Case 1:20-cv-00034-ADA Document 50 Filed 04/10/20 Page 1 of 37
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`ANCORA TECHNOLOGIES, INC.,
`
`Plaintiff,
`
`v.
`
`LG ELECTRONICS INC. and LG
`ELECTRONICS U.S.A., INC.,
`
`Defendants.
`
`CIVIL ACTION NO. 1:20-CV-0034
`
`JURY TRIAL DEMANDED
`
`ANCORA TECHNOLOGIES, INC.,
`
`CIVIL ACTION NO. 1:20-CV-0034
`
`Plaintiff,
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
`
`Defendants.
`
`JURY TRIAL DEMANDED
`
`PLAINTIFF’S RESPONSIVE CLAIM CONSTRUCTION BRIEF
`
`ANCORA Ex. 2013, Page 1
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`

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`Case 1:20-cv-00034-ADA Document 50 Filed 04/10/20 Page 2 of 37
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ..................................................................................................................1
`
`II. DISPUTED CLAIM TERMS .................................................................................................2
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`“using an agent to set up a verification structure in the erasable, non-volatile
`memory of the BIOS” ...................................................................................................2
`
`“set up a verification structure” ....................................................................................9
`
`“non-volatile memory of the BIOS” ............................................................................13
`
`“verifying the program using at least the verification structure” ................................17
`
`“acting on the program according to the verification” .................................................18
`
`“license” (Claim 1 - Preamble) / “license record” .......................................................19
`
`The Order of the Claim 1 Steps ...................................................................................23
`
`“BIOS” .........................................................................................................................25
`
`“selecting a program residing in the volatile memory” ...............................................26
`
`10. “program” ....................................................................................................................27
`
`11. “volatile memory” ........................................................................................................28
`
`12. “first non-volatile memory area of the computer” .......................................................29
`
`III. CONCLUSION .....................................................................................................................30
`
`
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`ANCORA Ex. 2013, Page 2
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`

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`Case 1:20-cv-00034-ADA Document 50 Filed 04/10/20 Page 3 of 37
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Absolute Software, Inc. v. Stealth Signal, Inc.,
`659 F.3d 1121 (Fed. Cir. 2011)................................................................................................11
`
`Ancora Techs., Inc. v. Apple, Inc. (“Apple II”),
`744 F.3d 732 (Fed. Cir. 2014)..................................................................................5, 16, 28, 29
`
`Ancora Techs., Inc. v. HTC Am., Inc.,
`908 F.3d 1343 (Fed. Cir. 2018)................................................................................................21
`
`Arctic Cat Inc. v. GEP Power Prod., Inc.,
`919 F.3d 1320 (Fed. Cir. 2019)................................................................................................20
`
`Astrazeneca LP v. Apotex, Inc.,
`633 F.3d 1042 (Fed. Cir. 2010)................................................................................................15
`
`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir. 2013)................................................................................................18
`
`Collaborative Agreements, LLC v. Adobe Sys. Inc.,
`2015 WL 2250391 (W.D. Tex. May 12, 2015) .........................................................................3
`
`Computer Docking Station Corp. v. Dell, Inc.,
`519 F.3d 1366 (Fed. Cir. 2008)................................................................................................14
`
`Cont’l Circuits LLC v. Intel Corp.,
`915 F.3d 788 (Fed. Cir. 2019)..................................................................................................13
`
`Digital Retail Apps, Inc. v. H-E-B, LP,
`2020 WL 376664 (W.D. Tex. Jan. 23, 2020) ............................................................................7
`
`E-Pass Techs., Inc. v. 3Com Corp.,
`343 F.3d 1364 (Fed. Cir. 2003)....................................................................................19, 20, 22
`
`Eolas Techs. Inc. v. Microsoft Corp.,
`399 F.3d 1325 (Fed. Cir. 2005)................................................................................................18
`
`Gemstar-TV Guide Int’l, Inc. v. Int’l Trade Comm’n,
`383 F.3d 1352 (Fed. Cir. 2004)................................................................................................14
`
`HTC Corp. v. Ancora Techs. Inc.,
`2017 WL 6032605 (Patent Tr. & App. Bd. Dec. 1, 2017) .......................................................21
`
`ANCORA Ex. 2013, Page 3
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`

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`Case 1:20-cv-00034-ADA Document 50 Filed 04/10/20 Page 4 of 37
`
`HTC Corp. v. IPCom GmbH & Co., KG,
`667 F.3d 1270 (Fed. Cir. 2012)..................................................................................................9
`
`i4i Ltd. P’Ship v. Microsoft Corp.,
`598 F.3d 831 (Fed. Cir. 2010)....................................................................................................1
`
`InterDigital Commc’ns, LLC v. ITC,
`690 F.3d 1318 (Fed. Cir. 2012)................................................................................................11
`
`Interval Licensing LLC v. AOL, Inc.,
`766 F.3d 1364 (Fed. Cir. 2014)................................................................................................30
`
`Joao Control & Monitoring Sys., LLC v. Protect Am., Inc.,
`2015 WL 4937464 (W.D. Tex. Aug. 18, 2015) .........................................................................7
`
`Kaneka Corp. v. Xiamen Kingdomway Grp. Co.,
`790 F.3d 1298 (Fed. Cir. 2015)................................................................................................25
`
`Kroy IP Holdings, LLC v. Safeway, Inc.,
`2015 WL 3452050 (E.D. Tex. May 29, 2015) ...................................................................14, 16
`
`Linear Tech. Corp. v. Impala Linear Corp.,
`379 F.3d 1311 (Fed. Cir. 2004)..................................................................................................8
`
`Luminara Worldwide, LLC v. Liown Elecs. Co.,
`814 F.3d 1343 (Fed. Cir. 2016)................................................................................................11
`
`Nokia Sols. & Networks US LLC v. Huawei Techs. Co.,
`2017 WL 2226413 (E.D. Tex. May 19, 2017) .........................................................................27
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)................................................................................................22
`
`Prowess, Inc. v. RaySearch Labs., AB,
`953 F. Supp. 2d 638 (D. Md. 2013) .........................................................................................27
`
`Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp.,
`948 F.3d 1342 (Fed. Cir. 2020)..................................................................................................4
`
`Solvay S.A. v. Honeywell Int’l Inc.,
`742 F.3d 998 (Fed. Cir. 2014)..................................................................................................23
`
`Synchronoss Techs., Inc. v. Dropbox Inc.,
`2017 WL 6059302 (N.D. Cal. Dec. 7, 2017) .............................................................................7
`
`Techno View IP, Inc. v. Facebook Techs., LLC,
`2018 WL 6427874 (D. Del. Dec. 7, 2018).................................................................................9
`
`ANCORA Ex. 2013, Page 4
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`

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`Case 1:20-cv-00034-ADA Document 50 Filed 04/10/20 Page 5 of 37
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`TomTom, Inc. v. Adolph,
`790 F.3d 1315 (Fed. Cir. 2015)................................................................................................20
`
`Unwired Planet, LLC v. Apple Inc.,
`829 F.3d 1353 (Fed. Cir. 2016)................................................................................................13
`
`Verizon Calif. Inc. v. Ronald A. Katz Tech. Licensing, P.A.,
`326 F. Supp. 2d 1060 (C.D. Cal. 2003) .....................................................................................3
`
`VirnetX, Inc. v. Cisco Sys., Inc.,
`767 F.3d 1308 (Fed. Cir. 2014)..........................................................................................21, 26
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996)..................................................................................................11
`
`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015)..................................................................................................7
`
`Zeroclick, LLC v. Apple Inc.,
`891 F.3d 1003 (Fed. Cir. 2018)........................................................................................ passim
`
`Statutes
`
`35 U.S.C. § 112 ...................................................................................................................... passim
`
`
`
`ANCORA Ex. 2013, Page 5
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`

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`Case 1:20-cv-00034-ADA Document 50 Filed 04/10/20 Page 6 of 37
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`I.
`
`INTRODUCTION
`
`Defendants’ attempt to convince the Court to adopt constructions at odds with the claims
`
`and the specification is premised on a number of fundamental errors. Two in particular stand out:
`
`(1) Defendants’ attempt to read limitations into the claim from embodiments the specification
`
`expressly describes as “non-limiting,” and (2) Defendants’ attempt to portray Ancora as taking a
`
`“shifting sands approach” and walking away from representations Defendants claim Ancora made
`
`either during prosecution or in other litigation. Defendants are wrong.
`
`As described below and in Ancora’s Opening Brief (Dkt. 44), Ancora’s constructions are
`
`taken directly from prior courts’ constructions and based on the plain meaning of each term as
`
`demonstrated by the entirety of the ’941 Patent. Further, Defendants’ “shifting sands” argument is
`
`a fiction, premised on statements plucked from the prosecution history that state the opposite of
`
`what Defendants argue—a reality demonstrated by the fact that many would render the invention
`
`inoperable. i4i Ltd. P’Ship v. Microsoft Corp., 598 F.3d 831, 843 (Fed. Cir. 2010) (stating that,
`
`“[i]n evaluating whether a patentee has disavowed claim scope, context matters” and one cannot
`
`just “pluck[]” statements “from the prosecution history”).
`
`Moreover, Ancora changed only three of the constructions it proposed in other litigations,
`
`and for good reason: in two cases (“program” and “volatile memory”), the Federal Circuit
`
`construed the term, and Ancora now has adopted the Federal Circuit’s construction. And in the
`
`third case (“selecting a program . . .”), Defendants explained that they understood Ancora’s prior
`
`construction to require a limitation that Ancora’s own prior briefing showed was never intended.
`
`In short, Ancora’s approach to claim construction is and remains the correct one, and its
`
`proposed constructions should be adopted. Because—as the Federal Circuit has explained—
`
`“context matters,” i4i Ltd., 598 F.3d at 843, Ancora addresses the specific flaws in Defendants’
`
`arguments below in the context of the specific terms and arguments to which they relate.
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`ANCORA Ex. 2013, Page 6
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`Case 1:20-cv-00034-ADA Document 50 Filed 04/10/20 Page 7 of 37
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`II.
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`DISPUTED CLAIM TERMS
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`Defendants have not addressed the 13 disputed terms and phrases in any discernable order.
`
`For the Court’s convenience, Ancora addresses those terms and phrases in the same order. Ancora
`
`also has noted below in super script the number corresponding to each Claim 1 term or phrase—
`
`underlining the disputed phrases and double-underlining/bolding the disputed terms:1
`
`1. A method of restricting software operation within a license for use with
`a computer[6] including an erasable, non-volatile memory area of a BIOS[8]
`of the computer, and a volatile memory[11] area; the method comprising the
`steps of:
`
`selecting a program[10] residing in the volatile memory;[9]
`
`using an agent to set up a verification structure in the erasable, non-
`volatile memory of the BIOS,[1, 2, 3, 8] the verification structure
`accommodating data that includes at least one license record,[6]
`
`verifying the program using at least the verification structure[4] from the
`erasable non-volatile memory of the BIOS,[8] and
`
`acting on the program according to the verification.[5]
`
`1. “using an agent to set up a verification structure in the erasable, non-volatile
`memory of the BIOS” (Claims 1, 3, 7, 14)
`
`Ancora’s Construction
`
`Defendants’ Construction
`
`plain and ordinary meaning
`
`“agent” means “a software
`program or routine”
`
`This limitation is a means plus function limitation governed
`by pre-AIA 35 U.S.C. § 112 ¶ 6.
`
`Function: “set up a verification structure in the erasable,
`non-volatile memory of the BIOS”
`
`Structure: Algorithm found at 6:18-28; if not, indefinite due
`to a lack of corresponding structure.
`
`
`As Ancora explained in its Opening Brief at pages 17-21, the crux of the parties’ dispute
`
`is whether “agent” is a nonce word such that 35 U.S.C. § 112 ¶ 6 applies. As explained, it is not.
`
`As used in the ’941 Patent, the term “agent” was well understood to refer to “a software
`
`1 Unless otherwise noted, any emphasis in this brief has been added.
`
`Further, Ancora Exhibits 1-17 are attached to Ancora’s Opening Brief at Dkt. 44. Ancora Exhibits
`18-23 are attached to the Second Declaration of Steve Seigel filed contemporaneously with this
`brief. Defendants’ Exhibits 1-24 are attached to their Opening Brief filed at Dkt. 45.
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`ANCORA Ex. 2013, Page 7
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`Case 1:20-cv-00034-ADA Document 50 Filed 04/10/20 Page 8 of 37
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`program or routine.” Indeed, the Examiner volunteered that he understood “agent” to be
`
`synonymous with a software “program.” Ancora Ex. 4 at ANCORA_426-27, -428. Nothing more
`
`is needed to show that § 112 ¶ 6 does not apply. Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1008
`
`(Fed. Cir. 2018) (holding that court erred in treating “‘program’ and ‘user interface code’ as nonce
`
`words”); Collaborative Agreements, LLC v. Adobe Sys. Inc., 2015 WL 2250391, at *13 (W.D.
`
`Tex. May 12, 2015) (“Courts have consistently interpreted ‘software’ and similar terms to have
`
`sufficient structure so as to avoid an invocation of Section 112 ¶ 6.”).
`
`But more exists. The specification and prosecution history detail both what the recited
`
`software “agent” does and how it does it, including at least at 1:60-2:1, 3:51-61, and (as Defendants
`
`admit) 6:18-28. These disclosures further show that “agent” connotes sufficient structure to avoid
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`§ 112 ¶ 6. Zeroclick, 891 F.3d at 1008 (looking to specification and other disclosures as further
`
`showing court erred in treating “‘program’ and ‘user interface code’ as nonce words”); see Verizon
`
`Calif. Inc. v. Ronald A. Katz Tech. Licensing, P.A., 326 F. Supp. 2d 1060, 1106 (C.D. Cal. 2003)
`
`(“[A]s Verizon itself concedes, ‘interface unit’ connotes some structure. Therefore, ‘[i]n the
`
`absence of any more compelling evidence of the understanding of one of ordinary skill in the art,
`
`the presumption that § 112, ¶ 6 does not apply is determinative.’” (citation omitted)).
`
`In response, Defendants go all-in on the argument that the term nevertheless is subject to
`
`§ 112 ¶ 6 because—according to Defendants—the patentee purportedly portrayed an “agent” as
`
`“a concept hitherto unknown in the prior art” during prosecution. Defs. Br. at 3. Defendants also
`
`rely on their expert’s opinion that a POSITA purportedly would not understand what an agent was.
`
`Id. at 7. Both assertions are demonstrably untrue. As explained below, not only did the patentee
`
`never claim that an “agent” was a novel concept, but Defendants’ expert relied on the term “agent”
`
`in his own pre-filing academic research papers—showing that, before he had an incentive to claim
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`ANCORA Ex. 2013, Page 8
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`Case 1:20-cv-00034-ADA Document 50 Filed 04/10/20 Page 9 of 37
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`otherwise, he knew exactly what “agent” meant (just as the Examiner or any POSITA would).
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`Because “agent” is not a nonce word, § 112 ¶ 6 does not apply.
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`i) As Used in the ’941 Patent, “Agent” Is Not a Nonce Word
`
`Defendants’ “nonce” word argument is incorrect for at least three reasons.
`
`a. The Intrinsic Record Shows That Agent Was an Understood Term.
`
`There is a reason that Defendants cite literally nothing (in the prosecution history or
`
`otherwise) supporting their assertion that the patentee purportedly represented that an “agent” was
`
`“a novel concept” that was “hitherto unknown in the prior art.” Defs. Br. at 5. No support exists.
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`Not only did the patentee never represent that an “agent” was a new concept, but the file
`
`history plainly shows that both the applicant and the Examiner knew exactly what an agent was.
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`In fact, the Examiner expressly defined the term to refer to a software “program,” including
`
`routines that were encompassed within a larger “software application.” Ancora Ex. 4 at
`
`ANCORA_426-27 (“Misra et al. also teach encryption keys and programs (‘agent’) used in the
`
`license collation process . . . .”); id. at -428 (“Smith et al. teach a system for distributing, registering
`
`and purchasing software . . . using an agent program embedded in each software application.”).
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`Contemporaneous technical dictionaries further confirm this reality. Ancora Br. at 19 n.3.
`
`Indeed, even Defendants admit that “agent” is a defined term.
`
`Defendants nevertheless argue that “agent” is a nonce word because the definitions
`
`purportedly are too “disparate”—pointing to the fact that a single dictionary states that an “agent”
`
`may be “software or hardware.” Defs. Br. at 7 (citing DICTIONARY OF COMPUTING (1996) (Defs.
`
`Ex. 24)). But perfect uniformity is not required. All that is required is “that the term, as the name
`
`for structure, has a reasonably well understood meaning in the art.” Zeroclick, 891 F.3d at 1007
`
`(citation omitted); Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp., 948 F.3d 1342, 1353-54 (Fed.
`
`Cir. 2020) (finding presumption not overcome where “the digital processing unit recited in the
`
`ANCORA Ex. 2013, Page 9
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`claims is ‘an image processing device that people in the art are generally familiar with’”).
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`Further, the point is moot here in any case because the ’941 Patent’s record makes clear
`
`that its claimed “agent” is software only. Zeroclick, 891 F.3d at 1008 (looking to the intrinsic
`
`record to understand scope of the term). Indeed, the Federal Circuit recognized that the “inventors
`
`stated that their method makes use of the existing computer hardware (eliminating the expense and
`
`inconvenience of using additional hardware).” Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732,
`
`735-36 (Fed. Cir. 2014) (“Apple II”).
`
`Specifically, among other disclosures, in support of their amendment adding “agent” to
`
`Claim 1, the patentee submitted to the Examiner a 2001 White Paper authored by one of the
`
`inventors (Miki Mullor) titled Hardware Stamping™ Technology Overview White Paper (the
`
`“Beeble White Paper”). Ancora Ex. 19 (Nov. 14, 2001 Remarks Made in Amendment) at
`
`ANCORA_374 (“As requested by the Examiner during the interview, a description of a specific
`
`embodiment of the invention is attached hereto.”). That paper explained both (1) how “[i]n order
`
`for a user to access the BIOS EEPROM[,] proprietary software” needed to be developed, and (2)
`
`how Beeble (the original owner of the patent) thus had created an OS-level software agent called
`
`a “Beeble driver” or “Kernel mode driver” that—as the patent claims—could be used to set up the
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`verification structure in the BIOS. See Ancora Ex. 18 (Beeble White Paper) at ANCORA_278.
`
`Further, the Beeble Paper also described how specific E2PROM manipulation commands
`
`(including “DMI Function 52h”) could be used to write to BIOS—explaining:
`
`Beeble will attempt to write license data by utilizing the [Desktop
`Management Interface] Function 52h[2], which is designed to write DMI
`structures to EEPROM. If BIOS manufactures do not support DMI function
`52h, then Beeble will write to a [sic] EEPROM generically.
`
`[2] SMBIOS Reference Specifications, Version 2.2, 16 March 1998, page 11
`
`Id. Further, it explained how the recited technique was to be “accomplished through software”
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`ANCORA Ex. 2013, Page 10
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`Case 1:20-cv-00034-ADA Document 50 Filed 04/10/20 Page 11 of 37
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`such that it “does not require any additional hardware to be added to the PC.” Id. at ANCORA_275.
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`And, to be clear, this disclosure was not new. The specification already taught how “the
`
`data in the second non-volatile memory may optionally be erased or modified (using E2PROM
`
`manipulation commands).” ’941 Patent at 2:1-6; id. at 3:4-9 (explaining that an “advantage in
`
`utilizing non-volatile memory such as that residing in the BIOS is that the required level of system
`
`programming expertise that is necessary to intercept or modify commands, interacting with the
`
`BIOS, is substantially higher than those needed for tampering with [other] data”).
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`Such evidence is more than sufficient to show that—as used in the ’941 Patent—“agent”
`
`would have been understood to refer to sufficiently definite structure. Zeroclick, 891 F.3d at 1007.
`
`b. Defendants’ Expert Testimony Is Not Credible.
`
`The Court also should reject Defendants’ reliance on their expert’s opinion that a POSITA
`
`“would not understand the term ‘agent’ to connote sufficient structure.” Defs. Br. at 7. Not only is
`
`such testimony at odds with the testimony of Mr. Jestice, but—contrary to his testimony in this
`
`matter—Dr. Zadok used the term “agent” in his own academic pre-filing research papers.
`
`For example, in a July 1994 paper titled PGMAKE: A Portable Distributed Make System,
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`he described a software program that includes “agent-daemons,” which “serve[] as an agent”
`
`because they “assist[] the remote [daemon] to fork a job, collect its status and output, and return it
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`back to [the make utility].” Ancora Ex. 20 at 2. Similarly, in his 2006 On Incremental File System
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`Development paper (Ancora Ex. 21 at 3), Dr. Zadok cited as an example of OS-level extensions
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`“The Interposition Agents toolkit [Jones 1993],” which defines an “agent” as “a program.” Ancora
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`Ex. 22 at 1. Given these references, it simply is not credible for Dr. Zadok to testify that “‘agent’
`
`is a nonce word [that] does not provide any indication of structure.” Defs. Mot. at 7.
`
`c. Defendants’ Cases Do Not Support Their Position.
`
`Finally, none of the case law Defendants cite supports their nonce-word argument.
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`ANCORA Ex. 2013, Page 11
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`Case 1:20-cv-00034-ADA Document 50 Filed 04/10/20 Page 12 of 37
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`In Synchronoss Techs., Inc. v. Dropbox Inc., the court held that the record in that case
`
`supported construing “synchronization agent” to refer to “hardware or software.” 2017 WL
`
`6059302, *9-*11 (N.D. Cal. Dec. 7, 2017). This is a key distinction. Terms that refer to software
`
`or hardware generally are considered to be nonce words. Williamson v. Citrix Online, LLC, 792
`
`F.3d 1339, 1350 (Fed. Cir. 2015) (holding that “module” was a nonce word because it referred
`
`generically to “software or hardware”). In contrast, terms that refer solely to software have not.
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`Zeroclick, 891 F.3d at 1008. And here, as explained above, “agent” refers solely to software.
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`Similarly, in Digital Retail Apps, Inc. v. H-E-B, LP, 2020 WL 376664, at *4 (W.D. Tex.
`
`Jan. 23, 2020), this Court found that Williamson applied and demonstrated that the term
`
`“communications module” was a nonce term. In reaching that conclusion, the Court explained
`
`that—“although software can serve as a corresponding structure”—the patent and other intrinsic
`
`evidence “provides no specific details concerning the ‘first communication module,’ such as what
`
`type of communication it undertakes or how the module is implemented.” Id. at *4-6. In short, this
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`Court emphasized the absence of the very disclosures that are present here: the disclosures at 1:60-
`
`2:1, 3:51-61, and 6:18-28, the “Beeble White Paper,” and the dictionary definitions.
`
`Finally, it is unclear why Defendants cite Joao Control & Monitoring Sys., LLC v. Protect
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`Am., Inc., 2015 WL 4937464, at *7 (W.D. Tex. Aug. 18, 2015). There, the court held that the terms
`
`“intelligent agent,” “mobile agent,” and “software agent” were indefinite because the intrinsic
`
`evidence contained “directly contradict[ory]” descriptions of the terms and there was nothing in
`
`the specification to which a POSITA could turn to resolve to discern the “contours of [such] ‘agent’
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`terms with any degree of reasonable certainty.” Id. Defendants concede that is not the case here.
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`ii) The Intrinsic Evidence Confirm That “Agent” Provides Structure.
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`Defendants next claim that the intrinsic record proves that “agent” is a nonce word
`
`because—according to Defendants—(1) independent Claim 18 (which is not asserted in this
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`ANCORA Ex. 2013, Page 12
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`Case 1:20-cv-00034-ADA Document 50 Filed 04/10/20 Page 13 of 37
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`action) recites additional actions that, in some embodiments, an “agent” must perform and (2) as
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`originally drafted, Claim 1 did not disclose the necessary hardware to “add, remove and modify a
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`license record” in the BIOS Memory. Defs. Br. at 9. Neither argument is persuasive.
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`Defendants cite nothing to support their first position. Nor do they explain how the need
`
`for one or more agents capable of performing the Claim 18 operations shows that the more limited
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`Claim 1 embodiment must be a means-plus-function term., The opposite is true: simpler claims
`
`require simpler disclosures. See Zeroclick, 891 F.3d at 1008 (relying on the fact that “[t]he basic
`
`concept behind both of the patents-in-suit is relatively simple” to hold that the terms “program”
`
`and “user interface code . . . are used not as generic terms or black box recitations”).
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`Regarding Defendants’ second argument, Defendants misunderstand the reason “agent”
`
`was added to the claims. Contrary to what Defendants argue, “agent” was not added to provide
`
`previously missing hardware. It was added to exclude the need for additional hardware. This is
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`clear from the file history, which shows that—after the Examiner issued the notice Defendants
`
`cite—the applicant spoke to the Examiner and explained the specified operation was performed
`
`solely by software. Ancora Ex. 6 (Nov. 9, 2001 Interview Summ.). After the interview, the
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`applicant thus amended the claims to include the word “agent” to refer to such software and
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`submitted the Beeble White Paper to provide further detail regarding how the software could
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`operate. Ancora Ex. 19 (Nov. 14, 2001 Remarks Made in Amendment) at ANCORA_347.
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`In short, even though the term “agent” standing alone connotes sufficient structure, the
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`specification and prosecution history further clarify that this “agent” must perform a specific
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`operation (set up of a verification structure in BIOS memory) and even provides an exemplary
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`example of how it can perform that operation (using E2PROM manipulation commands). Nothing
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`more is needed to avoid § 112 ¶ 6. Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311
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`ANCORA Ex. 2013, Page 13
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`

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`Case 1:20-cv-00034-ADA Document 50 Filed 04/10/20 Page 14 of 37
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`(Fed. Cir. 2004) (relying on the fact that the “term ‘circuit’ [wa]s coupled with a description of the
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`circuit’s operation” to conclude that “sufficient structural meaning generally will be conveyed to
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`persons of ordinary skill in the art, and § 112 ¶ 6 presumptively will not apply”); see Zeroclick,
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`891 F.3d at 1008 (holding that “the mere fact that the disputed limitations incorporate functional
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`language does not automatically convert the words into means for performing such functions”—
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`explaining “[m]any devices take their names from the functions they perform” (citation omitted)).
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`Techno View IP, Inc. v. Facebook Techs., LLC, 2018 WL 6427874 (D. Del. Dec. 7, 2018),
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`does not dictate a different result. Contrary to Defendants’ portrayal, the court held that § 112 ¶ 6
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`categorically does not apply to method claims unless (a) the word “means” is used, or (b) a
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`“structural limitation clearly constitutes the point of novelty,” in which case the accused infringer
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`must still rebut the presumption that § 112 ¶ 6 does not apply. Id.; see id. at *6-8 (holding that
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`“processor” in steps performed “with a processor” did not invoke § 112 ¶ 6).
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`iii) At a Minimum, Defendants’ Structure Is Incomplete.
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`Even if this term is subject to § 112 ¶ 6, Defendants’ construction still would be incomplete
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`because it fails to account for the alternative disclosures at 1:60-2:1 and 3:51-61. Thus, at a
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`minimum, Defendants’ proposed means-plus-function construction should be amended to permit
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`the “[a]lgorithm found at 1:60-2:1, 3:51-61, and/or 6:18-28, or their equivalents.” HTC Corp. v.
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`IPCom GmbH & Co., KG, 667 F.3d 1270, 1278 (Fed. Cir. 2012) (explaining that, “[w]hen a
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`patentee invokes such ‘means-plus-function’ claiming, the ‘claim shall be construed to cover the
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`corresponding structure, material, or acts described in the specification and equivalents thereof’”).
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`2. “set up a verification structure” (Claims 1, 3, 7, 14)
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`Ancora’s Construction
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`Defendants’ Construction
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`plain and ordinary meaning
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`
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`“forming a structure by encrypting a license record
`using a pseudo-unique key for each computer”
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`ANCORA Ex. 2013, Page 14
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`Case 1:20-cv-00034-ADA Document 50 Filed 04/10/20 Page 15 of 37
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`Defendants’ amended construction of this term2 should be rejected because it (1) misstates
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`the specification and would read out express distinctions between independent and dependent
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`claims; and (2) is premised on a fundamental mischaracterization of the prosecution history.
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`First, contrary to what Defendants suggest, the specification never limits the invention in
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`this manner. The “Summary of Invention” states only that “[t]he present invention relates to a
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`method of restricting software operation within a license limitation.” ’941 Patent at 1:39-40. And
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`the next sentence states only that this method “strongly relies on the use of a key.” Id. at 1:40-41.
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`The specification never states that the “present invention” (much less this limitation) requires
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`“forming a structure by encrypting a license record using a pseudo-unique key for each computer.”
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`The remaining portions of the specification Defendants cite only further support Ancora’s
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`position. The teaching at 1:62-65 that the verification structure “is implemented by encrypting the
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`license record (or portion thereof) using said key (or portion thereof) exclusively or in conjunction
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`with other identification information)” is expressly described as “a specific non-limiting example.”
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`Id. at 1:44-45. Similarly, the disclosure at 6:18-28 likewise is expressly described as a portion of
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`“the sequence of operations performed according to one embodiment of the invention.”
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`In fact, the portions of the specification Defendants emphasize on page 11 of their opening
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`brief itself shows why Defendants construction is wrong. As Defendants’ quoted text
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`demonstrates, even in the FIG. 2 embodiment, the specification expressly permits the “setting up”
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`step to be satisfied by actions other than “encrypting a license record using a pseudo-unique key,”
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`including “establishing or certifying the existence of a pseudo unique key in the first non-volatile
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`memory area.” ’941 Patent at 6:18-28. Thus, even if the specification contained the “present
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`2 Defendants previously proposed construing this term to mean “forming a verification structure
`using a unique key for each computer and license record information in the program.” Ancora
`addressed that prior construction in its Opening Brief.
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`ANCORA Ex. 2013, Page 15
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`Case 1:20-cv-00034-ADA Document 50 Filed 04/10/20 Page 16 of 37
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`invention” language Defendants contend, because the specification “does not uniformly refer to
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`[Defendants’ limitation] as being co-extensive with the entire i