UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ROKU, INC. and VIZIO, INC.,
`Petitioners,
`
`v.
`
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner.
`____________________
`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`____________________
`
`PETITIONERS' REPLY TO
`PATENT OWNER’S RESPONSE
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`I.
`
`II.
`
`III.
`
`IV.
`
`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`
`TABLE OF CONTENTS
`HELLMAN DISCLOSES THE “AGENT” LIMITATION (ALL
`CHALLENGED CLAIMS). ............................................................................ 1
`A.
`The Prosecution History Does Not Limit “Agent” to “OS-Level
`Software.” .............................................................................................. 3
`Hellman Discloses an “Agent” Under the Correct Construction. ......... 8
`Hellman Renders Obvious an “Agent” Even Under Patent Owner’s
`(Incorrect) Construction. ....................................................................... 8
`1.
`A Skilled Artisan Would Have Implemented Hellman As
`Software. ..................................................................................... 9
`A Skilled Artisan Would Have Implemented Hellman As OS-
`Level Software. .........................................................................12
`THE COMBINATION OF HELLMAN AND CHOU DISCLOSES THE
`“VERIFICATION STRUCTURE” LIMITATION (ALL CHALLENGED
`CLAIMS). ......................................................................................................14
`PETITIONERS HAVE SHOWN A MOTIVATION TO COMBINE
`HELLMAN WITH CHOU AND SCHNECK (ALL CHALLENGED
`CLAIMS). ......................................................................................................16
`A.
`Petitioners’ Motivations to Combine Are Neither “Logically Flawed”
`Nor Incomplete (All Challenged Claims). ..........................................16
`1.
`Patent Owner’s Arguments Are Based on an Incorrect
`Characterization of Petitioners’ Proposed Combination. .........16
`The Petition Provides Motivation for Storing Hellman’s Value
`“M” in Hellman-Chou’s modified BIOS EEPROM. ................19
`Storing Hellman’s “Authorization A” in “Non-Volatile Memory 37”
`Would Not Render Hellman Inoperable for its Intended Purpose
`(Claims 3, 8-9, 14). ..............................................................................21
`PATENT OWNER’S “SECONDARY INDICIA” ARGUMENTS LACK
`MERIT. ..........................................................................................................22
`A.
`The AMI-Based Evidence Is Not Probative of Nonobviousness. .......23
`1.
`The AMI Press Release Is Self-Serving Marketing. .................23
`2.
` ........................................................................24
`The Patent Licenses Likewise Lack Probative Value of
`Nonobviousness...................................................................................25
`
`B.
`C.
`
`B.
`
`B.
`
`2.
`
`2.
`
`- i -
`
`

`

`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`CONCLUSION ..............................................................................................26
`
`V.
`
`
`
`
`- ii -
`
`

`

`Case IPR2021-01406
`
`U.S. Patent No. 6,411,941
`
`
`
`PETITIONERS' UPDATED EXHIBIT LIST
`
`Exhibit No.
`
`
`1001
`
`Description
`
`
`U.S. Patent No. 6,411,941 to Mullor et al. ("'941 Patent")
`
`Image File Wrapper of U.S. Patent No. 6,411,941 ("' 941 Patent
`
`
`
`1002
`File History")
`Declaration of Andrew Wolfe, Ph.D. ("Wolfe Deel.")
`
`
`
`1003
`
`
`U.S. Patent No. 4,658,093 ("Hellman")
`1004
`
`Ancora Techs., Inc. v. Sony Mobile Commc 'ns
`
`U.S. Patent No. 5,892,906 ("Chou")
`
`
`1005
`1006
`
`
`U.S. Patent No. 5,933,498 ("Schneck")
`
`Scheduling Order,
`
`
`Ancora Techs., Inc. v. TCT Mobile (US),
`1007
`
`No. 8: 19-cv-2192 (C.D. Cal. Mar. 17, 2020) (ECF No.
`Inc.,
`34)
`In re: Coronavirus Public Emergency, Order Concerning
`
`
`
`
`
`Phased Reopening of the Court, General Order No. 20-09,
`1008
`
`
`
`
`
`United States District Court for the Central District of
`
`California, Aug. 6, 2020
`Civil Docket,
`
`
`1009
`
`AB, No. 1:19-cv-01703 (D. Del.)
`Civil Docket,
`No.
`
`Ancora Techs., Inc. v. Lenovo Grp. Ltd.,
`1010
`
`1: 19-cv-01712 (D. Del.)
`
`Claim Construction Order,
`Ancora Techs., Inc. v. Apple Inc.,
`
`1011
`
`
`No. 4:11-cv-06357 (N.D. Cal. Dec. 31, 2012) (ECF No. 107)
`
`Final Claim Constructions of the Court,
`
`Ancora Techs., Inc.
`1012
`
`No. 1 :20-cv-00034 (W.D. Tex. June 2,
`
`v.LG Elecs., Inc.,
`2020) (ECF No. 69)
`Supplemental Claim Construction Order,
`
`
`Ancora Techs., Inc.
`
`1013
`
`No. 1:20-cv-00034 (W.D. Tex. Aug. 19,
`v.LG Elecs., Inc.,
`2020) (ECF No. 93)
`Joint Claim Construction and Prehearing Statement,
`
`
`Ancora
`1014
`
`No. 8:19-cv-2192 (C.D.
`
`
`Techs., Inc. v. TCT Mobile (US), Inc.,
`Cal. July 17, 2020) (ECF No. 49)
`
`
`
`
`1015
`Application")
`1016
`
`
`
`U.S. Patent No. 5,724,425 ("'425 Patent")
`1017
`
`
`
`('"236 Patent") U.S. Patent No. 6,138,236
`1018
`
`
`
`U.S. Patent No. 5,802,592 ('"592 Patent")
`
`
`
`U.S. Patent No. 5,835,594 ("'594 Patent")
`1019
`
`European Patent Application No. EP 0766165A2 ("' 165
`
`-111 -
`
`

`

`Exhibit No.
`
`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`Telephonic Markman Hearing, Ancora Techs., Inc. v. TCT
`Mobile (US), Inc., et al., No. 8:19-cv-2192 (C.D. Cal. Oct. 15,
`1020
`2020) (ECF No. 60)
`Telephonic Markman Hearing, Ancora Techs., Inc. v. TCT
`Mobile (US), Inc., et al., No. 8:19-cv-2192 (C.D. Cal. Oct. 15,
`2020)
`(ECF No. 69
`Complaint, Ancora Techs., Inc. v. TCL Corp., et al., No. 4:19-
`cv-00624 (E.D. Tex. Aug. 27, 2019)
`(ECF No.1
`U.S. Patent No. 5,734,819 (“Lewis”)
`File Wrapper of Ex Parte Reexamination of U.S. Patent No.
`6,411,941, Control No. 90/010,560 (“560 Reexam File
`Wrapper”
`Order Re: Joint Stipulation Re Stay Pending Jnter Partes
`Review, Ancora Techs., Inc. v. Vizio, Inc., No. 2:21-cv-08534
`C.D. Cal.)
`(ECF No. 78
`Order Granting Joint Motion to Stay Pending Jnter Partes
`Review, Ancora Techs., Inc. v. Roku, Inc., No. 6:21-cv-00737
`W.D. Tex.)
`(ECF No. 33
`Order Granting Joint Motion to Stay Pending Jnter Partes
`Review, Ancora Techs., Inc. v. Nintendo Co., Ltd., et al., No.
`6:21-cv-00738 (W.D. Tex.)
`(ECF No. 46
`Board Email Authorizing Motion For Additional Discovery,
`May 27, 2022
`Plaintiff's Responsive Claim Construction Brief, Ancora
`Techs., Inc., et al. v. LG Electronics, et al., Case No. 1:20-cv-
`00034-ADA (W.D. Tex., April 10, 2020)
`(ECF No. 50
`Intentionally Left Blank
`Declaration of Andrew Wolfe, Ph.D., in Support of Petitioners’
`Reply to Patent Owner’s Response
`Transcript of the Deposition of Miki Mullor, July, 12, 2022
`Confidential
`Transcript of the Deposition of David Martin, Ph.D., July 14,
`2022
`Plaintiff's Opening Claim Construction Brief, Ancora Techs.,
`Inc., et al. v. LG Electronics, et al., Case No. 1:20-cv-00034-
`ADA(W.D. Tex., March 20, 2020)
`(ECF No. 44
`Denon DP-35F/DP-45F Instruction Manual, Nippon Columbia
`Co., Ltd.
`Excerpt from Dictionary ofComputing, 4° ed., Oxford
`University Press, 1996
`U.S. Patent No. 5,568,552 to Davis
`Guttman, B., et al., Computer Security, National Institute of
`Standards and Technology, 1995
`
`1027
`
`1028
`
`1029
`
`1030-1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`
`
`-IvV-
`
`

`

`Exhibit No.
`1041
`
`
`
`Case IPR2021-01406
`US. Patent No. 6,411,941
`
`
`
`Description
`Kaliski, B., “PKCS #1: RSA Encryption,” RFC 2313, The
`Internet Society, Network Working Group, March 1998
`U.S. Patent No. 5,724,425 to Changetal.
`1042
`U.S. Patent No. 5,935,246 to Benson
`1043
`1044-1049|Intentionally Left Blank
`
`
`
`

`

`
`
`I.
`
`
`
`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`Patent Owner’s responsive arguments all lack merit and should be rejected.
`
`
`
`HELLMAN DISCLOSES THE “AGENT” LIMITATION (ALL
`CHALLENGED CLAIMS).
`Patent Owner’s “agent” arguments are based on a construction limiting that
`
`claim term to pure “OS-level software.” POR, 32; EX1035, 140:18-141:12. That
`
`construction is significantly narrower than what Patent Owner has advanced in
`
`more than a dozen proceedings involving the ’941 patent over the past decade,
`
`where Patent Owner has all along argued—successfully, no less—that “agent”
`
`encompasses any type of software. EX1036, 18 (Patent Owner arguing that
`
`“‘agent’ means ‘a software program or routine’”); EX1012, 3 (court adopting
`
`Patent Owner’s construction); EX1013, 36; EX1035, 33:17-36:14, 92:17-93:16
`
`(Patent Owner’s expert testifying that his interpretation of “agent” here is narrower
`
`than the construction applied in his infringement expert report in related litigation).
`
`After having consistently and successfully advanced a broad construction of
`
`“agent” for infringement, Patent Owner cannot now advance an entirely new, and
`
`much narrower, construction in an attempt to evade Petitioners’ obviousness
`
`challenge. 01 Communique Lab., Inc. v. Citrix Sys., Inc., 889 F.3d 735, 743 (Fed.
`
`Cir. 2018) (claims “may not, like a nose of wax, be twisted one way to avoid
`
`[invalidity] and another to find infringement” (cleaned up)).
`
`Regardless, Patent Owner’s construction fails on the merits. The plain and
`
`ordinary meaning of “agent” is not limited to software, let alone OS-level software,
`
`
`
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`

`

`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`and the specification does not refer to “agent,” an “operating system,” or “OS-level
`
`software” at all. EX1033, ¶¶1-9; EX2018, ¶128; EX1035, 133:22-135:3, 139:13-
`
`16; EX1034, 66:20-67:2. Even the extrinsic evidence cited by Patent Owner’s
`
`expert Dr. Martin does not refer to an OS-level agent. See EX2007-EX2010;
`
`EX1033, ¶10. Thus, as the Board correctly observed, Patent Owner’s construction
`
`“improperly imports” requirements “into the claims that are not supported by the
`
`evidence.” ID 10, 23.
`
`To justify its narrow construction, Patent Owner resorts to a prosecution
`
`history disclaimer theory. POR, 36. While Patent Owner does not use the word
`
`“disclaimer,” its invitation for the Board to limit “agent” is obviously premised on
`
`a disclaimer theory. GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309
`
`(Fed. Cir. 2014) (“[T]he specification and prosecution history only compel
`
`departure from the plain meaning in two instances: lexicography and disavowal.”);
`
`EX1035, 133:13-135:3, 139:13-140:1 (Dr. Martin acknowledging that his
`
`interpretation of “agent” is based primarily on the file history). But, as explained
`
`below, Patent Owner cannot—and has not even tried to—meet the “exacting”
`
`
`
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`

`

`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`standard to show clear and unmistakable disclaimer. GE Lighting, 750 F.3d at
`
`1309. Thus, “agent’s” plain and ordinary meaning should prevail.1
`
`A. The Prosecution History Does Not Limit “Agent” to “OS-Level
`Software.”
`Patent Owner suggests that the applicant all along considered an OS-level
`
`agent to be a critical part of the purported invention. But, when read in context, the
`
`file history tells a different story.
`
`1.
`
`As originally filed, the claims recited “selecting a program” residing
`
`in memory and “setting up a verification structure”—the claims did not distinguish
`
`between the program being selected and that which was setting up the verification
`
`structure. EX1002, 14; EX1033, ¶13. Without such a distinction, the claims could
`
`have been incorrectly interpreted to require that the selected program itself set up
`
`the verification structure. Accordingly, the Examiner rejected the claims as non-
`
`enabling because they failed to recite a separate entity for performing the claimed
`
`setup step. EX1002, 116-117; EX1033, ¶13.
`
`To overcome that rejection, the applicant replaced the phrase “setting up [a]
`
`verification structure” with “using an agent to set up [a] verification structure,”
`
`
`1 In a parallel proceeding, Petitioners contend that “agent” is indefinite, and
`
`Petitioners maintain this view. At the very least, however, the term should not be
`
`construed as narrowly as Patent Owner urges here.
`
`
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`

`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`thereby clarifying that something other than the selected program sets up the
`
`verification structure. EX1002, 137; see also id., 127 (interview summary stating
`
`that “112 corrections” were discussed); id., 135 (applicant stating that claims were
`
`amended “as agreed upon during the interview”); EX1033, ¶13. Patent Owner’s
`
`own expert in a related case agreed with this interpretation of the file history.
`
`EX2004, ¶9 (testifying that original claim 1 “included the term ‘program’ to refer
`
`to the software program to be verified” and that “‘agent’ was added to the
`
`claims … to distinguish the software routine that wrote to the BIOS from the
`
`software program that was already claimed”).
`
`There is no indication in the file history that “agent” was added to the claims
`
`to require OS-level implementation. In fact, there is no indication that the applicant
`
`ever regarded the agent as a critical feature. Rather, the applicant all along
`
`emphasized that storing a license record in BIOS is what distinguished the
`
`purported invention from the prior art. Pet., 16-17 (citing EX1002, 197-201);
`
`EX1033, ¶12. Even in this proceeding, Patent Owner emphasized that “[s]toring
`
`the verification structure in BIOS memory was a ‘key distinction’” over the art, and
`
`that the BIOS limitation “was significant to the ’941 Patent’s innovation.” POPR
`
`35-36. One of the named inventors of the ’941 patent likewise testified at his
`
`deposition that setting up a verification structure in BIOS was “the key highlight of
`
`this technology.” EX1034, 74:4-75:16. Courts reviewing the ’941 patent’s file
`
`
`
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`

`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`history have also reached this same conclusion. EX1020, 18 (“In sum, the
`
`prosecution history demonstrates that the focus of the claims is that the verification
`
`structure is in the erasable portion of the non-volatile memory and uses the key in
`
`the separate non-erasable portion.” (emphasis added)). Thus, all agree that the
`
`purported novelty of the ’941 patent claims is storing a verification structure in
`
`BIOS, not using an “OS-level agent” to do so.
`
`2. With that context in mind, neither of the two sets of isolated remarks
`
`in the file history cited by Patent Owner give rise to a disclaimer.
`
`First, Patent Owner cites the applicant’s statement that “software license
`
`management applications, such as the one of the present invention,” are “operating
`
`system (OS) level programs.” POR, 34 (cleaned up). But this statement was made
`
`nearly three months after “agent” was added to the claims and does not purport to
`
`clarify or limit the meaning of that term. AIA Eng’g Ltd. v. Magotteaux Int’l, S/A,
`
`657 F.3d 1264, 1277 (Fed. Cir. 2011) (no disclaimer where statements did not
`
`“clarify[y] the meaning” of disputed claim term by “expressly or implicitly
`
`defin[ing]” the term). Further, in making this statement, the applicant did not
`
`distinguish any prior art from the ’941 patent claims, let alone on the basis that the
`
`art lacks an OS-level agent. Rather, the applicant merely argued that a skilled
`
`artisan would not have combined two references—i.e., a BIOS-level software
`
`
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`

`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`reference (Ewertz) and an OS-level software reference (Misra)—with each other.
`
`EX1002, 199.
`
`At most, the quoted statement might be read to suggest that the verifying
`
`software—i.e., the software that performs the claim steps—is OS-level software.
`
`Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732, 735-736 (Fed. Cir. 2014) (reading
`
`statements to suggest that the “verifying software” “would be implemented as
`
`application software, rather than lower-level system software”). But the verifying
`
`software is not itself the claimed agent; rather, the verifying software uses the
`
`agent to set up the verification structure. EX1001, 6:64 (claim 1 reciting “using an
`
`agent to set up a verification structure”); EX1033, ¶7; EX1035, 127:9-128:5
`
`(Dr. Martin acknowledging that it would be “somewhat strange” for an agent to
`
`“use” itself). Thus, even if the verifying software must be OS-level software, the
`
`agent need not be.
`
`Second, Patent Owner characterizes the Examiner’s Notice of Allowance as
`
`endorsing the view that the claims require an OS-level software agent. POR, 34.
`
`But like the applicant, the Examiner nowhere tied OS-level implementation to the
`
`agent, specifically. See EX1002, 213 (referring only to “licensed programs running
`
`at the OS level”). Regardless, “remarks in the examiner’s statement of reasons for
`
`allowance” are “insufficient to limit claim scope.” Apple, 744 F.3d at 737 (citing
`
`Salazar v. Procter & Gamble Co., 414 F.3d 1342, 1345 (Fed. Cir. 2005)).
`
`
`
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`

`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`At best, the quoted statements are ambiguous, which hardly evidences a
`
`clear and unmistakable disclaimer (or lexicography for that matter). In fact, the
`
`ambiguity here makes the file history unhelpful in informing the meaning of
`
`“agent” even in the absence of disclaimer. AIA Eng’g, 657 F.3d at 1277
`
`(prosecution history “not particularly helpful” given ambiguity in applicant’s
`
`statements). For that reason, moreover, Patent Owner’s cited cases are
`
`distinguishable, as each involved unambiguous statements clearly linked to a
`
`particular claim limitation. Kaken Pharm. Co. v. Iancu, 952 F.3d 1346, 1354 (Fed.
`
`Cir. 2020) (applicant made “unambiguous statement” during prosecution, which
`
`supported specification); Rembrandt Wireless Techs., LP v. Samsung Elecs. Co.,
`
`853 F.3d 1370, 1376 (Fed. Cir. 2017) (applicant made “unambiguous statement”
`
`giving definitional weight to added limitation contemporaneously with
`
`amendment).
`
`In the end, if the applicant had intended to claim “OS-level” software, as
`
`Patent Owner now alleges, it should (and could easily) have done so expressly.2
`
`
`2 Patent Owner also suggests that Dr. Wolfe did not consider the file
`
`history. POR, 57. That is false. See EX2026, 23:13-24:1; EX1033, ¶11.
`
`
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`
`

`

`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`B. Hellman Discloses an “Agent” Under the Correct Construction.
`Patent Owner does not dispute that Hellman discloses the claimed “agent”
`
`under a construction permitting a non-OS-level software agent to set up a
`
`verification structure. Nor can it do so now—arguments not made in the Patent
`
`Owner Response are waived. Microsoft Corp. v. Iron Oak Techs., LLC, IPR2019-
`
`00106, Paper 21 at 2-3 (P.T.A.B. 2020).
`
`In any event, such a challenge would fail. As Petitioners’ expert Dr. Wolfe
`
`explained, Hellman discloses an “agent” in the form of update unit 36, alone or
`
`with Hellman’s authorization and billing unit 13, which sets up a memory structure
`
`to verify a license. EX1003, ¶¶135-37; EX1033, ¶14; Pet., 38-39. That Hellman’s
`
`update unit (and authorization and billing unit) could interact with hardware does
`
`not defeat Petitioners’ obviousness challenge—as Dr. Martin acknowledged at his
`
`deposition, the claims do not “preclud[e] the use of hardware in setting up the
`
`verification structure.” EX1035, 131:14-19; see also id., 122:12-123:10, 129:9-
`
`130:22; EX1033, ¶15.
`
`C. Hellman Renders Obvious an “Agent” Even Under Patent
`Owner’s (Incorrect) Construction.
`Patent Owner does not explain what “OS-level software” means, and its
`
`expert Dr. Martin articulated several ambiguous interpretations at his deposition.
`
`He seemed to suggest, though, that software is OS-level software if it leverages OS
`
`
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`
`

`

`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`resources while the operating system is running. EX1035, 102:5-9, 105:4-10. Even
`
`with this narrow understanding, the claims are still obvious. EX1033, ¶16.
`
`1.
`
`A Skilled Artisan Would Have Implemented Hellman As
`Software.
`Dr. Wolfe opined in his opening declaration, and reaffirmed at his
`
`deposition, that a skilled artisan would have been motivated to implement update
`
`unit 36 and authorization and billing unit 13 in software because that would have
`
`allowed the provider of the base unit and authorization and billing unit “to change
`
`the implementation logic” of the units over time, “without having to physically
`
`disassemble, modify, and reassemble” them. EX1003, ¶¶137B, 138B; Pet., 39;
`
`EX2026, 34:17-19, 35:9-18; EX1033, ¶¶17-18. Patent Owner does not
`
`meaningfully dispute these benefits. Instead, Patent Owner advances several
`
`arguments as to why, notwithstanding these benefits, a skilled artisan would not
`
`have implemented Hellman in software form. Each fails.
`
`First, Patent Owner and Dr. Martin point to Hellman’s disclosure of a
`
`“switch 41,” a “wire,” “epoxy,” and “numerous ‘signals’” as apparent proof that
`
`“Hellman’s system requires particular hardware.” POR, 60; EX2018, ¶¶164, 172.
`
`As an initial matter, not all of these things need be hardware. EX2026, 35:8-15
`
`(Dr. Wolfe testifying that Hellman’s switch can be “implemented in software”). In
`
`any event, that Hellman’s system uses some hardware—like any computer system,
`
`including the ’941 patent’s computer system—in no way suggests that Hellman’s
`
`
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`
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`

`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`update unit (or authorization and billing unit) is limited to hardware. EX1033, ¶19;
`
`EX1035, 163:18-164:21 (Dr. Martin acknowledging that software could perform
`
`the EEPROM read and write functions described in Hellman). And, as Dr. Martin
`
`admitted, even if the claimed agent is limited to software, the claims do not
`
`preclude hardware from working with the software to set up the claimed
`
`verification structure. EX1033, ¶26; EX1035, 122:12-123:10, 129:9-130:22,
`
`131:14-19.
`
`Second, Patent Owner criticizes Petitioners for allegedly failing to identify
`
`“where a software version of Hellman’s update unit 36 would run, i.e.[,] what
`
`processor would run it.” POR, 60. But Dr. Wolfe testified at his deposition that
`
`Hellman’s system contains at least one processor on which software could run,
`
`including but not limited to the software player 42’s processor. EX2026, 31:23-25,
`
`34:12-35:6, 35:4-6 (noting that Hellman “talks about a computer,” and that
`
`software would “be running on a computer system, which most likely would
`
`include a microprocessor”); EX1033, ¶¶20-21 (explaining that software player
`
`could run both the agent software and the licensed software). Patent Owner’s
`
`suggestion that Hellman’s base unit does not contain a processor that would run
`
`Hellman’s software strains credulity and conflicts with its own expert’s testimony.
`
`EX1035, 145:5-20.
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`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`Third, Patent Owner contends that implementing Hellman’s update unit in
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`software form “would come with a set of security risks” that would dissuade a
`
`skilled artisan from using a software implementation. POR, 61-62; EX2018,
`
`¶¶169-75. But even to the extent that a software implementation would present
`
`some risk, a skilled artisan would have known how to easily account for such risk.
`
`The ’941 patent does not discuss the need to protect software, thus suggesting that
`
`any technique known in the art could be used. EX1033, ¶¶22-23 (describing such
`
`techniques). Patent Owner errs by ignoring routine modifications based on such
`
`known techniques. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1382 (Fed.
`
`Cir. 2007).
`
`Fourth, Patent Owner suggests that a software implementation would not be
`
`needed given that Hellman already discloses a hardware implementation. POR, 62.
`
`Petitioners dispute this contention. But even so, this argument ignores “[t]he
`
`normal desire of artisans to improve upon what is already generally known” in the
`
`art, which “can provide the motivation” to make a proposed modification. In re
`
`Ethicon, 844 F.3d 1344, 1351 (Fed. Cir. 2017). That a hardware implementation of
`
`Hellman’s update unit 36 may be effective does not negate Dr. Wolfe’s rationale
`
`for using a software implementation.
`
`Finally, Patent Owner contends that Dr. Wolfe improperly opined as to what
`
`a skilled artisan “could do” rather than what a skilled artisan “would do.” POR, 59-
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`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`61. Not so. Dr. Wolfe unequivocally opined that a skilled artisan would have
`
`recognized that the update unit 36 “would have been implemented by a software
`
`routine[.]” EX1003, ¶137 (emphasis added); see also id., ¶¶137A, 138-138B;
`
`EX2026, 34:17-19; EX1033, ¶¶24-25.
`
`2.
`
`A Skilled Artisan Would Have Implemented Hellman As
`OS-Level Software.
`Petitioners could not have anticipated Patent Owner’s never-before urged
`
`“OS-level” construction. Even still, the Petition asserts that Hellman’s update unit
`
`(and authorization and billing unit) would be implemented as software, which
`
`would encompass OS-level software under Patent Owner’s own logic. EX1033,
`
`¶27.
`
`Dr. Wolfe explained at his deposition that Hellman “talks about a
`
`computer,” and computers in the early 1980s—when Hellman was filed—and
`
`throughout the 1990s used operating systems. EX2026, 31:21-32:23; see also id.,
`
`34:1-2 (“A general purpose desktop computer, like an ordinary PC, would usually
`
`have an operating system.”); EX1033, ¶¶28-29. Patent Owner ignores this
`
`testimony, but its own expert agrees with it. EX2018, ¶73 (Dr. Martin
`
`acknowledging that “Windows NT, Windows 95, DOS, Macintosh OS, and Unix-
`
`based operating systems” were “operating systems that were … known”); EX1035,
`
`99:17-100:1, 109:9-17.
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`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`And, as Hellman’s Figure 8 illustrates, update unit 36 uses system resources
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`to provide the system with access to data stored in non-volatile memory. In
`
`particular, it verifies the software package 17 license using data stored in non-
`
`volatile memory and, if verified, permits the software to be executed using
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`software player 42. EX1033, ¶30. Both the software package and the player would
`
`run at the OS level, under Patent Owner’s understanding of “OS level,” if
`
`implemented as software. Indeed, both are stored in the same base unit as the
`
`update unit, and this architecture thus strongly suggests that Hellman’s update unit
`
`36 is in fact implemented as OS-level software under the criteria set forth by
`
`Dr. Martin. See supra Section I.C; EX1035, 100:8-22, 101:19-102:4, 102:5-9,
`
`105:4-10; EX1033, ¶¶30-31.
`
`Patent Owner’s own arguments bolster such a conclusion. To support its
`
`construction of “agent,” Patent Owner points to a passage in the ’941 patent stating
`
`that the agent uses “E2PROM manipulation commands” to add, modify, and
`
`remove data in non-volatile memory. POR, 35 (citing EX1001, 1:65-2:9); EX2018,
`
`¶128. Thus, Patent Owner seems to suggest that a program accessing and
`
`modifying data in non-volatile memory is necessarily one that operates at the OS
`
`level. EX1033, ¶32.
`
`But as Dr. Martin acknowledged, Hellman also accesses and modifies data
`
`stored in its EEPROM. EX1035, 148:6-22, 152:8-153:22, 156:7-157:1, 163:18-
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`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`164:2; EX1033, ¶¶33-35. Indeed, in a related litigation, Patent Owner emphasized
`
`that using an OS-level agent to write to BIOS was well known. In the litigation,
`
`Patent Owner cited a white paper authored by one of the named inventors of the
`
`’941 patent allegedly describing “a specific embodiment of the invention” for the
`
`proposition that the agent writes license data to EEPROM/BIOS using a standard
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`BIOS function (referred to as DMI Function 52h) known in the art. EX1029, 5;
`
`EX1035, 174:20-175:4, 178:21-179:14 (acknowledging that writing data structures
`
`to EEPROM was known as of 1998). Dr. Martin testified here that the entity using
`
`such a function is OS-level software. EX1035, 175:5-176:9.
`
`Thus, under Patent Owner’s and its expert’s own logic and admissions,
`
`Hellman’s software, which performs EEPROM/BIOS-writing functions, would be
`
`implemented at the OS level. EX1033, ¶¶36-41 (additionally explaining that
`
`Hellman’s software would need to be implemented at the OS level to run after
`
`startup under Patent Owner’s and Dr. Martin’s logic).
`
`II. THE COMBINATION OF HELLMAN AND CHOU DISCLOSES THE
`“VERIFICATION STRUCTURE” LIMITATION (ALL
`CHALLENGED CLAIMS).
`Patent Owner argues in passing that Petitioners “improperly cite the same
`
`elements of Hellman for the distinct ‘memory of the BIOS’ and ‘verification
`
`structure’ limitations of claim 1.” POR, 62. But the Petition makes clear that the
`
`claimed “verification structure” is Hellman’s memory structure defined by hash
`
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`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`values, whereas the claimed “memory of the BIOS” is Hellman’s non-volatile
`
`memory 37 including BIOS motivated by Chou. Pet., 37-39; EX1003, ¶¶133-50. A
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`memory structure is not the same as the memory in which the structure resides.
`
`EX1033, ¶¶42-44.
`
`The Board should again reject Patent Owner’s implicit argument that the
`
`verification structure must be a specific type of data structure. ID, 25. Neither
`
`Patent Owner nor its expert says what that structure is, let alone provides
`
`supporting evidence. And, as Patent Owner itself acknowledged, any “data
`
`structure” (e.g., a database) established to accommodate a license record qualifies
`
`as a “verification structure.” POPR, 32; EX1001, 6:17-21. Hellman’s memory
`
`structure—i.e., a table of M values stored in memory—is indisputably such a data
`
`structure. EX1033, ¶¶44-46.
`
`Finally, Patent Owner also suggests that Hellman’s memory structure would
`
`“be nothing more than a nebulous collection of hash values that do not exist.”
`
`POR, 63. This assertion is misplaced. The memory structure stores data in a well-
`
`defined structure (e.g., a table), and the hash values do in fact exist—as the Board
`
`correctly noted—because Hellman’s memory structure stores data at addresses
`
`defined by hash values, which are used to interrogate non-volatile memory. ID, 25;
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`EX1033, ¶47; EX1035, 152:8-153:22.
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`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`III. PETITIONERS HAVE SHOWN A MOTIVATION TO COMBINE
`HELLMAN WITH CHOU AND SCHNECK (ALL CHALLENGED
`CLAIMS).
`Petitioners’ Motivations to Combine Are Neither “Logically
`A.
`Flawed” Nor Incomplete (All Challenged Claims).
`Patent Owner’s Arguments Are Based on an Incorrect
`1.
`Characterization of Petitioners’ Proposed Combination.
`Patent Owner’s rebuttals rely on a strawman—i.e., that Petitioners are
`
`proposing replacing Hellman’s memory with Chou’s BIOS memory—and ignore
`
`the actual proposed combination of implementing Hellman’s existing EEPROM as
`
`BIOS memory. Compare Pet., 28 (“A POSA would have found it obvious to
`
`provide a BIOS in the computer ([Hellman’s] base unit 12) and to store the BIOS
`
`in the non-volatile memory 37”), with POR, 52 (“Petitioners assert four
`
`motivations that would allegedly result in the use of Chou’s BIOS memory in
`
`place of Hellman’s non-volatile memory 37”). This mischaracterization of
`
`Petitioners’ actual motivations infects all four of its rebuttals.
`
`1.
`
`Patent Owner’s first rebuttal alleges that Petitioners fail to use Chou’s
`
`BIOS memory “in place of” Hellman’s memory 37. POR, 52. But what the Petition
`
`actually states is that a skilled artisan would have been motivated to use Hellman’s
`
`existing non-volatile memory 37, disclosed in one embodiment as an EEPROM,
`
`“for storing the BIOS, as well as license information described in Hellman.”
`
`Pet., 30. Chou provides the suggestion to use Hellman’s EEPROM—the same
`
`EEPROM that Hellman already discloses as storing license information—to store
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`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`that BIOS. Id., 30-31; EX1033, ¶48. For example, Chou discloses BIOS memory
`
`15 that is implemented using a “BIOS EEPROM,” EX1005, 3:23-24, 3:52-55, 4:6-
`
`7, and describes “[r]ecent changes in the computer BIOS memory storage devices
`
`[that] permit writing data to the BIOS,” id., 1:63-64.
`
`This implementation of BIOS memory allows for “password protection
`
`within the same memory which stores the BIOS routines.” Id., 1:65-66 (emphasis
`
`added). Configuring Hellman’s EEPROM in this way results in memory that stores
`
`both the BIOS and the license information, which discourages tampering with
`
`Hellman’s license information. See EX1002, 51; Pet., 30; EX1033, ¶¶48-49.
`
`Patent Owner argues that Chou does not discuss tamper-prevention, POR,
`
`52, but this is irrelevant because the Petit