Case 1:20-cv-00034-ADA Document 49 Filed 04/10/20 Page 1 of 38
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`ANCORA TECHNOLOGIES, INC.,
`
`CIVIL ACTION NO. 1:20-cv-0034
`
`Ancora,
`
`v.
`
`LG ELECTRONICS INC. and LG
`ELECTRONICS U.S.A., INC.,
`
`Defendants.
`
`JURY TRIAL DEMANDED
`
`ANCORA TECHNOLOGIES, INC.,
`
`CIVIL ACTION NO. 1:20-cv-0034
`
`Ancora,
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
`
`Defendants.
`
`JURY TRIAL DEMANDED
`
`DEFENDANTS’ RESPONSIVE CLAIM CONSTRUCTION BRIEF
`
`ANCORA Ex. 2014, Page 1
`
`

`

`Case 1:20-cv-00034-ADA Document 49 Filed 04/10/20 Page 2 of 38
`
`Table of Contents
`
`I.
`
`II.
`
`INTRODUCTION .............................................................................................................. 1
`
`ARGUMENT ...................................................................................................................... 2
`
`A.
`
`B.
`
`C.
`
`“using an agent to set up a verification structure in the erasable, non-
`volatile memory of the BIOS” ................................................................................ 2
`
`“set up a verification structure” .............................................................................. 7
`
`“memory of the BIOS” ......................................................................................... 10
`
`1.
`
`2.
`
`The “memory of the BIOS” is not recognized by an operating
`system as a storage device and does not have a file system.” ................... 11
`
`“memory of the BIOS” is the memory that stores the BIOS. ................... 12
`
`D.
`
`“verifying the program using at least the verification structure” .......................... 14
`
`1.
`
`2.
`
`The applicants did not limit the OS-level operations to steps
`performed by the “agent.” ......................................................................... 14
`
`The fact that the “verifying the program” step uses the verification
`structure from the erasable non-volatile memory of the BIOS, does
`not mean it operates at the BIOS-level. .................................................... 16
`
`E.
`
`“acting on the program according to the verification” .......................................... 17
`
`1.
`
`2.
`
`The antecedent basis for “the verification” of step 4 is the earlier
`step of “verifying the program using at least the verification
`structure from the erasable nonvolatile memory of the BIOS.” ............... 17
`
`The “acting” step checks for a “license” and operates at the OS-
`level. .......................................................................................................... 18
`
`“license”/“license record” ..................................................................................... 19
`
`Order of Steps ....................................................................................................... 23
`
`“BIOS” .................................................................................................................. 24
`
`“selecting a program residing in the volatile memory” ........................................ 25
`
`“program” ............................................................................................................. 26
`
`“volatile memory” ................................................................................................. 28
`
`“first non-volatile memory area of the computer” ................................................ 29
`
`F.
`
`G.
`
`H.
`
`I.
`
`J.
`
`K.
`
`L.
`
`ii
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`ANCORA Ex. 2014, Page 2
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`

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`Case 1:20-cv-00034-ADA Document 49 Filed 04/10/20 Page 3 of 38
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`
`Aloft Media, LLC v. Adobe Sys., Inc.,
`570 F. Supp. 2d 887 (E.D. Tex. 2008) .......................................................................................5
`
`Am. Med. Sys., Inc. v. Biolitec, Inc.,
`618 F.3d 1354 (Fed. Cir. 2010)................................................................................................20
`
`Ancora Techs., Inc. v. Apple, Inc.,
`744 F.3d 732 (Fed. Cir. 2014).......................................................................................... passim
`
`Ancora Techs., Inc. v. Apple Inc.,
`No. 11-CV-06357 YGR, 2012 WL 6738761 (N.D. Cal. Dec. 31, 2012) ..........................15, 28
`
`Ancora Techs., Inc. v. HTC Am., Inc.,
`908 F.3d 1343 (Fed. Cir. 2018)................................................................................................13
`
`Baldwin Graphic Sys., Inc. v. Siebert, Inc.,
`512 F.3d 1338 (Fed. Cir. 2008)................................................................................................17
`
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006)..................................................................................................19
`
`Biedermann Motech GmbH v. Acme Spine, LLC,
`No. CV 06-3619 SJO, 2007 WL 6210841 (C.D. Cal. Aug. 31, 2007) ........................24, 25, 26
`
`Collaborative Agreements, LLC v. Adobe Sys. Inc.,
`No. A-14-CV-356-LY, 2015 WL 2250391 (W.D. Tex. May 12, 2015) ...................................5
`
`Digital Retail Apps Inc. v. H-E-B, LP
`No. 6-19-cv-00167-ADA, 2020 WL 376664, (W.D. Tex. Jan. 23, 2020) .................................4
`
`Eolas Techs., Inc. v. Adobe Sys., Inc.,
`810 F. Supp. 2d 795 (E.D. Tex. 2011) .......................................................................................5
`
`Flo Healthcare Sols., LLC v. Kappos,
`697 F.3d 1367 (Fed. Cir. 2012)..................................................................................................5
`
`GE Lighting Sols., LLC v. Agilight, Inc.,
`750 F.3d 1304 (Fed. Cir. 2014)................................................................................................21
`
`Kaken Pharm. Co. v. Iancu,
`952 F.3d 1346 (Fed. Cir. 2020)................................................................................................12
`
`iii
`
`ANCORA Ex. 2014, Page 3
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`

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`Case 1:20-cv-00034-ADA Document 49 Filed 04/10/20 Page 4 of 38
`
`Kaneka Corp. v. Xiamen Kingdomway Grp. Co.,
`790 F.3d 1298 (Fed. Cir. 2015)..........................................................................................23, 24
`
`Kinetic Concepts, Inc. v. Wake Forest Univ. Health Scis.,
`No. SA-11-CV-163-XR, 2013 WL 6164592 (W.D. Tex. Nov. 25, 2013) ..................26, 27, 29
`
`Merck & Co. v. Teva Pharm. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005)................................................................................................20
`
`Mobile Telecomm. Techs., LLC v. United Parcel Serv., Inc.,
`No. 1:12-CV-3222-AT, 2014 WL 1274003 (N.D. Ga. Mar. 17, 2014) ...................................10
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed. Cir. 2008)................................................................................................11
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ...............................................................................................24
`
`Poly-Am., L.P. v. API Indus., Inc.,
`839 F.3d 1131 (Fed. Cir. 2016)..................................................................................................8
`
`Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc.,
`711 F.3d 1348 (Fed. Cir. 2013)................................................................................................21
`
`RLIS, Inc. v. Allscripts Healthcare Sols., Inc.,
`Nos. 3:12-CV-208-209, 2013 WL 3772472 (S.D. Tex. July 16, 2013).....................................5
`
`Seachange Int’l, Inc. v. C-COR Inc.,
`413 F.3d 1361 (Fed. Cir. 2005)............................................................................................9, 10
`
`SecurityProfiling, LLC v. Trend Micro Am., Inc.,
`No. 3:17-CV-1484-N, 2018 WL 4585279 (N.D. Tex. Sept. 25, 2018) .................................4, 6
`
`Thorner v. Sony Computer Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012)................................................................................................21
`
`TomTom, Inc. v. Adolph
`790 F.3d 1315 (Fed. Cir. 2015)................................................................................................20
`
`In re Varma,
`816 F.3d 1352 (Fed. Cir. 2016)................................................................................................30
`
`Verizon Calif. Inc. v. Ronald A. Katz Tech. Licensing, P.A.,
`326 F. Supp. 2d 1060 (C.D. Cal. 2003) .....................................................................................7
`
`WhitServe LLC v. GoDaddy.com, Inc.,
`No. 3:11-cv-00948-WGY, 2014 WL 5668335 (D. Conn. Nov. 4, 2014) ..................................5
`
`iv
`
`ANCORA Ex. 2014, Page 4
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`

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`Case 1:20-cv-00034-ADA Document 49 Filed 04/10/20 Page 5 of 38
`
`Williamson v. Citrix Online
`792 F.3d 1339, 1349 (Fed. Cir. 2015)....................................................................................5, 6
`
`Zeroclick, LLC v. Apple Inc.,
`891 F.3d 1003 (Fed. Cir. 2018)........................................................................................ passim
`
`Statutes
`
`35 U.S.C. § 112, ¶ 6 .................................................................................................................4, 5, 6
`
`v
`
`ANCORA Ex. 2014, Page 5
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`

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`Case 1:20-cv-00034-ADA Document 49 Filed 04/10/20 Page 6 of 38
`
`I.
`
`INTRODUCTION
`
`The ’941 Patent is burdened with a lengthy prosecution history. Because the Examiner
`
`identified several strong prior art references, the applicants were forced to make numerous
`
`concessions about the scope of their invention to overcome pre-existing technology. The Examiner
`
`relied upon the applicants’ concessions in allowing the claims. Ancora ignores the quid pro quo
`
`between the applicants and the USPTO in gaining allowance.
`
`The ’941 Patent is also encumbered with an extensive litigation history. During the course
`
`of prior litigations, Ancora was forced to describe the alleged invention of the ’941 Patent narrowly
`
`in order to salvage the claims. Ancora’s opening brief makes clear that Ancora seeks to recapture
`
`the claim scope that was surrendered during prosecution and disclaimed in prior litigations. Ancora
`
`should not be allowed to do so. In the instant litigation, Ancora describes the alleged invention in
`
`a manner that deviates significantly from both Ancora’s and the applicants’ earlier depictions of
`
`the same purported invention, as exemplified below:
`
`•
`
`•
`
`“agent”: During prosecution, the applicants portrayed the claimed function of the “agent” as
`
`novel, i.e., something that defied conventional wisdom by storing a verification structure in
`
`the otherwise inaccessible non-volatile memory area of the BIOS. Now, Ancora argues that
`
`the “agent” is nothing more than a conventional “software program or routine.”
`
`“memory of the BIOS”: In the Apple and HTC Litigations, Ancora repeatedly stated that the
`
`inventors used “the already-existing computer memory in which the BIOS was stored.” Despite
`
`acknowledging that the alleged invention used conventional BIOS memory, Ancora now
`
`argues that the invention is not limited by the constraints of such conventional memory. Ancora
`
`also argues that BIOS memory can be any computer memory so long as it is tenuously
`
`“associated with” BIOS instructions.
`
`1
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`ANCORA Ex. 2014, Page 6
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`

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`Case 1:20-cv-00034-ADA Document 49 Filed 04/10/20 Page 7 of 38
`
`•
`
`•
`
`•
`
`•
`
`“verifying the program”/“acting on the program”: In the Apple Litigation, Ancora took the
`
`position that the applicants’ remark to the USPTO “was referring to the ‘invention’ of claim 1,
`
`i.e., the software that performs the claimed method steps.” Now, Ancora argues that the same
`
`remark was referring to only a portion of the alleged invention, i.e., the “using an agent”
`
`limitation of claim 1.
`
`“license”: In the HTC Litigation, Ancora argued that the plain and ordinary meaning was
`
`sufficient. Now, Ancora proposes that the term should be construed as “authorization or
`
`verification” to expand the scope of the term to capture concepts unrelated to a license.
`
`“program”: In the Apple Litigation, Ancora argued that the term should be construed as “a set
`
`of instructions that can be executed by a computer.” Now, Ancora seeks a truncated
`
`construction to again expand the scope of the claim.
`
`“selecting a program”: In the Microsoft Litigation, Ancora argued that the term meant
`
`“running a program,” equating selecting with running. Now, Ancora believes that “selecting”
`
`is one of those “plain English words” that require no construction.
`
`The significant and consistent deviations in Ancora’s positions demonstrate that Ancora’s
`
`proposals are less driven by the intrinsic evidence and more so by its litigation strategy.1
`
`II.
`
`ARGUMENT
`
`A.
`
`“using an agent to set up a verification structure in the erasable, non-volatile
`memory of the BIOS”
`
`1 Consistent with the Court’s Scheduling Order, Defendants served a revised set of constructions
`on March 13, 2020 in an attempt to narrow the disputes between the parties. Ex. 25. Defendants’
`revised constructions can be found in Defendants’ opening brief. In many instances, Ancora does
`not address Defendants’ revised constructions. It is unclear if this was purposeful or by clerical
`error, but the prejudice to the Defendants is tangible. Instead of responding to Ancora’s critique of
`Defendants’ final constructions now, Defendants’ first opportunity to respond to Ancora’s
`arguments may arise in the more limited time frame and space of the reply brief. To the extent
`Ancora raises arguments in its responsive brief that could have been raised in its opening brief,
`Defendants reserve the right to request the Court to strike such arguments or grant Defendants
`additional pages and time for reply.
`
`2
`
`ANCORA Ex. 2014, Page 7
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`

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`Case 1:20-cv-00034-ADA Document 49 Filed 04/10/20 Page 8 of 38
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`
`
`Ancora acknowledges that, according to the prosecution history, “[p]rior to the ’941
`
`invention . . . it was not contemplated that operating system (‘OS’) level programs could interact
`
`with the BIOS at all.” (Dkt. 44 at 2.) As Ancora recognizes, the ’941 Patent purportedly overcomes
`
`this shortcoming by using an “agent” to defy conventional wisdom:
`
`Indeed, the Examiner emphasized that he was allowing the ’941 Patent over the
`prior art precisely because ‘the closest prior art systems, singly or collectively, do
`not teach licensed programs running at the OS level’ interacting with BIOS, and
`‘the present invention overcomes this difficulty by using an agent to setup a
`verification structure in the erasable non-volatile memory area of the BIOS.’
`
`Id. at 14 (citing Dkt. 44-3) (emphasis in original). The claimed “agent” was thus allegedly very
`
`specific, unique, unconventional, and not known to person of ordinary skill, and thus is precisely
`
`the type of feature that requires further description by the applicants. The applicants chose to
`
`describe this purportedly novel “agent” using functional language. Now, to avoid the consequence
`
`of relying upon functional claiming, Ancora argues that an “agent” is merely a conventional
`
`“software program or routine” that was well-known to a person of ordinary skill in the art at the
`
`time of the alleged invention. These positions are fundamentally inconsistent—the “agent” cannot
`
`simultaneously be a novel concept, hitherto unknown, and a conventional software program or
`
`routine well-known to person of ordinary skill. Notably, Ancora does not identify a particular
`
`conventional program that existed in the prior art and that could perform the claimed function; but
`
`rather, in a transparent attempt to capture nearly every possible way of achieving the claimed
`
`function, relies broadly on any “software program or routine.”
`
`Contrary to Ancora’s position, the term “agent” is not “uniformly define[d]” to refer to a
`
`software program or routine. (Dkt. 44 at 19). Rather, those of skill in the art at the time of the
`
`alleged invention would understand that an “agent” “may be software, hardware, or both.” (Dkt.
`
`45-1 at ¶ 55 (emphasis added).) Ancora argues that the Examiner “repeatedly acknowledged his
`
`understanding that the word ‘agent’ refers to such programs,” citing the Examiner’s reliance on
`
`3
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`ANCORA Ex. 2014, Page 8
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`

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`Case 1:20-cv-00034-ADA Document 49 Filed 04/10/20 Page 9 of 38
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`the programs disclosed in Misra. (Dkt. 44 at 19.) But there was no finding by the Examiner that an
`
`“agent” must be software in all instances.2
`
`However, even if, arguendo, the term “agent” is assumed to mean “a software program or
`
`routine” as Ancora contends, the claim would still invoke pre-AIA 35 U.S.C. § 112, ¶ 6. A software
`
`program or routine, particularly one performing the allegedly novel aspect of the invention, does
`
`not itself connote sufficient structure to avoid means-plus-function claiming. The Court’s recent
`
`decision in Digital Retail Apps Inc. v. H-E-B, LP is instructive. No. 6-19-cv-00167-ADA, 2020
`
`WL 376664, at *5 (W.D. Tex. Jan. 23, 2020) (“[E]ven though ‘module’ refers to software, and
`
`‘communication module’ certainly refers to software related to communication, this is nowhere
`
`near the ‘sufficiently definite structure’ required by Federal Circuit precedent.”). Similar to Digital
`
`Retail, Ancora points to E2PROM manipulation commands as an example of “how [the agent]
`
`accomplishes the specified operation.” (Dkt. 44 at 18.) Such software commands are “not an
`
`algorithm, but rather just a functional label for specific types of software.” Digital Retail, 2020
`
`WL 376664, at * 6.
`
`Ancora argues that “a long list of courts have found that references to ‘software’ and like
`
`words connote sufficient structure to avoid § 112, ¶ 6,” (Dkt. 44 at 19). However, all but two
`
`cases—Zeroclick, LLC v. Apple Inc., 891 F.3d 1003 (Fed. Cir. 2018) and SecurityProfiling, LLC
`
`v. Trend Micro Am., Inc., No. 3:17-CV-1484-N, 2018 WL 4585279 (N.D. Tex. Sept. 25, 2018)—
`
`2 Similarly, Ancora’s reliance on Defendants’ patents is irrelevant and untimely. (Dkt. 44 at 19.)
`Defendants’ patents have no bearing on how the term “agent” is being used in the context of the
`’941 Patent. Ancora relies solely on an attorney declaration. (Dkt. 44-1 at ¶¶ 15-18.) Among its
`many shortcomings, Ancora has not demonstrated that all of the cited patents actually “describe
`and/or claim an agent” or that the patents were filed at or around the time of the alleged invention
`of the ’941 Patent. Ancora also failed to provide an analysis of the full context of the claims and
`specifications it relies upon. Ancora’s examples further support Defendants’ positions. The terms
`“upgrade agent program” and “software agent” purportedly used in Defendants’ patents include
`modifiers that make clear that the term “agent” does not itself necessarily refer to software. Finally,
`Ancora did not properly disclose these patents as extrinsic evidence during the parties’ scheduled
`exchange. See Ex. 26 (Ancora’s March 6 Disclosure of Extrinsic Evidence).
`
`4
`
`ANCORA Ex. 2014, Page 9
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`

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`Case 1:20-cv-00034-ADA Document 49 Filed 04/10/20 Page 10 of 38
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`predate the controlling case, Williamson v. Citrix Online, which “expressly overrul[ed] the
`
`characterization of [the presumption that a limitation lacking the word ‘means’ is not subject to §
`
`112] as ‘strong.’” 792 F.3d 1339, 1349 (Fed. Cir. 2015). Both of the cited post-Williamson cases
`
`are inapposite. And, as Defendants demonstrated in their opening brief, a number of courts have
`
`found terms like “software” not to indicate sufficiently definite structure post-Williamson. (Dkt.
`
`45 at 8, n. 4.)3
`
`In Zeroclick, the Federal Circuit held that the terms “program” and “user interface code”
`
`did not invoke § 112, ¶ 6 based in large part on the context of the claims, which the Court found
`
`“otherwise strongly suggest[ed] the plain and ordinary meaning of the terms.” Zeroclick, 891 F.3d
`
`at 1008. Regarding the term “program,” the Federal Circuit noted that the preamble of the
`
`associated claims recited that the invention may comprise “an update of an existing program.” Id.
`
`(emphasis in original). The claim language “similarly tether[ed] ‘user interface code’—code meant
`
`to be updated using two configuration changes recited in the claim—to the code ‘stored in a
`
`memory connected to the processor.’” Id. Accordingly, the Federal Circuit found that the terms
`
`were “used not as generic terms or black box recitations of structure or abstractions, but rather as
`
`specific references to conventional graphical user interface programs or code, existing in prior art
`
`3 The pre-Williamson cases cited by Ancora either invoke the explicitly-overruled “strong
`presumption” that a limitation lacking the word “means” is not subject to § 112, ¶ 6 or state that
`terms such as “computer code” are not subject to § 112, ¶ 6 when coupled with a description of
`their operation (and not just their function, as is the case with “agent” in the ’941 Patent). See
`Collaborative Agreements, LLC v. Adobe Sys. Inc., No. A-14-CV-356-LY, 2015 WL 2250391, at
`*13-14 (W.D. Tex. May 12, 2015) (relying on the vacated Williamson opinion and analogizing the
`term “code segments” to “modules” to find that the term connoted sufficient structure); WhitServe
`LLC v. GoDaddy.com, Inc., No. 3:11-cv-00948-WGY, 2014 WL 5668335, at *4 (D. Conn. Nov.
`4, 2014) (relying on Flo Healthcare Sols., LLC v. Kappos, 697 F.3d 1367, 1374 (Fed. Cir. 2012)
`(overruled by Williamson)); RLIS, Inc. v. Allscripts Healthcare Sols., Inc., Nos. 3:12-CV-208-209,
`2013 WL 3772472, at *14 (S.D. Tex. July 16, 2013) (relying on the pre-Williamson standard);
`Eolas Techs., Inc. v. Adobe Sys., Inc., 810 F. Supp. 2d 795, 810 (E.D. Tex. 2011) (finding sufficient
`structure to avoid § 112, ¶ 6 where the claims provided a description of the operation of the
`“computer readable code”); Aloft Media, LLC v. Adobe Sys., Inc., 570 F. Supp. 2d 887, 898 (E.D.
`Tex. 2008) (holding that the term “computer code” was not subject to § 112, ¶ 6 because it was
`coupled with a description of the operation of the software).
`
`5
`
`ANCORA Ex. 2014, Page 10
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`Case 1:20-cv-00034-ADA Document 49 Filed 04/10/20 Page 11 of 38
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`at the time of the inventions.” Id. (emphasis added).
`
`Similarly, in SecurityProfiling, the term “code” was found to recite sufficient structure in
`
`part because the claim at issue made clear that the term was referring to a specific structure that
`
`was well-known at the time of the invention, i.e., that “to one skilled in the art, [the claim] would
`
`suggest any one of several well known structures for conditional execution,” and in part because
`
`the defendant did not advance any extrinsic evidence that might overcome the presumption that §
`
`112, ¶ 6 does not apply. SecurityProfiling, 2018 WL 4585279 at *3.
`
`There is no evidence here that the “agent” term explicitly references a conventional
`
`program existing in the prior art, as in Zeroclick and SecurityProfiling. In fact, as discussed above,
`
`the ’941 Patent was allowed in large part because the Examiner found that “the closest prior art
`
`systems, singly or collectively, do not teach licensed programs running at the OS level interacting
`
`with a program verification structure stored in the BIOS to verify the program using the
`
`verification structure,” and that “[t]he present invention overcomes this difficulty by using an agent
`
`to set up a verification structure in the erasable, non-volatile memory of the BIOS.” (Dkt. 45-11 at
`
`4.) Critically, the term “agent” cannot be conventional as that understanding would undermine the
`
`key point for allowance. (Dkt. 45 at 5-6.) Dr. Zadok confirms Defendants’ position. (Dkt. 45-1 at
`
`¶¶ 52-60.)
`
`Ancora’s argument that Defendants have somehow admitted that the term “agent” connotes
`
`sufficiently definite structure by citing to 6:18-28 for the associated algorithm, (Dkt. 44 at 20), is
`
`illogical and unsupported, and would render means-plus-function claiming impossible.
`
`“Construing a means-plus-function claim term is a two-step process. The court must first identify
`
`the claim function . . . . Then, the court must determine what structure, if any, disclosed in the
`
`specification corresponds to the claimed function.” Williamson, 792 F.3d at 1351. According to
`
`6
`
`ANCORA Ex. 2014, Page 11
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`

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`Case 1:20-cv-00034-ADA Document 49 Filed 04/10/20 Page 12 of 38
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`Ancora, by performing the second step of identifying the corresponding structure in the
`
`specification, Defendants have somehow conceded that the claim term is not a means-plus-
`
`function term. By Ancora’s logic, no term could ever be a means-plus-function term unless the
`
`term had no corresponding structure described in the specification (in which case it would be
`
`indefinite). No case Ancora cites stands for such a proposition. (See Dkt. 44 at 20 (citing pre-
`
`Williamson case: Verizon Calif. Inc. v. Ronald A. Katz Tech. Licensing, P.A., 326 F. Supp. 2d
`
`1060, 1106 (C.D. Cal. 2003)).) Unlike Verizon, Defendants do not concede that the term “agent”
`
`connotes “some” structure. Rather, Defendants identify the possible structure in the specification,
`
`corresponding to the recited function of the “agent.”
`
`Finally, Ancora argues that the ’941 Patent discloses two additional embodiments of this
`
`limitation at 1:60-2:1 and 3:51-61. (Dkt. 44 at 20-21.) The first embodiment (1:60-2:1), which is
`
`found in the “Summary of the Invention,” is incomplete and largely cumulative of the algorithm
`
`found at 6:18-28. It also adds no definitive structure. Additionally, Ancora’s citation is too narrow,
`
`and should extend to 1:40-2:1. The patent identifies at 1:40-43 “a key . . . which ha[s] been written
`
`into the non-volatile memory of a computer.” Ancora’s first embodiment makes use of “said key.”
`
`The second embodiment (3:51-61) is more narrow and relates to different claim elements, i.e., the
`
`use of a license authentication bureau in dependent claims 2 and 3. Neither of these embodiments
`
`clarifies the structure of the “agent” and would serve only to confuse the jury.
`
`B.
`
`“set up a verification structure”
`
`Ancora argues that the term requires “no construction” because the “claim already states
`
`in the clear language what is required.” (Dkt. 44 at 22.) In direct contradiction to Ancora’s current
`
`stance, the applicants were not content to rely simply upon the “clear language” of the claim.
`
`Instead, they unambiguously told the Examiner that the “present invention” required setting up a
`
`verification structure by encrypting the license record using a key that was unique to the computer.
`
`7
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`ANCORA Ex. 2014, Page 12
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`Case 1:20-cv-00034-ADA Document 49 Filed 04/10/20 Page 13 of 38
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`(Dkt. 45-6 at 8.) Ancora should not be allowed to disavow the statements the applicants made
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`about their invention to gain allowance. Poly-Am., L.P. v. API Indus., Inc., 839 F.3d 1131, 1136
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`(Fed. Cir. 2016) (“[A]n inventor may disavow claims lacking a particular feature when the
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`specification describes ‘the present invention’ as having that feature.”) (internal citations omitted).
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`Specifically, during prosecution, the Examiner rejected the pending claims as anticipated
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`by Ginter, which the Examiner argued disclosed, inter alia, “setting up the verification structure.”
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`(Dkt. 45-5 at 2-3.) To overcome the rejection, the applicants disputed the Examiner’s contention
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`that Ginter disclosed setting up a verification structure and elaborated that “[i]n the present
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`invention, a unique key is stored in . . . the computer” and a “license record is extracted . . . and
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`encrypted using the unique key stored in the computer.” (Dkt. 45-6 at 8 (emphasis added).) The
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`applicants further emphasized the importance of the key and of encryption using that key: “In the
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`present method, the verification structure is formed using a unique key for each computer and
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`license record information in the software.” Id. (emphasis added). The applicants did not simply
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`rely upon the “clear language” of the claim to overcome the prior art. In subsequent
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`correspondence with the USPTO, the applicants broadened the claims to require a pseudo-unique
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`key instead of a unique key.4 Through amendment, the term “unique key” was removed from the
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`preamble of claim 1; however, the applicants continued to acknowledge that the “pseudo-unique
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`key [was] recited in claims 1 and 20.” (Dkt. 45-10 at 3 (emphasis added).) Defendants’
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`construction adopts the applicants’ quid pro quo regarding the scope of the claims.
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`The specification and the claims also underscore that the purported invention requires
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`encryption using a key that is unique to the computer. The “Summary of the Invention” states that
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`4 The specification and claims refer to both a unique key and a pseudo-unique key. The set of
`pseudo-unique keys is broader and encompasses unique keys. As a result, the applicants broadened
`their claims when they deleted “unique key” from the preamble of claim 1, but limited the claim
`to “pseudo-unique key.”
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`8
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`ANCORA Ex. 2014, Page 13
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`Case 1:20-cv-00034-ADA Document 49 Filed 04/10/20 Page 14 of 38
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`the method of the “present invention . . . strongly relies upon the use of the key and of a record.”
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`’941 Patent at 1:39-41 (emphasis added). The Summary states that the verification structure “is
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`implemented by encrypting the license record . . . using said key . . . as an encryption key.” Id. at
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`1:62-65 (emphasis added). The remainder of the specification is consistent with the Summary. See,
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`e.g., id. at 6:18-28. The claims also require that a “pseudo-unique key” is present in claim 1. Claim
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`8 recites “the key,” which Ancora admits refers to the “pseudo-unique key.” (Dkt. 44 at 3) Claim
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`8 depends from claim 1 through dependent claim 6, which recites unrelated elements. Thus, “the
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`pseudo-unique key” finds antecedent basis in claim 1’s recitation of “set[ting] up the verification
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`structure,” which employs a pseudo-unique key to encrypt the license record.
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`Attempting to evade the import of the applicants’ statements to the Examiner, Ancora
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`quibbles with Defendants’ initial proposal. Ancora raises two objections, neither of which can
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`survive scrutiny. First, Ancora argues that the specification and the claims expressly contemplate
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`embodiments that do not use a “key” to setup a verification structure, citing the specification at
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`2:62-3:3. (Dkt. 44 at 21-22.) But that portion of the specification simply regurgitates the claim
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`language and calls for “setting up a verification structure in the non-volatile memories.” ’941
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`Patent at 2:67-3:1. As demonstrated above, the applicants admitted during prosecution that the step
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`of “setting up a verification structure” requires the use of a pseudo-unique key to encrypt the
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`license record. The cited portion does not “expressly” exclude use of a key in this step.
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`Second, Ancora argues that Defendants’ construction conflates the “set up the verification
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`step” with the process for “establishing a license record” discussed in dependent claim 8. (Dkt. 44
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`at 21.) But the doctrine of claim differentiation is not a “hard and fast rule of construction” and
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`“can not broaden claims beyond their correct scope, determined in light of the specification and
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`the prosecution history and any relevant extrinsic evidence.” Seachange Int’l, Inc. v. C-COR Inc.,
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`9
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`ANCORA Ex. 2014, Page 14
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`Case 1:20-cv-00034-ADA Document 49 Filed 04/10/20 Page 15 of 38
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`413 F.3d 1361, 1369 (Fed. Cir. 2005) (internal quotation marks omitted). Ancora’s argument
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`contradicts both the specification and the prosecution history. The specification states that the step
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`of setting up a verification structure requires two sub-steps—one, establishing the existence of a
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`pseudo-unique key, and two, establishing a license record location. ’941 Patent at 6:18-28. The
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`latter step of “establishing a license record” in turn requires first encrypting the license record and
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`then establishing the encrypted license record in the memory. Id. Defendants’ construction
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`recognizes that encrypting the license record using a key is part of the process that sets up the
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`verification structure and is faithful to how the applicants characterized this step to the Examiner.
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`See supra at 8-9; Seachange Int’l, 413 F.3d at 1372-73 (“Where an applicant argues that a claim
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`possesses a feature that the prior art does not possess in order to overcome a prior art rejection, the
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`argument may serve to narrow the scope of otherwise broad claim language.”).
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`C.
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`“memory of the BIOS”
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`Ancora incorrectly argues that the term “memory of th