Case 6:21-cv-00735-ADA Document 32 Filed 01/27/22 Page 1 of 38
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`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`CIVIL ACTION NO. 6:21-cv-735-ADA
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`JURY TRIAL DEMANDED
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`
`
`
`CIVIL ACTION NO. 6:21-cv-737-ADA
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`JURY TRIAL DEMANDED
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`
`
`
`CIVIL ACTION NO. 6:21-cv-738-ADA
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`JURY TRIAL DEMANDED
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`
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`ANCORA TECHNOLOGIES, INC.,
`
`Plaintiff,
`
`vs.
`
`GOOGLE LLC,
`
`Defendant.
`
`ANCORA TECHNOLOGIES, INC.,
`
`Plaintiff,
`
`vs.
`
`Defendant.
`
`ROKU, INC.,
`
`ANCORA TECHNOLOGIES, INC.,
`
`Plaintiff,
`
`vs.
`
`NINTENDO CO., LTD., and RETRO
`STUDIOS, INC.,
`
`Defendant.
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`DEFENDANTS’ OPENING CLAIM CONSTRUCTION BRIEF
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`Case 6:21-cv-00735-ADA Document 32 Filed 01/27/22 Page 2 of 38
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`TABLE OF CONTENTS
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`b.
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`Page
`“computer” (claims 1, 6, 7) ................................................................................................ 2
`“memory area of [a/the] BIOS” / “memory of the BIOS” (claims 1, 12) .......................... 3
`a.
`Nintendo’s alternative construction: “dedicated memory area where the
`BIOS is stored” ...................................................................................................... 4
`“a BIOS of the computer” / “BIOS” (claims 1, 7, 9, 12) ................................................... 5
`a.
`Not all startup programs are BIOS, and BIOS was only used in PC-
`compatible computers. ........................................................................................... 6
`BIOS not being associated with a file system is consistent with the plain
`and ordinary meaning. ........................................................................................... 8
`“program residing in the volatile memory” (claim 1) ...................................................... 10
`“agent” (claims 1, 7) ........................................................................................................ 13
`“verification structure” (claims 1, 7) ............................................................................... 15
`“accommodating data” (claim 1) ..................................................................................... 20
`“license record” / “license-record” (claims 1, 6, 7, 9) ..................................................... 22
`a.
`Nintendo’s additional argument: Revision of the Court’s prior construction
`is necessary, because that construction strikes “license” from the term
`entirely. ................................................................................................................ 24
`“license authentication bureau” (claim 2) ........................................................................ 29
`a.
`Nintendo’s alternative construction: “a telecommunications accessible
`processor that verifies the license record” ........................................................... 30
`“pseudo-unique key” (claim 7, 9, 12) .............................................................................. 31
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`1.
`2.
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`3.
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`4.
`5.
`6.
`7.
`8.
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`9.
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`10.
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`Case 6:21-cv-00735-ADA Document 32 Filed 01/27/22 Page 3 of 38
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Ancora Techs., Inc. v. Apple, Inc.,
`744 F.3d 732 (Fed. Cir. 2014).......................................................................................... passim
`
`Ancora Techs., Inc. v. Apple Inc.,
`No. 11-CV-06357 YGR, 2012 WL 6738761 (N.D. Cal. Dec. 31, 2012) ..........................26, 27
`
`Ancora Techs., Inc. v. TCT Mobile (US), Inc.,
`No. 8:19-cv-02192 (C.D. Cal. Nov. 12, 2020) ........................................................................27
`
`Ancora Techs. v. LG Elecs. Inc.,
`No. 1:20-CV-00034-ADA, Dkt. 44 (W.D. Tex. Mar. 20, 2020) .................................13, 14, 22
`
`Ancora Techs. v. LG Elecs. Inc.,
`No. 1:20-CV-00034-ADA, Dkt. 69 (W.D. Tex. June 2, 2020) ...............................................18
`
`Ancora Techs. v. LG Elecs. Inc.,
`No. 1:20-CV-00034-ADA, Dkt. 93 (W.D. Tex. Aug. 19, 2020) ...........................14, 22, 27, 28
`
`C.R. Bard, Inc. v. U.S. Surgical Corp.,
`388 F.3d 858 (Fed. Cir. 2004)............................................................................................17, 23
`
`Ekchian v. Home Depot, Inc.,
`104 F.3d 1299 (Fed. Cir. 1997)................................................................................................19
`
`Exxon Chem. Pats., Inc. v. Lubrizol Corp.,
`64 F.3d 1553 (Fed. Cir. 1995) (Plager, J., concurring) ............................................................13
`
`Interval Licensing LLC v. AOL, Inc.,
`766 F.3d 1364 (Fed. Cir. 2014)................................................................................................21
`
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`572 U.S. 898 (2014) .................................................................................................................15
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)..................................................................................................7
`
`Southwall Techs., Inc. v. Cardinal IG Co.,
`54 F.3d 1570 (Fed. Cir. 1995)..................................................................................................19
`
`ViaSat, Inc. v. Space Sys./Loral, Inc.,
`No. 3:12-CV-00260-H, 2013 WL 3927729 (S.D. Cal. May 29, 2013) .....................................9
`
`VirnetX, Inc. v. Cisco Sys., Inc.,
`767 F.3d 1308 (Fed. Cir. 2014)................................................................................................17
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`Case 6:21-cv-00735-ADA Document 32 Filed 01/27/22 Page 4 of 38
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`Defendants Google LLC (“Google”); Roku, Inc. (“Roku”); Nintendo Co., Ltd.
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`(“Nintendo”); and Retro Studios, Inc. (“Retro”) (collectively, “Defendants”) present the following
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`arguments in support of their proposed claim constructions for U.S. Patent No. 6,411,941 (“the
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`’941 patent”).
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`The ’941 patent, filed on October 1, 1998 and titled “Method of Restricting Software
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`Operation within a License Limitation,” is directed toward “identifying and restricting an
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`unauthorized software program’s operation,” by “strongly rel[ying] on the use of a key and of a
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`record, which have been written into the non-volatile memory of a computer.” Ex. 1, ’941 patent,
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`1:6–8, 1:40–431. The alleged invention in the ’941 patent was based on the presence and unique
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`arrangement in the late 1990s of “BIOS” non-volatile memory modules in personal computers,
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`which were hard to tamper with. See id., 3:4–17. As described below, the asserted claims and the
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`disputed claim terms are rooted in the patent’s express objective of using the then well-known and
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`well-understood “BIOS” as part of a process for verifying that a particular program is licensed to
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`run on a specified PC-compatible computer. Some of the disputed claim terms are so vague and
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`so lacking of definition in the intrinsic record that they could not be understood with reasonable
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`certainty by a person of ordinary skill in the art (“POSITA”) at the time of invention, and thus are
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`indefinite. For the reasons that follow, the Court should adopt Defendants’ proposed constructions
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`and indefiniteness positions.
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`1 Unless otherwise stated, all exhibits referenced herein are attached to the Declaration of Robert
`W. Unikel, filed concurrently herewith.
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`Case 6:21-cv-00735-ADA Document 32 Filed 01/27/22 Page 5 of 38
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`1.
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`“computer” (claims 1, 6, 7)
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`Defendants’ Construction
`a conventional PC-compatible device
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`Ancora’s Construction
`a digital data processor that includes one or
`more non-volatile memory and volatile
`memory areas
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`The parties’ dispute turns largely on whether the claims are directed to any and all
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`computers, or only computers that have “BIOS.” See § 3, infra (explaining how BIOS was only
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`used in PC-compatible computers).
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`Myriad devices include computers in a generic sense; however, a person of ordinary skill
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`in the art would have understood from the ’941 patent’s disclosure that the asserted claims were
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`directed to conventional PC-compatible devices, and did not cover every device that included a
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`digital data processor. The meaning of “computer” is particularly important because Ancora now
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`attempts to accuse products as wide-ranging as thermostats, video-game consoles, mobile phones,
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`soundbars, and video streaming devices as “computers” covered by the ’941 patent. The ’941
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`patent, which was filed in 1998, explains that the invention is directed to “a conventional computer
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`having a conventional BIOS module.” ’941 patent, 1:46–47. The ’941 patent further declares, “In
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`the context of the present invention, a ‘computer’ relates to a digital data processor. These
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`processors are found in personal computers, or on one or more processing cards in multi-processor
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`machines.” Id., 3:18–21 (emphasis added). Because, at the time of invention, the required “BIOS”
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`was a term limited to booting personal computers (“PCs”), as explained below, the claimed
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`“computer” in the ’941 patent, which is required to have a “BIOS,” must mean a “conventional
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`PC-compatible device.”
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`The extrinsic evidence confirms this. In particular, The BIOS Companion, published in
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`1998, emphasizes that a BIOS is used only in a conventional PC-compatible (i.e., “IBM-
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`Case 6:21-cv-00735-ADA Document 32 Filed 01/27/22 Page 6 of 38
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`compatible”) device, not in every device with a data processor. See, e.g., Ex. 2, The BIOS
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`Companion at GOOG-ANCORA-00000980 (“BIOS stands for Basic Input/Output System, of
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`which there are several in a PC”), GOOG-ANCORA-00000981 (“There are several types of BIOS
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`because so many computers need to be IBM-compatible[.]”). Defendants’ proposed construction
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`thus is appropriate and necessary to clarify that the “computer” having a “BIOS” claimed in the
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`’941 patent must be a PC-compatible device. See also Declaration of Dr. Benjamin Goldberg
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`(“Goldberg Decl.”), ¶¶ 21–25.
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`2.
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`“memory area of [a/the] BIOS” / “memory of the BIOS” (claims 1, 12)
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`Defendants’ Construction
`dedicated memory where the BIOS is stored
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`Ancora’s Construction
`This term does not require construction.
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`The “memory area of [a/the] BIOS” and “memory of the BIOS” is a “dedicated memory
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`where the BIOS is stored.”
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`Providing no construction, as Ancora urges, would confuse the jury. On its face, the claim
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`phrase is unclear as to whether the BIOS somehow contains the memory (it does not and cannot),
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`is stored temporarily in any memory (such as cache or RAM), or uses memory dedicated
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`specifically for the BIOS.
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`Ultimately, the intrinsic and extrinsic evidence make clear that these claim elements refer
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`to dedicated memory where the BIOS is stored. The applicants for the ’941 patent consistently
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`distinguished the asserted claims from the prior art on the basis that the claimed invention
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`preserves data in the memory dedicated to BIOS storage, as opposed to preserving data in a cache
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`or other “writable device.” See, e.g., Ex. 3, Feb. 5, 2002 Amend. at 6. For example, the applicants
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`argued:
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`Using BIOS to store application data such as that stored in Misra’s local cache for
`licenses is not obvious. The BIOS area is not considered a storage area for computer
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`applications. An ordinary skilled artisan would not consider the BIOS as a storage
`medium to preserve application data . . . .
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`There is no OS support whatsoever to write data to the system BIOS. Therefore, an
`ordinary person skilled in the art would not consider the BIOS as a possible storage
`medium. Furthermore, it is common that all peripheral devices in the PC are
`listed and recognized by the OS except for the BIOS. This supports the fact that
`the BIOS is not considered a peripheral device.
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`Id. (emphasis added). Indeed, the fact that the claims require storing information in the dedicated
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`“memory of the BIOS” was “the key distinction” upon which the examiner allowed the claims. Ex.
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`4, Mar. 28, 2002 Notice of Allowability at 4 (emphasis added). Therefore, to avoid confusion and
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`to clarify this key limitation, Defendants ask the Court to clarify that the “memory of the BIOS”
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`is a “dedicated memory where the BIOS is stored.” See also Goldberg Decl., ¶¶ 26–27.
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`a.
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`Nintendo’s alternative construction: “dedicated memory area where the
`BIOS is stored”
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`In the alternative, Nintendo proposes that “dedicated memory area where the BIOS is
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`stored” be adopted.
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`The ’941 patent uses “memory” versus “memory area” inconsistently in the specification.
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`Compare ’941 patent, 5:10–16 (using “memory area”), 6:7–10 (same), 6:28–39 (same) with id. at
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`1:38–43 (using only “memory”), 2:10–12 (same), 5:19–23 (same), 5:25–29 (same), 6:18–21
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`(same), 6:46–51 (same), Fig. 1 (same) with id. at 2:62–3:3 (mixed usage), 3:18–31 (same). This is
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`also true in the claims. See id. at 6:61–62 (“memory area” in claim 1), 6:65 (just “memory” in
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`claim 1), 7:2 (same), 7:33–37 (just “memory” in claim 6), 7:38–44 (“memory area” in claim 7),
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`7:51–62 (same in claim 9), 8:1–4 (just “memory” in claim 11, 12).
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`Regardless of the phrasing, what the ’941 patent describes with the different memory
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`“areas” is that BIOS programs could be stored in more than one place, i.e., more than one “area,”
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`in the computer. See id. at 1:44–52, 1:65–2:5, 2:10–59. The specification actually refers to these
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`as “sections” in the initial discussion. Id. at 1:44–52 (“a conventional BIOS module in which a key
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`is embedded at the ROM section thereof” (emphasis added)), 1:65–2:5 (“The resulting encrypted
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`license record is stored in another (second) non-volatile section of the BIOS[.]” (emphasis added)).
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`As the ’941 patent explains, as of the late-90s invention date, BIOS programs were typically
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`located partially in a BIOS ROM module, and partially in a BIOS EEPROM module. See id. at
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`1:44–52, 1:65–2:5, 2:10–59. Hence, while the claims are inconsistent in their usage of “memory”
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`versus “memory area,” they are referring to the same thing: the one or more places, “areas,” or
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`“sections” of the computer where BIOS programs are stored.
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`Nintendo does not believe that the use of “memory area” in parts of claim 1 (but not others)
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`changes this meaning. Therefore, to the extent that the Court deems the addition of “area” more
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`reflective of this meaning disclosed in the specification, Nintendo does not oppose its inclusion.
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`3.
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`“a BIOS of the computer” / “BIOS” (claims 1, 7, 9, 12)
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`Defendants’ Construction
`An acronym for Basic Input / Output System.
`It is the set of essential software operations in
`PC-compatible computers that begin to run
`automatically when a computer is turned on,
`which test hardware, start the operating
`system, and supports the transfer of data
`among hardware devices. No file system is
`associated with the BIOS.
`
`Ancora’s Construction
`“a BIOS of the computer” = Plain and
`ordinary meaning
`“BIOS” = Plain and ordinary meaning
`wherein the plain and ordinary meaning is
`“An acronym for Basic Input/Output System.
`It is the set of essential startup operations that
`begin to run automatically when a computer is
`turned on, which test hardware, starts the
`operating system, and support the transfer of
`data among hardware devices”
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`The Court’s prior construction was fundamentally accurate, but the jury would benefit from
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`two clarifications. First, Ancora’s construction could be read to include any set of instructions used
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`to start a computer; though the intrinsic and extrinsic evidence demonstrate that the plain and
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`ordinary meaning of “BIOS” is not so broad. “BIOS,” as used in the patent and in the art at the
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`time of the alleged invention, was limited to particular types of startup instructions in personal
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`computers that include, as the acronym implies, input and output functions. Second, the applicants
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`expressly defined BIOS so that “no file system is associated with the BIOS” during prosecution,
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`recognizing that the plain and ordinary meaning of BIOS necessarily excludes association with a
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`file system. Defendants’ proposed clarification reflects this definition.
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`a.
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`Not all startup programs are BIOS, and BIOS was only used in PC-
`compatible computers.
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`All computers include startup programs, but not all startup programs are BIOS. See
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`Goldberg Decl., ¶¶ 29–30. Ancora’s own expert concedes that not all computers have BIOS, and
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`Ancora presents no evidence of the term “BIOS” being used outside of the context of PCs. See Ex.
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`5, Ian Jestice Deposition at ANCORA_000578–79. Instead, Ancora now attempts to suggest that
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`anything used to boot any device with a digital processor automatically is “BIOS.” This goes too
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`far.
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`A person of ordinary skill in the art as of the 1998 filing date of the ’941 patent would have
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`understood “BIOS” as an acronym for Basic Input/Output System in PC-compatible computers.
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`The parties agree on the basic functions of BIOS, as reflected in the Court’s prior construction.
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`However, they disagree on whether a person of ordinary skill in the art would have understood, in
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`1998, that BIOS was a term limited to conventional PCs. Importantly, the ’941 patent is explicitly
`
`directed to “a conventional computer having a conventional BIOS module.” ’941 patent, 1:46–47.
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`The ’941 patent continues to explain, “In the context of the present invention, a ‘computer’ relates
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`to a digital data processor. These processors are found in personal computers, or on one or more
`
`processing cards
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`in multi-processor machines.” Id., 3:18–21 (emphasis added). The
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`“conventional” “personal computers” called out in the patent were known at the time to include
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`IBM, Apple Mac, and Commodore 64 PCs. Goldberg Decl., ¶ 29. A person of ordinary skill in the
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`art would have understood the “processing cards in multi-processor machines” to indicate PC-
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`compatible devices. Id. Nothing in the ’941 patent suggested to a person of ordinary skill in the art
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`in 1998 that non-PC-compatible devices, such as cars, calculators, and airplanes, could or did
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`include “a conventional BIOS module.” ’941 patent, 1:47; see also Goldberg Decl., ¶ 30.
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`The prosecution history demonstrates that Defendants’ clarified construction, referring to
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`“PC-compatible computers,” is consistent with the accepted meaning from the relevant time
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`period. The applicants, themselves, argued that BIOS is a component of PCs:
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`There is no OS support whatsoever to write data to the system BIOS. Therefore, an
`ordinary person skilled in the art would not consider the BIOS as a possible storage
`medium. Furthermore, it is common that all peripheral devices in the PC are
`listed and recognized by the OS except for the BIOS. This supports the fact that
`the BIOS is not considered a peripheral device.
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`Ex. 3, Feb. 5, 2002 Amend. at 6 (emphasis added).
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`Dictionary definitions lend further support to the conclusion that, at the time of invention,
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`BIOS was a term limited to starting-up PCs, not any device with a digital processor. See Phillips
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`v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (noting that dictionaries are helpful). For
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`example, the 1998 Microsoft Computer User’s Dictionary defines “BIOS” as:
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`Acronym for basic input/output system. On PC-compatible computers, the set of
`essential software routines that tests hardware at startup, starts the operating system,
`and supports the transfer of data among hardware devices. The BIOS is stored in
`ROM so that it can be executed when the computer is turned on. Although critical
`to performance, the BIOS is usually invisible to computer users.
`
`Ex. 6, Microsoft Computer User’s Dictionary (1998) (emphasis added). See also Ex. 7, Dictionary
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`of Computer and Internet Terms, Eleventh Edition (2013) (defining “Basic Input Output System”
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`as “a set of procedures stored on a ROM chip inside PC-compatible computers. These routines
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`handle all input-output functions, including screen graphics, so that programs do not have to
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`manipulate the hardware directly. This is important because if the hardware is changed (e.g., by
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`installing a newer kind of video adapter), the BIOS can be changed to match it, and there is no
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`need to change the application programs.”).
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`Case 6:21-cv-00735-ADA Document 32 Filed 01/27/22 Page 11 of 38
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`Contemporaneous literature similarly explains that “BIOS stands for Basic Input/Output
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`System, of which there are several in a PC.” Ex. 2, The BIOS Companion at 1 (1998). And, in the
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`same vein, “What is BIOS? It’s a set of software instructions that perform the necessary functions
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`for the PC.” Ex. 8, “What is the BIOS?” (1994) (emphasis added).
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`Ancora’s proposed construction is misleading and confusing because it leaves open the
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`possibility that BIOS could be present on non-PC-compatible computers. But, as both the intrinsic
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`and extrinsic evidence make clear, the BIOS explicitly required by the ’941 patent claims was used
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`only by “conventional” “personal computers” in 1998. Had the applicants wished to claim any
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`“startup code” or “code performing essential startup operations” they could have done so. They
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`did not, precisely because they expressly were interested in utilizing the specific and well-
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`understood “BIOS” that was employed in PCs at the time the patent was filed. That specifically
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`claimed BIOS has since become antiquated technology, Ex. 9, Zimmer et al., Beyond BIOS:
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`Developing with the Unified Extensible Firmware Interface xi–xii (2d ed. 2010) (describing the
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`history that ultimately “enabl[ed] the industry to move beyond BIOS”). Ancora cannot avoid the
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`claims’ explicit requirement for use of a well-defined technology of the time, “BIOS,” by now
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`attempting to exploit ambiguity in the Court’s prior construction as to the true meaning of BIOS.
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`Defendants’ proposed clarification of the Court’s prior construction thus is appropriate. See also
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`Goldberg Decl., ¶¶ 28–31.
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`b.
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`BIOS not being associated with a file system is consistent with the plain and
`ordinary meaning.
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`The applicants explained that BIOS is not stored in regular memory. Ex. 3, Feb. 5, 2002
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`Amend. at 6. Specifically, they declared:
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`no file system is associated with the BIOS. Every writable device connected to the
`PC is associated with an OS file system to arrange and manage data structures. An
`example for such a file system would be FAT, FAT32, NTFS, HPFS, etc. that
`suggests writing data to the writable device. No such file system is associated with
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`Case 6:21-cv-00735-ADA Document 32 Filed 01/27/22 Page 12 of 38
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`the BIOS. This is further evidence that OS level application programmers would
`not consider the BIOS as a storage medium for license data.
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`Id. (emphasis added). This simply was a recognition of the plain and ordinary meaning that does
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`not contemplate association with a file system. The term “file system” is the computer equivalent
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`of a filing cabinet. Most people are familiar with the terms “files” and “directories.” These are
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`understandable abstractions of a computer’s “file system,” which can have one of several technical,
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`computer-readable formats (“FAT, FAT32, NTFS, HPFS, etc.”). Id. BIOS was, instead, a series
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`of instructions that, among other things, enabled a PC to boot. The applicants thus correctly argued
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`that BIOS did not have a file system, and this was a basis for the Patent Office to allow the claims
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`of the ’941 patent over the prior art. Ex. 3, Feb. 5, 2002 Amend. at 6; Ex. 4, Mar. 28, 2002 Notice
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`of Allowability at 4. The Federal Circuit agreed that “those representations [were] made in
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`distinguishing prior art . . . .” Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732, 736 (Fed. Cir.
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`2014). Now, however, Ancora wants to argue that any instructions used to start any computer,
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`irrespective of whether the instructions are in a BIOS or are associated with a file system, meet the
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`“BIOS” limitations. This is too broad.
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`The examiner relied on the applicants’ evidence that “no file system is associated with the
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`BIOS” to find that “the key distinction between the present invention and the closest prior art, is
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`that [three prior art systems] run at the operating system level and BIOS level, respectively.” Ex.
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`3, Feb. 5, 2002 Amend. at 6 (emphasis added); and Ex. 4, Mar. 28, 2002 Notice of Allowability at
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`4 (emphasis added). Ancora cannot now change course and argue that BIOS can be associated
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`with a file system.
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`In making these specific representations, the applicants explicitly characterized the claims
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`to overcome the prior art. See, e.g., ViaSat, Inc. v. Space Sys./Loral, Inc., No. 3:12-CV-00260-H,
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`2013 WL 3927729, at *20 (S.D. Cal. May 29, 2013) (agreeing that the prosecution history requires
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`Case 6:21-cv-00735-ADA Document 32 Filed 01/27/22 Page 13 of 38
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`that the term “cache” exclude “DRAM” where the applicants argued that “[a] cache memory is a
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`portion of memory made of high-speed static RAM (SRAM) instead of the slower and cheaper
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`dynamic RAM (DRAM) used for main memory” (citation omitted)). Specifically, the applicants
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`purposefully, unequivocally, and correctly restricted the scope of the claims to exclude memory
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`that has a file system. Ex. 3, Feb. 5, 2002 Amend. at 6. The patent examiner understood the claims
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`to include this restriction and allowed the claims on that basis. Allowing Ancora to now abandon
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`this position would impermissibly broaden the claims’ scope beyond their plain and ordinary
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`meaning and ignore the applicants’ prior definition.
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`4.
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`“program residing in the volatile memory” (claim 1)
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`Defendants’ Construction
`operating system or application residing in the
`volatile memory, separate from the BIOS, that
`can be executed by a computer
`
`Ancora’s Construction
`“Program” = “a set of instructions that can
`be executed by a computer”
`“selecting a program residing in the volatile
`memory” = Plain and ordinary meaning
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`The parties’ dispute turns on whether the “program residing in the volatile memory” is
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`different from the BIOS. The intrinsic record shows that the alleged invention was putting a license
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`record for a non-BIOS program in the BIOS memory, and thus the “program residing in the
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`volatile memory” must be different from the BIOS.
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`A PC in 1998 contained three basic layers of software: BIOS, operating system, and
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`applications.
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`The instructions that turn a PC into a useful machine come in three stages;
`application programs, which are loaded by an operating system, which is loaded
`by a bootstrap loader in the BIOS.
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`Ex. 2, The BIOS Companion, at 1. In Ancora’s litigation against Apple, the district court held that
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`“program” only included the top-level stage, that is, an “application program.” Apple, 744 F.3d at
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`734. The Federal Circuit reversed, agreeing with Ancora that the construction was wrong for
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`Case 6:21-cv-00735-ADA Document 32 Filed 01/27/22 Page 14 of 38
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`
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`“excluding operating systems from the class of programs that the claimed method checks for
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`authorization under a license.” Id. The court found that “program” as used in the art was a “set of
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`instructions,” id., and that “[n]othing in the specification clearly narrows the term ‘program,’” id.
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`at 735. Hence, based on the Apple appeal, “program” can include both (a) application programs
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`and (b) operating system programs. However, the court did not directly address whether the
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`“program residing in volatile memory” could also include the BIOS software.
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`The disclosure of the ’941 patent and the language of claim 1 makes clear that the “program
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`residing in volatile memory” is not the BIOS. Instead, the specification consistently distinguishes
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`the BIOS in non-volatile memory areas (4) and (5) from the “license program (16)” in volatile
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`memory area (6). See ’941 patent, 5:9–16, 5:25–29. Ancora emphasized this distinction graphically
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`to the Patent Office:
`
`
`
`Ex. 10, Patent Owner’s Preliminary Response to Petition at 4, No. CBM2017-00054 (Jun. 15,
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`2017). Further, a person of ordinary skill in the art would have recognized that BIOS stored in
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`ROM and EEPROM as disclosed in the ’941 patent would not “resid[e] in the volatile memory”
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`as recited in claim 1. Goldberg Decl., ¶ 34. BIOS would be executed in place from the ROM or
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`Case 6:21-cv-00735-ADA Document 32 Filed 01/27/22 Page 15 of 38
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`EEPROM modules instead of being loaded into RAM, which would be considered volatile
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`memory. Id.
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`The ’941 patent’s characterization and requirement of the program “residing in volatile
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`memory” is inconsistent with BIOS. For example, the ’941 patent explains that “when a program
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`is loaded into the memory of the computer, a so called license verifier application, that is a priori
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`running in the computer, accesses the program . . . .” ’941 patent, 2:10–19. But BIOS is the first
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`software that is loaded when the computer turns on, so there is no other software a priori running
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`on the computer and thus the program that is being verified (i.e., the program in the volatile
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`memory) is not the BIOS. See Goldberg Decl., ¶ 33. Further, the alleged benefit of putting the
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`license record in BIOS memory—higher expertise and risk to the hacker—would not exist if the
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`subject program being pirated was BIOS, since the license record and associated authentication
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`structure in the pirated BIOS would be compromised and thus not trusted. ’941 patent, 3:4–17.
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`Finally, the ’941 patent’s concern with secondary distribution piracy—a program licensed for one
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`computer being copied to a second computer, for which it is not licensed—also was inconsistent
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`with BIOS, because every computer was already sold with the BIOS program needed to run,
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`rendering the pirated BIOS duplicative. See ’941 patent, 1:12–16.
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`The Federal Circuit already has adopted this reasoning for the “program residing in volatile
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`memory.” In the Ancora v. Apple appeal, the court noted that the applicants obtained allowance by
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`distinguishing an application (running through an operating system) and the BIOS:
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`Specifically, the applicants distinguished their invention over a combination of two
`references: one disclosed storage in the BIOS memory area by the BIOS software
`itself; the other disclosed software implemented in or through an operating system.
`The applicants explained that their invention differed from the prior art in that it
`both operated as an application running through an operating system and used the
`BIOS level for data storage and retrieval—a combination that was not previously
`taught and that an ordinarily skilled application writer would not employ.
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`Case 6:21-cv-00735-ADA Document 32 Filed 01/27/22 Page 16 of 38
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`Apple, 744 F.3d at 735–36. Indeed, the prior art referenced by the court, Ewertz, “teach[es] the use
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`of BIOS memory for storing license numbers.” Ex. 4, Mar. 28, 2002 Notice of Allowability at 4.
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`And the Ewertz system “run[s] at the . . . BIOS level.” Id. Thus, in distinguishing Ewertz, the
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`applicants distinguished between the BIOS, the application and the operating system.
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`For the above reasons, the Court should clarify that the “program residing in the volatile
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`memory” called out in the ‘941 patent claims must be “separate from the BIOS.” See Goldberg
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`Decl., ¶¶ 32–34.
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`5.
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`“agent” (claims 1, 7)
`
`Defendants’ Construction
`Indefinite
`
`Ancora’s Construction
`Plain and ordinary meaning, wherein the plain
`and ordinary meaning “agent” [sic] is “a
`software program or routine”
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`The term “agent” is entirely absent from the specification. See generally ’941 patent. The
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`applicants added the term during prosecution in an effort to overcome a rejection based on prior
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`art. Ex. 4, Mar. 28, 2002 Notice of Allowability at 2. Ancora’s attempts to infuse a variety of
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`meanings into the term leave the claims too indefinite to reasonably discern the scope of the
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`invention. “The language through which claims are expressed is not a nose of wax to be pushed
`
`and shoved into a form that pleases and that produces a particular result . . . the patentee’s
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`competitors[] are entitled to clear and specific notice of what the inventor claims as his invention.”
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`Exxon Chem. Pats., Inc. v. Lubrizol Corp., 64 F.3d