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` Paper 9
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` Entered: January 27, 2022
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NINTENDO CO., LTD., and NINTENDO OF AMERICA INC.,
`Petitioner,
`v.
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`IPR2021-01338
`Patent 6,411,941 B1
`____________
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`
`
`
`
`
`Before THU A. DANG, JONI Y. CHANG, and KEVIN W. CHERRY,
`Administrative Patent Judges.
`
`
`CHANG, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
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`IPR2021-01338
`Patent 6,411,941 B1
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`
`INTRODUCTION
`I.
`Nintendo Co., Ltd. and Nintendo of America Inc. (collectively,
`“Petitioner”) filed a Petition requesting an inter partes review (“IPR”) of
`claims 1−3, 6−14, and 16 (“the challenged claims”) of U.S. Patent No.
`6,411,941 B1 (Ex. 1001, “the ’941 patent”). Paper 1 (“Pet.”), 6. Ancora
`Technologies, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 7,
`“Prelim. Resp.”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless the information presented in the petition “shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” For the reasons stated
`below, we determine that Petitioner has established a reasonable likelihood
`that it would prevail with respect to at least one claim. We hereby institute
`an inter partes review as to all of the challenged claims of the ’941 patent
`and all of the asserted grounds of unpatentability.
`
`A. Related Matters
`The parties indicate that the ’941 patent is involved in the following
`cases: Ancora Technologies, Inc. v. Nintendo Co., Ltd., No. 6:21-cv-00738
`(W.D. Tex.); Ancora Technologies, Inc. v. Apple Inc., No. 11-cv-06357
`YGR (N.D. Cal.) (“the Apple case”); Ancora Technologies, Inc. v. VIZIO,
`Inc., No. 6:21-cv-00739 (W.D. Tex.); Ancora Technologies, Inc. v. Roku,
`Inc., No. 6:21-cv-00737 (W.D. Tex.); Ancora Technologies, Inc. v. Google,
`LLC, No. 6:21-cv-00735 (W.D. Tex.); Ancora Technologies, Inc. v. TCT
`Mobile (US) Inc., Nos. 8:19-cv-02192, 2:20-cv-01252 (C.D. Cal.) (“the TCT
`case”); Ancora Technologies, Inc. v. Lenovo Group Limited, No. 1:19-cv-
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`01712 (D. Del.); Ancora Technologies, Inc. v. Sony Corp., No. 1:19-cv-
`01703 (D. Del.); Ancora Technologies, Inc. v. LG Electronics, Inc., No.
`1:20-cv-00034 (W.D. Tex.) (“the LG case”); Ancora Technologies, Inc. v.
`Samsung Electronics Co., Ltd., No. 6:19-cv-00385 (W.D. Tex.); and Ancora
`Technologies, Inc. v. HTC America, Inc., No. 2:16-cv-01919 (W.D. Wash.).
`Pet. 3−4; Paper 5, 1−2 (Patent Owner Mandatory Notices).
`The ’941 patent also is involved in Roku, Inc. v. Ancora Technologies,
`Inc., IPR2021-01406 (Pre-Institution).
`In addition, the ’941 patent was involved in ex parte Reexamination
`No. 90/010,560. Ex. 1001, 8−9 (Ex Parte Reexamination Certificate issued
`on June 1, 2010, confirming the patentability of claims 1−19 and indicating
`that no amendments have been made to the patent).
`The ’941 patent also was involved in the following proceedings:
`Apple Inc. v. Ancora Technologies, Inc., CBM2016-00023 (Institution
`Denied); HTC America, Inc. v. Ancora Technologies, Inc., CBM2017-00054
`(Institution Denied); Samsung Electronics Co., Ltd. v. Ancora Technologies,
`Inc., IPR2020-01184 (Institution Denied); TCT Mobile (US) Inc. v. Ancora
`Technologies, Inc., IPR2020-01609 (Terminated after Institution); HTC
`Corporation v. Ancora Technologies, Inc., IPR2021-00570 (Institution
`Denied); LG Electronics, Inc. v. Ancora Technologies, Inc., IPR2021-00581
`(Institution Denied); Samsung Electronics Co., Ltd. v. Ancora Technologies,
`Inc., IPR2021-00583 (Termination before Institution); and Sony Mobile
`Communications AB v. Ancora Technologies, Inc., IPR2021-00663 (Joined
`with IPR2020-01609; Terminated after Institution).
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`B. The ’941 patent
`The ’941 patent discloses a method of restricting software operation
`within a license limitation that is applicable for a computer having a first
`non-volatile memory area, a second non-volatile memory area, and a volatile
`memory area. Ex. 1001, code (57). According to the ’941 patent, the
`method includes the steps of selecting a program residing in the volatile
`memory, setting up a verification structure in the non-volatile memories,
`verifying the program using the structure, and acting on the program
`according to the verification. Id.
`Figure 1 of the ’941 patent is reproduced below.
`
`
`Figure 1 above shows a schematic diagram of computer processor 1
`and license bureau 7. Id. at 5:9−19. Computer processor 1 is associated
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`with input operations 2 and output operations 3. Id. Computer processor 1
`contains first non-volatile memory area 4 (e.g., the read-only memory
`(“ROM”) section of the Basic Input / Output System (“BIOS”)), second
`non-volatile memory area 5 (e.g., the electrically erasable programmable
`read-only memory (“EEPROM”) section of the BIOS), and volatile memory
`area 6 (e.g., the internal random access memory (“RAM”) of the computer).
`Id.
`
`C. Illustrative Claim
`Of the challenged claims, only claim 1 is independent. Claims 2, 3,
`6−14, and 16 directly or indirectly depend from claim 1. Claim 1 is
`illustrative:
`1. A method of restricting software operation within a license for
`use with a computer including an erasable, non-volatile memory
`area of a BIOS of the computer, and a volatile memory area; the
`method comprising the steps of:
`selecting a program residing in the volatile memory,
`using an agent to set up a verification structure in the erasable,
`non-volatile memory of the BIOS, the verification structure
`accommodating data that includes at least one license record,
`verifying the program using at least the verification structure
`from the erasable non-volatile memory of the BIOS, and
`acting on the program according to the verification.
`Ex. 1001, 6:59–7:4 (emphasis added).
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`1. 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
`
`Apr. 6, 1999
`
`Aug. 3, 1999
`
`Ex. 1005
`
`Ex. 1006
`
`2. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 7):
`
`Claims Challenged
`
`35 U.S.C. §
`
`References
`
`1, 2, 11, 13
`
`103(a)
`
`Hellman, Chou
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`1−3, 6−14, 16
`
`103(a)
`
`Hellman, Chou, Schneck
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, we construe a patent claim “using the same
`claim construction standard that would be used to construe the claim in a
`civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2019).
`Under this standard, the words of a claim are generally given their “ordinary
`and customary meaning,” which is the meaning the term would have to a
`person of ordinary skill at the time of the invention, in the context of the
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`entire patent including the specification. See Phillips v. AWH Corp., 415
`F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc).
`Petitioner asserts that the claims of the ’941 patent have been
`construed by the District Court in three cases—namely, the Apple case, the
`LG case, and the TCT case. Pet. 22−23 (citing Ex. 1011 (Final Claim
`Construction Order in the Apple case); Ex. 1012 (Final Claim Construction
`Order in the LG case); Ex. 1013 (Supplemental Claim Construction Order in
`the LG case); Ex. 1014 (First Telephonic Markman Hearing Order in the
`TCT case entered on November 12, 2020); Ex. 1015 (Second Telephonic
`Markman Hearing Order in the TCT case entered on November 19, 2020)).
`Petitioner states that it does not believe that any claim construction are
`needed for purposes of this review. Id. at 23.
`Patent Owner proposes its constructions for the following terms: “a
`computer,” “agent,” “to set up a verification structure,” and “memory of the
`BIOS.” Prelim. Resp. 17−40.
`In light of the parties’ arguments and supporting evidence in this
`preliminary record, we find that it is necessary to address only the claim
`terms identified below expressly for purposes of this Institution Decision.
`See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (noting that “we need only
`construe terms ‘that are in controversy, and only to the extent necessary to
`resolve the controversy’”).
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`“computer”
`A portion of the preamble of claim 1 recites “a computer including an
`erasable, non-volatile memory area of a BIOS of the computer, and a
`volatile memory area.” Ex. 1001, 6:60−62. Patent Owner argues that this
`portion of the preamble is a claim limitation because it provides antecedent
`basis for the following terms recited in the body of claim 1: (1) “the volatile
`memory,” (2) “the erasable, non-volatile memory of the BIOS,” and (3) “the
`erasable non-volatile memory of the BIOS.” Prelim. Resp. 17−18.
`Petitioner argues that, even if the preamble is considered limiting, the
`combination of Hellman and Chou would have rendered the preamble of
`claim 1 obvious. Pet. 35, 49.
`Regardless of whether the preamble is limiting, as discussed below,
`we find that Petitioner shows sufficiently for purposes of institution that the
`recitation in the preamble is satisfied by the prior art. Therefore, it is not
`necessary for us to determine whether the aforementioned portion of the
`preamble is limiting.
`Patent Owner also argues that the term “computer” should be
`construed as “a digital data processor that includes one or more non-volatile
`memory and volatile memory areas.” Prelim. Resp. 17−19. However,
`Patent Owner’s proposed claim construction would render the language “a
`computer including . . . non-volatile memory area . . . and a volatile memory
`area” superfluous.
`“[C]laims are interpreted with an eye toward giving effect to all terms
`in the claim.” Bicon Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir.
`2006); see also Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362
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`(Fed. Cir. 2007) (denouncing claim constructions which render phrases in
`claims superfluous). “A claim construction that gives meaning to all the
`terms of the claim is preferred over one that does not do so.” Merck & Co.,
`Inc. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (citing
`Elekta Instrument S.A. v. O.U.R. Sci. Int’l, Inc., 214 F.3d 1302, 1307 (Fed.
`Cir. 2000)); see also Gen. Am. Transp. Corp. v. Cryo-Trans, Inc., 93 F.3d
`766, 770 (Fed. Cir. 1996) (rejecting district-court claim construction that
`rendered claim requirement superfluous).
`Therefore, for purposes of this Decision, we decline to adopt Patent
`Owner’s proposed claim construction for the term “computer.”
`
`“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,
`6:64−67 (emphasis added).
`Patent Owner proposes that the term “agent” should be construed as
`“‘an OS-level software program or routine running on the recited
`conventional computer to write and/or erase data’ (i.e., performing the task
`of writing and/or erasing data without the need for additional or specialized
`hardware).” Prelim. Resp. 20−31. Patent Owner argues that “the Federal
`Circuit and other courts uniformly recognize [that] this ‘agent’ is an
`OS-level software program or routine running on the recited conventional
`computer to write and/or erase data (i.e., it executes without the need for
`additional or specialized hardware).” Id.
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`However, the cases cited by Patent Owner do not support Patent
`Owner’s proposed claim construction. Only the District Court in the LG
`case construed the claim term “agent.” The District Court in the LG case
`determined that “a plain and ordinary meaning is appropriate” and that “the
`plain and ordinary meaning of ‘agent’ is ‘a software program or routine’”
`because, “[a]s demonstrated by [Patent Owner] through its references to
`intrinsic and extrinsic evidence, agent has a well-established meaning of ‘a
`software program or routine.’” Ex. 1012, 3; Ex. 1013, 36−37 (emphasis
`added).
`The District Court in the other related cases (the Apple case and the
`TCT case) did not construe the term “agent.” Ex. 1011, 20; Ex. 1014, 21.
`Moreover, the Federal Circuit, in both Ancora v. Apple and Ancora v. HTC,
`also did not construe the term “agent.” Ancora Technologies., Inc. v. Apple
`Inc., 744 F.3d 732, (Fed. Cir. 2014); Ancora Technologies., Inc. v. HTC
`America, Inc., 908 F.3d 1343 (Fed. Cir. 2018).
`As such, for purposes of this Decision, we decline to adopt Patent
`Owner’s proposed claim construction for the term “agent” as it would
`improperly import extraneous requirements into the claims that are not
`supported by evidence. It is well-settled that if a feature is not necessary to
`give meaning to what the inventor means by a claim term, it would be
`“extraneous” and should not be read into the claim. Renishaw PLC v.
`Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du
`Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433
`(Fed. Cir. 1988).
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`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 nonobviousness.1 See Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966).
`
`C. Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(quotation marks omitted).
`Here, Petitioner asserts that a person of ordinary skill in the art in the
`context of the ’941 patent “would have had been at least a B.S. degree in
`computer science, computer engineering, or electrical engineering (or
`
`1 Neither party presents evidence or arguments regarding objective evidence
`of nonobviousness in the instant proceeding at this time.
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`equivalent experience)” and “would have had at least two years of
`experience with computer science and computer engineering, including
`information encryption, computer architecture, and firmware programming,”
`citing to the declaration of Andrew Wolfe, Ph.D., for support. Pet. 24 (citing
`Ex. 1003 ¶¶ 21−25). At this juncture, Patent Owner does not dispute that
`assessment. See generally Prelim. Resp.
`For purposes of this Decision, we adopt the level of ordinary skill as
`articulated by Petitioner because, based on the current record, this proposal
`appears to be consistent with the ’941 patent, the asserted prior art, and
`supported by the testimony of Dr. Wolfe.
`
`D. Overview of the Asserted Prior Art
`Hellman (Exhibit 1004)
`
`Hellman discloses a method and an apparatus in which use of a
`software package can be authorized for a particular base unit a specific
`number of times. Ex. 1004, 4:37−40. Figure 1 of Hellman is reproduced
`below:
`
`
`Figure 1 above illustrates a block diagram of a pay-per-use software
`control system. Id. at 5:1−2. Base unit 12 communicates with authorization
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`and billing unit 13 over an insecure communication channel 11, using
`transmitter-receiver units 14, 16. Id. at 5:39−42. The user at base unit 12
`obtains software package 17 by purchasing it and requests for software use.
`Id. at 5:51−59. Authorization and billing unit 13 receives the user’s request,
`generates authorization A for unit 12 to use software package 17 an
`additional N times, and sends authorization A to base unit 12. Id. at 6:3−8.
`Figure 8 of Hellman is reproduced below.
`
`
`Figure 8 above depicts an implementation of base unit 12 during use
`of a software package. Id. at 10:33−34. Software package 17 is connected
`to base unit 12 and a signal representing software package 17 is operated on
`by one-way hash function generator 33 to produce an output signal which
`represents hash value H. Id. at 10:34−38. Signal H is transmitted to update
`unit 36 to indicate which software package is being used. Id. at 10:38−40.
`Update unit 36 uses value H as an address to non-volatile memory 37, which
`responds with a signal representing M, the number of uses of software
`package 17 which are still available. Id. at 10:40−43.
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`If value M is greater than 0, then update unit 36 sends a control signal
`to switch 41 which activates software player 42, allowing it to use software
`package 17. Id. at 10:44−46. Update unit 36 also decrements M to M−1 and
`stores this as the new value in address H in non-volatile memory 37. Id. at
`10:46−49. If M=0, then update unit 36 does not change the contents of non-
`volatile memory 37, but neither does it send a control signal to activate
`software player 42. Id. at 10:50−53. Thus, the user is prevented from using
`software package 17 for which he does not have current authorized use. Id.
`at 10:53−54.
`
`Chou (Exhibit 1005)
`Chou discloses an apparatus and a method for discouraging computer
`theft. Ex. 1005, code (57). Chou’s invention requires that a user enters a
`unique word or number related to the particular computer each time the
`computer is powered up. Id. at 2:11−14. Chou discloses a security routine
`that is stored in the BIOS memory. Id. at 2:14−16. The security routine
`requires verification of a password entered by the user, or a verification of a
`quantity read from an externally connected memory device. Id. at 2:16−18.
`Chou also discloses that, at the time of its invention, “[r]ecent changes
`in the computer BIOS memory storage devices permit writing data to the
`BIOS memory, offering the opportunity to provide password protection
`within the same memory which stores the BIOS routines.” Id. at 1:63−66.
`And, “any attempt to delete the protection will result in the BIOS routine
`being disabled, disabling the boot up process.” Id. at 1:66−2:1. “EEPROM
`flash devices may be programmed with BIOS routines which permit the user
`to enter data without requiring the computer to be returned to the
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`manufacture.” Id. at 2:2−4. According to Chou, its “invention makes use of
`these new BIOS memory devices for effecting security measures which
`discourage theft.” Id. at 2:4−7.
`
`Schneck (Exhibit 1006)
`
`Schneck discloses a technique that “controls access to and use and
`distribution of data.” Ex. 1006, 6:49−50. Schneck’s technique can be used
`to “control how much of the software’s functionality is available.” Id. at
`6:53−56. Schneck prevents the authorization to use software on one device
`from being used on another, unauthorized device, to address the “secondary
`distribution” problem. Id. at 2:40−67, 6:57−62.
`
`E. Obviousness Over Hellman, Chou, and Schneck
`Petitioner asserts that claims 1, 2, 11, and 13 are unpatentable under
`§ 103(a) as obvious over Hellman and Chou (Ground 1), and that claims
`1−3, 6−14, 16 are unpatentable as obvious over Hellman, Chou, and
`Schneck (Ground 2). Pet. 24–67. For each of the prior art combinations,
`Petitioner provides detailed explanations as to how the combination teaches
`or suggests each claim limitation, and articulates reasons to combine the
`prior art teachings, citing to Dr. Wolfe’s Declaration for support. Id. at
`24−67 (citing Ex. 1003). Patent Owner counters that the asserted
`combinations fail to disclose key elements of claim 1. Prelim. Resp. 48−64.
`Upon consideration of the parties’ arguments and supporting
`evidence, we determine that Petitioner has demonstrated a reasonable
`likelihood of prevailing on its assertion that claims 1−3, 6−14, and 16 are
`unpatentable under § 103(a) for the reasons discussed below.
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`a. Motivation to combine Hellman and Chou
`Petitioner asserts that “Hellman discloses almost all of the features of
`claim 1, including authorizing a software use through verification data stored
`in a non-volatile memory such as EEPROM,” and acknowledges that
`Hellman does not explicitly disclose storing M value (the claimed “license
`record”) in the BIOS memory. Pet. 30.
`Petitioner argues that Chou discloses that “embedding sensitive
`information in the BIOS memory reduced the risk of tampering with that
`information” because Chou explains that, “by storing sensitive information
`(passwords in Chou) in the BIOS memory, any attempt to delete or disable
`the sensitive information would also disable the BIOS program.” Id. at
`33−34 (citing Ex. 1005, 1:63−2:1). Indeed, Chou discloses that “EEPROM
`flash devices may be programmed with BIOS routines which permit the user
`to enter data without requiring the computer to be returned to the
`manufacture,” and that “[t]he present invention makes use of these new
`BIOS memory devices for effecting security measures which discourage
`theft.” Ex. 1005, 1:63−2:1.
`Petitioner asserts that, in light of Chou, a person of ordinary skill in
`the art would have been motivated to store value M (the claimed “license
`record”) in the BIOS EEPROM memory “in order to achieve Hellman’s
`purpose of discouraging tampering with the license information.” Id. at
`30−35 (citing Ex. 1004, 4:22−26; Ex. 1003 ¶¶ 112−116). Petitioner explains
`that it was well-known at the time of the invention that “a computer would
`have BIOS and that it would be common to store it in EEPROM memory.”
`Id. (citing Ex. 1005, 1:54−62, 2:2−7, 3:21−35; Ex. 1003 ¶¶ 105−111).
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`Indeed, during prosecution of the ’941 patent, Patent Owner admitted that
`“all computers must have a BIOS.” Ex. 1002, 51 (Prosecution History of the
`’941 patent—Office Action Response, dated February 5, 2002). Dr. Wolfe
`testifies that a person of ordinary skill in the art “would have been motivated
`to store BIOS together with the values M in the non-volatile memory 37, in
`order to discourage users from tampering with the values M.” Ex. 1003
`¶ 115 (citing Ex. 1005, 1:63−2:7).
`Based on the evidence in this current record, we determine that
`Petitioner has articulated a sufficient reason to combine the teachings of
`Hellman and Chou for purposes of this Decision.
`
`b. Motivation to combine Schneck’s teachings with Hellman and Chou
`Petitioner acknowledges that Hellman, as modified by Chou, does not
`expressly disclose storing M value (the claimed “license record”) in
`encrypted form. Pet. 46. According to Petitioner, Schneck discloses that
`“licensing information is transmitted in encrypted form,” and that any
`information stored on a non-volatile memory “should be stored in encrypted
`form to prevent an unauthorized use of a licensed software.” Id. at 47 (citing
`Ex. 1006, 9:46−59, 25:64−67). Indeed, Schneck discloses that “packaged
`data 108 may include access rules 116 in encrypted form,” and that “[s]ince
`all storage of data on internal non-volatile memory devices (for example,
`disks, flash memory, and the like) is encrypted, this ensures that a physical
`attack on the system will not result in compromise of plaintext.” Ex. 1006,
`9:46−59, 25:64−67.
`Petitioner avers that, in light of Schneck, a person of ordinary skill in
`the art would have stored Hellman’s value M (the claimed “license record”)
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`in encrypted form in the BIOS EEPROM memory, because storing value M
`in encrypted form “would have furthered Hellman’s goal of preventing a
`license authorization from being improperly duplicated.” Pet. 45−49
`(Ex. 1004, 1:39−2:53, 9:64−10:13, 10:55−65; Ex. 1006, 2:40−67, 17:6−12,
`25:64−67, 25:64−67; Ex. 1003 ¶¶ 139−150). Dr. Wolfe testifies that such an
`artisan would have recognized that storing value M in encrypted form would
`“prevent the sort of tampering described . . . and warned against by
`Schneck.” Ex. 1003 ¶¶ 145−146 (citing Ex. 1006, 16:64−17:12, 25:64−67).
`Based on the evidence in this current record, we determine that
`Petitioner has articulated a sufficient reason to combine the teachings of
`Schneck with the teachings of Hellman and Chou for purposes of this
`Decision.
`
`c. Claim 1
`The preamble of claim 1
`The preamble of claim 1 recites a “method of restricting software
`operation within a license for use with a computer including an erasable,
`non-volatile memory area of a BIOS of the computer, and a volatile memory
`area.” Ex. 1001, 6:59−62.
`Petitioner asserts that, “even if the preamble is considered limiting,
`Hellman disclosed all aspects of the preamble of claim 1, other than explicit
`mention of a BIOS and a memory storing the BIOS.” Pet. 35, 49.
`According to Petitioner, “Hellman discloses the required ‘method of
`restricting software operation within a license’ in the form of its method of
`limiting use of software within authorized uses.” Id. (citing Ex. 1004,
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`9:29−10:13, 10:33−54, 10:55−65; Ex. 1003 ¶¶ 98−104). Petitioner notes
`that Hellman’s base unit 12 has temporary memory 28 (e.g., RAM), and
`non-volatile memory 37 (e.g., EEPROM). Id. at 36 (citing Ex. 1004,
`2:24−27, 8:67−68, 10:1−4, Figs. 1, 6; Ex. 1003 ¶¶ 98−104). Petitioner also
`argues that Chou discloses a BIOS EEPROM on a computer. Id. at 37−38
`(citing Ex. 1005, 1:54−2:7, 3:21−35, Figs. 1, 3, 7; Ex. 1003 ¶¶ 104−106).
`Petitioner argues that, in view of Chou, an ordinarily skilled artisan “would
`have found it obvious to implement Hellman on a computer in which the
`same erasable, non-volatile memory 37 (e.g., EEPROM) stored both the
`license information disclosed in Hellman and the BIOS.” Id. at 38 (citing
`Ex. 1005, 1:63−2:7, 3:21−35; Ex. 1003 ¶¶ 105−111; Ex. 1002, 51); see also
`id. at 30−35.
`Patent Owner counters that “none of the three references discloses the
`limitation[] ‘a computer including an erasable, non-volatile memory area of
`a BIOS of the computer, and a volatile memory area.’” Prelim. Resp. 48.
`However, Patent Owner admitted during the prosecution of the ’941
`patent that “all computers must have a BIOS.” Ex. 1002, 51. As Petitioner
`explains, Hellman discloses a computer (base unit 12) that includes
`temporary memory 28 (RAM) and non-volatile memory 37 (EEPROM) and
`Chou discloses a BIOS EEPROM on a computer. Pet. 36−38 (citing
`Ex. 1004, 2:24−27, 8:67−68, 10:1−4, Figs. 1, 6; Ex. 1005, 1:54−2:7,
`3:21−35, Figs. 1, 3, 7; Ex. 1003 ¶¶ 98−106). Moreover, Dr. Wolfe testifies
`that a person of ordinary skill in the art “would have been motivated to use
`non-volatile memory 37 of Hellman to store BIOS because non-volatile
`memory 37 used a type of memory disclosed by Chou as being
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`advantageous for storing BIOS,” noting that Chou discloses that “a transition
`had occurred to using EEPROM for BIOS, and that the programmability of
`EEPROM made that an advantageous medium for storing BIOS.” Ex. 1003
`¶¶ 112−115 (citing Ex. 1005, 1:63−2:7).
`Therefore, we do not find Patent Owner’s argument that “none of the
`three references discloses the limitation[] ‘a computer including an erasable,
`non-volatile memory area of a BIOS of the computer, and a volatile memory
`area” undermine Petitioner’s obviousness showing on this record for
`purposes of this Decision. Prelim. Resp. 48. Rather, regardless of whether
`the preamble of claim 1 is limiting, we determine that Petitioner has shown
`sufficiently for purposes of this Decision that the combination of Hellman
`and Chou discloses the subject matter recited in the preamble of claim 1.
`
`“selecting a program residing in the volatile memory”
`As to the limitation “selecting a program residing in the volatile
`memory,” Petitioner argues that Hellman discloses selecting software
`package 17 (a computer program) residing in temporary RAM memory 28
`(volatile memory). Pet. 38−39 (citing Ex. 1004, 5:51−61, 8:67−9:2,
`9:15−28, 10:66−11:3; Ex. 1003 ¶¶ 121−129). Based on the evidence in this
`current record, we determine that Petitioner has shown sufficiently for
`purposes of this Decision that Hellman discloses the limitation “selecting a
`program residing in the volatile memory,” as recited in claim 1. At this
`juncture, Patent Owner does not make any argument regarding this
`limitation. See generally Prelim. Resp.
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`“using an agent to set up a verification structure in the erasable, non-
`volatile memory of BIOS, the verification structure accommodating data that
`includes at least one license record”
`Claim 1 recites “using an agent to set up a verification structure in the
`erasable, non-volatile memory of the BIOS, the verification structure
`accommodating data that includes at least one license record” (the “license
`record” limitation).
`For Ground 1, Petitioner asserts that Hellman discloses “using update
`unit 36 (acting as the required ‘agent’) to set up a verification structure in
`non-volatile memory 37 (the required ‘erasable, non-volatile memory’) as
`the non-volatile memory 37 was preferably implemented as EEPROM.”
`Pet. 40 (citing Ex. 1004, 10:1−4; Ex. 1003 ¶¶ 133−138). According to
`Petitioner, “update unit 36 sets up the required ‘verification structure’ in the
`non-volatile memory 37 at least in the form of storing the value M at a
`specific address H for a software program identified by that hash value H.”
`Id. at 41 (citing Ex. 1003 ¶¶ 133−138). Id. Petitioner argues that “value M
`is the required ‘license record,’ because it indicates the scope of authorized
`use—the number of uses, where ‘M’ is the number—for the specific
`software package 17 identified by hash value H.” Id. Petitioner contends
`that “[s]toring the value M at the address H constitutes setting up a
`versification structure because it includes storing a license record at a
`specific license record location that corresponds to the licensed program.”
`Id. (citing Ex. 1001, 1:59−62, 6:17−21; Ex. 1003 ¶¶ 133−138).
`Further, Petitioner argues that a person of ordinary skill in the art
`would have recognized that authorization and billing unit 13 may cooperate
`with update unit 36 to act as the “agent,” and that update unit 36 and
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`authorization and billing unit 13 were both implement in software or a
`combination of software and hardware. Id. (citing Ex. 1003 ¶¶ 137−138A).
`Dr. Wolfe testifies that a person of ordinary skill in the art would have been
`motivated to implement update unit 36 and authorization and billing unit 13
`in software in particular because that would have allowed the provider of the
`units to change the implementation logic of the units over time, without
`having to physically disassemble, modify, and reassemble the units.
`Ex. 1003 ¶¶ 137B−138B.
`For Ground 2, Petitioner also asserts that, in view of Schneck, a
`person of ordinary skill in the art would have been motivated to modify
`Hellman to store an encrypted license record (authorization A) in
`non-volatile memory 3
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