Case 1:20-cv-00034-ADA Document 106 Filed 09/28/20 Page 1 of 8
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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’ REPLY IN SUPPORT OF MOTION FOR RECONSIDERATION
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`I.
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`INTRODUCTION
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`Under the Court’s construction, the relevant limitation (“using an agent”) now reads:
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`using a software program or routine 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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`In view of Egenera, this construction of the nonce term “agent” cannot avoid § 112, ¶ 6. Instead,
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`a “software program or routine,” like the construction in Egenera, is “so broad and formless as to
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`be a generic black box for performing the recited computer-implemented functions.” Egenera
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`Inc. v. Cisco Systems, Inc, --- F.3d ----, 2020 WL 5084288 at *4 (Fed. Cir. Aug. 28, 2020)
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`(quoting Egenera Inc. v. Cisco Systems, 2018 WL 717342, at *6 (D. Mass. Feb. 5, 2018)).
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`1
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`Case 1:20-cv-00034-ADA Document 106 Filed 09/28/20 Page 2 of 8
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`Plaintiff focuses its efforts on distinguishing the Court’s construction for the “agent” term
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`from the construction proposed in Egenera. This is a distinction without a difference: “a software
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`program or routine” provides no more structure to claim 1 of the ’941 patent than “software,
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`firmware, or circuitry” provided in Egenera, as both set forth “the same black box recitation of
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`structure . . . as if the term ‘means’ had been used.” Williamson v. Citrix Online, LLC, 792 F.3d
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`1339, 1350 (Fed. Cir. 2015). Nothing in Plaintiff’s rebuttal refutes this basic fact.
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`Plaintiff ignores, and therefore apparently concedes, that Egenera has precluded any
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`supporting structure that the “agent” term might have claimed through its activity “in the
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`erasable, non-volatile memory of the BIOS.” Nor can intrinsic evidence provide that structure, as
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`the ’941 patent does not mention the “agent” term in any section of the specification. Thus, the
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`“using an agent” limitation is a means-plus-function limitation under § 112, ¶ 6.
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`II. LEGAL STANDARD
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`Plaintiff relies on invalidated pre-Austin case law to suggest that the Court follow the
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`heightened standard of Rule 59(e). ECF No. 104 at 1-2. But Austin is clear — reliance on the
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`Rule 59(e) standard for interlocutory review is legal error and grounds for review. Austin v.
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`Kroger Tex., L.P., 864 F.3d 326, 337 (5th Cir. 2017) (vacating part of the district court’s opinion
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`since it “evinces a clear reliance on the heightened standard of Rule 59(e) to deny [appellant’s]
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`motion for reconsideration.”). Instead, Defendants’ motion must be considered under Rule 54(b).
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`III. ARGUMENT
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`Construing the “agent” term as “a software program or routine” fails to provide sufficient
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`structure, and the intrinsic evidence of the ’941 patent cannot compensate for this failure.
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`A.
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`Egenera Shows That Plaintiff’s Intrinsic Evidence Is Insufficient
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`Plaintiff never claims that “software,” by itself, connotes sufficient structure, but instead
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`relies on the specification and prosecution history to provide this structure. ECF No. 104 at 5-8.
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`2
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`Case 1:20-cv-00034-ADA Document 106 Filed 09/28/20 Page 3 of 8
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`Plaintiff claims that Defendant’s suggestion of corresponding structure under § 112, ¶ 6 “is fatal
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`to their argument that ‘agent’ invokes § 112, ¶ 6.” ECF No. 104 at 7. Plaintiff’s arguments turn
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`the standard on its head. “Indeed, this view would seem to leave § 112, ¶ 6 without any
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`application: any means-plus-function limitation that met the statutory requirements, i.e., which
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`includes having corresponding structure in the specification, would end up not being a means-
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`plus-function limitation at all.” MTD Products Inc. v. Iancu, 933 F.3d 1336, 1344 (Fed. Cir.
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`2019). In other words, under Plaintiff’s interpretation, only claims that lack corresponding
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`structure in the specification (i.e., indefinite claims) will be governed by § 112, ¶ 6. The claims
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`are interpreted in light of the specification whether or not claim construction involves
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`interpreting a “means” limitation. Id. at 1342–43. Unless the patentee demonstrates a clearly
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`expressed intent to act as its own lexicographer and defines the nonce term as the term used in
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`the preferred embodiment, “a preferred embodiment disclosed in the specification cannot impart
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`structure to a term that otherwise has none.” Id. Here, the specification cannot lend structure to
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`the claims because the ’941 patent never identifies any structure as corresponding to the “agent”
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`term. See id. at 1344. “Indeed, the specification does not even refer to [the claim term].” Id.
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`Thus, Plaintiff’s reliance on the specification is misplaced.1
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`Plaintiff also relies on the prosecution history of the ’941 patent. ECF No. 104 at 7-8.
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`But, as discussed above, this prosecution history cannot provide structure to avoid § 112, ¶ 6 that
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`is lacking in the “agent” term and the surrounding claim language. The examiner’s summary of
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`the “agent” term is, in any case, “not inconsistent with claiming in means-plus-function format,”
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`as it discloses only that the “agent” acts as a means to achieve particular functions. MTD
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`Products, 933 F.3d at 1345. In addition, as Defendants have argued, the prosecution history
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`1 See ECF No. 104 at 7 (relying on 1:60-2:1, 3:51-61, and 6:18-28).
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`Case 1:20-cv-00034-ADA Document 106 Filed 09/28/20 Page 4 of 8
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`cannot provide structure to the “agent” term when that term was specifically added as a novel
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`component to overcome the prior art. See ECF No. 49 at 3-5.
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`While intrinsic evidence can inform interpretation of the claim elements, “the focus
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`remains on whether the claim as properly construed recites sufficiently definite structure to avoid
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`the ambit of § 112, ¶ 6.” Personalized Media Commc’n., LLC v. Intl. Trade Comm’n., 161 F.3d
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`696, 704 (Fed. Cir. 1998). Egenera has established that the ’941 patent claims cannot provide
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`this structure because “[m]ere inclusion of a limitation within a structure does not automatically
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`render the limitation itself sufficiently structural.” 2020 WL 5084288 at *5. The claims state only
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`that the agent “set[s] up a verification structure” — which is pure function — “in the erasable,
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`non-volatile memory of the BIOS” — which is precisely the inclusion within a structure that
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`Egenera has rejected. ’941 Patent at 6:64-65. Plaintiff’s argument that the claim “describes a
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`piece of software within a specific piece of hardware for a specific purpose,” ECF No. 104 at 6,
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`proves that this claim cannot provide sufficient structure. Plaintiff does not contest this point.
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`The Federal Circuit has established a two-step process for means-plus-function analysis.
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`First, the Court must “determine if the claim limitation is drafted in means-plus-function format."
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`MTD Products, 933 F.3d at 1344. Second, the Court must "review the specification to identify
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`the structure that performs the claimed function(s).” Id. In MTD Products, the Federal Circuit
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`determined that the PTAB had erroneously “conflated these distinct inquiries, holding that the
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`specification’s disclosure of corresponding structure demonstrates that the alleged means-plus-
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`function term is sufficiently definite so as to not invoke § 112, ¶ 6.” Id. Ancora commits the
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`same mistake by relying on the specification to provide structure that is absent in the claims.
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`B.
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`Software, By Itself, Does Not Connote Sufficient Structure
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`In their opening brief, Defendants noted that the Court’s construction of ‘agent’ as “a
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`software program or routine” did not, by itself, connote sufficient structure to avoid § 112, ¶ 6.
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`Case 1:20-cv-00034-ADA Document 106 Filed 09/28/20 Page 5 of 8
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`ECF No. 100 at 5-7. This is consistent with the Court’s Claim Construction Order, which also
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`refused to hold that “a software program or routine,” by itself, connotes sufficient structure. ECF
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`No. 93 at 34-35 (distinguishing Digital Retail, 2020 WL 376664 (W.D. Tex. Jan. 23, 2020),
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`which established that “software alone did not connote structure,” by relying on the claims and
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`specification to provide structure). Egenera confirms that claim terms based on “software” do
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`not, by themselves, convey sufficient structure.
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`Plaintiff claims that “dozens of post-Williamson cases ” have held that software connotes
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`sufficient structure. ECF No. 104 at 8-9. Five of the seven such cases cited by Plaintiff, however,
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`held that “software” avoided § 112, ¶ 6 when supported by sufficient structure in the claims2—
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`thus demonstrating that “software” is not, by itself, sufficient to avoid § 112, ¶ 6. The two
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`inapposite cases—one pre-Williamson and the other from the District of Massachusetts—do not
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`tip the balance of the case law, including this Court’s holding in Digital Retail.
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`IV. CONCLUSION
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`Defendants request that the Court reconsider its construction of the “agent” term.
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`2 See Bascom Glob. Internet Servs., Inc. v. AT&T Corp., 2017 WL 5905698, at *16 (N.D. Tex.
`Sept. 20, 2017) (holding that a claim term construed as “software” could avoid § 112, ¶ 6
`because “[t]he claims themselves disclose logical rules for achieving the functions described”);
`Collaborative Agreements, LLC v. Adobe Sys. Inc., 15-CV-03853-EMC, 2015 WL 7753293, at
`*5 (N.D. Cal. Dec. 2, 2015) (holding that a claim term that described a form of software could
`avoid § 112, ¶ 6 because “the claim language here provides a description as to how the code
`segment operates”); USA, Inc. v. Autodesk, Inc., 2016 WL 3647977, at *19 (E.D. Tex. July 7,
`2016) (holding that “add-on computer software code,” a much narrower term than “software,”
`could avoid § 112, ¶ 6 because “[t]he claims connote that the [term] is structural by describing
`how the [term] operates within the claimed invention to achieve its objectives.”); Kit Check, Inc.
`v. Health Care Logistics, Inc., 2019 WL 4142719, at *12-13 (S.D. Ohio Aug. 30, 2019) (holding
`that “computer executable instructions” could avoid § 112, ¶ 6 because “[t]he claims specify how
`the processors receive information . . . and from where . . . . Taken together, these “computer
`executable instructions” claims describe the “objectives and operations of the instructions.”);
`Syncpoint Imaging, LLC v. Nintendo of America Inc., 2016 WL 55118, at *23 (E.D. Tex. Jan. 5,
`2016) (addressing “instructions,” and determining that those instructions avoided § 112, ¶ 6 at
`least in part because “[the claims] themselves recite the objectives and operations of the
`instructions in the [relevant] limitations”).
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`Case 1:20-cv-00034-ADA Document 106 Filed 09/28/20 Page 6 of 8
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`Dated: September 28, 2020
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` Respectfully submitted,
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`6
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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
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`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
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`Attorneys for Defendants LG Electronics
`Inc. and LG Electronics U.S.A., Inc.
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`/s/ Anupam Sharma
`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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`Robert T. Haslam (rhaslam@cov.com)
`Anupam Sharma (asharma@cov.com)
`COVINGTON & BURLING LLP
`3000 El Camino Real
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`Case 1:20-cv-00034-ADA Document 106 Filed 09/28/20 Page 7 of 8
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`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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`Case 1:20-cv-00034-ADA Document 106 Filed 09/28/20 Page 8 of 8
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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 28, 2020.
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`/s/ Melissa R. Smith
`Melissa R. Smith
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`8
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