Case 1:20-cv-00034-ADA Document 100 Filed 09/15/20 Page 1 of 13
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
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`ANCORA TECHNOLOGIES, INC.,
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`CIVIL ACTION NO. 1:20-cv-0034
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`Ancora,
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`v.
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`LG ELECTRONICS INC. and LG
`ELECTRONICS U.S.A., INC.,
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`Defendants.
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`JURY TRIAL DEMANDED
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`ANCORA TECHNOLOGIES, INC.,
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`CIVIL ACTION NO. 1:20-cv-0034
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`Ancora,
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`v.
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`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
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`Defendants.
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`JURY TRIAL DEMANDED
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`DEFENDANTS’ OPPOSED MOTION FOR RECONSIDERATION OF COURT’S
`CONSTRUCTION OF “USING AN AGENT” LIMITATION IN LIGHT OF THE
`FEDERAL CIRCUIT’S EGENERA DECISION
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`I.
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`INTRODUCTION
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`On August 28, 2020, the Federal Circuit issued a precedential opinion addressing when a
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`claim term which does not use the word “means” invokes § 112, ¶ 6. Egenera Inc. v. Cisco
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`Systems, Inc, --- F.3d ----, 2020 WL 5084288 (Fed. Cir. Aug. 28, 2020). In Egenera, the Federal
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`Circuit rejected a proposed construction of the claim term “logic to modify” as “software,
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`firmware, or circuitry” because such a construction lacked “sufficient structure” to avoid
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`application of § 112, ¶ 6, regardless of the location of that element in the larger structure of the
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`invention. Id. at *4. Because the Egenera decision is on all fours with this case, Defendants
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`1
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`

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`Case 1:20-cv-00034-ADA Document 100 Filed 09/15/20 Page 2 of 13
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`request that the Court reconsider its construction of the “using an agent” limitation in claim 1 of
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`the ’941 patent, which rejected application of § 112, ¶ 6.
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`The table below underscores the similarity between the “logic to modify” term in
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`Egenera and the “agent” term at issue in the instant litigation:
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`Claim Term
`Claimed
`Function
`
`Egenera
`“logic [to modify]”
`“modify said received messages to
`transmit said modified messages to
`the external communication network
`and to the external storage network”
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`Patentee’s
`Construction
`Proper
`Construction
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`“software, firmware, circuitry, or
`some combination thereof”
`35 U.S.C. § 112, ¶ 6 invoked – no
`sufficient structure recited in the
`claim to perform the claimed function
`
`The ’941 Patent
`“an agent [to set up]”
`“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”
`“a software program or routine”
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`35 U.S.C. § 112, ¶ 6 invoked – no
`sufficient structure recited in the claim
`to perform the claimed function
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`In Egenera, the Federal Circuit has made clear for the first time that “a software program
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`or routine,” as this Court has construed the “agent” term, is not “sufficient structure” to avoid
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`application of § 112, ¶ 6. Id.; ECF No. 93 at 34-36. Egenera also clarifies that “[m]ere inclusion
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`of a limitation within a structure does not automatically render the limitation itself sufficiently
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`structural,” and therefore the Court’s reliance on the operation of the “agent” “in the memory
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`system” is similarly inadequate. 2020 WL 5084288 at *5; ECF No. 93 at 34-36. Defendants
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`respectfully ask the Court to reconsider its construction of the “using an agent” limitation in light
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`of the precedential opinion in Egenera and construe the limitation under § 112, ¶ 6 as proposed
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`by Defendants.
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`2
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`Case 1:20-cv-00034-ADA Document 100 Filed 09/15/20 Page 3 of 13
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`II. LEGAL STANDARD
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`“Under Rule 54(b), ‘the trial court is free to reconsider and reverse its decision for any
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`reason it deems sufficient.” Austin v. Kroger Tex., L.P., 864 F.3d 326, 336 (5th Cir. 2017)
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`(quoting Lavespere v. Niagara Mach. & Tool Works, Inc., 910 F.2d 167, 185 (5th Cir. 1990));
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`see also Melancon v. Texaco, Inc., 659 F.2d 551, 553 (5th Cir. 1981) (“As long as a district . . .
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`court has jurisdiction over the case . . . it possesses inherent procedural power to reconsider,
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`rescind, or modify an interlocutory order for cause seen by it to be sufficient.”). “Rule 54(b)’s
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`approach to the interlocutory presentation of new arguments as the case evolves can be []
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`flexible, reflecting the ‘inherent power of the rendering district court to afford such relief from
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`interlocutory judgments as justice requires,’” Austin, 864 F.3d at 336-7 (quoting Cobell v. Jewell,
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`802 F.3d 12, 25-26 (D.C. Cir. 2015)), and is particularly appropriate to the continually revisable
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`process of claim construction. See, e.g., Jack Guttman, Inc. v. Kopykake Enterprises, Inc., 302
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`F.3d 1352, 1361 (Fed. Cir. 2002) (“District courts may engage in a rolling claim construction, in
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`which the court revisits and alters its interpretation of the claim terms as its understanding of the
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`technology evolves.”); Cisco Sys., Inc. v. Telcordia Techs., Inc., 590 F. Supp. 2d 828, 830 (E.D.
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`Tex. 2008) (“Claim construction orders are not final and may be altered by the court prior to, or
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`during, trial.”).
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`III. ARGUMENT
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`The Federal Circuit’s precedential Egenera decision mirrors this case and dictates that the
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`“using an agent” limitation is governed by § 112, ¶ 6. Accordingly, the Court should reconsider
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`its ruling that the “using an agent” limitation is not governed by § 112, ¶ 6.
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`A.
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`In Egenera, the Federal Circuit Made Clear That “software” Is Not “sufficient
`structure” to Avoid Application of § 112, ¶ 6
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`3
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`Case 1:20-cv-00034-ADA Document 100 Filed 09/15/20 Page 4 of 13
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`The Federal Circuit made clear in Egenera that when determining whether a claim term is
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`covered by § 112, ¶ 6, “[t]he question is not whether a claim term recites any structure but
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`whether it recites sufficient structure” for performing the claimed function. 2020 WL 5084288 at
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`*4 (emphasis in original) (quoting Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed.
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`Cir. 2015)). At the district court, the appellant had argued that the claim term at issue (“logic”)
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`should be construed to mean “software, firmware, circuitry, or some combination thereof.” Id.
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`While noting the patent specified that the “logic” “has to be implemented” and that “such
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`implemented logic could be ‘software logic’ or ‘BIOS-based,’” the district court concluded that
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`Egenera’s construction was itself “so broad and formless as to be a generic black box for
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`performing the recited computer-implemented functions.” Id.
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`The Federal Circuit held that even if appellant’s proposed construction could amount to
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`“some possible structure,” that construction’s “general sense of software, firmware, or circuitry”
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`did not amount to “sufficient structure for performing the [claimed] function,” which is the
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`requirement imposed by the statute. Id. In other words, the Federal Circuit for the first time ruled
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`that a construction primarily based on “software” and “firmware” did not connote sufficient
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`structure.
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`The Federal Circuit then evaluated whether the “larger claim context” provided sufficient
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`structure for the “logic” term. Id. at *5. The appellant argued that this term was structural
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`because it was part of the claimed “control node.” Id. But the Federal Circuit held that this was
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`“not enough. Mere inclusion of a limitation within a structure does not automatically render the
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`limitation itself sufficiently structural.” Id. Unmoved by the appellant’s case law because “none
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`of [that] precedent consider[ed] Williamson” and was, in any case, inapplicable, the Federal
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`Circuit held that the “logic” term was subject to § 112, ¶ 6. Id.
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`4
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`Case 1:20-cv-00034-ADA Document 100 Filed 09/15/20 Page 5 of 13
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`B.
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`This Court Held That the “using an agent” Limitation Was Not Subject to
`§ 112, ¶ 6
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`The Court’s Order, ECF No. 93, addressed, inter alia, limitation (b) of claim 1 below:
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`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.
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`’941 patent at 6:64-67 (emphasis added). Defendants argued that the limitation fell within the
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`ambit of pre-AIA § 112, ¶ 6 because it only recites function of the “agent” without providing
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`sufficient structure for performing that function. See ECF No. 45 at 5-11, ECF No. 49 at 7-12,
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`ECF No. 52 at 4-7. Plaintiff argued that the limitation was not subject to § 112, ¶ 6 and proposed
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`that the term “agent” should be construed as “a software program or routine.” ECF No. 44 at 22-
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`26; ECF No. 50 at 7-14.
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`The Court construed the term “agent” as “a software program or routine,” and determined
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`that this term had sufficient structure because the “claim language at issue describes a piece of
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`software within a specific piece of hardware for a specific purpose.” ECF No. 93 at 35-36. In
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`particular, the Court found that the patent did not describe the limitation in functional terms
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`because “the claims specifically disclose the operation of the agent in the memory system.” Id.
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`The Court also concluded that the specification, dictionary definitions, and a 2001 paper
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`authored by the inventor of the ’941 patent “provide the specificity required to connote
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`structure.” Id. at 34-35.
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`C.
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`Defendants Request Reconsideration in Light of the Federal Circuit's Ruling
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`The Court held that the “using an agent” limitation is not a means-plus-function
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`limitation because it “recites definite structure.” ECF No. 93 at 35. Neither the Court’s
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`construction of “agent” as “a software program or routine” nor its observation that the “agent”
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`operates “within a specific piece of hardware for a specific purpose” provides sufficient structure
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`5
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`Case 1:20-cv-00034-ADA Document 100 Filed 09/15/20 Page 6 of 13
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`to perform the claimed function. Id. As Egenera clarifies, the relevant standard is whether a term
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`“recites sufficient structure . . . for performing [the claimed] function.” 2020 WL 5084288 at *4.
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`Thus, Defendants request the Court to reconsider its construction of the “using an agent”
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`limitation under the rubric of Egenera.
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`1.
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`Construing the “Agent” Term as Software Does Not Provide Sufficient
`Structure For the “using an agent” Limitation
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`The Federal Circuit in Egenera first evaluated whether the claim term (“logic to modify”)
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`“recite[d] sufficient structure” for performing a claimed function to avoid § 112, ¶ 6. 2020 WL
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`5084288 at *4. The Federal Circuit concluded that the “logic” term failed to provide sufficient
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`structure, and that even adopting plaintiff’s proposal to equate “logic” with “software, firmware,
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`or circuitry” would not provide the structure sufficient for performing the claimed function. Id.
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`In its Order, this Court construed the “agent” term as “a software program or routine.” ECF No.
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`93 at 36. The precedential ruling in Egenera confirms that the Court’s construction of “agent” as
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`“a software program or routine” does not take the “using an agent” limitation outside the scope
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`of § 112, ¶ 6. Here, rephrasing “agent” as “a software program or routine” does not provide
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`sufficient structure to the limitation that would allow “persons of ordinary skill in the art to have
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`a sufficiently definite meaning as the name for structure.” Williamson at 1349. Instead, as the
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`Egenera opinion underscores, “software,” like “logic,” is a black box term that only discloses “a
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`‘general category of whatever may perform’ the function.” 2020 WL 5084288 at *4.1
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`The Court’s construction of the “set up a verification structure” term further underscores
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`the problem. The Court construed this term as “establishing or certifying the existence of a
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`1 Nor does the claim itself provide sufficient structure. The “using an agent” limitation describes
`the function of the “agent” and refers to nothing more than a memory location where the result of
`performing the function will be stored, which does not amount to sufficient structure to perform
`the function. ’941 patent at 6:64-67.
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`6
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`Case 1:20-cv-00034-ADA Document 100 Filed 09/15/20 Page 7 of 13
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`pseudo-unique key and establishing at least one license-record location.” 2 ECF No. 93 at 24. The
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`Court’s construction incorporates additional functional requirements that must be performed by
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`the “agent,” but does not specify any structure utilized to perform these functions.
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`Thus, under the Egenera framework, the Court’s construction of “agent” as “a software
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`program or routine” fails to provide sufficient structure to perform the recited function so as to
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`take the limitation outside the purview of § 112, ¶ 6.
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`2.
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`The Larger Claim Context Does Not Provide Sufficient Structure to the
`“using an agent” Limitation
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`After determining that the “logic” term lacked sufficient structure, the Federal Circuit in
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`Egenera then evaluated whether the “larger claim context” provided sufficient structure for the
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`term. The appellant had argued “that the ‘larger claim context’ indicates that ‘logic’ is structural
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`because the ‘logic to modify’ is part of a supposedly structural component.’” 2020 WL 5084288
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`at *5. But the Federal Circuit disagreed, noting that “[m]ere inclusion of a limitation within a
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`structure does not automatically render the limitation itself sufficiently structural.” Id. The
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`“logic” term’s inclusion within a structural component failed to provide sufficient structure, and
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`the term remained subject to § 112, ¶ 6. Id.
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`The Federal Circuit’s ruling in Egenera confirms that placing the “agent” term in the
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`larger context of the claims similarly fails to provide the structure needed to perform the claimed
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`function. Here, the Court held that “agent” is not a means-plus function term because “the claims
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`specifically disclose the operation of the agent in the memory system.” ECF No. 93 at 35. The
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`2 Defendants note that the “structure disclosed in the specification is ‘corresponding’ structure
`only if the specification or prosecution history clearly links or associates that structure to the
`function recited in the claim.” B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed.
`Cir. 1997)). Thus, Defendants disagree with the suggestion that this term “may include”
`particular steps, as suggested by the Claim Construction Order. See ECF No. 93 at 37. To be
`“clearly link[ed] or associated” with the function, the function must either include or not include
`these steps; the hypothetical relationship suggested by “may” does not reflect a clear association.
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`7
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`

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`Case 1:20-cv-00034-ADA Document 100 Filed 09/15/20 Page 8 of 13
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`observation that the “agent” operates in the memory system simply identifies the environment in
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`which the “agent” operates, like the appellant’s failed argument in Egenera that “‘logic’ is
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`structural because the ‘logic to modify’ is part of a supposedly structural component.” 2020 WL
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`5084288 at *5. This observation does not specify the structure required to perform the function
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`that the “agent” must implement. Because the inclusion of a term within a particular structure
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`cannot provide sufficient structure to the term itself, the operation of the “agent” “in the memory
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`system” does not render it sufficiently structural.
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`The Court also relied on the patent specification, file history3 and extrinsic evidence4 to
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`conclude that § 112, ¶ 6 does not apply. See ECF No. 93 at 35. Egenera instructs that “the
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`question is . . . whether the claim term recites sufficient structure,” and therefore the focus of
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`inquiry must remain on the language of the claim. 2020 WL 5084288 at *5 (emphasis added).
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`The specification of the ’941 patent cannot support a structural construction of the “agent” term
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`because the specification never even refers to an “agent.”
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`3.
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`The Cases Cited in the Court’s Opinion Do Not Require a Contrary
`Conclusion
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`Finally, the Federal Circuit in Egenera found many of the opinions cited by the plaintiff
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`inapplicable, noting that those cases were pre-Williamson and “none of [this] precedent considers
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`3 The Court also held that the “patent and prosecution history also contain no contradictory
`explanations that would lead to a finding of functional language for the claim term.” ECF No. 93
`at 35. While contradictory functions are one indicator of means-plus-function claiming, they are
`far from the only or determinative sign. The crucial question is whether the term recites
`“function without reciting sufficient structure for performing that function.” 2020 WL 5084288
`at *4 (emphasis in original) (quoting Williamson at 1348).
`4 The Court also cited extrinsic evidence, such as dictionary definitions or the 2001 paper
`authored by the inventor of the ’941 patent, for the necessary structure. While extrinsic evidence
`can inform a court’s determination of how an element would be understood by one skilled in the
`art, see, e.g., TEK Global S.R.L. v. Sealant Systems Int’l, Inc., 920 F.3d 777, 786 (Fed. Cir.
`2019), that evidence cannot itself provide structure to support the element. See Atmel Corp. v.
`Info. Storage Devices, Inc., 198 F.3d 1374, 1382 (Fed. Cir. 1999). Since Egenera clarifies that
`“software” cannot itself provide sufficient structure, this extrinsic evidence is unavailing.
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`8
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`

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`Case 1:20-cv-00034-ADA Document 100 Filed 09/15/20 Page 9 of 13
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`Williamson.” 2020 WL 5084288 at *5. Here, the Court relied upon several pre-Williamson
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`opinions to conclude that the term “agent” provided definite structure, noting that “courts have
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`held similarly that software connotes a definite structure.” ECF No. 93 at 35. These opinions all
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`relied heavily on the pre-Williamson standard to reach their conclusions. See WhitServe LLC v.
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`GoDaddy.com, Inc., 65 F. Supp. 3d 317, 320-322 (D. Conn. 2014) (relying on Flo Healthcare
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`Sols., LLC v. Kappos, 697 F.3d 1367, 1374 (Fed. Cir. 2012) (overruled by Williamson)); RLIS,
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`Inc. v. Allscripts Healthcare Sols., Inc., 2013 WL 3772472, at *14-16 (S.D. Tex. July 16, 2013)
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`(relying on the pre-Williamson standard); Collaborative Agreements, LLC v. Adobe Sys. Inc.,
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`2015 WL 2250391, at *12 (W.D. Tex. May 12, 2015) (relying on the vacated Williamson
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`opinion and analogizing the term “code segments” to “modules” to find that the term connoted
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`sufficient structure). In view of Egenera’s skepticism of pre-Williamson opinions, the Court’s
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`reliance on such opinions to conclude that software connotes definite structure is at odds with
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`Egenera.
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`The Court’s Order also cited Zeroclick, LLC v. Apple Inc., in which the Federal Circuit
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`determined that “program” and “user interface code” terms had sufficient structure. The Federal
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`Circuit determined that the terms in Zeroclick had sufficient structure because context
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`demonstrated that they were conventional systems which existed in the prior art. 891 F.3d 1003,
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`1008 (Fed. Cir. 2018). The preamble of the “program” claim, for instance, had explicitly stated
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`that the invention “may comprise ‘an update of an existing program.’” Id. (emphasis in original).
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`The patent containing the “user interface code” term similarly acknowledged that the invention
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`built upon “well accepted conventional methodology,” and that “the concept” of the invention “is
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`known.” Id. at 1008-1009. The Federal Circuit therefore concluded that the terms were employed
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`“as specific references to conventional graphical user interface programs or code, existing in
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`9
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`Case 1:20-cv-00034-ADA Document 100 Filed 09/15/20 Page 10 of 13
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`prior art at the time of the inventions.” Id (emphasis added). In this case, the Examiner
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`understood that “agent” performed a function that was allegedly novel and did not exist in prior
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`art, and Zeroclick therefore does not compel a similar conclusion for the “agent” term.5 The
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`relevance of Zeroclick is even more attenuated in light of Egenera because the Federal Circuit
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`has now explicitly held that a proposed construction of “logic” that is comparable to the Court’s
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`construction of “agent” did not pass muster.
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`Finally, this Court determined in Digital Retail Apps, Inc. v. H-E-B, LP that construing a
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`term as “software” without corresponding structure was not sufficient to avoid means-plus-
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`function claiming. 2020 WL 376664, at *6 (W.D. Tex. Jan. 23, 2020). The Court’s Order
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`acknowledged that it “has found that software alone did not connote structure,” but distinguished
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`this case on the basis of disclosures in the patent specification and extrinsic evidence. ECF No.
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`93 at 34. Egenera has now foreclosed these points of distinction, and therefore the same
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`conclusions as in Digital Retail are warranted in this case.
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`IV. CONCLUSION
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`Defendants respectfully request that the Court reconsider its conclusion that the “agent”
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`limitation is not a means-plus-function limitation and construe the limitation as a means-plus-
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`function limitation.
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`5 In Zeroclick, the Federal Circuit also relied on the fact that the defendant had “argued that the
`limitations must be construed under § 112, ¶ 6, but provided no evidentiary support for that
`position.” Id. at 1007–08. Here, in contrast, Defendants have provided evidence that “a person of
`ordinary skill in the art would not understand the term ‘agent’ to connote sufficient structure.”
`ECF No. 45 at 12; see also ECF No. 49 at 11, ECF No. 45-1 at ¶¶ 52-60.
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`10
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`Case 1:20-cv-00034-ADA Document 100 Filed 09/15/20 Page 11 of 13
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`Dated: September 15, 2020
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`Respectfully submitted,
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`/s/ Winstol D. Carter, Jr.
`Winstol D. Carter, Jr.
`Texas Bar No. 03932950
`winn.carter@morganlewis.com
`Thomas R. Davis
`Texas Bar No. 24055384
`thomas.davis@morganlewis.com
`Elizabeth M. Chiaviello
`Texas Bar No. 24088913
`elizabeth.chiaviello@morganlewis.com
`MORGAN, LEWIS & BOCKIUS LLP
`1000 Louisiana Street, Suite 4000
`Houston, Texas 77002-5006
`T. 713.890.5000
`F. 713.890.5001
`
`Collin W. Park (admitted pro hac vice)
`collin.park@morganlewis.com
`District of Columbia Bar No. 470486
`MORGAN, LEWIS & BOCKIUS LLP
`1111 Pennsylvania Avenue, NW
`Washington, D.C. 20004-2541
`T. 202.739.3000
`F. 202.739.3001
`
`Attorneys for Defendants LG Electronics
`Inc. and LG Electronics U.S.A., Inc.
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`/s/ Melissa R. Smith
`Melissa R. Smith
`Texas State Bar No. 24001351
`melissa@gillamsmithlaw.com
`GILLAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`Phone: (903) 934-8450
`Fax: (903) 934-9257
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`11
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`Case 1:20-cv-00034-ADA Document 100 Filed 09/15/20 Page 12 of 13
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`Robert T. Haslam (rhaslam@cov.com)
`Anupam Sharma (asharma@cov.com)
`COVINGTON & BURLING LLP
`3000 El Camino Real
`5 Palo Alto Square, 10th Floor
`Palo Alto, CA 94306-2112
`Phone: (650) 632-4700
`Fax: (650) 632-4800
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`Richard L Rainey (rrainey@cov.com)
`Jared Frisch (jfrisch@cov.com)
`COVINGTON & BURLING LLP
`One CityCenter
`850 Tenth Street, NW
`Washington, DC 20001-4956
`Phone: (202) 662.6000
`Fax: (202) 662-6291
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`Attorneys for Defendants Samsung
`Electronics Co., Ltd., and Samsung
`Electronics America, Inc.
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`12
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`Case 1:20-cv-00034-ADA Document 100 Filed 09/15/20 Page 13 of 13
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record who are deemed to have
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`consented to electronic service are being served with a copy of the foregoing document via the
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`Court’s CM/ECF system this September 15, 2020.
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`/s/ Melissa R. Smith
`Melissa R. Smith
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`13
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