Case 8:19-cv-02192-GW-AS Document 60 Filed 10/15/20 Page 1 of 21 Page ID #:1553
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`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
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`CIVIL MINUTES - GENERAL
`SACV 19-2192-GW-ADSx
`Ancora Technologies, Inc v. TCT Mobile (US), Inc., et al.
`
`Case No.
`Title
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`Date October 15, 2020
`
`Present: The Honorable GEORGE H. WU, UNITED STATES DISTRICT JUDGE
`Javier Gonzalez
`Terri A. Hourigan
`Tape No.
`Deputy Clerk
`Court Reporter / Recorder
`Attorneys Present for Plaintiffs:
`Attorneys Present for Defendants:
`Marc Lorelli
`Kyle R. Canavera
`John P. Rondini
`John P. Schnurer
`PROCEEDINGS:
`TELEPHONIC MARKMAN HEARING
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`The Court’s Tentative Ruling is circulated and attached hereto. Court hears oral argument. For reasons
`stated on the record, the matter stands submitted. Court to issue its ruling.
`
`CV-90 (06/04)
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`CIVIL MINUTES - GENERAL
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`Page 1 of 1
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`Initials of Preparer
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`JG
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`Case 8:19-cv-02192-GW-AS Document 60 Filed 10/15/20 Page 2 of 21 Page ID #:1554
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`Ancora Techs., Inc. v. TCT Mobile (US) Inc. et al.; Case No. 8:19-cv-02192-GW-(ASx) (Lead Case);
`Case No. 2:20-cv-01252-GW-(ASx) (Consolidated Case)
`Tentative Ruling on Claim Construction (Markman) Hearing
`
`
`Introduction
`I.
`Plaintiff Ancora Techs., Inc. (“Plaintiff” or “Ancora”) filed suit against TCL Corp., TCL
`
`Commc’n Ltd., TCL Commc’n Holdings Ltd., and TCL Commc’n Tech. Holdings Ltd. on
`August 27, 2019, in the U.S. District Court for the Eastern District of Texas alleging
`infringement of U.S. Patent No. 6,411,941 (“the ’941 Patent”). Ancora Techs., Inc. v. TCL Corp.
`et al., Case No. 2:20-cv-01252-GW-(ASx) (“Consolidated Case”), Docket No. 1; see also
`Docket No. 12 (Consolidated Case Amended Complaint). The case was transferred to the
`Central District of California in February of 2020.
`On November 12, 2019, TCT Mobile (US) Inc. and Huizhou TCL Mobile Commc’n Co.,
`Ltd., separately filed suit against Plaintiff, seeking declaratory judgement of non-infringement of
`the ’941 Patent.
` TCT Mobile (US) Inc. et al. v. Ancora Techs., Inc., Case No.
`8:19-cv-02192-GW-(ASx) (“Lead Case”), Docket No. 1. The two actions have been
`consolidated so that Plaintiff now accuses TCT Mobile (US) Inc., Huizhou TCL Mobile
`Commc’n Co., Ltd., Shenzhen TCL Creative Cloud Tech. Co., Ltd., TCL Corp., TCL Commc’n
`Ltd., TCL Commc’n Holdings Ltd., and TCL Commc’n Tech. Holdings Ltd., TCT Mobile (US)
`Holdings Inc., TCT Mobile, Inc., TCT Mobile Int’l Ltd. (collectively, “Defendant” or “TCL”) of
`infringing the ’941 Patent. Docket No. 29; see also Docket No. 23 (stipulation to realign
`parties); Docket No. 24 (First Amended Complaint); Docket No. 44 (Second Amended
`Complaint).1
`Now pending are the parties’ claim construction disputes. The parties have submitted a
`Joint Claim Construction and Prehearing Statement. See Docket No. 49. They have also filed
`various claim construction briefs and supporting documents:
` Plaintiff Ancora’s Opening Claim Construction Brief (Docket No. 52); Defendant
`TCL’s Opening Claim Construction Brief (Docket No. 53)
` Plaintiff Ancora’s Responsive Claim Construction Brief (Docket No. 54); Defendant
`TCL’s Responsive Claim Construction Brief (Docket No. 55)
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`1 Citations are to the Lead Case unless otherwise noted.
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`Case 8:19-cv-02192-GW-AS Document 60 Filed 10/15/20 Page 3 of 21 Page ID #:1555
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`The Court construes the disputed terms as stated herein.
`II. Background
`For purposes of the parties’ claim construction disputes, the parties request construction
`of seven terms in the asserted claims of the ’941 Patent, titled “Method of Restricting Software
`Operation Within a License Limitation.” The ’941 Patent issued on June 25, 2002. The ’941
`Patent relates to “a method and system of identifying and restricting an unauthorized software
`program’s operation.” ’941 Patent at 1:6-8.
`Claim 1 of the ’941 Patent recites:
`1. A method of restricting software operation within a license for use with a
`computer including an erasable, non-volatile memory area of a BIOS of the
`computer, and a volatile memory area; the method comprising the steps of:
`selecting a program residing in the volatile memory,
`using an agent to set up a verification structure in the erasable, non-
`volatile memory of
`the BIOS,
`the verification structure
`accommodating data that includes at least one license record,
`verifying the program using at least the verification structure from the
`erasable non-volatile memory of the BIOS, and
`acting on the program according to the verification.
`III. Legal Standard
`Claim construction is an interpretive issue “exclusively within the province of the court.”
`Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). It is “a question of law in the
`way that we treat document construction as a question of law,” with subsidiary fact-finding
`reviewed for clear error to Fed. R. Civ. P. 52(a)(6). Teva Pharms. USA, Inc. v. Sandoz, Inc.,
`135 S. Ct. 831, 837-40 (2015). The claim language itself is the best guide to the meaning of a
`claim term. See Vederi, LLC v. Google, Inc., 744 F.3d 1376, 1382 (Fed. Cir. 2014). This is
`because the claims define the scope of the claimed invention. Phillips v. AWH Corp., 415 F.3d
`1303, 1312 (Fed. Cir. 2005). But a “person of ordinary skill in the art is deemed to read the
`claim term not only in the context of the particular claim in which the disputed term appears, but
`in the context of the entire patent.” Id. at 1313. Thus, claims “must be read in view of the
`specification,” which is “always highly relevant to the claim construction analysis.” Phillips,
`415 F.3d at 1315 (internal quotations omitted).
`Although claims are read in light of the specification, limitations from the specification
`must not be imported into the claims. Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288
`(Fed. Cir. 2009). “[T]he line between construing terms and importing limitations can be
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`Case 8:19-cv-02192-GW-AS Document 60 Filed 10/15/20 Page 4 of 21 Page ID #:1556
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`discerned with reasonable certainty and predictability if the court’s focus remains on
`understanding how a person of ordinary skill in the art would understand the claim terms.”
`Phillips, 415 F.3d at 1323.
`The prosecution history may lack the clarity of the specification, but it is “another
`established source of intrinsic evidence.” Vederi, 744 F.3d at 1382. “Like the specification, the
`prosecution history provides evidence of how the PTO and the inventor understood the patent.”
`Phillips, 415 F.3d at 1317 (citations omitted). “Furthermore, like the specification, the
`prosecution history was created by the patentee in attempting to explain and obtain the patent.”
`Id. “Yet because the prosecution history represents an ongoing negotiation between the PTO and
`the applicant, rather than the final product of that negotiation, it often lacks the clarity of the
`specification and thus is less useful for claim construction purposes.” Id.
`Claim construction usually involves resolving disputes about the “ordinary and
`customary meaning” that the words of the claim would have had “to a person of ordinary skill in
`the art in question at the time of the invention.” Phillips, 415 F.3d at 1312-13 (internal
`quotations and citations omitted). But in some cases, claim terms will not be given their ordinary
`meaning because the specification defines the term to mean something else. “[A] claim term
`may be clearly redefined without an explicit statement of redefinition,” so long as a person of
`skill in the art can ascertain the definition by a reading of the patent documents. Id. at 1320; see
`also Trustees of Columbia Univ. in City of New York v. Symantec Corp., 811 F.3d 1359, 1364
`(Fed. Cir. 2016).
`Where the patent itself does not make clear the meaning of a claim term, courts may look
`to “those sources available to the public that show what a person of skill in the art would have
`understood disputed claim language to mean,” including the prosecution history and “extrinsic
`evidence concerning relevant scientific principles, the meaning of technical terms, and the state
`of the art.” Phillips, 415 F.3d at 1314 (internal quotations omitted). Sometimes, the use of
`“technical words or phrases not commonly understood” may give rise to a factual dispute, the
`determination of which will precede the ultimate legal question of the significance of the facts to
`the construction “in the context of the specific patent claim under review.” Teva, 135 S. Ct. at
`841, 849. “In some cases, the ordinary meaning of claim language as understood by a person of
`skill in the art may be readily apparent even to lay judges, and claim construction in such cases
`involves little more than the application of the widely accepted meaning of commonly
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`understood wor
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`.” Phillips, 415 F.3d at 1314.
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`“In such circumstances, general purpose
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`dictionaries may be helpfiil.” Id.
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`IV.
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`Discussion
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`A. Agreed Claim Terms
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`The parties have agreed to constructions for the following claim terms (see Docket
`
`No. 49):
`
`Asserted Claim 5
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`Parties’ .
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`1 eed Claim Construction
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`“non—volatile memory area of
`the BIOS”
`
`“BIOS”
`
`
`
`“memory area of BIOS whose
`data is maintained when the
`
`power is removed”
`
`An acronym for Basic
`Input/Output System. It is the
`set of essential startup
`operations that run when a
`computer is turned on, which
`test hardware, starts the
`operating system, and support
`the transfer of data among
`hardware devices
`
`B. Disputed Claim Terms
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`1. “volatile memogg”1Clairn l!
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`Plaintiffs Pro n osed Construction
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`Defendant’s Pro . osed Construction
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`remove ”
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`“memory area whose data is not maintained
`or becomes inaccessible when the power is
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`“memory whose data is not maintained when the
`power is removed”
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`The parties agree that ‘filolatile memory” is “memory whose data is not maintained when
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`the power is removed.” Docket Nos. 52 at 7; 53 at 21. The only dispute is whether “volatile
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`memory” also includes “memory whose data becomes inaccessible alter the power is removed.”
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`As Defendant highlights, Plaintiff has previously accepted Defendant’s proposed
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`construction.
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`See,
`
`e.g., Ancora Techs.,
`
`Inc.
`
`v. Apple Inc, No. 11-cv-06357-YGR,
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`2012 WL 6738761, at *4 (ND. Cal. Dec. 31, 2012) (“Apple 1”). Plaintiff now seeks to broaden
`
`this construction based on the Federal Circuit’s decision in Ancora v. Apple, Inc, 744 F.3d 732
`
`(Fed. Cir. 2014) (“Apple 11”).
`
`In Apple II, the Federal Circuit affirmed the lower court’s holding that the term “volatile
`
`memory” was not indefinite despite the ’94] Patent specification stating that a hard disk is
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`“volatile memory.”
`
`Id. at 737—39; see also ’941 Patent at 1:21; 3:9; 4:53. The court
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`acknowledged that a hard disk is not normally considered a “volatile memory,” i.e. “a hard disk
`
`maintains data when the power is removed.” Id. at 738. But the court also agreed that “it is well
`
`known that a computer’s hard disk is routinely used as ‘virtual’ memory to provide temporary
`
`storage when there is insufficient RAM to complete an operation, in which case (it is undisputed)
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`the data become inaccessible through the usual means once power is removed (even if the data
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`can still be found on the hard disk by more sophisticated means).”
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`Id. (internal citations
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`omitted). So, when power is restored to the hard disk, the data is only accessible by these more
`
`sophisticated means. Based on this, the Federal Circuit agreed that the term “volatile memory”
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`was not indefinite.
`
`Plaintiff argues that the term “volatile memory” should also include “memory whose data
`
`becomes inaccessible after the power is removed” due to the above language. Defendant does
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`not seem to dispute that the Federal Circuit’s decision provided an exception to its construction,
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`but instead argues that Plaintiff‘ s construction is incomplete. See Docket Nos. 53 at 22—23; 55 at
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`21.
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`The Western District of Texas’s construction of this term in another case charging
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`infiingement of the ’94] Patent is instructive. See Final Claim Constructions of the Court in
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`Ancora Technologies, Inc. v, LG Electronics, Inc., Case No. 1—20—CV—00034—ADA, attached as
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`Exhibit 3 to Ancora Technologies, Inc.’s Opening Marlnmm Brief, Docket No. 52-4. Having
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`considered similar arguments, the court construed the term “volatile memory” to mean “memory
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`whose data is not maintained when the power is removed,” but with one exception. Id. at 2. In a
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`footnote “not for the jury,” the court added: “For the corner case where the hard disk drive is
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`used as virtual RAM, the data is not accessible by normal means after the power is removed.”
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`Id. This appear to strike the correct balance.
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`Accordingly, the Court construes the term “volatile memory” to mean “memory whose
`
`data is not maintained when the power is removed,” with the exception that “where the hard disk
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`drive is used as virtual RAM, the data is not accessible by normal means after the power is
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`remov .”
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`2. “selecting a progam residing in the volatile memog” 1Claim 1}
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`Plainth Pro a osed Construction
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`Defendant’s Pro . osed Construction Plain and ordin meanin
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`“accessin a ro u am to be verified in the volatile
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`
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`I
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`I memory”
`The parties’ dispute is unclear. Plaintiff argues that the term “selecting a program
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`I
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`residing in the volatile memory” should be given its plain and ordinary meaning; but Plaintiff
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`does not explain what exactly that meaning is.
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`Instead, Plaintiff spends its briefs arguing that
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`replacing the word “selecting” with “accessing” while removing the word “residing” (as
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`Defendant apparently proposes) adds ambiguity and reads out embodiments. See Docket Nos.
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`52 at 8—11; 54 at 16. Defendant states in its responsive brief, however, that the significance of
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`its construction is not in the difference between the words “selecting” and “accessing,” but that
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`“the program is present in the volatile memory - by accessing, selecting, or otherwise in the
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`‘selecting .
`
`.
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`.’ step - prior to being verified in the ‘Verifying .
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`.
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`.’ step.” See Docket No. 55 at
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`19.2
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`Neither side is being particularly lucid or forthcoming with their explanations. Because
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`the parties’ dispute is unclear, the Court cannot construe the term at this time.
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`3. “setup a verification structure” 1Claim 1}
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`Plaintiff’s Pro nosed Construction
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`Defendant’s Pro . osed Construction
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`the comuter”
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`Plain and ordinary meaning
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`“store information encrypted with a key unique to
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`Claim 1 recites “using an agent to set up a verification structure in the erasable, non-
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`volatile memory of the BIOS, the verification structure accommodating data that includes at
`
`least one license recor ,” and “verifying the program using at least the verification structure
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`from the erasable non-volatile memory of the BIOS.” ’941 Patent, Claim 1 (emphasis added).
`
`The parties dispute whether setting up this verification structure requires encrypting information
`
`with a key unique to the computer. Specifically, Defendant claims that the specification and
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`prosecution history show a clear disavowal of claim scope. See Docket No. 53 at 15.
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`Starting with the specification, Defendants argues that the “Smnmary of the Invention”
`
`states that the invention requires the use of a key, which states:
`
`The present invention relates to a method of restricting software operation
`within a license limitation. This method strongly relies on the use ofa key
`and ofa record, which have been written into the non-volatile memory of a
`computer.
`
`2 To the extent that Defendant argues that the “selecting” step must come before the “verifying” step. the Court
`notes that the Western District of Texas has found that the “selecting” step may be performed at any time. See
`Docket No. 52-5 at 7—10. 37. Given that the parties do not appear to dispute the order of the steps, however. the
`Court does not decide this issue.
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`’941 Patent, 1:38–43 (emphasis added); see also Docket No. 53 at 15. “When a patent thus
`describes the features of the ‘present invention’ as a whole, this description limits the scope of
`the invention.” Regents of Univ. of Minnesota v. AGA Med. Corp., 717 F.3d 929, 936
`(Fed. Cir. 2013). This description of the present invention matches the language recited in Claim
`1, which states that “the verification structure accommodate[es] data that includes at least one
`license record.” ’941 Patent, Claim 1. Further, the specification states that “[t]he present
`invention also relates to a non-volatile memory media used as a BIOS of a computer, for
`restricting software operation within a license limitation, wherein a pseudo-unique key is
`established.” ’941 Patent at 4:55–58 (emphasis added). But that is where the description of the
`present invention ends.
` As both parties
`
`The specification does not support Defendant’s construction.
`acknowledge, the rest of the specification describes “non-limiting example[s]” or “operations
`performed according to one embodiment of the invention.” See Docket No. 54 at 10; see also
`Docket No. 52 at 15 (“While most of the ’941 Patent disclosure is phrased in the language of
`‘non-limiting examples’ and ‘embodiments,’ the [Summary of the Invention] is not.”).
`Defendant argues that these examples are limiting as they provide “context for the
`characterization of the invention as a whole,” and because “the specification never discloses any
`embodiment where the license record in the verification structure is not encrypted using the
`unique key.” See Docket No. 53 at 15–16. But as Plaintiff notes, claim terms should not be
`limited just because the specification discloses a single embodiment. See Docket No. 54 at 10
`(citing Phillips, 415 F.3d at 1323).
`
`Further, Claim 1 recites that the “verification structure” is set up “in the erasable, non-
`volatile memory of the BIOS.” ’941 Patent, Claim 1. Claim 7 recites that the “set[ting] up a
`verification structure” step of Claim 1 includes establishing (or certifying the existence of) “a
`pseudo-unique key in a first non-volatile memory area of the computer; and establishing at least
`one license-record location in the first nonvolatile memory area or in the erasable, non-volatile
`memory area of the BIOS.” ’941 Patent, Claim 7. Similarly, the specification states that setting
`up the verification structure only requires establishing (or certifying the existence of) a key and
`at least one license-record location in the non-volatile memory:
`Setting up (18) the verification structure includes the steps of: establishing or
`certifying the existence of a pseudo-unique key in the first non-volatile memory
`area; and establishing at least one license-record location in the first or the second
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`nonvolatile memory area.
`’941 Patent at 6:18-22. These references to the “set[ting] up a verification structure” step
`without mentioning encryption suggest that encryption is not required.3
`
`Defendant asserts that the description of the “[s]etting up (18) the verification structure”
`in the specification is followed by an explanation that the “establishing a license-record” step
`includes “forming a license-record by encrypting of the contents used to form a license-record …
`using the key.” See Docket No. 55 at 12–13 (citing ’941 Patent at 6:23–26). The specification
`states that the “establishing a license-record” step further includes “establishing the encrypted
`license-record in one of the at least one established license-record locations.” ’941 Patent at
`6:26–28 (emphasis added). Claim 8 already includes both the “forming” and “establishing”
`limitations and limits the “selecting a program” step of Claim 1, not the “set[ting] up the
`verification structure” step. See ’941 Patent, Claim 8. Additionally, the description of the
`“[s]etting up (18) the verification structure” step includes establishing a “license-record
`location,” not establishing the “license-record” itself. Defendant has not shown that the
`“set[ting] up a verification structure” step of Claim 1 requires storing encrypted information.
`
`The prosecution history does not support Defendant’s construction either. The
`applicant’s (i.e. the original patentee’s) arguments during prosecution suggest that setting up a
`verification structure requires the use of a key. The applicant stated that “the client system ID of
`[the prior art], is similar to the pseudo-unique key recited in claims 1 and 20.’” See Docket No.
`52–3 at ANCC000151 (emphasis in original). As Defendant argues, then-pending Claim 1 did
`not explicitly recite a “pseudo-unique key,” suggesting that the term “verification structure”
`includes a pseudo-unique key. See Docket No. 53 at 16–17; Docket No. 52–3 at ANCC000130.
`Further, the applicant argued that “[i]n the present method, the verification structure is formed by
`using a unique key for each computer and license record information in the software.” Docket
`No. 52–3 at ANCC000095. Although these statements may not amount to an “explicit
`disclaimer of subject matter sufficient to vary the scope of the claim,” they are still helpful in
`
` 
`3 The specification also discloses that the “license record may be held in either encrypted or explicit form.” See
`Docket No. 52 at 11 (citing ’941 Patent at 1:55). As Defendant points out, however, the next paragraph shows that
`this excerpt describes the state of the license-record before the verification structure is set in the BIOS. See Docket
`No. 55 at 13–14 (citing ’941 Patent at 1:59–62 (“Now, there commences an initial license establishment procedure,
`where a verification structure is set in the BIOS so as to indicate that the specified program is licensed to run on the
`specified computer.”)). But later the specification states that “[a]ny component [of a license-record] may, if desired,
`be encrypted.” ’941 Patent at 5:39.
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`determining the ordinary meaning of the term “verification structure” within the relevant art.
`
`See Novartis Pharm., Corp. v. Eon Labs Mfg. Inc., 363 F.3d 1306, 1311 0:ed. Cir. 2004).4
`
`The applicant’s remarks on encryption, however, are ambiguous at best. The applicant
`
`argued that “[t]he license ID of [the prior art] is similar to the verification structure and license
`
`information recited in claims 1 and 20, respectively.” Docket No. 52—3 at ANCC000151
`
`(emphasis in original). According to Defendant, the prior art discloses cryptographically signing
`
`the license ID with “a signing key,” showing that setting up the verification structure requires
`
`encryption. See Docket No. 53 at 17 (citing Docket No. 53-9 at 10:60—67). But this is not
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`included in the applicant’s remarks. At most, the applicant argued that the license ID “may be a
`
`digital certificate.” Docket No. 52—3 at ANCCOOOlSl. This is not enough to limit the term
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`“set[ting] up a verification structure.”
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`Finally, “set[ting] up a verification structure” does not require a key “unique to the
`
`computer.” As stated throughout, the key may be “pseudo-unique,” which the specification states
`
`“may relate to a random bit string (or to an assigned bit string) of sufficient length such that:
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`there is an acceptably low probability of a successful unauthorized transfer of licensed sofiware
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`between two computers, where the first volatile memories of these two computers have the same
`
`key.” ’94] Patent at 4: 13—18. Thus, the key may be “pseudo-unique” rather than “lmique.”
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`Accordingly, the Court rejects Defendant’s construction. However, while Plaintiff has
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`somewhat successfully argued against Defendant’s efforts, it has not met its obligation in
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`delineating its own construction of the term. Plaintiff contends that the term should be given its
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`plain and ordinary meaning without explaining what the plain and ordinary meaning of the term
`
`“set up a verification structure” is. Thus, the Court cannot construe the term at this time.
`
`4. “license record” (Claim 1!
`
`Plaintiff’s Pro I osed Construction
`
`Defendant’ Pro - osed Construction
`
`program”
`
`“a record from a licensed program with
`information for verifying that licensed
`
`“information indicating a right to use the
`
`The parties dispute whether a license record requires “information indicating a right to
`
`use the program” or just information for verifying the program. Plaintiff argues that two other
`
`‘ Plaintiff‘s argument that the prosecution history describes embodiments without using a key is unpersuasive. See
`Docket No. 54 at 12 (citing Docket No. 52-3 at ANCC000092). Applicant's statement that “[i]n a preferred
`embodiment, a key resides in a first non-volatile part of a computer’s memory.” describes one possible location for
`the key, not that the key is optional.
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`courts have already adopted Plaintiff’s construction or a substantially similar one. See Docket
`No. 52 at 13. The Court agrees with these courts.
`
`The specification shows that a license-record is any information from a licensed program
`used by the verification structure to verify the program. The specification states that a
`license-record “consists of author name, program name and number of licensed users (for
`network),” and is associated with “each application program that is to be licensed to run on the
`specified computer.” ’941 Patent at 1:53–57. The license record may be formed from fields or
`contents of the licensed program. See id. at 5:46–51; 6:7–10. The specification provides the
`following examples of contents used to form the license-record: “terms, identifications,
`specifications, or limitations related to the manufacturer of a software product, the distributor of
`a software product, the purchaser of a software product, a licensor, a licensee, items of computer
`hardware or components thereof, or to other terms and conditions related to the aforesaid.” Id. at
`6:11–17. Further, “the license record is not necessarily bound to continuous fields,” and the
`license-record contents may be “centralized or decentralized” or “embedded in various locations
`in the application.” Id. at 5:35–39; 6:11. Thus, the information itself does not need to indicate
`anything so long as it is capable of being used to verify the program.
`
`Figure 1 and its description confirm that the license-record is the information from the
`program used to verify the program. Describing Figure 1, the specification states that “[t]he
`second non-volatile memory includes a license-record-area (9) e.g. which contains at least one
`encrypted
`license-record
`(e.g.
`three
`records 10-12),” while “[t]he volatile memory
`accommodates a license program (16) having license record fields (13-15) appended thereto.”
`’941 Patent at 5:26-30. The license-record fields shown in Figure 1 are found at various
`locations in the license program. See id., Fig. 1 (reproduced below). The specification provides
`the following examples of the license-record fields: “Application names (e.g. Lotus 123), Vendor
`name (Lotus inc.), and number of licensed copies (1 for stand alone usage, >1 for number of
`licensed users for a network application).” Id. at 5:30-34. The description and figure show that
`the license-record is comprised of assorted information from the program without necessarily
`indicating a right to use the program.
`
` 
`
`10 
`
`

`

`Case 8:19-cv-02192-GW-AS Document 60 Filed 10/15/20 Page 12 of 21 Page ID #:1564
`
`
`Defendant has not shown that the plain and ordinary meaning of a license-record to one
`
`of ordinary skill in the art when viewed in light of the specification is limited to information
`indicating a “right to use.” The specification states consistently that the program is licensed “to
`run” and suggests that the terms “licensed” and “verified” are synonymous. See ’941 Patent at
`1:54–55 (“each application program that is to be licensed to run on the specified computer”);
`1:61–62 (“the specified program is licensed to run on the specified computer”); 2:20 (“the
`program is verified to run on the computer”); 2:28 (“attempt to run a program at an unlicensed
`site”); 2:30 (“verified to run”); 2:36 (“Suppose now that a hacker attempts to run …”).
`Defendant also relies on the applicant’s remarks about the “license ID” of the prior art made
`during prosecution of the ’941 Patent. See Docket No. 53 at 19. The applicant stated that the
`license ID “may be a digital certificate indicating the right to use” and “is similar to the
`verification structure and license information.” See Docket No. 52-3 at ANC000151 (emphasis
`added). These statements do not change the scope of the term “license-record” when read in
`light of the specification.
`
`Finally, Defendant’s issues with Plaintiff’s construction are unfounded. Defendant’s
`argument that Plaintiff’s construction is dissociated from the plain meaning of the term “license”
`
` 
`
`11 
`
`

`

`Case 8:19-cv-02192-GW-AS Document 60 Filed 10/15/20 Page 13 of 21 Page ID #:1565
`Case 8:19-cv-02192—GW-AS Document 60 Filed 10/15/20 Page 13 of 21 Page ID #:1565
`
`is based on Defendant’s overly narrow construction of the term “license.” See Docket No. 53 at
`
`20. Defendant also complains that Plaintiffs construction does not provide what the licensed
`
`program is verified to do. See Docket No. 55 at 18. A person of ordinary skill in the art would
`
`be able to understand the verification process from reading the specification, though.
`
`Accordingly, the Court construes the term “license-record” to mean “a record from a
`
`licensed program with information for verifying that licensed program.”
`
`5. “memog of the BIOS” [Claim 1 [
`
`Plaintiff’s Pro a osed Construction
`
`Defendant’s Pro . osed Construction Plain and ordinary meaning
`
`“a memory that: (i) stores the BIOS; (ii) is not
`recognized by an operating system as a storage
`device; and iii does not have a file
`
`Defendant asks that the term “memory of the BIOS” be limited based on the doctrine of
`
`prosecution disclaimer. See Docket No. 53 at 10. Plaintiff argues that the term should be given
`
`its plain and ordinary meaning,
`
`i. e. a “memory space associated with the computer’s basic
`
`input/output system (BIOS), rather than other memory space.” See Docket No. 52 at 16—17. The
`
`Court finds that prosecution disclaimer does not apply.
`
`Defendant relies on arguments the applicant made during the prosecution of the ’94]
`
`Patent to overcome a rejection under 35 U.S.C. § 103 in light of two prior art references: Misra
`
`and Ewertz. See Docket No. 54 at 12—13. Produced below is the relevant part of the file history:
`
`Moreover, the present invention proceeds against conventional wisdom in the art.
`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 applications. An ordinary skilled artisan would not consider the BIOS a
`storage medium to preserve application data for at least two reasons.
`
`First, OS does not support this functionality and is not recognized as a
`hardware device like other peripherals. Every OS provides a set of application
`program interfaces (APIs) for applications to access storage devices such as hard
`drives, removable devices, etc. An ordinary person skilled in the art makes use of
`OS features to write date to storage mediums.
`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. Accordingly, an ordinary person skilled in the
`art would not consider the BIOS for any operation, including writing to the