Trials@uspto.gov
`571-272-7822
`
` Paper 49
` Entered: February 7, 2023
`
`
`
`
`
`
`
`PUBLIC VERSION
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NINTENDO CO., LTD., and NINTENDO OF AMERICA INC.,
`Petitioner,
`v.
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`IPR2021-01338
`Patent 6,411,941 B1
`____________
`
`Before THU A. DANG, KEVIN W. CHERRY, and RYAN H. FLAX,
`Administrative Patent Judges.
`
`DANG, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`571-272-7822
`
` Paper 49
` Entered: February 7, 2023
`
`
`
`
`
`
`
`PUBLIC VERSION
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NINTENDO CO., LTD., and NINTENDO OF AMERICA INC.,
`Petitioner,
`v.
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`IPR2021-01338
`Patent 6,411,941 B1
`____________
`
`Before THU A. DANG, KEVIN W. CHERRY, and RYAN H. FLAX,
`Administrative Patent Judges.
`
`DANG, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`IPR2021-01338
`Patent 6,411,941 B1
`
`I.
`
`INTRODUCTION
`
`A. Background
`In response to a Petition (Paper 1, “Pet.”) filed by Nintendo Co., Ltd.
`and Nintendo of America Inc. (collectively, “Petitioner”), we instituted 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”). See Paper 9
`(“Decision” or “Dec. Inst.”). During the trial, Ancora Technologies, Inc.
`(“Patent Owner”) filed a Response (Papers 22, 23, “PO Resp.”), to which
`Petitioner filed a Reply (Papers 32, 33, “Pet. Reply.”). In turn, Patent Owner
`filed a Sur-Reply. Papers 38, 39 (“PO Sur-Reply”). An oral hearing was
`held with the parties on October 3, 2022. A transcript of the hearing has
`been entered into the record. Paper 46 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
`claims on which we instituted trial. Based on the record before us, Petitioner
`has proven by a preponderance of the evidence that claims 1−3, 6−14, and
`16 of the ’941 patent are unpatentable.
`
`B. The ’941 patent
`According to the ’941 patent, software products have been developed
`to validate authorized software usage by writing a license signature onto the
`computer’s volatile memory. Ex. 1001, 1:19–21. However, the ’941 patent
`recognizes that these products are vulnerable to attack by “hackers” and the
`license signatures are “subject to the physical instabilities of their volatile
`memory media.” Id. at 1:21–26. The ’941 patent also recognizes that
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`hardware-based products developed to validate authorized software usage
`are “expensive, inconvenient, and not particularly suitable for software that
`may be sold by downloading.” Id. at 1:27–32.
`Thus, the ’941 patent discloses a method of restricting software
`operation within a license limitation that relies on the use of a key and a
`record, which have been written into the non-volatile memory of a computer.
`Id. at 1:39–42. In particular, the method is applicable for a computer having
`a first non-volatile memory area, a second non-volatile memory area, and a
`volatile memory area (see below discussion of Figure 1). Id. at 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.
`In a “specific non-limiting example,” a conventional computer
`includes a conventional Basic Input / Output System (“BIOS”) module in
`which a key constituting a unique identification code for the host computer
`was embedded at the read-only memory (“ROM”) section thereof during
`manufacture, wherein the key is stored in a non-volatile portion of the BIOS
`where it cannot be removed or modified. Id. at 1:44–49. A verification
`structure is set in the BIOS so as to indicate that the specified program is
`licensed to run on the specified computer. Id. at 1:59–62. The encrypted
`license record is stored in another (second) non-volatile section of the BIOS,
`e.g., the electrically erasable programmable read-only memory
`(“EEPROM”) section. Id. at 1:62–2:1. Unlike the first non-volatile section,
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`the data in the second non-volatile memory may be erased or modified so as
`to enable to add, modify or remove licenses. Id. at 2:1–5.
`Figure 1 of the ’941 patent is reproduced below.
`
`Figure 1 above shows a schematic diagram of computer processor 1 and
`license bureau 7. Id. at 5:9−16. 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
`BIOS), second non-volatile memory area 5 (e.g., the EEPROM section of
`the BIOS), and volatile memory area 6 (e.g., the internal random access
`memory (“RAM”) of the computer). Id.
`As shown in Figure 1, computer processor 1 is in temporary
`telecommunications linkage with license bureau 7. Id. at 5:17–18. The first
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`non-volatile memory includes pseudo-random identification key 8, which
`constitutes unique identification of the computer, and which exclusively or
`in combination with other information (e.g., user name), is sufficient to
`uniquely differentiate the first non-volatile memory from all other first non-
`volatile memories. Id. at 5:19–24. The second non-volatile memory
`includes license-record-area 9, which contains encrypted license records 10–
`12, and the volatile memory accommodates license program 16 having
`license record fields 1–15 appended thereto. Id. at 5:15–29.
`
`C. The Challenged Claims
`Of the challenged claims, only claim 1 is independent. Claims 2, 3,
`6−14, and 16 directly or indirectly depend from claim 1.1 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, 6:59–7:4.
`
`
`1 Claims 4, 5, 15 and 17–19 are not challenged in this proceeding. See
`generally Pet.
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`D. Prior Art Relied Upon
`Petitioner relies upon the references listed below (Pet. 6−7):
`
`Reference
`Hellman, U.S. Patent
`No. 4,658,093
`Chou, U.S. Patent
`No. 5,892,906
`Schneck, U.S. Patent
`No. 5,933,498
`
`Date
`
`Exhibit No.
`
`Apr. 14, 1987
`
`Ex. 1004
`
`July 19, 1996
`
`Ex. 1005
`
`November 5, 1997 Ex. 1006
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 7):
`
`Claims Challenged 35 U.S.C. §2
`
`References
`
`1, 2, 11, 13
`
`103(a)
`
`Hellman, Chou
`
`1−3, 6−14, 16
`
`103(a)
`
`Hellman, Chou, Schneck
`
`Petitioner relies on the Declarations of Andrew Wolfe, Ph.D.
`(Exs. 1003, 1033) in support of its unpatentability contentions. Patent
`Owner provides the Declarations of Jon B. Weissman, Ph.D. (Exs. 2003,
`2006), Ian Jestice (Exs. 2004, 2017), and David Martin, Ph.D. (Ex. 2018).
`
`2 The ’941 patent was filed on October 1, 1998, and claims priority to a
`foreign-filed application dated May 21, 1998. Ex. 1001, codes (22), (30).
`These dates are before the AIA revisions to 35 U.S.C. § 103 took effect on
`March 16, 2013. 35 U.S.C. § 100 (note). Therefore, pre-AIA § 103(a)
`applies. Our decision is not impacted by which version of the statute
`applies.
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`Dr. Wolfe was cross-examined by Patent Owner, and a transcript of his
`deposition was entered into the record. Ex. 2026.
`
`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
`entire patent including the Specification. See Phillips v. AWH Corp., 415
`F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (“Phillips”).
`Only those terms in controversy need to be construed, and only to the
`extent necessary to resolve the controversy. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co. Matal, 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)).
`In light of the parties’ arguments and supporting evidence, we find
`that it is necessary to address only the claim term “agent” recited in claim 1.
`
`“agent”
`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,
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`6:64−67 (emphasis added). The claim term also appears in claims 7, 14, and
`18. Id. at 7:5–8:64.
`Patent Owner proposes that the claim term “agent” requires
`construction. PO Resp. 30–36. Patent Owner contends that the term “agent”
`should be understood as “an ‘OS-level software program or routine,’ in view
`of file history that firmly establishes that the claimed ‘agent’ runs separate
`from the BIOS.” Id. at 32. Patent Owner further argues that the plain
`meaning of “agent” as “a software program or routine” excludes hardware in
`the context of the ’941 patent, since the ’941 patent “specifically
`distinguishes prior art hardware-based products.” PO Sur-Reply 2 (citing
`Ex. 1001, 1:27–35; Ex. 2018 ¶ 61 (“the ’941 patent discloses using existing
`computer hardware with ‘a conventional BIOS module.’”)).
`According to Patent Owner, the district courts have recognized
`“agent” as “a software program or routine.” PO Resp. 32. Similarly, Patent
`Owner contends that the court in the prior litigation involving the ’941
`patent held that “the plain and ordinary meaning [of] ‘agent’ is ‘a software
`program or routine.’” Id. at 33 (citing Ex. 1012, 3; Ex. 1013, 36). Patent
`Owner contends that construing “agent” as software-only is consistent with
`its plain meaning and the disclosure of the ’941 patent. PO Sur-Reply 3–5.
`Although Patent Owner contends that a person of ordinary skill in the
`art “is deemed to read the words used in the patent documents with an
`understanding of their meaning in the field,” Patent Owner also contends
`that “[t]he prosecution history also plays a role in claim interpretation.” PO
`Resp. 30–31 (citing Phillips, 415 F.3d at 1317–18). Patent Owner then
`argues “[r]emarks made both by the applicants and the examiner during
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`prosecution of the ’941 patent require a narrower interpretation of ‘agent.’”
`PO Resp. 33 (citing Rembrandt Wireless Techs. LP v. Samsung Elecs. Co.,
`853 F.3d 1370, 1376 (Fed. Cir. 2017); Kaken Pharm. Co. v. Iancu, 952 F.3d
`1346, 1354 (Fed. Cir. 2020)). Patent Owner contends that, during
`prosecution of the ’941 patent, “the applicant and the examiner both filed
`remarks that limit the ‘agent’ to an ‘OS-level software program or routine,’
`by distinguishing references in which BIOS programs stored information in
`the BIOS,” and, in view of these remarks, the Examiner allowed the claims.
`Id. at 34. According to Patent Owner, such interpretation of “agent” to be an
`“OS level software program or routine” is not inconsistent with positions it
`adopted in related district court cases, wherein, throughout claim
`construction briefing, it “noted that the claimed ‘agent’ is OS-level.” PO
`Sur-Reply 5–6.
`Patent Owner argues that “disavowal of claim scope can be shown by
`the applicant’s actions during prosecution of a patent, particularly when the
`examiner accedes to the applicant’s position.” PO Sur-Reply 7. Patent
`Owner refers to the prosecution history of the ’941 patent, wherein “the
`examiner’s reasons for allowance explained that the cited references ‘do not
`teach licensed programs running at the OS level interacting with a program
`verification structure stored in the BIOS’ and that ‘a computer BIOS is not
`set up to manage a software license verification structure.” Id. at 9 (citing
`Ex. 2011, 162) (emphasis omitted).
`Petitioner points out that the written description of the ’941 patent
`doesn’t mention “agent.” Pet. Reply 4. Specifically, the only mention of
`“agent” in the ’941 patent is in the claims as issued. See generally Ex. 1001.
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`Petitioner argues that Patent Owner’s narrowing construction on “agent” is
`unsupported in the disclosure of the ’941 patent. Pet. Reply 1–11.
`Petitioner contends that a claim term is given its “plain and ordinary
`meaning absent lexicography or disavowal.” Id. at 3 (citing Thorner v. Sony
`Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)).
`According to Petitioner, Patent Owner’s narrowing of “agent” can “only be
`justified on the basis of disavowal,” but the statements that Patent Owner
`relies on “do not meet the exacting standard for disavowal.” Id. at 4.
`a. Plain and Ordinary Meaning
`We are persuaded by Petitioner’s contention with provided evidence
`that the plain and ordinary meaning of “agent” is “well-defined and
`understood in the computer industry” as “a software program or routine.”
`Pet. Reply 3–4 (citing Ex. 2004, 1; Ex. 1073, 12; Ex. 1074, 7; Ex. 1070, 17;
`Ex. 1071, 2–3; Ex. 1072, 8; Ex. 1012, 3; Ex. 1013, 28–26; Ex. 2012 ¶¶ 93–
`94; Ex. 1075, 3). Even Patent Owner acknowledges that the district courts
`have held that “the plain and ordinary meaning [of] ‘agent’ is ‘a software
`program or routine.’” PO Resp. 33.
`b. Law of Lexicography and Disavowal
`As Petitioner points out, a claim term is given its “plain and ordinary
`meaning absent lexicography or disavowal.” Pet. Reply 3 (citing Thorner v.
`Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)).
`That is, “[t]here are only two exceptions to this general rule: 1) when a
`patentee sets out a definition and acts as his own lexicographer, or 2) when
`the patentee disavows the full scope of a claim term either in the
`Specification or during prosecution.” See Thorner, 669 F.3d at 1365.
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`For lexicography, “[e]ven when guidance is not provided in explicit
`definitional format, the Specification may define claim terms by implication
`such that the meaning may be found in or ascertained by a reading of the
`patent documents.” In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1150
`(Fed. Cir. 2012) (quoting Irdeto Access, Inc. v. Echostar Satellite Corp., 383
`F.3d 1295, 1300 (Fed. Cir. 2004)). For example, “a patent’s repeated and
`consistent description of a claim term may inform its construction.” Groove
`Digital, Inc. v. United Bank, 825 Fed. App’x 852 (Fed. Cir. 2020)
`(nonprecedential) (citing Abbott, 696 F.3d at 1150).
`For disavowal, a patentee disavows the full scope of a claim term
`either in the Specification or during prosecution. See Thorner, 669 F.3d at
`1365. For disavowal in the Specification to be applicable, “the
`[S]pecification must contain expressions of manifest exclusion or restriction,
`representing a clear disavowal of claim scope.” Cont’l Circuits LLC v. Intel
`Corp., 915 F.3d 788, 797 (Fed. Cir. 2019) (quotations and citations omitted).
`For disavowal during prosecution, “[t]he party seeking to invoke prosecution
`history disclaimer bears the burden of providing the existence of a ‘clear and
`unmistakable’ disclaimer that would have been evident to one skilled in the
`art.” Mass. Inst. Of Tech. v. Shire Pharms., Inc., 839 F.3d 1111, 1119 (Fed.
`Circ. 2016).
`
`c. Disavowal
`Patent Owner does not cite to any portion of the Specification that
`may define “agent” explicitly or implicitly. As discussed above, the only
`mention of “agent” in the ’941 patent is in the claims as issued. See
`generally Ex. 1001. Patent Owner’s briefing instead relies heavily on the
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`prosecution history of the ’941 patent to construe “agent” as “OS level
`software program or routine.” See PO Resp. 31–36; PO Sur-Reply 7–10.
`However, as Petitioner points out, the Specification of the ’941 patent
`does not mention “OS-level” or even “operating system.” Pet. Reply 4; see
`also generally Ex. 1001. In fact, during oral arguments, Patent Owner
`acknowledges that the ’941 patent does not mention “operating system.”
`Tr. 34 (“JUDGE CHERRY: Does your patent talk about operating system?
`MR. GOSSE: No, Your Honor, not explicitly.”). Thus, we focus our
`attention there.
`
`i. Prosecution History Overview
`As Patent Owner suggests, in order to construe the meaning of the
`term “agent” in claim 1, we look at the history of the ’941 patent as well as
`claim 1 itself. As shown in the history of the ’941 patent, the application as
`originally filed, including the originally filed claims, does not mention
`“agent.” See Ex. 2011, 21–35.
`As shown in the prosecution history of the ’941 patent, in an office
`action dated June 22, 2001 (“the June 22, 2001 Office Action”), the
`Examiner rejected claim 1 under 35 U.S.C. § 112, first paragraph, as
`containing subject matter which was not described in the Specification in
`such a way as to reasonably convey to one skilled in the relevant art that the
`inventors, at the time the application was filed, had possession of the
`claimed invention. Ex. 2011, 104–105, 108–109. In particular, the
`Examiner concluded that “the Applicants do not teach the device necessary
`to edit an EEPROM nor have they made it clear to the Examiner how their
`system would be implemented in light of the non-trivial processing required
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`to write and erase its data.” Id. at 109. In response to the June 22, 2001
`Office Action, in an amendment dated November 16, 2001 (id. at 121, 127,
`130, “the November 16, 2001 Amendment”), Applicant in the ’941 patent
`then amended claim 1 to include an “agent” to “set up the verification
`structure in the erasable, non-volatile memory of the BIOS.” See id. at 130.
`After the November 16, 2001 Amendment, in a non-final office action
`dated January 15, 2002, the Examiner rejected all claims under 35 U.S.C.
`§ 103(a) over Misra (U.S. Patent No. 6,189,146), Goldman (U.S. Patent No.
`5,684,951), and Ewertz (5,479,639). Ex. 2011, 139–140, 143–145. In
`response, in an amendment dated February 5, 2002, Applicant responded
`that “[t]he cited references . . . do not teach or suggest, among other things,
`storing a verification structure, such as a software license information, in the
`BIOS of a computer as is recited in the present claims.” Id. at 151.
`The Examiner then eventually allowed the claims, stating the reason
`for allowance as
`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 having a user act
`on the program according to the verification.
`
`Id. at 162. Further, the Examiner stated,
`
`it is well known to those of ordinary skill [in] the art that a
`computer BIOS is not setup to manage software license
`verification structure. The present invention overcomes this
`difficulty by using an agent to set up a verification structure in
`the erasable, non-volatile memory of the BIOS.
`
`Id.
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`ii. Does the Prosecution History Limit the “Agent” to
`OS-Level?
`
`Based on this complete record, and in particular, the prosecution
`history of the ’941 patent, we are unpersuaded by Patent Owner’s contention
`that, during prosecution of the ’941 patent, remarks by the applicant and the
`examiner “limit the ‘agent’ to an ‘OS-level software program or routine,’ by
`distinguishing references in which BIOS programs stored information in the
`BIOS.” PO Resp. 34. Turning to the prosecution history, we refer to Patent
`Owner’s reliance on the Notice of Allowance for forming the meaning of
`“agent”:
`
`the examiner’s reasons for allowance explained that the cited
`references “do not teach licensed programs running at the OS
`level interacting with a program verification structure stored in
`the BIOS” and that “a computer BIOS is not set up to manage a
`software license verification structure.” . . . The Examiner
`further stated 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.” . . . Taken as a
`whole, the examiner’s statement clearly and unmistakably
`refers to the claimed agent.
`
`PO Sur-Reply 9–10.
`But focusing on the Examiner’s statement in the Notice of Allowance,
`we find that the ’941 patent’s prosecution history does not unambiguously
`support Patent Owner’s “agent” claim construction, i.e., as an “OS-level”
`software program or routine. We find that, at most, the Examiner’s
`statement says that “licensed programs running at the OS level” interact with
`a program verification structure stored in the BIOS, wherein the agent is
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`used to set up the verification structure. Ex. 2011, 162. That is, the
`Examiner’s statement says that “licensed programs” interacting with the
`verification structure are “running at the OS level,” but does not say whether
`the “agent” setting up the verification structure is also OS-level. Id. We
`agree with Petitioner that “there is nothing clear or unmistakable about the
`alleged disavowal” of “agent” to the bounds of “OS-level,” and that the
`Examiner’s statement distinguishing the prior art references may be directed
`to “an entity different from the agent.” Pet. Reply 5.
`We find that the prosecution history cited by Patent Owner is, at best,
`ambiguous and, in any case, lacks a clear and unambiguous “disavowal” that
`would support Patent Owner’s proposed construction calling for the agent to
`be “OS-level.” The Examiner’s statement as to the reasons for allowance in
`the prosecution history was that 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, wherein an agent is used
`to set up a verification structure in the erasable, non-volatile memory of the
`BIOS. See Ex. 2011, 162. Thus, to the extent there was a disclaimer, it
`extends only to licensed programs running at the OS level interacting with
`the program verification structure stored in the BIOS. Applicant never
`argued to the Examiner in the ’941 patent’s prosecution that the agent itself
`is “OS-level.” Id.
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`In sum, for the reasons given, we are not persuaded by Patent Owner’s
`arguments that the claims should be construed as requiring the agent to be
`“OS level.”3
`As Patent Owner’s reliance on disavowal does not support its
`proposed construction, we determine that the definition of “agent” as recited
`in claim 1, discussed by the parties as a “software program or routine,” more
`aligns with the plain and ordinary meaning in light of the Specification and
`the claim language.
`
`
`iii. Software-only
`Based on the complete record, we are also unpersuaded by Patent
`Owner’s contention that the plain meaning of “agent” in the context of the
`’941 patent excludes hardware. PO Sur-Reply 2. In particular, we are
`unpersuaded by Patent Owner’s contention that “[t]he use of special
`hardware in the agent would be anathema to the ’941 patent, which
`specifically distinguishes prior art hardware-based products.” Id. (citing
`Ex. 1001, 1:27–35; Ex. 2018 ¶ 61 (the ’941 patent discloses using existing
`computer hardware with ‘a conventional BIOS module’”)). We refer to
`Patent Owner’s reliance on the Specification of the ’941 patent for
`supporting its construction of the “plain meaning” of “agent” as excluding
`hardware:
`
`
`3 Petitioner also contends that it is not clear what Patent Owner means by
`“OS-level” software. Pet. Reply 7–11. However, as discussed above, we
`agree with Petitioner that the Examiner’s statement regarding “OS-level” in
`the Notice of Allowance may be directed to “an entity different from the
`agent.” Id. at 5. Thus, we do not deem it necessary to construe “OS-level”
`to resolve the controversy.
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`
`
`Software based products have been developed to validate
`authorized software usage by writing a license signature onto
`the computer's volatile memory (e.g. hard disk). These
`products may be appropriate for restricting honest software
`users, but they are very vulnerable to attack at the hands of
`skilled system's programmers (e.g. “hackers”). These license
`signatures are also subject to the physical instabilities of their
`volatile memory media.
`
`Hardware based products have also been developed to
`validate authorized software usage by accessing a dongle that is
`coupled e.g. to the parallel port of the P.C. These units are
`expensive, inconvenient, and not particularly suitable for
`software that may be sold by downloading (e.g. over the
`internet).
`
`There is accordingly a need in the art to provide for a
`system and method that substantially reduce[s] or overcome[s]
`the drawbacks of hitherto known solutions.
`
`Ex. 1001, 1:19–35 (“Background of the Invention”).
`But focusing on Patent Owner’s cited passage in the “Background of
`the Invention” Section of the ’941 patent, we find that the ’941 patent’s
`Specification does not unambiguously support Patent Owner’s “agent” claim
`construction, i.e., as “software-only.” We find that, at most, the cited
`passage says that both software-based products and hardware-based products
`have been developed to validate authorized software, whereby software
`based products writing a license signature to the computer’s volatile memory
`(e.g. hard disk) are “vulnerable to attach at the hands of skilled system’s
`programmers (e.g. ‘hackers’),” while hardware-based products accessing a
`dongle coupled to the parallel port of the personal computer are “expensive,
`17
`
`
`
`IPR2021-01338
`Patent 6,411,941 B1
`
`inconvenient, and not particularly suitable for software that may be sold by
`downloading (e.g. over the internet).” Ex. 1001, 1:19–32. That is, the cited
`passage says that both software-based products and hardware-based products
`have drawbacks, but does not say whether the “agent” should be in software
`or hardware to overcome the drawbacks. Id. We find that there is nothing
`clear or unmistakable in the cited passage about the alleged disavowal of
`“agent” to the bounds of “software only,” and in fact, the cited passage is
`silent as to even the term “agent.” Id.
`We find, that the passage in the Specification of the ’941 patent cited
`by Patent Owner is, at best, ambiguous and, in any case, lacks any
`“disavowal” that would support Patent Owner’s proposed construction
`calling for the agent to exclude hardware. As Petitioner points out, “there
`generally must be something in the Specification that conveys to a skilled
`artisan that the inventor intended the exclusion, such as a discussion of
`disadvantageous or alternatives.” Pet. Reply 16 (citing Novartis Pharmas.
`Corp. v. Accord Healthcare, Inc., 38 F.4th 1013 (Fed. Circ. 2022)). The
`cited passage in the Specification of the ’941 patent discusses the drawbacks
`of particular prior art software-based products and hardware-based products
`that had been developed to validate authorized software usage, but disclaims
`neither. See Ex. 1001, 1:19–35.
`We are persuaded by Petitioner’s contention and supporting evidence
`that the plain and ordinary meaning of “agent” as “computer program or
`routine” is not limited to software-only, and that the term “may be software,
`hardware, or both.” Pet. Reply 15 (citing Ex. 1038 (“Oxford Dictionary of
`Computing”), 11). As Petitioner points out, Patent Owner’s expert,
`
`18
`
`
`
`IPR2021-01338
`Patent 6,411,941 B1
`
`Dr. Martin, testified that “a mixed software/hardware entity does have a
`software component,” wherein “it may be possible to analyze the software
`component without the hardware,” depending on the specific circumstance.
`Id. at 16–17 (citing Ex. 1035, 117:7–123:10).
`In this case, there is no indication in the claim language, the
`Specification, or the prosecution history of any intent to only claim the
`preferred embodiment in which the agent excludes hardware components.
`See Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296,
`1306 (Fed. Cir. 2011) (quoting Epistar Corp. v. Int’l Trade Comm’n, 566
`F.3d 1321, 1335 (Fed. Cir. 2009)); SciMed Life Sys., Inc. v. Advanced
`Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001) (“Where the
`[S]pecification makes clear that the invention does not include a particular
`feature, that feature is deemed to be outside the reach of the claims of the
`patent, even though the language of the claims, read without reference to the
`[S]pecification, might be considered broad enough to encompass the feature
`in question.”). In sum, for the reasons given, we are not persuaded by Patent
`Owner’s arguments that the claims should be construed as requiring the
`agent to be “software-only.”
`As Patent Owner’s reliance on the Specification does not support its
`proposed construction, we determine that the dictionary definition discussed
`by the parties more closely aligns with the plain and ordinary meaning in
`light of the Specification and the claim language. In other words, we
`construe “agent” in claim 1 to mean a “computer program or routine”
`wherein such computer program or routine does not exclude hardware
`components.
`
`19
`
`
`
`IPR2021-01338
`Patent 6,411,941 B1
`
`
`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
`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 non-obviousness. 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
`(“POSITA”) 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 “would have had at least two
`years of experience with computer science and computer engineering,
`
`20
`
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`IPR2021-01338
`Patent 6,411,941 B1
`
`including information encryption, computer architecture, and firmware
`programming,” citing to the declaration of Dr. Wolfe for support. Pet. 24
`(citing Ex. 1003 ¶¶ 21−25).
`Patent Owner contends that the POSITA “would be an individual
`who, as of the 1997/1998 time frame, had earned an accredited Bachelor’s
`degree in electrical engineering, computer engineering, or computer science,
`or an equivalent education or level of knowledge,” and had “two years of
`industrial experience with computer hardware, software, and operating
`systems,” citing to the declaration of Dr. Martin for support. PO Resp. 29
`(citing Ex. 2018 ¶ 51).
`The parties propose simil
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