Filed: February 19, 2021
`
`Filed on behalf of
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`Petitioners HTC Corporation and HTC America, Inc.
`By:
`Irfan A. Lateef
`
`Brian C. Claassen
`Daniel C. Kiang
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`Email:
`BoxHTCCOL.056LP@knobbe.com
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`HTC CORPORATION and HTC AMERICA, INC.,
`
`Petitioners
`v.
`
`ANCORA TECHNOLOGIES, INC.
`
`Patent Owner.
`
`Case No. IPR2021-00570
`U.S. Patent 6,411,941 B1
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,411,941
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`TABLE OF CONTENTS
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`Page
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`I.
`INTRODUCTION .......................................................................................... 1
`II. MANDATORY NOTICES ............................................................................ 3
`A.
`Real party-in-interest ............................................................................ 3
`B.
`Related matters ..................................................................................... 3
`C.
`Counsel and Service Information ......................................................... 4
`III. REQUIREMENTS FOR INTER PARTES REVIEW ................................... 4
`A. Ground for Standing ............................................................................. 4
`B. Overview of Challenge and Relief Requested ..................................... 5
`1.
`Identification of Prior Art .......................................................... 5
`2.
`Grounds for Challenge ............................................................... 5
`3.
`Statutory Grounds of Challenge and Legal Principles ............... 6
`C.
`The Board Should Exercise Its Discretion to Institute Review ............ 6
`IV. DESCRIPTION OF TECHNOLOGY ............................................................ 6
`A. Overview of the Technology ................................................................ 6
`B. Overview of the ’941 Patent ................................................................. 8
`1.
`The Specification and Alleged Invention .................................. 8
`2.
`Prosecution History and Later Proceedings ............................. 13
`3.
`The Challenged Claims ............................................................ 17
`V. CLAIM CONSTRUCTION ......................................................................... 17
`VI. LEVEL OF ORDINARY SKILL IN THE ART .......................................... 18
`VII. SPECIFIC GROUNDS FOR PETITION ..................................................... 19
`A. Ground I: Claims 1–2, 11, and 13 were obvious over the
`combined teachings of Hellman and Chou ........................................ 19
`1.
`Overview of Hellman ............................................................... 19
`2.
`Overview of Chou .................................................................... 24
`3. Motivations to Combine Hellman and Chou ........................... 25
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`-i-
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`TABLE OF CONTENTS
`(continued)
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`Page
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`4.
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`5.
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`6.
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`Claim 1 preamble: “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:”............................................. 30
`Claim 1.a: “selecting a program residing in the volatile
`memory,” .................................................................................. 32
`Claim 1.b: “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,” ....................................... 35
`Claim 1.c: “verifying the program using at least the
`verification structure from the erasable non-volatile
`memory of the BIOS, and” ...................................................... 36
`Claim 1.d: “acting on the program according to the
`verification.” ............................................................................ 36
`Claim 2: “A method according to claim 1, further
`comprising the steps of: establishing a license
`authentication bureau.” ............................................................ 37
`10. Claim 11: “A method according to claim 1 wherein the
`volatile memory is a RAM.” .................................................... 37
`11. Claim 13: “The method of claim 1, wherein a unique key
`is stored in a first non-volatile memory area of the
`computer.” ................................................................................ 37
`B. Ground II: Claims 1–3, 6–14, and 16 were obvious over the
`combined teachings of Hellman, Chou, and Schneck ........................ 48
`1.
`Overview of Schneck ............................................................... 48
`2. Motivations to Combine Hellman, Chou, and Schneck ........... 39
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`7.
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`8.
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`9.
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`4.
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`6.
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`7.
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`8.
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`9.
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`TABLE OF CONTENTS
`(continued)
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`Page
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`3.
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`Claim 1. preamble: “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:”............................................. 43
`Claim 1.a: “selecting a program residing in the volatile
`memory,” .................................................................................. 43
`Claim 1.b: “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,” ....................................... 44
`Claim 1.c: “verifying the program using at least the
`verification structure from the erasable non-volatile
`memory of the BIOS, and” ...................................................... 46
`Claim 1.d: “acting on the program according to the
`verification.” ............................................................................ 47
`Claim 2: “A method according to claim 1, further
`comprising the steps of: establishing a license
`authentication bureau.” ............................................................ 47
`Claim 3 preamble: “A method according to claim 2,
`wherein setting up a verification structure further
`comprising the steps of:” .......................................................... 48
`10. Claim 3.a: “establishing, between the computer and the
`bureau, a two-way data-communications linkage;” ................. 48
`11. Claim 3.b: “transferring, from the computer to the
`bureau, a request-for-license including an identification
`of the computer and the license-record’s contents from
`the selected program;” ............................................................. 49
`12. Claim 3.c: “forming an encrypted license-record at the
`bureau by encrypting parts of the request-for-license
`using part of the identification as an encryption key;” ............ 52
`13. Claim 3.d: “transferring, from the bureau to the
`computer, the encrypted license-record; and” ......................... 52
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`TABLE OF CONTENTS
`(continued)
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`Page
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`14. Claim 3.e: “storing the encrypted license record in the
`erasable non-volatile memory area of the BIOS.” ................... 53
`15. Claim 6: “A method according to claim 1 wherein
`selecting a program includes the steps of: establishing a
`licensed-software-program in the volatile memory of the
`computer wherein said licensed-software-program
`includes contents used to form the license-record.” ................ 53
`16. Claim 7 preamble: “A method according to claim 6
`wherein using an agent to set up the verification structure
`includes the steps of:” .............................................................. 54
`17. Claim 7.a: “establishing or certifying the existence of a
`pseudo-unique key in a first non-volatile memory area of
`the computer; and” ................................................................... 54
`18. Claim 7.b: “establishing at least one license-record
`location in the first nonvolatile memory area or in the
`erasable, non-volatile memory area of the BIOS.” .................. 54
`19. Claim 8 preamble: “A method according to claim 6
`wherein establishing a license-record includes the steps
`of:” ............................................................................................ 55
`20. Claim 8.a: “forming a license-record by encrypting of
`the contents used to form a license-record with other
`predetermined data contents, using the key; and” ................... 55
`21. Claim 8.b: “establishing the encrypted license-record in
`one of the at least one established license-record
`locations.” ................................................................................ 55
`22. Claim 9 preamble: “A method according to claim 7
`wherein verifying the program includes the steps of:” ............ 56
`23. Claim 9.a: “encrypting the licensed-software-program's
`license-record contents from the volatile memory area or
`decrypting the license-record in the erasable, non-volatile
`memory area of the BIOS, using the pseudo-unique key;
`and” .......................................................................................... 56
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`TABLE OF CONTENTS
`(continued)
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`Page
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`24. Claim 9.b: “comparing the encrypted licenses-software-
`program’s license-record contents with the encrypted
`license-record in the erasable, non-volatile memory area
`of the BIOS, or comparing the license-software-
`program's license-record contents with the decrypted
`license-record in erasable non-volatile memory area of
`the BIOS.” ................................................................................ 57
`25. Claim 10: “A method according to claim 9 wherein
`acting on the program includes the step: restricting the
`program's operation with predetermined limitations if the
`comparing yields non-unity or insufficiency.” ........................ 58
`26. Claim 11: “A method according to claim 1 wherein the
`volatile memory is a RAM.” .................................................... 58
`27. Claim 12: “The method of claim 1, wherein a pseudo-
`unique key is stored in the non-volatile memory of the
`BIOS.” ...................................................................................... 59
`28. Claim 13: “The method of claim 1, wherein a unique key
`is stored in a first non-volatile memory area of the
`computer.” ................................................................................ 60
`29. Claim 14: “The method according claim 13, wherein the
`step of using the agent to set up the verification record,
`including the license record, includes encrypting a
`license record data in the program using at least the
`unique key.” ............................................................................. 60
`30. Claim 16: “The method according to claim 13, wherein
`the step of verifying the program includes a decrypting
`the license record data accommodated in the erasable
`second non-volatile memory area of the BIOS using at
`least the unique key.” ............................................................... 60
`VIII. CONCLUSION ............................................................................................. 61
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`-v-
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`Ex. 1001
`Ex. 1002
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`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1006
`Ex. 1007
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`Ex. 1008
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`Ex. 1009
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`Ex. 1010
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`Ex. 1011
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`Ex. 1012
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`Ex. 1013
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`Ex. 1014
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`EXHIBIT LIST
`
`U.S. Patent No. 6,411,941 to Mullor et al. (“’941 Patent”)
`Image File Wrapper of U.S. Patent No. 6,411,941 (“File
`History”)
`Declaration of Andrew Wolfe, Ph.D. (“Wolfe Decl.”)
`U.S. Patent No. 4,658,093 (“Hellman”)
`U.S. Patent No. 5,892,906 (“Chou”)
`U.S. Patent No. 5,933,498 (“Schneck”)
`Scheduling Order, Ancora Techs., Inc. v. TCT Mobile (US),
`Inc., No. 8:19-cv-2192 (C.D. Cal. Mar. 17, 2020) (ECF No.
`34).
`In re: Coronavirus Public Emergency, Order Concerning
`Phased Reopening of the Court, General Order No. 20-09,
`United States District Court for the Central District of
`California, Aug. 6, 2020.
`Civil Docket, Ancora Techs., Inc. v. Sony Mobile Commc’ns
`AB, No. 1:19-cv-01703 (D. Del.).
`Civil Docket, Ancora Techs., Inc. v. Lenovo Grp. Ltd., No.
`1:19-cv-01712 (D. Del.).
`Claim Construction Order, Ancora Techs., Inc. v. Apple Inc.,
`No. 4:11-cv-06357 (N.D. Cal. Dec. 31, 2012) (ECF No.
`107).
`Final Claim Constructions of the Court, Ancora Techs., Inc.
`v. LG Elecs., Inc., No. 1:20-cv-00034 (W.D. Tex. June 2,
`2020) (ECF No. 69).
`Supplemental Claim Construction Order, Ancora Techs., Inc.
`v. LG Elecs., Inc., No. 1:20-cv-00034 (W.D. Tex. Aug. 19,
`2020) (ECF No. 93).
` Joint Claim Construction and Prehearing Statement, Ancora
`
`Techs., Inc. v. TCT Mobile (US), Inc., No. 8:19-cv-2192
`(C.D. Cal. July 17, 2020) (ECF No. 49).
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`Exhibit List Page 1
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`Ex. 1015
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`Ex. 1016
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`Ex. 1017
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`Ex. 1018
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`Ex. 1019
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`Final Ruling on Claim Construction of the Court, Ancora
`Techs., Inc. v. TCT Mobile, No. 19-cv-2192 (C.D. Cal. Nov.
`12, 2020) (ECF No. 66)
`Decision Granting Institution of Inter Partes Review, TCT
`Mobile, et al. v. Ancora Techs, IPR2020-01609 (Paper 7)
`Western District of Washington General Order 18-20
`
`Civil Docket, Ancora Techs. V. Sony Mobile Commc’ns, No.
`1:19-cv-1703 (D. Del.) – Update of Ex. 1009 as of 2/19/2021
`Civil Docket, Ancora Techs., Inc. v. Lenovo Grp. Ltd., No.
`1:19-cv-01712 (D. Del.) – Update of Ex. 1010 as of
`2/19/2021
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`Exhibit List Page 2
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`

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`Review of U.S. Patent 6,411,941 B1
`HTC Corp, et al. v. Ancora Techs.
`
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`Petitioners request inter partes review (“IPR”) of U.S. Patent No. 6,411,941
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`(Ex. 1001). Petitioner is filing a Motion to Join the IPR in TCT Mobile (US) Inc. v.
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`Ancora Technologies, Inc., IPR2020-01609 (“TCT IPR Petition”).
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`I.
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`INTRODUCTION
`The ’941 Patent generally relates to methods for restricting unauthorized
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`software operation. Specifically, the ’941 Patent claims such a method by storing a
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`license record in the BIOS memory, which purportedly overcame deficiencies
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`using a software-based prior art method where a license record was stored in
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`“volatile memory (e.g., hard disk)” and a hardware-based prior art method. ’941
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`Patent at 1:10-42. Indeed, storing a license record for a program in the BIOS
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`memory, and not just any non-volatile memory, is the supposed improvement of
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`the ‘941 Patent claims over the prior art in prosecution, an ex parte reexamination,
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`a covered business method review, and two Federal Circuit appeals; even though
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`those proceedings conceded that a “license record” and “BIOS memory” were both
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`conventional. But the storage of license records in a BIOS memory was not a
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`patentable distinction over the prior art as of the priority date in 1998, as
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`Petitioners demonstrate with the use of three prior art references, Hellman, Chou,
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`and Schneck.
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`While the ’941 Patent has been litigated in district court and at the Patent
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`Office in numerous cases, its invalidity based on prior art publications has been
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`considered in only one of these proceedings. Neither of the Federal Circuit appeals
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`Review of U.S. Patent 6,411,941 B1
`HTC Corp, et al. v. Ancora Techs.
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`considered prior art invalidity. One appeal was limited to claim construction
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`issues, and one appeal was limited to patent eligibility. The covered business
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`method review was denied institution on the basis that the ’941 Patent was not
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`eligible for covered business method review. Despite the Patent Owner having
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`asserted the ’941 Patent against 10 entities over the course of more than 10 years,
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`the invalidity of the ’941 Patent’s claims has only been considered on the merits in
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`one instance, an ex parte reexam.
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`Petitioners submit that, when fully considered on the merits, the prior art
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`demonstrates that storing information, a license record or otherwise, in the BIOS
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`memory, that is used in a method to restrict unauthorized operation of software,
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`was well-known as a way to provide increased protection against tampering with
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`that information by, e.g., a software hacker. Petitioners demonstrate through the
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`combinations of Hellman, Chou, and Schneck that a person of ordinary skill in the
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`art at the time of the invention (POSA) would have found all challenged claims
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`obvious.
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`For the reasons described herein, Petitioners request institution of an inter
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`partes review and cancellation of all challenged claims of the ’941 Patent.
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`Review of U.S. Patent 6,411,941 B1
`HTC Corp, et al. v. Ancora Techs.
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`II. MANDATORY NOTICES
`A. Real party-in-interest
`HTC Corporation and HTC America, Inc. (collectively, “Petitioners”)
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`are the real parties-in-interest.
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`B. Related matters
`Patent Owner asserts that Petitioners infringe the ’941 Patent in Ancora
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`Techs., Inc. v. HTC, Inc., No. 2:16-cv-1919 (W.D. Wash.), filed December 15,
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`2016. Petitioners request their Petition be instituted and joined pursuant to 35
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`U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b) with the inter partes review
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`proceeding initiated concerning the ’941 patent: TCT Mobile (US) Inc. v. Ancora
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`Technologies, Inc., IPR2020-01609, which was instituted February 16, 2021.
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`Patent Owner has asserted the ’941 Patent against other parties in the
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`following currently-pending district-court lawsuits: Ancora Technologies, Inc. v.
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`TCT Mobile (US) Inc., No. 8:19-cv-02192 (C.D. Cal.); Ancora Technologies, Inc.
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`v. Lenovo Group Limited, No. 1:19-cv-01712 (D. Del.); Ancora Technologies, Inc.
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`v. Sony Corp., No. 1:19-cv-01703 (D. Del.); Ancora Technologies, Inc. v. LG
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`Electronics, Inc., No. 1:20-cv-00034 (W.D. Tex.); Ancora Technologies, Inc. v.
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`Samsung Electronics Co., Ltd., No. 6:19-cv-00385 (W.D. Tex.).
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`Samsung Electronics Co., Ltd. et al. filed a petition for inter partes review
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`against the ’941 Patent on June 25, 2020. IPR2020-01184 (“Samsung IPR
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`Review of U.S. Patent 6,411,941 B1
`HTC Corp, et al. v. Ancora Techs.
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`Petition”). The Board denied the Samsung IPR on January 5, 2021. For the
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`reasons set forth below, there is no overlap in grounds or prior art references
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`between this Petition and the Samsung IPR Petition.
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`C. Counsel and Service Information
`Lead counsel: Irfan A. Lateef (Reg. No. 51,922)
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`Back-up counsel: Brian C. Claassen (Reg. No. 63,051), and Daniel C.
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`Kiang (Reg. No. 79,631)
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`These attorneys can be reach by mail at Knobbe Martens, 2040 Main Street
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`14th Floor, Irvine, CA 92614, contact numbers of 949-760-0404 (phone) and 949-
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`760-9502 (fax).
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`Petitioners consent to electronic service. All services and communications
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`to the attorneys listed above may be sent to: BoxHTC57@knobbe.com. A
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`power of attorney is being filed concurrently.
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`III. REQUIREMENTS FOR INTER PARTES REVIEW
`A. Ground for Standing
`Petitioners certify that the ’941 Patent is available for IPR and that
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`Petitioners are not barred or estopped from requesting joinder under 37 C.F.R.
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`§ 42.122, to an IPR challenging claims of the ’941 Patent on the grounds
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`presented here.
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`Review of U.S. Patent 6,411,941 B1
`HTC Corp, et al. v. Ancora Techs.
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`Overview of Challenge and Relief Requested
`B.
`Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)–(2), Petitioners request
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`cancellation of claims 1–3, 6–14, and 16 of the ’941 Patent under pre-AIA 35
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`U.S.C. § 103.
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`Identification of Prior Art
`1.
`Petitioners rely upon the references listed in the Table of Exhibits, including:
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`U.S. Patent No. 4,658,093 (“Hellman” (Ex. 1004)), issued on April 14, 1987
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`from an application filed on July 11, 1983. Hellman is prior art under pre-AIA 35
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`U.S.C. § 102(b).
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`U.S. Patent No. 5,892,906 (“Chou” (Ex. 1005)), issued on April 6, 1999
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`from an application filed on July 19, 1996. Chou is prior art under pre-AIA 35
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`U.S.C. § 102(e).
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`U.S. Patent No. 5,933,498 (“Schneck” (Ex. 1006)), issued on August 3,
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`1999 from an application filed on November 5, 1997 and that claims priority to an
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`application filed on January 11, 1996. Schneck is prior art under pre-AIA 35
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`U.S.C. § 102(e).
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`Hellman, Chou, and Scheck were not in front of the Patent Office during the
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`original examination, the ex parte reexamination, or the covered business method
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`review of the ’941 Patent.
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`2.
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`Grounds for Challenge
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`-5-
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`Review of U.S. Patent 6,411,941 B1
`HTC Corp, et al. v. Ancora Techs.
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`Ground
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`Basis
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`Reference(s)
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`1
`2
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`§ 103
`§ 103
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`Hellman, Chou
`Hellman, Chou, Schneck
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`Challenged
`Claims
`1–2, 11, 13
`1–3, 6–14, and 16
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`This Petition, supported by the declaration of Dr. Andrew Wolfe (“Wolfe
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`Decl.” (Ex. 1003)), demonstrates that there is a reasonable likelihood that
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`Petitioners will prevail with respect to cancellation of at least one challenged
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`claim. See 35 U.S.C. § 314(a).
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`Statutory Grounds of Challenge and Legal Principles
`3.
`This Petition requests cancellation of claims 1–3, 6–14, and 16 of the ’941
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`Patent under pre-AIA 35 U.S.C. § 103.
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`IV. DESCRIPTION OF TECHNOLOGY
`A.
`Overview of the Technology
`By the time of the ’941 Patent’s priority date in 1998, the field of software
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`licensing was well-developed. Wolfe Decl. ¶¶ 31–35. For more than a decade
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`prior, practitioners in the field had widely recognized the new risks to software
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`piracy introduced by the transformations to digital media. Id.
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`Many entities recognized that one such risk was “copy protection” or
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`“secondary distribution.” Id. This referred to the situation where a user received a
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`valid license for a software program, but the user then duplicated the program
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`and/or the license so as to use it in an unauthorized fashion for more uses, on more
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`computers, etc. Id. This problem was of particular interest to practitioners because
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`Review of U.S. Patent 6,411,941 B1
`HTC Corp, et al. v. Ancora Techs.
`it required the software owner to provide enough trust to the user to perform at
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`least one authorized use, as opposed to providing no trust or unlimited trust. Id.
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`While many solutions were developed, a common theme was to use some form of
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`encryption to reduce unauthorized secondary distribution of the software program.
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`Id.
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`Similarly, by 1998, the field of computer BIOS was well-developed.
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`Wolfe Decl. ¶¶ 36–42. Nearly all consumer end user devices contained a BIOS
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`program that was used to start up the device at power-on time. Id. Early personal
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`computers tended to store BIOS programs in separate, true ROM (read only
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`memory) memory module, i.e., memory that could not be re-written in the field.
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`Id. By the 1990s, it was more common to store BIOS programs in “ROM” that
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`could actually be rewritten in some form. Id. Early forms of this rewritable ROM
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`often required physically accessing the memory chip with a special device. Id.
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`By the ’941 Patent’s priority date in 1998, electrically-erasable
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`programmable read-only memory (EEPROM) was a popular medium for BIOS
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`memory. Id. EEPROM chips had the benefit of being re-writable by software
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`without the need to remove the chip from the computer. Id. This aspect of
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`EEPROM was considered beneficial because it became common prior to the ’941
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`priority date in 1998 for device manufacturers to provide updates to BIOS while
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`the devices were in the field. Id. EEPROM allowed that functionality. Id.
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`Review of U.S. Patent 6,411,941 B1
`HTC Corp, et al. v. Ancora Techs.
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`B. Overview of the ’941 Patent
`The ’941 Patent issued from U.S. Patent Application No. 09/164,777, filed
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`on October 1, 1998. It claims priority to Israeli Patent Application 124571, which
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`was filed on May 21, 1998. ’941 Patent, Cover Page. Therefore, the priority date
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`of the ’941 Patent is no earlier than May 21, 1998.
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`1.
`The Specification and Alleged Invention
`The ’941 Patent invention is directed to “restricting an unauthorized
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`software program’s operation.” ’941 Patent at 1:6–8. The ’941 Patent recognizes
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`that it was known in the field to store a “license signature” for a program in a
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`computer’s “volatile memory (e.g. hard disk).”1 Id. at 1:19–21. The ’941 Patent
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`alleges that such techniques were “appropriate for restricting honest software
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`users,” but they were “vulnerable to attack at the hands of skilled system’s
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`programmers (e.g. ‘hackers’).” Id. at 1:21–24.
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`The ’941 Patent proposes to solve this problem based on “the use of a key
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`and of a record, which have been written into the non-volatile memory of a
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`computer.” Id. at 1:38–43. The “key” is stored “during manufacture” in a “ROM
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`1 Despite this contradictory example (i.e., that a hard disk is exemplary of volatile
`memory), the Federal Circuit held that “volatile memory” has its ordinary
`meaning, Ancora Technologies, Inc. v. Apple, Inc., 744 F.3d 732, 739 (Fed. Cir.
`2014), such as “memory whose data is not maintained when the power is
`removed,” id. at 737.
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`section” of a “BIOS module,” and it “constitutes, effectively, a unique
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`identification code for the host computer.” Id. at 1:44–52. The “license record” is
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`stored in “another (second) non-volatile section of the BIOS, e.g. E2PROM (or the
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`ROM).”2 Id.at 1:59–2:1. The ’941 Patent distinguishes the storage location of the
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`key and the license record: “It should be noted that unlike the first non-volatile
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`section, the data in the second non-volatile memory may optionally be erased or
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`modified (using E2PROM manipulation commands), so as to enable to add, modify
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`or remove licenses.” Id. 2:1–5. The key is used to encrypt the license record,
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`creating a locally stored, device-specific license record for the program under
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`license. Id. at 1:59–2:26.
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`The ’941 Patent alleges two primary benefits of the invention. First, by
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`encrypting the license record with a key unique to the host computer and stored in
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`ROM, a program licensed for one computer cannot simply be transferred with the
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`license record to another computer, because the key for the second computer will
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`be different. Id. at 2:27–47. “It is important to note that the hacker is unable to
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`modify the key in the ROM of the second computer to” the key of the first
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`computer because “the contents of the ROM is established during manufacture and
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`is practically invariable.” Id. at 2:42–47.
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`2 E2PROM is another spelling of EEPROM.
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`Second: “An important advantage in utilizing non-volatile memory such as
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`that residing in the BIOS is that the required level of system programming
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`expertise that is necessary to intercept or modify commands, interacting with the
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`BIOS, is substantially higher than those needed for tampering with data residing in
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`volatile memory such as hard disk.” Id. at 3:4–9. In other words, because
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`manipulation of E2PROM was more difficult than manipulation of the device’s
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`RAM or hard disk, the license record could be stored in E2PROM to make it more
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`tamper proof. Id. at 3:4–17.
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`The alleged invention is depicted with respect to Figure 1 of the ’941 Patent,
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`shown below. The first non-volatile memory (4)—“e.g. the ROM section of the
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`BIOS,” id. at 5:9–16—stores a key (8). The second non-volatile memory (5)—
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`“e.g. the E2PROM section of the BIOS,” id.—stores license records (10, 11, 12).
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`The volatile memory (6)—“e.g. the internal RAM memory of the computer,” id.—
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`stores a license program (16).
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`’941 Patent at Fig. 1 (annotated by Petitioner).
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`With respect to Figure 2, shown below, the ’941 Patent describes a method
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`for using the structures described above to effectuate the alleged invention.
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`’941 Patent at Fig. 2.
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`At the selecting (17) step, “a licensed-software-program” is established in
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`the volatile memory.” Id. at 6:7–16.
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`At the setting up (18) step, a “pseudo-unique key” is established (or certified
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`to already exist) in the first non-volatile memory. Id. at 6:18–21. Further, a
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`“license-record location” is established in the first or the second non-volatile
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`memory area,” id., which action includes using the key to form an “encrypted
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`license-record” in the license-record location, id. at 6:22–27.
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`At the verifying (19) step, the license record established in the license-record
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`location is compared to a result of using the key to encrypt information from the
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`licensed-software-program. Id. at 6:28–39.
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`At the acting (20) step, an action, such as “restricting the program’s
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`operation,” is performed in response to the comparison from the verifying (19)
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`step, such as if the comparison shows the two values are unequal. Id. at 6:40–52.
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`Thus, using the structures described with respect to Figure 1 and the process
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`described with respect to Figure 2, the ’941 Patent’s alleged invention is providing
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`a license record unique to a specific computer and stored in a harder-to-modify
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`memory device, BIOS memory, such as BIOS E2PROM, and not just any non-
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`volatile memory. With these aspects, the invention allowed device-specific, more
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`tamperproof software licensing.
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`2.
`Prosecution History and Later Proceedings
`Claim 1 as originally filed covered setting up a verification structure in two
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`non-volatile memories, and verifying a program in volatile memory based thereon.
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`See ’941 File Wrapper, Claims, dated Oct. 1, 1998, p. 1.
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`During prosecution, the Applicant amended claim 1 to change the “setting
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`up . . .” step to a “using an agent to set up . . .” step. See ’941 File Wrapper, Office
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`Action Response, dated Dec. 6, 2001, p. 10 (unnumbered page following page 9).
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`The Applicant also amended the claims to recite, as in its ultimately issued form,
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`that the verification structure was stored “in the erasable, non-volatile memory of
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`the BIOS.” Id. The Applicant later argued that this storing of the license record in
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`the memory of the BIOS was what distinguished claim 1 over the prior art of
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`record. See ’941 File Wrapper, Office Action Response, dated Feb. 5, 2002, pp. 3–
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`7. The Applicant alleged that this storage in the memory of the BIOS was
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`unknown in the prior art both because “[t]here is no OS support whatsoever to
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`write data to the system BIOS,” and because “no file system is associated with the
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`BIOS.” Id. at 6.
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`The Examiner allowed the claims based on this distinction. The prior art of
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`record disclosed, for instance, a licensing software that stored licenses in a device’s
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`ordinary “persistent non-volatile storage,” ’941 File Wrapper, Notice of
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`Allowance, dated Mar. 28, 2002, p. 3 (citing U.S. Pat. No. 6,189,146 at 12:8–31),
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`and “the use of BIOS memory for storing licensing numbers,” id. at 4 (citing U.S.
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`Pat. No. 5,479,639). But, according to the Examiner, the prior art failed to show
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`“licensed programs running at the OS level interacting with a program verification
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`structure stored in the BIOS . . . [.]” Id. at 4. “Further, it is well known to those of
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`ordinary skill of the art that a computer BIOS is not setup to manage a software
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`license verification structure.” Id. According to the Examiner, the ’941 Patent
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`solved that problem by using the “agent” to set up the verification structure in the
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`memory of the BIOS. Id.
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`The ’941 Patent was subject to an ex parte reexamination identified by
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`Control Number 90/010,560. The prior art submitted by the requester, U.S. Pat.
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`No. 5,734,819 (“Lewis”), did disclose license information stored in the non-
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`volatile memory of a BIOS. See ’560 Reexam File Wrapper, Notice of Intent to
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`Issue Reexam Certificate, dated Mar. 9, 2010, p. 4 (“NIIRC”). But the Examiner
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`found that Lewis fell short of disclosing claim 1 because the system in Lewis used
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`the license information to verify the device itself, not a program running on the
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`device. Id. at 4–5. That is, i