S. Patent No. 5,901,311 (“Labatte”)
`
`1029
`
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`CBM2016-00023
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`I.
`
`INTRODUCTION
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`Docket No.: 106840000528
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`Petitioner Apple Inc. (“Apple”) requests Covered Business Method
`
`(“CBM”) review of U.S. Patent No. 6,411,941 (the “’941 patent,” Exh. 1001)
`
`claim 1-19 under 35 U.S.C. § 321 and America Invents Act (“AIA”) § 18.
`
`II. OVERVIEW
`
`The ’941 patent is a CBM patent that is financial in nature and does not
`
`claim a technological invention. Its claims are indefinite under 35 U.S.C. § 112, ¶
`
`2, lack written description under § 112, ¶ 1, and are anticipated by and obvious in
`
`light of the prior art, as discussed below.
`
`III. NOTICES AND STATEMENTS
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Apple is the real party-in-interest.
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Apple identifies the following related matters:
`
`• Ancora Techs., Inc. v. Apple, Inc., No. 4:11-cv-6357 (N.D.
`Cal.) (“Ancora I”), filed December 15, 2011;
`
`• Ancora Techs., Inc. v. Apple, Inc., No. 4:15-cv-3659 (N.D.
`Cal.) (“Ancora II”), filed August 11, 2015;
`
`• Ancora Techs. Inc. v. Toshiba Am. Information Sys. Inc. et al.,
`No. 2:09-cv-270 (W.D. Wash), filed February 27, 2009; and
`
`• Ex Parte Reexamination No. 90/010,560, filed by Microsoft
`Corp. on May 28, 2009.
`
`Pursuant to 37 C.F.R. § 42.8(b)(3), Apple identifies the following counsel
`
`and also provides a power of attorney with this Petition.
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`Lead Counsel for
`Petitioner Apple
`
`Docket No.: 106840000528
`
`Backup Counsel
`for Petitioner Apple
`
`David L. Fehrman
`dfehrman@mofo.com
`Reg. No. 28,600
`Morrison & Foerster LLP
`707 Wilshire Blvd., #6000
`Los Angeles, CA 90017
`(213) 892-5601
`
`Richard S.J. Hung
`rhung@mofo.com
`Reg. No. 43,684
`Morrison & Foerster LLP
`425 Market St.
`San Francisco, CA 94105
`(415) 268-7602
`
`Diek Van Nort
`dvannort@mofo.com
`Reg. No. 60,777
`Morrison & Foerster LLP
`755 Page Mill Rd.
`Palo Alto, CA 94304
`(650) 813-5969
`
`Pursuant to 37 C.F.R. § 42.8(b)(4), service may be made by email to
`
`10684-941-CBM@mofo.com
`
`IV. SUMMARY OF THE ’941 PATENT
`
`A.
`
`Specification
`
`The ’941 patent relates to a method for restricting software operation via
`
`software licensing. (’941 patent at Abstract.) It does not purport to improve
`
`conventional software licensing technologies, but allegedly enhances security by
`
`storing license records in the non-volatile area of a BIOS. (Id. at 3:4-14.) Figure 2
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`(one of only two figures in the patent) shows four general steps that constitute the
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`method:
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`In step 17, a program in volatile memory (e.g., RAM, or indeed a hard drive
`
`according to the patent (Id. at 1:20-21)) is selected. (Id. at 6:7-17.) In step 18, a
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`verification structure is set up and accommodates a license record. (Id. at 6:18-21.)
`
`In step 19, the selected program is verified using the verification structure. (Id. at
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`6:29-39.) Finally, in step 20, the program is acted upon depending on the result of
`
`the verification. (Id. at 6:40-52.)
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`The steps of selecting a program, determining whether the program is
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`licensed using a stored license record, and allowing or prohibiting the program to
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`run based on the license record were all standard licensing processes practiced long
`
`before the ’941 patent’s claimed priority date of May 1998. Indeed, the ’941
`
`patent expressly acknowledges prior art software-based and hardware-based
`
`licensing products. (Id. at 1:19-32.)
`
`The ’941 patent’s only alleged improvement over the prior art is the location
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`for storing the license record in the erasable, non-volatile memory of the BIOS.
`
`(Id. at 3:4-14.) But storing sensitive information in the BIOS for security purposes
`
`was well-known and supported by conventional technologies long before the ’941
`
`patent and its provisional application was filed, as discussed in detail below.
`
`B.
`
`Prosecution History of the ’941 Patent
`
`During prosecution, the Examiner found the claims to be allowable because
`
`an “agent” was used to set up the verification structure in the erasable, non-volatile
`
`memory of the BIOS. During subsequent ex parte reexamination, the claims were
`
`confirmed because the cited prior art was directed to verifying hardware instead of
`
`a software program.
`
`1. Original Application
`
` Claim 1, as originally filed recited:
`
`A method of restricting software operation within a license
`
`limitation comprising; for a computer having a first non-volatile
`
`memory area, a second non-volatile memory area, and a volatile
`
`memory area; the steps of:
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`[A] selecting a program residing in the volatile memory,
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`[B] setting up a verification structure in the non-volatile
`
`memories,
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`[C] verifying the program using the structure, and
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`[D] acting on the program according to the verification.
`
`(Oct. 1, 1998 Application at 12, Exh. 1002.) After a series of amendments in
`
`response to several prior art and Section 112 rejections, the Examiner allowed the
`
`claims. Issued claim 1—with annotations showing deletions (strikethrough) and
`
`additions (underlines) compared to the originally filed claims—appears below:
`
`A method of restricting software operation within a license
`
`limitation comprising; for use with a computer having a first
`
`including an erasable, non-volatile memory area of a BIOS of
`
`the computer, a second non-volatile memory area, and a volatile
`
`memory area; the method comprising the steps of:
`
`[A] selecting a program residing in the volatile memory,
`
`[B] using an agent to set setting up a verification structure in
`
`the erasable, non-volatile memory memories of the BIOS, the
`
`verification structure accommodating data that includes at least
`
`one license record,
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`[C] verifying the program using at least the verification
`
`structure from the erasable non-volatile memory of the BIOS,
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`and
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`[D] acting on the program according to the verification.
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`In his reasons for allowance, the Examiner found that each individual
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`limitation of claim 1 was present in the prior art. (Mar. 28, 2002 Notice of
`
`Allowance at 3-4, Exh. 1003.) But the Examiner nevertheless allowed the claims
`
`because they included “using an agent to set up a verification structure in the
`
`erasable, non-volatile memory of the BIOS.” (Id.)
`
`The “agent,” much less the use of an “agent,” was not present in the claims
`
`as originally filed, and the applicants never explained how the specification
`
`supports or describes this “agent.” Regardless, to the extent that an “agent” is
`
`supported in the specification and has a reasonably certain meaning, the prior art in
`
`this Petition discloses it under the broadest reasonable interpretation standard.
`
`2. Microsoft’s Ex Parte Reexamination Request
`
`Microsoft petitioned for ex parte reexamination on May 28, 2009. Its
`
`petition was based on two prior art references—U.S. Patent Nos. 6,153,835
`
`(“Schwartz”) and 5,734,819 (“Lewis”). (May 28, 2009 Request for Ex Parte
`
`Reexamination at 3, Exh. 1004.) The Patent Office instituted reexamination based
`
`on Lewis, but not Schwartz. (Aug. 3, 2009 Reexamination Determination at 9-10,
`
`Exh. 1005.) The Examiner subsequently confirmed the claims over Lewis without
`
`issuing an office action, finding that Lewis was directed to verifying hardware and
`
`not a software program, as claimed. (Mar. 9, 2010 Notice of Intent to Issue
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`Reexam Certificate at 4-5, Exh. 1006.) The prior art in this Petition, which
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`discloses verifying software, does not suffer from this alleged deficiency.
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`V. GROUNDS FOR STANDING
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`
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`Docket No.: 106840000528
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`A.
`
`Petitioner Has Standing Under 37 C.F.R. § 42.302
`
`Apple is not prohibited under 37 C.F.R. § 42.302(a) from filing the instant
`
`petition for CBM review, because Ancora has sued Apple in the U.S. District
`
`Court for the Northern District of California (twice), alleging that Apple’s “secure
`
`boot” technology underlying its iOS operating system infringes the ’941 patent. In
`
`addition, Apple is not prohibited under 37 C.F.R. § 42.302(b), because Apple is not
`
`estopped from challenging the claims on the grounds identified in this petition.
`
`B.
`
`The ’941 Patent Is Directed to a Covered Business Method
`
`If one claim is eligible for CBM review, the entire patent is as well. See
`
`SAP Am., Inc. v. Versata Dev. Grp. Inc., No. CBM2012-00001 (“SAP”), Paper No.
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`36 at 26; Inter Partes Review, 77 Fed. Reg. 48,709 (Aug. 14, 2012) (to be codified
`
`as 37 C.F.R. pt. 42). As at least claims 1, 2, and 10 confirm, the ’941 patent is
`
`financial in nature, and the patent is not directed to a technological innovation.
`
`The patent thus qualifies for CBM review.
`
`1.
`
`Claims of the ’941 Patent Are Financial in Nature
`
`A CBM patent is one “that claims a method or corresponding apparatus for
`
`performing data processing or other operations used in the practice, administration,
`
`or management of a financial product or service, except that the term does not
`
`include patents for technological inventions.” AIA § 18(d)(1); 37 C.F.R. §
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`42.301(a). “[T]he definition of covered business method patent was drafted to
`
`encompass patents ‘claiming activities that are financial in nature, incidental to a
`
`financial activity or complementary to a financial activity.’” Transitional Program
`
`for Covered Business Method Patents, 77 Fed. Reg. 48,734-35 (Aug. 14, 2012) (to
`
`be codified as 37 C.F.R. pt. 42) (citing 157 Cong. Rec. S5432 (daily ed. Sept. 8,
`
`2011) (stm’t of Sen. Schumer)) (emphasis added). The term “financial” product or
`
`service” is interpreted broadly and “simply means relating to monetary matters.”
`
`See, e.g., SAP, Paper No. 36 at 23 (emphasis added). The phrase does not require
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`claims directed to traditional financial industries, such as banking. Id. at 22.
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`The ’941 patent is directed to licensing, which the Board has previously held
`
`constitutes a financial activity. See Google Inc. v. ContentGuard Holdings, Inc.,
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`No. CBM2015-00040, Paper No. 9 at 9 (P.T.A.B. June 24, 2015) (holding that “the
`
`transfer of rights associated with an item from a supplier to a consumer is an
`
`activity that, at the very least, is incidental or complementary to a financial
`
`activity”). The ’941 patent purports to remedy “the grand proliferation of illegally
`
`copied software,” which “represents billions of dollars in lost profits to
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`commercial software developers.” (’941 patent at 1:14-18 (emphasis added).) To
`
`avoid these lost profits, the claimed method proposes to “restrict[] software
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`operation within a license limitation.” (Id. at 1:38-39.) In particular, the claimed
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`invention seeks to require payment for the legal use of software by preventing its
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`alternative, i.e., illegal copying. Accordingly, the claims of the ’941 patent, all of
`
`which concern licensing activities for software, are directed toward or at least
`
`incidental to financial activities.
`
`Moreover, a claimed invention designed to restrict access to software or data
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`is financial in nature if the specification discloses a financial use for the
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`restrictions. See Informatica Corp. v. Protegrity Corp., No. CBM2015-00021,
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`Paper No. 14 at 11 (P.T.A.B. June 1, 2015) (claim directed to “protection
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`attributes” was financial, as specification disclosed “banking” as potential
`
`application of “protection attributes.”). The ’941 patent discloses and claims such
`
`financial uses.
`
`Claims 1 and 10 of the ’941 patent, for example, relate to operations that are
`
`expressly financial in nature. Claim 1 recites “restricting software operation within
`
`a license” in the preamble, as well as “acting on the program according to the
`
`verification.” Claim 10 further describes that claim 1’s “acting” step includes
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`“restricting the program’s operation with predetermined limitations” if the license
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`records do not match. The specification describes these steps of “acting” and
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`“restricting” as financial in nature. In particular, the specification explains that the
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`“acting” and “restricting” steps of claims 1 and 10, respectively, include “placing a
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`fine on the applicant/user through the billing service charges collected at the
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`license bureau.” (’941 patent at 6:49-50 (emphasis added).)
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`Claim 2 similarly recites “establishing” a license bureau that handles the fine
`
`and billing services. The Board has consistently treated charging fees as a
`
`financial activity. See, e.g., Apple Inc. v. SightSound Techs., No. CBM2013-
`
`00021, Paper No. 13 at 11 (P.T.A.B. Oct. 8, 2013) (specification’s description of
`
`how fee is charged makes invention financial in nature); Indeed, Inc. v. Career
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`Destination Dev., LLC, No. CBM2014-00069, Paper No. 12 at 9 (P.T.A.B. Aug.
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`20, 2014) (“Operating a career site for a fee is an activity that is financial in
`
`nature.”). By encompassing activities such as establishing license bureau that bills
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`software users for fees, claims 1, 2, and 10 of the ’941 patent relate to the
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`“practice, administration, or management of a financial product or service” under
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`the AIA.
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`2.
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`The ’941 Patent Does Not Include a Technological Invention
`
`AIA § 18(d)(2) excludes “patents [ ] for technological inventions” from the
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`definition of CBM patents, even if financial in nature. To determine if a patent is
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`for a technological invention, the Board considers, “on a case by case basis,”
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`“whether the claimed subject matter as a whole [i] recites a technological feature
`
`that is novel and unobvious over the prior art; and [ii] solves a technical problem
`
`using a technical solution.” 37 C.F.R. § 42.301(b).
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`When this exclusion was first proposed, commentators asked that the Patent
`
`Office clarify that the exception applies if a patent satisfied just one of the above
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`two prongs. See, e.g., 77 Fed. Reg. 48,736-37. The Patent Office declined to do
`
`so, instead electing to require both prongs for an exception to apply and keeping
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`the “technological invention” exception to CBM review narrow. The Office
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`explained that a narrow exception was consistent with the AIA’s legislative history
`
`and represented “the best policy choice.” Id. at 48,735-36.
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`Accordingly, under the applicable framework, the “‘technological
`
`inventions’ exception only excludes those patents [1] whose novelty turns on a
`
`technological innovation over the prior art and [2] are concerned with a technical
`
`problem which is solved with a technical solution.’” Id. at 48,735 (emphasis
`
`added). If even one claim of a patent is not directed to a “technological invention,”
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`the exception does not apply. Id. at 48,736.
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`The ’941 patent claims do not meet either of the requirements for the
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`“technological invention” exception, much less both of them. Not only do the
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`claims of the ’941 patent fail to recite a novel and unobvious technological feature,
`
`but they also do not solve a technical problem using a technical solution.
`
`a.
`
`The ’941 Patent Does Not Solve a Technical
`Problem Using a Technical Solution
`
`At the outset, the ’941 patent is not directed to a technical problem at all.
`
`Rather, the ’941 patent seeks to address the “the grand proliferation of illegally
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`copied software.” (’941 patent at 1:14-15.) It purports to improve upon prior art
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`software validation techniques that were “vulnerable to attack at the hands of
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`skilled system’s [sic] programmers.” (Id. at 1:23-24.)
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`Docket No.: 106840000528
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`The ’941 patent purports to avoid software piracy by restricting the
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`operation of software on a device. As the Board has previously held, however,
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`piracy is a “business problem”—not a technical one. Apple Inc. v. Smartflash LLC,
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`No. CBM2015-00033, Paper No. 11 at 10 (P.T.A.B. May 28, 2015) (characterizing
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`“controlling access to one or more content data items stored on a data carrier” to
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`ensure “legitimate acquisition of data from a data supplier” as “a business
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`problem—data piracy”).
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`The ’941 patent’s solution to this business problem is fundamentally
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`organizational in nature, not technical. In particular, the ’941 patent describes and
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`then claims organizational choices for the locations where a key and license-record
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`should be stored. For example, the method of claim 10 recites setting up: (i) a
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`“verification structure in the erasable, non-volatile memory of the BIOS,” (’941
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`patent at 6:64-65), (ii) “a pseudo-unique key in a non-volatile memory area” (id. at
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`7:40-41), and (iii) a license-record location in “the first nonvolatile [sic] memory
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`area or in or in the erasable, non-volatile memory area of the BIOS,” (id. at 7:42-
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`44). The license record then is encrypted or decrypted using the key and compared
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`with the software contents in the volatile memory area. Access is allowed if there
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`is a match. (Id. at 7:51-66.)
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`This storage of licenses and other known components in specific locations is
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`not a technical solution to a technical problem, but the mere rearrangement of
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`which data is stored in which memory areas. See Hewlett-Packard Co. v. YYZ
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`LLC, No. CBM2015-00049, Paper No. 9 at 18 (P.T.A.B. June 30, 2015) (problem
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`of organization is not technical).
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`Additionally the ’941 patent does not solve (let alone solve in a technical
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`manner) the alleged problem of license records being “subject to the physical
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`instabilities of their volatile memory media.” (’941 patent at 1:24-26.) For
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`example, the claimed method neither remedies the instabilities of volatile memory
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`disclosed in the ’941 patent (id. at 1:24-26) nor improves non-volatile memory, as
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`to enable storing licensing information. The claimed method, which involves
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`moving the license record to the non-volatile memory area, simply avoids the issue
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`of physical instability of volatile memory by using known non-volatile memory
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`instead.
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`Further, Figure 1 of the ’941 patent illustrates a conventional computer
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`including a total of three elements – a 1st non-volatile memory 4, a 2nd non-
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`volatile memory 5, and a volatile memory 6. These elements are all part of a
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`conventional computer, and the alleged invention is directed not to any new
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`technology of the computer, but rather to the storing of particular information in a
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`particular conventional memory in order to provide the asserted benefits of the
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`conventional memory.
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`Finally, the ’941 patent’s background describes the claimed method as
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`replacing the use of expensive and inconvenient prior art hardware. (’941 patent at
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`1:29-32.) But expense and inconvenience are not technical problems. See
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`Motorola Mobility, LLC v. Intellectual Ventures I, LLC, No. CBM2015-00004,
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`Paper No. 9 at 13 (P.T.A.B. Mar. 27, 2015) (“[T]he problem faced was to make
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`distribution of electronic information quicker and less expensive. On its face this
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`is not a technical problem.”). For at least these reasons, the “technological
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`invention” exception to CBM review does not apply.
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`b.
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`Claims 1, 2, and 10 Do Not Recite a Novel and
`Non-Obvious Technological Invention
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`Merely reciting or using known technologies or combining them to achieve
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`known or predictable results will not give rise to a “technological invention”
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`exempt from CBM review under 37 C.F.R. § 42.301(b). As the Patent Office’s
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`own Rules and Regulations explain:
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`The following claim drafting techniques would not typically
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`render a patent a technological invention:
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`(a) Mere recitation of known technologies, such as computer
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`hardware, communication or computer networks, software,
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`memory, computer readable storage medium, scanners, display
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`devices or databases, or specialized machines, such as an ATM
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`or point of sale device.
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`(b) Reciting the use of known prior art technology to
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`accomplish a process or method, even if that process or method
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`is novel and non-obvious.
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`(c) Combining prior art structures to achieve the normal,
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`expected, or predictable result of that combination.
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`77 Fed. Reg. 48,763-64 (emphasis added); see 157 Cong. Rec. S1364 (daily ed.
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`Mar. 8, 2011) (stm’t of Sen. Schumer).
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`The specification effectively concedes that independent claim 1, dependent
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`claim 2, and dependent claim 10 (and claims 6, 7, and 9, on which claim 10
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`depends) recite combinations of known technologies. For example, method claim
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`1 involves the use of “a computer including an erasable, non-volatile memory area
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`of a BIOS of the computer, and a volatile memory area.” This technology was
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`undisputedly conventional. (See, e.g., ’941 patent at 1:46-48 (discussing
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`“conventional” computer have a “conventional BIOS module”), 3:21-32 (referring
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`to computers “[t]oday” having “data linkage access to a volatile memory”).) The
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`specification further acknowledges that conventional (i.e., prior art) computers
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`included “a unique identification code.” (Id. at 1:48-51.)
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`Miki Mullor (one of the ’941 patent’s named inventors) confirmed that claim
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`1 is the result of merely “[c]ombining prior art structures to achieve the normal,
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`expected, [and] predictable result of [the] combination.” 77 Fed. Reg. 48,763-64.
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`In deposition, the only alleged new idea in claim 1 that Mr. Mullor identified is
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`“verifying a program using a license or data that was stored in memory area . . . of
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`the erasable nonvolatile memory of the BIOS.” (October 15, 2015 Deposition of
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`Miki Mullor (“Mullor Dep.”) at 53:13-22, Exh. 1007; see also, generally, id. at
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`50:14-57:9, 89:20-90:8.) But this is merely a predictable combination of what Mr.
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`Mullor admitted was well-known, prior art technologies, specifically, a license
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`record (id. at 54:18-22) and a BIOS with erasable nonvolatile memory (id. at 52:2-
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`9). Thus, claim 1 is not directed to a technological invention, but rather, at most, is
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`a combination of known technologies that produce a predictable result.
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`Claim 2 simply adds to claim 1 the step of “establishing a license
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`authentication bureau.” As the specification reveals, the bureau may be an
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`“external entity” or “part of the [same conventional] computer” – neither of which
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`was novel. (’941 patent at 6:1-3.) Thus, claim 2 is not directed to a technological
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`invention.
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`Claims 6, 7, 9, and 10 also are neither novel nor non-obvious. Each simply
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`further defines the specific steps of claim 1, i.e.: (i) “selecting a program residing
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`in the volatile memory”; (ii) “using an agent to set up a verification structure in the
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`erasable, non-volatile memory of the BIOS, the verification structure
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`accommodating data that includes at least one license record”; (iii) “verifying the
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`program using at least the verification structure from the erasable non-volatile
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`memory of the BIOS”; and (iv) “acting on the program according to the
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`verification.” (Emphasis added.) In particular:
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`Claim 6. Claim 6 states that “selecting a program” includes “establishing a
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`licensed-software-program in the volatile memory of the computer[,] wherein said
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`[program] includes contents used to form the license-record.” But the specification
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`concedes that the prior art included “products . . . to validate authorized software
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`usage by writing a license signature onto the computer’s volatile memory.” (Id. at
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`1:19-21.) Such products necessarily would have performed the step of claim 6,
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`which therefore cannot be novel or non-obvious.
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`
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`Claim 7. Claim 7 states that “set[ting] up a verification structure” includes
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`“establishing or certifying the existence of a pseudo-unique key in a first non-
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`volatile memory area of the computer[,] and establishing at least one license-record
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`location in the first nonvolatile [sic] memory area or in the erasable, non-volatile
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`memory area of the BIOS.” The specification acknowledges that the use of such
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`“keys” and establishing memory locations were conventional and known in the art.
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`(Id. at 1:1:19-21 (describing prior art as “writing a license signature onto