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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NINTENDO CO., LTD., and
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`NINTENDO OF AMERICA INC.,
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`Petitioners,
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`v.
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`ANCORA TECHNOLOGIES, INC.,
`Patent Owner.
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`PTAB Case No. IPR2021-01338
`Patent No. 6,411,941 B1
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`PETITIONERS’ REPLY TO PATENT OWNER RESPONSE
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION 0002.0. cccccccccecccecceecceeccececesceeseceseeeseeenscceaeceseeessceeseeeseeeseeees 1
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`Il.
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`ARGUMENT..00o.o...c cece ccccccccccesceesccesceeseeseseeeaeceaeeceeecaeeeaeeeseeesaeeeaeeeseeeeeeneeeneees 3
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`A.
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`Patent Owner’s Narrowing Construction of “Agent”Is
`Unsupported, and Hellman Discloses the Claimed “Agent”
`Even Underthat Construction. -..........0...0..ccceccceesceseceeseeeeceeseeeeseenseees 3
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`1.
`2.
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`The “OS-Level” Requirement.........0..000000000cecceeeeeeeeeeeeeeeeeeeees 3
`The Software-Only Requirement.............0...000...0cccceeseeeeeeeeees 14
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`B.—Hellman Discloses the Claimed “Verification Structure”.................. 18
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`C.
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`Patent Owner’s Attacks Fail to Undermine Anyofthe Petition’s
`Motivations to Combine..................0.cccceccceeceescceecceeeeeseeeseceseeeseeeeseens 20
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`D.
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`Patent Owner’s Arguments Against Ground 2 Fail to Show Any
`Alleged Non-Functionality of the Combination...............00000000..00...- 23
`E.—The Objective Evidence Further Confirms the Obviousness of
`the Charms. ...... 2... cee cee cccccecccesceesccescecesecseeeesecesecesseeseeesseeeseeeseeeseeeseeens 24
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`1.
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`2.
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`The Alleged “Industry Praise” Was a Joint Press Release
`Written by Ancora... ec cee cee cece ceecceeecceeeceseeenseeeseeeseenseeees 24
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`The Only TwoLicenses with Clear Connections to the
`Hellman/Chou/Schneck Grounds
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`eceseceeseceseeeseeseseeeseeeseeeseeeseeees 25
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`II.
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`CONCLUSION
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`00. ..cc cece cececcceccecccesceesceeseeeeeeeseeceaecsecesseeseeceaeesaeeeeeeseenseeneees 27
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`-i-
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`I.
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`Petitioner’s Reply to Patent Owner’s Response
`PTAB Case No. IPR2021-01338
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`INTRODUCTION
`Nintendo challenged the ’941 Patent’s claims on two grounds: obviousness
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`over Hellman/Chou (Ground 1); and obviousness over Hellman/Chou/Schneck
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`(Ground 2). (Paper 1 (“Petition”).) The combination in Ground 1 is strikingly
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`simple. Hellman discloses nearly all of the features of claim 1, including using an
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`agent to store a license record in EEPROM. Hellman does not disclose that the
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`EEPROM is BIOS EEPROM. However, Chou discloses BIOS EEPROM and
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`motivates storing sensitive information in BIOS EEPROM to discourage
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`tampering.
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`The Patent Owner Response (Paper 23 (“POR”)) focuses almost exclusively
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`on Ground 1, arguing that the combination lacks the “using an agent . . .” step, as
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`well as other issues. While apparently not disputing that Hellman has an “agent,”
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`Ancora argues that Hellman does not have the right kind of agent because the
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`claimed agent must be “OS-level software.” This position is remarkable for two
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`reasons.
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`First, the ’941 Patent never even mentions an “agent.” Ancora points to
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`statements during prosecution as disclaiming any broader scope of “agent.”
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`Curiously though, the single office action response to which Ancora points also
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`never mentions “agent.”
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`Petitioner’s Reply to Patent Owner’s Response
`PTAB Case No. IPR2021-01338
`Second, over 14 years of litigation, 15+ district court cases, and 10+ Patent
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`Office proceedings, it was only with the preliminary response in this proceeding
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`that Ancora argued for the first time that “agent” should be construed as “OS-level
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`software.” In fact, Ancora has always previously argued that “agent” should be
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`construed much more broadly as a “software process or routine.”
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`Ancora’s new, narrow construction for “agent” is best viewed in historical
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`context. TCL first presented the Hellman/Chou combination in its IPR in 2020.
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`Ancora sought to avoid institution with a narrowing construction of “license
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`record.” The Board spotted and rejected that improper narrowing.
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` When Sony filed a copycat
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`petition, Ancora sought to avoid institution by narrowing “agent” to software only.
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`The Board spotted and rejected that improper narrowing.
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` Only after termination of that IPR did Ancora sue
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`Nintendo—later that same day.
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` it knows that the Hellman/Chou
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`combination is fatal to the challenged claims.
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` Ancora has turned to another, new, and improper narrowing of the
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`claims. The Board should again reject Ancora’s attempt.
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`-2-
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`Petitioner’s Reply to Patent Owner’s Response
`PTAB Case No. IPR2021-01338
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`II. ARGUMENT
`A.
`Patent Owner’s Narrowing Construction of “Agent” Is
`Unsupported, and Hellman Discloses the Claimed “Agent” Even
`Under that Construction.
`Ancora argues that “agent” should be construed as “OS-level software
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`program or routine.” This construction contains two separate limitations: (1) that
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`the agent be software only, i.e., that it cannot include hardware (POR, 32
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`(paragraph beginning “At minimum…”)); (2) that the agent be “OS-level”
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`software (POR, 33 (paragraph beginning “Remarks made…”)).
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`1.
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`The “OS-Level” Requirement
`a.
`There is no basis for limiting “agent” to “OS-level”
`software.
`While Ancora never mentions “disclaimer” or “disavowal,” that is the legal
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`theory that Ancora is applying for at least the “OS-level” limitation. A claim term
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`is given its plain and ordinary meaning absent lexicography or disavowal. Thorner
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`v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Ancora
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`has repeatedly argued not only that “agent” should be construed as “software
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`process or routine,” but that “software program or routine” is the plain and
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`ordinary meaning of the term: “The term ‘agent’ is a well-defined and understood
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`term in the computer industry. An agent is a software program or routine.”
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`(EX2004, 1 (Ancora’s expert).) “‘Agent’ has a defined meaning in the art as a
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`‘Software Program or Routine.’” (EX1073, 12 (Ancora Claim Construction
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`Petitioner’s Reply to Patent Owner’s Response
`PTAB Case No. IPR2021-01338
`Brief).) “‘Agent’ is a term known in the art to mean ‘software program or
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`routine.’” (EX1074, 7 (Ancora Claim Construction Brief).) See also EX1070, 17
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`(Ancora Claim Construction Brief) at 17 (“As demonstrated by both the intrinsic
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`and extrinsic evidence in this case, ‘agent’ is well understood to refer to a
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`‘software program or routine’.”); EX1071, 2-3 (Ancora Claim Construction Brief);
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`EX1072, 8 (Ancora Claim Construction Brief); EX1012, 3 (court adopting Ancora
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`construction of “agent” as “software program or routine”); EX1013, 28-36 (same);
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`EX2013, ¶¶ 93-94 (Ancora expert in Sony IPR); EX1075, 3 (Ancora Claim
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`Construction Disclosure (Jan. 2022)). Hence, a narrowing of “agent” to only “OS-
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`level” software can only be justified on the basis of disavowal.
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`Ancora does not rely on the specification for disavowal; in fact the
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`specification never once mentions “agent” or “operating system.” (See
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`generally ’941 Patent; EX1035, 133:22-134:15.) Instead, Ancora relies on a single
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`office action response during prosecution as allegedly establishing the disclaimer.
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`(POR, 33-35; EX2018, ¶¶77-79 (same for Ancora’s expert).)
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`However, the statements that Ancora relies on do not meet the exacting
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`standard for disavowal. “The party seeking to invoke prosecution history
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`disclaimer bears the burden of proving the existence of a ‘clear and unmistakable’
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`disclaimer that would have been evident to one skilled in the art.” Mass. Inst. of
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`Tech. v. Shire Pharms., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016). “There is no
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`Petitioner’s Reply to Patent Owner’s Response
`PTAB Case No. IPR2021-01338
`‘clear and unmistakable’ disclaimer if a prosecution argument is subject to more
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`than one reasonable interpretation, one of which is consistent with a proferred
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`meaning of the disputed term.” Intellectual Ventures I LLC v. T-Mobile USA, Inc.,
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`902 F.3d 1372, 1380 (Fed. Cir. 2018). Here there is nothing clear or unmistakable
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`about the alleged disavowal, and the more reasonable interpretation is that the
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`“OS-level” descriptor was being applied to an entity different from the agent.
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`Ancora premises the alleged disavowal on a single office action response,
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`and the examiner’s alleged adoption of the arguments contained in that response.
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`(POR, 34 (citing Feb. 5, 2005 office action response at EX2011, ANCC000149-
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`156).) As Ancora alleges, the applicant argued in the office action response that
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`the claims differed from the prior art cited by the examiner because “Misra and
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`Ewertz are an OS program and a BIOS program, respectively, that cannot run at
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`the same time,” and “there is no teaching or suggestion to combine these
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`programs.” (EX2011, ANCC000153.) Ancora emphasizes the following
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`statement: “Software license management applications, such as the one of the
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`present invention, are operating system (OS) level programs.” (Id.; POR, 34
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`(quoting same).) However, far from establishing a clear and unmistakable
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`disavowal of the scope of “agent,” the office action response never once mentions
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`the “agent.” In six pages of arguments explaining why a POSA would not have
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`Petitioner’s Reply to Patent Owner’s Response
`PTAB Case No. IPR2021-01338
`combined an OS-level reference with a BIOS-level reference, the applicant never
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`once said that the agent had to be “OS-level” software.
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`The more reasonable reading of the applicant’s arguments, and the one
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`adopted by the Federal Circuit, is that the applicant was describing the unrecited
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`“software license management applications” that perform claim 1. In one of the
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`appeals addressing the ’941 Patent, the Federal Circuit considered whether the
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`prosecution arguments disclaimed the scope of “program” to be only “application
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`programs” (i.e., excluding OS programs). Ancora Techs., Inc. v. Apple, Inc., 744
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`F.3d 732, (Fed. Cir. 2014). The court distinguished between the “program” recited
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`in the claims—the “to-be-verified program”—and the unrecited program that
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`“when run, performs the claimed verification steps”—the “verifying software” in
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`the court’s language. Id. at 735 (emphasis added). The court explained that the
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`office action in question, and the examiner’s notice of allowance, “are focused on
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`the verifying software, not clearly (or in any event relevantly) on the to-be-verified
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`program.” Id. “[T]he applicants were clear that the OS-level language referred to
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`the verifying software.” Id. at 737.
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`Thus, the applicant’s arguments characterizing the “verifying software” did
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`not, and cannot, disclaim the scope of “agent.” As indicated by the Federal
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`Circuit, the “verifying software” performs the steps of the claimed invention. Id. at
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`735. Hence, this alleged “OS-level” software is the “verifying software” that uses
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`-6-
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`Petitioner’s Reply to Patent Owner’s Response
`PTAB Case No. IPR2021-01338
`an agent; it is not the agent itself. This is consistent with the examiner’s
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`explanation that the “present invention overcomes this difficulty [in the prior art]
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`by using an agent to set up a verification structure” in the BIOS memory.
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`(EX2011, ANCC000162 (emphasis added).) This also explains why in the
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`applicant’s lengthy arguments it never once mentioned the “agent,” and why in
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`interpreting these same arguments the Federal Circuit never once discussed the
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`“agent.” This prosecution history simply does not speak to the meaning of
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`“agent.”
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`Ancora cannot establish a clear and unmistakable disavowal that never even
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`mentions the claim term allegedly the subject of disavowal, and where the most
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`reasonable interpretation of the arguments is that the applicant was characterizing
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`an entirely different entity.
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`b.
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`It is not even clear what Ancora means by “OS-level”
`software.
`An additional reason why Ancora cannot establish a clear and unmistakable
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`disavowal of “agent” to “OS-level” software is that it is not even clear what “OS-
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`level” means and thus what scope would be disavowed.
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`In describing the verifying software as “operating system (OS) level
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`programs,” the applicant appeared to imply that “OS-level” meant anything that
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`ran after BIOS finished setup and the OS began operating:
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`Petitioner’s Reply to Patent Owner’s Response
`PTAB Case No. IPR2021-01338
`BIOS is a configuration utility. Software license management
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`applications, such as the one of the present invention are operating
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`system (OS) level programs. Therefore, BIOS programs and software
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`licensing management applications do not ordinarily interact or
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`communicate because when BIOS is running, the computer is in a
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`configuration mode, hence OS is not running. Thus, BIOS and OS
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`level programs are normally mutually exclusive.
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`(EX2011, ANCC000153; id. (“Thus, the systems described in Misra and Ewertz
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`are an OS program and a BIOS program, respectively, that cannot run at the same
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`time.”).)
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`The examiner seems to have understood “OS-level” in a similar way.
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`(EX2011, ANCC000162 (containing similar discussion, including: “However, the
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`key distinction between the present invention and the closest art, is that the Misra
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`et al., and Ginter et al. systems and the Ewertz et al. system run at the operating
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`system level and BIOS level, respectively.”).)
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`In the POR and accompanying declaration, Ancora characterized “OS-level”
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`in a similar but slightly different way, as meaning anything separate from the
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`BIOS. (POR, 32 (“…in view of file history that firmly establishes that the claimed
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`‘agent’ runs separate from the BIOS.”); EX2018, ¶131 (“The claimed ‘agent’
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`would be understood as a software program or routine separate from the BIOS.”).)
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`Petitioner’s Reply to Patent Owner’s Response
`PTAB Case No. IPR2021-01338
`In his declaration, Mr. Mullor characterized “OS-level” differently, as “a
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`software element that operated on the OS of the device.” (EX2030, ¶4; EX1034,
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`57:6-58:12 (connecting this language to the claimed “agent”).)
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`At deposition, Mr. Mullor characterized “OS-level” consistent with the POR
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`as separate from the BIOS:
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`Q: So the question is, what do you mean by a software element that
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`operated on the OS?
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`A: It’s a way to describe code that runs in the context of the operating
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`system and not in the context of the BIOS.
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`(EX1034, 59:7-12.) But the inventor also used the characterization from the file
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`history as anything that runs after the BIOS setup is complete. (EX1034, 59:14-
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`60:3 (“At that point the operating system runs and the BIOS program doesn’t.
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`The agent that we developed with AMI was running after the operating system
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`has started to run, so that's the definition in context.” (emphasis added)).) “OS-
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`level” software does not mean the operating system software itself. “It was not the
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`operating system. Obviously, we did not develop Windows.” (EX1034, 61:2-5
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`(describing allegedly embodying software).)
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`At deposition, Ancora’s expert provided more varying characterizations of
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`what “OS-level” means. Dr. Martin at one point used the “OS-level”
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`characterization from the file history of anything running after the BIOS setup
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`Petitioner’s Reply to Patent Owner’s Response
`PTAB Case No. IPR2021-01338
`completes. (EX1035 at 94:11-95:19 (explaining that BIOS is “activity that
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`[precedes]1 the running of the operating system”).) At another point, Dr. Martin
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`provided an entirely new characterization of “OS-level” as “relat[ing] to programs
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`that are running that use the running operating system services, as part of their
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`operation.” (EX1035, 100:8-22 (emphasis added).) On another occasion,
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`Dr. Martin merged the preceding two characterizations: “the software in question
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`is relying on operating system services and is doing so after the operating system is
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`running.” (EX1035, 101:19-102:9; id. at 103:9-104:2.) On another occasion,
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`Dr. Martin explained that “OS-level” “can be thought of as running through the
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`operating system.” (EX1035, 101:19-102:4.) On another occasion, Dr. Martin
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`explained that “OS-level” was “foreshadow[ed]” by the ’941 Patent’s reference to
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`the use of EEPROM manipulation commands. (EX1035, 138:7-17
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`(discussing ’941 Patent, 2:65).)
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`Collectively, it is unclear what Ancora proposes that “OS-level” even
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`means. Is an agent that runs after the BIOS finishes setup sufficient to be an “OS-
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`level” agent? Is an agent that runs separate from the BIOS sufficient to be an “OS-
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`level” agent? Or is something more required? Ancora cannot establish its burden
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` The transcript identifies this word as “perceives,” though undersigned counsel
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`believes the witness spoke “precedes.”
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`Petitioner’s Reply to Patent Owner’s Response
`PTAB Case No. IPR2021-01338
`of showing a clear and unmistakable disavowal of claim scope to the bounds of
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`“OS-level,” because Ancora has not even shown with any degree of clarity what
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`the bounds of “OS-level” are. (EX1033, ¶¶4-5.)
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`c.
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`Hellman discloses or at least renders obvious an “OS-
`level” agent.
`While there is no basis for the “OS-level” disclaimer that Ancora seeks,
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`Hellman nonetheless discloses an “OS-level” agent.
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`Hellman, like the ’941 Patent, does not explicitly mention an operating
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`system. Dr. Martin testified that an operating system was nonetheless discernible
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`in the disclosure of the ’941 Patent, at least because it discloses an application
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`program (e.g., Lotus 1 2 3) that would run at the “OS level.” (EX1023, 102:20-
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`103:8; 105:11-106:11.) In other words, if the disclosure includes some software
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`application that would generally rely on an OS to run, then the disclosure also
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`discloses an OS.
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`Hellman contains the same type of disclosure, disclosing a “software
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`package 17” that runs on a “software player 42.” (Hellman, 10:33-11:3.) Further,
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`“if the software is a computer program, then the software player 42 would be a
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`microprocessor or central processing unit (CPU).” (Hellman, 11:1-3.) A POSA
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`would thus have understood that when the base unit 12 is a computer with a CPU
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`running a computer program, that base unit 12 has an operating system on which
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`the computer program (i.e., software package 17) runs. (EX1033, ¶¶27-30.)
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`-11-
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`Petitioner’s Reply to Patent Owner’s Response
`PTAB Case No. IPR2021-01338
`As to an “OS-level” agent, Hellman discloses or at least renders obvious that
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`feature regardless of the interpretation of “OS-level” being used.
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`First, while Ancora has presented various other interpretations of “OS-
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`level,” the only discernible meaning of that term in the prosecution history is that
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`the agent is able to write to the BIOS memory device, while also being available to
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`be used by the OS-level “verifying software.” The applicant argued that
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`“[s]oftware license management applications, such as the one of the present
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`invention, are operating system (OS) level programs.” (EX2011, ANCC000153.)
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`The applicant went on to explain that “[t]here is no OS support whatsoever to write
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`data to the system BIOS.” (Id. at ANCC000154.) The examiner apparently agreed
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`with this “two worlds divided” view of BIOS and OS, explaining that “the closest
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`prior art systems, singly or collectively, do not teach licensed programs2 running at
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`the OS level interacting with a program verification structure stored in the
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`BIOS…” (Id. at ANCC000162.) The examiner explained that “[t]he present
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`invention overcomes this difficulty by using an agent to set up a verification
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`structure in the erasable, non-volatile memory of the BIOS.” (Id.)
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` The Federal Circuit later recharacterized this reference to “licensed programs” to
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` 2
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`instead be referring to the “verifying software” that runs at the OS-level. Ancora v.
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`Apple, 744 F.3d at 736-37.
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`Petitioner’s Reply to Patent Owner’s Response
`PTAB Case No. IPR2021-01338
`The meaning of “OS-level” in the prosecution history thus only requires that
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`the agent is capable of being used by an OS-level “verifying software” and capable
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`of writing to the BIOS memory.
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`Hellman’s update unit 36 meets those requirements. The update unit 36 is
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`capable of—even provided specifically for—writing licensing data to the
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`specialized EEPROM (non-volatile memory 37). (Hellman, 9:64-10:13, 10:33-
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`11:3, Fig. 6, Fig. 8; Petition, 24-29, 40-41.) The update unit 36 is capable of being
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`used by the OS-level “verifying software” to set up the license record in the
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`EEPROM and also to update it when the user attempts to run the software package
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`17. (Id.; EX1033, ¶¶30-31.) When Hellman was modified based on the teachings
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`of Chou, Hellman’s EEPROM was the BIOS EEPROM disclosed in Chou.
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`(Petition, 30-35, 40-41.)
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`Hellman also discloses, or at least renders obvious, Ancora’s other
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`characterizations of “OS-level.”
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`First, Hellman’s update unit 36 runs separate from the BIOS. Dr. Martin
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`agreed that Hellman does not even disclose a BIOS. (EX2018, ¶143.) Hellman’s
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`update unit 36 thus cannot be provided as part of the BIOS. (EX1033, ¶¶39-40.)
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`Second, Hellman’s update unit 36 runs after the BIOS setup has completed
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`and the OS has started running. The update unit 36 reads/writes from the
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`EEPROM every time the user attempts to run the software package 17. (Hellman,
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`Petitioner’s Reply to Patent Owner’s Response
`PTAB Case No. IPR2021-01338
`10:33-11:3, Fig. 8; Petition, 41-42.) This is an activity that would be performed by
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`the OS, not the BIOS, and thus the update unit 36 is still running after the BIOS
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`setup is complete and the OS is running. (EX1033, ¶¶39-40.)
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`Third, Hellman discloses or renders obvious that update unit 36 runs
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`“through an OS,” using OS resources, and executing EEPROM manipulation
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`commands. As discussed above, a POSA would have understood that Hellman
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`disclosed, or at least rendered obvious, that the base unit 12 includes an OS at least
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`where software player 42 executes a software program on a microprocessor or
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`CPU. (Hellman, 10:33-11:3; EX1033, ¶¶27-30.) Similarly, a POSA would have at
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`least found it obvious that the update unit 36 uses “OS services” and runs
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`“through” an OS at least because update unit 36 provides access to non-volatile
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`memory, reads and writes data from that memory, and performs arithmetic and
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`comparison operations, which a POSA would have found obvious to use OS
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`resources. (EX1033, ¶¶27-31.) Further, the update unit 36 executes EEPROM
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`manipulation commands and performs memory operations. (Hellman, 9:64-10:13,
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`10:33-11:3, Fig. 6, Fig. 8; Petition, 40-42; EX1033, ¶¶32-38.)
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`2.
`The Software-Only Requirement
`As with “OS-level,” Ancora’s software-only construction is both overly
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`narrow and also fully disclosed by Hellman.
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`Petitioner’s Reply to Patent Owner’s Response
`PTAB Case No. IPR2021-01338
`There is no basis for limiting “agent” to only
`software.
`If Ancora’s software-only construction is based on prosecution disclaimer,
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`a.
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`then the Board should reject that position for the same reasons discussed for OS-
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`level. The applicant’s prosecution statements did not characterize “agent.”
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`To the extent that Ancora argues that the plain and ordinary meaning of
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`“agent” is software-only, that position is incorrect. (EX1033, ¶¶5-8.) Ancora
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`provided dictionary definitions referencing software in the definition of “agent.”
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`But other dictionaries explain a broader definition, saying it “may be software,
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`hardware, or both.” (EX1038, 11 (Oxford Dictionary of Computing).) Patent
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`literature close to the time of invention disclosed hardware agents for managing
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`software licenses. (EX1039; EX1033, ¶5 (discussing same).) The plain and
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`ordinary meaning did not exclude hardware.
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`The Board previously observed the error in construing “agent” as software-
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`only. (Institution Decision (Paper 17) at 27-29, Sony Mobile Commc’ns AB v.
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`Ancora Techs., Inc., IPR2021-00663 (June 10, 2021).) Construing “agent” to be
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`software-only is effectively a negative limitation excluding hardware. (Id. at 28-
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`29.) The ’941 Patent has no support such a negative limitation: “Apart from the
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`claims, the Specification of the ’941 patent does not use the term ‘agent,’ much
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`less sets forth a definition for the term ‘agent’ that excludes an implementation of
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`software and hardware.” (Id. at 28-29.) That is legally insufficient: “While a
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`Petitioner’s Reply to Patent Owner’s Response
`PTAB Case No. IPR2021-01338
`negative limitation need not be recited in the specification in haec verba, there
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`generally must be something in the specification that conveys to a skilled artisan
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`that the inventor intended the exclusion, such as a discussion of disadvantages or
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`alternatives.” Novartis Pharmas. Corp. v. Accord Healthcare, Inc., No. 2021-
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`1070, ---- F.4th ----, 2022 WL 2204163, *2 (Fed. Cir. June 21, 2022).
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`Construction of “agent” as software-only is also inconsistent with, and
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`narrower than, Ancora’s own past infringement allegations. In its complaints for
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`infringement against Nintendo and Roku, Ancora alleged that “one or more OTA
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`servers owned or controlled by [Nintendo / Roku] set up a verification structure,”
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`which is the activity performed by the claimed “agent.” (EX1076, ¶44; EX1077,
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`¶34.) Ancora apparently felt no need to clarify that it was only accusing the
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`software on those servers and excluding their hardware.
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`Ancora’s software-only construction is also a blatant and arbitrary line-
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`drawing exercise, as demonstrated by the deposition testimony of its expert
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`witness. Dr. Martin was repeatedly asked the simple question of whether a
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`combined software/hardware entity could be an agent. (EX1035, 117:7-123:10.)
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`Instead of answering “No,” Dr. Martin repeatedly evaded. (Id.) When pressed
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`further, Dr. Martin exposed the meaninglessness of the software-only distinction:
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`“However, a mixed software/hardware entity does have a software component.
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`And it may be possible to analyze the software component without the hardware,
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`Petitioner’s Reply to Patent Owner’s Response
`PTAB Case No. IPR2021-01338
`but it depends on the specific circumstance.” (Id. at 123:6-10.) In other words,
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`while a combined software/hardware entity would allegedly not be a software-only
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`agent, one could simply draw the line around just the software portion and call that
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`the “agent.” (EX1033, ¶26.)
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`b. Hellman discloses or at least renders obvious a
`software only agent.
`Dr. Wolfe explained in his opening declaration that a POSA “would have
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`recognized that the update unit 36 would have been implemented by software,
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`hardware, or some combination of the two.” (EX1003, ¶¶137A-137B.) Dr. Wolfe
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`explained that because Hellman did not require either a hardware or a software
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`implementation, and because the activities performed by update unit 36 could be
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`performed in either hardware or software, a POSA would have recognized that
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`update unit 36 could be implemented in hardware, software, or both. (Id.)
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`Dr. Wolfe explained that a POSA would have been motivated to implement the
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`update unit 36 in software in particular, because that would allow updates in the
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`field. (Id.)
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`Dr. Martin argues that Hellman would not be modified from a hardware-
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`only implementation to a software-only implementation. (EX2018, ¶¶168-176.)
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`But Dr. Martin does not respond to Dr. Wolfe’s opinion that Hellman already
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`disclosed a software implementation, and thus would not need any modification.
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`(EX1033, ¶¶17-18.)
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`Petitioner’s Reply to Patent Owner’s Response
`PTAB Case No. IPR2021-01338
`In any case, to the extent that some modification of Hellman’s update unit
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`36 were needed to achieve a software-only implementation, a POSA would have
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`found it obvious to make such a change. Dr. Wolfe already explained one such
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`motivation for doing so—allowing update of the implementation logic in the field.
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`(EX1003, ¶¶137A-137B.) Dr. Martin’s implication that the reference to “wires,
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`switches, and glue” in Hellman discourages software implementation is inapposite;
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`any computer, including those with software, would have such components.
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`(EX1033, ¶19.) The record player embodiment in Hellman is also irrelevant, given
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`that record players included software and Hellman has a separate computer
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`embodiment. (Hellman, 10:67-11:3; EX1033, ¶¶20-21.) The existence of security
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`vulnerabilities would also not discourage a software-only implementation, as a
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`POSA would have known techniques for reducing the risk of such vulnerabilities.
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`(EX1033, ¶¶22-25.) See also Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165
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`(Fed. Cir. 2006) (“[A] given course of action often has simultaneous advantages
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`and disadvantages, and this does not necessarily obviate motivation to combine.”).
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`B. Hellman Discloses the Claimed “Verification Structure”
`Ancora alleges that the Petition fails to identify the claimed “verification
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`structure” separate from the claimed “memory of the BIOS.” (POR, 62-63.) But
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`the POR overlooks or misunderstands the mapping of that feature in the Petition.
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`Petitioner’s Reply to Patent Owner’s Response
`PTAB Case No. IPR2021-01338
`(EX1033, ¶¶42-47.) Ancora’s expert for his part simply does not address this
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`issue.
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`The Petition explained that the update unit 36 in Hellman set up a
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`“verification structure” in the non-volatile memory 37 when it stored the license
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`count value for the software program 17 at the memory location determined by the
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`hash value H (which was calculated using the contents of the software program
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`17). (Petition, 41.) As Dr. Wolfe’s elaborated, this memory structure in the non-
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`volatile memory 37 storing at least one value M at memory addresses defined by at
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`least one hash value H was a “verification structure.” (EX1003, ¶135.) In other
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`words, Hellman disclosed a data structure—effectively a table—stored in the non-
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`volatile memory 37 that used a specific algorithm for allocating memory addresses.
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`(EX1033, ¶¶42-47.)
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`It is not clear what more Ancora believes is required by the “verification
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`structure.” The ’941 Patent for its part only describes a process for setting up or
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`interacting with the “verification structure,” but no details on its content or format.
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`(’941 Patent, Abstract, 1:59-62, 2:62-3:3, 3:51-52, 6:18-21.) The ’941 Patent
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`mentions in a single instance an “E2PROM database” that may be intended as a
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`“verification structure” (Id. at 2:20-26), but Ancora does not explain why a
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`“database” would qualify as a “verification structure” and Hellman’s data structure
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`would not. (EX1033, ¶¶42-47.)
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`Petitioner’s Reply to Patent Owner’s Response
`PTAB Case No. IPR2021-01338
`Similarly, the ’941 Patent’s inventor (and Ancora’s owner), Mr. Mullor, was
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`unable to provide any detail on what was required by a “verification structure” that
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`he alleged was embodied in a product he developed. Mr. Mullor declared that the
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`product had a “verification structure.” (EX2033, ¶4.) But he could not provide
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`any details as to how he knew there was a verification structure, what
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`characteristics it had, or what format it had. (EX1034, 69:2-78:11.) He simply
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`knew it was there because of the effects of its use. (Id. at 69:21-70:7, 74:2-75:19.)
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`Hellman has at least the “verification structure” required by the claims.
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`Indeed, with its specific addressing algorithm, Hellman provides more details on
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`the “verification structure” than does the ’941 Patent. (EX1033, ¶¶42-47.)
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`C.
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`Patent Owner’s Attacks Fail to Undermine Any of the Petition’s
`Motivations to Combine.
`Ancora attacks the Petition’s four distinct motivations to combine Hellman’s
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`EEPROM with Chou’s BIOS EEPROM (Petition, 30-35; POR, 52-56), but none of
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`the attacks are well placed. (EX1033, ¶¶48-61.)
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`First, Ancora alleges that Chou does not address tamper prevention. (POR,
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`52, 53.) Chou discloses that storing sensitive information in the BIOS memory
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`means that any attempt to modify or delete the sensitive information would result
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`in disabling the boot process of the computer, rendering it unusable. (Chou, 1:63-
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`2:7) Even if Chou does not use the word “tampering,” a POSA would have
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`Petitioner’s Reply
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