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` Paper 7
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` Date: February 16, 2021
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TCT MOBILE (US) INC.,
`HUIZHOU TCL MOBILE COMMUNICATION CO. LTD., and
`SHENZHEN TCL CREATIVE CLOUD TECHNOLOGY CO., LTD.,
`Petitioner,
`v.
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`IPR2020-01609
`Patent 6,411,941 B1
`____________
`
`
`
`
`
`
`Before THU A. DANG, JONI Y. CHANG, and KEVIN W. CHERRY,
`Administrative Patent Judges.
`
`
`CHANG, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`HTC v. Ancora
`Review of U.S. Patent 6,411,941
`HTC Exhibit 1016
`
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`IPR2020-01609
`Patent 6,411,941 B1
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`
`INTRODUCTION
`I.
`TCT Mobile (US) Inc., Huizhou TCL Mobile Communication Co.,
`Ltd., and Shenzhen TCL Creative Cloud Technology Co., Ltd. (collectively,
`“Petitioners”) filed a Petition requesting an inter partes review (“IPR”) of
`claims 1−3, 6−14, and 16 (“the challenged claims”) of U.S. Patent No.
`6,411,941 B1 (Ex. 1001, “the ’941 patent”). Paper 1 (“Pet.”), 1. Ancora
`Technologies, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 7,
`“Prelim. Resp.”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless the information presented in the petition “shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” For the reasons stated
`below, we determine that Petitioner has established a reasonable likelihood
`that it would prevail with respect to at least one claim. We hereby institute
`an inter partes review as to all of the challenged claims of the ’941 patent
`and all of the asserted grounds of unpatentability.
`
`A. Related Matters
`The parties indicate that the ’941 patent is involved in the following
`proceedings: Ancora Technologies, Inc. v. TCT Mobile (US) Inc., 2:20-cv-
`01252 (C.D. Cal.); Ancora Technologies, Inc. v. Lenovo Group Limited, No.
`1:19-cv-01712 (D. Del.); Ancora Technologies, Inc. v. Sony Corp., No. 1:19-
`cv-01703 (D. Del.); Ancora Technologies, Inc. v. LG Electronics, Inc., No.
`1:20-cv-00034 (W.D. Tex.); Ancora Technologies, Inc. v. Samsung
`Electronics Co., Ltd., No. 6:19-cv-00385 (W.D. Tex.); Ancora Technologies,
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`Inc. v. HTC America, Inc., No. 2:16-cv-01919 (W.D. Wash.); and Samsung
`Electronics Co., Ltd. v. Ancora Technologies, Inc., IPR2020-01184 (PTAB).
`Pet. 1; Paper 5, 1−2. The ’941 patent also was involved in ex parte
`Reexamination No. 90/010,560. Ex. 1001, 8−9 (Ex Parte Reexamination
`Certificate issued on June 1, 2010, confirming the patentability of claims
`1−19 and indicating that no amendments have been made to the patent).
`
`B. The ’941 patent
` The ’941 patent discloses a method of restricting software operation
`within a license limitation that is applicable for a computer having a first
`non-volatile memory area, a second non-volatile memory area, and a volatile
`memory area. Ex. 1001, code (57). According to the ’941 patent, the
`method includes the steps of selecting a program residing in the volatile
`memory, setting up a verification structure in the non-volatile memories,
`verifying the program using the structure, and acting on the program
`according to the verification. Id.
`Figure 1 of the ’941 patent is reproduced below.
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`Figure 1 above shows a schematic diagram of computer processor 1
`and license bureau 7. Id. at 5:9−19. Computer processor 1 is associated
`with input operations 2 and output operations 3. Id. Computer processor 1
`contains first non-volatile memory area 4 (e.g., the ROM section of the
`Basic Input / Output System (“BIOS”)), second non-volatile memory area 5
`(e.g., the E2PROM section of the BIOS), and volatile memory area 6 (e.g.,
`the internal RAM memory of the computer). Id.
`
`C. Illustrative Claim
`Of the challenged claims, only claim 1 is independent. Claims 2, 3,
`6−14, and 16 directly or indirectly depend from claim 1. Claim 1 is
`illustrative:
`1. A method of restricting software operation within a license for
`use with a computer including an erasable, non-volatile memory
`area of a BIOS of the computer, and a volatile memory area; the
`method comprising the steps of:
`selecting a program residing in the volatile memory,
`using an agent to set up a verification structure in the erasable,
`non-volatile memory of the BIOS, the verification structure
`accommodating data that includes at least one license record,
`verifying the program using at least the verification structure
`from the erasable non-volatile memory of the BIOS, and
`acting on the program according to the verification.
`Ex. 1001, 6:59:67–7:4 (emphasis added).
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`1. Prior Art Relied Upon
`Petitioner relies upon the references listed below (Pet. 5):
`
`
`
`
`
`Reference
`Hellman
`
`Chou
`
`Schneck
`
`
`Date
`Apr. 14, 1987
`
`Apr. 6, 1999
`
`Aug. 3, 1999
`
`Exhibit No.
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`2. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 6):
`
`Claims Challenged
`
`35 U.S.C. §
`
`References
`
`1, 2, 11, 13
`
`103(a)
`
`Hellman, Chou
`
`1−3, 6−14, 16
`
`103(a)
`
`Hellman, Chou, Schneck
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, we construe a patent claim “using the same
`claim construction standard that would be used to construe the claim in a
`civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2019).
`Under this standard, the words of a claim are generally given their “ordinary
`and customary meaning,” which is the meaning the term would have to a
`person of ordinary skill at the time of the invention, in the context of the
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`entire patent including the specification. See Phillips v. AWH Corp., 415
`F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc).
`Petitioner asserts that the claims of the ’941 patent have been
`construed by several courts, and it does not believe that any claim
`construction are needed for the purposes of this review. Pet. 20−21 (citing
`Exs. 1011−1014). Patent Owner asserts that those district court
`constructions should be adopted for this proceeding and that all other claim
`terms be given their plain and ordinary meaning. Prelim. Resp. 6.
`In light of the parties’ arguments and supporting evidence in this
`preliminary record, we find that it is necessary to construe only the claim
`term “license record” expressly for purposes of this Institution Decision.
`See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (noting that “we need only
`construe terms ‘that are in controversy, and only to the extent necessary to
`resolve the controversy’”).
`
`“license record”
`Claim 1 recites “using an agent to set up a verification structure in the
`erasable, non-volatile memory of the BIOS, the verification structure
`accommodating data that includes at least one license record.” Ex. 1001,
`6:64−67 (emphasis added).
`In its Preliminary Response, Patent Owner argues that the term
`“license record” should be construed as “a record from a licensed program
`with information for verifying that licensed program,” suggesting that a
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`“license record” is required to be formed from a licensed program. Prelim.
`Resp. 16−18. Patent Owner relies on the District Court’s claim construction
`order entered in Ancora Technologies, Inc. v. Apple Inc., No. 11:cv-06357
`(N.D. Cal.) (“Ancora v. Apple”) (Ex. 1011, 16−18) and the District Court’s
`claim construction order entered in Ancora Technologies, Inc. v. TCT Mobile
`(US), Inc., No. 1902192-GW-ADSx (C.D. Cal.) (“Ancora v. TCT Mobile”)
`(Ex. 2002, 9−11), for support. Prelim. Resp. 16.
`Based on the evidence in the present record, we decline to adopt
`Patent Owner’s proposed claim construction because it would improperly
`import a limitation from a preferred embodiment disclosed in the
`Specification into the claims. The United States Court of Appeal for the
`Federal Circuit “has repeatedly cautioned against limiting the claimed
`invention to preferred embodiments or specific examples in the
`specification.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47
`(Fed. Cir. 2015). Significantly, “it is the claims, not the written description,
`which define the scope of the patent right.” Id. at 1346.
`A claim term should be given its ordinary meaning in the pertinent
`context, unless the patentee has made clear its adoption of a different
`definition or otherwise disclaimed that meaning. See, e.g., Thorner v. Sony
`Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Here, as
`the District Court explained in Ancora v. Apple, “[n]either the claim nor the
`specification [of the ’941 patent] defines ‘license record.’” Ex. 1011, 17.
`Patent Owner does not explain why the plain and ordinary meaning of the
`term “license record,” in the context of the ’941 patent, requires a “license
`record” to be formed from a licensed program. Prelim. Resp. 16−18.
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`The Specification does not support Patent Owner’s position that a
`“license record” is required to be formed from a licensed program. The
`Specification expressly discloses that “according to the invention, each
`application program that is to be licensed to run on the specified computer,
`is associated with a license record.” Ex. 1001, 1:53−55 (emphasis added).
`A license record “consists of author name, program name and number of
`licensed users (for network).” Id. at 1:55−57. As the District Court
`explained in Ancora v. TCT Mobile, the Specification shows that “[t]he
`license record may be formed from fields or contends of the licensed
`program,” but it is not required to. Ex. 2002, 9 (citing Ex. 1001, 5:46−51,
`6:7−10) (emphasis added).
`Only in the “Detailed Description of a Preferred Embodiment”
`section, the Specification describes “the licensed-software-program includes
`contents used to form a license-record.” Ex. 1001, 5:25−29, 6:7−10.
`Notably, claim 1 itself does not recite such a requirement. Therefore,
`adopting Patent Owner’s proposed claim construction would improperly
`import a limitation from a preferred embodiment into the claim. Williamson,
`792 F.3d at 1346−47.
`Furthermore, Patent Owner’s reliance on the District Court’s claim
`construction order in Ancora v. Apple (Ex. 1011, 16−18) is misplaced.
`Prelim. Resp. 16. The District Court in Ancora v. Apple did not address the
`issue of whether a “license record” is required to be formed from a licensed
`program. Ex. 1011, 16−18. The District Court was merely resolving the
`issue of “whether the term ‘license record’ is a record that identifies the
`licensed program and the number of licensed user, as Apple urges, or more
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`broadly, information for verifying a licensed program, as Ancora contends.”
`Id. at 16−18. Therefore, Patent Owner’s reliance on the District Court’s
`claim construction order in Ancora v. Apple is misplaced.
`Also Patent Owner’s reliance on the District Court’s claim
`construction order in Ancora v. TCT Mobile is misplaced, as the District
`Court in that case was resolving the issue of “whether a license record
`requires ‘information indicating a right to use the program’ or just
`information for verifying the program.” Ex. 2002, 9. Contrary to Patent
`Owner’s proposed claim construction that requires a “license record” to be
`formed from a licensed program, the District Court in Ancora v. TCT Mobile
`made clear that “[t]he license record may be formed from fields or contents
`of the licensed program,” but it is not required to. Id. at 9 (citing Ex. 1001,
`5:46−51; 6:7−10). Therefore, Patent Owner’s reliance on the District
`Court’s claim construction order in Ancora v. TCT Mobile is misplaced.
`In light of the claim language, the Specification, and the evidence in
`this present record, we determine that a “license record” associated with a
`licensed program is “a record having information for verifying that licensed
`program” for purposes of this Decision. And we decline to adopt Patent
`Owner’s proposed construction that requires a “license record” to be formed
`from a licensed program.
`
`B. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when in evidence, objective
`indicia of nonobviousness.1 See Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966).
`
`C. Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(quotation marks omitted).
`Here, Petitioner asserts that a person of ordinary skill in the art in the
`context of the ’941 patent “would have had been at least a B.S. degree in
`computer science, computer engineering, or electrical engineering (or
`equivalent experience)” and “at least two years of experience with computer
`science and computer engineering, including information encryption,
`computer architecture, and firmware programming,” citing to the declaration
`
`
`1 Neither party presents evidence or arguments regarding objective evidence
`of nonobviousness in the instant proceeding at this time.
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`of Andrew Wolfe, Ph.D., for support. Pet. 21 (citing Ex. 1003 ¶¶ 21−25).
`At this juncture, Patent Owner does not dispute that assessment. See
`generally Prelim. Resp.
`For purposes of this Decision, we adopt the level of ordinary skill as
`articulated by Petitioner because, based on the current record, this proposal
`appears to be consistent with the ’941 patent, the asserted prior art, and
`supported by the testimony of Dr. Wolfe.
`
`D. Overview of the Asserted Prior Art
`Hellman (Exhibit 1004)
`
`Hellman discloses a method and an apparatus in which use of a
`software package can be authorized for a particular base unit a specific
`number of times. Ex. 1004, 4:37−40. Figure 1 of Hellman is reproduced
`below:
`
`
`Figure 1 above illustrates a block diagram of a pay-per-use software
`control system. Id. at 5:1−2. Base unit 12 communicates with authorization
`and billing unit 13 over an insecure communication channel 11, using
`transmitter-receiver units 14, 16. Id. at 5:39−42. The user at base unit 12
`obtains software package 17 by purchasing it and requests for software use.
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`Id. at 5:51−59. Authorization and billing unit 13 receives the user’s request,
`generates authorization A for unit 12 to use software package 17 an
`additional N times, and sends authorization A to base unit 12. Id. at 6:3−8.
`Figure 8 of Hellman is reproduced below.
`
`
`Figure 8 above depicts an implementation of base unit 12 during use
`of a software package. Id. at 10:33−34. Software package 17 is connected
`to base unit 12 and a signal representing software package 17 is operated on
`by one-way hash function generator 33 to produce an output signal which
`represents hash value H. Id. at 10:34−38. Signal H is transmitted to update
`unit 36 to indicate which software package is being used. Id. at 10:38−40.
`Update unit 36 uses value H as an address to non-volatile memory 37, which
`responds with a signal representing M, the number of uses of software
`package 17 which are still available. Id. at 10:40−43.
`If value M is greater than 0, then update unit 36 sends a control signal
`to switch 41 which activates software player 42, allowing it to use software
`package 17. Id. at 10:44−46. Update unit 36 also decrements M to M−1 and
`stores this as the new value in address H in non-volatile memory 37. Id. at
`12
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`10:46−49. If M=0, then update unit 36 does not change the contents of non-
`volatile memory 37, but neither does it send a control signal to activate
`software player 42. Id. at 10:50−53. Thus, the user is prevented from using
`software package 17 for which he does not have current authorized use. Id.
`at 10:53−54.
`
`Chou (Exhibit 1005)
`Chou discloses an apparatus and a method for discouraging computer
`theft. Ex. 1005, code (57). Chou’s invention requires that a user enters a
`unique word or number related to the particular computer each time the
`computer is powered up. Id. at 2:11−14. Chou discloses a security routine
`that is stored in the BIOS memory. Id. at 2:14−16. The security routine
`requires verification of a password entered by the user, or a verification of a
`quantity read from an externally connected memory device. Id. at 2:16−18.
`Chou also discloses that, at the time of its invention, “[r]ecent changes
`in the computer BIOS memory storage devices permit writing data to the
`BIOS memory, offering the opportunity to provide password protection
`within the same memory which stores the BIOS routines.” Id. at 1:63−66.
`And, “any attempt to delete the protection will result in the BIOS routine
`being disabled, disabling the boot up process.” Id. at 1:66−2:1. “EEPROM
`flash devices may be programmed with BIOS routines which permit the user
`to enter data without requiring the computer to be returned to the
`manufacture.” Id. at 2:2−4. According to Chou, its “invention makes use of
`these new BIOS memory devices for effecting security measures which
`discourage theft.” Id. at 2:4−7.
`
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`Schneck (Exhibit 1006)
`
`Schneck discloses a technique that “controls access to and use and
`distribution of data.” Ex. 1006, 6:49−50. Schneck’s technique can be used
`to “control how much of the software’s functionality is available.” Id. at
`6:53−56. Schneck prevents the authorization to use software on one device
`from being used on another, unauthorized device, to address the “secondary
`distribution” problem. Id. at 2:40−67, 6:57−62.
`
`E. Obviousness Over Hellman, Chou, and Schneck
`Petitioner asserts that claims 1−2, 11, and 13 are unpatentable under
`§ 103(a) as obvious over Hellman and Chou, and that claims 1−3, 6−14, 16
`are unpatentable as obvious over Hellman, Chou, and Schneck. Pet. 21–64.
`
`a. Claim 1
`The preamble of claim 1
`The preamble of claim 1 recites a “method of restricting software
`operation within a license for use with a computer including an erasable,
`non-volatile memory area of a BIOS of the computer, and a volatile memory
`area.” Ex. 1001, 6:59−62. Petitioner asserts that, regardless of whether the
`preamble is limiting, the combination Hellman and Chou teaches or suggests
`the elements recited in the preamble of claim 1 because Hellman discloses a
`“method of limiting use of software within authorized uses.” Id. (citing
`Ex. 1004, 9:29−10:13, 10:33−54, 10:55−65; Ex. 1003 ¶¶ 98−104).
`According to Petitioner, Hellman discloses a computer (base unit 12) that
`includes “the claimed ‘erasable, non-volatile memory area of a BIOS of the
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`computer, and a volatile memory area.’” Id. at 33−34. Petitioner notes that
`Hellman’s base unit 12 has temporary memory 28, e.g., RAM (Random
`Access Memory), and non-volatile memory 37, which could be implemented
`as EEPROM. Id. at 34 (citing Ex. 1004, 8:67−68, 10:1−4, Fig. 6; Ex. 1003
`¶¶ 98−104).
`Petitioner acknowledges that Hellman does “not explicitly disclose the
`computer (base unit 12) had BIOS stored in memory.” Id. at 35.
`Nevertheless, Petitioner points out that Chou discloses a BIOS EEPROM on
`a computer, and a person of ordinary skill in the art would have understood
`that EEPROM was a type of erasable, non-volatile memory. Id. (citing
`Ex. 1005, 1:54−2:7, 3:21−35, Figs. 1, 3, 7; Ex. 1003 ¶¶ 104−106).
`Petitioner argues that, in light of Chou, such an artisan would have stored
`both the license information and the BIOS in Hellman’s erasable,
`non-volatile memory 37 (e.g., EEPROM). Id.; see also id. at 28−33.
`Regardless of whether the preamble of claim 1 is limiting, we
`determine that Petitioner has shown sufficiently for purposes of this
`Decision that the combination of Hellman and Chou discloses the subject
`matter recited in the preamble of claim 1. At this juncture, Patent Owner
`does not make any argument regarding the preamble of claim 1. See
`generally Prelim. Resp.
`
`“selecting a program residing in the volatile memory”
`As to the limitation “selecting a program residing in the volatile
`memory,” Petitioner argues that Hellman discloses selecting software
`package 17 (a computer program) residing in temporary RAM memory 28
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`(volatile memory). Pet. 35−37 (citing Ex. 1004, 5:57−61, 8:67−9:2,
`9:15−28, 10:33−11:3; Ex. 1003 ¶¶ 121−129). Based on the evidence in this
`current record, we determine that Petitioner has shown sufficiently for
`purposes of this Decision that Hellman discloses the limitation “selecting a
`program residing in the volatile memory,” as recited in claim 1. At this
`juncture, Patent Owner does not make any argument regarding this
`limitation. See generally Prelim. Resp.
`
`“the verification structure accommodating data that includes at least one
`license record”
`Claim 1 recites “using an agent to set up a verification structure in the
`erasable, non-volatile memory of the BIOS, the verification structure
`accommodating data that includes at least one license record” (the “license
`record” limitation). As discussed in our claim construction analysis above
`(Section II, A), we determine that a “license record” associated with a
`licensed program, is “a record having information for verifying that licensed
`program” for purposes of this Decision.
`For this limitation, Petitioner asserts that Hellman discloses using
`update unit 36 (acting as the required “agent”) to set up a verification
`structure in non-volatile EEPROM memory 37 (the required “erasable,
`non-volatile memory”). Pet. 38 (citing Ex. 1004, 10:1−4; Ex. 1003
`¶¶ 133−138). According to Petitioner, “update unit 36 sets up the required
`‘verification structure’ in the non-volatile memory 37 at least in the form of
`storing the value M at a specific address H for a software program identified
`by that hash value H.” Id. (citing Ex. 1003 ¶¶ 133−138). Petitioner argues
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`that “value M is the required ‘license record’, because it indicates the scope
`of authorized use—the number of uses, where ‘M’ is the number—for the
`specific software package 17 identified by hash value H.” Id. Petitioner
`contends that “[s]toring the value M at the address H constitutes setting up a
`versification structure because it includes storing a license record at a
`specific license record location that corresponds to the licensed program.”
`Id. (citing Ex. 1001, 1:59−62, 6:17−21; Ex. 1003 ¶¶ 133−138).
`Patent Owner counters that value M in Hellman does not include any
`information “from a licensed program” as the District Court claim
`constructions require. Prelim. Resp. 16−18.
`However, as discussed in our claim construction analysis above
`(Section II.A), we decline to adopt Patent Owner’s proposed claim
`construction that requires a “license record” to be formed from a licensed
`program, as it would improperly import a limitation from a preferred
`embodiment into the claim. Williamson, 792 F.3d at 1346−47. For purposes
`of this Decision, we determine that a “license record” associated with a
`licensed program is “a record having information for verifying that licensed
`program.” Patent Owner’s reliance on the District Court claim construction
`orders enter in Ancora v. Apple and in Ancora v. TCT Mobile is misplaced
`because neither District Court claim construction order requires a “license
`record” to be formed from a licensed program. Ex. 1011, 16−18; Ex. 2002,
`9−11. Therefore, Patent Owner’s argument is unavailing at this time.
`Upon consideration of the parties’ contentions and evidence in this
`current record, we determine that Petitioner has shown adequately for
`purposes of this Decision that the combination of Hellman and Chou teaches
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`or suggests the aforementioned “license record” limitation as recited in
`claim 1.
`
`“verifying the program using at least the verification structure from the
`erasable non-volatile memory of the BIOS”
`Claim 1 also recites “verifying the program using at least the
`verification structure from the erasable non-volatile memory of the BIOS.”
`Petitioner argues that Hellman discloses this limitation because Hellman
`discloses using value M (the required “license record”) that is stored in
`non-volatile memory 37 to verify software package 17 (the required
`“program”). Pet. 39 (citing Ex. 1004, 10:33−54; Ex. 1003 ¶¶ 151−152). In
`particular, Hellman discloses that when an attempt is made to run software
`package 17, value H is generated and sent to update unit 36, which uses
`value H as an address in non-volatile memory to verify if a license exists for
`software package 17. Ex. 1004, 10:33−54. If a license does exist, update
`unit 36 retrieves the number of remaining authorized uses value M, and a
`determination is made as to whether the number of authorized uses is greater
`than zero. Id.
`Based on the evidence in this current record, we determine that
`Petitioner has shown sufficiently for purposes of this Decision that Hellman
`discloses the limitation “selecting a program residing in the volatile
`memory,” as recited in claim 1. At this juncture, Patent Owner does not
`make any argument regarding this limitation. See generally Prelim. Resp.
`
`18
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`“acting on the program according to the verification”
`Lastly, claim 1 recites “acting on the program according to the
`verification.” Petitioner argues that Hellman discloses this limitation
`because it discloses allowing software package 17 to be used if a license
`record is found in non-volatile memory 37 and there are authorized uses
`remaining. Pet. 39 (citing Ex. 1004, 10:40−49; Ex. 1003 ¶¶ 154−155).
`Based on the evidence in this current record, we determine that Petitioner
`has shown sufficiently for purposes of this Decision that Hellman discloses
`the limitation “acting on the program according to the verification,” as
`recited in claim 1. At this juncture, Patent Owner does not make any
`argument regarding this limitation. See generally Prelim. Resp.
`
`Motivation to combine Hellman and Chou
`Petitioner acknowledges that Hellman does not explicitly disclose that
`base unit 12 (a computer) has a BIOS and that non-volatile memory 37
`would be used to store the BIOS for the computer. Pet. 28. Petitioner
`asserts that it was well-known at the time of the invention that “a computer
`would have BIOS and that it would be common to store it in EEPROM
`memory,” as evidenced by Chou. Id. at 29 (citing Ex. 1005, 1:54−62, 2:2−7,
`3:21−35; Ex. 1003 ¶¶ 105−111; Ex. 1002, 51 (Prosecution History of the
`’941 patent—Office Action Response, dated February 5, 2002) (noting that
`“all computers must have a BIOS”)). Petitioner asserts that a person of
`ordinary skill in the art would have been motivated to use Hellman’s
`non-volatile memory 37 for storing the BIOS and the license information,
`because such an artisan would have recognized “non-volatile memory 37
`19
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`IPR2020-01609
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`
`(e.g., EEPROM) as an appropriate type of memory module for BIOS and
`one that would help prevent tampering with the license information.” Id. at
`30−31 (citing Ex. 1005, 3:21−35, 3:52−2; Ex. 1003 ¶¶ 112−116).
`Petitioner points out that Chou discloses that, by storing sensitive
`information in the BIOS memory, any attempt to delete or disable the
`sensitive information would also disable the BIOS program. Id. at 32 (citing
`Ex. 1005, 1:63−2:1 (disclosing that “EEPROM flash devices may be
`programmed with BIOS routines which permit the user to enter data without
`requiring the computer to be returned to the manufacture,” and that “[t]he
`present invention makes use of these new BIOS memory devices for
`effecting security measures which discourage theft”)). Dr. Wolfe testifies
`that a person of ordinary skill in the art “would have been motivated to store
`BIOS together with the values M in the non-volatile memory 37, in order to
`discourage users from tampering with the values M.” Ex. 1003 ¶ 115.
`Based on the evidence in this current record, we determine that
`Petitioner has articulated a sufficient reason to combine the teachings of
`Hellman and Chou, for purposes of this Decision. At this juncture, Patent
`Owner does not make any argument regarding this limitation. See generally
`Prelim. Resp.
`
`Motivation to combine Hellman, Chou, and Schneck
`For the combination of Hellman, Chou, and Schneck, Petitioner
`asserts that, in light of Schneck’s teachings, a person of ordinary skill in the
`art would have stored Hellman’s licensing information, authorization A
`which includes value M, in encrypted form in non-volatile memory 37.
`
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`Pet. 42−46. Petitioner argues that Schneck discloses that “licensing
`information is transmitted in encrypted form,” and that information stored on
`a non-volatile memory “should be stored in encrypted form to prevent an
`unauthorized use of a licensed software.” Id. at 44 (citing Ex. 1006,
`9:46−59 (“The packaged data 108 may include access rules 116 in encrypted
`form.”), 25:64−67 (“Since all storage of data on internal non-volatile
`memory devices (for example, disks, flash memory, and the like) is
`encrypted, this ensures that a physical attack on the system will not result in
`compromise of plaintext.”)). According to Petitioner, because when an
`“unlimited number of uses” is licensed, the unlimited license value could be
`duplicated for any other software package, an ordinarily skilled artisan
`would have recognized that it would have been important to protect that
`default value in encrypted form in non-volatile memory 37. Id. at 42−46,
`48−49 (citing Ex. 1004, 10:50−54; Ex. 1003 ¶ 148); see also Ex. 1004,
`10:55−57 (disclosing that “[i]t is also possible to sell unlimited number of
`uses of a software package, by reserving one value of M to represent
`infinity”).
`Based on the evidence in this current record, we determine that
`Petitioner has articulated a sufficient reason for purposes of this Decision to
`combine the teachings of Hellman, Chou, and Schneck. At this juncture,
`Patent Owner does not make any argument regarding this limitation. See
`generally Prelim. Resp.
`
`21
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`Conclusion on Claim 1
`
`Upon consideration of the parties’ contentions and evidence in this
`current record, we determine that Petitioner has shown adequately for
`purposes of this Decision that claim 1 is unpatentable under § 103(a) as
`obvious over the combination of Hellman and Chou, as well as over the
`combination of Hellman, Chou, and Schneck. We also determine that Patent
`Owner’s arguments do not undermine Petitioner’s obviousness showing at
`this time.
`
`b. Remaining challenged claims
`Petitioner accounts for claims 2, 3, 6−14, and 16. Pet. 40−64.
`Petitioner provides detailed explanations as to how the prior art
`combinations teach or suggest these claims and articulates reason
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